`
`
`
`By: Todd R. Walters, Esq.
`Roger H. Lee, Esq.
`Mythili Markowski, Ph.D., Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Main Facsimile (703) 836-2021
`todd.walters@bipc.com
`roger.lee@bipc.com
`mythili.markowski@bipc.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`EXOCAD GMBH and EXOCAD AMERICA, INC.
`Petitioners
`
`v.
`
`3SHAPE A/S
`Patent Owner
`
`__________________
`
`Case No. IPR2018-00788
`Patent 9,336,336
`__________________
`
`DECLARATION OF DR. ELI SABER, PH.D.
`
`3SHAPE EXHIBIT 2001
`Exocad v. 3Shape
`IPR2018-00788
`
`
`
`Declaration of Eli Saber, Ph.D.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. QUALIFICATIONS ........................................................................................ 3
`III. COMPENSATION AND PRIOR TESTIMONY ........................................... 7
`IV. UNDERSTANDING OF THE GOVERNING LAW AND
`PERSPECTIVES APPLIED ............................................................................ 8
`A.
`Types of Claims ..................................................................................... 8
`B. Unpatentability Based On Anticipation ................................................ 8
`C. Unpatentability Based On Obviousness ................................................ 9
`D.
`Interpreting Patent Claims in Inter Partes Review Proceedings .......... 9
`E.
`Relevant Time Period for Analysis ..................................................... 10
`F.
`Bases for My Opinion ......................................................................... 11
`G. A Person of Ordinary Skill in the Art (“POSITA”) ............................ 11
`TECHNICAL BACKGROUND OF THE ’336 PATENT ........................... 11
`V.
`VI. BROADEST REASONABLE CONSTRUCTION OF CLAIM
`TERMS .......................................................................................................... 13
`A.
`Construction of “of at least part of an oral cavity of the patient” ....... 13
`B.
`Construction of “arrange the at least one 2D image relative to
`the 3D virtual model in a virtual 3D space such that the at least
`one 2D image and the 3D virtual model are aligned when
`viewed from a viewpoint and remain separate representations
`after being arranged” ........................................................................... 15
`Construction of “render a part of the at least one 2D image that
`includes teeth at least partly or wholly transparent” ........................... 16
`
`C.
`
`i
`
`
`
`VII. THE CLAIMS OF THE ’336 PATENT ARE NEITHER
`ANTICIPATED BY NOR RENDERED OBVIOUS OVER THE
`ART CITED BY PETITIONER .................................................................... 17
`A. Wiedmann Does Not Anticipate Claims 1-5, 7-11, 13, 14, 16-
`18, 22-24, and 27-30. (Ground 1) ...................................................... 17
`Petitioner inappropriately relies on the same “optimum
`1.
`tooth shape” disclosure of Wiedmann to allegedly satisfy
`two distinct elements recited in the claims. .............................. 17
`2. Wiedmann does not disclose a 3D virtual model “of at
`least part of an oral cavity of the patient.” ................................ 21
`3. Wiedmann does not disclose that “the 3D virtual model
`and the at least one 2D image are both visualized in the
`3D space” under Petitioner’s own construction. ...................... 23
`4. Wiedmann does not disclose the claimed feature “remain
`separate representations after being arranged.” ........................ 27
`Petitioner fails to demonstrate that claims 6-8 are
`anticipated by Wiedmann. ........................................................ 29
`Claims 1-14, 16-20, and 22-30 Would Not Have Been Obvious
`Over Wiedmann in view of Sachdeva. (Ground 1) ............................ 29
`There is no reason with rational underpinnings for why a
`1.
`POSITA would have replaced the optimum tooth shape
`of Wiedmann with a 3D virtual model which is of at least
`part of an original oral cavity of the patient that is
`provided prior to designing the recited restoration. .................. 30
`There is no reason with rational underpinnings for
`modifying Wiedmann such that the 3D virtual model and
`the 2D image are both visualized in the 3D space. ................... 31
`a. Wiedmann’s system already allows the user to
`preview the treatment before the treatment is
`actually done, without any need to modify the
`system to visualize in the 3D space. ............................... 32
`
`B.
