US 10728519

I'll search for litigation and docket information on this patent, then summarize.

Let me look for the specific claim text and any CAFC 2026 activity.

Let me get the actual claim text and check for any 2026 Federal Circuit activity.

US Patent 10,728,519 — Analyst Summary

Important note on method: I searched and cross-checked the USPTO/Google Patents record, PTAB (IPR) records, the district‑court litigation record, and Federal Circuit activity. The authoritative full text supplied in the working file does not include the numbered claim set (it jumps from the Abstract to the Description). I therefore give a plain‑language overview of the independent claims grounded in (a) the specification's "Summary of the Invention," and (b) the actual claim terms identified in the Align v. 3Shape claim‑construction record. Where I cannot verify verbatim claim language, I flag it explicitly. Per your strict rule, I have not "corrected" any identifiers.

1. Bibliographic data

Continuity (as recited in the patent): This patent is a continuation of a long chain including 16/270,419 → 15/175,267 → 14/755,171 (US 9,404,740) → 14/511,091 (US 9,101,433) → 14/150,505 (US 8,885,175) → 13/868,926 (US 8,675,207) → 13/620,159 (US 8,451,456) → 13/333,351 (US 8,363,228) → 12/770,379 (US 8,102,538) → 12/379,343 (US 7,724,378) → 11/889,112 (US 7,511,829) → 11/154,520 (US 7,319,529), which claimed benefit of the two 2004 provisionals.

2. Abstract (verbatim from the front page)

"A device for determining the surface topology and associated color of a structure, such as a teeth segment, includes a scanner for providing depth data for points along a two‑dimensional array substantially orthogonal to the depth direction, and an image acquisition means for providing color data for each of the points of the array, while the spatial disposition of the device with respect to the structure is maintained substantially unchanged. A processor combines the color data and depth data for each point in the array, thereby providing a three‑dimensional color virtual model of the surface of the structure. A corresponding method for determining the surface topology and associate color of a structure is also provided."

3. Plain‑language overview of the independent claims

The specification frames the invention as a confocal 3D scanner combined with a color 2D imager that uses the same X‑Y reference frame and takes the two captures essentially simultaneously (or within a very short interval — the spec recites about 0–100 ms, preferably 0–50 ms, more preferably 0–20 ms) so that the scanner and object do not move relative to each other between captures. Because both datasets share the same X‑Y frame, color values can be mapped directly onto the 3D surface points rather than conformally mapped.

Based on the claim terms actually litigated (Align's and 3Shape's competing constructions in Align v. 3Shape, W.D. Tex. No. 6:20‑cv‑00979 and D. Del. No. 1:20‑cv‑01492), the independent claims are apparatus/system claims and appear to be claims 1, 13, and 24, with claim 21 possibly being a further independent claim. The claim‑construction record ties the phrase "depth data" to ('519) claims 1, 6, 13, 21, 24, and ties the terms "scanning system configured to provide depth data of (said/the) portion" and "imaging system configured to provide (two‑dimensional) color image data of (said/the) portion" to ('519) claims 1, 13, 24.

In plain language, the independent claims each cover a system/device that:

1. Has a scanning system (the confocal depth scanner) configured to provide depth data for a portion of a 3‑D structure, the depth data corresponding to a two‑dimensional reference array substantially orthogonal to the depth direction (i.e., an X‑Y grid of depth/Z values). "Depth data" is data about the three‑dimensional properties of the scanned object (a key dispute: 3Shape argued it must be "3D surface points obtained independently of the color data"; Align argued plain meaning).
2. Has an imaging system configured to provide two‑dimensional color image data of the same portion (the color capture). A second dispute: 3Shape argued this required an imaging device using colored illumination (white light or sequential R/G/B) and excluding a single‑color source such as a red laser/LED. Align countered that the imaging system need not include its own illumination source and pointed to the spec's statement that "any suitable technique may be used for providing the color image," including obtaining one channel from the scanner's own colored laser.
3. Has at least one processor configured to associate/map the color image data with the depth data for the two‑dimensional reference array, yielding a color 3‑D numerical entity / virtual model of the surface. (The specification describes direct X‑Y‑to‑X‑Y mapping, with optional interpolation or optical‑character‑recognition alignment where the color sensor and depth sensor differ.)
4. Optionally (dependent claims and/or other independent claims) requirements such as the device maintaining a substantially fixed spatial disposition relative to the portion during operation, and/or the acquisitions occurring within a short time interval.

Independent claim 1 is the core system claim; claims 13 and 24 appear to be further independent system/processor claims in the same family with slightly different wording (e.g., different processor "configure" language and/or method‑type steps). I flag that I could not retrieve the verbatim text of every independent claim from an authoritative source within this session, so the above is a faithful reconstruction from the specification and the litigation record rather than a quote of the claims themselves.

Representative dependent‑claim subject matter (from the spec) includes: confocal/telecentric optics; pinhole arrays and CCD sensing; multi‑wavelength or sequential RGB illumination (LEDs, rotating filter wheel); dichroic coatings on the probing mirror; disposable/sheath probing members; polarizers and a quarter‑waveplate for ghost suppression; and transmission of the resulting 3D color entity to a CAD/CAM system via a modem/communications port.

4. Litigation and PTAB status (verified, with dates)

• D. Del. No. 1:20‑cv‑01492 — US case filed against 3Shape (2020); the '519 patent was one of the asserted Align "color scanning" patents.
• W.D. Tex. No. 6:20‑cv‑00979 — Align Technology, Inc. v. 3Shape A/S et al. (2020). The claim‑construction briefing in this case addressed the '519 claims (see the "depth data," "scanning system…," and "imaging system…" terms above).
• PTAB IPR2021‑01383 — 3Shape A/S and 3Shape Inc. v. Align Technology, Inc., challenging US 10,728,519. The Board terminated the proceeding by settlement prior to institution (Decision on settlement, February 25, 2022; the Settlement, Release and Patent License Agreement was filed as Ex. 1043 and kept business‑confidential). No final written decision issued on the '519 patent.
• Related 3Shape IPRs on sibling Align patents included IPR2021‑01120 and IPR2021‑01309.

Federal Circuit / CAFC 2026

I did not find any 2026 Court of Appeals for the Federal Circuit docket, briefing, or oral argument specifically involving US 10,728,519. The relevant Federal Circuit 2026 activity I observed is on other Align patents (e.g., the July 2026 nonprecedential decision affirming PTAB obviousness holdings in Dental Monitoring SAS v. Align Technology concerning the '248 and '945 patents), not the '519 patent. Because CAFC dockets are not fully indexed by general web search, I cannot rule out an appeal; treat the "no 2026 CAFC activity" conclusion as provisional and confirm it against PACER/CAFC's official docket if this matters for a filing or clearance decision.

5. Uncertainty flags

1. Verbatim independent‑claim text: Not available in the supplied full text; my overview is reconstructed from the specification and the litigated claim terms. Confirm against the granted claims on USPTO Patent Center/Google Patents before relying on it.
2. Exact set of independent claims: Strong evidence points to claims 1, 13, and 24 as independent; claim 21's status as independent is inferred from the "depth data" term grouping and should be verified.
3. Legal status: Google Patents indicates the patent expired (anticipated expiration June 17, 2025, from the June 17, 2005 filing of the 11/154,520 ancestor). "Expired – Lifetime" is Google's assumption, not a legal conclusion.

I'll research litigation involving US Patent 10,728,519. Let me run several targeted searches.

Let me dig deeper on the specific cases and check for any additional matters (ITC, PTAB, other defendants).

Let me confirm the PTAB proceeding and the Delaware action, plus check for any other defendants and the Texas case resolution.

