Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 1 of 24 PageID #: 475
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`3SHAPE A/S, 3SHAPE TRIOS A/S, and
`3SHAPE, INC.,
`
`Plaintiff,
`
`v.
`
`ALIGN TECHNOLOGY, INC.,
`
`Defendant.
`
`
`
`
`
`C.A. 1:20-cv-_____________
`
`JURY TRIAL DEMANDED
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`
`
`
`PLAINTIFFS’ OPENING BRIEF IN SUPPORT OF THEIR MOTION FOR
`PRELIMINARY INJUNCTION AND TEMPORARY RESTRAINING
`ORDER AGAINST ALIGN TECHNOLOGY INC. PROSECUTING A
`DUPLICATIVE ACTION IN THE WESTERN DISTRICT OF TEXAS
`
`
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`

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`C a s e 1 : 2 0 - c v - 0 1 4 9 2 - U N A
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`
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` D o c u m e n t
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`
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`TABLE OF CONTENTS
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`Nature and Stage of the Proceedings .............................................................................................. 1
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`Summary of the Argument.............................................................................................................. 4
`
`Statement of Facts ........................................................................................................................... 4
`Align’s Delaware Patent Infringement Suits and Three ITC Investigations ...................... 4
`Align’s October 19, 2020 Activities ................................................................................. 10
`The Texas Complaint ........................................................................................................ 10
`
`Legal Standards ............................................................................................................................. 11
`
`This Court Should Enjoin the Texas Action ................................................................................. 13
`This Court Has The Authority To Enjoin Align From Prosecuting The Texas
`Action .................................................................................................................... 13
`This Case Presents Exceptional Circumstances That Warrant Departure From The
`First-To-File Rule ................................................................................................. 14
`Align Engaged In Forum Shopping In Filing The Texas Action.......................... 14
`Judicial and Litigant Economy Favor Hearing This Dispute in Delaware ........... 17
`
`Conclusion .................................................................................................................................... 19
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`-i-
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`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 3 of 24 PageID #: 477
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`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`3Shape A/S v. Align Technology, Inc.,
`18-cv-0697 (D. Del.) ..................................................................................................................2
`
`3Shape A/S v. Align Technology Inc.,
`18-cv-0886 (D. Del.) ............................................................................................2, 3, 5, 8, 9, 18
`
`3Shape A/S v. Align Technology, Inc.,
`18-cv-1332 (D. Del.) ..................................................................................................................2
`
`Align Tech. Inc. v. 3Shape A/S, et al,
`C.A. No. 6:20-cv-00979, D.I 001 (W.D. Tex. Oct. 19, 2020) ...................................................3
`
`Align Tech., Inc. v. 3Shape A/S,
`IPR 2018-0196 ...........................................................................................................................5
`
`Align Tech., Inc. v. 3Shape A/S,
`IPR2018-0195 ............................................................................................................................5
`
`Align Tech. v. 3Shape A/S, et al,
`19-cv-2098 (D. Del.) ..............................................................................................................1, 8
`
`Cellectis, S.A. v. Precision Biosciences, Inc.,
`858 F. Supp. 2d 376 (D. Del. 2012) .........................................................................................12
`
`Certain Color Intraoral Scanners and Related Hardware and Software,
`Inv. No. 337-TA-1091 (U.S.I.T.C.) ...................................................................2, 4, 5, 7, 10, 16
`
`Certain Dental and Orthodontic Scanners and Software,
`Inv. No. 337-TA-1144 (U.S.I.T.C.) .................................................................2, 6, 7, 10, 16, 18
`
`Certain Intraoral Scanners and Related Hardware and Software,
`Inv. No. 337-TA-1090 (U.S.I.T.C.) .......................................................................................2, 7
`
`Chiron Corp. v. Adv. Chemtech,
