[Federal Register Volume 85, Number 226 (Monday, November 23, 2020)]
[Notices]
[Pages 74760-74761]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-25791]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1144]


Certain Dental and Orthodontic Scanners and Software; 
Commission's Final Determination Finding No Violation of Section 337; 
Termination of the Investigation

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has found no violation of section 337 of the Tariff Act of 
1930, as amended. The investigation is hereby terminated.

FOR FURTHER INFORMATION CONTACT: Robert Needham, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-5468. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street SW, Washington, DC 20436, 
telephone (202) 205-2000. General information concerning the Commission 
may also be obtained by accessing its internet server (http://www.usitc.gov). The public record for this investigation may be viewed 
on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. 
Hearing-impaired persons are advised that information on this matter 
can be obtained by contacting the Commission's TDD terminal on (202) 
205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on March 5, 2019. 84 FR 7933-34 (March 5, 2019) based on a complaint 
filed on behalf of Align Technology, Inc. of San Jose, California 
(``Align''). The complaint alleges violations of section 337 of the 
Tariff Act of 1930, as amended, 19 U.S.C. 1337, in the importation into 
the United States, the sale for importation, or the sale within the 
United States after importation of certain dental and orthodontic 
scanners and software by reason of infringement of one or more claims 
of U.S. Patent Nos. 9,299,192 (``the '192 patent''); 7,077,647 (``the 
'647 patent''); 7,156,661 (``the '661 patent''); 9,848,958 (``the '958 
patent''); and 8,102,538 (``the '538 patent''). Id. The complaint 
further alleges that a domestic industry exists. Id. The Commission's 
notice of investigation named as respondents

[[Page 74761]]

3Shape A/S of Copenhagen, Denmark; 3Shape, Inc. of Warren, New Jersey; 
and 3Shape Trios A/S of Copenhagen, Denmark (together, ``3Shape''). Id. 
The Office of Unfair Import Investigations is not participating in the 
investigation. Id.
    The Commission subsequently terminated the investigation with 
respect to the '958 patent based on Align's withdrawal of those 
complaint allegations. Order No. 17 (Jul. 2, 2019), not reviewed Notice 
(Jul. 23, 2019). On October 8, 2019, Align stated that it would no 
longer pursue a violation with respect to claims 4 and 20 of the '647 
patent, claims 1 and 19 of the '661 patent, and claims 1, 3-5, and 22 
of the '192 patent. On October 21, 2019, Align stated that it would no 
longer pursue a violation with respect to claim 2 of the '647 patent. 
Accordingly, at the time of the Final ID, Align asserted claims 1 and 
18 of the '647 patent, claims 2 and 20 of the '661 patent, claims 1 and 
2 of the '538 patent, and claims 2, 28, and 29 of the '192 patent.
    On April 30, 2020, the ALJ issued the Final ID finding a violation 
of section 337 with respect to the '647 and '661 patents, and no 
violation with respect to the '538 and '192 patents. Specifically, the 
ALJ found that claims 1 and 18 of the '538 patent are not infringed and 
that claims 2, 28, and 29 of the '192 patent are invalid. The ALJ found 
that Align satisfied the remaining requirements for a violation with 
respect to the '538 and '192 patents.
    On May 12, 2020, 3Shape and Align each filed a petition for review 
of the Final ID. On May 20, 2020, the parties responded to each other's 
petitions. The Commission also received four comments on the public 
interest.
    On January 31, 2020, the Commission determined to review the Final 
ID in part. Specifically, the Commission determined to review the 
following issues: (1) The findings regarding importation and induced 
infringement; (2) the construction of limitation 1.5/18.5 of the `647 
patent (``individually matching [match] each of the dental objects in 
the subsequent digital model with a dental object in the initial 
digital model to determine corresponding dental objects, the matching 
comprising [including instructions to]'') in the asserted claims of the 
'647 patent, and the application of that construction regarding 
infringement, invalidity, and the technical prong of the domestic 
industry; (3) the findings regarding whether the asserted claims of the 
'647 and '661 patents are directed to patentable subject matter; (4) 
the construction of the limitation ``wherein the device is configured 
for maintaining a spatial disposition with respect to the portion that 
is substantially fixed during operation of the optical scanner and 
imaging means'' in the asserted claims of the '538 patent, and the 
application of that construction regarding infringement, invalidity, 
and the technical prong of the domestic industry requirement; (5) the 
findings regarding whether Okamato anticipates the asserted claims of 
the '538 patent; (6) the findings regarding whether Paley-Kriveshko 
anticipates or renders obvious the asserted claims of the '192 patent; 
and (7) the findings regarding the satisfaction of the economic prong 
of the domestic industry requirement.
    Having examined the record of this investigation, including the 
Final ID, the petitions, responses, and other submissions from the 
parties, the Commission has determined that Align has failed to show a 
violation of section 337. Specifically, the Commission has determined 
to: (1) Modify the Final ID's findings on importation; (2) reverse the 
Final ID's finding that Align showed induced infringement for the '647 
and '661 patents; (3) modify the Final ID's interpretation of the 
limitation ``to determine corresponding dental objects'' in the 
asserted claims of the '647 patent, but find that the modification does 
not affect the application of the construction to infringement, the 
domestic industry, or invalidity; (4) take no position on the Final 
ID's finding that the asserted claims of the '647 and '661 patents are 
directed to patentable subject matter; (5) modify the ALJ's 
construction of ``wherein the device is configured for maintaining a 
spatial disposition with respect to the portion that is substantially 
fixed during operation of the optical scanner and the imaging means'' 
of the asserted claims of the '538 patent, and find that, under the 
modified construction, Align established infringement and the technical 
prong of the domestic industry requirement but that the asserted claims 
are invalid; (6) reverse the Final ID's finding that the asserted 
claims of the '538 patent are not anticipated by Okamoto; (7) reverse 
the Final ID's finding that the asserted claims of the '192 patent are 
not anticipated by Paley-Kriveshko, and affirm the Final ID's finding 
that the asserted claims are invalid as obvious under modified 
reasoning; and (8) take no position on whether Align satisfied the 
economic prong of the domestic industry requirement.
    Accordingly, the Commission finds no violation of section 337. 
Specifically, the Commission finds that Align failed to establish a 
violation with respect to the asserted claims of the '647 and '661 
patents because Align failed to show infringement; that Align failed to 
establish a violation with respect to the asserted claims of the '538 
patent because Align failed to show infringement and because the claims 
are invalid; and that Align failed to establish a violation with 
respect to the asserted claims of the '192 patent because the claims 
are invalid. The Commission's determinations are explained more fully 
in the accompanying Opinion. All other findings in the ID under review 
that are consistent with the Commission's determinations are affirmed. 
The investigation is hereby terminated.
    The Commission vote for these determinations took place on November 
17, 2020.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210).

    By order of the Commission.

    Issued: November 17, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-25791 Filed 11-20-20; 8:45 am]
BILLING CODE 7020-02-P