Case 1:20-cv-01492-UNA Document 1 Filed 11/02/20 Page 1 of 19 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`3SHAPE A/S, 3SHAPE TRIOS A/S, and
`3SHAPE, INC.,
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`Plaintiff,
`
`v.
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`
`ALIGN TECHNOLOGY, INC.,
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`
`Defendant.
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`
`
`
`
`C.A. 1:20-cv-_____________
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`JURY TRIAL DEMANDED
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`
`
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Plaintiffs 3Shape A/S, 3Shape Trios A/S, and 3Shape, Inc. (individually and/or
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`collectively, “3Shape” or “Plaintiff”) by and through their undersigned counsel, file this
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`Complaint for Declaratory Judgment (“Complaint”) against Defendant Align Technology, Inc.
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`(“Defendant” or “Align”). 3Shape seeks declaratory relief pursuant to 28 U.S.C. §§ 2201 and
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`2202, declaring that 3Shape does not infringe U.S. Patent Nos. 9,101,433 (the “’433 patent”),
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`10,728,519 (the “’519 patent”), 10,750,151 (the “’151 patent”), 10,750,152 (the “’152 patent”),
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`10,791,934 (the “’934 patent”), 10,791,936 (the “’936 patent”), and 10,709,527 (the “’527
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`patent”) (collectively the “Patents-in-Suit” or “Texas Patents”).
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`PARTIES
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`1.
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`Plaintiff 3Shape A/S is a Danish corporation with a principal place of business at
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`Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`2.
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`Plaintiff 3Shape Trios A/S is a Danish corporation with a principal place of
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`business at Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`3.
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`Plaintiff 3Shape Inc. is a Delaware corporation with a principal place of business
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`at 10 Independence Boulevard, Suite 150, Warren, New Jersey 07059.
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`4.
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`On information and belief, Defendant Align Technology Inc. (“Align”) is a
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`United States corporation organized and existing under the laws of Delaware with a principal
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`place of business at 2820 Orchard Parkway, San Jose, California 95134.
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`JURISDICTION AND VENUE
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`5.
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`This lawsuit is an action for declaratory judgment of non-infringement under the
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`Patent Laws of the United States, 35 U.S.C. § 1 et seq. and the Declaratory Judgment Act, 28
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`U.S.C. §§ 2201 and 2202.
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`6.
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S. C.
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`§§ 1331, 1338, 2201, and 2202.
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`7.
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`This Court has personal jurisdiction over Defendant because Defendant has
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`purposely availed itself of the privilege of conducting activities within this State and judicial
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`District. For example, Defendant is incorporated in the state of Delaware and has availed itself
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`of the use of this District’s courts in asserting its own patent rights on multiple, recent occasions.
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`8.
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`On information and belief, Defendant regularly conducts business in Delaware,
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`and purposefully avails itself of the privileges of conducting business in Delaware. In particular,
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`Defendant is incorporated in Delaware. Further, on information and belief, Defendant, directly
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`and/or through its agents and/or intermediaries, makes, uses, imports, offers for sale, sells, and/or
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`advertises its products and affiliated services in Delaware.
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`9.
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`Defendant has also purposely availed itself of the court of this District, having
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`brought at least seven different patent infringement actions against Plaintiffs in the District of
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`Delaware – C.A. Nos. 17-cv-1646, 17-cv-1647, 17-cv-1648, 17-cv-1649, 18-cv-1949, 18-cv-
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`1950, and 19-cv-2098. The use of the courts of this jurisdiction is sufficient to give rise to
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`jurisdiction over Defendant.
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`10.
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`Venue for these claims is proper in this judicial district pursuant to 28 U.S.C. §§
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`1391(b) and (c) and 1400(b) because Defendant is a resident of the state of Delaware through its
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`incorporation under the laws of this state.
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`BACKGROUND
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`11.
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`3Shape is a pioneer developer of dental equipment and software for use by dental
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`professionals and laboratories.
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`12.
