UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`
`Case No. IPR2022-00291
`Patent No. 10,708,727
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`DECLARATION OF PROFESSOR
`GEORGE N. ROUSKAS, PH.D.
`
`Exhibit 2005Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`
`Case No. IPR2022-00291
`Patent No. 10,708,727
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`DECLARATION OF PROFESSOR
`GEORGE N. ROUSKAS, PH.D.
`
`Exhibit 2005Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 1
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`TABLE OF CONTENTS
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`INTRODUCTION ………………………………………………………
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`QUALIFICATIONS …………………………………..…………..
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`BASES OF OPINIONS …………………………………..…………..
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`APPLICABLE LEGAL STANDARDS …………………..………
`
`A. Ordinary Skill in the Art …………………………………
`
`B.
`
`Claim Construction
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`…………………………………
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`C. Obviousness (35 U.S.C. § 103) …………………………..
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`Page
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`1
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`1
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`6
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`6
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`6
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`8
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`9
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`TERMINOLOGY ………………………………………………………
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`12
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`i
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`
`I.
`
`II.
`
`INTRODUCTION ………………………………………………
`
`1
`
`TERMINOLOGY ……………………………………………… 1
`
`GROUND I – DIACAKIS DOES NOT OBVIATE
`CLAIMS 1-6, 15, and 17 ………..………………………………………
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`12
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`A. Diacakis (Exhibit 1007) … … … … … … … … … … … … … 1
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`1.
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`Diacakis Does Not Provide Or Support Messages …
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`A. Diacakis (Exhibit 1007) …………………………………
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`1.
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`Diacakis Does Not Provide Or Support Messages …
`
`8
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`12
`
`18
`
`B.
`
`[1.0] “Network-Based Portal” …………………………..
`
`919
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`1.
`
`2.
`
`3.
`
`4.
`
`A “Portal” Is Not A User Terminal Or A
`Client Communication Device ……………………
`
`211
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`The ʼ727 Specification Defines “Portal”
`As A “Gateway” And Defines A “Gateway” As
`A “Networked Server” …………………………..
`
`The Functionality Of A “Portal” Is Different
`Than That Of A Client Communication Device …..
`
`1121
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`1222
`
`Requiring The “Portal” To Be On The Sender’s
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`
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`i
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`
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`Client Communication Device Leads To A
`Contradiction …………………………………
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`4.5. The User Interface Of Diacakis Is Not A
`“Portal” ………………………………………..
`
`5.6. Dr. Almeroth’s Testimony Is Not Supported By
`The Specification …………………………………
`
`6.7. Patent Owner’s Construction Of A NBP Does
`Not Exclude A Preferred Embodiment…………….
`[1.0] Summary …………………………………
`
`8.
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`1323
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`1424
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`1625
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`1726
`19
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`8.
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`[1.0] Summary …………………………………
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`29
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`A.C. [1.3] “Any Of The Plurality Of Modes Of
`Communication” “All Depending On An
`Identifier” “Previously Set By The Second
`User” Is Not Obviated By Diacakis ……………………
`
`1.
`
`Requiring The “Portal” To Be On The
`Sender’s Client Communication
`Device Leads To A Contradiction …………….
`
`2029
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`2231
`
`C.
`
`D.
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`[1.5] Is Not Obviated By Diacakis ……………………
`
`23
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`E
`Diacakis
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`[1.5] Is Not Obviated By
`……………………
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`32
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`B.E. [1.8] “Even When The Message Is Received”
`“Contact Information” “Is Not Provided” Is
`Not Obviated By Diacakis
`…………………………..
`
`1.
`
`2.
`
`The Petitioner’s Positions On “NBP” And
`“Contact Information Not Provided”
`Are Incompatible …………………………………
`
`Diacakis Teaches That The Recipient’s
`Contact Information Is Sent To The
`Sender’s Client Device …………………………..
`ii
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`2433
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`2433
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`2634
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`
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`i.
