Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 1 of 60 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`C.A. No. ___________
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` JURY TRIAL DEMANDED
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`Defendants.
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`ALIGN TECHNOLOGY, INC.,
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`Plaintiff,
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`v.
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`3SHAPE A/S, 3SHAPE TRIOS A/S, and
`3SHAPE INC.
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Align Technology, Inc. (“Align”) demands a trial by jury on all issues so triable and, for
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`its complaint against Defendants 3Shape A/S, 3Shape TRIOS A/S, and 3Shape Inc. (collectively,
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`“3Shape” or “Defendants”), hereby alleges as follows:
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`THE PARTIES
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`1.
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`Align is a Delaware corporation incorporated in April 1997, with its principal
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`place of business in San Jose, California.
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`2.
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`On information and belief, 3Shape A/S (“3Shape A/S”) is a Danish corporation
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`with a principal place of business at Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`3.
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`On information and belief, 3Shape TRIOS A/S (“3Shape TRIOS A/S”) is a
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`Danish corporation with a principal place of business at Holmens Kanal 7, 1060 Copenhagen K,
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`Denmark.
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`4.
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`On information and belief, 3Shape Inc. (“3Shape US”) is a Delaware corporation
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`with a principal place of business at 10 Independence Boulevard, Suite 150, Warren, New Jersey
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`07059.
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`5.
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`On information and belief, 3Shape A/S, 3Shape TRIOS A/S, and 3Shape US are
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`related sister companies commonly held by the same holding company, 3Shape Holding A/S.
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`6.
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`3Shape is intentionally disregarding Align’s patent rights. Align and 3Shape
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`compete in the digital dentistry industry. That is, both companies sell devices that obtain digital
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`models of a patient’s teeth and software for improving, understanding, and manipulating those
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`models to improve a patient’s dental and orthodontic treatment plan. Align is a leader in the
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`digital dentistry industry; 3Shape is a follower. Align has developed and acquired patents on key
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`digital dentistry technology; 3Shape saw Align’s patented technology and copied it. Align has
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`suffered and continues to suffer significant injury because of 3Shape’s willful patent
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`infringement. Align brings this complaint to hold 3Shape responsible for its infringement and to
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`protect its intellectual property rights.
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`JURISDICTION AND VENUE
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`7.
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`This lawsuit is an action for patent infringement arising under the patent laws of
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`the United States, Title 35 of the United States Code.
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`8.
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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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`9.
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`This Court has personal jurisdiction over Defendants in that they have, directly or
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`through agents and/or intermediaries, committed acts within Delaware giving rise to this action
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`and/or have established minimum contacts with Delaware such that the exercise of jurisdiction
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`would not offend traditional notions of fair play and justice.
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`10.
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`On information and belief, Defendants regularly conduct business in Delaware,
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`and purposefully availed themselves of the privileges of conducting business in Delaware. In
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`particular, on information and belief, Defendants, directly and/or through their agents and/or
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`intermediaries, make, use, import, offer for sale, sell, and/or advertise their products and
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`affiliated services in Delaware. Defendants have placed, and continue to place, infringing
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`products into the stream of commerce, via an established distribution channel, with the
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`knowledge and/or understanding that such products are sold in the United States including in
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`Delaware and specifically including this District.
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`11.
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`On information and belief, Defendants have derived substantial revenue from
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`their infringing activity occurring with the State of Delaware and within this District and/or
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`should reasonably expect their actions to have consequences in Delaware. In addition,
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`Defendants have, and continue to, knowingly induce infringement within this District by
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`advertising, marketing, offering for sale and/or selling devices containing infringing functionality
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`within this District to at least resellers, distributors, customers, dentists, orthodontists, dental and
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`orthodontic labs, and/or other end users, and by providing instructions, user manuals, in person
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`and online training, advertising and/or marketing materials which facilitate, direct or encourage
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`the use of infringing functionality with knowledge thereof.
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`12.
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`Defendants have committed patent infringement in Delaware that has led to
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`foreseeable harm and injury to Align, a Delaware corporation.
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`13.
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`Additionally, 3Shape A/S and 3Shape TRIOS A/S are subject to jurisdiction in
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`the United Sates, and specifically in Delaware, pursuant to Fed. R. Civ. P. 4(k)(2). 3Shape A/S
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`and 3Shape TRIOS A/S have contacts with the United States that include, inter alia, advertising,
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`offering to sell, and/or selling their products and software throughout the United States,
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`including Delaware and this District.
