Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: May 13, 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 PGR2018-00103
`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 Post-Grant Review
`35 U.S.C. § 324 and 37 C.F.R. § 41.208
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: May 13, 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 PGR2018-00103
`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 Post-Grant Review
`35 U.S.C. § 324 and 37 C.F.R. § 41.208
`
`
`
`
`
`
`Case PGR2018-00103
`Patent 9,962,244 B2
`
`
`Align Technology, Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 321–329 requesting a post-grant review of claims 1–5, 7–10,
`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 6 (“Pet.”).1
`3Shape A/S (“Patent Owner”) filed a Preliminary Response. Paper 10
`(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 324(a),
`which requires demonstration that it is more likely than not that at least 1 of
`the claims challenged in the petition is unpatentable, we deny Petitioner’s
`request and do not institute a post-grant review of any challenged claim.
`
`
`I. BACKGROUND
` The ’244 Patent (Ex. 1001)
`
`The ’244 patent, titled “Focus Scanning Apparatus Recording Color,”
`issued on May 8, 2018. Ex. 1001, at [45], [54]. The ’244 patent describes a
`scanning system and method to generate a digital three-dimensional (3D)
`representation of an object that has been scanned. Id. at 1:6–9, 2:5–13. The
`scanning system generates the digital 3D representation based on surface
`geometry and surface color derived from a series of captured two-
`dimensional (2D) images of the object. Id. at 1:64–2:13. Figure 1 of the
`’244 patent illustrates an exemplary scanner system and associated
`components and is reproduced below.
`
`
`1 Petitioner filed an Original Petition (Paper 2), a Corrected Petition (Paper
`3), and a Second Corrected Petition (Paper 6). We address Petitioner’s
`Second Corrected Petition.
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`Figure 1 depicts a handheld embodiment of a scanner used to perform
`intraoral scanning. Ex. 1001, 15:63–64.
`As shown in Figure 1, the scanner system includes a multichromatic
`light source 101, which can be a multi-die LED with green, red, and blue
`dies. Id. at 15:63–66, 16:36–37. The light from the light source travels
`through optical system 150 and illuminates the object to be scanned 200,
`e.g., a tooth. Id. at 16:4–6, 17:65–66. Color image sensor 180 and
`associated image sensor 181 capture a 2D image of the illuminated object
`200. Id. at 16:1–9. The image sensor comprises pixels, which capture the
`images. See id. at 16:52–56. The system captures additional 2D images of
`the object 200 at different focal imaging planes by shifting a focusing
`element 151, e.g., a lens, back and forth, thereby capturing a series of 2D
`images of the object 200 at each focal plane position. Id. at 16:14–18, 18:4–
`7, 65–67; see id. at Fig. 6A.
`Using one or more of the captured 2D images, the system derives both
`surface geometry information and surface color information for a block of
`image sensor pixels. Id. at 16:52–56, 18:8–10. To determine surface
`geometry information, first, a correlation measure is determined using 2D
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`images in the series of 2D images; based on those correlation measures, a
`correlation measure function is determined. Id. at 18:24–26, 33–37, 19:6–
`11; see id. at Fig. 6B. That correlation measure function has a maximum.
`Id. at 19:8–11; see id. at Fig. 6B. That maximum is then used to derive
`surface geometry information. Id. at 19:12–15. Accordingly, because the
`correlation measure function maximum is based on 2D images in the series
`of 2D images, the derived surface geometry information is based on 2D
`images in the series of 2D images.
`Further, surface color information for the block of pixels is derived
`from the same 2D images from which surface geometry information was
`derived. Id. at 2:48–59, 19:37–29; see id. at Fig. 6C. In particular, surface
`color information is derived from the same 2D images that were previously
`used to determine the correlation measure function maximum for deriving
`surface geometry information. Id. at 18:41–47. For example, the color
`values of two 2D images which previously were used to determine the
`correlation measure function maximum are averaged to determine surface
`color information for the block of pixels. Id. at 19:21–29; see id. Figs. 6A–
`6C.