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`As one example, Plaintiff 3Shape A/S designs, develops, manufactures, and sells
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`3Shape’s portfolio of lab scanners as well as 3Shape’s Dental System CAD/CAM software.
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`13.
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`As another example, 3Shape Trios A/S designs, develops, manufactures, and sells
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`the Trios family of intraoral scanners – the first color wireless intraoral full mouth scanners in
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`the industry – and related software products. The Trios system can be used for scanning,
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`designing, and ordering of clear aligners and a number of other orthodontic treatments or dental
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`products.
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`14.
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`Trios has been named the best intraoral scanner by the industry for five years in a
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`row. Trios was also named the most accurate intraoral scanner in an independent American
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`Dental Association study.
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`15.
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`Trios has numerous operational advantages for dental professionals as well. The
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`most important is that Trios is an open system scanner, integrated with many different providers
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`of restorative products and orthodontic treatments. Dental professionals can send scans directly
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`from Trios to any provider that accepts STL files, the open industry standard file format. Trios’s
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`open system provides patients and dental professionals freedom of choice and access to an open
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`market for dental and orthodontic treatments.
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`16.
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`On or about December 31, 2015, Align and 3Shape Trios A/S entered into a
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`contract (“the Scanner Agreement”) to promote interoperability between 3Shape’s Trios and
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`Trios 3 intraoral scanners and related software and technology and Align’s Invisalign clear
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`aligner workflows.
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`17.
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`18.
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`Align purported to terminate the Scanner Agreement in December 2017.
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`Align purported to close the interoperability between Trios and Invisalign for new
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`cases in the U.S. only in January of 2018. See Press Release: Align Technology to Discontinue
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`Acceptance of Digital Scan Submissions From Trios Scanners in the United States,
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`aligntech.com (Dec. 20, 2017) available at http://investor.aligntech.com/static-files/c58144fd-
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`bf1f-404a-91ff-32416d39af83.
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`19.
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`Trios and Trios 3 users outside the U.S. can still send scans to Invisalign to this
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`day.
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`DELAWARE ACTIONS
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`20.
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`On November 14, 2017, Defendant filed four Actions against Plaintiffs in this
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`District: C.A. No. 17-cv-01646 (the “1646 Action”); C.A. No. 17-cv-01647 (the “1647 Action”);
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`17-cv-01648 (the “1648 Action”); C.A. No. 17-cv-01649 (the “1649 Action”) (“the Initial
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`District Court Cases”).
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`21.
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`Also on November 14, 2017, Defendant filed two Investigations before the
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`International Trade Commission (“ITC”): Certain Intraoral Scanners and Related Hardware and
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`Software, Inv. No. 337-TA-1090 (U.S.I.T.C.) (the “1090 Investigation”); Certain Color Intraoral
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`Scanners and Related Hardware and Software, Inv. No. 337-TA-1091 (the “1091 Investigation”)
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`against Plaintiffs.
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`22.
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`On or about December 10, 2018, Defendant agreed that it would not challenge
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`jurisdiction or venue in this District in the then pending patent infringement actions between
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`Plaintiff and Defendant. (Ex. A).
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`23.
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`On that same day, December 10, 2018, Defendant filed a third ITC Investigation:
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`Certain Dental and Orthodontic Scanners and Software, Inv. No. 337-TA-1144 (U.S.I.T.C.) (the
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`“1144 Investigation”) against Plaintiffs.
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`24.
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`On December 11, Defendant filed two additional actions against Plaintiffs in this
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`District: C.A. No. 18-cv-01949 (the “’1949 Action”) and C.A. 18-cv-01950 (the “’1950 Action).
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`25.
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`In the 1646 Action and the 1144 Investigation, Align accused 3Shape of
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`infringing, inter alia, U.S. Patent No. 9,299,192 (the “’192 patent” or “First Selective
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`Rescanning Patent”).
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`26.
