Epic Games’ Demonstratives
`
`Epic Games, Inc., v. IngenioShare, LLC
`
`IPR2022- 00202 (U.S. PATENT NO. 10,142,810)
`
`IPR2022- 00291 (U.S. PATENT NO. 10,708,727)
`
`FEBRUARY 17, 2023
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`

`

`’810 Patent: Grounds
`
`Diacakis Ground
`
`Tanigawa + Hullfish Ground
`
`Ground I: Claims 1–20 are obvious in
`view of Diacakis
`
`Ground II: Claims 1–9, 11–17, 19, and
`20 are obvious in view of Tanigawa in
`combination with Hullfish
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`2
`
`

`

`’727 Patent: Grounds
`
`Diacakis Grounds
`
`Tanigawa + Hullfish Grounds
`
`Ground I: Claims 1–6, 15, and 17 are
`obvious in view of Diacakis
`
`Ground IV: Claims 1–3, 6, 15, 17 are
`obvious in view of Tanigawa in
`combination with Hullfish
`
`Ground II: Claims 7–9 are obvious in
`view of Diacakis in combination with
`Loveland
`
`Ground V: Claims 7–9 are obvious in
`view of Tanigawa in combination with
`Hullfish and Loveland
`
`Ground III: Claim 16 is obvious in view
`of Diacakis in combination with
`Takahashi
`
`Ground VI: Claim 16 is obvious in view
`of Tanigawa in combination with Hullfish
`and Takahashi
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`3
`
`

`

`’810 Patent: Summary of Issues
`
`► Diacakis
`– Network-Based Portal
`– Sending Messages
`– Not Providing Contact Information
`► Tanigawa + Hullfish
`– Motivation to Combine (blocking)
`– Network-Based Portal (similar to Ground I)
`– Not Providing Contact Information
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`4
`
`

`

`’727 Patent: Summary of Issues
`
`► Diacakis
`– Motivation to Combine with Loveland
`– Motivation to Combine with Takahashi
`► Tanigawa + Hullfish
`– Motivation to Combine with Loveland
`– Motivation to Combine with Takahashi
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`5
`
`

`

`’810 Patent: Challenged Claim 1
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`’810 Patent at Claim 1
`
`6
`
`

`

`’810 Patent: Specification
`
`For many years, other than mails from post offices, we typically only
`received information from afar through tele phones. However, in the past
`few years, ways that others can send us information have increased
`significantly. Just to list a few different modes of communication, we can
`be reached from standard desk phones, fax, cell phones, electronic mails,
`and instant messages. In addition, we can have more than one phone
`number and multiple electronic mail addresses. There are people we like
`to communicate with, and there are those we prefer to avoid. Managing
`information from all such different modes can be quite time consuming.
`It should be apparent from the foregoing that there is still a need to
`help manage the numerous modes of communication.
`
`‘810 Patent at 1:47–62
`
`Different embodiments of a computer-implemented system and
`method to manage the communication of a user are disclosed. In one
`embodiment, an apparatus, using at least a network-based portal based on
`Internet protocol, could pro vide a number of communication options to a
`first user, with all the options using an identifier associated with a second
`user for the second user to receive messages via an electronic device
`associated with the second user, the options including text messaging,
`voice communication, multimedia messaging, and group messaging;
`could receive an indication from the first user via an electronic device
`associated with the first user, indicating the selection of a communication
`option for a message for the second user; could permit the second user to
`block the first user from accessing the second user; and could determine
`availability of the second user to receive the message. In the embodiment,
`the apparatus could require contact
`information associated with the
`second user to allow the second user to receive messages via the network-
`based portal, with the contact information associated with the second user
`not provided to the first user via the electronic device associated with the
`first user, even when the message is received by the second user via the
`electronic device associated with the second user, and with the contact
`information associated with the second user being distinct from the
`identifier associated with the second user.
`‘810 Patent at 1:65–2:23
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`7
`
`

`

`’810 Patent: Specification
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`’810 Patent at Fig. 6
`
`’810 Patent at 8:24-47
`
`8
`
`

`

`’727 Patent: Challenged Claim 1
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`9
`
`‘727 Patent at Claim 1
`
`

`

`’810 Patent Disputed Issues
`GROUND I: DIACAKIS
`
`
`
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`
`
`1010
`
`

`

`Diacakis Overview
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at Figs. 1, 9
`
`Ex. 1007 at Fig. 11
`
`11
`
`

`

`Diacakis Overview
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`12
`
`Ex. 1007 at Fig. 8
`
`

`

`Diacakis Overview – Knowledge of a POSITA
`
`Petitioner’s Expert, Dr. Almeroth
`
`they allowed user[s] to
`“[A]s IM services became more user-friendly,
`determine how much of their personal information to share with other users.
`For instance, ICQ’s and AIM’s users set their own screen names (instead of
`using their real names) and were able to communicate with other users (i.e.,
`‘buddies’) similarly identified by screen name. By using screen names and
`communicating with others on that basis, users could communicate with one
`another while keeping their personal contact information private.
`
`Ex. 1003 (Almeroth Decl.), ¶ 56
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`13
`
`

`

`Element 1.0: Network-Based Portal
`
`►Network-Based Portal
`►Sending Messages
`►Not Providing Contact Information
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`14
`
`

`

`Element 1.0: Network-Based Portal
`
`Under its ordinary and customary meaning,
`a NBP is a web page or interface that
`connects clients to a network
`
`’810 Pet. at 34–35
`
`Ex. 1001 (’810 Patent), cl. 1
`
`Petitioner’s Expert, Dr. Almeroth
`
`“Diacakis further discloses an interface
`that users employ to connect to the server
`through
`an
`Internet
`Protocol-based
`connection, which a POSITA would have
`understood
`to
`be
`a
`“network-based
`portal.”
`
`Ex. 1003 (Almeroth Decl.), ¶ 89; also id., ¶ 192
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`15
`
`

`

`Element 1.0: Network-Based Portal
`
`Diacakis’ client terminal 22 contains a
`NBP, which is a web page or interface
`that connects clients to a network
`
`‘810 Pet. at 34–35
`Ex. 1007 at Figs. 8, 9, [0056]
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at Figs. 8, 9
`
`16
`
`

`

`Element 1.0: Network-Based Portal
`
`Petitioner: under its ordinary and customary
`meaning, a NBP is a web page or interface
`that connects clients to a network
`
`PO: NBP resides only “at the server-side
`of a network” and excludes “client-side
`functionality”
`
`’810 Pet. at 34–35
`
`’810 POPR at 15–16; ’810 POR at 16–19
`
`Panel’s Preliminary Finding
`
`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.”
`
`‘810 inst. Dec. at 17
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`17
`
`

`

`Element 1.0: Network-Based Portal
`
`Figures 7–11 show claimed functionality
`(e.g., providing plurality of communication
`options to a first user) in a client device
`
`’810 Reply at 12–14
`
`As the panel found, PO’s construction
`“would exclude preferred embodiments
`from claim scope” which is “rarely, if ever
`correct”
`
`’810 Inst. Dec. at 18–19
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001 at Fig. 7
`
`18
`
`

`

`Element 1.0: Network-Based Portal
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001, cl. 1
`
`Ex. 1001 at Fig. 7
`
`19
`
`

`

`Element 1.0: Network-Based Portal
`
`PO: the term “portal” means “networked
`server” and does not include user interfaces
`
`Yet PO’s own expert admitted the term is
`not limited in that way
`
`’810 POPR at 15–16; ’810 POR at 10–11, 16–19
`
`’810 Reply at 7
`
`PO’s Expert Dr. Rouskas
`
`Q. Are there other examples of what a portal could be other than a website or a server that
`hosts a website?
`A. There could be. . . . [T]here’s nothing to limit the portal to just a server or a website
`that is accessed by the HTTP protocol.
`
`Ex. 1042 at 60:16–61:8; see also 57:7–11; 58:3-9
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`20
`
`

`

`Element 1.0: Network-Based Portal
`
`PO: the ’810 Patent defines “portal” as
`“gateway” and defines “gateway” as “networked
`server”
`
`’810 POR at 49
`
`But the ’810 Patent uses the terms differently, and
`the word “or” does not redefine “portal” as “gateway”
`’810 Reply at 7–8;
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012)
`
`In one embodiment, the portal or gateway also
`includes a database to keep track of the user’s
`different contacts or acquaintances, and the access
`priorities of each contact. The user can modify
`information in the database, such as assigning
`and/or changing the priorities of the contacts. Based
`on the information (or lack of information) in the
`database of the contact trying to access the user, and
`based on the status of the user, the gateway can
`automatically
`select
`an
`intelligent mode
`of
`communication for the user. This selection can be
`done dynamically.
`
`’810 Patent at 4:53-57
`
`Thus, in one embodiment, the portal can be used to
`control
`the
`selection and setting of different
`intelligent communication modes for the user.
`’810 Patent at 4:39-41
`
`In one embodiment, the portal can dynamically
`change the access priorities of a caller trying to reach
`the user
`
`’810 Patent at 4:63-64
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`21
`
`

`

`Element 1.0: Network-Based Portal
`
`PO: the ’810 Patent defines “portal” as
`“gateway” and defines “gateway” as
`“networked server”
`
`’810 POR at 49
`
`But the ’810 Patent merely says that one
`example of a networked server is a “gateway
`computer”
`
`’810 Reply at 8
`
`text-to-speech
`embodiment,
`one
`in
`Accordingly,
`conversion can be off-loaded from the mobile device. For
`example, a remote server computer can be provided the text
`message and produce the resulting audio message, and then
`supply the audio message to the mobile device. The remote
`server computer can be a networked server coupled to the
`network 108. One example of a networked server is a
`gateway computer for a wireless electronic device, such
`as a mobile telephone.
`
`’810 Patent at 16:2-10
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`22
`
`

`

`Element 1.0: Network-Based Portal
`
`PO: NBP and client devices have different uses:
`– NBP “allows worldwide access to the user”
`– But a “client communication device is ‘associated
`with a user’”
`’810 POR at 11–13
`
`But PO’s expert admitted a user’s mobile phone
`does allow worldwide access to that user
`
`’810 Reply at 8–9
`
`PO’s Expert, Dr. Rouskas
`
`Is it your opinion that people around the world cannot contact my phone?
`Q.
`A. The people -- they can call your number. Absolutely, they can.
`***
`[D]on’t you quote from the ’810 Patent where it says the portal allows worldwide access to the
`user?
`A. …One is worldwide access to the user. A phone provides that. There’s no question about that.
`
`Q.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1042 at 110:20–24; 114:2–5
`
`23
`
`

`

`Element 1.0: Network-Based Portal
`
`► PO does not offer new evidence beyond Dr. Rouskas’s cursory declaration,
`which merely cites two definitions pulled from a web search
`
`PO’s Expert, Dr. Rouskas
`
`Q. How did you find this website?
`A. I was looking for -- I searched for definitions of a portal, and this is one of the
`websites that came up.
`Q. How many websites came up that you reviewed?
`A. I can -- I can’t remember. I didn’t look at all of them.
`
`Ex. 1042 at 62:24–63:10
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`24
`
`Ex. 2005 at 21
`
`

`

`Rouskas Declaration Is Entitled to No Weight
`
`► Rouskas Declaration repeats POR nearly verbatim
`► Dr. Rouskas retained after Petitions were instituted
`– Rouskas Declaration repeats several POPR
`passages verbatim
`– Rouskas claimed he conceived of PO’s argument
`re “network-based portal”
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`25
`
`

`

`Rouskas Declaration Is Entitled to No Weight
`
`Hulu, LLC v. Sito Mobile R&D IP, LLC, IPR2021-00304, Paper 30 at 68
`Declarant’s “cursory and unsupported testimony entitled to little
`weight” where it
`“repeat[ed] verbatim without any additional
`clarification Patent Owner’s
`contentions
`from the Patent
`Owner Response.”
`
`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”
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`26
`
`

`

`Element 1.0: Network-Based Portal
`
`PO: according to Petitioner, only the
`sender’s device contains the NBP
`
`‘810 POR, 13–14, 18–19
`
`But all users of Diacakis’s system 10 access
`it via client terminal 22, which contains user
`interface 112 (i.e., the NBP):
`
`’810 Reply at 10
`Ex. 1007 at Figs. 1, 9
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at Fig. 1
`
`Ex. 1007 at Fig. 9
`
`27
`
`

`

`Elements 1.3, 1.4, 1.6, and 1.8: Sending Messages
`
`►Network-Based Portal
`►Sending Messages
`►Not Providing Contact Information
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`28
`
`

`

`Elements 1.3, 1.4, 1.6, and 1.8: Sending Messages
`
`Diacakis provides a “user-friendly interface
`allowing subscribers [i.e., first users] to
`contact individuals [i.e., second users].”
`
`Diacakis’s users do not need to know others’
`phone numbers or address, but “may instead
`refer to a single indicator and use that
`information to initiate point-to-point contact.”
`
`‘810 Pet. at 43, 48
`Ex. 1007 at [0062], [0064]
`
`Ex. 1007 at [0062]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`29
`
`

`

`Elements 1.3, 1.4, 1.6, and 1.8: Sending Messages
`
`PO: Diacakis itself does not allow users to
`communicate
`
`’810 POR at 20–26
`
`But Diacakis teaches two client devices communicating
`with each other, including through “a presence and
`availability host” (like Diacakis’s P&A server)
`’810 Reply at 14–17
`Ex. 1007 at [0072], Fig. 11
`
`[0072] According to an embodiment of the present
`invention, illustrated in FIG. 11, this potential dilemma is
`addressed by providing a fallback resolution mechanism.
`For example, 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. One of the hosts 142 may be, for example, an instant
`messaging host or a presence and availability host.
`
`Ex. 1007 at [0072]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at Fig. 11
`
`30
`
`

`

`Elements 1.3, 1.4, 1.6, and 1.8: Sending Messages
`
`PO’s Expert, Dr. Rouskas
`Q. Does paragraph 72 of Diacakis describe a subscriber at client terminal 22 attempting to
`communicate with an individual at client terminal 140?
`A. Yes that’s what the paragraph says.
`
`’810 Reply at 15
`Ex. 1042 at 145:10–16, 142:14–144:24
`
`[0072] According to an embodiment of the present
`invention, illustrated in FIG. 11, this potential dilemma is
`addressed by providing a fallback resolution mechanism.
`For example, 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. One of the hosts 142 may be, for example, an instant
`messaging host or a presence and availability host.
`
`Ex. 1007 at [0072]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at Fig. 11
`
`31
`
`

`

`Elements 1.3, 1.4, 1.6, and 1.8: Sending Messages
`
`In related proceedings, the Board preliminarily
`agreed that, even if Diacakis had not expressly
`disclosed a responsive second message, such
`a response would have been obvious.
`
`’810 Reply at 16 n.4
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Panel’s Preliminary Finding
`
`this limitation
`Instead, Petitioner argues that
`would have been obvious because Diacakis
`discloses
`that
`a
`first
`and
`second
`user
`communicate with
`each
`other,
`and
`cites
`testimony by Dr. Almeroth to support
`its
`contention a person of ordinary skill in the art
`“would have found it obvious that Diacakis’[s]
`modes of communication (including telephones
`and
`IM)
`allow recipients
`to
`respond
`to
`messages.” Pet. 44 (citing Ex. 1007 ¶¶ 8, 56; Ex.
`1003 ¶ 132). At this stage, Petitioner’s reasoning
`is sufficient and is not disputed by Patent Owner.
`
`’727 Inst. Dec. at 23
`
`32
`
`

`

`Element 1.9: Not Providing Contact Information
`
`►Network-Based Portal
`►Sending Messages
`►Not Providing Contact Information
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`33
`
`

`

`Element 1.9: Not Providing Contact Information
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`’810 Patent at Claim 1
`
`34
`
`

`

`Element 1.9: Not Providing Contact Information
`
`Diacakis teaches the second user may
`“control what contact information observers
`are allowed to view.”
`
`Diacakis obviates the need for the first user to
`know and receive the second user’s contact
`information
`
`’810 Pet. at 47–48
`Ex. 1007 at [0007], [0047], [0059]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at [0007]
`
`Ex. 1007 at [0062]
`
`35
`
`

`

`Element 1.9: Not Providing Contact Information
`
`PO: Diacakis fails to teach the negative limitation
`because “the server provides the appropriate IM
`address” of the second user to the first user
`’810 POR at 28–31
`
`But PO’s cropped quote deletes the second half of
`the sentence: Diacakis “tak[es] into account [the
`user’s] preference settings”
`’810 Pet. at 47–48
`’810 Reply at 17–20; Ex. 1007 at [0062]
`
`[0062] Furthermore, a large number of inputs for each of an individual’s communications devices on the
`various networks may be processed using the presence detection engine 20 to determine the P&A status of that
`individual, thus allowing the results to be combined in a single availability indicator. For example, if John Doe has
`three telephone numbers (e.g., home, work and wireless) and is currently present and available on only one
`telephone network, the server 12 may notify subscribers of John Doe's information that he is present and available
`for telephone calls regardless of the particular telephone John Doe is currently capable of using. Accordingly,
`when a subscriber wishes to contact Jo[hn] Doe via instant messaging, the server 12 provides the appropriate IM
`address to the subscriber, taking into account John Doe’s preference settings for the subscriber’s access group as
`stored, for example, in the rules and preferences database 64. Thus, embodiments of the present invention may
`provide a user-friendly interface allowing subscribers to contact individuals . . . .
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 [0062]
`
`36
`
`

`

`’810 Patent Disputed Issues
`GROUND II: TANIGAWA AND HULLFISH
`
`
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCEDEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`
`
`3737
`
`

`

`Tanigawa
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1008 at Fig. 1
`
`Ex. 1008 at Fig. 12
`
`38
`
`

`

`Hullfish
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`39
`
`Ex. 1009 at Fig. 5
`
`

`

`Tanigawa and Hullfish Overview – Knowledge of a POSITA
`
`Petitioner’s Expert, Dr. Almeroth
`
`“[G]amers began to use the Internet to communicate with others using text
`and voice messages—these chatting tools including features allowing users
`to send predetermined messages or to block communications from others.”
`“Moreover,
`these IM services [e.g., AIM, Yahoo, ICQ] featured tools
`allowing users to ‘mute’ and ‘block[]’ chat participants.”
`
`Ex. 1003 (Almeroth Decl.), ¶¶ 55-56
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`40
`
`

`

`Element 1.4: Motivation to Combine (Blocking)
`
`►Motivation to Combine (Blocking)
`►Network-Based Portal
`►Not Providing Contact Information
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`41
`
`

`

`Element 1.4: Motivation to Combine (Blocking)
`
`A POSITA would have been motivated to use
`Hullfish’s blocking teachings in Tanigawa:
`– Both references provide express motivations
`regarding blocking unwanted messages
`– “Blocking” is a known technique
`
`’810 Pet. at 60–64
`
`Petitioner’s Expert, Dr. Almeroth
`
`situation
`the
`expressly discloses
`“Tanigawa
`where an invitee does not wish to communicate
`with an inviter, does not which to accept the
`invitation, and does not respond.”
`“Prior to the Priority Date of the ’810 Patent,
`instant messaging services already allowed users
`to ‘mute,’ ‘restrict,’ and/or ‘block’ messages from
`other users.”
`“A POSITA would have . . . turned to Hullfish’s
`teachings of blocking features to supplement
`Tanigawa’s communications systems.”
`Ex. 1003 (Almeroth Decl.), ¶¶ 184–85
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`42
`
`

`

`Element 1.4: Motivation to Combine (Blocking)
`
`PO: a POSITA could not bodily incorporate
`Tanigawa into Hullfish
`
`“Bodily incorporation” is not the test
`
`’810 POR at 41–44
`
`’810 Reply at 22–23
`
`PO’s Expert, Dr. Rouskas
`
`Q.
`
`A.
`
`[T]he title of this section is “Tanigawa and Hullfish are Incompatible.” Do you see
`that?
`I do.
`
`***
`Q. So do you mean to say that you would not be able to incorporate Hullfish into
`Tanigawa or vice versa?
`A. Correct. Yes.
`
`Ex. 1042 at 224:17–225:6
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`43
`
`

`

`Element 1.4: Motivation to Combine (Blocking)
`
`Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020)
`
`the features of a
`for obviousness is not whether
`“The test
`secondary reference may be bodily incorporated into the structure
`of the primary reference.”
`
`Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1341 (Fed. Cir. 2020)
`
`“‘[I]t is not necessary that [two references] be physically combinable
`to render obvious’ the asserted patent.”
`
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`44
`
`

`

`Element 1.4: Motivation to Combine (Blocking)
`
`PO: Tanigawa (synchronous messaging)
`and Hullfish (asynchronous messaging) are
`incompatible
`
`But Dr. Rouskas admits that blocking could be
`used in Tanigawa’s “synchronous” system
`
`’810 POR at 41–46
`
`’810 Reply at 21–22
`
`PO’s Expert, Dr. Rouskas
`
`Q.
`
`A.
`
`it could be possible to program a synchronous
`[I]n your opinion,
`communication system that implements blocking features; right?
`It could be possible to – to modify or to even design a synchronous system
`that has blocking features, generally speaking.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1042 at 237:25–238:8
`
`45
`
`

`

`Element 1.0: Network-Based Portal
`
`►Motivation to Combine (Blocking)
`►Network-Based Portal
`►Not Providing Contact Information
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`46
`
`

`

`Element 1.0: Network-Based Portal
`
`Tanigawa teaches the claimed NBP:
`a user interface connecting clients to
`a network
`
`‘810 Pet. at 65–66
`Ex. 1008 at Fig. 12, [0162]
`
`PO’s claim construction arguments
`are identical to its Diacakis
`arguments, which are incorrect
`
`‘810 POR at 47–54
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1008 at Fig. 12
`
`47
`
`

`

`Element 1.9: Not Providing Contact Information
`
`►Motivation to Combine (Blocking)
`►Network-Based Portal
`►Not Providing Contact Information
`
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`
`48
`
`

`

`Element 1.9: Not Providing Contact Information
`
`As shown in Figure 12, no contact information
`belonging to any user is provided even after two
`users have engaged in conversation
`
`‘810 Pet. at 79–80
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1008 at Fig. 12
`
`49
`
`

`

`Element 1.9: Not Providing Contact Information
`
`PO: users “download presence information of
`the other chat participants,” and “presence
`information” includes “contact information”
`‘810 POR at 63–65
`
`But Tanigawa expressly defines “presence
`information” as “information indicating the user
`can chat”
`
`‘810 Reply at 27–29
`Ex. 1008 at [0050], [0120], [0121]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1008 at [0120]
`
`Ex. 1008 at Fig. 3
`
`50
`
`

`

`Element 1.9: Not Providing Contact Information
`
`PO: a second user’s address information,
`contained in field 432, is sent to a first user’s
`communication device
`
`‘810 POR at 61–63
`
`But the ’810 Patent makes clear that “users”
`are different from their associated “devices”
`
`‘810 Reply at 29–30
`
`’810 Patent, Claim 1 (PO’s Interpretation)
`
`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
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`‘810 Patent at Claim 1
`’810 Reply at 29
`
`51
`
`

`

`Element 1.9: Not Providing Contact Information
`
`PO: Tanigawa’s IM clients “use client addresses
`to initiate communication”
`
`‘810 POR at 65
`
`But Tanigawa’s users are not provided with
`contact information; at most, the “event analyzing
`portion” in a device generates an invitation for a
`server to send
`
`‘810 POR at 31; Ex. 1008 at [0122]-[0124]
`
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`
`52
`
`Ex. 1008 at Fig. 6
`
`

`

`’727 Patent Disputed Issues
`
`
`
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`
`
`5353
`
`

`

`’727 Patent: Motivation to Combine Diacakis and Loveland
`
`► Motivation to Combine Diacakis and Loveland
`► Motivation to Combine Tanigawa, Hullfish, and Loveland
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`54
`
`

`

`’727 Patent: Motivation to Combine Diacakis and Loveland
`
`A POSITA would have been motivated to use
`Loveland’s teachings of urgent messages in
`Diacakis
`– Both references provide express motivations
`regarding prioritizing messages from important
`individuals
`– Notifying users of an incoming urgent message
`was a known technique
`
`’727 Pet. at 53–57
`
`Petitioner’s Expert, Dr. Almeroth
`
`“[B]oth references expressly contemplate a
`user’s wishes to treat communications with
`important individuals differently.”
`“A POSITA would have understood that
`Loveland’s urgent message notification features
`were an improvement [over Diacakis]—namely,
`because Loveland’s users can be notified of
`messages from important people or breaking
`news”
`
`’727 Ex. 1003 (Almeroth Decl.), ¶¶ 155–56
`
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`55
`
`

`

`’727 Patent: Motivation to Combine Diacakis and Loveland
`
`PO: Diacakis and Loveland are “diametrically
`opposite to each other” because Diacakis
`does not allow users to send messages
`‘727 POR at 31
`
`But the ’810 Patent expressly discloses users
`sending messages to each other
`
`‘810 Reply at 29–30
`
`[0072] According to an embodiment of the present
`invention, illustrated in FIG. 11, this potential dilemma is
`addressed by providing a fallback resolution mechanism.
`For example, 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. One of the hosts 142 may be, for example, an instant
`messaging host or a presence and availability host.
`
`Ex. 1007 at [0072]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at Fig. 11
`
`56
`
`

`

`’727 Patent: Motivation to Combine Tanigawa, Hullfish, and
`Loveland
`
`► Motivation to Combine Diacakis and Loveland
`► Motivation to Combine Tanigawa, Hullfish, and Loveland
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`57
`
`

`

`’727 Patent: Motivation to Combine Tanigawa, Hullfish, and
`Loveland
`
`A POSITA would have been motivated to use
`Loveland’s teachings of urgent messages in the
`combination of Tanigawa and Hullfish
`– All references provide express motivations
`regarding prioritizing messages from important
`individuals
`– Notifying users of an incoming urgent message
`was a known technique
`
`Petitioner’s Expert, Dr. Almeroth
`
`“[A] POSITA would have been motivated to
`implement Loveland’s teachings into Tanigawa
`and Hullfish, because Loveland’s disclosures
`inadvertent
`blocking
`prevent
`of
`would
`important
`communications,
`and
`generally
`provide users more
`control over blocked
`communications.”
`
`’727 Pet. at 84–86
`
`’727 Ex. 1003 (Almeroth Decl.), ¶ 219
`
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`58
`
`

