DC correctly denied preliminary injunction since Propel showed evidence of anticipation by parent patent application

OrthoAccel Techs., Inc. v. Propel Orthodontics, LLC, et al.

Docket No. 2018-1534 (Non-precedential)
September 23, 2019

Brief Summary: DC denial of a preliminary injunction affirmed since Propel presented sufficient evidence to shift the burden of persuasion to OrthoAccel, and OA did not rebut the challenge.

Summary: OrthoAccel (OA) appealed DC denial of its motion for a preliminary injunction (PI) after finding that an earlier related application of US 9,662,184 directed to “[a] faster method of orthodontic remodeling” lacked written description (WD) support for “1 to 20 minutes daily” in the “activating said orthodontic remodeling device for 1 to 20 minutes daily” limitation of disputed claim 10. The FC panel opinion explains that the ‘184 patent issued from a continuation of a continuation-in-part (CIP) application that “first introduced time periods other than ‘about’ 20 minutes”. The earlier applications disclosed that the device “should be worn for ‘approximately’ or ‘about’ twenty minutes per day”, and the CIP disclosed “1-60 minutes, preferably about 1-30 or 1-10 minutes or 20 minutes”. Propel successfully argued that the PI should not be granted because ‘184 claim 10 was invalid under § 102(b) as anticipated by an earlier application (the parent application) and that the “1-20 minutes” limitation was new matter introduced in the CIP (i.e., a “substantial question of validity”). The FC panel reviewed the DC’s decision for an abuse of discretion (Takeda, FC 2015; Titan Tire, FC 2009). It also explained that “[a] patent owner moving for a preliminary injunction must establish that (1) it is likely to succeed on the merits” (“it will likely succeed in proving infringement, and…the issue of invalidity”); “(2) it is likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities is in its favor; and (4) an injunction is in the public interest”, and that “an issued patent always enjoys a presumption of validity” (Winter, US 2008; Titan Tire). The FC panel found that Propel presented sufficient evidence to shift the burden of persuasion to OrthoAccel (i.e., rebut Propel’s challenge). And it was not convinced by OrthoAccel’s arguments, including expert testimony. The DC denial of the PI was therefore affirmed.

This entry was posted in Anticipation (35 USC 102), Injunction, Priority, Uncategorized, Written description. Bookmark the permalink.

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