IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`INGENIOSHARE, LLC,
`Plaintiff,
`
`v.
`
`
`EPIC GAMES, INC.,
`Defendant.
`
`Civil Action No. 6:21-cv-00663-ADA
`JURY TRIAL DEMANDED
`
`EPIC GAMES INC.’S PRELIMINARY INVALIDITY CONTENTIONS
`
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`THE ’727 PATENT .............................................................................................................3
`
`A.
`
`Identification of Prior Art, Basis for Invalidity Under 35 U.S.C.
`§§ 102, 103 and Claim Charts................................................................................. 3
`
`1.
`
`2.
`
`Anticipation..................................................................................................3
`
`Obviousness .................................................................................................6
`
`B.
`
`C.
`
`Invalidity Under 35 U.S.C. § 112 ......................................................................... 15
`
`Invalidity Under 35 U.S.C. § 101 ......................................................................... 17
`
`III.
`
`THE ’038 PATENT ...........................................................................................................18
`
`A.
`
`Identification of Prior Art, Basis for Invalidity Under 35 U.S.C.
`§§ 102, 103 and Claim Charts............................................................................... 18
`
`1.
`
`2.
`
`Anticipation................................................................................................19
`
`Obviousness ...............................................................................................21
`
`B.
`
`C.
`
`Invalidity Under 35 U.S.C. § 112 ......................................................................... 30
`
`Invalidity Under 35 U.S.C. § 101 ......................................................................... 33
`
`IV.
`
`THE ’810 PATENT ...........................................................................................................34
`
`A.
`
`Identification of Prior Art, Basis for Invalidity Under 35 U.S.C.
`§§ 102, 103 and Claim Charts............................................................................... 34
`
`1.
`
`2.
`
`Anticipation................................................................................................34
`
`Obviousness ...............................................................................................36
`
`B.
`
`C.
`
`Invalidity Under 35 U.S.C. § 112 ......................................................................... 45
`
`Invalidity Under 35 U.S.C. § 101 ......................................................................... 47
`
`V.
`
`THE ’407 PATENT ...........................................................................................................48
`
`A.
`
`Identification of Prior Art, Basis for Invalidity Under 35 U.S.C.
`§§ 102, 103 and Claim Charts............................................................................... 48
`
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`1.
`
`2.
`
`Anticipation................................................................................................48
`
`Obviousness ...............................................................................................51
`
`B.
`
`C.
`
`Invalidity Under 35 U.S.C. § 112 ......................................................................... 60
`
`Invalidity Under 35 U.S.C. § 101 ......................................................................... 62
`
`DOCUMENT PRODUCTION ACCOMPANYING INVALIDITY
`VI.
`CONTENTIONS............................................................................................................................63
`
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`CONFIDENTIAL
`
`I.
`
`INTRODUCTION
`
`Defendant Epic Games, Inc. (“Epic Games”) hereby provides by and through its attorneys
`
`its Preliminary Invalidity Contentions for United States Patent Nos. 10,708,727 (“the ’727
`
`Patent”), 10,492,038 (“the ’038 Patent”), 10,142,810 (“the ’810 Patent”), and 8,744,407 (“the ’407
`
`Patent”) (collectively the “patents-in-suit”). The citation of prior art and the accompanying
`
`exhibits may, in part, be based on IngenioShare, LLC’s (“Plaintiff” or “IngenioShare”) apparent
`
`view as to the scope of the asserted claims as reflected in its Infringement Contentions. Epic
`
`Games does not accept Plaintiff’s apparent reading of the claims as reflecting the proper scope of
`
`the claims.
`
`Epic Games’ Preliminary Invalidity Contentions reflect present knowledge and
`
`contentions, and Epic Games reserves the right, to the extent permitted by the Court and the
`
`applicable statutes and rules, to modify and supplement its Preliminary Invalidity Contentions in
`
`the event that additional invalidity grounds are identified, whether in response to any amendment
`
`by Plaintiff of its Infringement Contentions, otherwise becoming aware of additional prior art or
`
`further material information, including, without limitation, discovery from Plaintiff or third
`
`parties; discovery concerning the alleged priority, conception, and reduction to practice dates for
`
`any of the asserted claims; or any other basis in law or in fact. Additionally, Epic Games reserves
`
`the right to modify its contentions should IngenioShare change which claims it is asserting in this
`
`case.
