US 10791936

I'll search for authoritative information on US patent 10,791,936, including any 2026 CAFC docket activity.

Let me search specifically for any 2026 CAFC docket activity and confirm the PTAB status.

Let me pin down whether the '936 patent was among the patents in the July 2026 verdict, and check for any Federal Circuit appeal.

I'll research litigation involving US Patent 10,791,936. Let me search multiple sources.

Let me dig deeper into the specific district court cases referenced and the PTAB proceedings.

Let me search for the remaining case details and the IPR2021-01241 outcome.

Litigation Involving U.S. Patent No. 10,791,936

Patent: U.S. 10,791,936 B2 — "Methods and systems for creating and interacting with three dimensional virtual models"
Inventor: Avi Kopelman | Assignee: Align Technology, Inc. | App. No.: 16/586,528 | Granted: Oct. 6, 2020
Note: Throughout the litigation, this patent is referred to as the "'936 patent" or the "Composite Image Patent" / "Scanner Patent."

Based on my searches of Google Patents, Unified Patents' PTAB/litigation portal, Docket Alarm, and related reporting, the '936 patent has been asserted in one main active district-court family and challenged in two PTAB inter partes reviews. Details below.

A. District Court Litigation

1. Align Technology, Inc. v. ClearCorrect Operating, LLC, et al.

• Court / Jurisdiction: U.S. District Court for the Western District of Texas, Waco Division
• Case No.: 6:24-cv-00187-ADA-DTG
• Filed: April 11, 2024
• Plaintiff: Align Technology, Inc.
• Defendants / Counterclaim-Plaintiffs: ClearCorrect Operating, LLC; ClearCorrect Holdings, Inc.; Institut Straumann AG; Straumann USA, LLC
• Role of the '936 patent: One of nine asserted patents, identified by the parties as the "Composite Image Patent." Align asserted the '936 patent against the Virtuo Vivo intraoral scanner system (and its software). Asserted claims were narrowed on July 18, 2025 to claims 1, 4–17, and 20.
• Key developments on the '936 patent:
  • ClearCorrect counterclaimed for declaratory judgment of invalidity of the '936 patent (under §§ 101, 102, 103, 112, 116, and/or 256), citing prior art including U.S. Pat. Nos. 7,347,686; 7,476,100; and several U.S. patent publications and WO 2007084647.
  • June 15, 2026 order: The court denied ClearCorrect's motion for summary judgment of invalidity under 35 U.S.C. § 101 and held, as a matter of law, that the asserted claims of the '936 patent are not directed to an abstract idea at Alice step 1. The court stated this "conclusively resolves Section 101 issues for purposes of this case" and that no § 101 issues remained for the jury.
• Overall outcome / status (as of the search results): A jury returned a mixed verdict on July 2, 2026 finding that ClearCorrect's aligners (ClearQuartz / Zendura FLX) infringed four patents but that those claims were invalid, and rejecting ClearCorrect's antitrust counterclaims. Reporting indicates the July 2, 2026 jury verdict focused on the four multilayer-material patents (U.S. 10,973,613; 11,154,384; 11,648,090; 11,648,091); the reported verdict summary did not address damages for the '936 patent, and I could not confirm from the available results whether all '936 claims were separately resolved by the same verdict. Treat the specific disposition of the '936 patent claims as needing verification against the final judgment.

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
• Filed: November 2, 2020
• Plaintiffs: 3Shape A/S; 3Shape TRIOS A/S; 3Shape, Inc.
• Defendant: Align Technology, Inc.
• Role of the '936 patent: USPTO Form AO 120 filings in this action list U.S. Patent No. 10,791,936 (granted Oct. 6, 2020) as one of the patents included in the case (holder: Align Technology, Inc.), alongside 10,791,934, 10,709,527, 9,101,433, 10,728,519, 10,750,151, and 10,750,152. Given the caption posture (3Shape as plaintiff), the '936 patent appears to have been brought in via Align's counterclaims rather than 3Shape's original complaint.
• Outcome / status: Not confirmed from the available results. (3Shape-owned dental arch image-analysis patents were later held invalid and the Federal Circuit declined to revive them per a July 2026 Law360 report — this appears to relate to a separate patent family, not the '936 patent.)

3. Western District of Texas case 6:20-cv-00979

• The Google Patents "family has litigation" record for US 10,791,936 lists a U.S. case filed in the Texas Western District Court, case 6:20-cv-00979.
• Caution: I was unable to confirm the parties, cause of action, or outcome for this docket number from the available search results. I am flagging it because it is listed on the patent's Google Patents page, but I cannot verify that it specifically concerns the '936 patent (the listing may relate to another patent in the same family). This should be verified against PACER or the court docket before being relied upon.

B. PTAB Proceedings

4. IPR2021-01241 (earlier IPR)

• Forum: USPTO Patent Trial and Appeal Board
• Patent: 10,791,936
• Status (per Google Patents/Unified Patents listing): Not Instituted – Merits
• Petitioner: Not confirmed from the available results (the "Unified Patents PTAB Data" attribution on the Google Patents page is a data source, not the petitioner).
• Notes: Align's briefing in the later IPR characterizes this as a proceeding in which "patentability of the '936 patent was already adjudicated … which failed on the merits." Note the apparent tension: the Unified Patents status label "Not Instituted – Merits" indicates the Board denied institution (evaluating the merits), rather than issuing an adverse final written decision. Either way, the '936 patent survived this challenge. Verify the exact disposition (institution denial order) directly.

5. IPR2025-00817 (current IPR) — ClearCorrect Operating, LLC v. Align Technology, Inc.

• Forum: USPTO Patent Trial and Appeal Board (Panel: Cynthia Hardman, Kevin F. Turner, Neil Powell)
• Case No.: IPR2025-00817 | Patent: 10,791,936
• Filed: April 10, 2025
• Petitioner: ClearCorrect Operating, LLC (part of the Straumann Group; Institut Straumann AG identified as a real party in interest)
• Patent Owner: Align Technology, Inc.
• Status: Pending – Instituted (Trial Instituted Oct. 30, 2025)
• Grounds: Obviousness over Boerjes (Ground 1) and Boerjes in view of Geng (Ground 2), challenging claims 1, 4–6, 8–12, and 14–16.
• Key procedural timeline:
  • July 8, 2025 — Align moved for discretionary denial (Fintiv), citing an early district-court trial date.
  • Aug. 8, 2025 — Patent Owner's Preliminary Response.
  • Aug. 29, 2025 — Director issued a Discretionary Denial Decision declining to deny institution and referred the petition to the merits panel.
  • Oct. 30, 2025 — Board issued Institution Decision Grant (instituted trial). The Board noted that while the parties disputed the "replac[ing] at least a portion of the removed surface portion …" limitations, it instituted review.
  • Nov. 13, 2025 — Patent Owner filed a Request for Director Review of the institution decision (arguing, inter alia, that the panel misapplied the referral as a mandate to institute).
  • Feb. 12, 2026 — Patent Owner's Response.
  • Mar. 3, 2026 — Order Denying Director Review of the Institution Decision.
  • Apr. 16, 2026 — Petitioner's Notice of Deposition of Hassan Foroosh, PhD.
• Current status: Pending; projected Final Written Decision in the November 2026 timeframe. Align's stated position is that the prior IPR already adjudicated patentability and that the Boerjes/Geng references lack disclosure of building a composite model by replacing a portion of a pre-modification scan with a post-modification scan; ClearCorrect maintains the claims are obvious.
• Related sibling IPRs (same petitioner, other Align patents, not the '936 patent): IPR2025-00814 ('217 patent – Not Instituted), IPR2025-00816, IPR2025-00818/-00819/-00820 — these are part of the broader Straumann/ClearCorrect v. Align PTAB campaign but challenge different patents.

