DENTAL MONITORING SAS, Plaintiff, v. ALIGN TECHNOLOGY, INC., Defendant.
No. C 22-07335 WHA
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
June 30, 2023
INTRODUCTION
In this patent infringement action, alleged infringer moves to dismiss patent owner‘s direct, willful, and indirect infringement claims. For the following reasons, the motion is GRANTED IN PART and DENIED IN PART.
STATEMENT
Patent owner Dental Monitoring SAS was founded in 2014 and provides “remote monitoring orthodontics, as well as visual and AI-powered orthodontics.” It seeks to eliminate time-consuming, costly, and unnecessary trips to the dentist by enabling patients to photograph their own mouths with their smartphones and enabling dentists and orthodontists to accurately analyze those photographs. According to Dental Monitoring, its services and products can “identify well over 100 gingival or dental issues, as well as orthodontic-related clinical or treatment issues, such as patient compliance, occlusion problems, or failures with orthodontic equipment” (Compl. ¶ 9).
According to Dental Monitoring, the COVID-19 pandemic drove the need for remote monitoring to explode overnight, with patients, dentists, and orthodontists only wanting to go into an office if it was necessary. Alleged infringer Align Technology, Inc., a leader in the aligner space with its eponymous “Invisalign” products and a patent-owner in its own right, was purportedly “caught flat-footed” by this change. Dental Monitoring contends that Align executives had repeated meetings with Dental Monitoring executives to discuss potential future business relationships after the pandemic began but Align ultimately copied Dental Monitoring, “despite express reminders by Dental Monitoring‘s executives that its technological approaches and solutions were protected by a robust, world-wide patent portfolio” (Compl. ¶¶ 26–28).
In March 2020, Align launched its Invisalign Virtual Care platform, which required a patient to take photos of their teeth (with their aligner on and off) and submit them to their dentist or orthodontist through the My Invisalign app whenever that patient had an aligner change. In fall 2022, Align announced the launch of its Invisalign Virtual Care AI platform, which it claimed built on its existing platform by incorporating AI-assisted features that help dentists and orthodontists monitor treatment progress based on settings that they can customize
Align moves to dismiss Dental Monitoring‘s direct, willful, and indirect infringement claims under
ANALYSIS
To survive a motion to dismiss, a complaint must plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “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.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 570). At the pleading stage, a district court “accept[s] all factual allegations in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving party.” Knievel v. ESPN, 393 F.3d 1068, 1072 (9th Cir. 2005). A “legal conclusion couched as a factual allegation,” however, may be disregarded. Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 555).
1. DIRECT INFRINGEMENT.
According to Align, Dental Monitoring‘s allegations of direct infringement fail because (A) the asserted method claims do not result in a product that is made by a patented process, as required for direct infringement under
A. SECTION 271(g).
Section 271(g) provides that “[w]hoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process
Consider claim 1 of the ‘409 patent (‘409 patent 32:13–33). It is directed to a method that results in the “sending of an information message” about an acquired image that may guide the operator to acquire another image (id. at 32:24). In other words, it is not directed to the acquired images themselves, or to the acquisition of such images, but to the sending of an information message “to check whether the analysis image respects the setpoint” (id. at 32:31). Courts have long recognized that the mere transmission of information is not cognizable under
Even assuming the claimed method does not merely send but “create[s]” an information message (Compl. ¶ 51), such a message is akin to the sort of digital information that the Federal Circuit has held is not a manufactured, physical product under
In its opposition, Dental Monitoring points to several cases in which district courts have held
In CNET, the district court noted that “while practicing each step of the [] method in Bayer did not lead to the creation of a drug, practicing each step of the method in this case le[d] directly to the creation of a catalog.” 528 F. Supp. 2d at 993. Meanwhile, the district court in Ormco found that practicing each step of the method in that case led directly to the creation of a 3D model of teeth. 609 F. Supp. 2d at 1076. Practicing each step of the claimed methods of the patents-in-suit, however, leads only to abstract information — the “information message,” “value for an image attribute,” and “score” — not to the software products that the value of the patents is derived from, which use this information to analyze images and assist dental professionals. As observed in CNET, “[w]hen passing [S]ection 271(g), Congress was concerned about patented processes whose commercial value is derived from the sale of the resulting product.” 528 F. Supp. 2d at 995 (citing Process Patents: Hearing Before the
CNET also emphasized that “the electronic catalog in this case, far from being abstract information or knowledge, is a physical article no different from a product catalog manufactured and assembled on paper bound with stitching, glue or staples.” 528 F. Supp. 2d at 994. Likewise, the court in Ormco commented that the “3D digital model of teeth is similar to a plaster or plastic model of teeth.” 609 F. Supp. 2d at 1076 n.19. Here, there are no such physical articles. The “information message,” “value for an image attribute,” and “score” have no physical counterparts, a tell-tale sign of their abstractness.
