DCT
1:19-cv-02098
Align Technology Inc v. 3Shape As
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Align Technology, Inc. (Delaware)
- Defendant: 3Shape A/S (Denmark), 3Shape TRIOS A/S (Denmark), 3Shape Inc. (Delaware), and 3Shape Manufacturing US, LLC (Delaware)
- Plaintiff’s Counsel: Shaw Keller LLP; Paul Hastings LLP
- Case Identification: 1:19-cv-02098, D. Del., 11/05/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendants conduct business in the state, have placed products into the stream of commerce reaching Delaware, and Defendant 3Shape A/S has previously availed itself of the court by filing its own lawsuits in the district.
- Core Dispute: Plaintiff alleges that Defendant’s TRIOS 3 and TRIOS 4 intraoral scanning systems infringe a patent related to confocal imaging technology that uses a non-flat focal surface.
- Technical Context: The technology concerns handheld intraoral scanners used in dentistry and orthodontics to create three-dimensional digital models of a patient's teeth, replacing traditional physical impression methods.
- Key Procedural History: The complaint alleges that the parties have a history of business dealings, including through Align's 2011 acquisition of Cadent Holdings, Inc. It also notes that Defendant 3Shape A/S previously filed a lawsuit against Align in the same judicial district. The complaint further alleges that Defendants had knowledge of Align's patent portfolio through these dealings, through its own patent prosecution activities, and through a U.S. Food and Drug Administration 510(k) premarket notification that identified Align's products as predicate devices.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-29 | Align acquires Cadent Holdings, Inc. |
| 2014-08-15 | Priority Date for U.S. Patent No. 9,675,430 |
| 2017-06-13 | Issue Date for U.S. Patent No. 9,675,430 |
| 2019-11-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,675,430 - "Confocal Imaging Apparatus with Curved Focal Surface"
- Issued: June 13, 2017
The Invention Explained
- Problem Addressed: The patent describes a problem in prior art confocal imaging systems, such as intraoral scanners. These systems often require "field lenses" to flatten the imaging field to ensure measurement accuracy. However, these field lenses can make the optical assembly larger, heavier, more complex, and require time-consuming and challenging alignment ('430 Patent, col. 1:35-46).
- The Patented Solution: The invention proposes a confocal imaging apparatus that operates without a field lens. The removal of the field lens results in the system having a "non-flat focal surface" (e.g., a curved one) ('430 Patent, col. 2:32-38). To overcome the potential inaccuracies this creates, the system is designed to measure the distorted positions and then apply a computational adjustment, such as a "field curvature model," to compensate for the non-flat surface and determine the object's true shape ('430 Patent, col. 2:65-3:1; col. 6:35-44).
- Technical Importance: This approach allows for a scanner that is potentially "smaller, lighter and easier to manufacture" and may improve accuracy by eliminating the difficult alignment of field lenses ('430 Patent, col. 2:40-43; col. 7:60-65).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶35).
- The essential elements of Claim 1 include:
- An illumination module to generate an array of light beams.
- Focusing optics with a plurality of lenses to perform confocal focusing of the light beams onto a "non-flat focal surface."
- A translation mechanism to adjust at least one lens to displace the non-flat focal surface along an imaging axis.
- A detector to measure the intensities of returning light beams.
- The system is configured to determine positions of points on the imaged object based on these intensity measurements.
- The system is configured such that the "detected positions... are to be adjusted to compensate for the non-flat focal surface."
III. The Accused Instrumentality
Product Identification
The "3Shape TRIOS® 3 and TRIOS® 4 intraoral scanning systems" (the "Trios scanners") are the accused instrumentalities (Compl. ¶7).
Functionality and Market Context
- The complaint alleges the Trios scanners are used for intraoral scanning for dental applications, creating digital models for crowns, bridges, aligners, and other orthodontic devices (Compl. ¶25).
- The complaint provides multiple images from an apparent teardown of the accused devices, showing internal components such as an LED illumination module, a series of lenses, a translation mechanism, and a Luxima image sensor (Compl. p. 13-19). One such image depicts the internal lens assembly of the accused device (Compl. p. 16).
- The complaint alleges that the Trios scanners directly compete with Align's own iTero scanners (Compl. ¶30).
