Trials@uspto.gov
`571-272-7822
`
` Paper 8
` Entered: May 26, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EPIC GAMES, INC.,
`Petitioner,
`v.
`INGENIOSHARE, LLC,
`Patent Owner.
`____________
`
`Case IPR2022-00297
`Patent 8,744,407 B2
`____________
`
`Before JONI Y. CHANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Exhibit 2006
`
`
`571-272-7822
`
` Paper 8
` Entered: May 26, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EPIC GAMES, INC.,
`Petitioner,
`v.
`INGENIOSHARE, LLC,
`Patent Owner.
`____________
`
`Case IPR2022-00297
`Patent 8,744,407 B2
`____________
`
`Before JONI Y. CHANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Exhibit 2006
`
`
`
`IPR2022-00297
`Patent 8,744,407 B2
`
`
`INTRODUCTION
`I.
`Epic Games, Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1, 2, 5, 7, 53, 54, 56, 57, and 59 (“the challenged
`claims”) of U.S. Patent No. 8,744,407 B2 (Ex. 1001, “the ’407 patent”).
`Paper 1 (“Pet.”). IngenioShare, LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that Petitioner has not established a reasonable
`likelihood that it would prevail with respect to any of the challenged claims.
`We hereby decline to institute an inter partes review in this proceeding.
`
`A. Related Matters
`The parties indicate that the ’407 patent also is involved in
`IngenioShare, LLC v. Epic Games, Inc., No 6:21-cv-00663-ADA (W.D.
`Tex.). Pet. 2; Paper 5, 2.
`
`B. The ’407 Patent
`The ’407 patent discloses a computer-implemented system and
`method to manage the communication of a user. Ex. 1001, code (57).
`The ’407 patent describes one approach to maintain confidentiality of the
`user’s location and status while maintaining real-time communication.
`Ex. 1001, 4:38−40. In particular, the ’407 patent discloses a system that
`digitally identifies the identities of the caller (or the person requesting to
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`communicate with the user or trying to send a message to the user) and the
`receiver or user. Id. at 4:38−44. After determining the identities, the system
`can establish connections between the caller and the user in real time. Id. at
`4:46−47. However, the system does not have to disclose the phone
`numbers, electronic addresses, physical locations and/or other attributes of
`the caller and the user to each other. Id. at 4:50−52.
`
`C. Illustrative Claims
`Of the challenged claims, claims 1 and 53 are independent. Claims 2,
`5, and 7 depend from claim 1. Claims 54, 56, 57, and 59 depend from
`claim 53. Claims 1 and 53 are reproduced below (with the corrections to
`claim 53 set forth in the Certificate of Correction (Ex. 1001, 15−16)):
`1. [1.0] A non-transitory computer-implemented method to
`manage the communication of a user via a server based on a
`communication protocol, in view of a person, using a first
`device, trying to electronically convey a message from the first
`device to a second device of the user, the method comprising:
`[1.1] receiving, by the server, the message from the person using
`the first device;
`[1.2] identifying, by the server, the person attempting to
`electronically convey the message; and
`[1.3] setting, by the server, a process for the message using one
`or more rules based on at least a status associated with the user
`and an access priority associated with the person, the access
`priority depending on the person,
`[1.4] wherein the server is configured to have access to contact
`information of the person,
`[1.5] wherein even if the process includes transmitting the
`message to the second device via contact information of the user,
`the server does not provide the contact information of the user to
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`the first device to inhibit the person from sending messages to
`the user without via the server, and
`[1.6] wherein the access priority associated with the person is
`configured to be set by the server depending at least in part on
`the user reacting by accepting or not accepting a prior message
`from the person.
`Ex. 1001, 6:60−7:17 (emphases and bracketed matters added, using the same
`element numbering as in Petitioner’s claim listing (Ex. 1028)).
`53. [53.0] A server based on a communication protocol for
`managing the communication of a user, in view of a person,
`using a first device, trying to electronically convey a message
`from the first device to a second device of the user, the second
`device being a handheld communication device, the server
`comprising:
`[53.1] at least one computing device; and
`[53.2] at least one storage device,
`[53.3] wherein the at least one computing device is configured to
`receive the message from the person using the first device;
`[53.4] identify the person attempting to electronically convey the
`message; and
`[53.5] set a process for the message using one or more rules
`based on at least a status associated with the user and an access
`priority associated with the person, the status depending at least
`in part on the current activity or location of the user, or the
`current time, and the access priority depending on the person,
`[53.6] wherein the server is configured to have access to contact
`information of the person,
`[53.7] wherein even if the process includes transmitting the
`message to the second device via contact information of the user,
`the server does not provide the contact information of the user to
`the first device to inhibit the person from sending messages to
`the user without via the server,
`
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`[53.8] wherein the server is configured to be aware of the
`availability of the user, and
`[53.9] wherein the server is configured to send information to the
`person regarding the availability of the user.
