SmileDirectClub, LLC v. Candid Care Co.

505 F.Supp.3d 340

SMILEDIRECTCLUB, LLC, Plaintiff,

v.CANDID CARE CO., Defendant.

Civil Action No. 20-0583-CFC

United States District Court, D. Delaware.

Signed December 7, 2020

Kevin M. Capuzzi, BENESCH FRIEDLANDER COPLAN & ARONOFF, Wilmington, Delaware; Kaplash K. Shah, Manish K. Mehta, Noelle Briana Torrice, Suzanne M. Alton de Eraso, Simeon Papacostas, BENESCH FRIEDLANDER COPLAN & ARONOFF, Chicago, Illinois; Michael S. Weinstein, BENESCH FRIEDLANDER COPLAN & ARONOFF, Cleveland, Ohio, Counsel for Plaintiff.

Rodger Dallery Smith, II, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington; Michael P. Sandonato, Sean M. McCarthy, VENABLE LLP, New York, New York; Edmund J. Haughey, VENABLE LLP, Washington, District of Columbia, Counsel for Defendant.

MEMORANDUM OPINION

COLM F. CONNOLLY, UNITED STATES DISTRICT JUDGE

Plaintiff SmileDirectClub, LLC (SDC) has sued Defendant Candid Care, Co. for infringement of U.S. Patent No. 10,636,522 (the #522 patent). D.I. 1. Pending before me is Candid's motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6). D.I. 12. Candid argues that I should dismiss SDC's complaint because the asserted patents are invalid under 35 U.S.C. § 101 for failing to claim patentable subject matter.

I. BACKGROUND

SDC and Candid are competitors in the so-called "direct-to-consumer orthodontics" or remote teleorthodontics business. This business was made possible by the development of intraoral scanners that non-dentist technicians use to take images of a patient's teeth and create three-dimensional, digital representations from which personalized aligners are made for self-insertion by the patient to straighten and reposition teeth. D.I. 1 ¶ 22.

The #522 patent does not describe how to make an intraoral scanner, aligners, or three-dimensional representations of teeth; indeed, the patent does not purport to teach any advances in machinery, equipment, devices, or computer technology. Rather, the invention claimed by the #522 patent is, to use the words of the patent's abstract, "[s]ystems and methods for arranging an intraoral scanning at a selected location." #522 patent at abstract. To use the words of the Complaint, the claimed invention is a "business model," D.I. 1 ¶4, and "revolutionary workflow," id. ¶ 3. Specifically, the #522 patent claims systems and methods by which a patient's intraoral scan is scheduled, performed, and used to create aligners and the patient receives orthodontic treatment without ever interacting in person with a dentist or orthodontist. D.I. 1 ¶ 16.

The patent has thirty claims. The Complaint alleges that Candid infringes the patent's four independent claims and "various dependent claims." D.I. 1. ¶ 69. Candid argues that independent claim 1 is representative. D.I. 9–10. It recites

[a] method of producing aligners for repositioning one or more teeth of a user, the method comprising:

receiving, by an appointment management system, a request to schedule an appointment at an intraoral scanning site, the intraoral scanning site having an intraoral scanner configured to scan a mouth of a user, the appointment being for a technician to conduct an intraoral scan of the mouth of the user at the intraoral scanning site without a dentist or orthodontist physically seeing the user during the scheduled appointment, wherein the technician is not a dentist or an orthodontist;

scheduling, by the appointment management system, the appointment at the intraoral scanning site in accordance with the request;

generating and communicating, by the appointment management system, a message to a device of the user, the message including a confirmation confirming the scheduled appointment;

conducting, using the intraoral scanner, the intraoral scan at the intraoral scanning site during the scheduled appointment, the intraoral scan generating three-dimensional data of the mouth of the user;

causing generation, by a treatment plan computing system located at a treatment plan site, of a treatment plan for the user based on the three-dimensional data of the mouth of the user;

receiving an indication of an approval of the treatment plan by a dental or orthodontic professional, wherein the approval is received without the dental or orthodontic professional having physically seen the user;

producing, at a fabrication site, a plurality of aligners based on the treatment plan, the plurality of aligners specific to the user and being configured to reposition one or more teeth of the user in accordance with the treatment plan; and

sending the plurality of aligners from the fabrication site directly to the user, wherein the user receives orthodontic treatment without ever having physically seen the approving dental or orthodontic professional.

