Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 8
`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 IPR2019-00118
`Patent 9,962,244 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`BRANCH, 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 8
`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 IPR2019-00118
`Patent 9,962,244 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 41.108
`
`
`
`
`
`
`Case IPR2019-00118
`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 31, 32,
`and 34 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 the same claims of the
`’244 patent based on nearly identical challenges. See PGR2018-00104,
`Paper 2 (“PGR2018-00104 Pet.”). Petitioner acknowledges that this petition
`for inter partes review presents “nearly identical arguments” as PGR2018-
`00104. Pet. 4. 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 law,”
`with the issues being identical except “which proceeding type is proper.” Id.
`at 5. 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.
`
`2
`
`
`
`Case IPR2019-00118
`Patent 9,962,244 B2
`
`
`In PGR2018-00104, we determined Petitioner had sufficiently shown
`the ’244 patent is PGR eligible and that we would not exercise our discretion
`to deny review under § 325(d), but we nevertheless determined not to
`institute a post grant review of any challenged claim. See PGR2018-00104,
`Paper 8, at 9–13, 24 (“PGR2018-00104 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 claims
`31, 32, and 34. PGR2018-00104 Dec. 13–23; Ex. 1001, 22:58–62, 23:20–
`24, 24:13–17.
`In this case, Petitioner’s analysis of that limitation is substantially
`similar to its analysis in PGR2018-00104. Compare PGR2018-00104 Pet.
`26–28, 33, 37, 60–62, 65, and 68, with Pet. 19–21, 25, 29, 50–51, 54, and
`57. 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 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
`
`3
`
`
`
`Case IPR2019-00118
`Patent 9,962,244 B2
`
`evidence under the standard for institution of inter partes reviews, 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 PGR2018-00104. See PGR2018-00104 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 IPR2019-00118
`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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