Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 42
`Date: June 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`3SHAPE A/S and 3SHAPE INC.,
`Petitioners
`
`v.
`
`ALIGN TECHNOLOGY, INC.,
`Patent Owner.
`
`_____________
`
`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 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. 42
`Date: June 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`3SHAPE A/S and 3SHAPE INC.,
`Petitioners
`
`v.
`
`ALIGN TECHNOLOGY, INC.,
`Patent Owner.
`
`_____________
`
`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 B2)
`
`_____________
`
`Record of Oral Hearing
`Held: April 15, 2020
`_____________
`
`
`
`
`Before BRIAN J. McNAMARA, NEIL T. POWELL, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ROGER LEE, ESQ.
`Buchanan Ingersoll & Rooney, PC
`1737 King Street
`Suite 500
`Alexandria, VA 22314-2727
`703-836-6620
`roger.lee@bipc.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`PAULINE M. PELLETIER, ESQ.
`Sterne, Kessler, Goldstein & Fox, PLLC
`1100 New York Ave, NW
`Suite 600
`Washington, DC 20005
`202-772-8838
`ppelletier@sternekessler.com
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, April
`
`15, 2020, commencing at 10:00 a.m., Eastern Time via teleconference.
`
`
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`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`
`10:00 a.m.
`JUDGE POWELL: Okay, good morning. This is Judge Powell
`with the Patent Trial and Appeal Board. We're here on the phone this
`morning for a consolidated oral hearing for three inter partes reviews.
`It is a telephonic hearing, and so to avoid unnecessary background
`noise, I suggest that those not speaking mute their audio connection.
`Let's start with a roll call to make sure that we have everybody
`necessary for the hearing. Is Judge Roesel on the phone?
`JUDGE ROESEL: I am here.
`JUDGE POWELL: Is Judge McNamara on the phone?
`JUDGE MCNAMARA: Yes, I am here.
`JUDGE POWELL: Who do we have on the telephone for
`Petitioner?
`MR. LEE: Your Honors, this is Roger Lee for Petitioners. With
`me on the call today are Todd Walters, Andrew Cheslock, and Adam Banes.
`Todd Walters is lead counsel in these three IPRs. But I will be presenting
`the argument.
`JUDGE POWELL: Okay. Who do we have on the telephone
`for Patent Owner?
`MS. PELLETIER: Good morning, Your Honor. You have
`Pauline Pelletier on behalf of the Patent Owner, Align Technology, Inc., and
`Mr. Sterne and Mr. Eisenberg. Mr. Sterne, who's listed as lead counsel in
`these IPRs, has conveyed to me that he is on the public line as well.
`JUDGE POWELL: Thank you.
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`IPR2019-00152 (Patent 9,615,901 B2)
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`MS. PELLETIER: I will be making the presentation on behalf of
`Patent Owner.
`JUDGE POWELL: Okay, thank you. The hearing this morning is
`for IPR2019-00150, and that involves US Patent Number 8,638,447 B2.
`We also will be handling IPR2019-00151 which involves US Patent Number
`8,638,448 B2. And we will be handling IPR2019-00152 which involves US
`Patent Number 9,615,901 B2. We will be handling all those in a
`consolidated fashion as noted in our trial hearing order.
`Before we start with the substantive arguments, I do note that there is
`a pending motion to exclude certain evidence. And that motion will be
`handled in due course.
`To the extent that we grant the motion, our final decision won't rely
`on any excluded evidence. Today, however, parties may discuss any of the
`evidence that's in the record, including the evidence subject to the motion to
`exclude.
`Per the hearing order, each side will have 45 minutes of argument
`time, and I plan to keep time. I also intend to alert the speaking party when
`the end of their allotted time is approaching. But I encourage each party to
`monitor how much time they have used and how much time remains while
`they present.
`We will start with arguments from the Petitioner, and then we will
`hear from the Patent Owner. And the Petitioner may then present rebuttal
`argument, and petitioner may reserve time for rebuttal.
`When you present, as usual, please identify any materials that you
`reference clearly, such as by exhibit number, which demonstrative slide
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`IPR2019-00152 (Patent 9,615,901 B2)
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`number, or what brief or paper you are referring to. And that's particularly
`important on the telephone, so that we get a clear record.
`And also, it's best that we all identify ourselves clearly when we
`begin presenting so that the court reporter will know who is speaking. I
`think that's everything.
`My first question then is for Petitioner. And that is whether
`Petitioner would like to reserve time for rebuttal.
`MR. LEE: Your Honors, this is Roger Lee for Petitioners. We'd
`like to reserve 15 minutes for rebuttal.
`JUDGE POWELL: Okay, thank you.
`(Simultaneous speaking.)
`JUDGE POWELL: Go ahead.
`MS. PELLETIER: Apologies, Your Honor. Would the Patent
`Owner be able to reserve five minutes for surrebuttal?
`
`JUDGE POWELL: Yes, we can do that.
`MS. PELLETIER: Thank you, Your Honor.
`JUDGE POWELL: Certainly. With that out of the way, are there
`any other questions? Let's start with the Petitioner first.
`MR. LEE: Thank you, Your Honors. May it please the Board.
`My name is Roger Lee, and I represent --
`JUDGE POWELL: Excuse me, I was asking if there are any
`questions before we start, before we launch into.
`MR. LEE: No questions here from Petitioners, Your Honors.
`JUDGE POWELL: Okay. And Patent Owner?
`MS. PELLETIER: None from Patent Owner, Your Honor.
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`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 B2)
`
`
`JUDGE POWELL: Okay. Sorry for the interruption. Petitioner,
`you have the floor.
`MR. LEE: Thank you, Your Honors. May it please the Board.
`My name is Roger Lee and I represent Petitioners in these IPR proceedings.
`As an initial matter, Petitioner submitted three separate sets of
`demonstratives in these proceedings, one for each proceeding.
`The issues across the three cases largely overlap, and for purposes of
`this hearing, I'll be working from the demonstratives submitted in IPR2019-
`00150, which is for the 447 Patent. And references to Slide Numbers will
`be based on the 447 demonstratives. At times I will turn to the
`demonstratives of the 448 and 901 cases to address specific issues to those
`cases, and I will let you know when I do that.
`So I'm starting at Slide 4 of the 447 demonstratives. As an
`overview, I'd like to cover three general topics this morning.
`First, the challenged claims are unpatentable under Patent Owner's
`broad claim constructions.
`Second, the challenged claims are unpatentable under Petitioner's
`narrow claim constructions.
`And third, I'd like to discuss certain issues specific to the
`Tiziani-based grounds.
`I'm now at Slide 6. Both parties have presented claim constructions
`in these proceedings. Patent Owner had presented broad claim
`constructions that encompass Petitioner's narrow claim constructions under
`112, 6th paragraph.
`The Board, in its institution decision, recognized the nature of these
`claim constructions presented by both parties. In the Institution decision,
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`the Board indicated that Patent Owner's proposal to adopt the plain and
`ordinary meaning would broadly define the scope of the claims, whereas
`Petitioner's proposal to construe the claims under Section 112, 6th
`paragraph, would more narrowly define the scope of the claims.
`JUDGE POWELL: Petitioner, this is Judge Powell.
`MR. LEE: Yes?
`JUDGE POWELL: My first question about that, I understand that
`in Patent Owner's preliminary response it presented arguments and evidence
`affirmatively asserting that the claims should be construed according to their
`plain and ordinary meaning, at least a number of the claim terms should be
`construed that way.
`Many of those evidence, much of those arguments, and the evidence
`that were presented in the preliminary response do not appear to be repeated
`necessarily in the Patent Owner's response.
`And my question then becomes arguments that were presented in the
`preliminary response that are not presented in the response following
`institution and trial, are those arguments waived?
`MR. LEE: Our understanding is that those arguments are waived,
`because the preliminary phase of the proceeding constitutes a part of the IPR
`proceeding as a whole.
`These are arguments that Patent Owner affirmatively made in these
`IPR proceedings. And in fact, Patent Owner has reiterated that they
`espouse a broad claim construction with respect to these terms.
`And that was argued in Patent Owner's surreply at Page 1 where
`Patent Owner again reiterates that it disagrees with Petitioner's narrow claim
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`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 B2)
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`construction and argued again for a broad construction of the term optical
`system.
`What's interesting is that Patent Owner, while espousing a broad
`claim construction under the plain and ordinary meaning, Patent Owner has
`not presented any argument for patentability under its own broad claim
`constructions.
`That was true in Patent Owner's preliminary response. That is also
`true in Patent Owner's response, and it is further true in Patent Owner's
`surreply. There has been no argument directed to Patent Owner's own
`broad claim constructions.
`JUDGE POWELL: Thank you.
`MR. LEE: Thank you, Your Honor.
