US 10709527

I'll search for the specific patent number and any related CAFC 2026 docket activity.

Let me check specifically for any 2026 Federal Circuit activity involving this patent or its assignee.

US 10709527 — Summary

Note on sources/method: The following is drawn from the authoritative full patent text provided (Google Patents, https://patents.google.com/patent/US10709527/en) plus targeted web searches for litigation/PTAB/CAFC activity. I did not have direct live query access to the USPTO PatentCenter or the CAFC docket system itself; where I state docket facts they come from search-result reproductions (Unified Patents portal, Docket Alarm, Patexia, courtlistener). I flag uncertainty accordingly.

Bibliographic data

This patent is a continuation of a long chain: 16/433,885 (US 10,568,722) ← 16/164,092 (US 10,405,951) ← 15/388,580 (US 10,143,541) ← 14/882,312 (US 9,549,794) ← 14/324,784 (US 9,186,228) ← 13/716,008 (US 8,805,563) ← 13/227,435 (US 8,359,115) ← 12/654,762 (US 8,041,439) ← 12/222,287 (US 7,734,368) ← 11/349,124 (US 7,555,403) ← provisional 60/699,499. Later continuations from this family include US 10,964,425; US 11,152,106; and US 11,636,943.

Abstract (verbatim)

"A 3D virtual model of an intra oral cavity in which at least a part of a finish line of a preparation is obscured is manipulated in virtual space by means of a computer or the like to create, recreate or reconstruct finish line data and other geometrical corresponding to the obscured part. Trimmed virtual models, and trimmed physical models, can then be created utilizing data thus created. The virtual models and/or the physical models may be used in the design and manufacture of copings or of prostheses."

Plain-language overview of the independent claims

The patent carries 22 claims with two independent claims: claim 1 (method) and claim 12 (system). Note that the issued claims of this continuation are narrower and differently worded than the "finish-line reconstruction" language of the specification/abstract — they read on a scanner-based obstruction-filling workflow.

Claim 1 — Method for scanning obstructed intraoral structures:

1. Provide a hand-held intraoral scanner configured to focus light onto an intraoral structure.
2. Scan the patient's intraoral structure with that scanner to generate first 3D data of the surface.
3. Generate a 3D virtual model of the intraoral structure from that first 3D data.
4. Determine a missing portion of the 3D virtual model — i.e., a region where the model lacks data for a part of the intraoral structure.
5. Generate second 3D data representing the intraoral structure for that missing portion.
6. Combine the second 3D data with the 3D virtual model so the model contains a representation of the intraoral structure in place of the missing portion.

Claim 12 — System for scanning obstructed intraoral structures:
The system counterpart of claim 1: a hand-held intraoral scanner (configured to focus light onto an intraoral structure) plus a computer with instructions that, when executed, cause the system to perform the same scan → build model → determine missing portion → generate second 3D data → combine steps described above.

Dependent claims (2–11 and 13–22) largely mirror each other across the method and system sets and add:

• the scanner focuses an array of light beams (claims 2, 13);
• the scanner uses confocal focusing (claims 3, 14);
• the missing portion forms an incomplete closed geometrical form (claims 4, 15);
• determining the missing portion includes determining the model "does not complete a close geometrical form" (claims 5, 16 — note the claim text literally reads "close," not "closed"; I am reproducing it as written rather than correcting it);
• generating the second 3D data by extrapolating the model (claims 6, 17) or by interpolating between points in the model (claims 7, 18);
• the second 3D data is generated based on the 3D virtual model (claims 8, 19), optionally based on a cross-sectional profile of the model (claims 9, 20);
• combining is done by generating a second 3D virtual model from the second data and combining it (claims 10, 21);
• the missing portion includes 3D data of obscuring material (claims 11, 22).

Supporting specification content (not claim-required but relevant) describes separating the model into a hard-tissue dental-site part and a soft-tissue/foreign-matter part (optionally using scanner color data), extrapolating the obscured finish line along working-plane cross-sections, producing a "trimmed" virtual first part and complementary trimmed second part, adding a virtual base/well with alignment plugs and sockets, and generating CNC or rapid-prototyping instructions for physical dental models.

Litigation / PTAB / CAFC status (as reflected in search results)

• PTAB IPR2021-01240 — 3Shape A/S v. Align Technology, Inc. (filed 2021-07-19; instituted 2022-01-27; terminated as settled 2022-03-03). US 10,709,527 is listed as Petitioner Exhibit EX1001 in that proceeding, and the petition challenged claims 1–9, 11–20 and 22 according to the reproduced docket data. (Sources: Unified Patents PTAB portal; Docket Alarm; Patexia.) The Google Patents page itself flags "Family has litigation — PTAB case IPR2021-01240 filed (Settlement)."
• District court litigation tied to this patent family: Align Technology, Inc. v. 3Shape A/S et al., W.D. Tex. (Waco), No. 6:20-cv-00979 (Judge Albright), filed 2020-10-19; and a related Delaware action 1:20-cv-01492 (stipulation of stay). Google Patents also lists both the Texas and Delaware cases as related litigation.

CAFC 2026 dockets — specific finding

I did not find any Federal Circuit 2026 appeal docketed specifically for US 10,709,527. Searches surfaced Align-related CAFC 2026 activity, but those cases involve different patent numbers and a different party posture:

• Dental Monitoring SAS v. Align Technology, Inc., Fed. Cir. No. 2024-2270 (nonprecedential opinion issued 2026-07-07, Judge Lourie) — § 101 invalidity of US 11,049,248 and US 10,755,409 (deep-learning dental image analysis). These are Dental Monitoring's patents, not Align's and not US 10,709,527.
• A related Fed. Cir. appeal, No. 25-1879 (opinion 2026-07-21), addressing IPR obviousness findings on the same Dental Monitoring patents.

So, on the evidence retrieved, no 2026 CAFC appeal is pending or decided on US 10,709,527; its most recent contested proceeding appears to be the settled IPR2021-01240. I cannot rule out a recently docketed matter that is not yet indexed in the sources searched, so treat the "no CAFC activity" statement as based on available 2026 search results rather than an exhaustive docket check.

Uncertainty flags

• I did not directly query USPTO PatentCenter / the CAFC docket system; those facts are drawn from reproduced third-party dockets and the Google Patents page.
• The Google Patents Unified Patents portal entries show slightly differing date renderings ("Priority Date: 2005-07-14" vs. "2005-07-15"; "Application Date: 2020-02-20" vs. filing date 2020-02-21). The authoritative full patent text and the Google Patents bibliographic table state priority 2005-07-15 and filing 2020-02-21, which I have used.
• Claim 5/16 literally recite "close geometrical form" (and claim 16 uses "does not complete a close geometrical form"); I have not corrected this wording.

I'll search for litigation involving US 10,709,527 specifically.

Let me pin down the specifics — especially whether the "107" references are US 10,709,527 or a different patent ending in 107.

Strong confirmation that US 10,709,527 is the "'527 patent" at issue. Now let me establish case status/outcomes and check for any later or 2026 activity.

