Align, maker of Invisalign teeth-straightening products, in December 2011 filed separate patent infringement lawsuits against German firms Ortho Caps and Rasteder KFO, asserting that they both "infringe Align patents by making, offering to sell, and selling their respective clear aligner therapy systems in Germany."
Late last month a German court agreed, mandating that Ortho Caps and Rasteder KFO provide Align with all its accounting for the infringing devices and that they pay damages for their infringement, in addition to ceasing all infringing actions, Align reported.
"We are pleased by the judge’s finding that several permanent injunctions be entered against both Ortho Caps and Rasteder KFO," Align vice president and general counsel Roger George said in prepared remarks. "The Düsseldorf Court’s rulings, combined with the Initial Determination issued by the U.S. International Trade Commission Administrative Law judge in May that ClearCorrect Houston and ClearCorrect Pakistan infringe 7 Align patents, should send a strong and clear message to infringers of Align’s patents."
The defendants have appealed the granting of these injunctions against them, but that may not stop Align from enforcing the judgments, the company said, adding that it’s "confident" that it’s legal maneuvers will prevail.
The District Court of Dusseldorf in the Federal Republic of Germany’s injunctions are based upon a July decision in which the court found Ortho Caps and Rasteder KFO separately infringe the German parts of European patents that cover the broad methods of digital treatment planning and manufacturing of aligners, Align noted. The German court also found that Ortho Caps infringes Align’s patent for the physical template for applying attachments.
To continue selling aligners in Germany, the German court’s decision requires Ortho Caps and Rasteder KFO to use a process that does not infringe the patents on which its judgments are based.
To minimize treatment disruptions for Ortho Caps’ and Rasteder KFO’s customers and their patients, Align offered to let the defendants complete their cases for products manufactured and ordered prior to August 27 if the German companies "promptly accept Align’s offer, abide by the terms of the permanent injunctions being enforced with respect to accounting and accepting and/or fulfilling new orders, and provide certain non-patient private information required by Align concerning the in-progress cases until those cases are complete."
It’s not Align’s 1st win this year. Separately, an International Trade Commission judge in May found that Pakistani dental device maker ClearCorrect and a U.S. affiliate infringed 7 of Align’s patents. Align has further asked the ITC to issue a cease-and-desist letter against the duo.