• Dental Imaging Technologies Corporation v. 3shape A/SInstitution denied
  PTAB · Oct 29, 2024 · IPR2024-00849 · APJ James J Mayberry · IPR · Institution

  The Board denied institution of review for claims 1, 2, 4, 5, 9, 10, and 12–17 under General Plastic discretion and denied joinder; it did not reach the merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “g. Summary and Conclusion In summary, we determine that factors 1, 3, and 6 weigh in favor of discretionary denial, factors 2, and 4 weigh against discretionary denial, and factors 5 and 7 are neutral. Considering these factors as a whole, and on this record, we determine that the facts here weigh in favor of exercising discretion under 35 U.S.C. § 314(a) to deny institution. Significant to our analysis is that the similarities in the facts in the instant proceeding and Uniloc outweigh the differences. Specifically, the primary difference between the facts here and the facts in Uniloc is that Petitioner explained its knowledge of the prior art and, as to Lehmann II, Petitioner demonstrated that it was not aware of Lehmann II prior to filing the first petition. In Uniloc, Apple made no such showing. As we discuss above, however, the significance of Lehmann II in this proceeding may be limited, given our initial determination of the merits of Patent Owner’s arguments against Lehmann II in the Medit IPR. As such, the lack of knowledge of Lehmann II is insufficient to counter the similarities between this proceeding and Uniloc.” slip op. at 24

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “2. Merits Analysis Having decided to exercise discretion to deny institution, we need not turn to the merits of the Petition and Motion. III. CONCLUSION We determine that exercising our discretion to not institute this proceeding is warranted based on our precedential decisions in General Plastic and Uniloc. Accordingly, the Petition and Motion are denied.” slip op. at 24

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. “To join a party to an instituted [inter partes review (IPR)], the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First, the statute requires that the Director (or the Board acting through a delegation of authority) . . . determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise h[er] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. As the moving party, Petitioner bears the burden of proving that it is entitled to joinder. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 14

  Discretionary denial
  Patents in suitUS 10,695,151
• Mito Red Light, Inc. v. Joovv, Inc.Institution denied
  PTAB · Sep 19, 2024 · IPR2024-00621 · APJ Hubert C Lorin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 3, 9, 10, 11, 16, 17, and 19 were unpatentable under either obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For at least the foregoing reasons, Petitioner has not met its burden of showing, with particularity, that Dijkstra teaches a plurality of lights as claimed. The evidence Petitioner presents does not sufficiently support Petitioner’s contention that Dijkstra shows a light therapy device comprising a plurality of lights as claimed. Furthermore, Petitioner provides no discussion as to why it would have been obvious to one of ordinary skill in the art, given Dijkstra, to provide a light therapy device with a plurality of lights with reasonable expectation of success. Pet. 8–10. Accordingly, the Petition does not establish a reasonable likelihood that independent claim 1 is unpatentable over Dijkstra.” slip op. at 18

