US 9101433

I'll search for authoritative information on this patent, including any 2026 CAFC docket activity.

Let me search specifically for CAFC 2026 activity involving 9101433 and the related PTAB proceeding.

Let me check for any 2026 litigation/appeal activity specifically involving this patent.

US 9,101,433 B2 — Verified Summary

Important sourcing note: I do not have direct API access to USPTO Patent Center/PTAB APIs or the CAFC docket system; I searched the open web, including Google Patents, Justia, Docket Alarm, Patexia and govinfo. The full patent text supplied in my prompt is treated as authoritative where it conflicts with search results.

Bibliographic data (high confidence)

Family chain (per the '433 specification and USPTO filing receipts): 14/511,091 is a continuation of 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 claims benefit of 60/580,108 and 60/580,109. Note that the earlier members (e.g., US 8,102,538) list Cadent Ltd., Or Yehuda, IL as assignee; the '433 lists Align Technology, Inc.

Abstract (verbatim)

"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."

Independent claims in plain language

Note: the '433 is the family member in which the claims were rewritten from the original "scanning means / imaging means" language into system claims ("apparatus… one or more processors configured to cause the system to…").

Claim 1 — Registering color frames to a depth frame (temporal alignment).

• An apparatus with an image-gathering member produces depth data for the object portion across a 2-D reference array that is substantially orthogonal to the depth direction.
• Processor(s) receive that depth data, plus two different 2-D image data sets (first and second) for the same array.
• The processor generates 2-D estimated image data from the first and second image data "so as to account for when the first image data and the second image data were generated relative to when the depth data was generated so that the estimated image data corresponds to when the depth data was generated."
• It then maps the estimated image data to the depth data for the array.
• The inventive core: interpolation/estimation across multiple 2-D frames to compensate for object/device motion between color capture and the depth scan — rather than relying on a single color frame.

Claim 7 — Tri-wavelength capture, same temporal-alignment core.

• Same system architecture, but the first and second 2-D image data sets are each obtained by separately illuminating the structure portion with each of three different wavelengths of light (e.g., R/G/B monochromatic frames combined into color).
• Estimated 2-D image data is generated from the first and second data sets and mapped to the depth data. No express "accounting for timing" recitation in this independent claim (it appears in dependent claim 11).

Claim 12 — Multi-focal-length color mapping (depth-of-field / focus fusion).

• Same system architecture; receives 2-D image data for the array for each of a plurality of focal lengths relative to the image-gathering member.
• Selectively maps image data to depth data "based on the plurality of focal lengths and the depth data such that the resulting associated color of the structure portion is in focus relative to the structure portion for a plurality of distances in the depth direction."
• This corresponds to the spec's chromatic-dispersion / multiple-color viewfinder embodiment (blue → aqua → green → amber → red illuminating different depth zones in focus), where focused areas are merged and the Y/C luminance component is replaced with the composite focus image.

Representative dependent claims: claim 2 — capture within a time interval (<~100 ms) chosen so the image-gathering member's spatial disposition is substantially fixed w.r.t. the structure; claim 3 — separate 2-D sensors for color image data vs. monochromatic (depth) data; claim 6 — depth data generated between the first and second image data; claim 9 — depth data generated using one of the three wavelengths; claim 17 — image data obtained by separate illumination at three wavelengths; claims 13/15/19/20 — mirror claim 2/3/17/18 limitations into claim 12.

PTAB / litigation context (verify before relying)

• IPR2019-00163 — Filed Nov. 8, 2018; instituted June 11, 2019; Final Written Decision June 9, 2020; panel Roesel, McNamara, Powell. Challenged claims 12 and 14. Sources conflict on petitioner: Patexia captions it 3Shape A/S et al. v. Align Technology, Inc., while Google Patents' litigation feed attributes it to Unified Patents data. I could not verify the substantive outcome of the FWD (which claims, if any, were held unpatentable) — treat that as uncertain.
• ITC Inv. No. 337-TA-1091 (Certain Color Intraoral Scanners) — The Commission's Nov. 22, 2019 determination (published 84 FR, Nov. 29, 2019) affirmed-in-part the ALJ's finding of no violation, specifically determining: (5) claim 12 of the '433 is not infringed; (7) the '228, '456 and '433 patents are not invalid as anticipated or obvious; and (10) Align's products practice claim 12 of the '433 patent (relevant to the domestic-industry prong).
• District court cases listed for '433: D. Del. 1:17-cv-01649 (Align v. 3Shape), D. Del. 1:18-cv-01950, D. Del. 1:20-cv-01492 and W.D. Tex. 6:20-cv-00979.

CAFC 2026 dockets — finding: no 2026 appeal involving 9,101,433

I found no 2026 Federal Circuit docket, opinion, or scheduled argument naming US 9,101,433. The 2026 Align-related CAFC activity is on different patents:

• Dental Monitoring SAS v. Align Technology, Inc., No. 24-2270 (nonprecedential opinion, July 7, 2026) and related No. 25-1879 (July 21, 2026) — § 101 invalidity of claims 1/14 of US 11,049,248 and claims 1/7/12 of US 10,755,409 (deep-learning dental image analysis). No '433 involvement.
• The 2026 W.D. Tex. jury verdict in Align v. ClearCorrect, No. 6:24-cv-00187 (July 2, 2026) involved US 10,973,613; 11,154,384; 11,648,090; 11,648,091; 8,038,444; 10,456,217; 10,524,879; 11,369,456; 10,791,936 — not the '433.

Two practical caveats: (a) the '433 expired June 17, 2025, so it is not a candidate for prospective injunctive relief in a 2026 case (though it could still appear in an expired-patent damages tail or as a validity/priority reference); and (b) my CAFC 2026 coverage relies on web-searchable opinions calendars and dockets, not a live PACER/CM-ECF query, so a very recent or sealed filing could be missed.

Explicit uncertainty statement: I am highly confident on the bibliographic data, abstract and claim text (the claim text above is taken from the patent document itself). I am not confident on the IPR2019-00163 final outcome and am reporting the petitioner identity as disputed between sources.

I'll research litigation involving US patent 9101433. Let me search for relevant information.

I found substantial litigation data. Let me dig deeper into each case for specifics.

Litigation Involving U.S. Patent No. 9,101,433 (the "'433 patent")

Patent: U.S. 9,101,433 B2 — "Method and apparatus for colour imaging a three-dimensional structure"
Patent owner / assignee: Align Technology, Inc. (acquired from Cadent Ltd.; inventor Noam Babayoff)
Priority date: June 17, 2004

All of the known litigation involving this specific patent stems from the Align Technology v. 3Shape dispute that began in November 2017 and was resolved by a global settlement in February 2022. The '433 patent (one of the "color scanner patents") was asserted alongside its siblings (U.S. 8,363,228; 8,451,456; 8,675,207; etc.).

1. Align Technology, Inc. v. 3Shape A/S & 3Shape, Inc. — District of Delaware

Sources: Align's Nov. 14, 2017 press release listing '433 among the 26 asserted patents (https://investor.aligntech.com/index.php/news-releases/news-release-details/align-technology-files-six-patent-infringement-lawsuits); Stanford NPE Litigation Database entry for 9101433 (https://npe.law.stanford.edu/patent/9101433); 3Shape press release on Align's dismissal (https://www.3shape.com/en-us/press/2020/align-technology-backs-out-of-patent-infringement-cases-against-3shape).

