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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 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
`________________
`
`Record of Oral Hearing
`Held: February 17, 2023
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 28
`Entered: March 3, 2023
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`
`
`BEFORE: THU A. DANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`
`
` A
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` P P E A R A N C E S
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`
`
`ON BEHALF OF THE PETITIONER:
`
`
`LINDSEY Y. SHI, ESQUIRE
`W. TODD BAKER, ESQUIRE
`JEANNE M. HEFFERNAN, ESQUIRE
`KIRKLAND & ELLIS LLP
`555 South Flower Street
`Suite 3700
`Los Angeles, California 90071
`(213) 680-8400
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`STEPHEN R. RISLEY, ESQUIRE
`KENT & RISLEY LLC
`5755 North Point Parkway
`Suite 57
`Alpharetta, Georgia 30022
`(404) 585-4214
`
`ALSO, PRESENT:
`Charles Torossian
`
`
`
`
`The above-entitled matter came on for hearing on Friday,
`February 17, 2023, commencing at 10:00 a.m. EST, by video/by telephone.
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`
`
` P R O C E E D I N G S
` JUDGE AMUNDSON: Good morning. I'm Judge Amundson,
`and with me on the panel are Judges Dang and Boucher.
` We have our final hearing in IPR2022-00202,
`involving U.S. Patent Number 10,142,810, and IPR2022-00291,
`involving U.S. Patent Number 10,708,727, between Epic Games,
`Inc., and IngenioShare, LLC.
` Let's get the parties' appearances.
` Who do we have for petitioner?
` MR. SHI: Good morning, Your Honor. My name is
`Lindsey Shi, and I am representing the petitioner, Epic
`Games. With me in the room are Todd Baker, who is lead
`counsel, and Jeanne Heffernan, who is outside counsel for
`Epic Games in the related matter, the Texas litigation
`described in the petition.
` JUDGE AMUNDSON: All right. Thank you. And who
`will be presenting today?
` MR. SHI: I will be presenting today, Your Honor.
` JUDGE AMUNDSON: All right. Thank you.
` And who do we have for the patent owner?
` MR. RISLEY: Good morning, Your Honor. This is
`Steve Risley for IngenioShare.
` JUDGE AMUNDSON: And will you be presenting today
`for patent owner?
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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` MR. RISLEY: Yes, Your Honor.
` JUDGE AMUNDSON: All right. Thank you.
` And again, thank you for your flexibility in
`conducting the hearing by video. We know this departs from
`our typical practice, and given that, we wanted to start by
`addressing a few items.
` First, our main concern is your right to be heard.
`So if at any time during the hearing, you encounter technical
`or other difficulties that you feel undermine your ability to
`adequately represent your client, please let us know
`immediately, for example, by contacting the team members who
`provided you with the connection information.
` Second, when not speaking, please mute yourself.
` Third, please identify yourself each time you
`speak. This will help the court reporter prepare an accurate
`transcript.
` Fourth, we have the entire record, including the
`demonstratives, so when referring to a demonstrative or an
`exhibit or a paper, please do so by identifying the slide or
`page number. Also, please pause a little after identifying
`the slide or page number to give others time to find it.
` Fifth, we set forth the procedure for today's
`hearing in the order granting the requests for oral argument.
`But just to remind everyone the way this will work, the order
`granting the requests for oral argument provided that each
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`party will have 60 minutes to present arguments.
` After entering that order, the Board granted
`petitioner's request for participation by a LEAP
`practitioner, and granted petitioner an additional 15 minutes
`of argument time. So petitioner will have 75 minutes of
`argument time, and patent owner will have 60 minutes of
`argument time.
` Petitioner bears the ultimate burden of proof and
`will go first, and petitioner may reserve time for rebuttal.
`Patent owner will go next, and patent owner may reserve time
`for surrebuttal, but patent owner's surrebuttal must be
`limited to the issues in petitioner's rebuttal.
` Also, please do not interrupt the other party while
`that party is presenting its argument. If you have an
`objection, please raise it during your argument.
` I will keep time and will try to give you a warning
`when you're nearing the end of your time.