`Id. at 12:25−54, 15−16 (emphases and bracketed matters added, using the
`same element numbering as in Petitioner’s claim listing (Ex. 1028)).
`
`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below. Pet. 4.
`Exhibit
`No.
`1007
`
`Name
`
`Furlong
`
`Diacakis
`
`
`Reference
`U.S. Patent Pub. No.
`2003/0028621 A1
`U.S. Patent Pub. No.
`2002/0116461 A1
`
`Date
`
`Feb. 6, 2003
`
`Aug. 22, 2002
`
`1008
`
`
`
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 5)1:
`
`Claims Challenged
`
`35 U.S.C. §
`
`References
`
`53, 54, 56, 59
`
`1, 2, 5, 7, 53, 54, 56, 58, 59
`
`103(a)
`
`103(a)
`
`Furlong
`
`Diacakis
`
`
`1 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103 in this Decision.
`
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021).
`Under this standard, the words of a claim generally are given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc).
`In light of parties’ arguments and supporting evidence in this record,
`we find that it is necessary to address only the claim construction issues
`identified below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))).
`
`Preambles of Claims 1 and 53
`In its Petition, Petitioner does not explain whether the preambles of
`claims 1 and 53 are limiting or not, but rather asserts that the prior art
`references disclose the subject matter recited in the preambles of these
`claims. Pet. 23−24, 32−34, 47−50, 65−68. Petitioner also does not address
`the antecedent basis of the first reference to the term “message” in the body
`of claim 1 that appears in the limitation, “receiving, by the server, the
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`message from the person using the first device” (Element 1.1), or the
`antecedent basis of the first reference to the term “message” in the body of
`claim 53 that appears in the limitation, “the server comprising: at least one
`computing device . . . wherein the at least one computing device is
`configured to receive the message from the person using the first device”
`(Element 53.3). Id.
`In its Preliminary Response, Patent Owner implies that the phrase “a
`message from the first device to a second device of the user” recited in each
`preamble is limiting because the “message” recited in each of claims 1 and
`53 refers back to the preamble for antecedent basis. Prelim. Resp. 1−2, 10.
`“In general, a preamble limits the invention if it recites essential
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard
`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not
`limiting ‘where a patentee defines a structurally complete invention in the
`claim body and uses the preamble only to state a purpose or intended use for
`the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
`1997)). “No litmus test defines when a preamble limits claim scope,” id.
`(citing Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251,
`1257 (Fed. Cir. 1989)), but “dependence on a particular disputed preamble
`phrase for antecedent basis may limit claim scope because it indicates a
`reliance on both the preamble and claim body to define the claimed
`invention.” Id. (citing Bell Commc’ns Research, Inc. v. Vitalink Commc’ns
`Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)); see also Shoes by Firebug LLC v.
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`Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 1368 (Fed. Cir. 2020)
`(holding that the “use of preamble terms to define positive limitations in the
`body of claims can evince an inventor’s intent that the preamble limit the
`scope of the claim”).
`Here, the preamble of claim 1 recites “[a] non-transitory
`computer-implemented method to manage the communication of a user via a
`server based on a communication protocol, in view of a person, using a first
`device, trying to electronically convey a message from the first device to a
`second device of the user.” Ex. 1001, 6:60−65 (emphasis added). The
`preamble of claim 53 recites “[a] server based on a communication protocol
`for managing the communication of a user, in view of a person, using a first
`device, trying to electronically convey a message from the first device to a
`second device of the user.” Id. at 12:25−30 (emphasis added)
`Each of these claims does not reintroduce the term “message” in the
`body of the claim but instead relies on the instance of “message” introduced
`in the preamble for antecedent basis. Notably, the first reference to
`“message” in the body of claim 1 (Element 1.1) appears in a limitation
`(“receiving, by the server, the message from the person using the first
`device”), describing a positive step in the claimed “method.” Similarly, the
`first reference to “message” in the body of claim 53 (Element 53.3) appears
`in a limitation (“wherein the at least one computing device [of the server] is
`configured to receive the message from the person using the first device”),
`describing a structural feature (“computing device”) of the claimed “server.”