Litigation involving U.S. Patent No. 10,728,519

I searched litigation databases (Docket Alarm patent-number search, Unified Patents litigation/PTAB portal, CourtListener, Justia, UniCourt, the ITC's public 337 publications, and Align's investor disclosures). A Docket Alarm search restricted to patent:(10728519) returned exactly three matters, all involving Align Technology, Inc. and 3Shape. I found no other cases asserting the '519 patent. Details below, with the caveat that docket outcomes are summarized from secondary sources and my searches returned limited information on some final dispositions.

1. Align Technology, Inc. v. 3Shape A/S and 3Shape Trios A/S

• Court / Jurisdiction: U.S. District Court for the Western District of Texas (Waco Division)
• Case No.: 6:20-cv-00979 (Judge Alan D. Albright)
• Filed: October 19, 2020
• Plaintiff: Align Technology, Inc.
• Defendants: 3Shape A/S; 3Shape Trios A/S
• Patent at issue: U.S. 10,728,519 (asserted together with U.S. 9,101,433; 10,750,151; 10,750,152; 10,791,934; 10,791,936; 10,709,527 — the '519 is one of the four "Color Scanner Patents").
• Status/Outcome: The parties engaged in claim construction (see D.I. 120, filed June 16, 2021, addressing '519 claim terms such as "depth data," "scanning system configured to provide depth data," and mapping terms). The case was stayed pending settlement by docket text order granting Motion #190, with a dismissal/joint status report due by March 15, 2022. UniCourt records the case as Closed. (I did not retrieve the final dismissal order itself, so I cannot confirm the precise dismissal date or terms.)
• Sources: https://www.courtlistener.com/docket/18549350/120/align-technology-inc-v-3shape-as/ ; https://dockets.justia.com/docket/texas/txwdce/6:2020cv00979/[1111294](/patent/1111294) ; https://unicourt.com/case/pc-db5-align-technology-inc-v-3shape-as-et-al-[710077](/patent/710077) ; Align press release: https://investor.aligntech.com/news-releases/news-release-details/align-technology-sues-3shape-texas-federal-court-infringement-7

2. 3Shape A/S, 3Shape Trios A/S, and 3Shape, Inc. v. Align Technology, Inc.

• Court / Jurisdiction: U.S. District Court for the District of Delaware
• Case No.: 1:20-cv-01492 (Judge Leonard P. Stark)
• Filed: November 2, 2020 (per the PTO "AO 120" Report on the Filing of an Action, Doc. 3)
• Plaintiffs: 3Shape A/S; 3Shape Trios A/S; 3Shape, Inc.
• Defendant: Align Technology, Inc.
• Patent at issue: U.S. 10,728,519 (listed on the AO 120 along with U.S. 9,101,433; 10,750,151; 10,750,152; 10,791,934, all held by Align). The '519 was asserted/resolved in this action as the mirror-image Delaware counterpart to the Texas case (per 3Shape's IPR motion, below).
• Status/Outcome: 3Shape's unopposed IPR dismissal motion (Feb. 22, 2022) states the parties "resolved their disputes regarding the '519 Patent, including ... assertion of the '519 Patent in related district court litigation, Align ... 6:20-cv-00979-ADA (W.D. Tex.) and 3Shape ... 1:20-cv-01492-LPS (DDE)," and "do not anticipate further litigation between them concerning the '519 Patent." I could not independently confirm the final Delaware disposition from the sources retrieved.
• Sources: https://www.docketalarm.com/search/?q=patent:(10728519) ; AO 120: https://www.docketalarm.com/cases/Delaware_District_Court/1--20-cv-01492/3Shape_A-S_et_al_v._Align_Technology_Inc/docs/3.pdf ; https://insight.rpxcorp.com/litigation_documents/13997828

3. 3Shape A/S and 3Shape Inc. v. Align Technology, Inc. (PTAB, not district-court "litigation")

• Forum: U.S. Patent Trial and Appeal Board (USPTO)
• Case No.: IPR2021-01383
• Petition filed: August 20, 2021 (filing-date-accorded notice September 9, 2021)
• Petitioners: 3Shape A/S and 3Shape Inc.
• Patent Owner: Align Technology, Inc.
• Patent at issue: U.S. 10,728,519
• Status/Outcome: Terminated by settlement before institution. Petitioners filed an unopposed motion to dismiss on February 22, 2022, disclosing the settlement agreement (Ex. 1043). The Board issued a "Termination Decision Pre DI settlement" (settlement prior to institution), and a notice of refund approved dated February 28, 2022. No institution decision on the merits was issued.
• Sources: 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 ; https://www.docketalarm.com/search/?q=patent:(10728519)

Important notes and caveats

• One identifier caution: The Google Patents page for US 10,728,519 lists the PTAB matter IPR2021-01383 under a link sourced from "Unified Patents PTAB Data." That is the data provider label on Google Patents, not the petitioner. The underlying petition document shows the petitioner was 3Shape A/S and 3Shape Inc., not Unified Patents. I have reported the petitioner as the filing reflects.
• No ITC investigation: Align filed ITC Section 337 actions against 3Shape (Inv. Nos. 337-TA-1091 and 337-TA-1144), but the patents asserted there were earlier Align patents ('228, '456, '207, '433, '931, '470, and '192, '647, '661, '958, '538). The '519 patent issued July 28, 2020 — after those complaints — and does not appear among the patents asserted in either ITC investigation.
• No ClearCorrect case on the '519: Align's later litigation against ClearCorrect/Straumann asserted the '613, '384, '090, '091, '444, '217, '879, '456, and '936 patents — not the '519.
• Federal Circuit: I found no CAFC appeal involving the '519 patent. The CAFC opinions that surfaced in searches (e.g., Dental Monitoring v. Align; the July 2026 appeals) concern other Align patents ('248, '945), not the '519.
• Related antitrust litigation (not '519 patent claims): Simon and Simon, PC v. Align Technology and Snow v. Align Technology (N.D. Cal.) concern Align's termination of the 3Shape interoperability agreement; they do not assert the '519 patent. They note the termination was "bound up in Align's decision to initiate intellectual property litigation against 3Shape," which included the '519 case.

Bottom line

The '519 patent was asserted by Align against 3Shape in two district-court actions — W.D. Tex. 6:20-cv-00979 and D. Del. 1:20-cv-01492 — and was the subject of 3Shape's IPR2021-01383 at the PTAB. All three were resolved by settlement between Align and 3Shape in early 2022: the IPR was terminated pre-institution (refund approved Feb. 28, 2022), and the Texas case was stayed pending settlement and subsequently closed. No other litigation involving U.S. 10,728,519 is known to me. Because my searches returned limited primary-source detail on the exact final dismissal dates/terms in the two district-court cases, you should verify those outcomes against the courts' dockets (PACER/Unified Patents) if precision is required.

I'll research the PTAB proceedings on US 10,728,519. The prompt's structured block says ODP shows no AIA trials, but the patent's Google Patents page flags an IPR. Let me dig.

The Google Patents page and Docket Alarm confirm IPR2021-01383. Let me get the petitioner identity, grounds, and termination details.

I have the core proceeding. Let me confirm whether the '519 patent had any other IPRs and check the related family proceedings, plus any appeal.

PTAB proceedings on file

Discrepancy flag up front. The structured "PTAB proceedings on file" block (USPTO ODP) reports no AIA trial proceedings for US 10,728,519. That is contradicted by the patent's own Google Patents page included in the prompt ("PTAB case IPR2021-01383 filed (Settlement)"), by Docket Alarm's patent search for 10728519, and by the underlying PTAB papers themselves. Treat the ODP null as an indexing gap, not as evidence of no activity. One proceeding exists, and it is documented below from primary PTAB filings.

Also flag: the Google Patents sidebar tags this case with "Unified Patents PTAB Data" and the litigation link to portal.unifiedpatents.com/ptab/case/IPR2021-01383. That is a data-source attribution, not the petitioner. The petitioner of record was 3Shape A/S and 3Shape Inc. There is no evidence of a Unified Patents (or other defensive aggregator) IPR against the '519. Do not cite Unified as a petitioner here.

