`
`
`Filed on behalf of:
`
`Petitioner
`By: Alison L. McCarthy (Lead Counsel)
`
`Alison.McCarthy@troutman.com
`
`Bryan C. Smith (Back-up Counsel)
`
`Bryan.Smith@troutman.com
`
`Nicholas J. Gallo (Back-up Counsel)
`
`Nicholas.Gallo@troutman.com
`
`Bryan J. Cannon (Back-up Counsel)
`
`Bryan.Cannon@troutman.com
`
`
`
`
`
`
`
`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.
`_________________
`
`Case IPR2021-01383
`Patent 10,728,519
`_________________
`
`
`DECLARATION OF BRYAN J. CANNON
`
`
`
`
`3SHAPE 1027
`3Shape v Align
`IPR2021-01383
`
`
`
`
`
`118637632
`
`
`
`IPR2021-01383 (Patent 10,728,519)
`Declaration of Bryan J. Cannon
`
`
`I, BRYAN J. CANNON, HEREBY DECLARE
`
`1.
`
`I am an attorney duly licensed to practice law in the Commonwealth
`
`of Virginia. I am a patent attorney registered to practice before the U.S. Patent and
`
`Trademark Office. I am an attorney at the law firm of Troutman Pepper Hamilton
`
`Sanders LLP. This declaration is based upon my personal knowledge of the
`
`matters set forth herein.
`
`2.
`
`I submit this declaration with Petitioner’s Petition for Inter Partes
`
`Review of U.S. Patent No. 10,728,519 being filed concurrently herewith. The
`
`purpose of this declaration is to authenticate Exhibits 1015, 1019, 1029, 1030,
`
`1031, 1032, 1033, 1034, 1035, 1036, 1037, 1039, and 1040.
`
`3.
`
`Exhibit 1015 is a true and correct copy of the Joint Claim
`
`Construction Statement filed August 2, 2021 in Case No. 6:20-cv-00979-ADA
`
`(W.D. Tex.) [Docket No. 139], as retrieved from the Court’s public docket.
`
`4.
`
`Exhibit 1019 is a true and correct copy of Joint Agreed and Disputed
`
`Claim Constructions served by email on May 29, 2018 in U.S. International Trade
`
`Commission Investigation No. 337-TA-1091.
`
`5.
`
`Exhibit 1029 is a true and correct copy of the docket for Case No.
`
`1:20-cv-01492-LPS (D. Del.) as retrieved from PACER on August 18, 2021.
`
`118637632
`
`2
`
`
`
`IPR2021-01383 (Patent 10,728,519)
`Declaration of Bryan J. Cannon
`
`
`6.
`
`Exhibit 1030 is a true and correct copy of the Stipulated Stay of
`
`Proceedings filed on December 8, 2020 in Case No. 1:20-cv-01492-LPS (D. Del.)
`
`[Docket No. 21], as retrieved from the Court’s public docket.
`
`7.
`
`Exhibit 1031 is a true and correct copy of the docket for Case No.
`
`6:20-cv-00979-ADA (W.D. Tex.) as retrieved from PACER on August 18, 2021.
`
`8.
`
`Exhibit 1032 is a true and correct copy of analytics available through
`
`Lex Machina regarding the pending case load for patent cases before Judge Alan
`
`D. Albright in the Western District of Texas. The analytics shown in Exhibit 1032
`
`were retrieved by querying Lex Machina for patent cases before Judge Albright
`
`between January 1, 2017 and June 11, 2021 (i.e., approximately the last four
`
`years).
`
`9.
`
`Exhibit 1033 is a true and correct copy of the Joint Status Report filed
`
`September 14, 2018 in Case No. 1:17-cv-01646-LPS (D. Del.) [Docket No. 66], as
`
`retrieved from the Court’s public docket.
`
`10. Exhibit 1034 is a true and correct copy of the Stipulation of Partial
`
`Dismissal filed on April 27, 2020 in Case No. 1:18-cv-01949-LPS (D. Del.)
`
`[Docket No. 67], as retrieved from the Court’s public docket.
`
`11. Exhibit 1035 is a true and correct copy of the Letter to Honorable
`
`Leonard P. Stark filed November 24, 2020 in Case No. 1:18-cv-01949-LPS (D.
`
`Del.) [Docket No. 186], as retrieved from the Court’s public docket.
`
`118637632
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`3
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`
`
`IPR2021-01383 (Patent 10,728,519)
`Declaration of Bryan J. Cannon
`
`
`12. Exhibit 1036 is a true and correct copy of the Joint Stipulation filed
`
`on April 2, 2021 in Case No. 6:20-cv-00979-ADA (W.D. Tex.) [Docket No. 102],
`
`as retrieved from the Court’s public docket.
`
`13. Exhibit 1037 is a true and correct copy of Plaintiff and Counterclaim
`
`Defendant Align Technology, Inc.’s Amended List of Asserted Claims served by
`
`email on June 1, 2021 in Case No. 6:20-cv-00979-ADA (W.D. Tex.).
`
`14. Exhibit 1039 is a true and correct copy of the Preliminary
`
`Constructions emailed August 19, 2021 to Counsel of Record in Case No. 6:20-cv-
`
`00979-ADA (W.D. Tex.).
`
`15. Exhibit 1040 is a true and correct copy of the Initial Determination on
`
`Violation of Section 337 and Recommended Determination on Remedy and Bond
`
`dated March 1, 2019 in U.S. International Trade Commission Investigation No.
`
`337-TA-1091 (PUBLIC VERSION filed July 15, 2019), as retrieved from the
`
`ITC’s public docket.
`
`16.
`
`I hereby declare under penalty of perjury that the foregoing is true and
`
`correct, that all statements made herein of my own knowledge are true, and that all
`
`statements made on information and belief are believed to be true; and further that
`
`these statements were made with the knowledge that willful false statements and
`
`the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C.
`
`§ 1001 and may jeopardize the validity of the application or any patent issuing
`
`118637632
`
`4
`
`
`
`IPR2021-01383 (Patent 10,728,519)
`Declaration of Bryan J. Cannon
`
`thereon. If called to testify as to the truth of the matters stated herein, I could and
`
`would testify competently.
`
`Dated: August 20, 2021
`
`
`
`
`
`
`/Bryan J. Cannon/
`Bryan J. Cannon, Reg. No. 72,877
`
`
`
`118637632
`
`5
`
`
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