`
`Epic Games’ Preliminary Invalidity Contentions are made in a variety of alternatives and
`
`do not represent Epic Games’ agreement or view as to the meaning, definiteness, written
`
`description support for, or enablement of any claim contained therein. Epic Games’ contentions
`
`herein are not, and should in no way be seen as, admissions or adoptions as to any particular claim
`
`scope or construction, or as any admission that any particular claim element is met in any particular
`
`1
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`CONFIDENTIAL
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`way. Epic Games objects to any attempt to imply claim constructions from any identification of
`
`potential prior art. Additionally, Epic Games’ Preliminary Invalidity Contentions may use
`
`Plaintiff’s improper assertions of infringement and improper applications of the claims to
`
`understand Plaintiff’s view of the scope of the asserted claims. Epic Games does not agree with
`
`Plaintiff’s application of the claims and denies infringement. Further, to the extent an accused
`
`product or feature comprises or arises from prior art, Epic Games contends, without admitting
`
`purported infringement, that the patents-in-suit are anticipated and/or made obvious in light of that
`
`prior art and Plaintiff’s own Infringement Contentions.
`
`In those instances where Epic Games asserts that the claims are invalid under 35 U.S.C.
`
`§ 112 (e.g., no written description, not enabled, and/or indefinite), Epic Games has applied the
`
`prior art in part in accordance with Epic Games’ assumptions that IngenioShare: (1) contends those
`
`claims are definite, (2) finds written description support for those claims, and (3) contends that
`
`those claims are enabled. However, Epic Games’ prior-art invalidity contentions do not
`
`necessarily represent Epic Games’ agreement or view as to the meaning, definiteness, written
`
`description support for, or enablement of any claim contained therein, or that the patents-in-suit
`
`properly disclose structures corresponding to functions in claims governed by 35 U.S.C. § 112 ¶ 6.
`
`In fact, Epic Games notes numerous grounds for invalidity on such bases below.
`
`Much of the art identified in the attached exhibits reflects common knowledge and the state
`
`of the art before the filing date of the patents-in-suit. In many instances where a particular
`
`contention calls for combining references, any one of a number of references can be combined.
`
`The inclusion of certain exemplary combinations of prior-art references does not exclude other
`
`combinations based upon the claim charts attached hereto.
`
`2
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`Each of the asserted claims of the patents-in-suit is anticipated by and/or obvious in view
`
`of one or more of the items of prior art identified herein alone or in combination with other prior-
`
`art references. None of the contentions contained herein shall be construed as an admission that
`
`any asserted claim satisfies the requirements of 35 U.S.C. § 112.
`
`II.
`
`THE ’727 PATENT
`
`Claims 1–3, 6–9, and 15–17 of the ’727 Patent (the “Asserted ’727 Patent Claims”) have
`
`been asserted by Plaintiff in this litigation.1
`
`A.
`
`Identification of Prior Art, Basis for Invalidity Under 35 U.S.C. §§ 102, 103
`and Claim Charts
`1.
`
`Anticipation
`
`
`
`Based on Plaintiff’s September 16, 2021 Preliminary Infringement Contentions, Epic
`
`Games identifies prior art below and in Exhibit A, which contains charts disclosing the identity of
`
`each item of prior art that anticipates each claim and/or renders it obvious. As shown in Exhibit
`
`A and below, Epic Games has identified each prior-art reference by its number, country of origin,
`
`author, and date of issue (where applicable). Epic Games notes that it has applied the prior art in
`
`accordance with Plaintiff’s improper assertions of infringement and improper applications of the
`
`claims. Epic Games does not agree with Plaintiff’s application of the claims and denies
`
`infringement.
`
`As set forth in Exhibit A and below, each of the following references, and any products,
`
`devices, or processes used in the prior art that embody the subject matter disclosed in the
`
`references, anticipates one or more asserted claims of the ’727 Patent by expressly or inherently
`
`
`1 With respect to all patents-in-suit, Epic Games has only provided invalidity contentions for the
`asserted claims of the patents-in-suit. Should Plaintiff later attempt to assert claims that they
`have not previously identified, Epic Games reserves the right to contend that any newly-asserted
`claims are invalid.
