NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ORTHOACCEL TECHNOLOGIES, INC.,
Plaintiff-Appellant
v.
PROPEL ORTHODONTICS, LLC, PROPEL
ORTHODONTICS USA, LLC,
Defendants-Appellees
______________________
2018-1534
______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:17-cv-03801-RS,
Judge Richard Seeborg.
______________________
Decided: September 23, 2019
______________________
PAUL V. STORM, Foley Gardere Foley & Lardner LLP,
Dallas, TX, argued for plaintiff-appellant. Also repre-
sented by EILEEN R. RIDLEY, San Francisco, CA.
CHRISTOPHER S. SCHULTZ, Burns & Levinson LLP, Bos-
ton, MA, argued for defendants-appellees. Also repre-
sented by DAVID LEFEBVRE, ERIC PAUL RACITI, Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP, Boston, MA;
J. MICHAEL JAKES, Washington, DC.
2 ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL
ORTHODONTICS, LLC
______________________
Before PROST, Chief Judge, REYNA and WALLACH, Circuit
Judges.
REYNA, Circuit Judge.
OrthoAccel Technologies, Inc. appeals from a decision
of the U.S. District Court for the Northern District of Cali-
fornia denying its motion for a preliminary injunction. The
district court determined that the patent at issue could not
claim priority to its parent application because the parent
application lacked written description support for the
claimed “1 to 20 minutes daily” limitation. On this basis,
the district court determined that OrthoAccel Technolo-
gies, Inc. was unlikely to demonstrate at trial that the pa-
tent at issue was not anticipated by its parent application
and denied the preliminary injunction. Because we con-
clude for the reasons below that the district court did not
abuse its discretion, we affirm.
BACKGROUND
I. The ’184 Patent
OrthoAccel Technologies, Inc. (“OrthoAccel”) is the as-
signee of
U.S. Patent No. 9,662,184 (“the ’184 patent”), en-
titled “Vibrating Dental Devices.” The ’184 patent is
directed to a method for providing accelerated tooth move-
ment using a vibrating dental device for persons undergo-
ing traditional orthodontic treatment. ’184 patent,
Abstract, col. 1 ll. 24–25. The ’184 patent discloses that it
was well known in the field of orthodontics that “a pulsat-
ing force” could be employed “to move teeth more rapidly
and to ease the discomfort of traditional orthodontics.”
Id.
col. 1 ll. 44–46. The ’184 patent explains that prior art de-
vices, however, were “bulky,” “expensive,” and “very diffi-
cult to use.”
Id. col. 1 l. 66–col. 2 l. 3. The ’184 patent
attempts to solve these problems by providing a method of
using an improved vibrating device with an intraoral U-
ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL 3
ORTHODONTICS, LLC
shaped plate and an extraoral vibrating actuator.
Id. col.
2 ll. 63–64, col. 14 ll. 1–20. The ’184 patent discloses “ap-
plying differential vibration to selected areas of a bite
plate . . . for a period of 1–60 minutes, preferably about 1–
30 or 1–10 minutes or 20 minutes.”
Id. col. 7 ll. 33–38.
Independent claim 10 of the ’184 patent is at issue in
this appeal and recites:
A faster method of orthodontic remodeling, com-
prising:
a) a patient wearing an orthodontic appli-
ance biting an orthodontic remodeling de-
vice, said orthodontic device comprising:
i. an extraoral housing containing a
power source operably coupled to
an actuator operably coupled to a
processor that controls said actua-
tor; and
ii. said extraoral housing operably
connected to an intraoral U-shaped
bite plate;
iii. wherein during use said ortho-
dontic remodeling device is held in
place only by teeth clamping on the
bite plate and said orthodontic re-
modeling device vibrates at a fre-
quency from 0.1 to 400 Hz; and
b) activating said orthodontic remodeling
device for 1 to 20 minutes daily;
wherein said method provides accelerated
tooth movement as compared to without
using said orthodontic remodeling device.
Id. col. 14 ll. 1–20 (emphasis added).
