By Eric Schweibenz
On January 10, 2013, ALJ Robert K. Rogers, Jr. issued Order No. 19 denying Complainant Align Technology, Inc.’s (“Align”) motion to preclude certain invalidity defenses of Respondents ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private) Ltd.’s (collectively, “ClearCorrect”) 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).

In support of its motion, Align argued that ClearCorrect should be precluded from asserting invalidity defenses under 102(b), 102(f), 103, and 112 due to deficiencies in their invalidity contentions. Specifically, Align argued that ClearCorrect’s interrogatory responses regarding invalidity were deficient and “largely mirrored” invalidity contentions found to be fatal in a district court action.  Align asserted that although ClearCorrect provided supplemental responses, they were still deficient.  Align further argued that interrogatory responses regarding ClearCorrect’s 102(b) defense “vaguely mention[] an alleged offer and sale” without detail or claim charts and that their responses related to 102(f) failed to disclose specific identities of persons or circumstances.  As to ClearCorrect’s responses regarding their 103 defense, Align argued that the responses did not identify specific combinations or motivations to combine.  Regarding ClearCorrect’s 112 defense responses, Align argued that these defenses simply provided a list of “statutorily deficient” claim elements without providing facts or detailed bases for the deficiencies and that the responses confused issues related to definiteness, written description, and enablement.

ClearCorrect and the Commission Investigative Staff (“OUII”) filed responses opposing the motion. In ClearCorrect’s response, it argued that no impasse had been reached before Align filed the motion and that ClearCorrect’s responses properly answered all of Align’s interrogatories.  OUII asserted that Align had not shown discovery abuse sufficient to justify sanctions, nor had it provided authority for awarding sanctions for providing “incomplete” or not “viable” defenses.

According to the Order, after these motions and responses were filed, ClearCorrect indicated it would no longer pursue defenses under 102(b), 102(f), and 112.  Thus, ALJ Rogers found Align’s motion with respect to those defenses moot.  As to ClearCorrect’s remaining 103 defense, the ALJ agreed with OUII, determining that Align had not demonstrated conduct meriting sanctions.  Specifically, ALJ Rogers found that Align had not shown that the interrogatory responses had an improper purpose.  Rather, ALJ Rogers found that ClearCorrect’s responses demonstrated that ClearCorrect had conducted a “reasonable inquiry,” including over 200 pages of claim charts with pin citations to relevant art, identifying specific combinations, and citing to documents that explain motivations to combine.  As to Align’s point about the district court, ALJ Rogers noted that sanctions were not warranted at the ITC simply because a district court found that similar contentions did not comply with Local Patent Rules. Accordingly, ALJ Rogers denied Align’s motion.