Osseo Imaging, LLC v. Dentsply Sirona Inc.

CourtDistrict Court, E.D. New York
DecidedSeptember 29, 2025
Docket1:23-cv-07952
StatusUnknown

This text of Osseo Imaging, LLC v. Dentsply Sirona Inc. (Osseo Imaging, LLC v. Dentsply Sirona Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Osseo Imaging, LLC v. Dentsply Sirona Inc., (E.D.N.Y. 2025).

Opinion

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK -------------------------------------------------------x OSSEO IMAGING, LLC,

Plaintiff, MEMORANDUM & ORDER - against - 23-CV-7952 (PKC) (CHK)

DENTSPLY SIRONA, INC., et al.

Defendants. -------------------------------------------------------x PAMELA K. CHEN, United States District Judge: Plaintiff Osseo Imaging, LLC (“Plaintiff”) filed suit against Defendants Dentsply Sirona Inc., Sirona Dental Systems, LLC, and Sirona Dental, Inc. (collectively, “Dentsply” or “Defendants”) on October 25, 2023, alleging infringement of Plaintiff’s patents. (Compl., Dkt. 1.) On November 8, 2024, Defendants moved to dismiss the action, challenging the validity of Plaintiff’s patents. (Dkt. 36.) For the reasons stated below, the motion to dismiss is denied. BACKGROUND1 I. Plaintiff’s Patents Plaintiff owns three patents relating to dental imaging systems, U.S. Patent Nos. 6,381,301, 6,944,262, and 8,498,374 (the “’301 Patent,” the “’262 Patent,” and “’374 Patent,” respectively; collectively, “Plaintiff’s patents”).2 (Compl., Dkt. 1, ¶ 1.) Ronaldo E. Massie (“Massie”) applied for the ’301 Patent in 1999; it was issued in 2002 and then expired in 2019. (Id. ¶¶ 11–12.) Massie

1 For purposes of Defendants’ motion, the Court accepts as true all non-conclusory factual allegations in the Complaint. See Sacerdote v. N.Y. Univ., 9 F.4th 95, 106–07 (2d Cir. 2021) (citing Palin v. N.Y. Times Co., 940 F.3d 804, 809 (2d Cir. 2019)). 2 Plaintiff has attached a copy of its patents to the Complaint. (See ’301 Patent, Dkt. 1-1; ’262 Patent, Dkt. 1-2; ’374 Patent, Dkt. 1-3.) The Court considers the attached patents in deciding this motion. See DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010) (citations omitted). applied for the ’262 Patent in 2003; it was issued in 2005 and then expired in 2020. (Id. ¶¶ 13– 14.) Finally, Massie applied for the ’374 Patent in 2012; it was issued in 2013 and then expired in 2019. (Id. ¶¶ 15–16.) Plaintiff was assigned the three patents in 2013. (Id. ¶ 17.) Plaintiff’s patents describe a “dental and orthopedic densitometry modeling system” that includes “a

controller with a microprocessor” connected to a memory device, an input device, an output device, and a three-axes positioning motor connected to X-ray equipment. (’301 Patent, Dkt. 1-1, at ECF3 2; see also’262 Patent, Dkt. 1-2, at ECF 4; ’374 Patent, Dkt. 1-3, at ECF 4.) Plaintiff’s patents “teach improved dental X-ray imaging systems for generating tomographic models of dental structures which include densitometric data.” (Compl., Dkt. 1, ¶ 18.) The patents combine the use of hardware devices to generate and store models of patients’ dental structures as well as software that captures, processes, and stores these models for use by dentists. (Id. ¶ 19.) Further, they improve the detection and diagnosis of “dental pathologies,” such as “[i]ncipient caries,” “[d]ental fractures,” and “apical abscesses,” all of which “are particularly difficult to diagnose with conventional equipment,” some “particularly in the early

stages.” (’301 Patent, Dkt. 1-1, at ECF 5.) The patents also “ha[ve] applications in monitoring osseointegration,” which “can provide the dental . . . practitioner with important information in evaluating the effectiveness of implant procedures.” (Id.) Plaintiff licenses and enforces these patents. (Compl., Dkt. 1, ¶ 20.) II. Defendants’ Products Defendants provide “3D dental imaging systems” which include “systems for topographically modeling a dental structure.” (Compl., Dkt. 1, ¶ 5.) In particular, during the

