Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: May 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ALIGN TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`_______________
`
`Case IPR2019-00117
`Patent 9,962,244 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 41.108
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: May 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ALIGN TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`_______________
`
`Case IPR2019-00117
`Patent 9,962,244 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 41.108
`
`
`
`
`
`
`Case IPR2019-00117
`Patent 9,962,244 B2
`
`
`Align Technology, Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 321–329 requesting an inter partes review of claims 1–5, 8–
`10, 12, 15, 16, 18, 21, 22, 24, 26, 28, and 29 of U.S. Patent No. 9,962,244
`B2, issued on May 8, 2018 (Ex. 1001, “the ’244 patent”). Paper 1 (“Pet.”).
`3Shape A/S (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`which requires demonstration of a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim, we deny
`Petitioner’s request and do not institute an inter partes review of any
`challenged claim.
`
`
`I. ANALYSIS
`Prior to filing this Petition for inter partes review, Petitioner filed a
`petition for post-grant review (“PGR”) challenging nearly1 the same claims
`of the ’244 patent based on nearly identical challenges.2 See PGR2018-
`00103, Paper 6 (“PGR2018-00103 Pet.”).3 Petitioner acknowledges that this
`petition for inter partes review presents “nearly identical arguments” as
`PGR2018-00103. Pet. 5–6. Petitioner further states that it “has purposely
`filed nearly identical prior art [g]rounds against the claims in the PGR[] and
`IPR[] knowing that one of the two types of proceedings must fail under the
`
`
`1 Petitioner challenged claim 7 in PGR2018-00103, but does not challenge
`that claim in this petition for inter partes review. Compare PGR2018-00103
`Pet. 1–4, with Pet. 3–4.
`2 Compare PGR2018-00103 Pet. 3–4, with Pet. 3–4.
`3 In PGR2018-00103, Petitioner filed an Original Petition, a Corrected
`Petition, and a Second Corrected Petition. We address Petitioner’s Second
`Corrected Petition in that proceeding.
`
`2
`
`
`
`Case IPR2019-00117
`Patent 9,962,244 B2
`
`law,” with the issues being identical except “which proceeding type is
`proper.” Id. at 6. In other words, Petitioner filed a nearly identical petition
`here so that the Board would still address Petitioner’s challenges even if the
`Board determines either at institution or during the trial that the ’244 patent
`is not eligible for PGR. Thus, Petitioner asks us to institute both types of
`proceedings with nearly identical challenges as to the claims at issue. Id.
`In PGR2018-00103, we determined Petitioner had sufficiently shown
`the ’244 patent is PGR eligible and that we would not exercise our discretion
`under § 325(d), but we nevertheless determined not to institute a post-grant
`review of any challenged claim. See PGR2018-00103, Paper 12, at 8–12,
`24–25 (“PGR2018-00103 Dec.”). In particular, applying the standard set
`forth in 35 U.S.C. § 324(a), which requires demonstrating that it is more
`likely than not that at least 1 of the claims challenged in the petition is
`unpatentable, we determined Petitioner failed to adequately show that the
`references in its asserted challenges, alone or in combination, teach “the data
`processing system also configured to derive surface color information for the
`block of said image sensor pixels from at least one of the 2D images used to
`derive the surface geometry information,” as recited in independent claim 1
`and similarly recited in independent claim 29. PGR2018-00103 Dec. 13–24;
`Ex. 1001, 19:48–52, 22:21–25.
`In this case, Petitioner’s analysis of that limitation is substantially
`similar to its analysis in PGR2018-00103. Compare PGR2018-00103 Pet.
`26–28, 58–59, 69–72, 76–78, with Pet. 15–17, 41, 51–54, 57–59. We have
`reviewed Petitioner’s evidence and argument in light of the different
`standard for institution of an inter partes review. 35 U.S.C. § 314(a) (We
`may not institute an inter partes review unless the information presented in
`
`3
`
`
`
`Case IPR2019-00117
`Patent 9,962,244 B2
`
`the petition and any response “shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”). Application of the different standard for
`institution of inter partes review, as compared to post-grant review, does not
`change our conclusions as to the merits of Petitioner’s substantive
`arguments. Accordingly, based on our review of the same arguments and
`evidence under the standard for institution of inter partes review, we
`determine that Petitioner has not demonstrated a reasonable likelihood that it
`would prevail with respect to at least one challenged claim for the same
`reasons we discussed in PGR2018-00103. See PGR2018-00103 Dec.
`Accordingly, we deny Petitioner’s request and do not institute an inter
`partes review of any challenged claim.
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims and
`no trial is instituted.
`
`
`
`
`
`
`4
`
`
`
`Case IPR2019-00117
`Patent 9,962,244 B2
`
`PETITIONER:
`
`Robert Greene Sterne
`Jason Eisenberg
`Salvador Bezos
`Trent Merrell
`George Howarah
`STERNE, KESSLER, GOLDSTEIN & FOX
`RSterne-ptab@sternekessler.com
`JasonE-ptab@sternekessler.com
`SBezos-ptab@sternekessler.com
`TMerrell-ptab@sternekessler.com
`GHowarah-ptab@sternekessler.com
`
`PATENT OWNER:
`
`Todd Walters
`Roger Lee
`Andrew Cheslock
`BUCHANAN INGERSOLL & ROONEY PC
`Todd.Walters@bipc.com
`Roger.Lee@bipc.com
`Andrew.Cheslock@bipc.com
`
`5
`
`
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