Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 1 of 17 PageID #: 47
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`3SHAPE A/S,
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` Plaintiff,
` v.
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`ALIGN TECHNOLOGY, INC.,
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` Defendant.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`FIRST AMENDED COMPLAINT
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`C.A. No. 1:18-cv-00697-LPS
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`JURY TRIAL DEMANDED
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`Plaintiff 3Shape A/S (“Plaintiff” or “3Shape”), by and through its undersigned counsel,
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`for its complaint against Defendant Align Technology, Inc. (“Defendant” or “Align”), hereby
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`alleges and states the following:
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`PARTIES
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`1.
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`Plaintiff 3Shape is a Danish corporation with a principal place of business at
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`Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`2.
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`Plaintiff is the owner by assignment of the entire right, title and interest in and to
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`U.S. Patent No. 9,962,244 (“the ’244 patent”) entitled “Focus Scanning Apparatus Recording
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`Color,” a copy of which is attached hereto as Exhibit A.
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`3.
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`Upon information and belief, Defendant Align Technology, Inc. is a United States
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`corporation organized and existing under the laws of Delaware, with a principal place of
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`business at 2820 Orchard Parkway, San Jose, California 95134.
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`4.
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`Upon information and belief, Defendant makes, uses, sells and offers for sale in
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`the United States and/or imports into the United States products called “iTero Element Scanner,”
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`

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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 2 of 17 PageID #: 48
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`“iTero Element 2 Scanner” and “iTero Element Flex Scanner” (collectively “the iTero Element
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`Scanners”), which each embody a focus scanner.
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`JURISDICTION AND VENUE
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`5.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, Title 35, United States Code, § 100 et seq.
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`6.
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
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`§§ 1331 and 1338(a).
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`7.
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`This Court has personal jurisdiction over Defendant because it has, directly or
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`through its agents and/or intermediaries, committed acts within Delaware giving rise to this
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`action and/or Defendant has established minimum contacts with Delaware such that the exercise
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`of jurisdiction would not offend traditional notions of fair play and substantial justice.
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`8.
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`Upon information and belief, Defendant regularly conducts business in Delaware,
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`and purposefully avails itself of the privileges of conducting business in Delaware. In particular,
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`upon information and belief, Defendant and/or its agents and/or intermediaries, make, use,
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`import, offer for sale, sell and/or advertise their products and affiliated services in Delaware,
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`including the iTero Element Scanners, sufficient to give rise to jurisdiction.
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`9.
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`Defendant has also purposely availed itself of the courts of this venue, having
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`brought actions against Plaintiff in the federal courts of the District of Delaware, including the
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`pending 17-cv-1646, -1647, -1648, and -1649 actions. The use of the courts of this jurisdiction is
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`sufficient to give rise to jurisdiction over Align.
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`10.
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`Upon information and belief, and as further described herein, Defendant has
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`infringed and continues to infringe and/or contributorily infringe the ’244 patent in Delaware,
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`which has led to foreseeable harm and injury to Plaintiff. Upon information and belief,
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`2
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`

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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 3 of 17 PageID #: 49
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`Defendant derives substantial revenue from the sale of infringing products distributed within
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`Delaware and/or expects or should reasonably expect its actions to have consequences in
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`Delaware. In addition, upon information and belief, Defendant knowingly induces, and
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`continues to knowingly induce, infringement of the ’244 patent within Delaware by offering for
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`sale, selling, and/or contracting with others to market infringing products with the intent to
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`facilitate infringing use of the products by others within Delaware and by creating and/or
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`disseminating product information and other materials providing instruction for infringing use.
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`11.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b), (c) and/or (d),
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`and 28 U.S.C. § 1400(b).
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`THE ’244 PATENT AND ALIGN’S INFRINGEMENT
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`12.
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`The ’244 patent was duly and lawfully issued by the United States Patent and
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`Trademark Office (“USPTO”) on May 8, 2018 to listed inventors Bo Esbech, Christian Romer
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`Rosberg, Mike van der Poel, Rasmus Kjaer, Michael Vinther, and Karl-Josef Hollenbeck.
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`13.
