ClearCorrect Scores Another Victory With the Federal Circuit

Align Technology Fails Again to Overturn ClearCorrect Victory in Widely-Watched ITC Case

ROUND ROCK, TX--(Marketwired - March 31, 2016) - ClearCorrect, LLC, a leading U.S. manufacturer of clear aligners, is pleased to announce that the United States Court of Appeals for the Federal Circuit today denied the petitions for rehearing en banc that were filed by the International Trade Commission (ITC) and Align Technology, Inc. in case number 2014-1527. This is another U.S. court decision in favor of ClearCorrect, supporting the company's position that its clear aligner product complies with legal standards and does not infringe Align's patents.

The ITC or Align Technology may ask the United States Supreme Court to review the case, but such a review is unlikely to occur under the present circumstances. Last November, the U.S. Appeals Court ruled in favor of ClearCorrect, ruling that the ITC was without jurisdiction to regulate electronic transmission of data and today's reaffirmation of that decision is a victory not only for ClearCorrect, but the entire orthodontic industry.

"Denial of these petitions solidifies our victory in both actions we faced in the ITC," said Jarrett Pumphrey, ClearCorrect's CEO. "Based on the Federal Circuit's ruling last November, we expected today's outcome and are pleased that we will have no liability from either of these cases," he added.

"Today's result, coupled with last year's settlement of a civil action with Align where both parties agreed to dismiss their claims, means that three-quarters of the litigation Align initiated against ClearCorrect has now been resolved," said Michael D. Myers, ClearCorrect's attorney in the case and a partner with the Houston, Texas law firm McClanahan Myers Espey, LLP.

Align's final remaining lawsuit against ClearCorrect is a patent infringement case in a Texas federal court that had been stayed pending the resolution of the ITC actions. In anticipation of this case, ClearCorrect initiated reexaminations with the United States Patent and Trademark Office (USPTO) of 6 of the 9 Align patents asserted in the suit. The USPTO has the jurisdiction and authority to judge the validity of patents. Those key patents are now at risk of being cancelled, as thus far, the USPTO has indicated agreement with ClearCorrect's position that all 75 claims of the patents in question are invalid.

"Unless and until all the claims against the company are dropped or resolved, ClearCorrect must continue to defend itself. And those defensive efforts are progressing quite well," Myers said.

Bite registrations are now optional

No bite registrationThat's right, you can now submit a case with just upper & lower impressions—no bite registration necessary. (Of course, we love intraoral scans, too.)

Why the change? We've developed new software that automatically articulates the arches in maximum intercuspation.

For the vast majority of cases, this is as accurate as (or more accurate than) aligning models based on a bite registration. Our technicians also double-check the occlusion against the photos you provide. Going forward, maximum intercuspation will be our default alignment technique for all cases, even if we receive a bite registration.

There may still be a few scenarios where the bite registration is preferable (for instance, when the patient has a posterior open bite).

If you want us to base the occlusion on a bite registration instead of maximum intercuspation, please let us know in the instructions when you submit the case.

As always, you're in charge.

If you have a case that's been held up waiting for a bite registration, we'll take it off hold and you should receive a treatment setup soon.

Until next time…

Carestream Dental announces NEW 3600 Intraoral Scanner

Dentistry Today recently sat down with Dr. Ed Shellard to talk all about the new CS 3600 intraoral scanner from Carestream Dental. 

Texas CEO Magazine Interviews ClearCorrect's CEO Jarrett Pumphrey

Texas CEO Magazine recently sat down with our very own CEO Jarrett Pumphrey who shares his vision on staying flexible in an ever changing world.

 “We are pretty agile. That’s not something you’ll find in a lot of medical device companies,” Pumphrey says. “We found a way to strike a balance between maintaining that flexibility and making a quality product that conforms to the rules and regulations we have to meet.”

Check out the interview here: http://www.texasceomagazine.com/features/a-vision-clear-and-straight/ 

  

ClearCorrect Fast-Tracks Review of Align Technology Patent at USPTO

ClearCorrect Proceeds With New Trial Option Against Align Technology

ROUND ROCK, TX--(Marketwired - December 02, 2015) - ClearCorrect, LLC today announced the filing of an Inter Partes Review (IPR) with the United States Patent and Trademark Office (USPTO) against Align Technology Patent 6,699,037 ('037 patent). This IPR will be conducted by administrative patent judges of the USPTO Patent Trial & Appeal Board (PTAB), who must decide the patentability of the challenged claims within twelve months. The IPR filing stands independent from ClearCorrect's other ongoing USPTO patent challenges that are directed to similar patents of Align.

