Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: May 23, 2022
`
`
`
`
`
`
`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
`____________
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: May 23, 2022
`
`
`
`
`
`
`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
`____________
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`IPR2022-00202
`Patent 10,142,810 B2
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`
`I. INTRODUCTION
`Epic Games, Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–20 in U.S. Patent No. 10,142,810 B2 (Ex. 1001,
`“the ’810 patent”) under 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”).
`IngenioShare, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”).
`Under 37 C.F.R. § 42.4(a), we have authority to determine whether
`to institute an inter partes review. We may institute an inter partes review
`only if “the information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The
`“reasonable likelihood” standard is “a higher standard than mere notice
`pleading” but “lower than the ‘preponderance’ standard to prevail in a final
`written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`Based on the current record and for the reasons explained below,
`Petitioner has shown that there is a reasonable likelihood that it would
`prevail with respect to at least one of the challenged claims. Thus,
`we institute an inter partes review of claims 1–20 in the ’810 patent
`on all challenges included in the Petition.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 2. Patent
`Owner identifies itself as the real party in interest. Paper 4, 2. The parties
`do not raise any issue about real parties in interest.
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`B. Related Matters
`Petitioner and Patent Owner identify the following civil action where
`Patent Owner has asserted the ’810 patent and other patents against
`Petitioner: IngenioShare, LLC v. Epic Games, Inc., No. 6:21-cv-00663-ADA
`(W.D. Tex. filed June 25, 2021) (“the Texas case”). Pet. 2; Prelim. Resp. 2;
`Paper 4, 2.
`
`C. The ’810 Patent (Exhibit 1001)
`The ’810 patent, titled “Method and Apparatus to Manage Different
`Options of Communication Using One User Identifier Based on Internet
`Protocol,” issued on November 27, 2018, from an application filed on
`March 24, 2017. Ex. 1001, codes (22), (45), (54). The patent identifies that
`application as the last in a series of continuation and continuation-in-part
`applications that started with an application filed on December 7, 2004. Id.
`at 1:10–33, code (63).
`The ’810 patent explains that an individual may (1) employ numerous
`modes of communication, such as desk phone, cell phone, email, and instant
`messaging, and (2) “have more than one phone number and multiple
`electronic mail addresses.” Ex. 1001, 1:50–55. The patent states that “there
`is still a need to help manage the numerous modes of communication.” Id.
`at 1:59–61. The patent discloses “systems and methods to manage
`electronic communications.” Id. at code (57); see id. at 3:43–5:52.
`For example, the ’810 patent discloses a communications apparatus
`
`that:
`
`(1)
`
`“receives a message with a user identifier from a person’s
`wireless device”;
`
`3
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`(3)
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`(4)
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`(2)
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`“receives a communication option from the person based
`on options provided to the person, with all the options
`using the user identifier”;
`“permits the user to block the person from accessing
`the user”;
`“enables the message to be received by the user if the
`person is not blocked by the user”; and
`“determines user availability to receive the message.”
`(5)
`Ex. 1001, code (57).
`The ’810 patent explains that a “user receives the message through a
`handheld device, such as a cellular phone,” or the “message is electronically
`conveyed” to the user “based on Internet protocol through a website.”
`Ex. 1001, 2:46–49. If the “message is electronically conveyed” to the user
`through a “central network server, such as a web server based on Internet
`protocol,” a “portal or gateway” may “provide general Internet access.” Id.
`at 6:64–67. For instance, the portal or gateway may “allow[] the user to
`receive communications from numerous sources through different modes.”
`Id. at 4:13–15.
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`Figure 7 in the ’810 patent (reproduced below) depicts steps in a
`process for responding to an incoming call:
`
`
`Figure 7 “is a flow diagram of a personal call response process 200”
`performed “by an electronic device, such as a mobile communication device
`(e.g., mobile telephone).” Ex. 1001, 9:11–15, Fig. 7; see id. at 3:20–21. The
`personal call response process permits a user to, among other things, answer
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`an incoming call, respond to a caller with an audio message, and respond to
`a caller with a text message. Id. at 9:19–61, Fig. 7.
