By Eric Schweibenz
On March 1, 2012, Align Technology, Inc. of San Jose, California (“Align”) filed an enforcement complaint in Certain Incremental Dental Positioning Adjustment Appliances and Methods of Producing Same (Inv. No. 337-TA-562) against ClearCorrect Operating, LLC of Houston, Texas (“ClearCorrect USA”), ClearCorrect Pakistan (Private), Ltd. of Pakistan (“ClearCorrect Pakistan”), Mr. Mudassar Rathore c/o ClearCorrect Pakistan, Mr. Waqas Wahab c/o ClearCorrect Pakistan, Mr. Nadeem Arif c/o ClearCorrect Pakistan, and Dr. Asim Waheed c/o ClearCorrect Pakistan (collectively, the “Proposed Enforcement Respondents”) for alleged violations of a consent order that was filed on October 13, 2006 and granted by the International Trade Commission (the “Commission”) on October 27, 2006.

By way of background, the Commission instituted the underlying investigation on February 9, 2006 based on Align’s complaint of January 11, 2006.  The underlying complaint named OrthoClear, Inc., OrthoClear Holdings, Inc., and OrthoClear Pakistan Pvt, Ltd. (collectively, “OrthoClear”) as Respondents.  According to the enforcement complaint, on October 27, 2006, ALJ Robert L. Barton, Jr. issued an Initial Determination granting the parties’ joint motion to terminate the investigation and entered a consent order, which the Commission elected not to review on November 13, 2006.

According to the enforcement complaint, the consent order requires OrthoClear and its “officers, directors, agents, servants, employees, successors, and assigns, and all persons, firms, or corporations acting or claiming to act on its behalf or under its direction or authority” to refrain from selling for importation, importing into the U.S., or selling in the U.S. after importation the articles of record in the underlying investigation and “any other articles manufactured in violation of” any of the claims of the asserted patents and/or Align’s trade secrets.  The consent order further prohibits aiding, abetting, encouraging, participating in, or inducing the importation into the U.S. or sale in the U.S. after importation of any of the articles at issue.

According to the enforcement complaint, the Proposed Enforcement Respondents are the successors to the various OrthoClear entities, and/or former “officers, directors, agents, servants, [or] employees” of the various OrthoClear entities.  In the enforcement complaint, Align alleges that “[a]lthough the Proposed Enforcement Respondents are therefore bound by the Consent Order and have full knowledge thereof, they refuse to abide by its terms or to conform their conduct to the directives of the Commission.”  Specifically, Align alleges that the Proposed Enforcement Respondents have violated the consent order by way of their:  (i) sale for importation, importation, or sale after importation of the relevant digital data sets; and/or (ii) their manufacturing of dental positioning adjustment appliances using the digital data sets by way of the processes, systems and techniques recited in one or more claims of the asserted patents; and/or (iii) the aiding, abetting, encouraging, participating in, or inducing the foregoing.

In view of these alleged violations of the Commission’s consent order, Align requests that the Commission institute a formal enforcement proceeding pursuant to 19 C.F.R. § 210.75.  Align further states that, concurrently with the filing of the instant enforcement complaint, it is also filing a new ITC complaint naming ClearCorrect USA and ClearCorrect Pakistan as Proposed Respondents.  See our March 2, 2012 post for more details.

With respect to potential remedy, Align requests that the Commission issue a permanent cease and desist order prohibiting the Proposed Enforcement Respondents and parties acting in concert with them from engaging in illegal activities.  Align further requests that the Commission modify the consent order in any manner that would assist in the prevention of the unfair practices that were originally the basis for issuing such orders or assist in the detection of violations of such orders.  Additionally, Align requests that the Commission impose any available civil penalties for violation of the consent order, and if necessary, bring a civil action in an appropriate U.S. district court pursuant to 19 C.F.R. § 210.75(c) and 19 U.S.C. § 1337(f) requesting the imposition of such civil penalties or the issuance of such injunctions as the Commission deems necessary to enforce its orders and protect the public interest.  Lastly, Align requests that the Commission impose such other remedies and sanctions as are appropriate and within the Commission’s authority.

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