Demonstrative Exhibit - Not Evidence
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`1
`
`Align 2026
`3Shape v. Align
`IPR2019-00152
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`

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`>
`63.
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`Ex. 2019 ‘448 Aikens Declaration, ¶ 63, emphasis added
`es
`. _ .
`ee
`sath
`.
`64.
`I reviewed 3Shape’s petition andit is my opinion that it dramatically
`As explainedbelow, the engineering achievement of integrating this
`.
`.
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`.
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`type of optical system into a handheld device that can captureall three spatial
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`.
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`.
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`ee
`coordinates in a scanning operation(i.¢., an array of X-Y and Z) was novel and
`;
`nonobvious.
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`oversimplifies the technology, suggesting that confocal microscopy and
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`endoscopic imaging systemsare entirely modularand easily combinable. 3Shape
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`assumes that discrete components (e.g., lasers, lenses, mirrors, focusing elements,
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`polarizers) can be indiscriminately combinedwithout regard for howaparticular
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`Ex. 2019 ‘448 Aikens Declaration, 4] 63, emphasis added
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`systemis configured anddesignedto operate.
`
`OPTIC
`EXPANDER |
`GRATING OR
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`MICROLENS ~.3g
`ARRAY
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`
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`Novel and nonobviousoptical scanning systemsfor
`mappinghard to reach objects in three dimensions
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`Demonstrative Exhibit - Not Evidence
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`65.
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`[his basic disregard for the complexity ofoptical system design
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`permeates 3Shape’s obviousness case. In optical design, it is important to consider
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`whether a given system is designed to handle a single beam (Gmitro, Picard) or an
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`array of beams (Ishihara, Tiziani). For example. a multiple-beamsystemlike
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`Tiziani that uses a microlens array can be usedto determine X and Yspatial
`;
`.
`.
`;
`coordinates, while a single-beam systemlike Gmitro or Picard can only process
`H
`one beamat a time.
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`66.
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`It is also important to consider whetherthe optical system in
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`RELAY
`OPTICS
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`
`
`
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`MODULATION
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`‘| POLARIZER
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`
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`IMAGING |.
`OPTICS
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`OXY66
`
`4
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`\
`
`oF
`questionrelies on adjustmentof the focal plane orof the object (Ishihara, Tizian1)
`}
`Ex. 1001, ’448 patent, Fig. 1A
`‘448 Aikens Declaration, ¶¶ 64-66, emphasis added
`or whetherit relies on a fixed focal plane (Gmitro). or planes (Picard). Confocal
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`microscope systemsthat rely on precisely adjusting the focal plane or object stage
`;
`ee
`to determine object depth (Ishihara, Tiziani) will require a mechanismfor
`Demonstrative Exhibit - Not Evidence
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`performing andtracking the adjustment.
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`2
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`Ex. 1001, ’448 patent, Fig. 1A
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`‘448 Aikens Declaration, 9/{] 64-66, emphasis added
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`

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`IPR2019-00150, Ex. 1001, ’447 Patent, Claim 17
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`Demonstrative Exhibit - Not Evidence
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`3
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`IPR2019-00151, Ex. 1001, ’448 Patent, Claim 15
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`IPR2019-00151, Ex. 1001, ’448 Patent, Claim 23
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`Demonstrative Exhibit - Not Evidence
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`4
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`IPR2019-00152, Ex. 1001, ’901 Patent, Claim 1
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`IPR2019-00152, Ex. 1001, ’901 Patent, Claim 8
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`5
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`IPR2019-00152, Ex. 1001, ’901 Patent, Claim 15
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`6
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`7
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`• Align does not acquiesce to the validity or accuracy of
`any of the constructions proposed in the petitions
`• “[T]he statute envisions that a petitioner will seek an inter
`partes review of a particular kind—one guided by a petition
`describing ‘each claim challenged’ and ‘the grounds on which
`the challenge to each claim is based.’ § 312(a)(3).” SAS Inst., Inc.
