IPR2022-00294
`Patent 10,492,038 B2
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`____________
`
`IPR2022-00294
`Patent 10,492,038 B2
`____________
`
`
`
`CHANG, Administrative Patent Judge, dissenting.
`
` I
`
` respectfully dissent from the majority’s determination that Petitioner
`has shown that there is a reasonable likelihood that it would prevail with
`respect to at least one of the challenged claims. For the reasons stated
`below, I find that Petitioner has not shown sufficiently that Diacakis teaches
`or suggests the negative limitations that require the users to communicate
`without disclosing their contact information, as recited in the challenged
`claims.
`
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`
`Patent 10,492,038 B2
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`____________
`
`IPR2022-00294
`Patent 10,492,038 B2
`____________
`
`
`
`CHANG, Administrative Patent Judge, dissenting.
`
` I
`
` respectfully dissent from the majority’s determination that Petitioner
`has shown that there is a reasonable likelihood that it would prevail with
`respect to at least one of the challenged claims. For the reasons stated
`below, I find that Petitioner has not shown sufficiently that Diacakis teaches
`or suggests the negative limitations that require the users to communicate
`without disclosing their contact information, as recited in the challenged
`claims.
`
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`IPR2022-00294
`Patent 10,492,038 B2
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`The preamble7 of claim 7 recites “communications of a plurality of
`
`users . . . without requiring the plurality of users to disclose their contact
`information to each other.” Ex. 1001, 21:52−59.
`Limitation 7.8 of claim 7 recites:
`wherein even when the first message is received by the second
`user via the electronic device associated with the second user
`depending on the identifier associated with the second user,
`the contact information associated with the second user is not
`provided via the network-based portal to the first user via an
`electronic device associated with the first user.
`Id. at 22:34−40 (emphases added). Claims 38 and 46 also recite similar
`negative limitations. See, e.g., id. at 26:48−54, 28:23−34. Claims 8−12,
`22−24 depend from claim 7; claims 39−45 depend from claim 38; and
`claims 47−67 depend from claim 46. By virtue of their dependency, the
`challenged dependent claims also require these negative limitations.
`
`For these negative limitations, Petitioner argues that “Diacakis’ users
`do not see others’ contact information (e.g., telephone number or email
`address) simply by communicating.” Pet. 29−30. According to Petitioner,
`Diacakis discloses that an individual (second user) may specify who sees the
`individual’s availability information and “separately may ‘control what
`contact information observers are allowed to view.’” Id. at 38, 47−48
`(quoting Ex. 1007 ¶ 7), 55−58; see id. at 29 (citing Ex. 1007 ¶¶ 7, 47).
`Petitioner also argues that the P&A management system “obviates the need
`for the first user to receive the second user’s contact information” because
`
`7 My analysis includes the preamble of claim 7 because, for Limitation 7.8
`discussed below, Petitioner relies upon the same arguments in connection
`with the preamble of claim 7, and I disagree with the Majority’s
`determination that Petitioner has established sufficiently for purposes of
`institution that Diacakis teaches the preamble of claim 7.
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`IPR2022-00294
`Patent 10,492,038 B2
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`the system “relate[s] the various entries for an individual and merge[s] them
`together as one entry.” Id. at 38 (alterations by Petitioner) (quoting Ex. 1007
`¶ 59). Petitioner further argues that the P&A management system “allow[s]
`subscribers to contact individuals without having to be concerned about
`different communication devices, their addresses and capabilities.” Id. at 39
`(alteration by Petitioner) (quoting Ex. 1007 ¶ 62); see id. at 30. According
`to Petitioner, a subscriber may “refer to a single indicator and use that
`information to initiate point-to-point contact” with an individual. Id. at 39
`(citing Ex. 1003 ¶¶ 248–249; Ex. 1007 ¶¶ 62, 64); see id. at 30 (citing
`Ex. 1007 ¶ 62).
`I am not persuaded by Petitioner’s arguments that the users in
`Diacakis communicate without disclosing their contact information.
`Diacakis makes it clear that the user interface (relied upon by Petitioner to
`teach the claimed “network-based portal”) provides the contact information
`of each individual to the subscriber. Notably, Diacakis expressly discloses
`that “indicator module 110 may receive availability information from one or
`more P&A management servers 12 and merge the contact information for
`each individual into a single indicator, as described . . . in connection with
`FIG. 8, for display by the user interface 112.” Ex. 1007 ¶ 64; see also id.
`¶ 65 (“[I]ndicator module 110 may relate the various addresses for a given
`individual and merge them into a single indicator for each of the individuals,
`as illustrated in FIG. 8.”), ¶ 66 (“[F]or individual k for which the client
`subscribes to contact information, the indicator module 110 may determine
`whether an address for each data content type . . . has been transmitted from
`the P&A management server 12.”) (emphases added).
`
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`Patent 10,492,038 B2
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`Figure 8 of Diacakis is reproduced below with Petitioner’s
`annotations. Pet. 37.
