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.
`
`Estech Systems, Inc.
`Patent Owner
`
`_____________________
`CASE: IPR2021-00329
`U.S. PATENT NO. 8,391,298
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
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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
`
`
`Table of Contents
`
`Mandatory Notices (37 C.F.R. § 42.8(b)) .................................................................. v 
`A.  Real Parties-In-Interest .................................................................................. v 
`B.  Related Matters ............................................................................................ vi 
`C.  Lead and Backup Counsel and Service (37 C.F.R. § 42.8(b)(3)-(4)) ........ viii 
`INTRODUCTION ............................................................................................. 1 
`I. 
`II.  TECHNOLOGY OF THE ’298 PATENT ........................................................ 1 
`A.  Overview of VoIP Technology ...................................................................... 1 
`B. 
`’298 Patent Overview .................................................................................... 2 
`C.  Prosecution History of the ‘298 Patent .......................................................... 4 
`III. 
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) .............................. 5 
`IV. 
`PAYMENT OF FEES (37 C.F.R. §§ 42.15 AND 42.103) ............................ 5 
`V.  PERSON OF ORDINARY SKILL IN THE ART ............................................ 5 
`VI. 
`CLAIM CONSTRUCTION ........................................................................... 6 
`VII. 
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a) AND 42.104(b)) ............................ 8 
`A.  The Board Should Not Discretionarily Deny The Petition ............................ 8 
`1.  Becton, Dickinson ...................................................................................... 8 
`2.  Fintiv .......................................................................................................... 9 
`B.  Overview of the Prior Art ............................................................................ 15 
`1.  Ludwig ...................................................................................................... 15 
`2.  Reid .......................................................................................................... 16 
`3.  Hori .......................................................................................................... 18 
`4.  Wilson ....................................................................................................... 19 
`5.  Guy ........................................................................................................... 19 
`C.  Ground 1: The Challenged Claims are Unpatentable Under 35 U.S.C. §
`103(a) as Obvious Over Ludwig and Reid. .......................................................... 20 
`1.  Basis for Combination ............................................................................. 20 
`2.  The Challenged Claims are Obvious ....................................................... 23 
`a. 
`Independent Claim 1 ............................................................................ 23 
`i
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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
`
`b.  Dependent Claims 2–5, 7 ..................................................................... 35 
`c. 
`Independent Claim 8 ............................................................................ 38 
`d.  Dependent Claims 9-12 ....................................................................... 41 
`D.  Ground 2: The Challenged Claims are Unpatentable Under 35 U.S.C. §
`103(a) as Obvious Over Ludwig and Hori. .......................................................... 42 
`1.  Basis for Combination ............................................................................. 43 
`2.  The Challenged Claims are Obvious ....................................................... 46 
`a. 
`Independent Claim 1 ............................................................................ 46 
`b.  Dependent Claims 2–5, 7 ..................................................................... 51 
`c. 
`Independent Claim 8 ............................................................................ 53 
`d.  Dependent Claims 9-12 ....................................................................... 55 
`E.  Ground 3: The Challenged Claims are Unpatentable Under 35 U.S.C. §
`103(a) as Obvious Over Guy, Wilson, and Hori. ................................................. 56 
`1.  Basis for Combination ............................................................................. 56 
`2.  The Challenged Claims are Obvious ....................................................... 59 
`a. 
`Independent Claim 1 ............................................................................ 59 
`b.  Dependent Claims 2–5, 7 ..................................................................... 65 
`c. 