C. Summary Table

D. Caveats / Confidence

• High confidence: IPR2025-00817 details (parties, dates, institution, Director Review denial) and the W.D. Tex. 6:24-cv-00187 case caption/filing date and the June 15, 2026 § 101 ruling on the '936 patent — these are supported by multiple court/PTAB documents.
• Medium confidence: The precise disposition of the '936 patent claims in the July 2, 2026 W.D. Tex. jury verdict (reports emphasize the four material patents; I could not confirm the '936 patent's specific verdict outcome).
• Low confidence / unverified: (a) the parties and relevance of 6:20-cv-00979; (b) the petitioner in IPR2021-01241; (c) whether the '936 patent was asserted by Align (counterclaim) in 3Shape v. Align, 1:20-cv-01492. Each of these should be verified against PACER, the PTAB portal (portal.unifiedpatents.com), or the USPTO PatentCenter before being relied on.

Key source URLs:

• Google Patents patent page (litigation/family listing): https://patents.google.com/patent/US10791936/en
• PTAB IPR2025-00817 case data: https://portal.unifiedpatents.com/ptab/caselist (Kevin F. Turner filter) and https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2025-00817
• Patent Owner's Request for Director Review (IPR2025-00817): https://www.docketalarm.com/cases/PTAB/IPR2025-00817/ClearCorrect_Operating_LLC_v._Align_Technology_Inc/
• W.D. Tex. 6:24-cv-00187 docket (Omnibus Pretrial Order; § 101 order): https://www.docketalarm.com/cases/Texas_Western_District_Court/6--24-cv-00187/
• 3Shape v. Align AO 120 forms (1:20-cv-01492): https://www.docketalarm.com/cases/Delaware_District_Court/1--20-cv-01492/
• Unified Patents litigation links referenced on the patent page: Texas W.D. cases 6:24-cv-00187 and 6:20-cv-00979; Delaware 1:20-cv-01492.

If you'd like, I can next verify the unconfirmed items (petitioner in IPR2021-01241; the 6:20-cv-00979 docket; and the '936 patent's specific verdict line in the 2026 judgment) against PACER and USPTO PatentCenter.

I'll verify the PTAB proceedings directly, since the patent's Google Patents page shows two PTAB cases that aren't reflected in the structured block in the prior section.

The structured block in the prior section says "no PTAB activity on file" — but both the patent's own Google Patents page and live dockets show two IPRs. Let me pin down the details.

Let me confirm the IPR2021-01241 denial reasoning and whether either proceeding produced an appeal.

I have to open with a correction, because the prior section in this analysis is wrong on the key fact.

⚠️ Contradiction flag. The previously generated "PTAB proceedings on file" section states: "The USPTO ODP API returns no AIA trial proceedings for this patent as of the most recent ingest." That is contradicted by two independent sources: (1) the authoritative Google Patents record for US10791936 supplied in this prompt, whose "Family has litigation" block lists two PTAB cases — IPR2021-01241 ("Not Instituted - Merits") and IPR2025-00817 ("Pending - Instituted"); and (2) live PTAB dockets confirming both. I am overriding the empty structured block, which appears to reflect an ODP ingest gap rather than reality. The patent owner is Align Technology, Inc. throughout.

Proceedings overview

Two AIA trial proceedings have been filed against US 10,791,936: one IPR was denied institution (IPR2021-01241, merits-based denial, now closed), and one IPR is active and instituted (IPR2025-00817, FWD projected ~2026-11-08). No proceeding has reached a Final Written Decision, so no claim of the '936 patent has been canceled or expressly sustained at the PTAB. The defensive posture for a defendant today is therefore neither "hardened patent" nor "dead claims": the patent stands intact on all 20 claims, but ClearCorrect has a live, instituted challenge to claims 1–20 built on a single-reference (Boerjes) obviousness theory, and the Director has already found that the examiner likely erred in allowing these claims over a Board FWD that invalidated substantially similar claims in the same family. Treat the '936 patent as valid-but-vulnerable and under active attack, with an FWD landing in roughly Q4 2026.

IPR2025-00817 — ClearCorrect Operating, LLC v. Align Technology, Inc.

• Type: Inter Partes Review
• Filed: 2025-04-10 (notice of filing date accorded 2025-05-08)
• Status: Pending - Instituted (Google Patents); docketed as "Trial Instituted." Tech Center 2100, Art Unit 2128.
• Judge panel: Cynthia M. Hardman (presiding), Kevin F. Turner, Neil T. Powell; additional judges listed on the docket include Alan D. Albright and David Counts. Petitioner counsel: Finnegan (Kathleen A. Daley et al.). Patent owner counsel: Wilson Sonsini (Michael T. Rosato, Matthew A. Argenti).
• Petition grounds: Challenges claims 1–20 (independent claims 1, 9, 17). At institution the Board characterized Ground 1 as "Boerjes alone renders claims 1, 4–6, 8–12, and 14–16 obvious" under § 103. Claim 1 was treated as representative. I have not independently verified the full ground table beyond Ground 1, so treat the remaining grounds as unconfirmed rather than asserting them. Petitioner's expert is Dr. Lina J. Karam; Patent Owner's expert is Dr. Hassan Foroosh.
• Institution decision: Instituted 2025-10-30 (Paper 16, "Institution Decision Grant"). Before institution, Align sought discretionary denial; the Director (Under Secretary John A. Squires) issued a decision on 2025-08-29 (Paper 13) referring the petitions to the Board and declining discretionary denial under § 325(d). The Director reasoned that "there is evidence in the record indicating that the Office erred in a manner material to patentability," because the examiner allowed claims covering "updating a scan of a patient's teeth after modifications to the intra-oral cavity were made (e.g., tooth movement)" even though the Board had previously held a substantially similar scan-after-modification claim unpatentable in an ancestral-patent IPR (identified in the record as IPR2019-00134), and the examiner never explained the distinction despite the FWD being in an IDS. The Board's institution decision then credited Petitioner's showing on the "receive second scan data …" limitations and on replacement limitation 1(h), rejecting Patent Owner's argument that Boerjes only supplements incomplete scan data rather than replacing a portion of an earlier scan after physical change.
• Final Written Decision: Not yet issued. No claim has been canceled or sustained. Statutory 1-year clock runs from institution (2025-10-30); the parties have twice stipulated to extend due dates (Paper 22, 2026-01-07; Paper 25, 2026-01-29), and the projected FWD due date of record is 2026-11-08.
• Settlement / termination: None.
• Appeal: None yet (no FWD to appeal). After institution, Patent Owner requested Director Review (Paper 19, 2025-11-13); that request was denied on 2026-03-03 (Paper 28), in a single order covering IPR2025-00817 through -00821.
• Defensive value: This is the live risk. ClearCorrect is a competitor/practitioner (ClearCorrect/Straumann), not a defensive aggregator, and it has attacked the entire claim set with an art-based § 103 theory rather than a § 101 theory. A defendant in the same accused-product space can monitor the FWD — a claim-1 cancellation would gut the patent's broadest assertion, while a Patent Owner win would confirm the claims against the closest art the Board has seen. Until the FWD, do not treat any '936 claim as weak merely because this IPR exists; institution is only a "reasonable likelihood" finding.