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`14.
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`This Court also has personal jurisdiction over 3Shape US because 3Shape US is a
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`Delaware corporation and thus resides within, and has consented to personal jurisdiction within,
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`this District.
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`15.
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`The Court further has personal jurisdiction over 3Shape US because 3Shape US
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`has committed, or aided, abetted, contributed, and/or participated in the commission of tortious
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`acts of patent infringement that have led to foreseeable harm and injury to Align, which is a
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`corporation organized and existing under the laws of the State of Delaware. Likewise, 3Shape
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`A/S and 3Shape TRIOS A/S alone and/or in concert with 3Shape US or others, have committed,
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`or aided, abetted, contributed, and/or participated in the commission of tortious acts of patent
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`infringement that have led to foreseeable harm and injury to Align.
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`16.
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`Venue is proper pursuant to 28 U.S.C. §§ 1391 and 1400(b).
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`THE PATENTS-IN-SUIT
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`17.
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`On January 24, 2012, the U.S. Patent and Trademark Office duly and lawfully
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`issued U.S. Patent No. 8,102,538 (“the ’538 patent”), entitled “Method and Apparatus for Colour
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`Imaging A Three-Dimensional Structure” naming Noam Babayoff as the inventor. Align is the
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`owner by assignment of all right, title and interest in the ’538 patent and has exclusive right to
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`bring suit to enforce the patent. Evidence of such assignment has been recorded with the U.S.
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`Patent and Trademark Office at Reel/Frame 034545/0225. A true and correct copy of the ’538
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`patent is attached hereto as Exhibit 1 to this complaint.
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`18.
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`On December 26, 2017, the U.S. Patent and Trademark Office duly and lawfully
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`issued U.S. Patent No. 9,848,958 (“the ’958 patent”), entitled “Generating A Dynamic Three-
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`Dimensional Occlusogram” naming Vadim Matov, Jihua Cheng, Fuming Wu, and Kenji Tan as
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`the inventors. Align is the owner by assignment of all right, title and interest in the ’958 patent
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`and has exclusive right to bring suit to enforce the patent. Evidence of such assignment has been
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`recorded with the U.S. Patent and Trademark Office at Reel/Frame 023837/0689. A true and
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`correct copy of the ’958 patent is attached hereto as Exhibit 2 to this complaint.
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`19.
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`On July 18, 2006, the U.S. Patent and Trademark Office duly and lawfully issued
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`U.S. Patent No.7,077,647 (“the ’647 patent”), entitled “Systems and Methods for Treatment
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`Analysis By Teeth Matching” naming Woncheol Choi, Jihua Cheng, and Eric Kuo as the
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`inventors. Align is the owner by assignment of all right, title and interest in the ’647 patent and
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`has exclusive right to bring suit to enforce the patent. Evidence of such assignment has been
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`recorded with the U.S. Patent and Trademark Office at Reel/Frame 013235/0606. A true and
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`correct copy of the ’647 patent is attached hereto as Exhibit 3 to this complaint.
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`20.
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`On January 2, 2007, the U.S. Patent and Trademark Office duly and lawfully
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`issued U.S. Patent No. 7,156,661 (“the ’661 patent”), entitled “Systems and Methods for
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`Treatment Analysis By Teeth Matching” naming Woncheol Choi, Jihua Cheng, and Eric Kuo as
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`the inventors. Align is the owner by assignment of all right, title and interest in the ’661 patent
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`and has exclusive right to bring suit to enforce the patent. Evidence of such assignment has been
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`recorded with the U.S. Patent and Trademark Office at Reel/Frame 016300/0634. A true and
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`correct copy of the ’661 patent is attached as Exhibit 4 to this complaint.
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`21.
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`On April 16, 2002, the U.S. Patent and Trademark Office duly and lawfully
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`issued U.S. Patent No. 6,371,761 (“the ’761 patent”), entitled “Flexible Plane For Separating
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`Teeth Models” naming Carmen Cheang, Ventaka S. Sarva, and Elena Pavloskaia as the
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`inventors. Align is the owner by assignment of all right, title and interest in the ’761 patent and
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`has exclusive right to bring suit to enforce the patent. Evidence of such assignment has been
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`recorded with the U.S. Patent and Trademark Office at Reel/Frame 011096/0569. A true and
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`correct copy of the ’761 patent is attached as Exhibit 5 to this complaint.