`
`The derived surface geometry information and derived surface color
`information are used to generate sub-scans, i.e., portions of the digital 3D
`model. Id. at 18:8–15. Those sub-scans are combined to generate a digital
`3D representation of the object. Id. at 10:45–50, 18:16–20.
`
` Illustrative Claims
`
`Of the challenged claims, claims 1 and 29 are independent claims and
`are reproduced below.
`
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`
`1. A focus scanner for recording surface geometry and
`surface color of an object, the focus scanner comprising:
`a multichromatic light source configured for providing a
`multichromatic probe light for illumination of the object,
`a color image sensor comprising an array of image sensor
`pixels for capturing one or more 2D images of light received
`from said object,
`wherein the focus scanner is configured to operate by
`translating a focus plane along an optical axis of the focus
`scanner and capturing a series of the 2D images, each 2D image
`of the series is at a different focus plane position such that the
`series of captured 2D images forms a stack of 2D images; and
`a data processing system configured to derive surface
`geometry information for a block of said image sensor pixels
`from the 2D images in the stack of 2D images captured by said
`color image sensor, 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;
`wherein the data processing system further is configured
`to combining a number of sub-scans to generate a digital 3D
`representation of the object, and determining object color of a
`least one point of the generated digital 3D representation of the
`object from sub-scan color of the sub-scans combined to generate
`the digital 3D representation, such that the digital 3D
`representation expresses both geometry and color profile of the
`object, and
`the object color comprises
`wherein determining
`computing a weighted average of sub-scan color values derived
`for corresponding points in overlapping sub-scans at that point
`of the object surface.
`
`29. A focus scanner for recording surface geometry and
`surface color of an object, the focus scanner comprising:
`a multichromatic light source configured for providing a
`multichromatic probe light for illumination of the object,
`
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`
`a color image sensor comprising an array of image sensor
`pixels for capturing one or more 2D images of light received
`from said object,
`wherein the focus scanner is configured to operate by
`translating a focus plane along an optical axis of the focus
`scanner and capturing a series of the 2D images, each 2D image
`of the series is at a different focus plane position such that the
`series of captured 2D images forms a stack of 2D images; and
`a data processing system configured to derive surface
`geometry information for a block of said image sensor pixels
`from the 2D images in the stack of 2D images captured by said
`color image sensor, 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, and
`where the data processing system further is configured to
`detecting saturated pixels in the captured 2D images and for
`mitigating or removing the error in the derived surface color
`information or the sub-scan color caused by the pixel saturation.
`
` Related Proceedings
`
`Petitioner identifies a related litigation in the District of Delaware
`involving the ʼ244 patent, titled 3Shape A/S v. Align Technology, Inc., Case
`No. 1-18-cv-00697 (DED), filed May 8, 2018. Pet. 96. Additionally,
`Petitioner and Patent Owner identify one other post-grant review and two
`additional inter partes reviews filed by the Petitioner regarding the ’244
`patent: PGR2018-00104, IPR2019-00117, and IPR2019-00118. Id. at 5–6,
`96; Prelim. Resp. 48.
`
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`
` References
`
`Petitioner relies on the following references:
`1. “Fisker” (US 2012/0092461 A1; published Apr. 19, 2012) (Ex.
`1005);
`2. “Szeliski” (US Pat. No. 6,097,854; issued Aug. 1, 2000) (Ex.
`1006);
`3. “Matsumoto” (US Pat. No. 7,106,348 B2; issued Sept. 12, 2006)
`(Ex. 1007);
`4. “Yamada” (US 2007/0035641 A1; published Feb. 15, 2007) (Ex.
`1008);
`5. “Suzuki” (US 2013/0070128 A1; published Mar. 21, 2013) (Ex.
`1009);
`6. “Thiel ’425” (US2012/0075425A1; published Mar. 29, 2012) (Ex.
`1012); and
`7. “Thiel ’576” (US 2011/0080576 A1; published Apr. 7, 2011) (Ex.
`1013).