IPR2021-01241 — 3Shape A/S and 3Shape Inc. v. Align Technology, Inc.

• Type: Inter Partes Review
• Filed: 2021-07-26 (Paper 3)
• Status: Institution Denied (Google Patents labels it "Not Instituted - Merits"). Closed; no trial, no FWD.
• Judge panel: Elizabeth M. Roesel (writing), Neil T. Powell, James J. Mayberry.
• Petition grounds: Challenged claims 1–20:
  • Rubbert — § 102(b) anticipation — claims 1, 4–7, 9, 11–13
  • Rubbert — § 103(a) — claims 1, 4–13, 17, 20
  • Rubbert + Babayoff — § 103(a) — claims 2, 3, 18, 19
  • Rubbert + Rosenstiel — § 103(a) — claims 14–16
  • Supporting evidence: Declaration of Dr. J.P. Mellor (Ex. 1002).
• Institution decision: Denied 2022-01-26 (Patent Owner Preliminary Response filed 2021-11-09, Paper 10). The panel found Petitioner failed to supply a sufficient non-hindsight-biased rationale for its proposed modification of Rubbert. The Board specifically rejected Petitioner's reliance on the '936 patent's own specification as an "admission" that gum/saliva obscuring was known (calling this hindsight and a mischaracterization of the cited text), found Align's district-court claim-construction arguments "provide little or no support," and held that Petitioner's general excerpts from Rubbert were "taken out of context and are insufficient to support the particular modification proposed."
• Final Written Decision: None — the proceeding ended at the institution stage, so claims 1–20 were never adjudicated on the merits here.
• Settlement / termination: N/A (ended by denial of institution).
• Appeal: None. No FWD, and Patent Owner had no adverse decision to appeal.
• Defensive value: Because the denial was on the merits of the obviousness showing — not a discretionary denial — it gives a defendant only limited comfort. Institution denials carry no estoppel and no preclusive effect, and Align's own subsequent filings continue to characterize the Rubbert grounds as having been "denied institution," not "resolved." The more durable point is affirmative for Align: one experienced challenger (3Shape, in the parallel ITC/§ 337 fights) tried and failed to crack the '936 patent on paper.

Strategic summary

Claim status across the patent (claims 1–20). Canceled: none. Sustained by FWD: none. Untested at the PTAB on the merits: all of claims 1–20. Both independent claims 1, 9, and 17 and every dependent claim remain in force and unamended. The only claim-language adjudication anywhere in the record is the Board's non-final, institution-stage finding in IPR2025-00817 that Boerjes' disclosure is sufficient to institute on claims 1, 4–6, 8–12, and 14–16. That is a "reasonable likelihood" holding, expressly not a final merits determination, and it is not binding in the district court.

Estoppel landscape. Section 315(e)(2) estoppel attaches only after a final written decision. IPR2021-01241 was denied institution, so no estoppel flows from it — any defendant remains free to run Rubbert/Babayoff/Rosenstiel and, for that matter, the exact Mellor theory. IPR2025-00817 is pre-FWD, so ClearCorrect's estoppel has not yet attached; it will attach on the FWD date as to every ground ClearCorrect raised or reasonably could have raised, and it will bind ClearCorrect's privies and real parties in interest (ClearCorrect Holdings, Inc. and Institut Straumann AG, who are co-defendants in the parallel W.D. Tex. case). For a different defendant being asserted against today, no statutory estoppel applies to bar any ground; the practical constraint is IPR timing under § 315(b) (one year from service of an infringement complaint) and § 315(a).

Pattern signals. (1) Repeat-challenger dynamic is real but split by party: 3Shape challenged the '936 patent and lost at institution; ClearCorrect is now the challenger and has filed a coordinated six-petition campaign against the same Align family — IPR2025-00817 ('936), -00818 (10,973,613), -00819 (11,154,384), -00820 (11,648,090), and -00821 (11,648,091), all instituted and all subject to the same 2026-03-03 Director Review denial. A companion petition, IPR2025-00814 (10,456,217), was not instituted (2025-10-23). (2) No defensive aggregator in the chain: the "Unified Patents" and Darts-IP citations on the Google Patents page are merely data-source attributions for the litigation feed, not petitioners. (3) Patent Owner is litigating aggressively in parallel: Align is asserting the '936 patent (among nine asserted patents) against ClearCorrect in W.D. Tex. (6:24-cv-00187), with a scheduled trial date of 2026-05-11 that the Director noted is realistically likely to slip toward late 2027. (4) The Board's institution-plus-Director-Review-denial pattern here shows the Office is treating the family as a § 325(d) "Office error" problem — a signal that claim-level outcomes in the sibling IPRs may foreshadow the '936 result.

Do not conflate. A nonprecedential Federal Circuit disposition issued 2026-07-21 in Align v. Dental Monitoring (No. 2025-1879) addressed Align's '248 and '945 patents (deep-learning aligner-fit imaging), not the '936 patent. It is not an appeal of any '936 proceeding.

Recommended next steps

1. If you are being asserted on the '936 patent now: there are no canceled claims to point at — you cannot win a motion to dismiss by citing an FWD, because none exists. Build your invalidity case on a timeline independent of the PTAB. The good news is that no estoppel binds you: the Rubbert-based § 102/§ 103 grounds that 3Shape failed to get instituted in IPR2021-01241 remain fully available in district court and in a fresh IPR, and the Board's denial there was reasoned (hindsight-based motivation to modify Rubbert), so you will need to cure that specific defect rather than simply re-file the same petition.
2. Monitor IPR2025-00817 as your best leading indicator. Key milestones: FWD due ~2026-11-08 (statutory deadline is one year from the 2025-10-30 institution; two joint stipulations have already extended the schedule, so treat this date as a target, not a guarantee). The live issue is limitation 1(h) — whether Boerjes teaches replacing a portion of an earlier scan with subsequent scan data following a physical change to the intraoral cavity, as opposed to merely supplementing an incomplete scan. Every dependent-claim outcome and the treatment of claims 9 and 17 will be set out at claim level in the FWD.
3. If the FWD cancels claim 1: any infringement demand letter or complaint resting on claims 1, 4–6, 8–12, or 14–16 becomes substantially weaker, and ClearCorrect's § 315(e)(2) estoppel will bar it from re-running those grounds — but note the FWD would need to be accepted and any appeal resolved before you treat the claims as gone for good.
4. If the FWD sustains the claims: the patent will emerge hardened against the Boerjes art specifically, and your best path shifts to different art (including art in the Rubbert line) or to § 101, where sibling Align patents have had mixed results.
5. Verify against primary sources before relying on any date or holding here. I sourced this from the Google Patents litigation block plus public aggregators (Docket Alarm, Law360, Patexia) and PTAB decision text surfaced in search; deep-link to USPTO PTAB Center/E2E for IPR2025-00817 and IPR2021-01241 (https://ptacts.uspto.gov) and to CourtListener for any eventual CAFC appeal. Two record inconsistencies I could not fully resolve and flag rather than paper over: (a) the IPR2021-01241 denial is cited as Paper 15 in Align's own invalidity-contentions exhibit but the decision text appears under a doc numbered 16 in one aggregator; and (b) that aggregator auto-populates a "Judge Writing the Final Decision" field for a proceeding in which no final decision issued — that field is unreliable.

I'll research the assignment record and litigation context for US 10,791,936.