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`BACKGROUND
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`22.
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`Align was founded in 1997 and is a global medical device company with industry
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`leading innovative products such as the iTero intraoral scanner and the Invisalign clear aligner
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`system that help dental and orthodontic professionals deliver effective, cutting-edge dental and
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`orthodontic options to their patients.
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`23.
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`Align’s iTero intraoral scanners scan and provide, in conjunction with Align’s
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`Invisalign orthodontic system, color 3D imaging of an intraoral surface, such as the teeth and
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`gums, without drying and powdering the intraoral surface, resulting in a digital impression.
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`Align’s iTero intraoral scanners and the software within the iTero and Invisalign systems that
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`works in conjunction with the scanner thus eliminate the need for traditional teeth impressions
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`typically taken with an elastomeric or other material.
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`24.
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`The digital impression captured by Align’s iTero intraoral scanners, when teamed
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`with Align’s Invisalign system, can be used in a variety of dental and orthodontic applications
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`such as, for example, tracking a patient’s progress during the Invisalign treatment, tracking
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`changes in a patient’s dentition over time, mapping the occlusion of a patient’s teeth, and
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`correcting inaccurate scan data.
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`25.
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`Align’s iTero intraoral scanner and Invisalign system constitute a proprietary
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`system and method for treating, among other things, malocclusion, misalignment, and/or chipped
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`or missing teeth using a high-precision, high-speed intraoral scanner and related software to
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`create a variety of orthodontic and dental devices including, but not limited to, crowns, bridges,
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`bracket templates, aligners and implants. Each dental device is custom-manufactured for each
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`patient using computer-aided design techniques and sophisticated computer graphic interfaces to
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`communicate with the patient’s dental or orthodontic professional in the planning,
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`implementation, and revision of the customized treatment program.
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`26.
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`Align’s iTero intraoral scanner and Invisalign system, developed by Align over
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`many years and at great expense and effort, represent a breakthrough in the manufacturing
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`principle of “mass customization” and a vast improvement over conventional methods for
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`treating, among other things, chipped or missing teeth, misalignment of teeth and malocclusion.
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`Additionally, the iTero intraoral scanner and Invisalign system provide a “chair-side” platform
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`for live viewing of the digital impression as it is being built on the display screen during
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`scanning, for accessing valuable digital diagnosis and treatment tools, and for enhancing
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`accuracy of records, treatment efficiency, and the overall patient experience. The innovations
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`embodied in Align’s iTero intraoral scanner and Invisalign system are protected by numerous
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`United States and foreign patents.
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`27.
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`3Shape was founded in the early 2000s as a hearing aid company. It was not until
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`2011 that 3Shape entered into the digital dentistry market and into competition with Align.
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`28.
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`On information and belief, 3Shape designs, develops, markets, manufactures,
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`uses, sells, offers for sale, and/or imports its digital dentistry solutions within the United States.
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`For example, 3Shape designs, develops, markets, manufactures, uses, sells, offers for sale, and/or
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`imports 3Shape TRIOS and TRIOS 3 intraoral scanning systems, as well as related TRIOS
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`software, TRIOS Module software, Ortho System software, and Dental System software
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`(collectively “3Shape Software”) within the United States.
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`29.
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`3Shape’s website, www.3shape.com, provides a Webshop for sales of its products
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`and updating subscriptions to its software. (Exhibit 6). 3Shape’s website also offers training
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`and videos on how to use the TRIOS and TRIOS 3 intraoral scanning systems and the 3Shape
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`Software. (Exhibit 7). Additionally, 3Shape has a YouTube channel with training videos at
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`www.youtube.com/3shapeTrainingVideos showing how to use the TRIOS and TRIOS 3 intraoral
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`scanning systems, and the 3Shape Software. (Id.) 3Shape’s website provides information for
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`contacts in the United States for its Sales and 3Shape Academy Training. (Exhibit 8).
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`30.
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`3Shape’s website further provides a “Knowledge Center” with user manuals on
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`the products and how to use the products to encourage purchase and use of 3Shape products,
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`including for the TRIOS and TRIOS 3 intraoral scanning systems (Exhibit 9), the TRIOS
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`Module software (Exhibit 10), the Ortho System software (Exhibit 11); and the Dental System
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`software (Exhibit 12).
