Trials@uspto.gov
`571-272-7822
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`Paper 10
`Date: May 24, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`____________
`
`IPR2022-00291
`Patent 10,708,727 B2
`____________
`
`
`
`Before JONI Y. CHANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Epic Games, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–9 and 15–17 of
`U.S. Patent No. 10,708,727 B2 (Ex. 1001, “the ’727 patent”). Paper 1
`(“Pet.”). IngenioShare, LLC (“Patent Owner”) filed a Preliminary
`
`
`571-272-7822
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`
`
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`Paper 10
`Date: May 24, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`____________
`
`IPR2022-00291
`Patent 10,708,727 B2
`____________
`
`
`
`Before JONI Y. CHANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Epic Games, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–9 and 15–17 of
`U.S. Patent No. 10,708,727 B2 (Ex. 1001, “the ’727 patent”). Paper 1
`(“Pet.”). IngenioShare, LLC (“Patent Owner”) filed a Preliminary
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`Response. Paper 7 (“Prelim. Resp.”). With our authorization, Petitioner
`filed a Reply.1 Paper 9; see Paper 8.
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4.
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we grant the Petition and institute an
`inter partes review. The Board has not made a final determination regarding
`the patentability of any claim.
`
`
`I. BACKGROUND
`A. The ’727 Patent
`The ’727 patent relates to “automatically remov[ing] unwanted
`communications.” Ex. 1001, 3:33–34. Figure 6 of the ’727 patent is
`reproduced below.
`
`
`1 We also authorized Patent Owner to file a Sur-reply, but Patent Owner did
`not do so. See Paper 8.
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`Figure 6 depicts communication system 100, which can support different
`communication devices, including mobile telephones 102, computers 104,
`and/or wireless personal digital assistants 106. Id. at 8:16–21. Users of such
`communication devices can communicate “with like or different
`communication devices,” each of which offers one or both of audio or text
`communication capabilities. Id. at 8:21–24. Intercommunication of devices
`102–106 can take place through network 108, which “can include one or
`more of voice networks and data networks.” Id. at 8:24–27.
`With the system, “[a] communication gateway or a portal is formed,”
`thereby allowing a user “to receive communications from numerous sources
`through different modes.” Id. at 4:3–5. “Based on the portal, the user can
`securely determine who can reach him at what conditions.” Id. at 4:15–16.
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`Such conditions may include the status of the user, “access priorities” of the
`person trying to reach the user, and/or the urgency of the message from the
`person. Id. at 4:17–22.
`The following table is reproduced from the ’727 patent.
`
`
`The table identifies relationships of different people to a particular user, as
`well as “ContactClasses” to which such people are assigned and which
`reflect the various access priorities. Id. at 6:4–10. By way of example, if
`Peter wants to make a mobile phone call to the user, Peter calls the portal,
`which can be the user’s internet service provider. Id. at 6:12–14. After
`verifying Peter’s identity, the portal establishes contact by creating a virtual
`address for a communication session and determines that Peter belongs to
`“ContactClass2.” Id. at 6:14–30. The portal implements various options
`depending on the status of the user, Peter’s access priority according to his
`ContactClass, and Peter’s urgency setting. Id. at 6:35–37. Such options
`include allowing the user to receive Peter’s call directly or asking Peter to
`leave a voicemail message, with the user notified of Peter’s call by a short
`mobile message. Id. at 6:35–40. In some instances, communication requests
`can be classified into “different degrees of undesirability,” thereby
`automatically blocking some requests from the user or automatically
`diverting them to be handled by another mechanism, “such as diverting a
`phone call to an email or voice mail.” Id. at 4:37–42.
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`B. Illustrative Claim
`Independent claim 1, the only independent claim of the ’727 patent, is
`illustrative of the challenged claims and is reproduced below.