` Grounds Asserted
`
`Petitioner challenges the patentability of the claims at issue on the
`following grounds:
` References
`Fisker and Szeliski
`
`Basis
`35 U.S.C. § 103
`
`Claim(s)
`1–5, 7–10, 15, 16, 18,
`21–22, 24, 26, and 28
`1–5, 7–10, 15, 16, 18,
`21–22, 24, 26, and 28
`29
`29
`12
`12
`12
`
`Fisker and Matsumoto
`
`35 U.S.C. § 103
`
`Fisker and Yamada
`Fisker and Suzuki
`Fisker, Szeliski, and Yamada
`Fisker, Szeliski, and Suzuki
`Fisker, Matsumoto, and
`Yamada
`
`35 U.S.C. § 103
`35 U.S.C. § 103
`35 U.S.C. § 103
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`7
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`
`35 U.S.C. § 103
`
`12
`
`35 U.S.C. § 103
`
`1, 22, and 24
`
`35 U.S.C. § 103
`
`1, 22, and 24
`
`Fisker, Matsumoto, and
`Suzuki
`Thiel ’425, Thiel ’576, and
`Szeliski
`Thiel ’425, Thiel ’576, and
`Matsumoto
`Thiel ’425, Thiel ’576,
`Szeliski, and Fisker
`Thiel ’425, Thiel ’576,
`Matsumoto, and Fisker
`Thiel ’425, Thiel ’576, and
`Yamada
`Thiel ’425, Thiel ’576, and
`Suzuki
`
`Petitioner also relies on expert testimony from Dr. Chandra Bajaj
`(Ex. 1003, “Bajaj Decl.”).
`
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`2–5, 7–10, 15, 16, 18,
`21, 26, and 28
`2–5, 7–10, 15, 16, 18,
`21, 26, and 28
`29
`
`35 U.S.C. § 103
`
`29
`
`II. ANALYSIS
` Discretionary Denial
`1. Post-Grant Review Eligibility
`Petitioner contends that, in order to challenge the ’244 patent,
`Petitioner is required to file a post-grant review (“PGR”). Pet. 5–6.
`Specifically, Petitioner argues that the provisional application to which the
`’244 patent claims priority (Ex. 1029) “has no written description support
`for at least claims 19, 25, and 32” and so, “the earliest effective priority date
`for at least these claims is post-March 2013, requiring Petitioner to file a
`PGR.” Id. at 6.
`We determine Petitioner has sufficiently shown for purposes of this
`decision that the ’244 patent is eligible for post-grant review. The ’244
`patent issued on May 8, 2018. Ex. 1001, at [45]. The Petition in this PGR
`
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`was accorded a filing date of October 30, 2018 (i.e., less than nine months
`after the patent issued). Whether a petition for PGR or a petition for inter
`partes review is the appropriate vehicle to challenge claims of the ’244
`patent less than nine months after issuance depends on whether the ’244
`patent is a patent described in § 3(n)(1) of the AIA.2 Section 3(n)(1)
`provides the first-inventor-to-file provisions of the AIA “shall apply to any
`application for patent, and any patent issuing thereon, that contains or
`contained at any time—(A) a claim to a claimed invention that has an
`effective filing date in Section 100(i) of title 35, United States Code, that is
`on or after the effective date described in this paragraph.” AIA § 3(n)(1),
`125 Stat. at 293. The AIA passed on September 16, 2011. See 125 Stat.
`284. The effective date under § 3(n)(1) is 18 months after the date of
`passage—i.e., March 16, 2013. Thus, we evaluate whether Petitioner has
`adequately shown a claim of the ’244 patent has an effective filing date on
`or after March 16, 2013.
`The ’244 patent claims priority to a provisional application that was
`filed on February 13, 2013. Ex. 1001, at [60]. Petitioner contends that at
`least claims 19, 25, and 32 of the ’244 patent lack written description
`support in that provisional, and thus do not have an effective filing date prior
`to March 16, 2013. Pet. 17–21. Petitioner’s contentions are supported by
`the testimony of Dr. Bajaj. Ex. 1003 ¶¶ 66–74. We have reviewed
`Petitioner’s contentions as supported by Dr. Bajaj’s testimony, and we find
`Petitioner has adequately shown on the current record that claims 19, 25, and
`32 of the ’244 patent have an effective filing date after March 16, 2013.
