Case 3:22-cv-07335-WHA Document 59 Filed 07/19/23 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`DENTAL MONITORING SAS,
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`Plaintiff,
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`v.
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`ALIGN TECHNOLOGY, INC.,
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`Defendant.
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`No. C 22-07335 WHA
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`ORDER DENYING SECOND
`MOTION TO DISMISS
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`Two weeks ago or so, an order granted in part and denied in part Align’s motion to
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`dismiss under Rule 12(b)(6) (Dkt. No. 49). Specifically, that order granted the motion as to
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`direct patent infringement under 35 U.S.C. Section 271(g), willful patent infringement under
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`Section 284, and indirect patent infringement under Sections 271(b) and 271(c). It denied the
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`motion as to direct patent infringement under Section 271(a) and ordered an answer within
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`fourteen days.
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`Very early in the morning last Friday, fourteen days later, Align filed an answer
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`(72 pages with 594 pages of exhibits) that, inter alia, asserted its own patents against Dental
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`Monitoring (Dkt. No. 54). What’s more, a few hours earlier, Align filed yet another motion to
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`dismiss (29 pages with 216 pages of exhibits) (Dkt. No. 53). This one was based on 35 U.S.C.
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`Section 101 and brought under Rule 12(b)(6) or, in the alternative, Rule 12(c) as a motion for
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`judgment on the pleadings. Both filings were briefly discussed at the initial case management
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`conference, which was held some hours thereafter.
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`Northern District of California
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`United States District Court
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`Case 3:22-cv-07335-WHA Document 59 Filed 07/19/23 Page 2 of 4
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`At the initial case management conference, the judge stated that Align should have
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`brought its Section 101 arguments in its first motion to dismiss, and that its second motion to
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`dismiss would likely be denied without prejudice to raising these arguments in a summary
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`judgment motion. Having now had an opportunity to meaningfully review Align’s filings, the
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`judge stands by this assessment. The motion is therefore DENIED. Still, some commentary is
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`in order.
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`Align explains that it “brings the present motion after having a sufficient opportunity to
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`develop its [Section] 101 defense” (Br. 22). Surely Align had sufficient opportunity to develop
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`this defense before filing its first motion to dismiss, however. It simply chose to move on
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`different grounds. After a lot of work, a prior order carefully evaluated those grounds and
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`dismissed all willful and indirect infringement claims, and some direct infringement claims.
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`But that order allowed other direct infringement claims to go forward, so Align has “movant’s
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`remorse,” which is not itself actionable.
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`As Align recognizes, Rule 12(g)(2) places limits on the filing of a successive motion
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`under Rule 12(b)(6) (see Br. 21). Specifically, “Rule 12(g)(2) provides that a defendant who
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`fails to assert a failure-to-state-a-claim defense in a pre-answer Rule 12 motion cannot assert
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`that defense in a later pre-answer motion under Rule 12(b)(6)[.]” In re Apple iPhone Antitrust
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`Litig., 846 F.3d 313, 318 (9th Cir. 2017), aff’d sub nom. Apple Inc. v. Pepper, 139 S. Ct. 1514
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`(2019). Nevertheless, Align requests that this Court exercise its discretion to consider its
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`second pre-answer motion under Rule 12(b)(6), emphasizing that our court of appeals “read[s]
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`Rule 12(g)(2) in light of the general policy of the Federal Rules of Civil Procedure, expressed
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`in Rule 1” (Br. 21 (quoting ibid.)).
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`Rule 1 states that the Federal Rules “should be construed, administered, and employed by
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`the court and the parties to secure the just, speedy, and inexpensive determination of every
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`action and proceeding.” Yet securing such a determination of this action and proceeding
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`requires us to push forward as planned. Note that Align’s first motion to dismiss narrowed the
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`case, and our “patent showdown” procedure will soon narrow it further — if not settle it
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`entirely. The prior order instructed the parties to “come prepared to discuss the application of
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`Northern District of California
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`United States District Court
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`Case 3:22-cv-07335-WHA Document 59 Filed 07/19/23 Page 3 of 4
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`the ‘patent showdown’ procedure to this action” at the initial case management conference,
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`where tight deadlines for the patent showdown round of summary judgment were set (Dkt.
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`No. 49 at 13 (citing Dkt. No. 16); Dkt. No. 56). That Align proceeded to file a second motion
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`to dismiss mere hours before the initial case management conference reflects a gratuitous
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`attempt to ventilate its Section 101 defense separately, with an additional bite at the apple.
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`This would be unfair to Dental Monitoring (not to mention the Court).
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`Moreover, these circumstances are unlike those that Align points to in which our court of
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`appeals has found a subsequent Rule 12(b)(6) motion appropriate. See In re Apple iPhone
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`Antitrust Litig., 846 F.3d at 318–19 (citing Allstate Ins. Co. v. Countrywide Fin. Corp., 824 F.
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`Supp. 2d 1164, 1175 (C.D. Cal. 2011) (Judge Mariana R. Pfaelzer)). In Allstate, the answer
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`had yet to be filed and the subsequent Rule 12(b)(6) motions had already been briefed. As
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`such, it did not make sense to wait for the filing of the answer and then the filing of a
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`Rule 12(c) motion to address the same issues. In this action, however, Align has filed its
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`answer asserting its Section 101 defense, and the only briefing that has been undertaken on this
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`defense is the present motion (filed a few hours beforehand). Completing the briefing of this
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`motion, hearing it, and ruling on it would still take several weeks at a minimum. “Rule 12(g)
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`is designed to avoid repetitive motion practice, delay, and ambush tactics.” Id. at 318.
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`Entertaining this motion would only facilitate repetitive motion practice, delay, and ambush
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`tactics here.
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`In the alternative, Align asserts that the motion can be addressed under Rule 12(c). Rule
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`12(c) provides that “[a]fter the pleadings are closed — but early enough not to delay trial — a
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`party may move for judgment on the pleadings.” According to Align, “[c]oncurrently with this
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`motion, [it] has answered [Dental Monitoring’s] complaint” and “[a]lthough Align has asserted
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`counterclaims to which [Dental Monitoring] has yet to respond, the pleadings are now closed
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`with respect to [Dental Monitoring’s] complaint,” as required (Br. 22). Yet Align’s motion
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`was actually filed several hours before Align’s answer. And, again, the prior order had already
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`set a course for efficiently resolving this action.
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`3
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`Northern District of California
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`United States District Court
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`Case 3:22-cv-07335-WHA Document 59 Filed 07/19/23 Page 4 of 4
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`As stated on the record, Align is free to move for summary judgment based on its Section
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`101 arguments during the patent showdown. (Indeed, the 216 pages of exhibits suggest that
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`this may be a better fit for summary judgment anyway.) But Align will not be allowed to
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`initiate separate, additional motion practice on this issue.
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`IT IS SO ORDERED.
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`Dated: July 19, 2023.
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`WILLIAM ALSUP
`UNITED STATES DISTRICT JUDGE
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