`Figure 8 in the ’810 patent (reproduced below) depicts steps in a
`process for responding to a caller with an audio message:
`
`
`Figure 8 “is a flow diagram of an audio message response process 300”
`suitable for the processing performed by block 214 in Figure 7. Ex. 1001,
`10:24–28, Fig. 8; see id. at 3:22–23. The audio message response process
`permits a user to respond to a caller with a predetermined audio message or
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`a custom audio message. Id. at 10:29–11:33, Fig. 8. A “mobile
`communication device (e.g., mobile telephone)” may perform the audio
`message response process. Id. at 10:32–36.
`Figure 9 in the ’810 patent (reproduced below) depicts steps in a
`process for responding to a caller with a text message:
`
`
`Figure 9 “is a flow diagram of a text message response process 400” suitable
`for the processing performed by block 218 in Figure 7. Ex. 1001, 12:1–4,
`Fig. 9; see id. at 3:24–25. The text message response process permits a user
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`to respond to a caller with a predetermined text message or a custom text
`message. Id. at 12:5–37, Fig. 9. A “mobile communication device” may
`perform the text message response process. Id. at 12:10–13.
`Figure 10 in the ’810 patent (reproduced below) depicts steps in a
`process for responding to an incoming call:
`
`
`Figure 10 “is a flow diagram of an automated call response process 500.”
`Ex. 1001, 13:9–10, Fig. 10; see id. at 3:26–27. Figure 10’s process “is
`substantially similar in many ways to” Figure 7’s process. Id. at 13:11–13.
`
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`But Figure 10’s process “operates to reduce user input at the mobile
`communication device by making use of stored data pertaining to its
`hardware components, configuration or preferences.” Id. at 13:13–17.
`Figure 11 in the ’810 patent (reproduced below) depicts steps in a
`process for message presentation to a user:
`
`
`Figure 11 “is a flow diagram of a message presentation process 600”
`performed “by an electronic device, such as a mobile communication
`device.” Ex. 1001, 15:4–7, Fig. 11; see id. at 3:28–29. The message
`presentation process permits a user to receive a text message and play the
`text message as an audio message. Id. at 15:8–61, Fig. 11. For example,
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`“the audio message can be output to a speaker of the mobile communication
`device or a headset used therewith.” Id. at 15:51–53.
`D. The Challenged Claims
`Petitioner challenges independent method claim 1, claims 2–10 that
`depend directly or indirectly from claim 1, independent apparatus claim 11,
`claims 12–18 that depend directly or indirectly from claim 11, independent
`computer-readable-medium claim 19, and claim 20 that depends directly
`from claim 19. Pet. 5, 33–91. Claim 1 exemplifies the challenged claims
`and reads as follows (with formatting added for clarity and with numbers
`added for reference purposes)1:
`1. [1.0] A computer-implemented method for managing
`electronic communications using at least a network-based portal
`at least based on Internet protocol, the method comprising:
`[1.1] providing a plurality of communication options to a
`first user to be selected as a selected option of communication
`for a message from the first user to a second user via an
`electronic device associated with the second user, with the first
`user being identified at least depending on a prior registration
`process by the first user regarding the use of the network-based
`portal, and with the plurality of communication options
`provided to the first user to send messages to the electronic
`device associated with the second user,
`[1.2] wherein the plurality of communication
`options include text messaging and voice
`communication, and
`[1.3] wherein all of the communication options use
`one identifier associated with the second user for the
`second user to receive messages, at least in view of the
`
`
`1 We use the same numbers that Petitioner uses to identify the claim
`limitations.
