Align Technology, Inc. v. 3Shape A/S et al

Filing 516

MEMORANDUM ORDER re 490 MOTION for Reargument filed by 3Shape A/S, 3Shape Inc. is GRANTED in part and DENIED in part. Signed by Judge Leonard P. Stark on 2/12/21. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
_____________________________________________________________________________
ALIGN TECHNOLOGY, INC.,

:
:
Plaintiff,
:
:
v.
:
C.A. No. 17-1646-LPS
:
3SHAPE A/S, 3SHAPE TRIOS A/S, and :
3SHAPE INC.,
:
:
Defendants.
:
_____________________________________________________________________________
MEMORANDUM ORDER
At Wilmington this 12th day of February, 2021:
Pending before the Court is Defendants 3Shape A/S, 3Shape Trios A/S, and 3Shape
Inc.’s (collectively, “3Shape”) motion for reargument. (D.I. 490) 3Shape requests that the Court
reconsider and/or clarify four aspects of the Daubert and summary judgment Order (D.I. 488)
and Opinion (D.I. 487) issued on August 14, 2020. Having reviewed the parties’ briefs and other
materials (see, e.g., D.I. 491, 496), and for the reasons stated below, IT IS HEREBY
ORDERED that 3Shape’s motion (D.I. 490) is GRANTED IN PART and DENIED IN PART.
1.

A motion for reargument is governed by Local Rule 7.1.5. See, e.g., Helios

Software, LLC v. Awareness Techs., Inc., 2014 WL 906346 (D. Del. Mar. 5, 2014). A motion for
reargument “must rely on one of three grounds: (1) an intervening change in controlling law;
(2) the availability of new evidence; or (3) the need to correct a clear error of law or fact or to
prevent manifest injustice.” Parkell v. Frederick, 2019 WL 1435884, at *1 (D. Del. Mar. 31,
2019) (internal citations omitted). Reargument may be appropriate where “the Court has
patently misunderstood a party, or has made a decision outside the adversarial issues presented to

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the court by the parties, or has made an error not of reasoning but of apprehension.” Wood v.
Galef-Surdo, 2015 WL 479205, at *1 (D. Del. Jan. 26, 2015) (internal quotation marks omitted).
While the decision on a motion for reargument is within the discretion of the Court, such
motions “should only be granted sparingly.” 1 Kavanagh v. Keiper Recaro Seating, Inc., 2003
WL 22939281, at *1 (D. Del. July 24, 2003).
2.

3Shape first requests that the Court (1) clarify that Dr. Saber may testify about

whether the accused infringing products meet the “voxel” claim limitation, “consistent with
paragraphs 58-61 and 69 of his rebuttal report;” or (2) in the alternative, modify its construction
of “voxel” to remove the word “volume.” (D.I. 491 at 2) In its Daubert ruling, the Court
concluded that the identified paragraphs in Dr. Saber’s rebuttal report should be excluded
because he construed “voxel” in a manner inconsistent with the Court’s claim construction order
(D.I. 178), specifically to exclude a vertex (D.I. 487 at 15).

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That the Court is largely granting the targeted relief sought by 3Shape does not negate the
reality that motions for reargument are, in the Court’s experience, rarely worth filing – and,
consequently, are rarely granted. The context in which 3Shape’s motion arises may, to some
extent, account for why the Court has been persuaded that it previously made several clear
errors. The August 14, 2020 opinion to which the motion is directed evaluated (in the course of
37 pages) a total of eight motions for summary judgment (seeking judgment on issues of
infringement, invalidity, damages, and estoppel) and/or to exclude expert opinions (attacking
multiple opinions of each of seven experts). The record on which the Court based its opinion
included 255 pages of briefing, an oral argument transcript that runs to 126 pages, and at least
5,200 pages of exhibits (see, e.g., D.I. 301, 303, 305, 307, 310, 312, 314-15, 317-19, 338-43,
345-48, 357, 359-65, 373-74, 399-400, 405, 435-36, 440-42). Further, the instant six-patent case
between competitors is only one of six cases pending on the undersigned Judge’s docket between
these same parties (in addition to them litigating another patent infringement case in the Western
District of Texas, as well as numerous proceedings in the International Trade
Commission). While the Court does not at all intend to invite motions for reconsideration – in
any cases, large or small, complex or simple – except where a party truly believes such a motion
is necessary and can meet the high burden for prevailing, the Court suspects (in hindsight) that
the errors it has now identified in its prior ruling may be the result, in part, of the vast number of
disputes the parties have put before the Court.
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Having reviewed its Daubert ruling (id.) and Dr. Saber’s rebuttal report (D.I. 318 Ex. 14
¶¶ 58-61, 69), the Court finds that the relevant paragraphs in Dr. Saber’s report include both an
impermissible claim construction that improperly excludes vertex from voxel (see, e.g., id. ¶¶
60-61) (“It is my opinion that a POSITA . . . would have readily appreciated that a vertex . . . is
not a voxel.”) and an opinion apparently applying the Court’s construction of “voxel” (see, e.g.,
id. ¶ 60) (“The vertex of a triangulated mesh model does not have a volume. It is a point with XY-Z coordinates.”). Dr. Saber’s deposition testimony also reflects both types of opinions. (See,
e.g., D.I. 348 Ex. 15 at 137-38, 192-95, 201, 229) While an expert witness is not allowed to
deviate from the Court’s claim construction, he is allowed to provide opinions reflecting the
application of the Court’s claim construction to the facts of this case. See EMC Corp. v. Pure
Storage, Inc., 154 F. Supp. 3d 81, 109 (D. Del. 2016) (“Expert testimony regarding whether an
accused device falls within the scope of a court’s claim construction is appropriate and raises a
factual issue for the jury to resolve.”). Hence, Dr. Saber may testify, consistent with paragraphs
58-61 and 69 of his rebuttal report, about whether the accused product identifies “a plurality of
voxels satisfying a criterion” (U.S. Patent No. 9,510,757, the “’757 patent,” cl. 13) as long as he
does not set forth his own construction of “voxel” and instead applies the Court’s claim
construction.
In other words, 3Shape has persuaded the Court that it made a clear error. Dr. Saber will
be permitted to opine that applying the Court’s construction – that a voxel is a “volume pixel;
the 3D equivalent of a pixel” – there is no infringement because a “vertex” identified by Align as
being the “voxel” of the claims is, in fact, not a “voxel,” because (in part or in whole) it is
instead a “vertex.” While no one will be permitted to opine or argue that a “vertex” is excluded
as a matter of law from being a “voxel” (i.e., the Court’s construction does not exclude a vertex),

