ROUND ROCK, TX--(Marketwired - March 28, 2017) - On Friday, March 24, 2017, ClearCorrect, LLC was notified that the United States Patent and Trademark Office's (USPTO) Patent Trial & Appeal Board (PTAB) has ordered the cancellation of all challenged claims of Align Technology's U.S. Patent 6,699,037 ('037) -- a patent containing key concepts and claims similar to those featured in the pending patent infringement case that Align filed against ClearCorrect in 2011.
This ruling was the final result of the inter partes review (IPR) initiated by ClearCorrect's legal team in 2015. The panel of administrative patent judges, including the PTAB's vice-chief judge, found that ClearCorrect demonstrated that Align's claims were unpatentable because they were obvious combinations of known technology.
This decision directly contradicts the recent ex parte reexaminations of related Align Technology patents at the USPTO. Although those reexamination decisions found in favor of Align, they featured the same claim terms and prior art discussed in the IPR. All reexamination proceedings, unlike inter partes reviews, are one-sided; therefore the USPTO examiners did not have the benefit of a rebuttal from ClearCorrect.
ClearCorrect's lead counsel, Scott A. McKeown (a partner with the Washington, DC law firm Oblon, McClelland, Maier & Neustadt), explained:
"The PTAB's decision completely unravels the one-sided record of the reexaminations. With the complete story in hand, the PTAB correctly concluded -- like many others in the industry -- that the MBA students who founded Align Technology simply leveraged off-the-shelf components.
"Although the reviews and reexaminations were conducted concurrently, it appears that Align did not provide the patent examiners with ClearCorrect's IPR trial brief. The IPR decision highlights the fact that the reexaminations would not have concluded in Align's favor except for the missing review briefing. These missing briefs, in addition to the IPR undermining the flawed reasoning expressed in the reexaminations, will likely result in the reexamined patents being rendered unenforceable."
Several key Align patents expire in October 2017, but there is one remaining U.S. lawsuit between ClearCorrect and Align ongoing at the United States District Court for the Southern District of Texas (TXSD). ClearCorrect's legal team expects the PTAB's decision to directly affect Align's claims in the TXSD as the bulk of the arguments hinge on the art and claims presented during the review. The ruling from the PTAB will also demonstrate that Align did not provide the necessary documents to the USPTO examiners and therefore the enforceability of these reexamined patents in the TXSD will be in jeopardy.
About ClearCorrect, LLC
For over ten years, ClearCorrect has been a leading manufacturer of clear aligners, discreetly correcting malocclusion for teenagers and adults since 2006. ClearCorrect offers a more affordable and doctor-friendly approach to more than 20,000 doctors in multiple countries around the world. For more information, visit clearcorrect.com or call (888) 331-3323.