SDC takes the position that no single claim of the patent is representative. When I limited SDC to two asserted claims for purposes of deciding its pending preliminary injunction motion, SDC selected claims 4 and 20. D.I. 31 at 2. Claim 4, which depends from claim 1, recites

[t]he method of claim 1, wherein the approval by the dental or orthodontic professional is a first approval, the method further comprising:

responsive to receiving the first approval, providing data indicative of the treatment plan to the user; and

receiving a second approval of the treatment plan, wherein the second approval of the treatment plan is received from the user following the first approval being received from the dental or orthodontic professional;

wherein producing the plurality of aligners is performed responsive to receiving the first approval and the second approval of the treatment plan.

Claim 20 recites

[a] system for producing aligners for repositioning one or more teeth of a user, the system comprising:

an appointment management system configured to:

receive a request to schedule an appointment at an intraoral scanning site, the appointment being for a technician to conduct an intraoral scan of a mouth of a user at the intraoral scanning site without a dentist or orthodontist physically seeing the user during the scheduled appointment, wherein the technician is not a dentist or orthodontist; schedule the appointment at the intraoral scanning site in accordance with the request;

generate and communicate a message to a device associated with the user, the message including a confirmation confirming the scheduled appointment;

the intraoral scanning site comprising:

an intraoral scanner configured to generate three-dimensional data from the intraoral scan of the mouth of the user; and

one or more intraoral scanning site computing systems configured to communicate the three-dimensional data from the intraoral scanner for generation of a treatment plan, wherein the treatment plan is approved by a dental or orthodontic professional without the dental or orthodontic professional having physically seen the user; and

a fabrication system including one or more fabrication sites associated with the production and shipment of aligners, the fabrication system comprising:

one or more fabrication computing systems configured to receive treatment plan data corresponding to the treatment plan for the user; and

equipment configured to produce a plurality of aligners based on the treatment plan data, the plurality of aligners being specific to the user and being configured to reposition one or more teeth of the user based on the treatment plan;

wherein the plurality of aligners are sent from at least one of the one or more fabrication sites directly to the user for repositioning the one or more teeth of the user, and the user receives orthodontic treatment without ever having physically seen the approving dental or orthodontic professional.

The remaining claims of the #522 patent recite additional permutations of the same general workflow, described either as methods (as in claim 1) or as systems (as in claim 20).

II. LEGAL STANDARDS

A. Stating a Claim

To state a claim on which relief can be granted, a complaint must contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). Detailed factual allegations are not required, but the complaint must include more than mere "labels and conclusions" or "a formulaic recitation of the elements of a cause of action." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (citation omitted). The complaint must set forth enough facts, accepted as true, to "state a claim to relief that is plausible on its face." Id. at 570, 127 S.Ct. 1955. A claim is facially plausible "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (citation omitted). Deciding whether a claim is plausible is a "context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Id. at 679, 129 S.Ct. 1937 (citation omitted).

When assessing the merits of a Rule 12(b)(6) motion to dismiss, a court must accept as true all factual allegations in the complaint and in documents explicitly relied upon in the complaint, and it must view those facts in the light most favorable to the plaintiff. See Umland v. PLANCO Fin. Servs. , 542 F.3d 59, 64 (3d Cir. 2008) ; Schmidt v. Skolas , 770 F.3d 241, 249 (3d Cir. 2014) (internal quotation marks omitted).

B. Patent-Eligible Subject Matter

Section 101 of the Patent Act defines patent-eligible subject matter. It provides:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101.

There are three judicially-created limitations on the literal words of § 101. The Supreme Court has long held that laws of nature, natural phenomena, and abstract ideas are not patentable subject matter....