Litigation

Cisco Systems, Inc. v. XR Communications, LLC d/b/a Vivato Technologies

Final Written Decision

IPR2018-00763

Filed
2018-03-15

Patents at issue (1)

7729728

Summary

Inter partes review of U.S. 7,729,728; independent claims 1, 7, and 16 were held unpatentable.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research the case and its surrounding litigation to give you a well-grounded overview.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Framing note

The docket number in the case metadata (IPR2018‑00763) is the PTAB proceeding, Cisco Systems, Inc. v. XR Communications, LLC d/b/a Vivato Technologies, on U.S. 7,729,728 (the ’728 patent). The "litigation" proper is the district‑court campaign XR ran against Cisco and nine other Wi‑Fi vendors. The two tracks are tightly interlocked: the IPR outcomes are what actually ended the Cisco case. I cover both, in date order, and flag what I could and could not verify.

1. The district court case: filing and pleadings

Case: XR Communications, LLC d/b/a Vivato Technologies v. Cisco Systems, Inc., No. 2:17‑cv‑02951‑AG‑JCG (C.D. Cal., Santa Ana Div.), filed 2017‑04‑19, assigned to Judge Andrew J. Guilford (Magistrate Judge Jay C. Gandhi). It was one of ten near‑identical suits filed in April–May 2017 against D‑Link, Belkin, Xirrus, Ubiquiti, Ruckus, Netgear, Extreme, Cisco, ASUS and Aruba, plus later ARRIS and Amped Wireless (list reproduced in Cisco's IPR petition exhibits, Ex. 1013/1014). All were consolidated into the lead case XR Communications, LLC v. D‑Link Systems, Inc., No. 8:17‑cv‑00596‑AG(JCGx) (later reassigned to Judge David O. Carter and renumbered SA CV 17‑00596‑DOC‑JDE).

  • 2017‑05‑03 — Cisco served; answer deadline extended by stipulation to 2017‑06‑23 (C.D. Cal. docket, CourtListener).
  • 2017‑06/07 — Cisco answered and asserted declaratory‑judgment counterclaims of non‑infringement and invalidity (the later final judgments dismiss "all counterclaims," confirming DJ counterclaims were in the case). I did not independently verify the exact answer date; the docket shows only the extended June 23 deadline.
  • 2017‑07‑14 — XR filed a First Amended Complaint asserting three patents: U.S. 7,062,296 (’296), 7,729,728 (’728) and 6,611,231 (’231). Ultimately XR asserted 29 claims across the three patents against the ten defendants (Defs.' Opening Claim Construction Brief, Ex. 1013 to IPR2018‑00762).
  • Mid‑2017 — Cisco moved under Rule 12(b)(6) to dismiss the willfulness allegations (noticed for hearing 2017‑08‑07 before Judge Guilford). Outcome of that motion is not in the public excerpts I could retrieve.
  • 2017‑08‑28 — Rule 16 scheduling conference.

2. Pre‑trial motions of substance

Claim construction (Markman). This is the one stage where the record is thin in public sources. What is documented:

  • Joint Claim Construction and Prehearing Statement filed 2018‑02‑09 (Dkt. 126; amended Ex. A at Dkt. 126‑2, 2018‑03‑14).
  • Simultaneous opening claim construction briefs (Vivato's and Defendants') and a Markman hearing set for 2018‑04‑10 before Judge Guilford. Disputed terms included "adaptive antenna," "transmission peaks/nulls," "control logic," "search receiver logic," "smart

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for the petitioner/plaintiff in this IPR.

Bottom line

IPR2018-00763 is a PTAB proceeding, so the "plaintiff" in the caption is Cisco Systems, Inc. as Petitioner (the party that initiated). Cisco was represented by outside counsel from Haynes and Boone, LLP, prosecuting under USPTO Customer No. 27683 — the same team that handled Cisco's six-petition campaign against XR Communications/Vivato's '296, '728, and '231 patents (IPR2018-00725, -00726, -00762, -00763, -00764, -01017, -01018). No Cisco in-house attorney appeared of record in the PTAB filings I could locate.

