DCT

1:18-cv-01949

Align Technology Inc v. 3Shape As

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-01949, D. Del., 05/18/2020
  • Venue Allegations: Venue is alleged based on Defendants conducting business in Delaware, deriving substantial revenue from the state, and knowingly inducing infringement within the district. The Delaware incorporation of Defendants 3Shape Inc. and 3Shape Manufacturing US, LLC is also cited as a basis for jurisdiction.
  • Core Dispute: Plaintiff alleges that Defendant’s TRIOS intraoral scanners and associated dental software infringe five U.S. patents related to virtual bracket positioning, intraoral scanner optical design, and the generation of virtual dental models.
  • Technical Context: The dispute is in the field of digital dentistry, where intraoral scanners create three-dimensional digital models of a patient's teeth, replacing traditional physical impression methods for orthodontic and restorative treatment planning.
  • Key Procedural History: The complaint alleges a history of litigation between the parties beginning in 2017, including actions in the District of Delaware and the U.S. International Trade Commission (ITC). It further alleges that testimony from an ITC investigation shows Defendant undertook a "big analysis" of Plaintiff’s patent portfolio as of 2017 due to a recognized risk of infringement, which may be relevant to allegations of willful infringement.

Case Timeline

Date Event
2005-07-15 U.S. Patent No. 9,975,294 Priority Date
2006-10-20 U.S. Patent No. 9,844,420 Priority Date
2011-04-29 Plaintiff acquires Cadent Holdings, Inc.
2014-08-15 U.S. Patent Nos. 9,675,430, 10,507,088, and 10,507,089 Priority Date
2017-06-13 U.S. Patent No. 9,675,430 Issued
2017-12-19 U.S. Patent No. 9,844,420 Issued
2018-05-22 U.S. Patent No. 9,975,294 Issued
2018-12-11 Plaintiff files Original Complaint in the matter
2019-12-17 U.S. Patent Nos. 10,507,088 and 10,507,089 Issued
2019-12-20 Plaintiff files Motion to Amend in a related case, cited for Defendant's knowledge
2020-05-18 Second Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,844,420 - "System and Method for Positioning Three-Dimensional Brackets on Teeth"

The Invention Explained

  • Problem Addressed: The patent describes the difficulty in accurately placing orthodontic brackets on teeth, particularly when teeth are severely crowded or when the bonding surface is obstructed by teeth in the opposing arch (’420 Patent, col. 1:35-45).
  • The Patented Solution: The invention is a system that uses a digital model of a patient's teeth to generate a graphical representation of a "specialized plane," such as the curve of Spee or Andrew's plane, that passes through the crowns of the teeth. This reference plane is then used to determine an accurate initial position for a virtual bracket on a tooth, improving the resulting treatment plan (Compl. ¶39; ’420 Patent, col. 4:1-15).
  • Technical Importance: The use of defined anatomical planes as a digital reference aims to provide a more objective and repeatable method for bracket placement than manual positioning, potentially improving treatment outcomes and efficiency (Compl. ¶39).

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶41).
  • Claim 11 recites a system for positioning a virtual bracket on a patient's tooth, comprising:
    • A processor and memory with program code.
    • The code causes the system to receive a digital data set representing a patient's teeth.
    • The system generates, on a display, a graphical representation of a reference surface passing through the crown of each tooth.
    • The reference surface is defined at least in part by a curve of Spee or an Andrew's plane.
    • The graphical representation is manipulable on the display by a user to modify the reference surface.
    • The system determines an initial position for the virtual bracket on the tooth, where the virtual bracket is aligned with the graphical representation of the reference surface.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,675,430 - "Confocal Imaging Apparatus with Curved Focal Surface"

The Invention Explained

  • Problem Addressed: The patent notes that conventional confocal imaging systems for intraoral scanning use "field lenses" to flatten the imaging field. These lenses can make the optical assembly larger, heavier, and more challenging to manufacture and align correctly (’430 Patent, col. 1:35-49).
  • The Patented Solution: The invention is a confocal imaging apparatus designed without a field lens, resulting in a "non-flat focal surface." A translation mechanism adjusts a lens to displace this non-flat surface, and a detector measures light intensities at various points. A processor then computationally adjusts the detected positions of points on the scanned object to "compensate for the non-flat focal surface," thereby achieving an accurate 3D image (’430 Patent, Abstract).
  • Technical Importance: This optical design allows for the construction of intraoral scanners that are smaller, lighter, and easier to manufacture compared to systems that require field lenses for optical correction (’430 Patent, col. 2:40-49).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶58).
  • Claim 1 recites a confocal imaging apparatus, comprising:
    • An illumination module to generate an array of light beams.
    • Focusing optics with multiple lenses to perform confocal focusing of the light beams onto a non-flat focal surface and direct them toward a 3D object.
    • A translation mechanism to adjust the location of at least one lens to displace the non-flat focal surface along an imaging axis.
    • A detector to measure intensities of returning light beams reflected off the object.
    • The intensities are measured for multiple locations of the at least one lens to determine positions of points on the object.
    • The detected positions are to be adjusted to compensate for the non-flat focal surface.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,975,294 - "Method for Preparing a Physical Plaster Model"

  • Technology Synopsis: The patent addresses shortcomings in accurately simulating jaw occlusion in digital dentistry (Compl. ¶77). The claimed invention provides a system for generating a virtual model of teeth that incorporates a "virtual alignment arrangement" with positioning reference components to yield proper occlusion between the virtual upper and lower jaws (’294 Patent, col. 37:60-38:15).
  • Asserted Claims: Independent claim 1 (Compl. ¶80).
  • Accused Features: The TRIOS intraoral scanning systems and the Dental System software product, which allegedly create virtual models with alignment structures that provide virtual occlusion (Compl. ¶¶78, 80).

