Trials@uspto.gov Paper No. 12 571-272-7822 Date: June 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

3SHAPE MEDICAL A/S,

Petitioner,

v.

SIRONA DENTAL SYSTEMS GMBH,

Patent Owner.

____________

Case IPR2016-00481 Patent 6,319,006 B1

____________

Before MEREDITH C. PETRAVICK, BENJAMIN D. M. WOOD, and BRIAN P. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge.

DECISION Institution of Inter Partes Review

37 C.F.R. § 42.108

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I. INTRODUCTION

3Shape Medical A/S (“Petitioner”) filed a Petition requesting an inter

partes review of claims 1–10 (all claims) of U.S. Patent No. 6,319,006 B1

(Ex. 1001, “the ’006 patent”). Paper 1 (“Petition” or “Pet.”). Sirona Dental

Systems GmbH (“Patent Owner”) filed a Preliminary Response to the

Petition. Paper 8 (“Prelim. Resp.”). We have statutory authority under

35 U.S.C. § 314(a), which provides that an inter partes review may not be

instituted “unless . . . there is a reasonable likelihood that the petitioner

would prevail with respect to at least 1 of the claims challenged in the

petition.”

Petitioner challenges claims 1–5 and 9–10 of the ’006 patent as

unpatentable under 35 U.S.C. §§ 102 and 103 and claims 6–8 under

35 U.S.C. § 103. Pet. 5–6. Based on the information presented in the

Petition and Preliminary Response, we are persuaded there is a reasonable

likelihood Petitioner would prevail with respect to at least one claim

challenged in the Petition. Therefore, for the reasons given below, we

institute inter partes review of claims 1–10 of the ’006 patent.

A. Related Proceedings

The parties identify the following as related district court proceedings

regarding the ’006 patent: Sirona Dental Systems GmbH v. Anatomage, Inc.,

No. 1:14-cv-00540-LPS (D. Del.), filed April 24, 2014; Sirona Dental

Systems GmbH v. Dental Wings Inc., No. 1:14-cv-00460-LPS (D. Del.), filed

April 11, 2014; Sirona Dental Systems GmbH v. Dentsply IH Inc., No. 1:14-

cv-00538-LPS (D. Del.), filed April 24, 2014; Sirona Dental Systems GmbH

v. OnDemand3D Technology Inc., No. 1:14-cv-00539-LPS (D. Del.), filed

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April 24, 2014; Sirona Dental Systems GmbH v. 3Shape, No. 1:15-cv-

00278-LPS (D. Del.), filed March 30, 2015. Pet. 2; Paper 7, 2–3.

The parties identify the following as related inter partes review

proceedings: Anatomage, Inc. v. Sirona Dental Systems GmbH, IPR2015-

01057, filed April 15, 2015; Institut Straumann AG v. Sirona Dental Systems

GmbH, IPR2015-01190, filed May 11, 2015. Pet. 1–2; Paper 7, 3.

B. Proposed Grounds of Unpatentability

Petitioner advances multiple grounds of unpatentability under

35 U.S.C. §§ 102 and 103 in relation to the challenged claims in the

’006 patent:

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Reference[s] Statutory Basis

Challenged Claims

Mushabac1 §§ 102(b), 103

1–5, 9–10

Poirier2 §§ 102(b), 103

1–5, 9–10

Bannuscher3 and Massen4 § 103 1–5 Poirier, Mushabac, or Bannuscher, and Verstreken,5 Truppe,6 or Weese7

