throbber
Paper 13
`Trials@uspto.gov
`Entered: July 6, 2021
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`
`ESTECH SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2021-00329
`Patent 8,391,298 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`
`I. INTRODUCTION
`Cisco Systems, Inc. (“Petitioner” or “Cisco”) filed a Petition (Paper 2,
`“Pet.”) requesting an inter partes review of claims 1–5 and 7–12 (“the
`challenged claims”) of U.S. Patent No. 8,391,298 B2 (Ex. 1001, “the
`’298 patent”). Patent Owner, Estech Systems, Inc., filed a Corrected
`Preliminary Response (Paper 9, “Prelim. Resp.”).1
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`The Board, however, has discretion to deny a petition even when a
`petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a
`petition is a matter committed to the Patent Office’s discretion.”); NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential).
`For the reasons that follow, we exercise our discretion under
`35 U.S.C. § 314(a) to deny institution of inter partes review.
`
`
`
`
`1 We authorized filing of a Corrected Preliminary Response providing page
`numbering omitted from the original preliminary response (Paper 8).
`
`2
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`
`II. BACKGROUND
`A. Real Parties-in-Interest
`Petitioner identifies as real parties-in-interest itself (Cisco Systems,
`Inc.) and the following seven entities: BBVA USA; BOKF NA;
`PlainsCapital Bank; Target Corp.; Wells Fargo Bank; Wells Fargo Corp.;
`and Regions Financial Corporation. Pet. v. Referring to pending
`infringement litigations involving the ’298 patent, Petitioner explains:
`“Petitioner has listed [as real parties-in-interest] every defendant who has
`been involved in, has directed, or has any control over, this Petition as
`RPIs.” Id. at v n.1.
`Patent Owner identifies itself, Estech Systems, Inc., as the real
`party-in-interest. Paper 3, 1.
`
`B. Related Proceedings
`The parties identify numerous infringement litigations in the Eastern
`and Western Districts of Texas involving the ’298 patent. Pet. vi–vii;
`Paper 3, 1–3. These will be further discussed infra.
`C. The ’298 Patent
`The ’298 patent relates to Voice over IP (VoIP) systems. Ex. 1001,
`(57), 1:29–60. Such systems are used to transmit voice conversations over a
`data network using the Internet Protocol (IP). Id. at 1:29–31. The patent
`describes a VoIP system where a user can dial numbers stored in a series of
`lists. Id. at (57). The lists are stored in the system and displayed to the user
`of an IP telephone. Id.
`This VoIP system provides an ability for a user to scroll through the
`list of names and phone numbers and then call a person once their name and
`phone number are displayed. Id. at (57). One embodiment allows a user to
`
`3
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`scroll through phone listings on remote sites. Id. at 9:53–59. Once a
`particular name and phone number are found, the user can press a button key
`(e.g., on a keyboard) to commence a telephone conversation with the user
`having the selected name and phone number. Id. at 9:60–64.
`D. Illustrative Claim
`Claim 1 is illustrative of the challenged claims. Claim 1 recites:
`1. An information handling system comprising:
`
`a first local area network (“LAN”);
`
`a second LAN;
`
`a wide area network (“WAN”) coupling the first LAN to
`the second LAN;
`
`a third LAN coupled to the first and second LANs via the
`WAN;
`
`a first telecommunications device coupled to the first
`LAN;
`
`a plurality of telecommunications extensions coupled to
`the second LAN;
`
`the first LAN including first circuitry for enabling a user
`of the first telecommunications device to observe a list of the
`plurality of telecommunications extensions;
`
`the first LAN including second circuitry for
`automatically calling one of the plurality of telecommunications
`extensions in response to the user selecting one of the plurality
`of telecommunications extensions from the observed list,
`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; and
`
`a plurality of telecommunications extensions coupled to
`the third LAN, 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
`
`4
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`observing a list of the plurality of telecommunications
`extensions coupled to the third LAN.
`Ex. 1001, 15:58–16:19.
`
`
`
`E. Prior Art
`Petitioner relies on the following prior art:
`1. Ludwig et al., United States Patent No. 5,689,641
`(Ex. 1006, “Ludwig”);
`2. Reid, United States Patent No. 6,131,120 (Ex. 1007,
`“Reid”);
`3. Guy et al., United States Patent No. 6,298,057
`(Ex. 1008, “Guy”);
`4. Wilson et al., United States Patent No. 6,829,231
`(Ex. 1009, “Wilson”); and
`5. Hori et al., United States Patent No. 6,845,096
`(Ex. 1010, “Hori”).
