Administrative Law Judge MaryJoan McNamara of the US International Trade Commission (ITC) has issued an Initial Determination regarding her investigation of 3Shape’s infringement of Align Technology’s patents.
In her ruling, McNamara determined that 3Shape infringes seven of the nine patent claims that Align asserted. She also found six of the nine claims valid as well as a violation of Section 337 stemming from 3Shape’s infringement of four claims in two of Align’s asserted patents.
McNamara then recommended an exclusion order and cease and desist order be entered against 3Shape’s unlawful importation.
“We are pleased that the Initial Determination confirms the intellectual property rights we asserted against 3Shape,” said Julie Coletti, Align Technology senior vice president, chief legal and regulatory officer.
“Our continuing investment in innovation enables technologies and products that help our doctor customers and their patients. We remain committed to protecting this investment and preventing the unauthorized use of our intellectual property as part of our global strategy,” said Coletti.
The Initial Determination is now subject to review by the ITC Commissioners. Align and 3Shape may file a contingent petition for review of any findings they believe are incorrect. The Commission then will decide whether to review portions of or the entire Initial Determination.
The claims filed by Align in the US District Court in Delaware alleging infringement of the same patients remain stayed pending the Final Determination and any related appeals. Align intends to pursue damages and permanent injunctions in the US District Court. Furthermore, Align has asserted an additional 26 patents against 3Shape in six US District Court cases.
McNamara also sent a favorable Notice of Initial Determination to 3Shape regarding its TRIOS intraoral scanner. She found that 3Shape did not commit any unfair acts in connection with the 3Shape TRIOS scanner as asserted by Align, ruling that there was no violation of the patents asserted against the TRIOS scanner. Thus, 3Shape said it will continue to sell, supply, and service TRIOS scanners in the United States.
“We are pleased that Judge McNamara rejects Align’s claim that the TRIOS scanner infringes any valid Align patents, like Judge Lord and Judge Cheney did in the two previous ITC cases launched by Align. Further, Judge McNamara found that one of the patents asserted by Align against TRIOS application software was invalid,” said Tais Clausen, co-CEO and cofounder of 3Shape.
“This is a victory for innovation and the many dental professionals who every day apply innovative dental solutions to provide better dental care for their patients. We are confident that the ITC will follow Judge McNamara’s Initial Determination regarding the TRIOS scanner and its application software at issue,” said Clausen.
In her ruling, McNamara reached an Initial Determination that certain claims of two other patents asserted against certain 3-D model alignment methods when comparing a scan to a Virtual Ortho setup as well as certain specific methods to align two 3-D models in 3Shape’s Compare Model Sets ortho software module were infringed. 3Shape will seek the ITC’s review of this holding.