Densys Ltd v. 3S

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Densys Ltd. (Israel)
  • Defendant: 3Shape TRIOS A/S and 3Shape A/S (Denmark)
  • Plaintiff’s Counsel: The Mort Law Firm, PLLC; Goldberg Segalla LLP
• Case Identification: 6:19-cv-00680, W.D. Tex., 11/26/2019
• Venue Allegations: Venue is asserted on the basis that Defendants are foreign corporations not residing in a U.S. judicial district and may therefore be sued in any district. The complaint further alleges personal jurisdiction in Texas based on Defendants' business contacts, including sales, distribution, and contracts with Texas-based distributors and customers.
• Core Dispute: Plaintiff alleges that Defendant’s 3Shape Trios Intraoral Scanning Systems and 3Shape Scan Bodies infringe patents related to real-time 3D intra-oral imaging systems and supplemental reference devices for 3D mapping.
• Technical Context: The technology involves 3D intra-oral scanning, a field critical to modern dentistry for creating digital models of a patient's mouth for diagnostics, orthodontics, and the fabrication of crowns, implants, and other prostheses.
• Key Procedural History: The complaint alleges that Defendant 3Shape had pre-suit knowledge of U.S. Patent No. 6,402,707 at least as early as a March 2010 meeting between the parties and a formal patent infringement notice letter sent in March 2012. The complaint also references a prior ITC investigation (No. 337-TA-1091) involving the parties and related technology, where Defendant allegedly stipulated to importing the accused scanning systems into the U.S.

Case Timeline

Date	Event
2000-06-28	U.S. Patent No. 6,402,707 Priority Date
2002-06-11	U.S. Patent No. 6,402,707 Issue Date
2006-05-09	3Shape allegedly contacts Densys to explore business opportunities
2007-06-26	U.S. Patent No. 9,222,768 Priority Date
2007-2008	3Shape allegedly begins development of the accused TRIOS system
2010-03-16	Densys founder allegedly meets with 3Shape co-founder and discloses '707 patent
2012-03-22	Densys allegedly sends 3Shape a written notice of infringement of the '707 patent
2015-12-29	U.S. Patent No. 9,222,768 Issue Date
2019-11-26	Complaint Filing Date

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

U.S. Patent No. 6,402,707 - "Method and system for real time intra-orally acquiring and registering three-dimensional measurements and images of intra-oral objects and features," Issued June 11, 2002

The Invention Explained

• Problem Addressed: The patent describes the difficulty in creating a complete, panoramic 3D model of a patient's mouth (Compl. ¶¶ 93, 116). Prior art systems required either complex and expensive mechanical arms to track the scanner's position or the use of visual markers (fiducials) that had to be constantly visible in every scan, making the process cumbersome and prone to error, especially when stitching together multiple views (’707 Patent, col. 5:51-6:35).
• The Patented Solution: The invention proposes establishing a single "intra-oral fixed global registration position" inside the patient's mouth at the start of a scan. A mobile imaging device then captures multiple 3D images from various locations. For each image, the system records the scanner's position and orientation relative to that single fixed global position. This allows all the individual 3D images to be accurately registered and merged into a comprehensive 3D model, even if the fixed registration position itself is not visible in subsequent scans (’707 Patent, Abstract; col. 9:11-30). This process is illustrated in the patent's Figure 1, which shows a mobile measuring device (36) moving around the oral cavity (26) while its position is tracked relative to a single fixed registration device (34).
• Technical Importance: This approach was designed to overcome the limitations of prior art by providing a more robust and efficient method for "stitching" together multiple 3D scans, a critical step for creating the accurate, full-arch digital models needed for advanced dental procedures (’707 Patent, col. 8:60-65).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 37 (a system) (Compl. ¶123).
• Independent Claim 1 (Method) Essential Elements:
  • (a) establishing an intra-oral fixed global registration position inside the oral cavity;
  • (b) providing a measuring and imaging device;
  • (c) selecting a field of view of the device at a global position;
  • (d) acquiring a 3D measurement and image, and recording the device's global position relative to the fixed global registration position;
  • (e) repeating steps (c) and (d) for a plurality of global positions and fields of view; and
  • (f) registering the local data from each acquisition with global coordinates to form a combined 3D measurement.
• Independent Claim 37 (System) Essential Elements:
  • (a) an intra-oral fixed global registration position inside the oral cavity;
  • (b) a measuring and imaging device for capturing intra-oral objects; and
  • (c) a mobile registration device for measuring and recording the global positions and orientations of the measuring and imaging device, relative to the fixed global registration position.

