U.S. Patent Office to Reopen Align Patent Reexaminations

Good news, everyone!

We received notice from the U.S. Patent and Trademark Office (USPTO) that two of ex parte reexaminations that concluded in Align’s favor earlier this year have been ordered to reopen by the USPTO Director.

Last month, we published a press release about the USPTO’s Patent Trial and Appeal Board (PTAB) decision to cancel all of the challenged claims in Align’s U.S. Patent 6,699,037—a huge coup for Team ClearCorrect!

As anticipated, the PTAB’s decision helped bolster our efforts with our other Patent Office proceedings and we expect more reexaminations to reopen with favorable conclusions from the USPTO.

Can’t get enough of all this crazy patent stuff? Maybe you’re in a Fantasy Patent-Law League? Check out our blog post about our proceedings at the USPTO for more details and links to legal documents (oooh!).

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.”

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.

USPTO determines Align’s claims probably invalid

We got some great news from the USPTO!

But first, let me explain. No, there is too much. Let me sum up:

Last year, ClearCorrect petitioned for ex parte reexaminations , asking the United States Patent and Trademark Office (USPTO) to review several of Align’s patents.* These ex parte reexaminations are currently underway. So far, the USPTO has indicated agreement with ClearCorrect's position that all 75 claims of the patents in question are invalid.

Meanwhile, our legal team has also petitioned for an inter partes review of Align Technology’s patent #6,699,037 (’037) with the USPTO Patent Trial & Appeal Board. (Align has not accused ClearCorrect of infringing this patent, but it contains claims similar to those in other patents that Align has asserted against us.)

An inter partes review occurs between two parties, with the USPTO judges acting as examiners. This approach allowed ClearCorrect’s legal team to directly present key examples of “prior art” that predate Align’s in an effort to question ‘037’s patentability.

Phew! Here’s the “great news” part:

On May 23rd, 2016, the Patent Trial & Appeal Board accepted ClearCorrect’s petition and decided to institute a trial to reexamine key claims of the ’037 patent. The board determined that there is a “reasonable likelihood that ClearCorrect would prevail in showing that claims 1, 2, 9, and 10 of the ’037 patent are unpatentable.” (Over 70% of challenges accepted by the board result in cancellation of patent claims.)

Scott A. McKeown (a partner with the Washington, DC law firm Oblon, McClelland, Maier & Neustadt), who is leading our effort at the patent office, explains:

“We now have the board's feedback on our key ground of invalidity, which is presented in the inter partes review. We now know there is strong likelihood for a positive outcome for our pending reexamination proceedings. This is exactly what we hoped to accomplish when we filed the ’037 review.”

Cool! So what’s going on now?

We are still awaiting final decisions in the ex parte reexaminations. Ex parte reexaminations tend to take one to two years to resolve. Inter parte reviews can be faster—we expect a final decision in this case within a year. Align’s one remaining lawsuit against us is still stayed as the ITC deliberates whether they want to try their appeal again with the Supreme Court.

The board’s decision to review this patent is the latest in a series of legal victories for ClearCorrect. It is also indicative of reasoning that should also apply to the remaining lawsuit with Align. There is little reason to think that Align’s claims will fare better outside of the USPTO, since the same or similar patents will be cited. Align’s chances for success are rapidly diminishing as their claims are repudiated at every turn.

High-five, Legal. You rock.

*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.

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.

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.

Congrats to Our Attorney Mike Myers -- American Lawyers' Litigator of the Week

Mike MyersShout out to our Attorney Mike Myers, who was named American Lawyers’ Litigator of the Week!

The recent ruling in favor of ClearCorrect against Align Technology is a big win and officially ends three of four litigations asserted by Align.  Moreover, we fully expect to successfully resolve the final case.

Congratulations, Mike!

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.