`
`
`
`Annotated Figure 8 of Diacakis above depicts a screen shot of the
`information that may be displayed to a subscriber at client terminal 22,
`showing a list of individuals in “Contact Program” window on the right side
`and the presence and availability (“P&A”) contact information (e.g.,
`telephone numbers, IM addresses, and e-mail addresses) regarding the
`highlighted individual (e.g., Jonathan) in the “Contact Properties” window
`on the left side. Ex. 1007 ¶ 56, Fig. 8. “As illustrated, the subscriber may
`navigate the list of names in the right-hand window (‘Contact Program’) to
`access the P&A information regarding the highlighted individual in the
`left-hand window (‘Contact Properties’).” Id.
`Therefore, Diacakis makes it clear that the users are required to
`disclose their contact information to each other and the contact information
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`IPR2022-00294
`Patent 10,492,038 B2
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`associated with the second user (e.g., Jonathan) is provided via the
`“network-based portal” (the “Contact Properties” window on the left side
`shown in Figure 8). Accordingly, Diacakis does not support Petitioner’s
`arguments that the users in Diacakis communicate without disclosing their
`contact information.
`In addition, I am not persuaded by Petitioner’s argument that Diacakis
`discloses that an individual (second user) may specify who sees the
`individual’s availability information and “separately may ‘control what
`contact information observers are allowed to view.’” Pet. 38, 47−48
`(quoting Ex. 1007 ¶ 7), 55−58; see id. at 29 (citing Ex. 1007 ¶¶ 7, 47);
`Ex. 1003 ¶ 248 (citing Ex. 1007 ¶¶ 6, 7, 47). The challenged claims require
`“communications of a plurality of user . . . without requiring the plurality of
`users to disclose their contact information to each other,” and “even when
`the first message is received by the second user . . . the contact information
`associated with the second user is not provided via the network-based portal
`to the first user.” See, e.g., Ex. 1001, 21:52−59, 22:34−40 (emphases
`added). The portions of Diacakis relied upon by Petitioner and
`Dr. Almeroth do not disclose any communication or message (first message)
`from the “blocked” person (first user) to the individual (second user).
`Ex. 1007 ¶¶ 6, 7, 47. Indeed, Petitioner and Dr. Almeroth admit that a
`“blocked” person (who is not allowed to view the individual’s contact
`information) is not allowed to communicate with the individual. Pet. 45
`(“Diacakis makes clear that the second user blocks the first user from
`reaching the second user using the network-based portal.”) (citing Ex. 1007
`¶ 32); Ex. 1003 ¶ 257 (citing Ex. 1007 ¶ 32, Fig. 2). Therefore, the
`“blocked” person in Diacakis is not the claimed “user” or the claimed “first
`
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`Patent 10,492,038 B2
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`user.” Accordingly, Diacakis does not support Petitioner’s argument that
`Diacakis teaches the aforementioned negative limitations recited in the
`challenged claims.
`Furthermore, Petitioner’s argument that the P&A management system
`“obviates the need for the first user to receive the second user’s contact
`information” is conclusory. Pet. 38. Petitioner’s reliance on the following
`statements in Diacakis is misplaced: (1) the system “relate[s] the various
`entries for an individual and merge[s] them together as one entry” (id.
`(alterations by Petitioner) (quoting Ex. 1007 ¶ 59)) and (2) a subscriber may
`“refer to a single indicator and use that information to initiate point-to-point
`contact” with an individual (id. at 30, 39 (quoting Ex. 1007 ¶ 62)).
`As discussed above, Figure 8 of Diacakis (reproduced above) shows
`that the user interface merges various entries for an individual (e.g.,
`Jonathan) together as a single indicator or entry in the “Contacts Program”
`window on the right. Ex. 1007 ¶¶ 56, 59, 64−66. Diacakis makes clear that,
`as illustrated in Figure 8, the subscriber may navigate the list of names in the
`“Contacts Program” to access the contact information regarding the
`highlighted individual in the “Contact Properties” window on the left. Id.
`Therefore, contrary to Petitioner’s argument that the P&A management
`system “obviates the need for the first user to receive the second user’s
`contact information,” Diacakis’ subscriber (first user) receives the contact
`information of the second user (individual, e.g., Jonathan) through the user
`interface. Id.
`Moreover, Petitioner’s reliance on the following statement in Diacakis
`is also misplaced: the P&A management system “allow[s] subscribers to
`contact individuals without having to be concerned about different
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`IPR2022-00294
`Patent 10,492,038 B2
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`communication devices, their addresses and capabilities.” Pet. 39 (alteration
`by Petitioner) (quoting Ex. 1007 ¶ 62); see id. at 30. Petitioner ignores the
`sentence disclosed in the same paragraph immediately before that quoted
`statement in Diacakis: “Accordingly, when a subscriber wishes to contact
`Joe Doe via instant message, the server 12 provides the appropriate IM
`address to the subscriber . . . .” Ex. 1007 ¶ 62 (emphasis added).
`For the foregoing reasons, I find that Petitioner has not shown
`sufficiently that Diacakis teaches or suggests the aforementioned negative
`limitations recited in the challenged claims. Petitioner does not rely on other
`asserted prior art references to cure these deficiencies. Accordingly, I
`determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing on its assertion that claims 7–12, 22–24, and 33–67 of the
`’038 patent are unpatentable.
`CONCLUSION
`For the foregoing reasons, I disagree with the Majority’s
`determination that Petitioner has shown that there is a reasonable likelihood
`that it would prevail with respect to at least one of the challenged claims.
`
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