Align Technology, Inc.

Patent Trials and Appeals Board

Jun 17, 2020

IPR2019-00150 (P.T.A.B. Jun. 17, 2020)

Trials@uspto.gov Paper 43
Tel: 571-272-7822 Entered: June 17, 2020

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.

IPR2019-00150
Patent 8,638,447 B2

Before BRIAN J. McNAMARA, NEIL T. POWELL, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
POWELL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claim Unpatentable
Dismissing in Part and Denying in Part Petitioner’s Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
Petitioner filed a Petition (Paper 3, “Pet.”) requesting an inter partes
review of claims 17–25 of U.S. Patent No. 8,638,447 B2 (Ex. 1001, “the
’447 patent”). Patent Owner filed a Preliminary Response. Paper 10
(“Prelim. Resp.”). In view of those submissions, we instituted an inter
partes review of claims 17–25 of the ’447 patent. Paper 11 (“Institution
Decision” or “Inst. Dec.”). Subsequent filings include a Patent Owner
Response (Paper 22, “PO Resp.”), a Petitioner Reply (Paper 26, “Pet.
Reply”), and a Patent Owner Sur-reply (Paper 30, “Sur-reply”).
Additionally, Petitioner filed a Motion to Exclude Evidence (Paper 35,
“Mot.”), Patent Owner filed an Opposition to Petitioner’s Motion to Exclude
Evidence (Paper 36, “Opp.”), and Petitioner filed a Reply in Support of
Motion to Exclude Evidence (Paper 38, “Mot. Reply”). An oral hearing was
held on April 15, 2020, and a copy of the transcript was entered into the
record. Paper 42.
We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
After considering the evidence and arguments of the parties, we determine
that Petitioner has not proven by a preponderance of the evidence that
claims 17–25 of the ’447 patent are unpatentable. See 35 U.S.C. § 316(e).
We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
II. BACKGROUND
A. Related Matters
The parties identify the following civil action and investigation:
Align Technology, Inc. v. 3Shape A/S, Civil Action No. 1:17-
cv-01648 (D. Del. filed Nov. 14, 2017); and
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In the Matter of Certain Intraoral Scanners and Related
Hardware and Software, Inv. No. 337-TA-1090 (U.S. Int’l Trade
Comm’n, complaint filed Nov. 14, 2017).
Pet. 2; Paper 5, 1.
B. The Asserted Grounds of Unpatentability
Petitioner contends that claims 17–25 of the ’447 patent are
unpatentable based on the following grounds:
Claims Challenged 35 U.S.C. § References/Basis
17, 18, 22, 23, 25 103(a)1 Picard2, Ishihara3
17, 18, 22, 23, 25 103(a) Tiziani4, Gmitro5, Ishihara
19, 24 103(a) Tiziani, Gmitro, Ishihara, Kino6

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287 (2011), amended 35 U.S.C. § 103. Because the application
from which the ’447 patent issued was filed before March 16, 2013, the
effective date of the relevant amendment, the pre-AIA version of § 103
applies.
2 French Patent Application No. FR 2707018, published Dec. 30, 1994
(Ex. 1003).
3 U.S. Patent No. 5,737,084, issued Apr. 7, 1998 (Ex. 1007).
4 H.J. Tiziani et al., Theoretical analysis of confocal microscopy with
microlenses, 35 APPLIED OPTICS 120–25 (1996) (Ex. 1004).
5 Arthur Gmitro & D. Aziz, Confocal microscopy through a fiber-optic
imaging bundle, 18 OPTICS LETTERS 565–67 (1993) (Ex. 1005).
6 Kino et al., WO 88/07695, published Oct. 6, 1988 (Ex. 1006).
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Claims Challenged 35 U.S.C. § References/Basis
20, 21 103(a) Tiziani, Gmitro, Ishihara, Kino,
Watson7
Petitioner also relies on Declarations of Alexander Sergienko, Ph.D.
Exs. 1008, 1037. Patent Owner relies on the Declaration of David Aikens.
Ex. 2019.
C. The ’447 Patent
The ’447 patent relates to an apparatus and method for imaging three-
dimensional structures like teeth without contact. Ex. 1001, 1:32–35.
Figures 1A and 1B of the ’447 patent are reproduced below.

7 T. F. Watson et al., In vivo confocal microscopy in clinical dental
research: an initial appraisal, 20 J. DENT. 352–58 (1992) (Ex. 1010).
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Figures 1A and 1B show apparatus 20, which includes optical device 22
(shown in Figure 1A) and processor 24 (shown in Figure 1B). Id. at 5:15–
18.
Optical device 22 includes semiconductor laser unit 28, polarizer 32,
optic expander 34, module 38, partially transparent mirror 40, telecentric
confocal optics 42, relay optics 44, and endoscopic probing member 46,
detection optics 60, control module 70, and motor 72. Id. at 5:31–63, 6:40–
42, 6:56–58, Fig. 1A. Detection optics 60 include polarizer 62, imaging
optic 64, matrix 66, and CCD camera 68. Id. at 6:40–50, Fig. 1A. The ’447
patent discloses that “[m]otor 72 is linked to telecentric confocal optics 42
for changing the relative location of the focal plane 60 of the optics 42 along
the Z-axis.” Id. at 6:58–60.
Processor 24 includes image capture module 80, CPU 82, display 84,
and modem 88. Id. at 6:56–7:22, Fig. 1B. Modem 88 may transmit data
through telephone line 90. Id. at 7:17–22.
Apparatus 20 “is particularly useful for determining the three-
dimensional structure of a teeth segment 26.” Id. at 5:18–20.
Semiconductor laser unit 28 emits “laser light, as represented by arrow 30.”
Id. at 5:31–33. The light travels through polarizer 32, optic expander 34,
and module 38. Id. at 5:33–38. Module 38 “may, for example, be a grating
or micro lens array which splits the parent beam 30 into a plurality of
incident light beams 36, represented here, for ease of illustration, by a single
line.” Id. at 5:38–43. Partially transparent mirror 40 includes a small central
aperture and permits transmission of the laser light through downstream
optics. Id. at 5:44–46.
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Endoscopic probing member 46 typically includes a light-transmitting
medium, as well as a mirror that sends the light beams toward teeth
segment 26. Id. at 6:4–10. “[E]ndoscope 46 thus emits a plurality of
incident light beams 48 impinging on to the surface of the teeth section.” Id.
at 6:11–12. “Incident light beams 48 form an array of light beams arranged
in an X-Y plane, in the Cartasian frame 50, propagating along the Z axis.”
Id. at 6:14–16. Light beams 48 illuminate spots 52 “at different (Xi, Yi)
locations.” Id. at 6:14–19.
From each illuminated spot 52, light reflects in a direction opposite
incident light beams 48 in the Z direction. Id. at 6:36–39. “Given the
unsymmetrical properties of mirror 40, the returned light beams are reflected
in the direction of the detection optics” 60. Id. at 6:40–42. After
polarization in polarizer 62, returned light beams 54 travel through imaging
optic 64, “typically a lens or a plurality of lenses, and then through a matrix
66 comprising an array of pinholes. CCD camera has a matrix [of] sensing
elements each representing a pixel of the image and each one corresponding
to one pinhole in the array 66.” Id. at 6:40–50. “[E]ach light intensity
measured in each of the sensing elements of the CCD camera, is then
grabbed and analyzed . . . by processor 24.” Id. at 6:52–55.
Because of the uneven surface of teeth segment 26, different spots 52
illuminated by different light beams 48 will be in different positions along
the Z axis. Id. at 6:16–19. Therefore, the light at one spot 52 may be in
focus, while the light at other spots 52 may be out of focus. Id. at 6:19–21.
“[T]he light intensity of the returned light beams . . . of the focused spots
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will be at its peak, while the light intensity at other spots will be off peak.”
Id. at 6:21–23.
Using this effect, the ’447 patent discloses determining the three-
dimensional shape of teeth segment 26. Control unit 70 cause motor 72 to
move optical element 42 to move the focal plane location. Id. at 6:60–62.
Subsequently, control unit 70 causes laser 28 to produce a pulse of light
while “synchroniz[ing] image-capturing module 80 to grab data
representative of the light intensity from each of the sensing elements.” Id.
at 6:63–67. “Then in subsequent sequences the focal plane will change in
the same manner and the data capturing will continue over a wide focal
range of optics 44.” Id. at 6:67–7:3. Therefore, “by determining the Zi,
corresponding to the maximal light intensity or by determining the
maximum displacement derivative of the light intensity, for each pixel, the
relative position of each light spot along the Z axis can be determined.” Id.
at 7:8–12. This allows obtaining data representative of the three-
dimensional shape of teeth segment 26. Id. at 7:12–14.
D. Illustrative Claim
Petitioner challenges claims 17–25. Claim 17 is independent. Each
of claims 18–25 depends, directly or indirectly, from independent claim 17.
Claim 17 recites:
17. An apparatus for determining surface topology of at least a
portion of a three-dimensional structure, the apparatus
comprising:
a probing member having a sensing face;
an illumination unit configured to transmit a parent light beam
along an optical path in the hand-held probe;
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a module positioned in the optical path and configured to
generate a plurality of incident light beams;
an optical system configured to focus the plurality of incident
light beams at a focal plane forward of the sensing face;
a detector unit configured to measure intensities of a plurality of
returned light beams that are generated from illuminating the
portion of the three-dimensional structure with the plurality of
incident light beams; and
a processor coupled to the detector unit and configured to
determine a surface topology of the three-dimensional structure
based at least in part on the measured intensities of the plurality
of returned light beams.
Ex. 1001, 10:3–20.
III. ANALYSIS
A. Claim Construction
In an inter partes review filed before November 13, 2018, generally,
claim terms in an unexpired patent are given their broadest reasonable
construction in light of the specification of the patent. 37 C.F.R. § 42.100(b)
(2016). In this proceeding, however, pursuant to our authorization, Patent
Owner filed an unopposed Motion & Certification for District Court
(Phillips) Claim Construction, certifying that the challenged patent will
expire within eighteen months of the entry of the Notice of Filing Date
Accorded to Petition. Paper 6 (“Motion”). We granted Patent Owner’s
Motion. Paper 8.
Therefore, we construe the challenged claims under the framework set
forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en
banc). Under this framework, claim terms are given their ordinary and
customary meaning, as would be understood by a person of ordinary skill in
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the art, at the time of the invention, in light of the language of the claims, the
specification, and the prosecution history of record. Id. Only those terms
that are in controversy need be construed, and only to the extent necessary to
resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
The Petition proposes constructions for certain claim language.
Pet. 14–21. Patent Owner argues Petitioner has not supported adequately
certain of the proposed claim constructions. PO Resp. 6–11.
In view of our analysis below, we need not construe expressly any claim
language to resolve the parties’ patentability dispute. Each of Petitioner’s
contentions of unpatentability rests on an assertion that it would have been
obvious to combine the teachings of multiple references. See Pet. 7–8. As
explained below, Petitioner does not demonstrate adequately a rational
underpinning for its assertions that it would have been obvious to combine
the teachings of the references. Therefore, regardless of the meaning of the
claims’ language, Petitioner fails to carry its burden of demonstrating
unpatentability.
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B. Alleged Obviousness over Picard and Ishihara
1. Overview of Picard
Picard discloses an apparatus for acquiring three-dimensional images.
Ex. 1003, 1:4–5.8 Picard uses confocal imaging. Id. at 2:15. Picard
discusses a confocal imaging device that uses a Nipkow disk for scanning, as
illustrated in Figure 2. Id. at 5:12–17, 11:18–19. Figure 2 is reproduced
below.