2. In the Matter of Certain Color Intraoral Scanners and Related Hardware and Software — U.S. International Trade Commission

Sources: ITC Commission Review Decision in Inv. No. 337-TA-1091 (https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2020-00173/.../Investigation_No_337_TA_1091,_Commission_Review_Decision.pdf); Federal Register 84 FR at 2019-25852 (Nov. 29, 2019); Align press release (https://aligntech.gcs-web.com/news-releases/news-release-details/international-trade-commission-affirms-alj-finding-3shape).

(Note: a companion ITC investigation, Inv. No. 337-TA-1090, involved different patents — the '447, '448, and '901 patents — and did not assert the '433 patent.)

3. Align Technology, Inc. v. 3Shape A/S & 3Shape, Inc. (2nd Delaware action)

Source: Google Patents litigation data for US 9,101,433 (Darts-ip/Unified Patents) listing the 1:20-cv-01492 Delaware filing; 3Shape press release describing the "DC 1950" case.

4. Align Technology, Inc. v. 3Shape A/S & 3Shape Trios A/S — Western District of Texas

Sources: Align press release (http://investor.aligntech.com/node/23926/pdf); 3Shape's Answer in W.D. Tex. (courtlistener recaps gov.uscourts.txwd.1111294 / txwd.1070535).

5. 3Shape A/S v. Align Technology, Inc. — PTAB Inter Partes Review (IPR2019-00163)

Sources: PTAB institution decision (https://ipwatchdog.com/wp-content/uploads/2019/06/3Shape-00163.pdf); Patexia docket (https://services.patexia.com/lawsuits/3Shape-A-S-v-Align-Technology-Inc-id-[119687](/patent/119687)); Google Patents PTAB entry for IPR2019-00163.

Summary

• District court litigation: 2 cases — D. Del. 1:17-cv-01649 and W.D. Tex. 6:20-cv-00979 — plus a second Delaware action 1:20-cv-01492. All named Align Technology, Inc. as plaintiff/patent owner and 3Shape A/S (with 3Shape, Inc. and/or 3Shape Trios A/S) as defendants. All were resolved by the February 7, 2022 global settlement (confidential terms).
• ITC litigation: One investigation asserting the '433 patent — 337-TA-1091 — resulting in a finding of no Section 337 violation (Commission decision Nov. 22, 2019), with claim 12 of the '433 patent held not infringed but not invalid.
• PTAB proceeding: IPR2019-00163, a 3Shape challenge to claims 12 and 14 of the '433 patent, terminated by Final Written Decision on June 9, 2020.

I have not identified any other litigation asserting U.S. 9,101,433 beyond the Align v. 3Shape family described above. Note that companion patents in the same family (e.g., U.S. 8,363,228; 8,451,456; 8,675,207) were litigated separately against other parties, but those are different patent numbers and I have excluded them per your instruction not to return results for similar numbers.

Caveat: The precise holdings of the IPR2019-00163 Final Written Decision (e.g., which claims, if any, were cancelled or upheld) were not retrievable in this session; I have reported the docket status (terminated, FWD, June 9, 2020) rather than speculate on the outcome. Verifying the FWD text on the PTAB docket (https://portal.unifiedpatents.com/ptab/case/IPR2019-00163) is recommended for the exact disposition.

I'll start by pulling what the structured data says and cross-checking against searchable PTAB records.

Let me dig into the FWD outcome, any appeal, and whether other petitioners filed on this patent.

I need the specific FWD disposition. Let me search directly.

Proceedings overview

One AIA trial proceeding has been filed against US 9,101,433: IPR2019-00163, filed by 3Shape A/S and 3Shape Inc., which went to a Final Written Decision on 2020-06-09 in which Align Technology prevailed outright — claims 12 and 14 were NOT held unpatentable, and no claims of the '433 patent have ever been canceled. ⚠️ Data discrepancy flag: the structured "PTAB proceedings on file" block states the USPTO ODP returns no AIA proceedings for this patent. That is wrong — the same Google Patents record embedded in that block independently lists "PTAB case IPR2019-00163 filed (Final Written Decision)," and the institution decision and FWD text are publicly available (links below). Treat IPR2019-00163 as real. The bottom-line defensive posture: the patent is hardened, not dead. The one IPR that tested it failed, the surviving claim 12 was the central independent claim, and the only favorable defendant-side win on this patent came from the ITC ("claim 12 of the '433 patent is not infringed"), not from the PTAB. Separately, the patent has expired (Google Patents lists an anticipated expiration of 2025-06-17, status "Expired – Lifetime"), so exposure today is past damages only — but do not expect an IPR to rescue you on claims 12/14.

IPR2019-00163 — 3Shape A/S and 3Shape Inc. v. Align Technology, Inc.

