Case 6:20-cv-00979-ADA Document 189 Filed 02/04/22 Page 1 of 104
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`ALIGN TECHNOLOGY, INC.,
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` Plaintiff and Counterclaim
`Defendant,
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`v.
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`3SHAPE A/S and 3SHAPE TRIOS A/S
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` Defendants and
`Counterclaimants.
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`C.A. No. 6:20-cv-00979-ADA
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`JURY TRIAL DEMANDED
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`PUBLIC VERSION
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`ALIGN TECHNOLOGY, INC.’S PARTIAL ANSWER AND AFFIRMATIVE DEFENSES
`TO CERTAIN SECOND AMENDED COUNTERCLAIMS AND
`COUNTERCLAIMS-IN-REPLY
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`Plaintiff Align Technology, Inc. (“Align”), by and through its counsel of record, demands
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`trial by jury on all counterclaims so triable, and hereby answers and provides affirmative defenses to
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`certain amended “contingent” counterclaims filed by Defendants 3Shape A/S and 3Shape Trios
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`A/S (collectively, “3Shape”) on January 7, 2022. (Dkt. No. 179, Defendants 3Shape Trios A/S and
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`3Shape A/S’s Second Amended Contingent Answer, Affirmative Defenses, and Counterclaims
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`(“Second Amended Counterclaims” or “Counterclaims”).)
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`By 3Shape’s own admission, its January 7, 2022 filing was merely “contingent” and therefore
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`has no force or effect. As a result, no response is required at this time. However, out of an
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`abundance of caution, Align is filing both this partial Answer along with motions to dismiss several
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`of 3Shape’s Amended Contingent Counterclaims. This partial Answer relates only to those certain
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`counterclaims that are not covered by Align’s motions to dismiss. Align reserves the right to amend
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`this partial Answer once the Court has ruled on the pending motions to dismiss.
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`Case 6:20-cv-00979-ADA Document 189 Filed 02/04/22 Page 2 of 104
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`In addition to this Partial Answer, Align also hereby files Counterclaims-in-Reply, pursuant
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`to Rules 7 and 13 of the Federal Rules of Civil Procedure. See Med. Components, Inc. v. Osiris Med., Inc.,
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`EP-15-CV-305-PRM, 2016 WL 7638155, at *3 (W.D. Tex. July 12, 2016) (“A counterclaim-in-reply is
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`a permissible pleading when it is a compulsory reply to a permissive counterclaim.”) (citation and
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`quotation marks omitted).
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`ANSWER TO COUNTERCLAIMS
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`Any allegations of the Counterclaims not specifically admitted are denied.
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`PARTIES
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`1.
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`Counterclaim-Plaintiff 3Shape A/S (“3Shape A/S”) is a Danish corporation with a
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`principal place of business at Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`ANSWER: Align admits on information and belief that 3Shape A/S is a Danish
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`corporation with a principal place of business at Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`2.
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`Counterclaim-Plaintiff 3Shape Trios A/S (“3Shape Trios A/S”) is a Danish
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`corporation with a principal place of business at Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`ANSWER: Align admits on information and belief that 3Shape Trios A/S is a Danish
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`corporation with a principal place of business at Holmens Kanal 7, 1060 Copenhagen K, Denmark.
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`3.
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`3Shape A/S is the owner by assignment of the entire right, title and interest in and
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`to U.S. Patent No. 10,905,333 (the “’333 patent”) entitled, “3D intraoral scanner measuring
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`fluorescence,” a copy of which is attached hereto as Exhibit 4.
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`ANSWER: Align admits that U.S. Patent No. 10,905,333 is entitled “3D intraoral scanner
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`measuring fluorescence” and that a copy is attached as Exhibit 4 to 3Shape’s Amended Contingent
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`Counterclaims. Align denies the remainder of the allegations in this paragraph.
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`4.
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`3Shape A/S is the owner by assignment of the entire right, title and interest in and
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`to U.S. Patent No. 10,383,711 (the “’711 patent”) entitled, “Focus scanning apparatus recording
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`color,” a copy of which is attached hereto as Exhibit 5.
