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Align Technology, Inc. v. 3SHAPE A/S

United States District Court, D. Delaware

September 20, 2019

3SHAPE A/S, et al, Defendants.



         Pending before the Court is Defendants' motion to dismiss. (D.I. 11) Having considered the parties' briefing (D.I. 12, 16, 19) and related materials, and having heard oral argument on June 18, IT IS HEREBY ORDERED that Defendants' motion to dismiss (D.I. 11) is GRANTED IN PART and DENIED IN PART.

         1. The motion is GRANTED with respect to claims 1-9, 16, 17, and 21 of U.S. Patent No. 7,357,634 ("the '634 Patent"), as those claims are directed to unpatentable subject matter pursuant to 35 U.S.C. § 101.

         2. The motion is DENIED with respect to claims 10-15, 18-20, 22, and 23 of the '634 Patent, and claims 1-20 of U.S. Patent No. 9,844,420 ("the '420 Patent").[1]

         Dental professionals traditionally formulate orthodontic treatment plans by manually examining x-rays, photographs, and molds to visualize a treatment path and select the appliances necessary to create and implement that path. '634 Patent, col. 1 11. 20-30. The '634 Patent proposes digitizing that process, whereby a dental professional receives a virtual model of a patient's teeth, and can select different virtual orthodontic appliances that are then "automatically place[d] ... in the proper position and orientation" on the virtual model. Id. at col. 1 11. 52-57; col. 3 11. 27-38, 64-67.

         In order to automatically place the virtual appliances on the virtual model, the '634 Patent proposes a method of arranging the virtual appliances "in the same spatial coordinate system or making use of a transform function to relate the coordinate systems of the [appliances]." Id. at col. 1 11. 57-60. The Patent proposes two ways to assign the "standard position and orientation" to the appliances, id. at col. 1 11. 49-50: (1) using a physical "jig" that "allows [thephysical appliances] to be held in the same spatial location" while being scanned and digitized (i.e., the orientation information is incorporated into the scanning process), and/or (2) orienting a plurality of virtual appliances relative to one another in software. Id. at col. 2 1. 51-col. 3 1. 18.

         Step 1. While the parties' arguments predominantly focus on claim l,[2] all of the asserted claims are directed to the abstract idea of "allow[ing] the doctors to easily change or substitute different brackets during treatment planning." '634 Patent, col. 1 11. 52-54; see also D.I. 12 at 8. Independent claims 1, 10, 15, 16, 17, and 21 each have similar steps of: (1) receiving or providing a digital model of a dental appliance; (2) mapping the digital model to a standard orientation or feature; and (3) interchanging/replacing a first appliance with a second appliance. Independent claim 18 foregoes some of the other claimed steps to focus on the "mapping" limitation, but is also limited to replacing virtual appliances on a virtual tooth model. None of the dependent claims adds anything to bring them out of the realm of abstraction.

         Plaintiff repeatedly stresses that the "mapping" limitation[3] is directed to a non-abstract idea. (D.I. 22) The Court disagrees. As discussed previously, the specification discloses two embodiments of the "mapping" limitation: (1) the jig embodiment, and (2) the virtual orientation embodiment. Id. at col. 2 1. 51-col. 3 1. 18. In the Court's view, the jig embodiment may well describe a non-abstract idea: a physical device that imparts standard position and orientation information to the virtual appliance automatically during scanning. The claims, however, are not so narrow.[4] See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) ("At leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary."); see also Tr. at 80 (Plaintiff asserting any embodiment "that involves the automatic placement and the mapping functionality is captured by the claims").

         The claims also encompass the virtual orientation embodiment, which is an abstract process of orienting virtual appliances relative to one another within a virtual space. Id. at col. 2 1. 60-col. 3 1. 18. This embodiment is a mental process of orienting objects for comparison, implemented on a generic computer. See Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed Cir. 2015) ("Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person's mind."); see also In re Brown, 645 F.App'x 1014, 1017 (Fed Cir. 2016) (finding abstract claims that "encompass the mere idea of applying different known hair styles to balance one's head" to be idea "capable ... of being performed entirely in one's mind"); '634 Patent, col. 5 1. 25-col. 6 1. 3.