• Type: Inter Partes Review (35 U.S.C. §§ 311–319), Tech Center 2800 / Art Unit 2877
• Filed: 2018-11-08 (within the § 315(b) one-year window from the D. Del. complaint Align Technology, Inc. v. 3Shape A/S, No. 1:17-cv-01649, filed 2017-11-14)
• Status: Final Written Decision (docket terminated 2020-06-09). Plain English: trial instituted, full trial run, challenger lost — claims 12 and 14 survived.
• Judge panel: Brian J. McNamara, Neil T. Powell, and Elizabeth M. Roesel, Administrative Patent Judges; Roesel, A.P.J., wrote. (Docket Alarm's roster for the case also lists Clark S. Cheney.)
• Petition grounds: Claims challenged — 12 and 14 (claim 14 depends from claim 12). Two grounds, both § 103:
  • Ground 1: Okamoto (JP 2001-82935, published 2001-03-30) in view of Babayoff (WO 00/08415, published 2000-02-17);
  • Ground 2: Babayoff in view of Okamoto.
  • Petitioner asserted both references as § 102(b) prior art. Patent Owner did not contest prior-art status. Support: Declaration of Sohail Dianat, Ph.D. (Ex. 1024). Notably, Babayoff is the same WO 00/08415 that the '433 patent incorporates by reference and shares inventor Noam Babayoff with.
• Institution decision: Instituted 2019-06-11. The panel rejected both of Patent Owner's discretionary-denial theories. On § 314(a) (the parallel ITC Investigation No. 337-TA-1091), it reasoned that "differing claim sets is a factor that weighs against exercise of our discretion" because "only one of the two claims challenged in the Petition was litigated in the ITC," and gave "some weight to the lack of preclusive effect of any ITC determination of invalidity" — concluding "institution of inter partes review would not be an inefficient use of the Board's resources." On § 325(d), the panel found "no evidence that Babayoff and Okamoto were substantively considered by the Examiner during prosecution," and that Petitioner "has demonstrated a reasonable likelihood that the Examiner erred in failing to reject the claims over the combination of Babayoff and Okamoto."
• Final Written Decision (2020-06-09): All challenged claims sustained. Claims 12 and 14 were NOT shown to be unpatentable on either ground. The decisive limitation was the "In Focus" limitation of claim 12. The panel credited Patent Owner's unrebutted evidence that "Okamoto's 'light reception amount' or 'light quantity' refers to Okamoto's confocal optical system and the amount of single color light, e.g., red laser light, reflected by the sample," and held that "Petitioner does not show sufficiently Okamoto's maximum received light quantity would lead to the resulting associated color being in focus." The Board also rejected Petitioner's fall-back reliance on Pulli and on applicant-admitted prior art: "Petitioner has not provided a sufficient explanation of how or why a POSITA would have combined Okamoto with the teachings of Pulli, the alleged Applicant Admitted Prior Art, or the references cited in the Reply to arrive at the In Focus limitation of claim 12. See Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017)." Disposition, verbatim: "For all of the foregoing reasons, we determine that Petitioner has not shown that the In Focus limitation of claim 12 is taught or suggested by Okamoto in view of Babayoff. Challenged claim 14 depends from claim 12, and the deficiencies in Petitioner's arguments and evidence for claim 12 are not remedied by its arguments and evidence for claim 14." The panel expressly declined to reach objective indicia: "we do not reach Patent Owner's contention that Petitioner 'ignores known objective indicia evidence of non-obviousness patent owner presented in a related ITC action.'" Petitioner's motion to exclude Patent Owner Exhibits 2001, 2002, 2005, and 2007–2010 (Paper 24) did not change the outcome.
• Settlement / termination: None. This was a merits loss for Petitioner, not a settlement. Case terminated by the FWD on 2020-06-09.
• Appeal: No Federal Circuit appeal could be confirmed from public sources as of the date of this report. This is expected on the Patent Owner side (Align won). Petitioner 3Shape would have had until roughly 2020-08-11 (63 days) to notice an appeal; I found no CAFC docket or CourtListener opinion for an appeal of the IPR2019-00163 FWD. Verify this on the CAFC docket and the PTAB E2E "Appeal" tab before relying on it — treat the absence as unverified, not affirmatively established.
• Defensive value: The prior-art theory built on Okamoto + Babayoff is now a litigated, lost theory for claims 12 and 14 — and the Board needed only the "In Focus" limitation to dispose of it. If your invalidity case is another Okamoto/Babayoff § 103 combination against claim 12, expect the PTAB (and any district court applying the FWD's reasoning) to treat it as a re-run, not a fresh attack. The real soft spot is elsewhere: the ITC found claim 12 of the '433 patent not infringed by the 3Shape scanners, so non-infringement, not invalidity, is where the leverage has historically been.

Strategic summary

Claims CANCELED vs. SUSTAINED vs. UNTESTED. Canceled: none. Not one claim of US 9,101,433 has been canceled in any AIA trial. Sustained: claims 12 and 14, both after a full trial on the merits in IPR2019-00163, on both asserted § 103 grounds (Okamoto/Babayoff and Babayoff/Okamoto). Claim 12 is the independent claim; claim 14 depends from it. Untested: every other claim — the Petition never challenged claims 1–11, 13, or 15-and-others, and the FWD did not address them. So there is no surviving-claim "shortlist" in the narrowing sense; rather, the patent emerged from IPR un-narrowed at the claim level (a Patent Owner win in an IPR does not amend claims; it simply leaves them in place). If a demand letter asserts claims outside 12/14, those claims carry zero PTAB track record — which is a genuine gap, but it is an offensive gap for the patent owner, not a shield for you.

Estoppel landscape — § 315(e)(2). 3Shape A/S and 3Shape Inc., and any privies/real parties in interest (including 3Shape Trios A/S to the extent it was an RPI/privy in this or the parallel IPRs), are estopped in any district court or ITC action from asserting grounds that were raised or reasonably could have been raised against claims 12 and 14, including the Okamoto/Babayoff combination, the Babayoff/Okamoto combination, and the Pulli and applicant-admitted-prior-art arguments teed up in the Petition and Reply (the Board specifically found those motivations inadequately explained — not that the art was wrong). For a new defendant that is not a privy of 3Shape, no estoppel attaches to IPR2019-00163. The full prior-art universe remains available to you, subject only to § 315(b) (one year from service of a complaint alleging infringement) and the Board's § 325(d) / § 314(a) discretion — and note that § 325(d) is now a live risk for you too, because the Board has already substantively evaluated Okamoto and Babayoff against this patent's family, and Align will argue the Office has "already considered" that art. For genuinely new art (e.g., art not in the Okamoto/Babayoff/Pulli/Engelhardt/Sachdeva/Gührling/Moermann/Vivid 910 clusters), you are unencumbered. Also watch the § 315(e)(1) estoppel front: 3Shape was barred from pursuing claims cancelation via the Office once the FWD issued, which is why the attack moved to district court and the ITC.

Pattern signals. This was a coordinated multi-IPR wave by a single competitor, not a defensive aggregator. In its mandatory notices in IPR2019-00163, 3Shape identified a family of parallel petitions it had filed on sibling patents in the same "color scanning" family: IPR2019-00154 and IPR2019-00157 (US 8,363,228), IPR2019-00155 and IPR2019-00159 (US 8,451,456), and IPR2019-00156 and IPR2019-00160 (US 8,675,207) — plus IPR2019-00163 against this '433 patent. Family-level activity continued later, including IPR2020-00173 (US 8,102,538) and IPR2021-01120 (3Shape, a different family member), but IPR2019-00163 is the only AIA trial on the '433 patent itself. One clarification on the "defensive aggregator" question: the "Unified Patents PTAB Data" attribution on the Google Patents page and the Unified Patents case link are data-licensing credits, not evidence that Unified Patents petitioned — Unified Patents is the source of the litigation/trial metadata, not the petitioner here. The petitioner is 3Shape. Finally, Align defended aggressively and successfully: it won IPR2019-00163 outright and, in the parallel ITC proceeding, obtained findings that claim 12 of the '433 patent was not infringed but that Align's own products practice claim 12 (i.e., domestic-industry technical prong met) and that the '433 patent "is not invalid as anticipated or obvious" (Commission determination, 2019; the later '433-phase ITC findings in Inv. No. 337-TA-1090 were vacated as moot after the '448/'447/'901 patents expired).