`
`3
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`disclosing each and every limitation of those claims. To the extent IngenioShare contends that
`
`any of the following anticipatory references do not anticipate any asserted claim, Epic Games
`
`reserves the right to contend that each of the anticipatory references renders the claims obvious
`
`either in view of the reference alone or in combination with other references. A corresponding
`
`claim chart for each reference is attached hereto in Exhibit A as indicated in the “Ex. No.” column.
`
`While Epic Games has identified at least one citation per element or limitation for each
`
`reference identified in the charts contained in Exhibit A, each and every disclosure of the same
`
`element or limitation in the same reference is not necessarily identified. In an effort to focus the
`
`issues, Epic Games cites exemplary relevant portions of identified references, even where a
`
`reference may contain additional disclosure for a particular claim element or limitation, and
`
`reserves all rights to rely on other portions of the identified references to support its claims and/or
`
`defenses. Persons of ordinary skill in the art generally read a prior-art reference as a whole and in
`
`the context of other publications and literature. Epic Games may rely on uncited portions of the
`
`prior-art references and on other publications and expert testimony to provide context and as aids
`
`to understanding and interpreting the portions of the prior-art references that are cited. Disclosures
`
`relating to initial elements of dependent claims are disclosed in connection with the independent
`
`claims from which they depend. Epic Games may also rely on uncited portions of the prior-art
`
`references, other publications, and the testimony of fact witnesses and/or experts to establish that
`
`a person of ordinary skill in the art would have been motivated to modify or combine certain of
`
`the cited references so as to render the claims obvious. Where Epic Games cites to a particular
`
`figure in a prior-art reference, the citation should be understood to encompass the caption and
`
`description of the figure and any text relating to the figure in addition to the figure itself.
`
`Conversely, where a cited portion of text refers to a figure, the citation should be understood to
`
`4
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`include the figure as well. Epic Games further contends that all claims that are anticipated by a
`
`particular reference are also rendered obvious by that same reference alone, in combination with
`
`the other references, and/or in combination with the knowledge of a person of ordinary skill in the
`
`art.
`
`a.
`
`Prior-Art Patents and Patent Applications Under 35 U.S.C.
`§ 102
`
`Ex.
`No.
`A1
`
`Patent /
`Publication No.
`2002/0116461
`(“Diacakis”)
`
`Country Inventor(s)
`
`U.S.
`
`Athanassios Diacakis and
`Daniel R. Cohen
`
`A2
`
`A3
`
`A4
`
`2003/0028621
`(“Furlong”)
`
`7,428,580
`(“Hullfish”)
`
`9,043,212
`(“Moore”)
`
`U.S.
`
`U.S.
`
`U.S.
`
`Patrick Shane Furlong,
`Michelle Fawcett, Kevin J.
`Kershaw, and Bradley Alan
`Schuler
`
`Keith C. Hullfish, Charles A.
`Carey, Michael R. Longé, Joe
`Parr
`
`Richard G. Moore, Gregory L.
`Mumford, and Duraisamy
`Gunasekar
`
`A5
`
`2004/0001480
`(“Tanigawa”)
`
`U.S.
`
`Keiko Tanigawa, Kazuma
`Yumoto, Kenta Shiga, and
`Toru Hoshi
`
`Filing, Publication,
`And/Or Issue Date
`February 5, 2002
`(filed)
`August 22, 2002
`(published)
`May 13, 2002
`(filed)
`February 6, 2003
`(published)
`November 26, 2003
`(filed)
`May 26, 2005
`(published)
`April 2, 2003
`(filed)
`January 1, 2004
`(published)
`May 26, 2015
`(issued)
`August 30, 2002
`(filed)
`January 1, 2004
`(published)
`
`b.
`
`Prior-Art Products Under 35 U.S.C. § 102
`
`Ex. No.
`A6
`
`Date
`Product Name
`AOL Instant Messenger (AIM) 1997
`
`5
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`Ex. No.
`A7
`A8
`A9
`A10
`
`Product Name
`ICQ
`MSN Messenger
`Skype
`Yahoo! Messenger
`
`2.
`
`Obviousness
`
`Date
`1996
`1999
`2003
`1999
`
`Each of the following combinations of prior-art references renders the Asserted ’727 Patent
`
`Claims invalid under 35 U.S.C. § 103 for obviousness. In KSR Int’l Co. v. Teleflex Inc., 127 S.Ct.