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`Evidence of the assignment of the ’244 patent to 3Shape is recorded with the
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`USPTO at Reel/Frame 037689/0346. Plaintiff is listed on the face of the ’244 patent as assignee.
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`14.
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`The ’244 patent is entitled “Focus Scanning Apparatus Recording Color” and is
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`directed to a focus scanner for recording surface geometry and surface color of an object.
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`15.
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`3Shape sells an industry-leading intraoral scanner under the name TRIOS® . The
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`TRIOS® system incorporates embodiments of the patented technologies of the ’244 patent.
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`16.
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`17.
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`Defendant is a competitor of 3Shape in the field of intraoral scanners.
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`Defendant makes, uses, offers
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`to sell, sells,
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`imports, promotes and/or
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`demonstrates versions of its iTero Element Scanners, including the wand, cart, and/or related
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`software, and other related products (“Accused Products”) in the United States.
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`3
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 4 of 17 PageID #: 50
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`18.
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`Defendant has been and is now directly infringing, literally and/or under the
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`doctrine of equivalents, and/or indirectly infringing, at least claim 1 of the ’244 patent.
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`19.
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`Each of Defendant’s iTero Element Scanners is a focus scanner for recording
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`surface geometry and surface color of an object.
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`20.
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`Upon information and belief, each of the iTero Element Scanners comprises a
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`multichromatic light source configured for providing a multichromatic probe light for
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`illumination of an object and a color image sensor comprising an array of image sensor pixels for
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`capturing one or more 2D images of light received from said object.
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`21.
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`Upon information and belief, each of the iTero Element Scanners is configured to
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`operate by translating a focus plane along an optical axis of the focus scanner and capturing a
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`series of 2D images, each 2D image of the series being at a different focus plane position such
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`that the series of captured 2D images forms a stack of 2D images.
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`22.
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`Upon information and belief, each of the iTero Element Scanners comprises a
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`data processing system configured to derive surface geometry information for a block of said
`
`image sensor pixels from the 2D images in the stack of 2D images captured by said color image
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`sensor.
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`23.
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`Upon information and belief, the data processing system of each of the iTero
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`Element Scanners is also configured to derive surface color information for the block of said
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`image sensor pixels from at least one of the 2D images used to derive the surface geometry
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`information.
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`24.
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`Upon information and belief, the data processing system of each of the iTero
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`Element Scanners is configured to combine a number of subscans to generate a digital 3D
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`representation of the object, and determine object color of a least one point of the generated
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`4
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 5 of 17 PageID #: 51
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`digital 3D representation of the object from sub-scan color of the sub-scans combined to generate
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`the digital 3D representation, such that the digital 3D representation expresses both geometry and
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`color profile of the object, wherein determining the object color comprises computing a weighted
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`average of subscan color values derived for corresponding points in overlapping sub-scans at that
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`point of the object surface.
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`25.
`
`These features of each of the iTero Element Scanners in paragraphs 19 to 24
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`above correspond to those recited and claimed in at least claim 1 of the ’244 patent.
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`26.
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`For example, upon information and belief, Defendant describes its iTero Element
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`Scanner on an online webpage entitled “Products | iTero Intraoral Scanner,” a copy of which is
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`attached hereto as Exhibit B. The webpage contains text and an image describing and showing
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`the iTero Element Scanner and that it embodies the focus scanner recited in at least claim 1 of
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`the ’244 patent. See Products | iTero Intraoral Scanner (2016), http://www.itero.com/en-
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`us/products/itero_element (last visited May 4, 2018) (the “Products | iTero Intraoral Scanner”
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`webpage). The “Products | iTero Intraoral Scanner” webpage illustrates that a focus scanner is
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`configured for recording surface geometry and surface color of an object, as recited in claim 1 of
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`the ’244 patent. See the “Products | iTero Intraoral Scanner” webpage (“Color scanning gives
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`you a significant leap forward in visualization. The color sensor is integrated in the iTero
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`Element scanner, and the patented dual-aperture lens system is designed to simultaneously
`
`capture 2D images in color with highly accurate 3D laser scanning.”). Next to the above-cited
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`text is the following image, illustrating aspects of a scanned image showing surface geometry
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`and surface color of an object:
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`5
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 6 of 17 PageID #: 52
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`In addition, upon information and belief, Defendant illustrated the “Products | iTero Intraoral
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`Scanner” webpage with the following image:
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`
`
`
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`
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`The image shows that the iTero Element Scanner comprises a multichromatic light source
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`configured for providing a multichromatic probe light for illumination of the object, as recited in
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`claim 1 of the ’244 patent. This image shows a white light source, in particular a white LED
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`(i.e., a multichromatic light source) which, via a probe, illuminates the teeth (i.e., the object).