§ 103 6–8

Petitioner also supports its challenge with a Declaration by Dr. Scott

D. Ganz, D.M.D. (“Ganz Decl.”) (Ex. 1004).

C. The ’006 Patent

The ’006 patent, entitled “Method for Producing a Drill Assistance

Device for a Tooth Implant,” issued November 20, 2001 from an application

1 Mushabac, U.S. Patent No. 5, 562,448, filed August 9, 1991, issued October 8, 1996. Ex. 1006 (“Mushabac”). 2 Poirier, U.S. Patent No. 5,725,376, filed February 26, 1997, issued March 10, 1998. Ex. 1005 (“Poirier”). 3 Bannuscher, DE 19510294 A1, filed March 22, 1995, published October 2, 1996 (certified English translation). Ex. 1008 (“Bannuscher”). 4 Massen, U.S. Patent No. 5,372,502, filed November 7, 1991, issued December 13, 1994. Ex. 1009 (“Massen”). 5 Verstreken et al., An Image-Guided Planning System for Endosseous Oral Implants, IEEE Trans. Med. Imag., Vol. 17, No. 5, (1998). Ex. 1010 (“Verstreken”). 6 Truppe, U.S. Patent No. 5,842,858, filed May 13, 1996, issued December 1, 1998. Ex. 1011 (“Truppe”). 7 Weese et al., An Approach to 2D/3D Registration of a Vertebra in 2D X-ray Fluoroscopies with 3D CT Images, CVR-Med-MRCAS ’97, 1205 LECTURE NOTES IN COMPUTER SCIENCE 119 (1997). Ex. 1015 (“Weese”).

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filed October 31, 2000.8 Ex. 1001. The ’006 patent is directed to a method

for producing a drill assistance device for tooth implant surgery. Id. at

Abstract. The method allows for optimal determination of a bore hole to be

drilled into a person’s jaw, by using a combination of X-ray and three-

dimensional (“3-D”) optical imaging to measure the person’s jaw and teeth.

Id. “Measured data records” are compiled for the X-ray and 3-D optical

images and then “correlated” to define the optimal location, angle and depth

of a bore hole. Id. at 2:16–28. A drill template based on the correlated X-

ray and 3-D optical data contains a pilot hole that corresponds to the bore

hole to be drilled in the person’s jaw for securing the tooth implant in

position. Id. at 2:32–38.

Figure 5 of the ’006 patent, showing an exemplary drill assistance

device, is reproduced below.

8 The ’006 Patent claims foreign application priority to a German patent application, DE 19952962, filed November 3, 1999. Ex. 1001, 1 (30).

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Figure 5, above, shows neighboring teeth 11 and 12 separated by

implant space 9. Id. at 4:25–26. Drill assistance device 16 attaches to

teeth 11 and 12 and includes pilot hole 17, which is positioned in the implant

space and set at angle 19. Id. at 4:51–58. Depth 18 corresponds to the

desired depth of the bore hole, defined to avoid nerve 20. Id. at 2:39–45,

4:58–62.

Claim 1 of the ’006 patent is illustrative and reproduced below.

1. Method for producing a drill assistance device for a tooth implant in a person’s jaw, comprising the following process steps:

taking an x-ray picture of the jaw and compiling a corresponding measured data record,

carrying out a three-dimensional optical measuring of the visible surfaces of the jaw and of the teeth and compiling a corresponding measured data record,

correlating the measured data records from the x-ray picture and from the measured data records of the three-dimensional optical measuring,

determinating the optimal bore hole for the implant, based on the x-ray picture, and

determinating a pilot hole in a drill template relative to surfaces of the neighboring teeth based on the x-ray picture and optical measurement.

II. ANALYSIS

A. Claim Construction

In an inter partes review, we construe claim terms of an unexpired

patent according to their broadest reasonable interpretation in light of the

patent specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v.

Lee, 579 U.S. __, No. 15-446, 2016 WL 3369425 at * 12 (U.S. June 20,

2016). Under the broadest reasonable interpretation standard, we assign

claim terms their ordinary and customary meaning, as understood by one of

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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). Any special

definition for a claim term must be set forth in the specification with

reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d

1475, 1480 (Fed. Cir. 1994).

1. “pseudo-x-ray picture”

Petitioner relies on the ordinary and customary meaning of the claim

terms, but requests construction of “pseudo-X-ray picture” as used in

claims 6 and 7 of the ’006 patent. Pet. 6–7 (citing Ex. 1004 ¶¶ 67–69).