`v. Iancu, 138 S. Ct. 1348, 1355 (2018) (emphasis added)
`• Under SAS and Section 312(a)(3), 3Shape must prevail, if at all,
`based on the contentions set forth in its petitions
`• Those unpatentability contentions are based solely on the
`deficient means-plus-functions constructions 3Shape proposed
`• 3Shape’s petitions do not set forth any unpatentability
`contentions under an alternative construction
`Demonstrative Exhibit - Not Evidence
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`8
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`

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`• 3Shape has failed to set forth the proper legal analysis and
`evidence required to establish that any claim should be
`construed under 35 U.S.C. § 112, para. 6. Williamson v. Citrix
`Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc).
`– IPR2019-00151, Paper 20, Patent Owner’s Response (’448 POR), pp. 7-8; IPR2019-00150, Paper 22, Patent Owner’s
`Response (’447 POR), pp. 7-8; IPR2019-00152, Paper 21, Patent Owner’s Response (’901 POR), pp. 7-8
`
`• 37 C.F.R. § 42.104(b)(3) requires that “the petition must set
`forth” how the challenged claims are to be construed and
`“[w]here the claim to be construed contains a means-plus-
`function or step-plus-function limitation … the construction of
`the claim must identify the specific portions of the specification
`that describe the structure, material, or acts corresponding to
`each claimed function.” (emphasis added).
`– IPR2019-00150, Paper 30, Patent Owner’s Sur-Reply (’447), pp. 6-7; IPR2019-00151, Paper 29, Patent Owner’s Sur-Reply
`(’448), pp. 6-7; IPR2019-00152, Paper 30, Patent Owner’s Sur-Reply (’901), pp. 6-7
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`Demonstrative Exhibit - Not Evidence
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`9
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`IPR2019-00151, ’448 Petition, p. 11, emphasis added
`See also IPR2019-00150,’447 Petition, p. 15; IPR2019-00152, ’901 Petition, pp. 11-12
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`Note: while the petition refers to the “ITC’s construction,” the Commission did not ultimately
`adopt or endorse these constructions because the investigation was subsequently vacated.
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`10
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`IPR2019-00150, -00151, and -00152, Ex. 1018, Markman Order, p. 56
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`11
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`IPR2019-00150, -00151, and -00152, Ex. 1018, Markman Order, p. 56
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`12
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`IPR2019-00150, -00151, and -00152, Ex. 1018, Markman Order, p. 57
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`13
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`’448 Petition, p. 12, emphasis added; See also ’901 Petition, p. 13.
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`14
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`• Like the ALJ’s construction, the constructions in the body of
`3Shape’s petitions do not include the “one or more” language
`– See also ’448 PO Sur-Reply, pp. 6-7; ’901 PO Sur-Reply, pp. 6-7
`
`’448 Petition, pp. 18 and 40, emphasis added; see also ’901 Petition, pp. 20-21, 43
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`15
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`• In its petitioner reply, 3Shape takes the position that:
`
`IPR2019-00151, Paper 25, Reply to Patent Owner Response (’448 Pet. Reply), p. 8, emphasis added;
`see also IPR2019-00152, Paper 26, Reply to Patent Owner Response (’901 Pet. Reply), p. 7
`
`• But Dr. Sergienko testified that no single structure can “generate
`a plurality of light beams” – multiple structures are needed
`
`Ex. 2012 (First Sergienko Deposition), 15:13-22
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`Ex. 2025 (Second Sergienko Deposition), 133:19-134:8
`Demonstrative Exhibit - Not Evidence
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`16
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`• 3Shape’s new theories are improper as not set forth in the
`petition in violation of 35 U.S.C. § 312(a)(3), 37 C.F.R. §
`42.104(b), and SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348 (2018)
`– See also ’448 PO Sur-Reply, pp. 1-2, 4-6; ’901 PO Sur-Reply, pp. 1-2, 4-6
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`’448 Pet. Reply, p. 3, emphasis added; see also ’901 Pet. Reply, p. 3
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`17
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`18
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`’447 PO Preliminary Response, p. 32, annotated; ‘448 PO Preliminary Response, p. 30; ‘901 PO Preliminary Response, p. 31
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`Demonstrative Exhibit - Not Evidence
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`19
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`’448 Petition, p. 19, emphasis added
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`’901 Petition, p. 21, emphasis added
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`’448 Petition, p. 40, emphasis added
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`’901 Petition, p. 44, emphasis added
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`Demonstrative Exhibit - Not Evidence
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`20
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`• Optics expander 34 (Figure 1A) or 156 (Figure 4)
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`‘448 Patent, 8:8-12, emphasis added; ‘901 Patent, 8:18-22
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`‘448, Sergienko Second Declaration, ¶ 11, emphasis added;
`see also ‘901, Sergienko Second Declaration, ¶ 11
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`Ex. 2025, Second Sergienko Deposition, 133:19-134:2,
`emphasis added
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`21
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`First Sergienko Deposition, 15:13-22, emphasis added
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`Second Sergienko Deposition, 135:1-22,
`emphasis added
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`Second Sergienko Deposition, 133:19-134:8,
`emphasis added
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`22
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`3Shape’s petitions do not contain anv mappina to the
`prior art for the structure of the “optics exoander 34”
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`90.
