DCT

1:22-cv-01829

3Shape As v. Carestream Dental LLC

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01829, N.D. Ga., 04/12/2023
  • Venue Allegations: Plaintiff asserts venue is proper based on Defendants' transaction of business, acts of infringement, and established places of business within the Northern District of Georgia. The action was originally filed in the Western District of Texas and transferred to this district by agreement of the parties.
  • Core Dispute: Plaintiff alleges that Defendants’ intraoral scanners infringe patents related to tooth shade detection and 3D optical scanning technology.
  • Technical Context: The technology at issue is digital intraoral scanning, a method for creating precise 3D digital models of a patient's teeth and oral cavity, which is foundational to modern computer-aided design and manufacturing (CAD/CAM) in dentistry.
  • Key Procedural History: The complaint states that the case was transferred from the Western District of Texas to the Northern District of Georgia by agreement on May 4, 2022. It further notes that on April 20, 2022, Defendant Carestream completed the sale of its intraoral scanner business to Defendant DITC, which allegedly agreed to assume related liabilities. Plaintiff also alleges it provided Defendant Carestream with actual notice of infringement of one of the patents-in-suit via a letter dated August 28, 2021.

Case Timeline

Date Event
2009-06-17 U.S. Patent Nos. 11,076,146 & 11,368,667 Priority Date
2014-02-07 U.S. Patent No. 10,695,151 Priority Date
2020-06-30 U.S. Patent No. 10,695,151 Issue Date
2021-07-13 Accused Product CS 3800 Announcement
2021-07-27 U.S. Patent No. 11,076,146 Issue Date
2021-08-28 3Shape letter to Carestream alleging infringement of the '146 Patent
2021-12-22 Carestream and DITC sign Purchase Agreement
2022-04-20 Carestream completes sale of intraoral scanner business to DITC
2022-05-04 Case transferred from W.D. Tex. to N.D. Ga.
2022-06-21 U.S. Patent No. 11,368,667 Issue Date
2023-04-12 Third Amended Complaint Filing Date

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

U.S. Patent No. 10,695,151 - "Detecting Tooth Shade"

The Invention Explained

  • Problem Addressed: The patent's background describes the process of manually determining a patient's tooth shade for a dental restoration as being subjective, "time consuming and inaccurate," often resulting in restorations that appear artificial ('151 Patent, col. 1:19 - col. 2:3).
  • The Patented Solution: The invention proposes a method and system for automatically determining tooth shade from a digital 3D scan. The system first obtains a digital 3D representation of the tooth that comprises both geometric "shape data" and color/surface "texture data" ('151 Patent, Abstract). This 3D model is generated by recording and combining a "series of sub-scans" of the teeth ('151 Patent, Fig. 1). The system then determines a tooth shade value for at least one point on the digital tooth by comparing its texture data with the known texture values of one or more reference tooth shades ('151 Patent, Abstract).
  • Technical Importance: This technology aims to replace a subjective, manual process with an objective, data-driven method, potentially leading to more accurate and aesthetically consistent dental restorations ('151 Patent, col. 1:23-31).

Key Claims at a Glance

  • The complaint asserts at least independent claim 14 (Compl. ¶46).
  • Claim 14 is a method claim with the following essential elements:
    • obtaining a digital 3D representation of the tooth, comprising shape data and texture data;
    • determining a tooth shade value for at least one point on the tooth based on the texture data of that point and on known texture values of reference tooth shades;
    • wherein the obtaining step comprises recording a series of sub-scans (at least one having both texture and geometry information) and generating the 3D representation from them.

U.S. Patent No. 11,076,146 - "Focus Scanning Apparatus"

The Invention Explained

  • Problem Addressed: The patent addresses the technical challenges of capturing accurate 3D geometry and color data using a compact, handheld scanner, particularly for intraoral applications where space is limited and stability is a concern ('146 Patent, col. 1:25-44).
  • The Patented Solution: The invention is a wireless, high-speed intraoral scanner that captures both 3D geometry and color. It determines 3D geometry by projecting a "time-varying illumination pattern" onto the object and capturing a plurality of 2D images with a camera, from which the 3D surface is calculated. To determine color, a hardware processor is configured to "selectively switch a color of the probe light" to illuminate the object with different colors at different times, record images for each color, and then "combine the different colors from the different images" to obtain the final surface color ('146 Patent, col. 37:24-52).
  • Technical Importance: This integrated approach enables a single, untethered device to perform high-speed 3D surface and color data acquisition, streamlining the clinical workflow for creating digital dental models.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶69).
  • Claim 1 is an apparatus claim with the following essential elements:
    • An intraoral scanner comprising a camera, a pattern generator for a "time-varying illumination pattern," an optical system, and a tip;
    • A hardware processor configured to switch the color of the probe light, record images at different times with the different colors, and combine the colors to determine the surface color;
    • The intraoral scanner is "wireless";
    • The at least one camera is a "high-speed camera."

