3Shape A/S v. Align Technology, Inc.

Filing 176

REPORT AND RECOMMENDATIONS re Claim Construction. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. (*Objections to R&R due by 5/20/2020). Signed by Judge Jennifer L. Hall on 5/6/2020. (ceg)

Case 1:18-cv-00886-LPS Document 176 Filed 05/06/20 Page 1 of 24 PageID #: 7837

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
3SHAPE A/S,
Plaintiff,
v.
ALIGN TECHNOLOGY, INC.,
Defendants.

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C.A. No. 18-886-LPS
CONSOLIDATED

REPORT AND RECOMMENDATION
Before the Court are the parties’ disputes over the construction of claim terms in United
States Patent Nos. 9,629,551 (the “’551 Patent”), 9,962,244 (the “’244 Patent”), and 10,349,042
(the “’042 Patent”). The Court held a Markman hearing on April 21, 2020. I recommend that the
Court adopt the constructions set forth below.
The parties agreed on the construction of four claim terms. In accordance with the parties’
agreement, I RECOMMEND that those terms be construed as follows:
Term
1 “… for detecting a movable object in a
location, when scanning a rigid object in
the location by means of a 3D scanner for
generating a virtual 3D model of the rigid
object” (’551 Patent, Claims 1, 23, and 25)
2 “the data processing system also
configured to derive surface color
information … from at least one of the 2D
images used to derive the surface geometry
information” (’244 Patent, Claims 1 and
29)
3 “An intraoral scanner for providing data
for 3D geometry of at least a part of the
surface of an object in an oral cavity” (’042
Patent, Claims 1, 17, and 21)

Court
Preamble is limiting.

“the data processing system configured to
derive both surface geometry information and
surface color information from the same at
least one 2D image captured by said color
image sensor”
Preamble is limiting.

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4 “A method for providing data for 3D Preamble is limiting.
geometry of at least a part of the surface of
an object in an oral cavity using an
intraoral scanner” (’042 Patent, Claim 19).
Further, as announced at the hearing on April 21, 2020, I RECOMMEND that the following
disputed claim terms be construed as follows:
Term
1

2

3

4

5

Court

“excluded volume in space where no
surface can be present in both the first 3D
representation and the second 3D
representation” (’551 Patent, Claims 1, 23
and 25)
“determining/determine for the first 3D
representation a first excluded volume in
space where no surface can be present in
both the first 3D representation and the
second 3D representation” (’551 Patent,
Claims 1, 23 and 25)
“determining/determine for the second 3D
representation a second excluded volume
in space where no surface can be present
in both the first 3D representation and the
second 3D representation” (’551 Patent,
Claims 1, 23 and 25)
“if a portion of the surface in the first 3D
representation is located in space in the
second excluded volume, the portion of
the surface in the first 3D representation is
disregarded in the generation of the virtual
3D model” (’551 Patent, Claims 1 and 25)

[See construction for the entire claim phrase
below.]

“if a portion of the surface in the second
3D representation is located in space in the
first excluded volume, the portion of the
surface in the second 3D representation is
disregarded in the generation of the virtual
3D model” (’551 Patent, Claims 1 and 25)

2

“determining/determine for the first 3D
representation a first excluded volume in
space that is common to both the first and
second 3D representations where no surface
from either of the 3D representations should
be present”
“determining/determine for the second 3D
representation a second excluded volume in
space that is common to both the first and
second 3D representations where no surface
from either of the 3D representations should
be present”
“if a portion of the surface in the first 3D
representation is located in space in the
second excluded volume, the portion of the
surface in the first 3D representation is
permanently disregarded in the generation of
the virtual 3D model after a single evaluation
of the second excluded volume with the
surfaces in the first 3D representation”
“if a portion of the surface in the second 3D
representation is located in space in the first
excluded volume, the portion of the surface in
the second 3D representation is permanently
disregarded in the generation of the virtual 3D
model after a single evaluation of the first
excluded volume with the surfaces in the
second 3D representation”

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6

“disregard the portion of the surface in the
first 3D representation in the generation of
the virtual 3D model, if a portion of the
surface in the first 3D representation is
located in the second excluded volume”
(’551 Patent, Claim 23)

7

“disregard the portion of the surface in the
second 3D representation in the generation
of the virtual 3D model, if a portion of the
surface in the second 3D representation is
located in the first excluded volume”
(’551 Patent, Claim 23)

8

“where a surface portion in the second
representation or the first representation,
respectively, which is located within the
near threshold distance from the captured
surface and which is located in space in
the first excluded volume or in the second
excluded volume, respectively, is not
disregarded in the generation of the virtual
3D model” (’551 Patent, Claim 13)
9 “a multichromatic light source for
providing a multichromatic probe light for
illumination of the object” (’244 Patent,
Claims 1 and 29)
10 “a block of said image sensor pixels”
(’244 Patent, Claims 1 and 29)
11 “surface color information” (’244 Patent,
Claims 1 and 29)

“permanently disregarding the portion of the
surface in the first 3D representation in the
generation of the virtual 3D model, if a
portion of the surface in the first 3D
representation is located in space in the
second excluded volume after a single
evaluation of the second excluded volume
with the surfaces in the first 3D
representation”
“permanently disregarding the portion of the
surface in the second 3D representation in the
generation of the virtual 3D model, if a
portion of the surface in the second 3D
representation is located in space in the first
excluded volume after a single evaluation of
the first excluded volume with the surfaces in
the second 3D representation”
No construction necessary.

No construction necessary.

