`
`401 9th Street, N.W., Suite 1000
`Washington, D.C. 20004
`
`troutman.com
`
`Bryan J. Cannon
`D 202.274.2950
`F 202.274.2994
`bryan.cannon@troutman.com
`
`
`
`
`
`
`
`
`
`August 20, 2021
`VIA E-MAIL
`(jshaw@shawkeller.com; amy.gore@bartlitbeck.com; bshelton@sheltoncoburn.com)
`
`John W. Shaw, Esq.
`SHAW KELLER LLP
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`
`Amy R. Gore, Esq.
`BARTLIT BECK LLP
`54 West Hubbard Street, Suite 300
`Chicago, IL 60654
`
`Barry K. Shelton, Esq.
`SHELTON COBURN LLP
`311 RR 620 S, Suite 205
`Austin, TX 78734
`
`
`Re:
`
`3Shape A/S et al. v. Align Technology, Inc., Case No. 1:20-cv-01492-LPS (D. Del.);
`Align Technology, Inc. v. 3Shape A/S et al., Case No. 6:20-cv-00979-ADA (W.D. Tex.)
`
`Dear Counsel:
`
`We write regarding a petition for inter partes review (“IPR”) being filed with the United States
`Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”) in IPR2021-01383 to
`challenge claims of U.S. Patent No. 10,728,519 (the “Petition”). The table below lists the
`grounds asserted by 3Shape A/S and 3Shape Inc. (“Petitioner”) in the Petition, along with the
`challenged claims against which the grounds are asserted. We write to inform you that
`Petitioner and its affiliates, including 3Shape Trios A/S (collectively, “3Shape”), hereby stipulate
`that in the event the PTAB institutes an IPR based on the grounds listed in the below table
`against the corresponding claims listed in the below table for those grounds, as identified in the
`Petition (“Instituted Grounds”), 3Shape will not assert the Instituted Grounds in the above-
`captioned litigations (the “Lawsuits”).
`
`#118637705
`
`3SHAPE 1028 3Shape v Align IPR2021-01383
`
`
`
`John W. Shaw, Esq., Amy R. Gore, Esq., Barry K. Shelton, Esq.
`August 20, 2021
`Page 2
`
`Ground
`I
`
`II
`
`
`
`Basis
`§ 103
`
`§ 103
`
`Reference(s)
`Babayoff and Okamoto
`
`Babayoff, Okamoto, and
`Franetzki
`
`Claims
`1, 3, 4, 6, 13, 15, 16, 17, 23, 24, 26,
`27, 30, 31
`20, 21, 32-34
`
`In so stipulating, 3Shape seeks to avoid multiple proceedings addressing the validity of these
`claims based on the Instituted Grounds. Rather, through this Stipulation, 3Shape expresses its
`intention to have only the PTAB address the Instituted Grounds of invalidity. But, for the sake of
`clarity, and to avoid any doubt, if the PTAB declines to institute the grounds identified herein for
`whatever reason, 3Shape reserves the right to assert such grounds and all other available
`arguments for invalidity in the Lawsuits.
`
`Additionally, even in the event of institution, 3Shape reserves the right to continue to assert any
`grounds for invalidity other than the Instituted Grounds, including without limitation, under 35
`U.S.C. § 112.
`
`Best regards,
`
`
`
`
`
`Bryan J. Cannon (Petitioner Counsel IPR2021-01323)
`James H.S. Levine (3Shape Counsel of Record in D. Del.)
`William D. Belanger (3Shape Counsel of Record in W.D. Tex.)
`
`Cc: Counsel of Record
`
`3SHAPE 1028 3Shape v Align IPR2021-01383
`
`
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