`1. A computer-implemented method to facilitate electronic
`communication of a plurality of users using at least a network-
`based portal at least based on Internet protocol, the method
`comprising:
`
`providing a plurality of modes of communication to a
`first user to allow the first user to use one of the plurality of
`modes of communication as a selected mode of communication
`for a first message to be sent from the first user to a second
`user, based on an identifier associated with the first user
`previously set by the first user via the network-based portal,
`
`
`wherein the plurality of modes of communication
`supported by the network-based portal include at least text
`communication using a personal computer, voice
`communication using a personal computer, and communication
`with at least an image, and
`
`
`wherein messages are eligible to be received by the
`second user via the network-based portal, based on any of the
`plurality of modes of communication, all depending on an
`identifier associated with the second user previously set by the
`second user via the network-based portal, which allows the
`second user to efficiently maintain the second user’s
`communication using the plurality of modes of communication;
`
`enabling the second user to block the first user from
`using at least the selected mode of communication to
`communicate with the second user via the network-based
`portal, based on the identifier associated with the first user;
`
`enabling the first message to be provided to the second
`user, using the selected mode of communication, depending on
`the identifier associated with the second user, in view of the
`second user not blocking the first user from using the selected
`mode of communication to communicate with the second user,
`via the network-based portal; and
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`receiving a second message from the second user to the
`
`first user, to respond to the first message, after the second user
`has received the first message,
`
`
`wherein one of the first message or the second
`message is voice and the other of the first message or the
`second message is text,
`
`
`wherein even when the first message is received by
`the second user via the selected mode of communication,
`contact information associated with the second user and
`provided by the second user to the network-based portal is not
`provided via the network-based portal to the first user, and
`contact information associated with the first user and provided
`by the first user to the network-based portal is not provided via
`the network-based portal to the second user, so as 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,
`
`
`wherein the identifier associated with the second
`user is distinct from the contact information associated with the
`second user, and the identifier associated with the first user is
`distinct from the contact information associated with the first
`user,
`wherein the contact information associated with
`
`
`the second user includes at least one of a phone number or an
`email address of the second user, and
`
`
`wherein the contact information associated with
`the first user includes at least one of a phone number or an
`email address of the first user.
`
`Ex. 1001, 19:61–20:63.
`
`C. Evidence
`Petitioner relies on the following references:
`Diacakis
`US 2002/0116461 A1
`Aug. 22, 2002
`Loveland
`US 7,287,056 B2
`Oct. 23, 2007
`Takahashi
`US 2002/0183114 A1
`Dec. 5, 2002
`
`Ex. 1007
`Ex. 1008
`Ex. 1009
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`Tanigawa
`Hullfish
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`
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`US 2004/0001480 A1
`US 7,428,580 B2
`
`Jan. 1, 2004
`Sept. 23, 2008
`
`Ex. 1010
`Ex. 1011
`
`In addition, Petitioner relies on a Declaration by Kevin C. Almeroth,
`Ph.D. Ex. 1003.
`
`
`35 U.S.C. §2
`
`References
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–9 and 15–17 on the following grounds.
`Pet. 6.
`Claim(s)
`Challenged
`1–6, 15, 17
`7–9
`16
`1–3, 6, 15, 17
`7–9
`16
`
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Diacakis
`Diacakis, Loveland
`Diacakis, Takahashi
`Tanigawa, Hullfish
`Tanigawa, Hullfish, Loveland
`Tanigawa, Hullfish, Takahashi
`
`
`
`E. Real Parties in Interest
`The parties identify only themselves as real parties in interest. Pet. 2;
`Paper 5, 2.
`
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103 effective
`March 16, 2013. Petitioner asserts that, “[b]ased on the claimed priority date
`of the ’727 patent, Pre-AIA versions of §102(a) and §103 apply.” Pet. 4 n.1.
`Patent Owner does not contest that the pre-AIA versions apply, and we
`apply those versions herein.
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`F. Related Matters
`The parties identify IngenioShare, LLC v. Epic Games, Inc., No 6:21-
`cv-00663 (W.D. Tex.) (“the related litigation”) as a related matter. Pet. 2;
`Paper 5, 2.
`In addition, Patent Owner notes that related patents are challenged by
`Petitioner in IPR2022-00202, IPR2022-00294, IPR2022-00295, and
`IPR2022-00297. Paper 5, 2–3.
`
`
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`the differences between the claimed subject matter and the prior art are
`“such that the subject matter as a whole would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness, i.e., secondary considerations.3 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`3 At this time, the parties do not address objective indicia of nonobviousness,
`which accordingly do not form part of our analysis. See Pet. 90 (“Petitioner
`is unaware of any evidence of secondary considerations that would support a
`finding of non-obviousness.”)