`
`2 Leahy–Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”).
`
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`Thus, we find Petitioner has adequately shown the ’244 patent is a PGR-
`eligible patent.
`Patent Owner does not address Petitioner’s contentions as to the
`effective filing date of claims 19, 25, and 32. See Prelim, Resp. 48–49, 53–
`54. Instead, Patent Owner argues the Board should not institute this post-
`grant review “because doing so would be judicially inefficient, particularly
`in light of Petitioner’s admission that the prior art issues in the”
`corresponding inter partes review (i.e., IPR2019-00117) are “virtually
`identical.” Prelim. Resp. 48. Patent Owner further argues “allowing
`petitioners to file PGR and IPR petitions taking equivocating positions
`concerning PGR eligibility unfairly places the burden of adjudicating such
`additional proceedings upon the Patent Office and patent owners.” Id. at 49.
`Patent Owner also argues “the Patent Office has already determined that the
`’244 Patent is subject to pre-AIA law and, as such, the ’244 patent is not
`eligible for post-grant review,” and thus we should find the ’244 patent not
`PGR eligible as part of exercising our discretion under 35 U.S.C. § 325(d).
`Id. at 53–54.
`We are not persuaded that Petitioner’s filing of a nearly identical inter
`partes review means we should find the challenged patent is not PGR
`eligible. Petitioner does not take equivocating positions but rather contends
`the ’244 patent is PGR eligible. Pet. 6. Petitioner contends it filed a nearly
`identical inter partes review corresponding to this PGR because Patent
`Owner “may be able to provide [evidence] during trial that might dissuade
`the Board from holding the ’244 patent is PGR eligible.” Id. We find
`Petitioner’s explanation sufficient.
`
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`We are also not persuaded that we should exercise our discretion
`under 35 U.S.C. § 325(d) to deny institution of this PGR because “the Patent
`Office has already determined that the ’244 Patent is subject to pre-AIA law
`and, as such, the ’244 patent is not eligible for post-grant review.” Prelim.
`Resp. 53–54. During the prosecution of the application leading to the ’244
`patent, the examiner stated “[t]he present application is being examined
`under the pre-AIA first to invent provisions.” Ex. 1002, 870 (July 17, 2017
`Non-Final Office Action). In making this statement, the examiner did not
`provide reasoning or further analysis, and that issue was not further
`discussed by either the examiner or the applicant during prosecution. See
`Ex. 1002.
`We determine not to exercise our discretion under 35 U.S.C. § 325(d)
`to deny institution of this PGR on this basis. In making this determination,
`we have considered the non-binding Board decisions that Patent Owner cites
`in support of our exercising discretion (Prelim. Resp. 54). Although we
`agree with Patent Owner that an examiner’s determination to examine an
`application under the pre-AIA first-to-invent provisions is an appropriate
`factor to consider in assessing PGR eligibility, we disagree that it is
`determinative absent other considerations. Here, as discussed above,
`Petitioner has presented evidence, including expert testimony, that certain
`claims in the ’244 patent do not have support in the provisional application
`and thus have an effective filing date after March 16, 2013. This argument
`and evidence was not before the examiner.
`For the reasons discussed above, we find Petitioner has adequately
`shown the ’244 patent is PGR eligible for purposes of this decision.
`
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`2. 35 U.S.C. § 325(d)
`Patent Owner contends that the Board also should deny the Petition
`under § 325(d) because “Fisker was considered by the Examiner and applied
`in a rejection during prosecution of the ’244 Patent” and “the Examiner
`determined that the art of record (including Fisker) does not disclose the
`claimed ‘multichromatic light source’, ‘color image sensor’, and ‘data
`processing system’, i.e., the features common to independent claims 1 [and]
`29.” Prelim. Resp. 50 (citing Ex. 1002, 0873–74, 0921). Patent Owner
`states that “Petitioner now requests the PTAB to readjudicate the same cited
`art (Fisker) and the same issue (whether Fisker discloses ‘a multichromatic
`light source’, ‘color image sensor’, and ‘data processing system’).” Id. at
`50–51.
