3Shape A/S v. Align Technology, Inc.

COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT -filed with Jury Demand against Align Technology, Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 400, receipt number ADEDC-3307646.) - filed by 3Shape Trios A/S, 3Shape A/S, 3Shape, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit B-1, # 4 Exhibit B-2, # 5 Exhibit B-3, # 6 Exhibit B-4, # 7 Exhibit B-5, # 8 Exhibit B-6, # 9 Exhibit B-7, # 10 Appendix A, # 11 Civil Cover Sheet)(sam) (Entered: 11/03/2020)

2020-11-02

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Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (sam) (Entered: 11/03/2020)

2020-11-02

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Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 9,101,433 ; 10,728,519 ; 10,750,151 ; 10,750,152 ; 10,791,934 ; 10,791,936 ; 10,709,527. (sam) (Entered: 11/03/2020)

2020-11-02

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PLAINTIFFS MOTION FOR PRELIMINARY INJUNCTION AND TEMPORARY RESTRAINING ORDER AGAINST ALIGN TECHNOLOGY INC. - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. (Attachments: # 1 Text of Proposed Order, # 2 7.1.1 Statement regarding motion)(sam) (Entered: 11/03/2020)

2020-11-02

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OPENING BRIEF in Support re 4 MOTION for Preliminary Injunction and Temporary Restraining Order -filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Appendix A)(sam) (Main Document 5 replaced on 11/3/2020) (cna, ). (Entered: 11/03/2020)

2020-11-02

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No Summons Issued. (sam)

2020-11-03

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Remark: Case to be assigned to LPS per related cases. (sam)

2020-11-03

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Remark: Exit to Judge LPS. (sam)

2020-11-03

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Remark

2020-11-03

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No Summons Issued

2020-11-03

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SUMMONS Returned Executed by 3Shape Trios A/S, 3Shape A/S, 3Shape, Inc.. Align Technology, Inc. served on 11/3/2020, answer due 11/24/2020. (Levine, James Harry) (Entered: 11/04/2020)

2020-11-04

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Case Assigned to Judge Leonard P. Stark. Please include the initials of the Judge (LPS) after the case number on all documents filed. (rjb)

2020-11-04

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Case Assigned/Reassigned

2020-11-04

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Letter to The Honorable Leonard P. Stark from James Levine, Esq. regarding request for Status Conference and expedited briefing on 3Shape's Motion for Preliminary Injunction and Temporary Restraining Order - re (4 in 1:20-cv-01492-LPS) MOTION for Temporary Restraining Order, (5 in 1:20-cv-01492-LPS) Opening Brief in Support, (29 in 1:18-cv-01950-LPS) Amended Complaint,. (Levine, James Harry) (Entered: 11/09/2020)

2020-11-09

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ORAL ORDER: Having received a motion for preliminary injunction (PI) and temporary restraining order (TRO) and request for expedited review (see D.I. 4, 7), IT IS HEREBY ORDERED that the following schedule shall apply: (i) Align shall file a responsive brief addressing the motion for a PI/TRO no later than Thursday, November 12 at 12:00 p.m.; (ii) 3Shape shall file a reply brief in support of its motion no later than Friday, November 13 at 10:00 a.m.; and (iii) the Court will hear argument on the motion during a teleconference on Friday, November 13 beginning at 1:30 p.m. The parties and any interested member of the public shall use the following call-in information: 877-336-1829 and using the access code 1408971. ORDERED by Judge Leonard P. Stark on 11/9/20. (ntl) (Entered: 11/09/2020)

2020-11-09

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MOTION for Pro Hac Vice Appearance of Attorney John M. Hughes, Joseph C. Smith, Jr., Jason C. Murray, Meg E. Fasulo, Mark L. Levine, Faye E. Paul, and Amy Gore - filed by Align Technology, Inc.. (Shaw, John) (Entered: 11/09/2020)

2020-11-09

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Order Setting Teleconference

2020-11-09

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Disclosure Statement pursuant to Rule 7.1: No Parents or Affiliates Listed filed by Align Technology, Inc.. (Shaw, John) (Entered: 11/12/2020)

2020-11-12

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ANSWERING BRIEF in Opposition re 4 MOTION for Temporary Restraining Order filed by Align Technology, Inc..Reply Brief due date per Local Rules is 11/19/2020. (Shaw, John) (Entered: 11/12/2020)

2020-11-12

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Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent 3Shape Holding A/S for 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 11/12/2020)