4 ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL
ORTHODONTICS, LLC
The application that led to the ’184 patent claims pri-
ority to a series of applications starting with U.S. Provi-
sional Application No. 60/906,807, filed on March 14, 2007
(“the provisional application”). The provisional application
led to non-provisional U.S. Application No. 11/773,849,
filed on July 5, 2007, and published on September 14, 2008
(“the parent application”). U.S. Application No. 12/615,049
is a continuation-in-part of the parent application and was
filed on November 9, 2009, more than one year after publi-
cation of the parent application (“the CIP application”).
The CIP application was followed by two parallel continu-
ation applications, and then the continuation application
from which the ’184 patent issued.
Both the provisional application and the parent appli-
cation disclose only that OrthoAccel’s vibrating device
should be worn for “approximately” or “about” twenty
minutes per day. J.A. 578, 609, 614. Both of these appli-
cations also disclose that “longer or shorter” time periods
or “any other suitable duration of time” may be used, but
do not expressly disclose any other specific period of time.
J.A. 578–79, 609. The CIP application first introduced time
periods other than “about” 20 minutes, disclosing the same
durations of “1–60 minutes, preferably about 1–30 or 1–10
minutes or 20 minutes” as the ’184 patent. J.A. 661–62.
II. District Court Proceedings
On July 4, 2017, OrthoAccel brought suit against Pro-
pel Orthodontics, LLC and Propel Orthodontics USA, LLC
(collectively, “Propel”) for infringement of claim 10 of the
’184 patent. On August 18, 2017, OrthoAccel filed a motion
for a preliminary injunction. Propel opposed the motion,
arguing that a preliminary injunction was not warranted
because claim 10 of the ’184 patent was invalid under 35
ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL 5
ORTHODONTICS, LLC
U.S.C. § 102(b)1 as anticipated by the parent application.
Propel further argued that claim 10 was not entitled to
claim priority to the parent application because the “1–20
minutes daily” limitation was new matter introduced in the
CIP application and not supported by the parent applica-
tion. 2 In reply, OrthoAccel conceded that the parent appli-
cation discloses every limitation of claim 10 and was
published more than one year prior to the filing date of the
application that led to the ’184 patent, thus making it an-
ticipatory prior art under § 102(b). J.A. 1213 n.1. The in-
validity issue thus turned on the question of priority. J.A.
24.
Finding that Propel raised a substantial question of va-
lidity with respect to the ’184 patent, the district court de-
termined that the burden at the preliminary injunction
stage was on OrthoAccel to demonstrate a likelihood of suc-
ceeding at trial on the validity issue. J.A. 21, 25. The dis-
trict court found that OrthoAccel did not meet this burden,
explaining that the disclosures in the provisional and
1 Section 102(b) was amended by the Leahy–Smith
America Invents Act (“AIA”). See Pub. L. No. 112–29,
§ 3(c),
125 Stat. 284, 287 (2011). Because the ’184 patent
has an effective filing date prior to March 16, 2013, the ef-
fective date of the AIA, the pre-AIA version of § 102(b) ap-
plies. Pre-AIA § 102(b) provided that “[a] person shall be
entitled to a patent unless . . . the invention was patented
or described in a printed publication in this or a foreign
country . . . more than one year prior to the date of the ap-
plication for patent in the United States.”
35 U.S.C.
§ 102(b) (2006).
2 Propel also argued that a preliminary injunction
should not be granted because OrthoAccel was unlikely to
succeed in proving infringement. J.A. 22–23, 418–19. The
district court’s rulings on the subject of infringement, how-
ever, are not at issue on appeal.
6 ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL
ORTHODONTICS, LLC
parent applications of “using time periods somewhat longer
or shorter than 20 minutes carry no hint that time periods
as short as a minute or two might suffice.”
Id.
The district court rejected OrthoAccel’s argument that
a person of ordinary skill in the relevant art would have
immediately discerned the “1–20 minutes daily” limitation
from the parent application based on that application’s dis-
closure of an inverse relationship between the vibration
frequency and the treatment time. J.A. 26. The district
court explained that any such inverse relationship none-
theless did not teach “treatment periods other than those
relatively close to 20 minutes.”
