By Eric Schweibenz
On January 15, 2013, ALJ Robert K. Rogers, Jr. issued Order No. 22 in Certain Digital Models, Digital Data, and Treatment Plans For Use In Making Incremental Dental Positioning Adjustment Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833).  In the Order, ALJ Rogers denied Complainant Align Technology, Inc.’s (“Align”) motion for summary determination that the asserted claims in the investigation were not invalid as anticipated.

According to the Order, Align filed the motion at issue arguing that that two of Respondents ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private) Ltd.’s (collectively, “ClearCorrect”) anticipation defenses failed as a matter of law.  The two anticipation defenses at issue were (1) anticipation by U.S. Patent No. 5,447,432 to Andreiko (“Andreiko”) and (2) anticipation by U.S. Reissue Patent No. RE35,169 to Lemchen (“Lemchen”) in light of it’s alleged incorporation of U.S. Patent No. 2,467,432 to Kesling (“Kesling”).  In support of its motion, Align argued that both Andreiko and Lemchen fail to disclose three limitations of the claims at issue:  intermediate digital data sets of tooth arrangements, fabricating multiple appliances based on digital data sets, and the use of positive models of tooth arrangements to produce appliances.  Moreover, Align argued, Lemchen does not incorporate any of these missing elements from Kesling.  Rather, as maintained by Align, Lemchen only refers to two figures of Kesling, neither of which disclose the missing claim elements.  Even if Kesling were fully incorporated by Lemchen, Align argued, these claim limitations would still be missing.  Accordingly, Align sought summary determination of no invalidity based on these defenses.

ClearCorrect and the Commission Investigative Staff (“OUII”) filed oppositions to Align’s motion.  In its opposition, as to the Andreiko reference, ClearCorrect indicated it was no longer asserting anticipation of the asserted claims by Andreiko.  Rather, ClearCorrect was only asserting that Andreiko, when combined with art identified in ClearCorrect’s interrogatory responses, renders the asserted claims obvious.  Regarding Lemchen, ClearCorrect asserted that Lemchen does disclose each and every element of the asserted claims and further, fully incorporates Kesling in its entirety.  OUII recommended that the motion be denied as moot with respect to Andreiko.  As to Lemchen, OUII also opposed summary determination, suggesting that Align’s motion was premature.  Namely, OUII cited disputes remaining between the parties as to how one of ordinary skill would view the content of Lemchen with respect to the identified elements.

In the Order, ALJ Rogers denied the motion as moot with respect to Andreiko.  Regarding Lemchen, the ALJ also denied the motion, determining that genuine issues of material fact remained regarding whether or not Lemchen anticipated the asserted claims.  Specifically, the ALJ cited disputes between the parties as to whether, and to what extent, Kesling is incorporated by reference into Lemchen and as to whether Lemchen alone, or with the alleged incorporation of Kesling, discloses each and every limitation of the asserted claims.