`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
`__________________
`
`PATENT OWNER’S SUBMISSION
`OF DEMONSTRATIVES FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`
`/Todd R. Walters/
`Todd R. Walters, Esq.
`Registration No. 34,040
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Direct Telephone (703) 838-6545
`Main Facsimile (703) 836-2021
`todd.walters@bipc.com
`Counsel for Patent Owner
`
`Pursuant to the Order dated June 11, 2019 (Paper 39), 3Shape A/S submits
`
`herewith its demonstratives for the oral argument on June 24, 2019.
`
`Case No. IPR2018-00788
`
`Respectfully submitted,
`
`
`
`June 20, 2019
`
`
`
`1
`
`
`
`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
`________________
`PATENT OWNER’S DEMONSTRATIVES FOR ORAL HEARING
`
`Todd R. Walters, Esq.
`Roger H. Lee, Esq.
`Mythili Markowski, Ph.D., Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`
`1
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“The ‘’336 Patent … relates to visualizing and modeling a set of teeth
`for a patient.”
`
`Patent Owner Preliminary Response at pp. 5, 12‐13;
`Exhibit 1001 at 0001, 19:48‐20:5, 20:16‐18, and 20:56‐62.
`
`2
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“[T]he ’336 Patent distinguishes its technique … from
`prior art techniques which add the data from the 2D
`image to the 3D model resulting in a single
`representation.”
`
`Prior art documents describe 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.
`
`Patent Owner Preliminary Response at pp. 6‐7;
`Exhibit 1001 at 3:32‐37 (emphasis added).
`
`3
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“[I]t is an advantage that the present method may be
`performed faster than prior art methods.”
`
`By keeping the data representations as
`separate representations, time is saved
`and data processing time and capacity is
`reduced.
`
`Patent Owner Preliminary Response at p. 6;
`Exhibit 1001 at 3:28‐39.
`
`4
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“[B]oth Patent Owner and Petitioner have articulated that the purpose
`of keeping the 2D image and the 3D virtual model as separate
`representations in the aligned state is to reduce computational time and
`expense.”
`
`By keeping the data
`representations as
`separate representations,
`time is saved and data
`processing time and
`capacity is reduced.
`
`The specification asserts
`that processing times are
`faster because merging
`(texture from) a 2D image
`into a 3D model (and then
`using only the 3D model)
`is computationally
`expensive.
`
`Patent Owner Sur‐Reply at p. 4; Patent Owner Response at pp.
`34‐35; Petition at p. 10.
`
`5
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Independent Claim 1 requires “the 2D image and the 3D virtual model
`remain separate representations after being arranged.”
`
`arrange the at least one 2D image
`relative to the 3D virtual model
`in a 3D virtual 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, whereby the 3D
`virtual model and the at least
`one 2D image are both visualized
`in the 3D space;
`
`Patent Owner Preliminary Response at p. 6; Patent Owner
`Response at p. 1; Exhibit 1001 at 26:12‐18.
`
`6
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Independent Claim 29 requires “the 2D image and the 3D virtual model
`remain separate representations after being arranged.”
`
`arrange the at least one 2D image
`relative to the 3D virtual model
`in a 3D virtual space wherein
`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, and wherein the 3D
`virtual model and the at least
`one 2D image are both visualized
`in the 3D space;
`
`Patent Owner Preliminary Response at p. 6; Patent Owner Response
`at p. 1; Exhibit 1001 at 28:28‐34.
`
`7
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`The ’336 Patent specification discloses that “the 2D image and the 3D
`virtual model remain separate representations after being arranged.”
`the 2D image and the 3D model are arranged
`and remain as separate representations which
`are not merged or fused together into one
`representation…. Thus the 2D image is not
`superimposed or overlaid onto the 3D virtual
`model for creating one representation with all
`data included.
`As seen there is a distance between the 2D
`image and the 3D model to indicate that the
`2D image and the 3D model are separate
`representations and not one representation
`containing data from two representations.
`
`Patent Owner Preliminary Response at p. 6; Exhibit 1001 at 3:25‐32, 21:12‐
`8
`16, and Fig. 3C (emphasis added); Exhibit 2001 at ¶31; Petition at p. 10.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Where both Patent Owner and Petitioner do find agreement is that
`‘the representations remain separate and are not fused or merged
`together’ into a single representation.”
