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Rothwell Figg Client Dentsply Sirona Obtains Favorable Settlement of District Court Litigation, Including Consent Judgment and Permanent Injunction Against Direct Competitor

June 3, 2021

A long-standing patent litigation initiated by Rothwell Figg client Dentsply Sirona against one of its principal competitors, Edge Endo LLC, came to a conclusion pursuant to an order by the United States District Court for the District of New Mexico on June 3, 2021. Shortly before trial, the case settled for, inter alia, a permanent injunction and consent judgment, which was then entered by the Court. The accused product, Edge’s EdgeTaper Encore, is off the market.

Dentsply Sirona had accused Edge of willfully infringing four patents, U.S. Patent Nos. 8,882,504, 8,932,056, 9,351,803, and 9,801,696, which cover revolutionary advances in endodontic file technology.

Edge had previously petitioned for inter partes review (“IPR”) of all four patents-in-suit, but the Patent Trial and Appeal Board denied institution of all the petitions.

Following fact and expert discovery, both parties moved for summary judgment. On June 23, 2020, the court granted Plaintiffs’ summary judgment motions and denied Defendants’ summary judgment motions. In its decision, the Court held that three claims (one from each of three asserted patents) were both infringed by Edge’s EdgeTaper Encore product and not invalid. The Court’s summary judgment decision also rejected Edge’s effort to dismiss Dentsply Sirona’s willful infringement claim and rejected Defendants’ motion for summary judgment of non-infringement on the remaining patent.

Dentsply Sirona was represented in this case by Rothwell Figg attorneys Steven Lieberman, Rachel M. Echols, Eric D. Blatt, and Caitlin Wilmot.