`Tel: 571-272-7822
`
`
`Paper No. 9
`
`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
`
`
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`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:
`
`Todd R. Walters
`Roger H. Lee
`Andrew R. Cheslock
`BUCHANAN INGERSOLL & ROONEY PC
`todd.walters@bipc.com
`roger.lee@bipc.com
`andrew.cheslock@bipc.com
`
`
`
`4
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