Recommended next steps

• If you are a defendant and the demand letter cites claims 12 or 14: there is no inter partes FWD canceling them — quote the opposite. The operative disposition is: "Petitioner has not shown that the In Focus limitation of claim 12 is taught or suggested by Okamoto in view of Babayoff," and claim 14 fails for the same reasons. Do not build a defense on the premise that IPR2019-00163 invalidated anything; it did not. Link the decision through the docket at https://www.docketalarm.com/cases/PTAB/IPR2019-00163/3Shape_A-S_v._Align_Technology_Inc/ and the PTAB E2E portal at https://ptacts.uspto.gov/ptab/caselist, and pull the institution decision PDF at https://ipwatchdog.com/wp-content/uploads/2019/06/3Shape-00163.pdf (FWD text is reproduced in Petitioner Exhibit 1028 in IPR2021-01120: https://www.docketalarm.com/cases/PTAB/IPR2021-01120/3Shape_A-S/docs/06-24-2021-Petitioner/Exhibit-1028-40-EX1028_US_14511091_433_File_History.pdf).
• Lead with non-infringement, not invalidity, on this patent. The only claim-level win any defendant has ever obtained against the '433 patent is the ITC's finding that claim 12 is not infringed (Commission determination, 2019), coupled with the fact that Align's products themselves practice claim 12. That is a claim-scope/limitation argument — "image gathering member," "selectively map... such that the resulting associated color... is in focus," and the "substantially fixed" spatial-disposition clause — and it is the path that has actually worked.
• IPR timing is now academic for the '433 patent, but not for its siblings. Google Patents lists the '433 patent's anticipated expiration as 2025-06-17 with legal status "Expired – Lifetime," so it is expired as of 2026-09-30. That means no injunction, and damages limited to pre-expiration infringement (with the six-year § 286 look-back capping the recovery window). It also means the PTAB is no longer an available venue for the '433 patent itself in any practically useful sense — but Align's live, later-filed "color scanning" continuations (e.g., US 10,750,152; 10,750,151; 10,724,519; 10,764,557; 10,812,773; 10,924,720; 10,944,953; 11,368,667) are the real targets, and they recruit entirely different art. If you are being asserted against one of those, the FWD in IPR2019-00163 is not res judicata or estoppel against you, but it is a roadmap Align will use.
• If you have current IPR/PGR exposure on the '433 patent itself, close it out. With the patent expired, any pending AIA trial on it is a candidate for termination as moot; do not spend trial-stage budget on a dead patent. Conversely, if you hold a license or are negotiating one, the expired status materially changes the royalty base — push for a past-only, six-year-capped structure.
• Preserve, do not rely on, the "no PTAB activity" default. The ODP ingest in the prompt is demonstrably out of date here. Before filing anything that assumes no prior PTAB proceedings, re-verify on PTAB E2E and the CAFC docket, and specifically confirm whether 3Shape noticed an appeal of the 2020-06-09 FWD — I could not verify an appeal either way from public sources, and you should not state in a filing that none exists until you have checked the CAFC docket directly.

I'll research this patent's ownership chain before producing the analysis.

Let me dig into the corporate history and any recorded assignments.

Let me look for the specific assignment records and the ITC chain-of-title exhibits.

Ownership & Assignment Analysis — US 9,101,433 B2

Analyst note on sourcing. I ran the assignment-chain queries against the live web during this session but the tooling was cut off before I could pull the Assignment Center's reel/frame detail. Rather than insert placeholder Reel/Frame numbers (which would be fabrication), I have marked every reel/frame line below as not verified in this session unless a specific number was actually surfaced. What is independently documented is: (a) the ITC trial record in Inv. No. 337-TA-1091, which admitted three separate assignment records as trial exhibits (JX-0039, JX-0040, JX-0041) and found "Align has standing via its ownership by assignment of the asserted patents"; and (b) the corporate history from Align's own SEC filings. Both are cited. Verification should be completed at the Assignment Center link in the Verdict section.

Inventors

Source: Application Data Sheet for the family (Customer No. 107046, WSGR), reproduced in the 3Shape v. Align IPR file histories. Sole-inventor patents are common in this family — the entire Babayoff continuation chain (7,511,829 → 7,724,378 → 8,102,538 → 8,363,228 → 8,451,456 → 8,675,207 → 8,885,175 → 9,101,433) is single-inventor.

Unusual-pattern check: No evidence of inventor departure-then-fire-sale. Babayoff's name continues to appear as first-named inventor on Align continuations filed as late as 2020 (e.g., application 16/791,994, filed 2020-02-14, and 16/791,994's siblings), i.e. the inventor relationship persisted through the Align era rather than being severed before a sale. This is the opposite of the pre-fire-sale pattern.

Original assignee

Align Technology, Inc. is the assignee named on the face of US 9,101,433 (issued 2015-08-11). Google Patents lists Original Assignee = Current Assignee = Align Technology Inc.

Important nuance on the chain: this patent is a late continuation in a family whose priority dates to 2004-06-17 and whose earliest non-provisional (11/154,520) was prosecuted during the Cadent Ltd. / Cadent Holdings, Inc. era. Cadent was the operating developer of the iTero/iOC intraoral scanners.

• Primary line of business: medical devices — clear aligners (Invisalign) and intraoral scanners (iTero); publicly traded (NASDAQ: ALGN).
• Product embodying the claims: Yes. In ITC Inv. No. 337-TA-1091 the Commission expressly determined that "Align's products practice claim 12 of the '433 patent." The accused products were 3Shape's Trios color intraoral scanners; Align's domestic-industry products were the iTero/iOC scanners. This is a rare case where a tribunal affirmatively found practice of the claims by the assignee's own product.
• Current status: Operating, solvent, no bankruptcy. Revenue ~$3.7B (2022); ~23,000 employees.

Assignment timeline

Recorded assignments exist — they are not absent. The ITC Administrative Law Judge's Final Initial Determination in 337-TA-1091 (2019-03-01) states:

"The evidence of record demonstrates that Align has standing via its ownership by assignment of the asserted patents. See JX-0001 at Cover; JX-0002 at Cover; JX-0039 (assignment record); JX-0040 (assignment record); JX-0041 (assignment record)."

Those three admitted assignment records cover the asserted patents (the '228, '456, '207, '433, '931 and '470 patents), i.e. the Cadent → Align chain. What follows is the reconstructed chain with verified corporate facts and explicitly-flagged unverified reel/frame fields.

• 2004-06-17 (executed, provisional filings) / recorded — Reel/Frame: not verified in this session

  • Conveyance: (provisional filings 60/580,108 and 60/580,109 — no assignment expected)
  • Assignor: Noam Babayoff
  • Assignee: n/a at this stage
  • Correspondent: not verified
  • Context: priority establishment — the two 2004 provisionals are the root of the entire Babayoff continuation family.

• 2005-06-17 — Non-provisional 11/154,520 filed (later US 7,319,529)

  • Conveyance: inventor → Cadent Ltd. (expected but reel/frame not verified)
  • Assignor: Noam Babayoff
  • Assignee: Cadent Ltd. (Israel)
  • Correspondent: not verified
  • Context: original corporate filing — this is the true head of the ownership chain.

• 2011-04-29 — Align acquires Cadent Holdings, Inc. for ~$187.6M cash (SEC 10-Q, Note 4 "Business Combination"; press release 2011-03-29)

  • Conveyance: Assignment / acquisition of shares (one of ITC JX-0039 / JX-0040 / JX-0041; reel/frame not verified in this session)
  • Assignor: Cadent Holdings, Inc. / Cadent Ltd.
  • Assignee: Align Technology, Inc.
  • Correspondent: not verified
  • Context: acquisition — strategic purchase integrating intraoral scanning (iTero/iOC) with Align's Invisalign platform. $135.3M of goodwill recorded. NOT a fire-sale; seller was a VC-backed operating company (Fortissimo Capital, Apax, Panorama/JPMorgan, STAR Ventures, SV Life Sciences, IBT).

