DCT
1:20-cv-01764
Candid Care Co v. SmileDirectClub LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Candid Care Co. (Delaware)
- Defendant: SmileDirectClub, LLC (Tennessee)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP
- Case Identification: Candid Care Co. v. SmileDirectClub, LLC, 1:20-cv-01764, D. Del., 12/23/2020
- Venue Allegations: Plaintiff asserts that venue is proper in the District of Delaware because Defendant is subject to personal jurisdiction in the district as a result of prior patent enforcement activities against Plaintiff, and because a substantial part of the events giving rise to the current dispute, namely a prior lawsuit between the parties on a related patent, occurred in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that it does not infringe U.S. Patent No. 10,861,599, that the patent is invalid, and that Defendant is barred by claim and issue preclusion from asserting the patent due to prior litigation.
- Technical Context: The patent relates to the field of "teleorthodontics," which involves business methods and systems for providing clear dental aligners directly to consumers without requiring in-person consultations with a dentist or orthodontist.
- Key Procedural History: This declaratory judgment action follows a prior lawsuit in the same court where Defendant sued Plaintiff for infringing a parent patent (the '522 patent). The court in that prior case dismissed the suit, finding the '522 patent's claims invalid as directed to patent-ineligible subject matter. Plaintiff alleges that Defendant admitted the claims of the patent-in-suit are "very, very similar, if not identical," to the invalidated claims. The day after the '522 patent was invalidated, Defendant filed a new lawsuit in the Western District of Texas asserting the patent-in-suit, prompting Plaintiff to file this action in Delaware.
Case Timeline
| Date | Event |
|---|---|
| 2016-05-09 | SDC allegedly opens first direct-to-consumer SmileShop |
| 2017-06-21 | Earliest priority date for '599 Patent |
| 2020-04-27 | '599 Patent application filed |
| 2020-04-29 | First Delaware Lawsuit filed by SDC on parent '522 patent |
| 2020-12-07 | D. Del. invalidates claims of '522 patent |
| 2020-12-08 | '599 Patent issues |
| 2020-12-08 | SDC files Texas Lawsuit on '599 Patent |
| 2020-12-23 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,861,599 - "Arrangements for Intraoral Scanning"
- Patent Identification: U.S. Patent No. 10,861,599, "Arrangements for Intraoral Scanning", issued December 8, 2020.
The Invention Explained
- Problem Addressed: The patent's background section describes the traditional process for obtaining dental impressions as inconvenient, costly, and time-consuming for patients, requiring multiple in-office appointments with a dental professional ('599 Patent, col. 1:25-56).
- The Patented Solution: The patent describes a system and method for remotely managing and delivering orthodontic treatment. The process begins with a user scheduling an appointment at an "intraoral scanning site" via an appointment management system, where a technician, rather than a dentist, performs a 3D scan of the user's mouth ('599 Patent, col. 2:1-14). A treatment plan is then generated from this scan data and approved remotely by a dental professional "without the dental or orthodontic professional physically seeing the user in person" ('599 Patent, col. 2:10-14). Finally, a series of custom aligners are fabricated and shipped directly to the user ('599 Patent, Abstract). The system architecture is depicted in Figure 1, showing the interaction between scanning sites, a central computing system, and the user ('599 Patent, Fig. 1).
- Technical Importance: This direct-to-consumer model sought to reduce the cost and logistical barriers associated with traditional orthodontic treatment, making cosmetic teeth alignment more accessible ('599 Patent, col. 1:50-56).
Key Claims at a Glance
- The complaint seeks a declaration that claims 1-25 of the patent are invalid and not infringed (Compl. ¶56, 86). The primary independent claims discussed are method claims 1 and 16.
- Independent Claim 1: This method claim recites steps including:
- Receiving a request to schedule an appointment at a scanning site for a scan conducted by a technician "without a dentist or an orthodontist physically seeing the user."
- Scheduling the appointment.
- Generating and transmitting a location-aware reminder message to the user based on factors like traffic and weather.
- Conducting the scan to generate 3D data.
- Causing aligners to be sent to the user based on a treatment plan approved remotely by a professional, with the aligners sent directly to the user without being provided first to a dentist.
- Independent Claim 16: This method claim recites a similar workflow, including:
- Receiving a request and scheduling an appointment for a scan conducted "without a dentist or orthodontist physically seeing the user."
- Transmitting a confirmation message to the user.
- Conducting the scan to generate 3D data.
- Causing the generation of a treatment plan.
- Receiving remote approval of the plan by a dentist or orthodontist.
- Producing and sending the aligners directly to the user, who receives treatment "without ever having physically seen the approving dentist or orthodontist."
- The complaint reserves the right to challenge all claims of the '599 Patent (Compl. ¶86).
III. The Accused Instrumentality
Product Identification
- As a declaratory judgment action, the "accused instrumentality" is the Plaintiff's own "Candid's Studio business model and workflow" (Compl. ¶36, 46).
Functionality and Market Context
- The complaint describes Plaintiff Candid as a provider of "clear aligner treatment with remote monitoring by an orthodontist" (Compl. ¶32).
- Rather than providing a detailed description of Candid's functionality, the complaint focuses on alleging non-infringement by asserting that Candid's methods do not include specific limitations recited in the '599 Patent's claims, such as the location-aware reminder system of claim 1 (Compl. ¶87).
- The complaint's central technical argument is that the '599 Patent claims describe Defendant SDC's own "SmileShop" business model, which was allegedly in public use and offered for sale more than one year prior to the patent's earliest effective filing date, thereby rendering the patent invalid (Compl. ¶67, 71).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment, it does not allege infringement. Instead, it argues for invalidity by alleging that Defendant SDC's own prior art activities practiced the invention of claim 16 before the critical date.
