IPR2021-00329
`Patent 8,391,298
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`CISCO SYSTEMS, INC.
`
`Petitioner,
`v.
`ESTECH SYSTEMS, INC.,
`
`Patent Owner
`__________________
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,391,298
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`
`C. Matthew Rozier (Reg. No. 63,429)
`1550 Larimer Street, Suite 1067
`Denver, CO 80202
`
`WILLIAMS SIMONS & LANDIS PLLC
`
`-i-
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................ 1
`I.
`II. STATEMENT OF THE PRECISE RELIEF REQUESTED ................................ 2
`III.THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. ¶ 314(a) .............. 2
`A. Fintiv Factor # 5 (Identity of Parties) .............................................................. 3
`A. Fintiv Factors #2 and 3 (Trial Date Proximity to FWD and Investment in
`Parallel Proceedings) .......................................................................................... 7
`B. Fintiv Factor #4 (Issue Overlap) ...................................................................... 9
`C. Fintiv Factor #1 (Likelihood of Stay) ............................................................10
`D. Fintiv Factor #6 (Merits and Other Circumstances) ......................................11
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON ANY
`CHALLENGED CLAIM ....................................................................................12
`A. The ’298 Patent ..............................................................................................12
`B. Level of Ordinary Skill in the Art .................................................................20
`C. Claim Construction ........................................................................................20
`D. Ground 1 – The Combination of Ludwig and Reid Does Not Render
`Obvious Any of Claims 1-12 ............................................................................21
`1.Failure to Show a Motivation to Combine Ludwig and Ried .......................21
`2.Independent Claim 1 ......................................................................................22
`i. “wherein the list of the plurality of telecommunications extensions is
`stored in a server in the second LAN, and is accessed by the first circuitry
`across the WAN” ........................................................................................23
`ii.“the first LAN including circuitry for enabling the user to select between
`observing the list of the plurality of telecommunications extensions
`coupled to the second LAN or observing a list of the plurality of
`telecommunications extensions coupled to the third LAN” ......................28
`3.Dependent Claim 6 ........................................................................................29
`4.Independent Claim 8 ......................................................................................30
`E.Ground 2 – The Combination of Ludwig and Hori Do Not Render Obvious
`Any of Claims 1-12 ...........................................................................................30
`1.Failure to Show a Motivation to Combine Ludwig and Hori .......................30
`2.Independent Claim 1 ......................................................................................31
`
`

`

`i. “wherein the list of the plurality of telecommunications extensions is
`stored in a server in the second LAN, and is accessed by the first circuitry
`across the WAN” ........................................................................................32
`3.Dependent Claim 6 ........................................................................................35
`4.Independent Claim 8 ......................................................................................35
`F.Ground 3 – The Combination of Guy, Wilson, and Hori Do Not Render
`Obvious Any of Claims 1-12. ...........................................................................36
`1.Failure to Show a Motivation to Combine Guy, Wilson, and Hori ..............36
`2.Independent Claim 1 ......................................................................................37
`i. “wherein the list of the plurality of telecommunications extensions is
`stored in a server in the second LAN, and is accessed by the first circuitry
`across the WAN.” .......................................................................................37
`3.Dependent Claim 6 ........................................................................................40
`4.Independent Claim 8 ......................................................................................40
`G. Petitioner’s Grounds Should Be Denied As Being Horizontally Redundant 41
`V. CONCLUSION ...................................................................................................43
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Fintiv Inc,
` IPR2020- 00019, Paper 15 (PTAB May 13, 2020) ...................................... passim
`Apple Inc. v. Papst Licensing GmbH & Co. KG,
` IPR2016-01841, Paper 10 (Apr. 17, 2017) ..........................................................40
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
` Case IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ........................................40
`Apple Inc. v. Seven Networks, LLC,
` IPR2020-00506, Paper 11 (PTAB Sept. 1, 2020) .................................................. 8
`Cellco Partnership v. Huawei Tech., LLC,
` IPR2021-00086, Paper 12 (PTAB Mar. 22, 2021) ................................................. 9
`
`Cultec, Inc. v. StormTech LLC,
` IPR2017-00777, Paper 7 (PTAB Aug. 22, 2017) ................................................40
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
` IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) .................................................. 2
`Goertek, Inc. v. Knowles Elecs., LLC,
` IPR2013-00614, Paper 13, at 17 (PTAB Mar. 7, 2014) .......................................43
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
` IPR2012-00027, Paper 26 at 4-5 (PTAB June 11, 2013). ....................................42
`Kiosoft Tech., LLC v. Payrange, Inc.,
` IPR2021-00086, Paper 12 (PTAB Mar. 2, 2021) ................................................... 8
`Peag LLC v. Varta Microbattery GmbH,
` IPR2020-01212, Paper 8 (PTAB Jan. 6, 2021) ...................................................... 8
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
` CBM2012-00003, Paper 7 at 2 (PTAB Oct. 25, 2012) ................................. 42, 43
`Live Nation Entm’t, Inc. v. Complete Entm’t Res. B.V.,
` PGR2017-00038, Paper at 13-17 (PTAB Jan. 16, 2018) .....................................40
`Sand Revolution II, LLC, v. Continental Intermodal Group -- Trucking LLC,
`
`-iv-
`
`