`869 F. Supp. 800 (N.D. Cal. 1994) ..........................................................................................14
`
`Cox Communs., Inc. v. Sprint Communs. Co. L.P.,
`No. 12-487-SLR, 2013 U.S. Dist. LEXIS 42877 (D. Del. Mar. 27, 2013) .......................13, 17
`
`EEOC v. Univ, of Penn.,
`850 F.2d 969 (3d Cir. 1988).........................................................................................12, 14, 19
`
`Genentech, Inc. v. Eli Lilly & Co.,
`998 F.2d 931 (Fed. Cir. 1993)............................................................................................12, 17
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`-ii-
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`Have Sales Corp. v. Have Sys., Inc.,
`No. 92-5730, 1992 U.S. Dist. LEXIS 20271 (E.D. Pa. Dec. 31, 1992) ...................................14
`
`In re John’s Overtime Litig.,
`877 F.3d 756 (7th Cir. 2017) ...................................................................................................12
`
`Katz v. Lear Siegler, Inc.,
`909 F.2d 1459 (Fed. Cir. 1990)................................................................................................12
`
`Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co.,
`342 U.S. 180 (1952) .................................................................................................................12
`
`LMP B&B Holdings, LLC v. Hannan,
`No. 19-385, 2019 U.S. Dist. LEXIS 159205 (E.D. Pa. Sep. 13, 2019) ...................................14
`
`Micron Tech., Inc. v. Rambus Inc.,
`645 F.3d 1311 (Fed. Cir. 2011)................................................................................................15
`
`Pacesetter Sys. v. Medtronic, Inc.,
`678 F.2d 93 (9th Cir. 1982) .....................................................................................................12
`
`Pacific Coast Building Prods., Inc. v. CertainTeed Gypsum Manufacturing, Inc.
`No. 4:18-cv-4165, 2019 WL 404655 (W.D. Ark. 2019) .........................................................17
`
`ProBatter Sports, LLC v. Joyner Techs., Inc.,
`463 F. Supp. 2d 949 (N.D. Iowa Nov. 2006) ...........................................................................13
`
`Ravco Mfg. Co. v. Chicopee Mfg. Corp.,
`148 F. Supp. 588 (S.D.N.Y. 1987) ..........................................................................................15
`
`TC Heartland LLC v. Kraft Food Brands LLC,
`137 S. Ct. 1514 (2017) .......................................................................................................14, 17
`
`TSMC Tech., Inc. v. Zond, LLC,
`No. 14-721-LPS-CJB, 2014 U.S. Dist. LEXIS 175201 (D. Del. Dec. 19, 2014) ....................15
`
`
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`-iii-
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`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 5 of 24 PageID #: 479
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`Pursuant to Federal Rule of Civil Procedure 65, Plaintiffs 3Shape A/S, 3Shape Trios A/S,
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`and 3Shape, Inc. (collectively, “3Shape” or “Plaintiffs”) move for a preliminary injunction
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`enjoining defendant Align Technology, Inc. (“Align”) from prosecuting the action it recently
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`filed against 3Shape in the Western District of Texas (C.A. No. 6:20-cv-00979) (the “Texas
`
`Action”) on October 19, 2020. 3Shape further requests that the Court issue a temporary
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`restraining order (“TRO”) preventing Align from prosecuting the Texas Action pending the
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`Court’s resolution of 3Shape’s preliminary injunction motion.
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`The circumstances here are exceptional and thus require exceptional treatment.
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`Typically, courts follow a “first-filed” rule, which allows a court to enjoin a subsequent
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`proceeding involving the same or nearly identical parties and issues. However, Align’s
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`procedural gamesmanship in filing the Texas Action and manipulating the dockets in the seven
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`cases it has filed in this District over the past three years constitute exceptional circumstances
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`that justify departing from the “first-filed” practice. In essence, and but for Align’s subversion,
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`the Texas Action is not the “first-filed” case with respect to the parties, patents, or technology at
`
`issue in that case.
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`NATURE AND STAGE OF THE PROCEEDINGS
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`3Shape files this Motion concurrently with a Complaint for Declaratory Judgment of
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`Non-Infringement of the seven Align patents asserted in the Texas Action (the “Complaint”).
