`UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`Cisco Systems, Inc.
`Petitioner
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`v.
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`Estech Systems, Inc.
`Patent Owner
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`_____________________
`CASE: IPR2021-00329
`U.S. PATENT NO. 8,391,298
`_____________________
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`PETITIONER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`List of Exhibits
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`Ex. 1001: U.S. Patent No. 8,391,298 to Suder et al. (“the ’298 Patent”)
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`Ex. 1002: Declaration of Dr. Shukri Souri
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`Ex. 1003: File History of U.S. Patent Application No. 10/447,607
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`Ex. 1004: File History of U.S. Patent Application No. 09/775,018
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`Ex. 1005: Curriculum Vitae of Dr. Shukri Souri
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`Ex. 1006: U.S. Patent No. 5,689,641 to Ludwig et al. (“Ludwig”)
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`Ex. 1007: U.S. Patent No. 6,131,120 to Reid (“Reid”)
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`Ex. 1008: U.S. Patent No. 6,298,057 to Guy et al. (“Guy”)
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`Ex. 1009: U.S. Patent No. 6,829,231 to Wilson et al. (“Wilson”)
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`Ex. 1010: U.S. Patent No. 6,845,096 to Hori et al. (“Hori”)
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`Ex. 1011: U.S. Patent No. 7,068,684 to Suder et al. (“Suder”)
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`Ex. 1012: U.S. Patent No. 6,654,722 to Aldous et al. (“Aldous”)
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`Ex. 1013: U.S. Patent No. 6,104,711 to Voit (“Voit”)
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`Ex. 1014:
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`[Reserved]
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`Ex. 1015: Weinstein, Experience with Speech Communication in Packet
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`Networks (IEEE Dec. 1983)
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`Ex. 1016:
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`[Reserved]
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`Ex. 1017:
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`[Reserved]
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`Ex. 1018:
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`[Reserved]
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`1
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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`Ex. 1019: Katie Buehler, “Texas Patent Trials Halted Due to COVID-19 Spike,”
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`Law360, available at
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`https://www.law360.com/articles/1330855/texas-patent-trials-halted-
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`due-to-covid-19-spike (Nov. 20, 2020)
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`Ex. 1020: Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
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`Discretionary Denials, available at
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`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-
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`slip-afterptab-discretionary-denials/ (Jul. 24, 2020)
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`Ex. 1021: Estech Reply Claim Construction Brief, Estech Systems, Inc. v.
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`Regions Financial Corporation, WDTX-6-20-cv-00322, Dkt. 52
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`(December 9, 2020)
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`Ex. 1022: Opposition to Motion to Amend Infringement Contentions in Estech
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`v. Wells Fargo et al., EDTX-2-20-cv-00123 (Dkt. No. 61) (August 3,
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`2020)
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`Ex. 1023: Preliminary Claim Constructions, Estech Systems, Inc. v. Regions
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`Financial Corporation, WDTX-6-20-cv-00322 (via email to the
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`parties) (January 21, 2021)
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`Ex. 1024: Order Adopting Preliminary Claim Constructions, Estech Systems,
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`Inc. v. Regions Financial Corporation, WDTX-6-20-cv-00322, Dkt.
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`57 (January 22, 2021)
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`2
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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`Pursuant to 37 C.F.R. § 42.8, Petitioner Cisco Systems, Inc. (“Petitioner”)
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`submits the following updated mandatory notices as required by subsection (b)(2).
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`Related Matters (37 C.F.R. § 42.8(b))
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`Petitioner hereby updates its mandatory notices as to judicial or administrative
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`matters that would affect, or be affected by, a decision in this proceeding as follows:
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`As noted in the Petition (Paper 2), there are several proceedings (including the
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`Western District of Texas) that would affect, or be affected by, a decision in this
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`proceeding. (See generally, Paper 2 at vi-viii). Petitioner specifically identifies the
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`following proceeding as one that would affect a decision in this proceeding:
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` Estech Systems, Inc. v. Regions Financial Corporation, WDTX-6-20-cv-
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`00322 (“Regions Matter”)
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`In the Regions Matter, Judge Albright held a Markman hearing regarding the
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`’298 Patent on January 22, 2021. The day before, on January 21, 2021, Judge
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`Albright issued a preliminary Markman order via email (Ex. 1023). After the
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`hearing, Judge Albright confirmed via minute entry (Ex. 1024) that the preliminary
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`constructions were to be adopted. Petitioner notes that the Petition applied the
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`constructions ultimately adopted by Judge Albright.
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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`Respectfully submitted by,
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`
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`K&L GATES LLP,
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`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`K&L GATES LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`benjamin.weed.PTAB@klgates.com
`T: (312) 781-7166
`F: (312) 827-8152
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`By:
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`Dated: January 29, 2021
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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 29, 2021, I caused a true and correct copy of
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`the foregoing to be served on the following counsel for Patent Owner by electronic
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`mail to the following email addresses:
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`
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`
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`Todd E. Landis (Reg. No. 44,200)
`John Wittenzellner (Reg. No. 61,662)
`C. Matthew Rozier (Reg. No. 61,662)
`Chad Ennis (Reg. No. 60,587)
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`estechcounsel@wsltrial.com
`johnw@wsltrial.com
`mrozier@wsltrial.com
`cennis@wsltrial.com
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`
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`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`K&L GATES LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`benjamin.weed.PTAB@klgates.com
`T: (312) 781-7166
`F: (312) 827-8152
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`By:
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`5
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