2020-11-12

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SO ORDERED, re 9 MOTION for Pro Hac Vice Appearance of Attorney John M. Hughes, Joseph C. Smith, Jr., Jason C. Murray, Meg E. Fasulo, Mark L. Levine, Faye E. Paul, and Amy Gore filed by Align Technology, Inc. Signed by Judge Leonard P. Stark on 11/12/20. (ntl)

2020-11-12

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SO ORDERED

2020-11-12

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MOTION for Pro Hac Vice Appearance of Attorney Goutam Patnaik - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Certification of Goutam Patnaik, Esq., # 2 Text of Proposed Order)(Levine, James Harry) (Entered: 11/13/2020)

2020-11-13

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MOTION for Pro Hac Vice Appearance of Attorney David J. Shaw - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Certification of David J. Shaw, Esq., # 2 Text of Proposed Order)(Levine, James Harry) (Entered: 11/13/2020)

2020-11-13

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MOTION for Pro Hac Vice Appearance of Attorney Kimberly E. Coghill - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Certification of Kimberly E. Coghill, Esq., # 2 Text of Proposed Order)(Levine, James Harry) (Entered: 11/13/2020)

2020-11-13

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REPLY BRIEF re 4 MOTION for Temporary Restraining Order filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Exhibit 13, # 2 Exhibit 14, # 3 Exhibit 15, # 4 Exhibit 16)(Levine, James Harry) (Entered: 11/13/2020)

2020-11-13

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ORAL ORDER: For the reasons stated during the teleconference today, IT IS HEREBY ORDERED that the motion for a temporary restraining order or preliminary injunction (D.I. 4 ) is DENIED. ORDERED by Judge Leonard P. Stark on 11/13/20. (ntl) (Entered: 11/13/2020)

2020-11-13

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Official Transcript of Telephonic Oral Argument held on November 13, 2020 before Chief Judge Leonard P. Stark. Court Reporter Brian Gaffigan, email: gaffigan@verizon.net. Transcript may be viewed at the court public terminal or ordered/purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 12/4/2020. Redacted Transcript Deadline set for 12/14/2020. Release of Transcript Restriction set for 2/11/2021. (bpg) (Entered: 11/13/2020)

2020-11-13

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Minute Entry for proceedings held before Judge Leonard P. Stark - Argument by Telephone Conference held on 11/13/2020. (Court Reporter B. Gaffigan.) (ntl)

2020-11-13

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Pro Hac Vice Attorney Joseph C. Smith, Jr, John M. Hughes, Mark L. Levine, Meg Fasulo, Jason Murray, Amy Gore, Faye E. Paul for Align Technology, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (sam)

2020-11-13

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Add Attorneys - PHV only

2020-11-13

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Order

2020-11-13

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Telephone Conference

2020-11-13

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SO ORDERED, re 14 MOTION for Pro Hac Vice Appearance of Attorney David J. Shaw filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc., 13 MOTION for Pro Hac Vice Appearance of Attorney Goutam Patnaik filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc., 15 MOTION for Pro Hac Vice Appearance of Attorney Kimberly E. Coghill filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. Signed by Judge Leonard P. Stark on 11/17/20. (ntl)

2020-11-17

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SO ORDERED

2020-11-17

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MOTION to Dismiss Based upon Prior Ruling or, MOTION to Stay Pending Texas Court's Decision on Transfer Motion - filed by Align Technology, Inc.. (Attachments: # 1 Exhibit A - Proposed Order Granting Motion to Dismiss, # 2 Exhibit B - Proposed Order Granting Motion to Stay)(Shaw, John) (Entered: 11/24/2020)

2020-11-24

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OPENING BRIEF in Support re 19 MOTION to Dismiss Based upon Prior Ruling or MOTION to Stay Pending Texas Court's Decision on Transfer Motion filed by Align Technology, Inc..Answering Brief/Response due date per Local Rules is 12/8/2020. (Attachments: # 1 Exhibit 1)(Shaw, John) (Entered: 11/24/2020)

2020-11-24

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STIPULATION STAY OF PROCEEDINGS by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 12/08/2020)

2020-12-08

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~Util - Case Stayed AND SO ORDERED

2020-12-10

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SO ORDERED, re 21 Stipulated Stay of Proceedings filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. -- Case Stayed. Signed by Judge Leonard P. Stark on 12/9/20. (ntl)

2020-12-10

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NOTICE of Change of Law Firm Affiliation for Goutam Patnaik, Esq. by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. (Levine, James Harry) (Entered: 03/11/2021)

