PTAB

IPR2017-01829

ClearCorrect Operating LLC v. Align Technology Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Automated Treatment Staging for Teeth
  • Brief Description: The ’444 patent discloses computer-implemented methods and systems for generating an orthodontic treatment plan. The technology involves receiving initial and final digital representations of a patient's teeth and automatically determining an optimal, staged path of movement for each tooth, specifically using techniques like "staggering" and "round-tripping" to avoid collisions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chishti ’876 - Claims 1-42

  • Prior Art Relied Upon: Chishti ’876 (Patent 6,729,876).
  • Core Argument for this Ground: Petitioner argued that Chishti ’876, another patent assigned to the Patent Owner, discloses every element of the challenged claims. Although presented as an obviousness challenge under 35 U.S.C. §103, the petition asserted that Chishti ’876 teaches a complete method for digital orthodontic treatment planning that renders the ’444 patent’s claims unpatentable.
    • Prior Art Mapping: Petitioner contended that Chishti ’876 teaches a computer-implemented method that starts by digitizing a tooth arrangement to create an initial digital data set (IDDS). It then manipulates the IDDS to produce a final digital data set (FDDS) and generates intermediate data sets corresponding to successive treatment stages. Critically, Petitioner argued Chishti ’876 discloses determining an order of tooth movement that avoids collisions by using techniques equivalent to the claimed "staggering" (by considering "which teeth need to be moved before others are moved") and "round-tripping" (by resorting to less direct routes if collisions occur).
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation was inherent. Petitioner argued a person of ordinary skill in the art (POSITA) would find all claimed features taught in combination within the disclosure of Chishti ’876, as it describes a comprehensive and integrated system for orthodontic treatment planning.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because Chishti ’876 provides a detailed, functional description of a system that performs all the claimed steps to achieve the desired result of a collision-free treatment plan.

Ground 2: Obviousness over Chishti ’511 in view of Chishti ’876 - Claims 1-42

  • Prior Art Relied Upon: Chishti ’511 (Patent 6,471,511) and Chishti ’876 (Patent 6,729,876).
  • Core Argument for this Ground: Petitioner asserted that Chishti ’511 discloses the fundamental system for digital orthodontic planning, including collision avoidance and "round-tripping." Chishti ’876 was introduced to supply the explicit teaching of "staggering," which Petitioner argued was a well-known technique that a POSITA would have been motivated to incorporate.
    • Prior Art Mapping: Chishti ’511 was presented as teaching the core claimed method: acquiring an initial digital model of teeth, receiving a desired final position, and using a computer to define a tooth path segmented into stages. Petitioner highlighted that Chishti ’511 explicitly teaches optimizing these paths to avoid collisions and using "round-tripping." To meet the "staggering" limitation, Petitioner pointed to Chishti ’876, which teaches considering "which teeth need to be moved before others are moved," arguing this is the functional equivalent of staggering tooth movement to prevent obstruction.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references because they are from the identical technical field, were assigned to the same entity (Align Technology), and address the same problem of creating digital orthodontic treatment plans. Petitioner argued that incorporating the staggering technique from Chishti ’876 into the system of Chishti ’511 would have been a predictable and logical step to improve the system's ability to handle complex cases where tooth movements must be sequenced.
    • Expectation of Success (for §103 grounds): Success would be expected because the combination involves applying a known collision-avoidance strategy (staggering) from one orthodontic planning system (Chishti ’876) to another similar system (Chishti ’511) to achieve the predictable result of a more robust treatment planning tool.

4. Key Claim Construction Positions

  • "Staggering" and "Round-tripping": Petitioner argued that while the ’444 patent provides explicit definitions for these terms, they describe well-known orthodontic techniques for managing tooth movement and avoiding collisions. "Staggering" was defined as delaying the movement of one tooth to prevent it from obstructing another, and "round-tripping" as moving a tooth temporarily out of the path of a second tooth and then returning it. Petitioner contended a POSITA would understand these concepts and their application in treatment planning.
  • "means for": For system claims 15-28, which recite various "means for" performing functions, Petitioner argued they are indefinite under 35 U.S.C. §112 because the specification lacks corresponding algorithms or specific structures beyond a general-purpose computer. However, for the purpose of the IPR analysis, Petitioner construed the "means" limitations to cover any computer configuration capable of performing the claimed functions.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-42 of the ’444 patent as unpatentable.