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`network-based portal being based on the Internet
`protocol;
`[1.4] receiving an indication regarding one of the
`plurality of communication options, via the network-based
`portal, from an electronic device associated with the first user,
`the indication indicating the selected option of communication
`for the message from the plurality of communication options
`provided;
`[1.5] permitting the second user to block the first user
`from reaching the second user via the network-based portal; and
`[1.6] enabling, via the network-based portal, the message
`to be received by the second user through the electronic device
`associated with the second user, using the selected option of
`communication, based on the one identifier associated with the
`second user, in view of the second user not blocking the first
`user from reaching the second user, wherein a piece of
`information regarding the second user blocking the first user
`from reaching the second user is stored in a storage medium if
`the second user has blocked the first user from reaching the
`second user, with the piece of information being based on at
`least an input previously submitted by the second user,
`[1.7] wherein the method comprises determining
`availability of the second user,
`[1.8] wherein the method requires contact information
`associated with the second user to allow the second user to
`receive messages via the network-based portal,
`[1.9] wherein even when the message is received by the
`second user through the electronic device associated with the
`second user based on the one identifier associated with the
`second user, the contact information associated with the second
`user is not provided via the network-based portal to the first
`user through the electronic device associated with the first user,
`and
`
`[1.10] wherein the one identifier associated with the
`second user is distinct from the contact information associated
`with the second user.
`
`11
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`Ex. 1001, 20:2–58.
`
`Diacakis
`
`Tanigawa
`
`Hullfish
`
`1007
`
`1008
`
`1009
`
`E. The Asserted References
`For its challenges, Petitioner relies on the following references:
`Name
`Reference
`Exhibit
`US 2002/0116461 A1, published Aug. 22, 2002
`(based on an application filed Feb. 5, 2002)
`US 2004/0001480 A1, published Jan. 1, 2004
`(based on an application filed Aug. 30, 2002)
`US 7,428,580 B2, issued Sept. 23, 2008
`(based on an application filed Nov. 26, 2003)
`Pet. 4–5. Petitioner asserts that Diacakis and Tanigawa qualify as prior art
`under § 102(a) and § 102(b) and that Hullfish qualifies as prior art under
`§ 102(e). Id. at 4; see 35 U.S.C. § 102(a), (b), (e) (2006).2
`At this stage of the proceeding, Patent Owner does not dispute that the
`references qualify as prior art. See, e.g., Prelim. Resp. 15–23.
`F. The Asserted Challenges to Patentability
`Petitioner asserts the following challenges to patentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–20
`103(a)
`Diacakis
`1–9, 11–17, 19, 20
`103(a)
`Tanigawa, Hullfish
`Pet. 5, 33–91.
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), amended 35 U.S.C. § 102 and § 103 effective
`March 16, 2013. Because the ’810 patent’s effective filing date predates the
`AIA’s amendments to § 102 and § 103, this decision refers to the pre-AIA
`versions of § 102 and § 103.
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`G. Testimonial Evidence
`To support its challenges, Petitioner relies on the declaration of Kevin
`C. Almeroth, Ph.D. (Exhibit 1003, “Almeroth Decl.”). Dr. Almeroth states,
`“I have been retained as an expert witness on behalf of Epic Games, Inc.
`(‘Epic Games’ or ‘Petitioner’) to offer technical opinions in connection
`with” the ’810 patent. Ex. 1003 ¶ 1.
`III. DISCRETIONARY DENIAL
`Under § 314(a), the Director possesses “broad discretion” in deciding
`whether to institute an inter partes review. See 35 U.S.C. § 314(a); Saint
`Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir.
`2018). The Board decides whether to institute an inter partes review on the
`Director’s behalf. 37 C.F.R. § 42.4(a) (2021).
`Citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we
`should exercise our discretion under § 314(a) to deny institution in light of
`the Texas case where Patent Owner has asserted the ’810 patent and other
`patents against Petitioner. See Prelim. Resp. 10–15; supra § II.B.
`On March 18, 2022, the district court in the Texas case granted
`Petitioner’s motion to dismiss for improper venue, thus ending that case.
`Ex. 3001, 9.
`On March 31, 2022, we issued an Order authorizing Petitioner to file
`a Preliminary Reply addressing discretionary denial under § 314(a) and
`authorizing Patent Owner to file a Preliminary Sur-reply responding to the
`Preliminary Reply. Paper 7, 3.
