`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`
`Case No. IPR2022-00202
`Patent No. 10,142,810
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`DECLARATION OF PROFESSOR
`GEORGE N. ROUSKAS, PH.D.
`
`Exhibit 2005Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
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`IPR2022-00202 p. 1
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`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ………………………………………………
`
`TERMINOLOGY ………………………………………………
`II.
`INTRODUCTION ………………………………………………………
`
`QUALIFICATIONS …………………………………..…………..
`
`BASES OF OPINIONS …………………………………..…………..
`
`APPLICABLE LEGAL STANDARDS …………………..………
`
`Page
`
`1
`
`1
`1
`
`1
`
`6
`
`6
`
`A.
`
`B.
`
`C.
`
`Ordinary Skill in the Art … … … … … … … … … … … … … 6
`
`Claim Construction
`
`…………………………………
`
`8
`
`Obviousness (35 U.S.C. § 103) … … … … … … … … … … . . 9
`
`TERMINOLOGY ……… ……… ………………………………………12
`
`GROUND I – DIACAKIS DOES NOT OBVIATE
`CLAIMS 1-20 ………………………………………………………
`
`A. Diacakis (Exhibit 1007) …………………………………
`
`12
`
`1
`
`A. Diacakis (Exhibit 1007) … … … … … … … … … … … … … 12
`
`1.
`
`Diacakis Does Not Provide Or Support
`Messages ………………………………………..
`
`B.
`
`[1.0] “Network-Based Portal” …………………………..
`
`818
`
`819
`
`1.
`
`2.
`
`A “Portal” Is Not A User Terminal Or
`A “Client Communication Device” …………….
`
`1021
`
`The ʼ810 Specification Defines “Portal”
`As A “Gateway” And Defines A “Gateway”
`i
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`
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`As A “Networked Server”
`
`……………………
`
`1121
`
`The Functionality Of A “Portal” Is Different
`Than That Of A Client Communication Device …..
`11
`
`22
`
`The Claims Also Distinguish A “Portal”
`From A Client Communication Device
`
`……….
`
`13
`
`The User Interface Of Diacakis Is Not A
`“Portal” ………………………………………..
`
`Dr. Almeroth’s Testimony Is Not Supported
`By The Specification …………………………..
`
`Patent Owner’s Construction Of A NBP
`Does Not Exclude A Preferred Embodiment ………
`
`14
`
`15
`
`16
`
`3.
`
`1.
`
`2.
`
`3.
`
`4.
`
`ii
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`
`
`Merged Cells
`Deleted Cells
`
`23
`
`24
`
`25
`
`26
`19
`
`………………………………
`
`…29
`
`4.
`
`5.
`
`6.
`
`7.
`
`The Claims Also Distinguish A “Portal”
`From A Client Communication Device
`
`……….
`
`The User Interface Of Diacakis Is Not A
`“Portal” ………………………………………..
`
`Dr. Almeroth’s Testimony Is Not Supported
`By The Specification …………………………..
`
`Patent Owner’s Construction Of A NBP
`Does Not Exclude A Preferred Embodiment ………
`
`8.
`
`8.
`
`[1.0] Summary …………………………………
`
`19
`
`…………………
`
`…29
`
`C.
`
`[1.1] Is Not Obviated By Diacakis ……………………
`
`D.
`
`E.
`
`[1.3] “All” “Communications” “Use One Identifier”
`Is Not Obviated By Diacakis …………………………..
`[1.4] Is Not Obviated By Diacakis ……………………
`
`2029
`2231
`
`iii
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`
`
`
`
`
`
`F.
`
`G
`
`H.
`
`
`
`
`
`
`
`[1.6] Is Not Obviated By Diacakis ……………………
`
`[1.8] Is Not Obviated By Diacakis ……………………
`
`[1.9] “Even When The Message Is Received”
`“The Contact Information” “Is Not Provided”
`Is Not Obviated By Diacakis …………………………..
`
`1.
`
`2.
`
`The Petitioner’s Positions On “NBP” And
`“Contact Information Not Provided” Are
`Incompatible
`…………………………………
`
` Diacakis Teaches That The Recipient’s
`Contact Information Is Sent To The Sender’s
`Client Device …………………………………
`
`i.
