United States District Court, D. Delaware
Geoffrey Grivner, BUCHANAN INGERSOLL & ROONEY PC,
Wilmington, DE S. Lloyd Smith, Kimberly E. Coghill, BUCHANAN
INGERSOLL & ROONEY PC, Alexandria, VA Philip L.
Hirschhorn, BUCHANAN INGERSOLL & ROONEY PC, New York, NY
Attorneys for Plaintiff.
W. Shaw, Karen E. Keller, Andrew E. Russell, SHAW KELLER LLP,
Wilmington, DE Blair M. Jacobs, Christina A. Ondrick, John S.
Holley, Diva Ranade, PAUL HASTINGS LLP, Washington, D.C.
Thomas A. Counts, PAUL HASTINGS LLP, San Francisco, CA
Attorneys for Defendant.
U.S. DISTRICT JUDGE
3 Shape A/S ("Plaintiff) sued Defendant Align
Technology, Inc. ("Defendant") for direct,
indirect, and willful infringement of Plaintiff s U.S. Patent
No. 9, 629, 551 ("the '551 Patent") on June 14,
2018. (D.I. 1) ("Complaint") The '551 Patent
describes an intraoral scanner and claims a system and method
for distinguishing "movable objects" (e.g., a
tongue, cheeks, or dental instruments) from "rigid
objects" (e.g., teeth) so that only the rigid objects
are rendered in the three-dimensional model. '551 Patent,
col. 111. 29-60, col. 3 11. 50-54, col. 29 I. 45-col. 32 1.
August 9, 2018, Defendant filed a motion to dismiss pursuant
to Federal Rule of Civil Procedure 12(b)(6). (D.I. 10)
Defendant argues that Plaintiff s pre-suit induced
infringement and contributory and willful infringement claims
fail to meet the pleading standards set forth in Ashcroft
v. Iqbal, 556 U.S. 662 (2009), and Bell Atl. Corp.
v. Twombly, 550 U.S. 544 (2007). The Court disagrees.
of the Federal Rules of Civil Procedure requires a complaint
to contain "a short and plain statement of the claim
showing that the pleader is entitled to relief."
Fed.R.Civ.P. 8(a)(2). A party that believes a complaint fails
to meet this standard may move to dismiss under Rule
12(b)(6). Such a motion may be granted only if, accepting the
well-pleaded allegations in the complaint as true and viewing
them in the light most favorable to the claimant, a court
concludes that those allegations "could not raise a
claim of entitlement to relief." Twombly, 550
U.S. at 558; see also Fowler v. UPMC Shadyside, 578
F.3d 203, 210 (3d Cir. 2009).
presented with a Rule 12(b)(6) motion, a court conducts a
two-part analysis. See Fowler, 578 F.3d at 210.
First, the court separates the factual and legal elements,
accepting "all of the complaint's well-pleaded facts
as true, [while] ... disregard[ing] any legal
conclusions." Id. at 210-11. Second, the court
determines "whether the facts alleged in the complaint
are sufficient to show that the plaintiff has a
'plausible claim for relief" Id. at 211
(quoting Iqbal, 556 U.S. at 679).
whether a claim is plausible is "a context-specific task
that requires the reviewing court to draw on its judicial
experience and common sense." Iqbal, 556 U.S.
at 679. A plausible claim does more than merely allege
entitlement to relief; it must also demonstrate the basis for
that "entitlement with its facts." Fowler,
578 F.3d at 211 (internal citations omitted). Thus, a
claimant's "obligation to provide the grounds of his
entitle[ment] to relief requires more than labels and
conclusions, and a formulaic recitation of the elements of a
cause of action will not do." Twombly, 550 U.S.
at 555 (internal quotation marks and citation omitted);
see also Iqbal, 556 U.S. at 678 ("Threadbare
recitals of the elements of a cause of action, supported by
mere conclusory statements, do not suffice."). In other
words, "[a] claim has facial plausibility when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged." Iqbal, 556 U.S. at
678 (citing Twombly, 550 U.S. at 556).
parties dispute whether Plaintiffs Complaint alleges
sufficient facts to plead indirect infringement by
inducement. (D.I. 11 at 3-7; D.I. 13 at 4-10) To adequately
plead a claim of induced infringement, a plaintiff must
demonstrate that "the defendant knew of the patent and
that the induced acts constitute patent infringement."
Commil USA, LLC v. Cisco Sys., Inc., 135 S.Ct. 1920,
1926 (2015) (internal quotation marks omitted). Further, a
plaintiff must allege a specific intent to induce
infringement, which is "evidence of culpable conduct,
directed to encouraging another's infringement, not
merely that the inducer had knowledge of the direct
infringer's activities." DSU Med. Corp. v. JMS
Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006).
"[R]ecovery on an induced infringement claim is limited
to the time period that begins when defendant learns of the
patent's existence." E.I. Du Pont De Nemours
& Co. v. Heraeus Precious Metals N. Am. Conshohocken
LLC, 2013 WL 4047648, at *2 (D. Del. Aug. 8, 2013)
(citing SynQor, Inc. v. Artesyn Techs., Inc., 709
F.3d 1365, 1379 (Fed. Cir. 2013)).
does not challenge the sufficiency of the pleadings for
direct infringement, but does argue that the claims of
induced infringement contain nothing more than "rote
allegations" that Defendant encouraged infringement
through the training, promotion, sales, and importation of
the accused products. (D.I. 11 at 4) Defendant then argues
that although it filed a pre-suit inter partes
review ("IPR") directed to the
patent-in-suit, an IPR petition alone is an ...