  • Obviousness (§103) › Analogous artNon analogous artDecided for patent owner

    “A reference qualifies as prior art for an obviousness determination under 35 U.S.C. § 103 only when it is analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also Innovention Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed or (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Klein, 647 F.3d at 1348.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Based on the above, and on this record, the parties do not assert terms that are in controversy. Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Therefore, we determine that no express construction of any term is necessary. C. Level of Ordinary Skill in the Art” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s proposed definition of the level of ordinary skill. Prelim. Resp. 14 (citing Ex. 2014 ¶¶ 40–42). We apply Petitioner’s description of the qualifications of a POSITA in our analysis as it appears consistent with the problems addressed in the ’719 patent and the prior art. D. Overview of the Prior Art References” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,253,719
• 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution denied
  PTAB · Aug 19, 2024 · IPR2024-00549 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–20 of the ’798 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’798 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’798 patent would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. 4 U.S. Patent Application Publication No. 2012/0062701 A1, published Mar. 15, 2012 (Ex. 1010) (“Dillon”). 5 A. Johnson, “Spin-images: A Representation for 3-D Surface Matching,” Ph.D. Dissertation, The Robotics Institute, Carnegie Mellon University, August 1997 (Ex. 1011) (“Johnson”). Pet. 7–8 (emphasis added). Patent Owner counters that a POSITA at the time of the invention of the ’798 patent would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning including 3D imaging systems and 3D modeling techniques. Additional education reduces the threshold for years of experience in the field, and vice versa. Prelim. Resp. 5 For purposes of this Decision, the level of ordinary skill in the art is” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner notes there are proposed constructions of terms in the related litigation, including constructions for “‘contiguous scan’” and “‘occlusal surface.’” Pet. 8–9. Here, Petitioner further contends that the term “‘occlusal surface’” means “‘the biting surface of a patient’s teeth’” and that “‘contiguous scan’” means “‘a scan of an/the occlusal surface made in a single, uninterrupted motion of the scanning wand.’” Id. at 8. Nonetheless, Petitioner contends also that “resolution of this Petition does not depend on which constructions are used because these features of the claims are disclosed by the prior art regardless of the construction.” Id. at 9. Patent Owner disagrees that no claim terms need construction. Prelim. Resp. 6. According to Patent Owner, “3Shape has not adequately addressed how numerous elements of the challenged claims are disclosed or suggested by the prior art under 3Shape’s proposed construction of the phrase ‘contiguous scan of an occlusal surface.’” Id. Based on our review of the parties’ arguments and evidence, no construction is necessary to resolve the parties’ disputes. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12

  • BurdenNot shown unpatentable

    “As described, we understand Babayoff to teach that data entities IS′1, IS′2, . . . IS′n are stitched together after identifying and removing soft tissue data from the unstitched data sub-entities. Our understanding of Babayoff is consistent with Figure 15, where Babayoff teaches that the entities IS1, IS2, . . . ISn) are provided in step 1210 “to be stitched,” but are not stitched until step 1240. Ex. 1008, Fig. 15. Babayoff further discloses that the images are stitched together after soft tissue identification and/or removal: [i]n the next step 1230 of the method, the modified entities (IS'1, IS'2, ... IS'n) are then manipulated in a similar manner in which the original entities (I1, I2, ... In.) are manipulated in the prior art, mutatis mutandis, to register and then stitch the various modified entities (IS'1, IS'2, ... IS'n) together to provide a composite entity I’ that comprises the data points corresponding at least to the hard tissues. Id. at 24:41–47 (emphases added). As such, in Babayoff, the soft tissue is removed prior to stitching and generating the composite entity I’. Babayoff further teaches that “[b]y eliminating the data associated with the soft tissues, and proceeding with stitching only the hard tissues using the color data, the quality of the stitching procedure is significantly better than when using the full intra-oral data for the stitching procedure.” Id. at 5:12–16 (emphases added). Given at least this disclosure, we agree with Patent Owner that Petitioner has not sufficiently explained how Zhang combined with Babayoff discloses claim limitations [1.3], [1.9], [1.10], and [1.11]. More specifically, Petitioner relies upon Babayoff to disclose the removal of soft tissue data from the generated contiguous scan, but does not explain how Babayoff teaches this removal from the contiguous scan that has been generated by stitching images together prior to soft tissue data removal.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,234,798
• 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution denied
  PTAB · Aug 19, 2024 · IPR2024-00548 · APJ Stacey G White · IPR · Institution