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`Since November 14, 2017, Align has serially filed and pursued seven lawsuits against 3Shape in
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`this District, collectively asserting thirty-nine patents.1 In each of the seven lawsuits Align filed
`
`
`1 See C.A. No. 17-cv-01646 (the “1646 Action”); C.A. No. 17-cv-01647 (the “1647
`Action”); 17-cv-0168 (the “1648 Action”); C.A. No. 17-cv-01649 (the “1649 Action”); See C.A.
`No. 18-cv-01949 (the “1949 Action”); C.A. No. 18-cv-01950 (the “1950 Action”); C.A. No. 19-
`cv-2098 (the “2098 Action”). For ease of reference, the patents asserted in Align’s lawsuits
`
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`-1-
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`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 6 of 24 PageID #: 480
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`in this District, it accused 3Shape Inc. (the U.S.-based Plaintiff) and one or both of 3Shape A/S
`
`and 3Shape Trios A/S (the Denmark-based Plaintiffs) of infringement.2 Over the past three
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`years, the parties and this Court have invested substantial time and expense on a number of
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`issues integrally related to the present action and the Texas Action, including conducting two
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`hearings regarding motions to dismiss (including under 35 U.S.C. § 101), four Markman
`
`hearings, two hearings regarding Daubert motions and motions for summary judgment, and
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`resolving a significant number of discovery disputes.3
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`Since Align filed the first four of its serial cases in this Court, 3Shape has also filed two
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`patent infringement cases against Align in this District – 3Shape A/S v. Align Technology, Inc.,
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`18-cv-0697 (the “697 Action”) and 3Shape A/S v. Align Technology Inc., 18-cv-0886 (the “886
`
`Action”) – that have since been consolidated into the 886 Action (886 Action, D.I. 042), and an
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`antitrust case against Align in this District, 3Shape A/S v. Align Technology, Inc., 18-cv-1332.
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`Just last week, on October 26, Chief Judge Stark invested time presiding over the
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`Markman hearing in the 1949 Action, hearing oral argument on a number of claim terms
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`involving intraoral scanning technology, including the claim term “confocal imaging apparatus.”
`
`
`against 3Shape, as well as additional relevant abbreviations regarding the patents asserted therein
`are identified in Appendix A attached hereto.
`
`2 In the 1949 Action, Align also accused 3Shape’s related U.S. entity – 3Shape
`Manufacturing US, LLC.
`
`3 In this same time frame, Align also filed and litigated three investigations through the
`evidentiary hearing (i.e., trial) against 3Shape in the International Trade Commission (“ITC”).
`See Certain Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1090
`(U.S.I.T.C.) (the “1090 Investigation”); Certain Color Intraoral Scanners and Related Hardware
`and Software, Inv. No. 337-TA-1091 (U.S.I.T.C.) (the “1091 Investigation”); Certain Dental and
`Orthodontic Scanners and Software, Inv. No. 337-TA-1144 (U.S.I.T.C.) (the “1144
`Investigation”). The ITC Investigations involved fifteen patents that were also asserted in one or
`more of the seven cases Align filed in this Court. (See Appendix A.)
`
`-2-
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`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 7 of 24 PageID #: 481
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`See, e.g., 1949 Action, D.I. 133, 134. During that hearing, Align repeatedly referred back to the
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`prior ITC proceedings between the parties as instructive of the disputes in the 1949 Action. 1949
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`Action, Markman Hr’g Tr. at 1-35 (Oct. 26, 2020). Similarly, Magistrate Judge Hall invested
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`time presiding over the Markman hearing regarding intraoral scanning technology in the 886
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`Action, a case in which Align previously attempted to assert the same intraoral scanner patents
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`now pending in the 1949 Action. See 886 Action, D.I. 070. More generally, Chief Judge Stark,
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`Magistrate Judge Hall, and Magistrate Judge Burke have invested a substantial amount of time in
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`this District over the past three years hearing and resolving a number of disputes among the
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`parties relating to intraoral scanner technology and their long and detailed business relationship,
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`and generally moving the cases forward.
