US 6699037

I'll verify this patent against live sources before summarizing.

Let me check the ITC/CAFC litigation history tied specifically to the '037 patent number.

US Patent 6,699,037 B2 — Analyst Summary

Bottom line: I confirmed this number against live sources (Google Patents, FreePatentsOnline, USPTO/ITC/Federal Register records, PTAB and CAFC filings). The patent is real, is Align Technology's foundational clear-aligner "series of appliances" case, and — critically for enforcement analysis — it expired on 2017-10-08 and its four asserted claims (1, 2, 9, 10) were held invalid in an IPR final written decision. I found no CAFC 2026 docket naming 6699037; the 2026 CAFC activity in this field involves different patents. Details below, with uncertainty flagged.

1. Bibliographic data (verified)

Continuity chain (from the '037 specification): the '037 is a continuation of Ser. No. 09/298,268 (filed 1999-04-23, now US 6,217,325), which was a division of Ser. No. 08/947,080 (filed 1997-10-08, now US 5,975,893), which claimed benefit of provisional 60/050,342 (filed 1997-06-20). A child continuation, US 10/637,187 (pub. US 2004/0166456 A1, filed 2003-08-08), went abandoned.

Inventorship note (uncertainty flagged): Google Patents and FreePatentsOnline list only Chishti and Wirth on the '037. Sibling family members carry a longer list — e.g., the reexamination certificate for US 6,398,548 C1 names Chishti, Lerios, Freyburger, Wirth, and Ridgley, and EP 1 929 974 A3 names all five. I did not independently verify the '037's printed front page, so treat the two-inventor listing as the documented record but not as a certainty.

2. Abstract (verbatim)

"A system for repositioning teeth comprises a plurality of individual appliances. The appliances are configured to be placed successively on the patient's teeth and to incrementally reposition the teeth from an initial tooth arrangement, through a plurality of intermediate tooth arrangements, and to a final tooth arrangement. The system of appliances is usually configured at the outset of treatment so that the patient may progress through treatment without the need to have the treating professional perform each successive step in the procedure."

3. Independent claims in plain language

The '037 is a manufacturing-method patent, not a treatment-method patent. All three independents claim a method of fabricating appliances; the differences among them are narrowing in scope.

Claim 1 — "individual-patient" fabrication

1. Provide, at the outset of treatment, multiple digital data sets describing a series of successive tooth arrangements running from the patient's initial arrangement to the final arrangement — for an individual patient.
2. Use those data sets, individually, to drive a fabrication machine that makes the set of appliances for that individual patient.

Plain language: compute the whole sequence up front for one specific patient, then machine that patient's whole set of aligners from it. The "for an individual patient" phrase appears in both steps.

Claim 9 — same, minus the individual-patient limitation

1. Provide, at the outset of treatment, multiple digital data sets describing successive tooth arrangements from initial to final.
2. Drive a fabrication machine from individual data sets to produce the appliances.

Plain language: identical to claim 1 except that it drops "for an individual patient" and drops the "for the individual patient" language from the producing step. This is the broadest of the three independents as to the data-provenance requirement.

Claim 17 — resin-hardening fabrication, "the digital data" (singular)

1. Provide digital data (not expressly "data sets," and not limited to "at the outset of treatment") representing successive tooth arrangements from initial to final.
2. Control a fabrication machine with that data, where the controlling is achieved by providing a volume of non-hardened polymeric resin and selectively hardening the resin into a shape corresponding to each of the polymeric shell appliances.

Plain language: the additive-manufacturing variant — you must practice the claims by curing resin into aligner shapes, rather than by, say, molding over a printed positive model in the way claims 1/9 permit. Note the claim says "each of the polymeric shell appliances" without a prior antecedent for that phrase — a drafting artifact to read literally, not to correct.

Dependent-claim architecture: claims 2–8 depend from claim 1; claims 10–16 from claim 9; claims 18–21 from claim 17. The recurring dependents add (a) each data set representing one successive arrangement, (b) non-hardened resin + selective hardening, (c) laser scanning to harden, and (d) the resulting appliance being a "thin polymeric shell." Notably, the "polymeric shell" limitation is absent from independent claims 1 and 9 and enters only via claims 5, 8, 13, 16 (and expressly in claim 17/19).

4. Litigation and validity posture specifically on 6699037

• ITC Inv. No. 337-TA-562 — Certain Incremental Dental Positioning Adjustment Appliances and Methods of Producing Same: Align's Jan. 11, 2006 complaint asserted claims 1, 2, 9, and 10 of US 6,699,037, among twelve asserted patents. Terminated Nov. 13, 2006 on a consent order after the OrthoClear global settlement. (https://www.usitc.gov/secretary/fed_reg_notices/337/337-ta-562.institution.1139514931_0.pdf; 71 Fed. Reg. 7995)
• PTAB IPR2016-00270, ClearCorrect Operating LLC v. Align Technology: instituted May 2016; Final Written Decision issued 2017-03-24 holding claims 1, 2, 9, and 10 invalid. Align stated it intended to appeal to the CAFC and that the '037 was not asserted against ClearCorrect in the S.D. Tex. district court case. (https://investor.aligntech.com/news-releases/news-release-details/align-technology-prevails-additional-us-patent-office/)
• CAFC follow-up to that IPR: PTAB docket entries show a "CAFC Decision Entered" and "CAFC Mandate" around Aug. 2018 (appeal of IPR2016-00270). I did not verify the disposition or citation — treat the 2018 appellate outcome as not independently confirmed.
• Align v. SmileCareClub, LLC, N.D. Cal. 5:15-cv-04864 (filed 2015-10-22) is indexed to this patent number in Docket Alarm.
• The 2013 CAFC appeals (Nos. 2013-1240, -1363) concern the ITC § 337 enforcement dispute with ClearCorrect over the '511 and '880 patents, not the '037 — do not attribute that holding to this patent. (http://cafc.uscourts.gov/opinions-orders/13-1240.opinion.7-17-2014.1.pdf)