`Independent Claim 8 ............................................................................ 67 
`d.  Dependent Claims 9-12 ....................................................................... 69 
`VIII.  CONCLUSION ............................................................................................ 70 
`CLAIM APPENDIX OF THE CHALLENGED CLAIMS ..................................... 72 
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`ii
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
`
`
`List of Exhibits
`
`Ex. 1001: U.S. Patent No. 8,391,298 to Suder et al. (“the ’298 Patent”)
`
`Ex. 1002: Declaration of Dr. Shukri Souri
`
`Ex. 1003: File History of U.S. Patent Application No. 10/447,607
`
`Ex. 1004: File History of U.S. Patent Application No. 09/775,018
`
`Ex. 1005: Curriculum Vitae of Dr. Shukri Souri
`
`Ex. 1006: U.S. Patent No. 5,689,641 to Ludwig et al. (“Ludwig”)
`
`Ex. 1007: U.S. Patent No. 6,131,120 to Reid (“Reid”)
`
`Ex. 1008: U.S. Patent No. 6,298,057 to Guy et al. (“Guy”)
`
`Ex. 1009: U.S. Patent No. 6,829,231 to Wilson et al. (“Wilson”)
`
`Ex. 1010: U.S. Patent No. 6,845,096 to Hori et al. (“Hori”)
`
`Ex. 1011: U.S. Patent No. 7,068,684 to Suder et al. (“Suder”)
`
`Ex. 1012: U.S. Patent No. 6,654,722 to Aldous et al. (“Aldous”)
`
`Ex. 1013: U.S. Patent No. 6,104,711 to Voit (“Voit”)
`
`Ex. 1014:
`
`[Reserved]
`
`Ex. 1015: Weinstein, Experience with Speech Communication in Packet
`
`Networks (IEEE Dec. 1983)
`
`Ex. 1016:
`
`[Reserved]
`
`Ex. 1017:
`
`[Reserved]
`
`Ex. 1018:
`
`[Reserved]
`
`
`
`iii
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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,”
`
`Law360, available at
`
`https://www.law360.com/articles/1330855/texas-patent-trials-halted-
`
`due-to-covid-19-spike (Nov. 20, 2020)
`
`Ex. 1020: Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`
`Discretionary Denials, available at
`
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-
`
`slip-afterptab-discretionary-denials/ (Jul. 24, 2020)
`
`Ex. 1021: Estech Reply Claim Construction Brief, Estech Systems, Inc. v.
`
`Regions Financial Corporation, WDTX-6-20-cv-00322, Dkt. 52
`
`(December 9, 2020)
`
`Ex. 1022: Opposition to Motion to Amend Infringement Contentions in Estech
`
`v. Wells Fargo et al., EDTX-2-20-cv-00123 (Dkt. No. 61) (August 3,
`
`2020)
`
`
`
`
`
`
`
`iv
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
`
`Mandatory Notices (37 C.F.R. § 42.8(b))
`
`A. Real Parties-In-Interest
`
`A number of defendants in the below listed related matters were asked if they
`
`were interested in participating in this Petition and all except for those listed below
`
`declined. The following are real parties-in-interest, pursuant to 37 C.F.R.
`
`§42.8(b)(1)1:
`
` Cisco Systems, Inc.;
`
` BBVA USA;
`
` BOKF NA;
`
`
`1 Petitioner has listed every defendant who has been involved in, has directed, or
`
`has any control over, this Petition as RPIs; as such, the instant Petition correctly
`
`names all RPIs. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336
`
`(Fed. Cir. 2018). As none of the defendants in any case involving the ’298 Patent
`
`is subject to a 1-year bar for filing a petition under 35 U.S.C. § 315(b), even if
`
`the Board finds that other unnamed parties are, in fact, RPIs, Petitioner should be
`
`allowed to amend its Mandatory Notices to reflect any other party the Board
`
`deems an RPI as the addition of any other party would not trigger a time bar or
`
`estoppel issue. Sharkninja Operating LLC, et al. v. iRobot Corp., IPR2020-
`
`00734, Paper 11 (October 6, 2020) (precedential).
`
`v
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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` PlainsCapital Bank;
`
` Target Corp.;
`
` Wells Fargo Bank;
`
` Wells Fargo Corp.; and
`
` Regions Financial Corporation
`
`B. Related Matters
`
`Estech is currently asserting U.S. Patent No. 8,391,298 in the following cases:
`
` Estech Systems, Inc. v. PlainsCapital Bank, 2-20-cv-00122 (EDTX)
`
` Estech Systems, Inc. v. Target Corporation, 2-20-cv-00123 (EDTX)
`
` Estech Systems, Inc. v. Regus International Ltd., 2-20-cv-00124 (EDTX) 2
`
` Estech Systems, Inc. v. Private Jets, Inc., 6-20-cv-00320 (WDTX)
`
` Estech Systems, Inc. v. Open Mortgage, LLC, 6-20-cv-00321 (WDTX) 3
`
` Estech Systems, Inc. v. Regions Financial Corporation, 6-20-cv-00322
`
`(WDTX)
`
` Estech Systems, Inc. v. BOKF, National Association, 2-20-cv-00126 (EDTX)
`
`
`2 While Estech asserted the ’298 Patent in this matter, it is Petitioner’s
`
`understanding that this matter has been dismissed on the basis of settlement.
