Jessica Karmasek Jun. 22, 2015, 2:09pm


WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office has granted a request by ClearCorrect, the maker of clear, removable dental braces, to reexamine three patents assigned to its competitor, Align Technology Inc.

ClearCorrect LLC, headquartered in Round Rock, Texas, is one of the leading manufacturers of clear aligners.

The company, in its request to the PTO, asked for review of Align’s U.S. Patent Nos. 6,217,325; 8,070,487; and 6,722,880. Align, based in San Jose, Calif., makes the popular Invisalign brand aligners.

“It has been our longstanding position that Align’s patents offered nothing new or novel given the historic inventions made by orthodontists over the years.” ClearCorrect CEO Jarrett Pumphrey said last week.

According to ClearCorrect, a formal rejection of the claims of the ‘325 patent has been issued. Align must respond to this notice within two months if reversal of the office’s determination is to be pursued.

The PTO is set to issue formal rejections in the ‘487 and ‘880 patents in the weeks ahead based on some of the same evidence, ClearCorrect said in a statement.

The company has filed four reexamination requests concerning patents held by Align. Acceptance of the fourth request is expected in “due course,” ClearCorrect said.

“The U.S. PTO has found that the prior art submitted with these reexaminations is not only important in reassessing patentability of these patents, but, in fact, renders the challenged claims unpatentable,” said Scott McKeown, a partner at Oblon McClelland Maier & Neustadt LLP and lead counsel for ClearCorrect’s reexamination effort. “We look forward to the ultimate cancellation of these claims.”

Mark Gilbreth, an attorney for ClearCorrect, explained that Align’s claims are very similar and revolve around a “core concept” of orthodontic treatment that has existed for more than seven decades.

“As such, all of the patent claims ClearCorrect has challenged -- and those it intends to challenge in the future -- are unpatentable by virtue of the same prior art,” he said.

Align, in response, filed an 8-K report with the U.S. Securities and Exchange Commission. The broad form is used to notify investors of any material event that is important to either shareholders or the SEC.

The company noted in the report that the PTO’s decision to reexamine claims in its three patents is a “low-threshold standard” and only “the start of a process.”

“The reexamination process at this point is in the preliminary stage based only on arguments provided by ClearCorrect, and no final decision has been made by the U.S. PTO,” wrote Roger E. George, vice president for legal and corporate affairs, general counsel and corporate secretary for Align.

“Now Align will have the ability to respond and present its rebuttal arguments and evidence.”

George noted in the 8-K that all three patents were previously found to be valid by an administrative law judge and the commission. In fact, ClearCorrect was found to have infringed all three patents, he wrote.

The cited prior art references relied on by ClearCorrect in the reexaminations were not new and all were previously of record with the PTO, he wrote in the report.

The company seems to be confident it will prevail, noting that all previous reexamination of its patents have resulted in the patents being confirmed valid.

“Align intends to continue to expand its patent portfolio and vigorously enforce its intellectual property rights,” George wrote the commission and shareholders.

In patent law, reexamination is a process in which a third party, or inventor, can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable.

To have a patent reexamined, an interested party must submit prior art that raises a “substantial new question of patentability.”

Prior art is defined as information made available to the public in any form before a given date that might be relevant to a patent’s claims of originality.

From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.

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