Align Technology, Inc.

Patent Trials and Appeals Board

Nov 1, 2021

IPR2020-01642 (P.T.A.B. Nov. 1, 2021)

Trials@uspto.gov
571-272-7822
Paper 20
Date Entered: November 1, 2021

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.
____________

IPR2020-01642
Patent 10,507,088 B2
____________

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

Opinion for the Board filed by Administrative Patent Judge McNAMARA.

Opinion dissenting filed by Administrative Patent Judge ROESEL.

McNAMARA, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request on Rehearing of Decision
Granting Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
On May 10, 2021 we entered a Decision to Institute inter partes
review of U.S. Patent No. 10,507,088 B2 (the ’088 patent”) based on
challenges in a Petition (“Pet.”) filed by 3Shape A/S and 3Shape Inc.
(collectively, “Petitioner”). Paper 9 (“Dec. to Inst.”). On May 24, 2021,
Align Technology, Inc. (“Patent Owner”) filed a Request for Rehearing.
Paper 11 (“Req. Reh’g”). Patent Owner also filed a request for a
Precedential Opinion Panel (“POP Request”). On July 15, 2021, Patent
Owner’s POP Request was denied. Paper 15. We now address Patent
Owner’s Request for Rehearing of the Decision to Institute.
When rehearing a decision on institution, the Board reviews the
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
discretion may arise if the decision is based on an erroneous interpretation of
law, if a factual finding is not supported by substantial evidence, or if an
unreasonable judgment is made in weighing relevant factors. Star Fruits
S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
1305, 1315–16 (Fed. Cir. 2000).
The burdens and requirements of a request for rehearing are stated in
37 C.F.R. § 42.71(d):
(d) Rehearing. . . . The burden of showing a decision should be
modified lies with the party challenging the decision. The
request must specifically identify all matters the party believes
the Board misapprehended or overlooked, and the place where
each matter was previously addressed in a motion, an opposition,
a reply, or a sur-reply.
We address below the matters Petitioner asserts we overlooked or
misapprehended.
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For the reasons discussed below, the Request for Rehearing is
DENIED.
II. ANALYSIS
A. Introduction
Patent Owner asserts that the Decision to Institute overlooks
deficiencies in the Petition and misapprehends the law. See generally Req.
Reh’g. Focusing primarily on claim limitations 11.9 and 27.2, Patent Owner
contends that Petitioner’s challenge “was premised on a theory of express
disclosure in the prior art reference Berner (EX 1003).” Id. at 2 (emphasis
omitted). According to Patent Owner, Petitioner merely quoted portions of
Berner without explaining the relevance of the cited portions. Id. (citing
Dec. to Inst., Dissent 3). Patent Owner accuses the majority of “morphing
the analysis from one of disclosure that is so apparent no explanation is
needed into an obviousness theory premised on evidence and explanation
that was not presented in the petition.” Id. at 2–3. As discussed below,
much of the explanation that accompanies our analysis of Petitioner’s
obviousness challenge in the Decision to Institute addresses issues raised in
the Patent Owner Preliminary Response.
B. The Challenge Presented By the Petition
We first turn to Patent Owner’s assertion that Petitioner’s challenge
“was premised on a theory of express disclosure.” Req. Reh’g 2 (emphasis
omitted). According to Patent Owner “[w]hile the petition presented a
theory that was based on (at most) disclosure, the decision presented a
theory based on what would have been suggested to a person of ordinary
skill, in effect creating a new ground of challenge.” Id. at 4.
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As an initial matter, Patent Owner’s assertion that the Petitioner’s
challenge relies solely on express “disclosure” is inconsistent with the
Petition. The Petition includes numerous assertions (we estimate over 30
such assertions) about what the references suggest to a person of ordinary
skill. See, e.g., Pet. 24–27, 30–32, 40, 42–43, 45, 47, 59, 51–53, 55, 57–61.
As one example, the Petition explicitly states “the lens configuration as
described and depicted in Berner’s Figure 2 may be evaluated for what it
reasonably discloses or at least suggests to a POSITA.” Pet. 42.
The sole challenge asserted in the Petition is that claims 11–15, 17,
27, and 30 are unpatentable under 35 U.S.C. § 103 as obvious over Berner1
and Ginani.2 Pet. 5. To establish obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007); see CFMT, Inc. v. Yieldup Int’l
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985
(CCPA 1974). We decline Patent Owner’s invitation to create a new, more
limited form of obviousness based solely on the explicit disclosure in a
reference. An obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Even if
Petitioner supported its challenge with numerous quotations from Berner,
the issue presented by the Petition is not the express disclosure in the cited