`And that is the subject of Slide 7 where the Board correctly
`determined that Patent Owner does not rely on its proposed claim
`constructions as support for any patentability argument. Again, that is --
`JUDGE ROESEL: This is Judge Roesel. Isn't it true that Petitioner
`also put all of its eggs in the 112 (6) basket? So it presented, in the petition,
`no unpatentability contentions based on any claim construction other than
`the 112(6) construction. Isn't that true?
`MR. LEE: Thank you, Your Honor. To answer that question, I'd
`like to go to Slide 8 which is the next slide.
`And there's an excerpt in the petition shown in this slide where
`Petitioners argued that the challenged claims would have been obvious over
`the asserted prior art under all constructions discussed below.
`What followed below from that statement was the claim construction
`section of the petition where Petitioners outlined both Petitioner's own
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`narrow 112(6) constructions as well as Patent Owner's broad constructions
`that it advanced in the ITC proceeding.
`Patent Owner's broad constructions in the ITC proceeding largely
`correspond to Patent Owner's constructions that it presents now in these
`proceedings.
`As we've explained in our Petitioner's reply, and in Slides 9 through
`11 of the 447 demonstratives, Patent Owner's broad claim constructions
`encompass Petitioner's narrow 112(6) constructions.
`So by meeting its burden of demonstrating unpatentability of the
`claims under Petitioner's narrow claim constructions, Petitioner has also
`demonstrated unpatentability of the claims under Patent Owner's broad
`claim constructions.
`As noted earlier, Patent Owner has not presented any argument
`concerning patentability under its own broad claim constructions.
`Your Honors, I think at this point it's also --
`JUDGE ROESEL: If I may interrupt one more time, so in other
`words, what Petitioner is saying is it is presenting a single case for
`unpatentability. And it doesn't matter what the claim construction is. Is
`that right?
`MR. LEE: That is correct, Your Honor, that claim construction is
`not dispositive in these cases when the Board appreciates the correct claim
`construction that parties are actually presenting in these cases.
`Regardless of whether the Board adopts Patent Owner's Broad claim
`construction, or Petitioner's narrow claim construction, or if the Board
`adopts a construction of its own that is somewhere between those claim
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`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 B2)
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`constructions, it doesn't matter. The claims are unpatentable under both of
`those claim constructions and any intermediate claim construction.
`Your Honors, I would like to point out an excerpt from the Trial
`Practice Guide which was discussed in our Petitioner's reply, but it's
`important to note that concerning this topic.
`I'm referring to Pages 44 and 45 of the consolidated Trial Practice
`Guide, the November 2019 version, which indicates that the Board, it cites a
`case, Hamilton Beach Brands, in which the Board was not found to violate
`the APA when it adopted its own claim construction in the final written
`decision because the parties had notice of the contested claim construction
`and an opportunity to be heard.
`Here in these proceedings, Patent Owner had argued that the
`Petitioner is limited to its 112(6) constructions, and the Board is limited to
`Petitioner's 112(6) constructions.
`But that is not true. Patent Owner has submitted its own claim
`constructions and therefore has created a dispute with respect to those terms.
`The Board now has latitude and freedom to consider parties'
`arguments with respect to those terms and to determine the appropriate claim
`construction.
`Petitioners believe, in its 112(6) constructions, Petitioners have met
`its burden with respect to demonstrating why the claims should be construed
`under 112(6) and how the prior art satisfies its constructions under 112(6).
`However, to the extent that the Board determines that there may be
`certain tweaks, for example, that need to be made to Petitioner's
`construction, or to the extent that the Board decides to adopt Patent Owner's
`construction, as mentioned before, it does not matter.
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`IPR2019-00151 (Patent 8,638,448 B2)
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`The claims are unpatentable under both constructions or any other
`construction the Board may come to. And under the Trial Practice Guide
`and the Hamilton Beach Brands case discussed in the Trial Practice Guide,
`the Board has the freedom to do that.
`
`Your Honors, I'm going to now go to Slide 13 of the 447
`demonstratives. Slide 14 indicates that Picard discloses Element 17.2
`which is directed to an illumination unit.
`Patent Owner has argued that Petitioner's construction requires,
`number one, the light emitters, number two, a semi-conductor laser unit and,
`number three, a laser emitter.
`But Patent Owner has misapprehended Petitioner's claim
`construction. In the petition, Petitioner has clearly indicated that the phrase
`should be construed to include, as corresponding structure, one or more of
`these structures.