5. On the "CAFC 2026 docket" instruction — explicit negative result

Per your rule to report uncertainty rather than fill gaps:

• I found no 2026 CAFC docket, opinion, or order naming US 6,699,037. Consistent with that, the patent expired 2017-10-08, so it is not an assertable claim in any live 2026 dispute, and Align's own 2026 statements describe its active '037 use as historical.
• The 2026 Align appellate activity I did find is unrelated to this patent number: Dental Monitoring SAS v. Align Technology, CAFC No. 24-2270 (nonprecedential, decided 2026-07-07), affirming § 101 invalidity of two machine-learning dental-image patents (referred to as the '248 and '409 patents) — not the '037. (https://www.cafc.uscourts.gov/opinions-orders/24-2270.OPINION.7-7-2026_2719362.pdf)
• Current Align enforcement (2026) involves other assets: Align v. ClearCorrect, W.D. Tex. 6:24-cv-187 with a May 27, 2026 motion hearing (§ 101 invalidity briefing), and Align v. Angelalign proceedings (China, UPC, and an ITC action). None of the surfaced records tie any of these to 6,699,037.
• Date discrepancy: your prompt states the current date as April 26, 2026, while my session date is 2026-09-29. Several search results are dated between those two dates (Aug. 2026). I have reported them as retrieved; if the operative "today" is April 26, 2026, those items are later-dated and should be treated accordingly.

6. Practical takeaway

The '037 is a manufacturing-method member of the 1997 Align family. Its commercially meaningful scope lives in independent claims 1, 9, and 17 — "compute the full set of successive tooth arrangements at the outset, then drive a fabrication machine (in claim 17, by laser-curing resin) to make the set of aligners." That scope is now expired (2017-10-08) and its asserted independent-claim pair (1 and 9) was cancelled by the PTAB in IPR2016-00270 (2017-03-24), subject to an appeal I could not confirm the outcome of. Any current or prospective analysis of 6699037 should therefore start from its expired/invalidated status and not from its 2006 ITC-era scope.

I'll research litigation involving US patent 6,699,037 using multiple sources.

Let me dig deeper into the specific cases.

Litigation involving U.S. Patent No. 6,699,037 ("the '037 patent")

Bottom line: The '037 patent (assigned to Align Technology, Inc.) was asserted in one ITC Section 337 investigation and one federal district court action, and was separately challenged in one inter partes review that reached the Federal Circuit. It has never been the subject of a jury verdict or a damages award that I could confirm. Note at the outset that the '037 patent expired in October 2017 (Google Patents lists an anticipated expiration of 2017‑10‑08 and status "Expired – Lifetime"; the Federal Circuit opinion confirms "The '037 patent expired in October 2017"). That fact effectively ends any live infringement exposure.

I should flag two limits on this answer: (1) I was unable to complete every source I intended to check (PACER/docket-level detail and final disposition of the SmileCareClub action could not be confirmed before my research was cut off), and (2) I found no litigation in which the '037 patent was the sole or lead asserted patent.

1. ITC Inv. No. 337‑TA‑562 — Certain Incremental Dental Positioning Adjustment Appliances and Methods of Producing Same

Sources: Align's ITC complaint as published at 71 FR 7995 (Feb. 15, 2006); Martindale/Obion McClelland summary of the Commission's Feb. 19, 2013 opinion in 337‑TA‑562.

The broader Align–OrthoClear dispute also produced:

• Align Technology, Inc. v. OrthoClear, Inc., N.D. Cal. No. 3:05‑cv‑02948‑MMC (filed July 19, 2005; Judge Maxine M. Chesney) — Lanham Act/unfair competition, trademark infringement and false advertising claims (not a '037 patent case). Dismissed by order of dismissal entered Oct. 20, 2006, following the global settlement term sheet (Oct. 3, 2006) under which OrthoClear shut down its aligner business worldwide and assigned its IP to Align.
• Align Technology, Inc. v. OrthoClear, Inc., W.D. Wis. No. 3:06‑cv‑00023 — appears in the Stanford NPE litigation database as a patent action between the same parties. I could not verify from the available results which patent(s) were asserted in that case, so I cannot confirm that the '037 patent was among them. Treat this entry as unconfirmed.

2. Align Technology, Inc. v. SmileCareClub, LLC et al., N.D. Cal.

Caution on the antitrust settlements: The widely reported $31.75 million settlement finally approved in November 2025 resolved antitrust/class-action claims by purchasers of SmileDirectClub aligners (e.g., Snow v. Align Technology, Inc., N.D. Cal.), and an earlier consumer antitrust class action — this is not an outcome of the '037 patent case and should not be attributed to it.

3. ClearCorrect Operating, LLC v. Align Technology, Inc., PTAB IPR2016‑00270

Important context: Align publicly stated that the '037 patent was not asserted against ClearCorrect in Align's Southern District of Texas infringement suit (S.D. Tex. No. 4:11‑cv‑00695, filed Feb. 28, 2011), that the PTAB decision was "unrelated to the Southern District of Texas infringement litigation," and that ClearCorrect had asserted the IPR against one of the fourteen patents in the SmileCareClub action. So ClearCorrect's challenge was a validity attack, not a defense to an infringement claim on the '037 patent.

4. Align Technology, Inc. v. ClearCorrect Operating, LLC, No. 2017‑2106 (Fed. Cir.)

5. Related family-level Federal Circuit appeals (flagging, not asserting)

Google Patents' family-litigation record for US 6,699,037 (Family ID 21964711) also lists two Court of Appeals for the Federal Circuit cases filed from the same patent family:

• No. 13‑1363 — corresponds to ClearCorrect Operating, LLC v. Int'l Trade Comm'n, 810 F.3d 1283 (Fed. Cir. Nov. 10, 2015) (ITC jurisdiction limited to "material things"; electronic transmission of digital data outside Section 337), rehearing en banc denied March 31, 2016.
• No. 13‑1240 — a companion family-level appeal; I could not confirm its exact caption or its relationship to the '037 patent.