`
`In the 1646 Action, Align asserted that “[o]n information and belief, 3Shape has
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`been and is now directly and indirectly infringing, literally and/or under the doctrine of
`
`equivalents, the ’192 patent by making, using, selling, and/or offering for sale in the United
`
`States, and/or importing into the United States products covered by one or more of the claims of
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`the ’192 patent, including the Trios and Trios 3, as well as the related Dental System software
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`products.” (1646 Action, D.I. 1.) 3Shape counterclaimed for a declaratory judgment that it does
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`not infringe the ’192 Patent. (1646 Action, D.I. 214.)
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`27.
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`In the 1144 Investigation, Align asserted that 3Shape “directly infringe[s] [claims
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`1-32 of the ’192 patent] at least through their sale for importation, importation and/or sale after
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`importation into the United States of the Accused Products, including 3Shape’s Trios 3 intraoral
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`digital impression system, which operates using Trios Module software running on computer
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`hardware, 3Shape’s Trios intraoral digital impression system, which operates in conjunction with
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`Dental System software running on computer hardware; and 3Shape’s Lab Scanners, which
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`operate in conjunction with Dental System software running on computer hardware.”
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`28.
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`The ’192 Patent is still asserted in the 1646 Action.
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`29.
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`In the 1144 Investigation, an Administrative Law Judge issued an Initial
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`Determination finding the asserted claims of the ’192 Patent invalid. Similarly, the PTAB found
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`all challenged claims of the ’192 Patent invalid in IPR2019-00134.
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`30.
`
`In the 1649 Action and the 1091 Investigation, Align accused 3Shape of
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`infringing, inter alia, U.S. Patent Nos. 8,363,228 (the “’228 patent”); 8,451,456 (the “’456
`
`patent”); 8,675,207 (the “’207 patent”); and 9,101,433 (the “’433 patent”) (collectively the first
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`set of “Color Scanner Patents”).
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`31.
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`In the 1649 Action, Align asserted that “[o]n information and belief, 3Shape has
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`been and is now directly and/or indirectly infringing, literally and/or under the doctrine of
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`equivalents, the [first set of Color Scanner Patents] by making, using, selling, and/or offering for
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`sale in the United States, and/or importing into the United States, products covered by one or
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`more of the claims of the [first set of Color Scanner Patents], including Trios and Trios 3, as well
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`as the related Dental System software products.” (1649 Action, D.I. 1.)
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`32.
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`In the 1091 Investigation, Align asserted that 3Shape “directly infringe[s] the
`
`asserted claims [of the Color Scanner Patents] at least through their sale for importation,
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`importation and/or sale after importation into the United States of [3Shape’s Trios, Trios 3, and
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`Dental System software].”
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`33.
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`On November 22, 2019, the ITC found the ’228, ’456, and ’207 Patents invalid
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`and that 3Shape does not infringe the ’433 Patent.
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`34.
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`On October 19, 2020, Align purported to voluntarily dismiss the stayed 1649
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`Action, where the first set of Color Scanner Patents was pending (1649 Action, D.I. 038), despite
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`the parties’ agreement not to take any action during the pendency of the stay (See 1649 Action,
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`D.I. 015, 017.)
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`35.
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`In the 1950 Action, Align accused 3Shape of infringing, inter alia, U.S. Patent
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`No. 8,102,538 (the “’538 patent”). The first set of Color Scanner Patents asserted in the 1649
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`Action and 1091 Investigation are direct descendants of the ’538 patent.
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`36.
`
`In the 1950 Action, Align asserted that “[o]n information and belief, 3Shape has
`
`been and is now directly and/or indirectly infringing, literally and/or under the doctrine of
`
`equivalents, the ’538 patent by making, using, selling, and/or offering for sale in the United
`
`States, and/or importing into the United States, products covered by one or more of the claims of
`
`the ’538 patent, including the Trios and Trios 3 scanning systems, as well as the related 3Shape
`
`Software.” (1950 Action, D.I. 1.)
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`37.