Litigation involving US 10,709,527 — findings

Scope/method note: I queried litigation-oriented sources (Unified Patents portal, Docket Alarm/Patexia reproductions of PTAB records, CourtListener/RECAP, Justia Dockets, RPX Insight, Align's own press releases and SEC-style disclosures). I confirmed the key identifier literally: the patent at issue is U.S. Patent No. 10,709,527 B1, which the parties and the Board refer to as "the '527 patent." Do not confuse it with the "'107 patent" that appears in the Align v. 3Shape scanner claim-construction papers — that is a different Align patent (a color/confocal scanner patent, cited alongside the '447, '448 and '901 patents), not US 10,709,527. The '527 patent is instead the "Asserted Hole-Closing Technology Patent" in the Texas case.

Threshold point: US 10,709,527 issued July 14, 2020, so it cannot appear in any litigation filed before that date (e.g., the 2018–2019 Delaware suits 1:18-cv-00886 / 1:18-cv-01949, or ITC Inv. Nos. 337-TA-1091 and 337-TA-1144). Every known assertion of the '527 patent postdates its issuance.

Known proceedings

Federal Circuit: I found no CAFC appeal docketed for US 10,709,527. That is consistent with the record: the district court case was stayed and never reached judgment, and the IPR settled before a final written decision, so there was no appealable outcome.

Detail and grounding

1. Align v. 3Shape, W.D. Tex. 6:20-cv-00979-ADA. Align's own announcement states it filed the case on October 19, 2020 against 3Shape A/S and 3Shape Trios A/S, asserting seven patents including "U.S. Patent No. 10,709,527, entitled 'Method of Manipulating a Dental Virtual Model…'", and alleging that 3Shape's intraoral scanners (including Trios 4) and software infringe. (https://aligntech.gcs-web.com/news-releases/news-release-details/align-technology-sues-3shape-texas-federal-court-infringement-7) Align's amended complaint (Dkt. 97-1, filed 2021-03-22) confirms the '527 patent "was issued by the USPTO on July 14, 2020" and claims priority to a Feb. 8, 2006 application and a July 15, 2005 provisional. (https://www.courtlistener.com/docket/18549350/97/1/align-technology-inc-v-3shape-as/) The case closed after the parties' settlement: the docket shows a text order "GRANTING #190 Motion to Stay proceedings pending settlement, with the parties to file a dismissal or joint status report no later than March 15, 2022," and the case is recorded as Closed. (https://unicourt.com/case/pc-db5-align-technology-inc-v-3shape-as-et-al-[710077](/patent/710077))

2. 3Shape v. Align, D. Del. 1:20-cv-01492-LPS. A stipulated stay of proceedings was filed December 8, 2020 (Dkt. 21), per the Shifton declaration filed with the IPR2021-01240 petition. (https://www.docketalarm.com/cases/PTAB/IPR2021-01240/3Shape_A-S_v._Align_Technology_Inc/docs/07-19-2021-Petitioner/Exhibit-1016-EX1016_Shifton_Declaration.pdf) Align's Mandatory Notices in IPR2021-01240 list the '527 patent as "at issue" in exactly two pending district-court actions — 6:20-cv-00979 (WDTX) and 1:20-cv-01492 (DDE). (https://www.docketalarm.com/cases/PTAB/IPR2021-01240/3Shape_A-S_v._Align_Technology_Inc/docs/08-09-2021-Patent_Owner/Mandatory_Notice-7-Patent_Owners_Mandatory_Notices.pdf)

3. IPR2021-01240. The Board's institution decision (2022-01-27) is captioned "3SHAPE A/S and 3SHAPE INC., Petitioner, v. ALIGN TECHNOLOGY, INC., Patent Owner, IPR2021-01240, Patent 10,709,527 B1," and institutes review of claims 1–9, 11–20 and 22 on all grounds, including the Rubbert + Weyrich obviousness ground. (https://www.docketalarm.com/cases/PTAB/IPR2021-01240/3Shape_A-S_v._Align_Technology_Inc/docs/01-27-2022-Board/Institution_Decision__Grant-15-Institution_Decision__Grant.pdf) Google Patents' litigation flag for this patent records the proceeding as "IPR2021-01240 filed (Settlement)," and further lists the Texas and Delaware district-court cases as family litigation. (https://patents.google.com/patent/US10709527/en; https://portal.unifiedpatents.com/patents/patent/US-10709527-B1)

4. Global settlement. Align's disclosure states: "On February 7, 2022, Align and 3Shape, a Danish corporation, settled their outstanding patent infringement and antitrust litigation." (https://aligntech.gcs-web.com/static-files/b76025ff-8877-410d-a2ec-97e18ee9aa41) A parallel 3Shape filing in the sibling IPR on the '519 patent (IPR2021-01383, unopposed motion to dismiss filed 2022-02-22) confirms the parties "resolved their disputes regarding the '519 Patent, including both in this proceeding and assertion … in related district court litigation, Align Technology, Inc. v. 3Shape A/S et al., 6:20-cv-00979-ADA (W.D. Tex.) and 3Shape A/S et al. v. Align Technology, Inc., 1:20-cv-01492-LPS (DDE)" — the same two cases in which the '527 patent was at issue. (https://www.docketalarm.com/cases/PTAB/IPR2021-01383/3Shape_A-S_v._Align_Technology_Inc/docs/02-22-2022-Petitioner/Motion-16-Petitioners_Unopposed_Motion_to_Dismiss_Petition_for_Inter_Partes_Review.pdf)

Cases that are not about US 10,709,527 (avoid false positives)

• ITC Inv. No. 337-TA-1144 (Certain Dental and Orthodontic Scanners and Software): asserted US 9,299,192; 7,077,647; 7,156,661; 9,848,958; 8,102,538 — not the '527 patent. (https://www.govinfo.gov/content/pkg/FR-2020-08-03/pdf/FR-2020-08-03.pdf)
• The earlier ITC 337-TA-1091 and Delaware suits 1:18-cv-00886 / 1:18-cv-01949 predate the '527 patent's July 2020 issuance.
• The "'107 patent" in the D. Del. claim-construction opinion (light beams / confocal terms, alongside '447, '448, '901) is a distinct Align scanner patent, not the '527 patent.
• Dental Monitoring SAS v. Align Technology, Inc., Fed. Cir. (2026) concerns US 11,049,248 and US 10,755,409 — unrelated to the '527 patent.

Uncertainty / discrepancy flags

1. Date inconsistency in the source record (flagged, not corrected): Align's Mandatory Notice in IPR2021-01240 renders the WDTX filing date literally as "October 19, 2019," whereas Align's press release, the court docket and the Board's institution decision all state October 19, 2020. I report the literal text and the weight of corroborating sources.
2. Calendar discrepancy in my instructions: the system metadata states today's date as 2026-09-30, while the task states April 26, 2026. I did not find any '527-specific activity in either 2025 or 2026 beyond what is listed above; the most recent contested proceeding on this patent remains the 2022 settlement.
3. No exhaustive docket check: I did not directly query PACER or the CAFC's own docket system; the district/PTAB facts above come from reproduced dockets (CourtListener/RECAP, Docket Alarm/Patexia, Justia, UniCourt) and the Board's own orders. The conclusion "no CAFC appeal and no other litigation" reflects the sources searched as of the searched date and should not be treated as a certified nationwide docket clearance.
4. Delaware case as to the '527 patent specifically: the '527 patent is confirmed "at issue" in 1:20-cv-01492 via Align's mandatory notice; I did not independently retrieve a 3Shape DJ count expressly naming the '527 patent in that docket.

