Align’s Core Technology in Peril as U.S. Patent Office Cancels Key Claims

On March 28th, we sent out a press release announcing our recent legal victory at the United States Patent and Trademark Office (USPTO). Later that day, Align Technology responded with a press release announcing their legal victory at the USPTO.

Confusing, right? Here's the deal.

Hardcore fans of intercorporate intellectual property disputes will recall that, back in 2015, we filed for ex parte reexaminations of several Align patents and an inter partes review of another Align patent. We argued the patents were obvious and overly broad—in our opinion, they should never have been granted.

On March 24th, we received notice that the inter partes review went our way, and that’s a big deal. We'll explain why in a minute.

Align's press release focuses on the few ex parte reexaminations that the examiners had decided in Align’s favor. That's not a new development, and not the end of the story.

First off, here’s a summary of the differences between the proceedings:


Ex parte reexaminations

Inter partes review

What happened?

We asked examiners at the USPTO to rexamine Align’s U.S. Patents 5,975,893, 6,217,325, 6,398,548, 6,626,666, 6,722,880, 7,125,248, 7,578,674, and 8,070,487.

We asked a panel of patent judges and USPTO leaders called the Patent Trial and Appeal Board (PTAB) to review Align‘s U.S. patent 6,699,037.


These are all patents that Align claimed we infringed in the ongoing Southern District of Texas case. If their patentability was in question, Align’s arguments in that case would be weakened (if not eliminated).

While we haven’t been accused of infringing this patent, it is a lynchpin patent in Align’s portfolio. The patent features much of the same language, concepts, and art as the other patents in the ex parte rexaminations and the Texas case.

Could we participate?

No. We had to submit our materials and arguments, then step back and let the examiners review the evidence on their own. Align could defend themselves, but we could not rebut anything they said.

Yes. Inter partes reviews allow for both parties to discuss the patent in a trial setting. Everyone has equal access to materials and both parties can make their arguments throughout.

Who won and how?

Initially, ClearCorrect won preliminary victories involving all of the asserted patents. Since then, Align has been able to win back some—but not all—of those initial losses at the expense of some key arguments.

Align’s “wins” provided our legal team with new arguments to invalidate the patents and prove we don’t infringe them.

Armed with the results from the PTAB and a stronger position, we are asking for those patents to be reexamined again.

We won. The PTAB cancelled all the challenged claims after concluding that we had “shown, by a preponderance of evidence” that the ‘037 patent was just stitched together from other previous patents.

What does it all mean, and what happens next?

While some of the ex parte reexaminations haven’t gone the way we wanted—so far— the PTAB did side with us in the inter partes review, and we think that bodes well going forward.

The panel of USPTO judges reviewed all of the available evidence and determined that Align’s core technological concepts (specifically, creating digital dental models for planning and manufacturing aligners) had been already well-established in previous patents. (Naturally, Align intends to appeal the PTAB’s decision.)

The other reexaminations are ongoing and looking good for ClearCorrect.

Why is the PTAB decision a big deal?

The PTAB calls into question all of Align’s patent claims that are premised on these core concepts. Now that all challenged claims of the ‘037 patent haven been cancelled, the USPTO has reason to question the ex parte examiner’s decisions in the recent reexaminations.

Ideally, they’ll be looking for the same issues the ‘037 patent had—and they are there. (For the legal nerds, enjoy this 246-page counterclaim for the Texas case comparing Align’s patent claims to earlier inventions by others. Get cozy, it’s as repetitive as it is lengthy!).

Why is this important to us?

We’ve been defending ourselves against Align for almost ten years. We filed a declaratory judgement case in 2009 saying, “hey, we know we don’t infringe your patents—let’s take this to a judge and make it official.” Align said they didn’t have any plans to sue us and, in the spirit of fair play, we dropped the case.

Since then, they’ve sued us five times. (Lucy and the football, amirite?)

Three of these five cases are now over and all ended favorably for ClearCorrect. Only one case remains in the US and the PTAB’s decision will likely have a significant impact for ClearCorrect there.

Despite the marathon of lawsuits, we’ve grown to be a global leader in clear aligner manufacturing and we’re not going anywhere any time soon.

Our fearless leader, Jarrett Pumphrey, summed up our feelings on this perfectly:

“We’re in this for the long haul, and we intend to win.”

Tech Tip: Marketing tips from providers

ClearCorrect Promotional Items

We recently asked our providers for some of their marketing tips and we included some gems that we thought we'd share as well. We hope you find these tips helpful, coming into the holiday season!