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`31.
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`3Shape attends trade shows in the United States, where it has demonstrated, and
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`continues to demonstrate, the use of the TRIOS and TRIOS 3 intraoral scanning systems and its
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`software to the public and orthodontists. (Exhibit 13 (US International Trade Commission, Inv.
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`No. 337-TA-1091, Open Sessions, Sept. 19, 2018, at 807:14-21; 899:9-13)). 3Shape
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`demonstrates the products at trade shows because it hopes that someone will buy its products.
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`(Id. at 899:14-17.)
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`32.
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`On information and belief, 3Shape has used, sold, and offered for sale its digital
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`dentistry solutions, including the TRIOS and TRIOS 3 intraoral scanning systems and the
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`3Shape Software, at conferences in the United States, including at least the 2018 Greater New
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`York Dental Meeting (Exhibit 14 at 157 (List of Exhibitors)) and the 2018 Chicago Dental
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`Society Midwinter Meeting.
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`https://www.3shape.com/-/media/corporate-video/exhibitions-and-events-new/highlights-from-
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`chicago.mp4. And on information and belief, 3Shape plans to offer its digital dentistry solutions
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`for sale at the 2019 Chicago Midwinter Meeting. (Exhibit 15 at 144 (Exhibitor Index).)
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`33.
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`3Shape’s TRIOS and TRIOS 3 intraoral scanning systems, as well as the related
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`3Shape Software, directly compete with the Align’s iTero scanners and Invisalign system. On
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`information and belief, 3Shape developed, made and sold its intraoral scanning systems and
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`software with the intent to directly compete with Align’s intraoral scanners and functionalities
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`within the iTero and Invisalign systems. Before introducing its products, 3Shape was aware of
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`the structure, design and operation of Align’s patented intraoral scanners and software, including
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`but not limited to intraoral scanners and software developed by Cadent Holdings, Inc. (“Cadent”)
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`which Align acquired on April 29, 2011. Moreover, 3Shape has previously entered into
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`agreements with Align that provided 3Shape with significant access to Align’s patented
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`technologies.
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`34.
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`On information and belief, 3Shape developed, made, and sold its infringing
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`TRIOS and TRIOS 3 scanning systems and infringing 3Shape Software despite having
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`knowledge of the Align patents at issue based on, at a minimum (i) its knowledge of the Align
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`intraoral scanners and software being covered by numerous patents, including the patents at
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`issue, through its prior business dealings with Align, including those with Cadent, whereby
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`3Shape acquired specific and detailed knowledge from Align regarding the structure, function,
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`operation and commercial benefits of the Align products and the patent protection afforded to
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`certain structures, functions and operations of the patented Align technology; (ii) by virtue of
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`3Shape’s patent prosecution activities wherein Align’s patents at issue and/or family members
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`were cited as prior art, including but not limited to U.S. Patent Nos. 7,077,647, 7,156,661,
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`8,102,538, 9,848,958, and 6,371,761, their applications or related family members; and/or (iii)
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`by virtue of 3Shape’s U.S. Food and Drug Section 510(k) premarket notification of intent to
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`market the accused products which identifies 3Shape’s accused products as substantially
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`equivalent to Align’s patent practicing products (see, e.g., Exhibit 16).
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`35.
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`Align has asserted several of its patents in other actions in this District and in the
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`United States International Trade Commission (“ITC”) beginning in 2017, including patent
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`infringement allegations against the TRIOS and TRIOS 3 intraoral scanning systems, and the
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`3Shape Software. On the public record in Investigation No. 337-TA-1091 in the ITC, 3Shape’s
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`Vice President of Orthodontics Mr. Allan Hyldal testified that at least as of 2017, he requested
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`3Shape engage in a “big analysis” of Align’s patents. (Exhibit 13 at 894:14-17.) 3Shape
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`engaged in this analysis because it believed it could not use Align’s technology. (Id. at 896:18-
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`897:6.) 3Shape was performing a risk assessment of Align’s patent portfolio because 3Shape
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`recognized it did not have a license to Align’s patents. (Id. at 897:7-13.) During this
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`assessment, internal concerns at 3Shape were raised about Align’s patents. (Id. at 905:3-11.)