         The Patent does not disclose any specifics that speak to an improvement in computer functionality. Without such specifics, this case is distinguishable from McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), on which Plaintiff relies. (See D.I. 22 at 3; Tr. at 79, 86). There, the patent at issue proposed an automated process of synchronizing animated mouth movements with pre-recorded audio. See McRO, 837 F.3d at 1306-07. The claim called for obtaining "set[s] of rules" to define output morph weight set streams, which ultimately influenced the animations. Id. at 1307. The specification disclosed that these rules "automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators." Id. Using specific rules "to set the morph weights and transitions between phonemes" rendered the invention non-abstract. Id. at 1313 (internal quotation marks omitted). The '634 Patent, on the other hand, lacks such analogous specifics. Without more, the Patent does not teach an improvement in the computer functionality itself, but rather is directed to an abstract idea.

         Step 2. Independent claims 1 and 21 do not provide an inventive concept. These claims are directed to selecting and mapping a standard position and orientation such that a plurality of appliances can be "automatically plac[ed] ... at a same position." '634 Patent, cl. 1; see also cl. 21 (claiming "digitally placing a first one of the digital models" and "replacing the first digital model with a second digital model").

         Plaintiff argues there is a fact dispute as to whether the "mapping" step is conventional. (D.I. 16 at 9) While the jig embodiment, or a specific (unclaimed and undescribed) implementation of the virtual orientation embodiment may be non-routine or non-conventional, the broad "mapping" limitation (even adopting arguendo Plaintiffs proposed construction) encompasses the routine and conventional mental process of orienting objects for comparison as implemented on a generic computer. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355-56 (Fed. Cir. 2016) (finding claims lacked inventive concept when they "do not require an arguably inventive set of components or methods, such as measurement devices or techniques, that would generate new data. They do not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information ... by itself does not transform the otherwise-abstract processes. . . . Indeed, the essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101.");In re Morinville, 767 F.App'x 964, 969 (Fed. Cir. 2019) (rejecting arguments that "automatically" generating information is inventive concept, despite lack of prior art teaching automatic version of process). Thus, for many of the same reasons identified in the Step 1 analysis, claims 1 and 21 also lack an inventive concept.

         Dependent claims 2 and 3 do not add an inventive concept. Claim 2 recites "placing ... a first [virtual] dental appliance on the tooth model," while claim 3 recites "interchanging the first dental appliance with a second dental appliance." These claims merely apply the "automatically placing" step from claim 1 to a tooth model. The Patent, however, teaches virtual orthodontics - including "representations of the teeth and [] orthodontic components such as brackets and wire" - is routine and conventional. '634 Patent, col. 1 11. 33-37. It is also the case that Plaintiff does not identify any specific inventive concept in claims 2 and 3.[5] (D.I. 16 at 15-16) The record the Court may look to does not provide a sufficient basis to hold that performing the conventional step of orienting virtual appliances for comparison and applying them to virtual tooth models is itself an inventive concept. See Evolutionary Intelligence LLC v. Sprint Nextel Corp., 677 F.App'x 679, 680 (Fed. Cir. 2017) ("Whether analyzed individually or as an ordered combination, the claims recite those conventional elements at too high a level of generality to constitute an inventive concept."). This reality supports the Court's conclusions.

         Dependent claim 4 does not provide an inventive concept. The claim recites "scanning a dental appliance to create the digital model." '634 Patent, cl. 4. Plaintiff does not identify any specific inventive concept in claim 4. (D.I. 16 at 15-16) Nor does the Patent treat the scanning feature as inventive; the specification describes several conventional processes for digitizing the appliance, '634 Patent, col. 2 11. ...

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