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`ii
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`iii
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`Diacakis Teaches A POSITA That
`Contact Information Is Provided
`
`………
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`2635
`
`The Board Already Determined That
`Diacakis Teaches A POSITA That
`Contact Information Is Provided
`
`………
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`29
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`Judge Chang Also Determined That
`Diacakis Teaches A POSITA That
`Contact Information Is Provided ………
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`30
`
`iii
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`ii
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`iii
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`The Board Already Determined That
`Diacakis Teaches A POSITA That
`Contact Information Is Provided
`
`
`
`
`………
`
`Judge Chang Also Determined That
`Diacakis Teaches A POSITA That
`Contact Information Is Provided
`
`
`
`………
`
`
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`
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`
`
`38
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`38
`
`3.
`
`Diacakis’s Blocked Users Do Not Receive
`A Message ………………………………………..
`
`3139
`
`4.
`
`[1.8] Summary …………………………………
`
`31
`
`[3.0] … … … … … … … … … … … … … … … … … … … … … 31
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`[6.0] … … … … … … … … … … … … … … … … … … … … … 31
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`[9.0] … … … … … … … … … … … … … … … … … … … … … 31
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`[17.0] ………………………………………………………
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`4.
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`[1.8] Summary …………………………………
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`32
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`39
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`[3.0] … … … … … … … … … … … … … … … … … … … … …
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`[6.0] … … … … … … … … … … … … … … … … … … … … …
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`[9.0] … … … … … … … … … … … … … … … … … … … … …
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`40
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`40
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`40
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`[17.0] ………………………………………………………
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`41
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`F.
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`G.
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`H.
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`I.
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`F.
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`G.
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`H.
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`I.
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`GROUND II – CLAIMS 7-9 ARE NOT RENDERED
`OBVIOUS BY DIACAKIS AND LOVELAND …………..……….
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`GROUND III – CLAIM 16 IS NOT RENDERED
`OBVIOUS BY DIACAKIS AND TAKAHASHI ……………..…….
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`3241
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`3341
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`GROUND IV – HULLFISH COMBINED WITH
`TANIGAWA DOES NOT OBVIATE CLAIMS
`
`iv
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`
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`1-3, 6, 15, and 17 TO A POSITA …………..……………………..
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`3341
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`A. Tanigawa (Exhibit 1010) …………………………………
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`B. Hullfish (Exhibit 1011) …………………………………
`
`A.
`
`Tanigawa (Exhibit 1010) …………………………………
`
`B. Hullfish (Exhibit 1011) …………………………………
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`C. A POSITA Would Not Be Motivated To Combine
`Tanigawa And Hullfish To Implement The Claimed
`Invention Of The ʼ727 Patent …………………………..
`
`1.
`
`1.
`
`Tanigawa And Hullfish Are Incompatible ………
`
`Tanigawa And Hullfish Are Incompatible ………
`
`1.2. Petitioner’s Alleged Motivation To
`Combine Is Nonsense …………………………..
`
`D.
`
`D.
`
`[1.0] “Network-Based Portal” …………………………..
`
`[1.0] “Network-Based Portal” …………………………..
`
`1.
`
`2.
`
`3.
`
`1.
`
`4.
`
`A “Portal” Is Not A User Terminal Or
`A Client Communication Device
`…………….
`
`The ʼ727 Specification Defines “Portal” As
`A “Gateway” And Defines A “Gateway”
`As A “Networked Server”
`…………………..
`
`The Functionality Of A “Portal” Is
`Different Than That Of A Client
`Communication Device …………………………..
`
`Petitioner’s Construction Is Contradictory ………
`
`Petitioner’s Construction Is Contradictory ………
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`33
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`39
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`42
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`47
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`4047
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`40
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`48
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`4351
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`46
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`53
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`4855
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`4855
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`4956
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`50
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`57
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`v
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`4.5. Tanigawa’s User Interface Is Not A
`“Network-Based Portal” …………………………..
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`5158
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`E.
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`F.
`
`G.
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`[1.3] “Any Of The Plurality Of Modes Of
`Communication” “All Depending On An
`Identifier” Is Not Obviated By Tanigawa And
`Hullfish ………………………………………………
`
`[1.4] “Block” Is Not Rendered Obvious By
`The Combination ………………………………………..
`
`[1.5] The Combination Does Not Obviate
`“Enabling The First Message” “Depending
`On The Identifier” “In View Of The Second
`User Not Blocking The First User” ……………………
`
`5460
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`5662
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`5864
`
`E.