`
` Diacakis Teaches A POSITA That Contact
`Information Is Provided ……………………
`
`
`
`
`
`
`
`
`
`
`
`
`2433
`
`2534
`
`2635
`
`2635
`
`36
`
`36
`
`iv
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`
`
`
`
`
`
`
`
`2.
`
`Diacakis Teaches That The Recipient’s
`Contact Information Is Sent To The Sender’s
`
`v
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`
`
`
`
`
`
`Client Device …………………………………
`
`27
`
`i.
`
`ii
`
`iii
`
`Diacakis Teaches A POSITA That Contact
`Information Is Provided … … … … … … … … 28
`The Board Already Determined That
`Diacakis Teaches A POSITA That Contact
`Information Is Provided ……………………
`
`319
`
`Judge Chang Also Determined That Diacakis
`Teaches A POSITA That Contact Information
`Is Provided …………………………………
`
`3.
`
`Diacakis’s Blocked Users Do Not Receive A
`Message ………………………………………..
`
`4.
`
`[1.9] Summary …………………………………
`
`[3.0] “Group Messaging” Using The One Identifier ……..
`
`[7.0] “Depends On A Time” …………………………..
`
`I.
`
`J.
`
`K.
`
`[10.0] “Voice Mail” …………………………………
`
`4.
`
`[1.9] Summary …………………………………
`
`[3.0] “Group Messaging” Using The One Identifier ……..
`
`[7.0] “Depends On A Time” …………………………..
`
`I.
`
`J.
`
`K.
`
`[10.0] “Voice Mail” …………………………………
`
`GROUND II – HULLFISH COMBINED WITH TANIGAWA
`DOES NOT OBVIATE CLAIMS 1-9, 11-17, and 19-20 TO A
`POSITA ………………………………………………………
`
`A. Tanigawa (Exhibit 1008) …………………………………
`
`B. Hullfish (Exhibit 1009) …………………………………
`
`C. A POSITA Would Not Be Motivated To Combine
`
`vi
`
`3140
`
`3241
`
`32
`
`33
`
`33
`
`34
`
`41
`
`41
`
`42
`
`42
`
`34
`
`34
`
`40
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`IPR2022-00202 p. 7
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tanigawa And Hullfish To Implement The Claimed
`Invention Of The ʼ810 Patent …………………………..
`
`1.
`
`2.
`
`Tanigawa And Hullfish Are Incompatible ………
`
`Petitioner’s Alleged Motivation To Combine
`Is Nonsense ………………………………………..
`
`D.
`
`[1.0] “Network-Based Portal” …………………………..
`
`1.
`
`A “Portal” Is Not A User Terminal Or A
`Client Communication Device ……………………
`POSITA …………………………………………………….………
`
`
`
`
`
`
`
`
`A.
`
`Tanigawa (Exhibit 1008) …………………………………
`
`B. Hullfish (Exhibit 1009) …………………………………
`
`C. A POSITA Would Not Be Motivated To Combine
`Tanigawa And Hullfish To Implement The Claimed
`Invention Of The ʼ810 Patent …………………………..
`
`1.
`
`2.
`
`Tanigawa And Hullfish Are Incompatible ………
`
`Petitioner’s Alleged Motivation To Combine
`Is Nonsense ………………………………………..
`
`D.
`
`[1.0] “Network-Based Portal” …………………………..
`
`1.
`
`2.
`
`3.
`
`4.
`
`A “Portal” Is Not A User Terminal Or A
`Client Communication Device ……………………
`
`The ʼ810 Specification Defines “Portal” As
`A “Gateway” And Defines A “Gateway”
`As
`A “Networked Server” …………………………..
`
`The Functionality Of A “Portal” Is Different
`Than That Of A Client Communication Device …..
`
`The Claims Also Distinguish A “Portal”
`vii
`
`48
`
`40
`
`41
`
`44
`
`47
`
`42
`
`43
`
`48
`
`48
`
`49
`
`52
`
`54
`
`56
`
`4956
`
`4957
`
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`IPR2022-00202 p. 8
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`
`
`
`
`
`
`
`
`From A Client Communication Device ……………
`
`5158
`
`2.
`
`5.
`
`Petitioner’s Construction Is Contradictory ……..
`
`Petitioner’s Construction Is Contradictory ……..
`
`5.6. Tanigawa’s User Interface Is Not A
`“Network-Based Portal” …………………………..
