On November 30, 3M filed a lawsuit against Ivoclar Vivadent in U.S. District Court for the District of Minnesota stating Ivoclar has engaged in a series of acts that "create a real, concrete dispute between the parties and constitute a clear threat that Ivoclar AG and Ivoclar Inc. will sue 3M for infringement of the '006 patent."
On December 1, Ivoclar did just that, filing a patent infringement lawsuit against 3M in U.S. District Court for the District of Delaware.
The patent in question is U.S. patent No. 5,936,006, "Filled and Polymerizable Dental Material," which was issued to Ivoclar in August 1999.
Ivoclar contends that 3M is violating the patent through the sale of its Filtek line of products, which include "amorphous SiO2 particles in a liquid, organic dispersion agent, wherein the SiO2 particles are organically surfaced treated, have an average size of 10 to 100 nm and are nonagglomerated," according to the Ivoclar complaint.
In product literature, 3M has touted Filtek as including "a combination of nonagglomerate/nonaggregated 20-nm silica fillers," the Ivoclar lawsuit states.
Ivoclar contends that 3M "had constructive and actual knowledge of the '006 patent and the inventions embodied therein in advance of the release of Filtek Supreme into the marketplace ... having filed numerous patent applications citing the '006 patent as allegedly pertinent prior art. 3M knows and/or has known that the '006 patent was duly issued to Ivoclar and proceeded with an objectively reckless disregard for Ivoclar's patent rights."
Ivoclar has also filed suit against 3M in Germany alleging infringement of German patent No. 196,17,931, which it claims is related to the '006 patent.
But 3M states in its complaint that its Filtek products do not infringe Ivoclar's intellectual property and is seeking a declaratory judgment that the U.S. patent is, in fact, invalid.
In fact, the company claims that it entered into an agreement with Ivoclar on November 1 of this year whereby Ivoclar agreed that it would not file a patent infringement lawsuit against 3M.
But on November 30, the 3M complaint states, "Ivoclar AG and Ivoclar Inc. representatives met with 3M representatives by telephone. During that meeting, Ivoclar representatives stated that Ivoclar AG was rescinding its agreement not to file suit against 3M based on the Ivoclar patent rights."
Both companies are asking for a jury trial.
Calls to 3M, Ivoclar, and their attorneys seeking comment were not immediately returned.