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`27.
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`In addition, upon information and belief, Defendant described the iTero Element
`
`Scanner as a product that comprises a color image sensor comprising an array of image sensor
`
`pixels for capturing one or more 2D images of light received from said object. See the “Products
`
`| iTero Intraoral Scanner” webpage (“Color scanning gives you a significant leap forward in
`
`visualization. The color sensor is integrated in the iTero Element scanner, and the patented dual-
`
`aperture lens system is designed to simultaneously capture 2D images in color with highly
`
`
`
`6
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`

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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 7 of 17 PageID #: 53
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`accurate 3D laser scanning. Color scanning can make it easier to distinguish between gingival
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`and tooth structures for a more precise clinical evaluation.”).
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`28.
`
`Upon information and belief, Defendant describes the iTero Element Scanner as
`
`having a color image sensor in a press release entitled “Align Technology Announces Next
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`Generation iTero(R) Element(TM) Intraoral Scanner,” a copy of which is attached hereto as
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`Exhibit C. See Align Technology Announces Next Generation iTero(R) Element(TM) Intraoral
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`Scanner (2015), http://investor.aligntech.com/releasedetail.cfm?ReleaseID=900449 (last visited
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`May 4, 2018) (the “Align Technology Announces Next Generation iTero(R) Element(TM)
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`Intraoral Scanner” webpage) (“The new image sensor is engineered to enable 20X faster scan
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`speed with color scanning to easily distinguish between gingival and dental tissue for more
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`precise clinical evaluation.”).
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`29.
`
`In addition, upon information and belief, Defendant in the “Products | iTero
`
`Intraoral Scanner” webpage describes that the iTero Element Scanner is configured to translate a
`
`focus plane along an optical axis of the focus scanner and capture a series of the 2D images, each
`
`2D image of the series is at a different focus plane position such that the series of captured 2D
`
`images forms a stack of 2D images. See the “Products | iTero Intraoral Scanner” webpage
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`(“Continuous scanning design lets you scan in motion. The software automatically detects and
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`repositions scanning start and stop points when you move to a new scanning position within the
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`scanned segment. And while you are scanning, the iTero Element scanner is engineered to
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`simultaneously process the scan. It automatically stitches together images for rendering in the
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`correct order, adapts to changes in positioning, and detects and removes soft tissue. Capture
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`everything and view exactly what you need to see.”).
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`30.
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`Upon information and belief, the “Products | iTero Intraoral Scanner” webpage
`
`
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`7
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 8 of 17 PageID #: 54
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`contains text describing that the iTero Element Scanner product comprises a data processing
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`system. See the “Products | iTero Intraoral Scanner” webpage (“And while you are scanning, the
`
`iTero Element scanner is engineered to simultaneously process the scan.”). Because the iTero
`
`Element scanner processes the scan, it comprises a data processing system.
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`31.
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`Upon information and belief, the “Products | iTero Intraoral Scanner” webpage
`
`states that the data processing system of the iTero Element Scanner is configured to derive
`
`surface geometry information for a block of said image sensor pixels from the 2D images in the
`
`stack of 2D images captured by said color image sensor, the data processing system also
`
`configured to derive surface color information for the block of said image sensor pixels from at
`
`least one of the 2D images used to derive the surface geometry information, as recited in claim 1
`
`of the ’244 patent. See the “Products | iTero Intraoral Scanner” webpage (“And while you are
`
`scanning, the iTero Element scanner is engineered to simultaneously process the scan. It
`
`automatically stitches together images for rendering in the correct order, adapts to changes in
`
`positioning, and detects and removes soft tissue. Capture everything and view exactly what you
`
`need to see. . . . Color scanning gives you a significant leap forward in visualization. The color
`
`sensor is integrated in the iTero Element scanner, and the patented dual-aperture lens system is
`
`designed to simultaneously capture 2D images in color with highly accurate 3D laser scanning.