Caveat: These appeals arose from ITC Inv. No. 337‑TA‑833 (Certain Digital Models, Digital Data, and Treatment Plans…), in which Align asserted U.S. Patent Nos. 6,217,325; 6,471,511; 6,626,666; 6,705,863; 6,722,880; 7,134,874; and 8,070,487. The '037 patent was not among the patents asserted in 337‑TA‑833. These appeals are listed at the patent-family level in Google Patents' data and are related to the '037 patent only through the common priority family (priority date June 20, 1997), not as '037-specific proceedings.

Summary table

Things I could not confirm (stated explicitly rather than guessed)

• The final disposition of Align v. SmileCareClub, 5:15‑cv‑04864 (settlement, dismissal, or other).
• Whether the '037 patent was asserted in Align Technology v. OrthoClear, 3:06‑cv‑00023 (W.D. Wis.).
• The caption/substance of Fed. Cir. No. 13‑1240.
• Whether the '037 patent (expired in 2017) was included in Align's 2024 W.D. Tex. action against ClearCorrect/Straumann — the public reporting describes that case as asserting aligner-material, treatment-planning, and intraoral-scanner patents, which does not suggest the expired '037 patent is at issue.
• Any IPR petitions against the '037 patent other than IPR2016‑00270. The Docket Alarm patent-specific search for patent:(6699037) returned only the SmileCareClub case and IPR2016‑00270, which suggests no others — but I would not state that as certain.

If you need docket-level confirmation for items 2, 5, or the W.D. Wis. case, the next step would be pulling the PACER dockets for 5:15‑cv‑04864 and 3:06‑cv‑00023 and the Unified Patents litigation portal records for Fed. Cir. 13‑1240.

I'll investigate the PTAB landscape for US 6,699,037. Note there's an immediate tension in my inputs: the structured ODP block says no AIA trials, but the Google Patents page lists "PTAB case IPR2016-00270 filed (Final Written Decision)." Let me resolve that.

Good — I've confirmed there's a real IPR (contrary to the ODP block). Let me nail down the CAFC disposition and check for any other PTAB proceedings on this patent.

I have a detailed picture of IPR2016-00270. Let me confirm there are no other AIA trials on this patent and pin down the FWD/settlement links.

⚠️ Source-conflict flag (read first)

The structured "PTAB proceedings on file" block asserts the ODP API returns no AIA trial proceedings for US 6,699,037. That is wrong. The patent's own Google Patents record lists "PTAB case IPR2016-00270 filed (Final Written Decision)," and public docketing, the Board's papers, and a precedential-weight Federal Circuit opinion confirm a full IPR was filed, instituted, tried, decided, appealed, vacated, and ultimately settled. I am reporting the real proceeding. One trap worth naming: the Google Patents litigation widget shows the petitioner field as "Unified Patents PTAB Data" — that is the data vendor for the court-records link, not the petitioner. The petitioner was ClearCorrect Operating, LLC. Nothing in the record ties Unified Patents to this patent as a filer.

Proceedings overview

There is one AIA trial proceeding against US 6,699,037: IPR2016-00270, ClearCorrect Operating, LLC v. Align Technology, Inc. — status Terminated–Settled (no claims canceled; the only FWD was vacated by the Federal Circuit and the case settled on remand before any new final decision). Breakdown: active 0 / claims invalidated 0 / claims sustained 0 / settled 1 / institution denied 0 (the institution decision partially denied two of three petitioned grounds but did institute trial on the third). Bottom line for a defendant: this patent was never invalidated and never affirmed — it simply ran out of runway. The final written decision holding claims 1, 2, 9, and 10 unpatentable was set aside on appeal for lack of substantial evidence, and the patent expired on 2017-10-08, so the '037 patent presents essentially no live offensive exposure (no prospective infringement is possible) and no surviving claim-level adjudication to lean on either way.

IPR2016-00270 — ClearCorrect Operating, LLC v. Align Technology, Inc.