Proceedings overview

One AIA trial proceeding on US 10,728,519: one (1) IPR, terminated pre-institution on settlement (0 active / 0 claims invalidated / 0 claims sustained on the merits / 1 settled / 0 institution denials). Because the Board never instituted and never reached a Final Written Decision, every claim of the '519 stands exactly as issued and is completely untested in an AIA trial. The defensive posture is therefore not "the patent is hardened by surviving IPRs" — it is the opposite: the patent has never been stress-tested at the PTAB, and the one challenger that tried bought its way out before institution. The more consequential fact for a defendant today is commercial, not procedural: the patent's anticipated expiration was 2025-06-17 (Google Patents legal status: "Expired – Lifetime"), so as of 2026-09-30 the '519 is expired — exposure is past damages only, not injunctive relief.

IPR2021-01383 — 3Shape A/S and 3Shape Inc. v. Align Technology, Inc.

• Type: Inter Partes Review
• Filed: 2021-08-20 (petition filed; filing date accorded 2021-09-09, Paper 5)
• Status: Terminated — settlement prior to institution of trial. (Docket Alarm: "Termination Decision Pre DI settlement"; PTAB E2E Paper 19.) No institution decision was ever issued.
• Judge panel: Not publicly identified. Because the Board terminated before issuing an institution decision, no merits panel/opinion exists to attribute. Do not treat any APJ name as the panel on this case.
• Petition grounds: The full grounds chart is not reproduced in the materials I could verify. What is confirmed from Petitioner's Exhibit List (Paper 9, 2021-09-22): the challenge was supported by the Declaration of Dr. David Schaafsma, Ph.D. (Ex. 1002) and included WO 00/08415 to Babayoff et al. as an exhibit (Ex. 1005/higher) — i.e., the same assignee's own WO 00/08415 confocal reference discussed throughout the '519 specification. I could not verify the specific challenged claim numbers or the statutory basis (§ 102/§ 103) from the record, and I will not fabricate them. Note Schaafsma has been 3Shape's recurring expert across the Align "Color Scanning Patent Family" IPRs (e.g., referenced in the parallel claim-construction record, W.D. Tex. 6:20-cv-00979, Dkt. 120).
• Institution decision: None. The proceeding was terminated before the Board decided whether to institute.
• Final Written Decision: None issued. No claim of the '519 has ever been canceled or confirmed by the PTAB.
• Settlement / termination: On 2022-02-22, Petitioner filed an Unopposed Motion to Dismiss the Petition (Paper 16), certifying that the parties had resolved their disputes over the '519 in both this IPR and the co-pending district court actions (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 (D. Del.)), and stating the parties "do not anticipate further litigation between them concerning the '519 Patent." Settlement Agreement Exhibit 1043 was filed with a joint request (granted in part and denied in part) to treat it as business confidential information under 37 C.F.R. § 42.74(c) and keep it out of the public patent file. The terms are confidential. The Board granted dismissal and terminated the proceeding 2022-02-25 (Paper 19); the fee refund was approved 2022-02-28. This was part of the global Align–3Shape settlement announced by Align on 2022-02-07, which covered the Delaware and Texas patent cases, 3Shape's Delaware antitrust claim, and "petitions to invalidate patents before the [PTAB] brought by both parties" (Align press release).
  • Primary sources: Termination Decision, Paper 19 (2022-02-25); Petitioner's Unopposed Motion to Dismiss (2022-02-22); Docket Alarm case page for IPR2021-01383.
• Appeal: None. There was no FWD, so nothing was appealable to the Federal Circuit, and no CAFC docket exists for this proceeding.
• Defensive value: Low-but-informative. Because there was no institution and no FWD, no § 315(e) estoppel attached — neither 3Shape nor its privies are statutorily barred on the merits, and the Board made no claim-level validity findings. So the proceeding neither hardens the patent nor kills any claim. What it does tell a defendant is that (a) the '519 was a live litigation weapon in the Align–3Shape war until a global February 2022 settlement, and (b) the patent's validity has still never been adjudicated in an AIA trial — the ground is wide open for a first-in-time petitioner, subject to the expired-patent and § 315(b) realities noted below.

Strategic summary

Claim status: 100% untested. No claim of US 10,728,519 has been canceled, and no claim has been sustained on the merits, because IPR2021-01383 died before institution and before any Final Written Decision. The entire issued claim set remains in force exactly as granted. Contrast this with the rest of the "Color Scanning Patent Family," where the asserted claims of the earlier-issued '228, '456, '207 and '538 patents were found invalid and/or 3Shape was found not to infringe (per 3Shape's own claim-construction brief, W.D. Tex. 6:20-cv-00979, Dkt. 120, citing IPR2019-00163 and the ITC proceedings). The '519 is the later-issued continuation that escaped that fate — not by winning, but by settling.

Estoppel landscape. There is no statutory estoppel on the '519. Section 315(e)(1) (PTAB) and § 315(e)(2) (district court / ITC) estoppel attach only after a final written decision; IPR2021-01383 produced none. So the prior-art grounds 3Shape raised or could have raised are not barred for a different party, and even 3Shape itself is not statutorily estopped on the merits — though it is almost certainly contractually foreclosed from re-litigating the '519 by the confidential February 2022 settlement. The practical takeaway: a new defendant is a genuine first mover on IPR grounds against the '519. The one real procedural constraint is timing: the '519's anticipated expiration (2025-06-17) means an expired-patent IPR is of little practical value, and § 315(b)'s one-year bar runs from service of a complaint asserting the patent.

Pattern signals. The petitioner, 3Shape, was a serial, highly coordinated challenger — it filed a cluster of IPR/PGR petitions against the Align "Color Scanning" family (e.g., IPR2019-00157/00163 on the '433 patent, plus 2021 filings including IPR2021-01120, IPR2021-01147/01148/01149 and this one), and Align reciprocally attacked 3Shape patents (e.g., IPR2019-00117/00118, PGR2018-00103/00104 against 3Shape's '244). The '519 IPR was filed in the same August–September 2021 wave and was swept into the global settlement. There is no defensive aggregator in the chain on this patent (the "Unified Patents" tag is a data-source credit, not a petitioner). Align has not needed to appeal any '519 PTAB decision, because there has never been one.

Recommended next steps

• If you are a defendant being asserted on the '519: there is no FWD to cite, because none exists. You cannot say "claims are canceled." IPR2021-01383 terminated pre-institution on 2022-02-25 with the petition dismissed; the settlement agreement (Ex. 1043) is confidential. Link the record rather than overstate it: Termination Decision, Paper 19.
• Lead with expiration, not invalidity. The '519 is expired (anticipated expiration 2025-06-17). Any demand letter premised on ongoing infringement or injunctive relief is overstated; the realistic exposure is back damages within the § 286 six-year window. That window is closing, which counsels urgency for the patent owner and leverage for you.
• If you consider filing an IPR, note there are no pending trial-stage milestones — no institution decision, no oral hearing, and no FWD date are on the clock, because the sole proceeding is terminated. You would be the first petitioner ever to reach the merits. Weigh that against the diminished value of an IPR on an expired patent and the § 315(b) one-year bar running from service of an asserting complaint.
• Verify claim scope independently. Because no tribunal has construed the '519 claims at the PTAB, and the district court case settled, the most useful artifacts are the W.D. Tex. claim-construction and ITC records on the family's "depth data obtained independently of colour data" dispute. That prosecution/claim-construction history — not any PTAB estoppel — is where the real narrowing ammunition lives.

I'll research the assignment record for US 10728519 using the available tools.

Let me dig deeper into the specific assignment records and the original assignee history.

Let me search for the specific Cadent→Align assignment records and the litigation history.

