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;
      • Secondary considerations:
        • Commercial success;
        • Long felt but unsolved needs; and
        • 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 close enough.
    • 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 do.
    • 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.