Dr. Ganz testifies that “pseudo-x-ray” is not a term commonly used in the

art. Ex. 1004 ¶ 68. Based on the description in the ’006 patent, however,

Dr. Ganz adopts our construction of pseudo-x-ray picture set forth in a

related inter partes review proceeding. Id. ¶¶ 67–69 (citing IPR2015-01190,

Paper 11, 8). Patent Owner does not comment on Petitioner’s proposed

construction. Prelim. Resp. 10–12. Therefore, we adopt our construction of

“pseudo-x-ray picture” from IPR2015-01190 as “any representation of

measured data records of the three-dimensional optical measuring that can

be superimposed on an x-ray image.”

2. “carrying out a three-dimensional optical measuring of the visible surfaces of the jaw and of the teeth”

Patent Owner requests that we adopt our claim construction of the

above-quoted phrase from our institution decision in IPR2015-01057 and

IPR2015-01190 (hereafter “the related IPR proceedings”). Prelim.

Resp. 11–12 (citing IPR2015-01057, Paper 11, 8; IPR2015-01190, Paper 11,

7). In the related IPR proceedings, we construed the phrase “carrying out a

three-dimensional optical measuring of the visible surfaces of the jaw and

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teeth” as “using light to measure the visible surfaces of the jaw and teeth in

three dimensions.” IPR2015-01057 Paper 11, 7–8; IPR2015-01190 Paper

11, 7. We adopt this construction as well for this Decision.

3. “determinating a pilot hole in a drill template”

Patent Owner argues that we should modify our construction of the

above-quoted phrase in the related IPR proceedings to mean “a pilot hole in

a drill template [for] through which the pilot drill passes while drilling a bore

hole into a patient’s jaw.” Prelim. Resp. 11 (brackets and underlining added

to indicate proposed modification); IPR2015-01057, Paper 11, 8–9;

IPR2015-01190, Paper 11, 8–9. Patent Owner’s proposed modification is a

refinement of its proffered construction in the related IPR proceedings,

namely, “a hole in a drill template through which the drill bit actually

passes while drilling a bore hole into a patient’s jaw during an implant

procedure.” IPR2015-01057, Paper 11, 8; IPR2015-01190, Paper 11, 8–9

(emphases added).

Claim 1 of the ’006 patent is a method of producing a drill assistance

device, not a method of performing a tooth implant procedure. The quoted

limitation at issue is a step in the production method of that device and

recites the determining or defining of a pilot hole in a drill template, nothing

more. The pilot hole in the drill template is intended to act as a guide for a

dental surgeon to drill a corresponding bore hole into a patient’s jaw during

an implant procedure. Actually drilling a bore hole using the pilot hole in

the device is not part of the production method, but rather the intended

purpose for determining the pilot hole. Patent Owner’s proposed

modification, even without the previously proposed phrase “during an

implant procedure,” adds an additional implant method step – “through

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which the pilot drill passes while drilling a bore hole into the patient’s jaw”

– not required by the claimed method for producing a drill assistance device.

Therefore, we maintain our claim construction of the phrase

“determinating a pilot hole in a drill template” as “defining a guide hole in a

drill template for drilling a bore hole into the person’s jaw,” for the reasons

given in the related IPR proceedings. See IPR2015-01057, Paper 11, 8–9;

IPR2015-01190, Paper 11, 8–9.

B. Section 325(d)

Patent Owner urges us to exercise our discretion to terminate this

preliminary proceeding, because the related IPR proceedings raise “the same

or substantially the same prior art or arguments.” Prelim. Resp. 14 (citing

35 U.S.C. § 325(d)). Although there is overlap in the prior art and

arguments between the present preliminary proceeding and the related

IPR proceedings, there are differences. For example, here Petitioner argues

that Poirier anticipates and/or renders obvious claims 1–5 and 9–10 of the

’006 patent, a ground not raised or considered in either of the related

IPR proceedings. Pet. 5, 26–31, 44–50. Poirier was considered in IPR2015-

01057, but only in the context of alleged obviousness of claim 5, over either

Mushabac or Fortin and Poirier, and alleged obviousness of claims 4 and 5

over Bannuscher and Poirier. IPR2015-01057, Paper 11, 15–17. Similarly,

the alleged obviousness of claims 1–5 over Bannuscher and Massen, raised

here, is not a ground on which we instituted in the related IPR proceedings, a

point Patent Owner acknowledges. Prelim. Resp. 16.