8 Picard has two sets of page numbers, including original page numbers
(appearing at the tops of the pages) and added page numbers (appearing at
the bottoms of the pages). Our citations use the original page numbers.
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Figure 2 shows a confocal imaging device that includes arc lamp 7, Nipkow
disk 8, focusing lens 9, objective lens 10, separator cube 11, focusing
lens 12, and CCD video camera 13. Id. at 6:1–8. Figure 2 also shows
object O, which is to be observed. Id. at 6:4.
Light source 7 lights Nipkow disk 8 through focusing lens 9. Id. at
6:1–2. Objective lens 10 casts the image from Nipkow disk 8 onto object O.
Id. at 6:3–4. Object O reflects light, which passes back through Nipkow
disk 8. Id. at 6:5. Separator cube 11 allows light passed by Nipkow disk 8
to be directed toward focusing lens 12, which casts the image from Nipkow
disk 8 onto CCD video camera 13. Id. at 6:6–8. When Nipkow disk 8 is
rotated, object O is scanned, and a two-dimensional image is generated at
camera 13. Id. at 6:9–13.
Picard notes that “the intensity of the image is maximal when the
points of the object to be observed are located in the focal plane P of the
objective lens 10.” Id. at 6:17–18. Picard discusses using this effect to
obtain three-dimensional images. Id. at 6:19–7:11. Picard explains that the
process includes acquiring multiple images of the object at different heights
and searching for the maximum light intensity from each of the object’s
points to determine the Z position of each of the object’s points. Id. at 6:21–
7:11 (noting that “the object is moved vertically to do this”).
Picard notes that the number N “represents the number of images
necessary to cover the topography of the object” and “the number of
acquisitions N can currently reach one hundred, or even one thousand in
certain applications.” Id. at 7:18–19. Picard explains that “[t]he present
invention makes it possible to obtain the three-dimensional image of the
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object in a single acquisition.” Id. at 7:16–17. Picard asserts that “the
benefit the present invention can represent is obvious.” Id. at 7:19–20.
Picard notes that “four elements make it possible to obtain a three-
dimensional image of the observed object, in a single acquisition.” Id. at
8:1–6. Those elements include “a polychromatic light source, i.e., one
having at least two different wavelengths,” “a confocal imaging system,”
“an objective lens having longitudinal chromatism or axial chromatism,” and
“a spectral analysis of the light.” Id.
Figure 3 of Picard “is a schematic view of a particular embodiment of
the device according to the invention.” Id. at 11:20–21. Figure 3 is
reproduced below.

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Figure 3 shows a device that includes broad-spectrum light source 7,
Nipkow disk 8, means of rotation 14, lens 9, separator cube 11, focusing
lens 12, and objective lens 15. Id. at 12:11–22.
The device shown in Figure 3 is similar to the device shown in
Figure 2, but replaces objective lens 10 with objective lens 15, which has an
axial chromatism. Id. at 12:11–22, Figs. 2, 3. As a result of this axial
chromatism, objective lens 15 “has as many different focal planes as there
are wavelengths present in the incident light beam.” Id. at 13:8–12.
Figure 8 of Picard “is a schematic and partial view of another device
according to the invention utilizing an ordered fiber-optic bundle.” Id. at
12:9–10. Figure 8 is reproduced below.

Figure 8 shows a device that “differs from that which is represented in
figure 3 by the fact that it further comprises an ordered fiber-optic
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bundle 30, which can be a pliable endoscope, between the objective lens 15
and the Nipkow disk 8.” Id. at 24:10–12.
2. Overview of Ishihara
Ishihara discloses “an arrayed confocal imaging system.” Ex. 1007,
8:8–10. One embodiment of such a system is shown in Figure 5, which is
reproduced below. Id.

Figure 5 shows a confocal imaging system that includes light source 6,
pinhole 1, collimator lens 7, polarizer 20, light path diverging element 21,
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microlens array 17, pinhole array 19, objective lens 12, and image forming
section 26. Id. at 8:10–27, 51–54.
The light from light source 6 travels through the confocal imaging
device as follows. The light passes through pinhole 1, collimator lens 7,
polarizer 20, light path diverging optical element 21, microlens array 17,
pinhole array 19, and objective lens 12. Id. at 8:10–43. Light reflected from
object O passes through objective lens 12, converges toward pinhole
array 19, gets refracted by microlens array 17, deflects off light path
diverging optical element 21, and enters image forming section 26. Id. at
8:44–54.
Objective lens 12 includes lenses 12a and 12b, telecentric diaphragm
11, and plate 22. Id. at 8:27–29. “[T]he lenses 12a and 12b on each side of
the telecentric diaphragm 11 and the telecentric diaphragm make up a
telecentric lens which prevents the magnification from being changed if an
object O or the imaging system is moved in the direction of the optical axis.”
Id. at 8:29–34.
Ishihara discusses alternate ways of adjusting focus in the Z direction.
Ishihara discusses a “conventional three-dimensional shape measuring
apparatus which uses the object stage to change the distance in the Z
direction between the object and the object-position-in-focus.” Id. at 6:21–
24. Ishihara also discusses using “refraction means for changing the object-
position-in-focus, instead of the object stage being moved in the Z direction,
to change the distance between the object and the object-position-in-focus in
the Z direction.” Id. at 6:29–34. Ishihara discloses an example of the
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refraction approach in connection with Figure 11, which is reproduced
below.