3 Citations to “ECF” refer to the pagination generated by the Court’s CM/ECF docketing system and not the document’s internal pagination. Damages Period4 Defendants sold “a family of 3D dental imaging systems referred to as the Sirona 3D X-Ray Family,” as well as “software for use with the Sirona 3D X-Ray Family,” and “provided a computerized device . . . on which the Sirona Software was installed” (collectively, hereinafter, “the Sirona Systems”). (Id. ¶ 23.) The Sirona Systems “were operable to produce three-

dimensional X-ray models of a patient’s dental structure using cone beam computed tomography.” (Id. ¶ 24.) “[T]he Sirona 3D X-Ray Family generated digital x-ray images and merged them into tomographic models” that included “bone density values calculated . . . with the use of a microprocessor.” (Id.) These models were then “received, stored, and displayed on an output device . . . running the Sirona Software,” which could include “a side-by-side function that linked . . . tomographic models of the same patient obtained at different times for comparison.” (Id.) In simpler terms, the Sirona Systems include machines and software that allow for the scan of a patient’s teeth and the presentation of a digital three-dimensional model of the teeth along with certain computations about the density of the teeth and comparisons to prior scans. Defendants sold these products in the United States and abroad. (Id. ¶ 26.)

Plaintiff now alleges that Defendants’ systems infringed on Plaintiff’s patents. It alleges that all elements of multiple claims for each of Plaintiff’s patents were embodied in the Sirona Systems, establishing direct infringement, inducement of infringement, and contributory infringement. (See id. ¶¶ 32–49 (alleging violations of 35 U.S.C. § 271).) Plaintiff argues that these violations caused it “injury to business and property.” (Id. ¶¶ 36, 43, 49.)

4 Plaintiff defines the “Damages Period” as October 25, 2017, through August 9, 2020. (Compl., Dkt. 1, ¶ 23 n.1.) III. Defendants’ Motion Defendants move to dismiss Plaintiff’s claims, arguing that Plaintiff’s patents “are invalid as a matter of law because (1) [the patents] are directed to abstract ideas and (2) they do not include an inventive concept that limits them to patent-eligible subject matter.” (Defs.’ Mem. Support Mot. (“Mem.”), Dkt. 36-1, at 1.)5 In support of this argument, Defendants rely on the two-step

analysis described in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014). (Mem., Dkt. 36-1, at 2, 13 (citing Alice, 573 U.S. at 221–23).) Because, as discussed below, the Court finds at this stage of the litigation that Alice does not invalidate Plaintiff’s patents, Defendants’ motion is denied. IV. Related Litigation A. The Delaware Litigation Plaintiff previously brought an action enforcing these patents against a different defendant in the United States District Court for the District of Delaware. (Compl., Dkt. 1, ¶ 20.) At trial, the jury found that Plaintiff’s patents had been violated by the defendant, Planmeca USA Inc. (“Planmeca”). (Id. ¶ 22); see also Osseo Imaging, LLC v. Planmeca USA Inc. (“Planmeca I”), No. 17-CV-1386 (JFB), 2023 WL 1815975, at *1 (D. Del. Feb. 8, 2023). There, Planmeca asserted

a post-trial challenge to the verdict, arguing that Plaintiff’s patents were invalid as a matter of law on the grounds of “obviousness” and “for lack of written description and enablement.” Planmeca I, 2023 WL 1815975, at *3–*4. The court rejected the challenge, holding that there was

5 Though Defendants do not specify under which of the Federal Rules of Civil Procedure they seek dismissal, they argue that an asserted patent’s validity “is a question of law . . . that may be resolved on a Rule 12(b)(6) motion.” (Mem., Dkt. 36-1, at 11 (quoting Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743, 749 (Fed. Cir.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Diamond v. Diehr
450 U.S. 175 (Supreme Court, 1981)
Ashcroft v. Iqbal
556 U.S. 662 (Supreme Court, 2009)
DiFolco v. MSNBC Cable L.L.C.
622 F.3d 104 (Second Circuit, 2010)
Matson v. BD. OF EDUC., CITY SCHOOL DIST. OF NY
631 F.3d 57 (Second Circuit, 2011)
Hogan v. Fischer
738 F.3d 509 (Second Circuit, 2013)
Enfish, LLC v. Microsoft Corporation
822 F.3d 1327 (Federal Circuit, 2016)
Electric Power Group, LLC v. Alstom S.A.
830 F.3d 1350 (Federal Circuit, 2016)
McRO, Inc. v. Bandai Namco Games America Inc.
837 F.3d 1299 (Federal Circuit, 2016)
Intellectual Ventures I LLC v. Symantec Corp.
838 F.3d 1307 (Federal Circuit, 2016)
Fairwarning Ip, LLC v. Iatric Systems, Inc.
839 F.3d 1089 (Federal Circuit, 2016)
Aatrix Software, Inc. v. Green Shades Software, Inc.
882 F.3d 1121 (Federal Circuit, 2018)
Data Engine Technologies LLC v. Google LLC
906 F.3d 999 (Federal Circuit, 2018)

Cite This Page — Counsel Stack

Bluebook (online)
Osseo Imaging, LLC v. Dentsply Sirona Inc., Counsel Stack Legal Research, https://law.counselstack.com/opinion/osseo-imaging-llc-v-dentsply-sirona-inc-nyed-2025.