DCT
1:23-cv-00432
Dental Monitoring v. Get Grin Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dental Monitoring (France)
- Defendant: Get-Grin Inc. (Delaware)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP (Of Counsel: Covington & Burling LLP)
- Case Identification: 1:23-cv-00432, D. Del., 04/20/2023
- Venue Allegations: Venue is asserted on the basis that Defendant is a Delaware corporation and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s teledental platform, which includes the Grin Scope hardware and Grin App software, infringes patents related to methods and devices for dental imaging.
- Technical Context: The technology at issue addresses the field of remote orthodontic monitoring, or teledentistry, which utilizes smartphone-based imaging to allow clinicians to track patient treatment progress without in-person appointments.
- Key Procedural History: The complaint alleges that the parties have been in active litigation since May 16, 2022. It further alleges that Defendant had pre-suit knowledge of the technology through its counsel’s filing of an Information Disclosure Statement (IDS) on December 13, 2022, which cited the patent applications that led to the patents-in-suit. Plaintiff also allegedly sent a letter with claim-by-claim infringement allegations to Defendant on April 13, 2023, one week before filing the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2017-04-19 | Priority Date for ’079 and ’997 Patents |
| 2020-11-19 | Date of Bloomberg article describing the Grin service |
| 2021-10-07 | Get-Grin distributes marketing materials at OrthoPreneurs Summit |
| 2022-05-16 | Active litigation between parties allegedly begins |
| 2022-12-13 | Get-Grin allegedly files IDS citing applications leading to patents-in-suit |
| 2022-12-20 | ’079 Patent Issue Date |
| 2023-03-07 | ’997 Patent Issue Date |
| 2023-04-13 | Plaintiff sends notice letter to Defendant |
| 2023-04-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,532,079 - "Dental Imaging Device," issued December 20, 2022
The Invention Explained
- Problem Addressed: The patent's background section notes that evaluating the position of a patient's teeth using updated images taken during treatment can be a "lengthy" process, and that comparing images taken at different times often yields "unsatisfactory results" due to inconsistencies in positioning and lighting (’079 Patent, col. 1:40-51).
- The Patented Solution: The invention is a method for acquiring dental images using a support structure that standardizes the imaging process. The support is described as a box-like chamber that holds a mobile phone at one end (the "acquisition opening") while the other end (the "retractor opening") is positioned in the patient's mouth (’079 Patent, Abstract; Fig. 1). This fixed geometry is intended to accelerate the process and improve the consistency of the images captured by the patient at home (’079 Patent, col. 2:1-12).
- Technical Importance: By creating a standardized physical interface between the patient and the imaging device, the invention aims to improve the quality and reliability of data collected for remote dental monitoring (’079 Patent, col. 2:8-12).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 and dependent claims 5-6 and 9-13 (Compl. ¶39).
- Independent claim 1 is a method claim comprising the essential steps of:
- Providing a support defining a chamber with a first and second opening.
- Fixing a mobile phone in front of the second opening.
- Positioning the first opening in front of a patient's mouth.
- Acquiring a dental image, where the support is configured so the patient's teeth are visible through the first opening when their lips are placed around it.
- The complaint reserves the right to assert additional claims (Compl. ¶36).
U.S. Patent No. 11,599,997 - "Dental Imaging Device," issued March 7, 2023
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’079 patent, this patent addresses the same problem of inconsistent and time-consuming image acquisition in teledentistry (’997 Patent, col. 1:10-51).
- The Patented Solution: The ’997 patent claims the physical device itself rather than the method of use. The invention is a "patient-operated imaging device" that includes a support in the form of a "box" with an integrally formed mouth retractor and a mechanism for fastening an image acquisition apparatus, such as a smartphone (’997 Patent, cl. 28). The device is configured such that the phone's camera "observes the retractor opening regardless of the configuration of the support," ensuring a consistent field of view, and is adapted to capture images from multiple different angles (’997 Patent, cl. 28).
- Technical Importance: This patent protects the physical apparatus designed to make at-home, patient-operated dental imaging more reliable by controlling the geometric relationship between the camera and the patient's dentition (’997 Patent, col. 2:1-12).
Key Claims at a Glance
- The complaint asserts at least independent claim 28 (Compl. ¶52).
