60/580,108
`
`Method and apparatus for colour imaging a three-
`dimensional structure
`Patent Assignment Abstract of Title
`
`26211PRO
`
`10-08-
`2018::14:48:42
`
`Patent #: NONE
`Publication #: NONE
`
`Filing Dt: 06/17/2004
`Intl Reg #:
`
`Total Assignments: 1
`Application #: 60580108
`PCT #: NONE
`Inventor: Noam Babayoff
`Title: Method and apparatus for colour imaging a three-dimensional structure
`Assignment: 1
`Recorded: 11/02/2004
`Received: 11/02/2004
`Reel/Frame: 015327 / 0844
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: BABAYOFF, NOAM
`Assignee: CADENT LTD.
`14 HAMELACHA STREET
`OR YEHUDA 60372, ISRAEL
`Correspondent: NATH & ASSOCIATES PLLC
`GARY M. NATH
`1030 15TH STREET, N.W. 6TH FLOOR
`WASHINGTON, D.C. 20005
`
`Issue Dt:
`Pub Dt:
`
`Mailed: 11/04/2004
`
`Pages: 3
`
`Exec Dt: 10/28/2004
`
`Disclaimer:
`Assignment information on the assignment database reflects assignment documents that have been actually recorded.
`If the assignment for a patent was not recorded, the name of the assignee on the patent application publication or patent may be
`different.
`If you have any comments or questions concerning the data displayed, contact OPR / Assignments at 571-272-3350
`
`Search Results as of: 10/08/2018 14:40:09 PM
`
`Close Window
`
`3SHAPE EXHIBIT 1033
`3Shape v. Align
`IPR2019-00154
`
`-1-
`
`

`

` 60/580,109
`
`Method for providing data associated with the intraoral
`cavity
`
`26213PRO
`
`10-08-
`2018::14:51:11
`
`Patent Assignment Abstract of Title
`
`Patent #: NONE
`Publication #: NONE
`
`Filing Dt: 06/17/2004
`Intl Reg #:
`
`Total Assignments: 1
`Application #: 60580109
`PCT #: NONE
`Inventor: Noam Babayoff
`Title: Method for providing data associated with the intraoral cavity
`Assignment: 1
`Recorded: 01/11/2005
`Received: 01/11/2005
`Reel/Frame: 015580 / 0061
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: BABAYOFF, NOAM
`Assignee: CADENT LTD.
`14 HAMELACH STREET
`OR YEHUDA 60372, ISRAEL
`Correspondent: NATH & ASSOCIATES PLLC
`GARY M. NATH
`1030 15TH STREET, N.W. 6TH FLOOR
`WASHINGTON, D.C. 20005
`
`Issue Dt:
`Pub Dt:
`
`Mailed: 01/18/2005
`
`Pages: 3
`
`Exec Dt: 01/05/2005
`
`Disclaimer:
`Assignment information on the assignment database reflects assignment documents that have been actually recorded.
`If the assignment for a patent was not recorded, the name of the assignee on the patent application publication or patent may be
`different.
`If you have any comments or questions concerning the data displayed, contact OPR / Assignments at 571-272-3350
`
`Search Results as of: 10/08/2018 14:51:04 PM
`
`Close Window
`
`-2-
`
`

`

`United States Patent and Trademark Office
`
`Patent assignment 016702/0852
`ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Date recorded
`Reel/frame
`Jun 17, 2005
`016702/0852
`
`Pages
`3
`
`Assignors
`BABAYOFF, NOAM
`
`Assignee
`CADENT LTD.
`14 HAMELACHA STREET
`OR YEHUDA 60372
`ISRAEL
`
`Properties (1 total)
`Patent
`
`Execution date
`May 19, 2005
`
`Correspondent
`GARY M. NATH
`NATH & ASSOCIATES PLLC
`1030 15TH STREET, N.W., 6TH FLOOR
`WASHINGTON, D.C. 20005-1503
`
`Publication
`
`Application
`
`PCT
`
`International registration
`
`1. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`7319529
`Jan 15, 2008
`
`20060001739
`Jan 5, 2006
`
`11154520
`Jun 17, 2005
`
`AppFT
`
`PatFT
`
`-3-
`
`

