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`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
`U.S. Patent No. RE48,221
`_____________________
`
`
`PETITIONER’S NOTICE RANKING PETITIONS FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. RE48,221
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`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
`U.S. Patent No. RE48,221
`_____________________
`
`
`PETITIONER’S NOTICE RANKING PETITIONS FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. RE48,221
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,211
`
`I.
`
`INTRODUCTION
`Petitioner is simultaneously filing two petitions (IPR2022-00144 (“Pet. 1”)
`
`and IPR2022-00145 (“Pet. 2”)) challenging the patentability of claims [1, 19]1 and
`
`20-44 in U.S. Reissue Patent No. RE48,221 (“RE’221”). The Board recognizes
`
`that “there may be circumstances in which more than one petition may be
`
`necessary.” Consolidated Trial Practice Guide (Nov. 2019) (“TPG”), 59.
`
`Institution of both petitions is justified given the unique situation presented here
`
`since the Board has already invalidated the subject matter of the challenged
`
`claims. The Board did so when it issued a final written decision invalidating claims
`
`1-19 of U.S. Patent No. 9,329,675 (“the ’675 patent”) in IPR2018-00197, which
`
`3Shape did not appeal.
`
`II. ORDERING OF PETITIONS
`Both petitions are meritorious and justify institution. Petitioner requests that
`
`the Board consider its petitions in the following order: (1) Petition 1 based on Serra
`
`and (2) Petition 2 based on Boerjes. Petition 1 presents the prior art that the Board
`
`
`1 Claims 1 and 19 are not directly challenged because they are cancelled, but
`
`features of claims 1 and 19 are addressed in substance in each petition as the
`
`challenged claims incorporate all of their features.
`
`
`
`- 1 -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,211
`previously found invalidates the claimed subject matter. Petition 2 presents entirely
`
`new grounds.
`
`Rank
`1
`
`Primary Reference
`Petition
`IPR2022-00144 (Pet. 1) Serra
`
`Claims
`[1, 19], 20-44
`
`2
`
`IPR2022-00145 (Pet. 2) Boerjes
`
`[1, 19], 20-44
`
`III. REASONS WARRANTING ADDITIONAL PETITIONS
`A. Material Differences in the Petitions
`Different Approaches to the Claim Limitations – The Petitions establish
`
`that the challenged claims were obvious in different ways. For example, Petition 1
`
`presents grounds and arguments that the Board previously applied to invalidate the
`
`nearly identical, now cancelled claims of the ’675 patent. RE’221 is a reissue of
`
`the ’675 patent. In IPR2018-00197, the Board found that ’675 patent claims 1-19
`
`are obvious over Serra and Kriveshko. Here, to the extent claims 20-44 are not
`
`identical to those previously invalidated, they add no patentable features because
`
`any nominal features added by reissue were well-within the general knowledge of
`
`a person of ordinary skill in the art (“POSITA”). Petition 1 includes a single
`
`reference obviousness ground supported, in part, with the general knowledge of a
`
`POSITA.
`
`Petition 2 asserts three combinations of never before considered references
`
`that render obvious the recited motion sensor species and motion sensor
`
`
`
`- 2 -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,211
`functionality of reissue claims [33.4] and [33.5]. Accordingly, the two petitions
`
`have different starting points and different rationales for why the challenged claims
`
`are obvious.
`
`New Prior Art – Petition 1 presents grounds including Serra, Kriveshko, and
`
`Knighton, which were nominally cited in an information disclosure statement
`
`during reissue prosecution, but never applied by the reissue Examiner in a rejection
`
`despite the Board finding the ’675 patent claims invalid. Pet. 1 presents new
`
`grounds that include Marvit, which was not applied or considered during
`
`prosecution.
`
`Petition 2 presents grounds based on Boerjes, Marvit, Gandyra, and
`
`Quadling which were not presented to, or considered by, the Office. These
`
`references are not cumulative to art applied or cited during reissue prosecution.
`
`The two petitions thus rely on different combinations of art that may be weighed
`
`differently depending on how the reissue examination is viewed. Institution of both
`
`petitions will allow for full consideration of all these grounds, both those
`
`previously found to render the same subject matter invalid and others that confirm
`
`the invalidity previously determined.
`
`
`
`
`
`
`
`- 3 -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,211
`
`IV. CONCLUSION
`The Board has already invalidated claims that are substantively identical to
`
`the reissue claims challenged here. As explained in the petitions themselves, the
`
`lack of meaningful examination during reissue prosecution resulted in issuance of
`
`claims that have no patentable distinction over those found invalid in IPR2018-
`
`00197. This unique situation, and the different approaches to the claim limitations,
`
`justifies instituting multiple petitions (IPR2022-00144 and IPR2022-00145).
`
`
`
`
`
`
`
`
`
`
`
`Date: November 9, 2021
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Counsel for Petitioner
`
`
`
`
`
`
`- 4 -
`
`
`
`Case IPR2022-00145
`U.S. Patent No. RE48,211
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that on November 9, 2021, true and correct
`
`
`
`copies of the foregoing PETITIONER’S NOTICE RANKING PETITIONS
`
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. RE48,221, was served
`
`in its entirety on the following parties via FedEx Express® or Express Mail:
`
`Buchanan, Ingersoll & Rooney PC
`1737 King Street, Suite 500
`Alexandria, VA 22314-2727
`PAIR Correspondence Address for U.S. Pat No.: RE48,221
`(and address Known to Petitioner as Likely to Effect Service)
`
`The above-listed documents were also served electronically via e-mail on
`
`the following additional party, known to Petitioner as likely to effect service:
`
`Kimberly E. Coghill
`TROUTMAN PEPPER HAMILTON SANDERS LLP
`kimberly.coghill@troutman.com
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Counsel for Petitioner
`
`
`
`
`
`
`
`Date: November 9, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`
`
`
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