Den Mat Holdings LLC v. Viax Dental Tech LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Den-Mat Holdings, LLC (Delaware)
  • Defendant: Viax Dental Technologies, LLC (Florida)
  • Plaintiff’s Counsel: Bilzin Sumberg Baena Price & Axelrod LLP
• Case Identification: 1:19-cv-22627, S.D. Fla., 06/25/2019
• Venue Allegations: Venue is asserted based on the defendant having a principal place of business in Florida, transacting substantial business within the judicial district, and committing the alleged acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s NOVO Smile removable dental appliance infringes three patents related to non-invasive, cosmetic dental veneers.
• Technical Context: The technology concerns removable cosmetic dental appliances, which offer a non-permanent and less invasive alternative to traditional dental procedures like porcelain veneers or crowns.
• Key Procedural History: The complaint alleges that Defendant’s President and CEO is a former Vice President of Research and Development for the Plaintiff. Plaintiff alleges this executive was instrumental in developing Plaintiff's own "Snap-On Smile" product line before leaving the company, and was subsequently responsible for the launch of the accused "substantially similar, if not identical" NOVO Smile product by the Defendant. These allegations form the basis of the claim for willful infringement.

Case Timeline

Date	Event
2005-03-25	Earliest Priority Date for all Patents-in-Suit
2008-04-15	U.S. Patent No. 7,357,637 Issued
2010-01-01	DenMat acquires Snap-On Smile product line (approx. date)
2013-01-01	Viax hires DenMat's former executive (approx. date)
2013-05-28	U.S. Patent No. 8,449,296 Issued
2014-01-01	Viax commences sale of NOVO Smile (approx. date)
2018-02-27	U.S. Patent No. 9,901,429 Issued
2019-06-25	Complaint Filed

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

U.S. Patent No. 9,901,429 - “Dental Appliance”

Issued February 27, 2018

The Invention Explained

• Problem Addressed: The patent describes conventional cosmetic dentistry, such as veneers and crowns, as disadvantageous because it often requires the irreversible drilling and removal of healthy tooth structure, can be costly, and does not allow for a "trial run" of the aesthetic result (’429 Patent, col. 1:24-65).
• The Patented Solution: The invention is a removable dental appliance that fits over a patient's existing teeth to provide an "ideal smile" without altering the underlying dental structure ('429 Patent, Abstract). The appliance is fabricated from a material like acetyl resin, which is flexible enough to "snap" over the natural contours of the teeth for retention, eliminating the need for adhesives or cement, and then return to its original shape ('429 Patent, col. 5:29-36, 5:48-55).
• Technical Importance: The technology provides a non-invasive and reversible method for cosmetic dental enhancement, allowing patients to achieve an improved appearance without committing to permanent dental work ('429 Patent, col. 2:44-48).

Key Claims at a Glance

• The complaint asserts infringement of at least one claim, illustrating its theory with independent claim 8 (Compl. ¶18, 29).
• Essential elements of independent claim 8 include:
  • A dental appliance for changing teeth appearance without altering dental structure.
  • Constructed of an acetyl resin.
  • Comprising a continuous wall with a first (inner) and second (outer) surface.
  • The first surface is adapted to engage the facial and lingual surfaces of a patient's teeth.
  • The second surface is a visible outer surface with a desired visual impression (e.g., color, contour).
  • The first surface conforms to the patient's actual teeth configuration.
  • The continuous wall has at least two "retention points" that fit under the teeth's natural contours to secure the appliance without adhesives or cement and without impinging on gingival tissue.
• The complaint reserves the right to assert other claims (Compl. ¶10).

U.S. Patent No. 8,449,296 - “Dental Appliance”

Issued May 28, 2013

The Invention Explained

• Problem Addressed: The patent addresses the same problems as the '429 Patent regarding invasive cosmetic dentistry (’296 Patent, col. 1:19-65). It also addresses aesthetic issues such as when a "tapered arch causes the patient to appear missing posterior teeth upon smiling" ('296 Patent, col. 4:17-19).
• The Patented Solution: The invention is a similar removable dental appliance. A particular focus of the claims is the ability to create the appearance of a wider, fuller smile by fabricating the appliance wall with a thickness that "gradually and continuously increases" from the front (anterior) teeth toward the back (posterior) teeth ('296 Patent, Claim 1; col. 4:20-29). This "bulking out" of the posterior aspect is designed to improve the smile's aesthetic conformity ('296 Patent, col. 4:22-24).
• Technical Importance: This design feature allows for smile correction beyond simple tooth whitening or alignment, specifically addressing the perceived width and fullness of the dental arch non-invasively ('296 Patent, col. 4:17-29).