1 Berner, US 2010/0085636 A1, pub. Apr. 8, 2010 (Ex. 1003).
2 Luciano Selva Ginani, Optical Scanning Sensor System with Submicron
Resolution Dissertation (2013) (“Ginani”) (Ex. 1004).
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references—it is whether the claimed invention as a whole would have been
obvious to a person having ordinary skill in the art to which the claimed
invention pertains. See 35 U.S.C. § 103.
We further note that In re NuVasive, Inc., 841 F.3d 966, 971–73 (Fed.
Cir. 2016), cited by Patent Owner (Req. Reh’g 4), explicitly states that the
Board is not limited to citing only portions of the prior art brought to its
attention. In In re NuVasive, the court found that the Board relied on a
figure and nothing else for a prior art disclosure of an implant with specific
length and width characteristics, without explaining the obviousness of the
figure alone or in combination with other art. Id. That is not the case in our
Decision to Institute. Indeed, as discussed further herein, Patent Owner’s
Request for Rehearing appears to contend that we cited too much of Berner.
See generally Req. Reh’g 7–8.
Patent Owner’s citation of Nike, Inc. v. Adidas AG, 955 F.3d. 45, 51
(Fed. Cir. 2020), which concerned a Motion to Amend, is similarly
inapposite. See Req. Reh’g 4. In Nike, the court found that the Board is not
constrained to references cited in the Petition when deciding a Motion to
Amend, but must provide the patent owner an opportunity to make its views
known concerning such citations before rendering a final decision. Nike,
958 F.3d at 51. Nike is inapplicable in this case because we are not deciding
a Motion to Amend, the Decision to Institute is not a final decision (meaning
Patent Owner has ample opportunity to respond), and Patent Owner already
made some of its views known by inviting us to consider testimony
concerning the Berner reference in IPR2020-01088 (“the ’1088
proceeding”). See Prelim. Resp. 36–37. As the Petition is based on
obviousness, the analysis in our Decision does not advance a new theory, but
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instead serves to explain our understanding of what Petitioner demonstrated
the references teach and what they would have suggested to a person of
ordinary skill in the art.
C. Citation of Testimony from the ’1088 Proceeding
Patent Owner in this proceeding was the petitioner in the ’1088
proceeding. In the ’1088 proceeding, Patent Owner cited Berner as a
reference against U.S. Patent No. 10,349,042 owned by Petitioner in this
proceeding. The Petition in this proceeding cites to Patent Owner’s petition
in the ’1088 proceeding (Ex. 1017 in this proceeding) and to the Declaration
of Patent Owner’s expert, Dr. Hesselink (Ex. 1018 (“Hesselink. Decl.”) in
this proceeding). See Pet. 14, 20, 24, 25, 35, 57, 60 (citing Ex. 1017); id. at
14, 20, 24, 35 (citing Ex. 1018, Hesselink Decl.)3 In this proceeding, the
Patent Owner Preliminary Response relied upon the ’1088 proceeding,
extensively discussing the testimony of Petitioner’s expert, Dr. Sergienko, in
the ’1088 proceeding in order to rebut Petitioner’s arguments concerning the
reasons to combine Berner and Ginani, even though Ginani was not cited in
the ’1088 proceeding. Prelim. Resp. 36–37 (citing Ex. 2004 ¶¶ 22–30).
Patent Owner did not, however, identify testimony of its own expert, Dr.
Hesselink, that is, arguably, inconsistent with positions Patent Owner takes
in this proceeding concerning Berner. See Dec. to Inst. 52–53; see Ex. 1018,
Hesselink Decl. ¶¶ 93–95.
Relying on Berner to challenge a patent owned by Petitioner, in the
’1088 proceeding, Patent Owner’s expert testified “Berner leaves out some
of the particulars for identifying in-focus positions on the object since these