`
`1727 (Apr. 30, 2007), the U.S. Supreme Court rejected the Federal Circuit’s rigid “teaching,
`
`suggestion, or motivation” requirement in favor of a flexible, functional approach in which an
`
`explicit finding of a “motivation” to combine prior-art references is not required to establish
`
`obviousness. The Supreme Court held that it is sufficient that a combination of elements was
`
`“obvious to try” holding that, “[w]hen there is a design need or market pressure to solve a problem
`
`and there are a finite number of identified, predictable solutions, a person of ordinary skill has
`
`good reason to pursue the known option within his or her technical grasp.” Id. at 1742; see also
`
`Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining
`
`that when the “combination of references results in a product or process that is more desirable, for
`
`example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
`
`efficient,” there exists a motivation to combine prior-art references even when there is no explicit
`
`suggestion in the references themselves “[b]ecause the desire to enhance commercial opportunities
`
`by improving a product or process is universal—and even commonsensical”); LeapFrog
`
`Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007) (applying KSR and holding
`
`that “one of ordinary skill in the art of children’s learning toys would have found it obvious to
`
`combine the Bevan device with the SSR to update it using modern electronic components in order
`
`6
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`to gain the commonly understood benefits of such adaption, such as decreased size, increased
`
`reliability, simplified operation, and reduced cost”).
`
`Epic Games contends that one of ordinary skill in the art, at the time of the alleged invention
`
`of the Asserted ’727 Patent Claims was made, would have been motivated to combine the
`
`references disclosed herein in such a way to reach the alleged inventions. The teaching,
`
`suggestion, or motivation to combine these references, although not required, is explicitly or
`
`implicitly found in one or more of the following: the knowledge or common sense of one of
`
`ordinary skill in the art; the prior-art references themselves and/or the prior art as a whole,
`
`including interrelated teachings of multiple prior-art references; the subject matter acknowledged
`
`as prior art in the ’727 Patent; the nature of the problem to be solved and the existence of similar
`
`improvements in similar applications; design incentives and other market forces, including the
`
`advantages of creating a superior and more desirable product and the effects of demands known to
`
`the design community or present in the marketplace; the ability to implement the alleged invention
`
`as a predictable variation of the prior art; improvements in similar devices; the interrelated
`
`teachings of multiple prior-art references; any needs or problems known in the field addressed by
`
`the ’727 Patent; and the number of identified, predictable solutions to the problem addressed by
`
`these patents. In addition, the simultaneous (and/or prior) inventions described above, and
`
`elsewhere in these contentions) is evidence that motivation to combine the concepts described in
`
`the various prior-art references did, in fact, exist, and they were, in fact, combined. The
`
`combinations evidencing teachings, suggestions, and/or motivations to combine the prior-art
`
`references in a way that renders the asserted claims obvious are merely exemplary. A person of
`
`ordinary skill would have access to the materials found in the attached Exhibits and would have at
`
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`least the ordinary creativity and skill to combine the attached references in ways not explicitly
`
`recited above.
`
`Exhibit AA and the tables below identify prior-art references, each of which anticipates
`
`one or more asserted claims; renders one or more asserted claims obvious in combination with
`
`other prior-art references identified in Exhibit AA; renders one or more asserted claims obvious in
`
`combination with prior-art references identified in Exhibits A1 through A10 (as indicated in those
`
`claim charts); and/or renders one or more asserted claims obvious in combination with the
`
`knowledge of a person of ordinary skill in the art.
`
`a.
`
`Prior-Art Patents and Patent Applications Under 35 U.S.C.
`§ 103
`
`Ex.
`No.
`AA
`
`Patent /
`Publication No.
`1,059,798 A2
`(“Burg”)
`
`Country Inventor(s)
`
`EP
`
`Murray Frederick Burg
`
`AA
`
`2003/0216178
`(“Danieli”)
`
`U.S.
`
`Damon V. Danieli and Roxana
`Gabriela Arama
`
`AA
`
`6,828,924
`(“Gustavsson”)
`
`U.S.
`
`Tommy Gustavsson, Riley
`Muse, Michael Blackard, Jon
`Quigley, John Bate, and Brian
`Kidd
`
`AA
`
`6,241,612
`(“Heredia”)
`
`U.S.