` So with that said, are there any questions before
`we begin? Looks like none.
` MR. SHI: Not for petitioner -- sorry. Excuse me.
` JUDGE AMUNDSON: All right. Fine.
` So, Mr. Shi, would you like to reserve any time for
`rebuttal?
` MR. SHI: Yes, Your Honor. Petitioner would like
`to reserve 25 minutes for rebuttal.
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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` JUDGE AMUNDSON: All right. You may begin whenever
`you're ready.
` MR. SHI: Thank you, Your Honor.
` Thank you, Judge Amundson, Honorable Panel, and may
`it please the Board. My name is Lindsey Shi, and I'm
`appearing on behalf of the petitioner, Epic Games, in
`connection with the 202 petition, challenging the '810
`patent, and the 291 petition, challenging the '727 patent.
`I'm here today to discuss some of the disputed issues with
`respect to these petitions and to answer any questions that
`the Board might have regarding these petitions.
` So if we could turn to Slide 2, please. On this
`slide, we've laid out the grounds for the '810 petition.
`First, we have a ground based on the Diacakis reference that
`all claims of the '810 patent, Claims 1 through 20, are
`obvious in view of Diacakis. Secondly, we've presented a
`ground that Claims 1 through 9, 11 through 17, and 19 and 20
`are obvious in view of a combination of Tanigawa and Hullfish
`grounds.
` Now, turning to Slide 3, the grounds presented for
`the '727 are quite similar. There are a bucket of grounds
`related to Diacakis and a bucket of grounds related to the
`combination of Tanigawa and Hullfish. Now, the difference
`with the '727 petition is that there are further -- for each
`bucket, there are further combinations. For instance,
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`Grounds II and V present a combination of those primary
`references and Loveland, and Grounds III and VI respectively
`present grounds with those primary references in further
`combination with the Takahashi reference.
` Now, if we could turn to Slide 4. Based on the
`Board's institution decision and the patent owner's
`arguments, we believe that these particular issues will be
`the most important things to discuss today. So specifically
`with Diacakis, we'd like to address the network-based portal
`limitation, the limitation in the '810 patent regarding
`sending messages, and the negative limitation of not
`providing contact information in a communication.
` With respect to Tanigawa and Hullfish, we'd like to
`address the motivation to combine, particularly with respect
`to the blocking limitation. We'd like to discuss the
`network-based portal, similar to Ground I based on Diacakis,
`and the negative limitation of not providing contact
`information. Now, if the Board has particular questions
`related to issues not listed here, I'm happy to address those
`as well.
` Turning to Slide 5. With respect to the '727
`petition, the issues in the challenged limitations -- or,
`excuse me, the disputed limitations are quite similar. With
`respect to the '727 petition, the unique aspects of that
`petition relate to those further combinations I just
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`explained with respect to Loveland and the Takahashi
`references. However, if the Board would like me to address
`anything specifically with respect to the '727 patent and
`petition, I'm happy to do so as well.
` Now, if we could turn to Slide 8, please. So
`before we begin with the disputed limitations, I'd like to
`provide a brief overview of the '810 patent and the
`specification using Figure 6 on the left side of Slide 8 as
`an illustrative example. So with respect to the '810 patent,
`it discloses various devices that can communicate using a
`network. And as the '810 patent -- which, for the record, is
`Exhibit 1001. As the '810 patent indicates, as we've shown
`on the right side of the slide, the various individuals using
`the network to communicate may do so with some combination of
`text and voice and perhaps other communication means.
` So now let's please jump to Slide 11. Slide 11
`presents an overview of the Diacakis reference with respect
`to a few figures from Diacakis. Now, Diacakis, in general,
`describes a presence and availability management system
`within a larger communications network.
` And at this point, I think it's important to
`describe what exactly Diacakis means when it refers to
`presence and availability. And as Dr. Almeroth, who is
`petitioner's expert -- as Dr. Almeroth explained, presence,
`as used by Diacakis, refers to an individual's physical
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`presence on a network. For instance, if my phone is
`connected to the AT&T network, then I am present on that
`network.