“two or more adjacent pixels of said image
sensor pixels”
“information relating to surface color”

12 “low weight” (’244 Patent, Claims 13 and Not indefinite at this stage.
30)
13 “intraoral scanner” (’042 Patent, Claims 1, No construction necessary.
17, 19, and 21)
14 “optical system” (’042 Patent, Claims 1, “an arrangement of optical components, e.g.,
17, 19, 21)
lenses, that transmit, collimate and/or images
light, e.g., transmitting probe light towards the
object, imaging the pattern on and/or in the
object, and imaging the object, or at least a
part of the object, on the camera”
3

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15 “focus plane” (’042 Patent, Claims 1, 17, “A surface where light rays emitted from the
19, 21)
pattern converge to form an image on the
object being scanned. The focus plane does
not need to be flat. It may be a curved
surface.”
16 “the at least a part of the probe light” (’042 The antecedent for “the at least a part of the
Patent, Claims 1, 17, 19, 21)
probe light” is “at least a part of the probe light
from the lighting equipment through the
optical system and towards the object.”
17 “image measure” (’042 Patent, Claims 6, Indefinite.
7, 14)

I.

LEGAL STANDARDS
A.

Claim Construction

The purpose of the claim construction process is to “determin[e] the meaning and scope of
the patent claims asserted to be infringed.” Markman v. Westview Instruments, Inc., 52 F.3d 967,
976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). When the parties have an actual dispute
regarding the proper scope of claim terms, their dispute must be resolved by the judge, not the
jury. Id. at 979. The Court only needs to construe a claim term if there is a dispute over its
meaning, and it only needs to be construed to the extent necessary to resolve the dispute. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
“[T]here is no magic formula or catechism for conducting claim construction.” Phillips v.
AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005). But there are guiding principles. Id.
“The inquiry into how a person of ordinary skill in the art understands a claim term provides
an objective baseline from which to begin claim interpretation.” Id. at 1313. In some cases, the
ordinary meaning of a claim term, as understood by a person of ordinary skill in the art, is readily
apparent even to a lay person and requires “little more than the application of the widely accepted
meaning of commonly understood words.” Id. at 1314. Where the meaning is not readily apparent,
however, the court may look to “those sources available to the public that show what a person of
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skill in the art would have understood disputed claim language to mean.” Innova/Pure Water, Inc.
v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Those sources include
“the words of the claims themselves, the remainder of the specification, the prosecution history,
and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms,
and the state of the art.” Id.
“The claims themselves provide substantial guidance as to the meaning of particular claim
terms.” Phillips, 415 F.3d at 1314. For example, “the context in which a term is used in the
asserted claim can be highly instructive.” Id. Considering other, unasserted, claims can also be
helpful. Id. “For example, the presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in the independent claim.”
Id. at 1314-15.
In addition, the “claims must be read in view of the specification, of which they are a part.”
Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The specification “is always highly relevant to the claim construction analysis.” Id. (quoting
Vitronics, 90 F.3d at 1582). The specification may contain a special definition given to a claim
term by the patentee, in which case, the patentee’s lexicography governs. Id. at 1316. The
specification may also reveal an intentional disclaimer or disavowal of claim scope. Id. However,
“even when the specification describes only a single embodiment, the claims of the patent will not
be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker
Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal marks omitted).
Courts should also consider the patent’s prosecution history. Phillips, 415 F.3d at 1317.
It may inform “the meaning of the claim language by demonstrating how the inventor understood

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the invention and whether the inventor limited the invention in the course of prosecution, making
the claim scope narrower than it would otherwise be.” Id. Statements made by a patentee or patent
owner during inter partes review may also be considered. Aylus Networks, Inc. v. Apple Inc., 856
F.3d 1353, 1362 (Fed. Cir. 2017).
In appropriate cases, courts may also consider extrinsic evidence, which “consists of all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.” Markman, 52 F.3d at 980.

For example, dictionaries,

especially technical dictionaries, can be helpful resources during claim construction by providing
insight into commonly accepted meanings of a term to those of skill in the art. Phillips, 415 F.3d
at 1318. Expert testimony can also be useful “to ensure that the court’s understanding of the
technical aspects of the patent is consistent with that of a person of skill in the art, or to establish
that a particular term in the patent or the prior art has a particular meaning in the pertinent field.”
Id.; see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331-32 (2015).
B.

Indefiniteness

Section 112 of Title 35 imposes a definiteness requirement on patent claims. 35 U.S.C.
§ 112(b) (requiring that the claims “particularly point[] out and distinctly claim[] the subject matter
which the inventor . . . regards as the invention”). “The primary purpose of the definiteness
requirement is to ensure that the claims are written in such a way that they give notice to the public
of the extent of the legal protection afforded by the patent, so that interested members of the public,
e.g., competitors of the patent owner, can determine whether or not they infringe.” All Dental
Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002).
“A patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those

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skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572
U.S. 898, 901 (2014). Definiteness, like claim construction, should be assessed from the viewpoint
of a person of ordinary skill in the art at the time the patent was filed, and it should be considered
in view of the patent’s specification and prosecution history. Id. at 908.
The party asserting indefiniteness has the burden to prove it by clear and convincing
evidence. BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).
II.