`
`F. The Asserted Grounds
`Petitioner challenges claims 1–5 and 7–12 of the ’298 patent on the
`following grounds (Pet. 8):
`Claims Challenged
`35 U.S.C. §
`1–5, 7–12
`103(a) 2
`1–5, 7–12
`103(a)
`1–5, 7–12
`103(a)
`
`References
`Ludwig, Hori
`Ludwig, Reid
`Guy, Wilson, Hori
`
`
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`’298 patent was filed before March 16, 2013 (the effective date of the
`relevant amendments), the pre-AIA version of § 103 applies.
`
`5
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`
`III. DISCRETIONARY DENIAL
`Patent Owner contends we should exercise our discretion to deny
`institution under 35 U.S.C. § 314(a),3 relying on the Board’s precedential
`decision in Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar.
`20, 2020) (“Fintiv”). Prelim. Resp. 2–12. Patent Owner contends that “[t]he
`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.”
`Id. at 2 (footnote omitted). Patent Owner continues: “Trial in the related
`Eastern District of Texas . . . 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.” Id. at 3. Still further, “[a] second
`litigation in the Western District of Texas . . . 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.” Id.
`Anticipating Patent Owner’s challenge, Petitioner addresses the
`§ 314(a) issue in its Petition. Pet. 9–15. Petitioner asserts that it “is not a
`party to any litigation regarding the ’298 Patent and deserves to be heard
`regarding the invalidity of the ’298 Patent.” Pet. 10. Petitioner explains that
`“as the district court cases implicate a number of Petitioner’s products, in an
`effort to provide certainty to its customers, Petitioner has elected to file this
`Petition.” Id.
`
`
`3 Alternatively, Patent Owner contends that we should deny the third ground
`of the Petition (based on Guy and Wilson) under 35 U.S.C. § 325(d) (Prelim.
`Resp. 3–39), and all three grounds as being “horizontally redundant” (id. at
`41–42). In view of our decision denying institution under Fintiv, we do not
`address these alternative arguments.
`
`6
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`
`A. Fintiv Factors
`Fintiv identifies a non-exclusive list of factors parties may consider
`addressing where there is a related, parallel district court action to determine
`whether such action provides any basis for discretionary denial. Fintiv,
`Paper 11 at 5–16. Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6.
`In evaluating the factors, we take a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.
`Id. at 6.
`
`B. The Texas Litigations
`As Patent Owner points out, numerous infringement litigations
`involving the ’298 patent have been filed in both the Eastern District and the
`Western District of Texas. Prelim. Resp. 3. The Eastern District Litigation
`involves actions for infringement of the ’298 patent filed by Patent Owner
`
`7
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`against numerous defendants.4 The Eastern District Litigation is pending
`before District Judge J. Rodney Gilstrap, in the United States District Court
`for the Eastern District of Texas, Marshall Division. Judge Gilstrap has
`entered a Docket Control Order setting March 12, 2021 (now past), as the
`deadline for completing fact discovery; April 16, 2021 (now past), as the
`deadline for completing expert discovery; and August 2, 2021, for jury
`selection and trial. Ex. 2001, 1–3. Patent Owner last advised us of the status
`of the case on April 13, 2021, stating that “expert reports have been served
`and validity expert depositions are being conducted this very week.” Prelim.
`Resp. 8.
`Petitioner argues that “due to repeated continuances across the
`country due to COVID-19, and the volume of cases currently pending in
`Texas, that date is far from set in stone.” Pet. 11. However, contrary to
`Petitioner’s information, we have not been informed of any change in the
`August 2, 2021, jury selection date in the Eastern District Litigation.
`
`
`4 Estech Systems, Inc. v. PlainsCapital Bank, 2-20-cv-00122; Estech
`Systems, Inc. v. Target Corporation, 2-20-cv-00123; Estech Systems, Inc. v.
`Regus International Ltd., 2-20-cv-00124; Estech Systems, Inc. v. BOKF,
`National Association, 2-20-cv-00126; Estech Systems, Inc. v. BBVA USA
`Bancshares, Inc., 2-20-cv-00127; Estech Systems, Inc. v. Wells Fargo &
`Company et al., 2-20-cv-00128; Estech Systems, Inc. v. Regus Management
`Group, LLC et al,, 2-20-cv-00143; Estech Systems, Inc. v. Burnco Texas
`LLC et al., 2-20-cv-00275; Estech Systems, Inc. v. Burrow Global LLC, 2-
`20-cv-00276; Estech Systems, Inc. v. Hancock Whitney Bank et al., 2-20-cv-
`00277; Estech Systems, Inc. v. US Dermatology Medical Management, Inc.