`As Patent Owner notes, the “message” recited in each of Elements 1.1 and
`53.3 refers back to the phrase “a person, using a first device, trying to
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`electronically convey a message from the first device to a second device”
`recited in the preambles. Prelim. Resp. 1−2, 10.
`Because claims 1 and 53 require the server (or the computing device
`in the server) to “receive the message from the person using the first
`device,” the phrase “a person, using a first device, trying to electronically
`convey a message from the first device to a second device of the user” in the
`preambles of these claims is essential to understanding the limitations in
`these claims, not merely reciting an intended purpose of the claimed
`invention. This “indicates a reliance on both the preamble and claim body to
`define the claimed invention.” Catalina, 289 F.3d at 808; Bell Commc’ns
`Research, 55 F.3d at 620; Shoes by Firebug, 962 F.3d at 1368. Therefore,
`the phrase “a person, using a first device, trying to electronically convey a
`message from the first device to a second device of the user” in each of the
`preambles of claims 1 and 53 is limiting.
`As discussed above, the “message” recited in each of Elements 1.1
`and 53.3 refers back to the preamble for antecedent basis, specifically to the
`phrase “a person, using a first device, trying to electronically convey a
`message from the first device to a second device of the user.” Therefore,
`Elements 1.1 and 53.3 require that the “message” received by the server (or
`the computing device in the server) from the person using the first device is
`the message the person trying to electronically convey to the user’s device.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
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`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 ordinary skill in the art; and (4) objective evidence of
`nonobviousness. 2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Here, Petitioner asserts that a person of ordinary skill in
`the art of the ’407 patent would have had “a Bachelor’s degree in Computer
`Science, or equivalent field and three to five years of experience working
`with Internet communication systems.” Pet. 23 (citing Ex. 1003 ¶¶ 67−72).
`At this juncture, Patent Owner does not proffer any assessment regarding the
`knowledge of an ordinarily skilled artisan.
`
`
`2 At this time, the parties do not address objective indicia of nonobviousness,
`which accordingly do not form part of our analysis. See Pet. 75 (“Petitioner
`is unaware of any evidence of secondary considerations that would support a
`finding of non-obviousness.”).
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`For purposes of this Decision, we adopt the level of ordinary skill as
`articulated by Petitioner because, based on the current record, this proposal
`appears to be consistent with the ’407 patent, prior art of record, and
`supported by the testimony of Dr. Kevin Almeroth.
`
`D. Obviousness over Furlong
`Petitioner asserts that claims 53, 54, 56, and 59 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Furlong, citing Dr. Almeroth’s testimony
`for support. Pet. 39–47 (citing Ex. 1003). For the reasons provided below,
`we determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing on its assertion that claims 53, 54, 56, and 59 are unpatentable.
`
`1. Furlong (Ex. 1007)
`Furlong discloses a system and method for managing subscriber
`presence, location, and availability (“PLA”) information. Ex. 1007, code
`(57). Figure 1 of Furlong is reproduced below.
`
`
`Figure 1 of Furlong above shows PLA system 10 on communication
`network 12. Id. ¶ 19. Network 12 includes subscriber devices 14. Id.
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`PLA system 10 includes subscriber interface 16, service provide interface
`18, third-party applications 20, and third-party proximity and location
`suppliers 22. Id. ¶ 20. PLA system 10 is created around presence, location
`and availability server (“PLAS”) 15. Id. PLAS 15 keeps track of
`subscribers’ presence and availability in the network and processes
`third-party requests for information. PLAS 15 includes database 30 and
`preference engine 34, which serves as the central processor for PLAS 15.
`Id. ¶¶ 23−24. Other communication networks 24 may interface with
`network 12 and include PLA system 26 similar to PLA system 10. Id. ¶ 20.
`
`2. Discussion
`Claim 53 recites:
`[53.0] A server based on a communication protocol for managing
`the communication of a user, in view of a person, using a first
`device, trying to electronically convey a message from the first
`device to a second device of the user, the second device being a
`handheld communication device, the server comprising:
`[53.1] at least one computing device; and
`[53.2] at least one storage device,
`[53.3] wherein the at least one computing device is configured to
`receive the message from the person using the first device.
`Id. at 12:25−35 (emphases and bracketed matters added).