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`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`skill in the art” is a hypothetical construct, from whose vantage point
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`references in the field of the invention are available to this hypothetical
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`1993)).
`Petitioner proposes that a person of ordinary skill in the art “would
`have had a Bachelor’s degree in Computer Science, or an equivalent field,
`and three to five years of experience working with Internet communication
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`systems.” Pet. 25. According to Petitioner, “[a]dditional education might
`compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports
`this articulation, and Patent Owner does not, at this time, propose any
`different articulation. See Ex. 1003 ¶¶ 92–97.
`Because we find Petitioner’s proposal reasonable, consistent with the
`level of skill reflected by the prior art, and supported by the testimony of
`Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an
`appropriate level of skill in the art).
`
`
`C. Claim Construction
`The Board uses “the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b)
`(2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc). Although “Petitioner does not believe that any terms need to be
`construed to assess the arguments presented” in its Petition, Patent Owner
`raises an issue with respect to the challenged claims’ recitation of a
`“network-based portal.” See Pet. 25; Prelim. Resp. 15–16. In particular,
`Patent Owner contends that “[t]he specification of the ’727 Patent uses the
`term ‘network-based portal’ consistently as being at the server-side of a
`network.” Prelim. Resp. 15.
`Patent Owner supports its contention by identifying examples where
`the specification of the ’727 patent describes a “portal” as separate from a
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`“mobile phone” or from a person’s “wireless device.” Id. at 15–16 (citing
`Ex. 1001, 6:12–13, 6:32–33, 6:55–63, 16:1–3). But the specification also
`includes numerous examples where the portal functionality is implemented
`in a “mobile phone,” i.e., a client-side device. See Ex. 1001, 3:10–19, 9:3–
`10:2, 10:17–13:27, 14:64–15:54, Figs. 7–11. For example, the specification
`explains that a “mobile communication device,” such as a “mobile
`telephone,” may perform steps depicted in Figures 7 through 11. See id. at
`9:4–8, 10:17–28, 11:60–12:5, 13:1–9, 14:7–13, 14:66–67, 15:44–46; see
`also id. at 14:36–38 (identifying a “mobile telephone” as an example of a
`“mobile communication device), 17:53–55 (same). And Patent Owner
`categorizes a “mobile phone” as a client-side device. See Prelim. Resp. 16–
`22. To adopt Patent Owner’s exclusion of client-side functionality from the
`scope of the recited “network-based portal” would thus exclude preferred
`embodiments. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
`LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Accordingly, for purposes of this
`Decision, we decline to adopt such an exclusion. The parties will have an
`opportunity to elaborate on their positions for proper construction of
`“network-based portal” during the trial.
`On the record before us, we do not find it necessary to construe any
`other term for purposes of this Decision. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
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`D. Overview of the Prior Art
`1. Diacakis
`Diacakis “relates generally to communications and, more particularly,
`to presence and availability management systems.” Ex. 1007 ¶ 3. Figure 1
`of Diacakis is reproduced below.
`
`
`
`Figure 1 is a diagram of “a presence and availability (P&A) management
`system.” Id. ¶ 24. System 10 includes P&A management server 12 in
`communication with client terminal 22 via network 16. Id. P&A
`management server 12 includes presence detection engine 18, availability
`management engine 20, and profile database 24. Id. Functions of P&A
`management server 12 include determining whether a user is present on the
`network, determining whether the user is available on the network, and
`communicating such presence and availability information to others,
`depending on the user’s preferences. Id. ¶¶ 24–27.
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`Figure 4 of Diacakis is reproduced below.
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`Figure 4 is a diagram illustrating details of P&A management server 12. Id.
`¶¶ 15, 38. As illustrated, presence detection engine 18 may be in
`communication with various devices to help determine presence
`information, such as landline desk phone 44, mobile phone 46, personal
`computer 48, personal digital assistant 50, and pager 52. Id. ¶¶ 43–44.
`Based on the information from such devices, presence detection engine may
`determine an individual’s status 54 on particular networks, the individual’s
`physical location 56, and the individual’s capabilities 58. Id. ¶ 45.