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`Yet, on October 19, 2020, Align filed the Texas Action against 3Shape A/S and 3Shape
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`Trios A/S – intentionally omitting the domestic 3Shape entities involved in every prior case at
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`the ITC and in this District in an effort to manufacture proper venue. See Align Tech. Inc. v.
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`3Shape A/S, et al, C.A. No. 6:20-cv-00979, D.I 001 (W.D. Tex. Oct. 19, 2020) (attached hereto
`
`as Exhibit 1.) In its complaint in the Texas Action (the “Texas Complaint”), Align asserts U.S.
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`Patent Nos. 9,101,433 (the “’433 patent”), 10,728,519 (the “’519 patent”), 10,750,151 (the “’151
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`patent”), 10,750,152 (the “’152 patent”) (the ’433, ’519, ’151, and ’152 patents collectively, the
`
`“Texas Color Scanner Patents”), 10,791,934 (the “’934 patent”), and 10,791,936 (the “’936
`
`patent”) (the ’934 and ’936 patents collectively, the “Selective Rescanning Patents”), and
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`10,709,527 (the “’527 patent”) (all collectively, the “Texas Patents”).4 The ’433 patent was
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`previously asserted against 3Shape in this District and the ITC, and the other six patents asserted
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`4 For ease of reference, Shape adopts Align’s language used in the Texas Complaint, but
`refers to what Align calls the “Color Scanning Patents” as the “Texas Color Scanner Patents” for
`clarity; 3Shape makes no representation regarding the accuracy of Align’s characterizations.
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`-3-
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`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 8 of 24 PageID #: 482
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`in the Texas Action are directly related to patents that Align currently asserts or previously
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`asserted in this District and the ITC.
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`SUMMARY OF THE ARGUMENT
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`The Court should enjoin Align from prosecuting the Texas Action because allowing
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`Align to proceed in the Western District of Texas will impede judicial economy and eliminate
`
`the efficiencies of trying the patents asserted in the Texas Action before this Court, which is
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`well-versed in the parties, technology, and patent families at issue.
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`The Texas Action is also marred by and should be enjoined due to Align’s unmistakable
`
`forum shopping, as shown by: (1) its failure to add 3Shape Inc. – a party involved in every other
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`case Align has brought against 3Shape – or 3Shape Manufacturing US, LLC as a defendant and
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`(2) its strategic dismissal of patents from cases pending in this District on the same day it
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`asserted the same patents and/or continuations of those patents in the Texas Action.
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`STATEMENT OF FACTS
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`Align’s Delaware Patent Infringement Suits and Three ITC Investigations
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`On November 14, 2017, Align simultaneously filed the 1646, 1647, 1648,5 and 16496
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`Actions in this District (the “Initial District Court Cases”) asserting twenty-six patents against
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`3Shape A/S and 3Shape Inc.7 On the same day, Align filed the 1090 and 1091 ITC
`
`
`5 The 1648 Action includes U.S. Patent Nos. 8,638,447 (the “’447 patent”); 8,638,448
`(the “’448 patent”); 9,615,901 (the “’901 patent”); 7,092,107 (the “’107 patent”) (collectively,
`the “Confocal Scanner Patents”). 1648 Action, D.I. 001. The 1090 ITC Investigation also
`included the ’447, ’448, and ’901 Confocal Scanner Patents.
`
`6 The 1649 Action included the ’433 patent now asserted in Texas and U.S. Patent Nos.
`8,363,228; 8,451,456; and 8,675,207 (all collectively, the “Color Scanner Patents”). 1649
`Action, D.I. 001. The 1091 Investigation involved the same Color Scanner Patents.
`
`7 Align added 3Shape Trios A/S as a defendant in the 1646 and 1647 Actions on
`December 20, 2018. 1646 Action, D.I. 078; 1647 Action, D.I. 078.