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`ANSWER: Align admits that U.S. Patent No. 10,383,711 is entitled “Focus Scanning
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`Apparatus Recording Color” and that a copy is attached as Exhibit 5 to 3Shape’s Amended
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`Contingent Counterclaims. Align denies the remainder of the allegations in this paragraph.
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`5.
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`3Shape A/S is the owner by assignment of the entire right, title and interest in and
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`to U.S. Patent No. 10,097,815 (the “’815 patent”) entitled, “Focus scanning apparatus,” a copy of
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`which is attached hereto as Exhibit 6.
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`ANSWER: Align admits that U.S. Patent No. 10,097,815 is entitled “Focus Scanning
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`Apparatus” and that a copy is attached as Exhibit 6 to 3Shape’s Amended Contingent
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`Counterclaims. Align denies the remainder of the allegations in this paragraph.
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`6.
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`3Shape A/S is the owner by assignment of the entire right, title and interest in and
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`to U.S. Patent No. RE48,221 (the “’221 patent”) entitled, “System with 3D user interface
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`integration,” a copy of which is attached hereto as Exhibit 7.
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`ANSWER: Align admits that U.S. Patent No. RE48,221 is entitled “System with 3D User
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`Interface Integration” and that a copy is attached as Exhibit 7 to 3Shape’s Amended Contingent
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`Counterclaims. Align denies the remainder of the allegations in this paragraph.
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`7.
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`3Shape markets and sells industry-leading Trios intraoral scanners, including, in the
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`United States, Trios 3 and Trios 4 (collectively with their predecessors, Trios and Trios Color,
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`“Trios”).
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`ANSWER: Align admits on information and belief that 3Shape has marketed and sold
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`intraoral scanners under the brand name TRIOS® in the United States. Align denies the remaining
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`allegations of this paragraph.
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`8.
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`The Trios scanners incorporate embodiments of the claimed technologies in the
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`’711, ’815, ’221, and ’333 patents (collectively, the “Asserted Counterclaim Patents”).
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`ANSWER: Denied.
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`9.
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`On information and belief, Align is a Delaware corporation with its principal place
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`of business in San Jose, California.
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`ANSWER: Align admits that it is a United States corporation organized and existing
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`under the laws of Delaware and located in Tempe, Arizona. Align denies the remaining allegations
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`of this paragraph.
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`10.
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`On information and belief, Align makes, uses, sells and offers for sale in the United
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`States and/or imports into the United States, the iTero Element, Element 2, Element Flex, Element
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`5D, Element 5D Plus, Element 5D Plus Lite, and Element Foundation (collectively, the “iTero
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`Element” or “iTero Element Scanners,”, all of which comprise at least a handheld intraoral 3D
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`scanner/wand and a base unit including a PC.
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`ANSWER: Align admits it uses, sells and offers for sale in the United States and/or
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`imports into the United States products called the “iTero Element,” “iTero Element 2,” “iTero
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`Element Flex,” “iTero Element 5D,” “iTero Element 5D Plus,” “iTero Element 5D Plus Lite,” and
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`“iTero Element Foundation.” Align denies the remainder of the allegations in this paragraph.
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`11.
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`3Shape’s Trios and Align’s iTero Element scanners compete against each other in, at
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`least, the market for scanners for orthodontic treatment.
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`ANSWER: Align admits that it is a competitor of 3Shape’s in the field of intraoral
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`scanners. Align denies the remainder of the allegations in this paragraph.
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`JURISDICTION AND VENUE
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`12.
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`3Shape’s contingent counterclaims arise under the Patent Laws of the United States,
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`35 U.S.C. § 1 et seq., the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, the Lanham Act, 15
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`U.S.C. § 1125, and state laws.
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`ANSWER: This paragraph contains legal conclusions to which no response is required.
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`To the extent any response is required, Align admits that 3Shape purports to bring its contingent
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`counterclaims under the patent laws of the United States, pursuant to Title 35 of the United States
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`Code. To the extent there are any remaining allegations in this paragraph not addressed by the
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`foregoing, Align denies them.
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`13.
