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`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
`___________________
`
`IPR2019-00157, Patent 8,363,228
`IPR2019-00159, Patent 8,451,456
`IPR2019-00160, Patent 8,675,207
`___________________
`
`REQUEST FOR CONSOLIDATION
`OF IPR2019-00157, -00159, AND -00160
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`
`
`
`
`IPR2019-00157, -00159, -00160
`
`To preserve judicial economy and party resources, Align respectfully
`
`requests that the Board consolidate all substantive briefing, as well as the oral
`
`hearing, into one proceeding for IPR2019-00157 (’228 patent), IPR2019-00159
`
`(’456 patent), and IPR2019-00160 (’207 patent).
`
`As will be demonstrated below:
`
`1. The ’228, ’456, and ’207 patents share a common specification;
`2. For the ’228, ’456, and ’207 patents, the Petitions challenge the claims
`nearly identically and can be addressed in a single proceeding;
`3. For the ’228, ’456, and ’207 patents, the Petitions rely on the same
`references to meet the claim features; and
`4. For the ’228, ’456, and ’207 patents, the Petitions rely on declarations
`from the same expert, and those declarations are nearly identical, and
`all differences can be addressed in a single proceeding.
`For these reasons, and in the interest of judicial economy, the Board should
`
`consolidate the three above-referenced IPR proceedings into a single proceeding.
`
`ARGUMENT
`I. There Are Few Differences Across the Specification and Grounds.
`The specifications of all the patents are identical, except priority sections, as
`
`they are continuations of each other. The following family tree is illustrative:
`
`
`
`- 1 -
`
`
`
`IPR2019-00157, -00159, -00160
`
`
`
`The following charts demonstrate that the proposed grounds of
`
`
`
`unpatentability are identical.
`
`IPR2019-00157 (’228
`Patent) - Ground
`1
`2
`
`IPR2019-00159 (’456
`Patent) -Ground
`1
`2
`
`IPR2019-00160 (’207
`Patent) - Ground
`1
`
`
`
`2
`
`
`
`References
`
`Babayoff, Okamoto, and Engelhardt
`Babayoff, Okamoto, Engelhardt, and
`Sachdeva
`References
`
`Babayoff, Okamoto, and Engelhardt
`Babayoff, Okamoto, Engelhardt, and
`Sachdeva
`References
`
`Babayoff, Okamoto, and Engelhardt
`
`Babayoff, Okamoto, Engelhardt, and
`Sachdeva
`
`Claims
`
`1–5, 7, 26
`6
`
`Claims
`
`1–7, 12–17
`7 and 18
`
`Claims
`
`1–7, 12–17,
`19–21
`7 and 18
`
`- 2 -
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`
`
`IPR2019-00157, -00159, -00160
`
`In the interest of judicial efficiency, the Board should consolidate the three
`
`IPRs into a single proceeding. The rules governing IPR proceedings should be
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`construed “to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” 37 C.F.R. § 42.1(b). The Board is authorized to depart from the rules,
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`when appropriate. 37 C.F.R. § 42.5(a). Consolidation allows efficiencies:
`
`1. A single set of pleadings;
`2. A single deposition of each Parties’ expert (already conducted);
`3. A single oral hearing;
`4. A shortened, combined record;
`5. Lowering the risk of duplicating time, labor, resources, and
`arguments.
`These combined efficiencies merit consolidation. To effectively deal with
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`the proposed consolidation, the Parties accordingly ask that the word or page limits
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`for major substantive pleadings be increased. The time allotted for oral hearing
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`should be increased as well. Specifically, the Parties request the following changes:
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`1. Pursuant to 3Shape’s condition for non-opposition, each side will file
`one pleading for Due Dates 1-7 with word/page limits at 200% of the
`word/page limits found in 37 C.F.R. § 42.100 et seq.
`2. The Oral Hearing for the consolidated proceedings will be 1 hour total
`for each side, 2 hours total, on March 11, 2020.
`3. ’157 will be the base case; any exhibits in ’159/’160 missing from
`’157 will be filed within 15 days of the Board granting this request.
`4. Refer to the Petitions and Decision on Institution as: 157Pet, 157DI,
`159Pet, 157DI, 160Pet, and 160DI, respectively.
`
`
`
`- 3 -
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`
`
`
`Date: August 22, 2019
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`IPR2019-00157, -00159, -00160
`
`Respectfully submitted,
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Patent Owner
`
`
`
`
`
`- 4 -
`
`
`
`IPR2019-00157, -00159, -00160
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing REQUEST FOR
`
`CONSOLIDATION OF IPR2019-00157, -00159, AND -00160 was served
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`electronically via e-mail on August 22, 2019, in its entirety on the following
`
`counsel of record for Petitioner:
`
`Todd R. Walters (Lead Counsel)
`Roger H. Lee (Back-up Counsel)
`Andrew R. Cheslock (Back-up Counsel)
`Mythili Markowski (Back-up Counsel)
`Stephany G. Small (Back-up Counsel)
`BUCHANAN INGERSOLL & ROONEY PC
`Todd.walters@bipc.com
`Roger.lee@bipc.com
`Andrew.cheslock@bipc.com
`Mythili.markowski@bipc.com
`Stephany.small@bipc.com
`
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Patent Owner
`
`
`Date: August 22, 2019
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`
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