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`[1.8] Is Not Obviated By The Combination …………….
`
`58
`
`H.
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`[1.8] Is Not Obviated By The Combination …………….
`
`64
`
`1.
`
`2.
`
`The Petitioner’s Positions On “NBP”
`And “Contact Information Not Provided”
`Are Incompatible …………………………………
`
`5864
`
`The Combination Teaches That The
`Recipient’s Contact Information Is
`Sent To The Sender’s Client
`Communication Device …………………………..
`
`5966
`
`i.
`
`ii.
`
`iii.
`
`Tanigawa Teaches A POSITA That
`Contact Information Is Provided
`
`……… 6066
`
`Tanigawa Teaches A POSITA That IM
`Clients Receive Presence Information ……… 6269
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`Tanigawa Teaches A POSITA That IM
`Clients Use Client Addresses To Initiate
`Communication …………………………..
`vi
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`6470
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`
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`3.
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`4.
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`5.
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`Tanigawa Does Not Teach Or Suggest Hiding
`Contact Information …………………………..
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`Petitioner’s Reliance On Dr. Almeroth Is
`Misplaced ………………………………………..
`
`6471
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`6571
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`Petitioner’s Argument Is Wrong And Is
`Outweighed By Patent Owner’s Evidence ……… 6773
`
`6.
`
`[1.8] Summary …………………………………
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`68
`
`I.
`
`J.
`
`[3.0] … … … … … … … … … … … … … … … … … … … … …
`
`[6.0] … … … … … … … … … … … … … … … … … … … … …
`
`68
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`68
`
`K.
`
`[17.0] ………………………………………………………
`
`6.
`
`[1.8] Summary …………………………………
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`69
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`74
`
`I.
`
`J.
`
`[3.0] … … … … … … … … … … … … … … … … … … … … … 74
`
`[6.0] … … … … … … … … … … … … … … … … … … … … … 74
`
`K.
`
`[17.0] ………………………………………………………
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`GOUND V – CLAIMS 7-9 ARE NOT RENDERED
`OBVIOUS BY TANIGAWA, HULLFISH, AND
`LOVELAND
`………………………………………………………
`………………………………………………
`GROUND VI – CLAIM 16 IS NOT
`RENDERED OBVIOUS BY TANIGAWA,
`HULLFISH, AND
`TAKAHASHI ………………………………………………
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`IX. CONCLUSION ………………………………………………
`
`74
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`75
`69
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`69
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`70
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`vii
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit 2001
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`Complaint
`
`Order Setting
`
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`Exhibit 2002 Epic Games Inc.’s Preliminary Invalidity Contentions Exhibit 2003
`Markman Hearing
`TAKAHASHI ………………………………………………………
`
`75
`
`76
`
`
`Epic Games Inc.’s Opening Claim Construction Brief Exhibit
`Exhibit 2004
`2005 Declaration of Dr. George N. Rouskas, Ph.D.
`Exhibit 2006
` Decision Denying Institution, IPR2022-00297
`(PTAB May 26, 2022)
`
`CONCLUSION ………………………………………………………
`
`
`
`Exhibit 2007
`
`Judge Chang, IPR2022-00294, Paper No. 13
`(PTAB June 7, 2022) (dissent)
`
`Exhibit 2008
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`CV of Dr. George N. Rouskas, Ph.D.
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`
`
`vii
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`
`
`INTRODUCTION
`Patent Owner, IngenioShare, LLC submits this Response
`1. My name is George Rouskas. I have been retained as an expert
`
`witness to provide my independent opinions in regards with matters at issue in the
`
`Petition for inter partes review of U.S. Patent No. 10,708,727, Case No. (“the ’727
`
`Patent”) in the IPR2022-00291, and the subsequent . I have been retained by
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`IngenioShare LLC, the Patent Owner, in the above proceeding.
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`2.
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`Unless otherwise noted, the statements made herein are based on my
`
`personal knowledge, and if called to testify about this declaration, I could and
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`would do so competently and truthfully.
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`3.
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`A detailed record of my professional qualifications including cases in
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`which I was an expert has been submitted as Exhibit 2008 and is summarized in
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`Section II, infra.
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`4.
