Fed. Circ. Rejects Injunction Bid in Orthodontic IP Row

On September 23, 2019, the U.S. Court of Appeals for the Federal Circuit affirmed the Northern District of California’s rejection of OrthoAccel Technologies Inc.'s preliminary injunction (PI) request in its infringement suit against Finnegan client Propel Orthodontics. In 2017, OrthoAccel sued Propel, alleging infringement of a patent relating to a vibrating bite plate used in orthodontics, and moved for a PI. The district court denied the request in 2018, and OrthoAccel appealed the PI rejection. While refusing to determine the patent claim’s validity, the Federal Circuit suggested in its nonprecedential ruling that the asserted claim is likely invalid and anticipated by prior art, which happened to be the patent’s parent application. The parent application included a specific time limitation for how long the device should be used per day. However, a later application introduced additional time periods. Therefore, OrthoAccel could not claim the priority date of the parent application and the parent application was used as prior art to invalidate the patent. Meanwhile, Propel successfully petitioned the Patent Trial and Appeal Board (PTAB) to review the patent’s validity. In June 2019, citing anticipation by the same parent application, the PTAB invalidated the patent.