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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`EPIC GAMES, INC.,
`Petitioner,
`
`v.
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`INGENIOSHARE, LLC,
`Patent Owner
`
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`U.S. PATENT NO. 10,142,810
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`Case IPR2022-00202
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE UNDER 37 C.F.R. §§ 42.23, 42.24(c), AND 42.108(c)
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..................................passim
`Beckman Coulter, Inc. v. Sysmex Corp.,
`IPR2020-01503, Paper 10 (P.T.A.B. Feb. 23, 2021) ............................................ 3
`Facebook, Inc. v. Express Mobile, Inc.,
`IPR2021-01456 Paper 10 (P.T.A.B. Mar. 3, 2022) .............................................. 3
`Other Authorities
`35 U.S.C. §314(a) ...................................................................................................... 1
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`ii
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`LIST OF PETITIONER’S EXHIBITS
`Description
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`Exhibit
`No.
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`
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`U.S. Patent No. 10,142,810
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`File History of U.S. Patent No. 10,142,810
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`Declaration of Dr. Kevin Almeroth in Support of Inter Partes Review
`of U.S. Patent No. 10,142,810
`Curriculum Vitae of Dr. Kevin Almeroth
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`U.S. Provisional Patent Application No. 60/527,565
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`U.S. Provisional Patent Application No. 60/689,686
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`U.S. Patent Application 2002/0116461 (“Diacakis”)
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`U.S. Patent Application 2004/0001480 (“Tanigawa”)
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`U.S. Patent No. 7,428,580 (“Hullfish”)
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`IngenioShare’s Infringement Contentions in Texas Litigation
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`Texas Litigation Proposed Scheduling Order
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`Fourteenth Supplemental Order Regarding Court Operations Under
`the Exigent Circumstances Created by the COVID-19 Pandemic
`Judge Albright’s Standing Order re Inter-District Transfer
`
`Kurose, J. and Ross, K., Computer Networking: A Top-Down
`Approach Feature the Internet (2000)
`Kuehn, S., A Play Theory Analysis of Computer-Mediated
`Telecommunication (Apr. 20, 1990)
`Telecomputing in Japan
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`Hernandez, R., ECPA and Online Computer Privacy (1988)
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`Miller, A., Applications of Computer Conferencing to Teacher
`Education and Human Resource Development (1991)
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`iii
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`Description
`
`Benimoff, N. and Burns, M., Multimedia User Interfaces for
`Telecommunications Products and Services (1993)
`Falconer, W. and Hooke, J., Telecommunications Services in the
`Next Decade (1986)
`Hine, N.A., et al., An Adaptable User Interface to a Multimedia
`Telecommunications Conversation Service for People with
`Disabilities (1995)
`Bazaios, A., et al., Multimedia Architecture Offering Open Distance
`Learning Services over Internet
`Stein, J., et al., Chat and Instant Messaging Systems (2002)
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`U.S. Patent Application 2002/ 0183114 (“Takahashi”)
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`U.S. Patent No. 6,241,612 (“Heredia”)
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`U.S. Patent Application 2003/0216178 (“Danieli”)
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`International Patent Application WO 01/45343 (“Davies”)
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`Grinter, R. and Palen, L., Instant Messaging in Teen Life (2002)
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`File History of U.S. Patent No. 7,729,688
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`File History of U.S. Patent No. 8,744,407
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`File History of U.S. Patent No. 9,204,268
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`File History of U.S. Patent No. 9,736,664
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`U.S. Patent No. 10,142,810 Claim Listing
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`Patil, S. and Kobsa, A., The Challenges in Preserving Privacy in
`Awareness Systems (2003)
`Internet Engineering Task Force RFC 2779 (Instant
`Messaging/Presence Protocol Requirements) (2000)
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`iv
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`Exhibit
`No.
`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`On March 31, 2022, the Board issued an Order authorizing Petitioner Epic
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`Games, Inc. (“Epic Games” or “Petitioner”) to file a four-page Reply to address
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`Patent Owner’s Preliminary Response (“POPR”). Paper 7. In the POPR, Patent
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`Owner repeatedly cites the parallel district court proceeding (the “Texas Litigation”)
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`to urge the Board to exercise its discretionary power under 35 U.S.C. § 314(a) and
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`Fintiv. See Apple v. Fintiv, IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).
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`On March 18, 2022, District Judge Alan Albright granted Petitioner’s Motion
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`to Dismiss the Texas Litigation, thereby terminating it. As explained in further detail
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`below, this dismissal moots Patent Owner’s arguments based on Fintiv. Because
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`there is no longer any parallel proceeding, there is no basis for a discretionary denial
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`under § 314(a).
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`Factor 1 (Stay Pending IPR Institution): Patent Owner argues that “[t]he
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`district court has not issued a stay in the parallel district court proceeding” and that
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`“Petitioner has not filed a motion to stay with the district court.” POPR at 10. The
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`Texas Litigation has been terminated; thus, there is no parallel proceeding to stay.