`For Element 53.0 (the preamble of claim 53), Petitioner avers that
`Furlong discloses a PLA system that features a PLAS for managing a
`subscriber’s location, presence and subscriber-designated availability
`options across potentially disparate networks with potentially disparate
`devices. Pet. 32−33 (citing Ex. 1007 ¶¶ 7, 8, 20, 92).
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`For Elements 53.1 and 53.2, Petitioner asserts that Furlong discloses a
`computing device because Furlong teaches preference engine 34, a
`computing device that “serves as the central processor” for PLAS 15
`(server). Id. at 33−34 (citing Ex. 1007 ¶¶ 24, 30, 81−82, 92−96, Fig. 2;
`Ex. 1003 ¶ 86). Petitioner also argues that Furlong’s PLAS comprises
`database 30 (a storage device). Id. at 34 (citing Ex. 1007 ¶¶ 8, 23−27, 30,
`57, 86−89, 92−94, Figs. 2−3; Ex. 1003 ¶ 87).
`For Element 53.3, Petitioner argues that Furlong discloses wherein the
`computing device (preference engine 34) is configured to receive the
`message from a first device. Id. at 34−36 (citing Ex. 1007 ¶¶ 30, 59, 82, 84,
`92−96, Fig. 5; Ex. 1003 ¶¶ 88−90). According to Petitioner, Furlong teaches
`that PLAS 15 (server) “provides value and utility to subscribers through
`applications which will typically be provided by third parties.” Id. at 34
`(citing Ex. 1007 ¶ 59). Petitioner explains that Furlong also teaches that, for
`a third-party application (person) to send a message to a subscriber (user),
`the person “first establishes an authenticated session with the PLAS 15 (step
`500) and sends a request to the PLAS 15 (step 502),” as shown in Figure 5
`of Furlong. Id. at 34−35 (citing Ex. 1007 ¶¶ 59, 94, Fig. 5). Petitioner notes
`that Furlong teaches that if “the subscriber is both present and available, the
`PLAS 15 notifies the requesting application of the subscriber’s availability
`(step 512) and the application sends the message to the subscriber (step
`514).” Id. (citing Ex. 1007 ¶ 94, Fig. 5) (emphasis added).
`In addition, Petitioner argues that Furlong’s preference engine 34,
`which is part of the server, similarly facilitates the communication between
`the service provider and the subscriber. Id. at 36 (citing Ex. 1007 ¶¶ 24
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`(“A preference engine 34 . . . facilitates processing of preference rules
`established by the service provider and the subscriber . . . to control access to
`the proximity, location and availability criteria of each subscriber.”), 30, 83,
`84, 92−96; Ex. 1003 ¶¶ 88−90).
`Patent Owner counters that Petitioner fails to show that Furlong
`teaches or suggests Element 53.3 because Furlong’s server does not receive
`“a message from a first user’s device intended for a second device.” Prelim.
`Resp. 1−4. We agree with Patent Owner.
`As discussed above in Section II.A, the “message” recited in
`Element 53.3 refers back to the preamble for antecedent basis, specifically to
`the phrase “a person, using a first device, trying to electronically convey a
`message from the first device to a second device of the user.” Thus,
`Element 53.3 requires that the “message” received by the computing device
`in the server is the message the person is “trying to electronically convey” to
`the user’s device.
`We are not persuaded by Petitioner’s arguments or Dr. Almeroth’s
`testimony. Pet. 32−36; Ex. 1003 ¶¶ 85−90. Petitioner fails to show a server
`receiving a “message” the person is trying to convey to the user’s device in
`Furlong. Petitioner’s and Dr. Almeroth’s reliance on the embodiment shown
`in Figure 5 of Furlong is misplaced.
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`Figure 5 of Furlong is reproduced below.
`
`
`As shown in Figure 5 above, if a third-party application wants to send
`a message to a subscriber, it first establishes an authenticated session with
`PLAS 15 (step 500) and sends a request to PLAS 15 (step 502). Ex. 1007
`¶ 94. Preference engine 34 accesses the appropriate tables in database 30
`(step 504) to determine if the subscriber is present (step 506) and available
`(step 508). Id. “If . . . the subscriber is both present and available, the PLAS
`15 notifies the requesting application of the subscriber’s availability
`(step 512) and the application sends the message to the subscriber
`(step 514).” Id.
