Ormco Corp. v. Align Technology, Inc.
| Decision Date | 23 February 2009 |
| Docket Number | Case No. SACV 03-16 CAS (ANx). |
| Citation | 609 F.Supp.2d 1057 |
| Court | U.S. District Court — Central District of California |
| Parties | ORMCO CORPORATION, Plaintiff, v. ALIGN TECHNOLOGY, INC., Defendant. |
Charles J. Crueger, David L. Debruin, John E. Flanagan, Joseph T. Miotke, Richard H. Marschall, Michael Best & Friedrich, LLP, Milwaukee, WI, Karin G. Pagnanelli, Thomas P. Lambert, Mitchell Silberberg and Knupp LLP, Los Angeles, CA, for Plaintiff.
Anne M. Rogaski, Daniel J. Furniss, John E. Lord, Susan C. Moon, Susan M. Spaeth, Heidi J. Kim, Jon V. Swenson, Gary H. Ritchey, Townsend and Townsend and Crew, LLP, Palo Alto, CA, for Defendant.
ORDER GRANTING IN PART AND DENYING IN PART ORMCO'S MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT & GRANTING IN PART AND DENYING IN PART ALIGN'S MOTION FOR SUMMARY JUDGMENT AS TO NONINFRINGEMENT
Plaintiff Ormco Corp. ("Ormco") filed the instant action against defendant Align Technology, Inc. ("Align") on January 6, 2003, alleging that Align, via its "Invisalign" process, was infringing three related Ormco patents: (1) U.S. Patent No. 5,447, 432 ("the '432 patent"); (2) U.S. Patent No. 5,683,243 ("the '243 patent"); (3) U.S. Patent No. 6,244,861 ("the '861 patent"). Ormco later amended its complaint to allege infringement of a fourth patent, U.S. Patent No. 6,616,444 ("the '444 patent").
On May 13, 2004, the Court granted Align's motion for summary judgment of noninfringement of Ormco's patents. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1311 (Fed.Cir.2007), citing Ormco Corp. v. Align Tech., Inc., No. 03-cv-00016 slip. op. . On August 20, 2004, the Court granted Align's motion for summary judgment of nonenablement of Ormco's patents. See id., citing Ormco Corp. v. Align Tech., Inc., No. 03-cv-00016, slip. op., 2004 WL 5453218 (C.D.Cal. Aug. 20, 2004).
Ormco appealed to the Federal Circuit. On August 24, 2007, the Federal Circuit affirmed the Court's grant of summary judgment of noninfringement and nonenablement as to claims 1, 9, and 10 of the '432 patent, claims 1 and 2 of the '243 patent, claims 1, 3, 4, 9-12 and 16-18 of the '861 patent, and claims 1-5, 8-36, 41-44, 46-68, and 70-79 of the '444 patent. Ormco, 498 F.3d at 1320. However, the court reversed the grant of summary judgment of noninfringement and nonenablement of claims 37-40, 45, and 69 of the '444 patent, and remanded. Id.
On March 24, 2008, Align moved for a Markman hearing, requesting construction of terms in the remaining '444 patent claims at issue. On October 3, 2008, this Court issued an order construing the claims.
On January 16, 2009, Ormco and Align each filed motions for summary judgment on the issue of the validity of the remaining claims in the '444 patent and motions for summary judgment on the issue of infringement. The parties each filed an opposition in response to the motion for summary judgment on the issue of infringement on January 26, 2009, and each filed a reply on February 2, 2009.
A hearing was held on February 9, 2009. After carefully considering the arguments set forth by the parties, the Court finds and concludes as follows.
The '444 patent, which is the only patent at issue herein, is a patent for "a system and method by which an orthodontic appliance is automatically designed and manufactured from digital low jaw and tooth shape data ..." The '444 Patent, Abstract. The system involves scanning a model of the patient's mouth to "produce two or three dimensional images and digitizing contours of selected points." Id. The system allows for a computer to be programmed "to calculate finish positions of the teeth, then to design an appliance to move the teeth to the calculated positions." Id.
In its decision overturning the Court's granting of summary judgment for defendant on claims 37-40, 45, and 69 of the '444 patent, the Federal Circuit distinguished these claims from the others on the ground that claims 37-40, 45, and 69 did not relate to "automatic design or automatic calculation of finish tooth positions." Ormco, 498 F.3d at 1317. Instead, the Court held, they relate 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." Id. Because defendant relies on "skilled operators rather than a fully automated computerized process to determine finish positions of the teeth," summary judgment was proper as to those claims that referred to automatic calculation or design but not to the six claims at issue. Id. These six claims 37-are all "method" claims. Align Statement of Uncontroverted Fact ("ASUF") 1; Ormco Statement of Gen. Issues of Material Fact ("OSGI") 1.
Align's "Invisalign" process uses a series of clear plastic "aligners" in lieu of traditional braces to move a patient's teeth into desired positions. The process by which these aligners are created, specifically the creation of a digital 3D model of a patient's teeth, is at issue in this case. Ormco Statement of Undisputed Facts ("OSUF") ¶¶ 11-12; Align Statement of Gen. Issues of Material Fact ("ASGI") ¶¶ 11-12.
