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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`
`EXOCAD GMBH and EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`__________________
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`____________________
`
`
`
`PETITIONERS’ DEMONSTRATIVES
`
`
`
`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 IPR2018‐00788
`U.S. Patent No. 9,336,336
`
`Petitioners’ Demonstratives
`
`1
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Patent‐in‐Suit
`
`(’336 patent, Ex. 1001.)
`
`2
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Patent‐in‐Suit (cont’d)
`
`(‘336 patent, Ex. 1001, claim 1.)
`
`3
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Overview – Patent Owner’s Arguments Related to
`Sachdeva
`
`• Sachdeva (anticipation)
`– “Morphable Model 102” is 3D, not 2D
`– The morphable face model and 3D tooth model do not “remain
`separate representations after being arranged”
`– No disclosure of “virtually cut[ting] at least 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 partly or wholly transparent
`– Dependent claims 6‐8 and 9
`• Sachdeva/Kopelman (obviousness)
`– It would not have been obvious to combine
`– Kopelman (also) does not disclose that the 2D image and 3D
`tooth model “remain separate representations after being
`arranged”
`• Other arguments in sur‐reply, but should be stricken
`
`4
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`
`
`Overview – Patent Owner’s Arguments Related to
`Wiedmann
`• Wiedmann/Sachdeva (obviousness)
`– The 2D image and 3D tooth model (again) do not “remain
`separate representations after being arranged”
`– No “virtual 3D space”
`– Not obvious to substitute post‐restoration model of patient’s
`oral cavity shown in Wiedmann with pre‐restoration model
`• See also Patent Owner’s Motion to Strike
`– To the extent Wiedmann does not disclose a “virtual 3D space,”
`not obvious to combine Wiedmann and Sachdeva
`– Dependent claims 6‐8
`
`5
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`
`
`Claim Construction – “remain separate representations
`after being arranged”
`• Patent Owner’s claim construction argument in sur‐reply
`should be stricken. (See Paper 32.)
`– Institution Decision (Paper 7) at 8‐9: “[W]e note that our construction
`does not place a temporal limitation on how long the 2D image and the
`3D virtual model remain separate. This is consistent with both the
`Specification (Ex. 1001, 3:25–37) and the claims (id. at 26:12–18, 28:28–
`34), neither of which recite a temporal limitation specifying a length of
`time. Accordingly, this construction does not preclude subsequent
`merging or fusing together of the separate data representations after
`alignment, provided the 2D image and the 3D model remain separate at
`least momentarily after having been ‘aligned.’”
`– Patent Owner did not contest this construction in its Response.
`– Petitioners noted this in their Reply. (See Petitioners’ Reply at 2.)
`– Pages 3‐4 of Patent Owner’s Sur‐reply thus should be stricken.
`– Patent Owner’s arguments are incorrect; even if there is some later
`option to merge, the user still has option to merge or not merge.
`6
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`
`
`Claim Construction – “remain separate representations
`after being arranged” (cont’d)
`• Otherwise no disagreement.
`•
`It means that the 2D image is a digital representation of an
`image that is stored in a two‐dimensional format (x, y
`coordinates only) and the 3D model being stored in 3D format
`(x, y and z coordinates).
`– The phrase “after being arranged” merely reiterates claim language
`and is no different than Petitioners’ proposal.
`• But no temporal limitation. (Paper 7 at 8‐9.)
`
`(See Paper 1 at 7‐10; Paper 23 at 6‐7;
`Reply at 2.)
`
`7
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Sachdeva
`
`(Ex. 1005.)
`
`8
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`
`
`Sachdeva
`
`Face image /
`model 102
`
`3D tooth
`model 104
`
`(Ex. 1005, Fig. 6.)
`
`9
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`
`
`Sachdeva
`
`(Ex. 1005, Fig. 7 and 14:33‐45; see also Paper 1 at 29‐30.)
`
`10
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`
`
`Sachdeva
`
`• The alignment may also be done by human interaction:
`
`(Ex. 1005 at 14:53‐63.)
`
`(See also Institution Decision at 16‐17; Paper 1 at 29; Paper 26 at 9‐10.)
`11
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`(Ex. 1005 at 15:8‐24.)