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`Following Align’s filing of the patent infringement lawsuits in 2017, 3Shape continues to make,
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`use, sell, and/or offer for sale its products, including the TRIOS and TRIOS 3 scanning systems
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`and the 3Shape Software, in the United States, to import the products into the United States, and
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`to encourage its resellers and others to sell and use its products in the United States, even though
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`it understood doing so would be illegal if it infringed Align’s patents as Align alleged. (Id. at
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`881:9-882:5.)
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`COUNT ONE – INFRINGEMENT OF THE ’538 PATENT
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`36.
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`Align incorporates by reference its allegations in Paragraphs 1-35 as if fully
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`restated in this paragraph.
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`37.
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`On information and belief, 3Shape has been and is now directly and/or indirectly
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`infringing, literally and/or under the doctrine of equivalents, the ’538 patent by making, using,
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`selling, and/or offering for sale in the United States, and/or importing into the United States,
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`products covered by one or more of the claims of the ’538 patent, including the TRIOS and
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`TRIOS 3 scanning systems, as well as the related 3Shape Software.
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`38.
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`The ’538 patent is generally directed to a system for obtaining a color scan of a
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`patient’s dentition. Claim 1 of the ’538 patent recites “a device for determining the surface
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`topology and associated color of at least a portion of a three dimensional structure, comprising:
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`optical scanner configured for providing depth data of the portion corresponding to a two-
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`dimensional reference array substantially orthogonal to a depth direction; imaging means
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`configured for providing two-dimensional color image data of the portion associated with the
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`reference array; wherein the device is configured for maintaining a spatial disposition with
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`respect to the portion that is substantially fixed during operation of the optical scanner and the
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`imaging means.
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`39.
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`3Shape’s TRIOS and TRIOS 3 scanning systems, and related 3Shape Software,
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`infringe at least claim 1 of the ’538 patent. For example, 3Shape’s TRIOS and TRIOS 3 are
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`devices for determining the surface topology and associated color of at least a portion of a three
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`dimensional structure and include: an optical scanner configured for providing depth data of the
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`portion corresponding to a two-dimensional reference array substantially orthogonal to a depth
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`direction; imaging means configured for providing two-dimensional color image data of the
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`portion associated with the reference array; and the TRIOS and TRIOS 3 are configured for
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`maintaining a spatial disposition with respect to the portion that is substantially fixed during
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`operation of the optical scanner and the imaging means, as shown, for example, in the 3Shape
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`marketing video, brochure, and press release below.
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`(See, e.g., 3Shape TRIOS® Video (3Shape website, available at:
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`http://www.3shape.com/products/TRIOS/intraoral-scanners#myModal).) This video shows that
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`the TRIOS 3 is a device for determining the surface topology and associated color of at least a
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`portion of a three dimensional structure, such as a patient’s teeth.
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`Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 13 of 60 PageID #: 13
`Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 13 of 60 PageID #: 13
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`
`Fmsflmdnndfi. Na» m LISA
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`”3‘ Wireless
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`Engage patient; with realistic mlnr starts
`Create high quality digital impressions in lifelike colors
`to evaluate treatment and impmve patient dialogue.
`
`Digiul tools For hum! Kmalmlnt
`Shade measurement for digital reliability HD phmes
`to enhance details and an intraoral camera so vnu
`don't need one an the side,‘
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`*The natural colors enable us to better evaluate
`treatment Doctors, staffand patients love itl‘
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`
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`(See, e.g., 3Shape TRIOS® Digital Impression Solution Brochure (3Shape website, available at:
`(See, e. g., 3Shape TRIOS® Digital Impression Solution Brochure (3 Shape website, available at:
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`http://www.3shape.com/-/media/files/brochures/TRIOS/3shape-TRIOS-2017-
`http://www.3shape.com/—/media/files/brochures/TRIOS/3 shape-TRIOS—2017-
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`en.pdf?la=enhttp://www.3shape.com/en/products/orthodontic-system/intraoral-scanner-
`en.pdt?la=enhttp://www.3shape.com/en/products/orthodontic-system/intraoral-scanner-
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`orthodontics-software - myModal).)
`orthodontics-software - myModal).)
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`TEIGS-El
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`Realistic enters. shade measurement.
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`and an intraelelcamera
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`
`
`(Id.)
`(Id.)
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`Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 14 of 60 PageID #: 14
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`(Id.)