`
`On October 19, 2020, Align filed an Amended Complaint in the stayed 1950
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`Action, purporting to remove the ’538 Patent from that Action (1950 Action, D.I. 29), despite the
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`parties’ agreement not to take any action during the pendency of the stay (1950 Action, D.I. 13
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`(order entered Mar. 11 2019).)
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`38.
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`In the 1949 Action, Align accused 3Shape of infringing, inter alia, U.S. Patent
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`Nos. 8,396,115 (the “’115 patent”) and 8,805,563 (the “’563 patent”) (collectively, “the First
`
`Hole-Closing Patents”).
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`39.
`
`In the 1949 Action, Align asserted that “[o]n information and belief, 3Shape has
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`been and is now directly and indirectly infringing, literally and/or under the doctrine of
`
`equivalents, the [First Hole-Closing P]atent[s] by making, using, selling, and/or offering for sale
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`in the United States, and/or importing into the United States, products covered by one or more of
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`the claims of the [First Hole-Closing P]atent[s], including the Trios and Trios 3 intraoral
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`scanning systems and Trios Module software product.” (1949 Action, D.I. 1.) 3Shape
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`counterclaimed for a declaratory judgment that it does not infringe the First Hole-Closing
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`Patents. (1949 Action, D.I. 33.)
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`40.
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`On April 27, 2020, Align voluntarily dismissed the First Hole-Closing Patents
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`from the 1949 Action. (1949 Action, D.I. 67.)
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`THE TEXAS ACTION
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`41.
`
`On October 19, 2020, Align filed a complaint (the “Texas Complaint”) in the
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`Western District of Texas (C.A. No. 6:20-cv-00979) (the “Texas Action”), asserting
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`infringement by 3Shape of the Patents-in-Suit in this action. (Ex. B.)
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`42.
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`In the Texas Complaint, Align separates the Patents-in-Suit into three categories:
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`(1) the Color Scanner Patents; (2) the Selective Rescanning Patents; (3) The Asserted Hole-
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`Closing Technology Patent.
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`43.
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`Genealogical family members of every Texas Patent have been asserted and/or
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`are currently asserted in actions pending before the District of Delaware, as was the ’433 Patent
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`itself.
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`The Asserted Color Scanner Patents
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`44.
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`In the Texas Complaint, Align asserts infringement of the ’433, ’519, ’151, and
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`’152 patents (the “Texas Color Scanner Patents”). (Exs. B-1-B-4.)
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`45.
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`Specifically in the Texas Complaint, Align asserts that “3Shape has directly,
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`literally under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents,
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`infringed the ’433 Patent by practicing the patented method in the United States and by making,
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`using, selling, offering for sale, and/or importing into the United States, without authority,
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`[3Shape’s Trios, Trios 3, and Trios 4 scanners, as well as 3Shape’s related Dental System
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`software products (collectively, the Accused Products)]. The Accused Products meet each and
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`every claim of one or more claims of the ’433 Patent.”
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`46.
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`In the Texas Complaint, Align also asserts that “3Shape has directly, literally
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`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringed the
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`’519 Patent by practicing the patented method and by making, using, selling, offering for sale,
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`and/or importing into the United States, without authority, [3Shape’s Trios, Trios 3, and Trios 4
`
`scanners, as well as 3Shape’s related Dental System software products (collectively, the Accused
`
`Products)]. The Accused Products meet each and every claim of one or more claims of the ’519
`
`Patent.”
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`47.
`
`In the Texas Complaint, Align also asserts that “3Shape has directly, literally
`
`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringed the
`
`’151 Patent by practicing the patented method and by making, using, selling, offering for sale,
`
`and/or importing into the United States, without authority, [3Shape’s Trios, Trios 3, and Trios 4
`
`scanners, as well as 3Shape’s related Dental System software products (collectively, the Accused
`
`Products)] The Accused Products meet each and every claim of one or more claims of the ’151
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`Patent.”
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`48.