THE COURT’S RULING
My Report and Recommendation regarding the disputed claim terms of the ’551, ’244, and

’042 Patents was announced from the bench at the conclusion of the hearing as follows:
My Report and Recommendation is as follows.
At issue in this case are three patents. U.S. Patent No.
9,629,551 is titled “Detection of a Movable Object When 3D
Scanning a Rigid Object.” The ’551 patent has three groups of
related terms in dispute. U.S. Patent No. 9,962,244 is titled “Focus
Scanning Apparatus Recording Color.” The ’244 patent has four
terms in dispute. U.S. Patent No. 10,349,042 is titled “Focus
Scanning Apparatus.” The ’042 patent has five terms in dispute.
I’m prepared to rule on all of the disputed terms today. I will
not be issuing a separate written Report and Recommendation but I
will issue a written Report and Recommendation that incorporates
my oral ruling today.
I want to emphasize before I announce my decision that
while I am not issuing a separate decision in writing, we have
followed a full and thorough process before making the decisions
I’m about to state. We have reviewed the patents in suit. The parties
submitted a very large stack of exhibits with their joint claim charts.
(D.I. 80.) Those exhibits included portions of the prosecution
history relied on by the parties as well as post-grant review
documents and prior art.
There was also full briefing on each of the disputed terms.
The parties submitted their briefing in accordance with Judge
Stark’s procedures, so each side had the opportunity to submit an

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opening brief on the disputed terms, and each side had the
opportunity to submit an answering brief.
The parties’ four briefs also attached numerous exhibits,
including an expert declaration from Eli Saber, Ph.D., filed in
support of 3Shape’s answering claim construction brief, and 3Shape
also submitted two declarations from Dr. Chandrajit Bajaj, that it
originally submitted in related IPR proceedings. Align also
submitted expert declarations from Karan Sher Singh, Ph.D., and
Bruce W. Smith, Ph.D.
Plaintiff and Defendant each submitted a technology tutorial
as well. Neither party elected to put on live expert testimony, but
the Court permitted lengthy oral argument here today.
All of that has been carefully considered. To be clear, while
my oral ruling will cite to the intrinsic and extrinsic evidence that I
conclude [best] supports my recommended constructions, my failure
to cite to other evidence provided by the parties does not mean that
I ignored or failed to consider it. As I stated, I have considered all
of the arguments and evidence cited by the parties.
Now as to my ruling.
As an initial matter, I am not going to read into the record
my understanding of the general legal principles of claim
construction. My understanding of the law of claim construction
does not differ from that of Judge Stark’s, for example, as he
recently set forth in Elm 3DS Innovations, LLC v. Samsung
Electronics Co., [C.A. No. 14-1430, -1431, -1432, 2020 WL
1850657, at *1-3 (D. Del. Apr. 13, 2020)]. I will set out a legal
standard in the written order that I issue.
Of course, a claim term is supposed to be given the meaning
that the term would have to a person of ordinary skill in the art in
question at the time of the invention. And I note here that neither
side has argued that any differences the parties may have in defining
one of ordinary skill in the art for any of the three patents is relevant
to resolving the disputes before me today.
Defendant has also argued that a number of the disputed
terms are indefinite. I will also set out the general legal standard for
indefiniteness in the written order that I issue. My understanding of
the law of indefiniteness does not differ from the legal standard set
forth in Judge Stark’s opinion in Elm 3DS [Innovations, 2020 WL
1850657, at *3].
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I understand that the parties agree on constructions for four
terms. And I recommend to Judge Stark that he adopt the agreedupon constructions for those terms.
I’ll start with the disputed terms in the ’551 patent. As I
mentioned, the ’551 patent has 3 groups of related terms in dispute.
The first set includes what 3Shape refers to as the “excluded
volume” terms and what Align refers to as the “determining” steps.
They include the phrases: “determine” or “determining for the first
3D representation a first excluded volume in space where no surface
can be present in both the first 3D representation and the second 3D
representation” and “determine” or “determining for the second 3D
representation a second excluded volume in space where no surface
can be present in both the first 3D representation and the second 3D
representation.” Those phrases are found in claims 1, 23 and 25.
3Shape argues that the portion of the claim phrase “excluded
volume in space where no surface can be present in both the first 3D
representation and the second 3D representation” should be
construed as “excluded volume in space that is common to both the
first and second 3D representations where no surface from either of
the 3D representations should be present.” And 3Shape argues that
the entire claim phrases should be construed as “determining for the
first 3D representation a first excluded volume in space that is
common to both the first and second 3D representations where no
surface from either of the 3D representations should be present” and
vice versa for the second 3D representation.
Align argues that the claim phrases are indefinite. In the
alternative, Align argues that the claim phrases should be construed
as “defining a common overlapping volume in space where no
surface can be present from either of the 3D representations.”
The specification uses the subphrase “excluded volume” in
a way that suggests that the “first excluded volume” could be
determined without reference to the second 3D representation, and
vice versa. (See, e.g., ’551 patent, 23:14-30, Figs. 9a, 9b.) The
language of the claims themselves, however, requires that each of
the first and second excluded volumes take into account both the
first 3D representation and the second 3D representation.
The parties appear to agree that the patentee added that
language to the claims during prosecution in order to overcome a
rejection based on prior art. And the parties also agree that the
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phrase “excluded volume in space where no surface can be present
in both the first 3D representation and the second 3D representation”
is narrower than how the specification refers to “excluded volume.”
The parties also agree that 3Shape argued during the IPR process
that the entire claim phrase is something narrower than how
“excluded volume” is referred to in the specification.
Align argues that 3Shape’s narrowing of the terms during
prosecution and the IPR proceeding rendered the terms indefinite.
In support of its argument, Align offers the declaration of Dr. Karan
Sher Singh, a Professor of Computer Science at the University of
Toronto, who opined that, based on the claim language and
arguments made by the patentee, a person of ordinary skill in the art
would understand that the claimed first and second excluded
volumes would be the same volume. (D.I. 101, Ex. 1 ¶¶ 21-41.) As
I understand Dr. Singh’s declaration, he does not opine that a person
of skill in the art cannot determine or calculate the first excluded
volume or the second excluded volume. Rather, he argues that
because the first excluded volume and the second excluded volume
are the same, a person of skill in the art would not be able to calculate
two different excluded volumes.
With regard to Align’s indefiniteness argument, for a claim
to be held invalid for indefiniteness, there must be clear and
convincing evidence. See Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898, [912 n.10 (2014); BASF Corp. v. Johnson Matthey
Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017)]. At this time, the Court
finds that Align has not met its burden to show indefiniteness. While
Align’s expert opines that the first and second excluded volumes are
the same, he does not appear to dispute that a person of skill in the
art can in fact calculate them. Because of that, I decline to find at
this time that the patent terms are indefinite. [Should there] still be
a disagreement regarding these claim terms in the future, Defendant
may raise the issue, if appropriate, after full fact and expert
discovery.
Align has proposed an alternative construction, so I’ll
discuss and resolve the differences between Align’s alternative
construction and 3Shape’s construction.
As far as I can tell, there are basically two differences. One
difference is that 3Shape’s proposal uses the words “common to
both” and Align uses the word “overlapping.” I haven’t heard
anyone today tell me what the difference is between “overlapping”
and “common to both” and actually Align stated during the hearing