"The USPTO has already indicated that all eight ongoing reexaminations present 'new' and 'substantial questions' as to the patentability of Align's portfolio. The '037 IPR challenge will resolve many of these same questions within the coming months," according to Scott A. McKeown, a partner with the Washington, DC law firm Oblon, McClelland, Maier & Neustadt who is leading the effort at the USPTO.

Last month, the U.S. Court of Appeals for the Federal Circuit absolved ClearCorrect of liability for importing products alleged to infringe patents of the Align portfolio. A third, related litigation was also resolved by the Federal Circuit decision. Align has asserted over 200 patent claims against ClearCorrect across years of unsuccessful litigations to no avail. ClearCorrect will continue to work to clear the competitive landscape of improvidently granted patents.

For more information, visit http://www.clearcorrect.com or call (888) 331-3323.

ClearCorrect Eliminates Three Align Technology Lawsuits

USPTO Rejects Patent Claims of Fourth and Final Lawsuit

ROUND ROCK, TX-- November 12, 2015

ClearCorrect, LLC, a leading U.S. manufacturer of clear aligners, has been successful once again in litigation brought against the Company by Align Technology, Inc. The United States Court of Appeals for the Federal Circuit cleared the Company of any liability in the International Trade Commission (ITC) investigation relating to certain Align patents, ending the ITC action initiated by Align in 2012. This resolves the third unwarranted and unsuccessful lawsuit Align has brought against ClearCorrect since 2011.

The November 10th Appeals Court decision is the latest in a series of favorable decisions for ClearCorrect in both the ITC and the United States Patent and Trademark Office (USPTO). “This decision solidifies the fact that the ITC is without jurisdiction to regulate electronic transmissions of data and all of the ITC’s rulings in the case are therefore null and void,” said Michael D. Myers, ClearCorrect’s attorney in the case and a partner with the Houston, Texas law firm McClanahan Myers Espey, LLP.

"While the ITC has no authority or jurisdiction to judge the validity of these patents, the USPTO certainly does, and it has found substantial questions exist in all of the Align patents that it has reviewed thus far despite Align’s oral arguments and written responses to the contrary. The input of this expert agency reinforces the strength of ClearCorrect’s insistence that we do not infringe any valid patent rights.” explains Scott A. McKeown, a partner with the Washington, DC law firm Oblon, McClelland, Maier & Neustadt who is leading ClearCorrect’s efforts at the USPTO. Align’s final case against ClearCorrect is a patent infringement case in a Texas federal court that has been dormant since 2012 pending the resolution of the ITC actions. That remaining case, however, faces substantial hurdles in light of the ongoing cancellation proceedings of the USPTO, which have significantly progressed:

  • 6 of 9 patents asserted in the Texas suit are currently subject to USPTO cancellation
  • The USPTO has agreed with ClearCorrect’s invalidity positions on over 75 claims across the first 6 patents
  • The final 3 patents which ClearCorrect will be pursuing are largely overlapping in subject matter with the current challenges Align originally filed two lawsuits against the Company in 2011, followed a year later by two ITC actions.

One of the 2011 lawsuits was settled last month when Align voluntarily dropped its claims in exchange for ClearCorrect’s dismissal of its counterclaims. Align also settled the remaining ITC action through an agreement with ClearCorrect that was contingent on the appeal decision. With the appeal ruling in its favor this week, ClearCorrect has effectively resolved three of Align’s four litigations and expects to successfully resolve the final case.

U.S. Patent Office sides with ClearCorrect to reexamine Invisalign patent portfolio

USPTO finds significant questions of patentability exist relative to Align Technology’s patents and moves to cancel key claims

Round Rock, TX - June 17, 2015 - ClearCorrect, LLC, a leading manufacturer of clear aligners, announced today that the United States Patent and Trademark Office (“USPTO”) has granted ClearCorrect’s request for reexamination of U.S. Patents 6,217,325 (the “’325 patent”); 8,070,487 (the “‘487 patent”); and 6,722,880 (the “‘880 patent”), assigned to Align Technology, Inc.

ClearCorrect’s evidence of unpatentability has been accepted by the USPTO across all challenged patents. A formal rejection of the claims of the ‘325 patent has been issued. Align must respond to this notice within two months’ time if reversal of the USPTO’s determination is to be pursued. The USPTO is set to issue formal rejections in the ‘487 and ‘880 patents in the weeks ahead based upon some of the same evidence.

