Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 27
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`3SHAPE A/S and 3SHAPE INC.,
`Petitioner
`
`v.
`
`ALIGN TECHNOLOGY, INC.,
`Patent Owner
`
`__________
`
`Case IPR2019-00134
`Patent 9,299,192 B2
`__________
`
`Record of Oral Hearing
`Held: April 15, 2020
`__________
`
`Before BRIAN J. McNAMARA, NEIL T. POWELL, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 27
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`3SHAPE A/S and 3SHAPE INC.,
`Petitioner
`
`v.
`
`ALIGN TECHNOLOGY, INC.,
`Patent Owner
`
`__________
`
`Case IPR2019-00134
`Patent 9,299,192 B2
`__________
`
`Record of Oral Hearing
`Held: April 15, 2020
`__________
`
`Before BRIAN J. McNAMARA, NEIL T. POWELL, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`TODD R. WALTERS, ESQ.
`Buchanan Ingersoll & Rooney, PC
`1737 King Street
`Suite 500
`Alexandria, VA 22314-2727
`703-838-6556
`todd.walters@bipc.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`KRISTINA CAGGIANO KELLY, ESQ.
`Sterne, Kessler, Goldstein & Fox, PLLC
`1100 New York Avenue, NW
`Suite 600
`Washington, DC 20005
`202-772-8524
`kckelly@sternekessler.com
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, April 15,
`2020, commencing at 1:23 p.m. Eastern Time via teleconference.
`
`2
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`P-R-O-C-E-E-D-I-N-G-S
`
`1:23 p.m.
`JUDGE MCNAMARA: Good afternoon, everyone. This is Judge
`McNamara. I believe everybody has indicated that they're ready. So we
`can get the bus moving a couple minutes early.
`This is the oral hearing in IPR 2019-00134. And we will complete
`that oral hearing and close out the transcript on that. And then we will
`move on to IPR 2019-00148, and we'll have a separate transcript for that.
`Each side has been given 30 minutes for their presentations in each
`of the hearings.
`And as before, I would remind us the parties to refer to the slides and
`the documents and any other references and to identify themselves when
`speaking.
`So at the beginning, what I'm going to do is just conduct a roll call.
`This is Judge McNamara. I'm here.
`Judge Powell, you're here?
`JUDGE POWELL: Yes, I am.
`JUDGE MCNAMARA: And Judge Roesel?
`JUDGE ROESEL: Yes, I'm here.
`JUDGE MCNAMARA: Okay. And then who is here for the
`petitioner?
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`3
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`MR. WALTERS: Your Honors, this is Todd Walters for petitioner.
`And I have with me today Andrew Cheslock.
`JUDGE MCNAMARA: Okay. And Mr. Walters, are you going
`to be doing the speaking?
`MR. WALTERS: I will, Your Honor.
`JUDGE MCNAMARA: Okay, great. And for the patent owner?
`MS. KELLY: Hello, Your Honors. This is Kristina Caggiano
`Kelly for patent owner. And I have with me Jason Eisenberg.
`JUDGE MCNAMARA: Okay. And Ms. Kelly, you'll be doing
`the speaking. Is that correct?
`MS. KELLY: Yes.
`JUDGE MCNAMARA: Okay, terrific. All right. Are there any
`questions before we begin? Any preliminary matters we need to address?
`(No response.)
`JUDGE MCNAMARA: All right. Then let's begin with the
`petitioner, and we will -- as I said, you have 30 minutes.
`Is there some amount of time you'd like to reserve for rebuttal?
`MR. WALTERS: Your Honor, this is Todd Walters. I would like
`to reserve ten minutes for rebuttal.
`JUDGE MCNAMARA: Okay. So I will set a clock for 20
`minutes, but I would urge you to keep track of the time as well. As you
`know, this is always a little tricky doing it distance-wise like that.
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`
`
`4
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`Okay. Please begin.