Figure 11 shows confocal imaging system 203 used with refraction
means 204. Id. at 13:1–15. Refraction means 204 “changes the relative
position between the object and the object-position-in-focus in the Z
direction, or the position of an object point so that the intensity of the
reflected light detected by the confocal imaging system 203 becomes
maximum.” Id. at 13:10–15.
3. Discussion
The Petition asserts that Picard teaches a device for determining
surface topology that meets most of the limitations of claims 17, 18, 22, 23,
and 25. Pet. 22–34. The Petition cites Ishihara when addressing claim 17’s
limitation of an “optical system configured to focus the plurality of . . . light
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beams.” Id. at 26–29. The Petition asserts that this claim language invokes
§ 112, sixth paragraph and requires, inter alia, “confocal optics operating in
a telecentric mode.”9 Id. at 18. The Petition notes that “Picard teaches a
confocal imaging apparatus (Ex. 1003, Fig. 3), but does not explicitly
disclose confocal optics which operate in telecentric mode.” Id. at 35. The
Petition asserts that Ishihara teaches such confocal optics. Id. at 27–28, 35.
The Petition asserts that a person of ordinary skill in the art would
have been motivated to modify Picard’s optical system to have confocal
optics that operate in telecentric mode. Id. at 35–41. The Petition notes that
Picard and Ishihara each teach a confocal imaging system for determining
surface topology of a three-dimensional structure that function similarly. Id.
at 35–36. The Petition cites Ishihara and Dobson10 as evidence that Picard’s
confocal imaging system would have been recognized as suffering from “the
magnification problem,” which could be addressed with telecentric optics.
Id. at 36–37. Accordingly, the Petition argues that a person of ordinary skill
in the art “would have been motivated to incorporate such telecentric optics

9 Claim 17 does not recite explicitly that the confocal optics operate in a
telecentric mode. However, the Petition does not present any theory of
obviousness other than its assertion that it would have been obvious to
combine Ishihara’s telecentric mode with Picard’s system. See Pet. 21–43;
Inst. Dec. 8–10. Therefore, we express no opinion on the issue of whether
claim 17 requires telecentric optics, and we limit our analysis to the merits
of the obviousness theory advanced in the Petition and addressed by Patent
Owner.
10 Sarah L. Dobson, et al., “Diffractive lenses for chromatic confocal
imaging,” Optical Society of America, 1997 (Ex. 1011).
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into Picard’s system as a known technique to improve its confocal imaging
capabilities in the same way such telecentric optics improve the similar
system of Ishihara.” Id. at 37.
The Petition contends that a person of ordinary skill in the art would
have had a reasonable expectation of success in modifying Picard’s
apparatus to use telecentric optics. Id. at 37–41. The Petition explains that
Picard and Ishihara both teach apparatuses that determine surface topology
of an object using a source, a beam splitter, and focusing optics arranged in
similar manners to produce light at different focal planes. Id. According to
the Petition, a person of ordinary skill in the art
would have therefore appreciated that modifying Picard with
Ishihara’s telecentric confocal optics by replacing Picard’s lens
15 with such optics (or adding such optics between Picard’s
Nipkow disk 8 and lens 15) would have been a matter of mere
substitution or addition in view of the close similarities of
Picard’s and Ishihara’s systems, and would have been simple to
accomplish with a reasonable expectation of success.
Id. at 41(citing Ex. 1008 ¶ 140).
The parties’ arguments raise a number of different disputes regarding
Petitioner’s contention that claims 17, 18, 22, 23, and 25 would have been
obvious over Picard and Ishihara. One of these disputes is whether
Petitioner has shown adequately that a person of ordinary skill in the art
would have had reason to modify Picard’s system to use Ishihara’s
telecentric operation. PO Resp. 25–36.
In support of its position, the Petition asserts that Picard’s lens 15
focuses polychromatic light at different planes, which results in undesirable
differences in magnification. Pet. 36. The Petition explains that “Ishihara
discloses a confocal imaging apparatus with telecentric confocal optics,
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which is designed to prevent undesirable magnification when changing the
focal plane of light during confocal imaging.” Id. The Petition adds that
“Dobson, which, like Picard, discloses a chromatic scanning confocal
imaging system, also teaches that a telecentric system addresses the
magnification problem.” Id. The Petition concludes that
Thus, a POSITA would have recognized that the problem of
undesirable magnification associated with changing the focal
plane by moving the imaging system as described in Ishihara is
present in Picard’s system which changes the focal plane by
using light beams of different wavelengths. Here, a POSITA
would have appreciated that incorporation of telecentric confocal
optics – such as those disclosed in Ishihara – would have
benefited Picard’s system by preventing undesirable
magnification when changing the focal plane of light during
confocal imaging in Picard. Thus, a POSITA would have been
motivated to incorporate such telecentric optics into Picard’s
system as a known technique to improve its confocal imaging
capabilities in the same way such telecentric optics improve the
similar system of Ishihara.
Id. at 37 (citing Ex. 1008 ¶¶ 136–137).
Patent Owner argues that a person of ordinary skill in the art would
not have combined Ishihara’s telecentric optics with Picard’s system. PO
Resp. 25–47. Patent Owner asserts that the magnification problem discussed
in Ishihara does not apply to Picard’s system. Id. at 26–28. Patent Owner
argues that Ishihara focuses light on a single plane, either optically moving
the focal plane relative to the object, or moving the object relative to the
focal plane. Id. at 27. Patent Owner elaborates that Ishihara’s telecentric
optics prevent magnification changes resulting from relative movement
between the single focal plane and the object. Id. In contrast, Patent Owner
argues, Picard does not move the focal plane and the object relative to one
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another, but performs depth encoding by relying on multiple stationary focal
planes for different wavelengths of light. Id. at 27–28. Therefore, Patent
Owner argues, unlike in Ishihara, “[t]he magnification in Picard does not
change during operation.” Id. at 28.
Patent Owner also argues that the axial chromatism of Picard’s
lens 15, which focuses different wavelengths on different planes, constitutes
“Picard’s basic principle of operation, and purported point of novelty.” Id.
at 26. Patent Owner asserts that Picard “exploits the aberration to encode
the distance along the z-axis.” Id. at 29. Patent Owner elaborates that
Picard explains different wavelengths of light are transmitted with different
degrees of intensity, depending upon the positional relationship between the
different wavelengths’ focal planes and the surface of the object. Id. at 30.
According to Patent Owner, “[a]s Dr. Sergienko admitted in his deposition,
Picard’s system requires chromatism to determine the surface topology of an
object.” Id. Indeed, Patent Owner argues, “the very definition of
telecentricity is contrary to the main feature of Picard’s invention.” Id. at
32.
Patent Owner adds that “Picard’s system already includes structures to
accommodate any difference in magnification versus color.” Id. at 33.
Patent Owner asserts that a number of approaches simpler than telecentric
optics could have been used to accommodate different magnifications of
different colors. Id. at 35. Patent Owner further argues that Picard requires
no modification to address magnification differences “because Picard’s
algorithm easily accounts for any difference in magnification by allowing
for lateral chromatic aberration.” Id. at 35–36.
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In its Reply, Petitioner maintains that “[i]t would have been obvious
to combine Picard and Ishihara.”11 Pet. Reply 14. Petitioner contends that
the ’447 patent acknowledges that it was well-known to operate confocal
optics in telecentric mode. Id. (citing Ex. 1001, 5:61–64). Noting that
Patent Owner “asserts that telecentricity is incompatible with a chromatic
confocal system like the one disclosed by Picard,” Petitioner disagrees. Id.
at 15. Petitioner argues that Dobson “demonstrates that it was known that
(1) chromatic confocal systems suffer from magnification problems and
(2) telecentric systems were used to address such magnification problems.”
Id. Arguing that Dr. Sergienko testified Picard’s lens 15 creates
magnification issues, Petitioner contends that Patent Owner’s “assertion that
Picard does not suffer from magnification issues (POR, 26-30) is untenable.”
Id. at 16. Petitioner asserts that Patent Owner’s admission that “Picard was
quite aware of the difference in the magnification for the various
wavelengths” (PO Resp. 35) contradicts Patent Owner’s position that Picard