• 2014-10-09 — Application 14/511,091 (the application that issued as the '433 patent) filed by Align Technology, Inc.

  • Conveyance: none required (already Align-owned); filed as a continuation
  • Correspondent of record for prosecution: Wilson Sonsini Goodrich & Rosati (WSGR), Customer No. 107046, 650 Page Mill Road, Palo Alto, CA 94304, attention Charles C. Hagadorn III (filer of record on later family members). This is the prosecution correspondent, not an assignment-recordation correspondent — see Signal 3 below.
  • Context: internal continuation portfolio build-out.

• 2015-08-11 — US 9,101,433 B2 issues.

• 2017-11-14 — Align files ITC complaint 337-TA-1091 and five parallel district-court suits against 3Shape (26 patents, incl. the '433 patent).

  • Context: assertion by the operating owner itself, not by a transferee.

Bottom line on the timeline: the chain is a two-step operating-company chain (inventor → Cadent → Align) with no post-issuance transfer away from Align.

Timeline diagram

timeline
    title Ownership of US 9101433
    2004 : Priority provisionals filed
    2005 : Nonprovisional filed by Cadent
    2011 : Align acquires Cadent
    2014 : Continuation filed by Align
    2015 : Patent issues to Align
    2017 : Align sues 3Shape at ITC
    2019 : IPR final written decision
         : ITC finds no violation
    2020 : Follow-on suits in Delaware and Texas

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT.
   No link in the chain terminates at a licensing-only LLC. The chain is Cadent Ltd. (operating scanner maker) → Align Technology, Inc. (operating scanner + aligner maker). There is no "IP Holdings / Ventures / Licensing" entity, no registered-agent address, and no single-member Delaware/Texas LLC anywhere. ITC JX-0039/0040/0041 reflect an operating-company merger, not a shell transfer.

2. Known asserter in the chain — NOT PRESENT.
   Align Technology appears on no NPE asserter list. The Stanford NPE Litigation Database classifies the asserter in Align Technology, Inc. v. 3Shape A/S (1:17-cv-01649, D. Del.) under the category "Product company" (https://npe.law.stanford.edu/patent/9101433). No Acacia / Marathon / IV / IPNav / Wi-LAN / Conversant / Vringo / Pendrell / MPHJ entity appears at any point.

3. Repeat correspondent across the chain — NOT PRESENT (with a caveat).
   The recurring name in this family is WSGR (Wilson Sonsini Goodrich & Rosati), Customer No. 107046, Charles C. Hagadorn III — a very large general-practice firm that services Align's entire prosecution docket. Recurrence here reflects a single operating company using one outside counsel, which is the normal pattern, not the NPE pattern (one lawyer running a string of unrelated shell LLCs). Because I could not retrieve the assignment-recordation correspondent field for JX-0039/0040/0041, I flag this as unclear only as to the assignment correspondents — but there is no evidence of a repeat NPE-recording attorney. Note also the contrast: WSGR is a firm with essentially no presence on Unified Patents / RPX high-frequency-plaintiff correspondents.

4. Cascading transfers — NOT PRESENT.
   One substantive transfer (2011), then nothing. No chained LLCs, no <24-month multi-hop sequence.

5. Pre-litigation transfer — NOT PRESENT.
   The ownership transfer (2011-04-29) precedes the first assertion naming this patent (2017-11-14) by roughly 6.5 years — the opposite of the "assignment within 6 months of suit to set venue/standing" pattern.

6. Bankruptcy fire-sale — NOT PRESENT.
   Neither Cadent nor Align filed for bankruptcy. The Cadent transaction was a $190M all-cash strategic acquisition from a healthy VC-backed seller (SEC 10-Q, Note 4, 2011).

7. Privateering — NOT PRESENT.
   Align did not hand the patent to a third-party asserter. Align asserted the '433 patent in its own name in the ITC (337-TA-1091) and in district court. No SEC disclosure or Patent Progress / EFF coverage of an Align→NPE funnel was surfaced.

8. Defensive aggregator (anti-NPE) — NOT PRESENT.
   The chain does not terminate at RPX, AST, LOT Network, Unified Patents or OIN. Note that the patent is the subject of an IPR filed against Align (IPR2019-00163 by 3Shape, Final Written Decision) — a defensive challenge, not a defensive acquisition.

Verdict

Operating-company assertion.

Align Technology, Inc. — a publicly traded operating company (NASDAQ: ALGN) that manufactures and sells the iTero/iOC intraoral scanners and Invisalign aligners — acquired this patent family through its 2011-04-29 purchase of Cadent Holdings, Inc. (SEC 10-Q Note 4; ITC 337-TA-1091 assignment exhibits JX-0039/0040/0041) and asserted the '433 patent in its own name against a direct competitor, 3Shape A/S. The ITC found Align's own products practice claim 12 of the '433 patent, and the Commission ultimately found no violation (claim 12 not infringed) — a merits loss, but precisely the profile of an operating-company competitor dispute rather than an NPE campaign. There is no NPE transfer, no shell entity, no asserter-list match, no bankruptcy, and no pre-litigation transfer anywhere in the chain.

Two honest caveats: (1) I could not verify the individual reel/frame numbers or the assignment correspondents for JX-0039/0040/0041 in this session — those fields should be confirmed directly. (2) The '433 patent's forward citation/continuation family is enormous (11/154,520 through the 2020s filings), and later family members are still being prosecuted by Align as of 2022 (e.g., application 17/902,445, filed 2022-09-02), so this is a live, actively maintained portfolio rather than a monetization asset.

Verify at: https://assignmentcenter.uspto.gov/ — search patent number 9101433 (mirror: https://assignment.uspto.gov/patent/index.html). Cross-check the three assignment exhibits against ITC Inv. No. 337-TA-1091, JX-0039, JX-0040 and JX-0041.

I'll research US 9,101,433 and its cited prior art. Let me run several searches in parallel.

Let me dig for the patent's front-page "References Cited" section and the IPR record.

Prior-Art Analysis — US 9,101,433 B2

Analyst note on identifiers: I interpreted the number "9101433" literally and restricted results to US 9,101,433 B2 ("the '433 patent"). My searches did surface unrelated documents with numerically similar identifiers — e.g., WO 91/01433 A1 ("Dual alloy turbine blade," Allied Signal), FR 2 673 471 (national registration no. 91 01433, valve testing), and SE 9101433 (recombinant DNA, cited in EP 0 584 167) — all of which I have excluded as different documents.

1. The reference being analysed

Source: https://patents.google.com/patent/US9101433/en

Important caveat up front: With the search budget available I was able to retrieve the full specification/claims list of the '433 patent and the substantive prior-art record from the PTAB and ITC proceedings against it, but I could not retrieve a clean, complete front-page "References Cited (56)" listing with the examiner's per-reference § 102/§ 103 classifications for the '433 patent itself. The reference lists below are therefore assembled from (a) the immediate family's Information Disclosure Statements (the '433 is a continuation whose IDS content is carried over), (b) the references discussed in the '433 specification itself, and (c) the references actually asserted against the '433 and its siblings by 3Shape. I flag unverified items rather than filling gaps by assumption.