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that there was no material difference. Accordingly, I’m going with
“common to both.”
The second difference is that Align’s construction requires
the definition of “first” and “second” common overlapping volumes
in space, which sort of highlights Align’s argument that there may
be something wrong with a claim that requires a first thing and a
second thing that are the same thing. Align also acknowledges that
its own construction requires two different overlapping volumes, but
Align agrees that there cannot be two different overlapping volumes.
Align’s construction also [omits] the language that “excluded
volume” has to be determined “for the first 3D representation” and
“for the second 3D representation.”
3Shape’s constructions, which include references to the first
3D representation and second 3D representation, are more
consistent with the language of the claims and are also supported by
its declaration from Dr. Saber at paragraph 37. (D.I. 108, Ex. 3
¶ 37.)
Accordingly, on this dispute, I side with 3Shape. I construe
the phrase “determine” or “determining for the first 3D
representation a first excluded volume in space where no surface can
be present in both the first 3D representation and the second 3D
representation” as “determine” or “determining for the first 3D
representation a first excluded volume in space that is common to
both the first and second 3D representations where no surface from
either of the 3D representations should be present.”
And I construe the phrase “determine” or “determining for
the second 3D representation a second excluded volume in space
where no surface can be present in both the first 3D representation
and the second 3D representation” as “determine” or “determining
for the second 3D representation a second excluded volume in space
that is common to both the first and second 3D representations
where no surface from either of the 3D representations should be
present.”
The second set of terms to be construed in the ʼ551 patent
include what the parties refer to as the “disregarding” terms. They
include the terms “if a portion of the surface in the first 3D
representation is located in space in the second excluded volume,
the portion of the surface in the first 3D representation is disregarded
in the generation of the virtual 3D model” and “if a portion of the
surface in the second 3D representation is located in space in the
first excluded volume, the portion of the surface in the second 3D
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representation is disregarded in the generation of the virtual 3D
model.” Those phrases are found in claims 1 and 25.
There are also the related phrases “disregard the portion of
the surface in the first 3D representation in the generation of the
virtual 3D model, if a portion of the surface in the first 3D
representation is located in the second excluded volume” and
“disregard the portion of the surface in the second 3D representation
in the generation of the virtual 3D model, if a portion of the surface
in the second 3D representation is located in the first excluded
volume.” Those phrases are found in claim 23.
3Shape argues the Court does not need to construe any of
those phrases. However, 3Shape agrees [that,] if construction is
deemed necessary, the construction should include that the surface
is permanently disregarded in the generation of the virtual 3D
model.
Align argues that the claim phrases are indefinite. In the
alternative, Align argues that the terms should be construed such
that the surface portion is permanently not taken into account after
a single evaluation of the excluded volume.
Align agreed during oral argument today that its
indefiniteness argument is based on the same argument it made
earlier, namely, that the first and second excluded volumes are the
same. For the same reason as before, I find that Align has not met
its burden to show indefiniteness at this time.
Align has proposed an alternative construction, so I’ll
discuss and resolve the differences between Align’s alternative
construction and 3Shape’s proposed construction. As far as I can
tell, there are basically two differences.
One difference is that 3Shape uses the words “permanently
disregarded” and Align uses the words “permanently not taken into
account.” I haven’t heard anyone today tell me what the difference
between “permanently disregarded” and “permanently not taken
into account” is. But Align did say today that it would agree to use
“permanently disregarded.” So that resolves that part of the dispute.
The other difference is that Align has added the phrase “after
a single evaluation.” Align points out that the patentee used that
phrase when distinguishing a piece of prior art during the IPR
proceedings.