PTAB / AIA Trial Analysis — US 10,709,527 B1

⚠️ Contradiction flag (must resolve first). The structured "PTAB proceedings on file" block in this prompt states that the USPTO ODP API returns no AIA trial proceedings for this patent. That is stale/incorrect. Live web search unambiguously surfaces one AIA trial on US 10,709,527 — IPR2021-01240 (3Shape A/S & 3Shape Inc. v. Align Technology, Inc.) — including the Board's own institution decision, the parties' briefs, and the termination entry on PTAB docket services. The Google Patents page for the patent independently flags the same proceeding ("PTAB case IPR2021-01240 filed (Settlement)"). I therefore treat the ODP block as a false negative and proceed on the documented record. (Note: for the sibling patents in this family, e.g. IPR2021-01241 on US 10,791,936, the institute/deny outcomes are different — do not conflate them with this patent.)

Proceedings overview

One AIA trial has been filed against US 10,709,527 — IPR2021-01240 — and it was instituted on all challenged claims and all grounds but terminated as settled before any Final Written Decision; net result: zero claims canceled, zero claims sustained on the merits, and effectively all 22 claims remain untested at the Board. The bottom-line defensive posture is therefore not "the patent is hardened" in the sense of a merits win — but it is also not "claim 1 is dead." What a defendant actually has is: (i) an unrebutted institution finding that a 3-way § 103 combination (Rubbert + Weyrich + Babayoff, or Durbin + Weyrich + Babayoff) presents a reasonable likelihood of prevailing on every challenged claim, and (ii) no statutory estoppel because § 315(e)(2) estoppel attaches only after an FWD — so all prior art, including Rubbert, Durbin, Weyrich and Babayoff, remains fully available to the next challenger.

IPR2021-01240 — 3Shape A/S & 3Shape Inc. v. Align Technology, Inc.

• Type: Inter Partes Review (Tech Center 2100, Art Unit 2119)
• Filed: 2021-07-19 (accorded filing date 2021-07-28)
• Status: Terminated-Settled (PTAB docket). Plain English: instituted, then killed by a joint motion to terminate before trial reached a decision on the merits.
  • Joint Motion to Terminate filed by Patent Owner: 2022-02-18
  • Board Termination Decision (post-institution settlement): 2022-03-03
• Judge panel: Hyun J. Jung, Neil T. Powell, and James J. Mayberry, Administrative Patent Judges; Powell authored the institution decision. (One third-party aggregator listing also shows Elizabeth Roesel associated with the case; I could not verify her participation and the Board's own institution decision names only Jung, Powell and Mayberry. Treat the three-judge institution panel as authoritative.)
• Petition grounds — challenged claims 1–9, 11–20, and 22 (claims 10 and 21 were not challenged):
  • Grounds I & II: § 103 — Rubbert (US 2002/0180760) in view of Weyrich (2004) and Babayoff (WO 00/08415)
  • Ground III: § 103 — Durbin (US 2002/0064759) in view of Weyrich (2004) and Babayoff (WO 00/08415)
  • Claim-construction disputes were briefed for "generating/generate second 3D data" and for the missing-portion/obstruction limitations. No § 112 or § 101 grounds.
• Institution decision: instituted 2022-01-27 on all challenged claims and all grounds. The panel found a reasonable likelihood of prevailing on every challenged claim. Two points of reasoning are worth carrying forward for a defendant:
  1. § 325(d) rejected. Patent Owner argued Rubbert had already been before the examiner and that the examiner had found Rubbert lacking limitations 1.3/1.4. The Board declined to exercise § 325(d) discretion and instituted anyway.
  2. Patent Owner's "no human judgment" theory was rejected at institution. Align argued the claims require generating new data by computer projection of existing information, excluding data obtained "from external sources like additional scans" and excluding "a human operator's judgment." The panel disagreed: "[t]he language of limitations 1.5 and 12.2c does not appear to address whether a human's judgment could contribute to generation of the second 3D data," and the Board cited the '527 specification itself (Ex. 1001, 10:38–50, describing a user extrapolating missing finish-line data by "clicking" on cross-sections) as conflicting with Patent Owner's position. That is a self-inflicted specification problem the next challenger can cite verbatim.
• Final Written Decision: None. No FWD was ever issued. Consequently no claim of the '527 patent has been canceled, confirmed, or held unpatentable by the Board. I will not state outcomes the record does not contain.
• Settlement / termination: The parties jointly moved to terminate on 2022-02-18; the Board terminated the proceeding on 2022-03-03 as Terminated-Settled. Settlement terms are confidential and are not in the public record. (Practical read: this coincided with the broader Align–3Shape global resolution, and Align's subsequent enforcement efforts shifted to ClearCorrect/Straumann on a different patent set.)
• Appeal: None. No FWD issued, so nothing was appealable to the Federal Circuit under 35 U.S.C. § 319. I found no CAFC docket involving US 10,709,527.
• Defensive value: Mixed but net-favorable on the merits questions. The petition was strong enough to pass § 314 on all 22 challenged claims with the very same reference set, and the Board's institution decision already reads down Align's core "no human judgment" infringement/validity position — but because it settled pre-FWD, no estoppel attaches and no claim is cancelled, so a new defendant gets the benefit of 3Shape's work product (a public petition, public POPR, and a public institution decision) without the burden of a collateral-estoppel bar running the other way.
• Sources: Institution Decision, IPR2021-01240, Paper 15 (2022-01-27) · Petition, Paper 3 (2021-07-19) · Patent Owner Preliminary Response, Paper 10 (2021-10-28) · PTAB docket page, IPR2021-01240 · USPTO PTAB E2E / Patent Trial and Appeal Case Tracking System (PTACTS) for the authenticated filings.

Strategic summary

Claim status. The '527 patent carries 22 claims, two independent (claim 1, method; claim 12, system). None are canceled. None were confirmed on the merits. Claims 1–9, 11–20, 22 were challenged and instituted but never adjudicated (settled). Claims 10 and 21 — the "generate a second 3D virtual model based on the second 3D data and combine it with the 3D virtual model" limitations — were never challenged at all and are, as far as the public record shows, wholly untested. If you are being asserted against, note that claim 10/21 add a step (build a second model, then combine) that a pure "hole-filling in a point cloud" invalidity theory may need extra mapping to reach — but they are dependent claims riding on claim 1 and rise or fall with it.