Petitioner, moreover, decided not to file a duplicative petition and

request joinder to either of the related IPR proceedings, a decision we do not

view as “questionable.” Prelim. Resp. 18. Patent Owner also notes the

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Petitioner was sued for patent infringement on March 30, 2015, which

means that if we were to terminate the present preliminary proceeding

pursuant to Section 325(d), Petitioner likely would be barred from filing a

later petition if Patent Owner settles and terminates the related

IPR proceedings. See 35 U.S.C. § 315(b). Given that we have not yet

decided the merits of the related IPR proceedings, and given that Petitioner

has raised some new and different grounds, we decline to exercise our

discretion under Section 325(d) to terminate this preliminary proceeding.

C. Anticipation of Claims 1–5 and 9–10 by Mushabac

Petitioner argues that Mushabac (Ex. 1006) discloses every limitation

of claims 1–5 and 9–10 of the ’006 patent and, therefore, anticipates the

claims pursuant to 35 U.S.C. § 102(b). Pet. 19–26, 36–44. Petitioner

supports its argument with detailed citations to Mushabac that correspond to

each limitation of the claims and with Dr. Ganz’s Declaration. Id. at 19–26

(citing Ex. 1006; Ex. 1004, 29–37).

Patent Owner argues that Mushabac does not disclose several of the

recited limitations in independent claim 1, namely i) determining “a pilot

hole in a drill template,” ii) determining a pilot hole “relative to surfaces of

the neighboring teeth based on the x-ray picture and optical measurement,”

and iii) performing a three-dimensional optical measurement of “the visible

surfaces of the jaw.” Prelim. Resp. 18–27. Patent Owner has made the

same arguments in its Responses to the petitions filed in the related IPR

proceedings, after discovery and development of the record in those

proceedings. IPR2015-01057, Paper 20, 21–36; IPR2015-01190, Paper 15,

21–31. Patent Owner further argues that the limitations of dependent

claim 9 are not disclosed in Mushabac (Prelim. Resp. 27–33), arguments

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also made in Patent Owner’s Responses filed in the related IPR proceedings.

IPR2015-01057, Paper 20, 39–46; IPR2015-01190, Paper 15, 32–40.

We recognize discovery in the related IPR proceedings has been

concluded and that oral argument is scheduled for August 9, 2016, where we

will address Patent Owner’s arguments on a more fully developed record.

Therefore, for purposes of the present preliminary proceeding, we are

persuaded Petitioner has provided adequate evidence to show a reasonable

likelihood of prevailing in its assertion that Mushabac anticipates claims 1–5

and 9–10 of the ’006 patent.

With regard to Petitioner’s alternative ground that Mushabac renders

the challenged claims obvious, we agree with Patent Owner that Petitioner

fails to provide an obviousness analysis or explain what claim limitations

might not be disclosed in Mushabac, at least with respect to claims 1–4 and

9–10 of the ’006 patent.9 Prelim. Resp. 33; Pet. 36–44. Therefore we

decline to institute review on Petitioner’s alternative ground of obviousness

of claims 1–5 and 9–10 over Mushabac. See 37 C.F.R. § 104(b).

D. Anticipation of Claims 1–5 and 9–10 by Poirier

Petitioner argues that Poirier (Ex. 1005) discloses every limitation of

claims 1–5 and 9–10 of the ’606 patent and, therefore, anticipates the claims

pursuant to 35 U.S.C. § 102(b). Pet. 26–31, 44–50. Petitioner supports its

argument with detailed citations to Poirier that correspond to each limitation

9 With regard to dependent claim 5’s recitation of the correlating step using “a ball shaped body” as a reference marker, the Petition states that one of ordinary skill “would have readily appreciated” that ball-shaped bodies “could have replaced the T-shaped markers of Figure 29” in Mushabac. Pet. 43 (citing Ex. 1004 ¶ 114).

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of the claims and with Dr. Ganz’s Declaration. Id. at 26–31 (citing Ex.

