`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`ALIGN TECHNOLOGY, INC.,
`Petitioner
`
`v.
`
`
`
`
`3SHAPE A/S,
`Patent Owner
`________________________
`
`Case IPR2022-00145
`Patent RE48,221
`________________________
`
`
`
`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Description
`U.S. Patent No. RE48,221 to Öjelund et al. (“RE’221”)
`File History of U.S. Patent No. RE48,221 (“Prosecution
`History”)
`Declaration of Dr. Chandrajit Bajaj (“Bajaj Decl.”) in
`support of Petition for Inter Partes Review of U.S. Patent
`No. RE48,221
`Curriculum Vitae of Dr. Chandrajit Bajaj
`U.S. Patent Publication No. 2009/0298017 to Boerjes et al.
`U.S. Patent Publication No. 2005/0212756 to Marvit et al.
`U.S. Patent Publication No. 2009/0087050 to Gandyra
`U.S. Patent Publication No. 2005/0020910 to Quadling et
`al.
`Öjelund Provisional, U.S. Provisional Application No.
`61/420,138 (filed December 6, 2010)
`Giammanco et al., “Using 3D Laser Scanning Technology
`to Create Digital Models of Hailstones,” American
`Meteorological Society, July 2017.
`Ireland et al., “3D surface imaging in dentistry – what we
`are looking at,” British Dental Journal, Vol. 205, No. 7,
`October 11, 2008.
`U.S. Patent No. 6,485,413 to Boppart et al.
`Orhan H. Karatas and Ebubekir Toy, “Three-dimensional
`imaging techniques: A literature review,” European Journal
`of Dentistry, Vol. 8, No. 1, March 2014.
`B. H. Broadbent, “A New X-Ray Technique and Its
`Application to Orthodontia,” The Angle Orthodontist, Vol.
`I, No. 2, February 4, 1931.
`Nathan S. Birnbaum and Heidi B. Aaronson, “Dental
`impressions using 3D digital scanners: virtual becomes
`reality,” Compend. Contin. Educ. Dent., Vol. 29, No. 8,
`October 2008; pp. 494, 496, 498-505
`U.S. Patent No. 5,131,844 to Marinaccio et al.
`U.S. Patent No. 6,592,371 to Durbin et al.
`
`
`
`Exhibit No.
`1001
`1002
`
`1003
`
`1004
`1005
`1006
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`
`
`
`
`- i -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`
`Exhibit No.
`
`1018
`
`1019
`1020
`1021
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`
`1031
`1032
`1033
`
`1034
`
`1035
`
`Description
`Hajeer et al., “Current Products and Practices Applications
`of 3D imaging in orthodontics: Part II,” Journal of
`Orthodontics, Vol. 31, No. 2, June 2004; pp. 154-162
`U.S. Patent No. 5,722,412 to Pflugrath et al.
`U.S. Patent No. 6,645,148 to Nguygen-Dinh et al.
`U.S. Patent No. 5,181,181 to Glynn
`U.S. Patent Publication No. 2006/0092133 to Touma et al.
`Bornik et al., “A Hybrid User Interface for Manipulation of
`Volumetric Medical Data,” 3DUI ’06: IEEE Symposium
`on 3D User Interfaces, March 2006; pp. 29-36
`U.S. Patent No. 6,227,850 to Chishti et al.
`U.S. Patent Publication No. 2010/0009308 to Wen et al.
`U.S. Patent Publication No. 2013/0110469 to Kopelman
`U.S. Patent Publication No. 2012/0062557 to Dillon et al.
`U.S. Patent Publication No. 2007/0031774 to Cinader, Jr.
`et al.
`U.S. Patent No. 9,329,675 to Öjelund et al.
`Inter Partes Review Certificate, U.S. Patent No. 9,329,675
`K1 to Öjelund et al.
`Final Written Decision for Inter Partes Review of U.S.
`Patent No. 9,329,675 in IPR2018-00197, May 29, 2019.
`U.S. Patent No. 4,342,227 to Petersen et al.
`U.S. Patent No. 5,563,343 to Shaw et al.