`MR. WALTERS: All right. May it please the panel. I am Todd
`Walters here representing petitioners, 3Shape A/S and 3Shape Inc.
`I have with me today Andrew Cheslock, my colleague. And as I
`indicated, I would like to save ten minutes for rebuttal.
`I'm going to work from the demonstratives that were submitted.
`And looking at Demonstrative 2, you will see there are three institution
`grounds in this matter, and I'm going to focus today mainly on the first
`institution grounds, the combination of Paley and Kriveshko.
`If we go to Demonstrative No. 3, at a high level, the '192 patent
`relates to systems and methods for modifying a virtual model of a physical
`structure with additional 3D data obtained from the physical structure to
`provide a modified virtual model. We'll get more deeply into the claims as
`we go on today. But at a high level, that's what the '192 patent relates to.
`I'm going on to Demonstrative 4. And the original presentation was
`set up for me to discuss the claim construction issues, the grounds, as well as
`some declaration evidence issues, but given constraints of time, I'm mostly
`going to focus on the issues that were raised in patent owner's
`demonstratives, including claim construction and the institutional grounds.
`If we go to Demonstrative No. 5, this is the second of the slides
`dealing with claim construction, and once again, we have a case where
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`5
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`petitioner believes patent owner is importing limitations into the claims of
`their patent to avoid the prior art.
`And if you go to Demonstrative No. 6, there are really three claim
`construction issues that were addressed. One dealing with the meaning of
`virtual model. Another dealing with identifying a portion. And then a
`third dealing with replacing.
`And if we can go on to Demonstrative No. 7. Patent owner has
`argued that petitioner has taken a different claim construction position for
`virtual model and identifying at least a portion in this IPR proceeding from
`what was agreed upon in the parallel ITC proceeding. Of course, the
`agreed upon constructions in the ITC occurred after the petition was filed,
`but with regard to virtual model, patent owner has indicated that there was
`no meaningful difference. And with regard to identifying at least a portion,
`we really agreed upon plain and ordinary meaning, so we had no reason to
`construe that in the petition to begin with.
`But after criticizing patent owner on those two terms, patent owner
`went on and construed the meaning of the term, replacing, and that was not
`done previously by patent owner in the ITC or in the patent owner's
`preliminary response. In fact, if you go back to the preliminary response
`and look at that, you will see that patent owner talks about replacing and it
`talks about deleting and removing, but it does not actually construe the term,
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`6
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`replacing, at all. But here, with their patent owner response, patent owner
`has construed the term.
`And I'm going to flip back to Slide 6 where replacing requires
`deleting or removing, and petitioner, of course, disputes that.
`If you go on and you look at Demonstrative No. 9, patent owner
`argued in its patent owner preliminary response that the prior art fails to
`disclose deleting or removing without formally construing the term,
`replacing, but the panel, and this is on Slide 10, was not persuaded by that
`argument. And you correctly found that the prior art disclosed replacing.
`And you did not need to address the terms, deleting or removing, in the
`claim because those terms don't appear in the claim whatsoever.
`If we go on to --
`JUDGE MCNAMARA: Excuse me, Counsel. This is Judge
`McNamara. Does deleting or removing appear in one of the other claims?
`Is it Claim 5?
`MR. WALTERS: Yes, Your Honor. You're absolutely right. It
`does appear in Claim 5. And if --
`JUDGE MCNAMARA: And if I remember correctly, I just think
`remove. But it's delete, remove, or replace, right? So there's three
`different things there?
`MR. WALTERS: That's correct. They're listed as alternatives in
`Claim 5.
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`
`
`7
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`But Claim 1 says replacing alone. It does not mention deleting or
`removing, so you are correct, Your Honor.
`JUDGE MCNAMARA: So let me ask you this because it comes
`down to a little bit of a claim differentiation. Claim 5 is a little unclear then
`if delete, remove, and -- delete, remove, or replace, whether or not those
`things mean separate things. In Claim 1, replacing. Then if it was
`differentiated from Claim 5, it would mean something different from all
`three of those.