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`On April 7, 2022, Petitioner filed a Preliminary Reply addressing
`discretionary denial under § 314(a). Paper 8 (“Prelim. Reply”). Patent
`Owner did not file a Preliminary Sur-reply.
`In the Preliminary Reply, Petitioner argues that the district court’s
`dismissal of the Texas case “moots Patent Owner’s arguments based on
`Fintiv.” Prelim. Reply 1. Petitioner also argues that “there is no basis for a
`discretionary denial under § 314(a)” because “there is no longer any parallel
`proceeding.” Id.
`We agree with Petitioner that “there is no basis for a discretionary
`denial under § 314(a)” because “there is no longer any parallel proceeding.”
`See Prelim. Reply 1; Ex. 3001, 9. Hence, we decline to exercise our
`discretion under § 314(a) to deny institution.
`IV. PATENTABILITY ANALYSIS
`A. Legal Principles: Obviousness
`A patent may not be obtained “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a) (2006). An obviousness analysis involves underlying
`factual inquiries including (1) the scope and content of the prior art;
`(2) differences between the claimed invention and the prior art; (3) the level
`of ordinary skill in the art; and (4) where in evidence, objective indicia of
`nonobviousness, such as commercial success, long-felt but unsolved needs,
`and failure of others.3 Graham v. John Deere Co., 383 U.S. 1, 17−18, 35–36
`
`
`3 The record does not include evidence concerning objective indicia of
`nonobviousness.
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`(1966); Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047–48
`(Fed. Cir. 2016) (en banc). When evaluating a combination of references,
`an obviousness analysis should address “whether there was an apparent
`reason to combine the known elements in the fashion claimed by the patent
`at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`We analyze the obviousness issues according to these principles.
`B. Level of Ordinary Skill in the Art
`Factors pertinent to determining the level of ordinary skill in the art
`include (1) the educational level of the inventor; (2) the type of problems
`encountered in the art; (3) prior-art solutions to those problems; (4) the
`rapidity with which innovations are made; (5) the sophistication of the
`technology; and (6) the educational level of workers active in the field.
`Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir.
`1983). Not all factors may exist in every case, and one or more of these or
`other factors may predominate in a particular case. Id. These factors are not
`exhaustive, but merely a guide to determining the level of ordinary skill in
`the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir.
`2007). Moreover, the prior art itself may reflect an appropriate skill level.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`Petitioner asserts that a person of ordinary skill in the art “would have
`had a Bachelor’s degree in Computer Science, or an equivalent field, and
`three to five years of experience working with Internet communication
`systems.” Pet. 24. Petitioner also asserts that “[a]dditional education might
`compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s
`testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 70–74.
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`At this stage of the proceeding, Patent Owner does not address the
`educational level or work experience of a person of ordinary skill in the art.
`See, e.g., Prelim. Resp. 2–5, 15–23.
`Based on the current record and for purposes of institution, we accept
`Petitioner’s description of an ordinarily skilled artisan as consistent with the
`’810 patent and the asserted prior art.
`C. Claim Construction
`1. GENERALLY
`We construe claim terms “using the same claim construction
`standard” that district courts use to construe claim terms in civil actions
`under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b). Under that standard,
`claim terms “are given their ordinary and customary meaning, which is the
`meaning the term would have to a person of ordinary skill in the art at the
`time of the invention.” Power Integrations, Inc. v. Fairchild Semiconductor
`Int’l, Inc., 904 F.3d 965, 971 (Fed. Cir. 2018) (citing Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). The meaning of claim
`terms may be determined by “look[ing] principally to the intrinsic evidence
`of record, examining the claim language itself, the written description, and
`the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner “does not believe that any terms need to be construed to
`assess the arguments presented” in the Petition and does not propose a
`construction for any claim language. Pet. 25.
`Patent Owner does not propose a construction for any claim language.
`See Prelim. Resp. 4–5, 15–16.
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`2. “NETWORK-BASED PORTAL”
`Each independent claim requires a “network-based portal.” Ex. 1001,
`20:2–58, 21:28–22:24, 22:56–24:26. Patent Owner asserts that Petitioner
`equates a “network-based portal” to “a web page or interface that connects
`clients to a network” when arguing obviousness based on Diacakis. Prelim.
