`
`
`May 11, 2021
`
`
`
`
`By E-mail
`Todd E. Landis
`
`WILLIAMS SIMONS & LANDIS PLLC - AUSTIN
`327 Congress Ave., Suite 490
`Austin, TX 78701
`EstechCounsel@wsltrial.com
`
`Re:
`
`Erik J. Halverson
` erik.halverson@klgates.com
`
`T +1 312 807 4240
`F +1 312 827 8000
`
`Estech Systems, Inc. v. Target Corp. et al., Case No. 2:20-cv-00123-JRG-RSP (Lead
`Case) (the “EDTX Litigations”) and Estech Systems, Inc. v. Regions Financial
`Corp., Case No. 6:20-cv-00322 (the “WDTX Litigation”) - Stipulations Regarding
`Challenged Patents
`
`Dear Counsel:
`
`I write on behalf of the Defendants (as defined below) with regard to petitions for Inter
`Partes review (“IPR”) that have been filed against U.S. Patent Nos. 8,391,298, 7,068,684,
`6,067,349, and 7,123,699 (collectively, the “Challenged Patents”) by Petitioner Cisco Systems,
`Inc. (“Cisco”). Specifically, the defendants in the Eastern District of Texas litigations filed by
`Estech Systems, Inc. against Target Corporation, PlainsCapital Bank, BOKF, N.A., Wells Fargo
`& Company and Wells Fargo Bank, N.A., and BBVA USA, (collectively, the “EDTX Defendants”)
`and Regions Financial Corporation (the “WDTX Defendant”, together with the EDTX Defendants,
`the “Defendants”) in the WDTX Litigation (collectively, the “Litigation”) stipulate as follows:
`
`(cid:120)
`
`(cid:120)
`
`If the Patent Trial and Appeal Board ("PTAB") institutes an IPR on the grounds
`presented in IPR2021-00329 (which challenges certain claims of U.S. Patent No.
`8,391,298 and lists only the following as Real Parties-in-Interest: Cisco Systems,
`Inc., BBVA USA, BOKF, N.A., PlainsCapital Bank, Target Corp., Wells Fargo
`Bank, N.A., Wells Fargo & Co., and Regions Financial Corporation) and the
`proceeding has not been terminated before a final written decision, the
`Defendants will not present any ground of invalidity that was raised or reasonably
`could have been raised in the as-filed Petition.
`
`If the PTAB institutes an IPR on the grounds presented in IPR2021-00331 (which
`challenges certain claims of U.S. Patent No. 7,068,684 and lists only the following
`as Real Parties-in-Interest: Cisco Systems, Inc., BBVA USA, BOKF, N.A.,
`PlainsCapital Bank, Target Corp., Wells Fargo Bank, N.A., Wells Fargo & Co., and
`
`K&L GATES LLP
`70 W. MADISON ST. SUITE 3100 CHICAGO IL 60602
`T +1 312 372 1121 F +1 312 827 8000 klgates.com
`
`
`
`
`Page 1 of 2
`
`CISCO EXHIBIT 1025
`Cisco Systems v. Estech
`IPR2021-00329
`
`

`

`Regions Financial Corporation) and the proceeding has not been terminated
`before a final written decision, the Defendants will not present any ground of
`invalidity that was raised or reasonably could have been raised in the as-filed
`Petition.
`
`(cid:120)
`
`(cid:120)
`
`If the PTAB institutes an IPR on the grounds presented in IPR2021-00332 (which
`challenges certain claims of U.S. Patent No. 6,067,349 and lists only the following
`as Real Parties-in-Interest: Cisco Systems, Inc., BBVA USA, BOKF, N.A,.
`PlainsCapital Bank, Target Corp., Wells Fargo Bank, N.A., Wells Fargo & Co., and
`Regions Financial Corporation) and the proceeding has not been terminated
`before a final written decision, the Defendants will not present any ground of
`invalidity that was raised or reasonably could have been raised in the as-filed
`Petition.
`
`If the PTAB institutes an IPR on the grounds presented in IPR2021-00333 (which
`challenges certain claims of U.S. Patent No. 7,123,699 and lists only the following
`as Real Parties-in-Interest: Cisco Systems, Inc., BBVA USA, BOKF, N.A.,
`PlainsCapital Bank, Target Corp., Wells Fargo Bank, N.A., Wells Fargo & Co., and
`Regions Financial Corporation) and the proceeding has not been terminated
`before a final written decision, the Defendants will not present any ground of
`invalidity that was raised or reasonably could have been raised in the as-filed
`Petition.
`
`In so stipulating, the Defendants seek to avoid multiple proceedings addressing the validity
`of the Challenged Patents based on grounds of invalidity that Cisco seeks to adjudicate before
`the PTAB. Rather, consistent with Congressional intent, the Defendants wish to avail themselves
`of the PTAB’s analysis and decision regarding the prior art and patentability at issue in the above-
`referenced proceedings should such proceedings be instituted and non-party Petitioner Cisco
`Systems Inc. maintains such proceedings. For the sake of clarity and avoidance of doubt, if the
`PTAB declines to institute in any of the above-referenced four IPRs, the Defendants reserve their
`rights and remedies to pursue the grounds from such denied petition(s) in the Litigation, as well
`as any ground that reasonably could have been raised in such denied petition(s). For further sake
`of clarity, the Defendants reserve their rights to file requests for joinder to maintain any
`proceedings should non-party Petitioner Cisco Systems, Inc. seek to terminate any of the above-
`referenced proceedings.
`
`
`Best regards,
`
`
`
`Erik J. Halverson
`CC: Counsel of Record
`
`
`
`2
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`Page 2 of 2
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`CISCO EXHIBIT 1025
`Cisco Systems v. Estech
`IPR2021-00329
`
`