Sterne, Kessler, Goldstein & Fox announces that the U.S. Patent and Trademark Office has granted all three of its reexamination requests for its client Get-Grin in its defense of patent litigations brought by Dental Monitoring, a competitor of Get-Grin. The granted reexams also resulted in a full stay of the patent litigations.
Get-Grin is a leading manufacturer and developer of solutions for oral health needs. The Grin App and Grin Scope® allow patients access to quality professional care from the convenience of their smart devices, all while doctors remotely monitor patients via virtual check-ins for complete visibility. The Patent Office determined that each of Get-Grin’s requests raised “substantial new questions of patentability” as to whether Dental Monitoring’s patents should have issued in the first place. The latest order involved a patent that covers using AI to analyze photographs of a patient’s teeth. Dental Monitoring asserted the patent—along with three others—against Get-Grin in the U.S. District Court for the District of Delaware. Get-Grin asked the Patent Office to take a second look at three of the patents, and the Patent Office has now granted all of Get-Grin’s requests, finding that Get-Grin successfully showed 20 substantial new questions of patentability—meaning that the patents cover inventions that may not be new after all. The Patent Office has likewise concluded that a similar petition filed by another competitor on the fourth patent that Dental Monitoring asserted against Get-Grin has a reasonable likelihood of success.
The Patent Office’s most recent decision comes on the heels of Judge Bryson (sitting by designation in Delaware), ruling to halt Dental Monitoring’s lawsuit against Get-Grin to allow the Patent Office time to review the validity of Dental Monitoring’s patents. As Judge Bryson noted, “it makes sense to ask the agency that issued the patent in the first place to decide whether it made a mistake, rather than to ask a court and eight jurors–strangers to the original issuance decision—to take the lead in second-guessing the [Patent Office’s] issuance decision.” He further noted that Get-Grin’s reexaminations are “likely to result in the cancellation or amendment of at least some of the asserted claims” from the patents.
The Sterne Kessler team representing Get-Grin, includes: Directors Robert Greene Sterne, Deirdre M. Wells, Daniel S. Block, Richard Crudo, Tyler Dutton, and Counsel James Hietala.
- Order Granting Request for Ex Parte Reexamination No. 90/019,435 regarding U.S. Patent No. 11,314,983
- Order Granting Request for Ex Parte Reexamination No. 90/019,416 regarding U.S. Patent No. 11,599,997
- Order Granting Request for Ex Parte Reexamination No. 90/019,399 regarding U.S. Patent No. 11,532,079
- Memorandum Opinion and Order Granting a Stay Pending Reexamination of the Asserted Claims
Download
PDF
Receive insights from the most respected practitioners of IP law, straight to your inbox.
Subscribe for Updates