`Resp. 5–6, 14, 16–17 (quoting Pet. 34). Patent Owner asserts that Petitioner
`equates a “network-based portal” to “a user interface that connects clients to
`a network” when arguing obviousness based on Tanigawa and Hullfish. Id.
`at 5, 8, 14, 21 (quoting Pet. 65). According to Patent Owner, “the Petition
`sets forth two different definitions” for a “network-based portal.” Id. at 14.
`Additionally, Patent Owner contends that a “network-based portal”
`resides only “at the server-side of a network” and excludes “client-side
`functionality.” Prelim. Resp. 1–2, 4, 15. According to Patent Owner, the
`’810 patent’s specification “universally indicates that the network-based
`portal is at the server-side.” Id. at 1–2. Patent Owner identifies places
`where the specification describes a “portal” as separate from a “mobile
`telephone” and a “person’s wireless device.” Id. at 4–5, 15–16 (citing
`Ex. 1001, 6:21–22, 6:41–42, 6:64–7:5, 16:8–10, code (57)).
`Petitioner disputes that it takes inconsistent positions when arguing
`obviousness based on Diacakis and when arguing obviousness based on
`Tanigawa and Hullfish. Prelim. Reply 3.
`Based on the current record, we disagree with Patent Owner that a
`“network-based portal” resides only “at the server-side of a network” and
`excludes “client-side functionality.” See Prelim. Resp. 1–2, 4, 15. The
`’810 patent’s specification discloses embodiments where claimed
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`functionality resides in a “mobile phone,” i.e., a client-side device. See
`Ex. 1001, 3:20–27, 9:11–10:8, 10:24–13:35, 15:4–61, Figs. 7–11.
`As an example, Figures 7 through 11 depict steps in processes that
`include:
`
`•
`
`• providing a first user with a voice communication option
`and a text communication option, e.g., as recited in
`limitations [1.1] and [1.2];
`receiving an indication regarding the voice
`communication option or the text communication option,
`e.g., as recited in limitation [1.4];
`• enabling a second user to receive a voice message or a
`text message using the selected communication option in
`view of the second user not blocking the first user, e.g.,
`as recited in limitation [1.6]; and
`• allowing the second user to receive messages through an
`electronic device associated with the second user, e.g., as
`recited in limitations [1.8] and [1.9].
`Ex. 1001, 9:11–61, 10:24–14:49, 15:4–61, Figs. 7–11; see id. at 3:20–29,
`9:62–10:8. The specification explains that a “mobile communication
`device,” e.g., a “mobile telephone,” may perform the steps depicted in
`Figures 7 through 11. Id. at 9:11–15, 10:24–36, 12:1–13, 13:9–17,
`14:15–20, 15:6–7, 15:51–53. The specification also explains that “mobile
`communication devices” include “mobile phones.” Id. at 14:44–45,
`17:61–62.
`Patent Owner categorizes a “mobile phone” as a client-side device.
`See Prelim. Resp. 16–23. Because the ’810 patent’s specification discloses
`embodiments where claimed functionality resides in a “mobile phone,” i.e.,
`a client-side device, construing “network-based portal” to exclude “client-
`side functionality,” such as mobile-phone functionality, would exclude
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`preferred embodiments from claim scope. See Ex. 1001, 3:20–27,
`9:11–10:8, 10:24–13:35, 14:44–45, 15:4–61, 17:61–62, Figs. 7–11.
`A construction excluding a preferred embodiment is “rarely, if ever correct.”
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747,
`755 (Fed. Cir. 2016). Consistent with a broader rather than a narrower
`interpretation, the ’810 patent’s specification explains that “the invention
`extends beyond these limited embodiments” described in the specification.
`Ex. 1001, 8:18–23; see id. at 3:34–38, 19:62–65.
`We invite the parties to provide additional briefing in the Response,
`Reply, and Sur-reply about the meaning of “network-based portal” in the
`’810 patent’s claims.
