Changing the Wire in Your Dental Braces: Prosecution History Narrows Meaning of “Movable”
On August 27, 2018 U.S. District Judge Brian M. Cogan (E.D.N.Y.) adopted in full the report and recommendation issued by U.S. Magistrate Judge Steven L. Tiscione following a Markman hearing as to the meaning of “movable” in U.S. Patent No. 8,636,507 (the “‘507 Patent”).
On September 29, 2016, plaintiff OrthoArm Inc. (“OrthoArm”) filed suit against defendants Dentsply GAC International and Dentsply Sirona Inc. (together, “Dentsply”), alleging infringement of the ‘507 Patent by Dentsply’s “In-Ovation Mini” product. The ‘507 Patent teaches an orthodontic bracket assembly used for dental braces that is “self-ligating,” meaning that it “is manufactured with a built-in, movable shutter that can hold the wire in place and eliminates the need for rubber bands or some other means to hold the archwire.” Claim 1 requires that the shutter “be movable between a closed position . . . and an open position.” The parties disputed the meaning of the term “movable.”
According to Dentsply, the “In-Ovation Mini” does not infringe the ‘507 Patent because its shutter closes with a “pivoting-slide motion,” and during the patent’s prosecution, OrthoArm disclaimed shutters that require any rotational movement. OrthoArm, however, argued that by its ordinary meaning, “movable” encompasses any change in position, including rotational movement, and the patent’s prosecution history contained no disclaimer excluding rotational movement.
The Court examined two consecutive rejections of the ‘507 Patent application (the “application”) by the United States Patent and Trademark Office (“USPTOOrthArm’s response to the first rejection distinguished the prior art by emphasizing the “lack of rotation movement” in the patent’s claims and explained “the benefits of having only lateral movement.” OrthoArm’s response to the second rejection argued that one prior reference could not be combined with another because it required rotating the locking shutter. The USPTO agreed, issuing a Notice of Allowability for the patent’s first eleven claims. OrthoArm subsequently filed a continuation of the ‘507 Patent, containing twenty new claims and the same specification as the ‘507 Patent, in which OrthoArm further argued that prior art did not render its new claims obvious because the prior art required “a rotational step.”
Magistrate Judge Tiscioni concluded that, although claim terms are generally given their ordinary and customary meaning, a “clear disavowal” in the prosecution history compels courts to depart from the claim term’s plain meaning. The court explained that an applicant need not affirmatively disclaim subject matter to constitute a clear disavowal, but instead “any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant.” Here, OrthoArm had made several clear statements during prosecution of the ‘507 Patent describing its invention as requiring only lateral motion, and distinguishing the rotational motion required by prior art. The Court did not agree with Dentsply, however, that OrthoArm’s disavowal had completely surrendered shutters that require non-lateral motion. Instead, the Court found a more narrow disavowal appropriate: during prosecution, OrthoArm had disavowed brackets that require the user to move the shutter rotationally, but did not speak to whether the shutter “can be moved in any sort of non-lateral motion.” Thus, the Court recommended that the term “movable” be construed to mean “capable of being moved, by a practitioner, between an open and a closed position in a lateral direction only, without the need for the practitioner to rotate the shutter.”
Case: OrthoArm Inc. v. Dentsply GAC Int’l et al., 16-CV-5433 (BMC) (ST) (E.D.N.Y.), Dkt. No. 71 (Aug. 27, 2018).