From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Baker, W. Todd
`Trials
`steverisley@kentrisley.com; cortneyalexander@kentrisley.com; Dou, Yimeng; Heffernan, Jeannie; Shi, Lindsey Y.;
`Simmons, Joshua L.
`Epic Games v. IngenioShare: IPR2022-00202, IPR2022-00291, IPR2022-00294, IPR2022-00295, and IPR2022-
`00297
`Tuesday, March 29, 2022 8:29:47 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board:
`
`Petitioner in the above-referenced IPRs requests leave to file limited Replies to the Patent
`Owner Preliminary Responses. Patent Owner has indicated it does not object to this request
`provided Petitioner does not object to Patent Owner filing sur-replies. Petitioner does not
`object.
`
`With respect to IPR2022-00202, -00291, -00294, and -00295, Petitioner seeks authorization to
`file pre-institution replies to address Patent Owner’s arguments (at around pp. 10–15 of each
`Preliminary Response) that the Board should exercise its discretion under Fintiv to deny
`institution of the IPRs. To address this issue, with respect to each petition, Petitioner seeks
`authorization to file a reply of no more than 4 pages.
`
`The Petitioner replies would provide an updated status on the parallel district court litigation,
`IngenioShare, LLC v. Epic Games Inc., 6:21-cv-00663-ADA (W. D. Tex.). On March 18, 2022,
`Judge Alan Albright granted Petitioner Epic Games’ Motion to Dismiss, thereby terminating
`the proceeding. Petitioner’s replies will address Patent Owner’s Fintiv arguments in light of
`this dismissal.
`
`Good cause exists because a discretionary denial is case dispositive. And the Board has
`commonly found that updated briefing on the Fintiv factors is useful when the status of the
`parallel proceeding has materially changed, for example. See, e.g., Samsung Elec. Co. v.
`Netlist, Inc., IPR2022-00062, Paper No. 8 (P.T.A.B. Mar. 11, 2022) at 2–3.
`
`With respect to IPR2022-00297 (‘407 Patent), Patent Owner filed its Preliminary Response
`after the dismissal of the parallel district court case, and therefore does not make
`discretionary denial arguments. Petitioner seeks authorization to file a pre-institution reply of
`no more than 4 pages to confirm for the record that the parallel district court case was
`terminated and to ask the Board not to exercise its discretionary denial power in light of this
`termination.
`
`IPR2022-00202, -00291, -00294,
`-00295
` Ex. 3002
`
`

`

`If a call with the parties is necessary, Petitioner is available at the following times for a
`teleconference to discuss:
`
`Friday, April 1 at 1:00 PM ET
`Monday, April 4, at 2:00 PM ET
`
`Respectfully submitted,
`
`Todd Baker
`Counsel for Petitioner
`--------------------------------------------------------------
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W., Washington, D.C. 20004
`T +1 202 389 3135 M +1 443 622 8802
`F +1 202 389 5200
`--------------------------------------------------------------
`todd.baker@kirkland.com
`
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