  • "People recognize comparisons easily displayed on a vertical poster with pictures." (See our 'Case Types' poster available at
  • "Never sell dentistry. Educate the patient, and let them ask you for it."
  • "Once I get a referral, I have found it easy to convert them to paying patients. First, all of the patients love that I refer them for digital scans. Second, the patients are very impressed by the animation (Treatment setup). Third, I keep a fishbowl full of unused aligners so patients can see and feel them."
  • "We just did a big promo for 25% off that was a huge hit. Completely increased case acceptance and increased knowledge in our community of the service and where it is available."
  • "Asking all patients if they are satisfied with their smile, especially with tooth alignment. Taking photos of all patients."
  • "It's all about initiating conversations. The questions can come from my hygienists, assistants, front office staff, or myself."
  • "Put your whole team in aligners, brackets or retainers."
  • "Offer webinars which would provide education, benefits and potentially a stream of new cases."
  • "We promote ClearCorrect on everything we do: our web page, door hangers, posters in the office--even our business cards. Current upgrades to the ClearCorrect system are prominently mentioned in staff meetings. Our hygienist is on the alert to mention ClearCorrect to likely patient candidates."
  • "After each exam, my hygienist and I ask patients if they know about ClearCorrect. If they don't we explain it to them and show them the clear aligners. We explain to the patients how it works and how they or maybe someone they know could benefit from it."
  • "The main thing we do in our practice to promote ClearCorrect is to charge the same amount for either treatment (i.e. the same cost for aligner therapy or fixed appliances). A lot of times, patients are quoted a higher fee for aligners vs. fixed appliances, so they are more likely to start treatment with us because of our pricing model."
  • "I think it's really just a matter of confidence. If you confidently tell the patient that you have a solution for their smile that doesn't involve 'shots', 'drilling', and is a fraction of the cost of veneers, it's usually a done deal. I am careful not to pressure anyone--it's just presented as an idea. But i can't believe how many people have come back to me at a later time, after not being interested, and have decided to move ahead with treatment."
  • "I had a really nice sign made for my office to advertise ClearCorrect. I forwarded the graphics from your website and had SpeedPro make a sign that shows nicely from the outside of my office, but doesn't show from the inside. From the waiting area you can look right out the window, with no advertising visible. I really like it."

Check out our Help Center for more information on the topic of marketing and practice building. Our online store also has great promotional items for your practice.

Until next time...

Buy the Marketing Kit today!

3D Printing in Dentistry

ClearCorrect 3D Printed Model

3D Printing is incredible. It’s like magic—dream up a thing, digitize it, and it appears.

But it’s not just great for making wrenches for Shaq.

Five years ago, ClearCorrect moved from using gargantuan milling machines to using 3D printers to create dental models. Since then, it’s completely reshaped our manufacturing process and allowed us to make better aligners faster than ever before.  Now, our facility in Round Rock, Texas is home to the largest bank of 3D printers in the world.  (Read more about our journey into 3D printed models here.)

As 3D printers become more affordable and approachable, folks in the dental industry are exploring their potential to improve quality and efficiency in dental restorations and tools.

Recently, Robert Elsenpeter at Digital Esthetics asked our Vice President of Products, Paul Dinh, for his thoughts on the future of 3D printing in dentistry.

“In five years, we can hope to make final restorations on 3D printers,” Paul Dinh, Vice President of Products at ClearCorrect adds. “In 10 years, we may have plastics with different colors and strengths designed specifically for different appliances.”

 “Hopefully in fifteen years, we can expect printing plastics will last longer, be lighter and be more esthetic,” Dinh says.

Check out the full Digital Esthetics article here

A lot goes into 10 years in business...

ClearCorrect began as a little family business in Dr. Pumphrey’s office to service his patients. Now, after 10 years, we have over 20,000 providers globally.

We didn't do it alone—we want to thank all our doctors who have been with us through thick and thin. It’s through your support that we’ve come this far and we’re proud to be on your team.

We made a little video to celebrate our journey and to take a look at what the next ten years may hold.

Happy holidays!

Case Study: Clear Aligner Therapy with ClearCorrect and CEREC

CEREC and ClearCorrect

Dr. Matthew Parker discusses how he pairs ClearCorrect and CEREC to improve his workflow and efficiency with clear aligners.

Continue on to Dental Products Report to learn more about Dr. Parker’s process and results.


Dr. Matthew ParkerDr. Matthew Parker loves dentistry. He is committed to providing the same level of care to each patient that he would to a member of his own family. He enjoys attending continuing education courses and is always looking for new ways to improve the quality of the dental work he provides.

Dr. Parker is a member of the American Dental Association, Arizona Dental Association, Academy of General Dentistry, International Congress of Oral Implantologists, American Association of Endodontists, and the Academy of Osseointegration. Dr. Parker is enthusiastic about technology and what those advances have done for dentistry. He continually seeks to stay abreast of the new topics in dentistry and is passionate about discussing the best treatment options for his patients.

Dr. Parker also serves as a mentor for In this role he helps educate other dentists about CEREC technology and its applications. Dr. Parker loves digital dentistry and is always excited to discuss this and learn with others.

Find out more about Dr. Parker and his practice at

We're doing the holiday giveaway, again!

     Santa’s coming early this year…                  

To celebrate and express our appreciation for all our great providers, we’ll be giving away some awesome prizes every weekday from November 21 through December 30.