`In the Petition, Petitioner analyzes the factors the Board typically
`considers in determining whether to exercise its discretion under § 325(d).
`Pet. 8–11. Petitioner argues that “Petitioner’s obviousness argument relies
`on Fisker for the features that the Examiner found obvious over Fisker in the
`first Office Action, and on new references not considered by the Examiner
`for the dependent-claim limitations that the Examiner allowed.” Id. at 8.
`That is, Petitioner argues that “the newly cited prior art is only provided to
`teach the limitations that the Examiner failed to reject” and so there is “no
`overlap between the examination arguments and the instant Petition.” Id. at
`11.
`
`We have reviewed both parties arguments and agree with Petitioner
`that we should not exercise our discretion under § 325(d) for the reasons
`stated in the Petition. See Pet. 7–11. Thus, we proceed to address the merits
`of the challenges presented in the Petition as discussed further below.
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` Claim Construction
`For this Petition filed before November 13, 2018, the Board interprets
`claim terms in an unexpired patent according to their broadest reasonable
`interpretation in light of the specification of the patent in which they appear.
`See 37 C.F.R. § 42.200(b) (2018); Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2144–46 (2016); see also Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending
`37 C.F.R. § 42.200(b) effective November 13, 2018). Under that standard,
`claim terms are generally given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art, in the context of the
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`Petitioner does not propose construction of any particular claim terms.
`See Pet. Patent Owner proposes a construction for “the data processing
`system also configured to derive surface color information . . . from at least
`one of the 2D images used to derive the surface geometry information,” as
`recited in independent claims 1 and 29. Prelim. Resp. 7 (citing Ex. 1001,
`19:48–52, 22:21–25). In particular, Patent Owner argues that that “recitation
`requires the data processing system to be configured to derive both surface
`geometry information and surface color information from the same at least
`one 2D image captured by said color image sensor.” Id. at 8 (emphasis in
`original). We agree with Patent Owner’s construction because it is based on
`the plain language of the claims which require “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
`
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`surface geometry information.” We determine this recitation requires that
`surface color information be derived from at least one of the 2D images that
`was used to derive surface geometry (i.e., at least one of the images must be
`used to derive both types of information).
`Only terms in controversy need to be construed, and then only to the
`extent necessary to resolve the controversy. See, e.g., Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes
`of this Decision, we determine no other claim terms require express
`construction.
` Legal Principles
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;3 and (4) when in the record,
`
`
`3 Petitioner contends a person having ordinary skill in the art at the time of
`the invention would have a bachelor’s degree in computer engineering,
`computer science, electrical engineering, physics, computer vision, or an
`equivalent field and at least one or two years of industry experience, or at
`least five years of comparable industry experience. Pet. 17. Petitioner
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`objective evidence of nonobviousness. See Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek
`out precise teachings directed to the specific subject matter of the challenged
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
` Asserted Obviousness over Fisker and Szeliski
`1. Overview of Fisker (Ex. 1005) and Szeliski (Ex. 1006)
`Fisker is titled “Focus Scanning Apparatus,” and was effectively filed
`June 17, 2009 and published April 19, 2012. Ex. 1005, at [43], [60].
`Petitioner contends Fisker is prior art under 35 U.S.C. § 102(a)(1). Pet. 3.
`Fisker’s abstract describes its subject matter as follows: “a handheld scanner
`for obtaining and/or measuring the 3D geometry of at least a part of the
`surface of an object using confocal pattern projection techniques.”
`Ex. 1005, at [57].
`Szeliski is titled “Image Mosaic Construction System and Apparatus
`with Patch-Based Alignment, Global Block Adjustment and Pair-Wise
`Motion-Based Local Warping,” and was issued August 1, 2000. Ex. 1006,
`at [45]. Petitioner contends Szeliski is prior art under 35 U.S.C. § 102(a)(1).