3 The Petition cites paragraphs 74, 90, 95, 74, 113–114, and 153 of the
Hesselink Declaration.
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were known to the person of ordinary skill in the art.” Ex. 1018, Declaration
of Dr. Lambertus Hesselink (“Hesselink Decl.”) ¶ 95 (citing paragraphs 3
and 18–20 of Berner as “describing prior-art systems for determining 3D
surface geometry”). Dr. Hesselink further testified
Berner admits one issue to its optical configuration is that
“scanned surfaces appear distorted,” with “flat surfaces
appear[ing] curved” and “straight lines appear[ing] unstraight”
in its arrangement. Id., [0046]. Berner also notes that “the
magnifications and curvatures at each position in the image
differ” in its configurations. Id.; see also id., [0026], [0029],
[0041], FIG. 3. One of ordinary skill in the art would have
understood that these were all features representative of a
normal (i.e., non-telecentric) lens configuration. Berner goes on
to address the distortions with software-side corrections, using
imaging-warping compensation techniques that would have
been known to be readily available at the time. Id., [0047]-
[0052].
Ex. 1018 ¶ 94.4 Berner shows distortions in all 3 dimensions, i.e., X, Y, and
Z. Ex. 1003, Fig. 3; Pet. 28–29. The above cited testimony of Patent
Owner’s expert in the ’1088 proceeding acknowledges that correcting the
distortions using software would have been known to those of ordinary skill
in the art, even if Berner does not provide detailed explanation. Ex. 1018
¶ 94. Thus, even if Patent Owner were correct in its characterization of the
Petition as premised on a theory of “one of disclosure that is so apparent no
explanation is needed” (Req. Reh’g 2–3), the testimony of Patent Owner’s
expert in the ’1088 proceeding establishes that premise and is evidence that
no further explanation was required.
Notwithstanding its own citation of testimony in the ’1088 proceeding
in the Preliminary Response, Patent Owner’s Rehearing Request assails our

