It’s the latest stage in their long-running legal war over orthodontic device technology. In April, the companies seemed to be closer to burying the hatchet with a deal to resolve a pending proceeding at the International Trade Commission. The agreement is subject to the outcome of an appeal in the U.S. Court of Appeals for the Federal Circuit, which is expected to be heard in July.
If the court rules in favor of Align, ClearCorrect will make a pair of $200,000 payments to Align within 30 and 180 days, respectively. Clear Correct will also be forbidden to engage with any former Align or Orthoclear employee over the design of any aligner products to be marketed in the U.S., according to the agreement.
If the court rules against Align, ClearCorrect would be released of any obligations. In July 2014, that court ruled Align could move forward with its patent infringement case against ClearCorrect. The ruling overturned a 2013 decision by the ITC.
Last week ClearCorrect said the Patent Office agreed to its reexamination request on 3 of the 4 patents it asked to have reviewed.
“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 in prepared remarks. “At ClearCorrect we are committed to promoting competition and using the USPTO to further true innovation and invention.”
“The USPTO 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. We look forward to the ultimate cancellation of these claims,” added ClearCorrect ouside counsel Scott McKeown.
For its part, Align said all 3 patents were previously found to be valid by a previous ITC investigation, in which ClearCorrect was found to have infringed the patents. One of the patents was “confirmed as valid and patentable” by the PTO during a prior spat with OrthoClear (founded and led by former ClearCorrect founder & CEO Muhammad Chisti), Align said.
“The cited prior art references relied upon by ClearCorrect in these reexaminations are not new, and were all previously of record with the USPTO and were considered by the original prosecution, or prior reexaminations, or by the [administrative law judge] and [the ITC] during the ITC proceedings,” the company said. “All previous re-examinations of Align’s patents have resulted in the patents being confirmed valid.”