`
`I am not a legal expert and offer no opinions on the law. However, I
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`have been informed by counsel of the various legal standards that apply, and I have
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`applied those standards in arriving at my conclusions.
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`QUALIFICATIONS
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`5.
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`I am an Alumni Distinguished Graduate Professor with Tenure in the
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`Department of Computer Science at North Carolina State University (NC State),
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`where I also serve as the Director of Graduate Programs. I am an experienced
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`researcher and educator in the field of computer networking, with expertise in
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`1
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`Internet architectures and protocols, virtualization and cloud computing, mobile
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`devices, network devices, network security and security protocols, in a variety of
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`applications including providing for the protection of information transmitted
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`between devices within and among networks.
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`6.
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`I have thirty-three years of experience in computer networking since I
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`received my bachelor’s degree in 1989. I have twenty-eight years of experience as
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`a professor in the Department of Computer Science of NC State.
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`7.
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`I have taught courses on computer networks, Internet protocols, data
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`structures and computer performance evaluation. In 1997, I created one of the
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`world’s first graduate level courses on Internet Protocols, which I continue to teach
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`regularly, and in which I cover in depth topics related to wireless and mobile
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`networks and real-time communications.
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`8.
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`In my career in this field, I have received numerous accolades for my
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`contributions to computer networking, including being elected as Fellow of the
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`IEEE in 2012. Other accolades include the Outstanding Service Award for the
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`Optical Networking Technical Committee (ONTC) of the IEEE Communication
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`Society (2019); the Joyce Hatch Service Award from the NC State Chapter of the
`
`Association for Computing Machinery/Association of Information Technology
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`Professionals (ACM/AITP) (2018); the title of Distinguished Lecturer in the IEEE
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`(2010-2012); an IBM Faculty Award (2007); the Best Paper Award for the
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`2
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`International Workshop on End-to-End Virtualization and Grid Management
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`(EVGM) (2007) (with C. Castillo and K. Harfoush); the Best Paper Award for the
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`International Symposium on Communication Systems, Networks and Digital
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`Signal Processing (CSNDSP) (2006) (with B. Chen and R. Dutta); the ALCOA
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`Foundation Engineering Research Achievement Award, NC State College of
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`Engineering (2004); the Alumni Outstanding Research Award, NC State (2003);
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`the CAREER Award from the National Science Foundation (1997); and the
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`Graduate Research Award from the Georgia Tech College of Computing (1994).
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`9.
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`I received my Ph.D. in Computer Science (Georgia Institute of
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`Technology, 1994); M.S. in Computer Science (Georgia Institute of Technology,
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`1991); and B.S. in Computer Engineering (National Technical University of
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`Athens, 1989).
`
`10.
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`In 2000-2001, while on Sabbatical from NC State, I worked as
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`Network Architect for Vitesse Semiconductor, where I was responsible for the
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`design of a state-of-the-art 2.5 Gbps network processor.
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`11. My work as an academic began in 1994, when I joined NC State as an
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`Assistant Professor. In 1999, I was promoted to Associate Professor with Tenure.
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`In 2002, I was promoted to the position of Professor.
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`12.
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`I have held visiting positions on the faculties of a number of
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`international universities, including positions as a Distinguished Scientist at King
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`3
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`Abdulaziz University (Saudi Arabia, 2013-2021); Visiting Professor at the
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`Laboratoire d’Informatique University of Paris 6 (France, October 2012); Visiting
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`Professor at the Universidad Tecnica Federico Santa Maria (Chile, December
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`2008); and Visiting Professor at the Laboratoire de Méthodes Informatiques
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`University of Evry (France, July 2006, December 2002, June 2000).
`
`13.
`
`I have received funding from numerous agencies, foundations and
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`companies for research on network design and communication. The sources of
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`funding for this research include the National Science Foundation (NSF), the
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`Defense Advanced Research Projects Agency (DARPA), the National Security
`
`Agency (NSA), Microsoft, IBM and Cisco.
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`14.
`
`I have served in a number of leadership roles for the IEEE, including
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`as Chair of the IEEE Communications Society’s Distinguished Lecturer Selection
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`Committee (2016-2017); Vice Chair of the IEEE Communications Society’s
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`Technical and Educational Activities Council (2016-2017); and Chair of the IEEE
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`Communications Society’s Optical Networking Technical Committee (2016-2017).