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`Notably, neither the authenticated session with PLAS 15, nor the
`request from the third-party application (steps 500 and 502), is the
`“message” the person is trying to convey to the device of the user, as
`required by Element 53.3. Significantly, Furlong discloses that, after PLAS
`15 notifies the third-party application of the subscriber’s availability
`(step 512), “the application sends the message to the subscriber (step 514)”
`directly, not via the server, PLAS 15. Ex. 1007 ¶ 94 (emphasis added),
`Fig. 5. Thus, PLAS 15 in Furlong does not receive the message the
`third-party application (person) is trying to convey to the device of the
`subscriber (user).
`Moreover, the examples related to this embodiment also do not teach
`or suggest that the server in Furlong receives the message the third-party
`application or person is trying to convey to the device of the subscriber
`(user). Id. ¶¶ 92−98. Notably, in those examples, Furlong discloses that the
`subscriber (e.g., John) receives the message from the third-party application
`or person (e.g., the traffic agency, the Mall Coupon application, the “Buddy
`Near” proximity service, John’s co-worker, or John’s wife) directly, not via
`the server, PLAS 15. Id. ¶ 93 (“If the conditions are met, the PLAS 15
`notifies the third party event application (step 416) which takes the
`appropriate action (such as sending the subscriber coupons or advising the
`subscriber of traffic conditions in the area) (step 418).”), ¶ 95 (John on his
`way to work “receives an alert about an accident from the traffic agency (a
`third party application provider) over his WAP phone and changes his route
`to avoid the congestion.”), ¶ 96 (“At work, . . . he receives an instant
`message from a co-worker,” and “his wife . . sends an instant message” and
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`“the message is delivered to John’s WAP phone.”), ¶ 98 (At the mall, “[t]he
`Mall Coupon service . . . sends him an electronic coupon,” and “the ‘Buddy
`Near’ proximity service . . . sends a message to John’s WAP phone
`informing him that Bob is nearby.”).
`Therefore, the embodiment shown in Figure 5 of Furlong and the
`related examples do not support Petitioner’s arguments or Dr. Almeroth’s
`testimony that “Furlong renders at least obvious wherein at least one
`computer device (i.e. preference engine 34) is configured to receive the
`message from the first device (which is used by the ‘person’).” Pet. 34−36;
`Ex. 1003 ¶¶ 88−90.
`In addition, we are not persuaded by Dr. Almeroth’s testimony that
`“the PLAS . . . conveys the message to the subscriber,” and that a person of
`ordinary skill in the art would have understood that, “in order to convey the
`message to the subscriber, the server would have a computing device
`(preference engine 34) that receives the initial message.” Ex. 1003 ¶ 89
`(citing Ex. 1007 ¶¶ 24, 30, 82, 84, 92−96, Fig. 5). Preference engine 34, as
`described by Furlong, merely “facilitates processing preference rules
`established by the service provider and the subscriber . . . to control access to
`the proximity, location and availability criteria of each subscriber.”
`Ex. 1007 ¶¶ 24, 30. Furlong does not teach or suggest that preference
`engine 34 receives the message the third-party application (person) is trying
`to convey to the device of the subscriber (user), as required by Element 53.3.
`Moreover, in the examples relied upon by Dr. Almeroth, Furlong describes
`that, when the IM application queries PLAS 15 for the subscriber’s
`availability of instant messaging, preference engine 34 determines that the
`17
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`subscriber is available via his WAP phone, and then “[t]he subscriber’s
`WAP phone address is provided to the IM application and the IM
`application forwards the instant message to the subscriber” directly, not via
`preference engine 34. Id. ¶¶ 82, 84 (emphasis added). Furlong does not
`teach that the instant message was received by preference engine 34. Id.
`The embodiment shown in Figure 5 of Furlong and the related
`examples also do not support Dr. Almeroth’s testimony because Furlong
`describes that “the third party event application (step 416) . . . takes the
`appropriate action (such as sending the subscriber coupons or advising the
`subscriber of traffic conditions in the area) (step 418)” and “the application
`sends the message to the subscriber (step 514).” Id. ¶¶ 92−98, Figs. 4−5.
`As such, we do not find that either Furlong’s preference engine or PLAS
`receives the message the person is trying to convey to the user, as required
`by Element 53.3. Hence, Furlong does not support Dr. Almeroth’s
`testimony that “the PLAS . . . conveys the message to the subscriber,” and
`that a person of ordinary skill in the art would have understood that, “in
`order to convey the message to the subscriber, the server would have a
`computing device (preference engine 34) that receives the initial message.”
`Ex. 1003 ¶ 89.