`
`3. OTHER TERMS
`Based on the current record, we determine that no other claim terms
`require explicit constructions to decide whether Petitioner satisfies the
`“reasonable likelihood” standard for instituting trial. “[O]nly those terms
`need be construed that are in controversy, and only to the extent necessary
`to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`D. Alleged Obviousness over Diacakis: Claims 1–20
`Petitioner contends that claims 1–20 are unpatentable under § 103(a)
`as obvious over Diacakis. See Pet. 5, 33–60. Below, we provide an
`overview of Diacakis, and then we consider the obviousness issues. As
`explained below, Petitioner establishes sufficiently for purposes of
`institution that Diacakis would have rendered obvious claims 1–20.
`
`19
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`IPR2022-00202
`Patent 10,142,810 B2
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`1. OVERVIEW OF DIACAKIS (EXHIBIT 1007)
`Diacakis is a U.S. patent application publication titled “Presence and
`Availability Management System,” filed on February 5, 2002, and published
`on August 22, 2002. Ex. 1007, codes (22), (43), (54). Diacakis discloses a
`presence-and-availability (P&A) management system that “enables users to
`control their availability and how that is displayed to other users.” Id. ¶ 5.
`With the P&A management system, “users may select if they want to be
`available to any given person (or group of people) or not, as well as how that
`person (or group of people) may or may not contact them.” Id.
`Diacakis’s Figure 1 (reproduced below) depicts a P&A management
`system:
`
`Figure 1 illustrates P&A management system 10 including “a P&A
`management server 12 in communication with a client terminal 22 via a
`network 16.” Ex. 1007 ¶¶ 12, 24, Fig. 1. Network 16 “may include, for
`
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`Patent 10,142,810 B2
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`example, the Internet, an intranet, the public switched telephone network
`(PSTN), or a wireless telephone or radio network.” Id. ¶ 25.
`As Figure 1 shows, P&A management server 12 includes presence-
`detection engine 18, availability-management engine 20, and profile
`database 24. Ex. 1007 ¶¶ 24, 38, Fig. 1. Presence-detection engine 18 may
`(1) “determine an individual’s presence upon particular networks based on
`various inputs” and (2) “transmit the presence information to” availability-
`management engine 20. Id. ¶ 38. Availability-management engine 20 may
`“determine the individual’s availability based on the presence information as
`well as additional information, such as the individual’s situation and defined
`rules and preferences.” Id.
`Diacakis’s Figure 4 (reproduced below) depicts in more detail the
`inputs to presence-detection engine 18 and availability-management
`engine 20:
`
`
`
`21
`
`
`
`(4)
`(5)
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`IPR2022-00202
`Patent 10,142,810 B2
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`Figure 4 is “a diagram of a P&A management server” with presence-
`detection engine 18 and availability-management engine 20. Ex. 1007
`¶¶ 15, 38, Fig. 4.
`Figure 4 shows presence-detection engine 18 receiving the following:
`(1)
`time-based input 40;
`(2)
`user-location input 42;
`(3)
`“the individual’s status 54 on particular networks
`(such as on or off)”;
`“the individual’s physical location 56”; and
`“the individual’s current capabilities 58,” e.g.,
`capabilities to “receive voice information, data
`files, audio files, video files, etc.”
`Ex. 1007 ¶¶ 40–41, 45, Fig. 4.
`Figure 4 shows availability-management engine 20 receiving the
`following:
`(1)
`
`presence information (from presence-detection
`engine 18);
`user-situation input 60;
`the individual’s rules and preferences (from
`database 64); and
`information about the individual’s observers
`or subscribers.
`Ex. 1007 ¶¶ 38, 46–47, Fig. 4; see id. ¶ 33.
