Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 1 of 53 PageID #: 845
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`v.
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`ALIGN TECHNOLOGY, INC.
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`3SHAPE A/S, 3SHAPE TRIOS A/S, and
`3SHAPE INC.,
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`
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`Plaintiff,
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`Defendants.
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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. 18-1950-LPS
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`JURY TRIAL DEMANDED
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`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT1
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`
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`Plaintiff Align Technology, Inc. (“Align”) demands a trial by jury on all issues so triable
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`and, for its amended complaint against Defendants 3Shape A/S, 3Shape TRIOS A/S, and 3Shape
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`Inc. (collectively, “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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`
`1 The first amended complaint removes, and thereby dismisses without prejudice, the
`claim for infringement of U.S. Patent No. 8,102,538.
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`

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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 amended complaint to hold 3Shape responsible for its
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`infringement and to 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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`-3-
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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 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 1 to this complaint.
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`18.
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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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`-4-
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`

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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 5 of 53 PageID #: 849
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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 2 to this complaint.
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`19.
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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 3 to this complaint.
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`20.
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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 4 to this complaint.
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`BACKGROUND
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`21.
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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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`-5-
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`22.
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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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`23.
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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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`24.
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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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`25.
`
`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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`-6-
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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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`26.
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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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`27.
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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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`28.
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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 5). 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 6). 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 7).
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`29.
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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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`-7-
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`including for the TRIOS and TRIOS 3 intraoral scanning systems (Exhibit 8), the TRIOS
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`Module software (Exhibit 9), the Ortho System software (Exhibit 10); and the Dental System
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`software (Exhibit 11).
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`30.
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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 12 (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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`31.
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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 13 at 157 (List of Exhibitors)) and the 2018 Chicago Dental
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`Society Midwinter Meeting.
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`-8-
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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 14 at 144 (Exhibitor Index).)
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`32.
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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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`33.
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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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`-9-
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`9,848,958, and 6,371,761, their applications or related family members; and/or (iii) by virtue of
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`3Shape’s U.S. Food and Drug Section 510(k) premarket notification of intent to market the
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`accused products which identifies 3Shape’s accused products as substantially equivalent to
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`Align’s patent practicing products (see, e.g., Exhibit 15).
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`34.
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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 12 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 ’958 PATENT
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`35.
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`Align incorporates by reference its allegations in Paragraphs 1-34 as if fully
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`restated in this paragraph.
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`36.
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`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.
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`37.
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`The ’958 patent describes problems and shortcomings in the then-existing field of
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`digital dentistry and describes and claims novel and inventive technological improvements and
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`solutions to such problems and shortcomings. (Exhibit 1 at 1:13-60.) Prior to the ’958 patent,
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`dentists and orthodontists would have a patient bite on inked paper to check the occlusion of
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`their teeth, e.g., the fit between the patient’s upper and lower teeth. The dentist would then have
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`to guess how the teeth would fit together during the course of an orthodontic treatment and plan
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`accordingly. This inexact process inhibited orthodontists from moving a patient’s teeth into
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`optimal final occlusion so that they were aesthetically pleasing to the patient.
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`38.
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`The advent of digital dentistry allowed the dentists to create a virtual occlusion
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`map. The ’958 patent goes a step beyond and addresses a problem relating to changing teeth,
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`e.g., teeth undergoing an orthodontic or restorative procedure, and provides a dynamic height
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`map or distance field between opposite teeth in the virtual model. The dynamic occlusion map
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`indicates the distances using color between opposite regions on facing surfaces on the upper and
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`lower jaws of the mouth throughout the treatment.
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`39.
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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 ’958 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 ’958 patent, including the TRIOS software,
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`Dental System, and/or Ortho System software.
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`40.
`
`The ’958 patent is generally directed to occlusion mapping. Claim 1 of the ’958
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`patent recites a non-transitory computing device readable medium having executable instructions
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`which can be executed by a processor to cause a computing device to perform a method,
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`comprising: determining a plurality of data sets associated with a set of occlusal information for
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`at least one tooth of a patient, wherein determining a data set includes calculating an average
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`occlusal distance of at least one triangle of a three dimensional (3D) mesh of the at least one
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`tooth using at least one of a height map and a distance field of the at least one tooth; determining
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`a virtual 3D mesh model object of the at least one tooth using the plurality of data sets; and
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`displaying the determined virtual 3D mesh model object of the at least one tooth of a patient.
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`41.
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`3Shape’s TRIOS and TRIOS 3 intraoral scanning systems, TRIOS software,
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`Dental System, and/or Ortho System software, infringe at least claim 1 of the ’958 patent. For
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`example, 3Shape’s TRIOS software, Dental System, and/or Ortho System software are stored on
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`a non-transitory computing device readable medium having executable instructions which can be
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`executed by a processor to cause a computing device to perform a method, comprising:
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`determining a plurality of data sets associated with a set of occlusal information for at least one
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`tooth of a patient, wherein determining a data set includes calculating an average occlusal
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`distance of at least one triangle of a three dimensional (3D) mesh of the at least one tooth using
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`at least one of a height map and a distance field of the at least one tooth; determining a virtual 3D
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`mesh model object of the at least one tooth using the plurality of data sets; and displaying the
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`determined virtual 3D mesh model object of the at least one tooth of a patient, as shown, for
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`example, in the 3Shape user manuals below.
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`42.
`
`TRIOS software
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 13 of 53 PageID #: 857
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`https://www.3shape.com/en/knowledge-center/user-manuals#TRIOS, 45 (May 18, 2017)
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`(hereinafter “TRIOS Manual”).
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`Id. at 46.
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`43.
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`Dental System
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`
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`
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`https://www.3shape.com/en/knowledge-center/user-manuals#dental-system, 340 (2018)
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`(hereinafter “Dental System User Manual”).