4 Numbers in brackets refer to paragraphs of Berner.
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citation of Dr. Hesselink’s testimony from the ’1088 proceeding and now
refers to the ’1088 proceeding as concerning an unrelated patent. Req.
Reh’g 7–9. We need not decide whether the patent in the ’1088 proceeding
is unrelated because we did not consider Dr. Hesselink’s testimony for what
it said about the patent at issue in the ’1088 proceeding—we considered Dr.
Hesselink’s testimony for what it says about what a person of ordinary skill
would understand from Berner, a reference common to both the ’1088
proceeding and this proceeding.
Patent Owner’s Preliminary Response did not mention Dr.
Hesselink’s testimony concerning Berner in the ’1088 proceeding, but only
cited the testimony of Petitioner’s witness, Dr. Sergienko, in that
proceeding. Prelim. Resp. 36–37. Having opened the door to testimony
concerning Berner in the ’1088 proceeding, Patent Owner seeks to slam it
shut on testimony of its own expert that is arguably inconsistent with
positions Patent Owner now takes on the penultimate issue of obviousness
based on the teachings of Berner. In addition, having branded the ’1088
proceeding as concerning an unrelated patent, the Request for Rehearing
reiterates the alleged importance of Patent Owner’s assertions concerning
Dr. Sergienko’s testimony about Berner. Req. Reh’g 13–14; see Section E
herein. Patent Owner’s failure to disclose the testimony of its expert, Dr.
Hesselink, concerning Berner in the ’1088 proceeding that arguably is
inconsistent with positions Patent Owner takes in this proceeding and Patent
Owner’s contradictory, flip-flopping arguments concerning the relevance of
the ’1088 proceeding, distract from the substantive issues before us and are
confusing, at best.
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D. Positions Advanced in the Decision to Institute
Patent Owner further argues the Decision to Institute substitutes
Petitioner’s disclosure theory with its own reasoning and evidence not
presented in the Petition. Req. Reh’g 7–8. Patent Owner appears to contend
that we should not have read or considered the references in their entirety
and even goes so far as to suggest the panel should not have considered the
entire ’088 patent that is the subject of this proceeding. Id. at 7–9. For
example, Patent Owner faults the Decision to Institute as citing four
paragraphs of Berner (paragraphs 32, 38–40)5 not cited in the Petition. Id. at
7. Of these, only non-substantive paragraph 326 was not cited in the
Hesselink Declaration. Ex. 1018, Hesselink Decl. ¶ 89 (citing ¶¶ 2, 3, 10,
11, 13–23, 26, 29, 30, 36–41, 43–53, claims 1, 15, 16, Figs. 1–3 of Berner).
Patent Owner further contends that the Decision to Institute “differs
from petitioner’s disclosure theory in at least two readily apparent ways.”
Req. Reh’g 8. First Patent Owner notes our discussion in the Decision to
Institute that Berner discloses correcting distortion introduced by the
curvature at each position of an object. Id. at 8–9. According to Patent
Owner,
the decision relies on new reasoning indicative of an obviousness
theory that is premised on the notion of what Berner teaches, how
a POSA would have understood those teachings as suggesting
that the correction of “curvature” refers to a point, and how a
POSA would have modified (or rather, would not have been

