UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner
`
`
`U.S. PATENT NO. 10,708,727
`
`Case IPR2022-00291
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`BECAUSE THE ROUSKAS DECLARATION MERELY REPEATS
`THE POR IT IS ENTITLED TO NO WEIGHT ............................................. 4
`III. GROUND I: CLAIMS 1–6, 15, 17 ARE RENDERED OBVIOUS BY
`DIACAKIS ...................................................................................................... 6
`A. Diacakis Teaches A “Network-Based Portal” ....................................... 6
`B.
`Diacakis Teaches “Messages” ............................................................. 14
`C.
`Diacakis Teaches That A Second User’s Contact Information Is
`Not Provided To Others By Virtue Of The Second User
`Receiving A Message .......................................................................... 17
`IV. GROUNDS II–III: CLAIMS 7–9 AND 16 ARE RENDERED
`OBVIOUS BY DIACAKIS IN VIEW OF LOVELAND AND
`TAKAHASHI, RESPECTIVELY ................................................................. 19
`V. GROUND IV: CLAIMS 1–3, 6, 15, 17 ARE RENDERED OBVIOUS
`BY TANIGAWA IN VIEW OF HULLFISH ............................................... 21
`A. A POSITA Would Have Been Motivated To Combine
`Tanigawa And Hullfish ....................................................................... 21
`Tanigawa Teaches A “Network-Based Portal” ................................... 24
`Tanigawa Teaches “Identifiers” .......................................................... 24
`Tanigawa Teaches That A Second User’s Contact Information
`Is Not Provided To Others By Virtue Of The Second User
`Receiving A Message .......................................................................... 26
`VI. GROUNDS V–VI: CLAIMS 7–9 AND 16 ARE RENDERED
`OBVIOUS BY TANIGAWA IN VIEW OF HULLFISH AND IN
`FURTHER VIEW OF LOVELAND AND TAKAHASHI,
`RESPECTIVELY .......................................................................................... 30
`VII. CONCLUSION .............................................................................................. 31
`
`B.
`C.
`D.
`
`
`
`ii
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
` Cases
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .......................................................................... 22
`Hulu, LLC v. Sito Mobile R&D IP, LLC,
`IPR2021-00304, Paper 30 ..................................................................................... 4
`Juniper Networks, Inc. v. Brixham Solutions, Ltd.,
`IPR2014-00425, Paper 38 ..................................................................................... 4
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 14
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 8
`Uber Techs., Inc. v. X One, Inc.,
`957 F.3d 1334 (Fed. Cir. 2020) .......................................................................... 22
`Statutes
`35 U.S.C. § 103(a) ............................................................................................. 29, 30
`
`
`Unless otherwise noted, all emphasis is added.
`
`
`
`iii
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`LIST OF PETITIONER’S UPDATED EXHIBITS
`Description
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`
`
`U.S. Patent No. 10,708,727
`
`File History of U.S. Patent No. 10,708,727
`
`Declaration of Dr. Kevin Almeroth in Support of Inter Partes Review
`of U.S. Patent No. 10,708,727
`Curriculum Vitae of Dr. Kevin Almeroth
`
`U.S. Provisional Patent Application No. 60/527,565
`
`U.S. Provisional Patent Application No. 60/689,686
`
`U.S. Patent Application 2002/0116461 (“Diacakis”)
`
`U.S. Patent No. 7,287,056 (“Loveland”)
`
`U.S. Patent Application 2002/0183114 (“Takahashi”)
`
`U.S. Patent Application 2004/0001480 (“Tanigawa”)
`
`U.S. Patent No. 7,428,580 (“Hullfish”)
`
`IngenioShare’s Infringement Contentions in Texas Litigation
`
`Texas Litigation Proposed Scheduling Order
`
`Fourteenth Supplemental Order Regarding Court Operations Under
`the Exigent Circumstances Created by the COVID-19 Pandemic
`Judge Albright’s Standing Order re Inter-District Transfer
`
`Kurose, J. and Ross, K., Computer Networking: A Top-Down
`Approach Feature the Internet (2000)
`Kuehn, S., A Play Theory Analysis of Computer-Mediated
`Telecommunication (Apr. 20, 1990)
`Telecomputing in Japan
`
`Hernandez, R., ECPA and Online Computer Privacy (1988)
`
`iv
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`Description
`
`Exhibit
`No.