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`In the Texas Complaint, Align also asserts that “3Shape has directly, literally
`
`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringed the
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`’152 Patent by practicing the patented method and by making, using, selling, offering for sale,
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`and/or importing into the United States, without authority, [3Shape’s Trios, Trios 3, and Trios 4
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`scanners, as well as 3Shape’s related Dental System software products (collectively, the Accused
`
`Products)]. The Accused Products meet each and every claim of one or more claims of the ’152
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`Patent.”
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`49.
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`In paragraph 25 of the Texas Complaint, Align admits that the Texas Color
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`Scanner Patents are continuations of the ’228 patent, the ’456 patent, and the ’207 patent, which
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`were asserted in the 1091 Investigation.
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`50.
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`The Texas Color Scanner Patents are also continuations of the ’538 patent, which
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`Align asserted in the 1144 Investigation and the 1950 Action.
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`51.
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`Additionally, the Texas Color Scanner Patents were originally asserted or are
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`directly related to patents asserted in the 1649 Action and 1950 Action pending before this
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`District. Specifically, the ’433 Texas Color Scanner Patent was originally asserted in the 1649
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`Action, and all of the Texas Color Scanner Patents are related to the ’228, ’456, and ’207 patents
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`asserted in the 1649 Action and the ’538 Patent asserted in the 1950 Action.
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`The Asserted Selective Rescanning Patent
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`52.
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`In the Texas Complaint, Align asserts infringement of the ’934 and ’936 patents
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`(the “Asserted Selective Rescanning Patents”). (Exs. B-5-B-6.)
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`53.
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`In the Texas Complaint, Align asserts that “3Shape has directly, literally under 35
`
`U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringed the ’934 Patent
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`by practicing the patented method and by making, using, selling, offering for sale, and/or
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`importing into the United States, without authority, [3Shape’s Trios, Trios 3, and Trios 4
`
`scanners, as well as 3Shape’s related Dental System software products (collectively, the Accused
`
`Products)]. The Accused Products meet each and every claim of one or more claims of the ’934
`
`Patent.”
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`54.
`
`In the Texas Complaint, Align also asserts that “3Shape has directly, literally
`
`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringed the
`
`’936 Patent by practicing the patented method and by making, using, selling, offering for sale,
`
`and/or importing into the United States, without authority, [3Shape’s Trios, Trios 3, and Trios 4
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`scanners, as well as 3Shape’s related Dental System software products (collectively, the Accused
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`Products)]. The Accused Products meet each and every claim of one or more claims of the ’936
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`Patent.”
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`55.
`
`In paragraph 31 of the Texas Complaint, Align admits that the Asserted Selective
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`Rescanning Patents are continuations of the ’192 patent, which is currently asserted in the 1646
`
`Action and was asserted in the 1144 Investigation.
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`The Asserted Hole-Closing Technology Patent
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`56.
`
`In the Texas Complaint, Align asserts infringement of the ’527 patent (the
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`“Asserted Hole-Closing Technology Patent”). (Ex. B-7.)
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`57.
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`In the Texas Complaint, Align asserts that “3Shape has directly, literally under 35
`
`U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringed the ’527 Patent
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`by practicing the patented method and by making, using, selling, offering for sale, and/or
`
`importing into the United States, without authority, [3Shape’s Trios, Trios 3, and Trios 4
`
`scanners, as well as 3Shape’s related Dental System software products (collectively, the Accused
`
`Products)]. The Accused Products meet each and every claim of one or more claims of the ’527
`
`Patent.”
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`58.
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`The ’527 patent is a continuation of the First Hole Closing Patents, both of which
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`were asserted in the 1949 Action.
`
`COUNT I
`(Declaratory Judgment of Non-Infringement of the ’433 Patent)
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`59.
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`3Shape restates and realleges each of the foregoing paragraphs 1-58 of the
`
`Complaint as if fully set forth herein.
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`60.
