Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 24
`Date: January 18, 2023
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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.
`____________
`
`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)1
`____________
`
`
`
`
`Before THU A. DANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 This Order addresses the same issues in each proceeding. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`proceedings have not been consolidated, and the parties are not permitted
`to use this caption.
`
`
`
`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`
`I. ORAL ARGUMENT
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`The Scheduling Orders for these proceedings provide that an oral
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`argument would be conducted if requested by either party and granted by the
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`Board. Under 37 C.F.R. § 42.70, each party requested an oral argument in
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`each proceeding. Paper 22, 2; Paper 23, 1.2 The parties also requested “a
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`consolidated oral argument covering issues with respect to IPR2022-00202
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`and IPR2022-00291.” Paper 23, 1. The requests for oral argument are
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`granted subject to the conditions set forth in this Order.3
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`A. Time and Format
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`Please note the time and format of the oral argument. The oral
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`argument will commence at 10:00 AM (Eastern) on Friday, February 17,
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`2023, by video. The Board will provide a court reporter for the hearing, and
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`the reporter’s transcript will constitute the official record of the hearing. The
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`Board will enter the transcript into the record in each proceeding. The
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`parties are directed to contact the Board at least ten (10) business days
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`before the hearing if there are any concerns about disclosing confidential
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`information.
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`As requested by each party, each party will have sixty (60) minutes
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`of total argument time at the hearing. Paper 22, 3; Paper 23, 2.
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`Petitioner bears the ultimate burden of proof that Patent Owner’s
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`claims at issue in these proceedings are unpatentable by a preponderance of
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`2 Unless otherwise indicated, this Order cites to papers filed in IPR2022-
`00202. The parties filed substantially the same papers in IPR2022-00202
`and IPR2022-00291.
`3 In emails to the Board, the parties noted that they did not reach an
`agreement to have an in-person argument. The Board will conduct an
`in-person argument only when requested by all parties.
`
`2
`
`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`the evidence. 35 U.S.C. § 316(e). Hence, Petitioner will open the hearing
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`by presenting its case regarding the challenged claims. After Petitioner’s
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`presentation, Patent Owner will respond to Petitioner’s arguments and
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`present the issues for which it bears the ultimate burden. Petitioner may
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`reserve rebuttal time to respond to arguments presented by Patent Owner.
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`Likewise, Patent Owner may reserve sur-rebuttal time; however, Patent
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`Owner’s sur-rebuttal must be limited in scope to the issues Petitioner raises
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`during its rebuttal. The parties may also address any pending motions
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`during their respective presentations.
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`According to the Board’s Trial Practice Guide and the Scheduling
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`Orders for these proceedings, either party may request a pre-hearing
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`conference. Consolidated Trial Practice Guide at 82.4 “The purpose of the
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`pre-hearing conference is to afford the parties the opportunity to preview
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`(but not argue) the issues to be discussed at the hearing, and to seek the
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`Board’s guidance as to particular issues that the panel would like addressed
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`by the parties.” Id.
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`Requests for a pre-hearing conference must be made by February 3,
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`2023. Paper 10, 11. To request a pre-hearing conference, an email should
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`be sent to Trials@uspto.gov providing several dates and times of availability
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`for the parties that are generally no later than three (3) business days before
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`the hearing. Please refer to the Trial Practice Guide for more information
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`about a pre-hearing conference. See Consolidated Trial Practice Guide
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`§ II.M.
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`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`3
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`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`
`B. Demonstrative Exhibits
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`Under 37 C.F.R. § 42.70(b), the parties must serve their respective
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`demonstrative exhibits on opposing counsel at least seven (7) business days
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`before the hearing.5 Also, the parties must file their respective
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`demonstrative exhibits with the Board at least three (3) business days before
`
`the hearing.
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`Demonstrative exhibits used at the hearing are visual aids to oral
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`argument and not evidence, and should be clearly marked as such. For
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`example, each slide of a demonstrative exhibit may be marked with the
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`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
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`Demonstrative exhibits cannot be used to advance arguments or introduce
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`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
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`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
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`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
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`first time during oral argument”). “[N]o new evidence may be presented at
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`the oral argument.” Consolidated Trial Practice Guide at 85. Accordingly,
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`each demonstrative must include a citation to the page number(s) of the
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`paper(s) where the argument or evidence that is the subject of the
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`demonstrative was advanced by a party.
