` Date: May 1, 2023
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DENTAL IMAGING TECHNOLOGIES CORPORATION,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`____________
`
`IPR2023-00388
`Patent RE48,221 E
`____________
`
`Before HUBERT C. LORIN, FRANCES L. IPPOLITO, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2023-00388
`Patent RE48,221 E
`
`INTRODUCTION
`I.
`Petitioner filed a Petition (Paper 2) requesting inter partes review of
`U.S. Patent No. RE48,221 E (Ex. 1001, “the ’221 patent”). Subsequently,
`on April 20, 2023, the parties filed a joint motion to terminate the above-
`identified proceeding pursuant to a settlement agreement. Paper 5 (Joint
`Motion to Terminate Inter Partes Review). The parties also filed a copy of
`their settlement agreement made in connection with the termination of the
`instant proceeding. Ex. 1045. In a concurrently filed paper, the parties
`jointly requested the settlement agreement to be treated as business
`confidential and to be kept separate from the file of the involved patent
`under 35 U.S.C. § 317(b)1 and 37 C.F.R. § 42.74(c). Paper 6 (Joint Motion
`to Keep Confidential and Separate). We authorized the filing of the jointly-
`filed papers in an e-mail dated April 17, 2023. Ex. 3001.
`
`
`II. DISCUSSION
`The instant proceeding is in an early stage, and the Board has not
`determined whether to institute trial. The parties represent that Exhibit 1045
`is “a true and accurate copy” of their settlement agreement, which “fully
`resolv[es] 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.” Paper 5, 2. The parties further 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
`
`
`1 In their request, the parties cite 35 U.S.C. § 271(b) on one page and 35
`U.S.C. § 217(b) on another page. Paper 6, 1–2. These citations appear to be
`typographical errors, and we instead apply 35 U.S.C. § 317(b).
`
`2
`
`
`
`IPR2023-00388
`Patent RE48,221 E
`proceeding.” Id. In view of the foregoing, we determine that it is
`appropriate to dismiss the Petition and terminate the proceeding.
`Further, after reviewing the parties’ settlement agreement, we find
`that the settlement agreement contains confidential business information
`regarding the terms of settlement. We determine that good cause exists to
`treat the settlement agreement as business confidential information and to
`keep it separate from the file of the patent in the above-identified proceeding
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision under 35 U.S.C.
`§ 318(a).
`
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate Inter Partes Review
`(Paper 5) is granted, the Petition (Paper 2) is dismissed, and the proceeding
`is terminated; and
`FURTHER ORDERED that the Joint Motion to Keep Confidential
`and Separate (Paper 6) is granted, and the settlement agreement
`(Exhibit 1045) shall be treated as business confidential information, kept
`separate from the file of the above-identified patent, and made available only
`to Federal Government agencies on written request, or to any person on a
`showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`
`
`
`3
`
`
`
`IPR2023-00388
`Patent RE48,221 E
`PETITIONER:
`John T. McKee
`James M. Glass
`Richard W. Erwine
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`johnmckee@quinnemanuel.com
`jimglass@quinnemanuel.com
`richarderwine@quinnemanuel.com
`
`Jeanne M. Gills
`FOLEY & LARDNER LLP
`jmgills@foley.com
`
`
`PATENT OWNER:
`Todd R. Walters
`Roger H. Lee
`Mythili Markowsk
`Andrew R. Cheslock
`BUCHANAN INGERSOLL & ROONEY PC
`todd.walters@bipc.com
`roger.lee@bipc.com
`mythili.markowski@bipc.com
`andrew.cheslock@bipc.com
`
`4
`
`
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