`Furthermore, we are not persuaded by Dr. Almeroth’s testimony that a
`person of ordinary skill in the art “would have understood that Furlong
`anticipates that the ‘third party application’ may also be provided by the
`PLAS provider.” Ex. 1003 ¶ 90 (citing Ex. 1007 ¶¶ 10−11, 59). The cited
`portions of Furlong do not support Dr. Almeroth’s testimony. Ex. 1007
`
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`¶¶ 10−11, 59. Notably, those portions of Furlong do not disclose any
`third-party application provided by the PLAS provider. Id.
`Even if the PLAS provider provided a third-party application as
`Dr. Almeroth suggests, Dr. Almeroth fails to explain how such a proposed
`implementation would have taught “wherein the at least one computing
`device is configured to receive the message from the person using the first
`device,” as required by Element 53.3.
`Dr. Almeroth also improperly conflates the server with the provider.
`Neither Petitioner nor Dr. Almeroth explains why a relevant artisan would
`have implemented a third-party application in preference engine 34, instead
`of a separate engine or server. Furlong’s preference engine 34 merely
`facilitates processing preference rules established by the service provider
`and the subscriber to control access to the proximity, location, and
`availability criteria of each subscriber. Ex. 1007 ¶ 24.
`Moreover, even if the proposed third-party application were
`implemented in Furlong’s preference engine 34, neither Petitioner nor
`Dr. Almeroth explains how a single engine accounts for both the “computing
`device” and “the first device” used by the person. Element 53.3 specifies
`that the “computing device is configured to receive the message from the
`person using the first device,” which indicates that the “computing device” is
`separate from the “first device” and the receiving step is performed by a
`device other than the “first device.” See Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292, 1299 (Fed. Cir. 2015) (“Not only are the ‘two other
`computers’ recited independently from, and in addition to, the gateway and
`caching computer, the word ‘other’ denotes a further level of distinction.”);
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`see also NTP, Inc. v. Research in Motion, Ltd., 419 F.3d 1282, 1300 (Fed.
`Cir. 2005) (holding that the “originating processor” and “gateway switch”
`are separate components because, inter alia, the claim language shows that
`information “is transmitted from an ‘originating processor’ to a gateway
`switch), abrogated on other grounds by IRIS Corp. v. Japan Airlines Corp.,
`769 F.3d 1359, 1361 n.1 (Fed. Cir. 2014).
` The Specification of the ’407 patent confirms that the “computing
`device” and the “first device” used by the “person” are separate components.
`In particular, the ’407 patent discloses a system that digitally identifies the
`identities of the person (the caller) requesting to communicate with the user
`(the receiver). Ex. 1001, 4:38−44. After determining the identities, the
`system can establish connections between the person and the user in real
`time. Id. at 4:46−47. However, the system does not have to disclose the
`phone numbers, electronic addresses, physical locations and/or other
`attributes of the person and the user to each other. Id. at 4:50−52.
`Accordingly, we are not persuaded by Dr. Almeroth’s testimony that a
`person of ordinary skill in the art “would have understood that Furlong
`anticipates that the ‘third party application’ may also be provided by the
`PLAS provider.” Ex. 1003 ¶ 90.
`For the foregoing reasons, we find that Petitioner fails to show that
`Furlong teaches or suggests Element 53.3. By virtue of their dependency,
`claims 54, 56, and 59 also require the limitation set forth in Element 53.3.
`Accordingly, we determine that Petitioner fails to demonstrate a reasonable
`likelihood of prevailing on its assertion that claims 53, 54, 56, and 59 are
`unpatentable under § 103(a) as obvious over Furlong.
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`3. Obviousness over Diacakis
`Petitioner asserts that claims 1, 2, 5, 7, 53, 54, 56, 58, and 59 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Diacakis, citing
`Dr. Almeroth’s testimony for support. Pet. 47–75 (citing Ex. 1003). For the
`reasons provided below, we determine that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on its assertion that claims 1, 2, 5, 7, 53,
`54, 56, 58, and 59 are unpatentable.
`
`1. Diacakis (Ex. 1008)
`
`Diacakis discloses a presence and availability management server and
`a method for communicating communication network availability
`information regarding an individual to subscribers. Ex. 1008, code (57).
`Figure 1 of Diacakis is reproduced below.
`
`
`Figure 1 of Diacakis above shows a block diagram of presence and
`availability (“P&A”) management system 10. Id. ¶ 24. System 10 includes
`P&A management server 12 in communication with client terminal 22 via
`network 16. Id.
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