`
`5.
`
`2.
`
`Declaration of Eli Saber, Ph.D.
`
`
`ii
`
`
`
`3.
`
`C.
`
`2.
`
`b.
`
`Petitioner’s conclusory assertions are unsupported
`by any credible evidence. ............................................... 33
`Like Wiedmann, Sachdeva fails to disclose or suggest the
`claimed feature “remain separate representations after
`being arranged.” ........................................................................ 36
`Sachdeva Does Not Anticipate Claims 1-14, 16-20, and 22-30.
`(Ground 5) ........................................................................................... 36
`Sachdeva does not disclose that “the at least one 2D
`1.
`image and the 3D virtual model are aligned…and remain
`separate representations after being arranged.” ........................ 36
`Contrary to Petitioner’s assertion, Sachdeva
`a.
`discloses that the morphable model 102 is 3D, not
`2D. ................................................................................... 37
`The virtual patient model in Sachdeva is a
`“composite, combined digital representation”—not
`a 2D image and a 3D virtual model that are aligned
`and remain separate representations after being
`arranged. ......................................................................... 42
`Sachdeva does not disclose “either virtually cut[ting] at
`least a part of teeth out of the at least one 2D image or
`render[ing] a part of the at least one 2D image that
`includes teeth at least partly or wholly transparent.” ................ 50
`Contrary to Petitioner’s assertion, Sachdeva
`a.
`explicitly discloses that the morphable face model
`in Fig. 6 includes teeth. ................................................... 50
`Petitioner does not even allege that a part of the X-
`ray image that includes the teeth in Sachdeva is
`partly or wholly transparent. ........................................... 52
`The “virtually cut/render transparent” limitation
`requires an active step of causing a part of the 2D
`image to become partly or wholly transparent. .............. 53
`
`Declaration of Eli Saber, Ph.D.
`
`
`b.
`
`b.
`
`c.
`
`iii
`
`
`
`D.
`
`b.
`
`3.
`
`2.
`
`Declaration of Eli Saber, Ph.D.
`
`Sachdeva does not anticipate the dependent claims. ................ 54
`Sachdeva does not anticipate dependent claims 6-
`a.
`8. ..................................................................................... 54
`Sachdeva does not anticipate dependent claim 9. .......... 55
`b.
`Claims 1-14, 16-20, and 22-30 Would Not Have Been Obvious
`Over Sachdeva in View of Kopelman. (Ground 5) ............................ 55
`A POSITA would not have combined Sachdeva with
`1.
`Kopelman as Petitioner alleges. ................................................ 56
`There is no reason to replace Sachdeva’s 3D
`a.
`morphable model with a 2D image as Petitioner
`alleges. ............................................................................ 56
`Contrary to the claims which require a 2D image
`and 3D virtual model to be aligned and remain
`separate representations, Kopelman discloses
`combining 2D and 3D image data. ................................. 58
`Petitioner makes no assertion that it would have been
`obvious to modify Sachdeva to arrive at “either virtually
`cut[ting] at least a part of teeth out of the at least one 2D
`image or render[ing] a part of the at least one 2D image
`that includes teeth at least partly or wholly transparent.” ......... 63
`Claims 6-8 Would Not Have Been Obvious. (Grounds 4, 8) ............ 64
`Lehman and Seeger Fail to Cure the Above-Described
`Deficiencies of Wiedmann and Sachdeva. (Grounds 2, 3, 6, 7) ........ 68
`VIII. Conclusion ..................................................................................................... 69
`APPENDIX 1
`
`
`E.
`F.
`
`iv
`
`
`
`I, Dr. Eli Saber, Ph.D., hereby state as follows:
`
`Declaration of Eli Saber, Ph.D.
`
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by Buchanan Ingersoll & Rooney PC to provide
`
`technical assistance in the above-captioned matter. I am working as a private
`
`consultant on this matter and the opinions presented here are my own. In
`
`providing my opinions expressed below, I rely upon my education, my experience,
`
`and the documents cited herein.