Because Dental Monitoring has not plausibly pled direct infringement under
B. SECTION 271(a).
Turning to direct infringement under
This order finds that Dental Monitoring has not plausibly pled that Align itself carries out the claimed method steps commercially. As Align observes, the complaint makes clear that Dental Monitoring‘s theory of infringement is premised on the fact that the patient takes photos of their own teeth when using the Invisalign Virtual Care AI platform, and that Align does not take these photos (Reply Br. 5 (citing Compl. ¶¶ 32–37)). The only suggestion to the contrary is a conclusory statement Dental Monitoring points to from the complaint that “the Align App and/or patient must capture various images” (Compl. ¶ 39). But the statement is itself insufficient to support the theory that Align itself carries out all of the claimed method steps in its day-to-day operations, particularly in light of the complaint‘s countervailing language. Cf. Sentius Int‘l, LLC v. Apple Inc., 2020 WL 2850286, at *4 (N.D. Cal. June 2, 2020) (Judge Yvonne Gonzalez Rogers) (“Devices do not use a method for purposes of patent infringement — people do.“).
Dental Monitoring has plausibly pled that Align itself carries out the claimed method steps in testing, however. Here, unlike in the case that Align cites in support of its arguments, the testing-based allegations were raised in the first instance with respect to each patent-in-suit, and the discussion of infringement was not directed solely toward exclusively post-testing usage (see Reply Br. 6 (citing De La Vega v. Microsoft Corp., 2020 WL 3528411, at *4–5
Additionally, Dental Monitoring has (more) plausibly alleged that the claimed method steps may be performed by patients who it directs and controls. As highlighted in Dental Monitoring‘s opposition, Align requires patients seeking to use and receive the benefit of the Invisalign Virtual Care AI platform to download its app and capture images for analysis (Opp. 12–13 (citing Compl. ¶¶ 30–37)). Moreover, Align establishes the manner and timing of the patients’ performance, letting them know when it is time to take the next set of pictures for analysis, even going so far as to tell them how to orient their teeth to capture the images necessary for assessment of their treatment progress, with instructions like “Aligners ON, Bite OPEN, Look RIGHT,” and “Aligners OFF, Bite CLOSE, Look STRAIGHT” (Opp. 13 (quoting Compl. ¶¶ 38–40)).
Align argues that nothing in the complaint indicates that receiving an Invisalign aligner is conditioned on performing method steps related to the “optional add-on features” of the Virtual Care AI platform (Reply Br. 7–8). But the benefit offered by the Virtual Care AI platform is not receipt of an aligner, it is improved orthodontic treatment. Taking photos in the app is not a prerequisite to receiving Invisalign treatment, but it is a prerequisite to receiving the benefits of the Virtual Care AI platform and its improvements. In order to receive the benefits of the Virtual Care AI platform and its improvements, a patient must use the app and follow its instructions. That the Virtual Care AI platform is not available to some dentists and orthodontists does not mean that such improved treatment is not conditioned upon performing these steps, as Align suggests (Reply Br. 8).
Because Dental Monitoring has plausibly pled direct infringement under
Separately, Align contends that Dental Monitoring‘s complaint fails to allege a plausible factual basis that Align practices the material claim elements, downplaying the required pleading standard (Br. 17–19). Dental Monitoring responds that Align wants too much. This order agrees with Dental Monitoring here.
Align is correct that “a plaintiff cannot assert a plausible claim for infringement under the Iqbal/Twombly standard by reciting the claim elements and merely concluding that the accused product has those elements.” Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1353 (Fed. Cir. 2021). But a plaintiff is under no obligation to “prove its case at the pleading stage” and “plead infringement on an element-by-element basis.” Id. at 1352, 1356 (internal quotation and citations omitted). Dental Monitoring is only required to provide “a plausible ‘short and plain’ statement of [its] claim, showing that [it] is entitled to relief,” and it has done so. Id. at 1352 (quoting Skinner v. Switzer, 562 U.S. 521, 530 (2011)). In its complaint, Dental Monitoring provides a step-by-step recitation of how the accused platform functions (Compl. ¶¶ 29–43). It then proceeds to zero in on one claim from each asserted patent and explain, with cross references, how each of the limitations is met using the accused platform (Compl. ¶¶ 46, 57, 68).
According to Align, “in an age where every company claims to be using AI and has its own definition of AI, these nondescript terms” like “neural network” and “AI platform” used in Dental Monitoring‘s complaint “fall far short of alleging that Align practices the material claim limitations” (Reply Br. 10; see also Br. 17–19). This order is sympathetic to the underlying concern. That said, Dental Monitoring‘s position is that it could not supply more detail when information about how Align‘s Virtual Care AI platform works is only within the possession of Align (Opp. 14). Dental Monitoring describes the accused platform in sufficient detail to reach discovery.
