`Tel: 571-272-7822
`
`Paper 11
`Date: March 31, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`____________
`
`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`IPR2022-00294 (Patent 10,492,038 B2)
` IPR2022-00295 (Patent 10,492,038 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG,
`PATRICK M. BOUCHER, and STEVEN M. AMUNDSON,
`Administrative Patent Judges.2
`
`PER CURIAM.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 We exercise our discretion to issue one Order for all four proceedings. The
`proceedings have not been consolidated, and the parties are not permitted to
`use this caption.
`2 This is not an expanded panel. A three-judge panel is assigned to each
`proceeding.
`
`
`
`
`
`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`IPR2022-00294 (Patent 10,492,038 B2)
`IPR2022-00295 (Patent 10,492,038 B2)
`
`
`On November 15, 2021, Epic Games, Inc. (“Petitioner”) filed a
`Petition (Paper 2) in IPR2022-00202 requesting an inter partes review of
`claims 1–20 in U.S. Patent No. 10,142,810 B2 (“the ’810 patent”). On
`February 28, 2022, IngenioShare, LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 6).
`On December 7, 2021, Petitioner filed a Petition (Paper 1) in
`IPR2022-00291 requesting an inter partes review of claims 1–9 and 15–17
`in U.S. Patent No. 10,708,727 B2 (“the ’727 patent”). On March 18, 2022,
`Patent Owner filed a Preliminary Response (Paper 7).
`On December 7, 2021, Petitioner filed a Petition (Paper 1) in
`IPR2022-00294 requesting an inter partes review of claims 7–12, 22–24,
`and 33–67 in U.S. Patent No. 10,492,038 B2 (“the ’038 patent”). On
`March 13, 2022, Patent Owner filed a Preliminary Response (Paper 10).
`On December 7, 2021, Petitioner filed a Petition (Paper 1) in
`IPR2022-00295 requesting an inter partes review of claims 7–12, 22–24,
`and 33–67 in the ’038 patent. On March 13, 2022, Patent Owner filed a
`Preliminary Response (Paper 8).
`In each Preliminary Response, Patent Owner argues that we should
`exercise our discretion under 35 U.S.C. § 314(a) to deny institution in light
`of a related civil action where Patent Owner has asserted the ’810, ’727, and
`’038 patents against Petitioner, i.e., IngenioShare, LLC v. Epic Games, Inc.,
`No. 6:21-cv-00663-ADA (W.D. Tex. filed June 25, 2021) (“the Texas
`case”).
`
`2
`
`
`
`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`IPR2022-00294 (Patent 10,492,038 B2)
`IPR2022-00295 (Patent 10,492,038 B2)
`
`
`On March 18, 2022, the district court in the Texas case granted
`Petitioner’s motion to dismiss for improper venue, thus ending that case.
`Ex. 3001, 9.
`On March 29, 2022, Petitioner’s counsel emailed the Board to request
`authorization to file a preliminary reply in each proceeding to address
`discretionary denial under § 314(a), e.g., to “provide an updated status on
`the parallel district court litigation.” Ex. 3002. Petitioner’s counsel reports
`that “Patent Owner has indicated it does not object to this request provided
`Petitioner does not object to Patent Owner filing sur-replies” and that
`“Petitioner does not object.” Id.
`Under the circumstances here, we believe that further briefing will
`assist us in deciding whether to exercise our discretion under § 314(a) to
`deny institution.
`
`ORDER
`
`Accordingly, it is
`ORDERED that no later than five business days after the date of this
`order, Petitioner may in each proceeding file a Preliminary Reply no longer
`than four pages that addresses discretionary denial under § 314(a);
`FURTHER ORDERED that no later than five business days after
`Petitioner files a Preliminary Reply, Patent Owner may in each proceeding
`file a Preliminary Sur-reply no longer than four pages that responds to the
`Preliminary Reply; and
`
`3
`
`
`
`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`IPR2022-00294 (Patent 10,492,038 B2)
`IPR2022-00295 (Patent 10,492,038 B2)
`
`
`FURTHER ORDERED that Petitioner may not file any new evidence
`with a Preliminary Reply and Patent Owner may not file any new evidence
`with a Preliminary Sur-reply.
`
`
`
`4
`
`
`
`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`IPR2022-00294 (Patent 10,492,038 B2)
`IPR2022-00295 (Patent 10,492,038 B2)
`
`PETITIONER:
`
`W. Todd Baker
`Yimeng Dou
`KIRKLAND & ELLIS LLP
`todd.baker@kirkland.com
`yimeng.dou@kirkland.com
`Epic_IngenioShare@kirkland.com
`
`
`PATENT OWNER:
`
`Stephen R. Risley
`Cortney S. Alexander
`KENT & RISLEY LLC
`steverisley@kentrisley.com
`cortneyalexander@kentrisley.com
`
`
`5
`
`
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