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Dr. Saber will be permitted to opine (and 3Shape will be permitted to argue and attempt to
prove) that its accused product lacks a “voxel,” for reasons including that the accused voxel is
instead a vertex. 2
3.

3Shape next requests that the Court clarify whether the Court excluded Dr.

Saber’s opinion on the “indication” limitation of claim 13 of the ’757 patent when it excluded
testimony related to the “hidden” limitation. (D.I. 491 at 5; see also D.I. 487 at 16-17) The
Court did not exclude Dr. Saber’s opinion based on his interpretation of the “indication”
limitation. Align’s one-sentence argument (see D.I. 317 at 23) failed to persuade the Court that
Dr. Saber’s interpretation that the claim requires identifying the area of interest’s “existence” and
“location” is inconsistent with the plain and ordinary meaning of “indication,” in view of the
Court’s guidance in the memorandum opinion on claim construction (see D.I. 177 at 5-7).
In its Daubert decision, the Court excluded Dr. Saber’s opinion on the basis that Dr.
Saber “[went] beyond the Court’s construction and exclude[d] intraoral areas of interest that are
partially hidden (as opposed to completely hidden)” – a limitation that the Court did not read into
the claims at claim construction. (D.I. 487 at 16-17) While 3Shape disagrees with this aspect of
the Court’s decision (see D.I. 491 at 8), it does not seek reargument of it.
At trial, Dr. Saber will be permitted to testify, consistent with his expert report, that the
accused products do not infringe because there is no indication of the hidden intraoral area of
interest – but any opinions (or argument) to the effect that “hidden” means (and only means)
“completely hidden” remain excluded.

2

The Court is also excluding Dr. Saber’s opinions in ¶¶ 60-61 referencing 3Shape fact witness
testimony. (See D.I. 491 at 4) “Dr. Saber will not proffer any opinions invoking opinions of
3Shape fact witnesses related to the term ‘voxel.’” (Id.)

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4.

3Shape requests that the Court expressly confirm that “‘hidden in one or more

views’ is being given a construction to include ‘partially hidden in one or more views’ to clarify
the record.” (D.I. 491 at 8) While unnecessary, the Court also sees no reason (in the context of
this case) not to provide the requested “clarification.” Both sides agree that “hidden” is
construed here as including “partially hidden” (see, e.g., D.I. 496 at 8) (Align: “the plain and
ordinary meaning of the term ‘hidden’ includes ‘partially hidden’”) and the Court agrees as well.
In the Daubert ruling, the Court clearly held that Dr. Saber’s testimony went beyond the
plain and ordinary meaning, imposing the additional requirement that “hidden” be understood to
mean “completely hidden.” (D.I. 487 at 16-17) (emphasis added) The Court explained that this
additional requirement was not one the Court has read into the claim and thus was improper. (Id.
at 17) Thus, again, the Court construes “hidden” to include “partially hidden.”
5.

Finally, 3Shape requests that the Court reconsider its exclusion of Dr. Saber’s

opinion that Imgrund anticipates claims 13, 16, and 17 of the ’757 patent. (D.I. 491 at 9)
3Shape contends, mistakenly, that the Court’s ruling to exclude Dr. Saber’s anticipation opinion
was based on “a single, out of context deposition answer.” (Id.; see also D.I. 318 Ex. 13 at 312)
The Court’s ruling was, instead, based on pages of briefing, the records cited therein, and the
parties’ oral argument. (See D.I. 487 at 18-19)
For example, Dr. Saber opined in his opening report, relating to claim 13, that “applying
Imgrund’s techniques . . . to volumetric representations . . . was well known to a POSITA.” (D.I.
318 Ex. 12 ¶ 83) Also, the Court did not conclude that the specific deposition answer at issue,
read in the context, was referring only to the inherency opinion as to claim 15. (See, e.g., D.I.
318 Ex. 13 at 322-25) (Dr. Saber’s testimony referring to inherency as to claim element 13.4 and
paragraph 106 of his opening report) Hence, 3Shape has failed to carry its burden of showing

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that the Court’s exclusion of Dr. Saber’s anticipation opinion was clearly erroneous. See
generally Parkell, 2019 WL 1435884, at *1.

_______________________________
HONORABLE LEONARD P. STARK
UNITED STATES DISTRICT JUDGE

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