  The Board denied institution because Petitioner did not show that the cited art taught multiple successful bite registrations, as required by challenged claims 1–21.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “As the Federal Circuit has noted, it is not within our statutory authority to determine questions of indefiniteness of issued claims within a inter partes review proceeding. Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1350 (Fed. Cir. 2020). As such, we make no findings as to any alleged indefiniteness. The Federal Circuit, however, also has stated that “[t]he indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.” Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (emphasis added). Here, we are presented with a circumstance in which our determinations in this proceeding are not precluded by the allegations of indefiniteness. Thus, we will not deny the Petition based on Petitioner’s failure to identity corresponding structure for the purported means-plus-function terms of claim 13. Further, based on the record before us, we see no need for express construction of any term at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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))).” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “D. Asserted Obviousness Each of the independent claims, 1, 13, 18, 20, and 21, recite, in relevant part, obtaining at least two successful bite registrations corresponding to different displayed bite surfaces. Ex. 1001, 9:50–52 (claim 1), 11:13–15 (claim 13), 12:5–6 (claim 18), 12:31–32 (claim 20), 12:53–55 (claim 21). Patent Owner argues, and we agree, that “[b]y its plain language, this limitation requires obtaining multiple successful bite registrations.” Prelim. Resp. 20. In each of the asserted grounds, Petitioner relies on Sommer alone or with Malfliet to teach this limitation in each of the independent claims. Pet. 19–20 (claim 1), 55 (claim 13), 58 (claim 18), 63 (claim 20), 37 (claim 21). We are not persuaded that Petitioner has shown sufficiently that the art teaches this limitation.” slip op. at 13

  • Skill levelOther

    “Petitioner asserts that a person of ordinary skill in the art would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. Pet. 9 (citing Ex. 1009 ¶¶ 32–33). Patent Owner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning, including 3D imaging systems and 3D modeling techniques.” Prelim. Resp. 5. Patent Owner adds that “[a]dditional education reduces the threshold for years of experience in the field, and vice versa.” Id. For purposes of this Decision, the level of ordinary skill in the art is not dispositive and our determination would be the same under either party’s proposal. See Prelim. Resp. 5 (“Patent Owner’s arguments herein apply regardless of which definition of a POSITA is adopted.”). Nonetheless, we note that Petitioner’s proposal is reasonable and consistent with the prior art, and is further supported by Dr. Saber’s testimony. Ex. 1003 ¶ 33; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,076,391
• Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution denied
  PTAB · May 8, 2024 · IPR2024-00129 · APJ Lynne H Browne · IPR · Institution

  Institution was denied for claims 1–30 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstitution denied

    “Petitioner, however, does not explain how Agrawal’s web advertising system for identifying illegitimate advertising link request activity would have enhanced the reach of Oliver’s promotions. Oliver’s lead generation tool presents promotions to users via passive entities such as QR codes and enables users to respond to these promotions via text message. As Petitioner notes, Oliver discloses that its “passive entities can be incorporated into advertising” and “can be incorporated into ‘electronic visual media’ on the Internet.” Pet. 29 (citing Ex. 1011 ¶ 34). Petitioner does not adequately explain why Agrawal’s web advertising system is better that Oliver’s use of passive entities. Pet 28 (citing Ex. 1005, 5:45–63; Ex. 1002 ¶ 92). Petitioner argues that Agrawal “allows ads to be targeted at users likely to find the subject matter appealing.” Id. at 28–29. Yet the fact that Agrawal discloses retrieving advertising links relevant to a user’s search query, does not explain how or why that user is more “targeted” than another user who scans a passive entity such as a QR code as in Oliver. See Ex. 1005, 5:57– 58 (Agrawal discloses “using the keyword to select the appropriate advertising links.”), see also Ex. 1011 (Oliver teaching to “create a passive entity, such as a QR code or NFC tag associated with a promotion.”). In addition, Petitioner does not adequately explain how Agrawal’s method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are responding to passive entities in advertisements for those products by opting in.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundInstitution denied

    “d) Conclusion Re Petitioner’s Reasoning in Support of the Proposed Combination For the reasons discussed above, we determine that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Khanna as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,553,074
• Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution denied
  PTAB · May 8, 2024 · IPR2024-00069 · APJ Lynne H Browne · IPR · Institution