`

`06-23-2005
`munmnmnn
`1 03925$Z§1
`
`
`
`
`
`Please record the attached original
`
`
`
`
`BIG FORM PTO-1595 [1(311’92]
`
`
`
`
`To the Honorable Commissioner of Patents and Trademarks.
`_
`documents or copy thereof.
`t
`
`
`2. Name and Address of Receiving Partyfies):
`1. Name of Conveying Party:
`Name:
`
`
` 1) Noam BABAYOFF
`
`Cadent Ltd .
`G Additional names of conveying parties
`
`attached.
`
`
`3. Nature of Conveyance
`
`x Assignment
`“erg“
`14 Hamelacha Street
`
`
`
`Security Agreement
`Change of Name
`
`Other:
`
`
`
`City. State, Zip:
`
`
`
`Execution Date:
`
`
`Or Yehuda 60372 ISRAEL
`1) May 19, 2005
`
`
`
`G Additional namets} and address(es) attached.
`
`
`4.
`(A) Patent Application Numberfs);
`4.
`(B) Patent Numberfe]:
`
`
`
`
`If this document is being filed together with
`
`
`the execution date of the
`a new application,
`
`application is:
`
`Additional Numbers Attached.
`11 May 19, 2005
`
`5. Name and Address of Party to whom
`6. Total Number of Applications and Patents
`
`
`
`involved:
`Correspondence Concerning this Document Should
`
`be MEiled:
`
` 1
`
`
`
`
`Street Address:
`
`
`
`Name:
`Gary M. Nath
`7. Total Free:
`
`‘31 EFF. 3.41:
`$
`4 0 u 00
`
`Address: NATE S ASSOCIATES PLLC
`X Enclosed.
`6th Floor
`1030 15‘“ Street, N.w.,
`Washington, D.C.
`20005-1503
`X Authorized to be charged to deposit account any
`deficiency or credit any excess.
`8. Deposit Account Number:
`14-0112
`ATTMZII DUFLICRTE COFY 0? THIS PAGE I? FAYING BY DEPOSIT ACCOUNT.
`
`
`
`
`DO NOT USE THIS SPICE
`
`.
`
`9. Statement and Signature:
`the foregoing is true and correct and
`To the best of my knowledge and belief,
`o
`the original document.
`
`Name of Person Signing:
`
`Date filed:
`
`June 17, 2005
`
`
`
`Attorney Docket: 26839U
`
`GMINJ'GBK: lo
`
`Customer Number 20529
`
`WM 1m 00000187 11150520
`
`01 FCsMEl
`
`40.00 I]?
`
`
`
`
`-4-
`
`REEL: 016702 FRAME: 0852
`
`PATENT
`
`-4-
`
`

`

`'
`
`0
`
`Amnqsnowm;wct u
`
`AS SI GNMEN’I‘
`
`'
`
`Full Name of Inventor: Noam BABAYOFF
`Citizenship:
`Israeli
`Post Office Address:
`(new) 25 Neviot Street
`Rishon to Zion 75670
`ISRAEL
`
`In conSideration of the sum of one dollar (U53 1.00) and other good and valuable considerations paid to each
`of the undersigned, the undersigned agreeCs) to assign, and hereby do (does) assign, transfer and set over to
`
`Norrie ofAssz'gnee
`
`Address ofAssignees
`
`Cadent Ltd.
`Israeli Company, of
`
`14 Hamelacha Street
`0r Yehuda 60372
`ISRAEL
`
`its territories,
`title and interest for the United States,
`(hereinafter designated as the Assignee) the entire right,
`dependencies and possessions and elsewhere throughout the world including but not limited to Canada, in the invention,
`and all applications for patent and any Letters Patent which may be granted therefore, known as
`
`Title
`
`I) A
`
`APPARATU F0 C
`
`IMAGING A THRE D
`
`ID AL 5
`
`C
`
`for which the undersigned has (have) executed an application for patent in the United States of America,
`specification of which:
`
`the
`
`E is attached hereto.
`[:I was filed on
`
`as Application Serial No.
`
`I) The undersigned agrce(s) to execute all papers necessary in connection with the application and any
`continuing or divisional or reissue applications thereof and also to execute separate assignments in connection with such
`applications as the Assignee may deem necessary or expedient or essential to its full protection and title in and to the
`invention hereby transferred.
`
`2) The undersigned agree-(s) to execute all papers necessary in connection with any interference which may be
`declared concerning this application or continuation or division or re-issue thereof and to cooperate with the Assigoee in
`every way possible in obtaining evidence and going forward with such interference.
`
`3) The undersigned agree(s) to perform all affirmative acts which may be necessary to obtain a grant of a valid
`United States patent to the Assignee.
`
`4) The undersigned agree(s) to communicate to the Assiguee or representatives thereof any facts known to me
`(us) respecting the invention and improvements thereof. and will, upon request, but without expense to me (us), testify
`in any legal proceedings regarding the invention
`.
`
`5) The undersigned hereby authorize(s) and request(s) the Commissioner of Patents to issue any and all Letters
`Patents of the United States resulting from said application or any division or divisions , or continuing applications
`thereof to the said Assignee, as Assignee of the entire interest, and hereby covenants that he has (they have) fit" right to
`convey the entire interest herein assigned, and that he has (they have) not executed and will not execute, any agreement
`in conflict herewith.
`
`6) The undersigned hereby grant(s) the firm of Nath & Associates, PLLC the power to insert on this
`assignment any further identification which may be necessary or desirable in order to comply with the rules of the
`United States Patent Office for recordation of this document.
`
`7) This Assignment shall be binding upon my (our) heirs. executors, administrators, andfor assigns, and shall
`inure to the benefit of the heirs, executors, administrators, successors and/or assigns of the Assignee.
`
`In witness whereof, executed by the undersigned on the date(s) opposite the undersigned. narne(s).
`
`-5-
`
`REEL: 016702 FRAME: 0853
`
`PATENT
`
`-5-
`
`

