DCT
2:17-cv-00044
Acuity Innovation Design LLC v. Rhondium Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Acuity Innovation and Design, LLC (Arizona)
- Defendant: Rhondium Corporation (Delaware)
- Plaintiff’s Counsel: JENNINGS, STROUSS & SALMON, P.L.C.
- Case Identification: 2:17-cv-00044, D. Ariz., 01/06/2017
- Venue Allegations: Plaintiff alleges venue is proper in the District of Arizona because Defendant is subject to personal jurisdiction, has committed acts of infringement there, and a substantial part of the events giving rise to the claim occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Rhondium One Visit Crown product and associated methods infringe a patent related to fabricating and placing a dental prosthesis in a single appointment.
- Technical Context: The technology concerns dental prosthetics, specifically methods for creating and installing crowns in a single dental visit, thereby avoiding the traditional multi-visit process involving off-site lab fabrication.
- Key Procedural History: The complaint notes that the inventor, Laurence Harlan, D.D.S., assigned the patent-in-suit to Plaintiff Acuity Innovation and Design, LLC on or about December 7, 2016, approximately one month before the complaint was filed.
Case Timeline
| Date | Event |
|---|---|
| 2003-01-22 | '862 Patent Priority Date |
| 2005-08-30 | '862 Patent Issue Date |
| 2016-12-07 | '862 Patent Assigned to Plaintiff |
| 2017-01-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,935,862 - DENTAL PROSTHESIS FABRICATION AND PLACEMENT SYSTEM AND ASSOCIATED METHODS
- Patent Identification: U.S. Patent No. 6,935,862, DENTAL PROSTHESIS FABRICATION AND PLACEMENT SYSTEM AND ASSOCIATED METHODS, issued August 30, 2005.
The Invention Explained
- Problem Addressed: The patent's background section describes the conventional process for fabricating and placing dental prostheses like crowns as typically requiring at least two visits to the dentist's office. The first visit involves preparing the tooth and making a mold, followed by an interim period where a temporary prosthesis is used while a permanent one is made at a remote lab. A second visit is then required to affix the permanent prosthesis. ('862 Patent, col. 1:14-23).
- The Patented Solution: The invention is a method that allows a custom dental prosthesis to be fabricated and placed in a single appointment. It involves using a "prefabricated prosthesis shell" that is fitted over the patient's prepared tooth, filled with an "uncured composite material," partially light cured "in situ" (in the mouth), removed for modification and final curing, and then permanently affixed to the tooth. ('862 Patent, col. 2:33-48, col. 4:11-34). This process eliminates the need for a temporary crown and a second appointment.
- Technical Importance: This method purports to offer significant efficiency for both dentists and patients by consolidating a multi-visit procedure into a single appointment. ('862 Patent, col. 2:28-33).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" of the '862 Patent without specifying which ones (Compl. ¶15). The analysis will focus on independent claim 1.
- Independent Claim 1:
- placing a prefabricated prosthesis shell over a tooth that has a surface that has been prepared for prosthesis placement;
- trimming the shell to achieve desired seating on the tooth and optimal occlusion;
- removing the shell from the tooth;
- painting the tooth prepared surface with a separating medium;
- painting an interior surface of the shell with a bonding agent;
- adding an uncured composite material to an interior space of the shell;
- positioning the shell over the tooth;
- partially light curing the composite material in situ;
- removing the shell from the tooth;
- modifying the shell as desired to achieve optimal conformation;
- fully light curing the composite material; and
- affixing the shell to the tooth.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Rhondium One Visit Crown ('OVC')" (Compl. ¶11).
Functionality and Market Context
- The complaint alleges the OVC is a "dental prosthesis fabrication and placement system" (Compl. ¶13). Based on its name ("One Visit Crown") and the infringement allegations, the OVC is a product or kit that enables dentists to fabricate and place a dental crown in a single patient appointment.
- The complaint alleges that Rhondium's "website and instructional materials" describe a method of using the OVC that embodies the elements of the patented method (Compl. ¶12).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The following chart is constructed based on the elements of independent claim 1 of the '862 Patent and the complaint's general allegation that using the OVC product with its instructions infringes the patent.
