Case 1:17-cv-01646-LPS Document 66 Filed 09/14/18 Page 1 of 2 PageID #: 1371
`
`
`
`
`
`September 14, 2018
`
`John W. Shaw
`I.M. Pei Building
`1105 North Market St., 12th Floor
`Wilmington, DE 19801
`(302) 298-0701
`jshaw@shawkeller.com
`
`
`BY CM/ECF & HAND DELIVERY
`The Honorable Leonard P. Stark
`United States District Court for the District of Delaware
`844 N. King Street
`Wilmington, DE 19801
`
`
`
`Re:
`
`Align Technology, Inc. v. 3SHAPE A/S et al.,
`C.A. Nos. 17-1646-LPS & 17-1647-LPS
`
`
`Dear Judge Stark:
`
`
`In accordance with Your Honor’s Order (C.A. No. 17-1646, D.I. 65; C.A. No. 17-1647-
`LPS, D.I. 64) in the above-referenced cases, the parties submit this joint status report.
`
`Pursuant to the case scheduling orders in each of these matters, the parties are currently
`engaged in fact discovery and continue to work toward the scheduled trial dates.
`
`The parties met and conferred on September 13, 2018 to discuss the status of the case.
`Align has agreed to drop the ‘873 patent from the 1646 case. The parties were unable to reach a
`resolution regarding the dismissal of count 3 of the 1646 Complaint (related to the ’065 patent)
`and count 6 of the 1647 Complaint (related to the ’850 patent).
`
`The Order states that 3Shape’s Motion to Dismiss is granted “to the extent that it seeks
`dismissal of claims asserting infringement of” the ’065 patent and the ’850 patent. Thus, it is
`3Shape’s position that count 3 of the 1646 Complaint and count 6 of the 1647 Complaint have
`been dismissed, and that should Align wish to pursue any claims of these patents other than those
`which were found invalid under 35 U.S.C. § 101, Align must amend its Complaints accordingly.
`
`Align disagrees. At the July 20, 2018 oral argument, the Court specifically asked about
`the representativeness of the claims identified by 3Shape in its § 101 motion, and 3Shape
`responded that “I think it is enough for us if you would just rule on the claim that we briefed. I
`think that gives everyone guidance for the future going forward.” July 20, 2018 Oral Argument
`Tr. at 73:9–21. The Court’s September 7, 2018 opinion on 3Shape’s § 101 motion (D.I. 64 in the
`1646 case), accordingly, states that “the Court finds that claim 1 of the ’065 patent is directed to
`patent-ineligible subject matter under Section 101” (id. at 27), and “claim 1 of the ’850 patent is
`directed to patent ineligible subject matter under Section 101” (id. at 32).
`
`Therefore, Align understands that claim 1 from each of those patents is invalid under the
`Court’s opinion but that the other claims in those patents remain valid. Align’s assertions of
`infringement in its complaints in the 1646 and 1647 actions (D.I. 1 in both cases) were not
`limited to a single claim of each patents; instead, the complaints repeatedly alleged that 3Shape
`
`
`
`
`
`3SHAPE 1033 3Shape v Align IPR2021-01383
`
`

`

`Case 1:17-cv-01646-LPS Document 66 Filed 09/14/18 Page 2 of 2 PageID #: 1372
`
`
`
`infringed “the ‘065 patent” or “the ‘850 patent” generally, including “one or more claims” of
`those patents. Moreover, Align identified certain of those other claims in its infringement
`contentions served on August 29, 2018, in the 1646 case and September 7, 2018, in the 1647
`case. 3Shape is on notice of Align’s claims, and requiring Align to amend would not “secure the
`just, speedy, and inexpensive determination” of the issues in this case. Fed. R. Civ. P. 1.
`
`The parties request the Court’s guidance on this issue.
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ John W. Shaw
`
`John W. Shaw (No. 3362)
`
`
`cc:
`
`
`Clerk of the Court (by hand delivery)
`All counsel of record (by e-mail)
`
`
`
`2
`
`3SHAPE 1033 3Shape v Align IPR2021-01383
`
`