U.S. Patent No. 11,368,667 - "Intraoral Scanning Apparatus"

Technology Synopsis

  • The technology disclosed in the '667 patent is closely related to that of the '146 patent, describing a handheld, wireless intraoral scanner that uses a time-varying illumination pattern for 3D geometry and switched-color illumination for color capture (Compl. ¶99). A distinguishing feature of the asserted claim is the express requirement of "one or more motion sensors located on the intraoral scanner to measure three-dimensional motion of the intraoral scanner" ('667 Patent, col. 37:43-46).

Asserted Claims

  • The complaint asserts at least independent claim 1 (Compl. ¶101).

Accused Features

  • The complaint alleges the CS 3800 scanner infringes based on its use of motion sensors ("A gyroscope sensor inside the scanner") to enable "gesture motion control" functionality (Compl. ¶111; p. 63).

III. The Accused Instrumentality

Product Identification

  • The CS 3600, CS 3700, and CS 3800 intraoral scanners and associated software, including CS ScanFlow, CS Imaging, and CS Model+ (collectively, the "Accused Products") (Compl. ¶4-5).

Functionality and Market Context

  • The Accused Products are described as digital optical scanning devices that record the three-dimensional "topographic characteristics of teeth" to create digital impressions for use in CAD/CAM dental applications (Compl. ¶73; p. 21).
  • A key advertised feature is "Smart-shade matching," which the complaint alleges automatically detects the enamel color of a scanned area to determine an ideal shade for a dental restoration (Compl. ¶50). This functionality generates a "Smart-Shade Report" that maps standard dental shade values to the patient's teeth, as shown in a screenshot from a product brochure (Compl. p. 19).
  • To build a 3D model, the scanners are alleged to operate by recording and combining a series of "sub-scans" due to their limited field of view (Compl. ¶53).
  • The CS 3800 model is specifically identified as being wireless and operating at high speed, capturing data with "more frames per second" (Compl. ¶83-84).
  • The complaint alleges the scanners determine 3D geometry by projecting a "pattern of structured light (lines or bars)" that "varies in time" onto the tooth surface (Compl. ¶76-77). For color capture, the CS 3800 is alleged to use LEDs of different colors ("Amber, Blue, Green") (Compl. ¶79).
  • The CS 3800 is also alleged to incorporate "motion controls" utilizing a "gyroscope sensor inside the scanner," a feature Plaintiff maps to the motion sensor claim element of the ’667 patent (Compl. p. 63).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,695,151 Infringement Allegations

Claim Element (from Independent Claim 14) Alleged Infringing Functionality Complaint Citation Patent Citation
obtaining a digital 3D representation of the tooth, where the digital 3D representation comprises shape data and texture data for the tooth The Accused Products are digital optical scanning devices that obtain a topology (shape) of the tooth along with the color (texture) of the tooth. ¶51 col. 2:6-9
determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point... and on known texture values of one or more reference tooth shade values The Accused Products include a "Smart-shade matching" function that automatically detects enamel color and generates a "Smart-Shade Report" with standard reference shade values (e.g., A3, C1). A screenshot from the CS 3700 brochure shows this report mapping shades to teeth (Compl. p. 19). ¶50, ¶52 col. 2:9-15
wherein obtaining the digital 3D representation of the tooth comprises recording a series of sub-scans of the tooth... and generating the digital 3D representation of the tooth from the recorded series of sub-scans The scanners have a limited field of view and operate by acquiring a series of images (sub-scans) of different parts of the arch, which the software then "combines...to create a 3D model." A screenshot from a user guide illustrates this workflow (Compl. p. 29). ¶53 col. 3:3-9
  • Identified Points of Contention:
    • Scope Questions: A potential dispute may center on the claim phrase "determining a tooth shade value for at least one point... based on the texture data of the corresponding point." The question may arise whether the accused "Smart-shade matching" algorithm performs its analysis on a "point" basis as required, or whether it uses a regional or other averaging methodology that Defendants could argue falls outside the literal scope of the claim.
    • Technical Questions: The complaint alleges that the accused systems generate a 3D model from a "series of sub-scans" where "at least one" contains both texture and geometry information (Compl. p. 28). A technical question for the court may be what evidence demonstrates that individual sub-scans in the accused process concurrently capture both data types as required by the claim, rather than capturing them in separate passes or modes.