`
`3 While Estech asserted the ’298 Patent in this matter, it is Petitioner’s
`
`understanding that this matter has been dismissed on the basis of settlement.
`
`vi
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
` Estech Systems, Inc. v. BBVA USA Bancshares, Inc., 2-20-cv-00127 (EDTX)
`
` Estech Systems, Inc. v. Wells Fargo & Company et al, 2-20-cv-00128
`
`(EDTX)
`
` Estech Systems, Inc. v. Regus Management Group, LLC et al, 2-20-cv-00143
`
`(EDTX) 4
`
` Estech Systems, Inc. v. Burnco Texas LLC et al, 2-20-cv-00275 (EDTX)
`
` Estech Systems, Inc. v. Burrow Global LLC, 2-20-cv-00276 (EDTX)
`
` Estech Systems, Inc. v. Hancock Whitney Bank et al, 2-20-cv-00277 (EDTX)
`
` Estech Systems, Inc. v. US Dermatology Medical Management, Inc. d/b/a US
`
`Dermatology Partners, 2-20-cv-00278 (EDTX)
`
` Estech Systems, Inc. v. Energy Transfer LP, 6-20-cv-00773 (WDTX)
`
` Estech Systems, Inc. v. Gensler Architecture, Design & Planning, PC d/b/a
`
`Gensler et al, 6-20-cv-00774 (WDTX)
`
` Estech Systems, Inc. v. HWC Wire & Cable Company, 6-20-cv-00776
`
`(WDTX)
`
` Estech Systems, Inc. v. Howard Midstream Energy Partners, 6-20-cv-00777
`
`(WDTX)
`
`
`4 While Estech asserted the ’298 Patent in this matter, it is Petitioner’s
`
`understanding that this matter has been dismissed on the basis of settlement.
`
`vii
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
` Estech Systems, Inc. v. SWBC Mortgage Corporation et al, 6-20-cv-00778
`
`(WDTX)
`
` Estech Systems, Inc. v. Oliver Street Dermatology Management, LLC d/b/a
`
`US Dermatology Partners et al, 2-20-cv-00311 (EDTX)
`
`C. Lead and Backup Counsel and Service (37 C.F.R. § 42.8(b)(3)-(4))
`
`Lead Counsel
`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
`
`Backup Counsel
`Erik J. Halverson
`Reg. No. 73,552
`K&L GATES LLP
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
`erik.halverson@klgates.com
`T: (312) 807-4240
`F: (312) 345-8529
`
`Petitioner consents to electronic service by email.
`
`viii
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`

`

`I.
`
`INTRODUCTION
`
`IPR2021-00329
`U.S. PATENT NO. 8,391,298
`
`
`Petitioner requests institution of Inter Partes Review (“IPR”) of Claims 1–5,
`
`7–12 (“Challenged Claims”) of the ’298 Patent and the subsequent cancellation of
`
`the Challenged Claims in view of the Grounds described below.
`
`II. TECHNOLOGY OF THE ’298 PATENT
`
`A. Overview of VoIP Technology
`
`Voice over IP (“VoIP”) is a technique by which voice traffic can be
`
`transmitted across well-known (and ubiquitously-used) IP networks, such as the
`
`internet. (Ex. 1012, 1:36-45; Ex. 1002, ¶¶24-36). In a VoIP system, analog speech
`
`signals are received from an analog audio source, for example via a telephone on a
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`Public Switched Telephone Network (“PSTN”). (Ex. 1012, 1:36-45). These signals
`
`are digitized and encapsulated as IP packets for transmission over an internet
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`protocol (“IP”) network. (Ex. 1012, 1:36-45; Ex. 1002, ¶¶30-33). On the recipient
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`side, the reverse process occurs, playing back the voice for aural consumption. (Id.).
`
`Given the packetized nature of the data for eventual aural consumption, a common
`
`application for IP telephony is the integration of email and voice mail, to permit a
`
`user to receive its messages, voice and data, in one place. (Ex. 1012, 1:46-56).
`
`Several well-known protocols are and have been germane to some
`
`implementations of VoIP; these include H.323, Session Initialization Protocol
`
`1
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`(“SIP”), Point-to-Point Protocol (“PPP”), and Master Gateway Control Protocol
`
`(“MGCP”). (Ex. 1012, 1:36-45).