`
`“Remain separate representations after
`being arranged” should be construed to
`mean: “the 2D image and the 3D virtual
`model remain in their respective formats and
`are not merged into a single representation.”
`
`Patent Owner Sur‐Reply at p. 3; Petition at p. 9; Patent Owner
`Response at pp. 6‐7.
`
`9
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“if representations of the 2D image and the 3D virtual model were
`merged or fused together after alignment, then the phrase ‘remain
`separate representations after being arranged’—a limitation added by
`amendment during prosecution—would be impermissibly read out of
`the claim”
`
`110. (Currently Amended) A computer‐implemented method of
`designing a dental restoration for a patient, …
`
`‐arranging arrange at least one of the one or more 2D images
`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, whereby the 3D virtual model and the 2D
`image are both visualized in the 3D space….
`
`Patent Owner Sur‐Reply at p. 3; Exhibit 1004
`at p. 0847.
`
`10
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“That the ‘arrange’ limitation excludes any subsequent merging or
`fusing together into a single representation is clear from … the
`prosecution history.”
`
`The present application provides … 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….
`
`Malfliet teaches a more complicated, and in many cases
`a more expensive/time consuming, method since it
`teaches to build a 3D face model and combine this with
`the 3D dental model.
`
`Patent Owner Sur‐Reply at p. 4; Exhibit 1004
`at pp. 0855‐0856.
`
`11
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Petitioners’ Asserted Unpatentability Grounds
`
`• Ground 5: Anticipation by Sachdeva [Claims 1‐14, 16‐20, 22‐30] OR
`Obviousness over Sachdeva and Kopelman [Claims 1‐14, 16‐20, 22‐30]
`• Ground 1: Anticipation by Wiedmann [Claims 1‐5, 7‐11, 13‐14, 16‐18, 22‐24, 27‐30] OR
`Obviousness over Wiedmann and Sachdeva [Claims 1‐14, 16‐20, 22‐30]
`• Ground 4: Obvious over Wiedmann, Sachdeva, and MacDougald [Claims 6‐8]
`• Ground 8: Obvious over Sachdeva, Kopelman, and MacDougald [Claims 6‐8]
`• Grounds 2, 3: Obvious over Wiedmann, Sachdeva and Lehman [Claim 15];
`Obvious over Wiedmann, Sachdeva and Seeger [Claim 21]
`• Grounds 6, 7: Obvious over Sachdeva, Kopelman, and Lehman [Claim 15];
`Obvious over Sachdeva, Kopelman, and Seeger [Claim 21]
`
`Petition at pp. 2‐3.
`
`12
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`None of Sachdeva, Kopelman, and Wiedmann disclose
`or suggest the claimed feature “remain separate
`representations after being arranged.”
`
`Kopelman, … merely follows the
`conventional approach of
`merging/combining images (i.e.,
`not maintaining a 2D image and
`3D virtual model as separate
`representations) in order to
`visualize the image data in an
`aligned manner..
`
`Wiedmann does not disclose or
`suggest the claimed feature
`“remain separate
`representations after being
`arranged.”
`
`Sachdeva does not disclose
`such claimed subject matter.
`Patent Owner Response at pp. 1‐2; Exhibit
`2001 at ¶¶59, 61, 90.
`
`13
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose each feature recited
`in independent claims 1 and 29.”
`
`1.
`
`2.
`
`“Sachdeva does not disclose that ‘the at least one 2D image and the
`3D virtual model are aligned … and remain separate representations
`after being arranged.’” Patent Owner Response at p. 28.
`
`“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 party or wholly
`transparent.” Patent Owner Response at p. 42.
`
`Patent Owner Response at p. 28.
`
`14
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“The 2D image and the 3D virtual model remain separate
`representations after being arranged.”
`
`“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.”
`
`Patent Owner Preliminary Response at pp. 6‐7; Patent Owner Response at
`15
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`p. 6 (emphasis added); Exhibit 1001 at Fig. 3C; Petition at p. 10.
`
`
`
`“The virtual patient model in Sachdeva is a ‘composite, combined digital
`representation’—not a 2D image and 3D virtual model that are aligned
`and remain separate representations after being arranged.”
`
`These functions include a function
`of automatically, and/or with the
`aid of operator interaction via the
`user interface 14, superimposing
`the first set 24 of digital data and
`the second set 26 of digital data so
`as to provide a composite,
`combined digital representation
`of the craniofacial anatomical
`structures in a common
`coordinate system. This
`composite, combined digital
`representation is referred to
`herein occasionally as the “virtual
`patient model.”