11 Petitioner also argues that “[t]here is no need for Ishihara if the Board
agrees with [Patent Owner] that the claims do not require telecentric mode.”
Pet. Reply 14. Because the Petition did not assert that the claims are
unpatentable over Picard separately from Ishihara, we do not address
Petitioner’s new argument to this effect. 37 C.F.R. § 42.22(a)(2) (requiring
a petition to include “[a] full statement of the reasons for the relief
requested, including a detailed explanation of the significance of evidence
including material facts, and the governing law, rules, and precedent”);
37 C.F.R. § 42.104(b)(4) (requiring that a petition must identify “[h]ow the
construed claim is unpatentable under the statutory grounds identified in
paragraph (b)(2) of this section. The petition must specify where each
element of the claim is found in the prior art patents or printed publications
relied upon.”).
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does not have a magnification problem (id. at 26). Pet. Reply 16. Petitioner
also argues that the ’447 patent teaches performing chromatic confocal
imaging with telecentricity. Id. at 17–21.
In response, Patent Owner maintains that Petitioner has not
demonstrated it would have been obvious to modify Picard with Ishihara’s
telecentric optics. Sur-reply 11–18. Patent Owner again emphasizes that the
axial chromatism of Picard’s lens 15 constitutes an important feature of its
system, not a problem. Id. at 12–14. Patent Owner also argues that
Petitioner’s Reply improperly relies on Dobson as a bridge between Picard
and Ishihara, when the Petition did not rely on Dobson in this manner. Id. at
14–18. Additionally, Patent Owner argues that, in citing the ’447 patent
itself as teaching the combination of telecentric optics with a chromatic
confocal system, Petitioner resorts to improper hindsight. Id. at 14.
Petitioner’s obviousness assertion rests on its contention that a person
of ordinary skill in the art would have viewed the axial chromatism of
Picard’s lens 15 as “the magnification problem” that would have motivated
modification to operate in a telecentric mode. Pet. 36. We find that
Petitioner’s contention is not proven by a preponderance of the evidence.
Patent Owner persuades us that Picard conveys the axial chromatism
of lens 15 constitutes a key feature of its system, not a problem. PO Resp.
26–30. Mr. Aikens testifies that Picard’s “basic principle of operation, and
purported point of novelty, requires focusing light at different planes via
axial chromatic aberration,” provided by lens 15. Ex. 2019 ¶ 106.
Mr. Aikens explains that Picard leverages the axial chromatism of lens 15 to
ascertain the position of an object along the z-axis. Id. ¶¶ 68–70, 106–114.
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Consistent with this, Dr. Sergienko testifies that “[t]he axial chromatism in
Picard is the main feature to achieve this section,” elaborating that “[t]hey’re
arranging the device to provide the longitudinal dynamics, because
longitudinal dynamics it’s information about position of the focal planes
along the axis longitudinally.” Ex. 2012, 85:21–86:10.
Patent Owner argues and provides evidence that (1) Picard discloses
an architecture that already addresses any effects of magnification
differences (PO Resp. 33–35) and (2) approaches other than telecentric
operation would have been viewed easier ways to address any concerns
about magnification. Id. at 33–36. Patent Owner persuades us that a person
of ordinary skill in the art would understand Picard as disclosing an
architecture that accommodates effectively any differences in magnification.
Id. at 33–35; Ex. 2019 ¶¶ 119–125.
Petitioner does not dispute, much less discredit this contention. See
generally Pet. Reply. Instead, Petitioner takes issue with Patent Owner’s
assertion that telecentric operation was not the best way to address any
effects of magnification. Id. at 16. Petitioner explains that “Ishihara’s
telecentric mode need not be the most preferred/desirable solution.” Id.
We agree that the law does not require Petitioner to show a person of
ordinary skill in the art would have viewed the proposed modification as the
most preferred or desirable approach. The law does, however, require
Petitioner to show not only that a person of ordinary skill in the art could
have combined the references in the proposed manner, but that a person of
ordinary skill in the art would have had a reason to combine the references’
teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805
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F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention”). Here,
Petitioner does not do so.
Petitioner does not persuade us that a person of ordinary skill in the
art would have viewed Ishihara’s discussion of magnification problems as
applicable to Picard’s system. Patent Owner persuades us that Ishihara
teaches magnification problems stem from moving the object relative to the
system’s focal plane or moving the focal plane relative to the object. PO
Resp. 26–27; Ex. 2019 ¶¶ 108–109. Patent Owner also persuades us that
Picard teaches a stationary relationship between its focal planes and the
object, such that a person of ordinary skill in the art would have viewed
Ishihara’s discussion of problems stemming from moving the object/focal
plane as inapplicable to Picard’s system. PO Resp. 27–28; Ex. 2019 ¶¶ 68–
70, 109.
Additionally, Petitioner does not persuade us that Dobson would have
conveyed to a person of ordinary skill in the art that axial chromatism
creates a problem motivating the use of telecentric optics. See Pet. 36–37;
Pet. Reply 15–17. Dobson says nothing about a problem with magnification
stemming from axial chromatism. Instead, Dobson says “[t]he telecentric
system serves to image and demagnify the focus spot from the diffractive
lens onto the object plane of the microscope objective, where the position of
the focus is determined by the wavelength of the source.” Ex. 1011, 4746.
Additionally, Dobson says that “[t]he demagnification enables a fine change
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to the focus position in depth by wavelength tuning, which can be
characterized by a wavelength-to-depth coding.” Id. To the extent a person
of ordinary skill in the art might have perceived from Dobson that those
advantages correspond to addressing certain perceived problems, Petitioner
does not provide persuasive evidence that a person of ordinary skill in the art
would have believed that those problems generally apply to all chromatic
confocal microscopy or specifically apply to Picard’s disclosure. Petitioner
cites Dr. Sergienko’s testimony during his deposition that Picard’s lens 15
creates a magnification problem because it is “[t]he device that focuses at
different depths.” Pet. Reply 16 (citing Ex. 2012, 82:7–13, 84:13–17). We
find more credible Mr. Aikens’ testimony that different magnification of
different wavelengths is not a problem, but a key feature of Picard’s system.
Ex. 2019 ¶¶ 106–114, 119–125. Dr. Sergienko does not dispute Mr.
Aikens’ testimony that Picard exploits the different magnifications caused
by lens 15’s axial chromatism. Ex. 2019 ¶¶ 106–114; see generally,
Ex. 2012; Ex. 1037. Additionally, Dr. Sergienko does not dispute, much
less provide persuasive evidence to refute Mr. Aikens’ testimony that
Picard’s architecture already addresses any effects of magnification.
Ex. 2019 119–125; see generally, Ex. 2012; Ex. 1037. For example, Dr.
Sergienko does not refute Mr. Aikens’ testimony that “Picard’s algorithm
easily accounts for any difference in magnification.” Ex. 2019 ¶ 124; see
generally, Ex. 2012; Ex. 1037. Weighing the declarants’ testimony, and
keeping in mind that Petitioner bears the burden of proof, we are not
persuaded that a person of ordinary skill in the art would have ascertained
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from Ishihara or Dobson that Picard suffers from a magnification problem
needing correction.
We also find unavailing Petitioner’s reliance on the disclosures of the
’447 patent itself. Petitioner does not persuade us that the ’447 patent
admits it was known to use telecentric operation with a chromatic confocal
system. See Pet. Reply 20. In support of this assertion, Petitioner cites the
’447 patent’s disclosure that “[t]he unit further comprises a confocal optics
42, typically operating in a telecentric mode, a relay optics 44, and
endoscopic probing member 46. Elements 42, 44, and 46 are generally as
known per se.” Ex. 1001, 5:61–64; Pet. Reply 20. This disclosure conveys
that each of confocal optics 42, relay optics 44, endoscopic probing member
46, individually was known in the art. Facially, the disclosure does not
convey that the individually known elements previously had been combined.
And Petitioner does not present persuasive evidence that we should read the
disclosure as conveying more than its plain meaning, i.e., that the elements
separately were known in the art. Having failed to persuade us that the ’447
patent admits the combination of the elements was known in the art,
Petitioner’s assertions that the ’447 patent discloses using the claimed
elements together amounts to improper hindsight reasoning.
For the foregoing reasons, Petitioner fails to persuade us that a person
of ordinary skill in the art would have had a reason to modify Picard’s
system to use telecentric operation from Ishihara. Consequently, Petitioner
has not carried its burden of showing that claims 17, 18, 22, 23, and 25
would have been obvious over Picard and Ishihara.
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C. Alleged Obviousness over Tiziani, Gmitro, and Ishihara
1. Overview of Tiziani
Tiziani discusses using optical scanning confocal microscopy to
generate three dimensional images. Ex. 1004, 120. According to Tiziani, “a
recently developed approach using microlenses is analyzed; a microlens
array generates many light spots onto the object to be detected
simultaneously on a CCD array camera system.” Id. Tiziani shows an
exemplary system in Figure 2, which is reproduced below.