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`3Shape does not infringe any claim of the ’433 patent, either directly or indirectly,
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`literally or under the doctrine of equivalents, through its alleged manufacture, use, sale, offer for
`
`sale and/or importation into the United States of any 3Shape Product.
`
`61.
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`3Shape has never manufactured, used, imported, offered for sale and/or sold in
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`the United States any products which infringe the ’433 patent. By way of example, each
`
`independent claim of the ’433 Patent claims a system or method “for determining the surface
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`topology and associated color” of at least a portion of a three dimensional structure. (See Ex. B-
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`1.) 3Shape’s Trios, Trios 3, and Trios 4 scanners are not configured to associate depth data with
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`color image data within the meaning of the ’433 patent claims. As such, 3Shape’s Trios, Trios 3,
`
`and Trios 4 scanners cannot infringe any claim of the ’433 patent at least for this reason.
`
`62.
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`3Shape has never actively induced or contributed to the infringement of the ’433
`
`patent through the sale, offer for sale, and/or importation into the United States of any 3Shape
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`Product.
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`63.
`
`As set forth in the foregoing paragraphs, there exists a substantial controversy of
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`sufficient immediacy and reality between Align and 3Shape to warrant the issuance of a
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`declaratory judgment that 3Shape has not infringed, and does not infringe, directly or indirectly,
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`literally or under the doctrine of equivalents, any claim of the ’433 patent.
`
`COUNT II
`(Declaratory Judgment of Non-Infringement of the ’519 Patent)
`
`64.
`
`3Shape restates and realleges each of the foregoing paragraphs 1-63 of the
`
`Complaint as if fully set forth herein.
`
`65.
`
`3Shape does not infringe any claim of claim of the ’519 patent, either directly or
`
`indirectly, literally or under the doctrine of equivalents, through its alleged manufacture, use,
`
`sale, offer for sale and/or importation into the United States of any 3Shape Product.
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`66.
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`3Shape has never manufactured, used, imported, offered for sale and/or sold in
`
`the United States any products which infringe the ’519 patent. By way of example, each
`
`independent claim of the ’519 patent claims a system or method “for determining the surface
`
`topology and associated color” of at least a portion of a three dimensional structure. (See Ex. B-
`
`2.) 3Shape’s Trios, Trios 3, and Trios 4 scanners are not configured to associate depth data with
`
`color image data within the meaning of the ’519 patent claims. As such, 3Shape’s Trios, Trios 3,
`
`and Trios 4 scanners cannot infringe any claim of the ’519 patent at least for this reason.
`
`67.
`
`3Shape has never actively induced or contributed to the infringement of the ’519
`
`patent through the sale, offer for sale, and/or importation into the United States of any 3Shape
`
`Product.
`
`68.
`
`As set forth in the foregoing paragraphs, there exists a substantial controversy of
`
`sufficient immediacy and reality between Align and 3Shape to warrant the issuance of a
`
`declaratory judgment that 3Shape has not infringed, and does not infringe, directly or indirectly,
`
`literally or under the doctrine of equivalents, any claim of the ’519 patent.
`
`
`
`
`COUNT III
`(Declaratory Judgment of Non-Infringement of the ’151 Patent)
`
`69.
`
`3Shape restates and realleges each of the foregoing paragraphs 1-68 of the
`
`Complaint as if fully set forth herein.
`
`70.
`
`3Shape does not infringe any claim of the ’151 patent, either directly or indirectly,
`
`literally or under the doctrine of equivalents, through its manufacture, use, sale, offer for sale
`
`and/or importation into the United States of any 3Shape Product.
`
`71.
`
`3Shape has never manufactured, used, imported, offered for sale and/or sold in
`
`the United States any products which infringe the ’151 patent. By way of example, each
`
`independent claim of the ’151 patent claims a system or method “for determining the surface
`
`- 13 -
`
`

`

`Case 1:20-cv-01492-UNA Document 1 Filed 11/02/20 Page 14 of 19 PageID #: 14
`
`topology and associated color” of at least a portion of a three dimensional structure. (See Exhibit
`
`B-3.) 3Shape’s Trios, Trios 3, and Trios 4 scanners are not configured to determine the surface
`
`topology and associated color within the meaning of the ’151 patent claims. As such, 3Shape’s
`
`Trios, Trios 3, and Trios 4 scanners cannot infringe any claim of the ’151 patent at least for this
`
`reason.