`

` Paper 24 (PTAB June 16, 2020). ............................................................................ 6
`Sotera Wireless, Inc. v. Masimo Corp.,
` IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ................................................... 6
`
`Schul Int’l Co., LLC v. Emseal Joint Sys., Ltd.,
` PGR2017-00053, Paper 10 (PTAB Apr. 9, 2018)................................................40
`TQ Delta, LLC v. Cisco Sys.,
` 942 F.3d 1352 (Fed. Cir. 2019) ..................................................................... 28, 36
`Valve Corp. v. Elec. Scripting Prods., Inc.,
` IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) ................................................... 5
`
`Statutes
`35 U.S.C. ¶ 314(a) ...................................................................................................... 1
`35 U.S.C. § 311(b) ...................................................................................................19
`35 U.S.C. § 314(b)(1)...........................................................................................8, 11
`37 C.F.R. § 42.6(a)(3) ..............................................................................................20
`
`

`

`EXHIBIT LIST
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-00123-
`JRG (Lead Case), (E.D. Tex.) (Dkt. No. 66, Docket Control Order)
`
`Estech Systems, Inc. v. Regions Financial Corporation, C.A. No.
`Case 6:20-cv-00322-ADA, (W.D. Tex.) (Dkt. No. 40, Docket
`Control Order)
`
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-00123-
`JRG (Lead Case), (E.D. Tex.) (Served Expert Report of Dr. Shukri
`Souri Regarding Invalidity of The Asserted Patents)
`
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-00123-
`JRG (Lead Case), (E.D. Tex.) (Served Invalidity Contentions)
`
`White House, Fact Sheet: President Biden Announces New Steps to
`Boost Vaccine Supply and Increase Transparency for States, Tribes,
`Territories, Whitehouse.com
`(Feb.
`15,
`2021),
`and
`https://www.whitehouse.gov/briefing-room/statementsreleases/
`2021/01/26/fact-sheet-president-biden-announces-newsteps-to-
`boost-vaccine-supply-and-increase-transparency-forstates-tribes-
`and-territories (last visited April 6, 2021)
`
`Solas OLED Ltd., v. Samsung Display Co. Ltd., Samsung
`Electronics Co., Ltd., and Samung Electronics America, Inc., C.A.
`No. 2:19-CV-00152-JRG (E.D. Tex.) (Dkt. No. 341, Jury Verdict
`Dated March 8, 2021)
`
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-00123-
`JRG (Lead Case), (E.D. Tex.) (Pacer Docket)
`
`Estech Systems, Inc. v. Regions Financial Corporation, C.A. No.
`Case 6:20-cv-00322-ADA, (W.D. Tex.); Estech Systems, Inc. v.
`Private Jets, Inc., C.A. No. Case 6:20-cv-00320-ADA), (W.D.
`Tex.); Estech Systems, Inc. v. Energy Transfer LP, C.A. No. Case
`6:20-cv-00773-ADA), (W.D. Tex.); Estech Systems, Inc. v. HWC
`Wire & Cable Company, C.A. No. Case 6:20-cv-00776-ADA),
`(W.D. Tex.); Estech Systems, Inc. v. Howard Midstream Energy
`
`-vi-
`
`

