Align says it prevails in ClearCorrect case

Align Technology, Inc. said it prevailed in additional proceedings initiated by ClearCorrect Operating, LLC before the US Patent and Trademark Office (USPTO) that challenged the validity of two of Align’s US patents.

“On February 22 and March 22, 2017, the USPTO issued reexamination certificates confirming the patentability of all challenged claims of Align’s US Patent Nos. 5,975,893 and 6,398,548,” said Align.

“Align was not required to amend or narrow any of the challenged patent claims — they were all confirmed based on the existing claim language.

“Both of the confirmed patents are currently asserted by Align in its patent infringement lawsuit against ClearCorrect pending in the Federal District Court, Southern District of Texas.”

Align said these two patents were in addition to three Align patents that were issued reexamination certificates by the USPTO confirming the patentability of all challenged claims, as announced by Align on February 16, 2017.

“All of the claims in these five patents, four of which are asserted by Align against ClearCorrect, have been confirmed as valid by the USPTO in 2017,” said Align.

Align also provided an update on the Patent Trial and Appeal Board’s inter partes review of Align’s US Patent No. 6,699,037 instituted in May 2016 based on a petition filed by ClearCorrect.

“The ‘037 Patent was not asserted by Align against ClearCorrect,” said Align.

“On Friday, March 24, 2017, the PTAB issued its Final Written Decision finding that claims 1, 2, 9, and 10 of the ‘037 Patent are invalid.

“The other un-challenged claims remain valid and enforceable.

“Although unrelated to the Southern District of Texas infringement litigation against ClearCorrect, Align believes that the PTAB erred in its decision and intends to appeal to the Court of Appeals for the Federal Circuit.”

Align Technology general counsel Roger George said: “We are pleased that, after reviewing four of the nine patents asserted against ClearCorrect in the Southern District of Texas infringement action, the Patent and Trademark Office has now issued reexamination certificates confirming that all the claims of those four asserted patents are valid and enforceable.

“While the PTAB’s ruling regarding the ‘037 patent is disappointing, it is important to note that Align is not asserting the ‘037 patent against ClearCorrect in the Southern District of Texas infringement litigation, or in any other current patent litigation, and we do not expect this decision to impact our infringement case against ClearCorrect.”

Align said it filed a complaint against ClearCorrect in the United States District Court for the Southern District of Texas on February 28, 2011.

In the District Court action, Align alleged that ClearCorrect infringed the claims of nine Align patents.

The case was stayed in 2012 pending resolution of a concurrent proceeding in the International Trade Commission, but the stay was lifted in January 2017.