`
`Patent Owner Response at p. 34; Exhibit 1005
`at 7:8‐15.
`
`16
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva explicitly discloses that the complete virtual
`patient model is a combined, composite model, not
`two separate representations.”
`
`A. … It’s being superimposed there, and the
`information from the x‐ray is transferred into this
`model and combined.
`
`Q. So this is an example of aligning a 2D image with a
`3D virtual model, right? …
`
`A. This is an example of a superimposed two‐
`dimensional x‐ray onto a three‐dimensional tooth
`model
`
`A. Again, they’re discussing superimposing the 2D
`image onto the 3D image.
`
`A. They’re becoming combined. They’re becoming one
`representation. They’re not, in essence, separate.
`
`Exhibit 2001 at ¶¶69‐72; Patent Owner Sur‐Reply at p. 9;
`Exhibit 1026 at 97:1‐99:3 and 99:19‐100:6 (emphasis added).
`
`17
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Kopelman discloses combining 2D and 3D
`image data.”
`In accordance with the invention, two different
`images, one being a two‐dimensional image, e.g. a
`cephalometric radiograph, is combined with a three‐
`dimensional teeth image. A super‐position of two
`such images is represented in exemplary FIG. 2.
`
`In order to combine a cephalometric image and a
`three‐dimensional virtual model, basic landmarks
`have to be defined and marked in both images.
`
`the cephalometric radiograph is combined with the
`three‐dimensional virtual teeth image by placing (in
`a virtual sense) the cephalometric image on the mid
`palatal plane.
`
`Exhibit 2001 at p. 58; Exhibit 1008 at 6:22‐28,
`6:40‐42, 6:64‐67 and Fig. 2 (emphasis added).
`
`18
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 1‐14, 16‐20, and 22‐30 Would Not Have Been
`Obvious Over Sachdeva in View of Kopelman. (Ground 5)”
`
`Petitioner never provided a reason
`to modify Sachdeva to arrive at
`the “arrange” limitation in its
`Petition or Reply.
`
`The only reason to engage in an
`obviousness analysis, for the
`independent claims, is if the Board
`were to accept an argument that
`Sachdeva discloses only a 3D face
`model and not also 2D face image,
`for the “morphable model 102.”
`
`Patent Owner Response at pp. 47, 55; Patent Owner Sur‐Reply at
`p. 21; Petition at p. 79 (emphasis added); Exhibit 2001 at ¶94.
`
`19
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 1‐14, 16‐20, and 22‐30 Would Not Have Been
`Obvious Over Sachdeva in View of Kopelman. (Ground 5)”
`
`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….
`
`Kopelman, like Sachdeva, merely follows the
`conventional approach of merging/combining
`images (i.e., not maintaining a 2D image and 3D
`virtual model as separate representations) in
`order to visualize the image data in an aligned
`manner.
`
`Patent Owner Response at pp. 47, 50; Exhibit 2001 at ¶90.
`
`20
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 1‐14, 16‐20, and 22‐30 Would Not Have Been
`Obvious Over Sachdeva in View of Kopelman. (Ground 5)”
`
`Sachdeva discloses obtaining the 3D morphable
`model from 2D color photos ….
`
`Replacing the 3D morphable model of Sachdeva
`with a 2D image as Petitioner suggests would
`have defeated the purpose of converting the 2D
`color pictures into a 3D morphable model in the
`first place.
`
`Patent Owner Response at pp. 47‐49; Exhibit 2001 at ¶87.
`
`21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Wiedmann does not disclose the claimed feature
`‘remain separate representations after being
`arranged.’”
`
`Wiedmann discloses that the newly designed
`anterior dental set‐up is “inserted” into the
`patient’s slightly opened mouth…. A POSITA
`would have understood that the disclosure of
`“inserted” means that the images in
`Wiedmann do not remain separate
`representations after being arranged in the
`aligned state.
`There is no evidence to establish that the
`claimed feature … is necessarily present in
`Wiedmann’s disclosure and that it would
`have been so recognized by a POSITA.
`
`Wiedmann is completely silent concerning
`the claimed feature.
`
`Patent Owner Response at p. 19‐21; Exhibit
`2001 at ¶45‐47 (emphasis added).