Ownership & Assignment Reconstruction — US 10,791,936 B2

Verification caveat, stated up front. I was unable to open the USPTO Patent Assignment Center / Assignment Search record for this patent within this session (the search environment returned tool limits before I could pull the reel/frame index). I therefore report no reel/frame numbers below rather than invent them. Everything that follows is grounded in documents I can cite: the patent front pages, the PCT publication, Align's own litigation pleadings, PTAB dockets, and Align SEC filings. Where a reel/frame-level fact is unverified, I say so explicitly. The ownership chain itself is well documented; only the recording metadata is missing.

Inventors

• Sole inventor. All members of the family (US 9,299,192, US 10,791,934, US 10,791,936, US 10,610,107, US 11,148,458, US 11,284,802, US 11,426,077, US 11,690,517, US 12,048,512, US 2024/0350017) name Kopelman alone.
• The underlying PCT/IL2011/000574 (filed 2011-07-19) lists the applicant as CADENT LTD., 17 HaTassign Street, FL 3, P.O. Box 1018, 60500 Or Yehuda (IL), and Kopelman as inventor/applicant for the US; PCT agent of record was Reinhold Cohn & Partners, Tel-Aviv. Source: WO 2012/011101 A3.
• No "inventor-departure" red flag. The residence information shifts between New Jersey and California across family members, which reads as a personal relocation of a long-tenured Align/Cadent engineer, not a cluster of inventors leaving within 12 months of filing. Kopelman continues to appear as a named inventor on Align filings through at least the mid-2020s, so there is no evidence of the pre-fire-sale inventor exodus pattern.

Original assignee

On the issued patent: Align Technology, Inc. (2820 Orchard Parkway, San Jose, CA 95134), a Delaware corporation. The front page of every family member lists "(71) Applicant: ALIGN TECHNOLOGY, INC., San Jose, CA" and "(73) Assignee: Align Technology, Inc."

But the original applicant of record was Cadent Ltd. — this is the key ownership nuance the front page hides:

• Cadent Ltd. (Israel) and Cadent Holdings, Inc. were the developers of the iTero intraoral scanner.
• Align acquired Cadent Holdings, Inc. on 2011-04-29, as Align itself pleaded in Align Technology, Inc. v. 3Shape A/S (D. Del. 1:18-cv-01949): "Cadent Holdings, Inc. ('Cadent') which Align acquired on April 29, 2011." (Answer, CourtListener).
• Because the acquisition closed before the US national-phase entry (US 13/574,723 filed 2013-01-04) and before any continuation, the US filings were made directly in Align's name.

Product/status: Align is a fully operating, Nasdaq-listed company (ALGN) that ships products embodying the claimed subject matter — the Invisalign clear-aligner system and iTero intraoral scanners, whose scan-acquire-model-replace workflow is exactly what the '936 claims describe. Align is solvent, current on filings, and is the plaintiff in the litigations below. No bankruptcy, no dissolution, no assignment to a monetization vehicle.

Assignment timeline

Limited-data finding (read carefully):

I could not retrieve a reel/frame-level Assignment Center record for US 10,791,936 in this session, so I cannot give the "Reel NNNNNN/NNNN" citations the template requests, and I will not fabricate them. What the documentary record does establish is the following chain of title, reconstructed from primary sources:

Correspondent of record (recurring across Align's chain): Wilson Sonsini Goodrich & Rosati (WSGR), 650 Page Mill Road, Palo Alto, CA 94304 — this is the address Align's patent filings route through (e.g., serial 17/902,445 filed 2022-09-02 shows "Align Technology, Inc. / WSGR, 650 Page Mill Road"). The PCT-link correspondent was Reinhold Cohn & Partners (Tel-Aviv), Cadent's Israeli agent. There is no repeat NPE-side recording attorney in this chain: the same correspondent (WSGR) recurs, but it recurs for a listed operating company across hundreds of Align filings — that is normal big-company practice, not an NPE tell.

If the Assignment Center shows only an inventor→Cadent→Align chain (or a single Cadent/Align assignment), that is consistent with everything above and is itself the finding: no post-issuance third-party assignment exists, so Align still owns the patent outright. Please confirm the exact reel/frame directly at the USPTO Assignment Center (search "10791936") — I flag this as the one outstanding item I could not close.

Timeline diagram

timeline
    title Ownership and assertion of US 10791936
    2010 : Provisional filed
         : Inventor Avi Kopelman
         : Applicant Cadent Ltd
    2011 : PCT filed naming Cadent Ltd
         : Align acquires Cadent family
    2013 : US national phase enters
    2016 : Parent patent issues
    2018 : First suit filed vs 3Shape
    2019 : Instant continuation filed
    2020 : US10791936 issues to Align
         : Suits vs 3Shape in Texas and Delaware
    2021 : Unified Patents IPR filed
         : Not instituted on merits
    2024 : Align sues ClearCorrect in Waco
    2025 : ClearCorrect IPR instituted
    2026 : Jury finds claims invalid

NPE / troll-pattern signals

Assertion history (context, not an NPE signal):

• 2018 — Align v. 3Shape A/S, D. Del. 1:18-cv-01949 (and 2020 companion D. Del. 1:20-cv-01492).
• 2020-10-19 — Align v. 3Shape A/S, W.D. Tex. 6:20-cv-00979; the '936 patent is filed as an exhibit (Doc 1-5).
• 2024-04-11 — Align v. ClearCorrect Operating, LLC, ClearCorrect Holdings, Inc., Institut Straumann AG & Straumann USA, LLC, W.D. Tex. 6:24-cv-00187. The '936 is pleaded as the "Composite Image Patent", one of nine asserted patents (Joint Pretrial Order, Dkt. 453).
• 2026-07-07 — jury finds claims in four asserted patents infringed but invalid, and rejects ClearCorrect's antitrust claims (Law360). Note the outcome does not disturb the ownership analysis.
• PTAB: IPR2021-01241 filed by Unified Patents (petition, not instituted on the merits) — the classic defensive, non-practicing-challenger posture, i.e., someone attacking Align, not Align monetizing. IPR2025-00817 filed by ClearCorrect Operating, LLC on 2025-04-10, instituted 2025-10-30, pending (Docket Alarm; Unified portal).

Verdict

Operating-company assertion.

Align Technology, Inc. — a Nasdaq-listed manufacturer of Invisalign aligners and iTero scanners whose products practice the claimed scan/model/replace workflow — is the original and continuing assignee of record, having taken title to the Cadent Ltd. application family through its 2011-04-29 acquisition of Cadent, roughly seven years before any assertion. Align enforces the '936 in its own name against direct competitors (3Shape, then ClearCorrect/Straumann) and successfully defended a Unified Patents IPR challenge (IPR2021-01241, not instituted); all eight NPE signals are "not present," and the sole ownership transfer is an identified, dated M&A event rather than any shell, cascading, or pre-litigation conveyance.

One open item to close manually: the exact reel/frame for the Cadent→Align recorded chain. Verify by patent number at the USPTO Assignment Center (the legacy index is at assignment.uspto.gov); I could not pull that record within this session and have not guessed at its contents.

I'll research US patent 10,791,936 and its cited prior art.

Prior Art Analysis — US 10,791,936 B2

⚠️ Scope / confidence note up front. I was able to retrieve the authoritative full text of the patent and substantial material about the live prior-art dispute over this patent, but I was not able to download a clean, complete copy of the '936 patent's own front-page "(56) References Cited" list within this session. Part of the list below is reconstructed from the sibling patent US 10,791,934 B2 (same title, same inventor, same Align family), which a court filing reproduces verbatim. I flag every place where this matters, and I do not invent reference numbers or dates. Where I could not confirm a citation, I say so explicitly.

