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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`ALIGN TECHNOLOGY, INC.,
`Petitioner
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`v.
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`3SHAPE A/S,
`Patent Owner
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`__________________
`
`Case IPR2022-00145
`Patent RE48,221
`__________________
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`JOINT REQUEST THAT THE SETTLEMENT AGREEMENT BE TREATED
`AS BUSINESS CONFIDENTIAL INFORMATION AND BE KEPT SEPARATE
`UNDER 35 U.S.C. § 317(b)
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`
`
`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`
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`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,221
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner Align
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`Technology, Inc. (“Petitioner”) and Patent Owner 3Shape A/S (“Patent Owner”)
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`hereby jointly request that a true copy of their settlement agreement, filed
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`concurrently herewith as Exhibit 1049, be treated as business confidential
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`information and be kept separate from the file of this inter partes review (IPR)
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`proceeding. Concurrently with the filing of this Request, Petitioner is filing an
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`Unopposed Motion to Dismiss Petition for Inter Partes Review due to the
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`settlement between the parties.
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`The parties consider the settlement agreement to contain highly sensitive
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`business confidential information that would substantially harm their business
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`interests if publicly disclosed. As such, the parties hereby jointly request that the
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`settlement agreement be kept as a separate paper to be made available only under
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`the provisions of 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c). The settlement
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`agreement has been filed for access by the “Parties and Board Only.” The parties
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`further jointly request that the Board order that in the event a person or entity
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`makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the
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`settlement agreement, that any such written request be served upon the parties on
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`the day the written request is provided to the Board.
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`- 1 -
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`Date: February 18, 2022
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`
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`Date: February 18, 2022
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`Case IPR2022-00145
`U.S. Patent No. RE48,221
`Respectfully submitted,
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg (Reg. No. 43,447)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`Attorney for Petitioner
`
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`Respectfully submitted,
`
`
`
`
`/Todd R. Walters/
`Todd R. Walters (Reg. No. 34,040)
`BUCHANAN INGERSOLL & ROONEY PC
`Attorney for Patent Owner
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`- 2 -
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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
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`This paper complies with the page limitation of 15 pages excluding
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`1.
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`the parts exempted by 37 C.F.R. § 42.24.
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`2.
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`This paper complies with the general format requirements of 37
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`C.F.R. § 42.6 and has been prepared using Microsoft® Word 2016 in 14 point
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`Times New Roman.
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
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`
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`
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`
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`
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`/Jason D. Eisenberg/
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`
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`
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`Date: February 18, 2022
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`1100 New York Avenue NW
`Washington, D.C. 20005
`(202) 371-2600
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`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Petitioner
`
`
`
`
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`
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`Case IPR2022-00145
`U.S. Patent No. RE48,221
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that a true and correct copy of the above-
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`captioned JOINT REQUEST THAT THE SETTLEMENT AGREEMENT BE
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`TREATED AS BUSINESS CONFIDENTIAL INFORMATION AND BE
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`KEPT SEPARATE UNDER 35 U.S.C. § 317(b) was served electronically via e-
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`mail on February 18, 2022 in its entirety on the following counsel for Patent
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`Owner:
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`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
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
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`/Jason D. Eisenberg/
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`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Petitioner
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`
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`
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`Date: February 18, 2022
`1100 New York Avenue NW
`Washington, D.C. 20005
`(202) 371-2600
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`
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`
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`18048397.1
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`