`
`Color scanning can make it easier to distinguish between gingival and tooth structures for a more
`
`precise clinical evaluation.”).
`
`32.
`
`Upon information and belief, the “Products | iTero Intraoral Scanner” webpage
`
`describes the data processing system of the iTero Element Scanner as further configured to
`
`combine a number of subscans to generate a digital 3D representation of the object, and
`
`determine object color of a least one point of the generated digital 3D representation of the object
`
`
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`8
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 9 of 17 PageID #: 55
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`from sub‐scan color of the sub‐scans combined to generate the digital 3D representation, such
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`that the digital 3D representation expresses both geometry and color profile of the object, as
`
`recited in claim 1 of the ’244 patent. See the “Products | iTero Intraoral Scanner” webpage (“And
`
`while you are scanning, the iTero Element scanner is engineered to simultaneously process the
`
`scan. It automatically stitches together images for rendering in the correct order, adapts to
`
`changes in positioning, and detects and removes soft tissue. Capture everything and view exactly
`
`what you need to see.”). Next to the above-cited text is the following image, illustrating aspects
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`of a rendered image:
`
`
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`33.
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`Upon information and belief, Defendant describes, in the “Products | iTero
`
`Intraoral Scanner” webpage, the iTero Element Scanner wherein determining the object color
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`comprises computing a weighted average of subscan color values derived for corresponding
`
`points in overlapping sub‐scans at that point of the object surface, as recited in claim 1 of the
`
`’244 patent. See the “Products | iTero Intraoral Scanner” webpage (“And while you are scanning,
`
`the iTero Element scanner is engineered to simultaneously process the scan. It automatically
`
`stitches together images for rendering in the correct order, adapts to changes in positioning, and
`
`detects and removes soft tissue. Capture everything and view exactly what you need to see.”).
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`Stitching of images as described on the “Products | iTero Intraoral Scanner” webpage, upon
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`9
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 10 of 17 PageID #: 56
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`information and belief, relies on averaging overlapping sub-scans.
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`34.
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`In addition, Defendant describes its iTero Element 2 Scanner on an online
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`webpage entitled “iTero Element 2 | iTero Intraoral Scanner,” a copy of which is attached hereto
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`as Exhibit D. The webpage contains text and an image describing and showing the iTero
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`Element 2 Scanner and characterizing the iTero Element 2 Scanner as an improvement in terms
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`of processing power and portability. See iTero Element 2 | iTero Intraoral Scanner,
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`http://www.itero.com/en-us/products/itero_element_two (last visited May 24, 2018) (the “iTero
`
`Element 2 | iTero Intraoral Scanner” webpage). Defendant also describes the iTero Element 2
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`Scanner in a press release entitled “Align Technology to Introduce Two New iTero Scanners
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`Featuring Greater Power and Portability,” a copy of which is attached hereto as Exhibit E. See
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`Align Technology to Introduce Two New iTero Scanners Featuring Greater Power and
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`Portability
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`(2018), https://globenewswire.com/news-release/2018/04/25/1487495/0/en/Align-
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`Technology-to-Introduce-Two-New-iTero-Scanners-Featuring-Greater-Power-and-
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`Portability.html (last visited May 24, 2018) (the “Align Technology to Introduce Two New iTero
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`Scanners Featuring Greater Power and Portability” webpage). Upon information and belief, the
`
`improvements to the iTero Element 2 Scanner described on the “iTero Element 2 | iTero Intraoral
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`Scanner” webpage and the “Align Technology to Introduce Two New iTero Scanners Featuring
`
`Greater Power and Portability” webpage do not pertain to the features of the iTero Element
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`Scanner described in paragraphs 19 to 33 above. Therefore, upon information and belief, the
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`iTero Element 2 Scanner contains the above-described features of the iTero Element Scanner and
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`embodies the focus scanner recited in at least claim 1 of the ’244 patent.
