DCT

1:22-cv-01829

3Shape As v. Carestream Dental LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01829, N.D. Ga., 06/28/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Georgia based on Defendant Carestream's principal place of business in Atlanta and Defendant DITC's regular and established place of business, under the alter-ego DEXIS, in Alpharetta. The complaint also notes the case was transferred to the district by agreement of the original parties from the Western District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s intraoral 3D scanners and associated software infringe four patents related to user interface controls for 3D model manipulation, automated tooth shade detection, and optical scanning apparatus design.
  • Technical Context: Intraoral 3D scanners are foundational tools in digital dentistry, used to create precise digital models of a patient's teeth for the design and manufacture of dental restorations.
  • Key Procedural History: This action was originally filed in the Western District of Texas and was transferred to the Northern District of Georgia by agreement on May 4, 2022. The complaint alleges that on December 22, 2021, Defendant Carestream agreed to sell its intraoral scanner business to Defendant DITC, with the sale completing on April 20, 2022. 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 Earliest Priority Date for ’146 and ’667 Patents
2010-12-06 Earliest Priority Date for ’221 Patent
2014-02-07 Earliest Priority Date for ’151 Patent
2017-03-01 Plaintiff launches its Trios 3 Wireless scanner
2020-06-30 ’151 Patent Issued
2020-09-22 ’221 Patent Issued
2021-07-27 ’146 Patent Issued
2021-08-28 Plaintiff sends notice letter to Carestream re: ’146 Patent
2021-12-22 Carestream and DITC enter asset purchase agreement
2022-04-20 Sale of Carestream scanner business to DITC completed
2022-05-04 Case transferred from W.D. Tex. to N.D. Ga.
2022-06-21 ’667 Patent Issued
2022-06-28 Second Amended Complaint Filed

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

U.S. Reissue Patent No. RE48,221 - "System with 3D user interface integration"

  • Patent Identification: RE48,221, "System with 3D user interface integration," issued September 22, 2020 (Compl. ¶31).

The Invention Explained

  • Problem Addressed: In sterile environments like dental clinics, manipulating a 3D model on a display using traditional input devices such as a mouse or touchscreen creates a risk of cross-contamination (Compl. ¶46; ’221 Patent, col. 1:36-40). It is also inefficient for an operator to frequently switch between a scanning tool and a separate control device (Compl. ¶46).
  • The Patented Solution: The invention integrates a motion sensor directly into the handheld scanning device. This allows the operator to remotely control the view of the 3D model on the display—for example, rotating or panning—simply by physically moving the scanner itself, thereby combining the scanning and navigation tools into one device ('221 Patent, Abstract; col. 2:6-14). The complaint alleges this provides a "convenient, simplified user interface that allows for seamless intraoral scanning and control of the virtual model display" (Compl. ¶46).
  • Technical Importance: This approach streamlines the digital workflow in a sterile clinical setting by eliminating the need to touch a separate interface device to inspect the 3D scan data being captured (Compl. ¶46).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1 (Compl. ¶48).
  • Essential elements of Claim 1 include:
    • A scanning system for scanning a 3D environment, comprising: a handheld device including an optical scanner, and at least one display remotely connected to the handheld device.
    • The handheld device is adapted for performing a scanning action in a physical 3D environment, and the display is adapted for visually representing that environment.
    • The handheld device includes a 3D user interface for remotely controlling the display to adjust the view.
    • The handheld device includes at least one motion sensor that directly detects motion.

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

  • Patent Identification: 10,695,151, "Detecting Tooth Shade," issued June 30, 2020 (Compl. ¶33).

The Invention Explained

  • Problem Addressed: The manual process of selecting a color for a dental restoration by visually comparing a patient's teeth to a physical shade guide is described as "time consuming and inaccurate" ('151 Patent, col. 2:1-2). An incorrect shade match can cause the final restoration to appear artificial and aesthetically poor (Compl. ¶71; ’151 Patent, col. 1:26-31).
  • The Patented Solution: The invention provides a method for automatically determining tooth shade. A 3D scanner is used to obtain a digital 3D representation of a tooth that includes both shape data and "texture data" (e.g., color information). The system then determines a tooth shade value for a point on the tooth by comparing its captured texture data to a database of known texture values from reference tooth shades ('151 Patent, Abstract; col. 2:6-15). This allows a restoration to be designed based on objective measurements of both shape and shade (Compl. ¶71).
  • Technical Importance: This technology automates a critical and traditionally subjective step in restorative dentistry, aiming to improve the consistency, efficiency, and aesthetic quality of manufactured crowns, bridges, and other prosthetics ('151 Patent, col. 2:49-56).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 14 (Compl. ¶73).
  • Essential elements of Claim 14 include:
    • A method for determining shade of a patient's tooth, comprising: obtaining a digital 3D representation of the tooth that includes shape data and texture data.
    • Determining a tooth shade value based on the texture data of a point on the 3D representation and on known texture values of reference tooth shades.
    • Wherein obtaining the digital 3D representation comprises recording a series of sub-scans, at least one of which comprises both texture and geometry information.
    • Generating the final digital 3D representation from the series of recorded sub-scans.