U.S. Patent No. 10,507,088 - "Imaging Apparatus with Simplified Optical Design"

  • Technology Synopsis: The patent describes an imaging apparatus for intraoral scans that features a non-flat focal surface. A key aspect is that the shape or magnification of this non-flat focal surface changes as the focusing setting is adjusted. The system uses compensation models to adjust for the non-flat surface, with different adjustments for different focusing settings (’088 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶96).
  • Accused Features: The TRIOS 3 and 4 scanners are accused of incorporating the claimed light source, optical system with a non-flat focal surface, translation mechanism, and detector that uses compensation models (Compl. ¶¶95, 97-100).

U.S. Patent No. 10,507,089 - "Imaging Apparatus with Simplified Optical Design"

  • Technology Synopsis: This patent is related to the ’088 Patent and also describes an imaging apparatus with a non-flat focal surface whose shape or magnification changes with focus adjustments. The claims add a processor that adjusts depth data using compensation models that specifically "compensate for changes in magnification associated with different locations of the at least one lens" and then generates a 3D virtual model from the adjusted data (’089 Patent, Abstract).
  • Asserted Claims: Independent claim 9 (Compl. ¶114).
  • Accused Features: The TRIOS 3 and 4 scanners, including their internal processors (e.g., an Artix-7 FPGA), are accused of adjusting depth data using compensation models for magnification changes to generate a 3D model (Compl. ¶¶113, 115-119).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the 3Shape TRIOS, TRIOS 3, and TRIOS 4 intraoral scanning systems, and related software including TRIOS software, TRIOS Module software, Ortho System software, and Dental System software (collectively, the "Accused Products") (Compl. ¶29).

Functionality and Market Context

The complaint alleges that the Accused Products are digital dentistry solutions used to obtain 3D digital models of a patient's teeth and manipulate those models for treatment planning (Compl. ¶7, ¶29). Specific accused software functionalities include the "Bracket Placement" module within the Ortho System software and the "Model Builder" within the Dental System software (Compl. ¶42, ¶80). A screenshot from the 3Shape Ortho System Manual shows a workflow diagram for digital orthodontics that includes modules for "Bracket Placement" and "Ortho Planner" (Compl. p. 14). The complaint positions the Accused Products as direct competitors to Plaintiff's iTero scanners and Invisalign system, alleging that Defendant is a "follower" that copied Plaintiff's patented technology (Compl. ¶7, ¶34).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,844,420 Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
receive a digital data set representing a patient's teeth The Ortho System software receives a digital data set of a patient's teeth, typically from a TRIOS scanner. ¶42; p. 15 col. 6:49-51
generate, on a display, a graphical representation of a reference surface passing through a crown of each of the patient's teeth, the reference surface defined at least in part by one or more of a curve of Spee or an Andrew's plane The Ortho System generates a graphical representation of a reference surface, alleged to be a sagittal plane corresponding to a curve of Spee or Andrew's plane, passing through the crowns. ¶42; p. 15 col. 6:52-59
wherein the graphical representation is manipulable on the display by a user so as to modify the reference surface The software provides control points that allow a user to manipulate the graphical representation of the reference surface on the display. A screenshot from a workflow video shows the plane being adjusted. p. 16 col. 6:59-62
determine an initial position for the virtual bracket on the patient's tooth, wherein the virtual bracket is aligned with the graphical representation of the reference surface The software determines an initial position for a virtual bracket on the tooth, aligning it with the generated reference surface, as shown by red FA points in a software screenshot. p. 17 col. 6:62-66

Identified Points of Contention (’420 Patent)

  • Scope Questions: A central question may be whether the term "a reference surface defined at least in part by one or more of a curve of Spee or an Andrew's plane" can be construed to read on the "sagittal plane" allegedly generated by the accused Ortho System software (Compl. p. 15). The outcome of this claim construction dispute could be dispositive for infringement.
  • Technical Questions: The analysis may focus on whether the user's ability to adjust the "sagittal plane" using control points (Compl. p. 16) constitutes "modify[ing] the reference surface" in the manner required by the claim, or if it is a different type of manipulation.