`Presence information determined by presence detection engine 18 is
`communicated to availability management engine 20. Id. ¶ 46. Such
`presence information, in combination with the individual’s situation 60 and
`the individual’s rules and preferences 64, is used to determine the
`individual’s availability. Id. ¶¶ 46–47. “Additionally, the individual may
`specify the observers 62 who receive the individual’s contact information,”
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`with such observers 62 specified on a “group basis or an individual basis.”
`Id. ¶ 47.
`
`
`2. Tanigawa
`Tanigawa “relates to a communication technology such as Instant
`Messaging (IM),” and endeavors “to achieve group chat using multimedia.”
`Ex. 1010 ¶¶ 1, 8. Figure 1 of Tanigawa is reproduced below.
`
`
`Figure 1 is a schematic diagram of a voice-over-IP (“VoIP”) communication
`system that includes a variety of communication devices, such as IP
`terminals 7, fixed telephone 11, and mobile telephone 9. Id. ¶¶ 34–35. IM
`server 4 “manages presence information of an IM client,” AP server 5
`“manages connections for a voice chat using VoIP,” MD server 6
`“implements multi-party voice speech by mixing voice data,” and VR
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`server 10 “performs voice relay” with publicly switched telephone network
`3 and radio communication network 2. Id. ¶ 35.
`Figure 3 of Tanigawa is reproduced below.
`
`
`
`Figure 3 is an example of a “presence management table” used by IM server
`4 to manage presence information. Id. ¶ 49; see id. ¶¶ 40, 47. Chat
`participants are identified by nicknames 433, with the same nickname being
`used for a particular user across all devices. Id. ¶¶ 133, 194. This is
`illustrated in Figure 3, for example, for devices D and E, both of which
`belong to “hanako,” and for devices F and G, both of which belong to
`“yoshi.” See id. ¶ 50.
`Figure 12 of Tanigawa is reproduced below.
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`Figure 12 shows an example of a user interface of an IM client, such as may
`be displayed on IP terminal 7. Id. ¶ 162. Display area 135 shows presence
`information of “chatting buddies.” Id. ¶ 164. In addition, several chatting
`options are provided on main menu bar 130, which includes icon 131
`“indicating an operation relating to presence information,” icon 132
`indicating one-to-one voice chatting, icon 133 indicating multiparty voice
`chatting, and icon 134 “indicating text chatting.” Id. ¶ 163.
`
`
`3. Hullfish
`Hullfish “relates to electronic messaging systems in a computer
`environment." Ex. 1011, 1:6–9. Figure 5 of Hullfish is reproduced below.
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`Figure 5 is a flow diagram depicting a method that incorporates a privacy
`feature into receiving short-message-service (“SMS”) text messages. Id. at
`8:59–61. The method is implemented when a first user (“User A”) wants to
`stop receiving messages from a second user (“User B”). Id. at 8:62–64. To
`implement this, User A sends a text message containing User B’s telephone
`number to a predetermined telephone number. Id. at 9:1–4. Thus, when an
`SMS server receives a text from User A at the predetermined telephone
`number at step 502, it is determined at step 504 whether the text contains a
`telephone number, i.e., User B’s number. Id. at 9:5–9. If so, future
`messages from User B to User A are blocked at step 506. Id. at 9:9–18.
`Otherwise, future messages are forwarded “according to user preference” at
`step 508. Id. at 9:30–33.
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`4. Loveland
`Loveland “relates to methods, systems and computer program
`products for notifying a user of an event via voice notifications or other
`notification methods depending on the user’s dynamic circumstances.”
`Ex. 1008, 1:8–11. Figure 3 of Loveland is reproduced below.
`
`
`Figure 3 is a “flowchart of a method for notifying a user of an event in a
`context sensitive manner that takes into consideration the user’s current
`state.” Id. at 2:65–67. After the process is initiated at step 301 upon
`detection of an event that requires notification to a user, such notification is
`sent at step 302 in a manner “that is appropriate for the user’s
`circumstances.” Id. at 6:25–27, 6:36–38.
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`This includes accessing a current context of the user at step 303, such
`as “whether or not the user’s telephone is on, busy, in hands-free mode, out
`of range, in meeting mode or the like for each of the user’s telephones.” Id.