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`-4-
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`Investigations, also against 3Shape A/S and 3Shape Inc.; the 1090 and 1091 Investigations
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`involved eleven of the same twenty-six patents asserted in the Initial District Court Cases.8 A
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`week later, Align filed two Petitions for Inter Partes Review, preemptively attacking 3Shape’s
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`U.S. Patent No. 9,629,551 (the “’551 patent”), which relates to intraoral scanning technology and
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`was later asserted in the 886 Action – 3Shape’s sole patent infringement case pending in this
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`District – after institution of Align’s IPRs was denied.9
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`On December 22, 2017, 3Shape moved to stay all four of the Initial District Court Cases.
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`See, e.g., 1646 Action, D.I. 14. After 3Shape moved to stay the Initial District Court Cases,
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`Align agreed to stay the 1648 and 1649 Actions while it pursued the 1090 and 1091
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`Investigations concerning the same Confocal Scanner Patents and Color Scanner Patents before
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`the ITC. See 1648 Action, D.I. 19; 1649 Action D.I. 20. Align opposed 3Shape’s motion to stay
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`the 1646 and 1647 Actions, however, because the “issues and technologies in C.A. Nos. 17-
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`1646-LPS and 17-1647-LPS (encompassing the patents not before the ITC) do not meaningfully
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`overlap.” 1646 Action, D.I. 17 at 2.
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`Align drew a distinction between the two sets of Initial District Court Cases (1646/1647
`
`and 1648/1649) because the 1648/1649 patents related to physical intraoral scanners and
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`software “unrelated” to the 1646 and 1647 Actions:
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`In the [1090/1091] ITC [Investigations], there are patents that
`relate to the scanners; in other words, the physical hardware, and
`the lens structure and things of that nature. That is seven out of the
`
`8 Align added 3Shape Trios A/S as a respondent in the 1090 and 1091 Investigations
`respectively on March 7, 2018 (1090 Investigation, Order No. 8 (attached hereto as Exhibit 2))
`and March 26, 2018 (1091 Investigation, Comm’n Notice (attached hereto as Exhibit 3).
`
`9 See Align Tech., Inc. v. 3Shape A/S, IPR2018-0195, Paper No. 7 (May 24, 2018)
`(denying institution) (attached hereto as Exhibit 4); Align Tech., Inc. v. 3Shape A/S, IPR 2018-
`0196, Paper No. 6 (May 24, 2018) (same) (attached hereto as Exhibit 5).
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`-5-
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`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 10 of 24 PageID #: 484
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`nine patents, seven out of the ten current patents there relate to the
`scanners. None of the patents in Delaware, in 1646 or 1647, relate
`to the hardware….Your Honor, there is no overlap between those
`three [software] patents [asserted in the 1090 and 1091 ITC
`Investigations] and the patents that are involved in [the 1646 and
`1647 Actions].
`
`1646 Action, H’rg Tr. at 30:7-18 (July 20, 2018); see also id. at 31:2-19 (Align characterized the
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`1646 and 1647 patents as “largely relat[ing] to software implementations of being able to work
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`on the Invisalign side of the shop” and distinguished them from the software patents asserted in
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`the 1648 and 1649 Actions, which allegedly “relate to dental medical devices” and “generally
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`don’t relate to functionality of software that would result in an Invisalign.”). Ultimately,
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`3Shape’s motion to stay the 1646 and 1647 cases was denied, see 1646 Action, D.I. 63, and those
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`cases have proceeded accordingly.