`
`Rafael Heredia
`
`Filing, Publication,
`And/Or Issue Date
`May 31, 2000
`(filed)
`December 13, 2000
`(published)
`May 16, 2002
`(filed)
`November 20, 2003
`(published)
`April 2, 2002
`(filed)
`May 8, 2003
`(published)
`December 7, 2004
`(issued)
`November 9, 1998
`(filed)
`June 5, 2001
`(issued)
`
`8
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`Ex.
`No.
`AA
`
`Patent /
`Publication No.
`7,287,056
`(“Loveland”)
`
`Country Inventor(s)
`
`U.S.
`
`Shawn Dominic Loveland and
`Jorg-Thomas Pfenning
`
`AA
`
`2002/0183114
`(“Takahashi”)
`
`U.S.
`
`Hidehisa Takahashi, Tatsuya
`Ishikawa, and Kazuhiro
`Namba
`
`CONFIDENTIAL
`
`Filing, Publication,
`And/Or Issue Date
`September 28, 2001
`(filed)
`April 3, 2003
`(published)
`October 23, 2007
`(issued)
`May 29, 2002
`(filed)
`December 5, 2002
`(issued)
`
`b.
`
`Prior-Art Products Under 35 U.S.C. § 103
`
`Ex. No.
`AA
`AA
`AA
`AA
`AA
`AA
`AA
`AA
`
`Product Name
`Diablo II
`Motorola Messenger
`Nokia Presence Server
`Openwave Messaging
`Trillian
`Ventrilo
`World of Warcraft
`Xbox Live
`
`Date
`2000
`2001
`2002
`2001
`2000
`2002
`2004
`2002
`
`c.
`
`Motivation to Combine Prior-Art References Under 35 U.S.C
`§ 103
`
`Regarding the motivation to modify or combine references, said motivation to modify or
`
`combine references, unless otherwise stated, is provided by the discussions in the cited references,
`
`the state of the art discussed in the references of Exhibit A, and the knowledge of one of ordinary
`
`skill in the art. One of skill in the art would have been motivated to combine these references,
`
`because these references relate to common objectives and subject matter. The references share
`
`commonalities in terms of their general subject matter as well as the types of equipment, products,
`
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`and/or approaches used. Further, the prior-art references explicitly or implicitly reference other
`
`prior-art references, share common authors, inventors, or assignees, were discussed in the same
`
`journals and publications, presented at the same conferences, and/or were developed at common
`
`companies, schools, or organizations—all of which would motivate one of skill in the art to
`
`combine them. These references are within the field of the asserted patents and are directed to
`
`similar subject matter within the field. Additionally, the references, and any products, devices, or
`
`processes described in the references, existed and/or were invented in the same time period,
`
`providing further motivation for combination. Epic Games provides these disclosures without
`
`prejudice to any arguments or objections concerning the relevance of motivation to combine in
`
`connection with any invalidity contentions.
`
`For example, the prior-art references are all directed to communications systems where
`
`users can communicate with one another using text and/or voice communications. See, e.g., Burg,
`
`[0008], [0011]; Danieli, [0012]; Diacakis, [0008]–[0009]; [0059]; Furlong, [0019], [0029];
`
`Gustavsson, 1:16–47, 2:13–32; Heredia 4:33–39, 5:5–15; Hullfish, 3:34–39, 4:7–19; Loveland,
`
`1:61–2:12; Moore, 10:54–11:6, Fig. 1; Takahashi, [0008]–[0011], Figs. 6–8; Tanigawa, [0005]–
`
`[0012]; AIM Ex. 1; Diablo II Exs. 1, 2; ICQ Ex. 1; MSN Ex. 1; Nokia Ex. 1; Openwave Ex. 1;
`
`Skype Ex. 1; Trillian Ex. 1; Ventrilo Ex. 1; WoW Exs. 1, 2; Xbox Live Ex. 1; Yahoo! Messenger
`
`at Ex. 1. Further, the recitations in the Asserted ’727 Patent Claims of various features that may
`
`be employed in communications systems consist of mere duplication of concepts in the prior art,
`
`and have no patentable significance given that no unexpected result occurs—the arrangement of
`
`elements occurs as a person of ordinary skill in the art would expect. See MPEP 2144.04(VI)(B).
