Align Technology Inc, San Jose, Calif, recently responded to a press release issued byClearCorrect, Houston, relating to the decision of US District Court for the Southern District of Texas to stay Align’s patent infringement lawsuit against ClearCorrect.

ClearCorrect’s press release states that “the US District Court recently granted the motion to stay the case in ClearCorrect’s favor, effectively stopping the federal case indefinitely and virtually guaranteeing the continued unrestricted operation of the company’s US-based manufacturing facility for the foreseeable future.”

According to Align Technology, while it’s true that the lawsuit filed in federal court in Texas is stayed pending the investigation of Align’s complaints filed with United States International Trade Commission (ITC), ClearCorrect’s press release mistakenly states the stay is indefinite and incorrectly implies that the issuance of the stay reflects the merit of its claims and defenses. Align instead points out that the federal court was required to issue the stay as to those claims that are common to the ITC investigations and the federal court action.

“This is a purely routine procedural matter from two months ago—it has nothing to do with the merit of ClearCorrect’s claims or defenses—and does not in any way reflect the likelihood that ClearCorrect will succeed in either the ITC investigations or in the federal court action,” said Roger E. George, Align’s vice president of legal affairs and general counsel.

In the federal court lawsuit filed on February 28, 2011, Align asserted that ClearCorrect infringed eight Align patents in the production and sale of ClearCorrect aligners.

On March 1, 2012, Align filed two complaints with the ITC against both ClearCorrect Operating LLC and Lahore, Pakistan-based ClearCorrect Pakistan (Private) Ltd. In the first complaint, Align asserted that ClearCorrect infringed seven Align patents, comprised of 280 claims, related to methods for planning and implementing orthodontic treatment using aligners. The second complaint seeks enforcement of a prior Consent Order granted by the ITC on October 27, 2006 in the OrthoClear ITC action. In April 2012, the ITC subsequently voted to initiate investigations of both complaints against both ClearCorrect and ClearCorrect Pakistan. As a result of the ITC’s decisions to investigate Align’s two complaints, the federal court action against ClearCorrect was stayed.

Separately, Align announced that the trial dates for both complaints have been scheduled by the ITC. The trial date for the enforcement action is scheduled for December 3, 2012; the trial date for the infringement action is scheduled for February 4, 2013.