Düsseldorf Regional Court finds that South Korean company Medit has not infringed a patent for 3D scanning for the design of dental posts. In the extensive dispute, the Danish plaintiff 3Shape had previously won the first trial. The dispute has already gone into the next round.
28 August 2020 by Mathieu Klos
The ruling is part of an extensive series of four lawsuits by 3Shape, which manufactures 3D scanners and software solutions for the dental industry. All four cases are pending before the Düsseldorf Regional Court.
3Shape had initially sued Medit, which is entering the European market, based on two patents in 2019. 3Shape served papers to Medit at a trade fair and then extended the dispute to include a third suit in 2020.
Although the latter concerns a similar technique, the Regional Court split the suit into two separate cases. The parties are currently exchanging their pleadings.
In January, the court upheld an initial claim by 3Shape and found Medit guilty of patent infringement (case ID: 4c O 11/19). This patent protects a technique that allows the computer to accurately fill gaps in the simulation of the tooth that cannot be captured by the 3D scan. This can happen if certain areas of the tooth are hidden from the scanner, for example in the spaces between teeth. Medit has already lodged an appeal against the ruling.
Medit has filed nullity suits at the Federal Patent Court against the patents in the first two cases. Since the extension of the third lawsuit is still quite fresh, Medit has not yet challenged this patent.
The extension of the lawsuit concerns a technology that makes it possible to subsequently remove moving parts in the oral cavity from the data because they interfere with the precise design of the dental prosthesis. Overall, the technology protects methods for improving data during 3D scanning.
The use of 3D scanning to design dental prostheses is becoming more and more popular in dentistry compared to conventional dental impressions. The manufacturing of dental prostheses using 3D printing is also gaining ground. A dental prosthesis designed through 3D scanning is not necessarily manufactured using 3D printing.
Medit is a global provider of 3D measuring equipment and software solutions for dental practices. The company is based in Seoul.
The Korean company had initially relied on Vossius & Partner to defend the first two claims. After the negative verdict in January, however, the company changed advisors. Since then a mixed team from Hogan Lovells, consisting of litigator Steffen Steininger and patent attorney Andreas Schmid, has handled all proceedings. For some time now Hogan Lovells has been pushing the expansion of its patent attorney team, which exclusively supports the litigators.
Henrik Timmann and Simon Klopschinski from Rospatt Osten Pross prepared the lawsuits for 3Shape, together with patent attorney Peter Nilsson from Dilg Haeusler Schindelmann. Both firms have their own relationship with the Danish company. Rospatt Osten Pross has previously advised 3Shape in other cases. However, the company usually instructs the Danish law firm Guardian IP to file its European patents.
Hogan Lovells (Munich): Steffen Steininger (lead); counsel: Andreas Schmid (patent attorney); associates: Teresa Christof, Katharina Bickel, Cédric Rohr (patent attorney)
Rospatt Osten Pross (Düsseldorf): Henrik Timmann, Simon Klopschinski
Dilg Haeusler Schindelmann (Munich): Peter Nilsson (patent attorney)
Regional Court Düsseldorf, 4c Civil Chamber: Sabine Klepsch (presiding judge)
Update 28.12.2021: Medit was equally successful in the dispute over two other patents at the end of 2021. On 7 December, the Düsseldorf Regional Court dismissed the infringement action relating to 3Shape’s EP 27 32 434 B1 and EP 34 01 876 B1 (case IDs: 4c O 26/20 and 4c O 27/20). Both patents protect detection of a movable object when 3D-scanning a rigid object. As in the proceedings over EP 2 400 919 B1, presiding judge Sabine Klepsch held that the South Korean defendant did not infringe these patents. The latter case is currently pending on appeal until the Federal Patent Court decides on the validity of EP 919 in April 2022.
Previously, the Federal Patent Court had destroyed 3Shape’s patent EP 2 568 870 after the infringement had been confirmed in the first instance.
Update 27.05.2022: Medit has had another success after a Federal Patent Court judgment found 3Shape’s EP 919 B1 to be invalid. The patent covers a system and method for providing the design of a dental post and core, relating to a computer-readable method of implementing a 3D design for post and core, used in dental work.
The court has not yet delivered the written reasoned decision to the parties. As such, 3 Shape has not yet decided whether or not to appeal the judgment. Parties expect the court to release the written reasoned decision in the coming weeks. At present, JUVE Patent is not aware of discussions between the two parties or the current likelihood of a settlement.
The three other original claims are no longer pending. Meanwhile, 3Shape has also claimed infringement against Medit in the US.