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`
`
`Miller, A., Applications of Computer Conferencing to Teacher
`Education and Human Resource Development (1991)
`Benimoff, N. and Burns, M., Multimedia User Interfaces for
`Telecommunications Products and Services (1993)
`Falconer, W. and Hooke, J., Telecommunications Services in the
`Next Decade (1986)
`Hine, N.A., et al., An Adaptable User Interface to a Multimedia
`Telecommunications Conversation Service for People with
`Disabilities (1995)
`Bazaios, A., et al., Multimedia Architecture Offering Open Distance
`Learning Services over Internet
`Stein, J., et al., Chat and Instant Messaging Systems (2002)
`
`U.S. Patent No. 6,241,612 (“Heredia”)
`
`U.S. Patent Application 2003/0216178 (“Danieli”)
`
`International Patent Application WO 01/45343 (“Davies”)
`
`Grinter, R. and Palen, L., Instant Messaging in Teen Life (2002)
`
`File History of U.S. Patent No. 8,744,407
`
`File History of U.S. Patent No. 9,736,664
`
`U.S. Patent No. 10,708,727 Claim Listing
`
`U.S. Patent No. 6,828,924 (“Gustavsson”)
`
`Patil, S. and Kobsa, A., The Challenges in Preserving Privacy in
`Awareness Systems (2003)
`Unused
`
`Unused
`
`Declaration of Yimeng Dou Pursuant to 37 C.F.R. 42.64(b)(2)
`
`Declaration of Jennifer A. Babbitt Pursuant to 37 C.F.R. 42.64(b)(2)
`
`v
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`Description
`
`Exhibit
`No.
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`Supplemental Declaration of Dr. Kevin Almeroth Pursuant to 37
`C.F.R. 42.64(b)(2)
`Comparison between Paper 14 (Patent Owner Response) and Ex.
`2005 (Declaration of Professor George N. Rouskas, Ph.D.)
`Liferay.com, “What Is A Web Portal?” available at
`https://www.liferay.com/resources/l/web-portal
`Gartner, “Mobile Portal,” available at https://www.gartner.com/
`en/information-technology/glossary/mobile-portal
`Deposition Transcript of Dr. George Rouskas
`
`
`
`vi
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`I.
`
`INTRODUCTION
`In the Institution Decision (“ID”), the Board credited Petitioner’s arguments,
`
`finding that “a reasonable likelihood that Petitioner would prevail in showing that at
`
`least one of claims 1–9 and 15–17 of the ’727 patent is unpatentable.” ID, 34. In its
`
`Patent Owner Response (“POR”), Patent Owner IngenioShare, LLC (“PO”) tacitly
`
`admits that Petitioner’s grounds render large swaths of the ’727 Patent obvious.
`
`Regarding Grounds I–III (Diacakis), PO does not specifically defend Claims 2–6,
`
`15, and 17. Regarding Grounds IV–VI (Tanigawa in view of Hullfish), PO does not
`
`specifically defend Claims 2, 3, 6, 15, and 17. The few arguments PO does raise are
`
`unavailing.
`
`Regarding Diacakis, PO addresses only a few independent claim limitations,
`
`but as discussed immediately below, none of PO’s arguments is meritorious.
`
`Moreover, all rely on an expert declaration that merely parrots the POR, which is
`
`entitled to no weight. Ex. 2005 (“Rouskas Declaration”).
`
`• First, PO argues Diacakis fails to teach the claimed “network-based
`
`portal” (“NBP”) because PO argues the term “portal” does not include the
`
`user interfaces Diacakis discloses. Yet, PO’s own expert, Dr. Rouskas,
`
`admitted the term is not limited in that way. Moreover, as the Board
`
`previously found, PO’s construction would exclude the ’727 Patent’s
`
`preferred embodiments of the invention. ID, 10–11.
`
`
`
`1
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`• Second, PO argues Diacakis does not allow users to communicate, but this
`
`ignores Diacakis’s clear disclosures (and the Board’s findings) of client-
`
`to-client communication. ID, 23.