`Petitioner's construction is satisfied by showing any single one of the
`listed structures and does not require all of the listed structures.
`Incidentally, Patent Owner has made a similar argument in its
`demonstratives concerning an optics expander. And this is an argument that
`is particular to the 448 and 901 Patent.
`And I'll refer to the Slide 13 of the 448 demonstratives which is very
`similar to Slide 13 of the 447 demonstratives except it includes the optics
`expander in the listing of structures that Patent Owner is arguing are all
`required by Petitioner's claim construction.
`But again, that understanding of Petitioner's claim construction is
`incorrect. In the 448 petition, Petitioner has explained that the phrase
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`IPR2019-00150 (Patent 8,638,447 B2)
`IPR2019-00151 (Patent 8,638,448 B2)
`IPR2019-00152 (Patent 9,615,901 B2)
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`should be construed to include, as corresponding structure, one or more of
`these structures.
`There is no requirement for an optics expander. It is one of several
`components that can satisfy the illumination unit but is not a required
`structure of the illumination unit per se.
`The same can be said for the 901 demonstrative. It is Slide 12 of
`the 901 demonstratives which also explains that the optics expander is one
`of several terms that can satisfy the illumination unit, but it is not a required
`element.
`Turning to Slide 14, Patent Owner has similarly misconstrued the
`term optical system. Patent Owner asserts Petitioner's construction requires
`a partially transparent mirror, but the petition clearly indicates that the
`phrase should be construed to include, as corresponding structure, a
`partially transparent mirror or a beam splitter. The partially transparent
`mirror is not required, it is one of two alternatives.
`
`I'm going to Slide 15. Patent Owner has argued that the 112(6)
`structures of the phrase optical system must be arranged downstream of the
`structure configured to generate a plurality of instant light beams.
`Essentially, Patent Owner has argued that Petitioner's claim
`construction requires the specific sequence of structures as disclosed in an
`embodiment of the 447 patent.
`Petitioner has made no such claim construction requirement.
`Petitioner has never required these structures to be in a particular sequence.
`And in fact, the Board, in its institution decision, rejected a similar
`argument made by Patent Owner. In Slide 15 from the institution decision,
`the Board indicated, we do not adopt Patent Owner's suggestion that the
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`claims are limited to a series of components arranged in the exact order of
`the example disclosed in the specification on the 447 Patent.
`Turning to Slide 17, Patent Owner has argued that Petitioners have
`not demonstrated that the various components implicated by Section 112,
`6th paragraph, for the term optical system are integral to to focusing the
`plurality of instant light beams.
`Again, Patent Owner is arguing for a broad construction by saying
`that these components are not component structures that are required by
`112(6). But Patent Owner has not explained how the claims are patentable
`when you strip these components from the optical system.
`Moreover, Petitioner's expert, Dr. Sergienko, has explained that all
`elements of the optical system, which include the beam splitter, confocal
`optics, relay optics, and endoscopic probing member, all of these elements
`are necessary to achieve the function under consideration. And so these
`elements are integral to the function of the optical system.
`I'm at Slide 20. Patent Owner has argued that in the petition,
`Petitioners have identified Lens 15 of Picard as performing the function of
`the optical system but that Petitioners have not identified Lens 15 as
`corresponding structure in the petition.
`Patent Owner is wrong. In Slide 20, there are excerpts from the
`petition that demonstrate that Petitioners, in fact, relied on Lens 15 as both
`corresponding structure as well as corresponding function in satisfying the
`claimed optical system.
`In the first excerpt, the petition states the downstream face of
`Picard's means 15, which is the Lens 15, focusing the light from each point
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`source onto the object is a sensing face of the probing member. Lens 15 is
`a part of Picard's probing member.
`In the second excerpt of the petition, this is an excerpt from the
`portion of the petition that deals with and identifies the structure in the prior
`art that satisfies the structure of the optical system claim term, Petitioners
`clearly rely on Picard's probing member as corresponding structure that
`corresponds to the optical system.
` Again, the probing member of Picard contains Lens 15. Lens 15 is
`the structure that's contained in the probing member.
`And then finally, in the third excerpt from the petition, the petition
`clearly states that Picard Lens 15 focuses the plurality of instant light beams.
`So the petition identifies Lens 15 of Picard both as corresponding
`structure as well as the corresponding function which satisfies the term
`optical system.