Ownership & Assignment Reconstruction — US 10,728,519 B2

Source limitation (read first). I was unable to open the USPTO Assignment Center (assignmentcenter.uspto.gov / assignment.uspto.gov) interactively during this session, and the specific reel/frame numbers, execution dates, and assignment correspondents for this patent's chain did not surface in any indexed web result I could retrieve. What follows is reconstructed from the patent's own front matter and continuity data, Google Patents legal events, Align Technology SEC filings (8-K, 10-Q), and the ITC/PTAB litigation record (Investigation No. 337‑TA‑1091, IPR2021‑01383). Where a reel/frame would normally go, I have marked [not retrieved] rather than guessing. Verify at the Assignment Center before relying on any of it.

Inventors

• Sole named inventor. US 10,728,519 has exactly one inventor, Noam Babayoff (front page, item (72)).
• The priority provisionals (US 60/580,109 and 60/580,108, both filed 2004‑06‑17) and the first non-provisional (Ser. No. 11/154,520, filed 2005‑06‑17) originated with Cadent's intraoral-scanner program — the patent's own background section cross-references WO 00/08415 as "assigned to the present assignee," i.e., the Cadent-side confocal scanner work.
• Unusual-pattern note: not the usual "all inventors depart within 12 months" fire-sale tell. What is notable is the conversion of the portfolio from Cadent to Align (2011) and then a ~14-generation continuation chain (2005 → 2019) prosecuted entirely by Align's counsel. That is a classic "keep the family alive and claim scope drifting forward" pattern by an operating company, not an inventor-departure signal.

Original assignee

• As issued (2020): Align Technology, Inc. (front page item (73) Assignee; applicant (71) "ALIGN TECHNOLOGY, INC., San Jose, CA (US)").
• Original owner of the invention, however: Cadent Ltd., Or Yehuda, Israel. The ancestor patents in this exact chain issued to Cadent — e.g., US 7,319,529 ("Assignee: Cadent Ltd," granted 2008‑01‑15) and US 7,724,378 (Cadent Ltd, 2010‑05‑25).
• Products embodying the claims: Yes. Align's iTero Element intraoral scanner was affirmatively shown to practice these "colour scanner" patents — Align relied on iTero Element to satisfy the technical prong of the domestic industry requirement in ITC Inv. No. 337‑TA‑1091 (Initial Determination). This is a practicing entity.
• Primary line of business: Align designs, manufactures and markets Invisalign clear aligners and (via Cadent) iTero/iOC intraoral scanners and OrthoCAD services. Publicly traded (Nasdaq: ALGN), founded March 1997, HQ San Jose, CA.
• Current status: Operating. Align acquired Cadent in 2011; Cadent operates as a wholly-owned Align subsidiary. On the Google Patents record, US 10,728,519 shows "Anticipated expiration 2025‑06‑17" and legal status "Expired – Lifetime" — as of today (2026‑09‑30) the patent term has run.

Assignment timeline

I can confirm the events in the ownership chain from primary documents, but not the reel/frame numbers or recorded correspondents. Set out honestly:

• 2005‑06‑17 (filing) / recorded [not retrieved] — Reel [not retrieved]

  • Conveyance: Assignment (inventor → company), presumed
  • Assignor: Noam Babayoff
  • Assignee: Cadent Ltd. (Or Yehuda, Israel)
  • Correspondent: [not retrieved]
  • Context: Employment/invention assignment vesting the priority family in Cadent at the outset.
  • Evidence basis: ancestor US 7,319,529 and US 7,724,378 both name Cadent Ltd as assignee; the U.S. filings were made in Cadent's name.

• 2011‑04‑29 (executed at merger closing) / recorded [not retrieved, likely 2011] — Reel [not retrieved]

  • Conveyance: Merger / Assignment (Cadent → Align, via merger of Cadent Holdings, Inc. with an Align subsidiary)
  • Assignor: Cadent Holdings, Inc. (and/or Cadent Ltd.)
  • Assignee: Align Technology, Inc. (San Jose, CA)
  • Correspondent: [not retrieved] — Align's prosecution/recordation address of record in this family is Align Technology, Inc. / WSGR, 650 Page Mill Road, Palo Alto, CA 94304 (Wilson Sonsini Goodrich & Rosati).
  • Context: Acquisition — $190M cash merger; Cadent survived as a wholly-owned Align subsidiary (Align Form 8-K, filed 2011‑05‑02; merger closed 2011‑04‑29).
  • Evidence basis: SEC 8-K; 10-Q statements ("On April 29, 2011, we acquired privately-held Cadent…"). Align's standing by assignment in the ITC case was proven with three assignment records in evidence, JX‑0039, JX‑0040 and JX‑0041 (ITC Inv. 337‑TA‑1091, Initial Determination) — I could not retrieve the reel/frame text of those exhibits.

• 2019‑04‑02 (filing of Ser. No. 16/373,482, the application that issued as this patent)

  • Conveyance: none recorded/needed — applicant and assignee were already Align Technology, Inc.
  • Context: Internal continuation — ordinary prosecution of the continuing family by the record owner.

• 2020‑07‑28 — US 10,728,519 B2 issues to Align Technology, Inc.

  • Attorney of record: FisherBroyles, LLP (front page item (74)); primary examiner Rebecca A. Valentine.
  • Context: issuance; no separate recordation.

• 2020‑10‑19 / 2020‑11‑02 — Align sues 3Shape (W.D. Tex. 6:20‑cv‑00979, Judge Albright; D. Del. 1:20‑cv‑01492) asserting this patent. Google Patents flags "Family has litigation," "US case filed in Delaware District Court," "US case filed in Texas Western District Court."

  • Context: Operating-company assertion against a direct scanner competitor.

• 2021‑08‑20 — 3Shape files IPR2021‑01383 against this patent; 2022 terminated by settlement before institution.

  • Context: defensive patent challenge, resolved by settlement.

Bottom line on records: an assignment chain does exist for this family (the ITC record proves it), but it is a two-link chain (inventor→Cadent, Cadent→Align), not an NPE serial-transfer chain. I could not retrieve the actual reel/frame citations.

Timeline diagram

timeline
    title Ownership of US 10728519
    2004 : Cadent files priority provisionals
    2005 : Parent application filed by Cadent
    2008 : US 7319529 issues to Cadent Ltd
    2011 : Align acquires Cadent Holdings
         : Cadent interest transfers to Align
    2019 : Continuation filed by Align
    2020 : US 10728519 issues to Align
         : Align sues 3Shape in Texas and Delaware
    2021 : 3Shape files IPR against the patent
    2022 : IPR settled and terminated

NPE / troll-pattern signals

1. Shell-entity transfer — Not present. No "IP/Holdings/Ventures" licensing vehicle appears anywhere in the chain. The current owner is Align Technology, Inc., a Nasdaq-listed medical-device maker that ships the iTero scanner practicing the claims. The only entity-level transfer is Cadent → Align (a strategic cash acquisition), not a transfer to a single-purpose LLC.

2. Known asserter in the chain — Not present. Neither Cadent Ltd. nor Align Technology, Inc. appears on any NPE list (Acacia, Marathon, IV, IPNav, Wi-LAN/Conversant, Vringo, Pendrell, MPHJ, etc.). Align is a practicing entity and a defendant-side counterclaim target (3Shape's antitrust action, N.D. Cal. 3:2x‑cv…, courtlistener 377941).

3. Repeat correspondent across the chain — Unclear / not a finding. The correspondents of record I can see are Wilson Sonsini Goodrich & Rosati (prosecution address of record: Align Technology, Inc. / WSGR, 650 Page Mill Rd, Palo Alto) and FisherBroyles, LLP (attorney of record on the issued patent). Both are large GP/IP firms that do predominantly operating-company work. The assignment-recordation correspondents themselves were not retrievable, so I cannot state whether a single attorney recurs across the chain. A single appearance by a big firm is not a finding.

4. Cascading transfers — Not present. Exactly one ownership-changing transfer in ~15 years (2011). No chained LLCs, no <24-month multi-hop sequence.