`
`2.
`
`In preparing this Declaration I have had discussions with counsel. I
`
`reviewed documents, including those referred to below. I provide my opinions and
`
`explanations below. I have reviewed the entirety of this document and do confirm
`
`that the statements herein accurately reflect my understanding and opinions.
`
`3.
`
`I was informed by counsel that this matter is an Inter Partes Review
`
`(“IPR”) of U.S. Patent No. 9,336,336, Case No. IPR2018-00788 (“IPR”) before the
`
`Patent Trial and Appeal Board (“the Board”) of the United States Patent and
`
`Trademark Office “PTO”).
`
`4.
`
`It is my understanding that in this IPR, Exocad GmbH and Exocad
`
`America, Inc. (“Exocad” or “Petitioner”) has filed a Petition (“Pet.”) asking that
`
`the Board find Claims 1-30 of U.S. Patent No. 9,336,336 (“the ’336 Patent”)
`
`(Exhibit 1001) unpatentable for one or more reasons. Counsel has informed me
`
`that the ’336 Patent is owned by 3Shape A/S (“3Shape” or “Patent Owner”).
`
`1
`
`
`
`
`
`5.
`
`In preparing this Declaration, I have reviewed the documents set forth
`
`Declaration of Eli Saber, Ph.D.
`
`in Table 1 below, the Petition, and the Institution Decision dated October 3, 2018
`
`(Paper 7). This Declaration presents the bases and reasons for my opinion,
`
`including the additional materials and information relied upon in forming those
`
`opinions and conclusions.
`
`EXHIBIT
`
`TABLE 1
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1005
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1013
`
`2002
`
`U.S. Pat. No. 9,336,336 to Deichmann et al. (“the ’336 Patent”)
`
`Declaration of Joseph Mundy, Ph.D.
`
`Curriculum Vitae of Joseph Mundy, Ph.D.
`
`U.S. Patent No. 7,156,655 to Sachdeva et al.
`
`Wiedmann, Oliver, “According to the Laws of Harmony … to
`find the right tooth shape with the assistance of the computer,”
`Digital Dental News, 2nd Volume, April 2008
`
`U.S. Patent No. 6,845,175 to Kopelman et al.
`
`U.S. Patent No. 6,568,936 to MacDougald
`
`Lehman, Thomas M., et al., “Survey: Interpolation Methods in
`Medical Image Processing,” IEEE Transactions on Medical
`Imaging, Vol. 18, No. 11, November 1999
`
`U.S. Patent Publication No. US2002/0075389 to Seeger
`
`U.S. Patent No. 7,234,937 to Sachdeva et al.
`
`Curriculum Vitae of Eli Saber, Ph.D.
`
`2
`
`
`
`
`
`EXHIBIT
`
`Declaration of Eli Saber, Ph.D.
`
`TABLE 1
`
`DESCRIPTION
`
`2003
`
`2004
`
`2005
`
`
`
`6.
`
`Blanz et al., A Morphable Model for The Synthesis of 3D Faces,
`Computer Graphics Proceedings SIGGRAPH '99 (August 1999)
`
`The American Heritage College Dictionary, Third Edition, 1997,
`Houghton Mifflin Co., p. 272 (definition of “coincide”)
`
`Hughes, John F., et al., “Computer Graphics: Principles and
`Practice,” 3rd Edition, Addison-Wesley Professional, 2013, pp.
`vii-viii, 1-4, 485-490.
`
`This report is based on information currently available to me. I
`
`reserve the right to continue my investigation and analysis, which may include a
`
`review of documents and information not yet produced. I further reserve the right
`
`to expand or otherwise modify my opinions and conclusions as my investigation
`
`and study continues, and to supplement my opinions and conclusions in response
`
`to any additional information that becomes available to me.
`
`II. QUALIFICATIONS
`7.
`I am a professor in the Electrical and Microelectronic Engineering
`
`Department and the Chester F. Carlson Center for Imaging Science at the
`
`Rochester Institute of Technology (RIT) in Rochester, New York. I also serve as
`
`the Director of the Image, Video and Computer Vision Laboratory. I joined RIT’s
`
`3
`
`
`
`
`full-time faculty in 2004. I have 30 years of industry and academic experience, 25
`
`Declaration of Eli Saber, Ph.D.
`
`of which are in the field of imaging.
`
`8.
`
`I received a Ph.D. in Electrical Engineering from the University of
`
`Rochester in 1996. My concentration was on Signal/Image/Video Processing,
`
`Pattern Recognition, and Computer Vision. I received a Master’s Degree in
`
`Electrical Engineering from the University of Rochester in 1992, and I received a
`
`Bachelor’s Degree in Electrical and Computer Engineering, summa cum laude,
`
`from the State University of New York at Buffalo in 1988.
`
`9.
`
`Before becoming a full-time professor, I worked for Xerox
`
`Corporation for 16 years, from 1988 to 2004. During my years at Xerox, I was
`
`responsible for delivering color management, image processing innovations,
`
`architectures, and algorithms; xerographic sub-systems for a variety of color
`
`products; and control systems for toner production facilities. One of several roles I
`
`held at Xerox was Advanced Development Scientist and Manager. In that capacity,
`
`I established the Advanced Design Laboratory – an Imaging/Xerographics lab –
`
`and provided technical and managerial leadership for the Electrical, Imaging and
`
`Xerographics Department. In another role, as Product Development Scientist and
`
`Manager, I led the research and development of image quality metrics for various
`
`product platforms. I also led the Image Science, Analysis, and Evaluation area,
`
`with 12 to 15 direct reports and a budget of approximately $2 million.
`
`4
`
`
`
`
`
`10. From 1997 until 2004, I was an adjunct faculty member in the
`
`Declaration of Eli Saber, Ph.D.
`
`Electrical Engineering Department of RIT and in the Electrical and Computer
`
`Engineering Department of the University of Rochester. I was responsible for
`
`teaching undergraduate and graduate coursework in signal, image and video
`
`processing; pattern recognition; and communications. Additionally, I performed
`
`research in multimedia applications, pattern recognition, image understanding and
`
`color engineering.
`
`11. Since joining RIT full-time in 2004, I have been responsible for
`
`teaching a variety of undergraduate and graduate courses in digital signal
`
`processing, digital image processing, digital video processing, engineering analysis,
`
`random signal and noise, advanced engineering mathematics, matrix methods,
`
`pattern recognition, communications, modern control theory, and linear systems.
`
`12. My current research focuses on image and video processing for
`
`multimedia, military and biomedical applications, computer vision and three-
`
`dimensional scene reconstruction, and color image processing for printing and
`
`multimedia applications. As a principal investigator or co-principal investigator, I
`
`have acquired research funding in excess of $5 million since joining RIT and have
`
`managed multiple government grants from the Department of Defense as well as
`
`several yearly corporate grants from Hewlett-Packard. In 2012, I was awarded the
`
`5
`
`
`
`
`Prestigious Trustees Scholarship, the highest award at RIT with regard to research
`
`Declaration of Eli Saber, Ph.D.
`
`recognition.
`
`13.
`
`I am the author or co-author of over 30 peer-reviewed journal
`
`publications. These, among others, include:
`
` “Synthesis of Intensity Gradient and Texture Information for Efficient
`
`Three-Dimensional Segmentation of Medical Volumes,” Journal of
`
`Medical Imaging 2, no. 2 (2015):024003-024003;
`
` “Semi-automated System for Three-Dimensional Modeling of Buildings
`
`from Aerial Video,” Journal of Electronic Imaging, Vol. 21(1), 013007,
`
`Jan.-Mar. 2012;
`
` “Automatic Image Segmentation by Dynamic Region Growth and Multi-
`
`Resolution Merging,” IEEE Transactions on Image Processing, Vol. 18,
`
`No. 10, Oct. 2009.