⚠️ Sourcing caveat: I was not able to open the IPR2018-00763 docket sheet or its Power of Attorney / Mandatory Notices directly in this session. The roster below is built from (a) Cisco's Power of Attorney and Mandatory Notices filings in the sibling Cisco v. XR IPRs under the same Customer Number, (b) PTAB correspondence captioned in the XR IPR family, and (c) Federal Circuit appearances in the ensuing appeal. Because Cisco used one Haynes and Boone team across all six petitions, attribution to -763 specifically is highly likely but should be confirmed against Papers 2–3 (Petition/Power of Attorney) and the Mandatory Notices in -763 itself.

Counsel of record for Cisco Systems, Inc. (Petitioner)

Attorney Role Firm / Office Experience note
David L. McCombs (USPTO Reg. No. 32,271) Lead counsel Haynes and Boone, LLP — 2323 Victory Ave., Suite 700, Dallas, TX 75219 Chair of Haynes Boone's Technology Practice; Cisco's principal PTAB/Federal Circuit strategist. Listed as Lead Counsel on Cisco's Power of Attorney under Customer No. 27683 in the parallel XR petitions and in many other Cisco IPRs.
Theodore M. Foster (USPTO Reg. No. 57,456) Backup counsel (later lead counsel on other Cisco matters) Haynes and Boone — 2505 N. Plano Rd., Suite 4000, Richardson, TX 75082 (subsequently Denver, CO) Signed PTAB correspondence in the XR IPR family expressly as "Backup Counsel for Cisco Systems, Inc."; handled scheduling/oral-hearing logistics for the related '296 IPR (IPR2018-00764); also appeared for Cisco at the Federal Circuit.
Debra Janece McComas Of counsel Haynes and Boone — Dallas, TX Member of Cisco's appellate team; entered appearance as of counsel for Cisco in the related Federal Circuit appeal (No. 20-1105) and is listed on Cisco's Federal Circuit briefing in Apple/Cisco/Google/Intel v. Vidal (Fed. Cir. 24-1864).
Angela M. Oliver Of counsel Haynes and Boone — Washington, DC Entered appearance as of counsel for Cisco in the Federal Circuit appeal (No. 20-1105) and argued for Cisco there; not confirmed as an appearance in the -763 PTAB record itself.
Eugene Goryunov Of counsel Haynes and Boone — Chicago, IL Federal Circuit appearance for Cisco alongside Foster, McComas, McCombs, and Oliver; not confirmed in the -763 PTAB record.

Note on in-house counsel: I found no Cisco in-house attorney listed as counsel of record. Cisco's VP of Litigation, Leslie McKnew, is publicly identified as the executive who oversees Haynes Boone's Cisco patent work (firm press release, Aug. 23, 2017, naming McCombs, Foster, Andrew Ehmke, and Ken Parker), but that is corporate oversight, not an appearance in this docket.

If you meant the patent owner / district-court plaintiff

If the question is aimed at XR Communications, LLC d/b/a Vivato Technologies — which was the plaintiff in the underlying C.D. Cal. infringement actions (e.g., XR Communications v. Cisco Systems, No. 2:17-cv-02951-AG-JCG) — its PTAB counsel per the Mandatory Notices filed in this IPR family was Noroozi PC:

  • William P. Rothwell (Reg. No. 72,522) — lead counsel, Noroozi PC, 2245 Texas Drive, Suite 300, Sugar Land, TX.
  • Kayvan B. Noroozi — first backup counsel (pro hac vice pending at the time), Noroozi PC, 1299 Ocean Ave., Suite 450, Santa Monica, CA. He was also principal counsel for XR/Vivato at the Federal Circuit in No. 20-1105.
  • Joel P.N. Stonedale (Reg. No. 76,924) — second backup counsel, Noroozi PC, Sugar Land, TX.

(Source: XR Communications' Mandatory Notices filed in IPR2018-00762/-00726, which list the pending Cisco v. XR IPRs including IPR2018-00763.)