5. Pre-litigation transfer — Not present. The Cadent→Align transfer (2011‑04‑29) predates the first asserted suit (2020‑10) by roughly nine years. The 2019 continuation and the 2020 suit are ordinary internal prosecution, not a venue/standing-shaping transfer.

6. Bankruptcy fire-sale — Not present. Cadent was sold in a $190M all-cash merger (8-K, 2011‑05‑02), not a Chapter 7/11 sale.

7. Privateering — Not present. There is no NPE asserting on Align's behalf; Align itself is the plaintiff (W.D. Tex. 6:20‑cv‑00979; D. Del. 1:20‑cv‑01492) and Align itself is the domestic-industry manufacturer in ITC 337‑TA‑1091.

8. Defensive aggregator (anti-NPE) — Not present. The chain does not terminate at RPX / AST / LOT / Unified / OIN.

Verdict

Operating-company assertion.

Align Technology, Inc. — an operating medical-device manufacturer — owns US 10,728,519 by way of its 2011 acquisition of Cadent (evidenced by Align's 8-K of 2011‑05‑02 and the three assignment records marked JX‑0039/0040/0041 in ITC Inv. 337‑TA‑1091), and it is asserting the patent itself against a direct competitor, 3Shape, in W.D. Tex. 6:20‑cv‑00979 and D. Del. 1:20‑cv‑01492, while its own iTero Element scanner practices the claims (domestic-industry technical prong, ITC 337‑TA‑1091). None of the eight NPE signals is present; the two-link Cadent→Align chain contains no licensing vehicle, no asserter entity, and no cascading LLC transfers. The caveat is evidentiary, not substantive: the exact reel/frame citations were not retrievable in this session and must be confirmed before any filing or analysis relies on them.

Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search by patent number 10728519 or application 16/373,482); alternate index https://assignment.uspto.gov/patent/index.html. Litigation corroboration: Google Patents legal events and https://portal.unifiedpatents.com/litigation/Delaware%20District%20Court/case/1%3A20-cv-01492, https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A20-cv-00979, https://portal.unifiedpatents.com/ptab/case/IPR2021-01383.

I'll search the USPTO/Google Patents record for the specific cited references on US 10,728,519.

Let me try to retrieve the front-page "References Cited" (56) list and the Citations tab.

Let me retrieve the actual granted patent PDF front page to read the "(56) References Cited" list verbatim.

Prior-Art Analysis — U.S. Patent No. 10,728,519 B2

Patent identified: US 10,728,519 B2 — Method and apparatus for colour imaging a three-dimensional structure — Noam Babayoff — Align Technology, Inc. — App. No. 16/373,482 (filed 2019‑04‑02); earliest priority 2004‑06‑17 (Prov. 60/580,109 and 60/580,108 via 11/154,520). I have restricted this search to 10,728,519 only and have not substituted any similar number (e.g., the frequently co-occurring 10,750,151 / 10,750,152 / 10,728,884 / 10,728,519‑adjacent patents are different patents and are not analyzed here).

⚠️ Important scope/verification caveat (read first)

I was unable to retrieve the machine-readable front-page "(56) References Cited" list for US 10,728,519 from an authoritative source within this session. The authoritative full text supplied in the working file omits the (56) list entirely (it jumps from the Abstract/Classifications straight to the Description and Definitions), and my USPTO/Google Patents searches returned the patent's body text and its Citations‑by relationships rather than the enumerated examiner‑cited references.

Consequently, the references below are the ones I can verify from the authoritative full-text specification — i.e., the prior-art documents the patent itself identifies and discusses in the "Background of the Invention." Where I state a date or characterization I could not independently confirm this session, I flag it. I am not inventing additional (56) entries; doing so would violate your no-fabrication rule.

A. Prior-art references cited in the specification (verified from the authoritative text)

The '519 specification expressly names four prior-art documents. These are the only patent citations I can confirm verbatim from the authoritative record in this session.

1. WO 00/08415

• Full citation: WO 00/08415 (PCT publication) — "…assigned to the present assignee" (Align/Cadent); the specification describes it as teaching confocal imaging techniques for intra-oral surveying. (Title/assignee/applicant strings not verified in-session; the working file says only "confocal imaging techniques as described in WO 00/08415 assigned to the present assignee.")
• Date: Published c. 17 Feb 2000 (PCT WO 00/08415, publication year 2000 — the specification states the publication is "WO 00/08415"). Prior art date: more than one year before the earliest priority (2004‑06‑17), so it is §102(b)‑class art.
• Brief description: The foundational confocal 3D scanner the '519 builds upon. Provides depth (Z) data for an X‑Y array of illuminated spots via focus‑sweep and a spot‑specific‑position (SSP) determination. The specification concedes these methods "provide a digital three‑dimensional surface model that is inherently monochromatic."
• §102 anticipation relevance: Low for the independent claims; potentially relevant only to depth/scanning‑only dependent claims. The '519 independent claims (identified in the litigation record as claims 1, 13, 24, with claim 21 also tied to the "depth data" term group) require both depth data and two‑dimensional color image data of the same portion, plus a processor associating them. WO 00/08415 allegedly discloses only monochrome 3D scanning, so on its own it cannot anticipate any claim requiring color imaging + color/depth association. It can support a §102 argument only against claims whose scope is limited to the confocal scanning sub‑combination (and it is more naturally §103 background art).

2. EP 837 659 (EP 0 837 659 A1)

• Full citation: EP 837 659 — the specification states it "describes a process and device for obtaining a three dimensional image of teeth." (A sibling patent in the same Align family lists it as EP 0837659 A1, published 4/1998 — but treat that sibling reference as corroboration, not the '519 front page itself.)
• Date: Published April 1998 (per the sibling listing). §102(b)‑class art relative to a 2004/2005 effective filing date.
• Brief description: Two‑step tooth‑imaging process. The surface is first coated with an opaque, diffusely reflecting material and illuminated with monochromatic light; 3D surface data is obtained (via intensity‑pattern techniques per U.S. 4,575,805); the reflecting layer must then be removed, and a 2D color image is taken by a camera that must be manually re‑aligned so the color image "more or less correspond[s]" to the same part of the object. The two images may be superimposed on a screen.
• §102 anticipation relevance: Low. The '519 specification itself distinguishes this reference on exactly the points that matter: EP 837 659 needs a removable opaque coating, uses manual re‑alignment, and does not provide automatic registration within a single fixed device disposition. Under §102 a reference must disclose every element arranged as claimed; EP 837 659's manual‑alignment/coating workflow is a teaching away from the claimed "same‑frame/quick‑succession" registration. Best characterized as §102(b)/§103 background art, not an anticipatory reference.

3. U.S. Pat. No. 4,575,805

• Full citation: U.S. Pat. No. 4,575,805. (Cited in the specification as the reference "using intensity pattern techniques.")
• Date: Issued 1986 (patent number series; the specification refers to it as an established technique). §102(b)‑class art.
• Brief description: Intensity‑pattern (phase‑shift/moiré‑type structured‑light) surface‑measurement process, used in the EP 837 659 workflow to obtain the 3D image.
• §102 anticipation relevance: Very low / background only. It discloses surface‑topography measurement via projected intensity patterns; it does not disclose color acquisition, nor color/depth association in a common reference array. Cannot anticipate the '519 independent claims; relevant only if a hypothetical claim were drawn purely to intensity‑pattern depth measurement (the '519 claims are confocal‑based, so this reference is largely moot).

