Align Technology, Inc.

Patent Trials and Appeals Board

Mar 3, 2022

IPR2021-01240 (P.T.A.B. Mar. 3, 2022)

Trials@uspto.gov Paper 19 Tel: 571-272-7822 Entered: March 3, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ 3SHAPE A/S and 3SHAPE INC., Petitioner, v. ALIGN TECHNOLOGY, INC., Patent Owner. _______________ IPR2021-01240 Patent 10,709,527 B1 _______________ Before HYUN J. JUNG, NEIL T. POWELL, and JAMES J. MAYBERRY, Administrative Patent Judges. POWELL, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial and Granting-in-Part and Denying-in-Part Joint Request to Treat Settlement Agreement as Business Confidential Information 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-01240 Patent 10,709,527 B1 2 I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (collectively, “the Parties”) filed a Joint Motion to Terminate the above- captioned inter partes review proceeding. Paper 17 (“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of a Settlement, Release and Patent License Agreement (Ex. 2005, “Settlement Agreement”), as well as a Joint Request that the Settlement Agreement be treated as business confidential information and be kept separate from the files of the patents involved in the above-captioned proceeding. Paper 18 (“Joint Request”). II. DISCUSSION Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C. § 317(a) also provides that if no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision. In the Joint Motion, the Parties represent that the Settlement Agreement resolves their disputes involving U.S. Patent No. 10,709,527 B1 (“the ’527 patent”). Joint Motion 1. The Parties “certify that there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of this inter partes review proceeding.” Id. The Parties also represent that they have filed a true copy of the Settlement Agreement made in connection with, or in contemplation of, the termination of the above-captioned proceeding. Id. The Settlement IPR2021-01240 Patent 10,709,527 B1 3 Agreement states that it “constitute[s] the entire agreement between the Parties.” Settlement Agreement 22. We instituted trial for this proceeding (see Paper 15), but we have not yet decided the merits of the proceeding, and a final written decision has not yet been entered. Under these circumstances and in view of the Parties’ settlement, we determine that good cause exists to terminate the proceeding. In the Joint Request, the Parties request that the Settlement Agreement be treated as business confidential information and be kept separate from the files of the patent involved in the above-captioned proceeding. Joint Request 1. After reviewing the Settlement Agreement, we determine that good cause exists to treat the Settlement Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and we grant the Parties’ request in that regard. 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.” Id. The Parties have provided no basis for granting this request. Accordingly, 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 Accordingly, it is: ORDERED that the Joint Motion to Terminate (Paper 17) is granted, and IPR2021-01240 is terminated with respect to Petitioner and Patent Owner; and IPR2021-01240 Patent 10,709,527 B1 4 FURTHER ORDERED that the Joint Request to treat the Settlement Agreement as business confidential information (Paper 18) is granted-in- part and denied-in-part, and the Settlement Agreement (Ex. 2005) shall be kept separate from the file of U.S. Patent No. 10,709,527 B1, and made 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). IPR2021-01240 Patent 10,709,527 B1 5 For PETITIONER: Alison McCarthy Bryan Cannon Nicholas Gallo TROUTMAN PEPPER HAMILTON SANDERS LLP alison.mccarthy@troutman.com bryan.cannon@troutman.com nicholas.gallo@troutman.com For PATENT OWNER: Jason Eisenberg Robert Sterne Kristina Kelly STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C jasone-ptab@sternekessler.com rsterne-ptab@sternekessler.com kckelly-ptab@sternekessler.com