`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BOX, INC., and DROPBOX, INC.,
`Petitioner,
`
`v.
`
`TOPIA TECHNOLOGY, INC.,
`Patent Owner.
`
`___________________
`
`
`Case No. IPR2023-00429
`U.S. Patent No. 10,289,607
`
`___________________
`
`
`DECLARATION OF L. ROMAN RACHUBA
`
`
`
`
`
`Topia Exhibit 2016
`Page 1 of 5
`
`
`
`I, L. Roman Rachuba, state and declare as follows:
`
`IPR2023-00429
`Ex. 2016
`
`
`1.
`
`I am a member of the bar of the State of Maryland and the District of
`
`Columbia, and am admitted to practice in the U.S. Patent & Trademark Office
`
`(Registration No. 75,180). I am backup counsel representing Patent Owner, Topia
`
`Technology, Inc. in this Inter Partes Review. Each of the following statements is
`
`made of my own personal knowledge, and if called upon to testify thereto, I could
`
`and would competently do so.
`
`2.
`
`I have prepared this Declaration in connection with the Patent Owner’s
`
`Preliminary Response in IPR2023-00429 of U.S. Patent No. 10,289,607.
`
`3.
`
`The document filed concurrently herewith as Exhibit 2001 is a true and
`
`correct copy of the Hearing Transcript and Order Denying Defendant Egnyte’s
`
`Motion to Stay in Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB .
`
`4.
`
`The document filed concurrently herewith as Exhibit 2002 is a true and
`
`correct copy of a screenshot of Egnyte Inc.’s Webpage, captured May 8, 2023:
`
`https://www.egnyte.com/dropbox-replacement.
`
`5.
`
`The document filed concurrently herewith as Exhibit 2003 is a true and
`
`correct copy of Defendant Egnyte’s invalidity contentions in Topia Technology, Inc.
`
`v. Egnyte, Inc., C.A. No. 21-1821-CJB.
`
`6.
`
`The document filed concurrently herewith as Exhibit 2004 is a true and
`
`correct copy of Defendants’ joint invalidity contentions in Topia Technology, Inc. v.
`
`
`
`1
`
`Topia Exhibit 2016
`Page 2 of 5
`
`
`
`
`Box, Inc., SailPoint Technologies Holdings, Inc., and Vistra, Inc., 6:20-cv-01175-
`
`IPR2023-00429
`Ex. 2016
`
`ADA and Topia Technology, Inc. v. Dropbox, Inc., SailPoint Technologies
`
`Holdings, Inc., and Clear Channel Outdoor Holdings, Inc., 6:21-cv- 001373-ADA.
`
`7.
`
`The document filed concurrently herewith as Exhibit 2005 is a true and
`
`correct copy of the Scheduling Order in Topia Technology, Inc. v. Egnyte, Inc., C.A.
`
`No. 21-1821-CJB.
`
`8.
`
`The document filed concurrently herewith as Exhibit 2006 is a true and
`
`correct copy of the Scheduling Order in Topia Technology, Inc. v. Box, Inc.,
`
`SailPoint Technologies Holdings, Inc., and Vistra, Inc., 6:20-cv-01175-ADA.
`
`9.
`
`The document filed concurrently herewith as Exhibit 2007 is a true and
`
`correct copy of the USPTO Memo regarding Interim Procedure for Discretionary
`
`Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation
`
`(“Fintiv Memo”).
`
`10. The document filed concurrently herewith as Exhibit 2008 is a true and
`
`correct copy of the Pro Hac Vice Motion for Heidi Keefe filed by Defendant Egnyte
`
`in Topia Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB, D.I. 61 (and
`
`screenshot of Minute Order granting motion.
`
`11. The document filed concurrently herewith as Exhibit 2009 is a true and
`
`correct copy of the Motion to Stay filed by Defendant in Topia Technology, Inc. v.
`
`Box, Inc., 3:23-cv-00063-JSC .
`
`
`
`2
`
`Topia Exhibit 2016
`Page 3 of 5
`
`
`
`12. The document filed concurrently herewith as Exhibit 2010 is a true and
`
`IPR2023-00429
`Ex. 2016
`
`
`
`correct copy of Unified Patents LLC v. Justservice.net LLC, IPR2020-01258, Exhibit
`
`2017 (PTAB 2022).
`
`13. The document filed concurrently herewith as Exhibit 2011 is a true and
`
`correct copy of Unified Patents LLC. v. Topia Technology, Inc., IPR2022-00782,
`
`Paper 8 (PTAB 2022).
`
`14. The document filed concurrently herewith as Exhibit 2012 is a true and
`
`correct copy of the Proof of Service for Complaint filed against Egnyte in Topia
`
`Technology, Inc. v. Egnyte, Inc., C.A. No. 21-1821-CJB.
`
`15. The document filed concurrently herewith as Exhibit 2013 is a true and
`
`correct copy of the Declaration of Dr. Prashant Shenoy.
`
`16. The document filed concurrently herewith as Exhibit 2014 is a true and
`
`correct copy of the Curriculum Vitae of Dr. Prashant Shenoy.
`
`17. The document filed concurrently herewith as Exhibit 2015 is a true and
`
`correct copy of Selected Excerpts from Microsoft Computer Dictionary, Fifth
`
`Edition (2002).
`
`18.
`
`I declare under penalty of perjury under the laws of the United States
`
`of America that the foregoing is true and correct.
`
`
`
`
`
`
`
`3
`
`Topia Exhibit 2016
`Page 4 of 5
`
`
`
`IPR2023-00429
`Ex. 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Roman Rachuba /
`L. Roman Rachuba
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: May 9, 2023
`
`
`
`
`4
`
`Topia Exhibit 2016
`Page 5 of 5
`
`
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