IV. Analysis of Infringement Allegations
'430 Patent 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 scanners contain an illumination module, shown in a photograph as an LED board, that generates an array of light beams. | ¶35 | col. 2:52-54 |
| focusing optics comprising a plurality of lenses... to perform confocal focusing of the array of light beams onto a non-flat focal surface and to direct the array of light beams toward a three dimensional object to be imaged | The Trios scanners comprise focusing optics with multiple lenses that perform confocal focusing and direct light beams onto the object. The complaint includes a photograph of disassembled lenses from the accused device. | ¶36 | col. 2:54-58 |
| a translation mechanism to adjust a location of at least one lens of the plurality of lenses to displace the non-flat focal surface along an imaging axis defined by the optical path | The Trios scanners allegedly include a mechanism to adjust a lens location to displace the focal surface. A photograph shows this internal mechanism. | ¶37 | col. 2:58-61 |
| a detector to measure intensities of an array of returning light beams that are reflected off of the three dimensional object and directed back through the focusing optics... | The Trios scanners comprise a detector, identified as a Luxima image sensor in a provided photograph, to measure the intensity of the returning light beams reflected from the object. | ¶38; p. 19 | col. 2:61-65 |
| wherein detected positions of one or more of the plurality of points are to be adjusted to compensate for the non-flat focal surface. | The complaint alleges that the accused devices determine object point positions from the measured intensities, and that these detected positions are then adjusted to compensate for the non-flat focal surface. | ¶34; ¶38 | col. 2:65-3:1 |
Identified Points of Contention
- Scope Questions: A central question may be the interpretation of "non-flat focal surface." The dispute could turn on whether this term covers any system with inherent optical field curvature or if it is limited to systems, as described in the patent, that are intentionally designed without a field lens to achieve benefits like reduced size and complexity ('430 Patent, col. 2:35-45).
- Technical Questions: A key evidentiary challenge will be demonstrating that the accused Trios scanners perform the claimed function of having detected positions "adjusted to compensate for the non-flat focal surface." While the complaint provides detailed teardown photos for the hardware elements, it offers no specific evidence on how the accused software performs this specific compensation, beyond a conclusory allegation (Compl. ¶38). The court may need to consider what level of software-based image correction satisfies this limitation.
V. Key Claim Terms for Construction
Key Term: "non-flat focal surface"
- Context and Importance: This term is central to the patent's purported novelty, distinguishing it from prior art that allegedly used field lenses to create a flat focal plane. The infringement analysis depends on whether the accused devices can be shown to possess this feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning of the words could support a construction covering any focal surface that deviates from a perfect plane, regardless of the cause or intent.
- Evidence for a Narrower Interpretation: The specification repeatedly links the "non-flat focal surface" to the absence of a field lens, framing it as a deliberate design choice that "introduces challenges but also provides numerous advantages" ('430 Patent, col. 2:35-45). This context may support a narrower construction where the non-flat surface is a direct and intended consequence of omitting a field lens.
Key Term: "adjusted to compensate for the non-flat focal surface"
- Context and Importance: This functional step is the solution to the problem created by the "non-flat focal surface." Proving that the accused devices perform this specific adjustment is critical for the plaintiff. Practitioners may focus on this term because the complaint's allegations on this point are not supported by the same level of detail as the hardware elements.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue this covers any digital image processing that corrects for optical distortions, regardless of the specific algorithm.
- Evidence for a Narrower Interpretation: The patent's detailed description explains this adjustment is performed by applying a "field curvature model" that is calibrated to the specific scanner ('430 Patent, col. 6:35-58; Fig. 6). This may support a narrower construction requiring a specific, model-based compensation for field curvature, not just general-purpose image enhancement.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement, stating that Defendants provide promotional materials, user guides, training, and technical information that instruct and encourage end-users (e.g., dentists, orthodontists) to operate the Trios scanners in an infringing manner (Compl. ¶44). It also alleges contributory infringement on the basis that the Trios scanners are especially made for infringing use and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶46).
Willful Infringement
Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges Defendants knew of the '430 patent and its technology through prior business dealings with Align, through its own patent prosecution activities where it cited Align's patents, and through its FDA 510(k) notification referencing Align's products (Compl. ¶31, ¶39, ¶47). Knowledge is also alleged from the filing of the complaint itself (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim limitation "non-flat focal surface" be construed to read on the optical characteristics of the accused Trios scanners, and is it limited to systems intentionally designed without a field lens? The outcome of this construction will significantly shape the infringement analysis.
- A key evidentiary question will be one of functional proof: what evidence can be presented to show that the accused software performs the specific claim step to have "detected positions... adjusted to compensate for the non-flat focal surface"? The case may turn on whether general image correction algorithms meet this limitation or if a more specific, model-based compensation, as described in the patent's specification, is required.