DCT

6:22-cv-00443

3Shape As v. Medit Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:22-cv-00443, W.D. Tex., 10/14/2022
  • Venue Allegations: Venue is alleged to be proper on the basis that Defendant is a foreign corporation not resident in the United States.
  • Core Dispute: Plaintiff alleges that Defendant’s intraoral scanners and associated software infringe five U.S. patents related to 3D scanning technology, movable object detection, tooth shade determination, and wireless scanner apparatus design.
  • Technical Context: The technology concerns intraoral scanners, which are handheld devices used by dentists to create digital 3D models of a patient's teeth, improving the workflow for creating dental restorations.
  • Key Procedural History: The complaint alleges Defendant had knowledge of the asserted technologies due to prior events. For two patents, knowledge is alleged based on infringement litigation between the parties involving related European patents in German courts, initiated in August and September 2020. For two other patents, knowledge is alleged based on direct communications between the parties at a dental industry event on February 25, 2022.

Case Timeline

Date Event
2009-06-17 Priority Date for ’146 and ’667 Patents
2011-03-01 Plaintiff introduces TRIOS intraoral scanner
2011-07-15 Priority Date for ’551 and ’553 Patents
2014-02-01 Plaintiff unveils automatic teeth shade measurement technology
2014-02-07 Priority Date for ’151 Patent
2017-03-01 Plaintiff launches TRIOS 3 Wireless intraoral scanner
2017-04-25 ’551 Patent Issued
2018-09-04 ’553 Patent Issued
2020-06-30 ’151 Patent Issued
2020-08-31 German litigation filed involving European patents related to ’551 Patent
2020-09-03 German litigation filed involving European patents related to ’551 Patent
2021-07-27 ’146 Patent Issued
2022-02-25 Plaintiff allegedly informs Defendant of infringement of wireless scanner IP
2022-06-21 ’667 Patent Issued
2022-10-14 First Amended Complaint Filed

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

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

  • Patent Identification: U.S. Patent No. 11,076,146, “Focus Scanning Apparatus,” issued July 27, 2021 (Compl. ¶10).

The Invention Explained

  • Problem Addressed: The patent background describes limitations of existing 3D scanning methods like confocal microscopy, which can be slow or have a limited field of view, making them less suitable for applications like intraoral scanning (’146 Patent, col. 1:43-67).
  • The Patented Solution: The invention is an intraoral scanner that determines an object's 3D geometry and color. It does so by projecting a "time-varying illumination pattern" onto the object (e.g., teeth) and capturing a plurality of 2D images of the illuminated object. The 3D geometry is derived from these images and the known pattern. Concurrently or sequentially, it illuminates the object with different colors at different times, captures images of each color, and combines them to determine the surface color (Compl. ¶22; ’146 Patent, Abstract).
  • Technical Importance: This approach aims to provide a fast and accurate method for capturing both the shape and color of teeth in a single, manageable device.

Key Claims at a Glance

  • The complaint asserts at least claim 1 (Compl. ¶26).
  • Independent Claim 1 is an apparatus claim for an intraoral scanner with the following essential elements:
    • At least one camera with an array of sensor elements.
    • A pattern generator using a light source to create a probe light with a "time-varying illumination pattern."
    • An optical system to transmit the probe light to the object and the returned light to the camera to form 2D images, from which 3D geometry is determined.
    • A tip for insertion into the oral cavity.
    • A hardware processor configured to: (a) selectively switch the color of the probe light to illuminate the object with different colors at different times; (b) record images of the object with the different colors; and (c) combine the colors from the images to obtain the surface color.
    • The intraoral scanner is wireless.
    • The at least one camera is a high-speed camera.

U.S. Patent No. 9,629,551 - “Detection of a Movable Object When 3D Scanning a Rigid Object”

  • Patent Identification: U.S. Patent No. 9,629,551, “Detection of a Movable Object When 3D Scanning a Rigid Object,” issued April 25, 2017 (Compl. ¶11).

The Invention Explained

  • Problem Addressed: When 3D scanning a rigid object like teeth, movable objects such as the patient's tongue, cheeks, or the dentist's tools can enter the field of view and contaminate the scan data, creating an inaccurate 3D model (’551 Patent, col. 1:43-52).
  • The Patented Solution: The patent discloses a method to differentiate between the rigid object and transient movable objects. It involves acquiring at least two 3D representations (scans) of the same location. For each scan, it determines an "excluded volume" in space—a region where, from the scanner's perspective, no surface should exist behind the captured surface. If a portion of one scan appears in the "excluded volume" of another scan, that portion is identified as part of a movable object and is disregarded when generating the final 3D model (’551 Patent, Abstract; Compl. ¶61).
  • Technical Importance: This invention provides a method for automatically filtering unwanted "noise" from 3D scans caused by movement, thereby improving the accuracy and reliability of the final digital model.