`
`The development of internet-based telephony systems was well underway in
`
`the mid-1990s and by at least 1997, Bell Labs had filed IP telephony patents. (Ex.
`
`1013). The basis for these systems dates back even further, to the 1980s, when early
`
`ARPANet telephony systems were developing. (Ex. 1015).
`
`B.
`
`’298 Patent Overview
`
`The ’298 Patent was filed on May 29, 2003 as a continuation-in-part of U.S.
`
`Patent Application No. 09/775,018, which was filed on February 1, 2001 and issued
`
`as U.S. Patent No. 7,068,684 (Ex. 1011). The ’298 Patent describes the use of Voice
`
`over IP (“VoIP”) telephone systems, and describes ways to connect and utilize such
`
`devices. (Ex. 1001, 3:7-10). A decision as to the priority date of the ’298 Patent is
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`not necessary for this proceeding, as the references relied upon herein constitute
`
`prior art under either possible priority date. Petitioner does not concede that the ’298
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`Patent is entitled to the 2001 priority date.
`
`The ’298 Patent contemplates multiple local area networks (“LANs”)
`
`connected by a wide area network (“WAN”). (Ex. 1001, Fig. 1). The ’298 Patent’s
`
`Background admits that “[u]sing Voice over IP technology, phone systems can
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`communicate with each other over existing IP data networks typically present
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`between remote offices” and further admits that prior art VoIP technology may use
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`2
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`existing connection mechanisms “within a local area network” such as Ethernet.
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`(Ex. 1001, 1:44-54). The ’298 Patent acknowledges that these LANs may be
`
`connected over the internet—a WAN. (Ex. 1001, 1:31-33). The ’298 Patent further
`
`admits that known devices, including existing computers, printers, workstations
`
`terminals, servers, and existing VoIP phones, would be interconnected within these
`
`LANs. (Ex. 1001, 1:44-57).
`
`Figure 3 depicts an example of the network contemplated by the ’298 Patent:
`
`
`
`The ’298 Patent admits that the hardware making up the claimed system
`
`architecture is conventional. (Ex. 1001, 1:29-60 (LANs, WANs, connected
`
`workstations, Ethernet and VoIP telephones)). The ’298 Patent does not purport to
`
`have invented the general hardware it describes (DSPs, MAC/PHY devices,
`
`3
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`Motorola processors, or Texas Instrument chips) as this hardware was all available
`
`in the prior art. (Ex. 1001, 3:55-9:52).
`
`Apparently describing the purported invention, the ’298 Patent tersely
`
`describes a scrollable list of phone numbers in a user’s LAN or in a remote LAN,
`
`accessible across a WAN, and the subsequent capability to call a desired number.
`
`(Ex. 1001, 9:53-66).
`
`C.
`
`Prosecution History of the ‘298 Patent
`
`The ’298 Patent application was rejected, appealed, and the appealed rejection
`
`was ultimately upheld by the Board of Patent Appeals and Interferences (“BPAI”).
`
`During the appeal, the BPAI upheld the rejection of the independent claims in view
`
`of Guy and Wilson, references that make up a portion of Ground 3 below. (Ex. 1003,
`
`388-391). However, with regard to one of the dependent claims, the BPAI held that
`
`the appealed rejection failed to demonstrate why the added limitations of “enabling
`
`the user to select between observing the list coupled to the second and the third
`
`LAN” or “where Wilson teaches or suggests that a user may select between
`
`observing two different directories” were obvious. (Ex. 1003, 394). The Applicant,
`
`seizing on this analysis, added these two limitations to the independent claims in an
`
`interview with the Examiner; the Examiner allowed the claims shortly thereafter.
`
`(Ex. 1003, 429).
`
`4
`
`

`

`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
`
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`Petitioner certifies that (1) the ’298 Patent is available for IPR; (2) Petitioner
`
`is not barred or estopped from requesting an IPR on the Grounds identified herein;
`
`and (3) Petitioner has not filed a complaint relating the ’298 Patent.
`
`IV. PAYMENT OF FEES (37 C.F.R. §§ 42.15 AND 42.103)
`
`Petitioner authorizes the USPTO to charge any required fees to Deposit
`
`Account 02-1818.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSA”) is a hypothetical person who is
`
`presumed to know the relevant prior art and has ordinary creativity when interpreting
`
`and combining prior art. In re Coutts, 726 F. App’x 791, 796 (Fed. Cir. 2018); KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007).
