3Shape A/S

Patent Trials and Appeals Board

Feb 25, 2022

IPR2021-01473 (P.T.A.B. Feb. 25, 2022)

Trials@uspto.gov Paper No. 11 Tel: 571-272-7822 Entered: February 25, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ ALIGN TECHNOLOGY, INC., Petitioner, v. 3SHAPE A/S, Patent Owner. _______________ IPR2021-01473, IPR2021-01474, and IPR2021-014751 Patent 10,097,815 B2 _______________ Before FRANCES L. IPPOLITO, JAMES J. MAYBERRY, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial and Granting-In-Part and Denying-In-Part Joint Request to Treat Settlement Agreement as Business Confidential Information 37 C.F.R. § 42.74 1 This Order addresses issues that are the same in each of the identified proceedings. IPR2021-01473, IPR2021-01474, and IPR2021-01475 Patent 10,097,815 B2 2 I. INTRODUCTION With the Board’s authorization, Petitioner filed Motions that request termination in each of the above-captioned proceedings. Paper 9 (“Motion”).2 Petitioner represents that Patent Owner does not oppose the Motion. Id. at 1. Along with the Motion, Petitioner filed a copy of a Settlement Agreement between Petitioner and Patent Owner. Ex. 1035 (“Settlement Agreement”). The parties also filed a Joint Request that the Settlement Agreement be treated as business confidential information and kept separate from the file of U.S. Patent No. 10,097,815 B2 (“the ’815 patent”). Paper 10 (“Joint Request”). II. DISCUSSION According to the Motion, the Settlement Agreement resolves the parties’ disputes involving the ’815 patent, and Exhibit 1035 is a true copy of the agreement or understanding made in connection with, or in contemplation of, the termination of the above-captioned proceedings. Motion 1. The Settlement Agreement states that it “constitute[s] the entire agreement between the parties.” Settlement Agreement 22. The proceedings are at an early stage, and we have not yet decided whether to institute a trial in the proceedings. Thus, we determine that good cause exists to dismiss the petitions for inter partes review and terminate the the proceedings. In the Joint Request, the parties request that the Settlement Agreement be treated as business confidential information and kept separate from the 2 The relevant papers and exhibits filed in the above-captioned proceedings are substantively the same. See IPR2021-01473, Paper 9; IPR2021-01474, Paper 10; and IPR2021-01475, Paper 9. We cite to the record in IPR2021- 01473 for brevity unless otherwise indicated. IPR2021-01473, IPR2021-01474, and IPR2021-01475 Patent 10,097,815 B2 3 file of the ’815 patent. Joint Request 1. After reviewing the Settlement Agreement, we find that it contains confidential business information about the settlement terms. Thus, good cause exists to treat the Settlement Agreement as business confidential information pursuant to 37 C.F.R. § 42.74(c), and we grant this part of the parties’ request. In the Joint Request, the parties also “jointly request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon the parties on the day the written request is provided to the Board.” Joint Request 1. The parties have provided no basis for granting this request. Thus, we deny this part of the parties’ request. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER It is ORDERED that the Motions are granted; FURTHER ORDERED that IPR2021-01473, IPR2021-01474, and IPR2021-01475 are terminated with respect to Petitioner and Patent Owner; and FURTHER ORDERED that the Joint Requests to treat the Settlement Agreement as business confidential information (IPR2021-01473, Paper 10; IPR2021-01474, Paper 11; and IPR2021-01475, Paper 10) are granted-in- part and denied-in-part, and the Settlement Agreement (IPR2021-01473, Ex. 1035; IPR2021-01474, Ex. 1035; and IPR2021-01475, Ex. 1035) shall be kept separate from the file of U.S. Patent No. 10,097,815 B2, and made IPR2021-01473, IPR2021-01474, and IPR2021-01475 Patent 10,097,815 B2 4 available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c). IPR2021-01473, IPR2021-01474, and IPR2021-01475 Patent 10,097,815 B2 5 For PETITIONER: Jason Eisenberg Robert Sterne Trent Merrell Hasina Ali STERNE, KESSLER, GOLDSTEIN & FOX PLLC jasone-ptab@sternekessler.com rsterne-ptab@sternekessler.com tmerrell-ptab@sternekessler.com hali-ptab@sternekessler.com For PATENT OWNER: Todd Walters Roger Lee Andrew Cheslock BUCHANAN INGERSOLL & ROONEY PC todd.walters@bipc.com roger.lee@bipc.com andrew.cheslock@bipc.com