Dental Monitoring SAS v. Align Technology, Inc.
- William Alsup
- 3:22-cv-07335
- U.S. District Court · Northern District of California
- 4
In Dental Monitoring v. Align, Judge Alsup denied Align’s second motion to dismiss, leaving Section 101 arguments for possible summary judgment.
Dental Monitoring SAS and Align Technology, Inc.; Align’s second motion was denied, while its Section 101 arguments may be raised in the scheduled summary-judgment proceedings.
What happened
Dental Monitoring SAS sued Align Technology, Inc. over patent infringement. A prior order dismissed some claims but allowed direct-infringement claims under 35 U.S.C. § 271(a) to continue.
Align filed a second motion seeking dismissal under Section 101, or judgment based on the pleadings. The court said Align should have raised those arguments in its first motion and that another motion would cause repetitive litigation and delay.
Judge William Alsup denied the second motion. He said Align may raise its Section 101 arguments in the scheduled summary-judgment proceedings, but may not start separate additional motion practice on that issue.
The detailed version
- Dental Monitoring SAS v. Align Technology, Inc. · No. 3:22-cv-07335
- William Alsup
- July 19, 2023
Background
Dental Monitoring brought patent-infringement claims against Align. In an earlier order, the court granted in part and denied in part Align’s first motion to dismiss under Rule 12(b)(6), which tests whether a complaint states a legally sufficient claim. The court dismissed claims for direct infringement under 35 U.S.C. § 271(g), willful infringement under § 284, and indirect infringement under §§ 271(b) and 271(c). It denied the motion as to direct infringement under § 271(a) and ordered Align to answer.
Align then filed its answer, which asserted patents against Dental Monitoring, and filed a second motion to dismiss. The second motion relied on 35 U.S.C. § 101 and sought dismissal under Rule 12(b)(6), or alternatively judgment on the pleadings under Rule 12(c).
Court’s reasoning
The court had previously told Align that it should have raised its Section 101 arguments in its first motion to dismiss. The court concluded that Align had sufficient opportunity to develop those arguments earlier but chose to proceed on different grounds. The court also relied on Rule 12(g)(2), which generally limits a defendant from bringing a later pre-answer motion based on a failure-to-state-a-claim defense that could have been raised in an earlier Rule 12 motion.
The court rejected Align’s request to consider the second motion anyway under the general policy favoring just, speedy, and inexpensive litigation. It found that the case already had an established schedule for a patent-summary-judgment process and that separately briefing, hearing, and deciding the second motion would promote repetitive motion practice, delay, and ambush tactics. The court also concluded that Rule 12(c) did not cure the problem because Align filed the motion several hours before filing its answer.
Disposition
Judge William Alsup denied Align’s second motion to dismiss. The order did not decide the merits of Align’s Section 101 arguments. Instead, it stated that Align was free to present those arguments in a summary-judgment motion during the scheduled patent proceedings, but could not initiate separate additional motion practice on the issue.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.