Outcome context relevant to the counsel listing

The '728 patent's challenged claims (including independent claims 1, 7, and 16) were held unpatentable, and the C.D. Cal. court thereafter entered final judgment for Cisco, reciting that "all asserted claims from the '296 patent and the '728 patent were cancelled by the U.S. Patent Office pursuant to Final Written Decisions of the Patent Trial and Appeal Board" in IPR2018-00725, -00726, -00763, -00764, -01017, and -01018 (Dkt. 42, XR Communications v. Cisco, No. 2:17-cv-02951-AG-JCG, Apr. 15, 2022).

Suggested verification step: pull PTAB Paper 2 (Power of Attorney), the Mandatory Notices, and the FWD caption in IPR2018-00763 via PTAB E2E / Docket Alarm to confirm that McCombs and Foster — rather than a different Haynes Boone pair — were the named lead and backup counsel in this proceeding.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Threshold point: who is the "defendant" here

The docket number in the metadata (IPR2018‑00763) is a PTAB inter partes review, not a district‑court infringement suit, and its caption runs Cisco Systems, Inc. (Petitioner) v. XR Communications, LLC d/b/a Vivato Technologies (Patent Owner). So the party occupying the defensive/responding role — the party whose counsel the question is really asking about — is XR Communications / Vivato. In the co‑pending C.D. Cal. infringement action, XR Communications, LLC v. Cisco Systems, Inc., No. 2:17‑cv‑02951‑AG (JCGx) (later DOC), the roles reverse: XR was plaintiff and Cisco was the defendant. I give both sides below, because the user's phrasing ("patent infringement case," "defendant(s)") maps onto the district court case, while the case number maps onto the IPR.

1. Counsel of record for XR Communications (Patent Owner) in IPR2018‑00763

All from Noroozi PC (a patent‑litigation boutique founded by Kayvan Noroozi; offices in Santa Monica, CA and Sugar Land, TX).

Attorney Role Firm / office Note
William P. Rothwell (USPTO Reg. No. 72,522) Lead counsel Noroozi PC, 2245 Texas Drive, Suite 300, Sugar Land, TX 77479 Registered patent attorney; the designated lead in XR/Vivato's Patent Owner filings across the six‑petition Vivato IPR wave (IPR2018‑00725/‑00726/‑00763/‑00764/‑01017/‑01018).
Kayvan B. Noroozi Back‑up counsel (admission pro hac vice noted as pending in the April 2018 notices; he subsequently appeared for XR before the Board and the Federal Circuit) Noroozi PC, 1299 Ocean Ave., Suite 450, Santa Monica, CA 90401 Founder of the firm; principal appellate/PTAB counsel for XR. Lead counsel for XR as appellee in Cisco Sys., Inc. v. XR Commc'ns, LLC, No. 2020‑1105 (Fed. Cir. Nov. 25, 2020) (nonprecedential), where the Board's decision in the '231‑patent IPR was affirmed.
Joel P.N. Stonedale (Reg. No. 76,924) Second back‑up counsel Noroozi PC, 2245 Texas Drive, Suite 300, Sugar Land, TX 77479 PTAB practitioner on the Vivato IPR team; appeared for Patent Owner at the Jan. 28, 2019 consolidated conference call in the related proceedings.

Sourcing for the above: Patent Owner's Mandatory Notices under 37 C.F.R. § 42.8 filed in the co‑pending Vivato IPRs (the notice expressly lists IPR2018‑00763 as a related proceeding), e.g. the notice filed in IPR2018‑00762 (Apr. 3, 2018), and Petitioner's service certificates in the sibling cases, which certify service on "counsel of record for patent owner: William Rothwell … Kayvan Noroozi … NOROOZI PC, Joel Stonedale." The Board's Jan. 28, 2019 order in IPR2018‑00764 lists the same three Noroozi PC attorneys for Patent Owner in IPR2018‑00726. XR was still represented by Noroozi PC at the merits stage — e.g., Patent Owner's Sur‑reply, IPR2018‑00763, Paper 27 (May 17, 2019), and the Final Written Decision, Paper 38 (Oct. 3, 2019) (52 pp.).