'862 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| placing a prefabricated prosthesis shell over a tooth that has a surface that has been prepared for prosthesis placement | The complaint alleges that the OVC is a system for single-visit crown fabrication, which would necessarily involve placing a prefabricated component over a prepared tooth. | ¶11, ¶13 | col. 4:11-14 |
| trimming the shell to achieve desired seating on the tooth and optimal occlusion | Use of the OVC system as instructed is alleged to include trimming the shell for a custom fit. | ¶12 | col. 4:15-18 |
| removing the shell from the tooth | The alleged infringing method includes removing the OVC shell after initial fitting. | ¶12 | col. 4:19 |
| painting the tooth prepared surface with a separating medium | Use of the OVC system as instructed is alleged to include applying a separating medium to the prepared tooth. | ¶12 | col. 4:20-21 |
| painting an interior surface of the shell with a bonding agent | Use of the OVC system as instructed is alleged to include applying a bonding agent to the shell's interior. | ¶12 | col. 4:22-23 |
| adding an uncured composite material to an interior space of the shell | Use of the OVC system as instructed is alleged to include filling the shell with a composite material. | ¶12 | col. 4:24-26 |
| positioning the shell over the tooth | The alleged infringing method includes re-positioning the filled OVC shell onto the prepared tooth. | ¶12 | col. 4:27 |
| partially light curing the composite material in situ | Use of the OVC system as instructed is alleged to include a partial curing step while the shell is in the patient's mouth. | ¶12 | col. 4:28-29 |
| removing the shell from the tooth | The alleged infringing method includes removing the partially cured shell from the tooth for final modification. | ¶12 | col. 4:30 |
| modifying the shell as desired to achieve optimal conformation | Use of the OVC system as instructed is alleged to include steps for modifying the shell after partial curing. | ¶12 | col. 4:31-32 |
| fully light curing the composite material | Use of the OVC system as instructed is alleged to include a final, full curing of the composite material. | ¶12 | col. 4:33 |
| affixing the shell to the tooth | The final step of the alleged infringing method is the permanent affixing of the completed crown to the tooth. | ¶12 | col. 4:34 |
- Identified Points of Contention:
- Technical Questions: A central question will be whether the steps detailed in Rhondium's "website and instructional materials" for the OVC product map directly onto the specific sequence of steps required by claim 1. The complaint makes a blanket allegation but provides no specific evidence, such as excerpts from the instructional materials, to demonstrate this mapping (Compl. ¶12).
- Scope Questions: The infringement analysis may depend on whether the physical component of the "Rhondium One Visit Crown" system meets the definition of a "prefabricated prosthesis shell" as that term is used in the patent.
V. Key Claim Terms for Construction
The Term: "prefabricated prosthesis shell"
Context and Importance: This term appears in the first step of claim 1 and defines the starting component of the patented method. The case may turn on whether the OVC product supplied by Rhondium is a "prefabricated prosthesis shell" or a different type of component. Practitioners may focus on this term to determine if the accused product falls within the claim's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the shell can be one of a variety of standardized premanufactured shells provided in a kit, not necessarily a custom-made item for each patient prior to the single appointment ('862 Patent, col. 2:50-53).
- Evidence for a Narrower Interpretation: The preferred embodiment describes a "custom shell restoration" that is prepared in advance on a study model of the patient's mouth ('862 Patent, col. 2:26-28). This could support an argument that "prefabricated" requires some level of patient-specific customization before the single placement visit begins.
The Term: "partially light curing the composite material in situ"
Context and Importance: This step is a critical intermediate stage of the method. The definition of "partially" and the requirement that it occur "in situ" (in the mouth) will be central to the infringement analysis. The specific duration and result of this curing step could be a key point of dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not quantify "partially," suggesting any curing that is less than "fully" curing could meet the limitation.
- Evidence for a Narrower Interpretation: The specification provides a specific example of partial curing: "light cured from the buccal, lingual, and occlusal aspects for no more than several seconds, typically approximately 5-10 seconds" ('862 Patent, col. 3:28-32). This specific embodiment could be used to argue for a narrower construction limited to a very brief, superficial cure that allows for subsequent removal and modification.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Rhondium contributes to and actively induces infringement by others (presumably dentists) through the "manufacture, use, offering for sale, sale, and/or importation or exportation" of its OVC product (Compl. ¶16). The basis for inducement is the allegation that Rhondium's "website and instructional materials" instruct users on how to perform the infringing method (Compl. ¶12).
- Willful Infringement: The complaint does not explicitly allege "willful" infringement. However, it seeks "increased damages" under 35 U.S.C. § 284 and requests a finding that the case is "exceptional" under 35 U.S.C. § 285, which are remedies often associated with findings of willfulness or other egregious conduct (Compl. p. 4, ¶¶ 4-5). The complaint does not allege any facts regarding pre-suit knowledge by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: given the complaint's conclusory allegations, can the Plaintiff demonstrate, through discovery of Defendant's instructional materials and product specifications, that the use of the OVC system requires dentists to perform each and every step of the asserted method claim in the specified order?
- The case will also likely involve a question of claim construction: does the term "prefabricated prosthesis shell" require a patient-specific component prepared on a model before the appointment, as described in the preferred embodiment, or does it more broadly cover a standardized, off-the-shelf component selected at the time of the procedure? The answer will determine whether the OVC product falls within the scope of the claim.
- A final key question will be one of infringement detail: does the partial curing step taught for the OVC product function in the same way as the "partially light curing... in situ" required by the claim, which is described in the patent as a brief, 5-10 second cure sufficient to allow for removal and further modification? A mismatch in the technical nature of this critical step could defeat the infringement allegation.