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

  • Patent Identification: 11,076,146, "Focus Scanning Apparatus," issued July 27, 2021 (Compl. ¶35).
  • Technology Synopsis: This patent discloses a 3D scanner apparatus that determines 3D geometry by capturing 2D images of a "time-varying illumination pattern" projected onto an object. It further discloses obtaining the object's surface color by illuminating it with different colors at different times and then combining the color information from the resulting images (Compl. ¶¶94, 98). The scanner is also specified as being wireless and having a high-speed camera (Compl. ¶98).
  • Asserted Claims: Independent Claim 1 (Compl. ¶96).
  • Accused Features: The complaint accuses the CS 3800 Scanning System, alleging it is a wireless scanner that uses a time-varying structured light pattern to determine geometry and switches between different colored LEDs (Amber, Blue, Green) to obtain color data (Compl. ¶¶102-104, 106, 110-111).

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

  • Patent Identification: 11,368,667, "Intraoral Scanning Apparatus," issued June 21, 2022 (Compl. ¶36).
  • Technology Synopsis: This patent is related to the ’146 Patent and similarly discloses a scanner using a time-varying illumination pattern for geometry and multi-color illumination for capturing surface color (Compl. ¶126). This patent adds limitations requiring the handheld scanner to be wireless and to include "one or more motion sensors located on the intraoral scanner to measure three-dimensional motion" ('667 Patent, col. 37:46-51).
  • Asserted Claims: Independent Claim 1 (Compl. ¶128).
  • Accused Features: The complaint accuses the CS 3800 Scanning System, alleging it is a wireless device that uses motion sensors, such as a gyroscope, to measure its three-dimensional motion, in addition to the structured light and multi-color illumination features (Compl. ¶¶137-138).

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 used by dental practitioners to record the "topographic characteristics of teeth or dental impressions in three dimensions" (Compl. ¶¶21, 100). This data is then used in computer-aided design and manufacturing (CAD/CAM) of dental restorations (Compl. ¶21). The complaint specifically highlights the CS 3800 as a wireless device that uses "motion controls" to manipulate digital models and the CS 3700 and CS 3800 for their "Smart-shade matching" technology (Compl. ¶¶57, 77). A promotional screenshot included in the complaint shows the CS 3800 scanner, its charging station, and an associated display showing a 3D dental model (Compl. p. 19).

IV. Analysis of Infringement Allegations

RE48,221 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a handheld device including an optical scanner... [and] at least one display remotely connected to the handheld device The CS 3800 Scanning System includes the CS 3800 handheld optical scanner and a remotely connected display, such as on a laptop or desktop computer. ¶52, ¶54 col. 1:19-22
the handheld device includes a 3D user interface for remotely controlling the display to adjust the view The handheld scanning wand includes a feature called "Gesture motion control," where the "digital model rotates as the handpiece moves," allowing control of the display view without using a mouse. A screenshot from a product demonstration illustrates this feature, stating that the "digital model rotates as the handpiece moves" (Compl. p. 27). ¶56 col. 2:6-14
the handheld device includes at least one motion sensor The CS 3800 scanner contains internal motion controls to enable the manipulation of digital models without touching the computer. ¶57; ¶59 col. 2:1-3
wherein the at least one motion sensor is a sensor that directly detects motion The scanner includes a "gyroscope sensor inside the scanner" that "detects the motion" of the handpiece to enable gesture control. A presentation slide depicts this functionality (Compl. p. 30). ¶57 col. 15:65-16:18

