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 SouthernDistrict of Texas to stay Align’s patent infringement lawsuit againstClearCorrect.
ClearCorrect’s press release states that “the US District Courtrecently granted the motion to stay the case in ClearCorrect’s favor,effectively stopping the federal case indefinitely and virtuallyguaranteeing the continued unrestricted operation of the company’sUS-based manufacturing facility for the foreseeable future."
According to Align’s response, while it’s true that the lawsuit filedin federal court in Texas is stayed pending the investigation ofAlign’s complaints filed with United States International TradeCommission (ITC), ClearCorrect’s press release mistakenly states thestay is indefinite and incorrectly implies that the issuance of the stayreflects the merit of its claims and defenses. Align instead points outthat the federal court was required to issue the stay as to thoseclaims that are common to the ITC investigations and the federal courtaction.
"This is a purely routine procedural matter from two months ago—ithas nothing to do with the merit of ClearCorrect’s claims ordefenses—and does not in any way reflect the likelihood thatClearCorrect will succeed in either the ITC investigations or in thefederal court action," said Roger E. George, Align’s vice president oflegal affairs and general counsel.
In the federal court lawsuit filed on February 28, 2011, Alignasserted that ClearCorrect infringed eight Align patents in theproduction and sale of ClearCorrect aligners.
On March 1, 2012, Align filed two complaints with the ITC againstboth ClearCorrect Operating LLC and Lahore, Pakistan-based ClearCorrectPakistan (Private) Ltd. In the first complaint, Align asserted thatClearCorrect infringed seven Align patents, comprised of 280 claims,related to methods for planning and implementing orthodontic treatmentusing aligners. The second complaint seeks enforcement of a priorConsent Order granted by the ITC on October 27, 2006 in the OrthoClearITC action. In April 2012, the ITC subsequently voted to initiateinvestigations of both complaints against both ClearCorrect andClearCorrect Pakistan. As a result of the ITC’s decisions to investigateAlign’s two complaints, the federal court action against ClearCorrectwas stayed.
Separately, Align announced that the trial dates for both complaintshave been scheduled by the ITC. The trial date for the enforcementaction is scheduled for December 3, 2012; the trial date for theinfringement action is scheduled for February 4, 2013.