Caveat on precision: the P‑TACTS/PTAB E2E docket sheet for IPR2018‑00763 itself did not render in retrievable form through the searches I ran; the counsel identification above rests on the Mandatory Notices, service certificates, and Board orders in the consolidated Vivato IPR family plus the FWD citation in later patent literature. I did not find any notice of substitution or withdrawal of Noroozi PC in this IPR through the Final Written Decision, and I found no sealed counsel listings. If you need the exact Paper numbers for XR's power of attorney and any pro hac vice admission order in -00763 specifically, that should be pulled directly from PTAB E2E.

Petitioner's side (for completeness, not "defendant"): Cisco's PTAB and appellate representation was not Noroozi's counterpart firm in these filings — the '231 appeal was handled by Haynes and Boone, LLP (David L. McCombs, Theodore M. Foster, Debra Janece McComas, Angela M. Oliver), per the Fed. Cir. docket in No. 2020‑1105. I did not verify Cisco's IPR2018‑00763 power‑of‑attorney counsel and will not guess at it; note that in the Aruba/HPE '728 IPR (IPR2018‑00726), petitioner's counsel was Covington & Burling (David A. Garr, Jay I. Alexander, Peter P. Chen).

2. Defense counsel for Cisco in the parallel C.D. Cal. infringement case (No. 2:17‑cv‑02951)

If the intended question is the district‑court defendant (Cisco), the docket shows:

Attorney Role Firm / office Note
Michael W. De Vries Appeared as Cisco's lead signing attorney (answer/counterclaim, Dkt. 31, Aug. 7, 2017; motion practice, Dkt. 25–30) Widely identified as Kirkland & Ellis LLP (Los Angeles) — firm affiliation not stated on the docket entry itself Veteran patent trial lawyer; Cisco is a long‑standing Kirkland client.
Adam R. Alper Notice of appearance, Dkt. 17 (June 21, 2017) Kirkland & Ellis LLP (San Francisco) — affiliation inferred, not stated on docket Patent litigator; frequently appears for Cisco.
Sarah E. Piepmeier Notice of appearance, Dkt. 12 (May 12, 2017); still Cisco's arguing counsel on appeal Perkins Coie LLP, San Francisco (confirmed in the Fed. Cir. opinion, No. 2022‑1785, May 18, 2023) Argued Cisco's successful collateral‑estoppel/indefiniteness defense at the Federal Circuit in XR Commc'ns v. ASUS Computer Int'l et al., 2022‑1785 et al. (affirming judgment for Cisco and co‑defendants).
Ryan Brodie Hawkins Notice of appearance, Dkt. 41 (Mar. 3, 2021) Perkins Coie LLP, San Diego (per Fed. Cir. opinion) Same appeal team.
Sarah L. Forney Notice of appearance, Dkt. 21 (June 22, 2017) Firm not verified from the docket entry Flagged as unverified rather than guessed.

Outcome note: Cisco won below and on appeal — Final Judgment, Dkt. 42 (Apr. 15, 2022), entered after the PTAB cancelled all asserted '296 and '728 claims in IPR2018‑00725/‑00726/‑00763/‑00764/‑01017/‑01018 and after collateral estoppel on the '231 patent; affirmed, No. 2022‑1785 (Fed. Cir. May 18, 2023). Docket also shows the case was stayed and administratively closed on May 22, 2018 pending the IPRs (Dkt. 39).

Plaintiff XR's district‑court counsel (for contrast — XR is the plaintiff there): Reza Mirzaie, Marc Fenster, Kent Shum, Christian Conkle and James N. Pickens appear throughout the 2017–2018 docket entries (Dkt. 1, 13, 27, 34, 36, 38). These names are conventionally associated with Russ August & Kabat (Los Angeles), but the docket entries themselves do not state the firm, so treat the firm attribution as reported rather than docket‑verified.

Sources and limitations