5 Patent Owner also complains that the Decision to Institute cites portions of
the challenged ’088 patent (column 18, line 12 through column 19, line 5)
and five paragraphs of Dr. Hesselink’s declaration (paragraphs 73, 93–94,
and 109–110) not cited in the Petition.
6 Paragraph 32 of Berner reads “FIG.1 is a view of an optics for a confocal
microscope as proposed in the prior art.”
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foreclosed from modifying) the lens system of Berner such that
it would result in adjustment of the detected point itself “using
similar known techniques.”
Id. at 9 (emphasis in Rehearing Request). As noted above, what a reference
teaches or suggests to a person of ordinary skill is an essential element of an
obviousness analysis.
Our Decision to Institute, does not advance a new challenge or
arguments, theories, or evidence not relied upon in the Petition, as suggested
by the dissent. Dissent 1. For example, the Petition states “a POSITA
would have understood Berner’s model generation would have involved
intensity measurements for a plurality of locations of the at least one lens for
determining positions on the imaging axis of a plurality of points of the three
dimension object, as the product of Berner’s confocal imaging apparatus.”
Pet. 26–27. The Petition provides a detailed explanation of how Berner’s
curved focal plane introduces distortion. Pet. 31–35 (citing Ex. 1003 ¶¶ 41,
42, 46, Fig. 3; Ex. 1010, Sergienko Decl. ¶¶ 102–109; Ex. 1017 pp. 8, 43;
Ex. 1018, Hesselink Decl. ¶¶ 74, 153). In that context, the Petition provides
an annotated figure contrasting the relative distances from the detector of
object M1 when positioned on an optical axis with no curvature (i.e., a flat
focal plane) and objects M2 and M3 positioned on a non-flat focal surface.
Id. at 33–34. The Petition also explicitly recognizes Berner’s statement that
“the magnifications and curvatures at each position in the image differ.” Id.
at 28 (citing Ex. 1003 ¶ 46); see also Dec. to Inst. 52–53 (quoting Ex. 1018,
Hesselink Decl. ¶ 94, emphasis in Dec. to Inst.). It was Petitioner who
pointed out “Berner also specifically explains its aspherical surface
optimization calculations for each position of its example focal
planes/surfaces 7a, 7b, 7c.” Pet. 49 (citing Ex. 1003 ¶ 42). Further
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undercutting Patent Owner’s “disclosure” arguments, the Petition states “a
POSITA would have understood that Berner’s system includes information
regarding the surface curvatures that were optimized, the geometry of those
curvatures, the magnification effects of such surfaces, and the focus settings
at which such non-flat focus surfaces are present when using Berner’s
optical system.” Id. (citing Ex. 1010, Sergienko Decl. ¶ 141).
Second, Patent Owner points to the Decision’s discussion of
retrocorrecting curvature at each position of an object, for example, using a
polynomial as specified by the variables X, Y, and Z. Req. Reh’g 10–11.
According to Patent Owner, the Decision postulates what is indicated from
Berner’s teaching about mapping of curvature and polynomial
approximation. Id. at 11. Patent Owner misunderstands the Decision.
Indeed, much of our discussion is prompted by Patent Owner’s assertions in
the Preliminary Response that a point has no curvature and that Petitioner
fails to explain how correction of curvatures in an image equates to
adjustment of a detected position of a point. Dec. to Inst. 48–53.
As discussed above, the Petition explains how, as compared to a flat
focal plane, Berner’s curved focal plane causes points on a flat surface of an
object to be different distances from a detector, resulting in distortion. Pet.
31–35. The Petition also states that Berner acts on image information prior
to generating a three dimensional representation of the scanned object and
“detected positions . . . are to be adjusted” to compensate for the non-flat
focal surface. Id. at 28. The Petition also explains that Berner and Ginani
discloses a “structure that provides the function of ‘to generate an array of
light beams arranged in an X-Y Cartesian plane, that propagate along a Z-
axis.’” Id. at 38 (quoting Ex. 1010, Sergienko Decl. ¶ 119); see id. at 38–40,
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see also id. at 16 (“Ginani’s microlens array . . . splits the parent light beam
of the collimator . . . to generate an array of light beams arranged in an X-Y
Cartesian plane that propagate along a Z axis” (citing Ex. 1010, Sergienko
Decl. ¶ 60)). The Petition also points out that “Berner’s ‘illumination
pattern 1’ provides a light system that arranges light rays in an X-Y
Cartesian plane (i.e., 2D), such that they are propagated along a Z axis.”
Dec. to Inst. 48 (quoting Pet. 15); see also Pet. 16 (citing Ginani for the
same principle). The Decision further notes that in the ’1088 IPR Patent