`at 6:40–47. At step 304, one of a plurality of notification methods is
`identified:
`There is an endless permutation of possible rules. As an
`illustrative example, the rules might define which telephonic
`devices to notify given the current time, and what notification
`methods to use if the current device is on or off, in hands-free
`mode or not, and busy or not. As a more specific example, the
`user may state that she wants to be notified by audible voice
`message if she receives an e-mail from a certain individual,
`except if she is already using the telephone through which the
`voice message was to be rendered, in which case the user may
`specify to be notified via a text message.
`
`Id. at 6:60–7:3. Loveland also explains that “the user may specify that a
`voice notification interrupt the current conversation even if the user is
`currently on the telephone.” Id. at 2:29–32; see also id. at 6:31–33 (“the
`notification may be that a new e-mail from an important individual has been
`received in the user’s in-box”). At step 305, the notification is then
`dispatched to the user using the identified notification method. Id. at 7:4–6.
`
`
`5. Takahashi
`Takahashi describes “a server device for net games which is
`communicably connected to a plurality of terminal devices” via the Internet.
`Ex. 1009 ¶¶ 8, 29. Figure 7 of Takahashi is reproduced below.
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`Figure 7 depicts a set of messages that a user may send to other users. Id.
`¶ 72. “For each one of the above messages, the member can select a desired
`message out of a plurality of predetermined messages.” Id. ¶ 74.
`
`
`E. Grounds Based on Diacakis
`Petitioner challenges claims 1–6, 15, and 17 as unpatentable under
`35 U.S.C. § 103 over Diacakis; challenges claims 7–9 as unpatentable under
`35 U.S.C. § 103 over Diacakis and Loveland; and challenges claim 16 as
`unpatentable under 35 U.S.C. § 103 over Diacakis and Takahashi. Pet. 35–
`63.
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`1. Independent Claim 1
`In addressing independent claim 1, Petitioner draws a correspondence
`between Diacakis’s P&A management server and a computer that performs
`the recited “computer-implemented method.” Pet. 35 (citing Ex. 1003
`¶ 293). In doing so, Petitioner observes that Diacakis’s P&A management
`server is in communication with a client terminal via a network that may be
`the Internet. Id. (citing Ex. 1007 ¶¶ 24–25). Both the preamble and the
`body of the claim recite a “network-based portal,” which Petitioner identifies
`as “a web page or interface that connects multiple users to a network.” Id. at
`36.
`
`Figure 9 of Diacakis, annotated by Petitioner, is reproduced below.
`See id.
`
`
`Figure 9 is a block diagram of client terminal 22, which includes indicator
`module 110 in communication with user interface 112 (highlighted in yellow
`by Petitioner). Id.; Ex. 1007 ¶ 63. User interface 112 “may include, for
`example, a GUI (Graphical User Interface) or a CUI (Character-based user
`interface).” Ex. 1007 ¶ 63; see Ex. 1003 ¶ 119. User interface 112 may
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`display information about a user’s contacts, such as the contact’s name,
`work telephone number, work email address, home telephone number, home
`email address, and instant-messaging (IM) address. Ex. 1007 ¶¶ 56, 59,
`Fig. 8; see Ex. 1003 ¶¶ 116, 119. User interface 112 enables a user to
`communicate with a contact via network 16, e.g., the Internet. Ex. 1007
`¶¶ 24–25, 62–64, Fig. 9; see Ex. 1003 ¶ 131.
`Based on the current record, Petitioner establishes sufficiently for
`purposes of institution that user interface 112 functions as a “network-based
`portal.” Patent Owner disputes Petitioner’s showing because “[t]he portion
`of Diacakis that the Petition relies upon merely teaches a user interface
`provided by a client device at the client-side of a network, not at the server-
`side of the network.” Prelim. Resp. 17. But, for the reasons discussed
`above, we disagree with Patent Owner’s construction of the recited
`“network-based portal” as residing only “at the server-side of a network,” at
`least based on the preliminary record. See id. at 4–5, 17; supra § II.C.
`At this time, Patent Owner does not dispute any other aspect of
`Petitioner’s analysis of independent claim 1. We have reviewed that
`analysis and find it sufficient under the standard that applies at the
`preliminary stage of the proceeding. In brief, Petitioner relies on Diacakis’s
`disclosure of message communications among users via a plurality of
`communication modes, with the ability of users to limit the availability of
`those communication modes to other users according to identification and
`categorization of such other users. Pet. 37–47. On an element-by-element
`basis, Petitioner explains how the specific limitations of independent claim 1
`are met within the context of such disclosure. Id.