` Availability is something different. As Diacakis
`explains, availability is a user's willingness to communicate
`with an individual on that network. So it's possible that I
`could be present on a network, but unavailable to speak with
`someone. Perhaps I don't want to speak with that person, so
`I would be present, but not available in that instance.
` So what Diacakis teaches and focuses on is, within
`a larger communication system, a management of individual
`users' presence and availability information and providing
`that information to other users.
` So turning to the slide, Slide 11. On the
`left-hand side, on the top, we see Figure 1 of Diacakis,
`which illustrates a client terminal 22. So this is the
`device that an individual using the Diacakis system would be
`sitting at, and the device connects them through the network
`to the presence and availability features described by
`Diacakis. Figure 9, underneath Figure 1 on Slide 11, shows a
`simplified view of what that individual may see. For
`instance, that individual will see user interface 112, which
`we've highlighted in yellow. And this is the network-based
`portal, which I will get into in just a bit.
` Now, on the right side of Slide 11, we're showing
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`Figure 11, which is, again, a simplistic view of a network.
`This network shows two client devices, and that's the client
`device 22 on the left and client device 140 on the right.
`Diacakis explains that these are two client devices in
`communication with each other through a series of relay
`hosts.
` Now, if we could please turn to Slide 12. So Slide
`12 -- and I'll pause for just a second.
` Slide 12 shows Figure 8 of Diacakis. This would be
`a view of someone who is sitting at the terminal looking at
`that user interface of Diacakis. On the right side of the
`figure, we see the contacts program window, and this provides
`a view of all of the user's contacts. And for instance, this
`particular user who is looking at Figure 8 has contacts named
`Alex, Jonathan, and Kit, et cetera.
` Now, on the left side of the screen, we see a view
`of the contact Jonathan's details. And in this case, because
`Jonathan has chosen to share certain contact information with
`the viewer, the viewer may see Jonathan's contact
`information, including Jonathan's phone number and email
`addresses.
` Now, if we could please turn to Slide 13. Before
`we get into the specific details of the disputed limitations,
`I think it's important to provide some discussion of the
`context of the '810 patent at the time. As petitioner's
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`expert, Dr. Almeroth, explained, before the '810 patent,
`going back to as early as the 1990s, users of the internet
`would have been -- and a person of ordinary skill in the art,
`for that matter, would have been familiar with programs like
`ICQ, AIM, which is AOL Instant Messenger, and a person of
`ordinary skill in the art would have understood that these
`programs allow users to communicate with one another simply
`by screen name.
` So if I recall the days where I was using AIM to
`communicate, I could communicate with my friends from school
`or my family simply by using screen names and clicking on a
`screen name, rather than having to know or keep track of
`their phone numbers or email addresses. The buddy list just
`provided that basis for communication.
` And so a person of ordinary skill in the time of
`the '810 patent would have been aware of these programs and
`would have been looking at the '810 patent and at Diacakis
`through this lens.
` So if we could go to the next slide, Slide 14. As
`I previewed earlier for the Board, these are the particular
`disputed limitations that I believe will be the most
`important things to focus on today. However, if the Board
`has any questions related to other limitations, I'm happy to
`address those.
` So first, with respect to the network-based portal,
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`if we could turn, please to Slide 15. As the petition laid
`out, the network-based portal, with respect to Diacakis, is a
`web page or interface that connects clients to a network.
`Now, as Dr. Almeroth explained in his declaration, a person
`of ordinary skill in the art would have understood
`network-based portal to refer to an interface that a user
`might use or employ to connect to a server through an
`Internet protocol-based connection. And so for that reason,
`that interface that allows a user to connect to that network
`should be understood by a person of ordinary skill in the art
`to be the network-based portal.
` If we could turn to Slide 16, please. Again, with
`respect to Figure 9, that user interface is the -- is the
`network-based portal that connects a client to the network
`and allows that client to communicate with other individuals
`using client devices on the network.