`But you can understand how one might say, look, if I'm going to
`replace something, I'm going to substitute something for it. So I'm going to
`have to take something out and put something in. So in terms of replace, in
`context here, how does that work?
`MR. WALTERS: So a very good question, Your Honor. And I
`might take you to Slide 37.
`JUDGE MCNAMARA: Okay.
`MR. WALTERS: And --
`JUDGE MCNAMARA: Before we even go there, let me ask one
`other question, and this actually goes all the way back to the very beginning
`when you were talking about -- when we were talking about the '192 patent
`overview as modifying a virtual model. And perhaps this goes to this
`question of replacing. In the '192 patent, is the model already completed
`when it's modified?
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`
`
`8
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`MR. WALTERS: The claims in the '192 patent talk about a first
`virtual model. They talk about a second virtual model. And they talk
`about a modified virtual model. It does not specify in the claims that any
`of those models are complete. I'm not even sure what the term, complete,
`means, however, but it does talk about models. Maybe they're partial
`models of something. It depends on what you refer to as a complete model.
`That's in the eye of the beholder.
`JUDGE MCNAMARA: Okay. So the reason I'm getting to this is
`because if I understand to some extent -- and I'm sure the patent owner will
`be happy to correct me if I am wrong later.
`But I understand to some extent that part of their theory is that the
`references, Paley and Kriveshko, for example, in this case, really sort of
`correct as you -- they recognize that as I'm building a model that there is an
`error. And so I go into one of these recovery modes to make things fit.
`And you can talk about the details of this when you get to it. But that's my
`understanding versus let's say having a first virtual model, a completed first
`virtual model, if you would give me the leeway to say that. And then
`taking out part of that first virtual model and putting in something from the
`second virtual model.
`So the difference being fix as you go versus take out and put
`something back in for something that's already been modeled. So just to
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`9
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`give you that background as to how I'm understanding it, perhaps you could
`address it to deal with my understanding or lack thereof.
`MR. WALTERS: All good questions, Your Honor. And there's a
`lot there. So be patient with me so I answer in order.
`So with regard to replacing and whether that requires a deletion, we
`are not talking about a physical model here. We are talking about a virtual
`model. And one of the things that's described in the prior art as a gross
`error is a void in the virtual model. If you have a void in the virtual model,
`you can replace that void with accurate data without deleting anything
`because it takes space. You're not deleting anything when you do that.
`You're just adding data to fix the gross error. When you talk about fixing
`inaccurate data which the prior art also discloses, for example, Paley, you
`can, of course, delete the inaccurate data and then replace that inaccurate
`data with accurate data. That certainly would be obvious to do to one of
`ordinary skill in the art.
`In fact, petitioner's expert has indicated such in the declaration and in
`testimony. When you refer to the models and whether they are complete
`models, I would ask that you look at Paley. And in particular, let's start
`with Figure 5. There's been a bit of focus on Paley on Figure 5. And
`you'll note in Figure 5, there is a depiction of a lower jaw. I believe it's the
`lower jaw. And it shows where a gross error is, and that's market as Area
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`10
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`506. That is the model. And if you look in Paley at paragraph 60, that's
`on page 7 of Paley.
`Paley says, using navigation control 504, a user may rotate, pan,
`zoom in, or otherwise navigate around and within the digital model to more
`closely inspect areas of interest or to view the model from a number of
`perspectives to visually inspect otherwise occluded features. One user
`control may permit a user to return to data acquisition, for example,
`scanning mode of Figure 4, to acquire additional data or a void or deviation
`is detected, either automatically or through human visual inspection.
`You can see there, Your Honor, that what is being described is
`analyzing a model. You can pan it, rotate it, zoom it, or otherwise navigate
`around until you find an area of interest, a void, a deviation. And then you
`can go back and rescan the data. That's precisely what's being describing in
`the '192 patent. Okay?