Estoppel landscape. This is the single most important point for a defendant. Under § 315(e)(2), estoppel in civil actions attaches only after a final written decision. IPR2021-01240 settled after institution but before any FWD, so § 315(e)(2) estoppel never attached — not to 3Shape, not to its privies, not to anyone. Statutory estoppel is a non-issue here. The prior art 3Shape raised — Rubbert (US 2002/0180760), Durbin (US 2002/0064759), Weyrich (2004), and Babayoff (WO 00/08415) — remains fully available, as do all grounds any other challenger could reasonably raise, including § 101 and § 112 theories that IPR cannot reach at all. (Caveat: the settlement agreement itself may impose contractual restrictions between Align and 3Shape; those are confidential and would bind only the signatories. They do not bind you.)

Pattern signals. This is an Align-controlled family, not a troll portfolio, and Align litigates it actively as a patent owner — it is the plaintiff, not the target. Align's 6:20-cv-00979 (W.D. Tex.) and the mirrored 1:20-cv-01492 (D. Del.) both asserted the '527 patent (internally dubbed the "Hole-Closing Patent") against 3Shape. There is no defensive aggregator (e.g., Unified Patents, RPX) in this proceeding's chain; the petitioner was a direct competitor in an active co-pending district court case, which is why the WDTX action and its timing appear repeatedly in the exhibits. The same petitioner, 3Shape, filed a companion petition on the sibling '936 patent (IPR2021-01241), which the Board denied institution on 2022-01-26 — one day before instituting the '527 IPR. Do not assume the '936 denial says anything about the '527's strength; different claims, different art.

Expiration timing materially changes the calculus. The '527 patent's anticipated expiration is 2026-02-08 (20 years from the 2006-02-08 root filing of US 11/349,124), and Google Patents lists legal status "Expired – Lifetime." As of today (2026-09-30) the patent has expired. That means: (a) no prospective injunctive relief; (b) any remaining exposure is past damages in already-filed cases; and (c) IPR remains technically available for an expired patent but its practical leverage is limited to knocking out the tails of pending damages cases. Align's live enforcement front has shifted to a different patent set — the ClearCorrect/Straumann litigation, 6:24-cv-00187 (W.D. Tex.), asserting Materials/Treatment-Planning/Composite-Image patents, where ClearCorrect has filed a wave of IPRs (e.g., IPR2025-00814, -00819, -00821) and where a § 101 summary-judgment motion and a preclusion motion were set for hearing on 2026-05-27. The '527 patent is not on that asserted list.

Recommended next steps

If you are a defendant facing an assertion of US 10,709,527:

1. Do not treat this patent as "hardened." There has been no FWD and no claim has ever survived a merits test at the Board. Quote the institution decision directly — it grants review of all challenged claims (1–9, 11–20, 22) on all grounds: "we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition." Paper 15 at 1 (2022-01-27).

2. Reuse the institution decision's own findings against Align's claim-construction position. The Board expressly rejected Align's argument that the claims exclude human-derived data, holding that the '527 specification discloses a user extrapolating missing finish-line data via mouse clicks (Ex. 1001, 10:38–50). This is a prosecution-history/specification admission you can deploy in a § 112 or indefiniteness fight or in a § 103 motivation-to-combine argument.

3. Assume no estoppel and keep the whole art set on the table. Because there was no FWD, § 315(e)(2) bars nothing. Rubbert, Durbin, Weyrich and Babayoff are all still fair game, and you can also run grounds IPR cannot hear (§ 101, § 112 written description/enablement) — note that ClearCorrect is doing exactly this in 6:24-cv-00187, where a § 101 invalidity SJ motion was briefed and set for a 2026-05-27 hearing.

4. If you are considering a new IPR, check the § 315(b) clock and the expiration reality first. An IPR petition must be filed within one year of service of a complaint alleging infringement. And because the patent expired 2026-02-08, weigh whether an IPR is worth the spend versus a district-court validity case — there is no injunctive relief left to defeat.

If you are a defendant and no PTAB activity appeared to exist: disregard that premise. The ODP-derived "no proceedings" block in this prompt is factually wrong for this patent. There is exactly one proceeding — IPR2021-01240 — instituted on all challenged claims, settled pre-FWD, and never appealed to the Federal Circuit. There are no active AIA trials on US 10,709,527, and I found no CAFC appeal involving it.

Evidence limits I want on the record. (i) I could not, within this session's search budget, confirm the final disposition of the underlying W.D. Tex. case 6:20-cv-00979-ADA — confirm that independently via CourtListener. (ii) The settlement terms are confidential; the "terminated as settled" characterization comes from PTAB docket services (Docket Alarm, Patexia) and the Board's post-institution termination decision, not from a published agreement. (iii) The third-party listing of an additional judge (Roesel) on the panel is unverified; I have used the three judges named in the Board's own institution decision.

I'll research the assignment record for US 10709527 through the USPTO assignment records and related sources.

Let me dig into the assignment records and the inventors' employer history.

I was able to retrieve the surrounding ownership evidence but not the Assignment Center reel/frame entries themselves (no live query access to assignmentcenter.uspto.gov, and the indexed search results did not surface the recording identifiers). I therefore report the determinable chain and explicitly flag the gaps rather than invent reel/frame numbers.

Inventors

Pattern note: Both inventors are the same two-inventor team that appears across the Cadent portfolio (intraoral scanning, dental CAD/CAM), and both remained within the Cadent → Align organization after Align acquired Cadent in 2011 — Kopelman is still named on Align filings (e.g., Align's 2022 application 17/902,445 listing Align inventors, and Align continuation US 2018/0280124 on the Cadent "air stream auxiliary" family). There is no signal of inventors departing the original assignee within 12 months of filing; this is an in-house R&D inventor team, not a sell-and-exit pattern.

Original assignee

There is a dual-answer here that must be stated carefully:

• On the issued patent US 10,709,527: the front page reads "(71) Applicant: Align Technology, Inc., San Jose, CA (US)" and "(73) Assignee: Align Technology, Inc." — consistent with Google Patents' "Original Assignee: Align Technology Inc." Because this patent is a 2020 continuation, it issued directly into Align's name.
• On the family root (US 7,555,403, app. 11/349,124, filed 2006-02-08): the assignee of record was Cadent Ltd. (confirmed by Google Patents' cited-by listings showing "US7555403B2 … Cadent Ltd." and by Cadent's foreign counterparts).

Cadent Ltd. / Cadent Holdings, Inc.:

• Primary business: 3D digital CAD/CAM and intraoral scanning for dentistry/orthodontics — iTero and iOC scanners, OrthoCAD iQ / iCast / iRecord. Cadent shipped products embodying this technology area, and Align's own iTero scanner is the direct successor platform.
• Status: acquired. Align Technology announced the acquisition 2011-03-29 and closed it 2011-04-29 for ~$190 million cash (all shares of Cadent). Align's 10-Q refers to "Cadent Holdings, Inc. is a subsidiary of Align Technology." Cadent is therefore now an operating, wholly-owned Align subsidiary.
• Align Technology, Inc. (NASDAQ: ALGN) is a public operating company; its 2011–2012 SEC filings describe the SCCS (Scanners and CAD/CAM Services) segment created by the Cadent acquisition.

Assignment timeline

Method caveat first: I could not retrieve the USPTO Assignment Center (reel/frame) records for this patent or its family in this session. The entries below are reconstructed from the authoritative patent text, Google Patents legal-events/cited-by data, and Align's SEC filings. Reel/frame numbers and recorded execution/recording dates are NOT known to me and I will not fabricate them.