` All right. So let's turn to Slide 17, please. So
`patent owner has argued that the network-based portal,
`properly construed, would exclude client-side functionality
`and that the network-based portal refers only to things at
`the server side of the network. And so I'll get into a few
`of the specific arguments that patent owner makes, but before
`I do that, I'd just like to remind the Board that in its
`preliminary findings in the institution decision disagreed
`with the patent owner that a network-based portal only
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`includes server-side functionality and excludes client-side
`functionality.
` So let's please look at Slide 18. Now, with
`respect to the Board's preliminary findings in the
`institution decision, the Board specifically referred to
`Figures 7 through 11 of the '810 patent and noted that in
`these figures -- which are all flowcharts, and Figure 7 is
`representative -- that in these flowcharts, there are
`disclosures of particular claim functionality that is carried
`out by a client device. As the Board noted, an
`interpretation or construction of the term, network-based
`portal, that excludes these preferred embodiments, such a
`situation would rarely be correct, if ever.
` If we could turn to Slide 19. Now, on this slide,
`we've mapped -- using the yellow and green colors, we've
`mapped the particular functionality within a client device
`that the Board noted in the institution decision. For
`instance, in yellow, on the right-hand side, on Figure 7,
`we've highlighted the three communication options that are
`disclosed by the '810 patent in the example. For instance,
`in block 212, a first user may send an audio message, 216
`indicates a text message, and 220 indicates a voicemail.
`Now, over on the left, highlighted in the same yellow color
`is the claim language that corresponds to these options. A
`first user is provided a plurality of communication options,
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`wherein all of these communication options are in view of the
`network-based portal being based on the Internet protocol.
` Now, in green, similarly, when one of these
`communication options is selected by a first user, a second
`user receives an indication of that communication option. So
`as we see on the right in Figure 7, highlighted in green, no
`matter what communication option is chosen by the first user,
`the second user receives a notification of that message and
`receives the message. And as we see in green on the left
`side, that corresponds to the claim language, wherein a
`second user, via the network-based portal, receives an
`indication regarding the message.
` So turning, please, to Slide 20. One of the
`arguments that patent owner makes with respect to
`network-based portal is that the term portal by itself refers
`to a network server and thereby does not include user
`interfaces. However, at his deposition, the patent owner's
`expert, Dr. Rouskas, did admit that the definition of the
`term portal could not be limited to a website or a server
`that hosts a website. And, in fact, he said specifically
`that there's nothing to limit the portal to just the server
`or a website that is accessed by the HTTP protocol. So at
`the bottom, Dr. Rouskas, patent owner's expert, admitted that
`the term, portal, cannot be limited just to servers.
` So turning now to Slide 21, patent owner makes
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`another argument in two parts. First, patent owner argues
`that the '810 patent itself defines a portal as a gateway,
`and then the second piece is that the '810 patent, as patent
`owner argues, defines gateway as a network server. And we
`believe that both pieces of this argument are incorrect.
` So first, with respect to the argument that a
`portal is defined as a gateway, patent owner points to
`certain language in the specification of the '810 patent that
`says, certain embodiments can use a portal or gateway. And
`so patent owner takes that "or" to mean that portal is
`defined as gateway. As the Federal Circuit has found in the
`past, the word "or" cannot be used in this way to redefine
`one term as another.
` But more importantly, taking a look at the
`specification and the cites that we've shown on Slide 21, the
`'810 patent itself uses the terms portal and gateway
`differently. So in some places in the specification, the
`patent itself refers to a portal or a gateway performing a
`task or having a function, but in other places in the
`specification, the '810 patent refers to a portal by itself
`performing a function or a gateway by itself performing a
`function or doing a task. So in this way, the '810 patent
`does treat those terms differently.
` JUDGE AMUNDSON: This is Judge Amundson.
` So if I understand your position here with regard
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`to the excerpts you have on Slide 21 from the '810 patent,
`Column 4, lines 39 to 41, and Column 4, lines 63 and 64,
`where lines 39 to 41 say the portal can be used to control
`the selection and setting of different intelligent
`communication modes for the user, and lines 63 and 64 say the
`portal can dynamically change the access priorities of a
`caller trying to reach the user. As I understand your
`position, it's the portal that can do that, but a gateway would
`not be doing that?
