Align Technology, Inc.

Patent Trials and Appeals Board

Jun 9, 2020

IPR2019-00163 (P.T.A.B. Jun. 9, 2020)

Trials@uspto.gov Paper 37
571-272-7822 Date: June 9, 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.

IPR2019-00163
Patent 9,101,433 B2

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

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

Dismissing Petitioner’s Motion to Exclude
37 C.F.R. § 42.64

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3Shape A/S and 3Shape Inc. (“Petitioner”), filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 12 and 14 (“the challenged
claims”) of U.S. Patent No. 9,101,433 B2 (Ex. 1001, “the ’433 Patent”).
Align Technology, Inc. (“Patent Owner”) filed a Preliminary Response.
Paper 7 (“Prelim. Resp.”). On June 11, 2019, we instituted an inter partes
review as to all claims challenged in the Petition. Paper 8 (“Dec.”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 14, “PO Resp.”), Petitioner filed a Reply (Paper 18, “Reply”), and
Patent Owner filed a Sur-reply (Paper 25, “Sur-reply”). An oral hearing was
held on March 11, 2020, and a transcript of the hearing is included in the
record (Paper 35, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 12 and 14 of the ’433 Patent are unpatentable.
I. BACKGROUND
A. Real Parties in Interest
Petitioner identifies the real parties in interest as 3Shape A/S, 3Shape
Inc., 3Shape Holding A/S, 3Shape Trios A/S, and 3Shape Poland sp. z.o.o.
Pet. 1. Petitioner lists additional real parties in interest “[o]ut of an
abundance of caution . . . for purposes of compliance with 35 U.S.C.
§ 312(a)(2).” Id. at 1–2, App. B. Patent Owner identifies the real party in
interest as Align Technology, Inc. Paper 5, 1 (Mandatory Notices).
B. Related Matters
The parties identify the following civil action and International Trade
Commission (“ITC”) investigation as related matters: Align Technology,
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Inc. v. 3Shape A/S, No. 1:17-cv-01649 (D. Del., filed Nov. 14, 2017); and In
the Matter of Certain Intraoral Scanners and Related Hardware and
Software, Inv. No. 337-TA-1091 (U.S. Int’l Trade Comm’n, complaint filed
Nov. 14, 2017). Pet. 2; Paper 5, 1.
Petitioner identifies IPR2020-00173 and IPR2020-00174, both
captioned 3Shape A/S and 3Shape Inc. v. Align Technology, Inc. and both
involving related U.S. Patent No. 8,102,538 B2. Paper 27, 3 (Updated
Mandatory Notices). Petitioner also identifies a number of related U.S.
patents and patent applications. Id. at 1–3.
In the Institution Decision, we identified the following IPR
proceedings involving patents related to the ’433 Patent: IPR2019-00154,
IPR2019-00155, IPR2019-00156, IPR2019-00157, IPR2019-00159, and
IPR2019-00160. Dec. 3. These proceedings were terminated on February
12, 2020 pursuant to Patent Owner’s Request for Adverse Judgment. See
Paper 27, 1.
C. The ’433 Patent (Ex. 1001)
The title of the ’433 Patent is “Method and apparatus for colour
imaging a three-dimensional structure.” Ex. 1001, (54). The patent
discloses a device for determining the surface topology and associated color
of a three-dimensional structure, such as a teeth segment. Id. at (57), 2:56–
62. The resulting data can be used for design and manufacture of a dental
prosthesis, such as a crown, bridge, restoration, or filling. Id. at 2:62–66.
The device includes a scanner for providing depth data and a color imager
for providing color data. Id. at (57), 4:66–5:8. A processor combines the
color data and depth data to provide a three-dimensional color virtual model
of the surface of the structure. Id. at (57), 5:28–30.
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Figure 1 of the ’433 Patent is reproduced below:

Figure 1 is a block diagram illustrating the relationship among various
elements of the imaging device according to the ’433 Patent. Ex. 1001,
12:33–34, 13:10–13. As shown in Figure 1, device 100 includes optical
device 22, which in turn includes main illumination source 31, main
optics 41, and detection optics 60, which together provide a three-
dimensional (“3D”) numerical entity comprising the surface coordinates of
object 26. Id. at 13:14–28, Fig. 1. Device 100 also includes tri-color light
sources 71, tri-color sequence generator 74, and delivery optics 73, which
together illuminate object 26 with suitable colors, typically green, red and
blue, allowing a two-dimensional (“2D”) color image of object 26 to be
captured by detection optics 60. Id. at 13:29–34, 16:61–67. Device 100
further includes processor 24, which aligns the 2D color image with the 3D
entity and maps color values to the 3D entity at aligned X-Y points. Id.
at 13:41–44, 14:46–55, Fig. 1. According to the ’433 Patent, “[s]uch
alignment is straightforward because both the 3D data and the 2D color data
are referenced to the same X-Y frame of reference.” Id. at 13:44–46; see
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also id. at 4:41–43 (“the present invention provides a relatively simple and
effective way for mapping 2D color information onto a 3D surface model”).
The ’433 Patent describes the mapping procedure as follows:
[E]ach X-Y point on the 2D image substantially corresponds to
a similar point on the 3D scan having the same relative X-Y
values. Accordingly, the same point of the structure being
scanned has substantially the same X-Y coordinates in both the
2D image and the 3D scan, and thus the color value at each X, Y
coordinate of the 2D color scan may be mapped directly to the
spatial coordinates in the 3D scan having the same X, Y
coordinates wherein to create a numerical entity I representing
the color and surface topology of the structure being scanned.
Ex. 1001, at 4:15–24. A more detailed description of the mapping procedure
is provided with reference to Figures 2A–2C. Id. at 13:46–14:16.
According to the ’433 Patent, the 3D numerical entity E comprises an array
of (X, Y, Z) points obtained by determining depth Z-values for a grid of X-Y
points. Id. at 13:47–51, Fig. 2A. The 2D color image corresponds to
another numerical entity N comprised of the location and color value of each
pixel forming this image, (X', Y', C). Id. at 13:63–66, Fig. 2B. The ’433
Patent discloses that the color value C of each pixel of entity N can be
mapped to the data point of entity E having X-Y coordinates that are the
same as the X'-Y' coordinates of the pixel, thereby creating another
numerical entity I comprising surface coordinate and color data, (X, Y, Z,
C). Id. at 14:11–16, Fig. 2C.
The ’433 Patent discloses that both the 3D entity E and the 2D color
entity N are obtained “[a]lmost concurrently” using the same detection
optics 60 at substantially the same relative spatial disposition between
detection optics 60 and object 26. Ex. 1001, 13:54–59; see also id. at 4:6–8
(3D scan and 2D color image are taken “at substantially the same angle and
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orientation”). According to the ’433 Patent, the X'-Y' coordinates of the
pixels of the entity N are on a plane substantially parallel to the X-Y plane of
the entity E, and the two sets of coordinates represent substantially the same
part of object 26. Id. at 13:66–14:3; 14:9–11; see also id. at 4:9–13 (3D scan
and 2D color image have “substantially parallel” X-Y planes and comprise
“substantially the same portion of the structure”).
The ’433 Patent explains that the optical information for creating both
of these entities is obtained almost simultaneously so there is insufficient
time for significant relative movement between the image plane of detection
optics 60 and object 26 to occur between the two scans. Ex. 1001, 14:3–9;
see also id. at 4:2–6 (3D scan and 2D color image are obtained “within a
short time interval”).
Figures 4A and 4B of the ’433 Patent are reproduced below:

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Figures 4A and 4B are block diagrams illustrating system 20 for confocal
imaging of a 3D structure and providing a 3D monochrome entity.
Ex. 1001, 12:42–44, 14:58–60. As shown in Figures 4A and 4B, system 20
comprises optical device 22 coupled to processor 24. Id. at 14:65–66.
Optical device 22 comprises main illumination source 31, main optics 41,
detection optics 60, control module 70, and motor 72. Id. at 14:56–58,
16:24–26, Fig. 4A. Main illumination source 31 includes semiconductor
laser unit 28, polarizer 32, optic expander 34, and module 38, e.g., a grating
or micro lens array. Id. at 14:66–15:7, Fig. 4A. Main optics 41 includes
punctured mirror 40, confocal optics 42, relay optics 44, and endoscope 46.
Id. at 15:12–13, 15:31–33, 15:66, Fig. 4A. Detection optics 60 comprises
polarizer 62, imaging optic 64, array of pinholes 66, and charge coupled
device (“CCD”) 68. Id. at 16:11–18, 16:60, Fig. 4A. Processor 24 includes
image capturing module 80, a central processing unit (“CPU”) with
processing software 82, and display 84. Id. at 16:19–20, 16:39, 16:49–50,
17:5, Fig. 4B. Processor 24 is connected to user control module 86,
typically a computer keyboard. Id. at 16:50–52, Fig. 4B.
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According to the ’433 Patent, light from laser unit 28 travels as light
beam 30, incident light beams 36, and incident light beams 48 and impinges
on teeth segment 26 as light spots 52 on the surface of the teeth. Ex. 1001,
14:66–15:9, 15:45–15:55, Fig. 4A. Light scattered from the light spots
includes returned light beams 54 travelling in the opposite direction from
incident light beams 36. Id. at 16:4–8. Returned light beams 54 are received
by detection optics 60 where CCD 68 measures the light intensity at each
pixel. Id. at 16:8–18. Light intensity data from CCD 68 is grabbed by
image capturing module 80 and analyzed by CPU 82 to determine the
relative intensity at each pixel over a range of focal planes of optics 42, 44.
Id. at 16:19–23, 16:33–38. Before each light pulse from laser 18, the focal
plane is changed by displacing optical element 42 along the Z-axis by the
action of motor 72 under the control of module 70. Id. at 16:24–33. The
relative position of each light spot along the Z-axis is determined from the
maximal light intensity or maximum displacement derivative of the light
intensity for each pixel. Id. at 15:55–16:3, 16:41–47; see also id. at 3:3–67
(describing confocal focusing method). In this manner, data representative
of the three-dimensional structure of the surface of the teeth segment is
obtained and displayed on display 84. Id. at 16:47–50.
The ’433 Patent discloses four techniques for obtaining a 2D color
image of object 26. Ex. 1001, 16:53–61, 23:64–67, 24:45–25:2. These
techniques involve illuminating object 26 either sequentially with red, green,
and blue light or with white light and using either a monochromatic CCD or
a color CCD to capture the light reflected from the object. Id.; see also id.
at 13:56–63 (describing method for obtaining 2D color image of object 26).
According to a first technique, processing software 82 combines the red,
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green, and blue images to provide a 2D color image comprising an array of
data points having location (X, Y) and color (C) information for each pixel
of the 2D color image. Id. at 17:5–8.
The ’433 Patent discloses and illustrates seven embodiments of
device 100, each of which has a different configuration for obtaining a 2D
color image. Ex. 1001, 12:45–13:6, 17:9–24:44, Figs. 5A–13. According to
a fourth embodiment, color illumination of object 26 is provided within
confocal optics 42. Id. at 19:35–42, Fig. 8. The illumination sources may be
a laser and two or more light-emitting diodes (LEDs) and may be tri-color,
i.e., red, green, and blue, and may include intermediate wavelengths, such as
aqua and amber. Id. at 19:52–54, 19:64–20:19, 20:42–21:3, Fig. 9; see also
id.at 21:15–18 (“in each cycle the object 26 is separately illuminated in each
of the five colors blue, aqua, green, amber, red, in quick succession, and
each time a monochromatic image is obtained”). In one mode of operation,
the color light sources are moved with the objective lens in the z-direction,
and a set of monochromatic images—red, green, blue, and intermediate
wavelengths—is taken at each z-position. Id. at 22:1–14. Regarding this
mode of operation, the ’433 Patent discloses:
Thus, a plurality of color images can be obtained, each based on
a different z-position, so that each illumination wavelength is
used to illuminate in focus a different part (depth) of the
object 26. Advantageously, suitable algorithms may be used to
form a composite color image of the set of color images
associated with a particular z-scan of the object 26 to provide
even more precise and accurate color image, than can then be
combined with the depth data.
Id. at 22:19–27.
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D. Illustrative Claim
The ’433 Patent includes 20 claims. Petitioner challenges claims 12
and 14. Claim 12 is reproduced below, with bracketed identifiers added to
correspond with Petitioner’s identification of claim elements:
12. [Preamble] A system for determining surface topology
and associated color of at least a portion of a three-dimensional
structure, the system comprising:
[12.1] an apparatus comprising an image gathering
member to generate depth data of the structure portion
corresponding to a two-dimensional reference array substantially
orthogonal to a depth direction; and
[12.2] one or more processors configured to cause the
system to at least:
[12.3] receive, from the apparatus, the depth data of the
structure portion corresponding to the two-dimensional reference
array substantially orthogonal to a depth direction;
[12.4] receive, from the apparatus, two-dimensional image
data of the structure portion associated with the two-dimensional
reference array for each of a plurality of focal lengths relative to
the image gathering member; and
[12.5] selectively map the image data to the depth data for
the two-dimensional reference array based on the plurality of
focal lengths and the depth data such that the resulting associated
color of the structure portion is in focus relative to the structure
portion for a plurality of distances in the depth direction.
Ex. 1001, 28:1–23; see Pet. 25–45 (headings identify elements of claim 12).
E. Prior Art and Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
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Claims Challenged 35 U.S.C. § References/Basis
1 12, 14 103(a)1 Okamoto,2 Babayoff3
2 12, 14 103(a) Babayoff, Okamoto

F. Additional Evidence
In addition to the prior art cited above, Petitioner relies on a
Declaration of Sohail Dianat, Ph.D. (Ex. 1024) and a reply Declaration of
David Schaafsma, Ph.D. (Ex. 1114). Patent Owner cross-examined
Petitioner’s declarants and filed transcripts of their depositions as Exhibit
2014 (Dr. Dianat) and Exhibit 2045 (Dr. Schaafsma).
Patent Owner relies on a Declaration of Dr. Milan Sonka (Ex. 2041)
and a Declaration of Dave Aikens (Ex. 2042). Petitioner cross-examined
Patent Owner’s declarants and filed transcripts of their depositions as
Exhibit 1099 (Dr. Sonka) and Exhibit 1097 (Mr. Aikens).
II. ANALYSIS
A. Legal Standards
“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.