• 2005-07-15 (provisional 60/699,499 filed) — no separately recorded assignment retrievable.
  • Conveyance: (expected) Assignment of inventors' rights
  • Assignor: Avi Kopelman; Eldad Taub
  • Assignee: Cadent Ltd.
  • Correspondent: not retrieved (the issued patent's counsel of record is FisherBroyles, LLP; several family members list Wilson Sonsini Goodrich & Rosati — these are prosecution counsel, not necessarily the assignment recording correspondent).
  • Context: initial in-house inventor assignment to employer.
• 2006-02-08 (non-provisional 11/349,124 filed; later US 7,555,403) — assignee of record Cadent Ltd.
  • Context: original filing in employer's name.
• 2011-04-29 (Cadent acquisition closed; announced 2011-03-29) — Cadent's US patents transferred to Align Technology, Inc.
  • Conveyance: (expected) Merger / Assignment
  • Assignor: Cadent Ltd. / Cadent Holdings, Inc.
  • Assignee: Align Technology, Inc.
  • Correspondent: not retrieved
  • Context: acquisition of Cadent by Align for ~$190M cash; internal reorg/absorption of the Cadent portfolio into Align.
• 2008 → 2020 (chain of continuations 12/222,287 … 16/798,182) — no further ownership change; each continuation issued directly to Align Technology, Inc.
  • Context: internal continuation practice, not a transfer.

Bottom line on the record: on the evidence available, the only non-inventor ownership event in this family's history is the Cadent → Align acquisition (2011). I found no post-issuance transfer of US 10,709,527 away from Align.

Timeline diagram

timeline
    title Ownership of US 10709527
    2005 : Provisional filed 15 Jul
         : Inventors Kopelman and Taub
    2006 : Non-provisional 11/349,124 filed
         : Assignee of record Cadent Ltd
    2009 : US 7555403 issues to Cadent
    2011 : Align acquires Cadent for 190M
         : Cadent patents move to Align
    2020 : Continuation 16/798,182 issues
         : Assignee Align Technology Inc
    2020 : Align sues 3Shape in W D Texas
    2022 : IPR2021-01240 settled

NPE / troll-pattern signals

Verdict

Operating-company assertion.

US 10,709,527 has never left operating-company hands on the available record: the family root US 7,555,403 issued to Cadent Ltd., a scanner manufacturer whose products (iTero/iOC) embody the claims, and the entire Cadent portfolio passed to Align Technology, Inc. on 2011-04-29 in a ~$190M acquisition (Align 10-Q/8-K). Align then asserted the patent itself against a direct competitor, 3Shape, in Align v. 3Shape, W.D. Tex. 6:20-cv-00979 (filed 2020-10-19; PTAB IPR2021-01240 settled 2022-03-03) — the classic operating-company-vs-competitor posture, with no shell LLC, no NPE-list assignee, and only a single ownership transfer. None of the eight NPE signals is affirmatively present.

Caveats / verification: I could not directly query https://assignmentcenter.uspto.gov for the reel/frame entries; confirm the file directly there (search by patent number 10709527 and by application 16/798,182) and cross-check the Cadent→Align merger recording. Note one internal inconsistency to be aware of: Google Patents labels this continuation's "Original Assignee" as Align Technology Inc. even though the family root's assignee was Cadent Ltd. — I have treated the AUTHENTICATED patent text and Google's own cited-by data (showing US 7,555,403 assigned to Cadent) as controlling, and flagged the discrepancy rather than resolving it silently.

I'll search for the specific patent and its cited prior art references.

Let me look for the specific "References Cited" / Citations section of US10709527.

Let me search for the specific "References Cited" listings on patent databases.

Prior-Art Analysis for US 10,709,527 (US 10709527 B1)

Sourcing caveat — read first

I need to be explicit about a limitation that materially affects this task:

• My tools permit web search only — I cannot directly query the USPTO PatentCenter, the USPTO full-text search API, or the USPTO "References Cited" field. The authoritative patent text you supplied is truncated before the "Citations / References Cited" section (it ends at the "Families Citing this family (200)" listing), so the patent's own on-face citation list is not reproduced in my source materials.
• Accordingly, the reference list below is assembled from third-party reproductions (Unified Patents patent portal, Justia, Google Patents snippets). I flag each entry's provenance and confidence. Where I cannot verify a reference's existence, date, or content from the retrieved results, I say so rather than fill the gap.
• No auto-correction: identifiers are reproduced literally as retrieved (e.g., "US-4324547-A", "US 4,324,547 A", "US-20020015934-A1"). I have not normalized dashes, suffixes, or kind codes.

Verified identification of the target patent:

This is the same patent analyzed in the prior section; I am building on that identification rather than restating it.

A. Backward citations (prior art cited in / cited against the patent)

A.1 Patent references located via the Unified Patents portal (US-10709527-B1 page)

The portal's US-10709527-B1 record reproduced the following reference cluster. Important interpretive flag: these references are orthodontic/positioner and imaging references, i.e., they are characteristic of Align Technology's early orthodontic-portfolio patents, not of the prosthodontic finish-line subject matter of this family. In Align's continuation practice, an IDS for the family root (US 11/349,124) commonly swept in references from related Align filings. I therefore treat this list as family-inherited references, not necessarily examiner-cited art against these specific claims. Confidence: moderate on content, low on whether these are the operative "References Cited" for this exact patent.

The same block also listed an item titled "Method and System for Real Time Intra-orally Acquiring and Registering Three-dimensional Measurements and Images of Intra-oral Objects and Features" (number not captured cleanly in the snippet) — this is the only entry in the cluster that is topically close to the scanning/topographic steps of claim 1.

A.2 Non-patent literature (NPL) — corroborated by Justia's US 10,709,527 page

The Justia record for patent 10709527 reproduced a large NPL reference list. The entries I could read in the retrieved snippet are dental-CAD/CAM and orthodontic positioner literature, consistent with this family's prosecution and with Align's earlier patents:

• Raintree Essix & ARS Materials, Inc., Raintree Essix Technical Magazine, Aug. 13, 1997.
• Redmond et al., "Clinical Implications of Digital Orthodontics," Am. J. Orthod. Dentofacial Orthop., 117(2):240–242 (2000).
• Rekow, "A Review of the Developments in Dental CAD/CAM Systems," Curr. Opin. Dent., 2:25–33 (Jun. 1992).
• Rekow, "CAD/CAM in Dentistry: A Historical Perspective and View of the Future," J. Can. Dent. Assoc., 58(4):283, 287–288 (Apr. 1992).
• Rekow, "Computer-Aided Design and Manufacturing in Dentistry: A Review of the State of the Art," J. Prosthet. Dent. (Oct. 1987).
• Rekow, "Dental CAD-CAM Systems: What is the State of the Art?", J. Amer. Dent. Assoc., 122:43–48 (1991).
• Rekow et al., "CAD/CAM for Dental Restorations—Some of the Curious Challenges," IEEE Trans. Biomed. Eng., 38(4):314–318 (Apr. 1991).
• Rekow et al., "Comparison of Three Data Acquisition Techniques for 3-D Tooth Surface Mapping," Annual Int'l Conf. IEEE Eng. in Med. & Biol. Soc., 13(1):344–345 (1991).
• Rekow, "Feasibility of an Automated System for Production of Dental Restorations" (Ph.D. Thesis, Univ. of Minnesota, Nov. 1988), 244 pp.
• Richmond et al., "The Development of a 3D Cast Analysis System," Br. J. Orthod., 13(1):53–54 (Jan. 1986).
• Richmond, "Recording the Dental Cast in Three Dimensions," Am. J. Orthod. Dentofacial Orthop., 92(3):199–206 (Sep. 1987).
• Rudge, "Dental Arch Analysis: Arch Form, A Review of the Literature," Eur. J. Orthod., 3(4):279–284 (1981).
• Sakuda et al., "Integrated Information-Processing System in Clinical Orthodontics…," Am. J. Orthod. Dentofacial Orthop., 101(3):210–220 (Mar. 1992).
• Schellhas et al., "Three-Dimensional Computed Tomography in Maxillofacial Surgical Planning," Arch. Otolaryngol. Head Neck Surg., 114:438–442 (Apr. 1988).
• Schroeder et al., eds., The Visual Toolkit, Prentice Hall PTR (1998), Chs. 6, 8, 9.
• Shilliday, "Minimizing finishing problems with the mini-positioner," Am. J. Orthod. 59:596–599 (1971).
• Siemens, "CEREC—Computer-Reconstruction," High Tech in der Zahnmedizin (2004).
• Sinclair, "The Readers' Corner," J. Clin. Orthod., 26(6):369–372 (Jun. 1992).
• Sirona Dental Systems GmbH, CEREC 3D, Manuel utilisateur, Version 2.0X (in French) (2003).
• Stoll et al., "Computer-aided Technologies in Dentistry" (article summary in English).

§ 102 assessment of the NPL: These are background/state-of-the-art references. The Rekow, Richmond, Sakuda, Siemens/CEREC and Sirona items document that digital acquisition and CAD/CAM modeling of dental structures were known. None of them, on their face, discloses the claim-1 combination of (i) a hand-held intraoral scanner configured to focus light on an intraoral structure, (ii) determining a missing portion of the generated 3D virtual model, and (iii) generating second 3D data to fill that missing portion. They therefore support § 103 obviousness, not § 102 anticipation, as to the issued claims.

B. Forward citations (documents citing US 10,709,527) — not prior art

To avoid a common error: the "Families Citing this family (200)" block in the authoritative text (e.g., US 7,333,874 B2 Cadent; US 8,185,224 B2 Biomet 3i; US 8,257,083 B2) lists later documents that cite this patent. Under § 102 these are presumptively ineligible as prior art because they post-date the 2005-07-15 priority date. They are relevant only for portfolio/landscape analysis, not anticipation. I exclude them from the prior-art analysis.

The "Cited By (1)" entry in the patent text — US 11,152,106 B2 — is a later Align continuation of this same family, likewise not prior art.

C. Most relevant prior art, with claim-by-claim § 102 analysis

Because US 10,709,527 B1 issued over whatever art the examiner considered, no cited reference anticipatorily defeated these claims as granted. The following is a reverse-engineered § 102 assessment — i.e., could each reference, standing alone, disclose every element of a given claim.

Element map for the two independent claims (1 method; 12 system):

• A: hand-held intraoral scanner configured to focus light onto an intraoral structure (claims 2/13 add array of light beams; 3/14 add confocal focusing)
• B: scanning to generate first 3D data of the surface
• C: generating a 3D virtual model from the first 3D data
• D: determining a missing portion of the model
• E: generating second 3D data representing the structure for that missing portion
• F: combining the second data with the model to replace the missing portion
• Dependent variants: D via "incomplete closed geometrical form" (4/15, 5/16 — literal claim text reads "close geometrical form"); E via extrapolation (6/17) or interpolation between model points (7/18); E based on the model (8/19) or a cross-sectional profile (9/20); F via a second 3D virtual model (10/21); missing portion includes obscuring material (11/22).

Bottom line on § 102: No reference I located — cited, incorporated-by-reference, or family-inherited — discloses the full combination of claim 1 (or claim 12), and in particular the "determine a missing portion → generate second 3D data → combine" sequence. The closest single documents (WO 00/08415; US 6,099,314; US 2002/0015934 A1) reach only elements A–C. The realistic challenge to these claims is a § 103 combination of (a) a confocal intraoral scanner reference plus (b) a generic 3D mesh hole-filling / interpolation reference, which is precisely the theory one would expect in a petition — consistent with the fact that US 10,709,527 was in fact challenged in PTAB IPR2021-01240 (3Shape A/S v. Align Technology, Inc.), terminated by settlement on 2022-03-03 (per the Unified Patents PTAB portal entries reproduced earlier).

D. Contradictions / corrections to the previously generated sections

• No contradiction with the prior summary's bibliographic, priority, or litigation/PTAB findings. The priority date (2005-07-15) and filing date (2020-02-21) are confirmed.
• One clarification, not a contradiction: the prior section noted "I did not have direct live query access to USPTO PatentCenter." That limitation directly bites here — I could not retrieve the patent's authoritative "References Cited" field from the USPTO. Treat Section A above as a reconstructed, third-party-sourced citation set rather than a certified USPTO citation list.
• Watch-out, not a correction: the "References Cited" cluster I retrieved (positioner/orthodontic art such as US-4793803-A, US-3600808-A, US-20030224311-A1, and the Kesling/Kleeman/Dentrac/Warunek NPL) is thematically mismatched to this patent's prosthodontic subject matter. This strongly suggests these are family-inherited/Align-portfolio references rather than art cited against the issued claims. Do not assume they were the examiner's basis for allowance.

E. Explicit uncertainty flags

1. I could not query the USPTO database directly; the "References Cited" list is not present in my authoritative source text (truncated before that section).
2. The Unified Patents portal snippet interleaves multiple records; I could not confirm each listed reference belongs to US-10709527-B1 specifically (versus a sibling family member or a related Align patent). Confidence in the list membership: low-to-moderate.
3. Several dates/numbers in the retrieved snippets were incomplete or garbled (e.g., US-4324547-A, US-3600808-A); I have not supplied dates I could not read. Confidence: low.
4. US-5799100-A and US-20030224311-A1 descriptions are taken verbatim from the snippet and not independently verified.
5. Since the patent issued, none of the cited art anticipatorily defeated claims 1–22; my § 102 judgments are analytical reconstructions, not prosecution history.
6. If you need the certified citation list, the authoritative step is a direct PatentCenter / "References Cited" pull for App. 16/798,182 (or the file-wrapper of family root 11/349,124), which is outside my current tool set.

I'll gather prior-art specifics relevant to US 10,709,527 — the IPR record, the references cited on the face of the patent, and the family's cited-by art.

Now let me pull the actual prior-art references and grounds from the IPR record.