`
`15.
`
`I have served in various founding, editorial and leadership positions
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`for publications in my field, including as founding Editor-in-Chief of IEEE
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`Networking Letters (2018-2021); founding Editor-in-Chief, Elsevier Optical
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`Switching and Networking Journal (2004-2017); Associate Editor, IEEE/OSA
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`Journal of Communications and Networking (2010-2012); Co-Guest Editor, JCM
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`4
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`
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`Journal of Communications, Special Issue on the “Advances in Communications
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`and Networking,” vol. 6, no. 9, December 2011; Associate Editor, IEEE/ACM
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`Transactions on Networking (2000-2004); Associate Editor, Computer Networks
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`(2001-2004); Associate Editor, Optical Networks (2000-2004); and Co-Guest
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`Editor, IEEE Journal on Selected Areas in Communications, Special Issue on
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`“Protocols for Next Generation Optical WDM Networks,” vol. 18, no. 10, October
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`2000.
`
`16.
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`I have graduated twenty-five Ph.D. students. Two have received
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`Ph.D. dissertation awards, one has received an NSF Career award, one became an
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`NSA Fellow, and one has been inducted in the NC State Computer Science Alumni
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`Hall of Fame. Three of my former Ph.D. students became Assistant Professors
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`upon graduation, and the rest joined significant technology companies or research
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`institutes, including RENCI (UNC-Chapel Hill), IBM Research, Google,
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`Facebook, Cisco, Oracle, Ericsson, Riverbed Technologies, Sprint, and Sierra
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`Wireless, among others. I have also graduated twelve M.S. thesis students.
`
`17. During the course of my career, I have had more than 200 scientific
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`articles, three books, and ten book chapters published, which have collectively
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`received more than 9,400 citations (Google Scholar, March 14, 2022). These are
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`summarized in attached my curriculum vitae (see Ex. 2002).
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`5
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`BASES OF OPINIONS
`
`18.
`
`In the course of conducting my analysis and forming my opinions, I
`
`have reviewed at least the items listed below:
`
`i.
`
`ii.
`
`U.S. Patent No. 10,708,727 and its prosecution history;
`
`Petition in IPR2022-00291, including the exhibits;
`
`iii. Declaration of Almeroth (Exhibit 1003);
`
`iv.
`
`vi.
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`Institution Decision in IPR2022-00291;
`
`Exhibit 2001, Complaint;
`
`vii. Exhibit 2002, Epic Games Inc.’s Preliminary Invalidity Contentions;
`
`viii. Exhibit 2003, Order Setting Markman Hearing;
`
`ix.
`
`Exhibit . For2004, Epic Games Inc.’s Opening Claim Construction
`Brief;
`
`x.
`
`Exhibit 2006, Decision Denying Institution, IPR2022-00297 (PTAB
`
`May 26, 2022); and
`
`xi.
`
`Exhibit 2007, Judge Chang, IPR2022-00294, Paper No. 13 (PTAB
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`June 7, 2022) (dissent).
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`APPLICABLE LEGAL STANDARDS
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`A.
` the reasons explained herein,
`A. Ordinary Skill in the Art
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`1.
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` the patentability of all Challenged Claims
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`19. My opinions in this declaration are based on the understandings of a
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`6
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 16
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`person of ordinary skill in the art, which I understand is sometimes referred to as
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`an “ordinary artisan” or by the acronyms “POSITA” (person of ordinary skill in the
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`7
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 17
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`art) or “PHOSITA” (person having ordinary skill in the art), as of the time of the
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`invention, which I understand is here assumed to be at least as early as April 27,
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`2005 (Exhibit 1003, Almeroth Declaration at 32, ¶72). I understand that the person
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`of ordinary skill in the art is a hypothetical person who is presumed to have known
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`the relevant art at the time of the invention. By “relevant,” I mean relevant to the
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`challenged claims of the ’727 Patent.
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`2.
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`20.
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` should be confirmed.