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`This Court has original jurisdiction over the subject matter of 3Shape’s federal
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`question counterclaims pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
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`ANSWER: This paragraph contains legal conclusions to which no response is required.
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`To the extent any response is required, Align admits that this Court has subject matter jurisdiction
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`over actions properly arising under 28 U.S.C. §§ 1331 and 1338(a), as well as 15 U.S.C. § 1121. To the
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`extent there are any remaining allegations in this paragraph, Align denies them.
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`14.
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`This Court has diversity jurisdiction over 3Shape’s federal and state law
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`counterclaims under 28 U.S.C. § 1332(a) because Align is a citizen of a U.S. state(s) and 3Shape is a
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`citizen of a foreign state, and the amount in controversy exceeds $75,000.
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`ANSWER: This paragraph contains legal conclusions to which no response is required.
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`To the extent any response is required, Align admits that this Court has subject matter jurisdiction
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`over actions properly arising under 28 U.S.C. §§ 1332(a). To the extent there are any remaining
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`allegations in this paragraph, Align denies them.
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`15.
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`This Court has supplemental jurisdiction over 3Shape’s counterclaims of business
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`disparagement, unjust enrichment, tortious interference with prospective business relations, tortious
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`interference with contractual relations, unfair competition, and fraudulent inducement pursuant to
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`28 U.S.C. § 1367.
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`ANSWER: This paragraph contains legal conclusions to which no response is required.
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`To the extent any response is required, Align denies that Court has supplemental jurisdiction over
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`3Shape’s counterclaims. To the extent there are any remaining allegations in this paragraph, Align
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`denies them.
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`16.
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`This Court has personal jurisdiction over Align because Align has purposefully
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`availed itself of the rights and privileges of this forum by bringing this civil action in this judicial
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`district.
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`ANSWER: This paragraph contains legal conclusions to which no response is required.
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`To the extent there are any remaining allegations in this paragraph not addressed by the foregoing,
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`Align denies them.
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`17.
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`On information and belief, and as further described herein, Align has infringed and
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`continues to infringe and/or contributorily infringe the Asserted Counterclaim Patents in Texas,
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`which has led to foreseeable harm and injury to 3Shape. On information and belief, Align derives
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`substantial revenue from the sale of infringing products distributed within Texas and/or expects or
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`should reasonably expect its actions to have consequences in Texas. In addition, on information and
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`belief, Align knowingly induces, and continues to knowingly induce, infringement of the Asserted
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`Counterclaim Patents within Texas by offering for sale, selling, and/or contracting with others to
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`market infringing products with the intent to facilitate infringing use of the products by others
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`within Texas and by creating and/or disseminating product information and other materials
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`providing instruction for infringing use.
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`ANSWER: Denied.
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`18.
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`Venue for these counterclaims is proper in this judicial district because Align brought
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`this civil action in this judicial district and pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b).
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`ANSWER: This paragraph contains legal conclusions to which no response is required.
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`To the extent there are any remaining allegations in this paragraph not addressed by the foregoing,
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`Align denies them.
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`FACTUAL BACKGROUND
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`Introduction
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` 3Shape is a pioneer developer of dental equipment and software for use by dental
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`A.
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`19.
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`professionals and laboratories since 2004. In particular, 3Shape markets and sells Trios, along with a
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`number of other dental hardware and software products.
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`ANSWER:
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` Align admits that 3Shape markets and sells intraoral scanners under the
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`brand name TRIOS®, as well as other dental hardware and software products. Align denies the
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`remainder of allegations in this paragraph.
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`20.
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`Trios has now been named the best intraoral scanner in the industry for eight years
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`in a row. Trios was also named the most accurate intraoral scanner in an independent American
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`Dental Association study.
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`ANSWER: Denied.
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`21.
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`Trios has numerous operational advantages for dental professionals as well. The
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`most important is that Trios is an open system scanner, integrated with many different providers of
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`restorative products and orthodontic treatments. Dental professionals can send scans directly from
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`Trios to any provider that accepts STL files, the open industry standard file format. Trios’s open
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`system provides patients and dental professionals freedom of choice and access to an open market
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`for dental and orthodontic treatments.