`
` “An Automated Algorithm for the Identification of Artifacts in Mottled
`
`and Noisy Images,” Journal of Electronic Imaging, Vol. 16, No. 3, 2007;
`
` “Partial Shape Recognition by Sub-Matrix Matching for Partial Matching
`
`Guided Image Labeling,” Pattern Recognition, Vol. 38, pp. 1560-1573,
`
`2005; and
`
`6
`
`
`
`
`
`Declaration of Eli Saber, Ph.D.
`
` “Region-Based Affine Shape Matching for Automatic Image Annotation
`
`and Query-by-Example,” Journal of Visual Communication and Image
`
`Representation, March 1997.
`
`14.
`
`I have also authored or co-authored 98 conference and workshop
`
`publications and a book entitled Advanced Linear Algebra for Engineers with
`
`MATLAB, published by CRC Press in February 2009, and am a named inventor
`
`on multiple U.S. and foreign patents.
`
`15.
`
`I am a senior member of the Institute of Electrical and Electronic
`
`Engineers and a member of the IEEE Signal Processing Society, the Electrical
`
`Engineering Honor Society, Eta Kappa Nu.
`
`16. A copy of my curriculum vitae is provided as Exhibit 2002.
`
`III. COMPENSATION AND PRIOR TESTIMONY
`17.
`I am billing at an hourly rate of six hundred dollars ($600) for my
`
`time spent studying materials, working on reports, and participating in depositions.
`
`These rates are my standard rates, regardless of whether my opinions positively or
`
`negatively affect Buchanan Ingersoll & Rooney PC or Petitioners in this matter.
`
`My compensation is not contingent upon the outcome of this matter. I expect to be
`
`reimbursed for reasonable expenses associated with travel, including lodging,
`
`ground transportation, and other expenses incurred in connection with this
`
`engagement.
`
`7
`
`
`
`
`
`18. An updated list of matters in which I have previously testified as an
`
`Declaration of Eli Saber, Ph.D.
`
`expert is provided in Appendix 1.
`
`IV. UNDERSTANDING OF THE GOVERNING LAW AND
`PERSPECTIVES APPLIED
`19.
`I am not an attorney and do not expect to offer any opinions regarding
`
`the law. However, I have been informed of certain legal principles relating to
`
`standards of patentability that I relied on in reaching the opinions set forth in this
`
`report.
`
`A. Types of Claims
`20.
`I understand that there are two types of U.S. patent claims: 1)
`
`independent claims and 2) dependent claims. I understand that independent claims
`
`only include the aspects stated in the independent claim. I further understand that
`
`dependent claims include the aspects stated in that dependent claim, and any other
`
`aspects stated in any claim from which that dependent claim depends.
`
`B. Unpatentability Based On Anticipation
`21.
`I understand that for a claim to be anticipated, each and every claim
`
`element set forth in the claim must be found, either expressly or inherently in a
`
`single prior art reference. In order for there to be anticipation, the identical
`
`invention must be shown in as complete detail as is contained in the claim.
`
`8
`
`
`
`
`
`Declaration of Eli Saber, Ph.D.
`
`C. Unpatentability Based On Obviousness
`22.
`I understand that even if a claim is not anticipated, an invention that
`
`would have been obvious to a person of ordinary skill in the art (“POSITA”) at the
`
`time of the invention is not patentable. I understand that obviousness is
`
`determined by considering several factors, including: the state of the art at the time
`
`the invention was made; the level of ordinary skill in the art; differences between
`
`what is described in the art and the claims at issue; and any objective evidence of
`
`“secondary considerations” relevant to obviousness. Objective evidence relevant
`
`to the issue of obviousness may include evidence of commercial success, long-felt
`
`but unsolved needs, failure of others, copying, and unexpected results. The weight
`
`to be given any objective evidence is made on a case-by-case basis. I understand
`
`that in order for a claimed invention to have been obvious, there must have been a
`
`reason with rational underpinnings to modify or combine references, accompanied
`
`by a reasonable expectation of achieving what is claimed.