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`Critically absent from the petition (and Picard), however. are any
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`teachings correspondingto [1] the light emitters and diffraction or refraction
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`
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`optics, [4] the laser emitter 154A-C. and[5]theopticsexpander34,or any [6]
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`23
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`
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`constant.”).Yet,3ShapeandDr.Sergienkofailtomapanyportionofthecited
`Ex. 2019, ‘448 Aikens Declaration, ¶ 90, emphasis added;
`see also Ex. 2019, ‘901 Aikens Declaration, ¶ 90
`See also ’448 POR, pp. 12-13, emphasis added; see also ‘901 POR, p.
`12; ’448 PO Sur-Reply, p. 9, emphasis added; ’901 PO Sur-Reply, p. 9
`‘theirownconstruction. Therefore, the petition is deficient andfails to show where
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`equivalents thereof. The 448 patent explains that the optics expander 34 is used to
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`“improve the numerical aperture of the light beam”that is later preserved by the
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`*448 patent’s relay optics. EX1001. 5:35-37. 6:1-4. During his deposition, Dr.
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`Sergienko explained the significance of a beam’s numerical aperture. EX2012.
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`63:18-64:2 (“So they all come notparallel, there are some angles between them.
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`and you have to preserve those angles...””), 64:8-13 (“In principle, numerical
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`aperture defines the size of the focusing spot: that’s why you have to keep it
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`the cited references teach each element of the claim.
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`Ex. 2019, ‘448 Aikens Declaration, 4] 90, emphasis added;
`see also Ex. 2019, ‘901 Aikens Declaration, 4] 90
`See also’448 POR, pp. 12-13, emphasis added; see also ‘901 POR,p.
`12; ’448 PO Sur-Reply, p. 9, emphasis added; ’901 PO Sur-Reply, p. 9
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`23
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`24
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`’448 Petition, p. 13, emphasis added; see also ’447 Petition, p. 18; ’901 Petition, p. 14
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`25
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`’447 PO Preliminary Response, p. 32, annotated; ‘448 PO Preliminary Response, p. 30; ‘901 PO Preliminary Response, p. 31
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`26
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`’448 Petition, pp. 23-24, emphasis added;
`see also ’447 Petition, p. 29; ’901 Petition, p. 25
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`Demonstrative Exhibit - Not Evidence
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`27
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`• Dr. Sergienko confirmed that Picard’s lens 15 is what performs
`the function of focusing the plurality of incident light beams
`under 3Shape’s proposed construction of “optical system”
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`First Sergienko Deposition, 65:10-14, emphasis added
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`• Picard's lens 15 is not any of [1] a partially transparent mirror or
`beam splitter, [2] a confocal optics operating in telecentric
`mode, [3] relay optics, or [4] an endoscopic probing member
`• The structure that performs the function is not a structure
`identified in 3Shape's means-plus-function construction
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`Demonstrative Exhibit - Not Evidence
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`28
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`

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`• 3Shape’s new theory is untimely. 37 C.F.R. § 42.104(b)
`– ’448 PO Sur-Reply, pp. 10-11;’447 PO Sur-Reply, pp. 10-11; ’901 PO Sur-Reply, pp. 10-11
`• 3Shape’s petition and its declarant have affirmatively
`stated that Picard’s lens 15 is what performs the
`function. 3Shape’s new construction cannot be
`reconciled with the ground asserted in its petition
`• Structures that merely “aid” in performing the function
`are not corresponding structure unless they are
`integral to performing the claimed function
`– Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1363 (Fed. Cir.