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’433 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
2 Ex. 1004, Japanese Patent Publication No. 2001-82935, published
March 30, 2001 (“Okamoto”). Exhibit 1004 includes a Japanese language
document, a certified English translation, and two certificates of translation.
3 Ex. 1003, PCT Publication No. WO 00/08415, published February 17,
2000 (“Babayoff”).
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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”)); see also 37 C.F.R. § 42.104(b)
(requiring a petition for inter partes review to identify how the challenged
claim is to be construed and where each element of the claim is found in the
prior art patents or printed publications relied upon).
A claim is unpatentable under 35 U.S.C. § 103 if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and when in evidence (4) objective evidence
of nonobviousness, i.e., secondary considerations. See Graham v. John
Deere Co, 383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). Furthermore, Petitioner does not satisfy its burden of
proving obviousness by employing “mere conclusory statements,” but “must
instead articulate specific reasoning, based on evidence of record, to support
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the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1380 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
Relying on the testimony of Dr. Dianat, Petitioner asserts that a
person of ordinary skill in the art (“POSITA”) would have at least (1) a
bachelor’s degree in electrical engineering, optical engineering, or physics
(or equivalent course work) and three to four years of work experience in the
areas of optical imaging systems and image processing or (2) a master’s
degree in electrical engineering or physics (or equivalent course work) with
a focus in the area of optical imaging systems and image processing. Pet. 14
(citing Ex. 1024 ¶ 27). Patent Owner does not dispute Petitioner’s definition
of a POSITA.
We accept Petitioner’s definition of a POSITA, which is unchallenged
by Patent Owner, supported by Dr. Dianat’s testimony, and consistent with
the scope and content of the ’433 Patent and the asserted prior art.
C. Trial Testimony
Patent Owner argues that we “should not credit Dr. Dianat’s
testimony because (1) his testimony demonstrates that he lacks a sufficient
understanding of optical systems that is necessary to provide probative
testimony; and (2) the opinions in his Declaration are unsupported, lack
technical merit, and merely adopt attorney argument.” PO Resp. 70–71.
First, Patent Owner argues that Dr. Dianat never worked with or used
a confocal microscope, was never involved in the design of lenses, beam
splitters, or polarizers, and was unable to answer certain questions at his
deposition. PO Resp. 71–72 (citing excerpts from Ex. 2014).
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After reviewing the deposition excerpts cited by Patent Owner, we
determine that it is not appropriate to discredit the whole of Dr. Dianat’s
testimony based on his answers to selected deposition questions. In many
instances cited by Patent Owner, Dr. Dianat answered Patent Owner’s
questions by asserting that he did not want to speculate. Ex. 2014, 60:22–
61:11, 121:5–124:11, 138:20–139:10, 144:19–145:3, 148:8–16, 194:14–
195:14. Most of the cited testimony relates to motivation and feasibility of
Petitioner’s combination of Okamoto and Babayoff. Id. In our view, these
answers do not show a lack of credibility on topics unrelated to the subject
matter of Patent Owner’s questions. In any event, it is not necessary for us
to assess the credibility of Dr. Dianat’s testimony on the subject matters of
cited testimony because we determine that Petitioner has not met its burden
of proof for reasons unrelated to whether a POSITA would have combined
Okamoto and Babayoff.
In addition, we do not discredit the whole of Dr. Dianat’s testimony
based on Patent Owner’s argument that he lacks hands-on experience with
confocal microscopes and specific optical components. PO Resp. 71–72
(citing Ex. 2014, 44:18–45:19, 47:5–48:6, 50:6–20, 51:7–12, 59:4–9,
183:12–15). The cited testimony does not show that Dr. Dianat lacks
sufficient knowledge, understanding, or expertise to provide the opinions in
his declaration.
Second, Patent Owner argues that Dr. Dianat’s testimony should not
be given weight because it “simply parrots the same statements made in the
Petition” with “no additional analysis or evidence beyond what is already
cited in the Petition.” PO Resp. 72–73 (citing examples from the Petition
and Dianat Declaration). As one example, Patent Owner asserts that
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Petitioner’s allegations that Okamoto teaches claim element 12.5 “are
identical—or nearly identical—word-for-word, break-for-break” in the
Petition and the Dianat Declaration. Id. at 72 (citing Pet. 45–49; Ex. 1024
¶¶ 93–100).
We do not discredit Dr. Dianat’s testimony solely on the basis of its
identity or near identity to the Petition. Instead, we assess the substantive
merits of the testimony and, for the reasons discussed below, we determine
that Dr. Dianat’s testimony regarding claim element 12.5 is outweighed by
the evidence relied upon by Patent Owner, including Dr. Sonka’s testimony
regarding Okamoto.
Based on our review of the qualifications of the parties’ declarants,4
we determine that each declarant has sufficient education and experience to
be “qualified in the pertinent art” and to offer testimony in the form of an
opinion. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–
64 (Fed. Cir. 2008); Fed. R. Evid. 702; Consolidated Trial Practice Guide 34
(November 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated.
D. Claim Construction
Because the Petition was filed before November 13, 2018, and the
’433 Patent has not yet expired, claim terms are to be given their broadest
reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
(2018).5 Under that standard, we generally give claim terms their ordinary

4 Ex. 1024 ¶¶ 5–16; Ex. 1025 (Dianat CV); Ex. 1114 ¶¶ 5–9; Ex. 1115
(Schaafsma CV); Ex. 2038 (Sonka CV); Ex. 2039 (Aikens CV); Ex. 2041
¶¶ 8–24; Ex. 2042 ¶¶ 8–10.
5 A recent amendment to this rule does not apply here. See Changes to the
Claim Construction Standard for Interpreting Claims in Trial Proceedings
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and customary meaning, as would be understood by a person of ordinary
skill in the art, in the context of the entire patent disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
We address one disputed claim term below. We determine that no
other claim term requires express construction for purposes of resolving the
controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (“only those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy”);
see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of inter
partes review).
1. “the resulting associated color of the structure portion is in focus
relative to the structure portion for a plurality of distances in the
depth direction” (claim 12)
Claim element 12.5 recites:
selectively map the image data to the depth data for the
two-dimensional reference array based on the plurality of focal
lengths and the depth data such that the resulting associated
color of the structure portion is in focus relative to the structure
portion for a plurality of distances in the depth direction.
Ex. 1001, 28:18–23. We refer to the entirety of claim element 12.5 as the
“Selectively Map” limitation, and we refer to the highlighted portion (also
quoted in the heading) as the “In Focus” limitation.
Petitioner proposes an express construction for the phrase “selectively
map the image data to the depth data.” Pet. 23. Petitioner contends this
phrase should be construed to mean: “map monochrome image data to the

Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11,
2018) (now codified at 37 C.F.R. pt. 42 (2019)).
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depth data such that the monochrome image data is a substantially focused
image of the structure.” Id. (citing papers filed in the ITC). Petitioner
contends that its construction “is informed by the specification which
discloses the use of monochrome image data.” Id. at 24 (citing Ex. 1001,
20:20–22:27). In the Reply Brief, Petitioner clarifies that its proposed
construction is only for the phrase “selectively map the image data to the
depth data,” not the entirety of claim element 12.5. Reply 1–2.
Relying on Dr. Sonka’s testimony, Patent Owner addresses the
meaning of the In Focus limitation. PO Resp. 16–20 (citing Ex. 2041
¶¶ 181–200). Patent Owner argues that “resulting associated color of the
structure portion is in focus,” as recited in claim 12, “does not mean that one
resulting associated color component of the structure portion is all that is
required to be in focus.” PO Resp. 16. According to Patent Owner, “[s]uch
a broad meaning of Selectively Map would be inconsistent with the ’433
Patent and with what a POSITA would have understood.” Id. at 17. Patent
Owner argues that its interpretation of the In Focus limitation is consistent
with the Specification. Id. (citing Ex. 1001, 19:42–46, 20:20–29; 20:40–42,
21:9–17; 21:33–52, 21:65–67, 22:7–14). In addition, Patent Owner argues
that its interpretation of the In Focus limitation is consistent with
contemporaneous dictionary definitions of the word “color.” Id. at 18 (citing
Ex. 2041 ¶ 192). Patent Owner argues that the Institution Decision is
incorrect to the extent that it implicitly construed the Selectively Map
limitation as requiring that only a single color component be in focus. Id.
at 19 (citing Dec. 30–31, Ex. 3001).
Petitioner does not respond to Patent Owner’s arguments regarding
the meaning of the In Focus limitation. Compare PO Resp. 16–20, with
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Reply 1–3 (addressing claim construction). Nor does Dr. Schaafsma
respond to Patent Owner’s interpretation of the In Focus limitation or the
corresponding testimony of Dr. Sonka. See generally Ex. 1114.
After considering both parties’ arguments and evidence, we agree
with Patent Owner’s argument that, “to be consistent with the specification,
Selectively Map cannot be construed to simply mean one resulting
associated color component of the structure portion is all that is required to
be in focus.” PO Resp. 19–20.
Patent Owner’s argument is consistent with the claim language. The
In Focus limitation recites: “the resulting associated color of the structure
portion is in focus relative to the structure portion for a plurality of distances
in the depth direction.” The claim language requires that the “associated
color” be “in focus,” not just one component of color. According to
dependent claims 17 and 18, the image data may be generated by separately
illuminating the structure portion with each of three different wavelengths of
light, and the depth data may be generated by illuminating the structure
portion with one of the three different wavelengths of light.
Ex. 1001, 28:43–48. In contrast to dependent claims 17 and 18, the In Focus
limitation pertains to “the resulting associated color,” not merely one
wavelength component of the color. The In Focus limitation requires that
“the resulting associated color” be in focus, including the entire wavelength
composition of the color.
Patent Owner’s argument is also consistent with the Specification.
The ’433 Patent discloses “providing an improved focus 2D color image” of
a structure, including the steps of: (1) sequentially illuminating the structure
with each of a plurality of different wavelengths of illumination;
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(2) providing a monochrome image corresponding to each wavelength;
(3) manipulating the resulting image data to provide a best focus composite
image; and (4) manipulating the resulting image data to provide a composite
focused color image of the structure. Ex. 1001, 9:62–10:6. This disclosure
supports Patent Owner’s interpretation in two ways. First, it shows that
generation of a color image requires illumination at a plurality of different
wavelengths. Second, it shows that monochromatic image data needs to be
manipulated in order to provide an in focus color image.
The ’433 Patent discloses providing “improved precision of the color
data” by illuminating an object with tri-color light sources “with as wide a
depth of field as possible.” Ex. 1001, 20:20–26. The ’433 Patent explains
that each same-color light source, e.g., blue, “illuminates a particular depth
of the object 26 in the z-direction while substantially in focus.” Id.
at 20:26–29. According to the ’433 Patent, the optical system downstream
of the light sources “is chromatic, and in particular maximizes the chromatic
dispersion therethrough” such that “each one of the different-colored light
sources 377 illuminates a different portion of the object 26 along the z-
direction.” Id. at 20:33–36, 20:40–42. The blue source illuminates “in
focus” a portion of the object closest to the scanning device, the red source
illuminates “in focus” a portion of the object furthest from the scanning
device, and the green source illuminates “in focus” a portion of the object
intermediate the blue and red portions. Id. at 20:42–48. The ’433 Patent
also discloses providing illumination at intermediate wavelengths, such as
aqua and amber. Id. at 20:52–67.
The ’433 Patent discloses that, in one mode, the scanning device
illuminates the object in cycles, wherein in each cycle the object is
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“separately illuminated in each of the five colors blue, aqua, green, amber,
red, in quick succession, and each time a monochromatic image is obtained
by the monochromatic image sensor.” Ex. 1001, 21:9–19. Thereafter, each
set of five monochromatic images is analyzed to provide a composite color
image. Id. at 21:19–20. The ’433 Patent discloses that parts of each
monochromatic image will be in focus and other parts of the image will
appear out of focus. Specifically, according to the ’433 Patent:
Each of the monochrome images in any particular set
corresponds to a particular illumination color or wavelength, and
thus the zone(s) of the object 26 within the depth of field
corresponding to this illumination will be in focus, while the
other parts of the object 26 will appear out of focus. Thus, each
such image in the aforesaid set of images will contain a portion
which has high precision focused image of a part of the object,
for the particular illumination wavelength.
Id. at 21:25–32. As Dr. Sonka explains, “not all parts of the object of
interest 26 will be in focus in the set of five monochromatic images.”
Ex. 2041 ¶¶ 109, 185.
The ’433 Patent discloses that, in order to provide a focused image,
suitable algorithms are used to manipulate the monochrome image data.
Specifically, according to the ’433 Patent,
In forming a composite image for each set of images, the
images are combined in such a way as to maximize the precision
of the focused image and corresponding color thereof. Thus, for
example, suitable algorithms may be applied to each of the five
images of a set to distinguish between the focused and unfocused
. . . areas thereof. Such algorithms may employ, for example,
techniques which apply FFT techniques to areas of the images,
and which search for high frequency portions which correspond
to focused areas. In any case, such algorithms, as well as
software and hardware to accomplish the same are well known
in the art. Then, the focused areas of each of the five images are
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merged to provide a monochrome composite substantially
focused image of the object.
Ex. 1001, 21:33–45.
The ’433 Patent discloses obtaining depth and color scans by
displacing both an objective lens and color light sources in the z-direction
and taking a set of monochromatic images at each z-position. Ex. 1001,
22:1–14. According to the ’433 Patent, at each z-position, “each one of the
colored illuminations—red, green, blue and intermediate wavelengths—
illuminates a progressively deeper part of the object along the z-direction.”
Id. at 22:8–14. The ’433 Patent cautions that, at one end of the depth scan,
the green and red illuminations may “completely overshoot the object,” and
“the corresponding images may be discarded or otherwise manipulated to
provide a composite color image at this station.” Id. at 22:15–19.
The In Focus feature of claim 12 is described in the following
summary passage:
Thus, a plurality of color images can be obtained, each based on
a different z-position, so that each illumination wavelength is
used to illuminate in focus a different part (depth) of the object
26. Advantageously, suitable algorithms may be used to form a
composite color image of the set of color images associated with
a particular z-scan of the object 26 to provide even more precise
and accurate color image, than [sic that] can then be combined
with the depth data.
Ex. 1001, 22:19–27.
Thus, the ’433 Patent exploits the chromatic nature of the optical
system and the wavelength properties of light sources to improve the
precision and accuracy of the color data. Ex. 1001, 20:20–29, 20:33–52,
21:25–35, 22:19–27. More specifically, the ’433 Patent recognizes that each
illumination color, e.g., red, green, or blue, is “in focus” at a different depth,
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and the resulting monochromatic image data includes both in-focus and out-
of-focus portions that need to be manipulated with suitable algorithms in
order to produce a focused full color image. Id. at 20:26–29, 20:40–52,
21:25–45, 22:9–27. These disclosures support Patent Owner’s argument that
“resulting associated color of the structure portion is in focus,” as recited in
claim 12, “does not mean that one resulting associated color component of
the structure portion is all that is required to be in focus.” PO Resp. 16.
Patent Owner’s interpretation of the In Focus limitation is also
supported by extrinsic evidence. Patent Owner’s unrebutted evidence
includes dictionary definitions that define the word “color” as “wavelength
composition of light that is reflected by an object.” Ex. 2041 ¶ 192
(reproducing definitions from Exhibits 2019 and 2021). That definition
supports Patent Owner’s argument that the phrase, “the resulting associated
color of the structure portion is in focus,” should not be construed so broadly
as merely requiring that one resulting associated color component of the
structure portion be in focus. PO Resp. 18. The claim requires that the
“associated color” be in focus (Ex. 1001, 28:20–22), and the Specification
refers to monochromatic color components, such as red, green, and blue, that
are combined to form a full color image (id. at 10:19–24, 10:32–36, 13:29–
34, 13:59–63). The “in focus” requirement applies to the “associated color,”
not merely a color component, such as red, green, or blue. The “associated
color” includes the entire wavelength composition of light reflected by an
object. Ex. 2041 ¶ 192 (reproducing dictionary definitions for “color”).6