- Independent claim 28 is a device claim comprising:
- A support.
- A mouth retractor formed as an integral part of the support.
- An image acquisition apparatus fastened to the support.
- Wherein the support takes the form of a box and is configured so the apparatus observes the retractor opening regardless of the support's configuration.
- Wherein the device is adapted to obtain a plurality of images from different angles.
- The complaint reserves the right to assert additional claims (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's "Grin Service," which comprises the "Grin Scope" device, the "Grin App" mobile application, and the "Grin Server" back-end system (Compl. ¶¶22, 25).
Functionality and Market Context
- The Grin Service is a teledental platform that enables patients to perform guided "self-scans" of their dental arches using their smartphone (Compl. ¶25). The patient attaches the Grin Scope to their phone, with one end fitting over the camera and the other end being inserted into the mouth (Compl. ¶24).
- The Grin App provides audio prompts to guide the user's movements during the scan, and the captured video is transmitted to the Grin Server for analysis (Compl. ¶¶25, 29). The complaint presents a patient guide showing a four-step process: download the app, connect the scope, self-scan, and communicate with the specialist (Compl. p. 7).
- The complaint positions the Grin Service as a direct competitor to the Plaintiff's own remote monitoring solution (Compl. ¶23).
IV. Analysis of Infringement Allegations
’079 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method to acquire dental images of a patient with a support defining a chamber that is in communication with an outside of said chamber via a first opening and via a second opening... | The Grin Service is a method where the Grin Scope, a hollow tube with two openings, functions as the claimed support defining a chamber. The complaint includes a marketing photo of the Grin Scope to illustrate this structure. | ¶48 (p. 16) | col. 3:9-14 |
| ...fixing a mobile phone in front of the second opening; | The Grin patient guide and instructional videos direct the user to attach the Grin Scope to the patient's cellphone over the camera. | ¶48 (p. 17) | col. 10:11-14 |
| ...positioning said first opening in front of a mouth of the patient; | The patient guide instructs the user to "place the scope in your mouth to complete your scan." An instructional video screenshot shows a user performing this step. | ¶48 (p. 18-19) | col. 10:15-18 |
| ...acquiring at least one dental image by means of a mobile phone, the support being configured so that when the patient put his/her lips around the first opening, the patient's teeth are made visible through said first opening. | The Grin App guides the user to perform a scan and acquire video images of their teeth, which are visible through the scope's opening. A screenshot from a tutorial video shows the resulting intraoral view. | ¶48 (pp. 19-21) | col. 10:15-18 |
’997 Patent Infringement Allegations
| Claim Element (from Independent Claim 28) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An patient-operated imaging device comprising: a support; a mouth retractor formed as an integral part of the support and defining a retractor opening; and... | The accused device is the combination of the Grin Scope and a smartphone. The complaint alleges the Grin Scope itself is the support, and its wider, flared end functions as an integrated mouth retractor. | ¶61 (pp. 24-25) | col. 12:33-36 |
| ...an image acquisition apparatus fastened to the support in a position in which the image acquisition apparatus is oriented so as to receive an image of the retractor opening... | The patient's cellphone (the image acquisition apparatus) is fastened to the Grin Scope via a strap, as shown in patient instructions. | ¶61 (p. 27) | col. 13:17-19 |
| Wherein the support takes the form of a box...the support being configured so that the image acquisition apparatus observes the retractor opening regardless of the configuration of the support, | The complaint alleges the Grin Scope's hollow tubular section is a "box" and that the phone observes the opening as the patient moves the device, as shown in an instructional video screenshot. | ¶61 (p. 29) | col. 32:19-29 |
| ...wherein the patient-operated imaging device is adapted to obtain a plurality of images, wherein at least two of the plurality of images correspond to different angles with respect to the patient's teeth. | The Grin App allegedly instructs the user to move the scope from side to side to capture views from different angles. The complaint cites audio instructions from an online video: "Move slowly all the way to the right...Now move slowly all the way to the left." | ¶29; ¶61 (p. 32) | col. 10:41-49 |
Identified Points of Contention
- Scope Questions: Claim 28 of the ’997 patent requires the support to take "the form of a box." A point of contention may arise over whether the Defendant's "roughly cylindrical" Grin Scope meets this limitation, or if the term "box" will be construed more narrowly to match the "preferably rectangular" embodiments disclosed in the patent specification (’079 Patent, col. 13:43-44).