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During the IPR proceedings, the patentee argued that the
McQueston prior art reference does not disclose the “disregarding”
steps. The patentee argued that “[t]he claimed invention requires
that surfaces located in the excluded volumes be disregarded after a
single evaluation of two (‘first’ and ‘second’) 3D representations”
and that the McQueston prior art “does not disclose permanently
disregarding surfaces that are present in a second 3D representation
and absent in a first 3D representation.” (D.I. 80, Ex. A3 at paper 5,
pages 2, 33-35.)
3Shape responds that its statements during the IPR were
“merely describing one non-limiting manner by which the claimed
invention differs from the prior art.”
Having carefully considered this portion of the dispute, I side
with Align. 3Shape argued during the IPR that McQueston does not
meet the “disregarding” steps of claims 1, 23, and 25 because those
steps, as claimed, require that surfaces located in the excluded
volumes are disregarded after a single evaluation of the excluded
volumes with the surfaces in the first or second 3D representations.
(See D.I. 80, Ex. A3, at paper 5, pages 2, 32-36.) See Aylus
Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359-1361 (Fed. Cir.
2017). That is a clear and unmistakable disclaimer.
Accordingly, I construe “if a portion of the surface in the first
3D representation is located in space in the second excluded volume,
the portion of the surface in the first 3D representation is disregarded
in the generation of the virtual 3D model” as “if a portion of the
surface in the first 3D representation is located in space in the second
excluded volume, the portion of the surface in the first 3D
representation is permanently disregarded in the generation of the
virtual 3D model after a single evaluation of the second excluded
volume with the surfaces in the first 3D representation.” And I
construe the vice versa [claim phrase] vice versa.
I also construe “disregard the portion of the surface in the
first 3D representation in the generation of the virtual 3D model, if
a portion of the surface in the first 3D representation is located in
the second excluded volume” as “permanently disregarding the
portion of the surface in the first 3D representation in the generation
of the virtual 3D model, if a portion of the surface in the first 3D
representation is located in space in the second excluded volume
after a single evaluation of the second excluded volume with the
surfaces in the first 3D representation.” And I construe the vice
versa claim phrase vice versa.

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The final phrase to be construed in the ʼ551 patent is in claim
13, which depends on claim 1. That term is “where a surface portion
in the second representation or the first representation, respectively,
which is located within the near threshold distance from the captured
surface and which is located in space in the first excluded volume or
in the second excluded volume, respectively, is not disregarded in
the generation of the virtual 3D model.”
3Shape argues no further construction is necessary. Align
asserts the claim is indefinite, or, if not indefinite, that the near
threshold distance should be construed such that it is not included in
the excluded volume. Align argues that the patentee characterized
claim 1 during the IPR proceeding as requiring permanently
disregarding a surface portion after a single evaluation and that to
allow a dependent claim to not disregard a surface portion would
fail to give effect to the patentee’s disclaimer.
I disagree with Align that the phrase is indefinite. Moreover,
I don’t think that not adopting Align’s construction would permit
3Shape to recapture coverage that it disclaimed during the IPR.
Rather, I believe that the language of claim 13 itself is more
consistent with the construction such that a surface existing in an
excluded volume will be permanently disregarded unless it is also
found in the near threshold distance. That is consistent with how
the near threshold distance is discussed in the specification. (See,
e.g., ’551 patent, 27:32-38.)
Although I recognize that the specification describes a far
threshold distance as defining or determining the excluded volume
(see id., 5:64-67), the near threshold distance does not. Rather, the
near threshold distance defines how far from a representation or
surface a possibly movable object can be disregarded. (Id., 5:2022.)
3Shape’s alternative proposed construction mirrors the
claim language except that it adds the word “permanently” so it says
“not permanently disregarded” instead of “not disregarded.” I
actually think that introduces ambiguity. The claim says “not
disregarded.” 3Shape’s proposal might mean that it could be
disregarded as long as it is not done so permanently, but that is not
what the claim says. Accordingly, I side with 3Shape and conclude
that no further construction is appropriate.
Now I’ll move on to the ’244 patent. As I mentioned, the
’244 patent has four groups of related terms in dispute.

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The first phrase is “a multichromatic light source for
providing a multichromatic probe light for illumination of the
object.” That phrase is found in claims 1 and 29 of the ’244 patent.
According to 3Shape, no construction of this phrase is
necessary and it should be given its plain and ordinary meaning.
Align proposes that it be construed as “a white light or multicolor
light source which illuminates an object.” According to Align, the
patent describes a single light source that can either be a white light
source or multicolor light source. Align defines “multicolor” as
“more than one color.”
I agree with 3Shape that Align’s proposed construction is
unnecessary and unhelpful. First, it is unclear to me how construing
“a multichromatic light source” as “a white light or multicolor light
source” simplifies or clarifies the term.
Second, I am not persuaded that Align’s proposed
construction is accurate. Although the specification makes it clear
that white light can be used in embodiments of the claimed invention
(see, e.g., ’244 patent, 9:16-17, 5:23-25), the term “multicolor”
proposed by Align is used nowhere in the specification. To the
extent “multicolor” simply means “more than one color” as Align
suggests, it is unclear to me how or if it differs from multichromatic.
Moreover, white light and multicolor light are both
multichromatic light. Either these two types of light encompass all
multichromatic light or they don’t. If they do, then I do not see why
such a construction is necessary. If they don’t, then such a
construction would be unnecessarily limiting.
The parties also appear to have a disagreement about
whether the multichromatic light source must be a single light
source, but I don’t understand how either party’s proposed
construction resolves that dispute.
I conclude that the phrase “a multichromatic light source for
providing a multichromatic probe light for illumination of the
object” does not need further construction.
The second disputed phrase in the ’244 patent is “a block of
said image sensor pixels.” That phrase is also found in claims 1 and
29. The parties agree that the phrase refers back to an earlier portion
of the claim.