`60
`
`[1.1] Is Not Obviated By The Combination Of
`Tanigawa And Hullfish …………………………………
`
`[1.3] “All” “Communications” “Use One Identifier” …….
`
`[1.5] “Block” Is Not Obviated By The Combination …….
`
`[1.6] The Combination Does Not Obviate “Enabling,
`Via The Network-Based Portal” “Based On The One
`Identifier” “In View Of The Second User Not Blocking
`The First User” ………………………………………..
`
`[1.9] Is Not Obviated By The Combination …………….
`
`1.
`
`2.
`
` The Petitioner’s Positions On “NBP” And “Contact
`Information Not Provided” Are Incompatible ……..
`
`The Combination Teaches That The Recipient’s
`Contact Information Is Sent To The Sender’s Client
`Communication Device …………………………..
`
`i.
`
`ii.
`
` Tanigawa Teaches A POSITA That Contact
`Information Is Provided ……………………
`
` Tanigawa Teaches A POSITA That IM
`Clients Receive Presence Information ………
`
`51
`
`59
`
`52
`
`54
`
`55
`
`57
`
`59
`
`59
`
`59
`
`60
`
`61
`
`63
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`
`
`
`
`
`
`
`vii
`
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`IPR2022-00202 p. 9
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`
`
`
`
`
`
`
`
`
`
`
`
`iii.
`
` Tanigawa Teaches A POSITA That IM
`Clients Use Client Addresses To Initiate
`Communication …………………………..
`
`Tanigawa Does Not Teach Or Suggest Hiding
`Contact Information …………………………..
`
` Petitioner Did Not Present Any Evidence
`Regarding A POSITA For [1.9] ……………………
`
`3.
`
`4.
`
`
`
`
`
`
`
`
`65
`
`66
`
`66
`
`ix
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`IPR2022-00202 p. 10
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`
`
`
`
`
`
`
`
`E.
`
`F.
`
`G.
`
`H.
`
`[1.1] Is Not Obviated By The Combination Of
`5.
`Tanigawa And Hullfish …………………………………
`
`[1.3] “All” “Communications” “Use One Identifier” …….
`
`[1.5] “Block” Is Not Obviated By The Combination …….
`
`[1.6] The Combination Does Not Obviate “Enabling,
`Via The Network-Based Portal” “Based On The One
`Identifier” “In View Of The Second User Not Blocking
`The First User” ………………………………………..
`
`I.
`
`[1.9] Is Not Obviated By The Combination …………….
`
`1.
`
`2.
`
`The Petitioner’s Positions On “NBP” And “Contact
`Information Not Provided” Are Incompatible ……..
`
`The Combination Teaches That The Recipient’s
`Contact Information Is Sent To The Sender’s Client
`Communication Device …………………………..
`
`i.
`
`Tanigawa Teaches A POSITA That Contact
`Information Is Provided ……………………
`
`62
`
`62
`
`64
`
`66
`
`66
`
`66
`
`68
`
`68
`
`x
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`IPR2022-00202 p. 11
`
`
`
`
`
`
`
`ii.
`
`iii.
`
`Tanigawa Teaches A POSITA That IM
`Clients Receive Presence Information ………
`
`Tanigawa Teaches A POSITA That IM
`Clients Use Client Addresses To
`Initiate
`Communication …………………………..
`
`3.
`
`4.
`
`Tanigawa Does Not Teach Or Suggest Hiding
`Contact Information …………………………..
`
`Petitioner Did Not Present Any Evidence
`Regarding A POSITA For [1.9] ……………………
`
`1.5. Petitioner’s Unsupported Attorney Argument
`Is Wrong And Is Outweighed By Patent
`Owner’s
`Evidence ………………………………………..
`
`6.
`
`[1.9] Summary …………………………………
`
`J.
`
`Claims 11-20
`
`………………………………………..
`
`V.
`
`
`CONCLUSION
`………………………………………………………
`
`70
`
`72
`
`72
`
`73
`
`6773
`
`6975
`
`6975
`
`769
`
`xi
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`
`
`
`
`
`
`
`
`Exhibit 2001
`
`Complaint
`
`
`Epic Games Inc.’s Preliminary Invalidity Contentions Exhibit
`Exhibit 2002
`2003 Order Setting Markman Hearing
`Exhibit 2004
`Epic Games Inc.’s Opening Claim Construction Brief Exhibit
`2005 Declaration of Dr. George N. Rouskas, Ph.D.