`Diacakis explains that an individual configures a “profile set” where
`each profile in the set concerns a different situation, such as an “at home”
`profile, an “at office” profile, or an “on the road” profile. Ex. 1007 ¶ 31; see
`id. ¶¶ 33–34, 70. For instance, Diacakis’s Figure 2 (reproduced below)
`depicts an “at office” profile:
`
`(2)
`(3)
`
`(4)
`
`22
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`IPR2022-00202
`Patent 10,142,810 B2
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`
`(3)
`
`(2)
`
`
`Figure 2 “is an example of an availability profile,” i.e., an “at office” profile,
`specifying the following:
`(1)
`an individual’s communication media, e.g., home
`telephone, office telephone, mobile telephone, personal
`email, work email, and instant messaging;
`a telephone number or address associated with
`each communication medium; and
`four access levels, i.e., Important, Normal, Restricted,
`and Blocked, that may apply to each communication
`medium.
`Id. ¶¶ 13, 32, Fig. 2.
`In each profile, an individual specifies an access level for each
`subscriber or subscriber group. Ex. 1007 ¶¶ 31–32, Fig. 2; see id. ¶¶ 28, 47.
`Referring to Figure 2, for example, “a subscriber with an access level of
`‘Important’ would receive the items marked ‘Yes’ in the ‘Important’
`column, with the preference indicated (where appropriate), thereby making it
`very easy for ‘important’ subscribers to communicate with the individual.”
`Id. ¶ 32. At this access level, a subscriber has a plurality of communication
`
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`options to reach an individual, including office telephone, mobile telephone,
`personal email, work email, and instant messaging. Id. Figs. 2–3.
`Subscribers “in the ‘Normal’ access level would receive less contact
`information,” and subscribers “in the ‘Restricted’ access level would receive
`even less contact information.” Ex. 1007 ¶ 32, Fig. 3. Subscribers “in the
`‘Blocked’ access level would receive no[] contact information at all.” Id.
`¶ 32.
`
`An individual may configure a profile set via a user interface “in
`communication with the P&A management server.” Ex. 1007 ¶ 36. The
`P&A management server stores an individual’s profile set along with the
`individual’s defined rules and preferences in the server’s profile database.
`Id. ¶¶ 24, 36, 47, 57, Fig. 1.
`The P&A management server publishes an individual’s availability
`information “via the client terminals” to “the individual’s subscribers” who
`previously registered to receive the information. Ex. 1007 ¶¶ 29–30, 47–48;
`see id. ¶¶ 51, 55–56, 69. When the P&A management server detects a
`change in an individual’s situation, the P&A management server “consults
`the individual’s defined rules and preferences,” and then “transmits the
`appropriate information to” the client terminals of the individual’s
`subscribers based on subscriber access level. Id. ¶ 34; see id. ¶¶ 47–48, 56.
`When a subscriber wants to contact an individual, the subscriber uses
`the individual’s availability information as displayed in a user interface
`at the subscriber’s client terminal. Ex. 1007 ¶¶ 56, 59, 62, 69, Fig. 8.
`Depending on who a subscriber wants to contact, the subscriber may use
`a telephone or instant messaging (or both). Id. ¶¶ 56, 64, Fig. 8. Further,
`
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`a subscriber may “refer to a single indicator” on the display and use that
`information to communicate with an individual. Id. ¶ 62; see id. ¶ 64.
`Diacakis’s Figure 8 (reproduced below) depicts information displayed
`to a subscriber in a user interface at the subscriber’s client terminal:
`
`
`
`Figure 8 illustrates availability information for a subscriber’s contacts as
`displayed in a user interface at the subscriber’s client terminal. Ex. 1007
`¶¶ 56, 59, 63–64, Fig. 8. “As illustrated, the subscriber may navigate the list
`of names in the right hand window (‘Contacts Program’) to access the P&A
`information regarding the highlighted individual in the left hand window
`(‘Contact Properties’).” Id. ¶ 56.
`
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`“The indicator in the right hand window adjacent to each listed
`individual may identify the availability means for the particular individual.”
`Ex. 1007 ¶ 56, Fig. 8. In Figure 8, for example, “Alex is available by
`telephone and instant messaging, but Tom is only available by telephone and
`Pete is only available by instant messaging.” Id. ¶ 56.
`Diacakis’s Figure 9 (reproduced below) depicts a subscriber’s client
`terminal:
`
`
`Figure 9 illustrates client terminal 22 including ind
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