`
`
`
`Sachdeva
`
`• Figure 28 also illustrates 3D tooth model 116 superimposed
`over a 2D X‐ray 505 :
`
`(Ex. 1005, Fig. 28 and 28:59‐29:31; see also Paper 1 at 27‐28 & 30.)
`12
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`
`
`Sachdeva Discloses that the Morphable Face Model May Be 2D
`and Thus Meets the “2D Image” Limitation
`The “morphable model 102” in Sachdeva may be 2D (or 3D).
`
`•
`
`(Ex. 1005 at 5:60‐67.)
`
`(Ex. 1005 at 10:9‐10.)
`
`(Ex. 1005, Abstract.)
`
`(Ex. 1005 at 14:37.)
`(See also Paper 1 at 19; Paper 26 at 3‐4.)
`
`13
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`
`
`Sachdeva Discloses that the Morphable Face Model May Be 2D
`and Thus Meets the “2D Image” Limitation (cont’d)
`
`Shows 2D
`(Ex. 1005, Fig. 7.)
`(See also Paper 26 at 3‐4; Paper 1 at 19.)
`
`Shows 3D
`
`14
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`
`
`Sachdeva Discloses that the Morphable Face Model May Be 2D
`and Thus Meets the “2D Image” Limitation (cont’d)
`• Figure 8 has a similar indication:
`
`(Ex. 1005, Fig. 8.)
`In the context of Figure 8, Patent Owner’s expert testified:
`
`•
`
`(See also Paper 26 at 4.)
`
`(Ex. 1026 at 52:19‐53:16.)
`
`15
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`
`
`Sachdeva Discloses that the Morphable Face Model May Be 2D
`and Thus Meets the “2D Image” Limitation (cont’d)
`• Other Sachdeva patent (U.S. Patent No. 7,234,937) confirms this
`reading of Sachdeva:
`
`(Ex. 1013 at 11:33‐38.)
`
`(Ex. 1013, dependent claim 32.)
`
`(Ex. 1013, dependent claim 33.)
`• Dr. Mundy confirms a POSITA would read the similar Sachdeva
`patents consistently. See Ex. 1023 ¶16.
`(See Paper 1 at 19; Paper 26 at 4.)
`
`16
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`
`
`Sachdeva Discloses that the Morphable Face Model May Be 2D
`and Thus Meets the “2D Image” Limitation (cont’d)
`• Patent Owner merely relies on other examples in Sachdeva in which
`the morphable model 102 is 3D, ignoring that these are just
`examples:
`
`(Ex. 1005 at 10:60.)
`
`(Ex. 1005 at 7:29‐38.)
`
`(Ex. 1005 at 14:18‐20.)
`
`(See Paper 26 at 5.)
`
`17
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`
`
`Sachdeva Discloses that the Morphable Face Model May Be 2D
`and Thus Meets the “2D Image” Limitation (cont’d)
`• 2D morphable models are well known. Dr. Saber admitted this:
`
`•
`
`•
`
`(Ex. 1026 at 78:18‐79:6; see also Paper 26 at 5.)
`See also Lu (Ex. 1024) at 16, 20; Second Mundy Decl. (Ex. 1023) ¶14, ¶18;
`Paper 26 at 5.
`Sachdeva refers to “morphable model 102” at various times without
`characterizing it as 3D. Ex. 1005 at 10:9‐10; 14:37; Paper 1 at 19.
`
`18
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`EXHIBIT –
`NOT EVIDENCE
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`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation
`
`Face image /
`model 102
`
`3D tooth
`model 104
`
`•
`
`•
`
`(Ex. 1005, Fig. 6.)
`Ex. 1005 at 14:27‐32 (“allow the user to position the tooth model 104
`relative to the morphable model 102”); Paper 1 at 30.
`Id. at 25:28‐45 (“[t]he images can be combined or superimposed”); Paper
`19
`1 at 30.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`The alignment may also be done by human interaction:
`
`•
`
`(Ex. 1005 at 14:53‐63.)
`
`•
`
`(Ex. 1005 at 15:8‐24.)
`See also Institution Decision (Paper 7) at 16‐17 (“we note that Sacheva’s
`process provides for both automatic alignment of face and tooth models
`and also for interactive alignment …, which implies that the data sets are
`not merged or fused together, in at least some cases.”)