1006; Ex. 1004, 37–43). Patent Owner opposes. Prelim. Resp. 33–38.

Patent Owner argues that Poirier does not disclose three-dimensional

optical measuring of the “teeth” or determining a pilot hole relative to

surfaces of “neighboring teeth” as recited in claim 1 of the ’606 patent.

Prelim. Resp. 33–34 (citing Ex. 1005, 3:1–11, 8:56–9:7, Fig. 18). Patent

Owner emphasizes that Poirier discloses a method for making a drill

template for dental implants in a toothless patient, but that the ’006 patent

claims recite optically imaging a patient’s existing (natural) teeth and

determining the pilot hole relative to neighboring (natural) teeth that remain

in the patient’s jaw. Id. at 34–35. Patent Owner points out there are no

“neighboring teeth” in the patient’s mouth at the time the drill template of

Poirier is created. Id. at 35. We agree with Patent Owner.

1. The recited “teeth” in the ’006 patent

The ’006 patent claims recite three-dimensional optical imaging of the

visible surfaces of “the jaw and of the teeth.” The data from the optical

imaging is used to define and locate a pilot hole in a drill assistance device,

“relative to surfaces of the neighboring teeth.” The claim language, in

context, refers to the patient’s existing natural teeth that are rooted in the

jaw, as described and shown in the ’006 patent.

The ’006 patent repeatedly and consistently refers to a patient’s teeth

in the jaw, not false teeth or dentures, as providing the visible surfaces to be

optically measured for use as a reference point when locating the pilot hole

in the drill assistance device. Ex. 1001, 1:9–10 (“[T]he pilot hole for the

tooth implant is aligned relative to the teeth that still remain in the jaw.”),

2:6–10 (“a drill assistance device that will allow the exact drilling of a pilot

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hole for a tooth implant in relation to the teeth that still remain in the jaw”),

2:37–39 (“the pilot hole that is necessary for fastening the implant in its

optimal position, based on the location of the neighboring teeth”), 3:17–19

(“The shape of the still remaining adjacent teeth is represented as a negative

on the drill assistance device.”) (emphases added). Figure 2, reproduced

below, shows a three-dimensional optical image of “visible structures in the

jaw.” Id. at 3:30–31.

Figure 2, above, uses dashed (phantom) lines to illustrate the roots of

the natural tooth being imaged. Figure 5, below, is to like effect, showing

the space between two “neighboring teeth” where pilot hole 17 is located in

drill assistance device 16. Id. at 3:37–39, 4:51––57.

In Figure 5, above, the drill assistance device is attached to occlusal surfaces

13 and 14 of neighboring teeth 11 and 12. Id. Dashed (phantom) lines are

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used to indicate that the patient’s “neighboring teeth” adjacent the implant

location are rooted in the jaw.

2. Poirier does not anticipate the challenged claims

Poirier, in contrast, discloses an embodiment for making a dental

implant drill guide for a toothless patient. Poirier discloses laser (optical)

imaging of a patient’s “false teeth” in the context of making a full set of

denture implants for a toothless patient. Ex. 1005, 3:2–4 (“the patient is

typically edentured, namely, the patient has had all teeth pulled from the

jawbone”). Poirier discloses imaging the patient’s “dentures or teeth to be

placed over the gum surface.” Id. at 3:57–59. Poirier describes the method

of making the disclosed dental implant drill guide in the flow chart of

Figure 5, an annotated portion of which is reproduced below.

Blocks 38 and 39 in Figure 5, above, disclose imaging the toothless

patient’s “gum surface” and “false teeth.” Poirier further states, “the 3-D

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computer model is built up using the radiographic 3-D imaging data as well

as referenced gum surface image data and referenced denture image data.”

Id. at 6:19–22. Thus, Poirier discloses i) imaging false teeth, not “teeth”

rooted in the jaw, and ii) determining drill hole positions (pilot holes) for the

implants relative to the patient’s gum surface and false teeth, rather than

relative to the patient’s “neighboring teeth” rooted in the jaw as recited in

claim 1 of the ’006 patent. Id. at 6:16–19; see also id. at Fig. 15 (39)

(“image false teeth”), (“generate 3D computer model of gum surface,

implant heads and false teeth”).

