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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 IPR2022-00295
`
`
`
`PETITIONER’S MOTION FOR THE PRO HAC VICE ADMISSION OF
`LINDSEY Y. SHI
`
`
`
`
`
`
`
`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
`
`LIST OF PETITIONER’S UPDATED EXHIBITS
`
`
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`
`
`Description
`
`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
`
`Unused
`
`U.S. Patent No. 7,287,056 (“Loveland”)
`
`U.S. Patent Application 2002/0183114 (“Takahashi”)
`
`U.S. Patent Application 2004/0001480 (“Tanigawa”)
`
`U.S. Patent No. 7,428,580 (“Hullfish”)
`
`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
`
`i
`
`
`
`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
`
`Description
`
`Exhibit
`No.
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`
`
`Hernandez, R., ECPA and Online Computer Privacy (1988)
`
`Miller, A., Applications of Computer Conferencing to Teacher
`Education and Human Resource Development (1991)
`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”)
`
`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)
`File History of U.S. Patent No. 9,204,268
`
`Declaration of Yimeng Dou Pursuant to 37 C.F.R. 42.64(b)(2)
`
`ii
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`
`
`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
`
`Description
`
`Exhibit
`No.
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
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`Declaration of Jennifer A. Babbitt Pursuant to 37 C.F.R. 42.64(b)(2)
`
`Supplemental Declaration of Dr. Kevin Almeroth Pursuant to 37
`C.F.R. 42.64(b)(2)
`Comparison between Paper 17 (Patent Owner Response) and Ex.
`2005 (Declaration of Professor George N. Rouskas, Ph.D.)
`Liferay.com, “What Is A Web Portal?” available at
`https://www.liferay.com/resources/l/web-portal
`Gartner, “Mobile Portal,” available at https://www.gartner.com/
`en/information-technology/glossary/mobile-portal
`Deposition Transcript of Dr. George Rouskas
`
`Declaration of Lindsey Y. Shi In Support of Motion to Appear Pro
`Hac Vice On Behalf of Petitioner Epic Games, Inc.
`
`
`
`iii
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`
`
`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
`I.
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Epic Games, Inc. respectfully
`
`moves the Patent Trial & Appeal Board for the pro hac vice admission of Lindsey
`
`Y. Shi in this proceeding.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`The Board is authorized to recognize counsel pro hac vice pursuant to 37
`
`C.F.R. § 42.10(c), which provides that:
`
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause, subject to the condition that lead counsel
`be a registered practitioner and to any other conditions as the Board
`may impose. For example, where the lead counsel is a registered
`practitioner, a motion to appear pro hac vice by counsel who is not a
`registered practitioner may be granted upon showing that counsel is an
`experienced litigating attorney and has an established familiarity with
`the subject matter at issue in the proceeding.
`
`The Board has stated that a motion for admission pro hac vice should include
`
`a “statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding” and “[b]e accompanied by an affidavit or
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`declaration of the individual seeking to appear attesting to the following:
`
`i. Membership in good standing of the Bar of at least one State or the
`District of Columbia; ii. No suspensions or disbarments from practice
`before any court or administrative body; iii. No application for
`
`
`
`1
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`
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
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`admission to practice before any court or administrative body ever
`denied; iv. No sanctions or contempt citations imposed by any court or
`administrative body; v. The individual seeking to appear has read and
`will comply with the Office Patent Trial Practice Guide and the Board’s
`Rules of Practice for Trials set forth in part 42 of 37 C.F.R.; vi. The
`individual will be subject to the USPTO Rules of Professional Conduct
`set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
`under 37 C.F.R. § 11.19(a); vii. All other proceedings before the Office
`for which the individual has applied to appear pro hac vice in the last
`three (3) years; and viii. Familiarity with the subject matter at issue in
`the proceeding.”
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR 2013-00639 (MPT) (Paper 7 at 3–
`
`4).
`
`III. STATEMENT OF FACTS
`Based on the following facts, supported by a declaration, Petitioner requests
`
`that Lindsey Y. Shi be admitted pro hac vice in this proceeding. Petitioner’s lead
`
`counsel in this matter, W. Todd Baker (Reg. No. 45,265), is a registered practitioner.
`
`A. Mr. Shi Meets The Requirements For Admission Pro Hac Vice
`
`1. Mr. Shi has more than 7 years of experience as a litigation attorney
`
`specializing in patent litigation, representing clients in patent litigation matters in
`
`various United States District Courts.
`
`2. Mr. Shi is very familiar with U.S. Patent No. 10,492,038, and with the
`
`legal subject matter, technical subject matter, and prior art discussed in Petitioner’s
`2
`
`
`
`
`
`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
`Request for Inter Partes Review of U.S. Patent No. 10,492,038, which forms the
`
`basis for this proceeding. He was counsel for Petitioner in the previous district court
`
`action related to this patent (IngenioShare, LLC v. Petitioner Games, Inc., Civil
`
`Action No. 21-cv-00663-ADA (W.D. Tex.), filed June 25, 2021) and was involved
`
`with factual and technical developments in that matter.
`
`3. Mr. Shi is a member in good standing of the Bar of the State of
`
`California. He is admitted to practice before before the United States District Court
`
`for the Northern District of California and United States Court of Appeals for
`
`Veterans Claims.
`
`4. Mr. Shi has never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5. Mr. Shi has never had a court or administrative body deny an
`
`application for admission to practice.
`
`6. Mr. Shi has never been sanctioned or cited for contempt by any court
`
`or administrative body.
`
`7. Mr. Shi has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board's Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`8. Mr. Shi agrees to be subject to the United States Patent and Trademark
`
`Office Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
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`3
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`
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`9.
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`In the past 3 years, Mr. Shi was admitted pro hac vice as counsel before
`
`the PTAB in Intel Corp. v. PACT XPP SCHWEIZ AG, IPR2020-00518.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. SHI IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and any other conditions the Board may impose. 37 C.F.R. § 42.10(c).
`
`Petitioner’s lead counsel in this matter, W. Todd Baker (Reg. No. 45,265), is a
`
`registered practitioner. Based on the facts contained herein, good cause exists to
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`admit Mr. Shi pro hac vice.
`
`Mr. Shi is an experienced litigator with more than 7 years of patent litigation
`
`experience. Mr. Shi has represented clients in matters related to computer systems,
`
`computer architectures, computer-based communications, and networked computer
`
`technologies, among others, and has significant experience in patent litigation
`
`matters. Mr. Shi was counsel for Petitioner in related litigation on this same patent
`
`between the same parties and was actively involved with the strategy and fact
`
`development in the matter. In view of Mr. Shi’s extensive knowledge of the subject
`
`matter of this proceeding Petitioner has a substantial need for Mr. Shi’s pro hac vice
`
`admission and his involvement in the continued defense of this proceeding.
`
`
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`4
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`
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that Lindsey Y. Shi
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`be admitted pro hac vice.
`
` Date: December 9, 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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`5
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`Petitioner’s Motion for Pro Hac Vice Admission
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document was
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`served on December 9, 2022 by electronic mail on the attorneys of record below:
`
`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:
`
`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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