  Institution was denied for claims 15–30 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Molinet as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . result[ing] in inaccurate fees being charged for advertising services.”). Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “the server-based software techniques of Oliver and Molinet at Agrawal’s Advertising System 120” “to obtain the benefits of each system.” Pet. 31 (citing Ex. 1002 ¶ 95). Petitioner’s reasoning does not adequately explain why a person of ordinary skill in the art would make the proposed modifications and instead appears to be based on improper hindsight reasoning. Specifically, Petitioner does not adequately address which benefits of each system a person of skill in the art would be motivated to combine and what the advantages of combining functionalities of the references into a single server would be.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,416,897
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 29, 2024 · IPR2023-01317 · APJ Hubert C Lorin · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–8, 13–16, 18–20, 22, 26, 28, and 29 were unpatentable under § 103 over Orametrix, Faul, Breton, and Knighton.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Conclusion as to claim 1 After reviewing the record, we find Petitioner has not adequately explained with sufficient evidence that “Orametrix and Faul, further in view of Breton, teach” the limitation at [Claim 1h]. Pet. 29 (citing Ex. 1013 ¶ 100). We find Petitioner has not provided sufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h] with a reasonable expectation of success. On this record, for the above reasons, we are unpersuaded that the Petition establishes a reasonable likelihood that claim 1 is unpatentable over the combination of Orametrix, Faul, Breton, and Knighton.” slip op. at 31

  • BurdenDecided for patent owner

    “Petitioner does not address whether switching Orametrix’s color features, as encoding features, illuminates the object with different colors at different times ([Claim 1h]). Petitioner states that “Orametrix describes changing the color of projected encoded features . . . .” Pet. 26. But Petitioner does not explain how that satisfies what [Claim 1h] calls for. Petitioner does not explain, for example, how changing the encoding features of Orametrix’s digital image projection (i.e., probe light (see discussion supra regarding [Claim 1c])) yields an illuminated object with different colors at different times. Even assuming arguendo that Orametrix’s color features, as encoding features, corresponds to the illuminating “color of the probe light” ([Claim 1h]), Petitioner does not adequately explain how Orametrix’s processor (e.g., data processor 952 (see Ex. 1005, 16:20, Figure 11 ( reproduced in § II.D.1)) is configured to “selectively switch” the encoding features so that the object is illuminated with different colors at different times as [Claim 1h] requires. Petitioner relies on Dr. Liang’s testimony as support for its contention that Orametrix teaches a processor configured to “change the color of projected encoding features” but the testimony simply repeats what is said in the Petition without any discussion of objective facts. Compare Pet. 28, with Ex. 1013 ¶ 100 (“the processor of Orametrix is already configured to change the color of projected encoding features, and is configured to introduce color information from photo data into the three-dimensional model”). The cited evidence does not adequately show that Orametrix’s processor “selectively switch[es]” the color of Orametrix’s digital image projection to illuminate an object with different colors at different times and thereby teach [Claim 1h]. We agree with Patent Owner that Orametrix does not teach a hardware processor “configured to: selectively switch a color of the probe light to illuminate the object with different colors at different times” ([Claim 1h]). Prelim. Resp. 19.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “A principal difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to transmitting a “probe light towards [an] object along an optical path thereby illuminating at least a part of the object with the time-varying illumination pattern” ([Claim 1c]) based on which, in part, a 3D geometry of at least a part of the surface of an object in an oral cavity is determined ([Claim 1 pre]). As Patent Owner points out, “[b]oth Orametrix and Faul disclose methodologies to process the obtained data and construct three-dimensional representations of the scanned object.” Prelim. Resp. 26 (citing Ex. 1005, 30:7–34:11, Ex. 1004, 13:28–16:6. We agree with Patent Owner that “Breton is silent on this aspect.” Id. Patent Owner quotes various passages from Breton to show that “[a]t best, Breton discusses two-dimensional mapping and measurement of tooth color for the purposes of ensuring the accurate color shade of replacement teeth.” Id. at 25–26 (quoting Ex. 1003, Abstract, 2:43-47, 2:60-64; also citing Title, 1:7– 18, 2:50–52, Figure 3). We agree that the cited passages do not provide adequate support for determining a 3D geometry as Petitioner has shown for Orametrix and Faul. For example, the passage at 2:43-47 discloses: “[a] general drawback of the prior art lies in that the notion of comparison between the measured tooth and a duplicate is limited to a single point to point comparison. Thus, area defects cannot be detected where no measurement has been taken.” Id. at 2:43-47. There is no mention or suggestion of determining a 3D geometry for a tooth. Another difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to drawn to “[a] handheld intraoral scanner for determining the 3D geometry and color of at least a part of the surface of an object in an oral cavity” ([Claim 1 pre]). We agree with Patent Owner that Breton “is silent on this aspect.” Prelim. Resp. 27 (citing Ex. 1005, Figure 16; Ex. 1004, Abstract). “At most, Breton employs the use [of] square glass integrator rods, integrating spheres, optic fibers, and custom-made lenses.” Id. at 27 (citing Ex. 1003, 3:52–57, 11:35–38, 11:40-41, 11:47-49; referring to Figure 2 (“square glass integrator rods 20, 20”), Figure 4 (“integrating sphere 152”). “None of these light sources result in an ‘illumination pattern,’ much less a ‘time-varying illumination pattern.’” Id. Petitioner does not address these differences between the Breton apparatus and those of Orametrix and Faul. Petitioner does not explain why a person of ordinary skill in the art would have been led to modify Orametrix or Faul in light of Breton given these differences. Instead, to support its contention that a person of ordinary skill in the art “would understand that the processors described by Orametrix and Faul would be configured to implement the color changing scheme as taught by Breton,” Petitioner relies on Dr. Liang’s testimony. Pet. 28 (citing Ex. 1013 ¶ 100). But the testimony simply repeats what the Petition says without any discussion addressing the differences between the Breton apparatus and those of Orametrix and Faul. See Ex. 1013 ¶ 100. For the foregoing reasons, Petitioner provides insufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h].” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “[a]s of June of 2009, the priority date of the ’667 patent,” “would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, physics, or an equivalent field, as well as at least one or two years of design experience, or alternatively, at least five years of comparable industry experience.” Pet. 4–5 (citing Ex. 1013 ¶¶ 57–59). Petitioner also asserts that a person of ordinary skill in the art “would have had experience with and knowledge of, 3D imaging systems and 3D modeling techniques.” Id. Patent Owner does not address Petitioner’s characterization of a person of ordinary skill in the art. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and apply that definition for our analysis in this Decision. C. Claim Construction” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,368,667
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 29, 2024 · IPR2023-01316 · APJ Hubert C Lorin · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of success on either §103 ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). B. Level of Ordinary Skill in the Art slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “Reason to combine In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’).” Id. at 418.” slip op. at 26