`Exhibit 2006
` Decision Denying Institution, IPR2022-00297
`(PTAB May 26, 2022)
`
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit 2007
`
`Judge Chang, IPR2022-00294, Paper No. 13
`(PTAB June 7, 2022) (dissent)
`
`Exhibit 2008
`
`CV of Dr. George N. Rouskas, Ph.D.
`
`
`
`xii
`
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`
`
`
`
`INTRODUCTION
`Patent Owner, IngenioShare, LLC submits this Response
`1. My name is George Rouskas. I have been retained as an expert
`
`witness to provide my independent opinions in regards with matters at issue in the
`
`Petition for inter partes review of U.S. Patent No. 10,142,810, Case No. (“the ’810
`
`Patent”) in the IPR2022-00202, and the subsequent . I have been retained by
`
`IngenioShare LLC, the Patent Owner, in the above proceeding.
`
`2.
`
`Unless otherwise noted, the statements made herein are based on my
`
`personal knowledge, and if called to testify about this declaration, I could and
`
`would do so competently and truthfully.
`
`3.
`
`A detailed record of my professional qualifications including cases in
`
`which I was an expert has been submitted as Exhibit 2008 and is summarized in
`
`Section II, infra.
`
`4.
`
`I am not a legal expert and offer no opinions on the law. However, I
`
`have been informed by counsel of the various legal standards that apply, and I have
`
`applied those standards in arriving at my conclusions.
`
`QUALIFICATIONS
`
`5.
`
`I am an Alumni Distinguished Graduate Professor with Tenure in the
`
`Department of Computer Science at North Carolina State University (NC State),
`
`where I also serve as the Director of Graduate Programs. I am an experienced
`
`researcher and educator in the field of computer networking, with expertise in
`
`1
`
`
`
`
`
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`IPR2022-00202 p. 14
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`
`
`
`
`
`
`Internet architectures and protocols, virtualization and cloud computing, mobile
`
`devices, network devices, network security and security protocols, in a variety of
`
`applications including providing for the protection of information transmitted
`
`between devices within and among networks.
`
`6.
`
`I have thirty-three years of experience in computer networking since I
`
`received my bachelor’s degree in 1989. I have twenty-eight years of experience as
`
`a professor in the Department of Computer Science of NC State.
`
`7.
`
`I have taught courses on computer networks, Internet protocols, data
`
`structures and computer performance evaluation. In 1997, I created one of the
`
`world’s first graduate level courses on Internet Protocols, which I continue to teach
`
`regularly, and in which I cover in depth topics related to wireless and mobile
`
`networks and real-time communications.
`
`8.
`
`In my career in this field, I have received numerous accolades for my
`
`contributions to computer networking, including being elected as Fellow of the
`
`IEEE in 2012. Other accolades include the Outstanding Service Award for the
`
`Optical Networking Technical Committee (ONTC) of the IEEE Communication
`
`Society (2019); the Joyce Hatch Service Award from the NC State Chapter of the
`
`Association for Computing Machinery/Association of Information Technology
`
`Professionals (ACM/AITP) (2018); the title of Distinguished Lecturer in the IEEE
`
`(2010-2012); an IBM Faculty Award (2007); the Best Paper Award for the
`
`2
`
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`
`
`
`
`
`
`International Workshop on End-to-End Virtualization and Grid Management
`
`(EVGM) (2007) (with C. Castillo and K. Harfoush); the Best Paper Award for the
`
`International Symposium on Communication Systems, Networks and Digital
`
`Signal Processing (CSNDSP) (2006) (with B. Chen and R. Dutta); the ALCOA
`
`Foundation Engineering Research Achievement Award, NC State College of
`
`Engineering (2004); the Alumni Outstanding Research Award, NC State (2003);
`
`the CAREER Award from the National Science Foundation (1997); and the
`
`Graduate Research Award from the Georgia Tech College of Computing (1994).
`
`9.
`
`I received my Ph.D. in Computer Science (Georgia Institute of
`
`Technology, 1994); M.S. in Computer Science (Georgia Institute of Technology,
`
`1991); and B.S. in Computer Engineering (National Technical University of
`
`Athens, 1989).
`
`10.