`

`Full Name of Inventor: Noam BABAYOFF
`
`Inventor's Signature:
`
`1‘)
`
`Date:
`
`li‘V‘flY "-05
`
`Date M? 2:), 2m Witness
`Date 959:?
`:25 Fgfig’b
`Witness
`
`Fr-
`
`/v’fl/’ [coawm/
`Equal:
`0112» m by E
`
`
`
`."_"—'-_"‘._-..,
`
`RIECORDED: 06/17/2005
`
`-6-
`
`REEL: 016702 FRAME: 0854
`
`PATENT
`
`.
`
`-6-
`
`

`

`United States Patent and Trademark Office
`
`Patent assignment 034545/0225
`ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Date recorded
`Reel/frame
`Dec 18, 2014
`034545/0225
`
`Pages
`4
`
`Assignors
`CADENT LTD.
`
`Assignee
`ALIGN TECHNOLOGY, INC.
`2560 ORCHARD PARKWAY
`SAN JOSE, CALIFORNIA 95131
`
`Properties (8 total)
`Patent
`
`Execution date
`Oct 24, 2014
`
`Correspondent
`ASHLEY FIFE
`WILSON SONSINI GOODRICH & ROSATI
`650 PAGE MILL ROAD
`PALO ALTO, CA 94304-1050
`
`Publication
`
`Application
`
`PCT
`
`International registration
`
`1. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`7319529
`Jan 15, 2008
`
`20060001739
`Jan 5, 2006
`
`11154520
`Jun 17, 2005
`
`2. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`7511829
`Mar 31, 2009
`
`20080024768
`Jan 31, 2008
`
`11889112
`Aug 9, 2007
`
`3. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`7724378
`May 25, 2010
`
`20090153858
`Jun 18, 2009
`
`12379343
`Feb 19, 2009
`
`4. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`8102538
`Jan 24, 2012
`
`20100208275
`Aug 19, 2010
`
`12770379
`Apr 29, 2010
`
`5. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`8363228
`Jan 29, 2013
`
`20120092678
`Apr 19, 2012
`
`13333351
`Dec 21, 2011
`
`6. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`8451456
`May 28, 2013
`
`20130070985
`Mar 21, 2013
`
`13620159
`Sep 14, 2012
`
`7. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`8675207
`Mar 18, 2014
`
`20130243284
`Sep 19, 2013
`
`13868926
`Apr 23, 2013
`
`8. METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`Inventors: NOAM BABAYOFF
`
`8885175
`Nov 11, 2014
`
`20140119622
`May 1, 2014
`
`14150505
`Jan 8, 2014
`
`AppFT
`
`PatFT
`
`AppFT
`
`PatFT
`
`AppFT
`
`PatFT
`
`AppFT
`
`PatFT
`
`AppFT
`
`PatFT
`
`AppFT
`
`PatFT
`
`AppFT
`
`PatFT
`
`AppFT
`
`PatFT
`
`-7-
`
`