6 In the Institution Decision, we relied on a different dictionary definition for
“color” (Ex. 3001), which Patent Owner argues led to an implicit
construction that is inconsistent with the ’433 Patent. Dec. 31; PO Resp. 19.
Although we do not believe the definition in Exhibit 3001 is inconsistent
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Patent Owner’s interpretation of the In Focus limitation is also
supported by the unrebutted testimony of Dr. Sonka. Ex. 2041 ¶¶ 180–200.
Dr. Sonka testifies:
Under its plain and ordinary meaning, the claimed
“resulting associated color of the structure portion is in focus”
does not mean that the one or more processors are merely
configured to cause a system to selectively map the image data
to the depth data such that one resulting associated color
component of the structure portion is all that is required to be in
focus.
Ex. 2041 ¶ 180.
It is my opinion that such a broad meaning of the
Selectively Map Feature would be inconsistent with the ’433
Patent and with what a POSITA would have understood.
Id. ¶ 181.
In view of the above [disclosures in columns 20–22 of the
’433 Patent], a POSITA would have understood that using a
single illumination source (e.g., red laser beam) that would result
in a single color component (e.g., red) being in focus is
insufficient to describe the Selectively Map Feature. In other
words, to broadly interpret Selectively Map Feature to simply
mean that the one or more processors are configured to cause a
system to selectively map the image data to the depth data such
that one resulting associated color component of the structure
portion is all that is required to be in focus would be inconsistent
with the ’433 patent.
Id. ¶ 189.
We find that the foregoing testimony is credible and consistent with
the teachings of the ’433 Patent, as summarized above and in Dr. Sonka’s

with our final Decision, we no longer rely on it because Patent Owner has
submitted an alternative definition that is undisputed by Petitioner. Ex. 2041
¶ 192 (citing Exs. 2019, 2021).
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testimony. Ex. 1001, 20:20–22:27; Ex. 2041 ¶ 182–188. We also credit
Dr. Sonka’s testimony that, when an object is illuminated by white light or
by different colored monochromatic illuminations, such as red, green, and
blue, the light reflected by the object would not be limited to a single color
component or a single wavelength, but would instead include at least some
light at each wavelength component of the illumination. Ex. 2041 ¶¶ 190,
191 (citing Ex. 2020, Fig. 2). For the color of the object to be in focus, it is
not sufficient that only a single component of the reflected light to be in
focus. Id. ¶¶ 189, 193.
Dr. Sonka’s testimony is unrebutted by Petitioner’s expert,
Dr. Schaafsma. His reply declaration does not address the meaning of the
In Focus limitation of claim 12, nor whether that limitation is taught or
suggested by the prior art. See generally Ex. 1114.
Accordingly, we adopt Patent Owner’s construction for the In Focus
limitation, namely that “resulting associated color of the structure portion is
in focus,” as recited in claim 12, “does not mean that one resulting
associated color component of the structure portion is all that is required to
be in focus.” PO Resp. 16.
E. Overview of Prior Art References
Below we provide an overview of the prior art references relied upon
by Petitioner.
1. Okamoto (Ex. 1004)
Okamoto discloses a three-dimensional shape measurement device
that measures both the three-dimensional shape of a target object and the
color of the target object and displays the three-dimensional shape with the
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color close to the actual color of the target object. Ex. 1004, code (57), ¶¶ 1,
8, 9.
Okamoto’s measurement device includes a confocal optical system for
obtaining height information for a target object. Ex. 1004 ¶¶ 15, 21, Fig. 1.
The confocal optical system includes (1) a single color light source, such as
a semiconductor laser that emits a red laser beam; (2) a Z direction
displacement mechanism for changing the position of the target object
relative to a focal point of an objective lens in the optical axis direction;
(3) an XY scanning mechanism for scanning the target object perpendicular
to the optical axis direction; and (4) a photo receptor for measuring the
amount of light reflected from the target object as a function of XY and Z
positions. Id. ¶¶ 12, 16–18. Okamoto discloses that, when the Z position is
adjusted such that the focal point coincides with the sample surface, i.e.,
when the laser beam is focused on the sample, the light reception amount is
maximized, and the height information can be derived from the
corresponding Z position. Id. ¶¶ 3, 22–24.
Okamoto’s measurement device includes a non-confocal optical
system for obtaining color information for the target object. Ex. 1004 ¶ 15,
Fig. 1. The non-confocal system includes a white light source that
illuminates the sample with white light for color imaging and a color CCD
for obtaining color information for each pixel (XY position) and each Z
position. Id. ¶¶ 12, 28.
Okamoto’s measurement device includes a processing device that
“seeks and stores for each pixel the height information and color information
that correspond to the relative position in the optical axis direction of the
measurement target object w when the light reception amount is
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maximized.” Ex. 1004, code (57), ¶ 12. Thus, the color information stored
for each pixel corresponds to a Z position where light from a single color
light source, e.g., a red laser beam, is in focus when reflected off the sample.
Id. ¶ 22.
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Figure 1 of Okamoto is reproduced below.

Okamoto Figure 1 is a block diagram showing the schematic configuration
of a confocal microscope, i.e., a three-dimensional measurement device.
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Ex. 1004 ¶ 15, p. 8 (brief description of the drawings). Okamoto’s confocal
microscope includes “confocal optical system 1 to obtain the 3-dimensional
surface shape information that includes sample height and non-confocal
optical system 2 to obtain the sample color image.” Id. ¶ 15.
Okamoto describes confocal optical system 1. Ex. 1004 ¶¶ 16–27.
Light source 10 for the confocal optical system is a semiconductor laser that
emits a red laser beam. Id. ¶ 17. According to Okamoto, the confocal
optical system obtains information concerning the three-dimensional surface
profile, including information regarding the height of the sample. Id. ¶ 21.
More specifically, the distribution of surface heights of the sample in the XY
plane is obtained. Id. ¶ 24. Okamoto discloses that the height distribution
(surface profile) of the sample can be displayed three-dimensionally. Id.
¶ 25.
Figure 3 of Okamoto is reproduced below.