`
`In 2000-2001, while on Sabbatical from NC State, I worked as
`
`Network Architect for Vitesse Semiconductor, where I was responsible for the
`
`design of a state-of-the-art 2.5 Gbps network processor.
`
`11. My work as an academic began in 1994, when I joined NC State as an
`
`Assistant Professor. In 1999, I was promoted to Associate Professor with Tenure.
`
`In 2002, I was promoted to the position of Professor.
`
`12.
`
`I have held visiting positions on the faculties of a number of
`
`international universities, including positions as a Distinguished Scientist at King
`
`3
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`
`
`
`
`
`
`Abdulaziz University (Saudi Arabia, 2013-2021); Visiting Professor at the
`
`Laboratoire d’Informatique University of Paris 6 (France, October 2012); Visiting
`
`Professor at the Universidad Tecnica Federico Santa Maria (Chile, December
`
`2008); and Visiting Professor at the Laboratoire de Méthodes Informatiques
`
`University of Evry (France, July 2006, December 2002, June 2000).
`
`13.
`
`I have received funding from numerous agencies, foundations and
`
`companies for research on network design and communication. The sources of
`
`funding for this research include the National Science Foundation (NSF), the
`
`Defense Advanced Research Projects Agency (DARPA), the National Security
`
`Agency (NSA), Microsoft, IBM and Cisco.
`
`14.
`
`I have served in a number of leadership roles for the IEEE, including
`
`as Chair of the IEEE Communications Society’s Distinguished Lecturer Selection
`
`Committee (2016-2017); Vice Chair of the IEEE Communications Society’s
`
`Technical and Educational Activities Council (2016-2017); and Chair of the IEEE
`
`Communications Society’s Optical Networking Technical Committee (2016-2017).
`
`15.
`
`I have served in various founding, editorial and leadership positions
`
`for publications in my field, including as founding Editor-in-Chief of IEEE
`
`Networking Letters (2018-2021); founding Editor-in-Chief, Elsevier Optical
`
`Switching and Networking Journal (2004-2017); Associate Editor, IEEE/OSA
`
`Journal of Communications and Networking (2010-2012); Co-Guest Editor, JCM
`
`4
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`IPR2022-00202 p. 17
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`
`
`
`
`
`
`Journal of Communications, Special Issue on the “Advances in Communications
`
`and Networking,” vol. 6, no. 9, December 2011; Associate Editor, IEEE/ACM
`
`Transactions on Networking (2000-2004); Associate Editor, Computer Networks
`
`(2001-2004); Associate Editor, Optical Networks (2000-2004); and Co-Guest
`
`Editor, IEEE Journal on Selected Areas in Communications, Special Issue on
`
`“Protocols for Next Generation Optical WDM Networks,” vol. 18, no. 10, October
`
`2000.
`
`16.
`
`I have graduated twenty-five Ph.D. students. Two have received
`
`Ph.D. dissertation awards, one has received an NSF Career award, one became an
`
`NSA Fellow, and one has been inducted in the NC State Computer Science Alumni
`
`Hall of Fame. Three of my former Ph.D. students became Assistant Professors
`
`upon graduation, and the rest joined significant technology companies or research
`
`institutes, including RENCI (UNC-Chapel Hill), IBM Research, Google,
`
`Facebook, Cisco, Oracle, Ericsson, Riverbed Technologies, Sprint, and Sierra
`
`Wireless, among others. I have also graduated twelve M.S. thesis students.
`
`17. During the course of my career, I have had more than 200 scientific
`
`articles, three books, and ten book chapters published, which have collectively
`
`received more than 9,400 citations (Google Scholar, March 14, 2022). These are
`
`summarized in attached my curriculum vitae (see Ex. 2002).
`
`5
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`IPR2022-00202 p. 18
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`
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`BASES OF OPINIONS
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`18.
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`In the course of conducting my analysis and forming my opinions, I
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`have reviewed at least the items listed below:
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`i.
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`ii.
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`U.S. Patent No. 10,142,810 and its prosecution history;
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`Petition in IPR2022-00202, including the exhibits;
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`iii. Declaration of Almeroth (Exhibit 1003);
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`iv.
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`vi.
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`Institution Decision in IPR2022-00202;
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`Exhibit 2001, Complaint;
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`vii. Exhibit 2002, Epic Games Inc.’s Preliminary Invalidity Contentions;
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`viii. Exhibit 2003, Order Setting Markman Hearing;
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`ix.