`20
`(See Paper 26 at 9‐10; Paper 1 at 29.)
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`• Ex. 1023 ¶28 (“the fact that the alignment may be performed, e.g.,
`by human interaction, which includes the user dragging the tooth
`model over to the morphable model to make them superimposed,
`is part of the description here that shows they are separate
`representations”); id. ¶21 (same); Paper 26 at 7.
`• Even if later the morphable model and tooth model were merged in
`a manner they are no longer separate, there is no temporal
`limitation on how long the representations remain separate. See
`Institution Decision (Paper 7) at 8; Paper 26 at 9‐10.
`– Patent Owner’s attempt to contest that construction for the first
`time in its sur‐reply is too late and should be stricken. Paper 32.
`• See also Ex. 1005, Fig. 67, 45:26‐34 (morphable model and tooth
`model shown separately); Paper 1 at 30; Paper 26 at 10.
`• See also Ex. 1005, at 9:40‐48 (ability to “toggle back and forth”
`between various views); Paper 1 at 30; Paper 26 at 10.
`21
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`
`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`
`• No statement in Sachdeva that the 2D image and 3D model
`are merged.
`• “A POSITA reading a reference disclosing superpositioning of
`an image and a model would not assume, unless being told so
`explicitly, that the image and model can no longer remain
`separate representations after being arranged/aligned. And
`thus absent such a statement in Sachdeva, a POSITA would
`assume the morphable model and tooth model can remain
`separate representations.” Ex. 1023 ¶20.
`
`(See Paper 26 at 6‐7; Paper 1 at 30‐31.)
`
`22
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`
`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`
`•
`
`• AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1366‐67 (Fed. Cir. 2019)
`(copying “independently of an access of the computer unit” met without
`statement that copying does not depend on such access);
`Sud‐Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1004‐05 (Fed. Cir.
`2009) (“uncoated” film limitation met where reference did not describe
`film as coated);
`Ex parte Cheng, 2007 WL 1343688, at *2‐3 (B.P.A.I. May 7, 2007) (
`“processing the data without sending the data from the host memory to
`an embedded memory” met where reference was “silent” on the issue);
`• Univ. of Southern California and Ampac Biotechnology, Inc. v. Depuy Spine,
`Inc., 2010 WL 4789627, at *9 (B.P.A.I. Nov. 23, 2010) (“un[‐pre‐]treated”
`met where reference did not say pre‐treatment required)
`
`•
`
`(See Paper 26 at 6‐7.)
`
`23
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`
`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`
`• The word “composite” does not support Patent Owner’s position.
`– “Composite” means “made up of distinct components.” Ex. 1025.
`– “Superimpose” means the morphable model and tooth model may
`remain separate:
`
`(Ex. 1005 at 25:42‐45.)
`
`(Ex. 1005 at 11:51‐56.)
`• Dr. Saber testified that “registration” means “they can still be separate
`representations.” Ex. 1026 at 116:12‐117:20.
`• ‘336 patent (Ex. 1001) at 18:1‐6 (“the method … enable(s) dental
`laboratories (labs) to superimpose a patient’s actual face and smile
`images ….”).
`– See also Ex. 1023 ¶¶ 22‐25.
`(See Paper 26 at 7‐8.)
`
`24
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`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`• The word “combined” also does not support Patent Owner’s
`position.
`
`(‘336 patent (Ex. 1001) at 11:15‐22.)
`(‘336 patent (Ex. 1001) at 9:49‐55.)
`– Ex. 1023 ¶26: “I also note that the word ‘combined’ in Sacheva also
`imposes no requirement that the morphable model and tooth model
`no longer remain separate representations after being aligned. A
`POSITA would not understand the word “combine” to have such a
`meaning, either.”
`• Dr. Saber relied on the words “composite” and “combined” to
`support his opinion. Ex. 2001 ¶¶ 68‐74.
`(See Paper 26 at 8.)
`
`25
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`
`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`• Patent Owner misreads Figure 28 disclosure:
`
`(Ex. 1005 at 28:65‐29:26.)
`(See Paper 26 at 9 n.9.)
`
`Occlusal plane 580 (line)
`is 2D; X‐ray 505 also 2D
`(Ex. 1005, Fig. 28.)
