Align Technology, Inc.

Patent Trials and Appeals Board

Feb 25, 2022

IPR2021-01383 (P.T.A.B. Feb. 25, 2022)

Trials@uspto.gov Paper No. 19 Tel: 571-272-7822 Entered: February 25, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ 3SHAPE A/S and 3SHAPE INC., Petitioner, v. ALIGN TECHNOLOGY, INC., Patent Owner. _______________ IPR2021-01383 Patent 10,728,519 B2 _______________ Before NEIL T. POWELL, JAMES J. MAYBERRY, and ELIZABETH M. ROESEL, Administrative Patent Judges. MAYBERRY, 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 IPR2021-01383 Patent 10,728,519 B2 2 I. INTRODUCTION With the Board’s authorization, Petitioner filed a Motion to Dismiss Petition for inter partes review in the above-captioned proceeding due to settlement. Paper 16 (“Motion”). Petitioner represents that Patent Owner does not oppose the Motion. Motion 1. Along with the Motion, Petitioner filed a copy of a Settlement, Release and Patent License Agreement between Petitioner and Patent Owner (collectively, “the Parties”). Ex. 1043 (“Settlement Agreement”). 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. 10,728,519 B2 (“the ’519 patent”). Paper 17 (“Joint Request”). II. DISCUSSION In the Motion, Petitioner represents that the Settlement Agreement resolves the Parties’ dispute involving the ’519 patent. 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 this proceeding. Id. The Settlement Agreement states that it “constitute[s] the entire agreement between the Parties.” Settlement Agreement 22. This proceeding is at an early stage, and we have not yet decided whether to institute a trial in the proceeding. In view of the early stage of the proceeding and the settlement between the Parties, we determine that good cause exists to dismiss the Petition and terminate the proceeding with respect to the Parties. IPR2021-01383 Patent 10,728,519 B2 3 In the Joint Request, the Parties request that the Settlement Agreement be treated as business confidential information and kept separate from the file of the ’519 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). 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.” Joint Request 1. 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 Motion to Dimiss Petition (Paper 16) is granted, and the proceeding is terminated with respect to Petitioner and Patent Owner; and FURTHER ORDERED that the Joint Request to treat the Settlement Agreement as business confidential information (Paper 17) is granted-in- part and denied-in-part, and the Settlement Agreement (Ex. 1043) shall be kept separate from the file of U.S. Patent No. 10,728,519 B2, and made IPR2021-01383 Patent 10,728,519 B2 4 available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c). IPR2021-01383 Patent 10,728,519 B2 5 For PETITIONER: Alison McCarthy Bryan Cannon Nicholas Gallo TROUTMAN PEPPER HAMILTON SANDERS LLP Alison.McCarthy@Troutman.com Bryan.Cannon@Troutman.com Nicholas.Gallo@Troutman.com For PATENT OWNER: Matthew Argenti Michael Rosato Tasha Thomas WILSON SONSINI GOODRICH & ROSATI margenti@wsgr.com mrosato@wsgr.com tthomas@wsgr.com