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`Exhibit . For2004, Epic Games Inc.’s Opening Claim Construction
`Brief;
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`x.
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`Exhibit 2006, Decision Denying Institution, IPR2022-00297 (PTAB
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`May 26, 2022); and
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`xi.
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`Exhibit 2007, Judge Chang, IPR2022-00294, Paper No. 13 (PTAB
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`June 7, 2022) (dissent).
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`APPLICABLE LEGAL STANDARDS
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`A.
` the reasons explained herein,
`A. Ordinary Skill in the Art
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`1.
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` the patentability of all Challenged Claims
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`19. My opinions in this declaration are based on the understandings of a
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 19
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`person of ordinary skill in the art, which I understand is sometimes referred to as
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`an “ordinary artisan” or by the acronyms “POSITA” (person of ordinary skill in the
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`IPR2022-00202 p. 20
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`art) or “PHOSITA” ” (person having ordinary skill in the art), as of the time of the
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`invention, which I understand is here assumed to be at least as early as April 27,
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`2005 (Exhibit 1003, Almeroth Declaration at 26, ¶58). I understand that the person
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`of ordinary skill in the art is a hypothetical person who is presumed to have known
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`the relevant art at the time of the invention. By “relevant,” I mean relevant to the
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`challenged claims of the ’810 Patent.
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`2.
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`should be confirmed.
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`20.
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`I understand that, in assessing the level of skill of a person of ordinary
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`skill in the art, one should consider the type of problems encountered in the art, the
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`prior solutions to those problems found in the prior art references, the rapidity with
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`which innovations are made, the sophistication of the technology, the level of
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`education of active workers in the field, and my own experience working with
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`those of skill in the art at the time of the invention.
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`21.
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`In this case, Dr. Almeroth has asserted in his declaration that a person
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`of ordinary skill in the art (POSITA) at the time of the ’810 Patent would have had
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`“a Bachelor’s degree in Computer Science or an equivalent field and three to five
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`years of experience working with Internet communication systems. Additional
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`education might compensate for less experience, and vice-versa.” Exhibit 1003,
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`Almeroth Declaration at 32, ¶74. I have employed Dr. Almeroth’s definition in
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`this declaration.
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`8
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 21
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`22.
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`I was at the time of invention, and am, at least one of more than
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`ordinary skill in the art through my education and research experience. As of the
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`date of the invention, I was and am very familiar with telecommunications
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`systems, Internet communications systems, computer networks, communications
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`protocols, Internet protocols, including systems and protocols related to voice
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`communications, SMS and text communications, group communications, and
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`wireless communications. Indeed, I am very familiar with people having this level
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`of skill in the area of Internet communications systems and protocols. I have been
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`teaching undergraduate and graduate level courses in computer network
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`architecture and protocols, including various techniques for voice communications,
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`SMS and text communications, group communications, and wireless
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`communications.
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`B. Claim Construction
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`23.
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`I understand that claims of the ʼ810 patent in this IPR are generally
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`interpreted according to their ordinary and customary meaning taking into
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`consideration the so-called “intrinsic evidence” of the patent consisting of (1) the
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`claim language; (2) the specification; and (3) the prosecution history. I understand
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`that the Board has discretion to take into consideration so-called “extrinsic
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`evidence” including references (prior art and non-prior art) as well as definitions
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`from dictionaries and treatises.
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`IPR2022-00202 p. 22
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`24.
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`I understand that claim terms may be explicitly defined in the patent
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`specification, or they may be implicitly defined through consistent usage in the
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`specification. I also understand that the scope of claim terms may be limited by
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`statements in the specification or prosecution history where the applicant clearly
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`disavows or disclaims subject matter in a clear and unmistakable manner.
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`C. Obviousness (35 U.S.C. § 103)
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`25.
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`I have been informed that a patent may be invalid if the claimed
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`invention considered as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art. 35 U.S.C. § 103. I have been
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`informed that the following factors must be evaluated to determine whether
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`Petitioner has met its burden of proof on obviousness: (1) the scope and content of
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`the prior art; (2) the level of ordinary skill in the art; and (3) the differences
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`between the claimed subject matter and the prior art. Based on these factual
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`inquiries, it must then be determined, as a matter of law (4) whether or not the
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`claimed subject matter as a whole would have been obvious to one of ordinary skill
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`in the art at the time the alleged invention was made.