`

`5031 06924
`
`12l18l2014
`
`PATENT ASSIGNMENT COVER SHEET
`
`Electronic Version v1.1
`
`Stylesheet Version v1.2
`
`EPAS ID: PAT3153531
`
`SUBMISSION TYPE:
`
`NEW ASSIGNMENT
`
`
`
`NATURE OF CONVEYANCE: ASSIGNMENT
`
`CONVEYING PARTY DATA
`
`CADENT LTD.
`
`10l24l2014
`
`RECEIVING PARTY DATA
`
`2560 ORCHARD PARKWAY
`Street Address:
`
`
`City:
`
`SAN JOSE
`
`StatelCountry:
`
`CALIFORNIA
`
`95131
`Postal Code:
`
`
`PROPERTY NUMBERS Total: 8
`
`Property Type
`
`Application Number:
`
`11 154520
`
`
`Application Number:
`11889112
`
`Application Number:
`
`Application Number:
`
`Application Number:
`
`12379343
`
`12770379
`
`13333351
`
`
`Application Number:
`13620159
`
`
`Application Number:
`13858925
`
`
`
`14150505
`Application Number:
`
`
`CORRESPONDENCE DATA
`
`Fax Number:
`
`Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent
`using a fax number, if provided; if that is unsuccessful, it will be sent via US Mail.
`
`Email:
`
`afife@wsgr.com
`
`Correspondent Name:
`Address Line 1:
`
`ASHLEY FIFE
`WILSON SONSINI GOODRICH & ROSATI
`
`Address Line 2:
`
`Address Line 4:
`
`650 PAGE MILL ROAD
`
`PALO ALTO, CALIFORNIA 94304-1050
`
`NAME OF SUBMITTER:
`
`ASHLEY FIFE
`
`503106924
`
`'8'
`
`REEL: 034545 FRAME: 0225
`
`-8-
`
`

`

`Total Attachments: 2
`
`source=7024#pageZ.tif
`
`source=7024#page1 .tif
`
`'9'
`
`PATENT
`REEL: 034545 FRAME: 0226
`
`-9-
`
`