`
`22
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“[A] POSITA would have understood the disclosure in Wiedmann that
`the newly designed anterior dental set‐up is ‘inserted’ into the patient’s
`slightly opened mouth … as meaning that the representations are
`combined into one representation, as depicted in Fig. 10 of Wiedmann.”
`
`As a last step, the newly designed anterior
`dental set‐up is inserted into the patient’s
`slightly opened mouth.
`
`Exhibit 2001 at ¶47; Exhibit 1007 at 0007
`(emphasis added).
`
`23
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 1‐14, 16‐20, and 22‐30 Would Not Have Been
`Obvious Over Wiedmann in view of Sachdeva. (Ground 1)”
`
`Wiedmann does not disclose or
`suggest the claimed feature “remain
`separate representations after being
`arranged.” Like Wiedmann, Sachdeva
`also fails to disclose this claim
`limitation.
`
`Exhibit 2001 at ¶59; Patent Owner Response at pp. 22, 28; .
`
`24
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose each feature recited
`in independent claims 1 and 29.”
`
`1.
`
`2.
`
`“Sachdeva does not disclose that ‘the at least one 2D image and the
`3D virtual model are aligned … and remain separate representations
`after being arranged.’” Patent Owner Response at p. 28.
`
`“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 party or wholly
`transparent.” Patent Owner Response at p. 42.
`
`Patent Owner Response at p. 28.
`
`25
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose ‘either virtually cut[ting] at least
`a part of teeth out of the at least one 2D image ….’”
`
`In the example of FIGS. 6‐7, the morphable model 102 was
`already scaled to the same scale as the tooth model 104. In
`other words, the data representing the morphable face
`model indicates that the spatial dimensions of the teeth in
`the morphable face model is substantially the same as the
`spatial dimensions of the virtual tooth model 104.
`
`Patent Owner Response at pp. 42‐43; Exhibit 1005
`at 14:46‐52 and Fig. 6 (emphasis added).
`
`26
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose ‘either virtually cut[ting] at least
`a part of teeth out of the at least one 2D image ….’”
`
`Thus, while Fig. 6 itself may not depict certain details such as
`the teeth and eyes of the patient, the description of
`Sachdeva unequivocally discloses that morphable face model
`includes teeth…. Sachdeva has no disclosure that the
`patient’s teeth have been virtually cut out.
`
`Patent Owner Response at pp. 42‐43; Exhibit 2001 at
`¶76; Exhibit 1005 at Fig. 6 (emphasis added).
`
`27
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose ‘either virtually cut[ting] at least
`a part of teeth out of the at least one 2D image ….’”
`
`Q.
`
`In morphable model 102, you can’t actually see
`any teeth? …
`
`A. Again this is an illustration. And you know,
`Sachdeva clearly discloses that this model has
`teeth. It’s just I don’t see any eyes, either, but it
`doesn’t mean it doesn’t have eyes.
`
`Patent Owner Response at pp. 42‐43; Exhibit
`1005 at Fig. 6; Exhibit 1026 at 143:14‐20.
`
`28
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose each feature recited
`in independent claims 1 and 29.”
`
`1.
`
`2.
`
`“Sachdeva does not disclose that ‘the at least one 2D image and the
`3D virtual model are aligned … and remain separate representations
`after being arranged.’” Patent Owner Response at p. 28.
`
`“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 party or wholly
`transparent.” Patent Owner Response at p. 42.
`
`Patent Owner Response at p. 28.
`
`29
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“This term [render] 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.”
`
`As an alternative to cutting out the teeth of
`the 2D image, the teeth in the 2D image can
`be made transparent ... by selecting some
`pixels to be viewed and selecting other
`pixels not to be viewed.
`
`The 2D image … has been made partially
`transparent …. A scale on the menu … can
`be changed to adjust the transparency of
`the 2D image and/or the 3D model.
`
`Patent Owner Response at pp. 7‐8; Exhibit 1001
`at 9:56‐63 and 24:32‐37.
`
`30
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“The term ‘render a part of the at least one 2D image that includes
`teeth at least partly or wholly transparent’ … requires a part of the 2D
`image that includes teeth to be rendered at least partly or wholly
`transparent.”
`
`“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.
`
`Patent Owner Response at pp. 7‐8; Exhibit 2001 at
`¶32.
`
`31
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“The ‘virtually cut/render transparent’ limitation requires an active step
`of causing a part of the 2D image to become partly or wholly
`transparent.”
