United States District Court, D. Delaware
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE
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
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.
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
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.
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
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.
1. While the parties' arguments predominantly
focus on claim l, 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.
repeatedly stresses that the "mapping"
limitation 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. 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 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.
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
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").
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.
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
(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.
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. ...