`26
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`
`
`Sachdeva Discloses the “Remain Separate Representations After
`Being Arranged” Limitation (cont’d)
`In Figure 43, not Figure 28, the occlusal plane is 3D:
`
`•
`
`(Ex. 1005, Fig. 43.)
`
`(See Paper 26 at 9 n.9.)
`
`27
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`
`
`Sachdeva Discloses the “Either Virtually Cutting … or Rendering
`… Partly or Wholly Transparent” Limitation
`• Figure 6 shows the teeth have been cut / rendered transparent;
`compare to Figure 22:
`
`(Ex. 1005, Fig. 6.)
`• Scaling (14:46‐52) does not change disclosure. See Ex. 1023 ¶35.
`(See Paper 26 at 11‐12; Paper 1 at 21‐22.)
`
`28
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`(Ex. 1005, Fig. 22)
`
`
`
`Sachdeva Discloses the “Either Virtually Cutting … or Rendering
`… Partly or Wholly Transparent” Limitation (cont’d)
`• See also:
`
`(Ex. 1005 at 15:25‐27.)
`
`(Ex. 1005 at 30:8‐12.)
`
`(Ex. 1005 at 44:35‐38.)
`
`(See Paper 26 at 12‐13; Paper 1 at 22‐23.)
`
`(Ex. 1005 at 38:61‐67.)
`
`29
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`
`
`Sachdeva Discloses the “Either Virtually Cutting … or Rendering
`… Partly or Wholly Transparent” Limitation (cont’d)
`• See also Fig. 9 (transparent X‐ray 116):
`
`(See Paper 26 at 14; Paper 1 at 22‐23.)
`
`(Ex. 1005, Fig. 9.)
`
`30
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`
`
`Sachdeva Anticipates Dependent Claims 6‐8
`
`•
`
`The claims:
`
`•
`
`(Ex. 1001, claims 6‐8.)
`“As a POSITA would understand, the functions of Sachdeva apply to any type of
`teeth for the 3D tooth models, including both prepared or unprepared. The
`superpositioning functions are the same, regardless of what type of teeth are in
`the 3D tooth model. And, without stating any limit on what type of teeth the
`tooth model may consist of, a POSITA would have understood that the 3D tooth
`model in Sachdeva can include any type of teeth, prepared and unprepared.” Ex.
`1023 ¶41.
`• Dr. Saber acknowledges Sachdeva functions the same way regardless of prepared
`or unprepared teeth. Ex. 1026 at 176:21‐179:7.
`(See Paper 26 at 14‐15; Paper 1 at 36‐37.)
`
`31
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`
`
`Sachdeva Anticipates Dependent Claim 9
`• The claim:
`
`• See above – citations for cutting / transparent limitation of claim 1.
`
`(See Paper 26 at 15; Paper 1 at 37‐38.)
`
`32
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`
`
`Sachdeva Combined with Kopelman
`
`• Alternatively, Sachdeva combined with Kopelman renders the
`claims obvious ….
`
`33
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`
`
`Sachdeva Combined with Kopelman (cont’d)
`
`Kopelman:
`
`(Ex. 1008.)
`
`34
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`
`
`Sachdeva Combined with Kopelman (cont’d)
`
`Kopelman, Figure 5:
`
`2D X‐ray Image
`
`3D Tooth Model
`
`(Ex. 1008, Fig. 5.)
`
`(See Paper 1 at 56.)
`
`35
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`
`
`Sachdeva Combined with Kopelman (cont’d)
`
`Kopelman, Figure 4:
`
`2D X‐ray Image
`
`3D Tooth Model
`
`(Ex. 1008, Fig. 4.)
`
`(See Paper 1 at 57.)
`
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`
`
`Sachdeva Combined with Kopelman (cont’d)
`
`•
`
`Reasons to Combine:
`Trivial and predictable modification / limited design choices:
`– “In my opinion, the use of a 2D face image in Kopelman, as opposed to a 3D morphable
`face model 102 (now assuming, again, for purposes of my alternative obviousness
`analysis that Sachdeva only discloses it being 3D), to align and visualize with the 3D
`tooth model, would have been a trivial and predictable modification, which a POSITA
`would have recognized. Given the use of a 3D tooth model, which is used in both
`references, there are a limited number of design choices for aligning and visualizing it
`with a representation of the patient’s face. The only two (or at most three) choices
`would have been : (1) aligning and visualizing a 3D face image/model (which could be
`created by using a 3D face scanner, or by converting a 2D face image to a planar 3D
`image, for example) with the 3D tooth model; or (2) aligning and visualizing a 2D face
`image/model with the 3D tooth model. Assuming now that Sachdeva only disclosed the
`first option, it would have been obvious to modify Sachdeva to include the second
`option. Perhaps one could say that a third design choice would 2D‐to‐2D – i.e., using a
`2D face image, converting the 3D tooth model to 2D, and aligning them 2D‐to‐2D.