2. Table A — Patent documents cited in the '433 family's IDS / discussed in the '433 specification

Foreign patent documents appearing in the '433 specification (Table A, foreign):

3. Table B — References actually asserted against the '433 patent (PTAB IPR2019-00163)

This is the operative prior-art record for the '433. In IPR2019-00163, 3Shape A/S v. Align Technology, Inc., the Board instituted and issued a Final Written Decision on claims 12 and 14 of the '433 patent. Both grounds were § 103 combinations, with the petitioner asserting the references as § 102(b) art.

Source: https://ipwatchdog.com/wp-content/uploads/2019/06/3Shape-00163.pdf and https://portal.unifiedpatents.com/ptab/case/IPR2019-00163

Key point on Table B: the PTAB's challenge to the '433 was entirely § 103, not § 102. No reference in the record was found to anticipate claims 12 or 14 outright. The petitioner argued satisfaction of the limitations only through a combination + motivation-to-combine rationale. That is a strong indicator that the '433 is not vulnerable to clean § 102 anticipation, but is exposed on obviousness.

4. Table C — References from the parallel Align/3Shape proceedings bearing on the same claim scope

Because the '433 shares its specification with US 8,102,538, 8,363,228, 8,451,456, 8,675,207, 8,885,175, 9,404,740 and 10,924,720, the prior art asserted in IPRs against those siblings is directly probative of the '433's claims. These were not adjudicated against the '433 itself, so treat them as secondary.

5. Claim-level conclusions

I could not retrieve the full text of all claims of the '433 within this session; the mapping below is keyed to (i) the two claims the PTAB actually adjudicated (12 and 14), and (ii) the claim architecture evident from the abstract and the "Definitions" section (a device claim reciting scanning means for depth data over a 2D array + imaging means for colour data over the same array, with the spatial disposition substantially fixed; a counterpart method claim; and dependent claims to confocal scanning, tri-colour/white illumination, filter wheels, LED placements, polarisation, and the mapping of colour onto the 3D entity E→I).

§ 102 — single-reference anticipation:

• No reference in the retrieved record anticipates the '433's independent device/method claims. The only reference disclosing both 3D surface data and 2D colour data in a single instrument is Geng, US 6,594,539 (A2), and it is not § 102(b) art (issued 2003-07-15, after the 2003-06-17 critical date); it is available only under § 102(e), and its multi-view/"several relative angles" architecture is arguably inconsistent with the "substantially fixed spatial disposition" limitation.
• Okamoto (C2) is the strongest § 102(b) candidate for any claim limited to associating colour with depth data over a common array, but its microscope architecture (raster scanner + z-stage, not an intraoral probe with a fixed disposition) leaves the principal independent claims intact.
• Babayoff / WO 00/08415 (C1) and Minsky / Moermann / Engelhardt / Falk / Lehmann (A1, A20, A8, D2, D3) are § 102(b) art only as to depth acquisition by confocal or intensity-pattern means. Any claim reciting colour associated with the depth data survives each of them individually — as both the ITC ALJ and Mr. Babayoff's own testimony confirm.
• EP 0 837 659 (B1) arguably teaches away (§ 102 is a poor fit; it supports non-obviousness arguments).

§ 103 — obviousness (the real risk): the '433 was challenged in IPR2019-00163 exclusively on Okamoto + Babayoff and Babayoff + Okamoto, both asserted under § 102(b) as the underlying art. This confirms that the colour/depth-association claims (e.g., claims 12 and 14) rise or fall on motivation-to-combine, not on anticipation. Secondary references asserted against the siblings that would be available against like claims of the '433 include Geng '539 (bridging/motivation reference), Sachdeva (D5) for registration, and Engelhardt (A8)/WO 02/056756 (B5) for the on-board-processor limitation.

6. Explicit limitations of this analysis

1. I did not obtain the complete front-page "References Cited (56)" listing of US 9,101,433 with examiner strike-throughs and per-reference statutory classifications. The Table A list is reconstructed from the family IDS (US 11/889,112), the '433 specification, and the front pages of sibling Align patents, and should be re-verified against the '433 PDF at https://patents.google.com/patent/US9101433/en before being relied on in a filing.
2. Several Table A rows carry truncated inventor names (e.g., US 4,935,635) in the retrieved IDS image; I have deliberately not reconstructed them.
3. I could not verify the publication date of EP 0 837 659 in this session; I have flagged it as unverified rather than asserting a date.
4. The claim-number mapping is provisional. I confirmed only that claims 12 and 14 were adjudicated in IPR2019-00163; I have not independently read the issued claim set, so any statement of the form "anticipates claim N" should be treated as a lead for verification, not a conclusion.
5. Litigation context retrieved: IPR2019-00163 (PTAB, Final Written Decision); ITC Inv. No. 337-TA-1091 (Pub. 5300); D. Del. 1:17-cv-01649 and 1:20-cv-01492; W.D. Tex. 6:20-cv-00979. Related Align/3Shape IPRs against siblings: IPR2020-00173 ('538) and IPR2021-01120 ('740).

I'll ground the obviousness analysis in the actual prior-art citations listed on the patent page, so let me pull those and check the PTAB record.

Good — this confirms the IPR petitioner and claim set. Let me pin down the IPR2019-00163 grounds/outcome and the cited prior-art list.

Let me verify the verbatim claim language (claims 1, 6, 7, 11, 12) and check for the remaining cited-art inventory.

Obviousness Analysis — US 9,101,433 B2 (35 U.S.C. § 103)

0. Corrections and flags before I begin

Per the operating rules, I flag contradictions with the previously generated section rather than silently reconciling:

1. The IPR2019-00163 outcome is no longer unknown. The prior section said the substantive FWD result "could not be verified." I located the FWD reasoning in the '433 file-history exhibit filed in IPR2021-01120: the Board held "Petitioner has not shown that the In Focus limitation of claim 12 is taught or suggested by Okamoto in view of Babayoff," and because claim 14 depends from claim 12 with no independent argument, both claims 12 and 14 survived. (Ex-1028, '433 file history, IPR2021-01120) This is highly material to the task and I build on it below. Petitioner identity is now settled: 3Shape A/S and 3Shape Inc. v. Align Technology, Inc. (Patexia; IPR2019-00163 institution decision) — though a secondary docket source also lists 3Shape Poland sp. z o.o. as a party.

2. Date inconsistency. This task states the current date is April 26, 2026, but the environment clock reads 2026-09-30 and the prior section relies on events dated July 2026 (CAFC Nos. 24-2270, 25-1879; the Align v. ClearCorrect verdict). Those July 2026 items cannot postdate an April 26, 2026 analysis. I treat them as unverified carry-over and do not rely on them here.

3. Claim text. The authoritative full text supplied in my prompt truncates mid-Background (after "no color inf…") and does not include the claims. I therefore rely on the previously generated plain-language claim constructions for claims 1/7/12 and dependents, and on the Board's and parties' characterizations of claim elements in IPR2019-00163 — not on a fresh verbatim read of the claim set. Where my analysis turns on exact claim wording, I say so.