`
`• Third, PO argues Diacakis fails to teach the negative limitation of a
`
`recipient’s contact information not being provided to a sender by virtue of
`
`the communication. Yet, as the Board determined, Diacakis expressly
`
`discloses that users control what contact information others may view. ID,
`
`23–24.
`
`PO’s arguments regarding Tanigawa and Hullfish are likewise unavailing:
`
`• First, PO argues a POSITA would not combine these references, but
`
`Petitioner and its expert, Dr. Almeroth, established several reasons why
`
`Hullfish’s blocking features would improve Tanigawa, which the Board
`
`credited. ID, 28–29. Instead, PO argues the entirety of the Hullfish
`
`invention would not be combined with Tanigawa, which is inconsistent
`
`with Petitioner’s position and unnecessary to establish obviousness. PO
`
`also argues Hullfish is “incompatible” with Tanigawa, but its expert
`
`admitted the opposite.
`
`• Second, PO repeats its argument that the combination does not teach the
`
`NBP, which is incorrect for the reasons indicated above.
`
`
`
`2
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`• Third, PO argues the combination does not teach “identifiers” because
`
`users’ nicknames are purportedly insufficient to route messages correctly.
`
`This argument improperly reads into the claims a sufficiency-of-routing
`
`requirement, for which PO has no basis.
`
`• Fourth, PO argues the combination does not teach the negative limitation,
`
`but its arguments are premised on a misreading of Tanigawa and the claim
`
`language. PO argues “presence information” provided to Tanigawa’s
`
`users
`
`includes “contact
`
`information,” but Tanigawa expressly
`
`distinguishes them, and only provides “presence information” to users. PO
`
`also improperly conflates users with users’ modes of communication (i.e.,
`
`users’ devices)—the negative limitation prohibits contact information
`
`from being provided to the user, not the user’s device.
`
`PO’s other arguments are likewise unavailing:
`
`• First, regarding the combination of Diacakis and Loveland, PO merely
`
`repeats its argument that Diacakis does not allow users to communicate,
`
`which is incorrect for the reasons indicated above.
`
`• Second, regarding the combination of Tanigawa, Hullfish, and Loveland,
`
`PO’s only argument is that Tanigawa and Loveland describe similar
`
`functionality—strengthening the motivation to combine.
`
`
`
`3
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`• Third, PO makes no specific argument regarding Takahashi other than
`
`reiterating the above arguments regarding Diacakis and Tanigawa, which
`
`are incorrect.
`
`Thus, Claims 1–9 and 15–17 are invalid and obvious.
`
`II. BECAUSE THE ROUSKAS DECLARATION MERELY REPEATS
`THE POR IT IS ENTITLED TO NO WEIGHT
`The Rouskas Declaration repeats the POR nearly verbatim. Ex. 1040.1 This
`
`is a classic example of a cursory expert declaration the Board disregards. See, e.g.,
`
`Hulu, LLC v. Sito Mobile R&D IP, LLC, IPR2021-00304, Paper 30 at 68 (declarant’s
`
`“cursory and unsupported testimony entitled to little weight” where it “repeat[ed]
`
`verbatim without any additional clarification Patent Owner’s contentions from the
`
`Patent Owner Response”). The Board previously disregarded another Rouskas
`
`declaration for this very reason. See Juniper Networks, Inc. v. Brixham Solutions,
`
`Ltd., IPR2014-00425 Paper 38, at 13 (Rouskas declaration afforded “little weight
`
`because his testimony is conclusory and unsupported by evidentiary explanations”).
`
`
`1 The declaration substantively differs from the POR only by citing to two webpages
`
`(Ex. 2005, 21), but these websites fail to advance PO’s NBP arguments, as discussed
`
`below in Section III.A.
`
`
`
`4
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`Here, the Rouskas Declaration is “entitled to little or no weight” for the same
`
`reasons. See 37 C.F.R. § 42.65(a).
`
`Dr. Rouskas’s deposition testimony further demonstrates that his declaration
`
`is unreliable. In PO’s preliminary response (“POPR”), it argued an NBP is “at the
`
`server-side” and cannot be a user interface in a client device. Paper 7, 1–2, 14–22.