`

`Partners, LLC, C.A. No. Case 6:20-cv-00777-ADA), (W.D. Tex.);
`Estech Systems, Inc. v. SWBC Mortgage Corporation, et al., C.A.
`No. Case 6:20-cv-00778-ADA), (W.D. Tex.) (Pacer Dockets)
`
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-00123-
`JRG (Lead Case), (E.D. Tex.) (Dkt. No. 1, Complaint)
`
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-00123-
`JRG (Lead Case), (E.D. Tex.) (Dkt. No. 50, Notice of Appearance
`of Counsel (B. Weed))
`
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-00123-
`JRG (Lead Case), (E.D. Tex.) (Dkt. No. 92, Notice of Appearance
`of Counsel (B. Weed))
`
`2009
`
`2010
`
`2011
`
`2012
`
`Declaration of Vijay K. Madisetti, Ph.D.
`
`

`

`I.
`
`INTRODUCTION
`Estech Systems, Inc. (“Patent Owner”) respectfully submits this Preliminary
`
`Response (the “Response”) to Cisco Systems, Inc.’s (“Cisco” or “Petitioner”)
`
`Petition for Inter Partes Review No. IPR2021-00329 (Paper 1) (the “Petition” or
`
`“Pet.”) of U.S. Patent No. 8,391,298 (the “’298 patent”).
`
`The Board should exercise its discretionary power to deny institution under
`
`35 U.S.C. ¶ 314(a) because two separate litigations will be decided by a jury before
`
`any final written decision (“FWD”) would issue on the Petition—the first eleven
`
`months before any FWD and the second seven months before any FWD. See Apple
`
`Inc. v. Fintiv Inc. (“Fintiv”), IPR2020- 00019, Paper 15 at 13, 17 (PTAB May 13,
`
`2020) (precedential) (denying institution where trial in parallel proceeding was
`
`scheduled to begin two months before final written decision); Ex. 2001; Ex. 2002.
`
`In the first litigation, Petitioner has proffered an invalidity report from the
`
`same expert, Dr. Souri, challenging the same claims based on the same prior art
`
`presented in the Petition, and expert depositions regarding validity will occur days
`
`after this Response s filed. See Ex. 2003. No stay has been requested during the
`
`year that case has been pending. See Ex. 2007. By the statutory date for decision
`
`on institution of the Petition on July 13, 2021, claim construction, fact discovery,
`
`expert discovery, and the pretrial conference will be completed in the first litigation.
`
`Instituting trial on this Petition will not serve as an “effective and efficient
`
`-1-
`
`

`

`alternative” to litigation, frustrating a primary objective of the AIA. Gen. Plastic
`
`Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16-17
`
`(PTAB Sept. 6, 2017) (precedential).
`
`Institution should also be denied because the Petition has failed to demonstrate
`
`a reasonable likelihood that any claim of the ’298 patent is unpatentable because
`
`each ground presented in the Petition fails to disclose or suggest key limitations of
`
`the challenged claims. For these reasons, institution should be denied.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Patent Owner requests that the Board deny institution of the Petition with
`
`respect to all challenged claims and all asserted grounds. A full statement of the
`
`reasons for the relief requested is set forth in Sections III and IV of this Response.
`
`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. ¶ 314(a)
`The Board should exercise its discretion to deny the Petition because every
`
`Fintiv factor favors denial.1 The claims, references, combinations of references, and
`
`invalidity grounds presented by this Petition are exactly the same as those presented
`
`by Petitioner in parallel district court proceedings involving the same parties.2 By
`
`the time an institution decision is issued, claim construction, fact discovery, and
`
`1 See Fintiv, Paper 11 (setting out and applying the six factors).
`2 As detailed below, while Petitioner is not a named party in the EDTX or WDTX
`litigations, by all evidence it is directing and funding the defense against Patent
`Owner’s claims in those proceedings. Petitioner has therefore placed itself in
`substantially the same posture as if it was a named defendant.
`
`

`

`expert discovery will already be completed. Ex. 2003. Trial in the related Eastern
`
`District of Texas (“EDTX”) litigation involving the ’298 patent is scheduled for trial
`
`on August 2, 2021—eleven months before the statutory date for a FWD in this
`
`proceeding. See Ex. 2001. A second litigation in the Western District of Texas
`
`(“WDTX”) involving the ’298 patent is scheduled for trial on December 7, 2021,
`
`approximately seven months before the statutory date for a FWD in this proceeding.
`
`See, e.g., Ex. 2002. The timing of the parallel district court trials is a direct result of
`
`Petitioner’s delay in filing the Petition. The Petition was filed eight months after the
`
`EDTX litigation began and five months after its counsel entered an appearance in
`
`that litigation. The Petition is likely to fail on the merits, as each upatentability
`
`ground presented fails to disclose or suggest key limitations of the challenged
`
`claims.
`
`A.
`
`Fintiv Factor # 5 (Identity of Parties)
`
`Petitioner’s discretionary denial arguments are premised on the assertion that
`
`it is “not a party to any litigation regarding the invalidity of the ’298 Patent.” Pet.,
`
`p. 10. Based on this assertion, Petitioner urges the Board to ignore those litigations
`
`because Petitioner “deserves to be heard regarding the invalidity of the ’298 Patent.”
`
`Id. However, while it is true that Petitioner is not a named defendant in the parallel
`
`EDTX and WDTX litigations, there is no reasonable doubt that Petitioner is
`
`directing and controlling defense of those proceedings, including the invalidity
`
`