“It has been our longstanding position that Align’s patents offered nothing new or novel given the historic inventions made by orthodontists over the years.” said Jarrett Pumphrey, CEO, ClearCorrect. “At ClearCorrect we are committed to promoting competition and using the USPTO to further true innovation and invention.”

ClearCorrect has filed four reexamination requests concerning patents held by Align Technology. Acceptance of the fourth request is expected in due course.

"The USPTO has found that the prior art submitted with these reexaminations is not only important in reassessing patentability of these patents, but in fact, renders the challenged claims unpatentable. We look forward to the ultimate cancellation of these claims," said Scott McKeown, a partner at Oblon and lead counsel for ClearCorrect’s reexamination effort.

“Align’s claims are all very similar and revolve around a core concept of orthodontic treatment that has existed for more than seven decades,” said Mark Gilbreth, attorney for ClearCorrect. “As such, all of the patent claims ClearCorrect has challenged—and those it intends to challenge in the future—are unpatentable by virtue of the same prior art.”

Align Technology and ClearCorrect Reach Agreement to Resolve ITC Remanded Enforcement Action

ClearCorrect announced today that the Company and Align Technology, Inc. ("Align") have agreed to resolve the pending Remanded Enforcement Proceeding (Inv. No. 337-TA-562 or the "'562") before the International Trade Commission (ITC). The parties to this agreement (the "Termination Agreement") are Align, ClearCorrect US, ClearCorrect Pakistan (Private), Ltd., Mudassar Rathore; Waqas Wahab; Asim Waheed; and Nadeem Arif (collectively, "the Parties"). The resolution will be dependent on the outcome of the pending appeal before the Federal Circuit in the Infringement Action (Inv. No. 337-TA-833 or the "'833").

The Termination Agreement includes the following terms:

  • In the event of a Final Finding in favor of ClearCorrect in the Infringement Action, ClearCorrect US, ClearCorrect Pakistan (Private), Ltd.; Mudassar Rathore; Waqas Wahab; Asim Waheed; and Nadeem Arif would have no obligations and the Remanded Enforcement Action would remain resolved and terminated.
  • In the event of a Final Finding in the Infringement Action in favor of Align, ClearCorrect US will make two payments of $200,000 (US) to Align within 30 days and 180 days of such Final Finding.
  • Beginning 30 days after any Final Finding in the Infringement Action in favor of Align until the expiration of Align's asserted patents, ClearCorrect US will not employ, engage, contract with, or otherwise utilize any former Align or Orthoclear employees for the design of its aligner products for use in the United States. 
  •  "Final Finding in Favor of Align" means any final, non-appealable decision from the International Trade Commission, Court of Appeals for the Federal Circuit, or U.S. Supreme Court in the '833 Appeals, including after remand, that (i) ClearCorrect US directly infringes at least one of the '562 Remand Action Asserted Claims; (ii) ClearCorrect Pakistan (Private), Ltd., contributorily infringes that claim; (iii) that the infringed claim is valid, enforceable, and not subject to an allowed use (e.g. covenant not to sue) and (iv) there is a corresponding violation of Section 337 of the Tariff Act of 1930 with regard to such infringement.

The resolution allows the Parties to avoid the cost of the Remanded Enforcement Action hearing and potential further proceedings, to avoid the uncertainty of the outcome of the Remanded Enforcement Action and to agree, in advance, to a resolution of the Remanded Enforcement Action contingent on the outcome of the Infringement Action appellate proceedings, given that many issues raised in the Remanded Enforcement Action will ultimately be resolved as part of the appellate process in the Infringement Action. The Parties expect the Federal Circuit oral argument in the Infringement Action to take place in July 2015, with a decision by the Federal Circuit six to nine months later. The resolution of the Remanded Enforcement Action does not impact the positions taken by the parties and the decisions already issued and on appeal in Infringement Action or the stayed patent infringement action in federal district court in Houston.

Check out the full press release here.

2014: Year in Review

First of all, happy New Year!

We've got plenty of exciting plans for 2015, but we thought it might be helfpul to take a moment first to review some of the improvements we made in 2014 (just in case you missed them).

We'll have plenty more to announce soon. Until then, we hope you have a great start to your new year!

KXAN Reports on ClearCorrect

As you might remember, ClearCorrect's offices moved from Houston to Round Rock, TX about a year ago. Since then, we've been making waves in the local tech-field, and the jobs we've brought to the area have garnered the company lots of attention.

Our very own Anthony Penketh, Chief Marketing Officer, recently sat down with local news station KXAN to discuss the company's move. Check out the story below!