2021-03-11

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Add Attorneys - PHV only

2021-03-16

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Pro Hac Vice Attorney Goutam Patnaik for 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd)

2021-03-16

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NOTICE of Change of Law Firm Affiliation for David Shaw, Esq. by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. (Levine, James Harry) (Entered: 03/25/2021)

2021-03-25

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NOTICE requesting Clerk to remove Goutam Patnaik and David J. Shaw of Desmarais LLP as co-counsel. Reason for request: No longer representing Plaintiffs 3Shape A/S, 3Shape Trios A/S and 3Shape, Inc.. (Levine, James Harry) (Entered: 04/23/2021)

2021-04-23

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Joint STIPULATION Of Partial Dismissal by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 05/10/2021)

2021-05-10

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NOTICE of Name Change of Faye E. Paul to Faye Paul Teller by Align Technology, Inc. (Shaw, John) (Entered: 05/28/2021)

2021-05-28

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NOTICE requesting Clerk to remove Faye Paul Teller as co-counsel.. (Shaw, John) (Entered: 01/21/2022)

2022-01-21

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STIPULATION And [Proposed] Order Staying Proceedings Pending Settlement by 3Shape A/S. (Levine, James Harry) (Entered: 02/09/2022)

2022-02-09

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SO ORDERED, re 28 STIPULATION And [Proposed] Order Staying Proceedings Pending Settlement filed by 3Shape A/S. Signed by Judge Leonard P. Stark on 2/14/22. (ntl) (Entered: 02/14/2022)

2022-02-14

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PROPOSED ORDER Dismissal -- Stipulated Order of Dismissal by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 03/02/2022)

2022-03-02

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Report to the Commissioner of Patents and Trademarks. (ntl) (Entered: 03/03/2022)

2022-03-03

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~Util - Terminate Civil Case AND SO ORDERED

2022-03-03

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SO ORDERED, re 30 Stipulated Order of Dismissal filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc., ***Civil Case Terminated. Signed by Judge Leonard P. Stark on 3/3/22. (ntl)

2022-03-03

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Overview

Parties

Defendant

Align Technology, Inc. Follow

Represented By

Plaintiff

3Shape, Inc. Follow

Represented By

3Shape Trios A/S Follow

Represented By

3Shape A/S Follow

Represented By

Court & Judges

Patents Involved

Docket Entries

Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (sam) (Entered: 11/03/2020)

Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 9,101,433 ; 10,728,519 ; 10,750,151 ; 10,750,152 ; 10,791,934 ; 10,791,936 ; 10,709,527. (sam) (Entered: 11/03/2020)

PLAINTIFFS MOTION FOR PRELIMINARY INJUNCTION AND TEMPORARY RESTRAINING ORDER AGAINST ALIGN TECHNOLOGY INC. - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. (Attachments: # 1 Text of Proposed Order, # 2 7.1.1 Statement regarding motion)(sam) (Entered: 11/03/2020)

No Summons Issued. (sam)

Remark: Case to be assigned to LPS per related cases. (sam)

Remark: Exit to Judge LPS. (sam)

Remark

No Summons Issued

SUMMONS Returned Executed by 3Shape Trios A/S, 3Shape A/S, 3Shape, Inc.. Align Technology, Inc. served on 11/3/2020, answer due 11/24/2020. (Levine, James Harry) (Entered: 11/04/2020)

Case Assigned to Judge Leonard P. Stark. Please include the initials of the Judge (LPS) after the case number on all documents filed. (rjb)

Case Assigned/Reassigned

MOTION for Pro Hac Vice Appearance of Attorney John M. Hughes, Joseph C. Smith, Jr., Jason C. Murray, Meg E. Fasulo, Mark L. Levine, Faye E. Paul, and Amy Gore - filed by Align Technology, Inc.. (Shaw, John) (Entered: 11/09/2020)

Order Setting Teleconference

Disclosure Statement pursuant to Rule 7.1: No Parents or Affiliates Listed filed by Align Technology, Inc.. (Shaw, John) (Entered: 11/12/2020)

ANSWERING BRIEF in Opposition re 4 MOTION for Temporary Restraining Order filed by Align Technology, Inc..Reply Brief due date per Local Rules is 11/19/2020. (Shaw, John) (Entered: 11/12/2020)

Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent 3Shape Holding A/S for 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 11/12/2020)

SO ORDERED, re 9 MOTION for Pro Hac Vice Appearance of Attorney John M. Hughes, Joseph C. Smith, Jr., Jason C. Murray, Meg E. Fasulo, Mark L. Levine, Faye E. Paul, and Amy Gore filed by Align Technology, Inc. Signed by Judge Leonard P. Stark on 11/12/20. (ntl)