`
`For instance, the prior-art references describe privacy features, such as keeping each individual
`
`user’s contact information hidden from other users, and allowing users to sort others into access
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`tiers. See, e.g., Diacakis, [0007], [0033]–[0034], [0047]; Furlong, [0029]–[0038], [0042]. The
`
`prior-art references further describe various benefits and implementations of blocking users from
`
`communicating with one another. See, e.g., Danieli, [0008]–[0009], [0089]; Hullfish, 8:59–9:24;
`
`ICQ Ex. 4. The prior-art references also make clear that sending predetermined messages was
`
`well-known in the art. See, e.g., Gustavsson, 2:12–54; Takahashi, [0039], [0059], Fig. 7.
`
`Similarly, the prior-art references describe users sending urgent notifications and messages to one
`
`another. See, e.g., Loveland, 6:24–7:30; ICQ Ex. 12.
`
`Other examples of these concepts are cited in the attached charts for the above references.
`
`See Exs. A1–A10, Ex. AA. It would have been known and simple to add known communications
`
`features to known Internet-based communications systems, and it would have been obvious to a
`
`POSITA to try this. Id. It would have also yielded predictable results in the context of improving
`
`the communications experience of users of such communications systems. Id.
`
`d.
`
`Exemplary Combinations Under 35 U.S.C. § 103
`
`Primary Reference
`Diacakis
`Diacakis
`Diacakis
`Diacakis
`Diacakis
`Diacakis
`Furlong
`Furlong
`Furlong
`Furlong
`Furlong
`Furlong
`
`In Combination With
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`
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`Primary Reference
`Heredia
`Heredia
`Heredia
`Heredia
`Heredia
`Heredia
`Moore
`Moore
`Moore
`Moore
`Moore
`Moore
`Tanigawa
`Tanigawa
`Tanigawa
`Tanigawa
`Tanigawa
`Tanigawa
`AIM
`AIM
`AIM
`AIM
`AIM
`AIM
`Diablo II
`Diablo II
`Diablo II
`Diablo II
`
`In Combination With
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`
`12
`
`Patent Owner Ex. 2002, p. 15
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`

`

`CONFIDENTIAL
`
`Primary Reference
`Diablo II
`Diablo II
`ICQ
`ICQ
`ICQ
`ICQ
`ICQ
`ICQ
`Motorola Messenger
`Motorola Messenger
`Motorola Messenger
`Motorola Messenger
`Motorola Messenger
`Motorola Messenger
`MSN Messenger
`MSN Messenger
`MSN Messenger
`MSN Messenger
`MSN Messenger
`MSN Messenger
`Nokia Presence Server
`Nokia Presence Server
`Nokia Presence Server
`Nokia Presence Server
`Nokia Presence Server
`Nokia Presence Server
`Openwave Messaging
`Openwave Messaging
`
`In Combination With
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`
`13
`
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`

`

`CONFIDENTIAL
`
`Primary Reference
`Openwave Messaging
`Openwave Messaging
`Openwave Messaging
`Openwave Messaging
`Skype
`Skype
`Skype
`Skype
`Skype
`Skype
`Trillian
`Trillian
`Trillian
`Trillian
`Trillian
`Trillian
`Ventrilo
`Ventrilo
`Ventrilo
`Ventrilo
`Ventrilo
`Ventrilo
`World of Warcraft
`World of Warcraft
`World of Warcraft
`World of Warcraft
`World of Warcraft
`World of Warcraft
`
`In Combination With
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`Burg
`Danieli
`Gustavsson
`Hullfish
`Loveland
`Takahashi
`
`14
`
`Patent Owner Ex. 2002, p. 17
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`

`

`CONFIDENTIAL
`
`In Combination With
`Primary Reference
`Burg
`Xbox Live
`Danieli
`Xbox Live
`Gustavsson
`Xbox Live
`Hullfish
`Xbox Live
`Loveland
`Xbox Live
`Takahashi
`Xbox Live
`Burg
`Yahoo! Messenger
`Danieli
`Yahoo! Messenger
`Gustavsson
`Yahoo! Messenger
`Hullfish
`Yahoo! Messenger
`Loveland
`Yahoo! Messenger
`Takahashi
`Yahoo! Messenger
`The above-identified combinations are in further combination with the knowledge of a
`person of ordinary skill in the art. The inclusion of certain exemplary combinations of
`prior-art references does not exclude other combinations based upon the claim charts
`attached hereto.
`
`B.