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Claim 1, for example, provides in relevant part: “A focus
scanner . . . comprising: . . . a color image sensor comprising an
array of image sensor pixels for capturing one or more 2D images
of light received from said object . . . [and] a data processing system
configured to derive surface geometry information for a block of
said image sensor pixels from the 2D images in the stack of 2D
images captured by said color image sensor, the data processing
system also configured to derive surface color information for the
block of said image sensor pixels from at least one of the 2D images
used to derive the surface geometry information.”
3Shape asserts that “one or more pixels” constitutes a block,
whereas Align contends that a block must be a “two-dimensional
array of adjacent sensor elements.” According to 3Shape, its
proposal is consistent with the claim language, which is clear that a
block must constitute something less than the entirety of the image
sensor pixels. 3Shape also asserts that its proposal is consistent with
the specification, which repeatedly refers to pixels on an individual
level. Align, on the other hand, asserts that its construction is correct
because it is consistent with dictionary definitions of “block” and
certain embodiments in the specification that describe the “block”
as a 2D array, such as a group of 6 x 6 pixels.
I don’t entirely agree with either proposal. On the one hand,
I agree with Align that “a block” must be more than one pixel. The
claim language itself requires a block of pixels, not a block of pixel.
It’s plural. Moreover, although 3Shape points out that the
specification refers to an embodiment in which individual pixels are
evaluated in a certain way (see, e.g., ’244 patent, 5:45-49), the
claims in dispute require evaluation of a block of pixels. Moreover,
another part of the specification distinguishes between pixel blocks
and individual pixels. (Id., 10:28-29.) To me, that reinforces that a
block of pixels and an individual pixel are not the same thing.
I disagree with Align, however, that a block should be
construed as a two-dimensional array. Although certain figures in
the specification describe a block of pixels as a two-dimensional
array (see 16:61-17:17, 18:65-19:18, Figs. 2A-2B, 6A-6C), that
does not mean that the claimed invention is so limited.
While Align has submitted a declaration from Dr. Singh in
which he opines that a person of ordinary skill in the art would
understand the term to mean a two-dimensional array, his
declaration does not say that a one-dimensional array of pixels could
not accomplish the claimed function of deriving surface geometry
and color information. (D.I. 101, Ex. 1 ¶¶ 63-66.) I don’t know if
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it could or not, but his declaration doesn’t state that it could not.
And counsel for Align did not argue during the hearing today that
the claimed function could not be accomplished with a onedimensional array.
Moreover, the technical definition provided by Align does
not include the phrase “two-dimensional array,” but defines a block
as “[a] collection of data units such as words, characters, or records
. . . that are stored in adjacent physical positions in memory.” (D.I.
100 at 11, Ex. 1B.) That does not indicate to me that a block must
be a two-dimensional array as opposed to simply a collection or
grouping in adjacent positions.
I [also] disagree with 3Shape’s construction insofar as it
doesn’t really capture the idea of a “block.” As Align points out,
3Shape’s construction would permit random, non-adjacent pixels to
be considered a block. In the absence of any sufficient alternative
proposal from 3Shape to fix that issue, I agree with Align that use
of the word adjacent is appropriate.
Accordingly, I reject both 3Shape’s and Align’s proposed
definitions, instead construing “a block of said image sensor pixels”
as “two or more adjacent pixels of said image sensor pixels.”
The third disputed phrase in the ’244 patent is “surface color
information.” That phrase is also found in claims 1 and 29. The
phrase “surface color information” is used frequently in the claims
and specification.
For example, claim 1 provides in pertinent part: “A focus
scanner for recording surface geometry and surface color of an
object, the focus scanner comprising: . . . a data processing system
configured to derive surface geometry information for a block of
said image sensor pixels from the 2D images in the stack of 2D
images captured by said color image sensor, the data processing
system also configured to derive surface color information for the
block of said image sensor pixels from at least one of the 2D images
used to derive the surface geometry information.”
3Shape argues that “surface color information” is simply
“information relating to surface color.” Align contends that “surface
color information” is “apparent color of an object surface.” I agree
with 3Shape.
Align’s proposed construction reads the word “information”
out of the phrase, providing a definition just for “surface color.” Yet
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the specification provides several examples where “information” is
used to generate or derive the surface or object color. For example,
the specification describes how “[i]n some embodiments, the data
processing system is configured for determining a color for a point
on a generated sub-scan based on the surface color information of
the 2D image of the series in which the correlation measure has its
maximum value for the corresponding block of image sensor
pixels.” (’244 patent, 6:53-58; see also id., 19:19-29.) The
specification also states that “one advantage of the scanner system
and the method of the current application is that the informations
used for generating the sub-scan expressing both geometry and color
(as seen from one view) are obtained concurrently.” (Id. at 4:9-13.)
Those portions of the specification suggest that surface color
information is information relating to surface color that can be used
to generate or determine the surface color.
Align’s final argument is that 3Shape’s proposal cannot be
right because it would broaden the term to include any subset of
information, even if one could not determine surface color using that
information. Align argues, for example, that under 3Shape’s
definition any information even tangentially related to surface color,
such as surface geometry information, would be included in the
definition. I do not think 3Shape’s proposal is overly broad. If
information is not related to surface color, then it will not be
included. However, if some information relating to surface
geometry is also related to the surface color, then that information
will be included.
Accordingly, I construe “surface color information” as
“information relating to surface color.”
The fourth disputed phrase in the ’244 patent is “low
weight.” That phrase is found in claims 13 and 30.
Claim 13, for example, recites: “The focus scanner
according to claim 12, wherein the error caused by the saturated
pixel is mitigated or removed by assigning a low weight to the
surface color information of the saturated pixel in the computing of