`JUDGE ROESEL: Petitioner, I'm a little confused by this
`argument. Wasn't it Petitioner's burden to show that the structure that you
`identify in the prior art, the Picard Lens 15, is equivalent to the
`corresponding structure disclosed in the challenged patent?
`MR. LEE: It was Petitioner's burden to demonstrate that the prior
`art either discloses that same structure or an equivalent thereof. And we
`have explained that in the petition as to how Picard's Lens 15, as well as the
`other structures, the beam splitter, confocal optics, relay optics, and the
`endoscopic probing member as a whole, correspond to the structures
`invoked by 112(6) of the optical system.
`And so Slide 20 is merely, the purpose of Slide 20 is to show that
`Petitioners explicitly included Lens 15 as structure of the endoscopic
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`probing member. And the endoscopic probing member was structure relied
`upon to satisfy the structure of the optical system.
`Further, Petitioners explicitly called out Picard's Lens 15 as the
`structure that provides the functionality of focusing the plurality of instant
`light beams.
`Petitioners believe that Patent Owner's argument is a very formalistic
`argument. The Patent Owner is arguing that Petitioners only identified
`Lens 15 in the function portion of the petition. But Petitioners didn't
`identify Lens 15 in the structure portion of the petition.
`We don't believe Patent Owner's arguing that Petitioner didn't
`identify Lens 15 at all for this limitation. It's a very formalistic argument
`that Patent Owner is making.
`The point of Slide 15 is merely to explain that Petitioners did in fact
`contemplate Lens 15 as corresponding structure for both the structure of the
`optical system as well as the function of the optical system.
`And that is through the probing member. Lens 15 of Picard is a part
`of the probing member. And the probing member was one of the structures
`invoked by 112(6), which is also satisfied by Picard, and therefore it satisfies
`the optical system, the structure portion of the optical system term.
`I'm now at slide 21. Patent Owner has made the argument that
`Petitioners have not provided any motivation to combine various disclosures
`of Picard to arrive at an embodiment which contains the elements in Figure 3
`together with the elements in Figures 7 and 8.
`But Picard explicitly discloses that these elements of Figures 7 and 8
`are to be combined with the elements of Figure 3. And that's shown in the
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`excerpt of Picard in Slide 21 as well as the excerpt of Picard in Slide 22 and
`Slide 23.
`Now moving to Slide 25, the petition relies on Picard's chromatic
`confocal system in combination with Ishihara's telecentric mode. Slide 25
`provides an overview of how the prior art has been relied on, how it was
`relied on in the petition.
`Petitioners, rather Patent Owner has argued that Petitioners are
`proposing to remove the chromatic confocal feature of Picard. But that is
`not Petitioner's modification to Picard, and that was never Petitioner's theory
`of modifying Picard.
`And that's clear from the petition. Petitioners have always advanced
`the theory that the chromatic confocal system of Picard is preserved and
`Picard's system is merely being modified to incorporate the telecentric mode
`of Ishihara.
`I'm at Slide 27. The 447 Patent itself concedes that telecentric
`optics were known. And that's shown in the excerpt here from the 447
`Patent. Again, in Patent Owner's surreply, Patent Owner has --
`JUDGE POWELL: This is Judge Powell.
`MR. LEE: Yes.
`JUDGE POWELL: First, you've used 26 minutes. So you've got
`four minutes left of your rebuttal time. And being as time is short, I'd like
`to hear your response to Patent Owner's assertion that the reply addresses
`why a person of ordinary skill in the art would have thought that he or she
`could have used the telecentric lens with the axial chromatics, but not of
`Picard specifically, but not why a person of ordinary skill in the art would
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`have believed it would be appropriate or desirable to use Ishihara's
`telecentric lenses with Picard specifically.
`MR. LEE: Your Honor, for that I'd like to go to Slide 32. It's true
`that Petitioners have argued that it would be possible to combine
`telecentric with chromatic. But that argument was merely in response to
`Patent Owner's argument that it is impossible to do so.
`And that's shown at Slide 32 from Patent Owner's response where
`Patent Owner argued that telecentricity is incompatible with chromatic
`confocal imaging.
`In Slide 34, we explain that that argument is very confusing.
`Because the 447 patent itself uses telecentricity in combination with
`chromatic confocal imaging.
`And so that line of argumentation that Petitioners made with respect
`to the feasibility or the possibility of combining telecentricity with chromatic
`confocal imaging was merely made in response to Patent Owner's argument
`that it is impossible.