4. U.S. Pat. No. 6,594,539

• Full citation: U.S. Pat. No. 6,594,539. The specification states it "provides an intraoral imaging system that produces images of a dental surface, including three dimensional surface images and also two dimensional color images, with the same camera."
• Date: Issued 2003 (I believe 15 July 2003, but not independently verified this session — confirm against the front page). §102(b)‑class art.
• Brief description: Single‑camera intraoral imager with a multiple‑view detector "responsive to a broad spectrum of visible light," developing several images of the object from several relative angles; a digital processor develops 3D coordinate positions and related image information of the surface portions and provides "3‑D surface information that is linked to color information without need to conformally map 2‑D color data onto 3‑D surface."
• §102 anticipation relevance: Highest of the cited references — the strongest §102 candidate, and the reference a challenger would lead with. This is the only cited reference that on its face discloses both 3D surface data and color data association in a single camera system without conformal mapping. A §102 argument would run: it discloses (i) 3D surface data over an X‑Y region, (ii) color image data of the same region, and (iii) processing that links color to the 3D surface. Whether it discloses the claimed "two‑dimensional reference array substantially orthogonal to the depth direction," the specific "depth data" / "scanning system configured to provide depth data" architecture, and the "substantially fixed spatial disposition / short time interval" limitations is the crux — 3Shape's IPR2021‑01383 petition would have advanced this kind of art, but the proceeding settled before institution (terminated Feb. 2022) and no final written decision on the merits exists. So treat "US 6,594,539 anticipates" as a litigation argument that was never adjudicated, not an established holding.

B. What I could not verify (explicit flags)

1. The complete (56) front‑page citation list for US 10,728,519 — not retrieved. It likely includes (a) the four documents above, (b) the patent's own family/continuation‑chain patents (US 7,319,529; 7,511,829; 7,724,378; 8,102,538; 8,363,228; 8,451,456; 8,675,207; 8,885,175; 9,101,433; 9,404,740 — these appear as "U.S. Patent Documents" on sibling Align patents such as US 10,750,151 and US 12,053,346), and (c) assorted foreign documents (e.g., DE 2749802, EP 0091876, EP 0299490, EP 0837659 A1). These are plausible but I have not confirmed that any particular item appears on the '519 itself — do not treat this list as the '519's actual (56) without checking USPTO Patent Center.
2. Verbatim claim text and the exact independent‑claim numbering for US 10,728,519 — not in the supplied text. I have relied on the independent claims identified in the Align v. 3Shape claim‑construction record (claims 1, 13, 24, with 21 also tied to "depth data"). Confirm before relying on any per‑claim §102 statement.
3. Exact issue dates for US 4,575,805 and US 6,594,539 — I give the years with confidence, but the precise day/month should be checked.

C. Bottom line on §102

• No reference cited in the '519 specification is a clean §102 anticipatory reference for the independent claims (1, 13, 24). Three of the four (WO 00/08415; EP 837 659; US 4,575,805) disclose only monochrome depth/topology acquisition and are affirmatively distinguished in the patent's own background as failing the color‑plus‑registration combination. Under §102 those references cannot, standing alone, anticipate claims that require color image data and color/depth association.
• US 6,594,539 is the only cited reference that discloses both 3D and color in one camera without conformal mapping and is therefore the primary §102 candidate — but whether it actually discloses each claimed limitation (the 2D reference array orthogonal to depth; "depth data" configured via a scanning system; the fixed‑disposition/short‑interval limitations) is genuinely contested, and the one tribunal that would have decided it (PTAB IPR2021‑01383) terminated by settlement before institution, so there is no adjudicated §102 holding on this patent.
• Practically, the strongest post‑grant invalidity theories on the '519 would likely be §103 combinations (e.g., a confocal 3D scanner à la WO 00/08415 + a color intraoral imager à la US 6,594,539 + the claim‑specific registration/optics features), not single‑reference §102 — consistent with the fact that 3Shape's IPR was filed as an IPR (obviousness‑based) rather than a pure anticipation challenge.

D. Sources consulted

• Authoritative full text supplied in the working file (https://patents.google.com/patent/US10728519/en) — source of the four specification‑cited references.
• Google Patents record for US 10,728,519 B2 (bibliographic data; "Citations‑by" relationships showing US 10,728,519 as cited by DE 10328040 A1, WO 2003105289 A2, EP 1596158 A1 family, etc.).
• Sibling/related Align patents surfaced in search (US 10,750,151; US 12,053,346; US 11,000,207) — used only as corroboration for the likely (56) family listing, not as the '519's own front page.
• Docket Alarm PTAB materials for IPR2021‑01120/01383 exhibits (Align family reference lists).

If you need the verified (56) list and exact issue dates, the authoritative next step is USPTO Patent Center (PatentCenter.USPTO.gov) or the granted‑patent PDF front page for 10,728,519 — the automated sources I could reach this session did not expose that enumerated list.

I'll analyze obviousness under § 103, but first I need to pin down (a) the actual granted claim text and (b) the prior-art references cited on the face of this patent (the "Prior Art" / "References Cited" and "Similar Documents" sections of the Google Patents page). Let me search.

I have the claim-preamble structure from the ITC/claim-construction record. Now let me find the face-cited prior art and any § 103 grounds that were actually briefed for this patent family.

This is very productive — I've found the actual IPR exhibit list (the prior-art set 3Shape applied to this patent) and the ITC § 103 record on the sibling patents. Now let me pull the verbatim claim text and the face-cited references.

Obviousness Analysis — U.S. Patent No. 10,728,519 B2

35 U.S.C. § 103 (pre‑AIA § 103(a))

Analyst note on inputs and scope. The working file's authoritative text for the '519 patent jumps from the Abstract to the Description and does not contain the numbered claim set, and the copy of the Google Patents page supplied does not include the "References Cited"/"Prior Art" list. I therefore built this analysis from (i) the fact that this family is being prosecuted/described as pre‑AIA art (the examiner in co‑family application 16/791,994 expressly rejected claims "under pre‑AIA 35 U.S.C. 103(a) as being unpatentable over Babayoff (WO00/08415) in view of Decker (US 2002/0057438)" and further in view of Crampton (US 2003/0231793) and Dinev (US 6,788,338)), (ii) the references the '519 specification itself cites as background/admitted art, and (iii) the prior‑art set that petitioner 3Shape actually assembled against this exact patent in IPR2021‑01383 (exhibit list, Paper dated 2021‑09‑22). Where I cannot verify something, I flag it rather than state it as fact.

Housekeeping flag (contradiction with earlier sections). The previously‑generated "Patent summary" states today's date as 2026‑09‑30; this task states April 26, 2026. I use 2026‑04‑26 as instructed, and note the discrepancy. The earlier "uncertainty flag" that the verbatim claim text was unavailable is confirmed — the supplied full text still lacks claims. One earlier uncertainty is partially resolved and partially corrected, see §2 below.

1. Governing law and the person of ordinary skill (POSITA)

Motivation threshold is the battleground in this family. In the earlier ITC action on the siblings, the ALJ held 3Shape "failed to establish a motivation to combine Babayoff WIPO and Yoichi" for the '228/'433 patents. That adverse finding is the single most important risk factor for any § 103 challenge to the '519, and I address how it can be overcome (and why it may not be) in § 6.

2. The claim(s) at issue — what must be shown

The claim terms actually litigated for the '519 patent in Align v. 3Shape (W.D. Tex. 6:20‑cv‑00979, D.I. 120/120‑1/126; D. Del. 1:20‑cv‑01492) establish the following claim architecture with high confidence:

• Claims 1, 13 and 24 are the independent claims, and each contains:
  • a "scanning system configured to provide depth data of (said/the) portion";
  • an "imaging system configured to provide (two‑dimensional) color image data of (said/the) portion";
  • a "processor … configured to associate the depth data with the two‑dimensional color image data" (claims 1, 13);
  • an "illumination unit configured to transmit a first array of incident light along a path towards the three‑dimensional structure" (claims 1, 13, 24); and
  • a "detector (configured) to measure intensity of each of a plurality of returned light [beams]" (claims 1, 4, 13, 24, 30).
• "depth data" appears in claims 1, 6, 13, 21, 24; "color/image data" terms in claims 1, 6, 13, 24; "light beams/incident/returned" terms in the 20s and 30s.
• The disputed constructions were: (a) whether "depth data"/"scanning system" require the depth data to be obtained independently of the color data (3Shape yes / Align no); (b) whether "imaging system" requires colored illumination (i.e., white light or sequential R/G/B) and excludes a single‑color source such as a red laser (3Shape yes / Align no); and (c) the scope of the "associate/map" step.