U.S. Patent No. 9,675,430 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an illumination module to generate an array of light beams The TRIOS 3 and 4 scanners contain an illumination module, shown in a teardown photograph as an S.LED circuit board, that generates an array of light beams. ¶59; p. 27 col. 3:42-45
focusing optics...to perform confocal focusing of the array of light beams onto a non-flat focal surface and to direct the array...toward a three dimensional object The scanners contain focusing optics, shown as a disassembled lens assembly, to focus the light beams onto the surface of an object (e.g., teeth) and allegedly onto a non-flat focal surface. ¶60; p. 30 col. 3:46-51
a translation mechanism to adjust a location of at least one lens...to displace the non-flat focal surface along an imaging axis The scanners include a mechanical assembly, shown in teardown photographs, which allegedly functions as a translation mechanism to adjust a lens location to displace the focal surface. ¶61; p. 31 col. 3:52-56
a detector to measure intensities of an array of returning light beams that are reflected off of the three dimensional object The scanners incorporate a detector, identified as a Luxima image sensor in a photograph, to measure the intensity of the light beams returning from the scanned object. ¶62; p. 33 col. 3:57-61
wherein detected positions...are to be adjusted to compensate for the non-flat focal surface The system allegedly adjusts the detected positions of points on the scanned object to compensate for the non-flat focal surface created by the lens system. ¶62; p. 33 col. 4:1-5

Identified Points of Contention (’430 Patent)

  • Scope Questions: The dispute may turn on the construction of "non-flat focal surface." Defendant could argue that any deviation from a perfect plane in its optical system is a de minimis imperfection, not the intentionally designed "non-flat focal surface" described in the patent as resulting from the absence of a field lens.
  • Technical Questions: An evidentiary question will be whether the accused mechanical assembly (Compl. p. 31) functions as the claimed "translation mechanism" and whether its movement results in the specific function of "displac[ing] the non-flat focal surface along an imaging axis" as required by the claim.

V. Key Claim Terms for Construction

  • Patent: ’420 Patent

    • The Term: "a reference surface defined at least in part by one or more of a curve of Spee or an Andrew's plane"
    • Context and Importance: This term is critical because the infringement allegation hinges on the assertion that the accused software's "sagittal plane" falls within this definition (Compl. p. 15). Practitioners may focus on this term because "curve of Spee" and "Andrew's plane" are specific terms of art in orthodontics, and the defendant will likely argue that its algorithmically generated plane is not "defined by" these specific anatomical concepts.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim uses the phrase "defined at least in part by," which may suggest that the reference surface does not need to be exclusively or identically a curve of Spee or Andrew's plane, but merely incorporate some of its principles.
      • Evidence for a Narrower Interpretation: The patent’s background discusses the novelty of using these "specialized plane[s]" to improve accuracy (Compl. ¶39), suggesting they are distinct from generic planes. The specification may define these terms by reference to specific anatomical landmarks (e.g., Andrew's plane passing through the facial axis of the clinical crown), which could narrow the scope to exclude planes generated by different methods.

  • Patent: ’430 Patent

    • The Term: "non-flat focal surface"
    • Context and Importance: The point of novelty of the claimed invention is its ability to compensate for a "non-flat focal surface" that results from omitting a field lens. Infringement depends entirely on whether the accused scanners possess this feature.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The detailed description states, "The non-flat focal surface may be caused by the optics of the confocal imaging apparatus lacking a field lens" (’430 Patent, col. 2:36-39). This could support an interpretation where any focal surface that is not flat due to the absence of a field lens meets the limitation.
      • Evidence for a Narrower Interpretation: The patent consistently discusses the need to "adjust" and "compensate" for this surface (’430 Patent, Abstract). This may imply that the "non-flat" nature must be significant enough to require active computational correction, potentially excluding systems with negligible or incidental curvature.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement on the basis that Defendant provides user manuals, marketing materials, and training videos (Compl. ¶¶30-31) that instruct and encourage end-users (e.g., dentists, orthodontists) to use the Accused Products in an infringing manner (Compl. ¶¶44, 48, 64, 69). Contributory infringement is alleged on the grounds that the Accused Products have no substantial non-infringing uses and are especially made for use in an infringing way (Compl. ¶¶50, 71).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the patents-in-suit. This knowledge is alleged to stem from several sources: prior business dealings between the parties, prior patent litigation and ITC investigations beginning in 2017, Defendant's own patent prosecution history citing Plaintiff's patents, and an alleged internal "big analysis" of Plaintiff's patent portfolio that Defendant conducted in 2017 to assess risk (Compl. ¶¶35-36, 51-52).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can orthodontic terms of art such as "curve of Spee" and "Andrew's plane," as used in the '420 Patent, be construed broadly enough to encompass the algorithmically generated "sagittal plane" that the complaint alleges is used in the accused software?
  • A key technical question will be one of operational reality: do the optical systems within the accused TRIOS scanners, which lack field lenses, actually produce the "non-flat focal surface" that is central to the '430, '088, and '089 patents, and do they employ mechanisms and compensation models that function in the specific manner claimed?
  • An overarching issue for damages will be willfulness: given the extensive history of competition, prior litigation, and alleged internal patent analysis detailed in the complaint, the central question will be whether Defendant acted with the requisite knowledge and intent to support a finding of willful infringement if its products are found to infringe.