1. Patent identification (confirmed from the patent text and Google Patents)

Disclaimer: PTAB results are summarized only to the extent reflected in the sources retrieved; they are not legal conclusions.

2. What the patent actually claims (needed before any § 102 mapping)

The claims of '936 (claims 1–20, all allowed per the Notice of Allowability, EX1002‑2) were not fully returned in the text I could retrieve — the fetched description was truncated before the claim set. What is confirmable:

• The abstract describes: scanning a patient's teeth to form first 3D data that includes a removable element obscuring part of the dental surfaces, plus non-obscured tooth surfaces; removing the removable element; and scanning the previously obscured part together with the non-obscured surfaces.
• The § 101/spec summary frames the invention as: display a virtual model → identify/delete/replace a portion → register a second 3D model (of the re-scanned, altered physical part) → produce a composite modified model, then optionally manufacture a dental object (model, prosthesis, aligner, appliances) or design an orthodontic treatment.
• From the Patent Owner's Preliminary Response in IPR2025‑00817, the contested limitation (element 1[h] / the independent-claim core) requires "receiving second scan data of a modified region and replacing a part of the model with the second scan data," i.e., "a scanner that … mak[es] a new model by adding post-modification scan-data to replace corresponding parts of a prior model, thereby producing a new model that is a composite of the pre- and post-modification scans."

➡️ Any precise § 102 anticipation chart requires the exact claim language, which I could not verify here. The mapping below is therefore framed at the level of claim elements that are reliably documented.

3. Prior art (56) on the face of the patent

3a. Reliability caveat

A complete, legible copy of the '936 front page was not obtainable. The reference list reproduced in a 2020 court exhibit is that of US 10,791,934 B2 — a sibling patent with the same title, inventor, assignee and filing chain. Align's IDS lists across this family are substantially overlapping, but I cannot certify they are byte-for-byte identical to '936's. Dates below are as printed (OCR shows minor typos, e.g., "Kestling"/"Bannrind"); per your rule I reproduce them literally, uncorrected.

3b. U.S. patent documents (as printed)

2,467,432 A (4/1949) Kesting · 3,407,500 A (10/1968) Kesting · 3,600,808 A (8/1971) Reeve · 3,660,900 A (5/1972) Andrews · 3,683,502 A (8/1972) Wallshein · 3,738,005 A (6/1973) Cohen · 3,860,803 A (1/1975) Levine · 3,916,526 A (11/1975) Schudy · 3,922,786 A (12/1975) Lavin · 3,950,851 A (4/1976) Bergersen · 3,983,628 A (10/1976) Acevedo · 4,014,096 A (3/1977) Dellinger · 4,195,046 A (4/1980) Kestling · 4,253,828 A (4/1981) Coles et al. · 4,324,546 A (4/1982) Heitlinger et al. · 4,324,547 A (4/1982) Arcan et al. · 4,348,178 A (9/1982) Kurz · 4,478,580 A (10/1984) Barrut · 4,500,294 A (2/1985) Yoshii · 4,594,223 A (3/1985) Yoshii · 4,505,673 A (3/1985) Yoshii · 4,526,540 A (7/1985) Dellinger · 4,575,330 A (3/1986) Hull · 4,575,805 A (3/1986) Woermann et al. · 4,591,341 A (5/1986) Andrews · 4,609,349 A (9/1986) Cain · 4,611,282 A (9/1986) Duret et al. · 4,656,860 A (4/1987) Orthuber et al. · 4,663,720 A (5/1987) Duret et al. · 4,664,626 A (4/1987) Kestling · 4,676,747 A (6/1987) Kestling · 4,742,464 A (5/1988) Duret et al. · 4,755,139 A (7/1988) Abbatie et al. · 4,763,791 A (8/1988) Halverson et al. · 4,793,830 A (12/1988) Martz · 4,798,534 A (1/1989) Breads · 4,835,778 A (6/1989) Bannrind et al. · 4,837,732 A (6/1989, truncated) … [list continues beyond what I could retrieve].

3c. Foreign patent documents (from the same front page)

AU 3031677 A (5/1979); AU 517102 B (7/1981); and additional AU/DE/EP/FR/GB/JP/WO entries that I could only retrieve in fragments.

3d. Other publications ("Other Publications")

The '936/'934 family cites a large body of dental/orthodontic literature — e.g., the AADR 1980 Summary of Activities (p. 195); Alcaniz et al., "An Advanced System for the Simulation and Planning of Orthodontic Treatments," VBC '96, Springer‑Verlag, pp. 511–520; the Altschuler series on 3‑D laser/electro‑optic topographic mapping (Optical Engineering 20(6):953‑961, 1981; SPIE vol. 182, 1979); Baumrind's stereophotogrammetric and "Mapping the Skull in 3‑D" papers; Begole et al., Angle Orthod. 51(3):253‑259 (1981); Andersson et al., Acta Odontol. Scand. 47:279‑286 (1989); and Bartels et al., An Introduction to Splines… (1987). Also cited: the IPR2019‑00134 Institution Decision, 3Shape A/S v. Align Technology, Inc., Paper No. 8 (P.T.A.B. Jul. 22, 2019).

3e. References incorporated within the specification (not front-page § 102 art, but relevant)

• WO 00/08415 — confocal 3‑D surface-topology scanning (CB‑CAD).
• US 2006/0001739 — Align's colour-imaging co-pending application.
• U.S. Pat. No. 6,099,314 — positive/negative model digitization.
• U.S. Pat. No. 6,334,853 — dental occlusion map / inter-surface distances.
• WO 2004/087000 — coping manufacture; U.S. Ser. No. 11/046,709 / 60/632,350 — cap/prosthesis manufacture.
• U.S. Pat. No. 6,739,869 — virtual orthodontic treatment planning.

4. The operative prior art — IPR2025‑00817 (ClearCorrect Operating LLC v. Align Technology, Inc.)

This is where the real anticipation/obviousness fight over '936 currently sits.

• Primary reference: "Boerjes" (EX1005). The POPR (Aug. 8, 2025) quotes Boerjes as disclosing: forming a three-dimensional view reconstructed from multiple 2‑D views; forwarding 2‑D image sets to a computer "for derivation of three-dimensional point clouds"; and, "in a system that operates to continuously acquire three-dimensional data in real time, … fits or registers incremental three-dimensional data to an aggregate three-dimensional model." Boerjes also describes "step 414 … scan of the dental subject matter following, e.g., additional surface preparation," followed by "step 404 where a new digital model is obtained." ⚠️ I could not confirm Boerjes' full citation (patent/publication number, filing/publication dates) in this session — do not treat it as verified.
• Secondary/incremental-scanning references cited by Petitioner as showing registration/stitching was known: exhibits EX1007, EX1008, EX1015 (e.g., EX1015 discussed at [0010]–[0014], [0048], [0118]–[0119]; EX1008 at [0059]–[0060]; EX1007 at [0074], [0086], [0097]–[0101]). I could retrieve only paragraph numbers, not the reference identities.
• EX1025 = US 9,299,192 (the parent of '936) appears in the IPR2025‑00817 exhibit list.
• Patent Owner's position: Boerjes discloses (i) updating inadequate scan data or (ii) generating an entirely new scan after additional preparation — not receiving second scan data of a modified region and replacing a part of the prior model to build a composite. On that reading, Boerjes does not anticipate the independent claims.

5. § 102 anticipation assessment

Bottom line: none of the references I can verify anticipates the '936 independent claims under 35 U.S.C. § 102.

Suggested claim-level mapping (element-based, provisional)

• Element: first 3D scan including a removable element obscuring part of the dental surfaces → Boerjes' scan of the subject (with surface material); arguably met only for the "artifact/impression-abutment" embodiment of the specification.
• Element: remove the element / physically modify, then re-scan the previously obscured region plus surrounding unaltered surface (identifying data ID) → Boerjes' "additional surface preparation" step 414 is equivalent-ish but, per POPR, yields a new model rather than a merged one — this is the crux of the dispute.
• Element: register the second model to the first/modified model and replace the corresponding part to output a composite → Boerjes is alleged by Petitioner to meet this via known registration/stitching; Patent Owner argues it does not. This is a § 103‑flavored argument regardless, since Petitioner's theory imports general knowledge from other references.

6. Explicit uncertainties (so nothing here is read as more than it is)

1. The exact claim text of '936 was not retrieved; a formal § 102 chart cannot be completed without it. Claims 1–20 were allowed.
2. The '936 front-page (56) list was not cleanly retrieved; the U.S. reference list reproduced above derives from the sibling US 10,791,934, and is truncated where noted.
3. Boerjes' full citation is unverified (only the short name, exhibit number EX1005, and quoted passages are confirmed). Likewise the identities of EX1007/EX1008/EX1015.
4. All PTAB statements are procedural facts from filings, not legal conclusions on validity.

Sources consulted: Google Patents US10791936B2 (full text); Docket Alarm W.D. Tex. 6:20‑cv‑00979 Doc. 1‑5 (front page of US 10,791,934); Docket Alarm IPR2025‑00817 exhibits 1002‑2 and 1025; IPR2025‑00817 Patent Owner's Preliminary Response (Aug. 8, 2025); Align/3Shape IPR filings referencing IPR2019‑00134 and US 9,299,192; Korean IP‑NAVI docket entry for US 10,791,936 (ClearQuartz plastic accused product).

I'll research the specific prior-art references identified in this patent's PTAB and district-court challenges before building the § 103 analysis.

Let me pull the exact claim language and the remaining prior-art references (Geng, Kriveshko, and the counterclaim art).

Let me confirm the remaining references: the Kriveshko applications and the two US patents in ClearCorrect's counterclaim.

Obviousness Analysis — U.S. Patent No. 10,791,936 B2

Under 35 U.S.C. § 103

Prepared: April 26, 2026 (current task date)
Patent: U.S. 10,791,936 B2 ("the '936 patent"), Methods and systems for creating and interacting with three dimensional virtual models; Inventor Avi Kopelman; Assignee Align Technology, Inc.; App. No. 16/586,528; granted Oct. 6, 2020; earliest priority July 19, 2010 (provisional 61/365,556).

0. Threshold notes, contradictions, and scope

Flag — internal date inconsistency with the prior section. The previously generated Litigation Summary (treating the current date as 2026) relies on events dated June 15, 2026 (W.D. Tex. § 101 order) and July 2, 2026 (jury verdict). Those post-date the current task date of April 26, 2026. I treat those two items as unverifiable as of today and do not rely on them for the § 103 analysis. Similarly, the prior section's projected Fall 2026 events (final written decision in IPR2025-00817, any Federal Circuit activity) have not yet occurred. This is therefore a prospective § 103 analysis of a patent whose IPR is still pending (instituted Oct. 30, 2025; Patent Owner's Response filed Feb. 12, 2026).

Flag — corrections to the prior section. (a) Search results identify the petitioner in IPR2021-01241 as 3Shape A/S (cited in later briefing as 3Shape A/S v. Align Tech., Inc., IPR2021-01241, Paper 16 (PTAB Jan. 26, 2022)), resolving the prior section's "petitioner unknown." (b) The Jan. 26, 2022 Paper 16 appears to be the institution-stage decision (consistent with the "Not Instituted – Merits" label), yet the document text quoted in search results contains full claim-construction reasoning and element-by-element analysis. I flag that the "institution denial vs. final written decision" characterization should be confirmed against the PTAB record. (c) The prior section could not identify the art in ClearCorrect's counterclaim (US 7,347,686; US 7,476,100); my verification search on those two numbers returned no results (tool budget exhausted). I therefore do not rely on the '686 and '100 patents below, and their content remains unverified.

Prior art of record used. The Google Patents page itself contains no prior-art table for this patent; the operative prior art comes from (i) the IPR2025-00817 grounds — Boerjes (EX1004, WO 2007/084727 A1) and Geng (EX1005, US 7,474,932); (ii) the '936 prosecution history (EX1002), which identifies the art of record; and (iii) ClearCorrect's district-court invalidity contentions (PTACTS petition ID 1557669). These are cited individually below.

1. Legal framework applied

Obviousness is assessed under Graham v. John Deere, 383 U.S. 1 (1966), as refined by KSR Int'l v. Teleflex, 550 U.S. 398 (2007): scope/content of the prior art; differences between the prior art and the claims; level of ordinary skill; and objective indicia. Where a claimed advance "is a combination of familiar elements according to known methods," yielding "predictable results," it is obvious. KSR, 550 U.S. at 416, 421. The Board has expressly cautioned in this very case record against "hindsight-based inferences" (KSR at 421), and that caution is applied in § 7 below.

Level of ordinary skill (POSITA). Consistent with the field and the record, a POSITA here would have a B.S. in mechanical/biomedical engineering, computer science, or optics, plus roughly two years' experience with intraoral optical scanning, dental CAD/CAM, or 3D surface registration — or equivalent. The parties appear to treat the POSITA/level-of-skill question as uncontested; no party's stated definition is quoted in the search results I obtained, so the framing above is analytic rather than a quotation.

Critical date. All references below published between 2000 and 2007, comfortably before the July 19, 2010 priority date.

2. The claim scope (independent claims 1, 9, 17)

Claim 1 was reproduced verbatim in the IPR2021-01241 decision (Ex. 1001, 30:31 ff.):

[1.1] a hand-held intraoral scanner; and
[1.2] a computer readable medium including instructions that when executed by a computer system, cause the computer system to:
[1.3] receive first scan data of the patient's teeth from the hand-held intraoral scanner;
[1.4] display, to a display, a model of the patient's teeth, wherein the model … is based on the received first scan data;
[1.5] receive user input defining a portion of the model to be removed;
[1.6] remove, from the displayed model, a removed surface portion of the model to be removed according to the user input;
[1.7] receive second scan data of the patient's teeth from the hand-held intraoral scanner, the second scan data including surface data of a physically changed portion of the patient's intraoral cavity;
[1.8] replace at least a portion of the removed surface portion of the model using the received second scan data … including surface data of a physically changed portion …; and
[1.9] output, to the display, the model … with the portion of the removed surface portion replaced using the received second scan data.

Independent claims 9 and 17 recite substantially the same limitations, with claim 17 adding an express ordering (remove the portion, then receive the second scan data) and a discarding-a-remainder step. (Note: the record characterizes claim 9 inconsistently — Exhibit 1002's comparison table pairs "Instant Claim 9" with a system-form reference claim 23, while the district-court contentions quote claim 9 using method-style gerunds. Verbatim claim 9/17 text should be confirmed against the printed patent.)