Correction/flag to earlier section. The earlier note inferred that claim 21 might be independent. The '519‑specific record shows claim 21 grouped with the "depth data" term, but the sibling '538 patent's claim 21 is a dependent claim ("The system according to claim 11, wherein the detector is configured to selectively measure intensity …"). Because the '519 is a continuation sharing that specification and claim architecture, claim 21 is more likely dependent on claim 11 than independent. I still cannot verify this verbatim and keep it flagged.

Why this matters for § 103: the narrower the construed scope of "depth data" and "imaging system," the harder the obviousness case; the broader (plain‑meaning) reading the patentee advocated, the easier. Any invalidity theory must therefore be presented under both constructions in the alternative.

3. Prior art available (the "Prior Art" set for this patent)

Grouped by statutory strength. Numbers are reproduced literally; dates in bold are the ones I can support from the sources retrieved; un‑bolded dates are flagged for verification.

3.1 Admitted prior art / references cited on the face of the '519 specification

3.2 References 3Shape assembled and applied against this patent (IPR2021‑01383 exhibit list)

3.3 References used in the family's prosecution and in the sibling ITC action

Observation on the examiner's search field: the Google Patents page lists the '519's prior‑art keywords as illumination, color, dimensional, data, color image — i.e., the examiner was searching exactly the depth‑plus‑color combination space, which supports the conclusion that the references above are analogous art.

4. Element‑by‑element mapping of independent claim 1 (reconstructed)

Conclusion of the mapping: every element of claim 1 as reconstructed — including the two distinct sub‑systems and the processor that fuses them — is disclosed in the prior art; the case therefore turns entirely on motivation to combine and on the claim‑construction questions in § 2, not on any missing disclosure.

5. The § 103 grounds

Ground 1 (primary): Babayoff (WO 00/08415) in view of Okamoto (JP 2001‑82935 A)

(Optionally further in view of Pulli for the "associate" step.)

• What Babayoff supplies: the complete confocal depth scanner — literally every structural element of the "scanning system"/"illumination unit"/"detector" limitations, and the per‑X‑Y Z determination. It is the assignee's own work, incorporated by reference in the '519 specification.
• What Okamoto supplies: a 3‑D measurement device in which a separate color imaging means (color CCD) obtains the color of the same object, and in which the color is used so that the observer can easily understand the correspondence between the displayed surface shape and the actual object site.
• Motivation to combine (express and KSR‑based):
  1. Same field, same problem, same solution type. Both are optical metrology devices producing a 3‑D representation of a surface; Okamoto expressly states the purpose of adding color (easier correspondence between model and object) — the same stated benefit the '519 touts ("rendition of a full color 3D image of the target area can help the practitioner to decide on the spot whether the scan is sufficiently good").
  2. Express incorporation + admitted art. The '519 specification itself directs the reader to WO 00/08415 for the scanning technique, and states that "any suitable technique may be used for providing the color image." That is a built‑in suggestion to use a known color‑imaging arrangement with the known confocal scanner.
  3. Predictable result / mere juxtaposition. Each sub‑system performs exactly its known function; the combination yields the expected aggregate (a color‑textured depth map). KSR frames this as a classic predictable combination.
  4. Design incentive / market demand. Tooth‑shade matching for crowns, bridges and restorations was a known unmet need (Franetzki, Rohaly and the '519 background all identify it), giving a POSITA a reason to add color to an existing intraoral confocal scanner.
  5. Obvious to try. Given Franetzki, Rohaly, Xu and Okamoto, the field presented a finite, identified set of predictable solutions to 3‑D+color.
• Anticipation overlay: Okamoto alone was found in the ITC to disclose the analogous '538 claim elements (confocal 3‑D scanner + separate 2‑D color imaging means). To the extent claim 1 of the '519 lacks a "substantially fixed spatial disposition" or explicit simultaneity requirement (see § 2 — this is the key unknown), Okamoto alone may anticipate or at least render obvious.
• Risk: the ITC ALJ expressly rejected the Babayoff WIPO + Yoichi combination for lack of a stated motivation. A petition on this ground must do what 3Shape apparently failed to do in the ITC: point to Okamoto's own statements of purpose (the color‑3‑D‑correspondence rationale), the '519's own admission/incorporation, and the KSR rationales rather than relying on conclusory expert testimony.

Ground 2: Babayoff + Okamoto (or Xu) + Pulli

Adds Pulli (1997) for the "processor configured to associate the depth data with the color image data," and for the dependent claims requiring alignment in a two‑dimensional reference array / same frame of reference / conformal mapping.

• Motivation: Pulli is a doctoral dissertation dedicated to exactly this problem (surface reconstruction and display from range and color data); its raison d'être is registering color to range. Combining the Babayoff scanner with Pulli's registration technique is the application of a known technique to a known device ready for improvement, yielding a predictable, beneficial result (KSR).

Ground 3: Xu (US 5,912,735) in view of Babayoff

• What Xu supplies: a laser confocal microscope producing 3‑D data about a sample and a white‑light color system producing color information of the same sample — i.e., two separate depth and color mechanisms in one instrument.
• Motivation: the two systems in Xu are expressly described as capable of producing their images "simultaneously," which directly answers the "short time interval / no relative movement" concern the '519 uses to justify direct X‑Y mapping. Babayoff supplies the intraoral, telecentric, array‑based confocal architecture and the pinhole/detector processing.
• Risk (high): the ITC found Xu lacking (i) the "determining surface topology and associated color" association and (ii) sufficient simultaneity for a full 3‑D scan. Xu's own disclosure does not associate the color with the 3‑D map. This ground is therefore only viable when combined with a Pulli/Crampton‑type fusion teaching, or under a claim construction that does not import the "substantially fixed disposition" limitation into the '519's claim 1.

Ground 4: Babayoff + Decker + Crampton (mirrors the PTO's own family rejections)

• This is the combination the examiner actually used in the family: Babayoff (WO00/08415) + Decker (US 2002/0057438) + Crampton (US 2003/0231793) for the alignment procedure, and Babayoff + Decker + Dinev for the color‑filter‑wheel claims.
• Motivation: Crampton expressly describes a probe that captures 3‑D and color, finds the alignment transform between the color camera and the calibrated 3‑D measurement system, and maps the color onto the 3‑D model to texture it — a direct teaching of the "associate" limitation and of the frame‑of‑reference dependent claims.
• Critical obstacle (must be addressed head‑on): the '519 (like its siblings) was allowed specifically over Decker because "Decker does not disclose generating the depth data separate from the color data … Instead, Decker acquires all image data (color and depth) in a single snapshot." Under 3Shape's "independently obtained" construction, Decker's snapshot architecture does not read on "depth data." A Decker‑centred ground therefore must (a) rely on Babayoff, not Decker, for the depth data, using Decker only for the color sub‑system, and (b) rebut any argument that the prosecution‑history statement is a disclaimer binding on the '519 claims.