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Okamoto Figure 3 shows an example of a three-dimensional display of a
simple solid model M. Ex. 1004 ¶ 26, p. 8 (brief description of the
drawings).
Okamoto describes non-confocal optical system 2. Ex. 1004
¶¶ 28–30. Light source 20 for the non-confocal system is a white light
source that illuminates the sample for color imaging. Id. ¶ 28. The non-
confocal system uses a color CCD as a color information capture sensor. Id.
According to Okamoto, the CCD “is provided at a position that is conjugate
or nearly conjugate to the pinhole . . . of the confocal optical system 1.” Id.
¶ 30. The non-confocal system obtains a color image that is “converted to
digital values” and displayed on a screen “as an enlarged color image for
observing the sample.” Id.
Okamoto describes how the information from the confocal and non-
confocal optical systems are combined and displayed. Ex. 1004 ¶¶ 31–37.
Okamoto discloses:
Color images obtained with the non-confocal optical
system 2 are combined in a three-dimensional display of the
surface profile of the sample obtained by the confocal optical
system 1 described above, and color three-dimensional display is
carried out. As a result, portions represented by hatching viewed
from above in the Z-axis direction are colored with the colors of
a color image in the display model shown in Fig. 3. Picture
elements of the hatched portions are imaged in the XY plane and
are associated with picture elements of the color image.
Ex. 1004 ¶ 31. According to Okamoto, processing for carrying out color
three-dimensional display is executed “in accordance with software by a
microprocessor contained in processing device 46,” which is indicated in
Figure 1 and shown in more detail in Figure 4. Id. ¶¶ 24, 33, 34.
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Figure 4 of Okamoto is reproduced below.

Okamoto Figure 4 is a block diagram showing a configuration that focuses
on processing device 46 for carrying out color three-dimensional display.
Ex. 1004 ¶ 34, p. 8 (brief description of the drawings). Okamoto discloses
that color data and height data for the corresponding picture elements are
stored in color memory 52 and height memory 53. Id. ¶ 35. According to
Okamoto, the color data is input from the color CCD 24 to processing
device 46. Id. Microprocessor 54 uses the stored color data and the stored
height data to generate color three-dimensional display data of the surface
profile of the sample, which is input to display memory 55 and provided to
display device 47. Id. ¶ 36. Okamoto discloses that “[t]he color three-
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dimensional display data . . . is generated from the height data and color data
for each picture element in the XY plane.” Id. ¶ 37.
Figure 5 of Okamoto is reproduced below.

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Okamoto Figure 5 is a flow chart showing processing for color three-
dimensional display. Ex. 1004 ¶ 38, p. 8 (brief description of the drawings).
In step 101, the XY scanning range and the Z scanning range are designated.
Id. ¶ 38. In step 102, laser light scans the surface of the sample in the XY
direction. Id.¶ 39. In step 103, the received light quantity data, the color
data, and the height data for each picture element are stored. Id. In
steps 104 and 105, the sample stage is lowered one step, and the sample is
scanned again. Id. ¶ 40. In steps 106 and 107, the new light received
quantity is compared with the stored light quantity data, and if the new light
received quantity is greater than the stored light quantity, then the stored
data for the light quantity, color, and height are refreshed. Id. In step 108,
the Z direction position of the sample stage is compared with the lower end
of the designated measurement range. Id. ¶ 41. Steps 104 to 108 are
repeated until the sample stage reaches the end of the measurement range.
At that point, the maximum received light quantity, color, and height data
for each picture element in the XY scanning range are stored. Id. ¶ 42. In
steps 109 to 111, the stored data are read, color three-dimensional display
data of the surface profile of the sample are generated, and a color three-
dimensional image is displayed. Id.
According to Okamoto, the effect of the disclosed three-dimensional
measurement device is that “three-dimensional display of the surface profile
is colored with colors that are close to the actual colors of the object to be
measured.” Ex. 1004 ¶ 46.
2. Babayoff (Ex. 1003)
Babayoff discloses a method and an apparatus for imaging of a three-
dimensional structure by confocal focusing an array of light beams.
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Ex. 1003, 1 (title). According to Babayoff, the method is particularly useful
for surveying of teeth in the oral cavity of a patient and imaging of a three-
dimensional topology of a teeth segment. Id. at 1:2–4, 1:8–9, 2:25–27.
Babayoff discloses an apparatus for determining surface topology of a
portion of a three-dimensional structure. Ex. 1003, 3:23–4:14. The
apparatus comprises a probing member, an illumination unit, light focusing
optics defining one or more focal planes, a translation mechanism for
displacing the focal plane, a detector, and a processor. Id. According to
Babayoff, the probing member, illumination unit, focusing optics, translation
mechanism, and detector are preferably included together in a hand-held
device. Id. at 4:15–17.
Babayoff is incorporated by reference in the ’433 Patent. Ex. 1001,
14:61–63. In addition, the ’433 Patent incorporates large portions of
Babayoff’s disclosure with little modification. Compare Ex. 1003, 3:3–4:14,
4:18-5:21, 8:10–12, 8:24–12:15, 12:21–13:5, Figs. 1A, 1B, 2A, 2B, with
Ex. 1001, 3:3–62, 5:30–56, 14:58–60, 14:65–16:52, 25:16–29, 17:12–26,
Figs. 4A, 4B, 5A, 5B. It is undisputed that Babayoff does not disclose
obtaining color image data or mapping such data to depth data.
F. Petitioner’s Obviousness Grounds
Petitioner contends that claims 12 and 14 of the ’433 Patent are
unpatentable under 35 U.S.C. § 103(a) over Okamoto and Babayoff.
Pet. 25–75. Patent Owner opposes. PO Resp. 21–70, 73–75. We address
the parties’ arguments below, concentrating on the In Focus limitation of
claim 12.
Petitioner presents two obviousness grounds: (1) Okamoto in view of
Babayoff, and (2) Babayoff in view of Okamoto. For both grounds,
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Petitioner relies on Okamoto for claim element 12.5, which includes the
In Focus limitation. Pet. 45–49, 68–69.
For its first obviousness ground, Petitioner contends:
Okamoto discloses at least one processor (“processing
device”, “microprocessor”) configured to cause the system to
selectively map the image data (“color data”) to the depth data
(“height data”) for the two-dimensional reference array (“XY
plane”) and the depth data such that the resulting associated color
of the structure portion is in focus relative to the structure portion
for a plurality of distances in the depth direction.
Pet. 45 (citing Ex. 1004 ¶¶ 12, 24, 33–42, 46, Figs. 1, 4, 5; Ex. 1024 ¶ 94).
Regarding the In Focus limitation, Petitioner submits the following:
In Okamoto’s process, the data at each pixel is updated
such that the resulting associated color of the structure portion is
in focus. This is because Okamoto discloses that maximum light
quantity data, and the color data and height data thereat for each
picture element, is updated (“stored”). . . . Okamoto discloses
that the maximum light quantity corresponds to when the pixel
is in focus.
Pet. 47 (citing Ex. 1004 ¶¶ 3, 10, 37, 40; Ex.1024 ¶ 97).
Recognizing that Okamoto may be deficient with respect to the
In Focus limitation, Petitioner asserts the following as a fall-back position:
Patent Owner in the ’433 Patent admits that algorithms,
software and hardware for combining images “in such a way as
to maximize the precision of the focused image and
corresponding color thereof . . . are well known in the art.” . . .
Further, Pulli7 provides evidence that additional techniques for
selectively mapping color data to depth data were well-known
and conventional at the time of the purported invention. . . .
Thus, if there are any differences between the manner in which