Key Claims at a Glance

• The complaint alleges infringement of "at least one claim" but does not specify which claims are asserted (Compl. ¶36). Independent claims include 1, 11, 20, and 27.
• Essential elements of representative independent claim 1 include:
  • A continuous wall that engages the facial and lingual surfaces of teeth.
  • An outer surface comprising a tongue side arch and a visible cheek side arch.
  • The thickness of the wall on the cheek side arch "gradually and continuously increases" toward the posterior locations relative to the anterior location.

U.S. Patent No. 7,357,637 - “Dental Appliance”

Issued April 15, 2008

• Technology Synopsis: As the earliest patent in the asserted family, the ’637 Patent discloses the foundational technology of a non-invasive, removable dental appliance for improving a patient's smile. It is made of a flexible material (such as acetyl resin) that uses the natural undercuts of a patient's teeth for retention, thereby providing a reversible cosmetic solution without altering tooth structure ('637 Patent, Abstract; col. 2:6-15).
• Asserted Claims: The complaint alleges infringement of "at least one claim" but does not specify which claims are asserted (Compl. ¶42).
• Accused Features: The complaint alleges the entirety of the NOVO Smile dental appliance infringes the '637 Patent (Compl. ¶10).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the "NOVO Smile dental appliance" (Compl. ¶10).

Functionality and Market Context

• The complaint describes the NOVO Smile as a "multi-purpose custom dental appliance that requires no prepping, no injections and no adhesives" (Compl. ¶19).
• It is alleged to be made of a "crystallized acetyl resin" that is strong yet can be made very thin (Compl. ¶20).
• The functionality is based on the material's flexibility, which "allows for it to expand over a patient's teeth" for placement and retention (Compl. ¶22, 25). The complaint includes a marketing image of the NOVO Smile appliance, which shows a full arch of simulated teeth (Compl. ¶17, FIG. A).
• The complaint alleges the product is "substantially similar, if not identical," to Plaintiff's own patented Snap-On Smile product (Compl. ¶13).

IV. Analysis of Infringement Allegations

’429 Patent Infringement Allegations

Claim Element (from Independent Claim 8)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
said dental appliance is constructed of an acetyl resin	The Accused Product is allegedly "made of a crystallized acetyl resin."	¶20	col. 5:5-6
a continuous wall having a first surface and a second surface	The Accused Product is alleged to have a "continuous wall having a first surface and a second surface," as depicted in an image of the product.	¶21	col. 8:12-13
said first surface is adapted to engage the facial and lingual surfaces of a patient's teeth	The Accused Product allegedly has a flexible material that "allows for it to expand over a patient's teeth," thereby engaging their surfaces.	¶22	col. 8:14-16
said second surface comprising a visible outer surface	The Accused Product is alleged to have a "second surface comprising a visible outer surface," as depicted in an image of the product.	¶23	col. 8:17
wherein said second surface has a desired visual impression including a selected opaque color and a selected contour...and said first surface has a configuration conforming to a configuration of the surface of the patient's teeth	The Accused Product is alleged to have a "selected opaque color and a selected contour" and a conforming inner surface, as evidenced by product images and marketing claims.	¶24	col. 8:18-24
said continuous wall further comprises at least two retention points which fit under the contours of said patient's teeth and do not impinge on said patient's gingival tissue when said retentive points secure said dental appliance...without the use of adhesives or cement	The Accused Product is marketed as requiring "no adhesives," and its "flexible material allows for it to expand over a patient's teeth" to achieve a secure fit.	¶25	col. 5:29-36

Identified Points of Contention (’429 Patent)

• Technical Questions: The complaint relies on Defendant's marketing statements to evidence infringement. A central question will be whether the physical construction of the NOVO Smile product aligns with these statements and meets the specific structural limitations of claim 8, such as the presence and function of distinct "retention points."
• Scope Questions: The claim requires the appliance to be "constructed of an acetyl resin." A potential issue is whether the "crystallized acetyl resin" alleged to be used by the Defendant (Compl. ¶20) falls within the scope of this term as understood from the patent's specification.