SO ORDERED

MOTION for Pro Hac Vice Appearance of Attorney Goutam Patnaik - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Certification of Goutam Patnaik, Esq., # 2 Text of Proposed Order)(Levine, James Harry) (Entered: 11/13/2020)

MOTION for Pro Hac Vice Appearance of Attorney David J. Shaw - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Certification of David J. Shaw, Esq., # 2 Text of Proposed Order)(Levine, James Harry) (Entered: 11/13/2020)

MOTION for Pro Hac Vice Appearance of Attorney Kimberly E. Coghill - filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Certification of Kimberly E. Coghill, Esq., # 2 Text of Proposed Order)(Levine, James Harry) (Entered: 11/13/2020)

REPLY BRIEF re 4 MOTION for Temporary Restraining Order filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Attachments: # 1 Exhibit 13, # 2 Exhibit 14, # 3 Exhibit 15, # 4 Exhibit 16)(Levine, James Harry) (Entered: 11/13/2020)

ORAL ORDER: For the reasons stated during the teleconference today, IT IS HEREBY ORDERED that the motion for a temporary restraining order or preliminary injunction (D.I. 4 ) is DENIED. ORDERED by Judge Leonard P. Stark on 11/13/20. (ntl) (Entered: 11/13/2020)

Minute Entry for proceedings held before Judge Leonard P. Stark - Argument by Telephone Conference held on 11/13/2020. (Court Reporter B. Gaffigan.) (ntl)

Add Attorneys - PHV only

Order

Telephone Conference

SO ORDERED

OPENING BRIEF in Support re 19 MOTION to Dismiss Based upon Prior Ruling or MOTION to Stay Pending Texas Court's Decision on Transfer Motion filed by Align Technology, Inc..Answering Brief/Response due date per Local Rules is 12/8/2020. (Attachments: # 1 Exhibit 1)(Shaw, John) (Entered: 11/24/2020)

STIPULATION STAY OF PROCEEDINGS by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 12/08/2020)

~Util - Case Stayed AND SO ORDERED

SO ORDERED, re 21 Stipulated Stay of Proceedings filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. -- Case Stayed. Signed by Judge Leonard P. Stark on 12/9/20. (ntl)

NOTICE of Change of Law Firm Affiliation for Goutam Patnaik, Esq. by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. (Levine, James Harry) (Entered: 03/11/2021)

Add Attorneys - PHV only

Pro Hac Vice Attorney Goutam Patnaik for 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd)

NOTICE of Change of Law Firm Affiliation for David Shaw, Esq. by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc. (Levine, James Harry) (Entered: 03/25/2021)

NOTICE requesting Clerk to remove Goutam Patnaik and David J. Shaw of Desmarais LLP as co-counsel. Reason for request: No longer representing Plaintiffs 3Shape A/S, 3Shape Trios A/S and 3Shape, Inc.. (Levine, James Harry) (Entered: 04/23/2021)

Joint STIPULATION Of Partial Dismissal by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 05/10/2021)

NOTICE of Name Change of Faye E. Paul to Faye Paul Teller by Align Technology, Inc. (Shaw, John) (Entered: 05/28/2021)

NOTICE requesting Clerk to remove Faye Paul Teller as co-counsel.. (Shaw, John) (Entered: 01/21/2022)

STIPULATION And [Proposed] Order Staying Proceedings Pending Settlement by 3Shape A/S. (Levine, James Harry) (Entered: 02/09/2022)

SO ORDERED, re 28 STIPULATION And [Proposed] Order Staying Proceedings Pending Settlement filed by 3Shape A/S. Signed by Judge Leonard P. Stark on 2/14/22. (ntl) (Entered: 02/14/2022)

PROPOSED ORDER Dismissal -- Stipulated Order of Dismissal by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc.. (Levine, James Harry) (Entered: 03/02/2022)

Report to the Commissioner of Patents and Trademarks. (ntl) (Entered: 03/03/2022)

~Util - Terminate Civil Case AND SO ORDERED

SO ORDERED, re 30 Stipulated Order of Dismissal filed by 3Shape A/S, 3Shape Trios A/S, 3Shape, Inc., ***Civil Case Terminated. Signed by Judge Leonard P. Stark on 3/3/22. (ntl)

Track Case Updates

Align Technology, Inc.

3Shape, Inc.

3Shape Trios A/S

3Shape A/S