Key Claims at a Glance

  • The complaint asserts at least claim 1 (Compl. ¶59).
  • Independent Claim 1 is a method claim for detecting a movable object while scanning a rigid object, with the following essential steps:
    • Providing a first 3D representation by scanning at least part of a location.
    • Providing a second 3D representation by scanning at least part of the location.
    • Determining for the first 3D representation a "first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation."
    • Determining a similar "second excluded volume" for the second 3D representation.
    • If a portion of the surface in the first 3D representation is located in the second excluded volume, that portion is disregarded.
    • And/or, if a portion of the surface in the second 3D representation is located in the first excluded volume, that portion is disregarded.

Multi-Patent Capsule: U.S. Patent No. 10,064,553 - “Detection of a Movable Object When 3D Scanning a Rigid Object”

  • Patent Identification: U.S. Patent No. 10,064,553, “Detection of a Movable Object When 3D Scanning a Rigid Object,” issued September 4, 2018 (Compl. ¶12).
  • Technology Synopsis: As a continuation of the '551 Patent, this patent addresses the same technical problem of distinguishing between movable and rigid objects during a 3D scan. It claims a method of generating successive 3D representations, determining an "excluded volume" for the first representation, and disregarding portions of the second representation that fall within that excluded volume (Compl. ¶82, ¶86).
  • Asserted Claims: The complaint asserts at least claim 1 (Compl. ¶84).
  • Accused Features: The "Smart soft tissue filtering" or "Smart Scan Filtering" functionality in Defendant's software, which allegedly auto-deletes scan data recognized as "noise data" such as cheeks and tongue (Compl. ¶83 fn.3, ¶88, ¶91).

Multi-Patent Capsule: U.S. Patent No. 10,695,151 - “Detecting Tooth Shade”

  • Patent Identification: U.S. Patent No. 10,695,151, “Detecting Tooth Shade,” issued June 30, 2020 (Compl. ¶13).
  • Technology Synopsis: This invention relates to methods for determining the shade of a patient's tooth from a digital 3D model that includes both shape and texture data. The method determines a shade value for a point on the tooth by comparing its texture data to known reference shade values, and can create a shade profile with multiple regions across the tooth surface to improve the aesthetics of dental restorations (Compl. ¶107, ¶111).
  • Asserted Claims: The complaint asserts at least claim 13 (Compl. ¶109).
  • Accused Features: The "Smart Shade Guide" feature in Defendant's Medit Scan software, which displays the color of a selected tooth based on the VITA Classical shade guide and allows for the creation of a shade profile (Compl. ¶113, ¶116).

Multi-Patent Capsule: U.S. Patent No. 11,368,667 - “Intraoral Scanning Apparatus”

  • Patent Identification: U.S. Patent No. 11,368,667, “Intraoral Scanning Apparatus,” issued June 21, 2022 (Compl. ¶14).
  • Technology Synopsis: This patent claims a handheld, wireless intraoral scanner that determines 3D geometry and color. A key feature is a hardware processor located within the wireless scanner that is configured to process raw 3D data (derived from 2D images) and transmit the resulting 3D geometry data wirelessly at a reduced data rate compared to the raw data (Compl. ¶130, ¶134).
  • Asserted Claims: The complaint asserts at least claim 14 (Compl. ¶132).
  • Accused Features: The Medit i700 Wireless intraoral scanner, which is alleged to be a handheld, wireless device containing an internal hardware processor (a Spartan-6 FPGA) that processes raw 2D image data into 3D geometry and transmits it wirelessly (Compl. ¶136, ¶143, ¶145, ¶147; Compl. Ex. 6 at 10).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant’s Medit i500, i600, i700, and i700 Wireless intraoral scanners, along with related software including Medit Scan and Medit Link (collectively, the "Accused Products") (Compl. ¶4).