`

`challenges presented therein, and has chosen not to formally intervene in those
`
`proceedings in a thinly veiled and cynical attempt to convince the Board that this
`
`Petition is the only method by which it can challenge the patentability of the ’298
`
`Patent.
`
`The same counsel representing Petitioner before the Board also represents
`
`eight defendants in the EDTX and WDTX litigations and has identified those eight
`
`defendants as real parties-in-interest for purposes of this Petition. Compare Pet., pp.
`
`v-vi with Ex. 2001and Ex. 2002. Petitioner commissioned the same expert relied
`
`upon here to prepare a report challenging the validity of the ’298 patent in the EDTX
`
`litigation and that report was served on Patent Owner by the EDTX defendants. Ex.
`
`2003 at p. 3 (“Exponent, Inc.(‘Exponent’) has been retained by K&L Gates, LLP
`
`('K&L Gates’) on behalf of Cisco System[s], Inc. (“Cisco”) . . . .”).3 Petitioner’s
`
`counsel also submitted invalidity contentions in the parallel litigations on behalf of
`
`six of those defendants. See Ex. 2004. While a remote possibility may exist that the
`
`eight district court defendants each made the decision to retain the same attorney and
`
`the same law firm for the litigations and to hire that same attorney and firm to file
`
`3 The report states that the expert was retained by “Cisco System, Inc.,” but to Patent
`
`Owner’s knowledge there is no such entity, and the use of “System” instead of
`
`“Systems” is a typographical error in the report.
`
`

`

`this Petition, the more logical conclusion is that Cisco, through its counsel at K&L
`
`Gates LLP, is funding, directing, and controlling defense of the litigations. At a bare
`
`minimum, there is a significant relationship between Petitioner and the EDTX
`
`defendants as it pertains to the validity of the ’298 patent and the challenges thereto
`
`in the EDTX litigation. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-
`
`00062, Paper 11 at 9-10 (PTAB Apr. 2, 2019) (precedential)) (denying institution
`
`where there was a “significant relationship between Valve and HTC” with respect
`
`to the challenged patent that weighed in favor of discretionary denial.). Indeed, the
`
`Petition notably avoids any representation that Cisco and its attorneys are not
`
`directing and controlling the litigations, merely stating that Cisco “is not a party.”
`
`Pet., p. 10.
`
`Petitioner’s carefully worded statement that “if IPR is instituted, [Petitioner]
`
`will not pursue in [any] District Court Litigation [with Patent Owner] any ground
`
`raised or that could have been reasonably raised in an IPR” is meaningless. See Pet.,
`
`p. 13. The eight the real parties-in-interest to this Petition, six of whom are EDTX
`
`defendants, have not agreed to such any such stipulation. Cisco is pursuing every
`
`unpatentability ground raised in the Petition in the parallel EDTX litigation through
`
`its direction and control of the defense of six defendants, as evidenced by the expert
`
`report it commissioned to support those defendants and the common counsel
`
`between the two proceedings. Cisco’s stipulation is therefore meaningless—even if
`
`