Owner asserted the same teachings in Berner that Petitioner relies upon in
this proceeding. Dec. to Inst. 48–49. The Petition further points out
Berner’s disclosure of mapping curvatures using a mathematical function,
such as a polynomial, and retrocorrecting the curvature at the scanned
positions of an object. Pet. 28. Further undercutting Patent Owner’s
argument that the Petition is based on express disclosure is Petitioner’s
assertion that “a POSITA would have appreciated that the absence of a field
lens in Berner’s optics . . . creates the need in Berner to compensate for its
non-flat focal plane or surface, which is compensation for the absence of a
field lens.” See id. at 27–29 (emphasis omitted).
In short, the Decision to Institute did not substitute an obviousness
theory of its own for that advanced by Petitioner; nor did the Decision
advance a new challenge or overlook or misapprehend the evidence,
including evidence Patent Owner prompted us to review that establishes the
relevance of Berner and that Berner’s distortion correction would have been
known to those of ordinary skill. Rather than introduce a new theory of
obviousness or consider new evidence, the discussions in the Decision to
Institute concern theories advanced by Petitioner and Patent Owner’s expert.
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E. Alleged Additional Deficiencies
The Request for Rehearing again reverses Patent Owner’s position
concerning the relevance of the ’1088 proceeding, arguing that our Decision
to Institute “does not acknowledge the arguments raised by Patent Owner
concerning this conflicting testimony” by Dr. Sergienko that Patent Owner
cited in the Preliminary Response. Req. Reh’g 14. We take this opportunity
to articulate the failings of Patent Owner’s argument in more detail. In its
Preliminary Response, Patent Owner argued
According to Petitioners’ expert, because the system included a
pinhole array positioned upstream of a CCD detector to measure
the intensities of returned light beams for the acquisition of 3D
positional data of an object, the magnification changes caused by
the moving focal plane in Berner’s system would introduce
undesirable error due to the alignment of the pinholes with the
pixels of the detector, rendering the combination incompatible.
. . .
This is in contrast to the testimony presented here, where,
irrespective of any changes in magnification, Petitioners’ expert
generally asserts that a POSA would have considered Berner’s
system as disclosing a confocal system consistent with the same
“basic principles” of confocal microscopy disclosed in the
Ginani dissertation. Those principles, as acknowledged by
Petitioners and their expert, include the use of pinholes
positioned in front of a detector. Petitioners, however, fail to
address this use of pinholes positioned in front of a detector for
confocal imaging with Berner’s optical system. Petitioners also
fail to explain how and why Ginani’s described “basic
principles” of confocal microscopy, which similarly positions
pinholes in front a detector, would not have been understood by
those in the art to introduce similar errors as alleged by their own
expert. In other words, Petitioners’ wholesale reliance on
Ginani’s description of the “basic principles” of confocal
microscopy as informing the structure and function of Berner’s
optical system is inconsistent with their expert’s own testimony
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suggesting that certain confocal techniques are not necessarily
compatible with Berner’s system.
Prelim. Resp. 37–38 (citing Ex. 20047 ¶¶ 26–30).
As an initial matter, Petitioner cites Ginani as generally disclosing
principles of confocal systems based on knowledge generally available in
the art. See Pet. 53–62. The five paragraphs of Dr. Sergienko’s testimony
that Patent Owner cites are a small portion of sixteen paragraphs of Dr.
Sergienko’s testimony concerning the combination of Berner and another
reference, Babayoff.8 Ex. 2004 ¶¶ 20–36. Patent Owner fails to provide
context for the cited testimony because Patent Owner’s Preliminary
Response neglected to mention Babayoff and because Patent Owner did not
file Babayoff9 as an exhibit with the Preliminary Response. For example,
Patent Owner failed to cite the preceding paragraph of Dr. Sergienko’s
testimony that states “[i]t is important for Babayoff’s detection optics 60 to
receive the returned light beams (obtained at different positions of the focal
plane) at the intended X-Y pixel because Babayoff obtains 3D data by
comparing the measured intensities of the returned light beams received at
each X-Y pixel.” Id. ¶ 25 (citing the ’1088 proceeding Ex. 1010
(“Babayoff”) ¶¶ 121, 117). Dr. Sergienko argued that Berner’s distortions
are incompatible with Babayoff because in Babayoff, the pinholes must be
precisely aligned with the pixels of the CCD at each X-Y position. Id. ¶ 27.