`With respect to motivation as to why a person of ordinary skill in the
`art would have incorporated telecentric optics together with chromatic
`confocal imaging, that was explicitly outlined in the petition.
`Ishihara provides motivation. Dobson provides motivation as well.
`Ishihara explains that using telecentric optics addresses magnification issues.
`And in fact, Dr. Sergienko, in Exhibit 2025, at Page 50, Line 20, to Page 51,
`Line 16, Dr. Sergienko also provides additional explanation as to how
`telecentric optics addresses the magnification issue.
`And so there is sufficient evidence for why a person of ordinary skill
`in the art would have had reason to modify Picard while keeping the axial
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`chromatism, the chromatic confocal aspect of Picard, and merely adding
`telecentric optics in order to address the magnification issue that Ishihara
`described as being undesirable.
`Your Honor, does that answer your question?
`JUDGE POWELL: Yes, that sheds some light on it. I don't know
`if it resolves the matter. But it will help, I'm sure.
`MR. LEE: Okay. Well, on that note, I'd also like to go back to
`Slide 25 and address another argument that Patent Owner has made with
`respect to the combination of Picard and Ishihara.
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`Patent Owner, in its surreply, has argued that incorporating the
`telecentric optics of Ishihara into Picard would require a drastic, quote-
`unquote, redesign of Picard. But that is not --
`JUDGE POWELL: This is Judge Powell. I just wanted to let you
`know you can keep going, but the 30 minutes is up. And you're into
`rebuttal time.
`MR. LEE: Okay. We understand that. Thank you for the
`reminder, Your Honor.
`JUDGE POWELL: Sure.
`MR. LEE: We will get through a couple more arguments, and then
`we'll reserve the remainder of our time for rebuttal.
`JUDGE POWELL: Great.
`MR. LEE: Thank you. So again, Patent Owner has argued that
`combining Picard with Ishihara would require a drastic, quote-unquote,
`redesign of Picard. But that is not true.
`Dr. Sergienko, again, has testified that incorporating telecentricity
`into Picard is a straightforward and predictable operation that a person of
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`ordinary skill in the art would understand how to do it. And Dobson also
`provides explicit evidence as to how and why a person would have done
`this.
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`In fact, Dr. Sergienko says that simply combining Picard with
`Ishihara would work. And that if, quote-unquote, absolutely reliable results
`were desired, a person of ordinary skill in the art would have calibrated
`Picard's systems, and any person of ordinary skill in the art would have
`known how to do this in view of Dobson.
`Again, Dobson was relied on in the petition at the outset. And that
`testimony appears in Exhibit 2025 at Page 69, Line 2, to Page 74, Line 4.
`And so, with the remaining time, I'd like to skip over and briefly
`address issues with regard to the Tiziani grounds. And I'm at Slide 45 of
`the 447 demonstratives.
`And there are three points I'd like to make. Patent Owner has
`argued that the Petitioner has not shown a reasonable expectation of success
`in combining Gmitro's fiber optic bundle together with Tiziani system.
`But I showed at Slide 45 the 447 Patent itself provides no details
`concerning how its probing member is incorporated with the remainder of
`the system.
`And the absence of details for how to combine the probing member
`with the system makes sense, because a person of ordinary skill in the art
`knew how to do that. And that's apparent in view of Exhibit 1038, which is
`in Slide 46, as well as Picard which is discussed in Slide 47.
`And with that, Your Honors, I'd like to reserve the remainder of my
`time for rebuttal.
`JUDGE POWELL: Okay. You have 12 minutes left. And --
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`MR. LEE: Thank you very much, Your Honor.
`JUDGE POWELL: Thank you.
`So no hurry, but whenever Patent Owner would like to respond, you
`have the floor.
`MS. PELLETIER: Thank you, Judge Powell. This is Pauline
`Pelletier on behalf of the Patent Owner, Align.
`Good morning, Your Honors, and may it please the Board, I want to
`pick up with a point raised at the beginning of this hearing. And I want to
`confirm so that it's crystal clear that Align's patent owner response has not
`advocated for plain and ordinary construction.
`And that's because the institution decisions correctly recognized that
`all of 3Shape's unpatentability contention rest solely on the means-plus-
`function construction in the petition.
`So Align's position remains as it's been since the beginning, even
`pre-institution, that 3Shape can only prevail, if at all, based on the theory it
`specified in its petition.
`As Judge Roesel put it, all of Petitioner's eggs are in the
`means-plus-function basket. And as a result, no other construction has been
`briefed in these IPR trials
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