`I'll move on to the slides unless I didn't fully answer any of your
`questions.
`JUDGE MCNAMARA: No, that's fine. I appreciate it. Thank
`
`you.
`
`MR. WALTERS: Okay. I was on Slide 11. And in Slide 11,
`this is where we introduce that patent owner is offering an improper
`narrowing of the claims. And in Slide 12, we refer to the claim language.
`There is no language in Claim 1 that requires deleting or removing. In fact,
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`
`
`11
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`as you brought up yourself, Your Honor, Claim 5 indicates that you can
`replace, remove, or delete as alternatives. And likewise with the claims
`with specification also indicates and now I'm on Slides 14 through 18 of the
`demonstratives. Every indication in the specification either references
`replacing alone or as an alternative to deletion or removal. And when we're
`talking about that, I want to make sure that I explain how you can replace
`something without deleting or removing.
`And if we can go to Demonstrative No. 37, you can see this is a -- it
`illustrates a blown up portion of Figure 5 from Paley wherein the void is
`circled. And there, that would be the first model. And on the right-hand
`side of the visual on 37, the hatched portions that you see here could be the
`second model that's generated in the landing mode of Paley. And that it is
`registered to the first model by adding the data in where the void was in the
`first model. And therefore, you're replacing a void by the addition of data,
`and you're rendering an image that has all of the correct data.
`If we go on to the next slide, Slide 38, Your Honor.
`JUDGE MCNAMARA: So before you move on, so to make sure --
`again, this is Judge McNamara. Just to be sure I understand. So your
`position is that this is -- you're replacing a void, therefore, you're not
`necessarily deleting or removing anything, you're just putting something in,
`and that's replacing a void?
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`12
`
`
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`MR. WALTERS: Correct. Okay. In that particular example.
`But if, for example, you had inaccurate data in the place where the void was
`depicted. And now, I'm referring to Slide 38 as a visual.
`Let's say the inaccurate data was -- the color in that space was
`registering as red, and you know it should not have been red, it should have
`been blue, and you wanted to go back and rescan that area to get the accurate
`data and have that accurate data then registered to the model to form a first --
`sorry, to form a modified model.
`In that particular case, likewise, you could and it would have been
`obvious to remove the red data and put in its place the blue data. Certainly,
`that would've been obvious. In the virtual model --
`JUDGE MCNAMARA: Wait a second. Just to give you a little
`heads up, but you have about a minute left before you enter your rebuttal
`time.
`
`MR. WALTERS: Thank you, Your Honor. I'm going to try and
`get through this and then leave it for rebuttal.
`JUDGE MCNAMARA: Sure.
`MR. WALTERS: Thank you. But because this is a virtual model,
`it's not an actual model, you don't have to actually delete the red data. You
`can simply overlay the blue data over top of the red data. Superimpose it
`so that what you're rendering in the image is the actual data, the correct data,
`not the incorrect data.
`
`
`
`13
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`So again, there are ways to replace something in a virtual model that
`don't require an actual deletion or a removal. And with that, I'll leave you
`to ask me any questions. But I'd like to reserve the rest of my time for
`rebuttal.
`JUDGE MCNAMARA: All right. Counsel, you finished right on
`time. I have no further questions for you.
`Okay. I guess we can hear from the patent owner at this point.
`MS. KELLY: All right. Thank you. May it please the Board.
`This is Kristina --
`JUDGE MCNAMARA: Hi.
`MS. KELLY: Oh, I'm sorry?
`JUDGE MCNAMARA: That's okay. Is there some amount of
`time you'd like me to try to remember to alert you to for surrebuttal?
`MS. KELLY: I'll also take ten minutes. Thank you.
`JUDGE MCNAMARA: Okay, great. All right. All right,
`proceed.