Obviousness Analysis — US 10,709,527 B1 under 35 U.S.C. § 103

Scope note / grounding. This analysis builds on the previously generated patent summary (claim breakdown, family chain, litigation posture) and does not repeat it. For the prior-art side I rely on (i) the references cited on the face of the patent, and (ii) the prior-art record from the only contested validity proceeding on this patent — IPR2021-01240, 3Shape A/S v. Align Technology, Inc., in which US 10,709,527 was Petitioner Exhibit EX1001 and claims 1–9, 11–20 and 22 were challenged. That IPR was instituted on all grounds and all challenged claims on 2022-01-27, then terminated as settled on 2022-03-03, so the Board never reached the merits. Everything below is therefore an independent analyst's § 103 construction of the record, not a restatement of a PTAB holding.

Primary sources used:

• Institution Decision, IPR2021-01240 (Paper, 2022-01-27): https://www.docketalarm.com/cases/PTAB/IPR2021-01240/3Shape_A-S_v._Align_Technology_Inc/docs/01-27-2022-Board/Institution_Decision__Grant-15-Institution_Decision__Grant.pdf
• Petition, IPR2021-01240 (2021-07-19): https://www.docketalarm.com/cases/PTAB/IPR2021-01240/3Shape_A-S_v._Align_Technology_Inc/docs/07-19-2021-Petitioner/Petition-3-Petitioners_Petition_for_Inter_Partes_Review_of_US_Patent_No_10,709,527.pdf
• Patent Owner Preliminary Response (2021-10-28): https://www.docketalarm.com/cases/PTAB/IPR2021-01240/3Shape_A-S_v._Align_Technology_Inc/docs/10-28-2021-Patent_Owner/Preliminary_Response-10-Patent_Owners_Preliminary_Response.pdf
• Google Patents bibliographic/text page: https://patents.google.com/patent/US10709527/en
• 3Shape claim-construction brief, W.D. Tex. 6:20-cv-00979 (PDF): https://dn721909.ca.archive.org/0/items/gov.uscourts.txwd.[1111294](/patent/1111294)/gov.uscourts.txwd.1111294.120.0.pdf

A. Legal framework applied

Under Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the claims are obvious if the differences between the claimed subject matter and the prior art would have been obvious to a person having ordinary skill in the art (POSITA) at the effective filing date, considering (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill, and (4) objective indicia. I apply the KSR rationales: combining prior-art elements according to known methods to yield predictable results; substituting a known element for another to obtain a predictable result; using a known technique to improve similar devices in the same way; applying a known technique to a known device ready for improvement; and design incentives/market forces.

No single-reference anticipation case is available. Nothing in the cited art discloses all six limitations of claim 1 (or all corresponding limitations of claim 12) in one reference. The realistic challenge is a multi-reference § 103 combination, which is exactly the posture 3Shape took.

B. Threshold issues that drive the § 103 analysis

B.1 Which § 103 governs, and the effective filing date

The family root is US 11/349,124, filed 2006-02-08, claiming provisional 60/699,499, filed 2005-07-15. If the '527 claims are entitled to that 2005 priority, pre-AIA § 103 applies (AIA § 3(n)(1)), which matters because pre-AIA § 102(e) makes certain US application publications prior art as of their filing date, and pre-AIA § 103(c)(1) can disqualify commonly-owned § 102(e)/(f)/(g) art from being used for obviousness.

This is the single most contestable threshold point. The issued claims of the '527 patent are not the "finish-line reconstruction" claims of the specification's headline embodiment; they read on a scanner-based hole-filling workflow ("hand-held intraoral scanner … configured to focus light," "confocal focusing," "determine a missing portion," "generate second 3D data … combine"). A § 112 written-description/priority attack — that these scanner-specific limitations are new matter not supported by the 2005 provisional, pushing the effective date later and changing the prior-art set — is available and would materially alter the calculus. I flag it as unresolved.

B.2 Level of ordinary skill

3Shape's petition used a POSITA definition at the "effective filing date of the '527 Patent," and the Board characterized the art as computer-aided dentistry / intraoral 3D scanning and modeling (IPR2021-01240 institution decision, § C). A reasonable POSITA: a person with an engineering or computer-science degree and 2–4 years' experience in 3D scanning/imaging or dental CAD/CAM software, capable of working with 3D surface meshes, registration, and scanner optics. The '527 patent's own specification corroborates this level: it states that "suitable software for manipulating a virtual model in this manner are well known in the art" ('527 spec., Step 120 discussion).

B.3 Analogous art

All the secondary references sit in the same field-of-endeavor or are reasonably pertinent to the problem (processing incomplete 3D surface data): intraoral scanning and dental modeling (Rubbert, Babayoff, Durbin), and 3D-scan geometry/computer graphics for filling gaps in scanned surfaces (Weyrich). The key disputed point is whether Weyrich (a general 3D-scan/hole-filling reference) is analogous. Align argued it is not, and that a POSITA would have had "no reason to look to Weyrich." I address this below.

C. The prior-art references on the record

The patent's own "References Cited" also names WO 00/08415 (confocal scanning of a 3D structure), US 6,099,314 (positive/negative model digitization), US 2005/0283065 (providing data associated with the intraoral cavity), and WO 2004/030565, WO 2004/087000 — additional background art confirming that the scanning-and-modeling pipeline was well developed before the priority date.

D. Limitation-by-limitation mapping for the independent claims

Claim 1 (method) / Claim 12 (system) — the system claim tracks the method claim step-for-step.

Dependent claims (2–11, 13–22): all are incremental and map cleanly to the same references:

• 2 / 13 (array of light beams) and 3 / 14 (confocal focusing) → Babayoff directly.
• 4 / 15 (missing portion forms an incomplete closed geometrical form) and 5 / 16 ("does not complete a close geometrical form") → Weyrich, whose entire premise is detecting an incomplete boundary/hole in a scan. (Note: claims 5/16 literally recite "close geometrical form," not "closed"; reproduced as written, consistent with the prior section.)
• 6 / 17 (extrapolating the model) and 7 / 18 (interpolating between points) → Weyrich's hole-filling, which by definition interpolates/extrapolates surface geometry across a gap. (Align separately argued Weyrich does not do this.)
• 8 / 19 (second data generated based on the model) and 9 / 20 (based on a cross-sectional profile) → Weyrich (and the '527 spec.'s own slicing method); cross-sectional filling of scanned surface data is a textbook technique.
• 10 / 21 (generate a second virtual model and combine) → Weyrich.
• 11 / 22 (missing portion includes 3D data of obscuring material) → Babayoff's color data + the known occlusion problem in intraoral scanning.

E. The combinations and why a POSITA would have been motivated to make them

Ground I/II — Rubbert + Weyrich + Babayoff

Combination. Use Babayoff's confocal hand-held scanner to capture 3D data → build the virtual model as in Rubbert → use Weyrich's hole-filling to detect and fill the incomplete (obscured) region → output a completed model.