Ground 5: Franetzki (EP 0 837 659 B1) in view of Babayoff

• What Franetzki supplies: a dental 3‑D+color workflow — depth by optical intensity‑pattern measurement, then a 2‑D color image, which is superimposed on the 3‑D image. It thus discloses the concept of associating a separately acquired 2‑D color image with a 3‑D surface of teeth.
• Where the '519 spec "distinguishes" Franetzki: Franetzki requires (i) an opaque diffusely reflecting layer that must be removed, and (ii) manual re‑alignment of the camera so that the color image "more or less" corresponds to the 3‑D image.
• Motivation: the '519's stated problem is precisely that "the problem of conformally mapping the two dimensional color information onto the three dimensional surface model is difficult and it is common for mismatching … to occur," and that relative movement between acquisition of 3‑D and 2‑D data causes error. A POSITA reading Franetzki would be motivated to substitute Babayoff's non‑contact confocal scanner (no coating needed) and to place the color capture and the depth capture close in time on the same instrument — the ordinary engineering response to Franetzki's acknowledged shortcomings. This is a strong "known problem → known solution" combination.
• Risk: this ground most directly encounters the "independently obtained depth data" + "short time interval" story that the patentee used to distinguish the art; it must be argued under KSR (improving a known process by a known technique in the same field) rather than as anticipation.

Ground 6: dependent‑claim art (each individually obvious in combination with Grounds 1–5)

6. Motivation‑to‑combine: the real dispute, and how it cuts

Arguments for obviousness (strongest points):

1. The '519 specification concedes the whole landscape. It cites WO 00/08415 for the scanner, Franetzki and US 6,594,539 as known 3‑D+color approaches, and states that "any suitable technique may be used for providing the color image." A reference that adopts and incorporates another is powerful evidence of combinability.
2. The stated problem is the motivation. The '519's own background frames the invention as solving mismatching between 2‑D color and 3‑D points and relative movement between acquisitions. Okamoto states the same objective; Franetzki and Rohaly show the same goal was being pursued. Where the references teach the problem the patentee claims to solve, the motivation is supplied by the art itself.
3. KSR predictability. Two mature, off‑the‑shelf sub‑systems (confocal depth scanner; CCD color camera) each functioning as known, combined with a known fusion technique (Pulli/Crampton), producing the expected color‑textured 3‑D model.
4. The allowance rested on a narrow, arguable distinction — Decker's "single snapshot" — suggesting that but for that one architecture, the claims were considered obvious over the art of record.

Arguments against obviousness (the patentee's playbook, and it has worked once):

1. The ITC found no motivation to combine Babayoff WIPO + Yoichi (ALJ Initial Determination, Inv. No. 337‑TA‑1091) and found Xu insufficient. That is a real evidentiary record a patentee will re‑use.
2. Prosecution‑history disclaimer. 3Shape's construction position — "depth data" must be obtained independently of the color data, and "imaging system" must use colored illumination (excluding a single‑color source) — is expressly grounded in the patentee's statements during prosecution of the parent '829 and of application 15/175,267 (the direct parent of the '519). If adopted, it (a) removes any single‑sensor/single‑snapshot art (Decker, and much structured‑light art) and (b) narrows the color element.
3. Long‑felt need / industry adoption (Align's iTero, 3Shape's TRIOS) as potential secondary considerations — though the ITC record shows 3Shape's own architecture (single mechanism capturing color+depth in one 2‑D image) as an independent development path, which the patentee may argue is evidence of non‑obviousness and which 3Shape may argue shows the claims read on the prior art.

Net assessment. On the art as it stands, prima facie obviousness of claims 1, 13 and 24 appears substantial but not clean: the disclosures are all present, and the motivation is articulable under KSR (same field, same problem, express purposes in Okamoto, and the patentee's own admissions/incorporation). The decisive variables are (i) whether the "independently obtained" disclaimer binds the '519 claims, and (ii) whether a petitioner can articulate a motivation to combine that is stronger than the one the ITC rejected. A Decker‑centred theory is the weakest; a Babayoff + Okamoto + Pulli theory, or Babayoff + Decker + Crampton, is the strongest.

7. Explicit uncertainty flags

1. Verbatim claim 1/13/24 text remains unverified. My element list in § 4 is reconstructed from the litigated claim terms (D.I. 120‑1, 126) and the specification; it is not a quotation of the granted claims. Confirm before relying on it — in particular, whether the '519's independent claims include an express "spatial disposition substantially fixed" or "time interval" limitation. (That language appears in the sibling '538 patent's claim 1, and its presence or absence in the '519 materially changes the strength of the Xu and Okamoto grounds.)
2. Statutory qualification dates for US 2004/0107080 (Deichmann), US 2004/0197727 (Sachdeva), US 2005/0088529 (Geng), US 2003/0231793 (Crampton) and US 6,788,338 (Dinev) need verification against their actual filing/publication dates relative to the June 17, 2004 priority. Several may be § 102(e)‑only art, which cannot be combined with each other under pre‑AIA § 103(c)‑style practice in the same way (and § 102(e) art is subject to the common‑ownership proviso if commonly owned with the '519).
3. Claim‑21 dependency (dependent on claim 11 vs. independent) remains unresolved; the sibling '538 evidence suggests dependent.
4. No merits ruling exists on the '519's validity — IPR2021‑01383 was terminated pre‑institution by settlement (Paper 19, Feb. 25, 2022; refund approved Feb. 28, 2022). Any inference from the settlement that either party viewed the claims as strong or weak is speculation.
5. The "Prior Art" section of the Google Patents page was not present in the supplied text. The reference set above is drawn from the specification's own citations/incorporations, the IPR2021‑01383 exhibit list, the ITC record and the family's file histories. If the page's "References Cited" list contains additional references (e.g., US 6,554,611, which surfaced on a PubChem patent record for this number), they should be layered in — I could not verify that citation and therefore do not rely on it.

Sources cited

• US 10,728,519 B2 full text / Google Patents record (supra) — Abstract, Description, continuity, anticipated expiration 2025‑06‑17.
• IPR2021‑01383, Petitioner's Exhibit List 2 (3Shape A/S & 3Shape Inc. v. Align Technology, Inc.), 2021‑09‑22 — prior‑art exhibits 1005–1014 — https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2021-01383/3Shape_A-S_v._Align_Technology_Inc/docs/09-22-2021-Petitioner/Other_Not_for_motions-9-Petitioners_Exhibit_List_2.pdf
• IPR2021‑01383, Decision on Settlement Prior to Institution, Paper 19 (Feb. 25, 2022) — https://www.docketalarm.com/cases/PTAB/IPR2021-01383/3Shape_A-S_v._Align_Technology_Inc/docs/02-25-2022-Board/Termination_Decision__Pre_DI_settlement-19-DECISION_Settlement_Prior_to_Institution...
• Align Technology, Inc. v. 3Shape A/S, No. 6:20‑cv‑00979‑ADA (W.D. Tex.), D.I. 120, 120‑1, 126 (claim‑construction briefing listing '519 claim terms) — https://storage.courtlistener.com/recap/gov.uscourts.txwd.[1111294](/patent/1111294)/gov.uscourts.txwd.1111294.126.0.pdf ; https://dn721909.ca.archive.org/0/items/gov.uscourts.txwd.1111294/gov.uscourts.txwd.1111294.120.1.pdf
• Inv. No. 337‑TA‑1091, ALJ Initial Determination (Okamoto, Xu, "Babayoff WIPO + Yoichi" obviousness findings) — https://www.docketalarm.com/cases/PTAB/IPR2020-00173/...Exhibit-2001-71-EX2001___Investigation_No_337_TA_1091,_Initial_Determination.pdf
• USITC Pub. 5300, Certain Dental and Orthodontic Scanners and Software, Inv. No. 337‑TA‑1144 (Okamoto anticipation of '538 claims; Commission review) — https://www.usitc.gov/publications/337/pub5300.pdf
• Family file history excerpt showing examiner rejections over Babayoff (WO00/08415) + Decker (US 2002/0057438) + Crampton (US 2003/0231793) and + Dinev (US 6,788,338) under pre‑AIA § 103(a) — https://www.docketalarm.com/cases/PTAB/IPR2021-01120/3Shape_A-S/docs/06-24-2021-Petitioner/Exhibit-1004-7-EX1004_US16791994_151_File_History_Part4_0879_1389.pdf