`MS. KELLY: Sure. I would like to start by just picking up on a
`few of the points that petitioner's counsel made.
`The first one is that petitioner's counsel stated that in patent owner's
`preliminary response, we did not offer construction. But we also did not
`waive the ability to do so, and the arguments we made in our preliminary
`response are consistent with the construction of replace that ultimately we
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`
`
`14
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`are proposing now. Another point that I wanted to raise, and this relates
`back to a question that I believe Judge McNamara asked, is by comparing
`Claim 1 to Claim 5, where Claim 1 just states replacing and then Claim 5
`states delete, remove, or replace, there are several other things about Claim 5
`that differentiate it from Claim 1. Claim 5 is talking about a corresponding
`computer function for implementing the modification, and in that case, it
`recites deleting, removing, or replacing as different options for
`corresponding computer functions. So it recites it with a little bit more
`granularity than Claim 1 does which just states generally replace, but that
`brings us, I guess, to the overarching question of what does replace mean,
`and this isn't a special word that has a special meaning in the context of this
`patent.
`
`I think delete, remove, and replace, all three of them, are plain
`English words that are being used in this patent with their plain English
`meaning. Delete basically talks about something is erased. It's gone.
`Remove is I think a little broader. It means you have taken something out.
`But perhaps you have moved it somewhere else. Maybe it still exists, but
`it's not in this location anymore. And then replace, I think, just inherently
`talks about putting into the place of something else, a replacement, a new
`piece of data or a new piece of model.
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`
`
`
`15
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`So first, you would need to delete or remove or otherwise take out
`the thing that is being replaced. And then you put a corresponding thing in
`its place. And I think not only --
`JUDGE MCNAMARA: Again, this is Judge McNamara. How
`do you respond then to the petitioner's argument about the void? I'm not
`taking out a void.
`And maybe -- and perhaps in a model, in a context of a model,
`maybe I am. I mean, that's -- but how do you respond to that particular
`question?
`MS. KELLY: So I think there are two ways you can think about it
`depending on, I guess, how you think about what a void is. I mean, a void
`is not a part of the model. A void is a place where the model does not
`exist, and when you add additional data to fill in that void, you're not
`replacing anything, you're just adding.
`And I think that you can even get from Kriveshko, for example, at
`page -- sorry, at paragraph 76. I think that's in our Slide 17. Kriveshko
`talks about, what does it mean to enter the reacquisition mode to reacquire
`data that is going to address an error? And Kriveshko says, we use that
`synonymously and interchangeably with resume because that's what you're
`doing in Kriveshko. You're just resuming the same scan.
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`
`
`
`16
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`As it turns out, you thought your model was complete but it wasn't
`and so you're going back to resume your scan to complete your model,
`adding data to fill the void.
`To replace something, you actually have to take something out and
`put something corresponding in its place, and I think you get that also from
`the language of Claim 1 which uses that word, corresponding, to show that
`you're not simply adding on to a model, a part that wasn't there yet. It's a
`corresponding part of the model that already exists that you are taking out
`and putting something else back in, and I think that's also illustrated, I think,
`in Paley where Paley talks about it's adding new surface data.
`The new point data in real time is added and rendered. So as you're
`looking at the partial model being built, that model grows as you add new
`data to it.
`And I think Paley in paragraph 56 analogizes it to spray painting
`something. You're spray painting the video image with the shaded surface
`map as data points are acquired. The point cloud of the digital surface
`representation is a growing constellation of points. It forms over the video
`subject matter as data is required, and if, as you're painting, you find out that
`you missed a spot, you can go back and fill it in with some more paint, but
`none of that paint is ever removed. Nothing is ever deleted. None of the
`paint is ever replaced.
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`17
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`Now the painting analogy does break down a little bit when we start
`talking about, for example, petitioner's Slide 38 where they're talking about
`overlaying the red data with the blue data. And that would seem like, oh,
`you can just paint over it.