Poirier Figure 12, below, illustrates the finished “molded drill guide

body” 61 having a plurality of drill guide tubes 66 inserted into drill guide

sockets 68. Id. at 7:7–9.

Holes 67 permit the oral surgeon to secure drill guide 61 to a patient’s jaw

during surgery. Id. at 7:9–11. The molded drill guide is not shown as

accommodating any teeth remaining in the patient’s jaw. The oral surgeon

secures the molded drill guide over the patient’s toothless gum and jaw and

drills implant holes through drill guide tubes 66 into the patient’s gum and

jaw. Id. at 7:17–29. The oral surgeon then screws implants into the

patient’s jaw, to which a denture and bridge structure will be attached. Id. at

7:40–47.

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Poirier shows the denture and bridge structure in Figure 18,

reproduced below.

Poirier Figure 18, above, shows “denture structure 43, 44,” supporting

bridge structure 48, including abutment feet 47 that fit over the implant

heads anchored in the patient’s jaw. Id. at 8:60–9:7.

To the extent that the drill guide of Poirier has pilot holes (drill guide

tubes 66), the pilot holes are not determined “relative to surfaces of the

neighboring teeth,” because there are no neighboring teeth at the time the

drill template of Poirier is created. As stated above with regard to Figure 5,

Poirier determines the location and positioning of the drill guide tubes

relative to the patient’s gum surface and false teeth. The drill guide tubes

used to guide the drilling of bore holes for securing Poirier’s implanted

denture and bridge structure also are not determined based on “the visible

surfaces of . . . the teeth,” as recited in claim 1 of the ’006 patent.

With regard to Petitioner’s alternative ground that Poirier renders the

challenged claims obvious, we agree with Patent Owner that Petitioner fails

to provide an obviousness analysis or explain what claim limitations might

not be disclosed in Poirier, at least with respect to independent claim 1.

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Prelim. Resp. 37–38; Pet. 44–47. Therefore we decline to institute review

on Petitioner’s alternative ground of obviousness of claims 1–5 and 9–10

over Poirier. 37 C.F.R. § 104(b).

E. Obviousness of Claims 1–5 Over Bannuscher and Massen

Petitioner argues that claims 1–5 would have been obvious over

Bannuscher and Massen. Pet. 32–36, 50–54 (citing Ex. 1004 ¶¶ 72, 82–86,

135–145; Ex. 1008). Petitioner supports its argument with citations to

Bannuscher and Massen that correspond to each limitation of the claims and

with Dr. Ganz’s Declaration. Id. at 32–36 (citing Ex. 1004, 44–49;

Ex. 1008; Ex. 1009). Patent Owner opposes. Prelim Resp. 38–46. We

consider the parties’ arguments below.

1. Bannuscher

Bannuscher discloses a method of preparing a surgical template for

dental implant surgery. Ex. 1008, 2 (57), 5:1–3. A plaster model is cast

from a patient’s mouth and jaw, and then the three-dimensional geometry of

the plaster model and an X-ray image of the mouth and jaw are both entered

“into a computer by digital transmission.” Id. at 5:12–15, 8:19–9:5.

Reference points are used to correlate the data for determining the optimum

positioning of the implant, including comparison with the existing vertical

bone and drilling angles “of primary importance to the implantation”

procedure. Id. at 9:7–20. Bannuscher discloses that the data for the

optimized implant position is “transferred to a transponder or a surgical

template.” Id. at 9:21. Bannuscher discloses a “drill shaft” formed in the

surgical template at “any angle, determined by the combination of the three-

dimensional geometric model and the X-ray image of the mouth and jaw

area,” for use “during the operation in the mouth of the patient.” Id. at

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10:10–20. Bannuscher, however, does not disclose 3-D “optical measuring”

of the visible surfaces of a patient’s jaw and teeth. Pet. 32, 52.

