`
`IPR2021-00574
`Patent 8,391,298
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`RINGCENTRAL, INC.,
`
`Petitioner,
`v.
`ESTECH SYSTEMS, INC.
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2021-00574
`Patent No. 8,391,298
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES UNDER 37
`C.F.R. § 42.8
`
`
`
`IPR2021-00574
`Patent No. 8,391,298
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`Patent Owner Estech Systems, Inc., the owner of U.S. Patent No. 8,391,298
`
`(the “’298 Patent”), is the real-party-in-interest and has an address at 3701 East Plano
`
`Parkway, Suite 100, Plano, Texas 75074.
`
`B.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following matters would affect, or be affected by, a decision in this
`
`proceeding regarding the ’298 Patent:
`
`
`
`Estech Systems, Inc. v. Target Corporation, 2:20-cv-00123, in the
`
`United States District Court for the Eastern District of Texas (case dismissed; Dkt.
`
`No. 329).
`
`
`
`Estech Systems, Inc. v. PlainsCapital Bank, 2:20-cv-00122, in the
`
`United States District Court for the Eastern District of Texas (consolidated with
`
`Estech Systems, Inc. v. Target Corporation, 2:20-cv-00123; case dismissed; Dkt.
`
`No. 331).
`
`
`
`Estech Systems, Inc. v. BOKF National Association, 2:20-cv-00126, in
`
`the United States District Court for the Eastern District of Texas (consolidated with
`
`Estech Systems, Inc. v. Target Corporation, 2:20-cv-00123; case dismissed; Dkt.
`
`No. 330).
`
`1
`
`
`
`
`
`Estech Systems, Inc. v. BBVA USA, 2:20-cv-00127, in the United States
`
`IPR2021-00574
`Patent No. 8,391,298
`
`
`
`District Court for the Eastern District of Texas (consolidated with Estech Systems,
`
`Inc. v. Target Corporation, 2:20-cv-00123; case dismissed; Dkt. No. 329).
`
`
`
`Estech Systems, Inc. v. Wells Fargo & Company and Wells Fargo Bank,
`
`N.A., 2:20-cv-00128, in the United States District Court for the Eastern District of
`
`Texas (consolidated with Estech Systems, Inc. v. Target Corporation, 2:20-cv-
`
`00123; case dismissed; Dkt. No. 324).
`
`
`
`Estech Systems, Inc. v. Burnco Texas LLC and Burnco Rock Products
`
`Ltd., 2:20-cv-00275, in the United States District Court for the Eastern District of
`
`Texas (case dismissed; Dkt. No. 84).
`
`
`
`Estech Systems, Inc. v. Burrow Global LLC, 2:20-cv-00276, in the
`
`United States District Court for the Eastern District of Texas (consolidated with
`
`Estech Systems, Inc. v. Burnco Texas LLC and Burnco Rock Products Ltd., 2:20-cv-
`
`00275; case dismissed; Dkt. No. 116).
`
`
`
`Estech Systems, Inc. v. Hancock Whitney Bank and Hancock Whitney
`
`Corporation, 2:20-cv-00277, in the United States District Court for the Eastern
`
`District of Texas (consolidated with Estech Systems, Inc. v. Burnco Texas LLC and
`
`Burnco Rock Products Ltd., 2:20-cv-00275; case dismissed; Dkt. No. 124).
`
`
`
`Estech Systems, Inc. v. Oliver Street Dermatology Management, LLC
`
`d/b/a U.S. Dermatology Partners, Oliver Street 5.01(a) Inc. d/b/a U.S. Dermatology
`
`2
`
`
`
`
`Partners, and Oliver Street Dermatology ASC LLC, 2:20-cv-00311, in the United
`
`IPR2021-00574
`Patent No. 8,391,298
`
`States District Court for the Eastern District of Texas (case ismissed; Dkt. No. 124).
`
`
`
`Estech Systems, Inc. v. Regions Financial Corporation, 6:20-cv-00322,
`
`in the United States District Court for the Western District of Texas (case dismissed;
`
`Dkt. No. 85).
`
`
`
`Estech Systems, Inc. v. Private Jets, Inc., 6:20-cv-00320, in the United
`
`States District Court for the Western District of Texas (case dismissed; Dkt. No. 25).