U.S. Patent No. 9,222,768 - "Supplemental scene reference surface devices for three-dimensional mapping," Issued December 29, 2015

The Invention Explained

• Problem Addressed: 3D imaging techniques like structured illumination can struggle to accurately model small or geometrically complex intra-oral features, such as implant abutments, or to image the thin edges of teeth. These systems also face challenges "stitching" together different 3D views (or "tiles") when there are insufficient overlapping natural features to align the images (’768 Patent, col. 3:5-48).
• The Patented Solution: The patent proposes a physical "reference surface device" that can be temporarily attached to a stable feature (like an implant or adjacent tooth) within the intra-oral scene. This device has a known, predefined geometry, such as a set of non-polished, planar faces arranged in a prismatic or sector-based structure. When the scanner captures an image of the patient's teeth, it also captures this reference device. The device's known geometry provides distinct, easily identifiable positional characteristics that allow the imaging system to accurately calculate the 3D position of the target feature and to reliably stitch together multiple 3D images (’768 Patent, Abstract; col. 5:3-14).
• Technical Importance: The device acts as a "scannable bridge" or anchor, providing unambiguous geometric data that improves the accuracy of 3D modeling for small or difficult-to-scan objects and enhances the reliability of merging multiple 3D scans into a single, cohesive model (’768 Patent, col. 15:42-52).

Key Claims at a Glance

• The complaint asserts at least claim 1 (Compl. ¶160).
• Independent Claim 1 (Device) Essential Elements:
  • (a) at least one sector that includes a plurality of faces, each at an angular orientation to adjacent faces, extending along the length of the sector, and including oppositely disposed edges;
  • The plurality of faces is configured to provide an identifiable positional characteristic; and
  • (b) a mounting element connected to the sector, which is adapted to be attached to a feature with a fixed location in the intra-oral scene.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are the "3Shape Trios Intraoral Scanning System" (including various models such as TRIOS 3, TRIOS 3 Wireless, and Trios 4), the "3Shape Scan Bodies," and associated software and hardware components (Compl. ¶¶ 89, 94, 123).

Functionality and Market Context

• The 3Shape Trios system is a handheld scanner used by dental professionals to capture 3D digital impressions of a patient's teeth and gums (Compl. ¶¶ 92-93). The 3Shape Scan Bodies are physical components attached to dental implants to provide a clear reference point during the scanning process (Compl. ¶94). The complaint alleges that these products are widely distributed in the U.S. through major dental suppliers and are used to create digital models for a range of dental procedures, including crowns, bridges, and implants (Compl. ¶¶ 19-32, 91). The complaint includes a screenshot from a 3Shape technical document illustrating the "3Shape Lab Solution 2019" workflow, which shows digital impression scans from a TRIOS device being used for CAD design, milling, and 3D printing (Compl. ¶92, Image on p. 34).

IV. Analysis of Infringement Allegations

’707 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
(a) establishing an intra-oral fixed global registration position inside the oral cavity...	The TRIOS system establishes a fixed global registration position, allegedly demonstrated in an instructional video by the starting point of a continuous scanning path.	¶127	col. 12:32-35
(b) providing a measuring and imaging device for measuring and imaging the intra-oral objects and features...	The TRIOS system includes a handheld intraoral scanner that serves as the measuring and imaging device.	¶131	col. 15:7-13
(d) acquiring at least one three-dimensional measurement and image... and, recording said global position of said measuring and imaging device relative to said intra-oral fixed global registration position...	The system acquires 3D measurements and allegedly uses a "motion sensor interface" including a "Gyro Sensor" to record the scanner's position relative to the established global registration position.	¶¶133, 135, 140	col. 20:59-65
(e) repeating step (c) and step (d) for a plurality of said global positions and a plurality of said fields of view...	The system captures thousands of images per second in an iterative process, as shown by a "3D Images" counter in a promotional video, to form a complete scan.	¶142	col. 21:20-29
(f) registering local coordinate space pixel positions... with corresponding global coordinate space pixel positions, for forming a plurality of the three-dimensional measurements... registered relative to same said intra-oral fixed global registration position	The system registers newly acquired data with respect to the global coordinate space defined by the global registration position, as demonstrated by the gradual on-screen accumulation of 3D data.	¶¶143-144	col. 21:49-22:27

• Identified Points of Contention:
  • Scope Questions: A primary issue may be whether the accused system's process, which appears to rely on continuous stitching of overlapping image data, meets the claim limitation of "establishing an intra-oral fixed global registration position." The complaint alleges the scan's starting point serves this function (Compl. ¶127, Image on p. 43), but a court may need to determine if the patent's language requires a discrete, persistent physical or virtual reference point that is maintained throughout the entire panoramic scan, as suggested by the specification's reference to a "fixed global registration device" (’707 Patent, col. 12:60-65).
  • Technical Questions: A key factual question will be what function the accused system's "Gyro Sensor" actually performs (Compl. ¶140). The complaint alleges it records the scanner's global position relative to the fixed registration point. However, it raises the question of whether this sensor provides the precise positional data required by the claim, or if it provides only coarse orientation data, with fine registration being accomplished through other means like software-based point cloud matching, which may not align with the claimed method.