`
`Invalidity Under 35 U.S.C. § 112
`
`Epic Games provides the following contentions relating to the invalidity of the asserted
`
`claims under 35 U.S.C. § 112, first and second paragraphs. These contentions are being proffered
`
`without expert disclosure or discovery—Epic Games reserves the right to supplement these
`
`contentions after such expert disclosure and/or discovery has been taken.
`
`Claim 1 (and all claims that depend from claim 1) fails to satisfy the requirements of
`
`35 U.S.C. § 112 for at least the following reasons: the ’727 Patent fails to provide an adequate
`
`written description of the phrases “network-based portal,” “selected mode of communication,”
`
`“communication with at least an image,” “efficiently maintain the second user’s communication,”
`
`“wherein messages are eligible to be received by the second user . . . depending on an identifier
`
`15
`
`Patent Owner Ex. 2002, p. 18
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`

`CONFIDENTIAL
`
`associated with the second user,” “to provide an option to the second user to keep the contact
`
`information associated with the second user confidential from the first user,” and “to provide an
`
`option to the first user to keep the contact information associated with the first user confidential
`
`from the second user,” as applied in Plaintiff’s Infringement Contentions. Furthermore, as applied
`
`in Plaintiff’s
`
`Infringement Contentions, “network-based portal,” “selected mode of
`
`communication,” “communication with at least an image,” “efficiently maintain the second user’s
`
`communication,” “wherein messages are eligible to be received by the second user . . . depending
`
`on an identifier associated with the second user,” “to provide an option to the second user to keep
`
`the contact information associated with the second user confidential from the first user,” and “to
`
`provide an option to the first user to keep the contact information associated with the first user
`
`confidential from the second user,” are indefinite because each of these phrases not only is
`
`subjective but also does not have a meaning that can be clearly and definitely determined from the
`
`patent, and thus fails to put the public on notice of what is and is not covered by these claims.
`
`Claims 7–9 fail to satisfy the requirements of 35 U.S.C. § 112 for at least the following
`
`reasons: the ’727 Patent fails to provide an adequate written description of the phrases “an
`
`indication . . . to generate an urgent notification,” and “urgent notification” as applied in Plaintiff’s
`
`Infringement Contentions. Furthermore, as applied in Plaintiff’s Infringement Contentions, “an
`
`indication . . . to generate an urgent notification,” and “urgent notification” are indefinite because
`
`each of these phrases is not only subjective but also does not have a meaning that can be clearly
`
`and definitely determined from the patent, and thus fails to put the public on notice of what is and
`
`is not covered by these claims.
`
`Claim 16 fails to satisfy the requirements of 35 U.S.C. § 112 for at least the following
`
`reasons: the ’727 Patent fails to provide an adequate written description of the phrase
`
`16
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`CONFIDENTIAL
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`“predetermined message” as applied in Plaintiff’s Infringement Contentions. Furthermore, as
`
`applied in Plaintiff’s Infringement Contentions, “predetermined message” is indefinite because it
`
`is not only subjective but also does not have a meaning that can be clearly and definitely
`
`determined from the patent, and thus fails to put the public on notice of what is and is not covered
`
`by these claims.
`
`The aforementioned claims are invalid because they are not enabled or described by the
`
`specification of the ’727 Patent. The subject matter of these claims, as described above, are not
`
`sufficiently shown in the specification of the ’727 Patent. The foregoing phrases are not described
`
`in such a way that one of ordinary skill in the art could implement it to achieve the results sought
`
`by the individuals named on the face of the ’727 Patent as inventors. The foregoing phrases are
`
`not described in such a way that a person having ordinary skill in the art at the time of the alleged
`
`invention would have understood that the individuals named as inventors on the face of the ’727
`
`Patent were in possession of the claimed subject matter. The asserted claims of the ʼ727 patent
`
`also do not comply with section 112 because they do not set forth what the applicant regards as
`
`the invention.
`
`A more detailed basis for the above indefiniteness, written description, and enablement
`
`defenses may be set forth in any expert report(s) on invalidity to be served by Epic Games in
`
`accordance with the Court’s Scheduling Order.
`
`C.
`
`Invalidity Under 35 U.S.C. § 101
`
`Each Asserted Claim of the ’727 Patent is invalid under 35 U.S.C. § 101. First, the
`
`Asserted ’727 Patent Claims are directed to the abstract idea of using written and oral language to
`
`communicate with others, which are basic communication principles that easily can be completed
`
`by