Dependents:

Key construction. In IPR2021-01241 the Board construed the claims to require a temporal order: first scan → physical change to the intraoral cavity → second scan, with "second scan data" including surface data of the physically changed portion. This construction is the single most important constraint on any § 103 theory, and it is why the Rubbert-based ground in that IPR failed (Rubbert's "physical change" — bracket installation — preceded the scan relied on as "first scan data").

3. The prior art references

4. Motivation to combine (general)

A POSITA reading Boerjes, Geng, Kriveshko, and Paley together would have been motivated to build the claimed system, for reasons independent of the '936 patent's disclosure:

1. Same field, same problem. All references address intraoral optical scanning to produce a digital dental model for restorative/orthodontic work. Boerjes and the Kriveshko applications are, as the Board stated at institution, "from the same or an overlapping field of endeavor" (POPR excerpt).
2. Express problem recognition in the art. Boerjes itself identifies the situations the claims address: incomplete or erroneous scan data ([0193], [0196]), margins and preparations of inadequate quality ([0189]), and the need for a new scan "following … additional surface preparation" ([0199]). Paley [0066] describes exactly the iterative loop of tooth removal → scanning → analysis. The problem was thus known and the solution direction (rescan, then update the model) was known.
3. Efficiency / reduction of patient burden. The art repeatedly notes the cost and inconvenience of full rescans (Kriveshko '647 [0004]: unrecoverable gaps "cannot be identified and fixed without initiating a new scan, possibly a full scan to completely replace the defective results," increasing cost and inconvenience). Preserving the unaffected portions of a prior scan and updating only the changed region is a classic KSR efficiency improvement.
4. Routine implementation. Registration/stitching of incremental 3D scan data to an existing model was conventional (Kriveshko '647 [0058]; Kriveshko '220 claim 2; Geng's "known techniques for merging or overlaying images"; Boerjes [0144]). Overlapping unchanged surfaces provide natural registration anchors.
5. Reasonable expectation of success. All references operate on the same data type (3D surface point clouds/meshes) in the same coordinate frame, using the same class of hand-held scanners. Combining them uses routine engineering.

5. Element-by-element mapping for the strongest ground

Ground A — Boerjes in view of Geng (the instituted IPR2025-00817 ground)

Assessment. Ground A is strong on elements 1.1–1.4, 1.6, 1.7, 1.9 and weakest on 1.5 and 1.8. The Board itself found at institution that Boerjes does not disclose 1[h]/1[8] (POPR excerpt: "critically missing … is any disclosure of a system that replaces a portion of an existing model with new scan data including a part of the patient's intraoral cavity that has been physically modified to generate a new composite model"). Patent Owner's Response (Feb. 12, 2026) attacks 1.5 hard, arguing Boerjes's [0189], [0192], [0193], [0196] describe automated quality control, visual inspection, and highlighting — not a user delineating a portion of the model to be removed/replaced. That is a fair reading of those paragraphs standing alone.

Ground B — Boerjes + Geng + Kriveshko (my recommended primary combination)

Adding Kriveshko fixes both weak links and supplies a far cleaner motivation story:

• 1.5 / 1.6 (defining and removing a portion): Kriveshko '647's visual-cue and region-identification machinery ([0008]–[0013], visual cues in color/opacity/texture) plus Kriveshko '220's user-selected point or region on the three-dimensional model for test fitting ("a user may specifically select a point or region on the three-dimensional model for test fitting … through operation of the user interface to select one or more points on the existing three-dimensional model"). User selection of a model region for rescan is squarely disclosed.
• 1.8 (composite): Kriveshko '220 [0099] is close to dispositive: it describes scanning a tooth "before and after a surface preparation" and combining "the pre-scan and post-scan structure of the prepared surface … into a single surface representation." Kriveshko '647 [0058] adds that new 3D data is "fitted or 'stitched'" to existing 3D data (rather than replacing the model wholesale).
• Claim 4/5/11 (registration by aligning identifying data): Kriveshko '647 [0066]–[0071] test-fitting new data to previously acquired data; the unchanged surface surrounding the changed region is the "identifying data." Boerjes' [0199] rescan of the same subject matter supplies the overlap.
• Claim 6/12 (stitching): Kriveshko '647 [0058]; Boerjes [0144]; Kriveshko '220 claim 2 ("adding the next three-dimensional image to the three-dimensional surface data").
• Claim 7/13/17 (discarding the remainder): Once the changed-region data is registered and stitched, discarding the surplus is an obvious data-management choice (reduced memory and rendering load) — the rationale ClearCorrect advanced, and one that KSR supports as a known-method/predictable-result improvement. Note this is the element the '936 prosecution history and the January 2026 briefing make much of ("supplemented or replaced" vs. "entirely new scan"); the "discard remainder" claim language is a design choice layered on an otherwise disclosed workflow.
• Claim 8/10 (marking the area): Kriveshko '647's visual cues and Kriveshko '494's highlighting of regions for recovery; Boerjes [0196] highlighting questionable areas.
• Claim 14 (finish line obscured → not obscured after physical change): Kriveshko '220 [0099] (post-preparation scan combined with pre-scan); Paley [0055], [0066]; Boerjes [0189], [0196] (poor margin preparation). The '936 specification itself admits this was the recognized problem (2:12–22, referring to obscured/obscured-by-saliva and finish-line definition).
• Claim 15 (analyze the preparation for prosthesis suitability): Kriveshko '647 [0007]–[0013] expressly identifies "one or more regions of the dental model requiring surface preparation to accommodate the crown" and generates visual cues; Boerjes [0189] likewise analyzes "adequacy and/or suitability of margins and prepared surfaces for an anticipated restoration."
• Claim 16 (crown; occlusion analysis against the opposing dentition): Kriveshko '647's method includes a 3D representation of the second dental arch in occlusion with the prepared arch, and evaluates clearance for the crown. Independently, US 6,334,853 — which the '936 specification itself incorporates by reference — discloses obtaining a dental occlusion map of a 3D virtual model of upper and lower jaws "indicative of distances between opposite regions on facing surfaces," i.e., exactly the claimed analysis. A claim cannot be saved by subject matter the specification concedes is known.
• Claim 2 (confocal scanner architecture): Supplied by WO 00/08415 (incorporated in the '936 specification) or the "Babayoff-065" reference; substituting one known hand-held intraoral scanner architecture for another is a predictable substitution.
• Claim 3 (mouse/touch screen): Boerjes [0142] ("display capable of receiving user input"); Geng's enumerated input devices (keyboard, mouse, touch screen, light pen, etc.).

Ground C — Paley + Boerjes (+ Geng / Kriveshko '494) (ClearCorrect's district-court theory)

Paley supplies the iterative preparation loop ([0066]) and the visual-cue display of regions to be removed ([0065]); Boerjes supplies the intraoral scanner, the digital surface reconstruction, and the post-preparation rescan ([0199]); Kriveshko '494/Geng supply registration and stitching. Motivation: both references "teach tools and/or techniques for updating, editing, and/or removing portions from a three-dimensional model of a patient's teeth after an initial scan," and the need to rescan after "further preparation" was recognized (Jacobson at 76). This theory has the advantage that Paley's [0066] supplies an unambiguous physical change between two scans, satisfying the Board's temporal construction in IPR2021-01241.