4. "Prior Art section of this page." The fetched Google Patents text for US9101433 rendered the Prior art keywords field (image data, dimensional, data, color, image) but not the "Patent Citations"/"Cited By" tables. So I reconstructed the citation inventory from (a) the references the '433 specification itself cites in its Background, and (b) the art of record against this patent and its immediate siblings in IPR2019-00163 and ITC Inv. No. 337-TA-1091. I state which is which, rather than presenting a synthesized list as if it were the page's citation table.

1. Governing law and posture

• Pre-AIA § 103(a) applies. The '433 (App. No. 14/511,091, filed Oct. 9, 2014) is a continuation carrying an effective filing date of June 17, 2004 (provisionals 60/580,108 and 60/580,109). The Board and the parties litigated the § 102(b) status of the art (institution decision, § I.B: "Petitioner asserts that Babayoff and Okamoto are prior art… under 35 U.S.C. § 102(b)"; "Patent Owner does not contest…"). Treating the art as § 102(b) art is only coherent under pre-AIA law, and the companion '228 petition expressly invoked "pre-AIA 35 U.S.C. 103(a)." Assumption to verify, but a well-grounded one.
• Consequence for the critical date: pre-AIA § 102(b) art must predate June 17, 2003. Babayoff (Feb. 17, 2000) and Okamoto (Mar. 30, 2001) clear it comfortably. Sachdeva US 2004/0197727 (pub. Oct. 7, 2004) does not predate the priority date and is, at best, § 102(e) art as of its U.S. filing date (and then only if that date precedes June 17, 2004) — plus it may be disqualified for § 103 purposes under pre-AIA § 103(c) if it was commonly owned with the '433 when the invention was made (Sachdeva's dental-CAD filings were Align-side). Any ground built on Sachdeva needs that qualification addressed. Fisker (WO 2010/145669, 2010) is categorically not prior art to the '433 and must not appear in a '433 ground.
• Framework. Graham v. John Deere, 383 U.S. 1 (1966), plus KSR Int'l v. Teleflex, 550 U.S. 398 (2007) (rationales: known technique improving a similar device in the same way; simple substitution of a known element; use of a known technique to improve a similar device; obvious to try within a finite set of identified, predictable solutions).
• POSITA (analyst-proposed, not adjudicated here): a person with a B.S. in electrical/optical engineering or physics (or equivalent) and ~2–4 years' experience in optical 3D metrology (confocal or other), digital color imaging, and/or dental CAD/CAM scanning, familiar with image registration and focal-plane selection techniques. Parties in the parallel proceedings used comparable experts (e.g., Dr. Sohail Dianat for 3Shape).

2. Prior-art landscape

Important structural point about the '433's own record. The Board expressly found that Babayoff and Okamoto are the art both the ITC and the Office considered, and that 3Shape's IPR grounds against the '433 were only two: (1) Okamoto in view of Babayoff, and (2) Babayoff in view of Okamoto, both under § 103. That matters: the strongest single-reference disclosure of "3D surface with color per picture element in a common XY frame" is Okamoto, and the strongest single-reference disclosure of the claimed confocal scanner architecture is Babayoff. Any serious § 103 case on the '433 starts there and must then solve the two limitations the Board actually cared about: (a) estimated image data from two image data sets (claims 1, 7, 11), and (b) "in focus … for a plurality of distances in the depth direction" (claim 12).

3. Claim-by-claim analysis

3.1 Claims 1–6 — depth frame + two 2D image data sets → estimated image data → mapping

Primary combination: Okamoto + Babayoff (+ the '433's own admitted prior art on repeated scans/interpolation; optionally Pulli).

Motivation to combine (KSR).

• Problem recognized in the art itself: the '433's Background (citing EP 837 659 and U.S. 6,594,539) states the two-art mismatch problem in the applicant's own words — mismatch of 2D color to 3D points "particularly where relative movement between the object and the device occurs between the acquisition of the three-dimensional topological data and acquisition of the two-dimensional image data." A reference that articulates the problem supplies motivation. KSR, 550 U.S. at 418–421.
• Known technique improving a similar device in the same way: Babayoff and Okamoto are both intraoral/optical metrology instruments; adding a second, closely spaced color acquisition and combining it is the natural way to suppress the motion artifact both references acknowledge.
• Obvious to try, finite set: given two color frames bracketing (or adjacent to) the depth scan, the implementer faces a small, fully enumerated menu — use one frame, average them, or interpolate to the depth-scan instant. The claimed option is the routine choice when the goal is temporal registration.
• Reasonable expectation of success: pure signal-processing engineering on data the instrument already produces; no new physics, no unpredictability.

Honest weaknesses on claims 1–6. Claim 1's "estimated image data … so as to account for when …" is a result-oriented functional limitation. Two opposite attacks follow, and a challenger must pick one: (i) if the clause is limiting, the record's interpolation teaching runs in the opposite direction (the admitted prior art estimates depth Z at the color-image time; claim 1 estimates color/image data at the depth-scan time) — a petitioner must show these are interchangeable roles rather than merely asserting equivalence; or (ii) if the clause is mere intended use (In re Montgomery), then the rejection collapses to Okamoto + Babayoff, which is a very clean § 103 case but risks a construction fight. The Board's skepticism about unexplained combinations (Metalcraft of Mayville v. Toro, cited in the FWD) is directly on point: the interpolation step must be supported by articulated reasoning, not "well-known techniques" boilerplate.

Dependents.

• Claim 2 (capture within a time interval such that the disposition is substantially fixed, ~<100 ms): squarely Babayoff's architecture as restated in the '433 at "0 to 100 milliseconds … preferably 0 to 50 … more preferably 0 to 20." Very strong.
• Claim 3 (separate 2D sensors for color vs. depth): Okamoto literally has two optical systems — confocal system 1 (monochrome/red laser) and non-confocal system 2 with color CCD 24. This is arguably the single strongest dependent-claim rejection in the patent: simple substitution of a known element, with Okamoto itself supplying the motivation (keeping the high-resolution confocal channel monochromatic while dedicating a separate sensor to color).
• Claim 6 (depth data generated between the first and second image data): unremarkable ordering limitation; Okamoto's per-step acquisition loop and any bracketing design supply it. Motivation: symmetric temporal bracketing is the textbook setup for interpolation.

3.2 Claims 7–11 — tri-wavelength color capture

Primary combination: Okamoto + Babayoff + a sequential-RGB capture teaching (EP 837 659 / U.S. 6,594,539 / general color-imaging knowledge); Engelhardt for the confocal opticals if needed.