7 Ex. 1013, Kari Pulli, Surface Reconstruction and Display from Range and
Color Data (Dec. 2, 1997), available at UMI Microform No. 9819292
(1998).
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Okamoto maps image data to depth data and what is claimed, it
would have been obvious to modify Okamoto in light of the well-
known techniques (admitted to in the ’433 Patent) for combining
image and depth data to maximize the precision of the focused
image.
Pet. 48–49 (citing Ex. 1001, 21:33–43; Ex. 1013, 81–97; Ex. 1024 ¶ 100).
For claim element 12.5, including the In Focus limitation, Petitioner
relies on the same contentions for its second obviousness ground as are
presented for its first obviousness ground. Pet. 69.
Patent Owner challenges Petitioner’s contentions, arguing that
Okamoto does not teach or suggest the In Focus limitation. PO
Resp. 36–45. Patent Owner and Dr. Sonka assert that Okamoto’s system
would suffer from chromatic aberration resulting in out-of-focus color data.
Id. at 37–43; Ex. 2041 ¶¶ 312–335. According to Patent Owner, “Okamoto
merely presumes that when its light quantity data, received by illuminating
the sample with its single color laser beam, is at its maximum, then any
color data captured at this time using a white light would also be in focus.”
PO Resp. 37 (citing Ex. 2041 ¶ 317). Patent Owner and Dr. Sonka assert
that this presumption is incorrect due to chromatic aberration—a
phenomenon that results in different focal lengths for different wavelengths
of light passing through a lens, such that red, green, and blue light are “in
focus” at different distances from the lens. Id. at 38–43; Ex. 2041
¶¶ 312–335.
According to Patent Owner and Dr. Sonka, Okamoto ignores
chromatic aberration, and as a result, “at least blue and green colors of
Okamoto’s color data would be out of focus with respect to the plane of the
color CCD.” PO Resp. 42; Ex. 2041 ¶ 324. Patent Owner and Dr. Sonka
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assert that a later Okamoto reference8 recognizes and addresses the
chromatic aberration problem. PO Resp. 42–43; Ex. 2041 ¶¶ 326–335.
Patent Owner contends that Okamoto fails to teach the In Focus limitation
because it ignores the effect of chromatic aberration and, as a result, its color
data is not in focus. PO Resp. 43–45 (citing Ex. 2041 ¶¶ 383–391).
In its Reply, Petitioner does not respond to Patent Owner’s argument
that Okamoto fails to teach or suggest the In Focus limitation due to
chromatic aberration. At most, Petitioner and Dr. Schaafsma assert that
aberration errors would not have been an insurmountable challenge when
combining Okamoto and Babayoff. Reply 21–22; Ex. 1114 ¶¶ 33, 35.
After considering both parties’ arguments and evidence, we determine
that Petitioner has not met its burden to show that Okamoto teaches or
suggests the In Focus limitation of claim 12. Patent Owner advances a
credible, evidence-supported argument that Okamoto does not teach or
suggest the In Focus limitation due to chromatic aberration. PO
Resp. 36–45. Patent Owner supports its argument with detailed testimony
from Dr. Sonka, analyzing the teachings of Okamoto. Ex. 2041 ¶¶ 312–335,
382–391. Patent Owner and Dr. Sonka rely on objective scientific evidence
to explain the phenomenon of chromatic aberration. PO Resp. 38–39;
Ex. 2041 ¶¶ 313–316 (citing Ex. 2020, 1–3, Fig. 2; Ex. 2027, 438, Fig. 8;
Ex. 2028, 325; Ex. 2034, 176). Patent Owner and Dr. Sonka also rely on
Okamoto ’373, which they assert recognizes and addresses the chromatic
aberration problem. PO Resp. 42–43; Ex. 2041 ¶¶ 326–335 (citing Ex. 2023

8 Ex. 2023, Japanese Patent Publication No. JP 2004-29373, published
January 29, 2004 (“Okamoto ’373”). Exhibit 2023 includes a Japanese
language document, a certified English translation, and a certificate of
translation.
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¶¶ 2, 4, 5, 9, 11, 38, 39, 43–48, Figs. 1, 6). Patent Owner’s arguments and
evidence are unrebutted by Petitioner and Dr. Schaafsma. For this reason
alone, we conclude that Petitioner does not meet its burden of proof.
Our conclusion is reinforced when we consider the substance of
Patent Owner’s argument. For the reasons discussed above, we adopt Patent
Owner’s construction of the In Focus limitation that “resulting associated
color of the structure portion is in focus,” as recited in claim 12, “does not
mean that one resulting associated color component of the structure portion
is all that is required to be in focus.” PO Resp. 16.
We are persuaded by Patent Owner’s characterization of Okamoto,
namely that “Okamoto merely presumes that when its light quantity data,
received by illuminating the sample with its single color laser beam, is at its
maximum, then any color data captured at this time using a white light
would also be in focus.” PO Resp. 37 (citing Ex. 2041 ¶ 317). Patent
Owner’s characterization is consistent with Okamoto’s disclosure. Okamoto
teaches a confocal system that makes an “in focus” determination based on
single color light, e.g., a red laser beam. Ex. 1004 ¶¶ 16, 17, 20, 22. There
is no corresponding “in focus” determination for the white light used in
Okamoto’s non-confocal color imaging system. Nor is there any other
accommodation for the differing focal planes of red, green, and blue light.
Instead, Okamoto teaches refreshing stored data for light quantity, color, and
height when a newly received light quantity is greater than a previously
stored light quantity. Id. ¶¶ 34, 35, 40, Fig. 5, step 107. The light quantity
being measured and compared is single color light, e.g., from a
semiconductor laser that emits a red laser beam. Id. ¶¶ 16, 17, 22, 23.
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Okamoto assumes that a pixel is in focus when the received quantity of
reflected laser light is at a maximum. Id. ¶¶ 3, 10, 22–24, 27, 37.
Patent Owner’s unrebutted evidence shows that Okamoto’s
assumption is not accurate. More particularly, Patent Owner’s evidence
shows that, when Okamoto’s red laser light is in focus, other components of
Okamoto’s white light source, such as blue and green light, would not be in
focus due to chromatic aberration. PO Resp. 42; Ex. 2041 ¶¶ 322–324.
Patent Owner and Dr. Sonka use the following figure to illustrate this point:

PO Resp. 42; Ex. 2041 ¶ 323. The above Figure is a modification of a
portion of Okamoto Figure 1 showing parts of a non-confocal optical
system, including second relay lens 16, second half mirror 23, and color
CCD 24. As shown in the figure, components of white light reflected by the
sample—illustrated as red, green, and blue light beams—propagate through
optical components and are received by color CCD 24. Ex. 2041 ¶ 321. The
red, green, and blue wavelengths have different focal planes when they reach
the CCD, as illustrated by colored dashed lines in the figure. Id. ¶ 324.
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Dr. Sonka uses the above figure to illustrate his testimony as follows:
Assuming that light source 10 driven by its laser drive
circuit 44 emits a monochromatic laser beam (e.g., red) when
scanning its sample w, then a POSITA would have understood
that with exception of the wavelength that matches the
wavelength of the monochromatic laser beam, other colors or
wavelengths reflected back from the sample will be out of focus
as they propagate and reach the color CCD 24. This is because
Okamoto merely presumes that when its light quantity data
received by illuminating the sample with its monochromatic
laser beam is at its maximum, then any color data captured at this
time using a white light would also be in focus.
Ex. 2041 ¶ 322.
As illustrated above, and in the above example where a
monochromatic laser beam (e.g., red) is used, a POSITA would
have understood that the blue and green colors or wavelengths
will have different focal planes as compared to the red color or
wavelength (shown as red dashed line), when the wavelength of
the red color matches the wavelength of the monochromatic laser
beam (e.g., red). Therefore, a POSITA would have understood
that because not all colors or wavelengths reflected by the sample
will be in the same focal plane as the monochromatic laser beam,
the color of the sample as captured by Okamoto’s color CCD 24
and represented as color data will be out of focus as a result of
chromatic aberration. Additionally, while apochromatic
objectives may be able to correct for some colors or wavelengths,
a POSITA would have understood that such correction will still
result in all other color components being out of focus.
Ex. 2041 ¶ 324.
Accordingly, a POSITA would have understood that
Okamoto would have been affected by chromatic aberration
causing the color of its sample to be out of focus.
Ex. 2041 ¶ 325.
We find that the foregoing testimony of Dr. Sonka is credible and
consistent with Okamoto’s teachings. See, e.g., Ex. 1004 ¶¶ 3, 10, 22–24,
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27–30, 37. The testimony is unrebutted by Petitioner and its reply declarant,
Dr. Schaafsma. Although Petitioner cross-examined Dr. Sonka (Ex. 1099),
we are not aware of any cross-examination pertaining to the foregoing
declaration testimony or the teachings of Okamoto relative to the In Focus
limitation or chromatic aberration.
We agree with Patent Owner that the foregoing testimony supports a
finding that the In Focus limitation is not taught or suggested by Okamoto.
PO Resp. 36–45. As discussed above, the In Focus limitation requires that
“the resulting associated color” be in focus, not merely one component of
the associated color. Patent Owner has shown persuasively that Okamoto
merely presumes that any color data captured using its non-confocal optical
system and white light source would be in focus, but in reality a POSITA
would understand that chromatic aberration would lead to out-of-focus color
data. Id. at 37, 41–44; Ex. 2041 ¶¶ 299, 312, 322–325, 335.
After considering Patent Owner’s arguments and evidence,
Petitioner’s evidence does not persuade us that Okamoto teaches or suggests
the In Focus limitation. Petitioner and Dr. Dianat assert that “Okamoto
discloses that the maximum light quantity corresponds to when the pixel is
in focus.” Pet. 47; (citing Ex. 1004, ¶ 3 (“when it is focused on the sample
surface, the light reception amount is maximized”); id. ¶ 10 (“the light
reception amount (maximum light reception amount) when each pixel is
focused”); id. ¶ 37 (“the maximum received light quantity for each picture
element when in focus is reflected as brightness information in the color
data”)); Ex. 1024 ¶ 97 (same as Petition). Patent Owner’s unrebutted
evidence shows that Okamoto’s “light reception amount” or “light quantity”
refers to Okamoto’s confocal optical system and the amount of single color
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light, e.g., red laser light, reflected by the sample. Ex. 1004 ¶¶ 16, 17, 22,
23. Petitioner does not show sufficiently Okamoto’s maximum received
light quantity would lead to the resulting associated color being in focus.
As a fall-back position, Petitioner and Dr. Dianat rely on the
disclosure of the ’433 Patent and another reference—Pulli—to assert “it
would have been obvious to modify Okamoto in light of the well-known
techniques (admitted to in the ’433 Patent) for combining image and depth
data to maximize the precision of the focused image.” Pet. 48–49 (citing
Ex. 1001, 21:33–43; Ex. 1013, 81–97); Ex. 1024 ¶ 100 (same as Petition).
Similarly, Petitioner asserts that “a POSITA was aware of numerous prior
art deblurring techniques to address any purported ‘aberration errors’ and
‘distortions.’” Reply 22 (citing Exs. 1121–1124; Ex. 2014, 60:4–11, 60:22–
61:10; Ex. 1114 ¶ 35; Ex. 1074, 3:60–65). We agree with Patent Owner,
however, that Petitioner’s fall-back position is deficient. PO Resp. 48.
Petitioner has not provided a sufficient explanation of how or why a
POSITA would have combined Okamoto with the teachings of Pulli, the
alleged Applicant Admitted Prior Art, or the references cited in the Reply to
arrive at the In Focus limitation of claim 12. See Metalcraft of Mayville, Inc.
v. Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“Without any
explanation as to how or why the references would be combined to arrive at
the claimed invention, we are left with only hindsight bias that KSR warns
against.”).
For all of the foregoing reasons, we determine that Petitioner has not
shown that the In Focus limitation of claim 12 is taught or suggested by
Okamoto in view of Babayoff. Challenged claim 14 depends from claim 12,
and the deficiencies in Petitioner’s arguments and evidence for claim 12 are
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42
not remedied by its arguments and evidence for claim 14. See Pet. 69
(relying on the same contentions for claim 14 as are presented for claim 12).
In view of these determinations, we do not reach Patent Owner’s
contention that Petitioner “ignores known objective indicia evidence of non-
obviousness patent owner presented in a related ITC action.” PO Resp. 73
(original text of heading in upper case).
G. Petitioner’s Motion to Exclude
Petitioner moves to exclude Patent Owner’s Exhibits 2001, 2002,
2005, and 2007–2010. Paper 24. Patent Owner opposes. Paper 26. We
address each of these exhibits below.
Exhibits 2001, 2002, and 2007 are Patent Owner’s briefs from the
related ITC investigation. Patent Owner relies on Exhibits 2002 and 2007 to
show what the parties argued and what evidence was relied upon in the
related ITC proceeding and as support for an argument regarding objective
indicia of non-obviousness. PO Resp. 73–74. Exhibits 2008, 2009, and
2010 are journal articles discussing iTero intraoral scanners and were relied
upon in the Preliminary Response to show objective indicia of non-
obviousness. See Dec. 34 n.13. Exhibits 2001, 2008, 2009, and 2010 are
not cited or relied upon in Patent Owner’s post-institution briefs on the
merits.
In view of our determination that Petitioner has not shown that the
In Focus limitation of claim 12 is taught or suggested by Okamoto, we do
not reach the issue of objective indicia of non-obviousness and do not rely
on any of Exhibits 2001, 2002, or 2007–2010 in reaching our Decision.
Exhibit 2005 includes a machine translation of Okamoto ’373, and
Petitioner objects that the exhibit is not authenticated. Paper 26, 7. Patent
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Owner argues that Petitioner’s objection is moot in view of Exhibit 2023,
which includes a certified translation of Okamoto ’373. Paper 29, 4.
Exhibit 2005 is not cited or relied upon in Patent Owner’s post-institution
briefs on the merits, and we do not rely on the exhibit in reaching our
Decision.
For these reasons, Petitioner’s motion to exclude is dismissed as moot.
III. CONCLUSION
Petitioner has not shown by a preponderance of the evidence that
claims 12 and 14 are unpatentable as obvious under 35 U.S.C. § 103(a) in
view of Okamoto and Babayoff.
In summary:

Claims
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
12, 14 103(a)
Okamoto,
Babayoff

12, 14
12, 14 103(a)
Babayoff,
Okamoto

12, 14
Overall
Outcome

12, 14
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, Petitioner has not shown by a preponderance of the
evidence that claims 12 and 14 of the ’433 Patent are unpatentable;
FURTHER ORDERED that Petitioner’s motion to exclude is
dismissed as moot;
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 R. Walters
Roger H. Lee
Andrew R. Cheslock
Mythili Markowski
BUCHANON INGERSOLL & ROONEY PC
todd.walters@bipc.com
roger.lee@bipc.com
andrew.cheslock@bipc.com
mythili.markowski@bipc.com

FOR PATENT OWNER:

Jason D. Eisenberg
Robert G. Sterne
Salvador M. Bezos
Jay L. Bird
Christopher O’Brien
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
jasone-PTAB@sternekessler.com
rsterne-PTAB@sternekessler.com
sbezos-PTAB@sternekessler.com
jbird-PTAB@sternekessler.com
cobrien-PTAB@sternekessler.com