`However, that option would not have been seriously considered as a desirable option
`because it would eliminate the ability to take advantage of the 3D viewing of the 3D
`tooth model visualized with the 2D face image. In any event, though, even if considered
`a third option, there were limited design options.” Ex. 1002 ¶575.
`(See Paper 1 at 79‐80.)
`
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`
`Sachdeva Combined with Kopelman (cont’d)
`
`•
`
`Reasons to Combine (cont’d):
`• Well known how to arrange and visualize a 2D image with a 3D model in a 3D
`space. Ex. 1002 ¶576; Paper 1 at 80.
`Substituting one technique (3D‐to‐3D) for another (2D‐to‐3D) to obtain a
`predictable result. Ex. 1002 ¶577; Paper 1 at 80.
`“[U]sers (e.g., dentists, dental lab clinicians, etc.) generally liked the ability to see a
`face representation together with a tooth model, in a superimposed alignment,
`including to properly design a dental restoration to fit the face and to visualize
`how the patient will look post‐treatment. Because this could be useful, these
`users would have wanted to have different options of viewing such a combination
`‐‐ e.g., both 2D‐3D or 3D‐3D….” Ex. 1002 ¶578; Paper 1 at 81.
`– Dr. Mundy spoke with Bob Steingart, expert in field who has years of experience
`speaking with users in the field. Ex. 1002 ¶578.
`The teachings of both Sachdeva and Kopelman themselves, which combine 2D
`images with 3D models. Ex. 1002 ¶579; Paper 1 at 81‐82.
`– Same field and same approach. Ex. 1002 ¶574; Paper 1 at 79.
`• A 3D face scanner is not always available, and 2D photos generally are. Ex. 1002
`¶578 & ¶580; Ex. 1023 ¶46; Paper 1 at 82‐83.
`
`•
`
`•
`
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`
`
`Sachdeva Combined with Kopelman (cont’d)
`
`Reasons to combine (cont’d):
`• Patent Owner ignores most of the above reasons.
`• Patent Owner argues “Sachdeva already discloses providing a 3D
`morphable model” and replacing it with a 2D image “would have
`defeated the purpose of converting the 2D color pictures into a 3D
`morphable model in the first place.” Paper 23 at 48‐49. However …
`– Sachdeva not limited to face data coming from 2D color pictures. 3D face
`model could come from single face scanner. Ex. 1005 at 10:11‐40. Obvious to
`substitute. Ex. 1023 ¶44.
`– The reasons to simplify Sachdeva by using just a 2D image, rather than
`converting multiple 2D images into 3D face model, still apply. Ex. 1023 ¶45.
`– Simplification is a common reason to combine. Leapfrog Enterprises, Inc. v.
`Fisher‐Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (finding “simplified
`operation” as a reason to combine references).
`
`(See Paper 26 at 16‐17.)
`
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`
`Sachdeva Combined with Kopelman (cont’d)
`
`“Remain Separate Representations After Being Arranged”:
`• Patent Owner’s argument is irrelevant if Sachdeva discloses this
`limitation.
`• Kopelman discloses it:
`– Ex. 1008 at 4:2‐8:
`
`– “[T]here is no indication that any of the superpositioning described and shown
`in Figures 2, 3A‐B and 5 of Kopelman, results in the 2D image and 3D model
`being visualized together such that they are not separate representations after
`being arranged.” Ex. 1002 ¶134 (cited back to at ¶485).
`– “[A] POSITA would not read a reference as disclosing a requirement that the
`representations are no longer separate after being arranged unless there were
`some explicit statement in the reference stating this…. A POSITA reading
`Kopelman would assume the representations could remain separate.” Ex.