Functionality and Market Context

  • The Accused Products are handheld devices that digitally capture the 3D structure and color of teeth in a patient's mouth (Compl. ¶4). The scanners are marketed as using "3D-in-motion video technology" at up to 70 frames per second to perform "3D full color streaming capture" (Compl. p. 11). The Medit i700 Wireless model operates untethered and communicates via a wireless hub (Compl. ¶30).
  • The associated Medit Scan software provides features including "Smart soft tissue filtering" (also called "Global Soft Tissue Filtering"), which is alleged to automatically identify and delete unwanted scan data from movable objects like the tongue or cheek (Compl. ¶66, ¶67). A screenshot from a tutorial video shows on-screen text stating, "the system will delete the overlapping data" (Compl. p. 29).
  • The software also includes a "Smart Shade Guide" feature that allows a user to click on a scanned tooth to receive AI-powered shade recommendations based on the VITA Classical shade guide (Compl. ¶113, p. 54).
  • The complaint positions Plaintiff’s TRIOS scanners as "industry-leading" and pioneering, suggesting the Accused Products are direct competitors in the dental technology market (Compl. ¶2, ¶16).

IV. Analysis of Infringement Allegations

’146 Patent 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 Medit i700 Wireless is an intraoral scanner used to determine the 3D geometry and color of teeth. ¶30 col. 37:24-27
at least one camera accommodating an array of sensor elements The scanner uses "video-type scanning," which incorporates a camera with sensor elements to capture images. ¶31 col. 37:28-29
a pattern generator configured to generate...a probe light with a plurality of configurations in the form of a time-varying illumination pattern The scanner outputs different configurations of probe light during the scan, which allegedly forms a time-varying illumination pattern. ¶32 col. 37:30-33
an optical system for transmitting the probe light...and...light returned from the object The scanner wand incorporates an optical system and camera sensor within its housing. ¶33 col. 37:34-42
a tip configured to be inserted into the oral cavity The scanner includes a "Small Tip" and "Reversible Tip" for insertion into a patient's mouth. ¶36 col. 37:43-44
a hardware processor configured to: [a] selectively switch a color of the probe light...[b] record different images...[c] and combine the different colors The scanner's processor allegedly rotates through a sequence of patterns and colors, recording images of the object with different colors and combining them to obtain the surface color. ¶39-41 col. 37:45-52
wherein the intraoral scanner is wireless The i700 Wireless is a wireless device that operates through a wireless module and uses 60 GHz wireless technology. ¶42 col. 37:50-50
wherein the at least one camera is a high-speed camera The scanner generates scans using a high-speed camera with "video-type scanning" at up to 70 frames per second and is advertised as "super-fast." ¶43 col. 37:51-52

Identified Points of Contention

  • Scope Questions: A central question may be whether the term "time-varying illumination pattern" as used in the patent reads on the accused functionality of "3D-in-motion video technology" (Compl. p. 11). The dispute could turn on whether capturing a sequence of images under constant or sequentially-colored illumination constitutes generating a "time-varying illumination pattern" in the manner claimed, or if the claim requires a projected light pattern that itself varies structurally over time.
  • Technical Questions: What evidence does the complaint provide that the accused processor performs the specific three-step sequence of (a) switching color, (b) recording images, and (c) combining colors, as required by the claim? The allegations are made "on information and belief" and may require discovery to substantiate the precise operational sequence of the accused device (Compl. ¶39-41).

’551 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a method for detecting a movable object in a location, when scanning a rigid object...for generating a virtual 3D model The Medit scanners and software perform a method for detecting movable objects (e.g., a finger) while scanning rigid objects (teeth) to generate a 3D model. ¶63 col. 29:45-49
providing a first 3D representation of at least part of a surface by scanning The user performs an initial scan of the patient's teeth, providing a first 3D representation. ¶64 col. 29:50-51
providing a second 3D representation of at least part of the surface by scanning The user performs a second scan (a re-scan) of at least part of the same location. ¶65 col. 29:52-53
determining for the first 3D representation a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation The "Global Soft Tissue Filtering" feature allegedly auto-deletes scan data recognized as "noise data," such as cheeks and tongue, which the complaint implies is a determination of an excluded volume. ¶66 col. 29:54-58
determining for the second 3D representation a second excluded volume... The functionality is alleged to be reciprocal for the second 3D representation. ¶66 col. 29:59-62
if a portion of the surface in the first 3D representation is located in space in the second excluded volume, the portion...is disregarded The system allegedly deletes "overlapping data" when a user re-scans an area where a movable object (e.g., a finger) was previously present. ¶67 col. 29:63-66