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`35.
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`In addition, Defendant describes its iTero Element Flex Scanner on an online
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`webpage entitled “iTero Element Flex | iTero Intraoral Scanner,” a copy of which is attached
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`10
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 11 of 17 PageID #: 57
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`hereto as Exhibit F. The webpage contains text and an image describing and showing the iTero
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`Element Flex Scanner and characterizing the iTero Element Flex Scanner as an improvement in
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`terms of processing power and portability. See iTero Element Flex | iTero Intraoral Scanner,
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`http://www.itero.com/en-us/products/itero_element_flex (last visited May 24, 2018) (the “iTero
`
`Element Flex | iTero Intraoral Scanner” webpage). Defendant also describes the iTero Element
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`Flex Scanner on the “Align Technology to Introduce Two New iTero Scanners Featuring Greater
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`Power and Portability” webpage. Upon information and belief, the improvements to the iTero
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`Element Flex Scanner described on the “iTero Element Flex | iTero Intraoral Scanner” webpage
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`and the “Align Technology to Introduce Two New iTero Scanners Featuring Greater Power and
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`Portability” webpage do not pertain to the features of the iTero Element Scanner described in
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`paragraphs 19 to 33 above. Therefore, upon information and belief, the iTero Element Flex
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`Scanner contains the above-described features of the iTero Element Scanner and embodies the
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`focus scanner recited in at least claim 1 of the ’244 patent.
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`36.
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`Upon information and belief, Defendant has sold and/or offered for sale its iTero
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`Element Scanner in the United States at trade shows in Chicago, IL, New York, NY and Detroit,
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`MI. The “Align Technology Announces Next Generation Itero(R) Element(TM) Intraoral
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`Scanner” webpage is further evidence of Defendant’s sale and/or offer for sale of the iTero
`
`Element Scanner product in the United States.
`
`37.
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`Upon information and belief, Defendant has sold and/or offered for sale its iTero
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`Element 2 Scanner in the United States at trade shows in Washington, DC. The “Align
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`Technology to Introduce Two New iTero Scanners Featuring Greater Power and Portability”
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`webpage is further evidence of Defendant’s sale and/or offer for sale of the iTero Element 2
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`Scanner product in the United States.
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`11
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 12 of 17 PageID #: 58
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`38.
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`Upon information and belief, Defendant has sold and/or offered for sale its iTero
`
`Element Flex Scanner in the United States at trade shows in Washington, DC. The “Align
`
`Technology to Introduce Two New iTero Scanners Featuring Greater Power and Portability”
`
`webpage is further evidence of Defendant’s sale and/or offer for sale of the iTero Element Flex
`
`Scanner product in the United States.
`
`39.
`
`Defendant thus directly infringes, literally and/or under the doctrine of
`
`equivalents, and/or indirectly infringes, at least claim 1 of the ’244 patent.
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`COUNT 1: DIRECT INFRINGEMENT
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`40.
`
`41.
`
`Plaintiff repeats and realleges the allegations set forth in paragraphs 1.-39.
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`Defendant directly infringes, literally and/or under the doctrine of equivalents at
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`least claim 1 of the ’244 patent.
`
`42.
`
`43.
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`Align possesses knowledge of, and is aware of, the ’244 patent.
`
`On information and belief, Defendant intends to, and continues to intend to,
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`directly infringe the ’244 patent through the sale of the Accused Products.
`
`44.
`
`On information and belief, Defendant knew or should have known of the ’244
`
`patent and its infringement of the ’244 patent, and has acted and continues to act, in an egregious
`
`and wanton manner by infringing the ’244 patent.
`
`45.
`
`On information and belief, despite knowing that its actions constituted
`
`infringement of the ’244 patent and/or despite knowing that there was a high likelihood that its
`
`actions constituted infringement of the patent, Defendant nevertheless continued its infringing
`
`actions, and continues to make, use, and sell, the Accused Products.
`
`46.
`
`Align’s acts of infringement have injured and damaged 3Shape and will continue
`
`to injure and damage 3Shape.
