ITC Issues Public Version Of Opinion In Certain Incremental Dental Positioning Adjustment Appliances (337-TA-562)
On February 19, 2013, the International Trade Commission (the “Commission”) issued the public version of its opinion in Certain Incremental Dental Positioning Adjustment Appliances and Methods of Producing Same (Inc. No. 337-TA-562).
By way of background, this investigation is based on a complaint filed by Align Technology, Inc. (“Align”) alleging violation of Section 337 in the importation into the U.S. and sale of incremental dental positioning adjustment appliances by reason of infringement of certain claims of U.S. Patent Nos. 6,685,469; 6,450,807; 6,394,801; 6,398,548; 6,722,880; 6,629,840; 6,699,037; 6,318,994; 6,729,876; 6,602,070; 6,471,511; and 6,227,850. The Respondents in this investigation are OrthoClear, Inc.; OrthoClear Holdings, Inc.; and OrthoClear Pakistan Pvt, Ltd. (collectively, the “Respondents”). ALJ Rogers terminated the original investigation based on a consent order, which prohibited “the importation, sale for importation, and sale in the United States after importation of incremental dental positioning adjustment appliances referenced in the complaint and any other articles manufactured in violation of the asserted patents or trade secrets.”
On March 1, 2012, Align filed a complaint seeking an enforcement proceeding under Commission Rule 210.75. See our March 5, 2012 post for more details. The complaint alleged that successors and officers of the original Respondents violated the consent order by continuing to practice prohibited activities by “importing, offering for sale, and selling for importation into the United States digital datasets.” According to the enforcement complaint, the digital datasets are used to manufacture dental appliances in the U.S. The Notice of Institution of an Enforcement Proceeding stated that the threshold issue is whether the accused digital datasets are within the scope of the consent order.
On November 28, 2012, ALJ Rogers issued Order No. 57 (not yet publicly available), determining that the accused digital datasets fall within the consent order’s “articles manufactured” provision. On December 21, 2012, the Commission determined to review Order No. 57.
In the opinion, the Commission determined that the digital datasets were electronic transmissions not covered by the consent order. The Commission noted two prior investigations where the accused products included both hardware and software components. In both of the previous investigations, the Commission included express language excluding electronic transmissions in the cease and desist orders. The Commission noted in the opinion that the consent order in the present investigation was akin to the cease and desist orders issued in the cited investigations. Accordingly, the Commission held that “a consent order should, like a cease and desist order, contain explicit language including electronic transmissions where such coverage is intended.” Based on this holding, the Commission determined that the digital datasets at issue were not covered by the consent order because the consent order did not have express language including electronic transmissions. Therefore, the Commission found no violation of the consent order and terminated the investigation.