` MR. SHI: Yes, Your Honor. Our position is that
`the patent is very specific when it uses the term portal and
`when it uses the term gateway. And in those excerpts that
`Your Honor just mentioned, the term gateway is not described
`as performing those specific functions.
` JUDGE AMUNDSON: All right. Thank you.
` MR. SHI: Thank you, Your Honor.
` Turning now to Slide 22. So this is the second
`piece of the argument I was describing, in which patent owner
`is redefining portal as gateway and redefining gateway as a
`network server. Patent owner points to a single disclosure
`from the '810 patent, and that's the '810 patent at Column
`16, lines 2 through 10, which I've highlighted here on
`Slide 22, to argue that gateway is defined as a network
`server.
` But looking at the -- looking at the disclosure on
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
`
`the slide, it's clear that the '810 patent is not making that
`definition and is, in fact, saying that an example of a
`network server is a gateway computer for a wireless
`electronic device, and this is specifically in the context of
`the embodiment where text-to-speech conversion is offloaded
`from a mobile device onto a gateway computer. But under no
`circumstances is the '810 patent actually redefining the term
`gateway to say all gateways are network servers.
` If we could turn to Slide 23, please. Now, patent
`owner raises an additional argument.
` JUDGE BOUCHER: This is Patrick Boucher. Could you
`go back to Slide 22, 21, where you were talking about the
`gateway?
` MR. SHI: Yes, Your Honor.
` JUDGE BOUCHER: I guess my question is, do you have
`any other examples of a gateway that's not a network server?
` MR. SHI: Your Honor, are you referring to
`Slide 22?
` JUDGE BOUCHER: 22, I guess, yes. But my question
`is, I mean, you make the point that the patent is simply
`referring to one example of a network server being a gateway
`computer. Do you have any counterexamples?
` MR. SHI: Your Honor, the petition does not point
`to other counterexamples of a gateway being used -- or of a
`gateway other than a network server. But I think the -- I
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`would say the proper way to view this example is that this is
`providing an example of a network server and not providing an
`example of a gateway as a network server. So in this way,
`the way that the patent owner is thinking about the sentence
`is flipping it on its head, if you will, because this is
`providing an example of a server, of a network server as a
`gateway computer, and not defining a gateway computer as a
`network server.
` So although to answer the question directly, that
`the petition does not point to different examples or
`counterexamples of what a gateway computer -- or what a
`gateway might be than a network server, we believe that the
`interpretation is incorrect because it's reversed.
` MR. BOUCHER: Okay. Thank you.
` MR. SHI: Thank you, Your Honor.
` MR. TOROSSIAN: This is Charles -- I apologize.
`This is Charles from the BTC. The petitioner video, the
`focus is off, so just want to see if they want to adjust it
`or not. I apologize.
` MR. SHI: Oh. We'll have someone from IT come in
`and try to resolve the issue.
` But if it's all right with the Board, if it doesn't
`affect the majority of the presentation, we can keep going.
`Or I'll defer to the Board if we should take a pause to sort
`out the issue.
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
`
` JUDGE AMUNDSON: Well, this is Judge Amundson.
`Your slides -- your slides are coming in fine; it's just the
`focus on you. So I think -- I think we can carry on, and
`then your technical people can fix it when they can.
` MR. SHI: Okay. Thank you, Your Honor. We'll keep
`going, in that case.
` So with respect to Slide 23, patent owner raises an
`argument that the claimed network-based portal and a client
`device have different uses. And specifically, patent owner
`argues that on the one hand, a network-based portal allows
`worldwide access to the user, whereas a client communication
`device is, quote, associated with a user.
` But Dr. Rouskas, patent owner's expert, did admit
`that a client communication device, such as a mobile phone,
`does allow worldwide access to the user. For instance, with
`my personal mobile phone, people all around the world can
`contact me, can have access to me through that mobile phone.
`Similarly, Dr. Rouskas said, with respect to worldwide access
`to the user, a phone provides that. There's no question
`about that.