`1023 ¶49.
`(See Paper 1 at 64; Paper 26 at 18.)
`
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`
`
`Sachdeva Combined with Kopelman (cont’d)
`
`“Remain Separate Representations After Being Arranged” (cont’d):
`• Patent Owner and Dr. Saber incorrectly rely on the word
`“combined” in Kopelman. See Paper 23 at 50‐51, citing Ex. 1008 at
`6:64‐67:
`
`– “Combined” does not mean the representations are merged such that
`they do not remain separate when superimposed, as (again)
`confirmed by use in ’336 patent:
`• ’336 patent (Ex. 1001) at 9:49‐55 (“combined view”).
`• ’336 patent (Ex. 1001) at 11:15‐22 (“combined in this way”).
`• Ex. 1023 ¶50.
`– The above quoted sentence discloses that time is saved by placing the
`cephalometric image on the mid palatial plane, not that merging
`them after doing so saves time. Ex. 1023 ¶51; Ex.1026, 253:20‐254:6.
`(See Paper 26 at 18‐19.)
`
`41
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Sachdeva Combined with Kopelman (cont’d)
`
`“Remain Separate Representations After Being Arranged” (cont’d):
`• Patent Owner’s new argument in its sur‐reply is also that there is no
`reason to modify Sachdeva in view of Kopelman to arrive at this
`limitation. See Paper 31, Section II(C) (pp. 20‐21.)
`– This argument is new. It should be stricken. Petitioners have never
`had an opportunity to address it. See Paper 32.
`– The argument is irrelevant because Sachdeva discloses the limitation,
`as discussed above.
`– The argument is irrelevant because Kopelman discloses the limitation,
`as discussed above.
`– Some of the reasons to combine would be the same.
`
`42
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann
`
`(Ex. 1007.)
`
`43
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann
`
`(Ex. 1007, Figs. 1, 5, 6, 7, 8, 9, 10.)
`
`44
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann
`
`(Ex. 1007, Fig. 11.)
`
`45
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`•
`
`Wiedmann Combined with Sachdeva – “Remain Separate
`Representations After Being Arranged”
`Ex. 1002 ¶336: “Wiedmann shows that the 2D image and 3D model remain
`separate representations after being arranged. There is no statement that
`they are combined in a manner that they cannot be separated. Rather, they
`are aligned together, but remain separate representations. Ex. 1007. The 3D
`model of the teeth moving across the 2D image of the patient’s face in
`Wiedmann further demonstrates that they are separate. Figs. 7‐10. Similarly,
`Figure 11 shows they are separate after being arranged[.]” See also Paper 1 at
`30‐31.
`Ex. 1023 ¶59: “Again, as with Sachdeva and Kopelman, I note that a POSITA
`would not read a reference disclosing superpositioning of images and models
`as including a requirement that they no longer remain separate
`representations after being aligned, absent a specific statement stating as
`much in the reference. Wiedmann contains no such explicit statement, and
`thus would not be read to require the 2D image and 3D model do not remain
`separate representations after being arranged.” See also Paper 26 at 20.
`• Paper 7 at 30 (citing Ex. 1007, Fig. 9): “This ability to resize the 3D model
`relative to the 2D image demonstrates that the respective data sets for the 2D
`image and the 3D model are independent.” See also Paper 26 at 20.
`46
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`•
`
`
`
`Wiedmann Combined with Sachdeva – “Remain Separate
`Representations After Being Arranged” (cont’d)
`• Patent Owner argues that the word “insert” (“eingeblendet”/
`“eingeschoben”) means they are not separate representations:
`
`(Ex. 1007 at 22, 1st column.)
`– That is not the meaning of “insert.” See Ex. 1023 ¶60.
`– There is no “insert” icon and even if there were, at least some period
`of time in which they are aligned before such a icon was clicked. See
`Ex. 1023 ¶61.
`• Patent Owner fails to address the resizing in Fig. 9 and the
`movement of the 3D model over the 2D image in Figs. 8‐10.
`– Not even addressed by Patent Owner in sur‐reply.
`
`(See Paper 26 at 20.)
`
`47
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – “Virtual 3D Space”
`
`•
`
`Figure 9:
`
`(Ex. 1007, Fig. 9)
`
`•
`•
`
`“Optimum/right tooth shape”. See Paper 26 at 22; Paper 7 at 29‐30.