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`(See, e.g., 3Shape TRIOS® Knowledge Center (3Shape website, available at:
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`http://www.3shape.com/knowledge-center/news-and-press/news/2015/why-your-patients-love
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`digital-technology).)
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`40.
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`3Shape possesses knowledge of and is aware of the ’538 patent by virtue of, at a
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`minimum, the filing of this Complaint and the filing of Investigation No. 337-TA-1091 in
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`Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 15 of 60 PageID #: 15
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`November 2017 in the ITC asserting patent infringement of patents in the same family as
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`the ’538 patent, and on information and belief, possessed prior knowledge of the ’538 patent by
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`virtue of the prior business dealings between 3Shape and Align and other facts described above.
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`41.
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`3Shape also has been and is now actively inducing infringement of one or more
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`claims of the ’538 patent, either literally or under the doctrine of equivalents.
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`42.
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`On information and belief, 3Shape A/S and/or 3Shape TRIOS A/S alone and/or
`
`acting in concert with, directing and/or authorizing 3Shape US to make, use, sell or offer for sale
`
`in the United States or import into the United States the TRIOS and the TRIOS 3 intraoral
`
`scanning systems, (Exhibit 6; Exhibit 13 at 809:1-810:3, 899:2-24), possesses an affirmative
`
`intent to actively induce infringement by others (Exhibits 6-11, Exhibit 13 at 809:1-810:3,
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`899:2-24). On information and belief, 3Shape A/S and/or 3Shape TRIOS A/S induces 3Shape
`
`US to infringe (Exhibits 6-10).
`
`43.
`
`On information and belief, 3Shape US alone and/or acting in concert with,
`
`directing and/or authorizing 3Shape A/S and/or 3Shape TRIOS A/S to make, use, sell or offer for
`
`sale in the United States or import into the United States the TRIOS and TRIOS 3 intraoral
`
`scanning systems (Exhibit 6; Exhibit 13 at 809:1-810:3, 899:2-24), possesses an affirmative
`
`intent to actively induce infringement by others. (Exhibits 6-10; Exhibit 13 at 809:1-810:3,
`
`899:2-24).
`
`44.
`
`3Shape has intended, and continues to intend to induce infringement of the ’538
`
`patent by others and has knowledge, with specific intent, that the inducing acts would cause
`
`infringement or has been willfully blind to the possibility that its inducing acts would cause the
`
`infringing acts. For example, 3Shape is aware that the features claimed in the ’538 patent are
`
`features in the TRIOS and TRIOS 3 intraoral scanning systems and are features used by others
`
`-15-
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`

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`Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 16 of 60 PageID #: 16
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`that purchase TRIOS and TRIOS 3 intraoral scanning systems and, therefore, that purchasers and
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`end users will infringe the ’538 patent by using the TRIOS and TRIOS 3 intraoral scanning
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`systems in accordance with the promotional and training material disseminated by 3Shape.
`
`3Shape actively induces infringement of the ’538 patent with knowledge and the specific intent
`
`to encourage that infringement by, inter alia, disseminating the TRIOS and TRIOS 3 intraoral
`
`scanning systems and providing promotional materials, marketing materials, training materials,
`
`instructions, product manuals, user guides, and technical information (including but not limited
`
`to the marketing video, brochure, and press release described in this Count of the Complaint) to
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`others including, but not limited to, resellers, distributors, customers, dentists, orthodontists,
`
`dental and orthodontic labs, and/or other end users of the TRIOS and TRIOS 3 intraoral scanning
`
`systems. Those third parties directly infringe the ’538 patent by making, using, selling, offering
`
`for sale, and/or importing the TRIOS and TRIOS 3 intraoral scanning systems.
`
`45.
`
`3Shape also has been and is now contributing to the infringement of one or more
`
`claims of the ’538 patent, either literally or under the doctrine of equivalents.
`
`46.