`
`
`
`Estech Systems, Inc. v. Energy Transfer LP, 6:20-cv-00773, in the
`
`United States District Court for the Western District of Texas (case and dismissed;
`
`Dkt. No. 50).
`
`
`
`Estech Systems, Inc. v. Gensler Architecture, Design & Planning P.C.
`
`d/b/a Gensler and M. Arthur Gensler Jr. & Associates, Inc., 6:20-cv-00774, in the
`
`United States District Court for the Western District of Texas (case dismissed; Dkt.
`
`No. 39).
`
`
`
`Estech Systems, Inc. v. HWC Wire & Cable Company d/b/a Houston
`
`Wire & Cable Company, 6:20-cv-00776, in the United States District Court for the
`
`Western District of Texas (case dismissed; Dkt. No. 42).
`
`
`
`Estech Systems, Inc. v. Howard Midstream Energy Partners d/b/a
`
`Howard Energy Partners, 6:20-cv-00777, in the United States District Court for the
`
`3
`
`
`
`
`Western District of Texas (Motion for Summary Judgment granted June 21, 2022;
`
`IPR2021-00574
`Patent No. 8,391,298
`
`Dkt. No. 137).
`
`
`
`Estech Systems, Inc. v. SWBC Mortgage Corporation and Southwest
`
`Business Corporation, 6:20-cv-00778 in the United States District Court for the
`
`Western District of Texas (case dismissed; Dkt. No. 44).
`
`
`
`Cisco Systems, Inc. and Cisco Technology, Inc. v. Estech Systems, Inc.,
`
`2:21-cv-00266, in the United States District Court for the Eastern District of Texas
`
`(case pending order granting agreed motion to dismiss with prejudice; Dkt. No. 22).
`
`
`
`Cisco Systems, Inc. v. Estech Systems, Inc., No. IPR2021-00329, before
`
`the Patent and Trial Appeal Board (institution denied July 6, 2021; Paper 13).
`
`
`
`Cisco Systems, Inc. v. Estech Systems, Inc., No. IPR2021-00331, before
`
`the Patent and Trial Appeal Board (institution denied July 6, 2021; Paper 12).
`
`
`
`Cisco Systems, Inc. v. Estech Systems, Inc., No. IPR2021-00332, before
`
`the Patent and Trial Appeal Board (institution denied July 7, 2021; Paper 11).
`
`
`
`Cisco Systems, Inc. v. Estech Systems, Inc., No. IPR2021-00333, before
`
`the Patent and Trial Appeal Board (institution denied July 7, 2021; Paper 12).
`
`
`
`RingCentral, Inc. v. Estech Systems, Inc., No. IPR2021-00573, before
`
`the Patent and Trial Appeal Board (granted institution October 6, 2021; Paper 13).
`
`Estech Systems IP, LLC v. 99 Cents Only Stores, LLC and 99 Cents Only Stores
`
`Texas, Inc, 2:22-cv-00006-JRG-RSP, in the Eastern District of Texas.
`
`4
`
`
`
`
`
`Estech Systems IP, LLC v. Abbott Laboratories, 2:21-cv-00476-JRG-
`
`IPR2021-00574
`Patent No. 8,391,298
`
`
`
`RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Bayerische Motoren Werke AG and BMW of
`
`North America, LLC, 2:22-cv-00003-JRG-RSP, in the Eastern District of Texas
`
`(case dismissed without prejudice April 1, 2022; Dkt. No. 115).
`
`
`
`Estech Systems IP, LLC v. Carvana LLC, 2:21-cv-00482-JRG-RSP, in
`
`the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. The Charles Schwab Corporation, 2:22-cv-
`
`00002-JRG-RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Conduent Incorporated, Conduent Business
`
`Process Optimization Services, Inc., Conduent BPO Services, LLC, and Conduent
`
`Legal & Compliance Solutions, LLC, 2:21-cv-00478-JRG-RSP, in the Eastern
`
`District of Texas.
`
`
`
`Estech Systems IP, LLC v. Extra Space Storage Inc., Extra Space
`
`Management Inc., and Extra Space Properties 107 LLC, 2:21-cv-00484-JRG-RSP,
`
`in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. First American Financial Corporation and
`
`Republic Title of Texas, Inc., 2:22-cv-00007-JRG-RSP, in the Eastern District of
`
`Texas.