Id. at 123. Figure 2 shows a system for “three-dimensional analysis with a
microlens array.” Id. at 124.
Light from the diode laser gets collimated by lens LC. Id. The
microlens array focuses the parallel beam to “a two-dimensional, diffraction-
limited spot array.” Id. The same microlenses collect the reflected light,
which is focused by lens L1 to the pinhole. Id. After travelling through the
pinhole, the light goes to the CCD camera, at which the object is imaged. Id.
Moving the object in steps in the axial direction allows measuring the three-
dimensional topology of an object. Id. “For topography measurement the
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brightest intensity must be searched for each camera pixel to determine the z
values of the whole object.” Id.
2. Overview of Gmitro
Gmitro discusses optical scanning confocal microscopy. Ex. 1005,
565. Gmitro notes that confocal microscopes “typically consist of one or
more laser sources, confocal source and collection pinholes, an x–y scanning
mechanism, an optical detector, and a computer system for capturing and
displaying the images.” Id. According to Gmitro, using confocal
microscopes generally involves placing the object to be imaged on a stage,
as with other microscopes. Id. Gmitro laments that “this requirement
greatly limits the flexibility of the system and the types of imaging
applications for which confocal microscopes can be used.” Id.
Gmitro discloses using a fiber-optic imaging bundle to extend the use
of a confocal microscope “to image samples that are not easily accessible or
easily placed on a microscope stage. Confocal imaging of in vivo rather than
in vitro biological specimens is one of the exciting prospects for this type of
system.” Id.
Gmitro provides an example of a confocal microscope used with a
fiber-optic bundle in Figure 1, which is reproduced below.
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Id. Figure 1 shows a “[c]onfocal microscope equipped with a fiber-optic
imaging bundle. The components shown within the dotted line are those of
a standard confocal microscope.” Id.
3. Discussion
The Petition asserts that, in combination, Tiziani, Gmitro, and Ishihara
teach every limitation of claims 17, 18, 22, 23, and 25. Pet. 43–53. The
Petition asserts that Tiziani teaches most of the claims’ limitations (id.), but
does not expressly disclose certain things (id. at 54). Specifically, the
Petition concedes that Tiziani does not expressly teach a probing member,
confocal optics that operate in telecentric mode, or polarization optics. Id.
Asserting that Gmitro teaches a probing member, the Petition argues
that it would have been obvious to modify Tiziani to include a probing
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member. Id. at 54–57. The Petition contends that “Tiziani and Gmitro are
in the same field of endeavor—confocal microscopy.” Id. at 55. The
Petition argues that Gmitro teaches that the approach of imaging a specimen
on a stage restricts the system’s flexibility, as well as the applications for the
system. Id. at 55–57. The Petition notes that Gmitro teaches combining a
confocal imaging system with a fiber-optic imaging bundle, such that “the
confocal microscope can be extended to image samples that are not easily
accessible or easily placed on a microscope stage.” Id. at 55 (quoting
Ex. 1005, 565). The Petition further notes that Gmitro explains “[t]he small
size and flexibility of the fiber-optic imaging bundle could even allow
confocal imaging of objects that would otherwise be completely
inaccessible, such as inside the human body.” Id. (quoting Ex. 1005, 565).
Accordingly, the Petition argues that a person of ordinary skill in the art
would have been motivated to modify Tiziani’s confocal
imaging system to use a probing member—such as that disclosed
in Gmitro—because a [person of ordinary skill in the art] would
have recognized that use of such [a] probing member provides
greater flexibility and applicability of the confocal imaging
system to various types of imaging applications in the same way
that probing member improves the similar system of Gmitro.
Id. at 56 (citing Ex. 1008 ¶ 199).
The Petition also argues that a person of ordinary skill in the art would
have had a reasonable expectation of success in combining Gmitro’s fiber
optic bundle with Tiziani. Id. at 56–57. In support of this, the Petition
asserts that Tiziani and Gmitro both relate to confocal imaging devices. Id.
at 56. The Petition contends that a person of ordinary skill in the art would
have had a reasonable expectation of success “because the objective lens of
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Gmitro serves a similar purpose as Tiziani’s microlens array by generating
multiple light spots onto the object to be detected.” Id. at 56–57.
Asserting that Ishihara teaches confocal optics that operate in
telecentric mode, the Petition argues that it would have been obvious to
modify Tiziani to include such optics. Id. at 54, 57–62. The Petition
explains that Tiziani and Ishihara both teach confocal imaging systems for
determining surface topology of a three-dimensional object. Id. at 57. The
Petition argues that a person of ordinary skill in the art would have
understood, “[a]s taught in Ishihara,” that Tiziani’s system of focusing light
beams at different focal planes would have caused undesirable variation in
the “magnifications of the light at the different focal planes.” Id. at 58
(emphasis in original). Consequently, the Petition argues that
A [person of ordinary skill in the art] would have appreciated that
incorporation of telecentric confocal optics – such as those
disclosed in Ishihara – would have benefited Tiziani’s system by
preventing undesirable magnification when changing the focal
plane of light during confocal imaging in Tiziani. Thus, the
[person of ordinary skill in the art] would have been motivated
to incorporate such telecentric optics into Tiziani’s system as a
known technique to improve its confocal imaging capabilities in
the same way such telecentric optics improve the similar system
of Ishihara.
Id. at 58–59 (citing Ex. 1008 ¶ 205).
The Petition asserts that a person of ordinary skill in the art would
have had a reasonable expectation of success in combining Ishihara with
Tiziani in the proposed manner. Id. at 59–62. The Petition explains that the
references disclose similar confocal imaging systems that rely on shifting
focal planes, each system including a light source, a beam splitter, and
focusing optics. Id. at 59–61. The Petition argues that a person of ordinary
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skill in the art “would have therefore appreciated that modifying Tiziani with
Ishihara’s telecentric confocal optics by placing such optics between
Tiziani’s microlens array and the object would have been a matter of mere
substitution or addition, and would have been simple to accomplish with
reasonable expectation of success.” Id. at 62 (citing Ex. 1008 ¶ 208)..
Asserting that Ishihara teaches a confocal imaging device with a
polarizer, the Petition argues that it would have been obvious to modify
Tiziani with such a polarizer. Id. at 62–64. The Petition contends that a
person of ordinary skill in the art would have recognized, as taught by
Ishihara, that Tiziani’s system would have experienced a problem with
“stray light” deteriorating the image detected by its CCD camera. Id. at 62.
The Petition asserts that Ishihara teaches addressing the “stray light”
problem with a polarizer that “prevents stray light ‘from reaching the two-
dimensional photoelectric sensor 25’ that receives returned light beams
propagating along an optical path opposite to that of the incident light
beams.” Id. at 63. The Petition concludes that a person of ordinary skill in
the art “would have been motivated to incorporate such polarizer into
Tiziani’s system as a known technique to reduce stray light, and to improve
its confocal imaging capabilities in the same way such a polarizer improves
the similar system of Ishihara.” Id (citing Ex. 1008 ¶ 212).