`
`3Shape has actively, knowingly, and intentionally contributed and continues to
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`actively, knowingly, and intentionally contribute to the infringement of the ’538 patent by having
`
`sold or offered to sell and continuing to sell or offer for sale the TRIOS and TRIOS 3 intraoral
`
`scanning systems within in the United States (Exhibit 6; Exhibit 13 at 809:1-810:3, 899:2-24)
`
`and/or by importing the TRIOS and/or TRIOS 3 intraoral scanning systems into the United
`
`States, with knowledge that the infringing technology in the TRIOS and/or TRIOS 3 intraoral
`
`scanning systems is especially made and/or especially adapted for use in infringement of
`
`the ’538 patent. (Exhibit 13 at 894:14-17; 896:18-897:13). 3Shape has contributed to the
`
`infringement by others with knowledge that the infringing technology in the TRIOS and/or
`
`-16-
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`

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`Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 17 of 60 PageID #: 17
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`TRIOS 3 intraoral scanning systems is a material part of the patented invention, and with
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`knowledge that the infringing technology in the TRIOS and/or TRIOS 3 intraoral scanning
`
`systems is not a staple article of commerce suitable for substantial non-infringing use, and with
`
`knowledge that others including, but not limited to, resellers, distributors, customers, dentists,
`
`orthodontists, dental and orthodontic labs, and/or other end users of the TRIOS and/or TRIOS 3
`
`intraoral scanning systems infringe and will continue to infringe the ’538 patent because, due to
`
`their specific designs, the accused products and components thereof do not have any substantial
`
`noninfringing uses. 3Shape has such knowledge at least because the claimed features of the ’538
`
`patent are used by others including, but not limited to, resellers, distributors, customers, dentists,
`
`orthodontists, dental and orthodontic labs, and/or other end users of the TRIOS and TRIOS 3
`
`intraoral scanning systems. (Exhibits 7, 8).
`
`47.
`
`On information and belief, 3Shape knew or should have known of the ’538 patent
`
`and has acted, and continues to act, in an egregious and wanton manner by infringing the ’538
`
`patent. On information and belief, 3Shape’s infringement of the ’538 patent has been and
`
`continues to be willful and deliberate. The market for intraoral scanning systems and related
`
`dental and orthodontic software products contains a limited number of competitors, with Align
`
`being a known pioneer with whom 3Shape has studied familiarity. The companies have worked
`
`together in the past and 3Shape has had ample access to Align’s technology. Moreover, 3Shape
`
`spent ample time studying Align patents. Upon information and belief, 3Shape knowingly
`
`developed and sold its competitive knockoff products in an infringing manner that was known to
`
`3Shape or was so obvious that 3Shape should have known about this infringement.
`
`48. Moreover, at least as of 2017, 3Shape engaged in a “big analysis” of Align’s
`
`patents. 3Shape engaged in this analysis because it believed it could not use Align’s technology
`
`-17-
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`

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`Case 1:18-cv-01950-LPS Document 1 Filed 12/11/18 Page 18 of 60 PageID #: 18
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`until at least 2020 given the scope of certain Align patents. 3Shape was performing a risk
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`assessment of Align’s patent portfolio because 3Shape recognized risks in introducing
`
`potentially infringing Align’s patents. During this assessment, internal concerns at 3Shape were
`
`raised about Align’s patents. 3Shape continues to make, use, sell, and/or offer for sale the
`
`TRIOS and TRIOS 3 intraoral scanning systems and related 3Shape Software in the United
`
`States, to import the products into the United States, and to encourage its resellers and others to
`
`sell and use the products in the United States, despite being aware of a substantial risk of
`
`infringement.
`
`49.
`
`On information and belief, despite knowing that its actions constituted
`
`infringement of the ’538 patent and/or despite knowing that that there was a high likelihood that
`
`its actions constituted infringement of the patent, 3Shape nevertheless continued its infringing
`
`actions, and continues to make, use and sell its infringing products.
`
`50.
`
`51.
`
`3Shape’s acts of infringement have injured and damaged Align.
`
`3Shape’s wrongful conduct has caused Align to suffer irreparable harm resulting
`
`from the loss of its lawful patent rights to exclude others from making, using, selling, offering to
`
`sell and importing the patented inventions. Upon information and belief, 3Shape will continue
`
`these infringing acts unless enjoined by this Court.
`
`COUNT TWO – INFRINGEMENT OF THE ’958 PATENT
`
`52.
`
`Align incorporates by reference its allegations in Paragraphs 1-51 as if fully
`
`restated in this paragraph.
`
`53.
`
`The ’958 patent describes in detail and claims in various ways inventions in
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`systems and devices for improved occlusion mapping of a dental model.
`
`54.
`
`The ’958 patent describes problems and shortcomings in the then-existing field of
`
`digital dentistry and describes and claims novel and inven