By Eric Schweibenz
On January 22, 2013, ALJ Robert K. Rogers, Jr. issued Order No. 20 (dated January 14, 2013) and Order No. 24 (dated January 22, 2013) 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). 

According to Order No. 20, Respondents ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private), Ltd. (collectively, “Respondents”) filed a motion for partial summary determination.  Specifically, Respondents asserted the following: 1) no direct infringement of Group A or Group B method claims; 2) no induced infringement of Group A or Group B method claims; 3) claim 1 of U.S. Patent No. 6,722,880 (the ‘880 patent) is invalid; and 4) Complainant Align Technology, Inc. (“Align”) is estopped from asserting any patent related to U.S. Patent No. 6,554,611 (the ‘611 patent) based on a covenant signed by Align.

In opposition, Align provided six bases for its infringement theories.  Align argued for the validity of claim 1 of the ‘880 patent by pointing to Respondents’ failure to provide a basic obviousness analysis.  In further support of the validity of claim 1, Align provided an expert declaration and secondary considerations of nonobviousness.  Regarding Respondents’ estoppel defense, Align asserted that the covenant-at-issue was limited to the ‘611 patent.  Further, Respondents waived the right to raise this affirmative defense by failing to raise it in their pleadings.

ALJ Rogers rejected Respondents’ non-infringement, invalidity, and estoppel arguments.  ALJ Rogers rejected Respondents’ sole non-infringement assertion that Align could not rely on ClearCorrect Pakistan (Private), Ltd.’s foreign activities to support its infringement allegations.  As to Respondents’ invalidity allegations, ALJ Rogers held that Respondents’ failed to overcome the substantial evidence produce by Align in support of the validity of claim 1 of the ‘880 patent.  Lastly, ALJ Rogers rejected Respondents’ estoppel defense because Respondents’ failed to raise the defense in its pleadings and the covenant was expressly limited to the ‘611 patent.  Accordingly, ALJ Rogers denied Respondents’ motion for partial summary determination. 

According to Order No. 24, Align filed a motion for summary determination that the asserted claims are valid.  Align asserted that Respondents’ obviousness arguments are flawed because they fail to identify a single specific combination of prior art references.  Further, Align argued that Respondents failed to provide any reason, teaching, or motivation to combine the particular prior art references.  Additionally, Align averred that Respondents’ failed to provide support for their invalidity defenses based on the on-sale bar, 35 U.S.C. § 102(f), and 35 U.S.C. § 112. 

In opposition, Respondents provided citations to filings that show obviousness rejections based on a combination of references and motivations for combining the references.  Respondents also stated that they did not intend to pursue the invalidity defenses based on the on-sale bar, 35 U.S.C. § 102(f), and 35 U.S.C. § 112.

ALJ Rogers determined that the evidence presented by Respondents raised genuine issues of material facts.  Further, ALJ Rogers held that Respondents are bound by their assertion to abandon their on-sale bar, 35 U.S.C. § 102(f), and 35 U.S.C. § 112 defenses.  Accordingly, ALJ Rogers denied Align’s motion for summary determination.