Ormco Corp. v. Align Technology, Inc.
463 F.3d 1299 (Fed. Cir. 2006)
Align applied for and received
a patent for a new kinds of braces to straighten teeth.
Basically, it was a set of
retainers that were each a little different from one another. You'd wear
the first and it would move your teeth a little, then switch to the next
one which would move your teeth a little more, etc...
Ormco made a similar kind of
braces. Align sued for infringement.
The Trial Court found for
Align. Ormco appealed.
Ormco provided evidence that
two dentists (Truax and Rains) were already using similar kinds of
braces. Therefore Align's patent should be rejected because it was not nonobvious.
The Appellate Court reversed.
The Appellate Court found
that Align's patent was invalid because it failed the requirement for nonoviousness in 35 U.S.C. §103. The factors
for determining nonobviousness are:
The scope and content of
the prior art;
The differences between the
claimed invention and the prior art;
The level of ordinary skill
in the prior art;
Long felt but unsolved
Failure of others.
Align argued that their
patent specified that the retainers varied in geometry, but the ones
Truax were using only varied in thickness. But the Court found that was
Align argued that they
provided all the different retainers at once in a single package with
instructions, while Truax provided his retainers one at a time, with no
instructions. But the Court found that the number of packages the product
came in was not a patentable feature.
The packaging was just for
the convenience of the consumer, and it was a pretty obvious thing to
Align argued that the
commercial success of their product was evidence of nonobviousness, but the Court found that the commercial
success is only significant if there is a nexus between the claimed
invention and the commercial success.
In this case, the Court
found that the commercial success was due to unclaimed features of the
product, so it found not be used as evidence of nonobviousness.