IP Law Daily, PATENT NEWS: Dental products maker seeks injunction barring rival from infringing patents, trademarks, (Nov 16, 2015)

By Thomas Long, J.D.

Liechtenstein-based developer and supplier of dental products, Ivoclar Vivadent AG, and its U.S. subsidiary, Ivoclar Vivadent, Inc. (collectively, “Ivoclar”) have filed suit against Florida-based U.S. Dental Depot, Inc., seeking an injunction barring U.S. Dental from making and selling products using Ivoclar’s patented technology related to lithium silicate materials, as well as damages for infringement. Ivoclar also seeks damages for trademark infringement and an injunction preventing U.S. Dental from infringing Ivoclar’s brand names and from using the color purple in connection with dental ceramics. The complaint was filed in the federal district court in Buffalo (Ivoclar Vivadent AG v. U.S. Dental Depot, Inc., November 13, 2015).

Patent infringement. Ivoclar asserts ownership of three patents: U.S. Patent No. 8,042,358, issued October 25, 2011; U.S. Patent No. 8,047,021, issued November 1, 2011; and U.S. Patent No. 8,444,756, issued May 21, 2013. All three patents-in-suit are entitled “Lithium Silicate Materials.” The patents generally relate to technology for materials that can be easily processed by computer-controlled milling machines (CAD/CAM) into dental products, such as crowns, inlays, and bridges, without undue wear of the tools and that subsequently can be converted into high-strength products.

According to the complaint, U.S. Dental has infringed and continues to infringe the patents-in-suit by making, using, selling, and/or offering for sale certain dental restoration products, including U.S. Dental’s “MAXCAD lithium disilicate” product line.

Trademark infringement. The complaint further states that Ivoclar Vivadent, Inc. owns the trademark “E.MAX” for use on dental ceramics. A federal registration for the E.MAX mark was issued on July 8, 2014. Ivoclar Vivadent, Inc. also allegedly owns the mark “IPS E.MAX” for use on, among other things, dental veneers and ingots made of resin, metal, or ceramics for dental use. A federal registration for IPS E.MAX was issued on June 12, 2007. Finally, Ivoclar Vivadent, Inc. asserts ownership of the mark “IPS E.MAX CAD” for use on, among other things, dental ceramics. That mark’s federal registration was issued on January 29, 2008. Along with its product names, Ivoclar holds a federal registration for the color purple for use on dental ceramics. Ivoclar alleges that it has used the color purple in U.S. commerce since early 2005.

U.S. Dental allegedly has infringed Ivoclar’s word marks and color mark by marketing, promoting, and offering for sale its “MAXCAD” lithium disilicate product line, which is produced in the color purple. Ivoclar asserts that consumer confusion is likely, due to the conceptual and commercial strength of Ivoclar’s marks, the similarity of U.S. Dental’s marks, and the identical or closely related nature of the parties’ respective products.

Remedies. Ivoclar requests a declaration that U.S. Dental has infringed the patents-in-suit; an injunction against the manufacture, distribution or sale of products that infringe the patents; an accounting of damages resulting from U.S. Dental’s patent infringement; compensatory damages, trebled for willful patent infringement; an injunction against further trademark infringement; and damages under the Trademark Act, including enhanced damages and attorney fees.

The case is No. 1:15-cv-00985.

Attorneys: Robert J. Fluskey, Jr. (Hodgson Russ LLP) for Ivoclar Vivadent AG and Ivoclar Vivadent, Inc.

Companies: Ivoclar Vivadent AG; Ivoclar Vivadent, Inc.; U.S. Dental Depot, Inc.

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