`
`5
`
`
`
`
`
`Estech Systems IP, LLC v. Fiserv, Inc. and Fiserv Solutions, LLC, 2:21-
`
`IPR2021-00574
`Patent No. 8,391,298
`
`
`
`cv-00477-JRG-RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Liberty Mutual Group, Inc., 2:21-cv-00475-
`
`JRG-RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Marriott International, 2:21-cv-00480-JRG-
`
`RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. McKesson Corporation, 2:22-cv-00004-
`
`JRG-RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Mitel Networks, Inc., 2:21-cv-00473-JRG-
`
`RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Petco Health and Wellness Company, Inc.,
`
`Petco Animal Supplies, Inc., and Petco Animal Supplies Stores, Inc., 2:22-cv-00005-
`
`JRG-RSP, in the Eastern District of Texas (case dismissed; Dkt. No. 21).
`
`
`
`Estech Systems IP, LLC v. Primoris Services Corporation and Primoris
`
`Design & Construction, Inc., 2:21-cv-00481-JRG-RSP, in the Eastern District of
`
`Texas.
`
`
`
`Estech Systems IP, LLC v. Public Storage, 2:21-cv-00483-JRG-RSP, in
`
`the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Randstad US LLC and Randstad
`
`Professionals US, LLC, 2:21-cv-00479-JRG-RSP, in the Eastern District of Texas.
`
`6
`
`
`
`
`
`Estech Systems IP, LLC v. SoFi Technologies, Inc. and SoFi Mortgage,
`
`IPR2021-00574
`Patent No. 8,391,298
`
`
`
`LLC, 2:21-cv-00485-JRG-RSP, in the Eastern District of Texas.
`
`
`
`Estech Systems IP, LLC v. Toyota Motor Corporation, Toyota Motor
`
`Sales, U.S.A., Inc., Toyota Motor Engineering & Manufacturing North America,
`
`Inc., and Toyota Motor Manufacturing, Texas, Inc., 2:22-cv-00001-JRG-RSP, in the
`
`Eastern District of Texas.
`
`C.
`
`Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)); Service
`Information (37 C.F.R. § 42.8(b)(4))
`Patent Owner provides the following designation of lead and back-up counsel
`
`and service information. Please direct all correspondence regarding this proceeding
`
`to lead and back-up counsel at their respective email addresses below. Patent Owner
`
`consents to electronic service.
`
`Lead Counsel:
`
`
`
`
`
`John Wittenzellner (Reg. No. 61,662)
`WILLIAMS SIMONS & LANDIS PLLC
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`Tel: (512) 543-1373
`Fax: (512) 793-9575
`johnw@wsltrial.com
`
`7
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`
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`Backup Counsel:
`
`
`
`
`
`IPR2021-00574
`Patent No. 8,391,298
`
`Todd E. Landis (Reg. No. 44,200)
`WILLIAMS SIMONS & LANDIS PLLC
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`Tel: (512) 543-1357
`Fax: (512) 793-9575
`tlandis@wsltrial.com
`usccounsel@wsltrial.com
`
`Dated: June 24, 2022
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`Respectfully submitted,
`
`By: /John Wittenzellner/
`John Wittenzellner
`Registration No. 61,662
`Counsel for Patent Owner
`
`
`8
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`
`
`IPR2021-00574
`Patent No. 8,391,298
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on June 24, 2022,
`
`
`
`
`
`the foregoing document was served on counsel of record for Petitioner by filing this
`
`document through the End-to-End System, as well as via electronic mail to counsel
`
`of record for Petitioner at the following addresses:
`
`K. Patrick Herman (P52PTABDocket@orrick.com)
`Alyssa Caridis (A8CPTABDocket@orrick.com)
`Clem Roberts (croberts@orrick.com)
`Robert L. Uriarte (ruriarte@orrick.com)
`Li Shen (lshen@orrick.com)
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`Respectfully submitted,
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`By: /John Wittenzellner/
`John Wittenzellner
`Registration No. 61,662
`Counsel for Patent Owner
`
`
`
`9
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`
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