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.

Why?

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.”
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