Align Technology is once again defending its position in the clear-aligner market with the filing of two lawsuits in Germany accusing competitors of infringing on several of its European patents.
The company filed a patent infringement lawsuit in the District Court of Dusseldorf against Ortho Caps and its managing directors, Wajeeh Khan, BDS, and Jocelyne Khan, asserting Ortho Caps infringes Align patents by making, offering to sell, and selling its clear-aligner therapy systems.
Align asserts that Ortho Caps infringes five Align patents, Nos. EP 2 263 599, EP 2 263 598, EP 0 989 828, EP 1 369 091, and EP 1 143 872, with respect to the production and sale of Ortho Caps Twin Aligner system.
Ortho Caps said it will vigorously defend any such litigation.
"Ortho Caps has not received any formal notice of such a lawsuit," Dr. Khan said in an email to DrBicuspid.com. "However, if the information on the Internet is correct, we will vigorously defend our lawful right to continue offering our services and products to our customers."
Align also filed a patent lawsuit against Rasteder KFO Spezial-Labor and its managing director Volker Hinrichs asserting that the company infringes Align patents by making, offering to sell, and selling its In-Line clear-aligner therapy systems.
Specifically, Align asserts that Rasteder KFO Spezial-Labor infringes four Align patents, Nos. EP 2 263 599, EP 2 263 598, EP 0 989 828, and EP 1 369 091, with respect to the production and sale of Rasteder KFO Spezial-Labor aligners.
Align is seeking a declaratory judgment regarding monetary damages and injunctive relief against further infringement. As is customary in Germany, service of the complaints will be effected by the court and is expected to be completed in the near future, the company noted in a press release.
"We will take all necessary actions to protect Align and its shareholders from unlawful competitive practices, including infringement of our intellectual property rights," said Roger George, Align's vice president of legal affairs and general counsel.
Earlier this year, Align Technology filed two lawsuits against ClearCorrect, one alleging that ClearCorrect is infringing Align patents by making, offering to sell, and selling its clear-aligner therapy systems and the other alleging that ClearCorrect is engaging in unlawful business practices.
In a patent infringement lawsuit filed February 28 in the U.S. District Court for the Southern District of Texas, Align asserts that ClearCorrect infringes eight Align patents in the production and sale of ClearCorrect aligners.
But ClearCorrect claimed this is a reversal of Align's position from just two years ago. In February 2009, ClearCorrect filed a lawsuit against Align in an attempt to keep Align from potentially suing the company over alleged patent infringement, as it had done to other competitors, including Ormco and OrthoClear. In April 2009, ClearCorrect voluntarily dismissed that lawsuit after Align told court officials it had no intention of suing ClearCorrect for patent infringement.
In a second lawsuit filed in the Superior Court of California, County of San Francisco, Align claimed that ClearCorrect is engaging in unlawful business practices and violating the California Unfair Practices Act.
And in 2009, Align Technology paid Ormco, a subsidiary of Danaher, $13 million in cash and 7.6 million shares as part of a settlement agreement related to patent litigation between the two companies. That deal gave Danaher a 10% ownership stake in Align.
Align and Ormco had been involved in patent litigation since 2003 when Ormco sued Align for patent infringement and Align won. Ormco appealed that decision, and in August 2007 the Federal Circuit Court of Appeals ruled that 86 of Ormco's 92 claims (related to U.S. Patents Nos. 6,616,432, '243, '861, and '444) were invalid and not infringed by Align. Ormco pursued the six remaining claims, and in June 2009 a jury found in favor of Ormco's patent infringement charges against Align.