`
`provide one or more 2D images, where at
`least one of the one or more 2D images
`comprises at least one facial feature,
`wherein the at least one facial feature
`comprises lips,
`either virtually cut at least a part of teeth
`out of the at least one 2D image or
`render a part of the at least one 2D
`image that includes teeth at least partly
`or wholly transparent;
`
`provide a 3D virtual model of at least part
`of an oral cavity of the patient;
`
`Patent Owner Response at pp. 45‐46; Patent Owner
`Sur‐Reply at pp. 19‐20; Exhibit 1001 at 26:2‐12 and 28:18‐27.
`
`32
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose … render[ing] a part of the at
`least one 2D image that includes teeth at least partly or
`wholly transparent.”
`
`FIG. 9 is a screen shot of yet
`another possible embodiment
`of a virtual patient model. This
`model combines face data
`102 from a morphable face
`model (obtained from 2D
`color photographs), skull data
`114 from a CT scan, and X‐ray
`data 116 obtained from a set
`of digital X‐Rays of the
`patient. The manner of
`creating the virtual patient
`model can be for example
`using the procedure of FIG. 3
`and FIGS. 6‐7.
`
`Patent Owner Response at pp. 42‐44; Exhibit
`1005 at 15:1‐24, Fig. 9 (emphasis added);
`
`33
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose … render[ing] a part of the at
`least one 2D image that includes teeth at least partly or
`wholly transparent.”
`
`In FIG. 28, …. a 3D virtual
`model of the teeth 116
`appears on the display,
`superimposed over a two
`dimensional X‐ray
`photograph 505…. Thus,
`the original 2D
`representation is
`transferred to a surface in
`three dimensions.
`
`Patent Owner Response at pp. 42‐43; Patent Owner
`Sur‐Reply at pp. 9‐10; Exhibit 1005 at 28:65‐29:31, Fig. 28
`(emphasis added).
`
`34
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva does not disclose … render[ing] a part of the at
`least one 2D image that includes teeth at least partly or
`wholly transparent.”
`
`A. They're becoming combined.
`They’re becoming one
`representation. They’re not in
`essence, separate.
`
`Patent Owner Response at pp. 42‐44 ; Patent Owner Sur‐Reply at p. 9;
`Exhibit 1026 at 97:1‐99:3 (emphasis added); Exhibit 1005 at 28:65‐
`29:31, Fig. 28.
`
`35
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`“[T]he mere provision of an X‐ray disclosed by Kopelman does not
`satisfy ‘render[ing] a part of the at least one 2D image that includes
`teeth at least partly or wholly transparent.’”
`
`assuming for the sake of argument that the X‐
`Ray image of Sachdeva and Kopelman is
`transparent, the X‐ray image is already
`transparent; the cited art does not disclose any
`additional procedure for making teeth of the X‐
`ray image to become partly or wholly
`transparent.
`
`Exhibit 2001 at ¶79, 95.
`
`36
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 1‐14, 16‐20, and 22‐30 Would Not Have Been
`Obvious Over Sachdeva in View of Kopelman. (Ground 5)”
`
`Petitioner makes no assertion that it
`would have been obvious to modify
`Sachdeva (alone or in view of
`Kopelman to arrive at the claimed
`feature “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.”
`
`Patent Owner Response at pp. 47, 55; Exhibit 2001 at ¶94.
`
`37
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`“Sachdeva discloses that the morphable model
`102 is 3D, not 2D.”
`
`FIG. 6 is a screen shot of the user
`interface of FIG. 1 showing a
`three‐dimensional face model
`and a three‐dimensional tooth
`model, in separate coordinate
`systems (i.e., prior to registration
`or superposition of the two
`relative to each other).
`Patent Owner Response at pp. 29, 36, 38‐39; Exhibit 1005 at 4:50‐
`55, 14:15‐17, and Fig. 6 (emphasis added); Exhibit 2001 at ¶71.
`
`FIG. 6 is an illustration of a screen display
`on the user interface of the computer 10.
`The display shows a 3D morphable
`model 102 of patient on the left hand
`side of the display in a given arbitrary
`coordinate system X, Y, Z.
`
`38
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva discloses that the morphable model 102 is 3D,
`not 2D.”