Identified Points of Contention

  • Scope Questions: The primary dispute will likely concern the construction of "excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation." The question for the court will be whether Defendant's algorithm for deleting "noise data" or "overlapping data" (Compl. p. 29) meets this specific, geometrically-defined limitation, or if it uses a different technical method (e.g., simple data overwriting or statistical noise reduction) to achieve a similar outcome.
  • Technical Questions: How does the accused "Smart soft tissue filtering" algorithm technically operate? The complaint relies on marketing materials and high-level descriptions; the underlying software implementation will be critical to determining whether it actually "determin[es]...an excluded volume" as required by the claim.

V. Key Claim Terms for Construction

For the ’146 Patent

  • The Term: "time-varying illumination pattern"
  • Context and Importance: The infringement theory for the '146 Patent appears to equate capturing video frames at up to 70 FPS with using a "time-varying illumination pattern." Practitioners may focus on this term because its construction is dispositive. If construed narrowly to require an actively projected and modulated light pattern (e.g., structured light), infringement may be more difficult to prove. If construed broadly to include capturing a sequence of images over time, even with static illumination, the infringement case may be stronger.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's abstract describes determining 3D geometry based on a "plurality of 2D images and the time-varying illumination pattern," which could be read to link the "time-varying" nature to the sequence of images rather than the pattern itself (’146 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The detailed description discusses generating a pattern with "light and darkness" and varying it over time, for example, by "moving a pattern across the object being scanned." This language may support an interpretation that the spatial structure of the light itself must change over time (’146 Patent, col. 18:8-12; col. 2:50-52).

For the ’551 Patent

  • The Term: "excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation"
  • Context and Importance: This term defines the core technical mechanism of the invention for filtering movable objects. Infringement depends on whether Defendant's "soft tissue filtering" algorithm performs a step that meets this definition. Practitioners may focus on this term because it appears to require a specific geometric or logical determination, not merely deleting data that is different between two scans.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states that the purpose is to disregard a surface portion that "represents a movable object which is not part of the rigid object." This purpose-oriented language could support a broader reading that covers any algorithm that logically identifies and removes such transient objects (’551 Patent, col. 3:8-10).
    • Evidence for a Narrower Interpretation: The patent specification describes the concept in geometric terms, stating that "all space which is not occupied by the surface, may be defined as empty space, and if in a later scan, a surface is detected in the empty space, then that surface is disregarded." This suggests a space-carving or volumetric approach, which may be narrower than simply identifying "overlapping data" (’551 Patent, col. 3:21-25).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all five patents. The allegations are based on Defendant encouraging infringement by, among other things, disseminating promotional materials, user guides, and training videos that instruct customers on how to use the accused features (e.g., the wireless scanning, soft tissue filtering, and shade guide functions) in an infringing manner (Compl. ¶47-48, ¶72-73, ¶97-98, ¶121-122, ¶151-152).
  • Willful Infringement: Willfulness is alleged for all five patents. For the ’146 and ’667 Patents, the claim is based on alleged pre-suit knowledge from direct communications where Plaintiff informed Defendant of its "wireless scanner intellectual property" on February 25, 2022 (Compl. ¶52, ¶149). For the ’551 and ’553 Patents, willfulness is based on alleged knowledge from prior infringement litigation in Germany involving related European patents, with court filings dated August 31, 2020 and September 3, 2020 (Compl. ¶77, ¶102).

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

The resolution of this case may turn on the answers to several central questions for the court:

  • A core issue will be one of technical implementation: Does Defendant's "Smart soft tissue filtering," which is described as deleting "noise data," operate by calculating an "excluded volume" as specifically defined by the ’551 and ’553 Patents? Or does it achieve a similar outcome through a fundamentally different, non-infringing algorithm?
  • A second key issue will be one of definitional scope: Can the term "time-varying illumination pattern," as used in the ’146 and ’667 Patents, be construed to cover the high-frame-rate "3D-in-motion video technology" used in the accused scanners? Or does the term require a projected light pattern that is actively modulated, a feature the complaint does not explicitly allege?
  • A final dispositive question will be one of knowledge and intent: The complaint provides specific factual predicates for its willfulness allegations, including prior European litigation and direct pre-suit notice at an industry event. The court's determination of when Defendant knew or should have known of the asserted patents will be critical for assessing potential enhanced damages.