- Technical Questions: A significant technical question arises from the limitation in claim 28 that the camera "observes the retractor opening regardless of the configuration of the support." The patent specification discusses different "configurations" in the context of a physically adjustable (e.g., telescopic) support (’079 Patent, col. 4:36-44). The complaint does not allege the Grin Scope is physically adjustable. The infringement allegation appears to interpret "configuration" as the device's orientation during a scan, raising the question of whether there is a mismatch between the claimed feature and the accused functionality.
V. Key Claim Terms for Construction
The Term: "box" (’997 Patent, cl. 28)
- Context and Importance: This term is central to the infringement analysis of the ’997 patent's device claim, as the accused Grin Scope is described in the complaint as "roughly cylindrical" (Compl. ¶24). The construction of "box" will determine whether the shape of the accused device literally meets this limitation.
- Intrinsic Evidence for a Broader Interpretation: The patent specification describes the function of the support as defining a "chamber" that controls the light path, stating "the support 12 defines a chamber 20" (’079 Patent, col. 13:26-27). A party may argue that any structure, regardless of its specific cross-sectional shape, that performs this function of defining an enclosed chamber qualifies as a "box."
- Intrinsic Evidence for a Narrower Interpretation: The patent's written description states that the support is "preferably rectangular in cross section," and every corresponding figure depicts a device with a distinctly rectangular shape (’079 Patent, col. 13:43-44; Figs. 1, 9). A party may argue that this consistent disclosure limits the term "box" to the rectangular embodiment.
The Term: "mouth retractor formed as an integral part of the support" (’997 Patent, cl. 28)
- Context and Importance: The complaint alleges that the flared end of the Grin Scope itself is the claimed integral retractor. Whether this simple structure meets the definition of "mouth retractor" as used in the patent is a key question.
- Intrinsic Evidence for a Broader Interpretation: The specification provides support for this interpretation by stating, "The dental retractor may be formed as an integral part of the support" and "The dental retractor may be the terminal portion of a tube" (’079 Patent, col. 11:35-38). This suggests the end of the support structure itself can serve as the retractor.
- Intrinsic Evidence for a Narrower Interpretation: The specification also discloses a more complex retractor with a "rim 34" and "lobes 36" designed to "spread the cheeks away from the teeth" (’079 Patent, col. 13:34-40). A party could argue that the term "mouth retractor" requires these specific functional features, which may not be present on the simple flared end of the accused Grin Scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on allegations that Defendant provides the Grin Scope and instructs patients on how to use it in an infringing manner through the Grin App, patient guides, and online videos (Compl. ¶¶46, 59). The contributory infringement theory alleges the Grin Scope is a material component of the invention, is especially made for an infringing use, and is not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶¶41-43, 54-56).
- Willful Infringement: The complaint alleges willfulness based on Defendant's alleged pre-suit knowledge of the patents. This knowledge is purportedly evidenced by ongoing litigation between the parties since May 2022, an IDS filed by Defendant's patent counsel in December 2022 citing the parent applications of the patents-in-suit, and a specific notice letter sent by Plaintiff in April 2023 (Compl. ¶¶33-35, 38, 51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "box," which is described in the patent specification with "preferably rectangular" embodiments, be construed to read on the "roughly cylindrical" shape of the accused Grin Scope? The resolution of this claim construction dispute will be critical to the literal infringement analysis for the '997 patent.
- A key evidentiary question will be one of technical interpretation: does the claim phrase "regardless of the configuration of the support" refer to the physical state of the device (e.g., telescopic, collapsed), as the patent specification may suggest, or does it refer to the device's spatial orientation during a scan, as the plaintiff's infringement theory appears to require? A finding that the term is limited to a physically adjustable device could create a significant non-infringement defense.
- A third central question will concern willfulness: given the complaint's specific allegations of pre-suit knowledge stemming from prior litigation and the defendant's own IDS filing, the court will need to evaluate whether the alleged infringement, if any, rises to the level of being willful, which could expose the defendant to enhanced damages.