`Tel: 571-272-7822
`
`
`Paper No. 11
`
`Entered: February 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ALIGN TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`_______________
`
`IPR2022-00144 and IPR2022-001451
`Patent RE48,221 E
`_______________
`
`Before SALLY C. MEDLEY, JAMES J. MAYBERRY, and
`JASON M. REPKO, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial and
`Granting-In-Part and Denying-In-Part Joint Request to Treat Settlement
`Agreement as Business Confidential Information
`37 C.F.R. § 42.74
`
`
`
`1 This Order addresses issues that are the same in each of the identified
`proceedings. We exercise our discretion to issue one Order to be filed in
`each proceeding. The parties are not authorized to use this style heading in
`subsequent papers.
`
`
`
`
`IPR2022-00144 and IPR2022-00145
`Patent RE48,221 E
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner filed a Motion to Dismiss
`Petition in each of the above-captioned proceedings. Paper 9 (“Motion”).2
`Petitioner represents that Patent Owner does not oppose the Motion. Motion
`1. Along with the Motion, Petitioner filed a copy of a Settlement Agreement
`between Petitioner and Patent Owner. Ex. 1049. The parties also filed a
`Joint Request that the Settlement Agreement be treated as business
`confidential information and kept separate from the file of U.S. Patent No.
`RE48,221 E (“the ’221 patent”). Paper 10 (“Joint Request”).
`II. DISCUSSION
`In the Motion, Petitioner represents that the Settlement Agreement
`resolves the parties’ disputes involving the ’221 patent and requests that the
`proceeding be terminated. Motion 1. Petitioner also represents that the
`Settlement Agreement is a true copy of the agreement or understanding
`made in connection with, or in contemplation of, the termination of the
`above-captioned proceedings. Id.
`The proceedings are at an early stage, and we have not yet decided
`whether to institute a trial in the proceedings. In view of the early stage of
`the proceedings and the settlement between the parties, we determine that
`good cause exists to dismiss the petitions for inter partes review and
`terminate the proceedings.
`In the Joint Request, the parties request that the Settlement Agreement
`be treated as business confidential information and kept separate from the
`
`
`2 The relevant papers and exhibits filed in the above-captioned proceedings
`are substantively the same. We cite to the record in IPR2022-00144, unless
`otherwise indicated.
`
`2
`
`
`
`IPR2022-00144 and IPR2022-00145
`Patent RE48,221 E
`
`file of the ’221 patent. Joint Request 1. After reviewing the Settlement
`Agreement, we find that it contains confidential business information
`regarding the terms of settlement. Thus, good cause exists to treat the
`Settlement Agreement as business confidential information pursuant to
`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. Thus, 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 Motions to Dismiss Petitions are granted;
`FURTHER ORDERED that the Joint Requests to treat the Settlement
`Agreement as business confidential information and be kept separate are
`granted-in-part and denied-in-part; and
`FURTHER ORDERED that the proceedings are terminated.
`
`3
`
`
`
`IPR2022-00144 and IPR2022-00145
`Patent RE48,221 E
`
`
`For PETITIONER:
`
`Jason D. Eisenberg
`Robert Greene Sterne
`Trent W. Merrell
`Brian Burke
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`jasone-ptab@sternekessler.com
`rsterne-ptab@sternekessler.com
`tmerrell-ptab@sternekessler.com
`bburke-ptab@sternekessler.com
`
`For PATENT OWNER:
`
`Andrew R. Cheslock
`Todd R. Walters
`Roger H. Lee
`BUCHANAN INGERSOLL & ROONEY PC
`andrew.cheslock@bipc.com
`todd.walters@bipc.com
`roger.lee@bipc.com
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