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`26.
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`I understand that a finding of obviousness requires a showing that as
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`of the date of the invention (a) the prior art teaches or suggests each of the
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`limitations of the claim; (b) there exists an apparent reason or motivation to
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`combine and/or modify the prior art as proposed; and (c) a person of ordinary skill
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 23
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`would have a reasonable expectation of success, including that the proposed
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`combination and/or modification of the prior art would operate for its intended
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`purpose.
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`27.
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`I have been informed that a claim is not proved obvious merely by
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`demonstrating that each of the elements was independently known in the prior art.
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`I have been informed that many, if not all, inventions rely on building blocks
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`already known, and claimed inventions almost of necessity will likely be
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`combinations of what is already known.
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`28.
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`I have been informed that it is important in the obviousness inquiry to
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`identify whether a reason existed at the time of the invention that would have given
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`a POSITA motivation to combine and/or modify the prior art references in the
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`manner proposed by the Petitioners so as to arrive at the claimed invention. Put
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`another way, a finding of obviousness should be supported by an apparent reason
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`to combine and/or modify the prior art references as proposed by the Petitioners.
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`29.
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`I also understand that the obviousness inquiry should guard against
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`hindsight bias or hindsight reconstruction where after-the-fact reasoning is applied
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`to combine prior art elements using the claimed invention as a template, without
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`establishing that, as of the date of the invention, there exists a motivation to
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`combine or apparent reason to combine and/or modify the prior art as proposed.
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`11
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`Epic Games Ex. 1039
`Epic Games v. IngenioShare
`IPR2022-00202 p. 24
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`30.
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`I have been informed that it is important in the obviousness inquiry
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`that it is understood how the combination of references is supposed to work. An
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`explanation of the operation of the combined references is often a prerequisite to
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`showing that a person of ordinary skill in the art would have been motivated to
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`make the proposed combination and would have had a reasonable expectation of
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`success in doing so.
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`31.
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`In assessing obviousness, I have been instructed to consider both the
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`ordinary creativity and common sense of the person of ordinary skill in the art. I
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`also understand that it is impermissible for common sense to be applied so as to fill
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`gaps in prior art that fails to teach or suggest a limitation of the claim.
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`32.
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`In assessing obviousness, I have been instructed that, in order to
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`qualify as proper prior art for an obviousness analysis, a reference must qualify as
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`analogous art. I have been informed that a reference qualifies as analogous art with
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`respect to the claims if it is either: (1) from the same field or endeavor as the
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`patent; or (2) the reference is reasonably pertinent to the particular problem
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`addressed by the invention. I have also been informed that in order for a reference
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`to be reasonably pertinent, it must logically have commended itself during the
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`ordinary course of development to an inventor’s attention in considering his
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`problem.
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`12
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 25
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`TERMINOLOGY
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`3.33. The claims of the ʼ810 patent use the term “first user” to refer to the
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`sender and “second user” to refer to the recipient of a message. The specification
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`and the prior art references use other terminology as well, including “user,”
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`“client,” “subscriber,” “person,” etc. To avoid confusion, Patent Owner usesand I
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`use the terms “sender” and “recipient” herein.
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`GROUND I – DIACAKIS DOES NOT OBVIATE CLAIMS 1-20
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`A. Diacakis (Exhibit 1007)
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`4.34. Diacakis teaches a “presence and availability management system.”.
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`Diacakis defines “presence” as “the ability of an individual to access a
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`particular communications network” and “availability” as “the willingness of an
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`individual who is present in one or more communications networks to be
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`reached by one or more persons.” Exhibit 1007, Diacakis at [0003], [0026],
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`[0027]; Exhibit 2005, Rouskas Declaration at 12, ¶34.].
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`1
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 26
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`5.35. Diacakis’s presence and availability (P&A) management system
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`determines whether a user is present on the network (i.e., whether the user’s device
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`is powered on); determines whether a user is available on the network (whether the
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`user is willing to receive communications from others); and communicates P&A
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`information to others, depending on the user’s preference.
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`2
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 27
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`Exhibit 1007, Diacakis at Fig. 4; Exhibit 2005, Rouskas Declaration at 12-13, ¶354.