`
`D.
`23.
`
`Interpreting Patent Claims in Inter Partes Review Proceedings
`I understand that “inter partes review” is a proceeding before the
`
`United States Patent & Trademark Office (“Patent Office”) for evaluating the
`
`unpatentability of an issued patent claim. Counsel has informed me that claims in
`
`an inter partes review are given their broadest reasonable interpretation that is
`
`consistent with the patent specification. I understand that a patent’s “specification”
`
`9
`
`
`
`
`includes all the figures, discussion, and claims within the patent document. I
`
`Declaration of Eli Saber, Ph.D.
`
`understand that the Patent Office will look to the specification to see if there is a
`
`definition for a claim term, and if not, will apply the broadest reasonable ordinary
`
`meaning from the perspective of a person of ordinary skill in the art. However, I
`
`also understand that if a term has no accepted meaning to those of ordinary skill in
`
`the prior art, its meaning, then, must be found in the patent. I present a more
`
`detailed explanation of certain of the terms in the ’336 patent in the section entitled
`
`“Broadest Reasonable Construction of Claim Terms” below.
`
`E. Relevant Time Period for Analysis
`24.
`I understand that the ’336 patent claims the benefit of earlier filed
`
`provisional applications and foreign applications. The earliest filing date of these
`
`applications to which the ’336 patent claims priority is June 29, 2010, and I have
`
`assumed this is the ’336 patent’s invention date. I have therefore analyzed the
`
`knowledge of a person of ordinary skill in the art as of that day or somewhat before.
`
`Thus, my statements in this declaration are given from the perspective of a person
`
`of ordinary skill in the art during this relevant time period for analysis, unless
`
`otherwise specifically indicated. This is true even if my statements are given in the
`
`present tense.
`
`10
`
`
`
`
`
`Declaration of Eli Saber, Ph.D.
`
`F.
`25.
`
`Bases for My Opinion
`In forming my opinion, I have relied on the ’336 patent claims,
`
`the ’336 patent specification, the exhibits listed in the Exhibit List at paragraph 5
`
`of this Declaration, the Petition (“Pet.”), the Institution Decision (“ID”) dated
`
`October 3, 2018 (Paper 7), and my own experience and expertise of the knowledge
`
`of the person of ordinary skill in the relevant art in the relevant timeframe.
`
`G. A Person of Ordinary Skill in the Art (“POSITA”)
`26.
`It is my understanding that the claims and specification of a patent
`
`must be read and construed through the eyes of a person of ordinary skill in the art
`
`at the time of the alleged invention. With respect to the ’336 patent, it is my
`
`opinion that a person of ordinary skill in the art (“POSITA”) would have a
`
`bachelor’s degree in electrical engineering, computer engineering, computer
`
`science, or an equivalent field, as well as at least one or two years of industry or
`
`research experience with computer vision/graphics making use of three-
`
`dimensional virtual models. Such a person would also typically have the ability to
`
`learn information about the needs of the users of dental or biomedical design
`
`software.
`
`V. TECHNICAL BACKGROUND OF THE ’336 PATENT
`27. The ’336 Patent generally relates to visualizing and modeling a set of
`
`teeth for a patient. Ex.1001 at 1:5-6. Embodiments of the ’336 Patent are directed
`
`11
`
`
`
`
`to methods of designing a dental restoration for a patient. Id. at 2:15-29. Dental
`
`Declaration of Eli Saber, Ph.D.
`
`restorations include, for example, crowns, bridges, abutments, or implants. Id. at
`
`1:15-16. The ’336 Patent states that “[a]ccuracy requirements for the dental
`
`restorations are very high[,] otherwise the dental restoration will not be visual[ly]
`
`appealing, fit onto the teeth, could cause pain or cause infections.” Id. at 1:46-49.