`
`With respect to the ’298 Patent, a POSA (as of either February 1, 2001 or May
`
`29, 2003), had, among other attributes, a Bachelor’s Degree in electrical engineering,
`
`computer engineering, or similar discipline and approximately two years of
`
`telephony and/or networking experience. Additional graduate education might
`
`substitute for experience, while significant industry experience may substitute for
`
`formal education. (Ex. 1002, ¶45). This POSA would have had knowledge of design
`
`considerations known in the industry and would have been familiar with then-
`
`5
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`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`existing products and solutions; the POSA would also have understood how to
`
`search available literature for relevant publications. (Ex. 1002, ¶45).
`
`VI. CLAIM CONSTRUCTION
`
`Patent Owner is currently engaged in claim construction. For purposes of this
`
`proceeding, whether or not the terms of the ’298 Patent are afforded their plain and
`
`ordinary meaning (consistent with the unwavering position of the Patent Owner in
`
`the co-pending district court cases) or are construed as proposed by Regions5 (as
`
`outlined in the table below), the prior art relied upon herein renders the claims
`
`obvious, such that no determination as to claim construction need be made by the
`
`Board at institution. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017) citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Claim Term
`
`“a first local area network
`(“LAN”)”/ “second LAN”/ “a
`third LAN” / “a wide area
`network (“WAN”)”
`(claims 1, 2, 8)
`
`Plaintiff’s
`Proposal
`plain and
`ordinary
`meaning
`
`Defendant’s Proposal
`
`the LANs and WAN are
`different
`
`
`
`
`
`5 Regions is the only defendant whose case has reached claim construction
`
`briefing in a co-pending district court case.
`
`6
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`

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`IPR2021-00329
`U.S. PATENT NO. 8,391,298
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`“the alpha-numeric depiction of
`all telephone extensions for all
`telephones located on the
`second LAN is stored in
`memory located on the second
`LAN”
`
`“select which of two [lists of the
`plurality of telecommunications
`extensions] is displayed to the
`user”
`
`
`This is a 112 ¶ 6 claim element.
`112 ¶ 6 structure(s), act(s), or
`material(s): circuitry
`Function: “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”
`
`This element should be
`construed as limited to the DSP
`structure disclosed at 4:26-56,
`5:33-38, 6:9-23, 8:66-9:24 and
`equivalents thereof, including
`then-existing Texas Instrument
`5410 DSPs.
`
`plain and
`ordinary
`meaning
`
`plain and
`ordinary
`meaning
`
`plain and
`ordinary
`meaning
`
`“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”
`(claim 1)
`“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”
`(claim 1)
`“circuitry for automatically
`calling one of the plurality of
`telecommunications
`extensions in response to the
`user selecting one of the
`plurality of
`telecommunications
`extensions form the observed
`list”
`
`(claim 1)
`
`
`7
`
`

`

`IPR2021-00329
`U.S. PATENT NO. 8,391,298
`
`VII. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a) AND 42.104(b))
`Petitioner requests institution of IPR and the cancellation of the Challenged
`
`Claims on the following Grounds:
`
`2
`
`Relied-On References
`Ground Basis
`§ 103 U.S. Patent No. 5,689,641 to Ludwig et al.
`1
`(“Ludwig”) (Ex. 1006) and U.S. Patent No.
`6,845,096 to Hori et al. (“Hori”) (Ex. 1010)
`§ 103 Ludwig and U.S. Patent No. 6,131,120 to Reid
`et al. (“Reid”) (Ex. 1007)
`§ 103 U.S. Patent No. 6,298,057 to Guy et al.
`(“Guy”) (Ex. 1008), U.S. Patent No. 6,829,231
`to Wilson et al. (“Wilson”) (Ex. 1009) and
`Hori
`
`3
`
`Claims
`1–5 and 7–
`12
`
`1–5 and 7–
`12
`1–5 and 7–
`12
`
`Petitioner submits herewith the declaration of Dr. Shukri Souri, an expert in
`
`the field of the ’298 Patent and the prior art, in support of these Grounds. (Ex. 1002,
`
`¶¶1-36; Ex. 1005).
`
`A. The Board Should Not Discretionarily Deny The Petition
`
`1.