Id. The district court also
rejected OrthoAccel’s argument that the “1–20 minutes
daily” language must be supported by the parent applica-
tion because it was proposed by the examiner during pros-
ecution of the ’184 patent, finding that the examiner likely
suggested the language to conform to the disclosure in the
CIP application instead of the parent application.
Id. Ac-
cordingly, the district court denied OrthoAccel’s motion for
a preliminary injunction.
OrthoAccel appeals. We have jurisdiction under
28
U.S.C. § 1292(c)(1).
DISCUSSION
We review a denial of a preliminary injunction for
abuse of discretion. Takeda Pharm. U.S.A., Inc. v. W.-
Ward Pharm. Corp.,
785 F.3d 625, 629 (Fed. Cir. 2015) (cit-
ing Abbott Labs. v. Sandoz, Inc.,
544 F.3d 1341, 1345 (Fed.
Cir. 2008)); see also eBay Inc. v. MercExchange, L.L.C.,
547
U.S. 388, 394 (2006) (“[T]he decision whether to grant or
deny injunctive relief rests within the equitable discretion
of the district courts, and . . . such discretion must be exer-
cised consistent with traditional principles of equity.”). A
district court abuses its discretion when it commits a “clear
error of judgment in weighing relevant factors or exer-
cise[s] its discretion based upon an error of law or clearly
erroneous factual findings.” Titan Tire Corp. v. Case New
ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL 7
ORTHODONTICS, LLC
Holland, Inc.,
566 F.3d 1372, 1375 (Fed. Cir. 2009) (quoting
Genentech, Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1364
(Fed. Cir. 1997)).
A patent owner moving for a preliminary injunction
must establish that (1) it is likely to succeed on the merits;
(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. Winter v.
Nat. Res. Def. Council, Inc.,
555 U.S. 7, 20 (2008); see also
Takeda, 785 F.3d at 629. With respect to the first factor, a
patent owner must demonstrate that it will likely succeed
in proving infringement, and that it will likely prevail on
the issue of invalidity, if raised. Titan Tire,
566 F.3d at
1376.
To challenge validity at the preliminary injunction
stage, the challenger must come forward with evidence of
invalidity, just as it would be required to at trial, because
an issued patent always enjoys a presumption of validity.
Id. at 1377. The challenger may rely solely on the language
of the claims and the written description to demonstrate
that a patent is invalid on its face for failure to meet the
written description requirement. Univ. Of Rochester v.
G.D. Searle & Co.,
358 F.3d 916, 927 (Fed. Cir. 2004) (citing
PIN/NIP, Inc. v. Platte Chem. Co.,
304 F.3d 1235, 1247–48
(Fed. Cir. 2002)). Once the challenger presents evidence of
invalidity, the burden is on the patent owner to present
contrary evidence to “persuade the court that, despite the
challenge presented to validity, the patentee nevertheless
is likely to succeed at trial on the validity issue.” Titan
Tire,
566 F.3d at 1377, 1380. The district court must then
weigh the entirety of the evidence and determine whether
the patent owner has met its burden of persuasion.
Id. at
1378–79.
The parties here agree that claim 10 is anticipated by
the parent application if the priority issue is resolved
against OrthoAccel. J.A. 1213 n.1. The issue on appeal is
8 ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL
ORTHODONTICS, LLC
thus whether Propel presented sufficient evidence that
claim 10 was not entitled to claim priority to the parent
application for the district court to place the burden on Or-
thoAccel to demonstrate a likelihood of success on the in-
validity issue at trial. We conclude that it did.
OrthoAccel argues that the district court abused its
discretion by “disregarding” the presumption of validity
and shifting the burden to OrthoAccel to demonstrate va-
lidity when, according to OrthoAccel, Propel “produced no
evidence of invalidity whatsoever.” Appellant’s Br. 26. We
disagree. In opposing OrthoAccel’s motion for a prelimi-
nary injunction, Propel pointed to the provisional and par-
ent applications, which only disclosed time periods of
“approximately” and “about” twenty minutes, and con-
tended that these disclosures provided insufficient written
description support for durations of “1–20 minutes daily.”
J.A. 416. Despite OrthoAccel’s arguments to the contrary,
see Appellant’s Br. 28; Reply Br. 10–14, this intrinsic evi-
dence is a sufficient basis for the district court’s finding
that Propel adequately challenged the validity of the ’184
patent at the preliminary injunction stage. Although fac-
tual disputes about the disclosures of the provisional and
parent applications may have existed, that alone did not
require the district court to go beyond the intrinsic record
and rely on expert testimony to resolve these disputes. See
Titan Tire,
566 F.3d at 1379 (explaining that at the prelim-
inary injunction stage, a district court may be required “to
make its decision based on less than a complete record or
on disputed facts whose eventual determination will re-
quire trial” (citing Univ. of Tex., v. Camenisch,
451 U.S.
390, 395 (1981) and New England Braiding Co. v. A.W.
Chesterton Co.,
970 F.2d 878, 883 (Fed. Cir. 1992))). The
district court here correctly relied on evidence from the
prosecution history of the ’184 patent to require OrthoAccel
to rebut the challenge to the validity of claim 10.
Propel also relied on the testimony of its expert, Dr.
Yadav, who opined that a person of ordinary skill in the art
ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL 9
ORTHODONTICS, LLC
“would not interpret ‘about 20 minutes’ to include anything
but slight variations from 20 minutes.” J.A. 416–17. Or-
thoAccel concedes that Propel submitted two expert decla-
rations. Appellant’s Br. 30. OrthoAccel nonetheless
contends that this testimony is “legally meaningless” be-
cause the district court did not cite to it in its decision, and
because the expert did not consider the entirety of the pro-
visional and parent applications.
Id. at 30–32. These ar-
guments are without merit. First, there is no requirement
that the district court expressly cite to every piece of evi-
dence. Plant Genetic Sys., N.V. v. DeKalb Genetics Corp.,
315 F.3d 1335, 1343 (Fed. Cir. 2003); see also Medtronic,
Inc. v. Daig Corp.,
789 F.2d 903, 906 (Fed. Cir. 1986) (“We
presume that a fact finder reviews all the evidence pre-
sented unless he explicitly expresses otherwise.”). Rather,
the district court need only provide sufficient support for
its factual findings to demonstrate that those findings were
not “clearly erroneous.” Titan Tire,
566 F.3d at 1375. The
district court did so here.
Second, OrthoAccel’s challenge to Propel’s expert testi-
mony fails because Dr. Yadav considered both the provi-
sional and parent applications in his analysis. See J.A.
514–15. The remainder of OrthoAccel’s arguments attack
the weight and credibility of Dr. Yadav’s testimony, which
we do not reweigh on appeal. Nutrinova Nutrition Special-
ties & Food Ingredients GmbH v. Int’l Trade Comm’n,
224
F.3d 1356, 1359 (Fed. Cir. 2000) (explaining that an appel-
late court does not reweigh the evidence or reconsider the
credibility of the witnesses).
CONCLUSION
We have considered OrthoAccel’s remaining argu-
ments and find them unpersuasive. We conclude that in
light of Propel’s challenge to the validity of the ’184 patent,
the district court did not abuse its discretion by requiring
OrthoAccel to prove at the preliminary injunction stage
that it was more likely than not to prevail on the invalidity
10 ORTHOACCEL TECHNOLOGIES, INC. v. PROPEL
ORTHODONTICS, LLC
issue at trial. We also conclude on the record before us that
the district court correctly found that OrthoAccel did not
meet that burden. 3 We therefore affirm the district court’s
denial of OrthoAccel’s motion for a preliminary injunction.
AFFIRMED
COSTS
Each party shall bear its own costs.
3 Propel asks us to go a step further and hold that
claim 10 is anticipated by the parent application. Appel-
lee’s Br. 25. Given that this case is at the preliminary in-
junction stage, the district court correctly did not resolve
the question of validity, see Titan Tire,
566 F.3d at 1377,
and we decline to do so in the first instance.