`Pet. 3. Szeliski’s abstract describes its subject matter as follows: a system
`that
`
`
`further contends a person of ordinary skill in the art “would have had
`experience with and knowledge of three-dimensional imaging systems and
`three-dimensional modeling techniques.” Id. Patent Owner does not
`provide its own definition of a person of ordinary skill, but states that
`“Petitioner fails to satisfy its burden even assuming, for purposes of
`determining whether to institute, that Petitioner’s definition of a person of
`ordinary skill in the art [] at page 17 of the Petition is correct.” Prelim.
`Resp. 8 n.3. For purposes of this Decision, we apply Petitioner’s definition.
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`aligns a set plural overlapping images useful in constructing a
`mosaic by performing patch-based alignment of the set of
`overlapping images to produce a set of warped images,
`performing block adjustment of the set of warped images to
`produce a set of block-adjusted images, and then performing
`pair-wise motion-based local warping of the set of block-
`adjusted images.
`Ex. 1006, at [57].
`2. Analysis
`Petitioner contends that claims 1–5, 7–10, 15, 16, 18, 21, 22, 24, 26,
`and 28 would have been obvious over Fisker and Szeliski. Pet. 21–34, 37–
`58. For the reasons discussed below, we determine Petitioner has not shown
`it is more likely than not any claim challenged as obvious over Fisker and
`Szeliski is unpatentable.
`We focus our analysis on claim 1’s recitation: “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.” Ex. 1001, 19:48–52. Petitioner
`contends Fisker teaches this limitation. Pet. 26–28. In particular, Petitioner
`relies on Fisker’s teaching of “‘simultaneous scanning of a surface shape and
`color’ using one image sensor 181,” “obtain[ing] the color of the surface
`being scanned, i.e. capable of registering the color of the individual surface
`elements of the object being scanned together with the surface topology of
`the object being scanned,” and “at every focus position, the amplitude of
`light received at the sensor elements is used to determine surface topology
`and the surface color for each image sensor element in the sensor.” Pet. 26–
`28 (citing Ex. 1005 ¶¶ 151–158, 228, 244, 279, Fig. 9; Ex. 1003 ¶¶ 105,
`107).
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`Patent Owner contends that claim 1 requires “a data processing
`system configured to derive both surface geometry information and surface
`color information from the same at least one 2D image captured by said
`color image sensor,” but Fisker’s “simultaneous scanning” does not disclose
`or suggest such a system. Prelim. Resp. 9. In particular, Patent Owner
`argues that Fisker’s process of “simultaneously scanning . . . a surface shape
`and color” does not “demonstrate that the same particular 2D image within
`the enormous amount of data obtained from Fisker’s scanning is used to
`derive both surface geometry information and surface color information
`from the same at least one 2D image.” Id. at 10. Further, Patent Owner
`argues that “[e]ven if Fisker simultaneously obtains surface shape and color
`information . . . this does not necessarily mean that the same at least one
`particular 2D image within the enormous amount of data obtained from
`Fisker’s scanning must be used to derive both surface geometry information
`and surface color information.” Id. at 12–13. Still further, Patent Owner
`argues that Fisker’s simultaneous scanning “encompasses obtaining multiple
`images at varying times” and so Fisker “cannot . . . obtain[] surface
`geometry and color at the same single moment in time.” Id. at 14–16.
`Patent Owner also argues that Fisker’s “simultaneous scanning” would not
`“somehow inherently result in deriving surface color information from at
`least one of the 2D images from which the surface geometry information is
`derived.” Id. at 18.
`We agree with Patent Owner that Petitioner has not sufficiently shown
`Fisker teaches this limitation. In the portions of Fisker on which Petitioner
`relies, Fisker teaches an “exemplary embodiment of a device for
`simultaneous scanning of a surface shape and color” (Ex. 1005 ¶ 228),
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`which is “capable of registering the color of the individual surface elements
`of the object being scanned together with the surface topology of the object
`being scanned” (id. ¶ 151). Pet. 27–28 (also citing Ex. 1005 ¶¶ 151–158,
`279). Neither Petitioner nor its declarant (Ex. 1003 ¶¶ 105–107), however,
`adequately explains how these portions of Fisker show that surface color
`information is derived from at least one of the 2D images used to derive
`surface geometry information. That Fisker’s device may collect data that is
`used to derive both is insufficient to meet the limitation of claim 1 that at
`least one 2D image must be used to derive both.