`“A POSITA reading Wiedmann would understand that the sizing handles
`(blue dots) in Figure 9 of Wiedmann disclose movement in the depth
`direction (resizing/scaling the restoration in height, width and depth)
`because one would not be able to resize the tooth shape correctly
`(including depth) otherwise….” Ex. 1023 ¶56; see also Paper 26 at 22.
`• Also individual tooth rotation: “[i]n this 3D animation, each tooth can be
`selected individually with the mouse and its position can be individually
`changed by the practitioner.” Ex.1007 at 0006; see also Paper 26 at 22.
`48
`DEMONSTRATIVE EXHIBIT –
`– See also Fig. 5 and Fig. 6 – rotation. See Paper 1 at 33.
`NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – “Virtual 3D Space”
`(cont’d)
`• Also, “virtual 3D space” does even not require that the 3D model
`must be moved in the depth direction (e.g., translated back/forth or
`scaled as to all of height, width and depth).
`– Claim language: one of “scaling, translating, or rotating”. Ex. 1001 at
`26:22‐25; see also id. at 11:49‐52; id. at 11:52‐55; Ex. 1023 ¶57.
`
`(See Paper 26 at 21‐23; see also Paper 1 at 33 & 48; Ex. 1002 ¶¶323‐24 & ¶448.)
`
`49
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – “Virtual 3D Space”
`(cont’d)
`Even if no “virtual 3D space” in Wiedmann,
`obvious to combine with Sachdeva
`• Reasons to combine:
`– Same field, same approach. Ex. 1002 ¶449.
`• Patent Owner does not contest.
`– Trivial design choice, with limited design options. Id. ¶450.
`• Patent Owner does not contest. Only argues it is conclusory.
`– Well known how to arrange and visualize 2D image with 3D model.
`Id.; see also id. ¶¶1‐14.
`• Patent Owner does not contest. Only argues it is conclusory.
`• No contrary testimony from Patent Owner’s expert.
`– Substituting one technique for another. Id. ¶451.
`• Patent Owner does not contest. Only argues it is conclusory.
`
`(See Paper 1 at 48‐50; Paper 26 at 24‐26.)
`
`50
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – “Virtual 3D Space”
`(cont’d)
`Even if no “virtual 3D space” in Wiedmann,
`obvious to combine with Sachdeva (cont’d)
`• Reasons to combine (cont’d):
`– Suggestion/motivation to combine found in Wiedmann – showing 3D
`model visualized with 2D image, and no reason to change 3D model to
`2D. Id. ¶452.
`• Patent Owner does not contest. Only argues it is conclusory.
`– Suggestion/motivation to combine found in Sachdeva – concept of
`superimposing 2D images and 3D models for design purposes shown.
`Id. ¶453.
`• Patent Owner does not contest what Sachdeva discloses, but argues
`Sachdeva must mention something about a 2D space and 3D space to
`provide a reason to combine. Response at 27.
`• Sachdeva need not disclose what is allegedly already in Wiedmann (2D
`space).
`(See Paper 1 at 50‐51; Paper 26 at 24‐26.)
`
`51
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – “Virtual 3D Space”
`(cont’d)
`Even if no “virtual 3D space” in Wiedmann,
`obvious to combine with Sachdeva (cont’d)
`• Patent Owner argues that a POSITA would not have combined
`Wiedmann with Sachdeva because Wiedmann already allows a user
`to preview treatment. Resp. at 24.
`• Patent Owner is wrong:
`– Variations of previewing treatment are not nonobvious.
`– POSITA looks to improve preview and calculation of optimum tooth
`shape, and using 3D space is an improvement. Ex. 1023 ¶71; Ex. 1002
`¶452.
`
`(See Paper 26 at 24‐25.)
`
`52
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – Obvious to Substitute
`Post‐Restoration Model with Pre‐Restoration Model
`• Petitioners are assuming the Board’s construction of “oral cavity of
`patient” applies; doing so streamlines the IPR.
`• Reasons to substitute / combine with Sachdeva:
`– No change in operation of Wiedmann. Ex. 1023 ¶64.
`• Patent Owner does not contest. See PO Sur‐reply at 23‐24.