`
`72.
`
`3Shape has never actively induced or contributed to the infringement of the ’151
`
`patent through the sale, offer for sale, and/or importation into the United States of any 3Shape
`
`Product.
`
`73.
`
`As set forth in the foregoing paragraphs, there exists a substantial controversy of
`
`sufficient immediacy and reality between Align and 3Shape to warrant the issuance of a
`
`declaratory judgment that 3Shape has not infringed, and does not infringe, directly or indirectly,
`
`literally or under the doctrine of equivalents, any claim of the ’151 patent.
`
`COUNT IV
`(Declaratory Judgment of Non-Infringement of the ’152 Patent)
`
`74.
`
`3Shape restates and realleges each of the foregoing paragraphs 1-73 of the
`
`Complaint as if fully set forth herein.
`
`75.
`
`3Shape does not infringe any claim of the ’152 patent, either directly or indirectly,
`
`literally or under the doctrine of equivalents, through its alleged manufacture, use, sale, offer for
`
`sale and/or importation into the United States of any 3Shape Product.
`
`76.
`
`3Shape has never manufactured, used, imported, offered for sale and/or sold in
`
`the United States any products which infringe the ’152 patent. By way of example, two of the
`
`four independent claims of the ’152 patent claim a system or method “for determining the
`
`surface topology and associated color” of at least a portion of a three dimensional structure. (See
`
`Ex. B-4.) The remaining two independent claims of the ’152 patent claim a system or method
`
`- 14 -
`
`

`

`Case 1:20-cv-01492-UNA Document 1 Filed 11/02/20 Page 15 of 19 PageID #: 15
`
`that generates “depth data of the intraoral structure portion” and “color data of the intraoral
`
`structure portion” and combines “the depth data with the color data” or provides “a three-
`
`dimensional numerical entity based on the depth data and the color data.” (See id.) 3Shape’s
`
`Trios, Trios 3, and Trios 4 scanners are not configured to determine surface topology and
`
`associated color, to combine depth data with color data, or to provide a three-dimensional
`
`numerical entity based on depth and color data within the meaning of the ’152 patent claims. As
`
`such, 3Shape’s Trios, Trios 3, and Trios 4 scanners cannot infringe any claim of the ’152 patent
`
`at least for this reason.
`
`77.
`
`3Shape has never actively induced or contributed to the infringement of the ’152
`
`patent through the sale, offer for sale, and/or importation into the United States of any 3Shape
`
`Product.
`
`78.
`
`As set forth in the foregoing paragraphs, there exists a substantial controversy of
`
`sufficient immediacy and reality between Align and 3Shape to warrant the issuance of a
`
`declaratory judgment that 3Shape has not infringed, and does not infringe, directly or indirectly,
`
`literally or under the doctrine of equivalents, any claim of the ’152 patent
`
`COUNT V
`(Declaratory Judgment of Non-Infringement of the ’934 Patent)
`
`79.
`
`3Shape restates and realleges each of the foregoing paragraphs 1-78 of the
`
`Complaint as if fully set forth herein.
`
`80.
`
`3Shape does not infringe any claim of the ’934 patent, either directly or indirectly,
`
`literally or under the doctrine of equivalents, through its alleged manufacture, use, sale, offer for
`
`sale and/or importation into the United States of any 3Shape Product.
`
`81.