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`I understand that, in assessing the level of skill of a person of ordinary
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`skill in the art, one should consider the type of problems encountered in the art, the
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`prior solutions to those problems found in the prior art references, the rapidity with
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`which innovations are made, the sophistication of the technology, the level of
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`education of active workers in the field, and my own experience working with
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`those of skill in the art at the time of the invention.
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`21.
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`In this case, Dr. Almeroth has asserted in his declaration that a person
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`of ordinary skill in the art (POSITA) at the time of the ’727 Patent would have had
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`“a Bachelor’s degree in Computer Science or an equivalent field and three to five
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`years of experience working with Internet communication systems. Additional
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`education might compensate for less experience, and vice-versa.” Exhibit 1003,
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`Almeroth Declaration at 42, ¶96. I have employed Dr. Almeroth’s definition in
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`this declaration.
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`8
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 18
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`22.
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`I was at the time of invention, and am, at least one of more than
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`ordinary skill in the art through my education and research experience. As of the
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`date of the invention, I was and am very familiar with telecommunications
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`systems, Internet communications systems, computer networks, communications
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`protocols, Internet protocols, including systems and protocols related to voice
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`communications, SMS and text communications, group communications, and
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`wireless communications. Indeed, I am very familiar with people having this level
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`of skill in the area of Internet communications systems and protocols. I have been
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`teaching undergraduate and graduate level courses in computer network
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`architecture and protocols, including various techniques for voice communications,
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`SMS and text communications, group communications, and wireless
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`communications.
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`B. Claim Construction
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`23.
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`I understand that claims of the ʼ727 patent in this IPR are generally
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`interpreted according to their ordinary and customary meaning taking into
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`consideration the so-called “intrinsic evidence” of the patent consisting of (1) the
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`claim language; (2) the specification; and (3) the prosecution history. I understand
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`that the Board has discretion to take into consideration so-called “extrinsic
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`evidence” including references (prior art and non-prior art) as well as definitions
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`from dictionaries and treatises.
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`9
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 19
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`24.
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`I understand that claim terms may be explicitly defined in the patent
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`specification, or they may be implicitly defined through consistent usage in the
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`specification. I also understand that the scope of claim terms may be limited by
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`statements in the specification or prosecution history where the applicant clearly
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`disavows or disclaims subject matter in a clear and unmistakable manner.
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`C. Obviousness (35 U.S.C. § 103)
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`25.
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`I have been informed that a patent may be invalid if the claimed
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`invention considered as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art. 35 U.S.C. § 103. I have been
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`informed that the following factors must be evaluated to determine whether
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`Petitioner has met its burden of proof on obviousness: (1) the scope and content of
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`the prior art; (2) the level of ordinary skill in the art; and (3) the differences
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`between the claimed subject matter and the prior art. Based on these factual
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`inquiries, it must then be determined, as a matter of law (4) whether or not the
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`claimed subject matter as a whole would have been obvious to one of ordinary skill
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`in the art at the time the alleged invention was made.
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`26.
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`I understand that a finding of obviousness requires a showing that as
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`of the date of the invention (a) the prior art teaches or suggests each of the
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`limitations of the claim; (b) there exists an apparent reason or motivation to
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`combine and/or modify the prior art as proposed; and (c) a person of ordinary skill
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`10
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 20
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`would have a reasonable expectation of success, including that the proposed
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`combination and/or modification of the prior art would operate for its intended
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`purpose.
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`27.
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`I have been informed that a claim is not proved obvious merely by
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`demonstrating that each of the elements was independently known in the prior art.
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`I have been informed that many, if not all, inventions rely on building blocks
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`already known, and claimed inventions almost of necessity will likely be
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`combinations of what is already known.
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`28.
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`I have been informed that it is important in the obviousness inquiry to
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`identify whether a reason existed at the time of the invention that would have given
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`a POSITA motivation to combine and/or modify the prior art references in the
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`manner proposed by the Petitioners so as to arrive at the claimed invention. Put
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`another way, a finding of obviousness should be supported by an apparent reason
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`to combine and/or modify the prior art references as proposed by the Petitioners.
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`29.
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`I also understand that the obviousness inquiry should guard against
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`hindsight bias or hindsight reconstruction where after-the-fact reasoning is applied
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`to combine prior art elements using the claimed invention as a template, without
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`establishing that, as of the date of the invention, there exists a motivation to
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`combine or apparent reason to combine and/or modify the prior art as proposed.