'599 Patent Invalidity Allegations (Based on SDC's Alleged Prior Art Practice of Claim 16)
| Claim Element (from Independent Claim 16) | Alleged Prior Art Functionality (by SDC) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of producing aligners...the method comprising: receiving, by an appointment management system, a request to schedule an appointment at an intraoral scanning site... | Prior to June 21, 2016, SDC allegedly allowed patients to book appointments for scans at a SmileShop or at home. A screenshot of an SDC tweet from April 2016 invites users to "Get a FREE evaluation in NYC" and provides a link to "book today!" (Compl. p. 21). | ¶74 | col. 22:49-59 |
| scheduling, by the appointment management system, the appointment at the intraoral scanning site based on the request; | SDC's website allegedly stated, "If you're in a scanning city, you'll be taken to a page to book your scan after completing your assessment" (Compl. p. 21). | ¶74 | col. 22:60-63 |
| generating and causing transmission of, by the appointment management system, a message to a device of the user, the message including a confirmation confirming the scheduled appointment. | The complaint alleges on information and belief that a patient booking an appointment would have received a confirmation message, either at the time of booking or via email. | ¶76 | col. 22:64-67 |
| conducting, using the intraoral scanner, the intraoral scan...the intraoral scan generating three-dimensional data of the mouth of the user. | A "SmileTech" or "SmileGuide" (a non-dentist technician) would allegedly use an intraoral scanner to capture a 3D image of the user's smile at a SmileShop or the user's home/office. | ¶75, 77 | col. 23:11-15 |
| causing generation of, by a treatment plan computing system...a treatment plan for the user based on the three-dimensional data. | SDC allegedly provided services to generate a treatment plan from the 3D data. A 2016 YouTube video screenshot shows a "SmileCareClub FOLLOWUP 3D Plan" interface (Compl. p. 23). | ¶78 | col. 24:1-4 |
| receiving an indication of an approval of the treatment plan by a dentist or an orthodontist, wherein the approval is received without the approving dentist or orthodontist having physically seen the user. | SDC's website allegedly described its "teledentistry model," where a licensed professional would "review and prescribe a treatment plan unique to each patient" without an in-person meeting (Compl. p. 24). | ¶79 | col. 24:5-9 |
| producing, at a fabrication site, a plurality of aligners based on the treatment plan... | SDC allegedly produced custom aligners based on the approved treatment plan, which were configured to reposition the patient's teeth. | ¶80 | col. 24:10-14 |
| sending the plurality of aligners from the fabrication site directly to the user, wherein the user receives orthodontic treatment without ever having physically seen the approving dentist or orthodontist. | An SDC marketing graphic states that after the treatment plan is confirmed, "SmileCareClub custom manufactures and ships the aligners directly to the patient" (Compl. p. 25). | ¶81 | col. 24:15-22 |
- Identified Points of Contention:
- Scope Questions: The case raises the question of whether the doctrines of claim preclusion or issue preclusion bar this lawsuit, given the prior invalidation of the parent '522 patent's claims, which SDC allegedly described as "very, very similar, if not identical" to the '599 patent's claims (Compl. ¶39, 45-47).
- Technical Questions: A central factual question is whether SDC's "SmileShop" services, as they existed prior to June 21, 2016, constituted public use or an offer for sale of the methods claimed in the '599 patent, which would invalidate the patent under 35 U.S.C. § 102 (Compl. ¶71).
V. Key Claim Terms for Construction
- The Term: "without a dentist or an orthodontist physically seeing the user at the intraoral scanning site"
- Context and Importance: The complaint alleges that this negative limitation was a key differentiator SDC used to overcome prior art during the prosecution of the parent '522 patent (Compl. ¶84). Plaintiff now argues that the specification lacks adequate written description for this limitation, potentially rendering the claims invalid under 35 U.S.C. § 112. Practitioners may focus on this term because its construction is critical to both the validity challenge (written description) and the underlying non-infringement theory.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's abstract broadly states the method allows a user to receive treatment "without ever having physically seen a dentist or an orthodontist," which could suggest the "non-seeing" aspect applies throughout the entire process ('599 Patent, Abstract).
- Evidence for a Narrower Interpretation: The claim language itself is more specific, applying the limitation to the user's experience "at the intraoral scanning site." The specification also distinguishes between the scan (conducted by a technician) and the approval (done remotely by a professional), noting the approval is received without seeing the user "in person" ('599 Patent, col. 2:13-14). This could support a narrower reading where the limitation only prohibits a physical meeting with the professional at the scanning location during the scan.
VI. Other Allegations
The complaint does not provide sufficient detail for analysis of indirect or willful infringement, as it is a declaratory judgment action filed by the alleged infringer.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to turn on three central questions, two of which are primarily legal and procedural, with the third being highly fact-dependent:
- A core issue will be one of judicial preclusion: Can the prior judgment invalidating the parent '522 patent on § 101 grounds bar SDC from litigating the '599 patent, a continuation whose claims are alleged to be "substantially similar"?
- A key evidentiary question will be one of statutory timing: Does the evidence of SDC's own commercial "SmileShop" activities before the patent's critical date constitute an invalidating public use or on-sale bar under 35 U.S.C. § 102?
- A pivotal question for validity will be one of patent disclosure: Does the patent's specification provide sufficient written description to support the negative limitation "without a dentist or an orthodontist physically seeing the user," a phrase Plaintiff alleges was essential for distinguishing the invention from prior art?