`Steele et al., “Bodies in motion: Monitoring daily activity
`and exercise with motion sensors in people with chronic
`pulmonary disease,” J. Rehabil. Res. Dev., Vol. 40, No. 5,
`Suppl. 2, October 2003.
`Hale et al., “Measuring free-living physical activity in
`adults with and without neurologic dysfunction with a
`triaxial accelerometer,” Arch. Phys. Med. Rehabil., Vol.
`89, No. 9, September 2008.
`
`
`
`
`- ii -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`
`Exhibit No.
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`Description
`Greg Welch and Eric Foxlin, “Motion Tracking: No Silver
`Bullet, but a Respectable Arsenal,” IEEE Computer
`Graphics and Applications, Vol. 22, No. 6, December 10,
`2002.
`Steven Nasiri, “A Critical Review of MEMS Gyroscopes
`Technology and Commercialization Status,” InvenSense,
`2005.
`Hannes Kaufmann, “Applications of Mixed Reality,”
`Thesis, Vienna University of Technology, May 27, 2009.
`Welch et al., “High-Performance Wide-Area Optical
`Tracking: The HiBall Tracking System,” Presence:
`Teleoperators and Virtual Environments, Vol. 10, No. 1,
`February 2001.
`Nintendo, “Introducing Wii MotionPlus, Nintendo’s
`upcoming accessory for the revolutionary Wii Remote,”
`The Wayback Machine, July 14, 2008.
`Daniel Turner, “Hack: The Nintendo Wii,” MIT
`Technology Review, July 1, 2007.
`U.S. Patent Publication No. 2008/0070684 to Haigh-
`Hutchinson
`Brad A. Myers, CRC Handbook of Computer Science and
`Engineering, 2d. Ed., Allen B. Tucker, January 27, 2003,
`“Graphical User Interface Programming”
`Foley et al., Introduction to Computer Graphics, Addison-
`Wesley, 1994, “Chapter 2.2: Basic Interaction Handling”,
`“Chapter 6: Viewing in 3D”, and “Chapter 8: Input
`Devices, Interaction Techniques, and Interaction Tasks”
`Donald Hearn and M. Pauline Baker, Computer Graphics,
`2d. Ed., Prentice Hall, 1994, “Chapter 2: Overview of
`Graphics Systems”, “Chapter 8: Graphical User Interfaces
`and Interactive Input Methods”, and “Chapter 9: Three-
`Dimensional Concepts”
`File History of U.S. Patent No. 9,329,675 (“’675
`Prosecution History”)
`3Shape A/S v. Align Technology, Inc., IPR2021-01383,
`Petition for Inter Partes Review of U.S. Patent No.
`10,728,519, August 20, 2021.
`
`
`
`
`- iii -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`
`Exhibit No.
`
`1048
`
`1049
`
`Description
`Plaintiff and Counterclaim Defendant Align Technology,
`Inc.’s Stipulation Regarding IPR2022-00144 and IPR2022-
`00145, Case No. 6:20-cv-00979 (W.D. Tex.), December
`16, 2021.
`Confidential Settlement Agreement
`
`
`
`
`- iv -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`Pursuant to 37 C.F.R § 42.74 and the authorization provided by the Board
`
`email of February 16, 2022, Petitioner Align Technology, Inc. (“Petitioner”)
`
`requests termination of the proceeding and dismissal of the Petition filed in this
`
`proceeding, IPR2022-00145, directed to U.S. Patent No. RE48,221 (the “’221
`
`Patent”). The parties have met and conferred and Patent Owner does not oppose
`
`this motion.
`
`I.
`
`CERTIFICATION
`
`Petitioner submits a true copy of any agreement or understanding (Exhibit
`
`1049) between Petitioner and Patent Owner made in connection with, or in
`
`contemplation of, the dismissal of the Petition for the proceeding under 37 CFR §
`
`42.74(b) with this motion. Petitioner certifies that there are no other agreements,
`
`oral or written, between the parties made in connection with, or in contemplation
`
`of, the termination of this inter partes review proceeding.