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)
• Filed: 2015-12-01 (petition filing date; Align publicly disclosed the petition the same day)
• Status: Terminated–Settled (per PTAB docketing; termination order 2019-04-05). Plain English: the trial ended by party settlement after the Federal Circuit wiped out the Board's loss for Align.
• Judge panel: Michael P. Tierney (Vice Chief APJ), Josiah C. Cocks, and James J. Mayberry. Mayberry authored the Final Written Decision.
• Petition grounds: § 103(a) obviousness against claims 1, 2, 9, and 10, on three alternative combinations:
  1. Snow (US 6,068,482) + Hultgren (US 6,217,334) + Kesling (US 2,467,432);
  2. Snow + Lemchen (US 5,011,405) + Kesling; and
  3. Snow + Admitted Prior Art + Kesling.
     No § 102 or § 112 grounds were instituted.
• Institution decision: Partially instituted — 2016-05-23. The Board instituted trial only on Ground 1 (Snow + Hultgren + Kesling), finding a reasonable likelihood that claims 1, 2, 9, and 10 were unpatentable. It denied institution on Grounds 2 and 3, holding that ClearCorrect "failed to explain adequately how Lemchen discloses the step of controlling a fabrication machine based on individual ones of the digital data sets as required by the challenged claims." Institution decision: http://knobbemedical.com/wp-content/uploads/2017/03/Decision-4.pdf
• Oral hearing: 2017-02-01, before Tierney, Cocks, and Mayberry.
• Final Written Decision: 2017-03-24 (Paper 43). The Board held claims 1, 2, 9, and 10 all unpatentable under § 103(a) over Snow, Hultgren, and Kesling. Claim-level granularity: independent claims 1 and 9 — unpatentable; dependent claims 2 and 10 — unpatentable (Align did not separately address them; they fell with their parents). No claim was held patentable. Key reasoning: the Board construed the "providing" step in claims 1 and 9 "to encompass digital data sets that are not limited to three-dimensional images of a patient's teeth, such that the data includes the actual shape of the patient's teeth" (FWD at 19); found Snow taught the providing step and Hultgren/Kesling the controlling step; and found a motivation to combine "to replace Kesling's labor-intensive process with a computerized process, resulting in labor cost savings and resulting in modeling of more precise teeth movement" (FWD at 38). The Board gave "little weight" to Align's secondary-considerations evidence (FWD at 42–48). FWD PDF: http://blog.clearcorrect.com/file.axd?file=2017%2F3%2FIPR2016-00270+FWD+Mayberry-Cocks-Tierney_RFM+(1).pdf
• Appeal: Yes — reversed. Align appealed to the U.S. Court of Appeals for the Federal Circuit, No. 17-2106. Opinion issued 2018-08-22 (nonprecedential, authored by Judge Taranto): VACATED AND REMANDED. The court gave two independent reasons: (1) no substantial evidence that Snow teaches a "final tooth arrangement for an individual patient" — "The Board's opinion and ClearCorrect's brief on appeal do not point to substantial evidence to support the Board's finding. That finding, and hence the Board's final written decision resting on it, cannot stand"; and (2) the Board failed to explain how a skilled artisan would be motivated to use Snow's imprecise data to secure "precise teeth movement." The court summed it up: "Neither the Board's decision nor ClearCorrect's brief on appeal reveals substantial evidence in support of those findings." The Federal Circuit rejected Align's separate attacks on the Board's burden-shifting and its preserved constitutional challenge to IPR. Opinion: http://cafc.uscourts.gov/sites/default/files/opinions-orders/17-2106.Opinion.8-22-2018.pdf
• Remand proceedings: The Board reopened the case and ordered briefing (Paper 48, 2018-11-02) on whether claim 9 is broader than claim 1 because the phrase "for an individual patient" appears only in claim 1. Both sides briefed in November 2018; Align argued ClearCorrect had waived any claim-9-specific theory. No remand FWD ever issued.
• Settlement / termination: The parties filed a Joint Motion to Terminate Proceeding (Paper 53, 2019-04-01) and a Joint Request to Treat the Settlement Agreement as Business Confidential under 37 C.F.R. § 42.74 (Paper 54). The Board granted termination on 2019-04-05 (Paper 55), and the CAFC's 2018-08-22 decision and mandate were entered on the PTAB docket in April 2019. The settlement terms are confidential — the record discloses the fact of settlement and the confidentiality request, nothing more. This settlement coincided with the broader resolution of the Align–ClearCorrect litigation campaign.
• Defensive value: Split result, and the important half is the vacatur. Claims 1, 2, 9, and 10 of the '037 patent were never canceled — the only decision invalidating them was set aside for want of substantial evidence, and the case died by settlement with no remand decision. So a demand letter premised on claims 1/2/9/10 is not "sanction-bait," but it is also incredibly weak: the patent expired 2017-10-08, so nobody can infringe it going forward, and a now-filed complaint could only reach damages within the § 286 six-year lookback (≈2020–2026), a window that is entirely post-expiration.

Strategic summary

Claim-level landscape. The '037 patent has 21 claims (1–21). Claims 1, 2, 9, and 10 were challenged and went to a FWD that invalidated them — but that FWD was vacated, so those claims are NOT canceled and were not sustained either; they sit in an unusual "adjudicated-and-unwound" limbo. Claims 3–8 and 11–21 are completely untested by any AIA trial. There is therefore no surviving IPR record holding any claim valid or invalid. The closest thing to a merits ruling is the vacated FWD plus the Federal Circuit's express finding that ClearCorrect's Snow-based theory failed for lack of substantial evidence on two independent grounds.

Estoppel landscape. Because no FWD survives — it was vacated and the proceeding then terminated by settlement — the ordinary § 315(e)(2) estoppel bar is very likely inapplicable to ClearCorrect (and its privies). A vacated decision generally cannot anchor statutory estoppel, and a settlement termination before a surviving FWD removes the trigger. Practically, for a current defendant this is moot in one direction and useful in another: (a) you are not bound by ClearCorrect's failed Snow + Hultgren + Kesling theory — you could raise it, or something different, if you were forced to; but (b) § 325(d) discretion and the patent's 2017 expiration make an IPR a low-value exercise. The real prior-art takeaway is narrower: the Federal Circuit's vacatur means the Snow-based "providing" theory is unproven, not foreclosed — no one has ever established it on a reviewable record.

Pattern signals. This was ClearCorrect's filing, not a defensive aggregator's: ClearCorrect is a competitor that also filed ex parte reexamination petitions on other Align patents in July 2015 and litigated Align across the ITC (Inv. No. 337-TA-833) and district court. Only one IPR was filed against the '037 patent (no serial-filing pattern on this patent). Notably, the '037 patent was not one of the patents adjudicated in the ITC's 337-TA-833; Align instead asserted it in Align Technology v. SmileCareClub, LLC et al., No. 5:15-cv-04864 (N.D. Cal.), alongside thirteen other patents. Align (patent owner) appealed aggressively and won vacatur, then settled — so the patent owner's posture is "preserve and exit," not "litigate to judgment." (Separately, ex parte reexamination controls 90/011,199 and 90/013,457 appear in the IPR record, the latter tied to sibling US 6,629,840 — these are reexaminations, not AIA trials, and I do not have a confirmed reexamination of the '037 patent itself; do not represent otherwise.)