’296 Patent Infringement Allegations

• The complaint alleges that the Accused Products "satisfy each and every element of at least one claim of the '296 Patent" but does not provide a claim-by-claim or element-by-element breakdown of its infringement theory (Compl. ¶36). The core allegation is that the NOVO Smile appliance, by its nature and function, infringes the '296 Patent.
• Identified Points of Contention: A key limitation in the '296 Patent's independent claims is the requirement that the appliance wall's thickness "gradually and continuously increases toward the first and second posterior locations" ('296 Patent, Claim 1). The complaint provides no specific allegations or evidence that the NOVO Smile product meets this specific structural limitation, which raises an evidentiary question for the Plaintiff to address.

V. Key Claim Terms for Construction

The Term: "acetyl resin"

(from '429 Patent, Claim 8)

• Context and Importance: This term defines the material of construction. Practitioners may focus on this term because the Defendant's product is allegedly made of a "crystallized acetyl resin" (Compl. ¶20). The dispute may turn on whether this specific form of the material is encompassed by the claim term.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification repeatedly refers to "acetyl resin" as a preferred material due to its durability and "memory" property, which allows it to flex over teeth and return to shape ('429 Patent, col. 5:5-10, 5:48-55). This functional description could support an interpretation that includes various forms of acetyl resin that exhibit these properties.
  • Evidence for a Narrower Interpretation: A defendant could argue that the term should be limited to the specific type of acetyl resin known in the art at the time of the invention that possessed the described "memory" characteristic, potentially excluding newer or different formulations like "crystallized" resin if it has different properties.

The Term: "retention points which fit under the contours of said patient's teeth"

(from '429 Patent, Claim 8)

• Context and Importance: This phrase describes the core non-adhesive attachment mechanism. The viability of the infringement claim depends on whether the accused product's method of attachment meets this structural and functional definition.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the function in broad terms: the appliance "flaxes outwardly" as it "rides over the bulge... of the contour of the tooth" and then "settles right under this height of contour... creating the retentive points" ('429 Patent, col. 5:30-36). This functional language may support reading the term on any structure that achieves retention by flexing over a tooth's natural undercut.
  • Evidence for a Narrower Interpretation: Figure 5 of the patent depicts specific retentive points (106, 108) located under a distinct bulge (102, 104). A party could argue this drawing narrows the term to a more structurally defined point of contact, rather than a general friction fit along the length of the tooth.

VI. Other Allegations

• Indirect Infringement: The complaint includes boilerplate allegations of induced and contributory infringement, stating Defendant contributed to and induced the infringing activities of others (Compl. ¶28, 35, 42). It does not, however, plead specific facts detailing how Defendant knew of and intended to encourage infringement by third parties (e.g., dentists or patients).
• Willful Infringement: Willfulness is alleged for all three patents. The allegations are based on Defendant’s alleged pre-suit knowledge of the patents, stemming from its hiring of Plaintiff's former Vice President of R&D in 2013. The complaint alleges this executive had spearheaded Plaintiff's patented product line and was then "chiefly responsible" for launching the "substantially similar" accused product at Defendant (Compl. ¶11-15, 30, 37, 43).

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

• A central issue will be one of willfulness and executive knowledge: The court will examine whether the hiring of Plaintiff's former executive, as alleged in the complaint, is sufficient to establish that the Defendant had pre-suit knowledge of the patents-in-suit and engaged in conduct egregious enough to support a finding of willful infringement and a potential award of enhanced damages.
• A key question for the '429 patent will be the evidentiary link between marketing and reality: The complaint's infringement theory relies heavily on the Defendant's own marketing claims. The case will likely turn on whether the physical construction and material composition of the accused NOVO Smile product align with both these marketing descriptions and the specific limitations of the asserted claims.
• Finally, a primary hurdle will be one of infringement specificity: For the '296 and '637 patents, the complaint makes only general infringement allegations. A dispositive question will be whether the Plaintiff can produce specific evidence mapping the accused product to key claim limitations not detailed in the complaint, such as the "gradually and continuously" increasing wall thickness required by the '296 patent.