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 EXPLANATION OF MATERIAL
`DIFFERENCES BETWEEN PETITIONS AND RANKING
`
`
`
`
`____________________________________________
`
`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 EXPLANATION OF MATERIAL
`DIFFERENCES BETWEEN PETITIONS AND RANKING
`
`
`
`
`
`Case IPR2022-00295
`U.S. Patent No. 10,492,038
`Pursuant to the Trial Practice Guide, Petitioner Epic Games, Inc. (“Petitioner”
`
`or “Epic Games”) submits this notice of its ranking of its petitions for inter partes
`
`review of U.S. Patent No. 10,492,038 (the ’038 Patent) filed in IPR2022-00294
`
`(“Petition 1”) and IPR2022-00295 (“Petition 2”), and an explanation of the material
`
`differences between the Petitions. See Patent Trial and Appeal Board Consolidated
`
`Trial Practice Guide November 2019 (“TPG”) at 59–60.
`
`Petition 1 challenges claims of the ’038 Patent based on U.S. Publ. Appl. No.
`
`2002/0116461 (“Diacakis”) as a primary reference. Petition 2 challenges claims of
`
`the ’038 Patent based on U.S. Publ. Appl. No. 2004/0001480 (“Tanigawa”) in
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`combination with U.S. Pat. No. 7,428,580 (“Hullfish”) as primary references. The
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`Board should institute on both Petitions for the following reasons: (i) the length and
`
`large number (44) of challenged claims; (ii) given common issues across the
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`Petitions, the burden to consider all Petitions is not substantially greater than
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`considering just one; and (iii) Petitioner has filed (or will file) petitions for inter
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`partes review of two patents in the same family as the ’038 Patent (U.S. Patent Nos.
`
`10,142,810 and 10,708,727), and those petitions similarly present grounds based on
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`Diacakis and on Tanigawa in combination with Hullfish.
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`Patent Owner IngenioShare, LLC (“PO” or “IngenioShare”) sued Petitioner
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`on June 25, 2021 for infringement of four patents, including the ’038 patent. On
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`1
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`Case IPR2022-00295
`U.S. Patent No. 10,492,038
`September 16, 2021, PO asserted 42 claims of the ’038 patent, claims 7–12, 22–24,
`
`33–62, 64, 65, and 67. See Ex. 1012.
`
`The claims of the ’038 patent are directed to a non-transitory computer
`
`readable medium (and methods implementing the same) for a communications
`
`system, where a first user and a second user use a network-based portal based on the
`
`Internet protocol to send and receive messages using electronic devices. See, e.g.,
`
`Ex. 1001 (’038 Patent), cl. 7. The ’038 patent claims various features related to this
`
`communications system, including using various modes of communication (e.g., text
`
`and audio), using “identifiers” associated with the users, detecting the availability of
`
`users, allowing users to block one another, and not providing contact information of
`
`users to one another. See, e.g., id.
`
`This claimed communications system and the claimed features are taught by
`
`Diacakis. Two additional prior art references, U.S. Pat. No. 7,287,056 (“Loveland”)
`
`and U.S. Publ. Appl. 2002/0183114 (“Takahashi”), are added to Diacakis to address
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`certain arrangement limitations that may not be expressly disclosed in Diacakis
`
`and/or to address arguments PO may raise in its response. Similarly, the claimed
`
`communications system and the claimed features are taught by the combination of
`
`Tanigawa and Hullfish, which specifically teaches the claimed blocking features.
`
`Loveland and Takahashi are added to Tanigawa (as modified by Hullfish) to address
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`2
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`
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`Case IPR2022-00295
`U.S. Patent No. 10,492,038
`certain arrangement limitations that may not be expressly disclosed in Tanigawa and
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`Hullfish and/or to address arguments PO may raise in its response.
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`The combination of Tanigawa and Hullfish is not cumulative over Diacakis.
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`Diacakis is directed to a communciations system with a “presence and availability
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`management system,” used to detect when a user is available to communicate and to
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`notify another of the user’s availability information. See, e.g., Ex. 1007, Abstract,
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`[0028]–[0029]. Diacakis teaches that users can block others (thereby preventing
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`them from communicating with them) across specific modes of communication by
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`defining “access levels” to give different people different levels of access at different
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`times. See, e.g., id., [0031]–[0036]. Tanigawa (as modified by Hullfish) teaches a
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`server directed towards a communications system specifically facilitating transitions
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`between text chat and voice chat in both a group setting and a one-on-one setting.
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`See, e.g., Ex. 1010, Abstract, [0006]–[0009]. In this combination, users can block
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`others—not through defined access levels, as in Diacakis—by identifying a user to
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`be blocked by a “pre-determined telephone number,” a process that prevents the
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`blocked user from further communicating with the blocking user. See, e.g., Ex.
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`1011, 8:66–9:18, Fig. 5.
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`In view of the foregoing, it is necessary and appropriate to file two Petitions
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`against the 44 challenged claims of the ’038 patent. The Trial Practice Guide
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`expressly acknowledges that multiple petitions against the same patent may be
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`3
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`
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`Case IPR2022-00295
`U.S. Patent No. 10,492,038
`appropriate “when the patent owner has asserted a large number of claims in
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`litigation.” TPG at 59. The ’038 patent includes 4 independent claims and 66
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`dependent claims. Petitioner challenges 3 independent claims and 41 dependent
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`claims. The claims are lengthy, comprising more than 11 columns in the ’038 patent.
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`The word count for the challenged claims is 3,995—29% of the 14,000 words
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`permitted for a single petition.
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`Ranking. Although Petitioner respectfully requests institution on both
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`Petitions and believes that each Petition is meritorious and justified, the following
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`table sets out the order in which Petitioner wishes the Board to consider the merits.
`
`Rank
`1
`2
`
`Petition
`Petition 1
`Petition 2
`
`Primary Reference/Combination
`Diacakis
`Tanigawa/Huillfish
`
`
`Date: December 7, 2021
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`
`
`Respectfully submitted,
`
`/s/ W. Todd Baker
`W. Todd Baker (No. 45,265)
`todd.baker@kirkland.com
`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
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`4
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`Case IPR2022-00295
`U.S. Patent No. 10,492,038
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`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
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`Attorneys for Petitioner Epic Games, Inc.
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`5
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`Case IPR2022-00295
`U.S. Patent 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 with
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`accompanying Exhibits 1001–1036 as listed in Petitioner’s Exhibit List on pages
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`vii–viii of this document, was served on December 7, 2021 via overnight delivery
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`directed to the attorney/agent of record for the patent as identified on USPTO PAIR
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`and associated 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
`
` A
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` courtesy copy was also served by electronic mail on the attorneys of record
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`for the related matter IngenioShare, LLC v. Epic Games, Inc., No. 6:21-cv-00663-
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`ADA (W.D. Tex.):
`
`Cortney Alexander
`cortneyalexander@kentrisley.com
`Stephen R. Risley
`steverisley@kentrisley.com
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`/s/ W. Todd Baker
`W. Todd Baker (No. 45,265)
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`1
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