10,695,151 Patent 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 CS 3700 and 3800 systems obtain a 3D representation of a tooth that includes both topology (shape) and color (texture) data. ¶78 col. 2:6-9
determining a tooth shade value for at least one point on the tooth based on the texture data... and on known texture values of one or more reference tooth shade values The systems include a "Smart-shade matching" functionality that automatically detects the enamel color to identify an ideal match and generates a "Smart-Shade Report." A marketing screenshot depicts a 'Smart-Shade Report,' an automatically generated chart that maps detected tooth shades to specific teeth (Compl. p. 38). ¶77, ¶79 col. 2:10-15
obtaining the digital 3D representation... comprises recording a series of sub-scans of the tooth The scanners have a limited field of view that requires recording a series of sub-scans, which are then stitched together, to generate a complete digital 3D representation of the oral cavity. ¶80 col. 3:4-8
at least one of said sub-scans comprises both texture and geometry information for said tooth Each sub-scan contains both texture (color) and geometry (3D shape) information, which is combined to create the final 3D model. ¶80 col. 3:5-8
generating the digital 3D representation of the tooth from the recorded series of sub-scans The software combines the acquired images (sub-scans) to create a 3D model. ¶80 col. 3:8-10
  • Identified Points of Contention:
    • Scope Questions: For the ’221 patent, a potential point of dispute is whether the term "3D user interface" reads on the accused product's "Gesture Motion Control" feature, which the complaint indicates must be deliberately activated by pressing and holding a button for five seconds (Compl. p. 28). The interpretation of "remotely controlling the display to adjust the view" may be contested if the feature is not active by default during scanner operation.
    • Technical Questions: For the ’151 patent, a central question may be the precise definition of "texture data" and how the accused system "determines a tooth shade value." The infringement theory depends on whether the accused "Smart-shade matching" algorithm performs the steps of comparing captured color data against "known texture values of one or more reference tooth shade values" as required by the claim.

V. Key Claim Terms for Construction

  • Term: "3D user interface" ('221 Patent, Claim 1)

    • Context and Importance: The definition of this term is critical to determining whether the accused CS 3800 scanner's motion-based view control, which is described as a distinct "mode" (Compl. p. 28), constitutes the claimed "interface." Practitioners may focus on this term because its construction will decide if a feature that is not persistently active falls within the claim's scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification describes the invention as a "multi-purpose device" that can be switched between performing an action and remotely controlling the view, which could support the argument that a distinct mode is contemplated ('221 Patent, col. 2:8-14; col. 4:3-23).
      • Evidence for a Narrower Interpretation: The background section discusses the problem of physically touching interaction devices, and the complaint highlights the advantage of a "seamless intraoral scanning and control" (Compl. ¶46). This language may support an interpretation that the user interface must be more integrated and immediately available than a feature requiring a five-second button press to activate.

  • Term: "texture data" ('151 Patent, Claim 14)

    • Context and Importance: This term is the foundation of the patented method. Its construction will determine whether the color information captured and processed by the accused products' "Smart-shade" feature is the type of data envisioned by the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states, "the texture information comprises at least one of tooth color or surface roughness" ('151 Patent, col. 2:36-38). This suggests the term can be read broadly to encompass any captured color information.
      • Evidence for a Narrower Interpretation: The specification also describes texture data as expressing a "texture profile expressing the variation in the texture over the tooth" ('151 Patent, col. 2:33-35). A defendant could argue this requires capturing and processing data representing color gradients and variations across the tooth surface, not just a single color point.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all four patents. The allegations are based on Defendants encouraging infringement by disseminating promotional materials, user guides, training materials, and other instructions that teach customers to use the accused features, such as the gesture control and shade matching functionalities (Compl. ¶¶62-63, 85-86, 116-117, 144-145).
  • Willful Infringement: Willfulness is alleged for all four patents. For the ’146 patent, the allegation is based on pre-suit knowledge stemming from an August 28, 2021 notice letter from Plaintiff to Carestream (Compl. ¶121). For the ’221, ’151, and ’667 patents, willfulness is alleged based on knowledge from at least the date of the complaint filing, as well as alleged "prior business dealings" between the parties (Compl. ¶¶66, 89, 148).

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

  • A core issue will be one of definitional scope: does the accused CS 3800's "Gesture Motion Control," a feature that must be explicitly activated, meet the ’221 patent's requirement for a "3D user interface for remotely controlling the display," particularly in light of the patent's goal of "seamless" operation?
  • A second key question will be one of process equivalence: does the accused products' "Smart-shade matching" feature, which automatically generates a shade report, perform the specific, multi-step method of the ’151 patent, which requires generating a 3D representation from a "series of sub-scans" and determining a shade value based on "texture data"?
  • The case will also turn on a question of technological combination: can Plaintiff demonstrate that the accused CS 3800 scanner, as a single integrated product, practices the specific combinations of time-varying illumination, wireless communication, and motion sensing as claimed in the '146 and '667 patents?