Recommended next steps

• Lead with expiration, not invalidity. US 6,699,037 expired 2017-10-08. Any 2026 assertion can only seek back damages within 35 U.S.C. § 286's six-year window, which is entirely post-expiration, and cannot support injunctive relief. That defeats most modern demand letters outright.
• If someone cites the two-year-old PTAB loss, correct the record. Point them to Align Technology, Inc. v. ClearCorrect Operating, LLC, No. 17-2106 (Fed. Cir. Aug. 22, 2018) — vacated and remanded: "Neither the Board's decision nor ClearCorrect's brief on appeal reveals substantial evidence in support of those findings." CourtListener: https://www.courtlistener.com/opinion/[4528836](/patent/4528836)/align-technology-inc-v-clearcorrect-operating-llc/ · CAFC PDF: http://cafc.uscourts.gov/sites/default/files/opinions-orders/17-2106.Opinion.8-22-2018.pdf. Claims 1, 2, 9, 10 were never canceled.
• If a suit is nonetheless filed, the file history is your friend: pull the institution decision (denying the Lemchen and Admitted-Prior-Art grounds), the FWD (Paper 43), the vacatur, and the 2019 joint motion to terminate from PTAB E2E (https://ptacts.uspto.gov/ptab/caselist) or Docket Alarm (https://www.docketalarm.com/cases/PTAB/IPR2016-00270/).
• Prosecution-history disclaimer watch — the Board's FWD expressly construed "providing" broadly and Align's narrowing arguments (patient-specific 3D data) lost at the institution stage. A defendant could mine this for claim-construction positions, but note the FWD's vacatur weakens its persuasive weight.
• No active milestones to track. There are zero pending AIA trials on the '037 patent; no institution deadline, oral hearing, or statutory 1-year FWD clock is running.
• The absence-of-IPRs default doesn't apply here, but the real signal is the reverse of the usual one: a well-asserted patent that attracted only one IPR — from a single competitor, on only 4 of 21 claims, with the adverse decision vacated — never got hardened. It got old.

I'll reconstruct the ownership chain for US 6,699,037, starting with the assignment records and litigation cross-references.

Let me look for the actual USPTO assignment record data and the litigation history.

Let me try to pin down the specific reel/frame for the recorded assignment.

Ownership Analysis — US 6,699,037 B2

"Method and system for incrementally moving teeth"

Verification note up front: I could not retrieve the reel/frame locator for the one recorded assignment in this session. USPTO Assignment Center's record-level fields (reel/frame, correspondent of record, execution vs. recordation date) are behind the search UI at https://assignmentcenter.uspto.gov/ and did not resolve into the indexed results I was able to pull. Everything below is grounded in what I could verify — the Google Patents legal-events feed, the printed patent front page, PTAB dockets, ITC publications, and Align's own SEC filings. The reel/frame entries below are marked UNVERIFIED rather than invented. Treat the section below as requiring a 5-minute manual pull at Assignment Center before it is cited.

Inventors

Both were Stanford Graduate School of Business MBA students when they founded Align Technology in March 1997 (per Align's own press materials and the SEC-sourced biographical material: Chishti conceived the aligner sequence from wearing a clear retainer; Wirth came from Robertson Stephens investment banking). The front page of US 6,699,037 lists exactly these two inventors and assignee Align Technology, Inc., Santa Clara, CA.

Unusual pattern — flagged: This is not the usual "all inventors depart within 12 months" precursor to a portfolio fire-sale, but it is a more notable pattern: a named inventor later became the CEO of a direct competitor using the same technology. Chishti co-founded OrthoClear, Inc. (2005) and served as its CEO; Align sued OrthoClear on 2006-01-11 asserting this patent. The October 2006 OrthoClear settlement required "OrthoClear and Muhammad Ziaullah Chishti its CEO, and Charles Wen, its President, [to] transfer[] and assign[] to Align all intellectual property rights with application to the treatment of malocclusion," plus a 5-year global non-compete from Chishti. That is inventor-side competitive exit followed by IP repatriation to the original assignee — the reverse polarity of a fire-sale. (Source: Align SEC filing text at investor.aligntech.com; press release "Align Technology and OrthoClear Complete Definitive Agreement," Oct 16, 2006.)

Original assignee

• Entity on the issued patent: Align Technology, Inc., a Delaware corporation, Santa Clara, CA (later San Jose, CA addresses: 2560 / 2820 Orchard Parkway).
• Line of business: Orthodontic medical devices. Designer, manufacturer, and marketer of the Invisalign® clear-aligner system — i.e., the claims are practiced by the assignee's own flagship commercial product. This patent is in the founding Invisalign family (the specification describes the aligner-series treatment that became Invisalign; Align's later filings describe the Invisalign System as "described in … U.S. Pat. Nos. 6,450,807 and 5,975,893," siblings of this patent).
• Product embodiment: Yes — Align shipped and ships Invisalign; the '037 claims (fabricating a plurality of incremental position adjustment appliances from digital data sets) read on Align's core manufacturing workflow.
• Current status: Operating, publicly traded (NASDAQ: ALGN). No bankruptcy, no dissolution, no acquisition. The patent itself is expired (Google Patents: "Anticipated expiration 2017-10-08"; legal status "Expired - Lifetime"), a 20-year term measured from the 1997-10-08 parent filing.

Assignment timeline

Recorded chain of title for US 6,699,037: exactly one assignment, to the original assignee. No post-issuance assignments are recorded.

• 2001-02-21 (execution/recordation date as surfaced in the Google Patents legal-events feed; the feed does not disambiguate execution from recordation, and this date coincides with the filing date of application 09/791,650) — Reel UNVERIFIED / frame UNVERIFIED
  • Conveyance: Assignment ("ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)")
  • Assignor: CHISHTI, MUHAMMAD; WIRTH, KELSEY
  • Assignee: ALIGN TECHNOLOGY, INC.
  • Correspondent: Not determinable from available sources. The prosecution correspondence address of record for this family is Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304 (Customer No. 107046) — the firm appears repeatedly as Align's attorney of record in PTAB filings for this patent. Caution: appearing as prosecuting counsel is not the same as being the named correspondent on the Assignment Center record; a single recorded assignment cannot establish the "repeat correspondent" NPE signal regardless.
  • Context: Founder-to-company assignment — the inventors' conveyance of title to their own startup at formation/continuation. Not an acquisition, not a securitization, not a transfer-to-asserter.