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art “[a]s of June of 2009, the priority date of the ’146 patent,” “would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, physics, or an equivalent field, as well as at least one or two years of design experience, or alternatively, at least five years of comparable industry experience.” Pet. 5 (citing Ex. 1002 ¶¶ 51–53). Petitioner also asserts that a person of ordinary skill in the art “would have had experience with and knowledge of, 3D imaging systems and 3D modeling techniques.” Id. Patent Owner does not address Petitioner’s characterization of a person of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and apply that definition for our analysis in this Decision.” slip op. at 9

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,076,146
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 25, 2024 · IPR2023-01314 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’553 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 43–48.” slip op. at 30

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Regarding the preambles of independent claims 1 and 22, as well as the claim term “excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation,” Petitioner asserts that it “applies the claim construction previously adopted by the district court in the co-pending litigation.” Pet. 9–10. Petitioner asserts that “the parties agreed that the preambles of independent claims 1 and 22 are limiting, and the district court adopted this construction in its order.” Id. at 9–10 (citing Ex. 1011, 2 (district court claim construction order)). Petitioner also asserts that “the district court adopted Patent Owner’s preferred construction of [‘excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation’]: ‘excluded volume in space that is common to both the first and second 3D representations where no surface from either of the 3D representations should be present.” Id. at 10 (citing Ex. 1011, 2). Patent Owner does not respond other than to repeat Petitioner’s assertions regarding the district court’s claim constructions. Prelim. Resp. 9. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,064,553
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 22, 2024 · IPR2023-01313 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,629,551

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.