Because Dental Monitoring has plausibly pled that Align practices the material claim elements, Align‘s motion with respect to pleading direct infringement under the Iqbal/Twombly standard is DENIED.
To establish willful infringement under
As made clear in the briefing and at the hearing, both sides are familiar with the Court‘s relevant prior orders and the need for a notice letter in almost all circumstances (see Br. 22–23; Opp. 20 n. 4). See also Sonos, 591 F. Supp. 3d at 644; Splunk Inc. v. Cribl, Inc., 2023 WL 2562875, at *3 (N.D. Cal. Mar. 17, 2023). The undersigned is of the view that the filing of a complaint cannot, standing alone, serve as notice for purposes of willful and indirect infringement. According to Dental Monitoring, however, it is not arguing that its complaint alone gave notice but that “the Complaint, coupled with the extensive allegations relating to pre-suit knowledge that were lacking in Sonos, [] supports a claim for [willful and] indirect infringement here” (Opp. 20 n.4). In its requested supplemental briefing, Dental Monitoring explains that “[s]ince 2015, the parties have had at least forty in-person or virtual meetings and exchanged dozens of emails,” and that “[t]hroughout 2022 — well after the asserted patents issued and before this suit was filed — top executives of the parties had multiple meetings and conversations during which they discussed [Dental Monitoring]‘s AI-assisted products and its patent portfolio” (Supp. Br. 1–2).
Dental Monitoring asserts that the point of these meetings was to mine Dental Monitoring for information because Align recognized that it was behind the market on remote dental monitoring solutions (Opp. 21). Time will tell if it is true. Yet assuming it is true, that Align was aware that Dental Monitoring had a patent portfolio and that Align opted to poach Dental Monitoring‘s ideas in no way shows that Align pored over Dental Monitoring‘s patents, learned about the three patents-in-suit, and opted to infringe them. Likewise, that Align elected not to pore over Dental Monitoring‘s patents in allegedly poaching its technology does not constitute willful blindness. Align would not be expected to closely review Dental Monitoring‘s portfolio under such circumstances.
At the hearing, counsel for Dental Monitoring suggested that the relatively small number patents in Dental Monitoring‘s portfolio means that a sophisticated player like Align would have known that the poached technology was patented (see also Opp. 17–18). Moreover, according to Dental Monitoring, the fact that many of its 200 patents had yet to issue is immaterial because the patents-in-suit had issued by 2022, before several rounds of meetings between the parties’ executives took place (Supp. Br. 1–3). Still, that does not show Align knew of these three specific patents and their infringement. Dental Monitoring appears to want the Court to draw a line for how few patents in a portfolio are required to assume that a sophisticated party reviewed them for the purpose of showing knowledge. The Court declines to do so. Dental Monitoring was prompt to file this complaint after Align announced the
There is one line in Dental Monitoring‘s supplemental briefing that gave the Court pause, however. According to Dental Monitoring, “Align currently owns 971 U.S. patents, and has 1,344 pending U.S. patent applications, and certain [Dental Monitoring] patents have been cited during their prosecution” (Supp. Br. 4). Dental Monitoring does not say whether these Dental Monitoring patents included the patents-in-suit. It is unclear whether its silence on this point reflects that it did not do sufficient research or that it did not like what its research uncovered. If Dental Monitoring seeks leave to amend its complaint, perhaps it will address the issue.
This order reiterates that sending a notice letter is an easy, cost-effective way to establish knowledge and to avoid leaving all of this to guesswork. The practice of establishing knowledge using a letter that calls out the claims and the alleged infringement should be encouraged to give an alleged infringer a meaningful opportunity to cease infringement or get a license before litigation begins. Such a letter may provoke a declaratory relief suit in a district of the alleged infringer‘s choosing, but this does not excuse failure to send one.
In sum, Dental Monitoring‘s allegations are insufficient to plead knowledge, as required for willful and indirect infringement. The motion to dismiss as to Dental Monitoring‘s willful and indirect infringement claims is therefore GRANTED.
CONCLUSION
For the foregoing reasons, Align‘s motion to dismiss is GRANTED IN PART and DENIED IN PART. Specifically, the motion as to direct infringement under
Dental Monitoring may move for leave to amend its complaint. Such motion must be filed within FOURTEEN DAYS and include as an exhibit a redlined version of the proposed amendment that clearly identifies all changes. This order highlights certain deficiencies, and
The initial case management conference is hereby specially set for JULY 14, 2023, at 1:00 P.M. The parties should come prepared to discuss the application of the “patent showdown” procedure to this action (see Dkt. No. 16).
IT IS SO ORDERED.
Dated: June 30, 2023.
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE