UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner
`
`
`U.S. PATENT NO. 10,142,810
`
`Case IPR2022-00202
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner
`
`
`U.S. PATENT NO. 10,142,810
`
`Case IPR2022-00202
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`BECAUSE THE ROUSKAS DECLARATION MERELY REPEATS
`THE POR IT IS ENTITLED TO NO WEIGHT ............................................. 4
`III. GROUND I: CLAIMS 1–20 ARE RENDERED OBVIOUS BY
`DIACAKIS ...................................................................................................... 6
`A. Diacakis Teaches A “Network-Based Portal” ....................................... 6
`B.
`Diacakis Teaches A “Prior Registration Process” .............................. 14
`C.
`Diacakis Teaches “Messages” ............................................................. 14
`D. Diacakis Teaches That A Second User’s Contact Information Is
`Not Provided To Others By Virtue Of The Second User
`Receiving A Message .......................................................................... 17
`IV. GROUND II: CLAIMS 1–9, 11–17, 19, AND 20 ARE RENDERED
`OBVIOUS BY TANIGAWA IN VIEW OF HULLFISH ............................. 20
`A. A POSITA Would Have Been Motivated To Combine
`Tanigawa And Hullfish ....................................................................... 20
`Tanigawa Teaches A “Network-Based Portal” ................................... 23
`Tanigawa Teaches A “Prior Registration Process” ............................. 24
`Tanigawa Teaches “Identifiers” .......................................................... 25
`Tanigawa Teaches That A Second User’s Contact Information
`Is Not Provided To Others By Virtue Of The Second User
`Receiving A Message .......................................................................... 26
`CONCLUSION .............................................................................................. 31
`
`I.
`II.
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`V.
`
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`
`B.
`C.
`D.
`E.
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`Unless otherwise noted, all emphasis is added.
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`
`
`
`
`ii
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`Petitioner’s Reply to Patent Owner’s Response
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .......................................................................... 22
`Hulu, LLC v. Sito Mobile R&D IP, LLC,
`IPR2021-00304, Paper 30 ..................................................................................... 4
`Juniper Networks, Inc. v. Brixham Solutions, Ltd.,
`IPR2014-00425, Paper 38 ..................................................................................... 4
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 14
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 8
`Uber Techs., Inc. v. X One, Inc.,
`957 F.3d 1334 (Fed. Cir. 2020) .......................................................................... 22
`
`
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`
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`iii
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`LIST OF PETITIONER’S UPDATED EXHIBITS
`Description
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
`
`1017
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`1018
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`
`
`U.S. Patent No. 10,142,810
`
`File History of U.S. Patent No. 10,142,810
`
`Declaration of Dr. Kevin Almeroth in Support of Inter Partes Review
`of U.S. Patent No. 10,142,810
`Curriculum Vitae of Dr. Kevin Almeroth
`
`U.S. Provisional Patent Application No. 60/527,565
`
`U.S. Provisional Patent Application No. 60/689,686
`
`U.S. Patent Application 2002/0116461 (“Diacakis”)
`
`U.S. Patent Application 2004/0001480 (“Tanigawa”)
`
`U.S. Patent No. 7,428,580 (“Hullfish”)
`
`IngenioShare’s Infringement Contentions in Texas Litigation
`
`Texas Litigation Proposed Scheduling Order
`
`Fourteenth Supplemental Order Regarding Court Operations Under
`the Exigent Circumstances Created by the COVID-19 Pandemic
`Judge Albright’s Standing Order re Inter-District Transfer
`
`Kurose, J. and Ross, K., Computer Networking: A Top-Down
`Approach Feature the Internet (2000)
`Kuehn, S., A Play Theory Analysis of Computer-Mediated
`Telecommunication (Apr. 20, 1990)
`Telecomputing in Japan
`
`Hernandez, R., ECPA and Online Computer Privacy (1988)
`
`Miller, A., Applications of Computer Conferencing to Teacher
`Education and Human Resource Development (1991)
`
`iv
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`Description
`
`Exhibit
`No.
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
`
`1037
`
`
`
`Benimoff, N. and Burns, M., Multimedia User Interfaces for
`Telecommunications Products and Services (1993)
`Falconer, W. and Hooke, J., Telecommunications Services in the
`Next Decade (1986)
`Hine, N.A., et al., An Adaptable User Interface to a Multimedia
`Telecommunications Conversation Service for People with
`Disabilities (1995)
`Bazaios, A., et al., Multimedia Architecture Offering Open Distance
`Learning Services over Internet
`Stein, J., et al., Chat and Instant Messaging Systems (2002)
`
`U.S. Patent Application 2002/ 0183114 (“Takahashi”)
`
`U.S. Patent No. 6,241,612 (“Heredia”)
`
`U.S. Patent Application 2003/0216178 (“Danieli”)
`
`International Patent Application WO 01/45343 (“Davies”)
`
`Grinter, R. and Palen, L., Instant Messaging in Teen Life (2002)
`
`File History of U.S. Patent No. 7,729,688
`
`File History of U.S. Patent No. 8,744,407
`
`File History of U.S. Patent No. 9,204,268
`
`File History of U.S. Patent No. 9,736,664
`
`U.S. Patent No. 10,142,810 Claim Listing
`
`Patil, S. and Kobsa, A., The Challenges in Preserving Privacy in
`Awareness Systems (2003)
`Internet Engineering Task Force RFC 2779 (Instant
`Messaging/Presence Protocol Requirements) (2000)
`Declaration of Yimeng Dou Pursuant to 37 C.F.R. 42.64(b)(2)
`
`Declaration of Jennifer A. Babbitt Pursuant to 37 C.F.R. 42.64(b)(2)
`
`v
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`Description
`
`Exhibit
`No.
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`Supplemental Declaration of Dr. Kevin Almeroth Pursuant to 37
`C.F.R. 42.64(b)(2)
`Comparison between Paper 13 (Patent Owner Response) and Ex.
`2005 (Declaration of Professor George N. Rouskas, Ph.D.)
`Liferay.com, “What Is A Web Portal?” available at
`https://www.liferay.com/resources/l/web-portal
`Gartner, “Mobile Portal,” available at https://www.gartner.com/
`en/information-technology/glossary/mobile-portal
`Deposition Transcript of Dr. George Rouskas
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`vi
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`I.
`
`INTRODUCTION
`In the Institution Decision (“ID”), the Board credited Petitioner’s argument
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`that “Diacakis teaches the subject matter of claims 2–20” and that “Tanigawa and
`
`Hullfish teach the subject matter of claims 2–9, 11–17, 19, or 20.” ID, 19–20, 72.
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`In its Patent Owner Response (“POR”), Patent Owner IngenioShare, LLC (“PO”)
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`tacitly admits that Petitioner’s grounds render large swaths of the ’810 Patent
`
`obvious. Regarding Ground I (Diacakis), PO does not specifically defend Claims
`
`2–10, 12–18, and 20. Regarding Ground II (Tanigawa and Hullfish), PO does not
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`specifically defend Claims 2–9, 12–17, or 20. The few arguments PO does raise are
`
`unavailing.
`
`Regarding Diacakis, PO addresses only a few independent claim limitations,
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`but as discussed immediately below, none of PO’s arguments is meritorious.
`
`Moreover, all rely on an expert declaration that merely parrots the POR, which is
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`entitled to no weight. Ex. 2005 (“Rouskas Declaration”).
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`• First, PO argues Diacakis fails to teach the claimed “network-based
`
`portal” (“NBP”) because PO argues the term “portal” does not include the
`
`user interfaces Diacakis discloses. Yet, PO’s own expert, Dr. Rouskas,
`
`admitted the term is not limited in that way. Moreover, as the Board
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`previously found, PO’s construction would exclude the ’810 Patent’s
`
`preferred embodiments of the invention. ID, 17–19.
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`1
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`• Second, PO argues Diacakis does not teach a “prior registration process,”
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`but PO’s argument improperly injects a non-existent claim requirement
`
`that the registration must be done using the user’s device.
`
`• Third, PO argues Diacakis does not allow users to communicate, but this
`
`ignores Diacakis’s clear disclosures (and the Board’s findings) of client-
`
`to-client communication. ID, 29–30.
`
`• Fourth, PO argues Diacakis fails to teach the negative limitation of a
`
`recipient’s contact information not being provided to a sender by virtue of
`
`the communication. Yet, as the Board determined, Diacakis expressly
`
`discloses that users control what contact information others may view. ID,
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`41–42.
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`PO’s arguments regarding Tanigawa and Hullfish are likewise unavailing:
`
`• First, PO argues a POSITA would not combine these references, but
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`Petitioner and its expert, Dr. Almeroth, established several reasons why
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`Hullfish’s blocking features would improve Tanigawa, which the Board
`
`found compelling. ID, 70. Instead, PO argues the entirety of the Hullfish
`
`invention would not be combined with Tanigawa, which is inconsistent
`
`with Petitioner’s position and unnecessary to establish obviousness. PO
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`also argues Hullfish is “incompatible” with Tanigawa, but its expert
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`admitted the opposite.
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`2
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`• Second, PO repeats its argument that the combination does not teach the
`
`NBP, which is incorrect for the reasons indicated above.
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`• Third, PO repeats its argument that the combination does not teach a prior
`
`registration process, which is incorrect for the reason indicated above.
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`• Fourth, PO argues the combination does not teach “identifiers” because
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`users’ nicknames are purportedly insufficient to route messages correctly.
`
`This argument improperly reads into the claims a sufficiency-of-routing
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`requirement, for which PO has no basis.
`
`• Fifth, PO argues the combination does not teach the negative limitation,
`
`but its arguments are premised on a misreading of Tanigawa and the claim
`
`language. PO argues “presence information” provided to Tanigawa’s
`
`users
`
`includes “contact
`
`information,” but Tanigawa expressly
`
`distinguishes them, and only provides “presence information” to users. PO
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`also improperly conflates users with devices—the negative limitation
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`prohibits contact information from being provided to the user, not the
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`user’s device.
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`Thus, Claims 1–20 are invalid and obvious.
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`3
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`Petitioner’s Reply to Patent Owner’s Response
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`II. BECAUSE THE ROUSKAS DECLARATION MERELY REPEATS
`THE POR IT IS ENTITLED TO NO WEIGHT
`The Rouskas Declaration repeats the POR nearly verbatim. Ex. 1039.1 This
`
`is a classic example of a cursory expert declaration the Board disregards. See, e.g.,
`
`Hulu, LLC v. Sito Mobile R&D IP, LLC, IPR2021-00304, Paper 30 at 68 (declarant’s
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`“cursory and unsupported testimony entitled to little weight” where it “repeat[ed]
`
`verbatim without any additional clarification Patent Owner’s contentions from the
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`Patent Owner Response”). The Board previously disregarded another Rouskas
`
`declaration for this very reason. See Juniper Networks, Inc. v. Brixham Solutions,
`
`Ltd., IPR2014-00425, Paper 38 at 13 (Rouskas declaration afforded “little weight
`
`because his testimony is conclusory and unsupported by evidentiary explanations”).
`
`Here, the Rouskas Declaration is “entitled to little or no weight” for the same
`
`reasons. See 37 C.F.R. § 42.65(a).
`
`Dr. Rouskas’s deposition testimony further demonstrates that his declaration
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`is unreliable. In PO’s preliminary response (“POPR”), it argued an NBP is “at the
`
`server-side” and cannot be a user interface in a client device. Paper 6, 1–2, 15–22.
`
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`1 The declaration substantively differs from the POR only by citing to two webpages
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`(Ex. 2005, 21), but these websites fail to advance PO’s NBP arguments, as discussed
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`below in Section III.A.
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`Dr. Rouskas admitted he was retained months after the POPR was filed and that he
`
`did not review the POPR, yet he claimed he conceived of PO’s NBP argument.
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`Ex. 1042, 25:2–26:2, 53:23-54:14. This is not credible; indeed, his declaration
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`copied and pasted several portions of the POPR:
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`POPR (Paper 6)
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`Rouskas Declaration (Ex. 2005)
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`
`
`
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`E.g. Paper 6, 22–23; Ex. 2005, ¶ 141; compare Paper 6, ¶¶ 7–9, with Ex. 2005,
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`¶¶ 46–48, 128–29. His declaration should be given no weight for the additional
`
`reason that it appears to contain opinions he did not develop.
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`Moreover, as explained below, at his deposition Dr. Rouskas contradicted his
`
`declaration
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`and
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`admitted
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`the opinions
`
`therein
`
`rest on
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`fundamental
`
`misunderstandings of the challenged claims and prior-art references. Because the
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`Rouskas Declaration contains no expert analysis nonredundant of the attorney
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`argument in the POR and is contradicted by Dr. Rouskas’s own deposition
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`testimony, it should be afforded no weight.
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`5
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`Petitioner’s Reply to Patent Owner’s Response
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`III. GROUND I: CLAIMS 1–20 ARE RENDERED OBVIOUS BY
`DIACAKIS
`Aside from the below limitations, PO does not dispute Diacakis teaches
`
`Claims 2–10, 12–18, and 20 and most of the elements of 1, 11, and 19. As to the
`
`few limitations PO does address, they are obvious.2
`
`A. Diacakis Teaches A “Network-Based Portal”
`As the Board recognized with respect to Element 1.0, giving the term
`
`“network-based portal” its “ordinary and customary meaning,” Diacakis discloses
`
`an NBP because it references a user interface in a client terminal connected to a
`
`P&A management server via a network. See ID, 16–19, 27–28; Pet., 33–35; Ex.
`
`1003, ¶¶ 88–89. In both the ’810 Patent and Diacakis, the claimed functionality
`
`appears in mobile phones—which PO admits are client devices. POR, 18.
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`In the POR, PO revives the same argument the Board already rejected: that
`
`the NBP resides only “at the server-side of a network” and excludes user interfaces
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`of “client communication devices such as Diacakis’s client terminal 22.” POR, 10–
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`11. PO’s argument is wrong for several reasons.
`
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`2 PO addresses Claims 3, 7, and 10 only with reference to its Claim 1 arguments.
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`POR, 33–34.
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`6
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`First, PO relies on the Rouskas Declaration’s offering of extrinsic definitions
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`to show that “portals” are websites, but Dr. Rouskas admitted “[t]here’s nothing to
`
`limit the portal to just a server or a website.” Compare POR, 10–11, with Ex. 1042,
`
`60:7–61:8; see also id., 57:7–11 (declining to equate “portals” to websites), 58:5–9
`
`(same). Moreover, Dr. Rouskas admitted the two definitions in the Rouskas
`
`Declaration were cherry-picked from search results for “portal” rather than from any
`
`nuanced inquiry or analysis. Id., 62:24–63:10. This method selectively disregarded
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`definitions that include the word “interface.” See Exs. 1040 (“A portal is a web-
`
`based platform that collects information from different sources into a single user
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`interface[.]”), 1041 (“A mobile portal is an Internet gateway that enables mobile
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`devices to connect remotely . . . typically via a Web browser interface.”). In any
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`event, PO’s argument limiting “portals” to websites is based on a fundamental
`
`misunderstanding of the claim, which Dr. Rouskas yielded in deposition: the
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`Rouskas Declaration claims the NBP cannot be in a client device because it must be
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`“hosted on [a] web server[],” but Dr. Rouskas acknowledged no claim limitation
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`requires the NBP to be “hosted.” Compare Ex. 2005, ¶ 49 and Ex. 1042, 84:11–14,
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`with id., 84:16–85:11.
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`Second, PO incorrectly argues the ’810 Patent defines “portal” as a “gateway”
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`and that a gateway is always a “networked server.” POR, 11, 15–16. But the
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`specification states that “[a] communication gateway or a portal is formed”—not
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`that the portal is a communication gateway. Ex. 1001, 4:11–13. Indeed, the
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`specification treats the phrase “portal or gateway” differently from the singular
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`“portal,” using these phrases to describe different embodiments, indicating that
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`portals and gateways are two alternative means to establish communication. See id.,
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`4:53–54, 6:66–67, 7:3. The specification further states that “[o]ne example of a
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`networked server is a gateway computer”—not that all gateways are servers.
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`Ex. 1001, 16:7–10. Dr. Rouskas admits as much. Ex. 1042, 96:20–97:1 (“It doesn’t
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`say that [gateway] means network[ed] server, yes.”); see also id., 94:18–95:1; Ex.
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`1003, ¶¶ 88–89. Dr. Rouskas nevertheless opines that the word “or” defines “portal”
`
`as “gateway.” Id., 90:17–24. But the ’810 Patent’s recitation of “portal or gateway”
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`means the two are alternatives, not that one redefines the other. See Thorner v. Sony
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`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012) (holding that the
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`phrase “embedded within or attached to” did not redefine “embedded” as “attached”
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`or vice versa).
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`Third, PO argues the NBP and client devices have different functionalities
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`because the NBP “allows worldwide access to the user,” whereas a “client
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`communication device is ‘associated with a user.’” POR, 11–13. This is a
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`distinction without a difference. As the Petition explains, Diacakis’s client terminal
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`(1) connects a user to a network via the NBP and (2) is “associated” with that user.
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`Pet., 33–35. For instance, as Dr. Rouskas admitted, a user’s mobile phone allows
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`8
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`worldwide access to that user by allowing others to communicate with the user.
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`Ex. 1042, 110:20–24, 114:2–5 (“One is worldwide access to the user. A phone
`
`provides that, there’s no question about that.”). PO offers no explanation why such
`
`a device “is not accessible ‘worldwide.’” POR, 16.
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`Fourth, PO counters a strawman argument (that only the sender’s device
`
`contains the NBP) that Petitioner did not advance. POR, 13–14, 18–19. Relying on
`
`this mischaracterization, PO concludes Diacakis cannot meet both the NBP and the
`
`negative limitation (i.e., communicating without providing contact information)
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`because senders’ devices would have access to others’ contact information. POR,
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`13–14, 18–19.
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` PO misreads element 1.8, which
`
`indicates “contact
`
`information . . . allow[s] the second user to receive messages via the [NBP]”—not
`
`that contact information is provided to the NBP. As the Petition explained,
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`Diacakis’s users provide their contact information to a P&A server. Pet., 46–47.
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`Diacakis’s P&A server is different from the NBP, which is the interface that allows
`
`users to connect to the P&A server. See id., 33–35.3
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`3 Moreover, PO’s argument that the ’810 Patent’s negative limitation requires that
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`“contact information not be provided to the sender’s client device” mischaracterizes
`
`the claim language. As explained below in Section IV.E with respect to Tanigawa,
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`9
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`Similarly, PO argues Diacakis’s user interface is not a “portal” because it
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`wrongly asserts the interface only allows sending messages, not receiving them.
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`POR, 14–15. Yet Diacakis makes clear that “[a]n individual user of the system 10
`
`may . . . instruct the system 12 how his information is to be distributed”—indicating
`
`its users also receive messages. Ex. 1007, [0031]. As shown in Figures 1 and 9
`
`below, all users of Diacakis’s system 10 access it via client terminal 22, which
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`contains user interface 112 (i.e., the NBP), indicating that both senders and recipients
`
`use this interface:
`
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`the claim prohibits contact information from being provided to a user—it does not
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`prohibit the user’s device from receiving such information.
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`10
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`Petitioner’s Reply to Patent Owner’s Response
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`
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`PRESENCE
`DETECTION
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`Profile
`Database
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`
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`TERMIAL
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`AVAILABILITY
`MANAGEMENT
`ENGINE
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`
`
`ENGINE
`
` Availability information from
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`P&A management server 12
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`Fig. 1
`
`
`
`+40
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`112
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`
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`11
`11
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`Ex. 1007, Figs. 1, 9.
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`Fifth, although the Board found PO’s argument excluded a preferred
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`embodiment of the ’810 Patent (specifically Figures 7–11), PO insists its argument
`
`did not because the figures allegedly describe methods performed after receiving a
`
`message, rather than enabling receipt of a message. POR, 16–19. That is incorrect.
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`The ’810 Patent’s claims “allow the second user to receive messages via the
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`network-based portal.” Ex. 1001, cls. 1, 11, 19. In fact, as the Board understood,
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`key “recipient” functionality (i.e., allowing users to specify who may contact them
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`and see their contact information), takes place “all in the phone,” since these phones
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`“automatically manage the communication.” Id., 7:13–22. Thus, the NBP not only
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`enables receipt of messages but also manages them. See Ex. 1003, ¶¶ 107–08.
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`Moreover, contrary to PO’s argument, the client devices described by the ’810
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`Patent enable messages to be received, as annotated in Figure 7 below:
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`12
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`Ex. 1001, Fig. 7; see also id., Figs. 8–11, 3:20–27, 9:11–10:8, 10:24–13:35, 15:4–
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`61.
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`Faced with this fact, PO argues these disclosures are “not embodiments
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`concerning use of [an] NBP . . . as are the claims of the ’810 Patent.” POR, 17–18.
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`This is not correct. All of the ’810 Patent’s independent claims recite an NBP—
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`13
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`thus, because the patent’s figures are embodiments of the patent, they must include
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`an NBP. PO remains silent as to the purpose of these disclosures, if not related to
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`the claims. As the Board recognized, a construction “which excludes the preferred
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`embodiment is rarely, if ever correct.” PPC Broadband, Inc. v. Corning Optical
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`Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (internal quotation marks
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`omitted). PO’s argument thus fails.
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`B. Diacakis Teaches A “Prior Registration Process”
`With respect to Element 1.1, PO does not dispute that Diacakis’s users must
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`undergo a prior registration process. Pet., 37–38. Rather, PO argues that “a user
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`does not go through a registration process with their Contact app before they can
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`use [Diacakis]; they simply open it and use it.” Id., 19–20. Yet, the claim merely
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`requires a “prior registration process by the first user regarding the use of the
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`network-based portal.” Ex. 1001, cl. 1. It does not require a user to register “with
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`their Contact app”—which PO improperly attempts to inject. PO cites nothing
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`suggesting a user could “simply open [] and use” Diacakis’s system without any
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`registration. POR, 20.
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`C. Diacakis Teaches “Messages”
`With respect to Elements 1.1, 1.3, 1.4, 1.6, and 1.8, PO argues Diacakis “does
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`not teach a system that actually allows a user to make a communication.” POR, 20;
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`see id., 8, 21–26. That is wrong. As the Board concluded, Diacakis discloses a first
`
`
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`14
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`user sending a message to a second user. ID, 30; Pet., 35–38; Ex. 1003, ¶¶ 90–94.
`
`Indeed, Diacakis expressly teaches two client devices communicating with each
`
`other: “a subscriber at client terminal 22 may first attempt to communicate with an
`
`individual at client terminal 140 via one or more intermediate relay hosts 142.”
`
`Ex. 1007, [0072]. Relay host 142 can be “a presence and availability host” such as
`
`Diacakis’s P&A server. See id. This client-to-client messaging is shown below in
`
`Figure 11, which Dr. Rouskas acknowledged in deposition:
`
`See id., Fig. 11; Ex. 1042, 145:10–16; 422:19–423:1 (admitting Diacakis teaches
`
`client-to-client communication either with a P&A host or without one). Diacakis’s
`
`
`
`
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`15
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`teachings “provide a user-friendly interface allowing subscribers to contact
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`individuals without having to be concerned about different communication devices,
`
`their different communication devices, their addresses and capabilities.” See Pet.,
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`43 (citing Ex. 1007, [0062]). Rather than knowing others’ phone numbers or
`
`addresses, a user “may instead refer to a single indicator and use that information to
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`initiate point-to-point contact.” See id., 48. The fact that Diacakis’s users may
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`communicate without knowing others’ contact information necessarily means that
`
`they use Diacakis’s platform to communicate.4
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`Despite this, PO argues Diacakis only informs users of other user’s presence
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`and availability—essentially reducing Diacakis to a digital phone book—because in
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`a different proceeding (concerning the ’407 Patent), the Board concluded Diacakis
`
`
`4 Moreover, in related proceedings, the Board noted that even if Diacakis had not
`
`expressly disclosed a recipient responding to a sender’s message, such a response
`
`would have been obvious. See ’727 ID, 23; see also Pet. 37–39; Ex. 1007, [0023]
`
`(noting that elements of “a typical communications network” (e.g., two users
`
`sending messages back and forth) are not discussed in detail “because such elements
`
`are well known in the art”). Accordingly, Diacakis not only discloses one user
`
`messaging another, but also renders at least obvious two users sending messages
`
`back and forth.
`
`
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`16
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`does not teach a “server receiv[ing] the ‘message’ the subscriber is trying to convey.”
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`POR, 8, 20–21, 24–26 (citing Ex. 2006 at 26). But PO misreads the Board’s
`
`findings. Regarding the ’407 Petition, while the Board found Diacakis teaches both
`
`a server and “point-to-point contact” between users, its basis for denial was its
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`finding that messages are not received by Diacakis’s server. Ex. 2006 at 25.
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`Because the ’407 Patent (but not the ’810 Patent) requires the server receive
`
`messages, the Board did not institute the proceeding. Id. at 22 (citing ’407 Patent,
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`cl. 1), 26. The Board did not find that Diacakis failed to teach “messages,” as PO
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`suggests, nor would that be consistent with its ID in this proceeding. ID, 28–31.
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`D. Diacakis Teaches That A Second User’s Contact Information Is
`Not Provided To Others By Virtue Of The Second User Receiving
`A Message
`As the Board recognized with respect to Element 1.9, Diacakis teaches the
`
`negative limitation of “not provid[ing]” contact information because it expressly
`
`teaches that users may control what contact information others may view. ID, 41–
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`42; Pet., 47–48; Ex. 1003, ¶¶ 114–15. As explained below, PO’s arguments to the
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`contrary are incorrect.
`
`First, PO again argues the negative limitation is inconsistent with an
`
`interpretation that the NBP is within the sender’s device. But as explained above in
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`Section III.A, this argument misrepresents Petitioner’s argument and misreads the
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`’810 Patent’s claims.
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`
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`17
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`Second, PO relies on Judge Chang’s dissenting opinion in a related
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`proceeding to argue that Diacakis does not teach the negative limitation (POR, 31–
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`32), but the Board considered and rejected those views in granting institution.
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`Neither the POR nor the Rouskas Declaration provides any additional analysis or
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`evidence related to those already-considered views. Ex. 1042, 193:4–13. Moreover,
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`as explained in the following paragraphs, PO’s arguments are unavailing.
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`Third, PO argues the negative limitation is unmet because Diacakis includes
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`examples (including Figure 8) where users’ contact information is provided to
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`others. POR, 28–31. Yet, as the Board previously recognized, Diacakis’s users can
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`choose (but are not required) to disclose their contact information, thereby satisfying
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`the negative limitation. ID, 41–42; Pet., 47; Ex. 1003, ¶¶ 114–15. PO misleadingly
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`quotes half a sentence from Diacakis to argue that when a subscriber attempts to
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`send an IM, “server 12 provides the appropriate IM address to the subscriber.” Id.,
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`citing Ex. 1007 [0062]. But tellingly, the remainder of the sentence explains that the
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`server “tak[es] into account [the recipient’s] preference settings for the subscriber’s
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`access group as stored.” Ex. 1007, [0062]. Thus, the Diacakis system does not
`
`provide contact information simply because one user contacts another; rather, it
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`determines whether or not to provide information subject to the recipient’s
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`preferences.
`
`
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`18
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`Fourth, PO improperly conflates two techniques that allow Diacakis’s users
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`to control their interactions. PO argues that Diacakis’s descriptions of “blocked”
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`individuals fail to teach the negative limitation that contact information is not
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`provided. POR, 28–30, 31–32 (citing Ex. 2007, 72–73). Blocking, however, is not
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`the part of Diacakis that Petitioner relies on to teach the negative limitation. As
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`explained in the Petition, users separately can “control what contact information
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`observers are allowed to view.” Pet., 47–48 (citing Ex. 1007, [0007]). PO’s
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`argument regarding blocking is irrelevant to Diacakis’s disclosure of this
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`independent method of control.
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`Fifth, PO confuses Diacakis’s presence and availability (“P&A”) information
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`with contact information, arguing that disclosure of the former necessarily means
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`disclosure of the latter. POR, 28–30; Ex. 1042, 168:7–11, 170:2–8. This is incorrect.
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`Diacakis explains that P&A information means “what communications network a
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`user is on, and whether or not the user is reachable for each of the networks.”
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`Ex. 1007, [0006]. This is different from contact information, such as a phone
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`number. See id., [0007], [0047] (treating P&A preferences differently from contact
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`information preferences); Pet., 27–29, 47; Ex. 1003, ¶¶ 77–80. Although PO relies
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`on the Rouskas Declaration for its misreading of Diacakis, Dr. Rouskas admitted his
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`opinions were based on the misbelief that, under paragraph [0048], Diacakis’s users’
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`contact information is distributed to others, regardless of how users specify their
`
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`19
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00202 (U.S. Pat. No. 10,142,810)
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`contact information should be distributed. Ex. 1042, 215:12–18. This passage,
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`however, indicates that already-published contact information may be automatically
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`updated to reflect changes to the user’s profile. Ex. 1007, [0048]; see also id., [0062]
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`(indicating contact information is provided only in view of user’s preference
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`settings). Thus, PO is wrong.
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`IV. GROUND II: CLAIMS 1–9, 11–17, 19, AND 20 ARE RENDERED
`OBVIOUS BY TANIGAWA IN VIEW OF HULLFISH
`Aside from the below limitations, PO does not dispute that Tanigawa and
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`Hullfish teach Claims 2–9, 12–17, and 20 and most of the elements of 1, 11, and 19.
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`As to the few limitations PO does address, they are obvious.
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`A. A POSITA Would Have Been Motivated To Combine Tanigawa
`A
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