`d/b/a US Dermatology Partners, 2-20-cv-00278; Estech Systems, Inc. v.
`Oliver Street Dermatology Management, LLC d/b/a US Dermatology
`Partners et al., 2-20-cv-00311. Pet. vi–viii; Paper 3, 1–3.
`
`8
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`The Western District Litigation also involves numerous actions for
`patent infringement and various defendants.5 The litigation is pending
`before District Judge Alan D. Albright, in the United States District Court
`for the Western District of Texas, Waco Division. Judge Albright has
`entered an Agreed Scheduling Order in the lead case (Estech Systems, Inc. v.
`Regions Financial Corp., No. 6:20-cv-00322-ADA), setting August 5, 2021,
`as the deadline for completing fact discovery; September 17, 2021, as the
`deadline for completing expert discovery; and December 7, 2021, as the
`expected date for jury selection and trial.6 Ex. 2002, 1–4. The parties have
`not advised us of any changes in the expected trial date. Moreover, Judge
`Albright has held a Markman Hearing and adopted final claim constructions.
`Paper 6, 3; Ex. 1024.
`
`C. Analysis of the Fintiv Factors
`Both Petitioner and Patent Owner address the Fintiv factors in their
`submissions. Pet. 9–15; Prelim. Resp. 2–12. We conclude that overall, the
`factors favor exercising our discretion to decline to institute a trial. Our
`reasoning follows.
`
`
`5 Estech Systems, Inc. v. Private Jets, Inc., 6-20-cv-00320; Estech Systems,
`Inc. v. Open Mortgage, LLC, 6-20-cv-00321; Estech Systems, Inc. v. Regions
`Financial Corporation, 6-20-cv-00322; Estech Systems, Inc. v. Energy
`Transfer LP, 6-20-cv-00773; Estech Systems, Inc. v. Gensler Architecture,
`Design & Planning, PC d/b/a Gensler et al., 6-20-cv-00774; Estech Systems,
`Inc. v. HWC Wire & Cable Company, 6-20-cv-00776; Estech Systems, Inc.
`v. Howard Midstream Energy Partners, 6-20-cv-00777; Estech Systems, Inc.
`v. SWBC Mortgage Corporation et al., 6-20-cv-00778. Pet. vi–viii; Paper 3,
`1–3.
`6 The Agreed Scheduling Order states that the court expected to set this date
`at the conclusion of the Markman Hearing, then scheduled for January 28,
`2021. Ex. 2002, 4.
`
`9
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`i. Stay in the Texas Litigations (Fintiv Factor 1)
`We have not been informed that either of the Texas Litigations has
`been stayed, nor has a stay been requested in either. Pet. 10; Prelim. Resp.
`10–11. Petitioner contends this factor is neutral because “no stays have been
`sought by any party to a district court litigation.” Pet. 10. Patent Owner
`contends that “any later-filed stay [request] will almost certainly be denied
`due to the advanced stage of the litigations.” Prelim. Resp. 10. Further,
`Patent Owner contends, “[b]ecause 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 denial.” Id. at 11.
`We decline to speculate on the likelihood of a stay. See Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020)
`(informative) (“We decline to infer, based on actions taken in different cases
`with different facts, how the District Court would rule should a stay be
`requested by the parties in the parallel case here.”). Thus, we find this factor
`is neutral.
`
`ii. Trial Date and Investment in the Texas Litigations
`(Fintiv Factors 2 and 3)
`As discussed, Patent Owner relies on the trial date in the Eastern
`District Litigation, where jury selection is set to occur approximately eleven
`months before a final written decision would be due. Prelim. Resp. 7–8. In
`addition, Patent Owner states that trial in the Western District Litigation is
`scheduled to begin approximately seven months before the statutory date for
`a final written decision in this proceeding. Id. at 3.
`Patent Owner argues that these litigations “are at an advanced stage.”
`Prelim. Resp. 7. The cutoff dates for completion of fact and expert
`discovery in the Eastern District Litigation have passed. Ex. 2001, 3. Patent
`
`10
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`Owner informs us that expert reports have been prepared and served, and
`expert depositions have taken place. Prelim. Resp. 8. In the Western
`District Litigation, a Markman Hearing was held on January 22, 2021 and
`fact discovery is under way. Paper 6, 3; Ex. 1024.