2. Massen

Massen is directed to an “optical oral or mouth probe which is utilized

for the three-dimensional measurement or surveying of teeth.” Ex. 1009,

Abstract. Massen explains that “direct optical three-dimensional surveying

or measuring of teeth in the oral cavity of a patient facilitates the obtainment

of the digital construction data necessary for the computer-controlled

manufacture of tooth replacements without having to make any impressions

of the teeth.” Id. at 1:19–24. Massen’s optical probe includes a charge-

coupled image sensor that “is a device in which electrical charges are

introduced when light from a scene is focused on the surface of the device.”

Id. at 5:46–49.

3. Analysis

Patent Owner argues that Petitioner’s obviousness theory is based on a

misunderstanding of Bannuscher and an incorrect translation of a phrase in

the original German language, an issue also addressed in Patent Owner’s

Response filed in IPR2015-01190. Prelim. Resp. 38–39. Patent Owner

provides its own certified translation of Bannuscher in support of its position

that Bannuscher discloses the use of a “recording bow,” a device used by a

clinician to simulate articulation movements of a patient’s lower jaw relative

to the upper jaw. Id. (citing Ex. 2004, 513, Fig. 1; Ex. 2010, 6:23–25;

Ex. 2011, Abstract, 1:4–18). Patent Owner argues that Bannuscher does not

disclose obtaining surface measurements of a patient’s jaw and teeth and that

Petitioner does not articulate a sufficient rationale for why one of ordinary

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skill would have used Massen’s optical measurement technique to replace

Bannuscher’s recording bow technique. Id. at 40–45.

We note Petitioner relies on Dr. Ganz’s explanation of a rationale for

why one of ordinary skill would have used Massen’s automated optical

imaging technique to replace Bannuscher’s manually created three-

dimensional physical model (plaster cast). Pet. 52–53 (citing Ex. 1004

¶¶ 140–141). We also recognize there is an issue of fact regarding the

translation of Bannuscher that requires further development of the record.

Moreover, discovery in the related IPR proceedings has been concluded, oral

argument is scheduled for August 9, 2016, and we will address aspects of

Patent Owner’s argument in IPR2015-01190 on a more fully developed

record. Therefore, for purposes of the present preliminary proceeding, we

are persuaded Petitioner has provided adequate evidence to show a

reasonable likelihood of prevailing in its assertion that Bannuscher and

Massen would have rendered claims 1–5 of the ’006 patent obvious to one of

ordinary skill at the time of the ’006 patent application filing date.

F. Obviousness of Claims 6–8 Over Poirier, Mushabac, or Bannuscher and Massen, and Verstreken, Truppe, or Weese

Claim 6 of the ’006 patent depends from claim 1 and recites a step of

converting the three-dimensional optical measurement data records into a

“pseudo-x-ray picture.” As stated above in section II.A.1. of this Decision, a

pseudo-x-ray picture is “any representation of measured data records of the

three-dimensional optical measuring that can be superimposed on an x-ray

image.” Claim 7 depends from claim 6 and recites a step where the x-ray

picture and pseudo-x-ray picture “are superimposed from several

directions.” Claim 8 depends from claim 7 and recites an x-ray picture

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comprising “at least two individual panoramic images showing longitudinal

and transverse sections of the jaw.”

Petitioner argues that Verstreken and Truppe disclose the recited

limitations of claims 6–8. Pet. 54–58. Verstreken teaches a double-

scanning technique, where a CT scan is taken of a removable dental

prosthesis having radio-opaque markers and then a second scan of the

patient and marked prosthesis is taken. Ex. 1010, 846. The markers “allow

the transformation between the two sets to be computed.” Id. After the

transformation has been computed, “the scan of the prosthesis can be

realigned with the scan of the patient, and both can be inspected together.”

Id. Verstreken also teaches the superimposition of two-dimensional reslices

of the axial CT scans with three–dimensional surface-rendered models of the

bone and computer-aided-design implant models, including the ability “to

show reslices along every direction.” Id. at Abstract, 846, 849–50, Figs. 7,

8. Truppe discloses the optical imaging of a patient’s jaw, from which a

data set is calculated and superimposed with an X-ray data set in a

“positionally correct relationship.” Ex. 1011, 3:19–20, 5:63–6:6, Fig. 2.