`
`Becton, Dickinson
`
`The claims of the ’298 Patent have not been considered in view of Ludwig,
`
`Hori, or Reid, alone or in combination. While the combination of Guy and Wilson
`
`was considered during the prosecution of the ’298 Patent, the Examiner and BPAI
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`did not account for the teachings of Hori when making a determination of allowable
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`subject matter; Hori, relied on herein, provides the very subject matter that the
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`Examiner found to be missing from the then-pending claims. The Examiner also did
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`not have the benefit of expert testimony of Dr. Souri, or any other expert, regarding
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`the ’298 Patent. Accordingly, the Board should not discretionarily deny the present
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`Petition under 35 U.S.C. § 325(d). Advanced Bionics, LLC v. MED-EL
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`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (Feb. 13, 2020)
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`(precedential).
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`2.
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`Fintiv
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`The Board should not deny this petition in view of 35 U.S.C. § 314(a).
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
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`sets forth six factors to consider in a discretionary denial under 35 U.S.C. § 314(a).
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`Those six factors are:
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`1) whether the court granted a stay or evidence exists that one may be granted
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`if a proceeding is instituted;
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`2) proximity of the court’s trial date to the Board’s projected statutory
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`deadline for a final written decision;
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`3) investment in the parallel proceeding by the court and the parties;
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`4) overlap between issues raised in the petition and in the parallel proceeding;
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`5) whether the petitioner and the defendant in the parallel proceeding are the
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`same party; and
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`6) other circumstances that impact the Board’s exercise of discretion,
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`including the merits.
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`Petitioner is not a party to any litigation regarding the ’298 Patent and
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`deserves to be heard regarding the invalidity of the ’298 Patent. This is so
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`particularly because Patent Owner is aware of Petitioner’s role in providing accused
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`products to certain defendants accused of infringing the ’298 Patent. Moreover, as
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`the district court cases implicate a number of Petitioner’s products, in an effort to
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`provide certainty to its customers, Petitioner has elected to file this Petition. The
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`currently scheduled (and yet to be scheduled) district court trials may or may not
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`ever occur. Moreover, Patent Owner has asserted the ’298 Patent on a rolling basis
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`between April 24, 2020, and September 21, 2020. Patent Owner’s strategy
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`underscores that proximity to trial in any given case or any volume of resources
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`spent on one specific case should be given less weight in view of Patent Owner’s
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`overall ongoing assertion campaign by Patent Owner. Finally, Petitioner notes that
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`two of the defendants have settled, and expects Patent Owner to try to continue to
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`settle cases, meaning that the occurrence of a trial at all during this IPR is even less
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`likely. Thus, Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15 (PTAB Oct.
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`21, 2020) (precedential) is inapplicable.
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`Addressing the factors in turn, Petitioner states as follows:
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`First, no stays have been sought by any party to a district court litigation; this
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`factor is neutral.
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`Second, the soonest trial date in any of the above referenced proceedings is
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`August 2, 2020. This trial is scheduled in the Eastern District of Texas, where all
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`jury trials are paused. (Ex. 1019). However, due to repeated continuances across
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`the country due to COVID-19, and the volume of cases currently pending in Texas,
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`that date is far from set in stone. (Ex. 1019, Ex. 1020).
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`Moreover, as a panel of this Board recently noted, “even in the extraordinary
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`circumstances under which the entire country is currently operating because of the
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`COVID-19 pandemic, the Board continues to be fully operational” and meeting its
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`statutory deadlines. Sand Revolution II, LLC v. Continental Intermodal Group –
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`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative).
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`Conversely, district courts around the country continue to keep their trial dates
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`scheduled until they are imminent, in hopes that they will occur, and only when the
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`trial dates are about to occur are the dates extended. (Ex. 1019; Ex. 1020). While
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`preliminary, limited vaccination has begun, there is no evidence that a sufficient
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`portion of the population will be in a position to resume jury trials by the currently
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`scheduled trial dates, particularly where a backlog will need to be addressed.
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`The timing of the instant Petition is heavily attributable to Estech’s decisions
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`of who to sue (and who not to sue), as well as its conduct in the underlying litigation.
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`Supporting the appropriateness of this IPR (and the timing of its filing), Estech
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`has asserted the ’298 Patent without regard to naming the proper defendants. As
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`noted above, Petitioner is not a defendant in any lawsuit asserting the ’298 Patent.