`

`the Petition were instituted, Cisco would be free to continue pursing the same
`
`unpatentability arguments through the EDTX real-parties-in-interest. Moreover,
`
`Petitioner has not made the broad stipulation recommended by the precedential Sand
`
`Revolution and Sotera decisions, which require a stipulation that Petitioner would
`
`not pursue in the litigation “any ground raised or that could have been reasonably
`
`raised” in the Petition. See Sotera Wireless, Inc. v. Masimo Corp. (“Sotera”),
`
`IPR2020-01019, Paper 12, pp. 18-19 (PTAB Dec. 1, 2020); Sand Revolution II,
`
`LLC, v. Continental Intermodal Group -- Trucking LLC (“Sand Revolution”), Paper
`
`24, fn. 12 (PTAB June 16, 2020).
`
`In short, all evidence indicates that Petitioner is directing, funding, and
`
`controlling the invalidity challenges in those cases, and has thereby voluntarily
`
`placed itself in the shoes of the eight EDTX and WDTX defendants that are real
`
`parties-in-interest to the Petition. While Petitioner is free to proceed with its chosen
`
`approach, Patent Owner respectfully submits that the Board, in considering “whether
`
`efficiency, fairness, and the merits support the exercise of authority to deny
`
`institution” of the Petition, should analyze the Fintiv factors based on the near-
`
`certainty that Petitioner is currently challenging the claims of the ’298 patent in the
`
`EDTX litigation on substantially the same unpatentability grounds presented in the
`
`Petition. Viewed in that light, Fintiv factor 5 weighs heavily in favor of discretionary
`
`denial.
`
`

`

`Moreover, Fintiv factor 5 would weigh in favor of denial even if Petitioner
`
`were completely uninvolved in the EDTX litigation. Fintiv instructs that “[e]ven
`
`when a petitioner is unrelated to a defendant, however, if the issues are the same as,
`
`or substantially similar to, those already or about to be litigated, or other
`
`circumstances weigh against redoing the work of another tribunal, the Board may,
`
`nonetheless, exercise the authority to deny institution.” See Fintiv, IPR2020- 00019,
`
`Paper 11 at 14 (PTAB Mar. 20, 2020). Petitioner’s direction and control of the
`
`defense of the litigations and submission in the EDTX litigation of an expert report
`
`that exactly matches the grounds raised in the Petition weigh against redoing the
`
`work of the EDTX court. Cisco’s assertion that this Petition is the only vehicle by
`
`which it can challenge patentability of the ’298 patent is simply untrue.
`
`Fintiv factor 5 weighs heavily in favor of denial. The remaining factors also
`
`weigh in favor of denial, especially considering that Petitioner has made itself a de
`
`facto party to the district court litigations.
`
`A.
`
`Fintiv Factors #2 and 3 (Trial Date Proximity to FWD and
`Investment in Parallel Proceedings)
`As noted above, the parallel litigations are at an advanced stage. The EDTX
`
`litigation is scheduled to be tried to a jury eleven months before any FWD would
`
`issue from the Petition. Ex. 2001. A decision on institution for this Petition is
`
`expected on July 13, 2021 (see 35 U.S.C. § 314(b)(1)). Well before that date, fact
`
`and expert discovery will have been completed in the EDTX litigations (March 12,
`
`

`

`2021 and April 16, 2021, respectively), the pretrial conference will have occurred
`
`(June 29, 2021), and the parties will be preparing for the trial scheduled for August
`
`2021. Id. Validity expert reports have been served and validity expert depositions
`
`are being conducted the very week this Response is being filed with the Board.
`
`Several recent Board decisions found this factor to weigh in favor of denial when
`
`the scheduled trial date would precede the FWD by less than the eleven-month
`
`difference here. See, e.g., Kiosoft Tech., LLC v. Payrange, Inc., IPR2021-00086,
`
`Paper 12 (PTAB Mar. 2, 2021) (five months); Peag LLC v. Varta Microbattery
`
`GmbH, IPR2020-01212, Paper 8 at 22–23 (PTAB Jan. 6, 2021) (seven months);
`
`Apple Inc. v. Seven Networks, LLC, IPR2020-00506, Paper 11 at 9 (PTAB Sept. 1,
`
`2020) (ten months). And each of those decisions was issued before the recent
`
`acceleration in COVID-19 vaccine progress, which resolve Petitioner’s concerns
`
`that not enough of the population would be vaccinated by December 2021 to conduct
`
`a jury trial. See Ex. 2005 (announcing that the presidential administration expects
`
`that every American willing to be vaccinated will be able to do so by the end of May
`
`2021); Pet., p. 11. The WDTX trial, which also involves validity challenges to the
`
`’298 patent, will be tried to a jury seven months before any FWD here. See Ex.
`
`2002.
`
`The Honorable Judge Gilstrap, the presiding judge in the EDTX litigation, has
`
`already resumed holding jury trials, including a recent patent trial which concluded
`
`