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`On December 11, 2018, following two separate week-long hearings in the 1090
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`(Confocal Scanner Patents) and 1091 (Color Scanner Patents) Investigations and well prior to
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`receiving determinations on the merits of those Investigations, Align filed two more lawsuits in
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`this District asserting ten additional patents, this time against 3Shape A/S, 3Shape Trios A/S, and
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`3Shape Inc. See 1949 Action, D.I. 1; 1950 Action, D.I. 1. At the same time, Align initiated a
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`third ITC Investigation – the 1144 Investigation – asserting five patents against 3Shape A/S,
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`3Shape Trios A/S, and 3Shape Inc., including (1) another patent from the Color Scanner Patent
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`family (i.e., directly related to patents asserted in the earlier 1091 Investigation and 1649
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`Action), and (2) U.S. Patent No. 9,299,192 (the “’192 patent”), which Align had asserted over a
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`year earlier and was prosecuting in the 1646 Action.10 Thus, when Align filed the 1144
`
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`10 In the 1144 Investigation, Align additionally asserted U.S. Patent Nos. 7,077,647 (the
`“’647 patent”) and 7,156,661 (the “’661 patent”), accusing 3Shape’s Trios Patient Monitoring
`Software – the same software that is currently accused of infringing U.S. Patent No. 9,510,757
`(the “’757 patent”) in the 1646 Action. See 1646 Action, D.I. 001.
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`-6-
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`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 11 of 24 PageID #: 485
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`Investigation, 3Shape had performed substantial analysis of the ’192 Patent in the 1646 Action,
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`exchanged infringement and invalidity contentions, and was in the midst of Markman
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`preparations and exchanges. See 1646 Action, D.I. 075.
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`Align stipulated to a stay in the 1950 Action because it included patents overlapping with
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`the 1144 Investigation. 1950 Action, D.I. 013. The 1949 Action proceeded with asserted U.S.
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`Patent Nos. 7,357,634 (“’634 patent”), 8,396,115 (“’115 patent”), 8,805,563 (“’563 patent”),
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`9,844,420 (“’420 patent”), and 9,975,294 (“’294 patent”), all of which relate to software.
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`Despite having already deposed at least 25 3Shape employees in the 1090 and 1091
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`Investigations and insisting on and receiving robust cross use agreements in the 1646 and 1647
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`Actions which permitted the use of discovery taken in the 1090 and 1091 Investigations (see
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`1646 Action, D.I. 061; 1647 Action, D.I. 061), beginning in early 2019, Align aggressively
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`pursued further discovery in the 1144 Investigation and the 1646 and 1647 Actions. Around that
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`same time, Align received unfavorable Initial Determinations from two separate ITC
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`Administrative Law Judges in the 1090 (Confocal Scanner Patents) and 1091 (Color Scanner
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`Patents) Investigations. 1090 Investigation, Notice of Initial Determination (Apr. 26, 2019)
`
`(attached hereto as Ex. 6); 1091 Investigation, ID (Mar. 1, 2019) (attached hereto as Ex. 7).11
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`On November 5, 2019 – less than a week after the conclusion of the evidentiary hearing
`
`in the 1144 Investigation and months before a Final Initial Determination in that Investigation,
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`and just a month before the Commission Determination in the 1091 Investigation was scheduled
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`to issue – Align filed a seventh lawsuit against 3Shape in this District, accusing 3Shape A/S,
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`11 The Commission ultimately vacated the Initial Determination in the 1090 Investigation
`on August 20, 2019 based on the Confocal Scanner Patents’ then-looming expiration. 1090
`Investigation, Comm’n Notice (Aug. 20, 2019) (attached hereto as Ex. 8). The Commission
`affirmed the ALJ’s finding of no violation of Section 337 in the 1091 Investigation on November
`22, 2019. 1091 Investigation, Comm’n Notice (Nov. 22, 2019) (attached hereto as Ex. 9).
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`-7-
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`3Shape Trios A/S, and 3Shape Inc. of infringing Align’s thirty-seventh patent asserted in this
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`District (U.S. Patent No. 9,675,430 (the “’430 Patent”)). Align Tech. v. 3Shape A/S, et al, 19-cv-
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`2098 (D. Del.) (the “2098 Action”), D.I. 1. Align repeatedly characterized the ’430 Patent as
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`related to scanner technology. 2098 Action, D.I.001 at ¶¶ 32-49.