`

`
`CORPORATE TO CORPORATE ASSIGNMENT
`gigflfigmm ”0(3)“
`7024.US.C1
`7024.US.C1.CI
`7024.US.CI.C1.C1
`7024.US.C1.C1.C1 .Cl
`7024.US.C1.C1.CI.CI.CI
`7024.US.C1.Cl.C1.C1.C1.Cl
`7024113131171.Cl.Cl.Cl.Ci.Cl
`
`WHEREAS, CADENT LTD'. [hereinafter “Assignor“), owns the entire right, title and interest in and to the inventions disclosed in the
`Application(s), and in and to all embodiments of the inventions, heretofore conceived, made or discovered (collectively hereinafter referred to as
`“Inventions"} entitled:
`METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`
`E for which application serial no(s).:
`
`l “154,520 was filed on June 17, 2005 in the United States Patent and Trademark Office;
`ll!339,1 12 was filed on August 9, 2007 in the United States Patent and 'l'rademark Office;
`12,079,343 was filed on February 19, 2009 in the United States Patent and Trademark Office;
`121770379 was filed on April 29, 2010 in the United States Patent and Trademark Office;
`113833.351 was filed on December 21, 201] in the United States Patent and Trademark Office;
`131620, [59 was filed on September 14, 2012 in the United States Patent and Trademark Office;
`13/868,926 was filed on April 23, 2013 in the United States Patent and Trademark Office;
`141050505 was filed on January 8, 2014 in the United States Patent and Trademark Office;
`
`(hereinafter “Application(s)"). The term “Application(s)" also includes all patent applications that share or claim priority to or from the above
`application(s).
`
`
`WHEREAS, ALIGN TECHNOLOGY WC“ a corporation of the State of Delaware, having a place of business at 2560 Qrchard
`Parkway, San loge, CA 2Q 131 , {hereinafter “Assignee”), is desirous ofaequiring the entire right, title and interest in and to said Application(s),
`and the inventions disclosed therein, and in and to all embodiments of the inventions, heretofore conceived, made or discovered, whether joinlly
`or severally, by said lnventor(s) (hereinafter collectively referred to as “1nventions”), and in and to any and all patents, investor's certificates and
`other forms of protection thereon granted in the United States, foreign countries, or under any international convention, agreement, protocol, or
`treaty, including those filed under the Paris Convention for the Protection of Industrial Property, The Patent Cooperation Treaty or otherwise
`(hereinafier “Patent[s)").
`
`NOW, THEREFORE, in consideration of good and valuable consideration acknowledged by said Assignor to have been received in
`full from said Assignec:
`
`Said Assignor does hereby sell, assign, transfer and convey onto said Assignee the entire right, title and interest (a) in and to
`I.
`said Inventions; (b) in and to said Applications, including the right to claim priority to and from said Application(s); (c) in and to each and every
`application that is a divisional, substitution, continuation, or continuation-impart of any of said Application(s); (d) in and to said Patends) and
`each and every patent issuing or reissuing from any of the foregoing; (e) in and to each and every reissue, reexamination, renewal or extension
`of any kind of any of the foregoing; (f) in and to each and every patent and application filed outside the United States and con'esponding to any
`of the foregoing; and (g) in and to all claims for past, present and future infringement of [he Patcnl(s), including all rights to sue for and to
`receive and recover for Assignee’s own use all past, present, and future lost profits, royalties, and damages of whatever nature recoverable from
`an infringement of the Patent(s).
`
`Said Assignor hereby covenants and agrees to cooperate with said Assignee to enable said Assignee to enjoy to the fullest
`2.
`extent the right, title and interest herein conveyed in the United States, foreign countries, or under any inlcmational convention, agreement,
`protocol, or treaty. Such cooperation by the Assignor shall include prompt production of pertinent facts and documents, giving of testimony,
`execution of petitions, oaths, specifications, declarations or other papers, and other assistance all to the extent deemed necessary or desirable by
`the parties (a) for perfecting in said Assignee the right, title and interest herein conveyed; (b) for prosecuting any of said applications covering
`said Inventions; (c) for filing and prosecuting substitute, divisional, continuing or additional applications covering said inventions; (d) for filing
`and prosecuting applications for reissuance of any said Patenl{s); (e) for interference or other priority proceedings involving said Inventions: and
`(t) for legal proceedings involving said inventions and any applications therefor and any Patent(s) granted thereon, including without limitation
`reissues and recxaminations, opposition proceedings, cancellation proceedings, priority contests, public use proceedings, infringement actions
`and court actions.
`
`The terms and covenants of this assignment shall inure to the benefit of said Assignee, its successors, assigns and other legal
`3.
`representatives, and shall be binding upon the Assignor, its successors, assigns and other legal reprcscnlatives.
`
`Said Assignor hereby warrants, represents and covenants that said Assignor has not entered and will not enter into any
`4.
`assignment, contract, or understanding in conflict herewith.
`
`Said Assignor hereby request that any Patent(s) issuing in the United States, foreign cormtries, or under any international
`5.
`convention, agreement. protocol, or treaty, be issued in the name of the Assignee, or its successors and assigns, for the sole use of said Assigllcc,
`its Successors, legal representatives and assigns.
`
`This instrument will be interpreted and construed in accordance with the laws of the State of California, without regard to
`6.
`conflict of law principles. if any provision of this instrument is found to be illegal or unenforceable, the other provisions shall remain effective
`and enforceable to thc greatest extent permitted by law. This instrument may be executed in counterparts, each of which is deemed an original,
`but all of which together constitute one and the same agreement.
`
`
`-10-
`
`PATENT
`REEL: 034545 FRAME: 0227
`
`-10-
`
`

`

`CORPORATE TO CORPORATE ASSIGNMENT
`
`Align Reference No(s).:
`7024.US.P
`7024.US.CI
`7024.US.CI.C1
`7024.US.CI.C1.C1
`70241181?! .Cl .Cl .Cl
`7024.US.C1.C1.CI.C1.C1
`7024.US.C] .C1 .C1 .C].Cl .Cl
`7024.US.CI.CI .Cl .CI.CI .Cl .Cl
`
`
`
`1N Wl'l'NliSS WH EREOF, said Assignor has executed and _deliv i (1 this instmme - bauziaid Assigncc as of the date written below.
`
`Date: “:2 ”f 9’13”!
`
`
`
`RECEIVED AND AGREED TO BY ASSIGNEE:
`:7
`'
`mg” / f/
`f
`,
`.
`
`a-1/
`-/Name: David M Mason
`
`
`RECORDED: 1211 8/2014
`
`-11-
`
`PATENT
`
`REEL: 034545 FRAME: 0228
`
`-11-
`
`