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`The parties are directed to St. Jude Medical, Cardiology Division,
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`Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041,
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`Paper 65 (PTAB Jan. 27, 2014), regarding the appropriate content of
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`demonstrative exhibits.
`
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`5 The parties may stipulate to an alternative schedule for serving their
`respective demonstrative exhibits that is no later than three (3) business
`days before the hearing.
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`4
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`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`
`Due to the nature of the Board’s consideration of demonstrative
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`exhibits and the opportunity afforded for the parties to reach an agreement
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`without involving the Board, the Board does not anticipate that objections to
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`demonstratives are likely to be sustained. Nevertheless, to the extent that a
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`party objects to the propriety of any demonstrative exhibit, the parties must
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`meet and confer in good faith to resolve any objections. If such objections
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`cannot be resolved, the parties may jointly file any objections to
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`demonstratives with the Board at least three (3) business days before the
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`hearing. The objections must identify with particularity which portions of
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`the demonstrative exhibits are subject to objection and include a one-
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`sentence statement of the reason for each objection. No argument or further
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`explanation is permitted. The Board will consider any objections and
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`schedule a conference call if deemed necessary. Otherwise, the Board will
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`reserve ruling on the objections. Any objection to demonstrative exhibits
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`that is not timely presented will be considered waived.
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`During the hearing, a presenter must identify clearly and specifically
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`each item referenced (e.g., by slide number for a demonstrative exhibit) to
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`ensure the clarity and accuracy of the court reporter’s transcript and for the
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`benefit of all participants appearing electronically. A presenter may use
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`video-conferencing or other presentation software to permit the presentation
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`of demonstrative exhibits by video.
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`C. Presenting Counsel
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`The Board generally expects lead counsel for each party to be present
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`at the hearing. Consolidated Trial Practice Guide at 11. But any counsel of
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`record may present a party’s argument, in whole or in part, as long as that
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`counsel is present by video.
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`5
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`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`
`D. Video Hearing Details
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`To facilitate planning, each party must contact PTAB Hearings at
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`PTABHearings@uspto.gov at least five (5) business days before the hearing
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`to receive video set-up information. As a reminder, all arrangements and the
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`expenses involved with appearing by video, such as the selection of the
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`facility from which a party will attend by video, must be borne by that party.
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`If a video connection cannot be established, the parties will be provided
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`with dial-in connection information, and the hearing will be conducted
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`telephonically.
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`If one or both parties would prefer to participate in the hearing
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`telephonically, they must contact PTAB Hearings at the above email address
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`at least five (5) business days before the hearing to receive dial-in
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`connection information.
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`Counsel should unmute only when speaking. The panel will have
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`access to all papers filed with the Board as well as demonstrative exhibits
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`submitted according to the above instructions. As noted above, the Board
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`requests identification for all papers and exhibits discussed during the
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`hearing in the interest of providing a clear record. In addition, the parties are
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`requested to identify themselves each time they speak. Further, the remote
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`nature of the hearing may also result in an audio lag. Accordingly, counsel
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`should observe a pause prior to speaking, so as to avoid speaking over
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`others.
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`If at any time during the hearing, you encounter technical or other
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`difficulties that fundamentally undermine your ability to adequately
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`represent your client, please let the panel know immediately, and
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`adjustments will be made. For example, if a party experiences poor video
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`6
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`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`quality, the Board may provide alternate dial-in information. The Board
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`contemplates adjusting argument time to account for technical or other
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`difficulties.
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`E. Remote Attendance Requests
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`Members of the public may request to listen to and/or view this
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`hearing. If resources are available, the Board generally expects to grant such
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`requests. If either party objects to the Board granting such requests, for
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`example, because confidential information may be discussed, the party must
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`notify the Board by contacting PTABHearings@uspto.gov at least ten (10)
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`business days before the hearing.