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`In December 2019, after receiving unfavorable decisions in the 1090 and 1091
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`Investigations, Align turned its efforts from its own offensive, multi-front litigation strategy,
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`towards delaying and impeding 3Shape’s 886 Action – the single, streamlined case in which
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`3Shape asserted three patents against Align’s iTero intraoral scanners.12 More specifically, even
`
`though 3Shape filed the operative Amended Complaint in the 886 Action in August of 2019,
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`Align moved to bifurcate one of 3Shape’s patents from the case, or, in the alternative, proposed
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`that the 886 Schedule should be extended. 886 Action, D.I. 064.
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`When that tactic failed and the Court set the 886 Action Markman hearing for April 6,
`
`2020 (886 Action, D.I. 067), Align next attempted to insert the ’430 patent from its seventh-filed
`
`suit (the 2098 Action), along with two of its then-newly-issued family members (U.S. Patent
`
`Nos. 10,507,088 (the “’088 patent”) and 10,507,089 (the “’089 patent”) (these three patents
`
`collectively, the “Third Set of Scanner Patents”) into the 886 Action as counterclaims. 886
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`Action. D.I. 069. Align asserted that “[e]fficiency dictates that the [Third Set of Scanner
`
`Patents] be litigated together” with 3Shape’s patents asserted in the 886 Action because “the
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`technology is closely related.” 886 Action. D.I. 070 at 6. During the hearing on that issue,
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`Align’s counsel argued:
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`[W]e believe that it just makes sense, especially with the risk of the
`schedule moving in 886, just as it did in 1646 and 1647 to handle
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`12 3Shape already dismissed one of its three asserted patents before the parties served
`opening expert reports. See 886 Action, D.I. 296.
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`-8-
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`all of this in one place rather than to have two different juries do it
`or have one jury handling disparate topics involving software and
`hardware in a way that you need multiple different experts to
`handle each one of those different types of technologies, whereas
`here it is just optics engineers who are experts with regard to
`optics, because the products are the same and the patents are very,
`very, similar.
`
`886 Action, Hr’g Tr. at 16:6-17 (Feb. 10, 2020).
`
`When the Court also denied Align’s request to add counterclaims on the Third Set of
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`Scanner Patents to the already-scheduled trial in the 886 Action, Align once again shifted its
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`strategy, turning to the 1949 Action (which was filed in December 2018). Align selectively
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`dismissed the ’634, ’563, and ’115 patents and replaced them with the Third Set of Scanner
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`Patents, thus ensuring its third scanner patent case (after 1648 and 1649) obtained the benefit of
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`the earlier 1949 filing date, which originally included no scanner patents. 1949 Action, D.I. 068.
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`As of October 18, 2020 despite repeated prodding from 3Shape to narrow the cases,
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`Align had: (1) dismissed only five of the originally-asserted thirty-nine patents from its seven
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`cases in this District – two that were previously asserted in the ITC and plainly invalid, and three
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`in exchange for fast-tracking the Third Set of Scanner Patents by inserting them into the 1949
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`Action (1949 Action, D.I. 068; 1648 Action, D.I 106; 1646 Action, D.I. 078)), and (2) dropped
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`only 11 of the nearly 300 claims it asserted in the four cases in this District that were not stayed
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`(the 1646, 1647, 1648, and 1949 Actions) pursuant to the parties’ pretrial exchange schedule in
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`the 1646 Action (1646 Action, D.I. 505 at Ex. A; Ex. 11). In other words, for almost three years,
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`Align demonstrated absolutely no interest in conserving this Court’s and the parties’ resources
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`by timely narrowing its cases to a reasonable scope. Thus, any Align argument that what it did
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`next was an effort at efficiency or conservation of public and private resources rings hollow.
