ClearCorrect Operating LLC v. Align Technology Inc

1. Case Identification

• Case #: IPR2025-00816
• Patent #: 11,369,456
• Filed: April 12, 2025
• Petitioner(s): ClearCorrect Operating LLC
• Patent Owner(s): Align Technology Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Generating Orthodontic Treatment Plans
• Brief Description: The ’456 patent describes a computer-implemented system for generating and modifying orthodontic treatment plans using clear aligners. The system determines a schedule for tooth movement, detects potential collisions between teeth, and iteratively modifies the movement schedule to avoid such collisions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chishti-511, Chishti-876, and Sachdeva - Claims 1-9, 11, and 13-17 are obvious over Chishti-511 in view of Chishti-876 and Sachdeva.

• Prior Art Relied Upon: Chishti-511 (Patent 6,471,511), Chishti-876 (Patent 6,729,876), and Sachdeva (Patent 6,250,918).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chishti-511 taught the foundational computer-implemented method for generating orthodontic treatment plans, including defining tooth paths from initial to final positions and using an iterative process to redefine paths if aligners are "unacceptable." Sachdeva was asserted to disclose the key missing element for many claims: an explicit collision-avoidance technique. Specifically, Sachdeva taught detecting a conflict and resolving it by modifying the movement schedule, such as by delaying the movement of a non-priority tooth until a priority tooth has moved. Petitioner contended this satisfied the "first modification" limitation. The "second modification" was argued to be inherent in Chishti-511's iterative process, which re-evaluates the treatment plan after a change and performs subsequent modifications if collisions persist. Chishti-876 was alleged to teach using a plurality of predetermined movement patterns (e.g., "all-equal," "A-type," "V-type") that a user can select to generate the treatment schedule, mapping to limitations in dependent claims.
  • Motivation to Combine: A POSITA would combine Sachdeva’s explicit, automated collision-avoidance logic into Chishti-511's more general treatment planning system to improve efficiency and achieve the explicit goal of a collision-free, clinically viable treatment path. A POSITA would also integrate Chishti-876’s library of movement patterns to provide clinicians with familiar, predictable, and efficient options for creating treatment plans, thereby streamlining the process.
  • Expectation of Success: Petitioner asserted a high expectation of success because all three references relate to computer-implemented orthodontic planning. Integrating Sachdeva's specific collision-avoidance rule (delaying a tooth) and Chishti-876’s pre-set movement patterns were described as combining known techniques to improve a known system, which would have been a predictable implementation for a POSITA.

Ground 2: Obviousness over Chishti-511, Chishti-876, Sachdeva, and Becker - Claims 10, 12, 18, and 19 are obvious over Chishti-511 in view of Chishti-876, Sachdeva, and Becker.

• Prior Art Relied Upon: Chishti-511 (Patent 6,471,511), Chishti-876 (Patent 6,729,876), Sachdeva (Patent 6,250,918), and Becker (The Orthodontic Treatment of Impacted Teeth, 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 and added Becker to address limitations related to "round-tripping" movements. Petitioner argued that Becker disclosed a well-known technique for resolving severe collisions, such as with transposed teeth. This technique involved moving a first tooth further away from its intended path (e.g., more lingually) to create space for a second tooth to pass ("moving the first...away from the respective route of the second"). After the second tooth passed, the first tooth would be moved back toward its previous position before continuing to its final destination ("moving the first...toward its previous position" and then "toward its respective final position"). This sequence was argued to directly map onto the limitations of claims 10, 12, 18, and 19.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Becker’s round-tripping technique into the combined system of Ground 1 to create a more robust treatment planning tool. While simple delaying (from Sachdeva) could solve some collisions, Becker provided a known solution for more complex cases. Including this technique as an available option would allow the system to handle a broader range of malocclusions, which was an obvious and desirable improvement.
  • Expectation of Success: Petitioner argued for a high expectation of success, as round-tripping was a known clinical procedure. Implementing this known sequence of movements as a collision-avoidance option in software was a predictable extension of the system's capabilities and well within the skill of a POSITA.

4. Key Claim Construction Positions

• Petitioner noted that in related district court litigation, the parties agreed to constructions for two terms:
  • "slowing / slow" (claims 9, 11): "[having / have] one or more teeth scheduled to move at a rate less than the rate of other teeth, or even [stopping / stop] using interim key frames, so that collisions and/or obstructions do not occur."
  • "all-equal pattern" (claim 3): "A pattern where all of a patient’s teeth move in parallel with one another (i.e., all of the patient’s teeth that need to move begin moving at the same stage, and finish moving at the same stage)."
• For other pattern terms in claim 3 ("V-shaped," "A-shaped," etc.), Petitioner adopted constructions for the IPR that mirrored the patent's own definitions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a).
• Petitioner stipulated that if IPR is instituted, it will not pursue in the parallel district court case any ground raised or that could have been reasonably raised in the Petition. This stipulation was asserted to mitigate concerns of duplicative efforts and potentially conflicting decisions, weighing strongly in favor of institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-19 of the ’456 patent as unpatentable.