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 14 of 53 PageID #: 858
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`Id. at 341.
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`DStep 8: Use the Sculpt toolkit
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`Emma-- . u m-
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`
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`The details on how to use the tools you can read in chapter Sculpt Toolkit. Use the Distance map
`slider to visualize the distance between a model and an antagonist and/or neighbors:
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`I
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`Id. at 203.
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 15 of 53 PageID #: 859
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`44.
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`Ortho System
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`https://www.3shape.com/en/knowledge-center/user-manuals#ortho-system, 118 (May 18, 2018)
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`(hereafter “Ortho System User Manual”).
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 16 of 53 PageID #: 860
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`
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`Screenshot of 3Shape Ortho Analyzer.
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`45.
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`3Shape possesses knowledge of and is aware of the ’958 patent by virtue of, at a
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`minimum, the filing of the Original Complaint and, on information and belief, possessed prior
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`knowledge of the ’958 patent by virtue of the prior business dealings between 3Shape and Align
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`and other facts described above.
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`46.
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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 ’958 patent, either literally or under the doctrine of equivalents.
`
`47.
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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
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`in the United States or import into the United States the TRIOS and TRIOS 3 intraoral scanning
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`systems, TRIOS software, Dental System, and/or Ortho System software products (Exhibit 5;
`
`Exhibit 12 at 809:1-810:3, 899:2-24), possesses an affirmative intent to actively induce
`
`infringement by others (Exhibits 5-11, Exhibit 12 at 809:1-810:3, 899:2-24). On information
`
`and belief, 3Shape A/S and/or 3Shape TRIOS A/S induces 3Shape US to infringe (Exhibits 5-
`
`11).
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 17 of 53 PageID #: 861
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`48.
`
`On information and belief, 3Shape US alone and/or acting in concert with,
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`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, Dental System and/or the Ortho System software product (Exhibit 5; Exhibit
`
`12 at 809:1-810:3, 899:2-24), possesses an affirmative intent to actively induce infringement by
`
`others. (Exhibits 5-11; Exhibit 12 at 809:1-810:3, 899:2-24).
`
`49.
`
`3Shape has intended, and continues to intend to induce infringement of the ’958
`
`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 ’958 patent are
`
`features in the TRIOS software, Dental System, and/or Ortho System software products and are
`
`features used by others that purchase TRIOS software, Dental System, and/or Ortho System
`
`software products and, therefore, that purchasers and end users will infringe the ’958 patent by
`
`using the TRIOS software, Dental System, and/or Ortho System software products in accordance
`
`with the promotional and training material disseminated by 3Shape. 3Shape actively induces
`
`infringement of the ’958 patent with knowledge and the specific intent to encourage that
`
`infringement by, inter alia, disseminating the TRIOS software, Dental System, and/or Ortho
`
`System software products 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
`
`Amended Complaint) to others including, but not limited to, resellers, distributors, customers,
`
`dentists, orthodontists, dental and orthodontic labs, and/or other end users of the TRIOS
`
`software, Dental System, and/or Ortho System software products. Those third parties directly
`
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 18 of 53 PageID #: 862
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`infringe the ’958 patent by making, using, selling, offering for sale, and/or importing the TRIOS
`
`software, Dental System, and/or Ortho System software products.
`
`50.
`
`3Shape also has been and is now contributing to the infringement of one or more
`
`claims of the ’958 patent, either literally or under the doctrine of equivalents.
`
`51.
`
`3Shape has actively, knowingly, and intentionally contributed and continues to
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`actively, knowingly, and intentionally contribute to the infringement of the ’958 patent by having
`
`sold or offered to sell and continuing to sell or offer for sale the TRIOS and TRIOS 3 intraoral
`
`scanning systems, TRIOS software, Dental System, and/or Ortho System software products
`
`within in the United States (Exhibit 5; Exhibit 12 at 809:1-810:3, 899:2-24) and/or by importing
`
`the TRIOS and TRIOS 3 intraoral scanning systems, TRIOS software, Dental System, and/or
`
`Ortho System software products into the United States, with knowledge that the infringing
`
`technology in the TRIOS software, Dental System, and/or Ortho System software products is
`
`especially made and/or especially adapted for use in infringement of the ’958 patent. (Exhibit
`
`12 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 software, Dental System, and/or Ortho
`
`System software products is a material part of the patented invention, and with knowledge that
`
`the infringing technology in the TRIOS software, Dental System, and/or Ortho System software
`
`products 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 software, Dental
`
`System, and/or Ortho System software products, infringe and will continue to infringe the ’958
`
`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
`
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 19 of 53 PageID #: 863
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`claimed features of the ’958 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 software, Dental System, and/or Ortho System software products. (Exhibits
`
`6, 7).
`
`52.
`
`On information and belief, 3Shape knew or should have known of the ’958 patent
`
`and has acted, and continues to act, in an egregious and wanton manner by infringing the ’958
`
`patent. On information and belief, 3Shape’s infringement of the ’958 patent has been and
`
`continues to be willful and deliberate. The market for intraoral scanners 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.
`
`53. 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
`
`until at least 2020 given the scope of certain Align patents. 3Shape was performing a risk
`
`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 the TRIOS software, Dental System and/or
`
`Ortho System software in the United States, to import the products into the United States, and to
`
`-19-
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`Case 1:18-cv-01950-LPS Document 29 Filed 10/19/20 Page 20 of 53 PageID #: 864
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`encourage its resellers and others to sell and use the products in the United States, despite being
`
`aware of a substantial risk of infringement.
`
`54.
`
`On information and belief, despite knowing that its actions constituted
`
`infringement of the ’958 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.
`
`55.
`
`56.
`
`3Shape’s acts of infringement have injured and d