Every weekday, we’ll be giving away a $100 Amazon gift card, selecting a provider randomly from all of the treatment setups that have been approved since the last gift card drawing.

Every Friday, we’ll also give away an even bigger prize, selecting a provider randomly from all of the treatment setups that have been approved since November 19, 2016.

Here’s the lineup of prizes:

We hope you enjoy the rest of 2016! Until next time…

Holiday giveaway calendar 2017.png


Void where prohibited by law. This contest is open only to registered ClearCorrect providers residing in the 50 United States and the District of Columbia who are 18 years of age or older at the time of entry. This promotion includes two categories of prizes:

  1. A random drawing for one of thirty $100 gift cards (value $100 each) will be held each weekday between November 21, 2016 and December 30, 2016. The winner for each of these drawings will be selected from the pool of all treatment setups for new Limited 6, Limited 12, and Unlimited cases that have been approved since the last gift card drawing. (For the first drawing on November 21, 2016, winners will be selected from the pool of all treatment setups for new Limited 6, Limited 12, and Unlimited cases that have been approved since November 19, 2016.)
  2. A random drawing for one of six grand prizes will be held each Friday between November 25, 2016 and December 31, 2016. The winner for each of these drawings will be selected from the pool of all treatment setups for new Limited 6, Limited 12, and Unlimited cases that have been approved since November 19, 2016. Grand prizes include: a YETI Tundra 250 Cooler (value $899.99); a GoPro HERO5 Black camera (value $499.99); an Apple Watch 2 - 38mm (value $1049); a 256 GB iPad Pro 12.9-inch with Wi-Fi (value $999); a 256 GB iPhone 7 Plus (value $969); and a Samsung 65" 4K UHD TV (value $1,399.99).

Potential winners will be notified by phone or e-mail. Recipient is responsible for any applicable taxes or fees. At ClearCorrect's discretion, prizes may be substituted for a gift card or alternate prize of similar value. No purchase necessary to win. Contact for details. Employees of ClearCorrect and their family members are ineligible for this promotion. By participating, contestant releases ClearCorrect, LLC and their directors, officers, employees and agents from any and all liability for any injury, death, loss, tax liability or damage of any kind arising from contestant’s participation in this contest, or resulting from contestant's acceptance, possession, use or misuse of the prize. Use your professional judgment. Submit and approve cases only for patients whom you believe are likely to benefit from clear aligner therapy.


Another victory for ClearCorrect: No appeal for Align at the Supreme Court

ROUND ROCK, TX--(Marketwired - August 31, 2016) Last November, the United States Court of Appeals for the Federal Circuit cleared ClearCorrect, LLC of any liability in the International Trade Commission (ITC)’s investigation relating to Align Technology’s claims of patent infringement. In March, the Court of Appeals denied the ITC and Align’s petitions for rehearing en banc. Now ClearCorrect is happy to announce that the ITC and Align have elected not to appeal that decision, solidifying the third victory in a row for ClearCorrect after several years of litigation.

Several of Align’s patents remain at risk of cancellation, as the United States Patent and Trademark Office continue its inter partes review and ex parte reexaminations initiated by ClearCorrect.

Now that the ITC decision is finalized, Align’s sole remaining lawsuit against ClearCorrect is expected to resume in Texas federal court. ClearCorrect anticipates that this final case will follow in the footsteps of the previous three and demonstrate that ClearCorrect does not violate any valid patents held by Align.

ClearCorrect Dream Team at Siroworld

Drs. Barsoum, Fischer, and Gardell talk about CEREC scanners and clear aligners.

“We’d all like to extend the message to the patients that dentistry has changed. It’s the not the same old stuff they used to be afraid of in the past. The future holds a lot more positive restorations, smiles, teeth straightening – come and get it!” - Dr. Ken Fischer


Interview: Dr. Ken Fischer shares his thoughts on ClearCorrect

Last time we interviewed Dr. Fischer, we asked if we could film him at his practice in Orange County, CA. This time, he tracked us down at this year’s AAO Annual Session to answer some frequently asked questions about ClearCorrect. Here’s what he had to say:

Thanks Dr. Fischer!

Early voting for the 2016 Townie Choice Awards is open!

Voting’s pretty neat. It takes Americans’ most treasured right—shouting opinions at strangers—and makes it both civilized and offi­cial.

But sometimes voting is hard—you‘ll have some tough decisions to make in November.

Fortunately, this summer, the correct choice is clear. In the Townie Choice Awards, there’s only one affordable, friendly, and fast candidate who makes quality aligners right here in the USA.

If you complete your 2016 Townie Choice Awards ballot by July 17th, Dentaltown will enter you to win:

•              Bose Soundlink Bluetooth Speaker

•              FitBit Blaze Watch

•              $500 Amazon Gift Card

•              Tuition to the 15th annual Townie Meeting

PLUS! You would be featured on the cover of December 2016 issue of Dentaltown Magazine and you'll win $1000!

Choosing candidates in other 2016 elections might be hard….but for the Townies, the choice is clear.

Vote Today!