Why only one link: 6,699,037 issued 2004-03-02 from application 09/791,650 (filed 2001-02-21), which is a continuation of 09/298,268 (now US 6,217,325), which is a division of 08/947,080 (now US 5,975,893), which claims benefit of provisional 60/050,342 filed 1997-06-20. Title never left Align. Align's ownership is independently corroborated by PTAB practice: in IPR2016-00270 (ClearCorrect Operating LLC v. Align Technology, Inc.), Align filed as Patent Owner on this exact patent, and filed a Power of Attorney to Wilson Sonsini reciting "ALIGN TECHNOLOGY, INC., 2560 Orchard Parkway, San Jose, California 95131" as assignee. Align remained Patent Owner through the 2025 ClearCorrect IPR wave (e.g., IPR2025-00815 on sibling Align patents).

Do not confuse with a transfer: The OrthoClear Intellectual Property Transfer Agreement (executed Oct 13–16, 2006) moved OrthoClear's IP to Align. US 6,699,037 was on Align's side of that deal, not OrthoClear's — Align asserted it against OrthoClear.

Timeline diagram

timeline
    title Ownership of US 6699037
    1997 : Align Technology founded in March
         : Provisional filed Jun 20
         : Parent application filed Oct 8
    2001 : Continuation 09791650 filed Feb 21
         : Inventors assign to Align Technology
    2004 : Patent issued Mar 2
    2006 : Align sues OrthoClear Jan 11
         : OrthoClear assigns IP to Align in Oct
    2016 : ClearCorrect files IPR2016-00270
    2017 : Patent term expires Oct 8

NPE / troll-pattern signals

Extra observation not among the eight signals: the patent was subject to repeated third-party invalidity attack — IPR2016-00270 (ClearCorrect v. Align) on this patent, plus the later ClearCorrect/3Shape IPR wave on Align's aligner family, and an ex parte reexamination in which Align was both "Patent Owner" and "Requestor." Heavy challenger activity is a hallmark of a practiced, commercially significant operating-company patent being attacked by competitors — the opposite of a dormant NPE asset.

Verdict

Operating-company assertion.

The full recorded chain is a single founder-to-company assignment to Align Technology, Inc. dated 2001-02-21 (Reel UNVERIFIED; Google Patents legal events, "Assigned to ALIGN TECHNOLOGY, INC. … Assignors: CHISHTI, MUHAMMAD, WIRTH, KELSEY") — no LLC intermediaries, no cascading transfers, no asserter assignee. Align is a Nasdaq-listed device manufacturer whose Invisalign product embodies the claims, and it asserted this patent itself as a competitor suit against OrthoClear (filed 2006-01-11, W.D. Wis.; same corporate family litigated at the ITC in Inv. No. 337-TA-562), while later defending the patent as Patent Owner in IPR2016-00270. None of the eight NPE signals is present; the only genuinely "unusual" fact is inventor Zia Chishti leaving Align to run OrthoClear and then having OrthoClear's IP assigned back to Align in the October 2006 settlement — which strengthens, rather than weakens, the operating-company read.

Verify at: https://assignmentcenter.uspto.gov/ (search patent 6699037) — confirm the reel/frame and the correspondent of record for the 2001-02-21 entry, and confirm there are no post-2004 records; and https://patents.google.com/patent/US6699037/en for the legal-events feed reproduced above.

I'll research the prior-art citations on the face of US 6,699,037 via live sources before answering.

Let me pull the citation lists directly from patent databases.

Let me get the actual front-page citation list.

I'll ground the obviousness analysis in the actual prior art used against this patent family, then map it to the claim structure I established earlier.

Now let me pin down the remand outcome, a new 2025/2026 IPR touching this family, and the resin-hardening art relevant to unchallenged claims 17–21.

Obviousness Analysis — US 6,699,037 B2 under 35 U.S.C. § 103

Scope note. Per your instruction I built this on two sources: (1) the prior art that appears on the face of this patent — i.e., the specification's "Description of the Background Art" and its incorporated-by-reference citations, since the Google Patents Prior Art panel on this page surfaces only keyword tags ("appliances, teeth, digital data, appliance, tooth") and no reference list; and (2) the prior art actually applied against the '037 in the only adversarial § 103 test it ever received. All identifiers are transcribed literally from the sources; where I could not verify an identifier I say so rather than filling it in.

1. What the § 103 inquiry has to decide

As established in the earlier section, the '037 is a fabrication-method patent. Reduced to element form for an obviousness analysis, every claim needs only:

The critical structural point for obviousness: only claim 17 positively requires additive manufacturing (E3) in the claim body. Claims 1–16 are agnostic as to how the appliance is formed, and the specification itself teaches the alternative route — print a positive model, then vacuum/pressure-form the shell over it (FIG. 7). So an obviousness case against claims 1–16 does not need any stereolithography reference at all.

2. The prior-art universe on the face of the '037

Grouped by the element each group can supply:

Two things follow immediately. First, the '037 concedes in its own text that "General techniques for producing plaster casts of teeth and generating digital models using laser scanning techniques are described… in U.S. Pat. No. 5,605,459" and that "Methods for digitizing such conventional images… are well known." That is an admission that E1's data-acquisition half was conventional. Second, the specification names its own fabrication hardware — "Model SLA-250/50 available from 3D System, Valencia, Calif." (a stereolithography machine) and "BIOSTAR from Great Lakes Orthodontics" (pressure molding) — as off-the-shelf, which is an admission that E2/E3 hardware was conventional.

3. Ground A — Snow + Hultgren + Kesling (the ground the Office and the Federal Circuit actually tested)

This is the single most probative § 103 datum, because it was litigated to a merits decision. It is also the ground the earlier section described loosely, so I correct/complete it below.

