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