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`11
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 21
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`30.
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`I have been informed that it is important in the obviousness inquiry
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`that it is understood how the combination of references is supposed to work. An
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`explanation of the operation of the combined references is often a prerequisite to
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`showing that a person of ordinary skill in the art would have been motivated to
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`make the proposed combination and would have had a reasonable expectation of
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`success in doing so.
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`31.
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`In assessing obviousness, I have been instructed to consider both the
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`ordinary creativity and common sense of the person of ordinary skill in the art. I
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`also understand that it is impermissible for common sense to be applied so as to fill
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`gaps in prior art that fails to teach or suggest a limitation of the claim.
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`32.
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`In assessing obviousness, I have been instructed that, in order to
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`qualify as proper prior art for an obviousness analysis, a reference must qualify as
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`analogous art. I have been informed that a reference qualifies as analogous art with
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`respect to the claims if it is either: (1) from the same field or endeavor as the
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`patent; or (2) the reference is reasonably pertinent to the particular problem
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`addressed by the invention. I have also been informed that in order for a reference
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`to be reasonably pertinent, it must logically have commended itself during the
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`ordinary course of development to an inventor’s attention in considering his
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`problem.
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`12
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 22
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`TERMINOLOGY
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`3.33. The claims of the ʼ727 patent use the term “first user” to refer to the
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`sender and “second user” to refer to the recipient of a message. The specification
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`and the prior art references use other terminology as well, including “user,”
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`“client,” “subscriber,” “person,” etc. To avoid confusion, Patent Owner uses the
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`terms “sender” and “recipient” herein.
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`GROUND I – DIACAKIS DOES NOT
`OBVIATE CLAIMS 1-6, 15, And 17
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`A. Diacakis (Exhibit 1007)
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`4.34. Diacakis teaches a “presence and availability management system.”.
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`Diacakis defines “presence” as “the ability of an individual to access a
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`particular communications network” and “availability” as “the willingness of an
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`individual who is present in one or more communications networks to be
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`reached by one or more persons.” Exhibit 1007, Diacakis at [0003], [0026],
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`[0027]; Exhibit 2005, Rouskas Declaration at 12, ¶34.].
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`1
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 23
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`5.35. Diacakis’s presence and availability (P&A) management system
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`determines whether a user is present on the network (i.e., whether the user’s device
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`is powered on); determines whether a user is available on the network (whether the
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`user is willing to receive communications from others); and communicates P&A
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`information to others, depending on the user’s preference.
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`2
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 24
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`Exhibit 1007, Diacakis at Fig. 4; Exhibit 2005, Rouskas Declaration at 12-13, ¶354.
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`6.36. Diacakis teaches that an individual may create profiles, such as the
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`office profile in Fig. 2, to instruct the P&A system how to distribute his/her
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`contact information. A profile specifies what subset of the individual’s contact
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`information subscribers at a given access level receive:
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`3
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 25
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`For example, an individual may have an office profile as indicated in
`FIG. 2. Thus, a subscriber with an access level of “Important” would
`receive the items marked “Yes” in the “Important” column, with the
`preference indicated (where appropriate), thereby making it very easy
`for “important” subscribers to communicate with the individual.
`Persons in the “Normal” access level would receive less contact
`information than persons in the “Important” access level, and persons
`in the “Restricted” access level would receive even less contact
`information.
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`Exhibit 1007, Diacakis at [0032] (emphasis added); Exhibit 2005, Rouskas
`Declaration at 13, ¶36.).
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`4
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 26
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`7.37. Diacakis Fig. 3 also shows that subscribers at the “Restricted” access
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`level receive only the voicemail number, subscribers in the “Normal” access level
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`receive the work phone number, voicemail number, and e-mail, and subscribers
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`in the “Important” access level receive two phone numbers, a voicemail number,
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`two e-mails, and an IM address. Also, “the indicator module 110 may determine
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`whether an address for each data content type (e.g., telephone, text (IM), video,
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`graphic, audio, etc.) has been transmitted from the P&A management server 12.”
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`Exhibit 1007, Diacakis at [0066]; Exhibit 2005, Rouskas Declaration at 14, ¶37.].