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`ANSWER: Denied.
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`22.
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`3Shape additionally develops, manufactures, and sells Dental System software for
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`dental laboratories, which is also an open system. Dental System offers restorative workflows and
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`enables dental labs to design, e.g., dental prosthetics. Dental System accepts scan files from Trios
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`and has accepted scan files from third party intraoral scanners, including Align’s iTero intraoral
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`scanners, since 2008. (See Ex. 8.)
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`ANSWER: Align admits that 3Shape develops, manufactures, and sells its Dental System
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`software for dental laboratories. Align denies the remainder of the allegations in this paragraph.
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`23.
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`In addition to manufacturing iTero Element, Align is the dominant producer of clear
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`aligners, with control of over 90 percent of the market – primarily under the Invisalign brand name.
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`Align earns well over a billion dollars per year selling its Invisalign clear aligner products at high
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`prices, with gross margins typically in excess of 75 percent.
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`ANSWER: Align admits it is engaged in the design, manufacture and marketing of
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`Invisalign® clear aligners and iTero® intraoral scanners and services for orthodontics, and
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`restorative and aesthetic dentistry. Align denies the remainder of the allegations in this paragraph.
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`24.
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`As Align has repeatedly emphasized, dental professionals require a fast and accurate
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`way to scan patients’ full mouths – the upper and lower jaws, teeth and bite – and to transfer that
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`scan to a clear aligner manufacturer. There are only two viable scanners for this purpose: 3Shape’s
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`Trios scanners and Align’s iTero Element scanners.
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`ANSWER: Align admits that dental professionals have expressed a desire for fast and
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`accurate intraoral scanning technology and that its products and services facilitate that need. Align
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`denies the remainder of allegations in this paragraph.
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`B.
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`25.
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`3Shape & Align’s Collaboration History
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`In December 2015, Align and 3Shape Trios A/S entered into a contract (“the
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`Scanner Agreement”), under which the parties worked together to build an interface so that dental
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`professionals could send Trios scans into Align’s Invisalign workflow.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`26.
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`Align entered into the Scanner Agreement to increase Invisalign sales, as Align’s
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`then-Chief Marketing Officer, Raphael Pascaud, testified under oath before the International Trade
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`Commission. Align also entered into the Scanner Agreement to access the broad group of dental
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`practitioners using 3Shape’s technologically superior Trios scanner.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`27.
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`Prior to execution of the Scanner Agreement, Align
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`. That would have meant that
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` 3Shape refused Align’s
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`but the parties nonetheless subsequently entered into the Scanner Agreement.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`28.
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`The terms of the Scanner Agreement required 3Shape to
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`3Shape actively
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`promoted Invisalign in accordance with the Scanner Agreement to Align’s benefit.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`29.
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`On or about April 28, 2016, Align announced that 3Shape’s Trios intraoral scanners
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`“will be available to use for Invisalign® case submissions upon completion of the final validation
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`process expected in Q4 this year.” At the same time, Align announced a collaborative agreement
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`with 3Shape “to enhance the existing STL export workflow with iTero® [including iTero Element]
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`scanners and laboratory partners using 3Shape Dental System™ Software which will enable
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`improved consistency for customers using the workflow.” (Ex. 9)
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`30.
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`Subsequent to entering the Scanner Agreement, 3Shape’s Trios users were enabled to
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`submit scans to initiate or continue Invisalign cases. Additionally, 3Shape worked to enhance its
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`Dental System software for the benefit of Align and/or Align’s iTero users. 3Shape’s Dental System
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`software already accepted STL files from Align’s iTero scanners prior to the Scanner Agreement and
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`continues to accept STL files from Align’s iTero scanners to this day. (See Ex. 8.)
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`31.
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`During this business relationship with 3Shape, Align’s Chief Executive Officer Joe
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`Hogan became increasingly concerned that an increase in the popularity of the Trios scanner among
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`dental professionals would lead to those dental professionals ordering clear aligners from Align’s
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`rivals instead of Invisalign.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`32.
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`At a meeting between the parties in November 2016,
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`33.