`
`
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`12
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 13 of 17 PageID #: 59
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`47.
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`Align’s action have caused 3Shape to suffer irreparable harm resulting from the
`
`loss of its lawful patent rights and the loss of its ability to exclude others from the market. Upon
`
`information and belief, Align will continue these infringing acts unless enjoined by this court.
`
`COUNT 2: INDIRECT INFRINGEMENT BY INDUCEMENT
`
`48.
`
`Plaintiff repeats and realleges the allegations set forth in paragraphs 1 to 42 above
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`as if fully set forth herein.
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`49.
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`Defendant is liable for inducing infringement of the ’244 patent under 35 U.S.C.
`
`§271(b) by having knowledge of the ’244 patent and knowingly causing or intending to cause,
`
`and continuing to knowingly cause or intend to cause, direct infringement of the ’244 patent,
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`with specific intent, by its customers.
`
`50.
`
`Specifically, Defendant actively induces infringement of the ’244 patent by, inter
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`alia, training its customers on the use of the Accused Products and/or promotion, sales, and/or
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`importation of the Accused Products including the infringing iTero Element Scanners to
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`Defendant’s customers including, but not limited to, resellers and end users for their use of the
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`focus scanner claimed in the ’244 patent.
`
`51.
`
`Defendant’s customers for the Accused Products directly infringe the ’244 patent
`
`by making, using, selling, offering for sale, and/or importing the iTero Element Scanners.
`
`52.
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`For example, Defendant actively induces infringement of the ’244 patent, because
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`Defendant has knowledge that end users of Defendant’s iTero Element Scanners including, but
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`not limited to, dentists and technicians, use Defendant’s infringing iTero Element Scanner
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`product in the United States, and because Defendant encourages such acts resulting in direct
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`patent infringement, by, inter alia, training, promotion, sales, and/or importation of the
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`infringing iTero Element Scanners to Defendant’s customers including, but not limited to,
`
`resellers and end users for their use of the focus scanner claimed in the ’244 patent.
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 14 of 17 PageID #: 60
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`53.
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`On information and belief, Defendant intends to, and continues to intend to,
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`indirectly infringe the ’244 patent through inducement of the sale and use of the Accused
`
`Products.
`
`54.
`
`On information and belief, Defendant knew or should have known of the ’244
`
`patent and has acted, and continues to act, in an egregious and wanton manner by infringing the
`
`’244 patent.
`
`55.
`
`On information and belief, despite knowing that its actions constituted
`
`inducement infringement of the ’244 patent and/or despite knowing that there was a high
`
`likelihood that its actions constituted inducement infringement of the patent, Defendant
`
`nevertheless continued its infringing actions, and continues to make, use, and sell, the Accused
`
`Products.
`
`56.
`
`Align’s acts of infringement have injured and damaged 3Shape and will continue
`
`to injure and damage 3Shape.
`
`57.
`
`Align’s action have caused 3Shape to suffer irreparable harm resulting from the
`
`loss of its lawful patent rights and the loss of its ability to exclude others from the market. Upon
`
`information and belief, Align will continue these infringing acts unless enjoined by this court.
`
`COUNT 3: INDIRECT INFRINGEMENT BY CONTRIBUTORY INFRINGEMENT
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`58.
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`59.
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`3Shape repeats and realleges paragraphs 1 to 52 as if fully set forth herein.
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`Defendant is liable for contributory infringement of the ’244 patent under 35
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`U.S.C §271(c) by having sold or offered to sell, and continuing to sell or offer for sale the iTero
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`Element Scanners within the United States and/or by importing the iTero Element Scanners into
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`the United States because the iTero Element Scanners constitute a material part of the invention
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`embodied in the ’244 patent, which Defendant knows to be especially made and/or especially
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`adapted for use in infringement of the ’244 patent, and which is not a staple article or commodity
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 15 of 17 PageID #: 61
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`of commerce suitable for substantial non-infringing use.
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`60.
