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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner
`
`
`U.S. PATENT NO. 10,492,038
`
`Case IPR2022-00294
`
`
`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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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`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
`
`
`
`ii
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`LIST OF PETITIONER’S EXHIBITS
`Description
`
`Exhibit
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`
`
`U.S. Patent No. 10,492,038
`
`File History of U.S. Patent No. 10,492,038
`
`Declaration of Dr. Kevin Almeroth in Support of Inter Partes Review
`of U.S. Patent No. 10,492,038
`Curriculum Vitae of Dr. Kevin Almeroth
`
`U.S. Provisional Patent Application No. 60/527,565
`
`U.S. Provisional Patent Application No. 60/689,686
`
`U.S. Patent Application 2002/0116461 (“Diacakis”)
`
`U.S. Patent No. 7,287,056 (“Loveland”)
`
`U.S. Patent Application 2002/0183114 (“Takahashi”)
`
`IngenioShare’s Infringement Contentions in Texas Litigation
`
`Texas Litigation Proposed Scheduling Order
`
`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
`
`Hernandez, R., ECPA and Online Computer Privacy (1988)
`
`Miller, A., Applications of Computer Conferencing to Teacher
`Education and Human Resource Development (1991)
`
`iii
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
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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)
`
`U.S. Patent No. 6,241,612 (“Heredia”)
`
`U.S. Patent Application 2003/0216178 (“Danieli”)
`
`International Patent Application WO 01/45343 (“Davies”)
`
`Grinter, R. and Palen, L., Instant Messaging in Teen Life (2002)
`
`File History of U.S. Patent No. 8,744,407
`
`File History of U.S. Patent No. 9,736,664
`
`U.S. Patent No. 10,492,038 Claim Listing
`
`U.S. Patent No. 6,828,924 (“Gustavsson”)
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`File History of U.S. Patent No. 9,204,268
`
`Exhibit
`No.
`1021
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`1022
`
`1023
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`1024
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`1025
`
`1026
`
`1027
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`1028
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`1029
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`1030
`
`1031
`
`1032
`
`1033
`
`1036
`
`
`
`iv
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
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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 11. 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).
`
`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 7–8. 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 9. Not only is this argument
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`1
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
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`irrelevant to Factor 3—which contemplates the “amount and type of work already
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`completed in the parallel litigation” (Fintiv at 9)—it is moot, as the Texas Litigation
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`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 four claim terms of the ’038 Patent . . . it is possible that a
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`claim term could be construed inconsistently.” POPR at 9. 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
`
`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 26. 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
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
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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 “advocates for an
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`interpretation of ‘network-based portal’ that deviates from its ordinary meaning by
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`asserting that it constitutes a client terminal containing a web page or interface that
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`connects clients to a network.” POPR at 11. This is incorrect—Petitioner does not
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`advance any claim construction positions for any terms. Petition at 26. Moreover,
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`Patent Owner does not explain the basis for its statement that the Petition deviates
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`from the ordinary meaning of “network-based portal.” Nor does Patent Owner
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`articulate what it believes the ordinary meaning is.
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`3
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
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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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`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,
`
`/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
`
`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
`
`Attorneys for Petitioner Epic Games, Inc.
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`4
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
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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 774 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
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
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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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