• Claim 7's independent core — 2D image data obtained by separately illuminating the portion with each of three wavelengths and combining — is the canonical RGB tri-stimulus acquisition with a monochromatic sensor. Once Okamoto supplies per-picture-element color + height storage and display, replacing (or implementing) its color channel via sequential R/G/B illumination is a simple substitution of a known element with predictable results. The '433 itself treats sequential tri-color capture as unremarkable (tri-color sequence generator 74, rotating tri-color filter 450/550, tri-color LEDs 77/177/277/377/385).
• Crucially, claim 7 does not recite the "accounting for when … were generated" limitation (per the prior section's reading, that recitation appears in dependent claim 11). That makes claim 7 broader and materially more vulnerable than claim 1: it requires only that estimated image data be generated from first and second image data sets and mapped to the depth frame. Merging two color frames (noise reduction, exposure/merge, motion-blur suppression, or simple averaging) is routine; the "estimated" wording is satisfied by any such combination.
• Claim 9 (depth data generated using one of the three wavelengths) is strongly suggested: the FWD records Okamoto's confocal channel using "single color light, e.g., red laser light," while its color channel is a separate color CCD. Reusing the laser's own wavelength as one of the three color channels — exactly what the '433's "third embodiment" does with a red laser and blue/green LEDs — is a design economy a POSITA would adopt to avoid a fourth source and to guarantee co-registration of the depth and that color channel.

Motivation. Dental shade matching for crowns/bridges/restorations (stated in the '433 and inherent in Okamoto's stated object: coloring the 3D profile "with colors that are close to the actual colors of the object") requires accurate, per-pixel color on the 3D model. Sequential RGB with a monochrome sensor was a well-known way to get multi-channel color at full sensor resolution — which is precisely why the '433's own Detection optics 60 "is preferably monochromatic to maximise the resolution of the device."

3.3 Claim 12 (and 13, 15, 19, 20) — per-focal-length selective mapping so color is "in focus" across depths

This is the claim that has already been tested — and it survived. The Board's FWD held the "In Focus" limitation of claim 12 was not taught or suggested by Okamoto in view of Babayoff, and rejected 3Shape's fall-back reliance on Pulli and the applicant-admitted prior art as insufficiently explained (failure to say how or why a POSITA would combine; Metalcraft of Mayville).

What a stronger § 103 case on claim 12 would require. The claim requires receiving 2D image data for each of a plurality of focal lengths relative to the image-gathering member, and selectively mapping image data to depth data based on the plurality of focal lengths and the depth data, such that the resulting associated color is in focus relative to the structure portion for a plurality of distances in the depth direction. That is, functionally, extended-depth-of-field / focus-stacking with depth-driven selection, i.e.:

• primary: Okamoto + Babayoff for everything except the focus selection; plus
• secondary: art teaching per-focal-plane selection/composition — a focus-stacking or extended-depth-of-field teaching, or confocal chromatic-depth-sectioning art where each wavelength/focal length images a different Z band; plus
• the '433's own specification (chromatic-dispersion objective, blue→aqua→green→amber→red illuminating different Z zones in focus; Y/C luminance replaced by a composite focus image) as applicant-admitted prior art.

Motivation would be genuine and citable. The intraoral cavity spans a Z range far exceeding any single focal plane's depth of field; a color map that is blurred at the anterior or posterior of the scanned zone defeats shade matching. Both Okamoto's fixed-focus color observation system and the practitioner's need for in-focus color across the arch supply the incentive. KSR's "known technique improving a similar device" rationale fits.

Why this is still hard, and why the FWD outcome deserves weight.

1. Okamoto's color subsystem is not depth-selective. Its color data comes from a non-confocal system (the FWD quotes Patent Owner's unrebutted evidence that Okamoto's "light reception amount"/"light quantity" refers to the **confocal** channel and **single-color, e.g., red laser, light**). A POSITA reading Okamoto would not derive "color in focus at a plurality of depths" from it; and the maximum-light-quantity-refresh mechanism Okamoto uses (steps 106–107) refreshes color together with the in-focus light quantity — which, if anything, implies color is a passenger to the confocal focus decision, not independently depth-selected.
2. Arguable teaching away. Okamoto's fixed-plane color observation and EP 837 659's monochromatic-plus-separate-color-camera workflow both push away from a per-depth color focus-selection scheme; EP 837 659 in particular requires an opaque coating that must be removed — the antithesis of a simultaneous, in-focus, full-color capture.
3. The "selectively mapping … such that … in focus" language invites a fight over whether it is a structural limitation or a functional result, and over the standard for "in focus."
4. Claim 12 has been adjudicated twice: the ITC found it not invalid (and not infringed) in Inv. No. 337-TA-1091, and the PTAB found it not shown unpatentable in IPR2019-00163. Those are not dispositive of a fresh § 103 case, but they are strong signals that claim 12 is the family's most defensible claim, not its weakest.

Bottom line on claim 12: with better-developed record evidence and explicit combination reasoning, a challenger could make a legitimate prima facie case (Okamoto + Babayoff + focus-stacking/chromatic-depth-sectioning art + admitted prior art). On the record actually tested, that case failed. I would not predict success.

4. Ground summary

Do-not-use list. Fisker (WO 2010/145669, 2010) and US 2006/0001739 post-date the '433's June 17, 2004 effective filing date and cannot be § 102/§ 103 art against it; they appear in the record only because of the family's later continuations (e.g., the '720/'757 patents).

5. Rebuttal case a challenger must anticipate

1. Objective indicia. Align presented objective-indicia evidence in the ITC (the IPR record shows Patent Owner relying on Exhibits 2001, 2002, 2007–2010, i.e. the ITC briefs, for exactly this purpose), and the Board expressly declined to reach that issue in IPR2019-00163. Combined with the ITC's no-invalidity determination, a full § 103 analysis cannot treat secondary considerations as absent. I could not verify the ITC's reasoning on secondary considerations, so I flag it rather than characterize it.
2. Teaching away / undermining. EP 837 659's opaque-coating-and-remove workflow, and Okamoto's non-depth-selective color channel, both cut against the claim 12 combination specifically.
3. Direction-of-interpolation argument on claim 1 (the prior art interpolates depth to the color time; claim 1 interpolates color to the depth time).
4. § 103(c) disqualification for Sachdeva-based grounds.
5. Hindsight caution — the FWD's Metalcraft citation is a standing warning that "these techniques are well known" will not carry a ground; each combination needs a concrete, evidence-backed why.

6. Confidence and residual uncertainty

• High confidence: the IPR2019-00163 identity (3Shape v. Align), the challenged claims (12, 14), the two § 103 grounds (Okamoto+Babayoff; Babayoff+Okamoto), both references as § 102(b) art, and the outcome that claims 12 and 14 were not shown unpatentable — sourced from the Board's institution decision and the '433 file-history excerpt of the FWD. My earlier uncertainty in the summary section is now resolved.
• High confidence: the substance of the Okamoto and Babayoff disclosures as characterized by the Board (quotes above are from the institution decision and the FWD excerpt).
• Moderate confidence: U.S. 6,594,539's exact issue date and § 102 basis (I did not verify it); Engelhardt's specific disclosure (I did not verify it in this pass); and whether pre-AIA § 103(a) formally governs (strongly indicated by the § 102(b) litigation posture, but I did not retrieve the AIA-transition determination).
• Not verified: the verbatim text of claims 1, 7 and 12 (the supplied patent text lacks the claims section); the ITC's secondary-considerations reasoning; and any 2026 appellate activity, which I did not re-check here and which the prior section's date basis now conflicts with.
• Practical note: with the '433 expired June 17, 2025, a fresh obviousness challenge would most plausibly arise in an expired-patent damages tail, a priority/§ 112 lineage dispute, or as art/context against the later family members — not in a live injunction posture.