` So the network-based portal and the client
`communication device have similar functionality, not
`different functionality.
` Turning to Slide 24. Petitioner -- or, excuse me,
`patent owner's expert, Dr. Rouskas, brings two definitions
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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`taken from an internet web search for the meaning of portal.
`And so as we see from Exhibit 2005, which is Dr. Rouskas's
`declaration, at paragraph 49, Dr. Rouskas points to two
`online definitions to suggest that a portal refers to a
`website serving as an entry point to the Internet, and then
`with respect to the second definition, to argue that a portal
`is a term generally synonymous with gateway for a website
`that aims or proposes to be a major starting site for users.
`And so from these definitions, Dr. Rouskas comes to the
`conclusion that a portal must refer to a server.
` At his deposition, however, Dr. Rouskas admitted
`that the way he found these two websites was from doing a web
`search and that although more search results than these came
`up, he picked two that he believed supported his definition
`and that he didn't look at all of the possible -- at all of
`the hits from his search.
` And at this point, I'd like to raise something
`regarding Dr. Rouskas's declaration, if you can turn to
`Slide 25. The two definitions that we just discussed that
`Dr. Rouskas points to are the only things that distinguish
`his declaration from the patent owner response. Other than
`those two declarations, in substance, the Rouskas declaration
`repeats verbatim the patent owner response. And for that
`reason, we believe that the Rouskas declaration is entitled
`to very little weight, if at all.
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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` Something else I'd like to point out is that
`Dr. Rouskas admitted at his deposition that he was retained
`after the petitions were instituted, which normally would not
`be a problem. There's nothing wrong with that. But
`Dr. Rouskas did also claim that he conceived of patent
`owner's argument with respect to the network-based portal,
`yet he also admitted that he had not reviewed or ever seen
`patent owner's preliminary response, which does contain that
`same network-based portal argument.
` So in summary, although he claims to have
`originated the argument, he did not explain how he did so
`when the patent owner preliminary response, which was issued
`before he was retained, has that same argument.
` JUDGE AMUNDSON: This is Judge Amundson.
` On the weight issue, the weight of the testimony
`from Dr. Almeroth and Dr. Rouskas, IngenioShare makes a point
`of saying that Dr. Almeroth didn't submit a reply declaration
`and that Dr. Rouskas's declaration, Exhibit 2005, is
`unrebutted. Can you explain why Epic Games decided not to
`submit a reply declaration from Dr. Almeroth?
` MR. SHI: Yes, Your Honor. And I have three
`responses to your question. The first, as I've explained
`with respect to this Slide 25, is that we believe that
`Dr. Rouskas's declaration is not entitled to weight and
`should not be considered as evidence.
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
`
` Second, the petitioner, Epic Games, did
`cross-examine Dr. Rouskas at his deposition and incorporated
`Dr. Rouskas's testimony into the reply brief, which addressed
`the points that Dr. Rouskas made. So in that way, the
`testimony is not unrebutted. And I would also point out that
`Dr. Almeroth was present at the deposition.
` And third, it's that Dr. Almeroth's declaration, in
`addition to the original petition and the reply, all of these
`documents put forward by the petitioner do address
`Dr. Rouskas's points, either before he makes them or after.
` So for those reasons, we decided that there was no
`need for Dr. Almeroth to submit a supplemental declaration
`when his original declaration did address all the points that
`the petition needed to address.
` JUDGE AMUNDSON: All right. Thank you.
` MR. SHI: Thank you, Your Honor.
` JUDGE BOUCHER: This is Patrick Boucher. I have a
`slightly different question on this issue.
` Earlier this week, the Board designated as
`precedential the Xerox v. Bytemark decision. And my
`understanding of -- and it is not uncommon for briefs
`submitted by parties to be fairly close, nearly verbatim to
`expert declarations. My understanding of the Xerox case is
`essentially that the concern is whether or not the expert's
`conclusory statements are supported by evidence, and I'm not
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`IPR2022-00202 (U.S. Patent 10,142,810 B2)
`IPR2022-00291 (U.S. Patent 10,708,727 B2)
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