`
`•
`
`•
`
`“Sachdeva discloses that the morphable
`model is obtained from 2D color pictures,
`not that the morphable model is a 2D
`picture.” Exhibit 2001 at ¶63; Patent Owner Response
`at 30.
`
`“[t]he 2D color face digital image set 24 is
`used to create a 3D face model.” Exhibit 2001 at
`¶66; Patent Owner Response at 33.
`
`Patent Owner Response at p. 29; Exhibit 1005
`at Fig. 2.
`
`39
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Sachdeva discloses that the morphable model 102 is 3D,
`not 2D.”
`
`The technical literature further
`includes a body of literature
`describing the creation of 3D
`models of faces from
`photographs, and computerized
`facial animation and morphable
`modeling of faces. See, e.g., …
`Blantz et al., A Morphable Model
`for the Synthesis of 3D Faces,
`Computer Graphics Proceedings
`SIGGRAPH ’99 (August, 1999).
`The contents of these references
`are incorporated by reference
`herein.
`
`Patent Owner Response at p. 29; Exhibit 1005
`at 2:50‐62 (emphasis added).
`
`40
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Petitioner waives its anticipation argument over
`Wiedmann [Ground 1].”
`
`Petitioner relies on the same
`“optimum tooth shape” disclosed by
`Wiedmann to satisfy both the claimed
`3D virtual model and the claimed
`restoration.
`
`The recited 3D virtual model
`and the recited restoration are
`distinct elements in the claimed
`method and system.
`
`Patent Owner Sur‐Reply at p. 24; Patent
`Owner Preliminary Response at pp. 25‐27.
`
`41
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Petitioner waives its anticipation argument over
`Wiedmann [Ground 1].”
`
`“The 3D model provided
`in Wiedmann results
`from a database search
`for a “suitable match” ….
`This is not the patient’s
`existing, or pre‐
`restoration oral cavity….
`Wiedmann does not
`describe “provide a 3D
`virtual model of at least
`part of an oral cavity of
`the patient.”
`
`Patent Owner Sur‐Reply at p. 24; Institution
`Decision at p. 31.
`
`42
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Petitioner waives its anticipation argument over
`Wiedmann [Ground 1].”
`
`The optimum tooth
`shape, then, does not
`correspond to the
`claimed 3D virtual model
`of which is of at least
`part of an original oral
`cavity of the patient that
`is provided prior to
`designing the recited
`restoration.
`
`Patent Owner Sur‐Reply at p. 24; Patent
`Owner Response at p. 15.
`
`43
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Petitioner waives its anticipation argument over
`Wiedmann [Ground 1].”
`
`Petitioner’s Reply makes no assertion that
`Wiedmann discloses this limitation..
`
`Patent Owner Sur‐Reply at p. 24.
`
`44
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Wiedmann does not disclose that ‘the 3D virtual model and
`the at least on 2D image are both visualized in the 3D space.’”
`
`•
`
`•
`
`“Wiedmann is limited to 2D scaling and 2D translations of the selected restoration.” Exhibit
`2001 at ¶43; Patent Owner Response at p. 18.
`
`“Wiedmann’s blue dot sizing handles provide the user with guideposts for 2D size
`modification of the restoration.” Exhibit 2001 at ¶44; Patent Owner Response at p. 19.
`
`Patent Owner Response at p. 15; Petition at
`14; Exhibit 1007 at Figs. 8‐10.
`
`45
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Wiedmann does not disclose that ‘the 3D virtual model and
`the at least on 2D image are both visualized in the 3D space.’”
`
`The ’336 Patent discloses that the 2D
`image and the 3D virtual model can be
`arranged in the virtual 3D space using
`virtual actions for arrangements such as
`“rotations and translations left/right and
`back/forth of the at least one 2D image
`or of the 3D virtual model.”
`
`Patent Owner Response at pp. 15‐17; Exhibit
`1001 at Fig 3C; Exhibit 2001 at ¶42.
`
`46
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 1‐14, 16‐20, and 22‐30 Would Not Have Been
`Obvious Over Wiedmann in view of Sachdeva. (Ground 1)”
`
`Petitioner does not provide any
`reason to modify Wiedmann to arrive
`at [the limitation of “provide a 3D
`virtual model of at least part of an
`oral cavity of the patient”], either
`alone or in combination with
`Sachdeva.
`
`Patent Owner Response at p. 22; Institution Decision at p. 31.