`
`28. The ’336 Patent discloses providing one or more 2D images where at
`
`least one 2D image comprises at least one facial feature, providing a 3D virtual
`
`model of at least part of the patient’s oral cavity, and arranging at least one of the
`
`one or more 2D images relative to the 3D virtual model such that the 2D image and
`
`the 3D virtual model are aligned when viewed from a viewpoint, and are both
`
`visualized in the 3D space. Id. at 2:15-25. The 2D image and 3D virtual model
`
`remain separate representations after being arranged. Id. at 26:15-16. The ’336
`
`Patent distinguishes its technique from prior art techniques in which the 2D image
`
`and 3D model are merged or combined into one composite representation:
`
`Furthermore, it is an advantage that the 2D image and the 3D model
`are arranged and remain as separate data representations which are not
`merged or fused together into one representation. By keeping the data
`representations as separate representations, time is saved and data
`processing time and capacity is reduced. Thus the 2D image is not
`superimposed or overlaid onto the 3D virtual model for creating one
`representation with all data included. Prior art documents describe
`
`12
`
`
`
`Declaration of Eli Saber, Ph.D.
`
`
`
`that the data from e.g. a color image is added to the 3D model, such
`that the color content from the image is transferred to the 3D model,
`whereby the result is one representation, i.e. the 3D model including
`color. Creating such models requires more time and exhaustive data
`processing.
`Id. at 3:25-37. See also id. at 3:61-65 (“the operator can perform the modeling
`
`based on the simultaneous view of the 2D image and the 3D model instead of
`
`based on either one combined representation or separate views of the 2D image
`
`and/or the 3D model. [Emphasis added.]”)
`
`VI. BROADEST REASONABLE CONSTRUCTION OF CLAIM TERMS
`29. As noted above, I understand that claims in an inter partes review are
`
`given their broadest reasonable interpretation that is consistent with the patent
`
`specification, and the understanding of one of skill in the art (as I defined above).
`
`In this regard, counsel asked me to provide certain information to assist in
`
`determining the legal scope of certain of the ’336 Patent’s terms, which I provide
`
`below. In the absence of a specific further explanation in this declaration of any
`
`term found in any of claims 1-30, I presumed the term to take on its broadest
`
`ordinary meaning to a POSITA.
`
`A. Construction of “of at least part of an oral cavity of the patient”
`30.
`I understand that Petitioner asserts that the term “3D virtual model of
`
`at least part of an oral cavity of the patient” means “a digital representation of at
`
`13
`
`
`
`
`least part of an oral cavity of the patient with or without a restoration, stored in
`
`Declaration of Eli Saber, Ph.D.
`
`three-dimensional format (such as texture and other values for [x, y, z]
`
`coordinates).” Pet. at 8. I understand that in its proposed construction, Petitioner
`
`merely repeats the claim language “of at least part of an oral cavity of the patient.”
`
`Id. Petitioner’s proposed construction does not provide any meaningful
`
`interpretation of the phrase “of at least part of an oral cavity of the patient.” The
`
`3D virtual model of the patient’s oral cavity is a 3D virtual model of the original
`
`oral cavity of the patient that is provided prior to designing the recited restoration.
`
`This construction is consistent with the specification. See, e.g., Ex.1001 at 2:48-52,
`
`10:48-53 (discussing original oral cavity of patient or parts thereof that are
`
`provided prior to designing the recited restoration). I understand that Petitioner
`
`concedes that “the virtual model is provided and, after this (due to antecedent
`
`basis), ‘design[ing] a restoration for the 3D virtual model” occurs. Pet. at 9:1-3
`
`(emphasis added). Thus, the plain language of the claims also demonstrates that
`
`“provid[ing] a 3D virtual model of at least part of an oral cavity of the patient”
`
`occurs prior to designing the recited restoration, and the 3D virtual model is of the
`
`original oral cavity of the patient. Thus, the phrase “of at least part of an oral
`
`cavity of the patient” means “of at least part of an original oral cavity of the patient
`
`that is provided prior to designing the recited restoration.”
`
`14
`
`
`
`
`
`Declaration of Eli Saber, Ph.D.