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`F. Audio/Visual Equipment Requests
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`Any special requests for audio-visual equipment should be directed to
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`PTABHearings@uspto.gov. A party may also indicate any special requests
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`related to appearing at a hearing by video, such as a request to accommodate
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`visual or hearing impairments, and indicate how the Board may
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`accommodate any special requests. Any special requests must be presented
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`in a separate communication at least five (5) business days before the
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`hearing.
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`G. Legal Experience and Advancement Program
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`The Board has established the “Legal Experience and Advancement
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`Program,” or “LEAP,” to encourage advocates with less legal experience to
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`argue before the Board to develop their skills. The Board defines a LEAP
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`practitioner as a patent agent or attorney having three (3) or fewer
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`substantive oral arguments in any federal tribunal, including the Board.6
`
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`6 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
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`7
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`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`
`The parties are encouraged to participate in the Board’s LEAP
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`program. Either party may request that a qualifying LEAP practitioner
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`participate in the program and conduct at least a portion of the party’s oral
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`argument. The Board will grant up to fifteen (15) minutes of additional
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`argument time to that party, depending on the length of the proceeding and
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`the PTAB’s hearing schedule. A party should submit a request, no later than
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`at least five (5) business days before the oral argument, by email to the
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`Board at PTABHearings@uspto.gov.7
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`The LEAP practitioner may conduct the entire oral argument or may
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`share time with other counsel, provided that the LEAP practitioner is offered
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`a meaningful and substantive opportunity to argue before the Board. The
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`party has the discretion as to the type and quantity of oral argument that will
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`be conducted by the LEAP practitioner.8 Moreover, whether the LEAP
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`practitioner conducts the argument in whole or in part, the Board will permit
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`more experienced counsel to provide some assistance to the LEAP
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`practitioner, if necessary, during oral argument, and to clarify any statements
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`on the record before the conclusion of the oral argument. Importantly, the
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`Board does not draw any inference about the importance of a particular issue
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`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`7 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`8 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of
`nonobviousness.
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`8
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`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`or issues, or the merits of the party’s arguments regarding that issue, from
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`the party’s decision to have (or not to have) a LEAP practitioner argue.
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`In instances where an advocate does not meet the LEAP eligibility
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`requirements due to the number of “substantive” oral hearing arguments, but
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`nonetheless has a basis for considering themselves to be in the category of
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`advocates that this program is intended to assist, the Board encourages
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`argument by such advocates during oral hearings. Even though additional
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`argument time will not be provided when the advocate does not qualify for
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`LEAP, a party may share argument time among counsel and the Board will
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`permit the more experienced counsel to provide some assistance, if
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`necessary, during oral argument, and to clarify any statements on the record
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`before the conclusion of the oral argument.
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`All practitioners appearing before the Board shall demonstrate the
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`highest professional standards. All practitioners are expected to have a
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`command of the factual record, the applicable law, and Board procedures,
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`as well as the authority to commit the party they represent.
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`II. ORDER
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`Accordingly, it is
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`ORDERED that Petitioner’s and Patent Owner’s requests for oral
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`argument are granted subject to the conditions set forth in this Order; and
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`FURTHER ORDERED that the oral argument for these proceedings
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`will commence at 10:00 AM (Eastern) on Friday, February 17, 2023, by
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`video, and proceed in the manner set forth herein.
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`
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`9
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`

`

`IPR2022-00202 (Patent 10,142,810 B2)
`IPR2022-00291 (Patent 10,708,727 B2)
`
`For PETITIONER:
`
`W. Todd Baker
`Yimeng Dou
`Lindsey Y. Shi
`KIRKLAND & ELLIS LLP
`todd.baker@kirkland.com
`yimeng.dou@kirkland.com
`lindsey.shi@kirkland.com
`Epic_IngenioShare@kirkland.com
`
`
`For PATENT OWNER:
`
`Stephen R. Risley
`Cortney S. Alexander
`KENT & RISLEY LLC
`steverisley@kentrisley.com
`cortneyalexander@kentrisley.com
`
`
`10
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`