Dental Monitoring SAS v. Align Technology, Inc.

Background

Dental Monitoring SAS brought a patent-infringement action against Align Technology, Inc. The complaint asserted direct infringement under 35 U.S.C. §§ 271(a) and 271(g), indirect infringement under §§ 271(b) and 271(c), and willful infringement under § 284. The patents-in-suit are U.S. Patent Nos. 10,755,409; 11,049,248; and 11,109,945.

Dental Monitoring alleged that Align’s Invisalign Virtual Care and Invisalign Virtual Care AI platforms used patented methods involving patient photographs, image analysis, artificial-intelligence features, and evaluation of orthodontic aligners. Align moved under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not adequately state a claim.

Direct Infringement Under Section 271(g)

The court granted Align’s motion as to direct infringement under Section 271(g). That provision applies when a patented process produces a physical product. The court concluded that the asserted methods produced only abstract information—an information message, a value for an image attribute, or a score—not a manufactured physical article. The court distinguished cases involving an electronic catalog or a three-dimensional digital model of teeth, which had physical or tangible embodiments.

Direct Infringement Under Section 271(a)

The court denied Align’s motion as to direct infringement under Section 271(a). For a patented method to be directly infringed under that provision, all steps generally must be performed by, or attributable to, one entity. Dental Monitoring did not plausibly allege that Align itself performed all the claimed steps in its ordinary commercial operations because the complaint indicated that patients took the photographs. But the court found two adequate theories at the pleading stage.

First, Dental Monitoring plausibly alleged that Align performed the claimed steps during testing. The court noted that Dental Monitoring would need additional evidence to survive a later summary-judgment motion and could not recover damages for post-testing infringement based on testing-based infringement. Second, Dental Monitoring plausibly alleged that Align directed and controlled patients’ performance of the steps by requiring them to use the application, take photographs, and follow instructions about when and how to take them in order to receive the platform’s benefits.

The court also rejected Align’s argument that Dental Monitoring had not provided enough detail about how the accused platform practiced the patent claims. The complaint described how the platform worked and connected those functions to claim limitations. The court held that the complaint provided enough factual detail to proceed to discovery, even though Dental Monitoring was not required to prove its case at the pleading stage.

Willful and Indirect Infringement

The court granted Align’s motion as to willful infringement under Section 284 and indirect infringement under Sections 271(b) and 271(c). Those theories require plausible allegations that Align knew of the specific patents and knew that its conduct infringed them.

Dental Monitoring alleged that the companies’ executives had numerous meetings and communications, that Dental Monitoring had reminded Align of its patent portfolio, and that the parties discussed Dental Monitoring’s artificial-intelligence products. The court held that knowledge of a patent portfolio did not establish knowledge of the three patents-in-suit or knowledge of infringement. It also held that the complaint itself could not, standing alone, provide the required notice. The court noted that an unclear allegation about Align patents citing Dental Monitoring patents might be addressed if Dental Monitoring sought permission to amend.

Disposition

The court’s conclusion states that Align’s motion to dismiss was granted in part and denied in part. Specifically, the motion was granted as to direct infringement under Section 271(g), willful infringement under Section 284, and indirect infringement under Sections 271(b) and 271(c). The motion was denied as to direct infringement under Section 271(a). Align’s answer was due in fourteen days, and Dental Monitoring could move for leave to amend within fourteen days. The order also set an initial case-management conference for July 14, 2023.