`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ALIGN TECHNOLOGY, INC.,
`
`Plaintiff and Counterclaim
`Defendant,
`
`
`
`v.
`
`3SHAPE A/S and 3SHAPE TRIOS A/S
`
`Defendants and
`Counterclaim Plaintiffs.
`
`C.A. No. 6:20-cv-00979-ADA
`
`JURY TRIAL DEMANDED
`
`PLAINTIFF AND COUNTERCLAIM DEFENDANT ALIGN TECHNOLOGY, INC.’S
`STIPULATION REGARDING IPR2022-00144 and IPR2022-00145
`
`On November 9, 2021, Plaintiff and Counterclaim Defendant Align Technology, Inc.
`
`(“Align”) filed two petitions with the Patent Trial and Appeal Board requesting inter partes review of
`
`U.S. Patent No. RE48,221 (“the ’221 patent”)—petition numbers IPR2022-00144 and IPR2022-
`
`00145. The petitions referred to the following prior art references:
`
` U.S. Patent Publ. No. 2006/0020204 (“Serra”)
`
` U.S. Patent Publ. No. 2007/0171220 (“Kriveshko”)
`
` U.S. Patent Publ. No. 2005/0212756 (“Marvit”)
`
` U.S. Patent Publ. No. 2005/0237581 (“Knighton”)
`
` U.S. Patent Publ. No. 2009/0298017 (“Boerjes”)
`
` U.S. Patent Publ. No. 2009/0087050 (“Gandyra”)
`
` U.S. Patent Publ. No. 2005/0020910 (“Quadling”)
`
`The petitions asserted the following grounds of invalidity:
`
`Align EX1048
`Align v. 3Shape
`IPR2022-00145
`
`
`
`Case 6:20-cv-00979-ADA Document 176 Filed 12/16/21 Page 2 of 4
`
`
`
`IPR Petition
`No.
`
`Ground Claims
`
`Grounds of Unpatentability
`
`IPR2022-00144 1
`
`[1, 19]1, 20–34, 37–44 Obvious under 35 U.S.C. §103 in view of
`Serra
`
`2
`
`3
`
`[1, 19], 20–44
`
`[1, 19], 20–44
`
`IPR2022-00145 1
`
`[1, 19] 20–44
`
`[1, 19] 20–44
`
`2
`
`3
`
`
`
`Obvious under 35 U.S.C. §103 in view of
`Serra, Kriveshko, and Marvit
`
`Obvious under 35 U.S.C. §103 in view of
`Knighton and Marvit
`
`Obvious under 35 U.S.C. §103 in view of
`Boerjes and Marvit
`
`Obvious under 35 U.S.C. §103 in view of
`Boerjes, Gandyra, and Marvit
`
`[1, 19] 20–27, 33–44
`
`Obvious under 35 U.S.C. §103 in view of
`Quadling and Marvit
`
`Align hereby stipulates that if the Patent Trial and Appeal Board institutes inter partes review
`
`in IPR2022-00144 and/or IPR2022-00145, then Align will not pursue in this case the specific
`
`grounds identified above in connection with the referenced claim(s) of the ’221 patent as originally
`
`issued in the instituted inter partes review petition or on any other ground for the ’221 patent that
`
`could reasonably have been raised in the instituted inter partes review for that patent using the same
`
`or substantially similar references; however, this stipulation does not extend to any of the above-
`
`identified grounds that are not instituted by the PTAB.
`
`This stipulation is not intended and should not be construed to limit Align’s ability to assert
`
`invalidity of the asserted claims of the ’221 patent in this case on any other ground regardless of
`
`whether inter partes review is instituted.
`
`
`1 RE’221 patent claims 20–28, 30, 31, and 40–42 depend from claim 1, which was canceled in
`IPR2018-00197. Claims 29, 32, and 43 depend from claim 19, which was canceled in IPR2018-
`00197. Claims 1 and 19 are not directly challenged since they are canceled, but features of claims 1
`and 19 are addressed in substance as the challenged claims incorporate their features.
`
`
`
`2
`
`
`
`Case 6:20-cv-00979-ADA Document 176 Filed 12/16/21 Page 3 of 4
`
`
`
`Dated: December 16, 2021
`
`
`
`
`
`
`
`
`By: /s/ Faye Paul Teller
`
`Barry K. Shelton (TX Bar No. 24055029)
`SHELTON COBURN LLP
`311 RR 620 S, Suite 205
`Austin, TX 78734
`Tel: (512) 263-2165
`Fax: (512) 263-2166
`bshelton@sheltoncoburn.com
`
`Mark L. Levine (IL Bar No. 6201501)
`Faye Paul Teller (IL Bar No. 6306719)
`Amy R. Gore (IL Bar No. 6329788)
`Benjamin R. Montague (IL Bar No. 6327341)
`BARTLIT BECK LLP
`54 West Hubbard Street
`Chicago, Illinois 60654
`Tel: (312) 494-4400
`Fax: (312) 494-4440
`mark.levine@bartlitbeck.com
`faye.paul@bartlitbeck.com
`amy.gore@bartlitbeck.com
`benjamin.montague@bartlitbeck.com
`
`Joseph C. Smith, Jr. (CO Bar. No. 20994)
`John M. Hughes (CO Bar No. 38295)
`Jason C. Murray (CO Bar No. 43652)
`Meg E. Fasulo (CO Bar No. 51583)
`Sundeep K. Addy (CO Bar No. 38745)
`BARTLIT BECK LLP
`1801 Wewatta Street, Suite 1200
`Denver, Colorado 80202
`Tel: (303) 592-3100
`Fax: (303) 592-3140
`joseph.smith@bartlitbeck.com
`john.hughes@bartlitbeck.com
`jason.murray@bartlitbeck.com
`meg.fasulo@bartlitbeck.com
`rob.addy@bartlitbeck.com
`
` Attorneys for Plaintiff and Counterclaim Defendant
`ALIGN TECHNOLOGY, INC.
`
`
`
`
`
`3
`
`
`
`Case 6:20-cv-00979-ADA Document 176 Filed 12/16/21 Page 4 of 4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above and foregoing
`
`document has been served on all counsel of record via the Court’s ECF system.
`
`
`
`
`
`
`
`
`
`
`
`/s/ Faye Paul Teller
`Faye Paul Teller
`
`4
`
`
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