`

`on March 8, 2021. See Ex. 2006. Even if trial were slightly delayed, there is no
`
`evidence to suggest that such potential delay would extend more than eleven months.
`
`The Board generally takes a court’s trial schedule at face value absent strong
`
`contradictory evidence, which does not exist here. See, e.g., Fintiv, IPR2020-00019,
`
`Paper 15 at 13; see also Cellco Partnership v. Huawei Tech., LLC, IPR2021-00086,
`
`Paper 12 (PTAB Mar. 22, 2021).
`
`Because the exact issues presented by the Petition will almost certainly be
`
`tried to at least one jury well before any FWD would issue on the Petition, and
`
`because two different courts, Petitioner on behalf of itself and several defendants,
`
`multiple other defendants, and Patent Owner will have invested enormous resources
`
`into the parallel litigations even before a decision on institution, Fintiv factors 2 and
`
`3 weigh heavily in favor of discretionary denial.
`
`Fintiv Factor #4 (Issue Overlap)
`B.
`Each and every unpatentability challenge presented in the Petition is also
`
`being pursued by Petitioner Cisco in the copending EDTX litigation through the
`
`customers whose defense Cisco is directing and controlling. Indeed, Petitioner
`
`commissioned an invalidity report from the same expert, Dr. Souri, challenging the
`
`same claims based on the same prior art presented in the Petition, and that expert
`
`report is being relied upon by the EDTX defendants. Ex. 2003 at p. 3. The Invalidity
`
`Contentions submitted in the EDTX litigation by Petitioner’s counsel on behalf of
`
`

`

`Target Corporation, PlainsCapital Bank, BOKF National Association, BBVA USA,
`
`Wells Fargo & Company, and Wells Fargo Bank, N.A. challenge claims 1-5 and 7-
`
`12 of the ’298 patent based on the exact same combinations presented in Grounds 1-
`
`3 in the Petition. Compare Ex. 2004, Exs. E and F with Pet., p. 8. The Petition does
`
`not allege otherwise and, indeed, does not address issue overlap in its analysis of the
`
`Fintiv factors. The exact same unpatentability issues will therefore be decided by a
`
`jury eleven months before any FWD would issue from the Petition. Ex. 2001 This
`
`factor weighs heavily in favor of discretionary denial and, indeed, should be
`
`dispositive—the Board should not waste its finite resources evaluating the exact
`
`same issues that will be decided in parallel district court proceedings by the same
`
`parties nearly a year before any FWD would issue.
`
`Fintiv Factor #1 (Likelihood of Stay)
`C.
`This factor weighs heavily in favor of denial. None of the defendants in the
`
`copending litigations, including the eight defendants that Cisco’s counsel is actively
`
`defending in those litigations, have requested a stay even though the earliest case
`
`against those defendants was filed over eleven months ago on April 24, 2020. See
`
`Ex. 2007 and Ex. 2008. Any later-filed stay will almost certainly be denied due to
`
`the advanced stage of the litigations. A decision on institution for this Petition is
`
`expected on July 13, 2021 (see 35 U.S.C. § 314(b)(1)). Before that date, claim
`
`construction, fact and expert discovery, and the pretrial conference will already be
`
`

`

`completed in the EDTX litigations, and the parties will be preparing for trial. Even
`
`if the trial were somewhat delayed, it is a near certainty that the invalidity issues
`
`raised by the Petition will be decided by a jury well before any FWD on this Petition
`
`would issue in July 2022.
`
`Because there is a near-zero possibility that the district court cases will be
`
`stayed pending resolution of this Petition, this factor weighs heavily in favor of
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`denial.
`
`Fintiv Factor #6 (Merits and Other Circumstances)
`D.
`As detailed below, the Petition does not disclose or suggest key limitations of
`
`each of the challenged claims, and therefore does not establish a reasonable
`
`likelihood that the Petitioner would prevail with respect to at least one of the claims
`
`challenged in the Petition. The record also raises the possibility that Petitioner has
`
`gone to elaborate lengths to create the illusion that it is not integrally involved in the
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`parallel litigations to circumvent the Board’s discretionary denial precedent.
`
`Petitioner should be treated as if it is a de facto party to those litigations and its
`
`attempts to obscure its involvement should go unrewarded. Moreover, any timing
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`issues complained of by Petitioner are of its own making. Petitioner delayed filing
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`this Petition for seven months after the first district court complaint was filed, and
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`five months after Petitioner’s counsel, Mr. Weed, entered an appearance in the
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`EDTX litigation to being Cisco’s defense of the defendants identified as real-parties-
`
`