`Based on the evidence of record, we agree with Patent Owner that the
`significant gap between the trial date in the Eastern District Litigation and
`the statutory due date for the final written decision strongly favors exercising
`our discretion to deny institution. Further, as outlined by Patent Owner, the
`investment of time and effort in the Texas Litigations, especially the Eastern
`District Litigation, has been substantial, and therefore, this factor also
`strongly favors exercising our discretion to deny institution. Prelim. Resp.
`7–9.
`
`Patent Owner further contends that Petitioner delayed in filing the
`Petition after the first district court complaint was filed and that “[t]he record
`also raises the possibility that Petitioner has gone to elaborate lengths to
`create the illusion that it is not integrally involved in the parallel litigations
`to circumvent the Board’s discretionary denial precedent.” Prelim. Resp. 11.
`Almost eight months elapsed between the filing of the first complaint by
`Patent Owner and the filing of the Petition. We cannot say that Petitioner
`was diligent in filing the Petition, as Petitioner does not adequately explain
`its delay in filing the Petition. See Fintiv, Paper 11 at 11–12. Given the
`foregoing, we find that the trial date and investment in the Texas Litigations
`strongly favor exercising our discretion to deny institution.
`iii. Overlap of the Issues (Fintiv Factor 4)
`Patent Owner contends “[e]ach and every unpatentability challenge
`presented in the Petition is also being pursued by Petitioner Cisco in the
`
`11
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`copending EDTX litigation through the customers whose defense Cisco is
`directing and controlling.” Prelim. Resp. 9. Thus, Patent Owner asserts:
`“The exact same unpatentability issues will therefore be decided by a jury
`eleven months before any FWD would issue from the Petition.” Id. at 10.
`To address this issue, Petitioner initially proffered a stipulation which
`it contends is consistent with the stipulation relied on by the Board in Sotera
`Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1,
`2020) (precedential) (“Sotera”). Pet. 13. Specifically, Petitioner agreed to
`stipulate that if inter partes review is instituted, it will not pursue, in district
`court litigation with Patent Owner, “any ground raised or that could have
`been reasonably raised in an IPR.” Id.
`Patent Owner dismissed this proposal, pointing out that the real
`parties-in-interest listed in the Petition, six of whom are defendants in the
`Eastern District Litigation, have not agreed to the stipulation. Prelim Resp.
`5. Thus, Patent Owner contended: “Cisco would be free to continue
`purs[u]ing the same unpatentability arguments through the EDTX real-
`parties-in-interest.” Id. at 6.
`Petitioner responded to this criticism by filing, with our authorization,
`two additional proposed stipulations. Exs. 1025, 1026. The first, filed on
`behalf of the seven defendants in the Texas Litigations named as real
`parties-in-interest in the Petition, proffers a stipulation on their behalf similar
`to that proffered by Petitioner Cisco in the Petition. Ex. 1025. The second,
`filed on behalf of Cisco by its in-house counsel, proffers a similar
`stipulation, should Cisco be sued for infringement “at some point in the
`future.” Ex. 1026, 1.
`
`12
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`In Sotera, a similar stipulation “mitigate[d] any concerns” raised by
`the overlapping issues before the district court. Sotera, Paper 12 at 19. As
`in Sotera, this factor weighs strongly in favor of not exercising discretion to
`deny institution under 35 U.S.C. § 314(a). Id.
`We are not persuaded, however, that the stipulations proffered here
`are sufficient when weighed against the other factors. In Sotera, unlike here,
`the Board found there was “relatively limited investment in the parallel
`proceeding to date.” Sotera, Paper 12 at 17. The Board determined that the
`investment factor “weigh[ed] in favor of not exercising discretion to deny
`institution.” Id. Here, however, we determine that this factor weighs
`strongly in favor of exercising our discretion to deny institution. See
`discussion supra. Moreover, in Sotera, the trial in the district court was
`scheduled to begin “around the same time as [the] deadline” for the Board’s
`final written decision. Sotera, Paper 12 at 15. The Board found, in Sotera,
`that the trial date factor was neutral—it did not “weigh for or against
`denying institution.” Id. Here, there is an eleven-month time gap between
`the two events, which factor also strongly favors exercising our discretion to
`deny institution. See discussion supra. It was, therefore, in a much different
`context that the Board in Sotera weighed the Fintiv factors and declined to
`exercise its discretion to deny institution. Sotera, Paper 12 at 20–21. Here,
`in contrast, the other factors, weighed against the proffered stipulations,
`convince us that we should exercise our discretion to deny institution.