`2004); Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1352 (Fed. Cir.
`2003); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003)
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`Demonstrative Exhibit - Not Evidence
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`29
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`

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`Second Sergienko Deposition, 148:10-21, emphasis added
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`Second Sergienko Deposition, 149:2-13, emphasis added
`***
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`Second Sergienko Deposition, 150:1-5, emphasis added
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`Demonstrative Exhibit - Not Evidence
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`30
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`

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`• 3Shape situates the alleged beam splitter (Picard's separator
`cube 11) upstream from Picard’s Nipkow disk or affixed mask
`
`‘448 Aikens Declaration, ¶¶ 102-103; ‘447 Aikens Declaration, ¶¶
`100-104; ‘901 Aikens Declaration, ¶¶ 101-105
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`See also ’448 POR, p. 22; ’447 POR, p. 21; ’901 POR, p. 22
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`31
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`Demonstrative Exhibit - Not Evidence
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`32
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`• In the context of obviousness, it is not sufficient for a POSITA to
`understand that two references could be combined
`– The relevant inquiry is whether “a skilled artisan … would have been motivated to make the
`combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v.
`Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis in original).
`• Picard exploits focal lengths that vary by wavelength and their
`associated magnification differences to calculate depth
`• Align’s arguments concern whether a POSITA would have sought
`to alter or eliminate this principle of operation to solve an
`alleged magnification problem that Picard does not have
`– ‘448 POR, pp. 27-48; ‘447 POR, pp. 25-47; ‘901 POR, 27-48
`• 3Shape and Dr. Sergienko attack a the strawman of whether a
`POSITA could incorporate telecentric optics into a chromatic
`confocal system, relying on Dobson as the “bridge”
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`33
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`• “Axial chromatism occurs when light having multiple colors passes through a
`lens …. This results in light with different colors focusing at different potions
`along the optical axis of the lens.” Ex. 2019, ‘448 Aikens Declaration, ¶ 70
`
`‘448 Aikens Declaration, ¶ 69 (annotating Figs. 3 and 8 of Picard, stating that it is
`Picard “objective lens 15 (shaded green) that has an ‘axial chromatism’”)
`
`Ex. 1036, Aikens Deposition, 104:11-21,
`emphasis added
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`Ex. 1036, Aikens Deposition, 118:5-11,
`emphasis added
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`Demonstrative Exhibit - Not Evidence
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`34
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`

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`• Picard does not suffer from any allegedly
`“undesirable magnification” associated with
`using light beams of different wavelengths
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`Ex. 1036, Aikens Deposition, 107:17-108:5,
`emphasis added
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`‘448 Aikens Decl., ¶¶ 108-109; ‘447 Aikens Decl., ¶¶ 107-108; ‘901 Aikens
`Decl., ¶¶ 108-109; ’448 POR , p. 27; ’447 POR, p. 26; ’901 POR, p. 27
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`Ex. 1036, Aikens Deposition, 108:18-109:3,
`emphasis added
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`35
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`‘448 Aikens Declaration, ¶¶ 113-114, emphasis added
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`Ex. 1036, Aikens Deposition, 112:13-16, emphasis added
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`Ex. 2012, First Sergienko Deposition, 85:17-86:10,
`emphasis added
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`Ex. 1036, Aikens Deposition, 113:16-20, emphasis added
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`Ex. 2025, Second Sergienko Deposition, 33:21-34:12,
`emphasis added
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`36
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`• Recognizing the flaws in its
`original combination, 3Shape
`now contends for the first time
`in its reply that its combination
`somehow preserves axial
`longitudinal chromatism
`• But that is not consistent with
`the petitions because they do
`not address how or why a
`POSITA would have modified
`Picard's system-specific
`equations or incorporated
`wavelength-to-depth encoding
`– ‘448 PO Sur-Reply, pp. 16-18; ‘447 PO Sur-Reply, pp.