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`Defendant is liable for contributory infringement by having knowledge of the
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`’244 patent and knowingly causing or intending to cause, and continuing to knowingly cause or
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`intend to cause, direct infringement of the ’244 patent by its customers including, but not limited
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`to, resellers and end users of the iTero Element Scanners.
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`61.
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`Specifically, Defendant contributes to infringement of the ’244 patent by, inter
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`alia, promotion, sales, and/or importation of the infringing iTero Element Scanners to
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`Defendant’s customers including, but not limited to, resellers and end users for their use of the
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`focus scanners claimed in the ’244 patent. Those customers directly infringe the ’244 patent by
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`making, using, selling, offering for sale, and/or importing the iTero Element Scanners. For
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`example, Defendant is liable for contributory infringement by having knowledge of the ’244
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`patent and knowingly causing or intending to cause, and continuing to knowingly cause or intend
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`to cause, end users of Defendant’s iTero Element Scanners including, but not limited to, dentists
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`and technicians, to directly infringe the ’244 patent by using Defendant’s iTero Element
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`Scanners in the United States.
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`62.
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`Defendant’s past and ongoing infringement of the ’244 patent has and will
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`continue to irreparably harm 3Shape.
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`63.
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`Defendant’s past and ongoing infringement of the ’244 patent has and will
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`continue to cause 3Shape damages.
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`64.
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`Defendant’s past and ongoing infringement of the ’244 patent, upon information
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`and belief, has been knowing and willful.
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`DEMAND FOR JURY TRIAL
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`Plaintiff demands a trial by jury for all issues so triable.
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 16 of 17 PageID #: 62
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully requests that this Court enter:
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`A.
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`A judgment in favor of Plaintiff that Defendant has infringed the ’244 patent,
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`directly, jointly, and/or indirectly by way of inducing and/or contributing to the infringement of
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`the ’244 patent;
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`B.
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`An order of this Court permanently enjoining Defendant and its officers,
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`directors, agents, affiliates, employees, divisions, branches, subsidiaries, parents, and all others
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`in active concert therewith from infringing, including inducing the infringement of, or
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`contributing to the infringement of, the ’244 patent;
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`C.
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`A judgment and order requiring Defendant to pay Plaintiff its damages, costs,
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`expenses, and pre-judgment and post-judgment interest for Defendant’s infringement of the ’244
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`patent, as provided under 35 U.S.C. § 284;
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`D.
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`A judgment and order requiring Defendant to pay treble damages as provided
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`under 35 U.S.C. § 284;
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`E.
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`A judgment and order finding that this is an exceptional case within the meaning
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`of 35 U.S.C. § 285, and awarding to Plaintiff its reasonable attorneys’ fees; and
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`F.
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`Any and all other relief to which Plaintiff may show itself to be entitled and/or as
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`the Court may deem just and proper.
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`Case 1:18-cv-00697-LPS-CJB Document 5 Filed 05/24/18 Page 17 of 17 PageID #: 63
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`Dated: May 24, 2018
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`/s/ Geoffrey G. Grivner
`Geoffrey Grivner (DE Bar No. 4711)
`BUCHANAN INGERSOLL
`& ROONEY PC
`
`919 North Market Street, Suite 1500
`Wilmington, DE 19801
`Tel: (302) 552-4207
`Fax: (302) 552-4200
`geoffrey.grivner@bipc.com
`
`
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`
`
`S. Lloyd Smith (pro hac pending)
`David W. H. Leibovitch (pro hac pending)
`Kimberly Coghill (pro hac pending)
`BUCHANAN INGERSOLL
`& ROONEY PC
`1737 King Street, Suite 500
`Alexandria, VA 22314-2727
`Tel: (703) 838-6514
`Fax: (703) 836-2021
`lloyd.smith@bipc.com
`david.leibovitch@bipc.com
`kimberly.coghill@bipc.com
`
`Philip L. Hirschhorn (pro hac pending)
`BUCHANAN INGERSOLL
`& ROONEY PC
`640 Fifth Avenue, 9th Floor
`New York, NY 10019-6102
`Tel: (212) 440-4470
`Fax: (212) 440-4401
`philip.hirschhorn@bipc.com
`
`Attorneys for Plaintiff
`3Shape A/S
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`17
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