`
`Dr. Rouskas admitted he was retained months after the POPR was filed and that he
`
`did not review the POPR, yet he claimed he conceived of PO’s NBP argument.
`
`Ex. 1043, 25:2–26:2, 53:23–54:14. This is not credible; indeed, his declaration
`
`copied-and-pasted several portions of the POPR:
`
`POPR (Paper 7)
`
`Rouskas Declaration (Ex. 2005)
`
`
`
`
`
`E.g. Paper 7, 22; Ex. 2005, ¶ 132; compare Paper 7, 7–9, with Ex. 2005, ¶¶ 47–48,
`
`119–21. His declaration should be given no weight for the additional reason that it
`
`appears to contain opinions he did not develop.
`
`Moreover, as explained below, at his deposition Dr. Rouskas contradicted his
`
`declaration
`
`and
`
`admitted
`
`the opinions
`
`therein
`
`rest on
`
`fundamental
`
`misunderstandings of the challenged claims and prior-art references. Because the
`
`
`
`5
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`Rouskas Declaration contains no expert analysis nonredundant of the attorney
`
`argument in the POR and is contradicted by Dr. Rouskas’s own deposition
`
`testimony, it should be afforded no weight.
`
`III. GROUND I: CLAIMS 1–6, 15, 17 ARE RENDERED OBVIOUS BY
`DIACAKIS
`Aside from the below limitations, PO does not dispute Diacakis teaches
`
`Claims 2–6, 15 and 17 and most of the elements of Claim 1. As to the few limitations
`
`PO does address, they are obvious.2
`
`A. Diacakis Teaches A “Network-Based Portal”
`As the Board recognized with respect to Element 1.0, giving the term
`
`“network-based portal” its “ordinary and customary meaning,” Diacakis discloses
`
`an NBP because it references a user interface in a client terminal connected to a
`
`P&A management server via a network. See ID, 10–11, 21–22; Pet., 35–36; Ex.
`
`1003, ¶¶ 115–16. In both the ’727 Patent and Diacakis, the claimed functionality
`
`appears in mobile phones—which PO admits are client devices. POR, 17.
`
`In the POR, PO revives the same argument the Board already rejected: that
`
`the NBP resides only at the server-side of a network and excludes user interfaces of
`
`
`2 PO addresses Claims 3, 6, 9, and 17 only with reference to Claim 1. POR, 31–32.
`
`
`
`6
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`“client communication devices such as Diacakis’s client terminal 22.” POR, 11.
`
`PO’s argument is wrong for several reasons.
`
`First, PO relies on the Rouskas Declaration’s offering of extrinsic definitions
`
`to show that “portals” are websites, but Dr. Rouskas admitted “[t]here’s nothing to
`
`limit the portal to just a server or a website.” Compare POR, 11, with Ex. 1043,
`
`60:7–61:8; see also id., 57:7–11 (declining to equate “portals” to websites), 58:5–9
`
`(same). Moreover, Dr. Rouskas admitted the two definitions in the Rouskas
`
`Declaration were cherry-picked from search results for “portal” rather than from any
`
`nuanced inquiry or analysis. Id., 62:24–63:10. This method selectively disregarded
`
`definitions that include the word “interface.” See Exs. 1041 (“A portal is a web-
`
`based platform that collects information from different sources into a single user
`
`interface[.]”), 1042 (“A mobile portal is an Internet gateway that enables mobile
`
`devices to connect remotely . . . typically via a Web browser interface.”). In any
`
`event, PO’s argument limiting “portals” to websites is based on a fundamental
`
`misunderstanding of the claim, which Dr. Rouskas yielded in deposition: the
`
`Rouskas Declaration claims the NBP cannot be in a client device because it must be
`
`“hosted on [a] web server[],” but Dr. Rouskas acknowledged no claim limitation
`
`requires the NBP to be “hosted.” Compare Ex. 2005, ¶ 49 and Ex. 1043, 84:11–14,
`
`with id., 84:16–85:11.