`

`’727 Patent: Motivation to Combine Tanigawa, Hullfish, and
`Loveland
`
`PO: no motivation to combine Tanigawa,
`Hullfish, and Loveland because Loveland
`“duplicates functionality” in Tanigawa
`
`But Loveland discloses “urgent” messages,
`which is an improvement over Tanigawa
`
`‘727 POR at 69
`
`‘810 Reply at 29–30
`
`Petitioner’s Expert, Dr. Almeroth
`“Tanigawa and Hullfish teach that users may block one another on various modes of
`communication. Loveland further
`teaches
`that,
`even when certain modes of
`communication are blocked, communications from “important” people may nonetheless
`be transmitted.
`
`***
`[A] POSITA would have understood that Loveland’s urgent message notification would
`have improved the teachings of
`[Tanigawa] and Hullfish, whose users receive
`notifications of important messages or breaking news.”
`
`’727 Ex. 1003 (Almeroth Decl.), ¶ 220
`
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`59
`
`

`

`Rebuttal
`(OTHER ISSUES)
`
`
`
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`
`
`
`6060
`
`

`

`Diacakis: Network-Based Portal
`
`►Diacakis: Network-Based Portal
`►Diacakis: Prior Registration Process
`►Tanigawa + Hullfish: Prior Registration Process
`►Tanigawa + Hullfish: Identifiers
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`61
`
`

`

`Diacakis: Network-Based Portal
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`’810 Patent at Abstract, 4:24–26
`
`62
`
`

`

`Diacakis: Prior Registration Process
`
`►Diacakis: Network-Based Portal
`►Diacakis: Prior Registration Process
`►Tanigawa + Hullfish: Prior Registration Process
`►Tanigawa + Hullfish: Identifiers
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`63
`
`

`

`Diacakis: Prior Registration Process
`
`Diacakis teaches that a subscriber (or “first user”)
`subscribes to a second user
`This prior registration process identifies and
`categorizes the first user to the second user
`‘810 Pet. at 37–38
`Ex. 1007 at [0031], [0034], [0059]–[0062]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1007 at Fig. 4
`
`64
`
`

`

`Diacakis: Prior Registration Process
`
`PO: user is required to “go through a
`registration process with their Contact app”
`(i.e., registration must be performed with the
`user’s device)
`
`‘810 POR at 19–20
`
`The claim merely requires a “prior registration
`process by the first user regarding the use of
`the network-based portal”
`
`’810 Reply at 14
`
`1. A computer-implemented method for managing electronic communications using at
`least a network-based portal at least based on Internet protocol, the method comprising:
`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
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`’810 Patent at Claim 1
`
`65
`
`

`

`Tanigawa and Hullfish: Prior Registration Process
`
`►Diacakis: Network-Based Portal
`►Diacakis: Prior Registration Process
`►Tanigawa + Hullfish: Prior Registration Process
`►Tanigawa + Hullfish: Identifiers
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`66
`
`

`

`Tanigawa and Hullfish: Prior Registration Process
`
`Tanigawa teaches IM server 4 uses a
`presence information management table
`that contains “a field 433 for registering a
`nickname of the user of the IM client”
`These nicknames are identifiers that are
`previously registered to client devices
`participating in chat.
`
`‘810 Pet. at 69
`Ex. 1008 at Fig. 3, [0050], [0065], [0085]
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1008 at Fig. 3
`
`67
`
`

`

`Tanigawa and Hullfish: Prior Registration Process
`
`PO: “[n]either Tanigawa nor Hullfish...teach
`a user registering with their own client
`device.”
`
`But the claim does not require a user
`registering “with their own client device”
`
`‘810 POR at 54–55
`
`‘810 Reply at 24
`
`1. A computer-implemented method for managing electronic
`communications using at least a network-based portal at least based
`on Internet protocol, the method comprising:
`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
`
`Ex. 1001 (’810 Patent) at Claim 1, 20:2-14
`
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`68
`
`

`

`Tanigawa and Hullfish: Identifiers
`
`►Diacakis: Network-Based Portal
`►Diacakis: Prior Registration Process
`►Tanigawa + Hullfish: Prior Registration Process
`►Tanigawa + Hullfish: Identifiers
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`69
`
`

`

`Tanigawa and Hullfish: Identifiers
`
`Tanigawa teaches all of the first user’s
`communication options use the same
`indicator associated with the second user.
`Even where a user has multiple client
`devices, these devices are all identified
`by the same n