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Statements in specification and prosecution history limit claims notwithstanding claim language

August 27, 2007
Post by Blog Staff

In a decision Friday, the Federal Circuit affirmed in part and reversed in part a district court's decision granting summary judgment of noninfringement and invalidity. The Federal Circuit found that the district court had properly construed most of the asserted claims as being limited to "automatic computer determination of the finish positions of teeth" based on the specification and prosecution history of the patents and related patents.

Some claims, however, were not directed toward determination of finish tooth positions, but instead were focused on initial data gathering to assist in further treatment or modeling, and as a result, those claims were improperly narrowed. The court held that because the defendant's process relied on human operators, rather than a fully automated process, to determine the finish position of the teeth, the district court's grant of summary judgment of noninfringement of those claims that required an automated process was appropriate. The court also found the patents at issue lacked enablement because one of ordinary skill in the art did not and could not accomplish "automatic computer determination of teeth finish positions" based on the patent's specification. The court found the fact that the patentee itself had not successfully developed a program that could, via a fully automated process, determine the finish positions of teeth because of variations in human anatomy particularly persuasive.More details of Ormco Corp. v. Align Tech., Inc. after the jump.

The plaintiff, Ormco, owns several patents relating to computer aided-design and manufacture of custom orthodontic appliances. Ormco filed suit alleging that Align Technology's "Invisalign" process infringed plaintiff's '861, '243, '444, and '432 patents. These patents share a common specification with Ormco's '562 patent, which was not asserted to be infringed, but is the parent of the '861, '243, and '444 patents, and was filed on the same day as the application that led to the '432 patent.Align counterclaimed for declaratory judgment of noninfringement and invalidity of the patents held by Ormco. Align also alleged infringement by Ormco of Align's '611 and '548 patents, which relate to the use of a series of orthodontic appliances to incrementally reposition teeth.In reviewing the grant of summary judgment of noninfringement of Ormco's patents, the Federal Circuit first addressed the district court's claim construction. The court agreed that most, but not all, of the asserted claims of the Ormco patents required automatic determination of finish tooth positions. The court placed great emphasis on the fact that the specification did not suggest or even allow for human adjustment of the computer-calculated tooth finish positions. The court, however, did point out that the claim language of the patents at issue did not expressly recite automatic control of the finish tooth positioning. Nonetheless, the court emphatically stated that "[t]o attribute to the claims a meaning broader than any indicated in the patents and prosecution history would be to ignore the totality of the facts of the case and exalt slogans over real meaning."Of even more interest was that the court gave only a brief look at the lack of claim construction by the district court focusing on the specific claim language. The court seemingly gave the district court a pass since they arrived at the correct conclusion and stated that:

[W]hen we are able to fully comprehend the specification, prosecution, history, and claims and can determine that, to the extent we have indicated, the district court arrived at the correct conclusion, we need not exalt form over substance and vacate what is essentially a correct decision.

The court did, however, reverse the district court's summary judgment of invalidity for a few claims. These claims were not directed toward determination of the final position of teeth, but instead related to "the preliminary gathering and organization of tooth data as an aid to further unspecified orthodontic treatment or for use in creation of a digital model." As a result, it was error to require these claims to be limited to a fully automated process, and the summary judgment of noninfringement was reversed for these claims.The court also sided with Align regarding the grant of summary judgment of nonenablement of the claims limited to automated processes. The Federal Circuit pointed out that the decision by the district court to grant summary judgment hinged its construction of the claims of the Ormco patents. The court noted that there was substantial doubt concerning the enablement of the invention as it appeared that Ormco's commercial products that purported to embody the patented invention could not successfully automate the determination of final tooth positions because of variances in human anatomy. The failure of the patentee to successfully implement the invention was "strong evidence" that the patent specification lacked enablement, and therefore the court affirmed the summary judgment of invalidity for those claims that required an automated process. The court did remand the issue of validity of the "non-automated" claims.Finally, the court considered Align's cross appeal regarding the district court's finding of invalidity regarding claims 1-3 and 11-48 of the '548 patent. The court agreed with Ormco that the law of the case doctrine controlled the outcome of the cross-appeal and that the claims at issue were invalid as decided in Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006).Interestingly, Judge Kathleen O'Malley of the Northern District of Ohio, sitting by designation, dissented from the majority's decision to the extent it affirmed the district court's grant of summary judgment to Align on the issues of non-infringement and non-enablement. Judge O'Malley concluded that the district court had failed to properly construe the claim terms at issue and improperly shifted the burden of proof on the issue of enablement.

Specifically, Judge O'Malley argued that the district court had not engaged in proper claim construction, and that the majority's decision ignored its own admonitions to "begin" with the language of the claims. Judge O'Malley's issues with the


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