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`Factor 2 (Proximity of Trial to Final Written Decision): Patent Owner’s
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`arguments should be disregarded as there is no parallel proceeding.
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`Factor 3 (Investment in Parallel Proceeding): Patent Owner alleges that
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`“voluminous and overlapping invalidity arguments” exist for the District Court and
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`the Board to resolve favor denial of institution. POPR at 11–12. Not only is this
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`1
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`argument irrelevant to Factor 3—which contemplates the “amount and type of work
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`already completed in the parallel litigation” (Fintiv at 9)—it is moot, as the Texas
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`Litigation has been terminated.
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`Patent Owner further argues that, “given Petitioner’s/Defendant’s inconsistent
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`positions with respect to six claim terms of the ’810 Patent . . . it is possible that a
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`claim term could be construed inconsistently.” POPR at 12. This argument is
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`irrelevant and moot. The District Court did not issue a Markman order before
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`terminating the Texas Litigation, so Patent Owner’s argument does not reflect “work
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`already completed in the parallel litigation.” Fintiv at 9. This argument is further
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`irrelevant in light of the fact that here, Patent Owner does not offer any constructions
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`of its own.
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`Moreover, Petitioner’s positions were not inconsistent. Petitioner explained
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`that it “does not believe that any terms need to be construed to assess the arguments
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`presented herein.” Petition at 25. The Board has found that a petitioner is not
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`inconsistent when it “states no express construction of any terms is needed” in an
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`IPR petition while advocating affirmative claim construction positions in a different
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`forum. E.g., Facebook, Inc. v. Express Mobile, Inc., IPR2021-01456, Paper 10 at
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`19 (granting institution without construing terms because “it is not clear that
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`Petitioner is, in fact, advocating a position before us that is inconsistent with its
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`previous position in district court”) (italics in original); see also Beckman Coulter,
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`2
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`Inc. v. Sysmex Corp., IPR2020-01503, Paper 10 at 28 (“Our rules do not require that,
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`for every term for which Petitioner has proposed an express construction in a related
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`proceeding, Petitioner must propose the same construction in the Petition.”). Even
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`if Petitioner had taken inconsistent positions (it has not), the Board has held that
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`“petitioners may advocate in different fora for seemingly inconsistent positions.”
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`Facebook at 19.
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`Factor 4 (Overlap of Petition and Parallel Proceeding Issues): Patent
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`Owner repeats its arguments based on “voluminous invalidity contentions in the
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`district court litigation” and Petitioner’s allegedly “inconsistent claim construction
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`positions.” These arguments should be disregarded for the same reasons discussed
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`above with respect to Factor 3.
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`Additionally, Patent Owner argues that the Petition sets forth two different
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`definitions for the term “network-based portal”: (1) “a web page or interface that
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`connects clients to a network” and (2) “a user interface that connects clients to a
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`network.” POPR at 14. This is incorrect—Petitioner does not advance any claim
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`construction positions for any terms. Petition at 25. Moreover, Patent Owner does
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`not explain the basis for its statement that an “interface that connects clients to a
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`network” is inconsistent with a “user interface that connects clients to a network.”
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`Factor 5 (Identity of the Parties): Patent Owner’s argument is moot, as the
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`Texas Litigation has been terminated.
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`3
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`Factor 6 (Other Relevant Circumstances, Including the Merits): As set
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`forth in the Petition, Petitioner has demonstrated a likelihood of success on the
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`merits. Patent Owner advances no other other argument (and identifies no other
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`circumstance) that weighs in favor of discretionary denial.
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`For the above reasons, and in light of the termination of the Texas Litigation,
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`Petitioner respectfully requests that the Board grant institution of the Petition.
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`Date: April 7, 2022
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`Respectfully submitted,
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`/s/ W. Todd Baker
`W. Todd Baker (No. 45,265)
`todd.baker@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Telephone: (202) 389-5000
`Facsimile: (202) 389-5200
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`Yimeng Dou (No. 69,770)
`yimeng.dou@kirkland.com
`KIRKLAND & ELLIS LLP
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
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`Attorneys for Petitioner Epic Games, Inc.
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`4
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`CERTIFICATE OF COMPLIANCE
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`This Petition complies with the type-volume limitations as mandated in 37
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`C.F.R. §42.24, totaling 772 words. Counsel has relied upon the word count feature
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`provided by Microsoft Word.
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`/s/ W. Todd Baker
`W. Todd Baker (No. 45,265)
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was
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`served on April 7, 2022 by electronic mail on the attorneys of record below:
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`Cortney Alexander
`cortneyalexander@kentrisley.com
`Stephen R. Risley
`steverisley@kentrisley.com
`A courtesy copy was also served by via overnight delivery directed to the
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`attorney/agent of record for the patent as identified on USPTO PAIR and associated
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`with USPTO Customer No. 34,071 at the following address:
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`C. Thomas (No. 32,947)
`Peter Tong (No. 35,757)
`4010 Moorpark Ave., Ste. 211
`San Jose, CA 95117
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`/s/ W. Todd Baker
`W. Todd Baker (No. 45,265)
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