`– Same field and same approach. Ex. 1023 ¶65.
`• Patent Owner does not contest. See PO Sur‐reply at 23‐24.
`– Limited design options for 3D tooth model – post‐restoration or pre‐
`restoration. Ex. 1023 ¶66.
`• Patent Owner does not contest. See PO Sur‐reply at 23‐24.
`– Pre‐restoration model is useful if less than all teeth are being replaced.
`Ex. 1023 ¶67.
`• Patent Owner does not contest. Only argues that Dr. Mundy’s
`analysis is “conclusory,” without explanation. See PO Sur‐reply at
`23‐24.
`(See Paper 26 at 23‐24.)
`
`53
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – Obvious to Substitute
`Post‐Restoration Model with Pre‐Restoration Model (cont’d)
`• Reasons to combine (cont’d):
`– Users desire many possible viewing options. Ex. 1023 ¶68.
`• Patent Owner does not contest the fact. Instead, Patent Owner
`argues (its only argument) that this is not a reason to combine
`because the selection of a post‐restoration 3D model of what the
`replacement teeth will be is “essential to the intended purpose
`and principle of Wiedmann.” PO Sur‐reply at 23.
`• Patent Owner is wrong.
`– Conclusory.
`– No explanation offered as to why user cannot also see
`replacement teeth.
`
`(See Paper 26 at 24.)
`
`54
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Wiedmann Combined with Sachdeva – Claims 6‐8
`• Petitioners explained why Wiedmann combined with Sachdeva
`renders claims 6‐8 obvious. See Paper 1 at 36‐37.
`• Patent Owner does not address. See PO Resp. (Paper 23).
`
`(See Paper 26 at 26.)
`
`55
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claims 6‐8 – Obviousness Based on Combining with MacDougald
`(Grounds 4 and 8)
`• To the extent not anticipated by Sachdeva, obvious based on
`Sachdeva/Kopelman, or obvious based on Wiedmann/Sachdeva,
`claims 6‐8 are nonetheless obvious if combined with MacDougald.
`• MacDougald shows that it was well known to use models of teeth both
`in prepared and unprepared states and to compare them. See Mundy
`Decl., Ex. 1002 ¶¶463‐64 & ¶¶589‐91.
`
`Unprepared
`
`Prepared
`
`Comparison
`
`(Ex. 1009, Figs. 1‐2; see also 1:56‐65 & 2:32‐
`3:34; Paper 1 at 53‐55 & 84; Paper 26 at 26‐28.)
`
`56
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claims 6‐8 – Obviousness Based on Combining with MacDougald
`(Grounds 4 and 8) (cont’d)
`• That MacDougald shows “subtracting” is irrelevant; models are still
`registered and thus able to be aligned, otherwise the subtracting
`would not work correctly. See Ex. 1023 ¶75.
`– Patent Owner does not contest in sur‐reply. See Paper 31.
`In any event, alignment is already shown in Sachdeva, Kopelman
`and Wiedmann and thus unnecessary to the obviousness analysis.
`See id.
`– Patent Owner does not contest in sur‐reply. See Paper 31.
`
`•
`
`(See Paper 26 at 27.)
`
`57
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONERS’
`
`DEMONSTRATIVES was served on counsel of record by filing these documents
`
`through the E2E as well as delivering a copy via e-mail to the counsel of record for
`
`Patent Owner at the following address:
`
`
`
`Todd R. Walters, Esq.
`Roger H. Lee, Esq.
`Mythili Markowski, Ph.D., Esq.
`Buchanan, Ingersoll & Rooney PC
`Post Office Box 1404
`Alexandria, VA 22313-1404
`todd.walters@bipc.com
`roger.lee@bipc.com
`mythili.markowski@bipc.com
`
`Dated: June 20, 2019
`
`
`
`
`
`
`
`
` Respectfully submitted,
`
`/Matthew B. Lowrie/
`Matthew B. Lowrie (Reg. No. 38,228)
`Christopher J. McKenna (Reg. No. 53,302)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Boston, MA 02199
`Telephone: (617) 342-4000
`Fax: (617) 342-4001
`mlowrie@foley.com
`cmckenna@foley.com
`
`Attorneys for Petitioner
`exocad GmbH and exocad America, Inc.
`
`
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