ALJ Rogers Denies Motion For Summary Determination Of Infringement in Certain Digital Models, Digital Data And Treatment Plans For Use In Making Incremental Dental Positioning Adjustment Appliances (337-TA-833)

On February 15, 2013, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 27 (dated January 23, 2013) denying Align Technology, Inc.’s (“Align”) motion for summary determination of infringement 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).

By way of background, the investigation is based on a complaint filed by Align alleging violation of Section 337 in the importation into the U.S. and sale of certain digital models, digital data, or treatment plans for use in making incremental dental positioning adjustment appliances that infringe one or more claims of U.S. Patent Nos. 6,217,325, 6,705,863, 6,626,666, 8,070,487, 6,471,511, 6,722,880, and 7,134,874.  See our April 6, 2012 post for more details on the investigation.

According to the Order, Align moved for summary determination that ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private) Ltd. (collectively, “Respondents”) infringe several claims of the asserted patents and have not sufficiently rebutted this argument.  Specifically, Align asserted that Respondents’ expert witness is “wholly unreliable” based on his newly adopted claim constructions and failure to examine intrinsic evidence in attempting to construe claim terms.  Align also maintained that Respondents have admitted to infringement in some of their interrogatory answers and that this position is supported by evidence.  In relation to claim terms where Respondents dispute that they infringe, Align contended that Respondents’ expert failed to explain why Respondents do not practice the feature, relied on an improper construction, or failed to provide supporting and/or persuasive evidence. 

Respondents opposed Align’s motion and denied infringement in all instances.  Respondents argued that Align’s theories of direct and inducement infringement were “opposite to those alleged in the complaint” in terms of which Respondent was the inducer.  Respondents also set forth several legal arguments, asserting that digital data sets cannot form a basis for infringement as the Federal Circuit has held that transmitting information is not covered by § 271(g) and that conduct outside of the United States “cannot form a basis to allege infringement of method claims.”  Respondents also argued that their conduct was authorized pursuant to a covenant not to sue, and that Align “authorized the manufacture and sale of all of the products at issue.”

ALJ Rogers began by noting that the parties appear to have resolved all claim construction disputes but for two terms, and since the parties “clearly do not agree on the construction of these remaining terms” it was premature to construe the terms on the “abbreviated summary determination record.”  Therefore, the motion for summary determination of infringement of any claims including those disputed terms was denied.  ALJ Rogers also noted that Align’s argument that Respondents have admitted to infringement was unpersuasive, and the disagreement between each parties’ expert for each of the remaining claims suggested genuine issues of material facts were in dispute.  As such the motion was denied. 

However, ALJ Rogers noted that going forward, Respondents would be limited to claim constructions disclosed in the Joint Claim Construction Chart, and this includes “adding what the ‘plain and ordinary meaning’ of a term would be to one of ordinary skill in the art” if that plain and ordinary meaning was not included in the Joint Claim Construction Chart.

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