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`Throughout 2017, including at the International Dental Show in March 2017, Mr.
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`Pascaud continued to
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` 3Shape continued to refuse.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`C.
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`Termination of the Scanner Agreement & Align’s Initial Lawsuits Against
`3Shape
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`34.
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`On November 14, 2017, Align filed six patent infringement lawsuits alleging that
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`3Shape’s Trios intraoral scanners and Dental System software infringe Align’s patents. Four of these
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`lawsuits were filed in the District of Delaware and two were brought before the International Trade
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`Commission.1
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`35.
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`These lawsuits collectively involved twenty-six patents, including the ’433 patent and
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`family members of five other patents Align asserts in its Complaint here.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`1 See Align Tech. Inc. v. 3Shape A/S et al., C.A. No. 17-cv-01646-LPS (D. Del.) (the “1646 Action”);
`Align Tech. Inc. v. 3Shape A/S et al., C.A. No. 17-cv-01647-LPS (D. Del.) (the “1647 Action”); Align
`Tech. Inc. v. 3Shape A/S et al., 17-cv-01648-LPS (D. Del.) (the “1648 Action”); Align Tech. Inc. v.
`3Shape A/S et al., C.A. No. 17-cv-01649-LPS (D. Del.) (the “1649 Action”); Certain Intraoral Scanners
`and Related Hardware and Software, Inv. No. 337-TA-1090 (U.S.I.T.C.) (the “1090 Investigation”);
`Certain Color Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1091 (U.S.I.T.C.)
`(the “1091 Investigation”).
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`36.
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`The ITC found, after a full investigation and evidentiary hearing that 3Shape does
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`not infringe the ’433 patent. (See Ex. 1.) In fact, 3Shape was not found to infringe a single valid claim
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`of any Align patent in either the 1090 or 1091 Investigations.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`37.
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`Align accused 3Shape’s Trios intraoral scanners of infringement in the complaints in
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`all six of its November 14, 2017 lawsuits, including the 1090 and 1091 Investigations. In the
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`following two years, Align filed three additional patent infringement lawsuits in the District of
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`Delaware and a third investigation at the ITC.2 Align once again accused 3Shape’s Trios intraoral
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`scanners in all four of these complaints. And 3Shape once again prevailed at the ITC, this time in
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`the 1144 Investigation.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`38.
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`All told, the ITC and/or Patent Trial and Appeal Board have each determined that
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`family members of six of the seven patents asserted in the Complaint are invalid and/or not
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`infringed, as illustrated in the below chart. (See Exs. 1, 2, 3.)
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`2 See Align Tech. Inc. v. 3Shape A/S et al., C.A. No. 18-cv-01949-LPS (D. Del.) (the
`“1949 Action”); Align Tech. Inc. v. 3Shape A/S et al., C.A. No. 18-cv-01950-LPS (D. Del.) (the
`“1950 Action”); Align Tech. Inc. v. 3Shape A/S et al., C.A. No. 19-cv-2098-LPS (D. Del.) (the
`“2098 Action”); Certain Dental and Orthodontic Scanners and Software, Inv. No. 337-TA-1144
`(U.S.I.T.C.) (the “1144 Investigation”).
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`Case 6:20-cv-00979-ADA Document 189 Filed 02/04/22 Page 14 of 104
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`39.
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`A month after launching its initial six cases on November 14, 2017, Align announced
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`that it was unilaterally terminating the Scanner Agreement with 3Shape and closing the technical
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`interoperability between Trios and Invisalign for new cases in the U.S., effective January 17, 2018.
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`(Ex. 10.) Align followed through on its December 2017 press release, terminating the Scanner
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`Agreement and closing the Trios-Invisalign interface in 2018 (albeit after January 17), and therefore,
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`Trios scanners can no longer submit digital scans for Invisalign in the United States. (Ex. 12.) As a
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`result of Align terminating the Scanner Agreement and closing the interface, 3Shape lost numerous
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`Case 6:20-cv-00979-ADA Document 189 Filed 02/04/22 Page 15 of 104
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`Trios sales in the U.S. 3Shape was also required to unwind its contractually mandated active
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`promotion of Invisalign, to 3Shape’s detriment.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`40.