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`We particularly note that, in its analysis, Petitioner does not contend
`that Diacakis expressly discloses “receiving a second message from the
`second user to the first user, to respond to the first message, after the second
`user has received the first message,” as independent claim 1 requires. See
`Ex. 1001, 20:32–35. Instead, Petitioner argues that this limitation 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.
`We also particularly note Petitioner’s treatment of the negative
`limitations recited in maintaining user confidentiality of contact information.
`See Ex. 1001, 20:39–52 (“wherein even when the first message is received
`by the second user via the selected mode of communication, contact
`information associated with the second user and provided by the second user
`to the network-based portal is not provided via the network-based portal to
`the first user, and contact information associated with the first user and
`provided by the first user to the network-based portal is not provided via the
`network-based portal to the second user, so as 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”). Petitioner addresses these negative limitations of “not
`provid[ing]” contact information to other users by observing that Diacakis
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`expressly discloses that “[a] presence and availability management service
`provides users with the ability to configure an observer’s access settings,
`thereby giving users the ability to control what contact information
`observers are allowed to view.” Pet. 46; Ex. 1007 ¶¶ 7, 47 (“[T]he
`individual may specify the observers 62 who receive the individual’s contact
`information.”). Petitioner supports this reasoning, which we find sufficient
`at this stage, and which is not disputed by Patent Owner, with testimony by
`Dr. Almeroth. Ex. 1003 ¶¶ 133–134.
`We conclude that Petitioner demonstrates a reasonable likelihood of
`prevailing on its challenge of independent claim 1 as unpatentable under
`35 U.S.C. § 103(a) over Diacakis.
`
`
`2. Dependent Claims 2–6, 15 and 17
`Claims 2–6, 15, and 17 depend directly or indirectly from independent
`claim 1. Ex. 1001, 20:64–21:34, 22:34–39, 22:45–48. In challenging those
`claims for obviousness over Diacakis alone, Petitioner provides an analysis
`that explains its position that the additional limitations are also disclosed by
`Diacakis. Pet. 47–53. Petitioner’s analysis is supported by testimony by
`Dr. Almeroth and is not disputed by Patent Owner outside of Patent Owner’s
`argument directed at underlying independent claim 1 that Diacakis does not
`disclose a “network-based portal” residing at the server side of a network.
`See Ex. 1003 ¶¶ 137–151; Prelim. Resp. 17–20.
`We have reviewed Petitioner’s analysis and determine that it is
`sufficient at this stage. For the reasons discussed above, Patent Owner’s
`argument is not persuasive on the current record. We accordingly conclude
`that Petitioner demonstrates a reasonable likelihood of prevailing on its
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`challenge of claims 2–6, 15, and 17 as unpatentable under 35 U.S.C.
`§ 103(a) over Diacakis.
`
`
`3. Dependent Claims 7–9
`In challenging claims 7–9, which depend from independent claim 1,
`Petitioner relies on Loveland in combination with Diacakis to meet the
`additional notification-related limitations. Pet. 57–59. Petitioner
`specifically contends that, given the “complementary” teachings of the two
`references, a person of ordinary skill in the art “would have been motivated
`to implement Loveland’s urgent message notification features in
`Diacakis’[s] communications system, and would have had several reasons to
`do so.” Id. at 53.
`Among such reasons, Petitioner identifies both references’ teachings
`regarding prioritization of communications from certain individuals, as well
`as the similarity of Diacakis’s “presence and availability” information with
`Loveland’s “current circumstance” information. Id. at 53–56 (citing
`Ex. 1007 ¶¶ 8, 24; Ex. 1008, 3:45–5:24, Figs. 1–2). Petitioner supports this
`identification with testimony by Dr. Almeroth, who also supports
`Petitioner’s contention that the combination would both yield predictable
`results and be reasonably expected to succeed. Ex. 1003 ¶¶ 152–161;
`Pet. 54–57.
`At this time, Patent Owner disputes neither Petitioner’s reasoning to
`effect the combination nor Petitioner’s specific analysis of the individual
`limitations of claims 7–9. On the current recor
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