`But that was explored in patent owner's expert Dr. Bajaj's definition,
`where they ask Dr. Bajaj, can't you just paint over the bad data with good
`data? And he said, absolutely not. It doesn't work that way. The
`analogy breaks down, because unlike painting your wall where the thickness
`of the paint is negligible, in the context of dental modeling, the tolerances
`are so close. Any kind of error represented by bad data has a thickness to
`it. If you want to replace that, you have to remove the bad data and put in
`corresponding correct data. Otherwise, both the bad data and the good data
`are existing simultaneously.
`You're going to get conflicting images superimposed on one another.
`You can't just layer on top of bad data because that thickness of the data is
`not negligible in this context.
`So that is something you're not able to do. But --
`JUDGE ROESEL: But why isn't that taught --
`MS. KELLY: -- that brings us to --
`JUDGE ROESEL: -- by the prior art that's referenced there? I'm
`sorry. This is Judge Roesel.
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`18
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`So why isn't that taught by the prior art that's referenced there on
`petitioner's Slide 38? I'm not sure I understand why that isn't a replacement
`of data, replacing --
`MS. KELLY: Well, the reason --
`JUDGE ROESEL: -- bad data with good data.
`MS. KELLY: Sure. The reason that's not taught is because the
`concept illustrated on petitioner Slide 38 is itself not taught.
`Nowhere in Paley or Kriveshko does it ever say anything that can be
`analogized as you can overlay the red data with the blue data. It never tells
`you. It mentions once in passing inaccurate scan data. But it never tells
`you how you might address inaccurate scan data.
`The only thing you could do with Paley or Kriveshko's method is
`dilute a few bad data points with a wealth of good data by going back,
`resuming your scan, and figuring that out. A lot of times, errors such as
`excessive texturing are actually just due to insufficient data. And so when
`you go back and get more data, the excessive texturing fixes itself because
`that was an error in the computer trying to piece together an insufficiency of
`information, but nowhere in Paley or Kriveshko was anything like what
`petitioner has in Slide 38 disclosed.
`So this is petitioner's extrapolation of the teaching to what their
`expert Dr. Saber said would have been an obvious modification to make.
`But I think if you actually read Paley and Kriveshko, this is quite the leap to
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`
`
`19
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`make for this kind of modification because they're saying you have bad data
`and you could layer over it with good data, but the bad data is no longer
`represented in the model. That does not appear in Paley or Kriveshko
`anywhere. And when -- during his deposition when Dr. Saber said that you
`could just replace something without deleting or removing, I asked him
`specifically what do you mean by that?
`What does it mean to replace something without deleting or
`removing? And the answer he gave me is on our Slide 7, that exchange. I
`asked him. He said, well, you can just replace it. I said, well, is the data
`you replaced still there? And twice, he conceded, no, it's not there
`anymore. You have to take it out. And so, after he admitted that, in order
`to replace it, the bad data has to be deleted or removed or somehow not there
`anymore. He said, but doing that would be obvious. So ultimately,
`petitioner's expert has conceded that replacing does require actual deleting or
`removing, and then when you get to that point, the only answer is, but
`deleting would be obvious.
`So we'll come up with a way of modifying Paley and Kriveshko such
`that we add deleting to the process somehow. But that deleting is never
`actually taught because in Paley and Kriveshko, that's not actually part of
`what they're trying to do.
`Paley and Kriveshko talk about a method of growing a model such
`that you can get visual feedback in real time. This is the initial scan that
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`22
`
`
`
`20
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`gets you your first model. And maybe you could use that Paley or
`Kriveshko method to get your first model. And then once you have the
`first model, you might look at it and say, okay, this patient has a bad tooth.
`I need to extract that tooth or I need to prepare a crown for it. And then the
`dentist will analyze the model and then have the patient in, grind the bad
`tooth down to a stump to prepare it for a crown.
