ALJ Rogers Rules On Motion To Strike Notice Of Prior Art In Certain Digital Models, Digital Data, And Treatment Plans For Use In Making Incremental Dental Positioning Adjustment Appliances (337-TA-833)

On January 8, 2013, ALJ Robert K. Rogers, Jr. issued Order No. 18 granting-in-part and denying-in-part Complainant Align Technology, Inc.’s (“Align”) Motion to Strike the Notice of Prior Art in Certain Digital Models, Digital Data, and Treatment Plans for use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833).

According to the Order, Align argued that Respondents ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private) Ltd.’s (collectively, “Respondents”) citation to over 450 references in the Notice of Prior Art was excessive and thus should be stricken in its entirety.  Further, Align asserted that the following should be stricken from Respondents’ Notice of Prior Art: (1) ten prior art references not originally included in response to Align’s discovery requests that were included in the Notice of Prior Art; (2) various references that failed to include the information required by Ground Rule 5; (3) Respondents’ general assertion that Align’s public sales, offers for sale and/or uses of products more than one year prior to the critical date invalidate each of the asserted patents; (4) litigation materials; and (5) Respondents’ statement reserving the right to freely supplement their Notice of Prior Art.

In opposition, Respondents distinguished the case cited by Align, Certain Electronic Devices with Graphics Data Processing Systems, Components Thereof, and Associated Software, Inv. 337-TA-813, Order No. 18 (May 23, 2012) (“Certain Electronics”), where ALJ Gildea struck Apple’s Notice of Prior Art for having over 1,700 references.  See our June 29, 2012 post for more details on Certain Electronics.  Respondents argued that there are seven patents-at-issue in the present investigation and one quarter the number of references.  As to Align’s other assertions, Respondents asserted that the litigation materials were added to clarify the record and that Align had prior notice of the ten additional references, which were added as a result of Align changing the priority date in a related federal district court case.

The Commission Investigative Staff (“OUII”) opposed striking the Notice of Prior Art in its entirety, but supported an order striking certain language and information and requiring Respondents to submit an amended Notice of Prior Art.  OUII asserted that all references that fail to meet the requirements of Ground Rule 5 should be stricken and amended by Respondents.  Specifically, OUII argued that Respondents should be required to amend the Notice of Prior Art to provide page numbers where missing and specific citations to references contained in the prosecution histories.  Further, OUII argued that Respondents’ general reference to Align’s prior public sales, offers for sale and/or uses of products more than one year prior to the critical date should be stricken because it failed to provide the information required by Ground Rule 5.

ALJ Rogers denied Align’s request to strike the Notice of Prior Art in its entirety because the 450 references for the seven patents-in-suit (approximately 65 references per patent) are not necessarily unreasonable.  Further, ALJ Rogers denied Align’s requests to strike the ten references not originally included in response to Align’s discovery requests and Align’s request to strike the litigation materials.
ALJ Rogers granted Align’s request to strike: (1) all references that failed to comply with Ground Rule 5; (2) Respondents’ general assertion that Align’s public sales, offers for sale and/or uses of products more than one year prior to the critical date invalidate each of the asserted patents; and (3) Respondents’ statement reserving the right to freely supplement their Notice of Prior Art.  Specifically, ALJ Rogers struck Respondents’ general reference to the prosecution histories of the patent-in-suit and all references that failed to include the information required by Ground Rule 5, including references not specifically raised in Align’s motion.  As to Respondents’ general assertion that Align’s public sales, offers for sale and/or uses of products more than one year prior to the critical date invalidate each of the asserted patents, ALJ Rogers held that such a statement fails to meet the specific requirements of Ground Rule 5 which requires the name and address of any person who may have specific information relating to the prior sale, offer for sale, or use.  ALJ Rogers held that Respondents’ statement reserving the right to freely supplement their Notice of Prior Art was improper because it was an attempt to avoid Ground Rule 5’s requirement for a written motion and a showing of “good cause” prior to the admission of evidence not included on the Notice of Prior Art.

Based on the findings discussed above, ALJ Rogers denied-in-part and granted-in-part Align’s Motion to Strike the Notice of Prior Art.

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