`

`in-interest to the Petition. See Ex. 2009; Ex. 2010; Ex. 2011. The Board should
`
`exercise its discretionary power to deny the Petition.
`
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON ANY
`CHALLENGED CLAIM
`As detailed below, the Petition fails to demonstrate a reasonable likelihood
`
`that the Petitioner would prevail with respect to any claim of the ’298 patent. The
`
`Petition challenges independent claims 1 and 8 based on three grounds, two that rely
`
`on Ludwig as a primary reference and one that relies primarily on the combination
`
`of Guy and Wilson, a combination that was considered and applied during original
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`prosecution of the ’298 patent. But none of the grounds establish that either Ludwig
`
`or Guy—alone or in combination with Reid, Hori, or Wilson—would have rendered
`
`obvious claims 1 or 8 or the remaining challenged claims, all of which depend from
`
`and add limitations to those claims.
`
`The ’298 Patent
`A.
`The ‘298 patent was filed on May 29, 2003, and issued on March 5, 2013. It
`
`is a continuation-in-part of U.S. App. No. 09/775,018, which was filed on February
`
`1, 2001, and issued as U.S. Patent No. 7,068,684 (“the ’684 patent”). The ‘298
`
`patent is titled “Phone Directory in a Voice Over IP Telephone System.” The
`
`Abstract of the ‘298 patent provides an overview of the claimed subject matter: “In
`
`a Voice over IP system, a user can dial numbers stored in a series of lists, which are
`
`stored in the system and displayed to the user of an IP telephone. One
`
`

`

`implementation will allow a user to scroll through a list of remote sites. When the
`
`user finds the desired site, the user is then presented with the same options as a user
`
`local to that site. All of this can be performed without the need for an operator or a
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`printed directory. This system provides an ability for a user to scroll through a list
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`of names and phone numbers and then call a person once their name and phone
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`number is displayed.” Ex. 1001, Abstract.
`
`The invention of the ‘298 patent can be used in a network architecture
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`consisting of LANs interconnected by a WAN, an example of which is depicted in
`
`Figure 3. See id. at 2:3-4.4
`
`4 A citation of 2:2-4 refers to column 2, lines 3-4. This citation format is used
`throughout the Response.
`
`

`

`Ex. 1001, Fig. 3.
`“An embodiment of the present invention permits a user at a remote site to
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`easily scroll through a phone listing of users through the WAN 201.” Id. at 9:53-55.
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`The phone listing can be displayed to the user or the phone listing can be vocally
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`listed to a user. See id. at 9:66-10:4. In some embodiments, the listing can be limited
`
`to the same LAN as the user, or listing from other LANs that are connected via a
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`WAN. See id. at 9:55-59, Fig. 11. The user can automatically dial the number of an
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`individual listing by, for example, pressing a button on a VoIP telephone. See id. at
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`9:60-64, Fig. 11.
`
`

`

`Petitioner contends that the ‘298 patent is not entitled to a priority date of
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`February 1, 2001 and has instructed Dr. Sourit that the priority date is May 29, 2003.
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`Pet., p. 2; Ex. 1002, ¶37. However, the disclosure of U.S. Patent Application No.
`
`09/775,018 makes it clear that the inventors of the ‘298 patent possessed as of
`
`February 1, 2001, the invention recited in the claims of the ’684 patent. The
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`challenged claims of the ’298 patent are supported by at least the following
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`disclosures in the specification of U.S. Patent Application No. 09/775, 018:5
`
`Claim
`
`Support in U.S. Patent Application
`No. 09/775,018 (’684 Patent)
`Claim 1
`1[pre] An information handling system
`Figs. 1-3.
`comprising:
`1[a] a first local area network
`(“LAN”);
`1[b] a second LAN;
`1[c] a wide area network (“WAN”)
`coupling the first LAN to the second
`LAN;
`1[d] a third LAN coupled to the first
`and second LANs via the WAN;
`1[e] a first telecommunications device
`coupled to the first LAN;
`
`4:54-58, Figs. 1-3.
`
`4:54-58, Figs. 1-3.
`
`4:54-58, Figs. 1-3.
`
`4:54-58, Figs. 1-3.
`
`4:54-58, Figs. 1-3.
`
`5 Reference to a figure includes the accompanying text in the specification referring to, descri