`Now you need a model of the stump to design the crown. So you
`could use the '192 patent method to scan only the preparation tooth for the
`crown. You don't have to scan the entire mouth again which is an
`unpleasant process and takes a lot of time. You only scan the preparation
`tooth, and that preparation tooth could perhaps be scanned using Paley or
`Kriveshko's method.
`Then you have a second model, and now you want to take a
`portion of that second model showing the preparation tooth, and you want to
`substitute it in for the bad tooth in the original model so that you get a
`modified model showing all of the original teeth but with the preparation
`tooth instead of the bad tooth. And the '192 patent gives you a method of
`cutting and pasting of selecting the area.
`The bad tooth, you want to delete from the model. And then using
`a second model, find a corresponding image of that tooth, now with the
`preparation tooth, and put that in the model. And now you have a complete
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`
`
`21
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`model that has the updated dental history without having to rescan the entire
`mouth.
`That's the purpose of the '192 patent, and nothing about that --
`JUDGE ROESEL: Counsel --
`MS. KELLY: -- is in the prior art.
`JUDGE ROESEL: May I interrupt you just there? I think, Judge
`Powell, are you still on the line?
`JUDGE MCNAMARA: I just got that message as well. Judge
`Powell has been disconnected somehow.
`JUDGE ROESEL: Yeah, I think we've lost Judge Powell. And
`he's, of course, very important.
`So let's -- can we -- I'm sorry, Counsel, to interrupt you. But let's
`pause here until we get him back on. All right?
`MS. KELLY: Sure. Not a problem.
`(Whereupon, the above-entitled matter went off the record at 2:00
`p.m. and resumed at 2:07 p.m.)
`JUDGE MCNAMARA: And we will have the patent owner's
`counsel pick up where you left off. You still had about -- as I recall, about
`seven and a half minutes left of the time that you had indicated.
`So please proceed.
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`
`
`
`22
`
`
`
`1
`2
`
`3
`4
`5
`6
`7
`
`8
`9
`10
`11
`12
`13
`
`14
`15
`16
`17
`18
`
`19
`20
`21
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`MS. KELLY: Sure. So what I was talking about was illustrating
`what the '192 method does, how it picks up after the methods of Paley and
`Kriveshko leave off.
`Those are the methods -- Paley and Kriveshko are ways of building a
`model, how you acquire data, how you ensure that you have enough data in
`order to complete the model. Once that model is completed, then that's
`where the '192 patent picks up.
`You can take -- it provides a way of taking that model, and if, for
`example, you see that there is a problem in the model, there is blood or
`saliva that has been captured by the data and you want to go back and rescan
`a particular tooth. Or if in the example I was using was you're preparing a
`tooth for a crown.
`And so now the dental history has changed. Where there used to be
`a tooth, now there is no longer a tooth. Instead, there is a little stump that
`is preparing for a crown, and you want to modify the model without having
`to rescan the entire jaw. You can scan only the preparation tooth and then
`select the preparation tooth as corresponding to the bad tooth in the original
`model.
`
`You can cut and paste and put that tooth in the original model. And
`now you have a modified model that reflects the patient's updated dental
`history.
`
`
`
`23
`
`
`
`Case IPR2019 00134
`Patent 9,299,192 B2
`
`
`
`Then you can use that model to manufacture the crown. And then
`you could even use the method again after you've manufactured the crown
`and you install the crown in the patient's mouth.
`You can scan it again so that now you have a model that shows the
`entire jaw from the very first scan but with the crown that is now reflective
`of the patient's updated dental history.
`And there's no reason why you can't then save all of those models
`and have a progression showing the patient's dental history over time. And
`all of that is editing models on the back end, models that are already created.
`Whereas Paley and Kriveshko are talking about, how do you acquire
`data on the front end? And if you see that there's a void, how do you go
`back and fill in that void on the front end so that the model you get on the
`back end is an accurate reflection of the thing that you scanned?
`So the '192 method is not really i
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