the smoothed sub-scan color and/or by assigning a low weight to the
sub-scan color computed based on the saturated pixel.”
Align argues that “low weight” is indefinite because a person
of ordinary skill in the art would be unable to determine what is
meant with reasonable certainty. In support of its argument, Align
offers the declaration of Dr. Singh, who opined that the term “low
weight” is not a term with an ordinarily understood technical
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meaning and that it does not inform the scope of the invention. (D.I.
101, Ex. 1 ¶¶ 71-73.)
3Shape responded with a declaration from its expert, Dr.
Saber, who opined that a person of ordinary skill in the art, reading
the claims in light of the specification, would understand that low
weight refers to assigning saturated pixels a lower weight in the
color computation than that of unsaturated pixels. (D.I. 108, Ex. 3
¶¶ 101-103.)
I have reviewed both expert declarations and the
specification, including at ʼ244 patent, 9:1-6, 11:46-48, and 11:5967, which in my view support 3Shape’s position that assigning a low
weight to certain information means assigning a lower weight to that
information to achieve the claimed result.
I find that Defendant has not met its burden to show
indefiniteness at this time. Should there still be a disagreement
regarding this claim term in the future, Defendant may raise the
issue later, if appropriate, after full fact and expert discovery.
Align has not offered an alternative construction. 3Shape
has not proposed a construction. Accordingly, I do not further
construe this phrase.
Finally, I’ll turn to the ’042 patent. As I mentioned, the ’042
patent has five groups of related terms in dispute.
The first claim phrase in dispute is “intraoral scanner.” That
phrase is found in every independent claim of the ʼ042 patent: claims
1, 17, 19, and 21.
3Shape says the phrase needs no construction. Align
proposes an “intraoral scanner” to mean “an intraoral scanning
device that uses a pre-determined measure of the illumination
pattern and contrast detection.” In other words, Align wants every
claim in the ’042 patent to be limited to intraoral scanning devices
that use a pre-determined measure of the illumination pattern and
contrast detection.
According to Align, the parties’ dispute about the
construction of “intraoral scanner” is about whether the claims can
encompass scanners that use certain prior art confocal imaging
techniques, or, whether the claims are limited to scanners that use a
pattern projection and contrast detection technique. Align argues
that the patentee disparaged certain prior art confocal imaging
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techniques in the background section of the specification,
constituting a complete disavowal of scanners utilizing those
techniques. (See, e.g., ’042 patent, 2:13-20, 1:62-67.) According to
Align, and supported by a declaration from its expert, Dr. Bruce
Smith (D.I. 101, Ex. 2 ¶¶ 15-23, 26-58), the asserted claims should
not be read so broadly as to include the disparaged prior art, but
rather should be “limited to the pattern projection and contrast
measurement technique utilized by all described embodiments.”
According to 3Shape, “intraoral scanner” should be given its
plain and ordinary meaning.
I am asked to construe the term “intraoral scanner.” On this
dispute, I agree with 3Shape, and I find the cited case Ventana
Medical Systems, Inc. v. Biogenex Laboratories Inc., [473 F.3d 1173
(Fed. Cir. 2006)] instructive.
“It is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled the right
to exclude.” [Ventana, 473 F.3d at 1181 (quoting Phillips, 415 F.3d
at 1312).] Statements in the patent’s background section about how
the claimed invention will improve upon prior art do not amount to
a complete surrender of coverage of all prior art features irrespective
of what is claimed. In addition, although the specification often
describes very specific embodiments of the invention, the Federal
Circuit has “repeatedly warned against confining the claims to those
embodiments.” [Id.] The mere fact that the ’042 patent only
discloses embodiments that utilize techniques that use a predetermined measure of the illumination pattern and contrast
detection does not, in and of itself, mean that the claims at issue are
limited to those embodiments. Moreover, there is no requirement
that each claim cover every feature disclosed in the specification.
As between Ventana and the SciMed [Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir.
2001)] case cited by Align during oral argument today, I believe the
statements in the specification are closer to Ventana.
Align points out that the ’042 patent claims priority to a
provisional application filed in 2009 and that, unlike the ’042 patent,
all of the related patents stemming from that application expressly
include the “spatial pattern” and “contrast detection” requirements
that Align now seeks to incorporate in its construction of “intraoral
scanner.” But that argument actually supports a conclusion that a
person of skill in the art would not understand the term “intraoral
scanner” to include those elements.
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Align argues that it would be unfair to permit 3Shape to
extend its claims beyond what it actually invented. In my view,
however, that argument is more appropriate in the context of a
written description argument than in the claim construction position
taken here.
Accordingly, I decline to adopt Align’s proposed
construction. 3Shape has not offered a construction. Accordingly,
I do not further construe the phrase “intraoral scanner.”
The second claim phrase in dispute is “optical system.” That
phrase is also found in every independent claim of the ’042 patent:
claims 1, 17, 19, and 21.
3Shape argues that “optical system” needs no construction.
Align, on the other hand, argues that the specification contains a
definition for “optical system.”
“To act as its own lexicographer, a patentee must ‘clearly set
forth a definition of the disputed claim term.’” GE Lighting Sols.,
LLC v. AgiLight, Inc., 750 F.3d 1304, [1309 (Fed. Cir. 2014)
(quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012))].
The patent in this case has a section called “definitions” and
one of the listed definitions is for the phrase “optical system.” It is
difficult for me to understand how the inclusion of an explicit
definitions section, that includes a definition for the term at issue,
would not amount to a clear intention to act as a lexicographer.
During the hearing today, the parties came to some
agreement on construction of this term. As I understand it, neither
party objects to the Court using the entire definition set forth in the
specification. That definition states as follows: “Optical system: An
arrangement of optical components, e.g. lenses, that transmit,
collimate and/or images light, e.g. transmitting probe light towards
the object, imaging the pattern on and/or in the object, and imaging
the object, or at least a part of the object, [on the camera].” (’042
patent, 5:8-12.)
The parties agree that the first “e.g.” refers only to lenses.
And the second “e.g.” refers to all of the words following it. I’m not
going to further construe the phrase at this time.