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`-9-
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`

`

`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 14 of 24 PageID #: 488
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`Align’s October 19, 2020 Activities
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`Align’s relentless procedural gamesmanship came sharply into focus on October 19,
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`2020, when Align: (1) purported to voluntarily dismiss the 1649 Action (where four Color
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`Scanner Patents were pending) (1649 Action, D.I. 038), (2) purported to file an Amended
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`Complaint in the 1950 Action to selectively remove a fifth member of the Color Scanner Patent
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`family (1950 Action, D.I. 029),13 and (3) filed the Texas Complaint, asserting four Color
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`Scanner Patent family members, including the ’433 patent (asserted in the 1649 Action and 1091
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`Investigation) and three other family members (U.S. Patent No. 10,728,519 (the “’519 patent”);
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`U.S. Patent No. 10,750,151 (the “’151 patent”) and U.S. Patent No. 10,750,152 (the “’152
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`patent”)).14 These Texas Color Scanner Patents include the same or similar claim terms to those
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`previously disputed in the ITC and this District, including “confocal.”
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`The Texas Complaint
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`Align goes to great lengths to carefully characterize the patents asserted in the Texas
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`Complaint into three families: (1) the “Color Scanning Patents”; (2) the “Selective Rescanning
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`Patents”; and (3) the “Asserted Hole-Closing Technology Patent.” (See, e.g., Ex. 1 at ¶¶ 21-36.)
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`As detailed above, however, Align has asserted members of each of these patent families in this
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`District, along with a slew of other patents relating to the same or similar intraoral scanning
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`technologies, for the past three-years. The following chart illustrates an overview of the
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`13 At the time Align purported to dismiss the 1649 Action and file its Amended
`Complaint in the 1950 Action, both cases were long-stayed. 1649 Action, D.I. 020; 1950 Action,
`D.I. 013. Align did not notify 3Shape of its intent to make either filing or seek to lift the stays.
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`14 These latter three Texas Color Scanner Patents are related to patents asserted in the
`1091 Investigation, 1649 Action, and 1950 Action. They were each filed, prosecuted, and issued
`after the 1090 and 1091 Investigations and during the pendency of the 1144 Investigation, at a
`time when the Markman records in the 1090 and 1091 Investigations were publicly available.
`
`-10-
`
`

`

`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 15 of 24 PageID #: 489
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`relationship between the patents asserted in the Texas Complaint vis a vis those previously
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`and/or currently at issue in this District, the ITC, and the PTAB:
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`
`
`
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`Align’s serial, overlapping lawsuits before this Court and the ITC have thus forced
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`3Shape to litigate the ’433 Patent and other family members of the Texas Color Scanner and
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`Selective Rescanning Patents on multiple fronts for nearly three years already. Align’s Texas
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`Complaint is yet another attempt to waste and exhaust the federal courts’ and 3Shape’s resources
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`by demanding that an additional forum participate in Align’s multi-front assault over technology
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`and issues that this Court has already presided over for years.
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`LEGAL STANDARDS
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`A district court has the authority to enjoin duplicative litigation in another district court
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`pursuant to its inherent equitable powers where litigation involves the same issues and the same
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`-11-
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`

`

`Case 1:20-cv-01492-UNA Document 5 Filed 11/02/20 Page 16 of 24 PageID #: 490
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`parties. In re John’s Overtime Litig., 877 F.3d 756, 765 (7th Cir. 2017) (citing Kerotest Mfg. Co.
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`v. C-O-Two Fire Equip. Co., 342 U.S. 180, 183 (1952)); see also Katz v. Lear Siegler, Inc., 909
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`F.2d 1459, 1463 (Fed. Cir. 1990) (“The premise behind a decision to enjoin concurrent
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`proceedings in another federal district court is that the proceedings involve the same parties and
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`issues.”). In doing so, courts typically follow the “first-filed” rule, which “gives a court ‘the
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`power’ to enjoin subsequent prosecution of proceedings involving the same parties and the same
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`issues already before another district court.” EEOC v. Univ, of Penn., 850 F.2d 969, 971 (3d Cir.
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`1988); see also Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993) (discussing
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`the first-filed rule). The primary purpose of this rule is not to lessen the burden on any one
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`particular court, but rather “to avoid burdening the federal judiciary and