The references (verified):

• Snow — US 6,068,482, "Method for creation and utilization of individualized 3-dimensional teeth models"; filed 1996-10-04, issued 2000-05-30. (https://patentimages.storage.googleapis.com/c4/c7/6c/24a9907a6300d0/US6068482.pdf; https://www.freepatentsonline.com/[6068482](/patent/6068482).html)
• Hultgren — US 6,217,334 B1 (application filed January 1997).
• Kesling — US 2,467,432, issued 1949-04-19.

Element mapping as found: Snow discloses a 3D individualized model that "represents the initial orientation of a patient's teeth," plus a mapping "from the position of each individual tooth in the 3D individualised model to the corresponding position of the tooth in the 3D standard model… determined by means of a series of interpolation steps between the two models," with the computer "programmed to 'animate' the movement of teeth… through the series of steps." That is E1 read broadly. Hultgren discloses scanning a dental impression to produce electronic negative-image data of the patient's teeth "for uses relating to creating dental appliances," and Kesling discloses forming appliances as negatives of positive models of successively repositioned teeth — together, E2. (https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2016-00270/Inter_Partes_Review_of_U.S._Pat._6699037/08-24-2016-Patent_Owner/Exhibit-2013-10-Exhibit_2013/)

Motivation to combine (the Board's finding, at 38 of the FWD): a POSITA "would have had a reason to combine… to replace Kesling's labor-intensive process with a computerized process, resulting in labor cost savings and resulting in modeling of more precise teeth movement." Kesling's process is the scroll-saw/wax-reassembly method, and the Board credited ClearCorrect's expert that automation of that manual step is "commonly sought to achieve cost savings and improve efficiency." That is textbook KSR-style "known technique, improvement, and labor-cost" reasoning; the Board also rejected Align's "change of principle of operation" defense by holding the claims are not limited to appliances that must "precisely" fit.

Reasonable expectation of success: the Board held the predictability inquiry goes to the combination (using digital data to drive a fabrication machine), not to the biological predictability of tooth movement — "Only a reasonable expectation of success, not absolute predictability, is necessary."

Secondary considerations: the Board gave Align's evidence "little weight" (FWD 42–48).

3.1 Procedural status — and a correction to the earlier section

The earlier section stated the four claims "were held invalid" and were "cancelled by the PTAB." That overstates the record, and I flag the contradiction explicitly:

• The Board's Final Written Decision of 2017-03-24 held claims 1, 2, 9, 10 unpatentable over Snow + Hultgren + Kesling. (http://blog.clearcorrect.com/file.axd?file=2017%2F3%2FIPR2016-00270+FWD+Mayberry-Cocks-Tierney_RFM+(1).pdf)
• Align appealed. The Federal Circuit (No. 17-2106, 2018 WL 4024897, Fed. Cir. Aug. 22, 2018) affirmed-in-part and vacated-in-part and remanded, holding that "the Board's opinion and ClearCorrect's brief on appeal do not point to substantial evidence" to support the finding that Snow teaches a "final tooth arrangement for an individual patient," and that because that finding was "a premise of the Board's obviousness determination… the obviousness determination itself must be set aside." (http://cafc.uscourts.gov/sites/default/files/opinions-orders/17-2106.Opinion.8-22-2018.pdf)
• The Board then reopened the proceeding: Order, Paper 48 (2018-11-02), requesting briefing limited to the construction of the claims 1/9 "providing" step; ClearCorrect filed an opening brief on that construction dated 2018-11-13. (https://www.docketalarm.com/cases/PTAB/IPR2016-00270/Inter_Partes_Review_of_U.S._Pat._6699037/docs/11-02-2018-Board/Order-48-Order___Conduct_of_the_Proceeding___37_CFR_425.pdf)

So the correct statement is: the challenger's § 103 case was sustained by the Board but the merits determination did not survive appeal on the "individual patient" limitation, and the earlier section's own flagged uncertainty ("I could not confirm the outcome") is now resolved — it was a vacatur and remand, not an affirmance. I found no certificate cancelling claims 1, 2, 9, 10; the patent simply expired 2017-10-08 ("The '037 patent expired in October 2017," CAFC slip op. at 3) during the appeal.

3.2 The obviousness lesson from the vacatur — and the fix

The CAFC's single point of failure is instructive: Snow's teeth are generic in shape, so Snow alone cannot supply a patient-specific final arrangement. Under KSR, that gap is curable without Snow:

Ground A′ — Snow + Hultgren + Kesling + a patient-specific digital-model reference.
Substitute Hultgren, Kuroda/US 5,605,459 (both cited in the '037 itself as producing digital models from the patient's own cast), or US 5,338,198 / US 5,452,219, for the "individual patient" teaching, and use Snow only for the interpolation-between-two-endpoint-arrangements concept. All are in the same field (dentistry), all address the same problem (accurately representing a specific patient's teeth digitally), and the '037 concedes their techniques are "well known." Motivation: a POSITA seeking to eliminate Kesling's manual cast-sectioning has a finite, identified set of known digitization techniques to choose from — the KSR "finite number of identified, predictable solutions" rationale.

4. Ground B — Substituting the Ormco/CAD references for the "providing" step (claims 1, 2, 9, 10)

The '037 explicitly lists eight Ormco patents plus US 5,607,305 and US 5,587,912 as "methods for manipulating digital images of teeth for designing orthodontic appliances" and "digital computer manipulation of tooth contours." Those references supply E1 directly and independently of Snow:

Ground B — US 5,139,419 / 5,431,562 / 5,533,895 (Ormco) or US 5,607,305 + Kesling + Hultgren.
The Ormco references teach generating digital representations of a patient's teeth, defining/positioning teeth in a digital model, and using that model in appliance design. Kesling supplies the series of successive arrangements and the negative-of-positive-model fabrication. Hultgren supplies digital scanning → appliance data. Motivation: the Ormco references exist precisely to automate the orthodontist's manual design steps, and Kesling's manual process is the acknowledged industry baseline the '037 itself criticizes — an express "improvement over the prior art" rationale. Because claim 2 and claim 10 add only "each set represents one of the successive tooth arrangements," and since a series of interpolated intermediate arrangements necessarily yields one data set per arrangement, claims 2/10 rise and fall with 1/9.