`Petitioner does not rely on Szeliski as teaching this limitation. See
`Pet. 26–28. Accordingly, we determine Petitioner has not shown it is more
`likely than not that claim 1 is unpatentable based on this challenge.
`Claims 2–5, 7–10, 15, 16, 18, 21, 22, 24, 26, and 28 all depend
`directly or indirectly from claim 1. Petitioner provides further analysis
`detailing where it contends each of the additional limitations of these claims
`is taught in Fisker or Szeliski. Id. at 44–58. These contentions, however, do
`not cure the deficiency we discuss above with respect to claim 1. Thus, we
`determine Petitioner has not shown it is more likely than not that claims 2–5,
`7–10, 15, 16, 18, 21, 22, 24, 26, and 28 are unpatentable based on this
`challenge.
` Remaining Grounds Based on Fisker and Additional References
`Petitioner contends that claims 1–5, 7–10, 15, 16, 18, 21, 22, 24, 26,
`and 28 would have been obvious over Fisker and Matsumoto (Pet. 21–31,
`34–58); claim 29 would have been obvious over Fisker and Yamada and
`Fisker and Suzuki (id. at 58–66); and claim 12 would have been obvious
`over Fisker, Szeliski, and Yamada; over Fisker, Szeliski, and Suzuki; over
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`Fisker, Matsumoto, and Yamada; and over Fisker, Matsumoto, and Suzuki
`(id. at 58–61, 66–67).
`We find Petitioner has not shown claim 1 is more likely than not
`unpatentable for the same reasons as those discussed above. Claims 2–5, 7–
`10, 12, 15, 16, 18, 21, 22, 24, 26, and 28 all depend directly or indirectly
`from claim 1. Petitioner provides further analysis detailing where it
`contends each of the additional limitations of these claims is taught in the
`cited references. Id. at 44–58, 66–67. These contentions, however, do not
`cure the deficiency we discuss above with respect to claim 1. Thus, we
`determine Petitioner has not shown it is more likely than not that claims 2–5,
`7–10, 12, 15, 16, 18, 21, 22, 24, 26, and 28 are unpatentable based on these
`challenges.
`Claim 29 is an independent claim, which recites a substantially similar
`limitation to the limitation of claim 1 discussed above. Ex. 1001, 22:21–25.
`In its challenges to claim 29, Petitioner relies on its analysis of the similar
`limitation of claim 1. Pet. 58–59; see Prelim. Resp. 27–28. Accordingly, for
`the same reasons discussed above for claim 1, we determine Petitioner has
`not shown it is more likely than not that claim 29 is unpatentable based on
`these challenges.
` Asserted Obviousness over Thiel ’425, Thiel ’576, and Szeliski
`1. Overview of Thiel ’425 (Ex. 1012) and Thiel ’576 (Ex. 1013)
`Thiel ’425 is titled “Handheld Dental Camera and Method for
`Carrying Out Optical 3D Measurement,” claims priority to a continuation
`application filed on February 23, 2010, and published on March 29, 2012.
`Ex. 1012, at [42], [63]. Petitioner contends Thiel ’425 is prior art under 35
`U.S.C. § 102(a)(1). Pet. 4. Thiel ’425’s abstract describes its subject matter
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`as follows: a “handheld dental camera performs three-dimensional, optical
`measurements” including
`a light source that emits an illuminating beam, a scanning unit, a
`color sensor, and a deflector. The scanning unit focuses the
`illuminating beam onto a surface of an object to be measured.
`The surface of the object reflects the illuminating beam and
`forms a monitoring beam, which is detected by the color sensor.
`Foc
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