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`Yet in an inability to identify the correct defendants to sue, Estech has, for example,
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`filed against Regus International, Estech dropped that case shortly after filing, and
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`on the same day filed a new case against Regus Management Group.
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`With regard to Estech’s litigation conduct, the ambiguity in Estech’s
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`interpretation of its claim language and patent scope continues to persist the
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`underlying district court actions and continues to present a moving target as to what
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`Estech contends is the actual scope of the ’298 Patent. Without certainty as to which
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`products and services are alleged to infringe, Petitioner has had difficulty
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`determining what, if any, of its products and services may be implicated in those
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`allegations and whether challenging the patents before the PTAB was warranted.
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`Evidence of the confusion over the claim scope can be seen in public filings where
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`defendants have identified the deficiencies of Estech’s infringement contentions.
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`(See, e.g., deficient infringement contentions in Estech v. Wells Fargo et al., EDTX-
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`2-20-cv-00123 (Ex. 1022 at 8)). Only after Estech filed its responsive claim
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`construction brief in the Regions case, was Petitioner able to ascertain with a
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`modicum of certainty what it is that Estech contends is covered by the ’298 Patent.
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`(Ex. 1021, 7-8, 10-14). Further evidencing the difficulty in ascertaining the scope
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`of Estech’s infringement allegations, Exhibit 1022 demonstrates the pervasive nature
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`of Estech’s reliance on “Chief Judge Gilstrap’s Sample Discovery Order” that
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`pertains to “software limitation[s],” which has essentially permitted Estech to
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`continue hiding the ball as far as its allegations of infringement. (Ex. 1022, 8).
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`Regarding factors three, four and five, while Petitioner is not a defendant in
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`any of the proceedings involving the ’298 Patent, Petitioner files this Petition to
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`attain clarity for itself and its customers regarding the patentability of the Challenged
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`Claims. Given the breadth of Patent Owner’s application of the ’298 Patent claims,
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`the entities that will benefit from this clarity include many, many parties not
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`currently involved in litigations with Patent Owner. By failing to name Petitioner
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`as a defendant, Patent Owner has intentionally left Petitioner out of the dispute. This
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`IPR provides Petitioner the opportunity to affirmatively protect not only its
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`customers currently accused of infringement, but also the other customers it provides
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`its products to that have not yet been accused of infringing the ’298 Patent. Also, as
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`Petitioner is not a defendant in the litigations, the Board’s decision in Sotera
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`Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)
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`(precedential) is irrelevant to the Fintiv analysis here. That notwithstanding,
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`Petitioner agrees that, “if IPR is instituted, [Petitioner] will not pursue in [any]
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`District Court Litigation [with Patent Owner] any ground raised or that could have
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`been reasonably raised in an IPR.” Id. at 18.
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`Regarding factor six, no Markman hearing has occurred, although the first is
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`scheduled for the end of January 2021. Additionally, in the Western District of
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`Texas cases (where the first Markman will occur), little to no fact discovery can
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`occur until after the Markman hearing. Accordingly, the overall expenditure of
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`efforts and resources to date has been low.
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`Petitioner submits that any Fintiv analysis must account for not only currently
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`pending cases, but also future cases that have not yet been filed against Petitioner
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`itself or other customers of Petitioner. Petitioner asserts that such cases are likely.
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`In any event, even if all currently pending cases are resolved, the dispute underlying
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`this petition, as it relates to Petitioner, will not be resolved. Therefore all of the
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`above factors counsel in favor of institution under Fintiv.
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`Nevertheless, even if the calendared dates of the currently pending litigations
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`are persuasive to the panel, factor six weighs heavily in favor of instituting this IPR.
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`Petitioner’s interest in the unpatentability extends far beyond the twenty cases that
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`Patent Owner has filed in the Eastern and Western District of Texas. Moreover, the
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`strength of this Petition, especially the ground based on Guy/Wilson/Hori, which
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`involves a combination the Board’s predecessor has blessed and addresses the
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`subject matter overlooked by the examiner and the BPAI appeal board, warrants
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`institution.
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`To deny Petitioner its opportunity to access this body as an alternative to
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`litigation, as it relates to what will necessarily be a future case against Petitioner,
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`would circumvent the very purpose of these proceedings and Congress’ intent. It
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`would also reward a