Motivation (KSR rationales invoked):

1. Common field / analogous art. All three are directed to acquiring, representing, and processing 3D surface data; Babayoff and Rubbert are expressly dental/intraoral, and Weyrich addresses the generic and unavoidable problem that optical scans contain incomplete regions (shadows, occlusion, drop-outs). A POSITA working with confocal intraoral scanning would know that gum tissue, saliva, blood, debris, and shadowing produce exactly such incomplete regions — the '527 patent itself recites these as the reason the finish line is obscured ('527 spec. 2:4–16). The problem Weyrich solves is the problem the '527 patent identifies.
2. Combining known elements to yield predictable results. Scanner + model-builder + hole-filler are separate, known modules each performing its established function; the combination produces nothing more than a completed model, a predictable result.
3. Design incentive / market forces. Precision of the finish line governs prosthesis fit ('527 spec. 1:61–65); a practitioner's strong incentive is to avoid a rescan (chair time, cost) and to produce a complete model from an existing scan. That is a classic "known problem → known solution" motivation.
4. Reasonable expectation of success. Volumetric diffusion/interpolation hole-filling of scanned surfaces was a known, deterministic geometry operation; the POSITA would expect it to close a gap in a surface mesh.

Ground III — Durbin + Weyrich + Babayoff

Structurally parallel to Grounds I/II, substituting Durbin for Rubbert as the primary model-generation reference. The same motivations apply; Ground III provides redundancy if Rubbert is found not to teach a particular model-generation step.

Additional combinations a challenger could reasonably advance (not in the IPR record)

• Babayoff + any 3D hole-filling reference + any dental CAD segmentation reference (e.g., the art cited on the face of the '527 patent — WO 00/08415 for confocal scanning, US 6,099,314 for model digitization, US 2005/0283065 for intraoral color data). Because Babayoff supplies the scanner limitations and the color data, essentially any 3D-model-completion teaching would supply limitations 1.4–1.6.
• Rubbert/Babayoff + the '527 patent's own incorporated references, reasoning that the applicant treated the scanning + color + model-generation stack as known background.

F. Why this is a genuinely close case — Align's counterarguments

These are the arguments that made the IPR non-trivial and that survive as district-court defenses:

1. No motivation to look to Weyrich (non-analogous art). Align argued a POSITA "would have had no reason to look to Weyrich to improve Rubbert/Babayoff," and that Weyrich "does not address the problems described in the '527 patent." If Weyrich is characterized as general computer-graphics geometry rather than dental scanning, the analogous-art showing weakens.
2. Incompatibility / no reasonable expectation of success. Align argued Rubbert and Babayoff are "incompatible with Weyrich" and that success was not reasonably predictable.
3. Claim-construction gap at limitation 1.5. Align's proposed construction requires generating the second 3D data "by extrapolating the 3D virtual model or interpolating between points in the 3D virtual model" — i.e., not by any other method. On that construction, Weyrich's spray-can/volumetric-diffusion filling does not read on the limitation. 3Shape's broader construction ("in any manner") is what put it over at institution. The construction outcome is effectively dispositive of the § 103 question at limitations 1.5/1.6.
4. The limitation 1.6 "combine" requirement. Align argued Weyrich's outputs are not "combined with the existing 3D model" in the claimed manner.
5. § 103(c)/common-ownership disqualification risk. Babayoff (US 2006/0001739) is the '527 patent's own incorporated-by-reference, commonly-assigned (Cadent/Align) application. Under pre-AIA § 103(c)(1), art that qualifies only under § 102(e) and was commonly owned (or subject to assignment to the same entity) at the time the invention was made cannot be used in an obviousness combination. If the '527 heirs and Babayoff were commonly owned as of the relevant invention date, Babayoff may be disqualified for § 103 purposes, which would knock out the only reference supplying limitations 1.1/2/3/12/13/14. I could not confirm the ownership timeline (Cadent and Align combined in 2011), so this is flagged, not resolved. It was not raised in the reproduced Align Preliminary Response excerpts.
6. Objective indicia. Align's own litigation pleadings allege 3Shape copied Align's technology (the 2018 D. Del. complaint asserts 3Shape engaged in a "big analysis" of Align's patents and "developed and sold its competitive knockoff products"). Copying/near-simultaneous independent development is classic secondary-considerations evidence for nonobviousness, and it must be weighed at step four. See https://www.courtlistener.com/docket/14528771/1/align-technology-inc-v-3shape-as/

G. Bottom line

• There is a legally sufficient, non-frivolous § 103 case. The strongest ground is Babayoff (confocal hand-held scanner + color 3D data) + Rubbert/Durbin (virtual dental model generation) + Weyrich (3D-scan hole filling), with the KSR motivation resting on (a) the common problem of incomplete optical/confocal scans, (b) the known technique of surface hole-filling, and (c) the practitioner's design incentive to obtain a complete finish line without rescanning.
• The case is not a certainty. It rises or falls on three contested points: (i) whether Weyrich is analogous art; (ii) how "generating second 3D data" and "combining" in limitations 1.5/1.6 are construed (Align's narrow construction would defeat the ground); and (iii) whether Babayoff is disqualified from the § 103 combination by pre-AIA § 103(c) common ownership. If all three break for Align, the challenge fails; if any two break for the challenger, claims 1–11 are very likely unpatentable, and the mirror system claims 12–22 fall with them, with the dependent claims riding along.
• The dependent claims add essentially nothing of independent patentable weight except insofar as the "close/closed geometrical form" (4/5, 15/16) and "cross-sectional profile" (9/20) limitations arguably tie the claims to a specific filling geometry — but those map directly onto standard hole-filling/interpolation practice and onto the '527 specification's own description.
• Procedural caveat controlling the practical answer: because IPR2021-01240 settled after institution and before any final written decision, there is no PTAB merits ruling and no estoppel on this record. Any § 103 conclusion here is an analytical prediction; the question remains live in the W.D. Tex. action (No. 6:20-cv-00979) and in any subsequent IPR a challenger might file. 3Shape pleaded invalidity of the '527 patent as an affirmative defense (Ninth Affirmative Defense), so the issue is squarely in the litigation.

H. Uncertainty flags (required)

• Reference identities. I have high confidence in the disclosure descriptions of Rubbert, Weyrich, Babayoff, and Durbin only as quoted from the IPR2021-01240 institution decision and Align's Preliminary Response. I did not independently verify the exact numbers, authors, or publication dates of "Rubbert," "Weyrich," or "Durbin," and I have not corrected or guessed at their identifiers. "Babayoff" I correlate to US 2006/0001739 A1 (filed 2005-06-17) based on the '527 specification's own citation of that publication, but I did not verify the correlation against the IPR exhibit list.
• No merits ruling exists. The Board instituted but the case settled; nothing above should be read as a PTAB holding.
• Priority / new-matter question (whether the scanner-specific claim limitations are entitled to the 2005-07-15 priority) is unresolved on the record I retrieved and materially affects both the governing statute and the available prior art.
• § 103(c) common-ownership timeline (Babayoff vs. the '527 family) is unverified.
• Additional IPRs after 2022 on the '527 patent did not appear in my searches, but I cannot rule out a recently filed or unindexed proceeding; treat the "no later merits proceeding" observation as based on available search results only.