`
`II.
`
`STATUS OF RELATED PROCEEDINGS
`
`Petitioner and Patent Owner have resolved their disputes regarding the ’221
`
`Patent, including both in this proceeding and Patent Owner’s assertion of the ’221
`
`Patent in the related district court litigation, district court docket no. 6:20-cv-00979
`
`(W.D. Tex.). The parties do not anticipate further litigation between them
`
`concerning the ’221 Patent. The following related proceeding is currently before
`
`
`
`- 1 -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`the Board: Align Technology, Inc. v. 3Shape A/S, IPR2022-00144, filed November
`
`9, 2022.
`
`III. RELIEF REQUESTED
`
`
`
`As authorized by the Board, Petitioner is contemporaneously filing: (i) this
`
`motion to dismiss the Petition; (ii) a true copy of any agreement or understanding
`
`(Exhibit 1049) between Petitioner and Patent Owner made in connection with, or
`
`in contemplation of, the requested dismissal of the Petition; and (iii) a joint request
`
`to treat the agreement as business confidential information and keep the agreement
`
`(Exhibit 1049) separate from the file of the involved patent, pursuant to 37 C.F.R.
`
`§ 42.74(c).
`
`Petitioner requests that the Board terminate this proceeding in its entirety.
`
`Termination is appropriate at this stage and in view of a settlement between
`
`Petitioner and Patent Owner. See 37 C.F.R. § 42.71(a) (“The Board … may grant,
`
`deny, or dismiss any petition”). See also RSPCT Basketball Tech., Ltd. v. Pillar
`
`Vision, Inc., IPR2021-00006, Paper 8 (PTAB Jan. 5, 2021); Palo Alto Networks,
`
`Inc. v. Proven Networks, LLC, IPR2021-00596, Paper 8 (PTAB Aug. 10, 2021)
`
`(terminating the proceeding and dismissing the petition in view of settlement prior
`
`to issuance of institution decision). Good cause exists to terminate this proceeding
`
`because (1) Petitioner and Patent Owner have resolved their disputes regarding the
`
`’221 Patent; (2) this proceeding is still at an early stage because the Office has not
`
`
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`- 2 -
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`Case IPR2022-00145
`U.S. Patent No. RE48,221
`yet decided whether to institute trial; and (3) terminating the proceeding now
`
`would thus serve the interests of preservation of Board resources as well as the
`
`mutual interest of the parties.
`
`
`
`
`
`
`
`
`
`
`
`
`Date: February 18, 2022
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Petitioner
`
`
`- 3 -
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`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
`LIMITATION, TYPEFACE REQUIREMENTS, AND TYPE STYLE
`REQUIREMENTS
`
`This paper complies with the page limitation of 15 pages excluding
`
`1.
`
`the parts exempted by 37 C.F.R. § 42.24.
`
`2.
`
`This paper complies with the general format requirements of 37
`
`C.F.R. § 42.6 and has been prepared using Microsoft® Word 2016 in 14 point
`
`Times New Roman.
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`
`
`
`
`
`
`
`
`
`/Jason D. Eisenberg/
`
`
`
`
`
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Petitioner
`
`
`Date: February 18, 2022
`
`1100 New York Avenue NW
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
`
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
`
`UNOPPOSED MOTION TO DISMISS PETITION FOR INTER PARTES
`
`REVIEW was served electronically via e-mail on February 18, 2022 in its entirety
`
`on the following counsel for Patent Owner. Exhibit 1049 was filed but not served
`
`on February 18, 2022.
`
`Todd R. Walters (Lead Counsel) todd.walters@bipc.com
`Roger H. Lee (Back-Up Counsel) roger.lee@bipc.com
`Andrew R. Cheslock (Back-up Counsel) andrew.cheslock@bipc.com
`BUCHANAN INGERSOLL & ROONEY PC
`
`
`
`
`
`
`
`
`
`
`
`Date: February 18, 2022
`1100 New York Avenue NW
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Petitioner
`
`
`
`
`18048394.1
`
`
`
`
`
`
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