Petitioner argues that one of ordinary skill would have looked to

Verstreken or Truppe to use their respective imaging techniques to improve

visualization of the patient’s jaw and teeth “with the hope of creating the

most accurate image of a patient’s jaw and teeth.” Pet. 56–58 (citing

Ex. 1004 ¶¶ 151, 155). Petitioner further argues that one of ordinary skill

would have expected reasonable success in applying either Verstreken’s

double-scanning technique or Truppe’s data modeling technique in

combination with either Poirier, Mushabac, or Bannuscher and Massen. Id.

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Patent Owner argues that Petitioner’s asserted combinations are unclear and

the stated rationale to combine is conclusory. Prelim. Resp. 46–48.

For the reasons given above in section II.D. of this Decision, we

determine Petitioner has not shown a reasonable likelihood of success with

respect to the asserted combinations that include Poirier.

With respect to Petitioner’s stated rationale to combine Mushabac or

Bannuscher and Massen with either Verstreken or Truppe, we note that

Dr. Ganz opines that Verstreken’s double-scanning technique “facilitates the

visualization of risk for anatomical structures, sinus perforation,

fenestrations, and the like that would not have been visible using solely 2-D

data.” Ex. 1004 ¶ 151 (citing Ex. 1010, 851). With regard to Truppe,

Dr. Ganz opines that Truppe’s method “incorporates 2-D and 3-D imaging

techniques to very vivid[ly] represent the relationship between a patient’s

actual jaw and a surgical planning model of the same.” Id. ¶ 155 (citing

Ex. 1011, 3:56–58). On the present record, recognizing that Patent Owner

will have the opportunity to take discovery and further develop the record on

the contested points, we determine Petitioner has provided adequate

evidence to show a reasonable likelihood of prevailing in its assertions that

i) Mushabac in combination with either Verstreken or Truppe, and ii)

Bannuscher and Massen in combination with either Verstreken or Truppe,

would have rendered claims 6–8 of the ’006 patent obvious to one of

ordinary skill at the time of the ’006 patent application filing date.10

10 We determine Petitioner has not demonstrated sufficiently that Weese provides sufficient additional teachings to further support the assertion that the subject matter of claims 6–8 as a whole is obvious. Accordingly, on this record, we exercise our discretion and decline to institute review based on the asserted combinations that include Weese. 37 C.F.R. § 42.108(a).

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III. CONCLUSION

Petitioner has demonstrated a reasonable likelihood of prevailing with

respect to claims 1–10 challenged in this Petition, based on the grounds

asserted and discussed above. At this stage of the proceeding, the Board has

not made a final determination as to the patentability of any challenged

claim.

IV. ORDER

ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is

instituted as to claims 1–10 of the ’006 patent on the following grounds of

unpatentability:

Claims 1–5 and 9–10 of the ’006 patent as anticipated by Mushabac

pursuant to 35 U.S.C. § 102(b);

Claim 1–5 of the ’006 patent as obvious over Bannuscher and Massen

pursuant to 35 U.S.C. § 103;

Claims 6–8 of the ’006 patent as obvious over Mushabac and either

Verstreken or Truppe pursuant to 35 U.S.C. § 103; and

Claims 6–8 of the ’006 patent as obvious over Bannuscher, Massen

and either Verstreken or Truppe pursuant to 35 U.S.C. § 103.

FURTHER ORDERED that inter partes review is commenced on the

entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.

§ 42.4, notice is hereby given of the institution of a trial; and

IPR2016-00481 Patent 6,319,006 B1

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FURTHER ORDERED that the trial is limited to the grounds of

unpatentability listed above, and no other grounds of unpatentability are

authorized for inter partes review.

FOR PETITIONER: Erin Dunston Erin.dunston@bipc.com Aaron Pereira Aaron.pereira@bipc.com Katelyn Bernier Katelyn.bernier@bipc.com Philip Hirschhorn Philip.hirschhorn@bipc.com FOR PATENT OWNER: Justin Oliver sironalIPR@fchs.com Michael Sandonato msandonato@fchs.com Jason Dorsky jdorsky@fchs.com