The process begins when an orthodontist or other dental technician takes impressions of a patient's teeth, and then submits them along with a prescription and other information about the patient to Align's facility in either Santa Clara, California, or Juarez, Mexico.2 ASUF ¶ 2; OSGI ¶ 2; OSUF ¶ 13; ASGI ¶ 13. At the Align facility, Align uses a computer to-mography (CT) scanner to scan the impressions in order to produce an image "of a 3D undifferentiated `mesh' of data," representing the surfaces of teeth and gingiva. ASUF ¶ 2; OSGI ¶ 2; OSUF ¶ 15; ASGI ¶ 15. This data is saved as a bite "ADF" file. ASUF ¶ 2; OSGI ¶ 2; OSUF ¶ 17; ASGI ¶ 17. The "ADF" file format is a proprietary one developed by Align, and is only readable by Align's proprietary software. ASUF ¶¶ 3, 5; OSGI ¶¶ 3, 5; OSUF ¶¶ 18, 43; ASGI ¶¶ 18, 43. The ADF file is saved to both a server in Santa Clara and a server in Costa Rica. ASUF ¶ 4; OSGI ¶ 4; OSUF ¶ 19; ASGI ¶ 19.3
Operations in Costa Rica are performed by Align's wholly-owned subsidiary, Align Technology de Costa Rica, S.R.L. OSUF ¶ 19; ASGI ¶ 19. Align's officers serve as directors of its Costa Rican subsidiary. OSUF ¶ 45; ASGI ¶ 45.
Align has developed, primarily in the United States, a software program called "ToothShaper." ASUF ¶ 12; OSGI ¶ 12. Align provides a demonstration of the ToothShaper software to operators in Costa Rica. OSUF ¶ 48; ASGI ¶ 48. While the master copy of this software remains in Santa Clara, copies of the software are periodically downloaded to the Costa Rica server and installed on the operators' computers. ASUF ¶¶ 13-15; OSGI ¶¶ 13-15. When an operator in Costa Rica ("the operator") begins to work on the ADF file, a copy of that data is stored in the RAM of the operator's computer. ASUF ¶ 8; OSGI ¶ 8. Operators in Costa Rica use the ToothShaper software to create "an accurate representation of the patient's teeth (as opposed to the impression) so that the aligners fit properly." ASUF ¶ 36; OSGI ¶ 36. The ADF file generated from the scan of the impression is used for no other purpose than as an input for the ToothShaper process in Costa Rica. OSUF ¶ 41; ASGI ¶ 41.
After loading the ADF file into Tooth-Shaper, the operator selects two points on each tooth as illustrated in Align's demonstration and ToothShaper uses these locations to generate a facial axis of the clinical crown ("FACC") curve for each tooth. OSUF ¶¶ 47-48; ASGI ¶¶ 47-48. Based on the undifferentiated mesh from the ADF file, in the "painting crowns step," the ToothShaper software produces an "estimate of the individual tooth boundaries by `painting' the portion of the unidifferentiated mesh that the computer identifies as belonging to each tooth crown" (Step 154). ASUF ¶ 19; OSGI ¶ 19. The operator then corrects any errors the program has made by modifying the coloration of the image (Step 16). ASUF ¶¶ 20-21; OSGI ¶¶ 20-21.
The software then creates a separate new digital model of each tooth, adds information about the roots and interproximal areas, estimates a 3D coordinate system for each tooth, and modifies the image of the crown so that it can be attached to the newly added roots and interproximal areas (Step 17). ASUF ¶ 24; OSGI ¶ 24. The operator then manually modifies the axis for each tooth as necessary (approximately 40-60% of the time), and adjusts the computer-estimated interproximal areas between neighboring teeth (Steps 18, 20).
ASUF ¶¶ 27, 30; OSGI ¶¶ 27, 30; OSUF ¶ 56; OSGI ¶ 56.
In Step 21, the operator then uses a tool in the ToothShaper software to clean up any remaining abnormalities in the scanned image of the patient's teeth, such as those resulting from air bubbles in the impression. ASUF ¶¶ 34-35; OSGI ¶¶ 34-35. The gingiva are added in Step 22. ASUF ¶¶ 38-39; OSGI ¶¶ 38-39. This completes the development of the 3D image of the patient's teeth in ToothShaper.
The operator then begins using a software program called "Treat." Using the Treat software; operators "move the individual tooth models to final positions according to the doctor's prescription and determine the appropriate movement of teeth for each stage of treatment, so that final positions can be reached after a certain number of stages." (Step 28). ASUF ¶ 41; OSGI ¶ 41. In Step 29, the operator uses Treat to adjust the paths of each tooth to ensure a "smooth treatment path and tooth velocities and avoid collisions," determining the intermediate staging positions for the teeth. ASUF ¶¶ 44-45; OSGI ¶¶ 44-45. Similar adjustments are also made to accommodate the gingiva. ASUF ¶¶ 47-48; OSGI ¶¶ 47-48. Once this process is complete, the data is saved in a new ADF file and transmitted to Align's Santa...
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