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`6.36. Diacakis teaches that an individual may create profiles, such as the
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`office profile in Fig. 2, to instruct the P&A system how to distribute his/her
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`contact information. A profile specifies what subset of the individual’s contact
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`information subscribers at a given access level receive:
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`3
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 28
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`For example, an individual may have an office profile as indicated in
`FIG. 2. Thus, 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.
`Persons in the “Normal” access level would receive less contact
`information than persons in the “Important” access level, and persons
`in the “Restricted” access level would receive even less contact
`information.
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`Exhibit 1007, Diacakis at [0032] (emphasis added); Exhibit 2005, Rouskas
`Declaration at 13, ¶36.).
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`4
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`IPR2022-00202 p. 29
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`7.37. Diacakis Fig. 3 also shows that subscribers at the “Restricted” access
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`level receive only the voicemail number, subscribers in the “Normal” access level
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`receive the work phone number, voicemail number, and e-mail, and subscribers
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`in the “Important” access level receive two phone numbers, a voicemail number,
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`two e-mails, and an IM address. Also, “the indicator module 110 may determine
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`whether an address for each data content type (e.g., telephone, text (IM), video,
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`graphic, audio, etc.) has been transmitted from the P&A management server 12.”
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`Exhibit 1007, Diacakis at [0066]; Exhibit 2005, Rouskas Declaration at 14, ¶37.].
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`8.38. According to Diacakis, the P&A management system employs a
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`publisher- subscriber model that updates the subscribers of an individual’s
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`presence and availability status as soon as the individual publishes a change to the
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`profile:
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`When the individual transmits a change in profile to the server 12, the
`server publishes the change to each of the connected clients 22 that
`are subscribers of the individual's information. The publisher-
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`Epic Games v. IngenioShare
`IPR2022-00202 p. 30
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` subscriber model enables subscribers to observe a particular
`individual’s P&A information instantly.
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`Exhibit 1007, Diacakis at [0029]; Exhibit 2005, Rouskas Declaration at 14, ¶38.].
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`9.39. Subscribers access an individual’s P&A information on their
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`client terminals via a “Contacts Program” akin to the Contacts application in
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`today’s smartphones. Exhibit 1007, Diacakis at [0056] and Fig. 8; Exhibit 2005,
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`Rouskas Declaration at8.
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`14, ¶39.
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`6
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`Epic Games Ex. 1039
`Epic Games v. IngenioShare
`IPR2022-00202 p. 31
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`Contact Properties
`
`Contact:
`
`
`Contacts Program
`
`@) Jonathan
`Addresses:
`Volce
`
`Work: (412) 555-1234
`
`Work: (412) 555-2345
`Voice Mall
`Work vail: (412) 558-1111
`Cell vail: (442) 555-2222
`Home vmail: (442) 555-3333
`Instant Message
`Jonathan@abcco.com
`
`OA) Jonathan@pdqco.com
`E-mall
`Primary work E-mail:
`jonathan@abe.com
`Personal - wed based E-meil: janathan@odq.com
`
`File View Contacts Help
`
`
`
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`Epic Gamesv. IngenioShare
`IPR2022-00202 p. 32
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`Epic Games Ex. 1039
`Epic Games v. IngenioShare
`IPR2022-00202 p. 32
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`
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`Contact Properties
`Contact:
`
`Personal - wed based E-mail: jonathangpdq.com
`
`Addresses:
`Volco
`
`Work: (442) 555-1234
`Work: (442) 555-2845
`Voice Mall
`Work wmail: (442) 555-1417
`Call vail: (412) 556-2222
`Home vai: (472) 555-3993
`Instant Message
`(ua) Jonathan@abcoo.com
`(GA)
`Iensthan@sdacs.comt
`Primary work E-mail: jonathan@abs.com
`
`Contacts Program
`
`File View Contacts Help
`
`rc~<®)@leonathan
`| L@@n
`Friends
`-O@cr
`-@O om
`-O@=
`-~@@>+.
`School
`Misc
`-&) (ia)Rober
`+) 4) Cecelia
`
`|
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`
`
`
`
`-@) (i) Cecelia
`
`
`
`Contact Properties
`
`Contact:
`
`Addresses;
`Volce
`
`Work: (612) 555-1234
`
`Work: (442) 555-2345
`Voice Mall
`Work vmnail: (412) 555-1141
`Cell vail: (412) 555-2222
`Hame vmail: (442) 555-3333
`I