Patent Owner asserts multiple reasons that Petitioner has not
demonstrated obviousness of claims 17, 18, 22, 23, and 25. Patent Owner
argues that “[m]odifying Tiziani with Ishihara’s telecentric confocal optics
by placing such optics between Tiziani’s microlens array and the object
would render Tiziani’s fixed focal plane system, with associated equations,
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unsuitable for its intended purpose.” PO Resp. 48. Patent Owner also
argues that it would not work to combine Gmitro’s fiber-optic bundle with
Tiziani’s system, and that a person of ordinary skill in the art would not have
had a reasonable expectation of success in making such a combination. Id.
at 50–52. As part of this argument, Patent Owner asserts that Petitioner does
not explain adequately how Gmitro’s fiber-optic bundle would work with an
array of light beams, as in Tiziani’s system. Id. at 50–51. Patent Owner also
argues that Petitioner “applies at least four references (Tiziani, Ishihara,
Gmitro, and Kino) to teach the claimed ‘optical system’ pursuant to
[Petitioner’s means-plus-function] construction.” Id. at 52. Patent Owner
further argues that Petitioner relies on Kino as teaching performance of a
claimed function, but identifies no disclosure in Kino of structure for
performing the function. Id. at 52–53. Patent Owner also argues that
Petitioner fails to show adequately that there would have been a motivation
to combine the references’ teachings. Id. at 54–58.
We turn to the parties’ dispute regarding whether the Petition
demonstrates adequately that a person of ordinary skill in the art would have
had a reasonable expectation of success in combining Gmitro’s fiber-optic
bundle with Tiziani’s system. In our Institution Decision, we found the
Petition lacks an adequate showing that a person of ordinary skill in the art
would have had a reasonable expectation of success in modifying Tiziani’s
disclosure with Gmitro’s. Inst. Dec. 34–35. Noting “Patent Owner asserts
that Gmitro discloses using a flexible fiber-optic bundle with a confocal
microscope having only one pinhole that generates only one light beam at a
time” (id. at 34), we found that the Petition did not show adequately that a
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person of ordinary skill in the art would have had a reasonable expectation
of successfully using Gmitro’s fiber-optic bundle with the array of light
beams taught by Tiziani and Ishihara (id. at 34–35).
Following our Institution Decision, the parties continue to dispute the
merits of Petitioner’s challenge of claims 17, 18, 22, 23, and 25 as allegedly
obvious over Tiziani, Gmitro, and Ishihara. PO Resp. 47–58; Pet. Reply 24–
29; Sur-reply 19–20. Regarding whether there would have been a
reasonable expectation of success for combining Gmitro’s fiber-optic bundle
with Tiziani, Petitioner presents multiple arguments. Pet. Reply 24–28.
We determine that Petitioner does not meet its burden of proof for two
separate and independent reasons. First, Petitioner’s reply arguments are not
persuasive on the merits, and second, Petitioner’s reply arguments exceed
the proper scope of a reply brief. We address each of these reasons below.
First, we consider the merits of the arguments and evidence presented
by Petitioner. Petitioner argues that Gmitro’s fiber-optic bundle would need
to carry only one light beam in the combination with Tiziania and Ishihara.
Id. at 24–25. Petitioner notes that the Petition asserts it would have been
obvious to add Gmitro’s fiber-optic bundle upstream of Tiziani’s microlens
array. Id. (citing Pet. 57). Citing Figure 2 of Tiziani, Petitioner asserts that
“Tiziani’s microlens array splits the parent light beam into multiple light
beams.” Id. at 24. Accordingly, if added upstream of the microlens array,
“Gmitro’s fiber-optic bundle relays the parent light beam (i.e., a single light
beam) in this particular combination, not multiple light beams as [Patent
Owner] contends.” Id. at 25.
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We find this argument unavailing to bolster the Petition’s conclusory
assertion that a person of ordinary skill in the art would have had a
reasonable expectation of success in modifying Tiziani’s system to use
Gmitro’s fiber-optic bundle. Assuming, arguendo, that the combination of
Tiziania and Gmitro needs to convey only a single light beam from
Tiziania’s diode laser to its microlens array, it needs to return a plurality of
light beams, as acknowledged by the Petition and Dr. Sergienko. See
Pet. 49–50; Ex. 1008 ¶¶ 175–177. Additionally, according to the Petition, a
person of ordinary skill in the art would have added Gmitro’s fiber-optic
bundle to Tiziani’s system to enable it to “image biological samples inside
the human body.” Pet. 56. Assuming that a person of ordinary skill in the
art would have had a reasonable expectation of success in using Gmitro’s
fiber-optic bundle to carry a single light beam to the microlens array, that
only addresses part of what the combined system must do. Additionally, the
combination would need to return an array of- light beams from inside the
human body, either through Gmitro’s fiber-optic bundle or otherwise. The
conclusory assertions and dearth of evidence presented in the Petition fail to
demonstrate adequately that a person of ordinary skill in the art would have
had a reasonable expectation of success in doing so with the proposed
combination.
Petitioner also argues that even if relaying multiple light beams is
required, a person of ordinary skill in the art would have had a reasonable
expectation of success in combining the references. Pet. Reply 24–28. In
support of this position, Petitioner’s Reply advances new arguments beyond
those presented in the Petition regarding the allegation that there would have
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been a reasonable expectation of success in combining the references.
Compare Pet. 56–57, with Pet. Reply 24–28. Additionally, the Reply cites
evidence not cited by the Petition in support of the assertion that a person of
ordinary skill in the art would have a reasonable expectation of success in
combining the fiber-optic bundle of Gmitro with Tiziani’s system. This new
evidence includes portions of the ’447 patent, Picard, Exhibits 1038 and
1039, Gmitro’s title, and additional testimony from Dr. Sergienko. Compare
Pet. 56–57 (citing Ex. 1005, Fig. 1, 565; Ex. 1008 ¶ 200–201), with Pet.
Reply 24–28 (citing Ex. 1001, 7:53–8:3, 5:61–64, 5:38–40, 5:44–50, Fig.
1A; Ex. 1003, 25–26; Ex. 1005, title, 565; Exs. 1027–1030, 1033; Ex. 1036,
84:12–85:5; Ex. 1037 ¶¶ 22–28; Ex. 1038, 114; Ex. 1039, 19).
Petitioner’s new arguments and evidence do not present a persuasive
showing that a person of ordinary skill in the art would have had a
reasonable expectation of success in using Gmitro’s fiber-optic bundle to
relay the multiple light beams of Tiziani’s system while maintaining the
function of the system. Based on the disclosures of the ’447 patent, Picard,
Exhibits 1038 and 1039, and Gmitro, Dr. Sergienko testifies that
Gmitro’s fiber-optic imaging bundle is explicitly structured and
designed to relay images. In view of Gmitro’s disclosure that its
fiber-optic bundle is an “imaging” bundle, a [person of ordinary
skill in the art] would have understood that Gmitro’s bundle is
capable of (and structured/designed for the purpose of) relaying
a plurality of light beams (i.e., which constitutes an image).
Ex. 1037 ¶ 27 (citing Ex. 1001, 7:53–8:3, 5:61–64; Ex. 1003, 25–26; Ex.
1038, 114; Ex. 1039, 19; Ex. 1005, title, 565; Ex. 1029).
Dr. Sergienko’s testimony is not sufficiently supported by the
evidence. Gmitro’s “fiber-optic imaging bundle” transmits a single light
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beam directed by an “x-y scanning” device to scan the surface of the sample.
Ex. 1005, 565, Fig. 1. There is no evidence that Gmitro’s “fiber-optic
imaging bundle” is structured or designed to relay an array of light beams
constituting an image, as illustrated in the image below from Dr. Sergienko’s
testimony:

Ex. 1037 ¶ 27 (citing Ex. 1029). The image from Dr. Sergienko’s testimony
shows an input and an output.
Although Petitioner and Dr. Sergienko rely on Picard to show “the
obviousness and predictability of incorporating a fiber-optic bundle into a
confocal imaging system” (id. ¶ 36), Picard does not teach or suggest using a
fiber optic bundle to transmit an x-y array of light beams. Picard discloses
an embodiment that combines an “ordered fiber-optic bundle” and a Nipkow
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disk. Ex. 1003, 24:9–12, Fig. 8. The Nipkow disk has a spiral arrangement
of holes, not an x-y array. Id. at 5:18–20. Picard teaches another
embodiment that replaces the Nipkow disk with a fixed mask having an
array of openings, which “must be precisely aligned relative to the pixels” of
two CCD cameras. Id. at 15:7–11, 23:12–19, 24:5–8, Fig. 7. Contrary to
Dr. Sergienko’s suggestion (Ex. 1037 ¶¶ 26–27), Picard does not teach or
suggest combining a fiber-optic bundle with an x-y array of light beams.
Tiziani uses a light array. Ex. 1004, 124 (“The parallel beam is
focused by the microlens array to a two-dimensional, diffraction-limited spot
array.”); id. at 120 (“a microlens array generates many light spots onto the
object to be detected simultaneously on a CCD array camera system.”).
Petitioner and Dr. Sergienko do not cite evidence sufficient to persuade us of
their conclusion that it would have been obvious to combine Tiziani’s
microlens array with Gmitro’s fiber optic imaging bundle. See Pet. Reply
26; Ex. 1037 ¶ 25. Even if a person of ordinary skill in the art would have
understood that Gmitro’s fiber-optic bundle could relay multiple light
beams, Petitioner and Dr. Sergienko do not cite evidence persuading us that
a person of ordinary skill in the art would have had a reasonable expectation
of success in using Gmitro’s “fiber-optic imaging bundle” to relay an array
of light in a manner compatible with Tiziani’s system.
The Petition failed to demonstrate adequately that a person of ordinary
skill in the art would have had a reasonable expectation of success in using
Gmitro’s fiber-optic bundle with Tiziani’s system, and the Reply does not
salvage Petitioner’s position. As we explained in our Institution Decision
[The Petition] merely asserts that “the objective lens of Gmitro
serves a similar purpose as Tiziani’s microlens array by
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generating multiple light spots onto the object to be detected.”
Pet. 56–57. This assertion provides no explanation of how the
flexible fiber optic bundle would work with an array of light
beams like those used in the systems of Tiziani and Ishihara.
Moreover, [The Petition] does not provide persuasive
explanation or evidence in support of the assertion that Gmitro’s
objective lens “generat[es] multiple light spots onto the object to
be detected.” In support of this assertion, [The Petition] cites the
testimony of Dr. Sergienko (id. at 56–57), who cites no evidence
in support of his assertion that “[a person of ordinary skill in the
art] would also have had a reasonable expectation of success
because the objective lens of Gmitro serves a similar purpose as
Tiziani’s microlens array by generating multiple light spots onto
the object to be detected” (Ex. 1008 ¶ 200).
Dec. Inst. 34–35. Petitioner has not persuasively shown error in the
foregoing findings, which we adopt as part of the reasoning for our final
decision.
Second, we consider the parties’ arguments regarding whether
Petitioner’s Reply exceeds the proper scope of a reply. Petitioner argues that
it could not have foreseen Patent Owner’s argument about the compatibility
of Gmitro’s fiber-optic bundle with the plurality of light beams used in
Tiziani. Pet. Reply 25. Given this, Petitioner advances with its Reply
considerable new argument and evidence that a person of ordinary skill in
the art would have had a reasonable expectation of success in using Gmitro’s
fiber optic bundle to carry Tiziani’s plurality of light beams. Id. at 25–28
(citing, among others, Ex. 1001, 7:53–8:3, 5:61–64, 5:38–40, 5:44–50, Fig.
1A; Ex. 1003, 25–26; Ex.1005, title, 565; Ex. 1037 ¶¶ 22–28; Ex. 1038, 114;
Ex. 1039, 19).
Patent Owner disputes Petitioner’s assertion that it could not have
foreseen Patent Owner’s argument. Sur-reply 20. Patent Owner notes that
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Petitioner “actually saw these arguments before it filed its petition.” Id.
Patent Owner explains that it previously had argued before the ITC “that
‘Gmitro scans with a single beam through the fiber optic bundle’ and argued
that [Petitioner] ‘has not established that simultaneously scanning with a
plurality light beams is even possible with Gmitro’s fiber bundle.’” Id.
(citing Ex. 2001, 2002).
We agree with Patent Owner that Petitioner’s assertion it could not
have foreseen Patent Owner’s argument does not justify its insufficient
explanation and lack of evidence in the Petition. As Patent Owner argues,
its ITC brief, filed approximately a month before the Petition was filed,
provided effective notice of Patent Owner’s position that there would have
been issues using Gmitro’s fiber-optic bundle to carry the plurality of light
beams used in Ishihara. Moreover, even without such express notice,
Petitioner should have recognized the requirement that its Petition must
“identif[y], in writing and with particularity, each claim challenged, the
grounds on which the challenge to each claim is based, and the evidence that
supports the grounds for the challenge to each claim.” 35 U.S.C. §
312(a)(3). The Petition was also required to include “[a] full statement of
the reasons for the relief requested, including a detailed explanation of the
significance of the evidence including material facts, and the governing
laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition failed to
meet these requirements with respect to its assertion that a person of
ordinary skill in the art would have had a reasonable expectation of success
in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging
system with a microlens array.
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It is “improper for a reply to present new evidence (including new
expert testimony) that could have been presented in a prior filing.” Patent
Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74–
75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825
F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any
persuasive reason that the evidence it presented with its Reply to bolster its
assertion of a reasonable expectation of success could not have been
provided with the Petition. Accordingly, we find that Petitioner exceeded
the proper scope of a reply with its newly presented arguments on pages 24–
28 of the Reply and with the its new citations of portions of the ’447 Patent
(Ex. 1001, 7:53–8:3, 5:61–64, 5:38–40, 5:44–50, Fig. 1A), Picard (Ex. 1003,
25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex.
1037 ¶¶ 22–28), and Exhibits 1038 and 1039.
For all of the foregoing reasons, Petitioner has not carried its burden
of showing that claims 17, 18, 22, 23, and 25 would have been obvious over
Tiziani, Gmitro, and Ishihara.
D. Alleged Obviousness over Tiziani, Gmitro, Ishihara, and Kino
1. Overview of Kino
Kino discloses a confocal optical microscope. Ex. 1006, (57). Kino
describes certain perceived problems with “[c]onventional confocal optical
microscopes.” Id. at 1:5–12. According to Kino, “[t]he main drawback with
conventional confocal scanning microscopes is that they illuminate only one
point on the object at a time.” Id. at 1:7–9. Figure 2 of Kino is reproduced
below.
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Figure 2 shows a confocal optical microscope with circular disc 21, “known
as a Nipkow disc.” Id. at 4:3–10.
Kino teaches illuminating 4,000 points on an object simultaneously.
Id. at 4:30–31. Circular disc 21 includes holes arranged in numerous
interleaved spirals, each having several turns. Id. at 4:9–12. Laser 22
illuminates “an area of 1.8 centimeters by 1.8 centimeters containing about
4,000 holes.” Id. at 4:22–24. “The holes diffract the impinging light and the
incident light beam converges on objective lens 26. For example, the
incident beam converges to a five millimeter diameter on the back of the
objective lens 26 so that 4,000 points on the object 27 are simultaneously
illuminated.” Id. at 4:26–31. Before the light impinges on disc 21, the light
is polarized by polarizer 23. Id. at 4:23–26.
Kino teaches alternate ways to focus on different planes in an object.
Id. at 6:19–22. Specifically, Kino teaches that “[t]he object or the objective
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lens can be moved up or down in order to focus on various planes in a
translucent object, such as a biological material like bone, or at various
levels of a sample such as an integrated circuit.” Id.
2. Discussion
Petitioner contends that claims 19 and 24 would have been obvious in
view of Tiziani, Gmitro, Ishihara, and Kino. Pet. 64–69. Claim 19 depends
from claim 17 and recites that “the optical system comprises a translation
mechanism configured to change the focal plane of the plurality of incident
light beams over a range of focal plane positions.” Ex. 1001, 10:25–28.
Claim 24 depends from claim 19, such that claim 24 also requires the
translation mechanism. Id. at 10:41. Petitioner concedes that Tiziani does
not teach expressly a translation mechanism as recited in claim 19. Pet. 66.
Petitioner asserts that Kino teaches such a translation mechanism. Id. at 65–
66. Petitioner contends that it would have been obvious to modify Tiziani to
use such a translation mechanism. Id. at 66–69. Petitioner contends that
Tiziani and Kino disclose similar systems. Id. at 66. Petitioner asserts that
Kino teaches moving the object or moving the objective lens were both
known alternatives for mechanical scanning. Id. at 67. Petitioner argues
that a person of ordinary skill in the art “would have been motivated to
modify Tiziani with the disclosure of Kino such that the objective lens can
be moved up or down to focus on various planes for improved flexibility,
and ease of use, in the same way such translation mechanism facilitates
adjusting the focal plane in Kino.” Id. at 68–69.
Petitioner also argues that a person of ordinary skill in the art would
have had a reasonable expectation of success in so modifying Tiziani. Id. at
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69. Petitioner asserts that the references disclose similar confocal imaging
systems. Id. Petitioner also asserts that it was known that a translation
mechanism could be implemented easily, such as with a motor. Id.
Petitioner’s challenge of claims 19 and 24 as allegedly obvious over
Tiziani, Gmitro, Ishihara, and Kino does not cure the above-discussed
deficiencies in the challenge of claims 17, 18, 22, 23, and 25 as allegedly
obvious over Tiziani, Gmitro, and Ishihara. See Pet. 64–69. Accordingly,