`
`8.38. According to Diacakis, the P&A management system employs a
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`publisher- subscriber model that updates the subscribers of an individual’s
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`presence and availability status as soon as the individual publishes a change to the
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`profile:
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`When the individual transmits a change in profile to the server 12, the
`server publishes the change to each of the connected clients 22 that
`are subscribers of the individual's information. The publisher-
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`5
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 27
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` subscriber model enables subscribers to observe a particular
`individual’s P&A information instantly.
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`Exhibit 1007, Diacakis at [0029]; Exhibit 2005, Rouskas Declaration at 14, ¶38.].
`
`9.39. Subscribers access an individual’s P&A information on their
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`client terminals via a “Contacts Program” akin to the Contacts application in
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`today’s smartphones. Exhibit 1007, Diacakis at [0056] and Fig. 8; Exhibit 2005,
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`Rouskas Declaration at8.
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`14-16, ¶39.
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`6
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 28
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`Contact Properties
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`Contact:
`
`Addresses:
`Volce
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`Work: (412) 555-1234
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`Work: (412) 556-2345
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`Voice Mall
`Work vail: (412) 558-1717
`Cell vmall: (412) 555-2222
`Hame vail: (472) 565-3333,
`
`Instant Message
`©) Jonathan@abeco.com
`CD) Jonathan@sdqeo.com
`E-mall
`Primary work E-mail: Jonathan@abe.com
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`Personal - wed based E-meil: janathan@adq.com
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`
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`7
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`Epic Games Ex. 1040
`Epic Gamesv. IngenioShare
`IPR2022-00291 p. 29
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`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 29
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`Contact Properties
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`Addresses:
`Work: (412) 555-1294
`
`Work: (442) 856-2545
`
`Voice Mall
`Work veriall: (412) 595-1909
`Gell wail: (412) 555-2722
`Hone viral: (4712) 585-3393
`Instant Message
`Jonathan@abceo.com
`
`3) jenathan@-edqes.com
`Primary work E-mail: jonathan@abs.com
`Personal - web based E-mail: jonathandpdq.com
`
`Et--- ‘Business
`ba-(BE) (IN) Alex
`
`
`1
`
`
`i
`
`
`
`
`Contact Properties
`
`Contact:
`
`| @) Jonathan
`Addresses:
`Volce
`
`Work: (412) 555-1234
`
`Work: (412) 556-2345
`
`Voice Mall
`Work vmail: (412) 555-1444
`Cell vmail: (412) 558-2222
`Home vmail: (442) 855-3383
`Instant Message
`(oa) Jonathan@abeco.com
`@) Jonathan@edaeo.com
`E-mall
`Primary work E-mail: jonathan@abs.com
`Personal -web based E-mail:jonathan@adq.cem
`
`i
`
`Friends
`+B) (i) Corby
`=
`nal
`~&) BY oynai
`~
`Tor
`@) C9) om
`--GB) Ca)Pete.
`School
`Misc
`}--@@) (i) Roberto
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`a i
`
`8
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`Epic Games Ex. 1040
`Epic Gamesv. IngenioShare
`IPR2022-00291 p. 30
`
`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 30
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`As shown in the left-hand window of Fig. 8, a subscriber has access to the
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`contact information of an individual:
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`As illustrated, the subscriber may navigate the list of names in
`the right hand window (“Contacts Program”) to access the P&A
`information regarding the highlighted individual in the left hand
`window (“Contact Properties”).
`
`Exhibit 1007, Diacakis at [0056]; Exhibit 2005, Rouskas Declaration at 14-16,
`
`¶39.]. For instance, the left-hand window in Fig. 8 shows multiple phone
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`numbers, voice numbers, IM addresses, and e-mails for the contact “Jonathan”
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`who is highlighted in the right-hand window of Fig. 8. Exhibit 2005, Rouskas
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`Declaration1007, Diacakis at 14-16,Fig. 8.
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`¶39.
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`9
`
`Epic Games Ex. 1040
`Epic Games v. IngenioShare
`IPR2022-00291 p. 31
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`10.40. Diacakis’s P&A management system updates the availability
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`information by updating the indicator next to each availa
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