By Peter Reap, J.D., LL.M.
The owner was not likely to show at trial that its asserted patent was not anticipated by its parent application.
OrthoAccel Technologies was correctly denied a preliminary injunction by the federal district court in San Francisco because it was not likely to be able to show at trial that its asserted patent for a vibrating dental device was not anticipated by its parent application, the U.S. Court of Appeals for the Federal Circuit has decided. The intrinsic evidence introduced by the defendants to OrthoAccel’s patent infringement suit, Propel Orthodontics, LLC and Propel Orthodontics USA, LLC (collectively, Propel), was sufficient for the lower court to conclude that Propel adequately challenged the validity of the asserted patent at the preliminary injunction phase, thus placing the burden on OthoAccel to demonstrate a likelihood of success on the validity issue at trial. Thus, the district court’s denial of OrthoAccel’s requested injunction was affirmed (OrthoAccel Technologies, Inc. v. Propel Orthodontics, LLC, September 23, 2019, Reyna, J.).
OrthoAccel asserted its patent by assignment, U.S. Patent No. 9,662,184 (the ’184 patent) entitled "Vibrating Dental Devices." The ’184 patent is directed to a method for providing accelerated tooth movement using a vibrating dental device for persons undergoing traditional orthodontic treatment. The ’184 patent discloses "applying differential vibration to selected areas of a bite plate . . . for a period of 1–60 minutes, preferably about 1–30 or 1–10 minutes or 20 minutes." Independent claim 10 of the ’184 patent is at issue in this appeal.
The application that led to the ’184 patent claims priority to a series of applications starting with U.S. Provisional Application No. 60/906,807, filed on March 14, 2007 (the provisional application). The provisional application led to non-provisional U.S. Application No. 11/773,849, filed on July 5, 2007, and published on September 14, 2008 (the parent application). U.S. Application No. 12/615,049 is a continuation-in-part of the parent application and was filed on November 9, 2009, more than one year after publication of the parent application (the CIP application).
Both the provisional and parent applications disclose only that OrthoAccel’s vibrating device should be worn for "approximately" or "about" twenty minutes per day. The CIP application first introduced time periods other than "about" 20 minutes, disclosing the same durations of "1–60 minutes, preferably about 1–30 or 1–10 minutes or 20 minutes" as the ’184 patent.
After OrthoAccel filed suit and moved for a preliminary injunction, Propel argued that a preliminary injunction was not warranted because claim 10 of the ’184 patent was invalid under 35 U.S.C. § 102(b) as anticipated by the parent application. Propel further argued that claim 10 was not entitled to claim priority to the parent application because the "1–20 minutes daily" limitation was new matter introduced in the CIP application. OrthoAccel conceded that the parent application discloses every limitation of claim 10 and was published more than one year prior to the filing date of the application that led to the ’184 patent, thus making it anticipatory prior art. Therefore, the invalidity issue of the ‘184 patent turned on priority.
The district court determined that the burden at the preliminary injunction stage was on OrthoAccel to demonstrate a likelihood of succeeding at trial on the validity issue. It ruled that OrthoAccel did not meet this burden. OrthoAccel appealed.
A patent owner moving for a preliminary injunction must establish that it will likely succeed in proving infringement, and that it will likely prevail on the issue of invalidity, if raised, the appellate court noted. Here, the parties agreed that claim 10 is anticipated by the parent application if the priority issue was resolved against OrthoAccel. Thus, on appeal, the issue was whether Propel presented sufficient evidence that claim 10 was not entitled to claim priority to the parent application for the burden to have been placed on OrthoAccel to demonstrate a likelihood of success on the in-validity issue at trial. The Federal Circuit reasoned that it did.
Propel pointed to the provisional and parent applications, which only disclosed time periods of "approximately" and "about" twenty minutes, and contended that these disclosures provided insufficient written description support for durations of "1–20 minutes daily." This intrinsic evidence was a sufficient basis for the district court’s finding that Propel adequately challenged the validity of the ’184 patent at the preliminary injunction stage. Although factual disputes about the disclosures of the provisional and parent applications may have existed, that alone did not require the district court to go beyond the intrinsic record and rely on expert testimony to resolve these disputes, according to the Federal Circuit.
Propel also relied on the testimony of its expert, Dr. Yadav, who opined that a person of ordinary skill in the art "would not interpret ‘about 20 minutes’ to include anything but slight variations from 20 minutes." OrthoAccel contended that this testimony was "legally meaningless" because the district court did not cite to it in its decision, and because the expert did not consider the entirety of the provisional and parent applications. The appellate court disagreed, noting that there is no requirement that the district court expressly cite to every piece of evidence. Moreover, Dr. Yadav did consider both the provisional and parent applications in his analysis.
For the above reasons, the denial of the preliminary injunction was affirmed.
This case is No. 2018-1534.
Attorneys: Paul V. Storm (Foley & Lardner LLP) for OrthoAccel Technologies, Inc. Christopher S. Schultz (Burns & Levinson LLP) for Propel Orthodontics, LLC.
Companies: OrthoAccel Technologies, Inc.; Propel Orthodontics, LLC
MainStory: TopStory Patent FedCirNews
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