7 Ex. 2004 is Dr. Sergienko’s Declaration in the ’1088 proceeding.
8 Babayoff, US 2005/0283065 A1, pub. Dec. 22, 2005.
9 Although Petitioner does not cite Babayoff as a reference, in the ’1088
proceeding Patent Owner acknowledged that it was known in the art from
both Berner and Babayoff to determine depth on the Z axis. See ’1088
proceeding Paper 3 (’1088 Pet. 47–49).
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Patent Owner points to no such alignment requirement in either Berner or
Ginani.
The Decision to Institute in this proceeding recognizes Ginani’s
disclosure of a pinhole in the context of a confocal system. See Dec. to Inst.
32–33. Patent Owner’s Preliminary Response provides no evidence that
such alignment is a requirement of Berner or of confocal systems in general,
particularly for non-telecentric implementations, although Ginani addresses
the precision requirement in its discussion of telecentricity. Ex. 1004, 46
(“Telecentricity describes a special condition on optical systems when the
light chief rays across the whole object and/or image space are parallel . . . .
Depending on the position of the pupils, and consequently on the position of
the system aperture stop, the system can be telecentric on the object space,
on the image space or on both.”).
Ending its citation to the Sergienko Declaration at paragraph 30,
Patent Owner omits Dr. Sergienko’s testimony at paragraph 31. At
paragraph 31, Dr. Sergienko notes that Patent Owner’s expert, Dr.
Hesselink, attributes magnification distortions to “Berner being non-
telecentric,” and that “Berner corrects such magnification distortions with
after-the-fact correction using software, and not with additional optical
components.” Sergienko Decl. ¶ 31 (emphasis omitted). Thus, we are not
persuaded that Dr. Sergienko’s testimony in the ’1088 proceeding is
inconsistent with his testimony in this proceeding. In addition, as discussed
above, the testimony of Patent Owner’s expert is evidence that Berner
provides sufficient disclosure to a person of ordinary skill of both identifying
in-focus positions on the scanned object and correcting distortions using
software.
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Patent Owner also contends that the Decision to Institute overlooked
the Petition’s deficiencies in failing to explain with particularity the
evidence supporting Ginani’s availability to the public prior to the invention
date. Req. Reh’g 12 (acknowledging Petitioner’s reliance on the Hall-Ellis
Declaration). Patent Owner then argues that the Decision cites evidence not
of record to fill in gaps in the Petition. Id. at 13. The evidence “not of
record” is the content of website links provided in footnotes of the Hall-Ellis
Declaration to support her testimony that Ginani was publically available at
the relevant time. See Ex. 1008, Declaration of Dr. Sylvia D. Hall-Ellis, 29
fn. 15, 16. We reviewed those web sites and made their content of record.
There was no gap to fill, as the Hall-Ellis Declaration is sufficient to meet
Petitioner’s burden at institution, even without the Board’s exhibits.
F. Conclusion
The Decision to Institute provides a thorough analysis of the record in
the context of the obviousness challenge to certain claims of the ’088 patent
articulated in the Petition.
Patent Owner’s Rehearing Request fails to demonstrate that the
Decision to Institute overlooked or misapprehended the law or the evidence.
Therefore, Patent Owner’s Rehearing Request is denied.
III. ORDER
It is ORDERED that
Patent Owner’s Request for Rehearing is DENIED.
Claim(s) 35 U.S.C
§
Reference(s)/Basis Denied Granted
11–15, 17,
27, 30
103 Berner, Ginani 11–15, 17,
27, 30

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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.
____________

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Patent 10,507,088 B2
____________

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

ROESEL, Administrative Patent Judge, dissenting.

I dissent from the denial of rehearing for the reasons given in my
dissent from the grant of institution. Paper 9 (dissent). I agree with Patent
Owner that “the majority decision departed from the arguments and theories
presented in the petition and instead chose to adopt different arguments
based on different evidence the petitioner did not actually raise.” Req.
Reh’g 4.

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For PETITIONER:
Todd Walters
Roger Lee
Andrew Cheslock
BUCHANAN INGERSOLL & ROONEY PC
todd.walters@bipc.com
roger.lee@bipc.com
andrew.cheslock@bipc.com

For PATENT OWNER:

Michael Rosato
Matthew Argenti
Tasha Thomas
WILSON, SONSINI, GOODRICH, & ROSATI
mrosato@wsgr.com
margenti@wsgr.com
tthomas@wsgr.com