`
`47
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 1‐14, 16‐20, and 22‐30 Would Not Have Been
`Obvious Over Wiedmann in view of Sachdeva. (Ground 1)”
`
`A POSITA would have recognized that the
`Wiedmann system already allows the user to
`preview the treatment before the treatment
`is actually done, without any need to modify
`such system to visualize in the 3D space.
`
`Patent Owner Response at p. 22, 24‐25; Exhibit 2001 at ¶55.
`
`48
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 6‐8 Would Not Have Been Obvious [over Obvious
`over Wiedmann, Sachdeva, and MacDougald OR Sachdeva,
`Kopelman, and MacDougald. (Grounds 4, 8)”
`
`MacDougald depict representations
`obtained from the original tooth data
`(10, 20), prepared tooth data (12, 24),
`and data resulting from subtracting the
`prepared tooth data from the original
`tooth data (16, 26).
`
`Patent Owner Response at pp. 56‐57; Exhibit 2001 at ¶98;
`Exhibit 1009 at Figs. 1 and 2.
`
`49
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Claims 6‐8 Would Not Have Been Obvious [over Obvious
`over Wiedmann, Sachdeva, and MacDougald OR Sachdeva,
`Kopelman, and MacDougald. (Grounds 4, 8)”
`
`MacDougald does not disclose or suggest first and
`second 3D virtual models that are aligned when
`viewed from a viewpoint. Rather, MacDougald
`provides a representation resulting from subtracting
`the prepared tooth data from the original tooth data.
`
`Wiedmann, Sachdeva, and Kopelman do not disclose
`or suggest providing both first and second 3D virtual
`models, much less that “the first and the second 3D
`virtual models are aligned” as also recited in claim 6.
`
`Patent Owner Response at pp. 56‐58; Exhibit 2001 at ¶¶97‐98.
`
`50
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`“Lehman and Seeger Fail to Cure the Above‐
`Described Deficiencies of Wiedmann and
`Sachdeva. (Grounds 2, 3, 6, 7)”
`
`Petitioner does not allege that Lehman and
`Seeger cure the above‐described deficiencies of
`Wiedmann, Sachdeva, and Kopelman.
`
`Petitioner relies on Lehman and Seeger for the
`mere purpose of purportedly addressing
`additional subject matter of certain dependent
`claims.
`
`Patent Owner Response at p. 60; Exhibit 2001 at ¶¶101‐102.
`
`51
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`•
`
`•
`
`•
`
`•
`
`Patent Owner’s Motion to Strike
`“The Board correctly determined that the Petition failed to provide any reason
`why a POSITA would have modified Wiedmann to arrive at the claimed limitation
`of ‘provid[ing] a 3D virtual model of at least part of an oral cavity of the patient.’”
`Patent Owner Motion to Strike at p. 1.
`
`“[T]he Board already rejected Petitioner’s first attempt at ‘gap‐filling’ the Petition
`by way of supplemental information.” Patent Owner Motion to Strike at p. 1.
`
`“In Section IV.D.3 of its Reply, Petitioner argues for the first time that ‘[t]here are
`many reasons a POSITA would have combined Wiedmann with Sachdeva’ to
`arrive at Element 1.5/29.4…. None of these rationales set forth in Section IV.D.3.
`of Petitioner’s Reply and Section VI.C. of Dr. Mundy’s Declaration were presented
`in the Petition.” Patent Owner Motion to Strike at p. 5.
`
`“Petitioner should have included the “additional” obviousness rationale in its
`Petition, but chose not to. Instead, the Petition was limited to an ‘all or nothing’
`approach that dispensed with providing a reason to modify Wiedmann to arrive
`at Element 1.5/29.4 because Petitioner was secure in its belief that the same
`Wiedmann disclosure satisfied both Element 1.5/29.4 and Element 1.10/29.9.”
`Patent Owner Motion to Strike at p. 5.
`
`52
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`•
`
`•
`
`•
`
`Patent Owner’s Motion to Exclude
`“Patent Owner objects to Section VI.C. of Exhibit 1023 [Second Dr. Mundy
`Declaration] based on Fed. R. Evid. 401, 402, and 403. Papers 28 and 36.” Patent Owner
`Reply in Support of Motion to Exclude at pp. 1‐2.
`
`“Motion to Exclude is the proper mechanism for excluding new expert testimony
`that is irrelevant.” Patent Owner Reply in Support of Motion to Exclude at p. 2.
`•