`571-272-7822
`
`Paper 9
`Date: August 27, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RINGCENTRAL, INC.,
`Petitioner,
`
`v.
`
`ESTECH SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298 B2)1
`____________
`
`Before THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`
`1 The parties are not authorized to use this caption.
`
`
`
`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298 B2)
`
`
`I. INTRODUCTION
`
`
`
`In each of these proceedings, Patent Owner has identified parallel
`
`infringement litigations pending in the Eastern District and Western District
`
`of Texas involving the patents being challenged by Petitioner, and asked the
`
`Board to exercise its discretion to deny institution under Apple Inc. v. Fintiv
`
`Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`
`(“Fintiv”). As Patent Owner’s requests are substantively identical in the two
`
`proceedings, unless otherwise specified, in this Order our citations will refer
`
`to IPR2021-00573. However, our discussion and Oder apply to both
`
`proceedings.
`
`
`
`
`
`
`
`II. DISCUSSION
`
`Patent Owner contends “two parallel litigations will be decided by a
`
`jury before any final written decision (‘FWD’) would issue on the Petition—
`
`the first thirteen months before any FWD and the second five months before
`
`any FWD.” Paper 8 (“Prelim. Resp.”), 1. Patent Owner continues: “Trial in
`
`the related . . . Western District of Texas . . . [litigation] involving . . . the
`
`’349 patent is scheduled for April 11, 2022, approximately five months
`
`before the statutory date for a FWD in this proceeding.” Id. at 2–3. Still
`
`further, “[a] second litigation in the Eastern District of Texas . . . involving
`
`the ’349 patent is scheduled for trial on August 2, 2021 – thirteen months
`
`before the statutory date for a FWD in this proceeding.” Id. at 3.
`
`
`
`In support of these assertions, Patent Owner relies on (1) a docket
`
`control order in the Eastern District of Texas litigation (Ex. 2001), showing
`
`that jury selection in that litigation was to have occurred on August 2, 2021
`
`2
`
`
`
`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298 B2)
`
`(now past), and (2) an agreed scheduling order in the Western District of
`
`Texas litigation (Ex. 2002) setting jury selection and trial for April 11, 2022.
`
`
`
`These scheduling documents were filed with Patent Owner’s
`
`Preliminary Response, on July 8, 2021. Since that date, neither party has
`
`provided the Board with updated scheduling information on those parallel
`
`litigations.
`
`
`
`In order to evaluate Patent Owner’s request for denial of the petitions
`
`under Fintiv, the Board needs up-to-date scheduling information on the
`
`parallel litigations relied on by Patent Owner. In addition, the Board needs
`
`further clarification on the extent of overlap between the prior art relied
`
`upon on in the parallel litigations in the Eastern and Western District of
`
`Texas and in these proceedings.
`
`III. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that by September 10, 2021, Patent Owner will file a
`
`
`
`
`
`status report on the schedules in the the parallel Eastern and Western District
`
`of Texas litigations relied on by Patent Owner in its request for denial of the
`
`petitions based on Fintiv;
`
`
`
`FURTHER ORDERED that this report will include any changes to the
`
`schedules set forth in Exhibits 2001 and 2002, and especially the status of
`
`the trial scheduled for August 2, 2021, in the parallel Eastern District of
`
`Texas litigation;
`
`
`
`FURTHER ORDERED that Patent Owner has a continuing duty to
`
`advise the Board promptly of any changes to the trial dates or the pre-trial
`
`schedules in the parallel Eastern and Western District of Texas litigations;
`
`and
`
`3
`
`
`
`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298 B2)
`
`
`FURTHER ORDERED that by September 10, 2021, Petitioner and
`
`Patent Owner will file a joint statement on the extent to which the prior art
`
`cited in the petitions in these proceedings will be relied upon in the trials
`
`scheduled in the parallel Eastern and Western District of Texas litigations.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER:
`
`K. Patrick Herman
`Alyssa Caridis
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`p52ptabdocket@orrick.com
`a8cptabdocket@orrick.com
`
`
`PATENT OWNER:
`
`Todd Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`
`
`4
`
`
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