PTAB

IPR2016-00270

ClearCorrect Operating LLC v. Align Technology Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Incrementally Moving Teeth
  • Brief Description: The ’037 patent discloses a method for fabricating a series of dental appliances for repositioning teeth. The method involves providing, at the outset of treatment, a complete plurality of digital data sets representing successive tooth arrangements from an initial to a final position, and using this data to control a fabrication machine to produce the appliances.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 9, and 10 are obvious over Snow, Hultgren, and Kesling.

  • Prior Art Relied Upon: Snow (Patent 6,068,482), Hultgren (Patent 6,217,334), and Kesling (Patent 2,467,432).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Snow disclosed the core limitation of claim 1: automatically generating a plurality of digital data sets at the outset of treatment that map the progressive movement of teeth from an initial to a final position. While Snow taught using this data to create customized brackets, it did not explicitly teach making a series of aligners. Hultgren was alleged to supply the missing step by disclosing the use of digital data to control a fabrication machine (e.g., stereolithography) to create a series of three-dimensional positive models of teeth. Finally, Kesling, which predates the others by decades, was cited for its well-known manual method of fabricating a series of polymeric shell appliances by taking negatives of sequentially modified positive plaster casts.
    • Motivation to Combine: A POSITA would combine these references to automate a known but laborious process. Petitioner asserted a POSITA would be motivated to replace Kesling’s manual creation of modified plaster casts with the more precise and efficient digital planning of Snow and the automated model fabrication of Hultgren. The combination would increase precision, save manufacturing costs, and was a predictable application of modern computer technology to a long-standing mechanical process.
    • Expectation of Success: The combination involved applying known, predictable technologies. Snow provided a digital plan, Hultgren provided automated fabrication, and Kesling provided the foundational concept of creating aligners from models. Petitioner argued a POSITA would have reasonably expected this combination to succeed.

Ground 2: Claims 1, 2, 9, and 10 are obvious over Snow, Lemchen, and Kesling.

  • Prior Art Relied Upon: Snow (Patent 6,068,482), Lemchen (Patent 5,011,405), and Kesling (Patent 2,467,432).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground is similar to Ground 1, substituting Lemchen for Hultgren. Snow again provided the method of generating a complete set of digital tooth arrangements. Lemchen was argued to disclose a comprehensive digital system for creating a positive digital model of a patient's teeth, calculating a final "finish" position, and using the digitized information to create customized dental appliances like brackets. Critically, Lemchen explicitly referenced Kesling's manual method as the prior art it sought to improve upon, highlighting the equivalence between its digital models and Kesling's physical casts. Kesling again provided the final step of creating polymeric shell appliances from positive models.
    • Motivation to Combine: The motivation was nearly identical to Ground 1: automating Kesling’s manual process. A POSITA would use Snow's digital planning and Lemchen's digital modeling and fabrication control to create the series of positive models needed for the Kesling appliance-forming technique. Lemchen's direct acknowledgment of Kesling strengthened the motivation to combine them, as it framed digital modeling as a direct replacement for manual cast manipulation.

Ground 3: Claims 1, 2, 9, and 10 are obvious over Snow, Applicants' Admitted Prior Art (APA), and Kesling.

  • Prior Art Relied Upon: Snow (Patent 6,068,482), Applicants' Admitted Prior Art (APA) from the ’037 patent specification, and Kesling (Patent 2,467,432).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that the teachings of Hultgren or Lemchen were unnecessary because the ’037 patent specification itself admitted the key technology was conventional. Snow, as before, taught generating the sequential digital data sets. The APA, cited from the ’037 patent’s own disclosure, acknowledged that it was conventional to use fabrication machines like stereolithography, controlled by digital data sets, to produce successive positive models of teeth. The patent also admitted that creating appliances from these models using vacuum or pressure forming was a known technique. Kesling was again relied upon for the fundamental, non-computerized method of using a series of such models to create incremental adjustment appliances.
    • Motivation to Combine: A POSITA would be motivated to combine Snow's digital treatment planning with the conventional and admittedly known fabrication methods (APA) to automate the well-established appliance manufacturing process described by Kesling. The motivation was simply to apply conventional tools to a known problem to achieve predictable benefits of efficiency and cost reduction.

4. Key Claim Construction Positions

  • Petitioner proposed a construction for the phrase "at the outset of treatment," which was added during prosecution to overcome a rejection.
  • Petitioner argued that based on the specification, "treatment" does not begin with the generation of digital data but rather denotes the point in time when a patient begins to wear the first dental appliance. This construction was central to its argument that the prior art, particularly Snow, which generated all digital models at the start, anticipated this key limitation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 9, and 10 of the ’037 patent as unpatentable under 35 U.S.C. §103.