`iv. Whether Petitioner is the Same As or Related to the
`Defendants in the Texas Litigations (Fintiv Factor 5)
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion.”
`Fintiv, Paper 11 at 13–14. Here, Petitioner contends “[it] is not a party to
`
`13
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`any litigation regarding the ’298 Patent and deserves to be heard regarding
`the invalidity of the ’298 Patent.” Pet. 10. Patent Owner responds that
`while Petitioner is not a party to the Texas Litigations, “there is no
`reasonable doubt that Petitioner is directing and controlling defense of those
`proceedings, including the invalidity challenges presented therein.” Prelim.
`Resp. 3–4.
`Patent Owner provides factual support for its assertions. Patent
`Owner points out that Petitioner’s counsel in this proceeding also represents
`the seven defendants in the Texas Litigations identified in the Petition as real
`parties-in-interest. Id. at 4; see also Ex. 1025, 1. In addition, the same
`technical expert appears here on behalf of Petitioner and for those seven
`defendants. Prelim. Resp. 4.
`Petitioner does not deny these assertions. In fact, Petitioner explains
`that it “elected to file [the] Petition” “in an effort to provide certainty to its
`customers.” Pet. 10. Elsewhere, Petitioner states that it identified as real
`parties-in-interest “every defendant [in the Texas Litigations] who has been
`involved in, has directed, or has any control over, this Petition.” Id. at v n.1.
`Moreover, Petitioner explains that “[a] number of defendants in the [Texas
`Litigations] were asked if they were interested in participating in this
`Petition.” Id. at v. Petitioner informs us that all defendants except those
`listed as real parties-in-interest declined. Id.
`We conclude from the undisputed facts that although Petitioner is not
`a party, the overlap between the defendants in the Texas Litigations and the
`real parties-in-interest in this proceeding who have participated in the
`Petition is substantial, and favors exercising our discretion to deny
`institution.
`
`14
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`v. Other Considerations (Fintiv Factor 6)
`The final Fintiv factor takes into account any other relevant
`circumstances. Referring to “future cases that have not yet been filed
`against Petitioner itself or other customers of Petitioner,” Petitioner contends
`its “interest in the unpatentability [of the ’298 patent] extends far beyond the
`twenty cases that Patent Owner has filed in the Eastern and Western District
`of Texas.” Pet. 14. In addition, Petitioner contends “the strength of this
`Petition, especially the ground based on Guy/Wilson/Hori, which involves a
`combination the Board’s predecessor has blessed and addresses the subject
`matter overlooked by the examiner and the BPAI appeal board, warrants
`institution.” Id. 7
`Patent Owner responds by alleging that the Petition does not establish
`a reasonable likelihood that Petitioner will prevail on at least one claim.
`Prelim. Resp. 11.
`Having reviewed Petitioner’s unpatentability arguments and Patent
`Owner’s responses, and based on the limited record before us, we do not
`find that the merits of Petitioner’s challenge outweigh the other Fintiv
`factors favoring denial of institution. Similarly, we are not convinced by
`Petitioner’s prosecution history argument based on rejected claims that were
`amended before issuance.
`
`
`7 During prosecution of the ’298 patent, our predecessor, the Board of Patent
`Appeals and Interferences, affirmed a rejection of certain independent
`claims based on Guy and Wilson. Pet. 4 (citing Ex. 1003, 388–391).
`Subsequently, an amendment was entered and the claims were allowed.
`Ex. 1003, 428–437.
`
`15
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`
`D. Conclusion
`The decision whether to exercise discretion to deny institution under
`§ 314(a) is based on “a balanced assessment of all relevant circumstances in
`the case, including the merits.” Patent Trial and Appeal Board Consolidated
`Trial Practice Guide 58 (Nov. 2019), available at https://www.uspto.gov/
`sites/default/files/documents/tpgnov.pdf.
`Based on the facts and circumstances of this case, we exercise our
`discretion under 35 U.S.C. § 314(a) to deny inter partes review.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all grounds and all
`challenged claims of the ’298 patent.
`
`
`16
`
`

`

`IPR2021-00329
`Patent 8,391,298 B2
`
`PETITIONER:
`
`Benjamin Weed
`Erik Halverson
`K&L GATES LLP
`Benjamin.weed.ptab@klgates.com
`Erik.halverson@klgates.com
`
`
`PATENT OWNER:
`
`Todd Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`
`
`
`17
`
`

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