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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`
`DENTAL IMAGING TECHNOLOGIES CORPORATION,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner
`
`______________________________
`
`U.S. Patent No RE48,221 to Öjelund et al.
`Issue Date: September 22, 2020
`Title: SYSTEM WITH 3D USER INTERFACE INTEGRATION
`IPR Case No.: 2023-00388
`
`JOINT MOTION TO TERMINATE
`INTER PARTES REVIEW OF U.S. PATENT RE48,221
`UNDER 37 C.F.R. § 42.72
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.72, Petitioner and Patent Owner jointly move to
`
`terminate the Inter Partes Review of U.S. Patent No. RE48,221 (“Joint Motion to
`
`Terminate”).
`
`Petitioner and Patent Owner have entered into a written, confidential binding
`
`settlement agreement fully resolving this matter with respect to the ’221 patent,
`
`including both this proceeding and Patent Owner’s assertion of the ’221 patent in
`
`the related district court litigation, No. 1:22-cv-01829-WMR (N.D. Ga.). A copy of
`
`the agreement is submitted herewith as Ex. 1045.
`
`Concurrently, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the
`
`parties are filing Joint Motion to Keep Confidential and Separate (“Motion to Keep
`
`Confidential”) the confidential agreement.
`
`The undersigned represent that there are no other agreements, oral or written,
`
`between the parties made in connection with, or in contemplation of, the termination
`
`of the present proceeding.
`
`The undersigned further represent that Ex. 1045 is a true and accurate copy of
`
`the confidential agreement between the parties resolving the present proceeding.
`
`On April 13, 2023, the parties informed the Board of the settlement via e-mail
`
`and requested authorization to file the Motion to Terminate and Motion to Keep
`
`Confidential. In an email dated April 17, 2023, the Board authorized the filing of
`
`this Joint Motion to Terminate and the Motion to Keep Confidential.
`
`2
`
`

`

`The Board has not yet rendered an institution decision in this proceeding.
`
`There are no other pending USPTO proceedings regarding the ’221 patent.
`
`In view of the foregoing, Petitioner and Patent Owner respectfully request
`
`termination of the Inter Partes Review of U.S. Patent No. RE48,221.
`
`
`
`Dated: April 20, 2023
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ John T. McKee
`John T. McKee
`Reg. No. 65,926
`Lead Counsel for Petitioner
`
`
`
`
`/s/ Todd R. Walters
`Todd R. Walters
`Reg. No. 34,040
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
`
`of the foregoing JOINT MOTION TO TERMINATE was served electronically via
`
`e-mail on April 20, 2023 to the following:
`
`
`
`
`
`
`
`/s/ John T. McKee
`John T. McKee
`Reg. No. 65,926
`Lead Counsel for Petitioner
`
`
`
`4
`
`

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