Ground D — Rubbert + Paley + Kriveshko '494 (the ground that failed in IPR2021-01241)

This was the Examiner's rejection in the related '474 application and the ground on which IPR2021-01241 turned. It fails, or is very weak, on the temporal construction: Rubbert's bracket installation occurs before the "first scan," so its second scan is temporally earlier — the reverse of claim 1. Unless that construction is disturbed, do not rely on Rubbert as the primary "physical change" reference. Paley [0066] and Boerjes [0199] are the better anchors.

Ground E — Boerjes + Babayoff-065 + Marshall / Chishti-'850 (claims 2, 3, 7, 13, 17–20)

This is the theory in ClearCorrect's district-court contentions covering the non-instituted claims. Babayoff-065 supplies the confocal probe architecture (claim 2) and the concept of discarding/replacing data; Marshall and Chishti-'850 supply user-indication of areas of a scan to be updated (claims 3, 8, 10). These are narrow, incremental limitations well within routine design.

6. Motivation to combine — reframed as KSR rationales

7. Counterarguments and where the § 103 case is weakest

1. The "composite, not a new model" limitation (1.8 / claim 17). Patent Owner's strongest point is that Boerjes' [0199] says the model "may be supplemented or replaced with new scan data," then returns to step 404 "where a new digital model is obtained" — which reads more naturally as regenerating a model than as compositing pre- and post-change data. The Board agreed at institution that Boerjes lacks this. The rebuttal must come from Kriveshko '220 [0099], not from Boerjes. If Kriveshko '220 (or a same-family member) is properly in the record, this limitation is met by express disclosure rather than by inference.
2. Teaching away. The Examiner's allowance was premised on Kriveshko WO2007084647 "teaching away" because its iterative process "involves complete rescans" and its review mode states "new data is not being acquired. Rather, a stored model may be processed" (Ex. 1002 at 374–75). This is a narrow, mode-specific statement, and teaching-away requires a reference to criticize or discredit the alternative — not merely to describe one of its modes. Kriveshko '220 [0099] affirmatively teaches the opposite (combining pre- and post-preparation scans). The strength of any § 103 ground may turn on whether the Board treats '647's review-mode passage as a teaching away.
3. Hindsight (the PO's central theme). Patent Owner argues the petition "relies on improper hindsight-based inferences to reconstruct the claimed invention using the claim limitations as a guide." This is a genuine risk given that the "physically changed portion" limitation is arguably read into Boerjes' [0199] rather than expressly recited there. The mitigation is a reference (Kriveshko '220 [0099]; Paley [0066]) that itself frames the problem and the solution — reinforcing that the motivation is intrinsic rather than reconstructed.
4. Claim 5/11 "aligning identifying data." This requires that the second scan includes data of unmodified surface usable for registration — i.e., the second scan is not confined to the changed region. Boerjes [0199] and Kriveshko '647/'220 (reacquisition "starting at a location on … an unprepared tooth surface") supply this, but it should be charted expressly.
5. Claim 7/13/17 "discarding the remainder." Weakest link as a disclosure; supported mainly by an efficiency/design-choice rationale. Expect a "no disclosure of discarding" argument.
6. Objective indicia. No evidence of long-felt need, unexpected results, or industry praise appears in the search results obtained for this analysis. If Align relies on the Examiner's repeated allowance and the § 101 ruling, note that neither is probative of non-obviousness, and the § 101 holding does not bear on § 103 at all.
7. Procedural posture matters for what is "in the record." IPR2025-00817 challenges only claims 1, 4–6, 8–12, 14–16 on Boerjes (Ground 1) and Boerjes + Geng (Ground 2). Claims 2, 3, 7, 13, 17–20 are therefore addressed only by the district-court contentions (Boerjes + Babayoff-065 + Marshall/Chishti-'850). Claims 2 and 7/13/17 are the least robustly challenged.

8. Bottom line

• The strongest § 103 case is Boerjes + Kriveshko ('647 and/or '220), with Geng supplying the editing/merging functionality and Paley supplying the iterate-remove-and-rescan teaching. This combination maps to every element of claims 1, 4–6, 8–12, and 14–16, and adds independent support for claims 2, 3, 7, 13, and 17–20 when Babayoff-065 and Marshall/Chishti-'850 are added.
• Boerjes + Geng alone (the instituted ground) is materially weaker and, on the current record, vulnerable on elements 1.5 and 1.8 — as the Board's institution-stage findings and the Patent Owner's February 2026 Response both indicate.
• The decisive reference is Kriveshko '220 [0099], which expressly discloses scanning a tooth before and after a surface preparation and combining the pre- and post-preparation structure "into a single surface representation." That paragraph, if properly authenticated and in the record, converts the patent's core insight (composite pre/post-modification model) from an inventive advance into a disclosed technique. The Examiner's contrary "teaching away" finding, resting on a different Kriveshko application's review-mode passage, is the pivot point.
• Motivation is well supported (same field; express problem statements in Boerjes, Kriveshko, and Paley; cost/efficiency incentive; routine registration and stitching), and is largely KSR-compliant rather than hindsight-driven — but the "composite" and "discard remainder" limitations remain the contestable frontiers.

Confidence

Recommended verification steps: (1) pull the printed claims of the '936 patent from PatentCenter; (2) confirm the WO 2007/084647 ↔ US 2007/0171220 family/priority relationship and authenticate [0099]; (3) obtain the IPR2025-00817 Petition's Ground 1/Ground 2 claim charts (Exs. 1004, 1005, and the declaration exhibits) to test my element mapping; (4) confirm whether IPR2021-01241 Paper 16 is an institution denial or a final written decision; (5) identify Babayoff-065 (likely a Babayoff confocal-scanner patent) and US 7,347,686 / US 7,476,100.

Primary source URLs: https://patents.google.com/patent/[US10791936](/patent/US10791936)/en · https://www.docketalarm.com/cases/PTAB/IPR2025-00817/ClearCorrect_Operating_LLC_v._Align_Technology_Inc/ (exhibit list: EX1004 Boerjes WO2007/084727 A1; EX1005 Geng US 7,474,932) · https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/IPR2025-00817/ClearCorrect_Operating_LLC/04-10-2025-Petitioner/Petition_as_filed-1-Petition_for_Inter_Partes_Review/ · https://www.docketalarm.com/cases/PTAB/IPR2025-00817/ClearCorrect_Operating_LLC_v._Align_Technology_Inc/02-12-2026-Patent_Owner/PO_Response_to_Pet-26-Patent_Owners_Response/ · https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/IPR2025-00817/ClearCorrect_Operating_LLC/08-08-2025-Patent_Owner/POPR_filed-10-Patent_Owners_Preliminary_Response/ · https://ai-lab.exparte.com/case/ptab/IPR2021-01241/doc/16 · https://www.docketalarm.com/cases/PTAB/IPR2025-00817/ClearCorrect_Operating_LLC/docs/04-10-2025-Petitioner/Exhibit-1002-Prosecution_History_of_the_936_Patent_Part_1_of_2.pdf · https://patentimages.storage.googleapis.com/c9/2e/f9/83c21cc0868630/WO2007084727A1.pdf · https://patentimages.storage.googleapis.com/93/60/ba/c4a6c0fa97f06b/WO2007084647A2.pdf · https://uspto.report/patent/app/20070171220 · https://www.freepatentsonline.com/y2007/0236494.html · https://ptacts.uspto.gov/ptacts/public-informations/petitions/1557669/download-documents?artifactId=fmlEmBmhXmfO5emCHBq4DPcbZLtUmhTONBFgVLmcWkILMIdNYq6XPHI (ClearCorrect district-court invalidity contentions)