`14-15; ‘901 PO Sur-Reply, pp. 16-18
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`Demonstrative Exhibit - Not Evidence
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`37
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`First Sergienko Deposition, 82:3-13, emphasis added
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`Second Sergienko Deposition, 53:12-18, emphasis added
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`

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`Dr. Sergienko admitted that it would be necessary
`to modify Picard’s system-specific equations
`
`emphasis added Demonstrative Exhibit - Not Evidence
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`Ex. 2025, Second Sergienko Deposition, 67:17-68:15,
`emphasis added
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`Ex. 2025, Second Sergienko Deposition, 72:8-73:5,
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`Ex. 2025, Second Sergienko Deposition, 72:8-73:5,
`Ex. 2025, Second Sergienko Deposition, 67:17-68:15,
`any device in the world. Alignment and calibration,
`emphasis added
`emphasis added
`and device is ready to work.
`
`ying is a violation of the
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`Demonstrative Exhibit - Not Evidence
`sic rules of optical design. That's what it would
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`38
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`• 3Shape’s new reliance on
`Dobson is not merely for
`what is "within the general
`knowledge of a skilled
`artisan." Koninklijke Philips
`N.V. v. Google LLC, 948 F.3d
`1330, 1338 (Fed. Cir. 2020)
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`Second Sergienko Deposition, 68:20-69:1, emphasis added
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`Ex. 2025, Second Sergienko Deposition, 74:13-75, emphasis added
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`Second Sergienko Deposition, 84:7-9, emphasis added
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`39
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`• 3Shape changes what device (or embodiment) of Picard it is
`relying on for each feature of each independent claims without
`providing any Graham or KSR analysis with respect to why or
`how to combine the various Picard devices/embodiments
`– See, e.g., In re Stepan Co., 868 F.3d 1342, 1346 (holding that a rationale to modify the
`embodiments or combine the embodiments of a single prior art reference is required)
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`’448 POR , pp. 24; see also ’447 POR, p. 23; ’901 POR, p. 24
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`40
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`• Dr. Sergienko admittedly
`did not even consider
`whether a POSITA would
`have combined different
`embodiments in Picard
`• It is not disputed that the
`petition and the supporting
`declaration lack any such
`analysis, rather 3Shape
`argues that it need not
`provide any reason for
`combining embodiments
`– ‘448 PO Sur-Reply, pp. 20-21; ‘447 PO Sur-Reply,
`pp. 18-19; ‘901 PO Sur-Reply, pp. 20-21
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`Ex. 2012, First Sergienko Deposition, 51:15-52:10,
`emphasis added
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`41
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`42
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`• “We agree that Petitioner has
`not provided sufficient
`explanation of how a person of
`ordinary skill in the art allegedly
`would have had a reasonable
`expectation of successfully using
`Gmitro's flexible fiber-optic
`bundle with an array of light
`beams, such as used in the
`systems of Tiziani and Ishihara.”
`
`‘448 Institution Decision, p. 36; see also ‘447 Institution Decision,
`pp. 34; ‘901 Institution Decision, pp. 36
`
`See also ‘448 Aikens Declaration, ¶¶ 160-180; ‘447 Aikens
`Declaration, ¶¶ 158-179; ‘901 Aikens Declaration, ¶¶ 160-181
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`43
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`• 3Shape cites to new Exhibits 1038, 1039, and Picard for
`the first time in an attempt to show how and why a
`POSITA would allegedly have combined the references
`– ‘448 PO Sur-Reply, pp. 21-22; ‘447 PO Sur-Reply, pp. 19-20; ‘901 PO Sur-Reply, pp. 21-22
`• It is improper to advance a new contentions at the
`reply stage, including those that rely on “previously
`unidentified portions of the prior-art reference to
`make a meaningfully distinct contention”
`– Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359,
`1367 (Fed. Cir. 2015) (explaining that doing so runs afoul of 35
`U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b))
`• 3Shape’s contentions remain flawed and deficient
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`Demonstrative Exhibit - Not Evidence
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`44
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`