`
`B. Construction of “arrange the at least one 2D image relative to the
`3D virtual model in a virtual 3D space such that the at least one
`2D image and the 3D virtual model are aligned when viewed from
`a viewpoint and remain separate representations after being
`arranged”
`I understand that Petitioner asserts that the term “remain separate
`
`31.
`
`representations after being arranged” recited in claims 1 and 29 means “the 2D
`
`image and the 3D virtual model remain in their respective formats and are not
`
`merged into a single representation.” Pet. at 9. However, Petitioner’s proposed
`
`construction does not take into account the meaning of “remain separate
`
`representations after being arranged” when read in the context of the “arrange”
`
`limitation as a whole:
`
`arrange the at least one 2D image relative to the 3D virtual model in a
`
`virtual 3D space such that the at least one 2D image and the 3D
`
`virtual model are aligned when viewed from a viewpoint and
`
`remain separate representations after being arranged… [Emphasis
`
`added.]
`
`Ex.1001 at 26:12-16; see also id. at 28:28-32. By reciting “such that”, the “arrange”
`
`limitation requires an arrangement of the 2D image and the 3D virtual model in
`
`which both: (1) the 2D image and the 3D virtual model are aligned when viewed
`
`from a viewpoint and (2) the 2D image and the 3D virtual model remain separate
`
`representations after being arranged, i.e., in the aligned state. It is not enough for
`
`15
`
`
`
`
`the 2D image and the 3D virtual model to remain in their respective formats, as
`
`Declaration of Eli Saber, Ph.D.
`
`Petitioner alleges; the 2D image and the 3D virtual model must remain separate in
`
`their respective formats (i.e., as separate representations) after being arranged
`
`(after the 2D image and the 3D virtual model are aligned when viewed from a
`
`viewpoint).1
`
`C. Construction of “render a part of the at least one 2D image that
`includes teeth at least partly or wholly transparent”
`I understand that Petitioner did not expressly construe this term. The
`
`32.
`
`term “render a part of the at least one 2D image that includes teeth at least partly or
`
`wholly transparent” (Ex.1001 at 26:7-9, 28:23-25) requires a part of the 2D image
`
`that includes teeth to be rendered at least partly or wholly transparent.
`
`Additionally, “render” is a verb in this recitation. This term requires the active
`
`step of making (i.e., modifying) a part of at least one 2D image that includes teeth
`
`to become at least partly or wholly transparent. This construction is consistent
`
`with the specification, which discloses that the teeth in the 2D image are “made
`
`transparent…by selecting some pixels to be viewed and selecting other pixels not
`
`to be viewed.” Ex.1001 at 9:56-63 (emphasis added); see also id. at 24:32-37 (2D
`
`
`1 The claims also specify that the 2D image and 3D virtual model are both
`
`visualized in the 3D space. Ex.1001 at 26:17-18, 28:32-34.
`
`16
`
`
`
`
`image “has been made partially transparent” using a “scale on the menu…to adjust
`
`Declaration of Eli Saber, Ph.D.
`
`the transparency”), 24:38-40.
`
`VII. THE CLAIMS OF THE ’336 PATENT ARE NEITHER
`ANTICIPATED BY NOR RENDERED OBVIOUS OVER THE ART
`CITED BY PETITIONER
`33. For the reasons discussed below, it is my opinion that the applied
`
`documents do not disclose or suggest all of the claimed features. It is my opinion
`
`that there is no reasoning based on rational underpinnings for why a person of
`
`ordinary skill in the art (“POSITA”) would have modified or combined the
`
`references to arrive at the claimed invention. It is my opinion that the claims of
`
`the ’336 Patent are neither anticipated by nor rendered obvious over the documents
`
`cited by the Petitioner.
`
`A. Wiedmann Does Not Anticipate Claims 1-5, 7-11, 13, 14, 16-18,
`22-24, and 27-30. (Ground 1)
`In my opinion,Wiedmann does not disclose each feature recited in
`
`34.
`
`independent claims 1 an