U.S. Patent No. 11,076,146 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An intraoral scanner for determining the 3D geometry and color of at least a part of the surface of an object in an oral cavity The CS 3800 is marketed as a "digital optical scanning device used to record the topographic characteristics of teeth... in three dimensions" (geometry) and its technical specifications list multiple color LEDs for illumination (color). ¶73, ¶79 col. 37:24-28
a pattern generator configured to generate... a probe light with a plurality of configurations in the form of a time-varying illumination pattern The scanners are alleged to utilize a "pattern of structured light (lines or bars)" that "varies in time," with images in the complaint showing the projected pattern changing (Compl. p. 40). ¶76-77 col. 37:31-35
a hardware processor configured to: [a] selectively switch a color of the probe light... [b] record different images... and [c] combine the different colors... The CS 3800's technical specifications list "LED: Amber, Blue, Green." The complaint alleges the system uses these different colors at different times to "collect shade values from 3D surfaces factoring variations in lighting conditions." ¶79-80, ¶82 col. 37:40-49
wherein the intraoral scanner is wireless The CS 3800 is explicitly advertised as the "CS3800 Wireless," and marketing materials highlight its "optimal mobility." An image from the product webpage shows the scanner without a cord (Compl. p. 47). ¶83 col. 37:50
wherein the at least one camera is a high-speed camera The scanner is marketed with "High Scan Speed," enabled by "more frames per second, and an optimized algorithm." A marketing slide states it can scan an arch in 25 seconds (Compl. p. 45). ¶84 col. 37:51-52
  • Identified Points of Contention:
    • Scope Questions: The construction of "time-varying illumination pattern" may be a central issue. The complaint provides evidence of the scanner projecting different patterns over time (Compl. p. 40). A question for the court may be whether sequentially projecting a series of distinct static patterns meets the definition of a "time-varying" pattern as contemplated by the patent, or if the term requires a continuously moving or modulating pattern.
    • Technical Questions: What evidence does the complaint provide that the processor performs the specific three-part function of (a) switching color, (b) recording images, and (c) combining colors to obtain the final surface color? The complaint points to technical specifications and a white paper describing a method of using "varying illumination" to collect shade values (Compl. ¶79, ¶82), but the precise mechanism of combination may be a subject of technical dispute.

V. Key Claim Terms for Construction

For U.S. Patent No. 10,695,151:

  • The Term: "texture data"
  • Context and Importance: This term defines the type of information used for shade determination. Its scope is critical because if it is construed narrowly (e.g., only color), it could impact the infringement analysis, whereas a broader construction (e.g., including surface roughness) could expand the claim's reach. Practitioners may focus on this term to define the technological basis of the invention.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification explicitly states that "the texture information comprises at least one of tooth color or surface roughness" ('151 Patent, col. 2:37-39).
    • Evidence for a Narrower Interpretation: The patent's abstract and primary embodiments focus heavily on color as the basis for determining "tooth shade," and the method described involves comparing color data to reference shade values ('151 Patent, Abstract; col. 2:40-46).

For U.S. Patent No. 11,076,146:

  • The Term: "time-varying illumination pattern"
  • Context and Importance: This term is fundamental to the claimed method of capturing 3D geometry. Whether the accused product's use of structured light meets this definition will be a primary question of infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's own glossary defines the term broadly as "a pattern that varies in time, i.e. the embedded spatial structure varies in time" ('146 Patent, col. 4:59-61), which could encompass the sequential projection of different patterns.
    • Evidence for a Narrower Interpretation: The specification describes specific embodiments that achieve a time-varying pattern through continuous physical motion, such as "by moving a pattern across the object being scanned" or using a "rotating wheel" ('146 Patent, col. 4:11-14; col. 11:3-7). An argument could be made that the invention is limited to such continuous variations.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on allegations that Defendants encourage infringement by providing customers with user manuals, training videos, and marketing materials that instruct on how to use the Accused Products in an infringing manner (Compl. ¶58, ¶89, ¶117). Contributory infringement is based on allegations that the Accused Products are especially made for infringement and have no substantial non-infringing uses (Compl. ¶61, ¶92, ¶120).
  • Willful Infringement: For the '146 patent, willfulness is alleged based on pre-suit knowledge, citing a notice letter sent to Carestream on August 28, 2021 (Compl. ¶87, ¶94). For the '151 and '667 patents, willfulness is alleged based on knowledge as of the filing of the complaint and, on information and belief, prior knowledge from business dealings and Defendants' own patent prosecution activities (Compl. ¶55, ¶62, ¶115). The complaint alleges Defendants continued their infringing conduct despite a high likelihood of infringement (Compl. ¶63, ¶95, ¶122).

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

  • A central issue will be one of algorithmic equivalence: for the '151 patent, does the accused "Smart-shade" functionality operate by determining a shade value "for at least one point" based on "texture data of the corresponding point," as claimed, or does it employ a fundamentally different regional or holistic analysis that may fall outside the claim's scope?
  • A key question will be one of definitional scope: for the '146 and '667 patents, can the term "time-varying illumination pattern" be construed to cover the accused systems' alleged method of sequentially projecting distinct structured light patterns, or is the term limited to the continuously moving patterns described in the patent's embodiments?
  • A critical factual dispute will concern scienter and pre-suit conduct: particularly for the '146 patent, what actions, if any, did Defendants take to assess potential infringement after receiving the explicit notice letter of August 2021? The resolution of this question will be determinative for the willfulness allegation and the potential for enhanced damages.