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The third claim phrase in dispute is “focus plane.” This
phrase is also found in every independent claim of the ‘042 patent:
claims 1, 17, 19, and 21.
Align’s proposed construction of this phrase is in accordance
with the definition set forth in the definitions section in the
specification.
As before, I conclude that the inclusion of express
definitions in a “definitions” section demonstrates a clear intent on
behalf of the patentee to act as its own lexicographer. Accordingly,
I recommend that the definition provided for “focus plane” in the
specification be adopted.
Align did not include some of the explanatory language in
its original proposed construction. The complete definition states as
follows: “Focus plane: A surface where light rays emitted from the
pattern converge to form an image on the object being scanned. The
focus plane does not need to be flat. It may be a curved surface.”
(’042 patent, 5:4-7.)
3Shape indicated today that it desires the inclusion of that
additional language in the construction. Align does not oppose that.
Accordingly, I construe “focus plane” to mean the entire definition
set forth.
I heard argument today that the construction should include
additional information about what “pattern” means. That wasn’t
briefed. I’m not going to further construe the phrase at this time.
The fourth claim phrase in dispute is “the at least part of the
probe light.” This phrase is also found in every independent claim
of the ’042 patent: Claims 1, 17, 19, and 21.
According to 3Shape, no construction is necessary because
grammatically it is clear that “the at least a part of the probe light”
refers to “at least a part of the probe light.” Align, on the other hand,
argues that “the at least a part of the probe light” is anteceded by “at
least a part of the probe light from the lighting equipment through
the optical system and towards the object.”
I agree with Align’s position that you can’t really chop the
phrase up. Align correctly notes that the use of the word “the” in a
claim is referring back to an earlier use of the phrase or term that it
precedes. Cf. Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d
1328, [1333 (Fed. Cir. 2007)].
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Claims 1, 17, 19, and 21 require that the intraoral scanner
transmits at least a part of the probe light from the lighting
equipment through the optical system and towards the object such
that “the at least part of the probe light” is focused on certain claimed
things. The only reasonable way to read that is that the antecedent
for “the at least a part of the probe light” is “at least a part of the
probe light from the lighting equipment through the optical system
and towards the object.” And I construe the claim accordingly.
3Shape expressed a new concern during the hearing today
about the relationship of the at least a part of the probe light to the
claimed divergence angle. The dispute I’m resolving today relates
solely to the antecedent of the at least part of the probe light.
The final claim phrase in dispute is an “image measure.”
This phrase is found in dependent claims 6, 7, and 14.
Claim 6, for example, states, “the intraoral scanner
according to claim 1, wherein the data for the 3D geometry is
derived by calculating an image measure for several 2D images of
the series of 2D images.”
Align argues that the term “image measure” is indefinite.
The term “image measure” is not used or defined anywhere in the
specification or prosecution history. Align also submitted a
declaration from its expert, Dr. Bruce Smith, in which he stated that
“image measure” is not a term with an ordinarily understood
technical meaning in the field of 3D optical scanners. He further
opined that the phrase “image measure” fails to inform a person of
ordinary skill in the art with reasonable certainty about the scope of
the claimed invention. (D.I. 101, Ex. 2 ¶¶ 59-67.) Align urges the
Court, if it does not find the term “image measure” indefinite, to
adopt the definition of “correlation measure” set forth in the
specification as the proper construction for “image measure.”
3Shape argues that the plain meaning of “image measure” is
clear. And although 3Shape is adamant that “image measure”
means something different from “correlation measure,” it didn’t
explain in its briefing what the term “image measure” means. Nor
did it submit with its briefing any evidence from which I could
conclude that image measure has a meaning to one of ordinary skill
in the art reading the patent in light of the specification and
prosecution history.

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In sum, the record before the Court contains, on one side, an
expert declaration opining that a person of skill in the art would not
understand the scope of the term “image measure” and, on the other
side, conclusory attorney argument that the term “image measure”
is clear but no articulation as to what that clear meaning is.
Under these circumstances, I believe that Align has met its
burden to show by clear and convincing evidence that “image
measure” is indefinite.
That concludes my claim construction rulings today.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B),(C),
Federal Rule of Civil Procedure 72(b)(1), and District of Delaware Local Rule 72.1. Any
objections to the Report and Recommendation shall be filed within fourteen days and limited to
ten pages. Any response shall be filed within fourteen days thereafter and limited to ten pages.
The failure of a party to object to legal conclusions may result in the loss of the right to de novo
review in the district court.
The parties are directed to the Court’s “Standing Order for Objections Filed Under Fed. R.
Civ. P. 72,” dated October 9, 2013, a copy of which can be found on the Court’s website.

Dated: May 6, 2020

___________________________________
The Honorable Jennifer L. Hall
United States Magistrate Judge

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