’768 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a) at least one sector including... a plurality of faces, each face of said plurality of faces at an angular orientation with respect to each adjacent face...	The accused 3Shape Scan Bodies are alleged to be comprised of at least one sector with a plurality of faces at angular orientations to one another. An image shows arrows pointing to distinct faces on the device.	¶163	col. 17:30-44
...the plurality of faces is configured to provide at least one fully intraoral reference surface operative to provide an identifiable positional characteristic...	The plurality of faces on the Scan Body are alleged to provide a reference surface that yields an identifiable positional characteristic used for 3D scanning.	¶166	col. 17:38-44
b) a mounting element in communication with said second end of said at least one sector...	The accused Scan Bodies include a mounting element, identified as the screw-like base of the device, that is in communication with the main body (sector). An image from a product page shows this element.	¶167	col. 17:40-44
...wherein said identifiable positional characteristic is at a predetermined three-dimensional spatial position from a mounting point...	The positional characteristic of the Scan Body is at a known, predetermined position relative to its mounting point, which attaches to a fixed feature (the dental implant).	¶168	col. 17:40-52

• Identified Points of Contention:
  • Scope Questions: The infringement analysis for the ’768 patent will likely center on claim construction. The central question is whether the physical structure of the accused 3Shape Scan Bodies falls within the patent’s definition of a "sector" having a "plurality of faces at an angular orientation." The interpretation of these geometric terms, in light of the patent's specification and figures, will be critical.
  • Technical Questions: While the complaint provides images of the accused Scan Bodies that appear to show multiple faces (Compl. ¶¶ 163, 165), the dispute may turn on a detailed technical comparison. For instance, does the geometry of the accused product meet the specific structural requirements described in the patent, such as having "oppositely disposed edges" that "taper inward" as recited in dependent claims, which may inform the scope of the independent claim?

V. Key Claim Terms for Construction

For the ’707 Patent

• The Term: "intra-oral fixed global registration position"
• Context and Importance: This term is the central concept of the ’707 patent's asserted claims. Its construction will likely determine infringement. The dispute will be whether the accused system's process of starting a scan and continuously stitching subsequent images constitutes "establishing" such a "position." Practitioners may focus on this term because it distinguishes the invention from prior art that required markers to be in every frame.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself refers to a "position," which does not explicitly require a physical object. A party could argue that a virtual coordinate established in software at the beginning of a scan meets this limitation.
  • Evidence for a Narrower Interpretation: The patent specification repeatedly discusses establishing this position using an "intra-oral fixed global registration device" (’707 Patent, col. 12:60-65, Fig. 1 element 34). This suggests that the claimed "position" is one that is defined by a distinct physical component, which the accused system may lack.

For the ’768 Patent

• The Term: "sector"
• Context and Importance: This term defines the fundamental shape of the claimed reference device. Whether the accused 3Shape Scan Bodies have a "sector" will be a core issue. Practitioners may focus on this term because the specific geometry of the accused product must map onto this claimed structure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not provide an explicit definition in the text, which could support an argument for its plain and ordinary meaning as a general portion or segment of the device.
  • Evidence for a Narrower Interpretation: The specification describes embodiments where sectors are portions of a "prism" and are derived from "a regular polygon of 36 sides" (’768 Patent, col. 14:42-46). This detailed description of specific, highly geometric embodiments could be used to argue for a narrower construction limited to such prism-based shapes.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that 3Shape induces infringement of both patents by providing user manuals, websites, advertisements, and other instructional materials that actively encourage and instruct customers on how to use the TRIOS systems and Scan Bodies in a manner that performs the claimed methods and uses the claimed devices (Compl. ¶¶ 152-153, 170).
• Willful Infringement: For the ’707 patent, the complaint alleges pre-suit willfulness based on 3Shape's actual knowledge since at least March 2010, when the patent was allegedly discussed in a meeting, and a formal infringement notice letter sent in March 2012 (Compl. ¶¶ 105-106, 111). The complaint further alleges 3Shape conducted a "freedom-to-operate analysis" in which "no lawyers were involved" (Compl. ¶100). For the ’768 patent, willfulness is alleged based on knowledge of the patent since at least the filing of the complaint (Compl. ¶169).

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

• A core issue will be one of definitional scope: Can the ’707 patent’s central term, "intra-oral fixed global registration position," be construed to read on the accused system's method of initiating a scan at a starting point and then using continuous software-based image stitching, or does the patent require a discrete physical reference device that persists throughout the scan?
• A key evidentiary question will be one of geometric correspondence: Does the physical shape of the accused 3Shape Scan Bodies meet the specific geometric limitations of a "sector" with a "plurality of faces," as that term is construed in light of the ’768 patent's detailed embodiments?
• A critical issue for damages will be culpability: Do the complaint's specific allegations of a 2010 meeting, a 2012 notice letter, and an internal "freedom-to-operate analysis" provide sufficient evidence to support a finding of willful infringement of the ’707 patent?