for the reasons explained in Section III.C.3 above, Petitioner has not
demonstrated obviousness of claims 19 and 24 over Tiziani, Gmitro,
Ishihara, and Kino.
E. Alleged Obviousness over Tiziani, Gmitro, Ishihara, Kino, and
Watson
1. Overview of Watson
Watson discusses using confocal microscopes in dental applications.
Ex. 1010, 352. Watson discusses certain confocal microscopes that had
“potential for in vivo studies on horizontal human subjects.” Id. Watson
explains that such in vivo examination did not work due to certain problems,
such as “[s]evere difficulties . . . in achieving fine focusing of the
microscope objective.” Id.
Watson describes further development of in vivo use of confocal
microscopes. Id. at 352–353. According to Watson, “special new objectives
have been and are being developed.” Id. at 353. Watson elaborates that
“[t]he plane of focus is altered by moving the optical components within the
microscope itself, either manually or with a stepper motor, rather than
moving the sample under the lens.” Id. Watson further explains that “[t]he
end lens of the objective is maintained in steady, close, contact with the
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surface of the eye, or other tissue, so helping to reduce specimen
movement.” Id. Watson asserts that “[t]his new technique offers numerous
exciting opportunities for the microscopic investigation of many clinical
operative procedures in vivo, allowing the response of the tissues to be non-
destructively monitored, over time, at high resolution.” Id. at 352.
2. Discussion
Petitioner contends that claims 20 and 21 would have been obvious in
view of Tiziani, Gmitro, Ishihara, Kino, and Watson. Pet. 69–73. Claim 20
depends from claim 19 and recites “the translation mechanism is further
configured to change the focal plane of the plurality of incident light beams
while maintaining a fixed distance between the hand-held probe and the
three-dimensional structure.” Ex. 1001, 10:29–33. Claim 21 depends from
claim 20. Id. at 10:34. Claim 21 recites “the translation mechanism
comprises a motor.” Id. at 10:34–35.
Petitioner concedes that Tiziani does not teach explicitly the
limitations of claims 20 and 21. Pet. 71. Petitioner argues that Watson
teaches these limitations. Id. at 70–71. Additionally, Petitioner asserts that
it would have been obvious to combine Watson’s teachings with Tiziani’s
and Kino’s. Id. at 70–73. Petitioner asserts that Watson teaches that an
internally focused objective has benefits for high-resolution microscopy of
intraoral tissues. Id. at 71. Petitioner contends that Tiziani and Watson
teach similar confocal imaging systems. Id. at 71–72. Petitioner argues that
a person of ordinary skill in the art “would have been motivated to modify
the combination of Tiziani and Kino with the disclosure of Watson to
include a motor which moves the objective lens up or down to focus on
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various planes, in the same way such a motor facilitates focusing in
Watson.” Id. at 72.
Petitioner asserts that a person of ordinary skill in the art would have
had a reasonable expectation of successfully combining the teachings of
Watson with Tiziani and Kino. Id. at 73. Petitioner argues that Tiziani and
Watson both teach similar confocal imaging systems. Id. at 73. Asserting
that it was regarded as easy to implement a translation mechanism using a
motor, Petitioner argues that a person of ordinary skill in the art “would have
easily modified the combination of Tiziani and Kino to include the motor of
Watson, as a mere substitution or addition with a reasonable expectation of
success.” Id.
Petitioner’s challenge of claims 20 and 21 as allegedly obvious over
Tiziani, Gmitro, Ishihara, Kino, and Watson does not cure the above-
discussed deficiencies in the challenge of claims 17, 18, 22, 23, and 25 as
allegedly obvious over Tiziani, Gmitro, and Ishihara. See Pet. 69–73.
Accordingly, for the reasons explained in Section III.C.3 above, Petitioner
has not demonstrated obviousness of claims 20 and 21 over Tiziani, Gmitro,
Ishihara, Kino, and Watson.
F. Petitioner’s Motion to Exclude
Petitioner moves for exclusion of Exhibits 2001, 2003, 2004, and
2007–2009. Mot. 1. Exhibit 2001 is a brief entered by Patent Owner in the
related ITC proceeding. Exhibit 2003 is the prosecution history of U.S.
6,697,164, from which the ’447 patent claims priority. Exhibit 2004 is the
reexamination history of U.S. Patent No. 7,230,725, from which the ’447
patent claims priority. Exhibit 2007 is a document titled “High-speed 3D
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shape measurement using a nonscanning multiple-beam confocal imaging
system,” which lists as its authors Mitsuhiro Ishihara and Hiromi Sasaki.
Exhibit 2008 is a document titled “Three-dimensional image sensing by
chromatic confocal microscopy,” which lists as its authors H. J. Tiziani and
H.-M. Uhde. Exhibit 2009 is U.S. Patent No. 4,575,805.
Citing our Institution Decision’s statements that “[b]riefs are not
evidence,” Petitioner argues that Exhibit 2001, Patent Owner’s ITC brief,
should be excluded because it is not evidence. Id. at 2. Petitioner also
argues that Exhibit 2001 is impermissible hearsay. Id. Petitioner contends
that “Patent Owner cites Exhibit 2001 to support Patent Owner’s assertions
(1) concerning alleged secondary considerations evidence of nonobviousness
and that the challenged claims of the ’447 Patent are embodied by Patent
Owner’s iTero Scanners, and (2) that essentially the same invalidity
grounds/arguments were considered in the ITC Proceeding.” Id. Petitioner
also argues that the testimony of witnesses appearing in Exhibit 2001
constitutes “impermissible hearsay within hearsay.” Id. at 3. Petitioner
further contends that unfair prejudice outweighs any probative value of
Exhibit 2001, arguing that Patent Owner unfairly uses Exhibit 2001 as a
vehicle to present additional attorney argument. Id. at 3–4. Petitioner
argues that Exhibits 2003, 2004, and 2007–2009 should be excluded as
irrelevant after our Institution Decision. Id. at 4–5.
Patent Owner opposes Petitioner’s Motion to Exclude. Opp. 1–6.
Patent Owner contends that Exhibit 2001 is not hearsay, arguing that it is not
offered for the truth of the matter asserted therein. Rather, Patent Owner
explains “Exhibit 2001 is documentary evidence showing what theories and
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defenses [Petitioner] was aware of at the time it filed its petition.” Id. at 3.
Regarding Petitioner’s assertion of unfair prejudice, Patent Owner argues
that “the Board—as a non-jury tribunal with administrative expertise—is
well-positioned to determine and assign appropriate weight to Exhibit
2001.” Id. at 4. Regarding the other Exhibits, Patent Owner argues that
“[p]re-institution exhibits are as much a part of the administrative record as
anything that follows.” Id. at 5.
Regarding Exhibits 2003, 2004, and 2007–2009, we do not rely on
any part of these exhibits. Accordingly, we dismiss as moot Petitioner’s
request that we exclude these exhibits.
Similarly, we do not rely on most of the portions of Exhibit 2001 of
which Petitioner complains. For example, we do not rely on the portions of
Exhibit 2001 relating to allegations of objective evidence of non-
obviousness, nor do we rely on the declaration testimony or the other
evidence cited in Exhibit 2001. Therefore, we dismiss as moot Petitioner’s
request to exclude these portions of Exhibit 2001.
We cite Patent Owner’s reliance on Exhibit 2001 for one purpose.
Specifically, we cite Patent Owner’s quotation of certain arguments from
Exhibit 2001 as evidence that Petitioner should have known before its
Petition that Patent Owner contended there would have been issues
combining Gmitro’s fiber-optic bundle with Tiziani’s system.
Section III.C.3; Sur-reply 20. With respect to this, Patent Owner does not
cite Exhibit 2001 as evidence that the assertions in the Exhibit are true. Nor
do we. Instead, Exhibit 2001 is cited as evidence that Petitioner knew Patent
Owner had made the assertions therein. Section III.C.3; Sur-reply 20.
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Because they are not relied on for the truth of the matter therein, the portions
of Exhibit 2001 that Patent Owner and we cite are not hearsay.
Regarding Petitioner’s assertion that unfair prejudice outweighs any
probative value of Exhibit 2001, we agree with Patent Owner. Specifically,
as in a district court bench trial, we, sitting as a non-jury tribunal with
administrative expertise, are well-positioned to evaluate and assign proper
weight to presented evidence. See Corning Inc. v. DSM IP Assets B.V.,
IPR2013-00053, Paper 66, 19 (PTAB May 1, 2014). We have done so here
with respect to Exhibit 2001. In particular, consistent with Petitioner’s
concerns about Patent Owner unfairly presenting additional attorney
argument via Exhibit 2001, we have not considered substantively the
attorney arguments presented in Exhibit 2001.
Additionally, we do not agree with Petitioner’s suggestion that briefs
cannot be evidence. Mot. 1–2. To put the statement in our Institution
Decision that “briefs are not evidence” into proper context, we meant that
Patent Owner’s own ITC briefs, by themselves, are not objective evidence of
nonobviousness. See Inst. Dec. 27. We did not mean that briefs cannot be
evidence. Indeed, as cited on page 20 of Patent Owner’s Sur-reply, Patent
Owner’s ITC brief is evidence that Petitioner knew Patent Owner contended
there would have been issues combining Gmitro’s fiber-optic bundle with
Tiziani’s system.
For the foregoing reasons, with respect to the portions of Exhibit 2001
on which we rely, we deny Petitioner’s Motion to Exclude.
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IV. CONCLUSION
In summary,
Claims 35 U.S.C. § References/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
17, 18,
22, 23,
25
103(a) Picard, Ishihara 17, 18, 22, 23,
25
17, 18,
22, 23,
25
103(a) Tiziani, Gmitro,
Ishihara
17, 18, 22, 23,
25
19, 24 103(a) Tiziani, Gmitro,
Ishihara, Kino
19, 24
20, 21 103(a) Tiziani, Gmitro,
Ishihara, Kino,
Watson
20, 21
Overall
Outcome
17–25

V. ORDERS
In consideration of the foregoing, it is hereby
ORDERED that Petitioner has not shown unpatentability of claims
17–25 by a preponderance of the evidence;
FUTHER ORDERED that Petitioner’s Motion to Exclude Evidence is
dismissed in part and denied in part; and
FURTHER ORDERED that because this is a Final Written Decision,
any party to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
Todd Walters
Roger Lee
Andrew Cheslock
David Leibovitch
Anand Mohan
BUCHANAN INGERSOLL & ROONEY PC
todd.walters@bipc.com
roger.lee@bipc.com
andrew.cheslock@bipc.com
david.leibovitch@bipc.com
anand.mohan@bipc.com

FOR PATENT OWNER:

Robert Sterne
Jason Eisenberg
Salvador M. Bezos
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
rsterne-ptab@sternekessler.com
jasone-ptab@sternekessler.com
sbezos-ptab@sternekessler.com