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`Although the Scanner Agreement extends beyond the United States and Align
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`unilaterally terminated the agreement in its entirety, Align only closed the Trios-Invisalign interface
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`in the United States. In the rest of the world, where Align has a materially lower clear aligner market
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`share, Align continues to accept scans from 3Shape Trios users despite its unilateral termination of
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`the Scanner Agreement.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`D.
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`41.
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`The December 2017 Emails
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`In December 2017, concurrent with its announcement that it would shortly
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`terminate the Scanner Agreement and Trios-Invisalign interface, Align disseminated iTero Element
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`promotional materials to Trios users who had submitted Invisalign cases digitally using a Trios
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`intraoral scanner while the Trios-Invisalign interface was open. (Exs. 11, 12, 13.)
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`Case 6:20-cv-00979-ADA Document 189 Filed 02/04/22 Page 16 of 104
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`42.
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`These promotional materials included a letter sent at least on December 18, 2017, to
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`multiple 3Shape Trios users.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`43.
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`Align’s December 18, 2017 letter stated that “[d]ue to 3Shape’s infringing conduct
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`and the resulting litigation, we terminated our Invisalign interoperability contract with 3Shape and
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`will no longer be able to accept digital scans for Invisalign treatment and/or retention cases from
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`Trios scanners in the United States effective January 17, 2018.”
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`44.
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`Align’s December 18, 2017 letter also included two offers:
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`First, eligible U.S. customers may purchase an iTero Element Scanner at the
`One-Time price of $14,999, which includes one-year subscription & services
`(list price $29,999) and a discount on Invisalign Full, Teen, and Assist PVS
`submitted cases through April 30, 2018.
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`Second, those eligible customers who choose not to purchase an iTero
`Element Scanner on the terms described above and who submitted at least
`one Invisalign Full, Teen, or Assist case using their TRIOS scanner on or
`after January 1, 2017 but before December 18, 2017 may elect to receive a
`discount on PVS submitted Invisalign clear aligner cases in 2018 through a
`PVS Offer. The details of this PVS Offer can be found on the Invisalign
`Doctor Site (IDS).
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`Case 6:20-cv-00979-ADA Document 189 Filed 02/04/22 Page 17 of 104
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`45.
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`On information and belief, Align’s December 18, 2017 letter was widely disseminated
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`to 3Shape Trios users in the United States.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`46.
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`As of December 18, 2017, the date of Align’s letter, 3Shape had never been found to
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`infringe any Align patent or patent claim by any tribunal anywhere in the world. To date, 3Shape still
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`has not been found to infringe any valid Align patent or patent claim.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`E.
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`47.
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`The Current Litigation
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`The accused Trios, Trios 3, Trios 4, and Dental System software do not infringe any
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`valid claim of any Align asserted patent, including the ’433, ’519, ’151, ’152, ’527, ’609, and ’936
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`patents.
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`48.
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`Each of the patents asserted in the Complaint is invalid.
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`Case 6:20-cv-00979-ADA Document 189 Filed 02/04/22 Page 18 of 104
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`ANSWER: The allegations in this paragraph relate to claims that are the subject of
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`Align’s motions to dismiss. As such, no response is required at this time. To the extent any response
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`is required, Align denies the allegations in this paragraph and refers the Court to its motions to
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`dismiss.
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`COUNT I
`(Declaratory Judgment of Invalidity and/or Unenforceability of U.S. Patent No. 9,101,433)
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`49.
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`Counterclaim-Plaintiffs restate and reallege each of the foregoing paragraphs 1-48 of
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`the Counterclaims as if fully set forth herein.
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`ANSWER: Align restates and reincorporates its responses to the preceding paragraphs as
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`if fully set forth herein.
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`50.
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`3Shape is entitled to a declaration that the asserted claims of the ’433 patent are
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`invalid and/or unenforceable pursuant to at least 35 U.S.C. §§ 101, 102, 103, 112, and 116.
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`ANSWER: Denied.
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`COUNT II
`(Declaratory Judgment of Non-Infringement