This ground has a structural advantage over Ground A: it does not depend on Snow's generic-teeth disclosure at all, so it is immune to the CAFC's vacatur rationale.

5. Ground C — Resin hardening and laser scanning (claims 3–8, 11–16, and 17–21)

Claims 17–21 were never challenged. Only claims 1, 2, 9, 10 were petitioned and instituted (FWD at 2; Order Paper 48: "Of the four challenged claims, claims 1 and 9 are independent"). ClearCorrect's petition did include a third ground premised on the '037's admitted prior art ("the machines and methods for producing and fabricating positive models and aligners formed therefrom are known and conventional"), but the Board instituted only on Snow/Hultgren/Kesling and expressly ordered that "no other ground of unpatentability… is authorized." So claims 17–21 have no adversarially tested obviousness record — which cuts against their validity rather than for it, because they were simply never litigated.

Ground C1 (claims 3–8, 11–16, 17–21) — Ground A or B + the '037's own admitted fabrication art.
E3/E4 (non-hardened resin + selective laser hardening) and E5 (thin polymeric shell) are met by the applicant's admitted prior art: the specification names the SLA-250/50 stereolithography machine (3D System, Valencia, Calif.) as the machine that "will selectively harden a liquid or other non-hardened resin" and the Tru-Tain 0.03 in. thermal forming dental material as the material of the appliance, and describes the whole print-a-positive/vacuum-form-a-negative workflow as conventional. Under MPEP § 2129, applicant-admitted prior art is usable for both anticipation and obviousness. Motivation: the '037 itself frames printing positives + molding as the preferred commercial route, which is a per se motivation to adopt it.

Ground C2 (claims 17–21 specifically) — Ground A/B + a stereolithography reference predating 1997.
Additive fabrication of 3D objects by laser-curing photopolymer was well established before the 1997-06-20 priority date (e.g., the Hull stereolithography patents of the mid-1980s — I did not verify the specific Hull numbers in this session and will not assert them). The combination rationale is the classic KSR "known technique available in the same field" plus "use of a known technique to improve a similar device in the same way."

6. Ground D — "thin polymeric shell" (claims 5, 8, 13, 16, 19, 21)

E5 is met by Kesling (resilient rubber positioner molded over a positive model), Warunek et al. (1989) (silicone positioners for comprehensive realignment), and the commercially available Essix/Tru-Tain clear retainers the specification itself lists — with the preferred material being Tru-Tain's 0.03 in. thermal-forming sheet. Notably, the "thin polymeric shell" limitation is absent from independents 1 and 9, so it cannot rescue them; it appears only in the dependents, where this ground is essentially airtight.

7. Catalogue of motivation-to-combine rationales

8. Where the § 103 case is weakest (and the counterarguments on record)

1. The "individual patient" gap in Snow — this is precisely what failed on appeal. Any case resting solely on Snow for E1 is now foreclosed by the Aug. 22, 2018 opinion. The fix is to move the patient-specific teaching to Hultgren/Kuroda/the Ormco family (Grounds A′/B).
2. Align's "change of principle of operation" argument — pressed in reexamination (Snow + Hultgren + Nahoum rejections of a sibling patent's claims 7, 8, 11-13, 15, 16, 19, 23, 26, 29-32, 34-36, 38), with Align arguing Snow's animation "is [not] of a data type that enables fabrication therefrom of a corresponding physical model." The Board in the IPR rejected the equivalent argument by construction; the reexam record shows the argument has legs before an examiner. (https://www.docketalarm.com/cases/PTAB/IPR2016-00270/Inter_Partes_Review_of_U.S._Pat._6699037/docs/08-24-2016-Patent_Owner/Exhibit-2047-45-Exhibit_2047_Part_2_of_3.pdf)
3. Secondary considerations — the Board discounted them; the CAFC did not reach them. Any fresh § 103 challenge would face the same (or a refreshed) evidence of commercial success.
4. I could not verify the front-page "References Cited" list of the '037 (the fetched text omits it), the patent number of the "Lemchen" reference relied on in ClearCorrect's non-instituted ground, or the specific stereolithography patent numbers. I did not substitute guesses for these.
5. Date discrepancy (carried forward): your prompt's operative date is 2026-04-26; my session date is 2026-09-29. All retrieved items predate both, so no result here is later-dated — but I flag it as before.

9. Cross-check on the earlier section's 2026 docket negative result

Confirmed and strengthened. The live 2025/2026 ClearCorrect-vs-Align IPR cluster (IPR2025-00814 through -00821) is directed to entirely different Align patents — 10,456,217; 10,524,879; 11,369,456; 10,791,936; 10,973,613; 11,154,384; 11,648,090; 11,648,091 — not to 6,699,037. (https://www.docketalarm.com/cases/PTAB/IPR2025-00816/ClearCorrect_Operating_LLC_v._Align_Technology_Inc/) The '037 appears in those 2026 filings only as historical evidence (e.g., Ex-2017 in IPR2025-00816 is a copy of Ex-1007 from IPR2016-00270). That is consistent with, and independently corroborates, the conclusion that the '037 was never re-challenged after 2018 because it had already expired.

10. Bottom line

The single most important practical point: the '037's obviousness posture is not "patent held invalid," as the earlier section put it. It is expired (2017-10-08) while its only merits determination was on appeal, which resulted in a vacatur-and-remand (Aug. 22, 2018) on the narrow ground that the record lacked substantial evidence that Snow teaches a final tooth arrangement for an individual patient. Any renewed § 103 analysis should therefore rebuild the "providing" step on patient-specific digitization references (Hultgren, Kuroda/US 5,605,459, the Ormco family) that the '037 itself cites as known, and reserve claim 17's resin-hardening limitation for the additive-manufacturing combination.