`
`3Shape has never manufactured, used, imported, offered for sale and/or sold in
`
`the United States any products which infringe the ’934 patent. By way of example, use of
`
`- 15 -
`
`

`

`Case 1:20-cv-01492-UNA Document 1 Filed 11/02/20 Page 16 of 19 PageID #: 16
`
`3Shape’s Trios, Trios 3, and Trios 4 scanners does not involve “replacing at least the first 3D
`
`intraoral scan data of the identified portion of the first virtual model that is the deficient
`
`representation of the first physical portion of the teeth with a corresponding portion of the second
`
`3D intraoral scan data that provides an adequate representation of the first physical portion and
`
`including the surface data of the portion that is physically changed” as required by each of the
`
`independent claims of the ’934 Patent. (Ex. B-5 at cls. 1, 9, 17.)
`
`82.
`
`3Shape has never actively induced or contributed to the infringement of the ’934
`
`patent through the sale, offer for sale, and/or importation into the United States of any 3Shape
`
`Product.
`
`83.
`
`As set forth in the foregoing paragraphs, there exists a substantial controversy of
`
`sufficient immediacy and reality between Align and 3Shape to warrant the issuance of a
`
`declaratory judgment that 3Shape has not infringed, and does not infringe, directly or indirectly,
`
`literally or under the doctrine of equivalents, any claim of the ’934 Patent
`
`COUNT VI
`(Declaratory Judgment of Non-Infringement of the ’936 Patent)
`
`84.
`
`3Shape restates and realleges each of the foregoing paragraphs 1-83 of the
`
`Complaint as if fully set forth herein.
`
`85.
`
`3Shape does not infringe any claim of the ’936 patent, either directly or indirectly,
`
`literally or under the doctrine of equivalents, through its alleged manufacture, use, sale, offer for
`
`sale and/or importation into the United States of any 3Shape Product.
`
`86.
`
`3Shape has never manufactured, used, imported, offered for sale and/or sold in
`
`the United States any products which infringe the ’936 patent. By way example, use of 3Shape’s
`
`Trios, Trios 3, and Trios 4 scanners does not involve replacing at least a portion of model “using
`
`the received second scan data of the patient’s teeth including surface data of a physically
`
`- 16 -
`
`

`

`Case 1:20-cv-01492-UNA Document 1 Filed 11/02/20 Page 17 of 19 PageID #: 17
`
`changed portion of the patient’s intraoral cavity” as required by independent claim 1 of the ’936
`
`patent. Similarly, use of 3Shape’s Trios, Trios 3, and Trios 4 scanners does not involve
`
`replacing “at least a portion of the surface portion of the model to be replaced according to the
`
`user input using at least a portion of the second scan data of the patient’s teeth including the
`
`physically changed portion” as required by independent claim 9 or replacing “at least a portion
`
`of the removed surface portion of the model using at least a portion of the received second scan
`
`data of the patient’s teeth” as required by independent claim 17 of the ’936 patent. (Ex. B-6 at
`
`cls. 1, 9, 17.)
`
`87.
`
`3Shape has never actively induced or contributed to the infringement of the ’936
`
`patent through the sale, offer for sale, and/or importation into the United States of any 3Shape
`
`Product.
`
`88.
`
`As set forth in the foregoing paragraphs, there exists a substantial controversy of
`
`sufficient immediacy and reality between Align and 3Shape to warrant the issuance of a
`
`declaratory judgment that 3Shape has not infringed, and does not infringe, directly or indirectly,
`
`literally or under the doctrine of equivalents, any claim of the ’936 patent.
`
`COUNT VII
`(Declaratory Judgment of Non-Infringement of the ’527 Patent)
`
`89.
`
`3Shape restates and realleges each of the foregoing paragraphs 1-88 of the
`
`Complaint as if fully set forth herein.
`
`90.
`
`3Shape does not infringe any claim of the ’527 patent, either directly or indirectly,
`
`literally or under the doctrine of equivalents, through its alleged manufacture, use, sale, offer for
`
`sale and/or importation into the United States of any 3Shape Product.
`
`91.
`
`3Shape has never manufactured, used, imported, offered for sale and/or sold in
`
`the United States any p