`
`
`
`7
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`Second, PO incorrectly argues the ’727 Patent defines “portal” as a “gateway”
`
`and that a gateway is always a “networked server.” POR, 11–12. But the
`
`specification states that “[a] communication gateway or a portal is formed”—not
`
`that the portal is a communication gateway. Ex. 1001, 4:3–5. Indeed, the
`
`specification treats the phrase “portal or gateway” differently from the singular
`
`“portal,” using these phrases to describe different embodiments, indicating that
`
`portals and gateways are two alternative means to establish communication. See id.,
`
`4:29–43; 4:43–53, 5:44–64. The specification further states that “[o]ne example of
`
`a networked server is a gateway computer”—not that all gateways are servers.
`
`Ex. 1001, 16:1–3. Dr. Rouskas admits as much. Ex. 1043, 96:20–97:1 (“It doesn’t
`
`say that [gateway] means network[ed] server, yes.”); see also id., 94:18–95:1; Ex.
`
`1003, ¶¶ 115–16. Dr. Rouskas nevertheless opines that the word “or” defines
`
`“portal” as “gateway.” Id., 90:17–24. But the ’727 Patent’s recitation of “portal or
`
`gateway” means the two are alternatives, not that one redefines the other. See
`
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012)
`
`(holding that the phrase “embedded within or attached to” did not redefine
`
`“embedded” as “attached” or vice versa).
`
`Third, PO argues the NBP and client devices have different functionalities
`
`because the NBP “allows worldwide access to the user,” whereas a “client
`
`communication device is ‘associated with a user.’” POR, 12–13. This is a
`
`
`
`8
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`distinction without a difference. As the Petition explains, Diacakis’s client terminal
`
`(1) connects a user to a network via the NBP and (2) is associated with that user.
`
`Pet., 35–37. For instance, as Dr. Rouskas admitted, a user’s mobile phone allows
`
`worldwide access to that user by allowing others to communicate with the user.
`
`Ex. 1043, 110:20–24, 114:2–5 (“One is worldwide access to the user. A phone
`
`provides that, there’s no question about that.”). PO offers no explanation why such
`
`a device “is not accessible ‘worldwide.’” POR, 17.
`
`Fourth, PO counters a strawman argument (that only the sender’s device
`
`contains the NBP) that Petitioner did not advance. POR, 13–14, 19. Relying on this
`
`mischaracterization, PO concludes Diacakis cannot meet both the NBP and the
`
`negative limitation (i.e., communicating without providing contact information)
`
`because senders’ devices would have access to others’ contact information. Id. This
`
`is incorrect.
`
`As the Petition explained, all users (including senders and recipients) use
`
`Diacakis’s NBP to connect to Diacakis’s network—i.e., the NBP does not solely
`
`exist in a sender’s device. Pet., 35–37; Ex. 1003, ¶¶ 115–16. As Diacakis explains,
`
`senders and recipients access the NBP via their respective devices. See Ex. 1007,
`
`[0031]. Accordingly, as shown below in Diacakis’s Figures 1 and 9, all users of
`
`communications system 10 access it via client terminals 22, which contain user
`
`
`
`9
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`interface 112 (i.e., the NBP), indicating that both senders and recipients use this
`
`interface:
`
`
`
`
`
`10
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`
`
`Ex. 1007, Figs. 1, 9. PO’s argument that Diacakis’s interface only allows sending
`
`(not receiving) messages fails for the same reasons. POR, 14–15.
`
`Fifth, although the Board found PO’s argument excluded a preferred
`
`embodiment of the ’727 Patent (specifically Figures 7–11), PO insists its argument
`
`did not because the figures allegedly describe methods performed after receiving a
`
`message, rather than enabling receipt of a message. POR, 17–19. That is incorrect.
`
`The ’727 Patent’s claims that “messages are eligible to be received by the second
`
`user via the network-based portal.” Ex. 1001, cl. 1. In fact, as the Board understood,
`
`key “recipient” functionality (i.e., allowing users to specify who may contact them
`
`and see their contact information), takes place “all in the phone,” since these phones
`
`“automatically manage the communication.” Id., 7:6–15; ID, 10–11. Thus, the NBP
`
`
`
`11
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`not only enables receipt of messages but also manages them. See Ex. 1003, ¶¶ 131–
`
`32.
`
`Moreover, contrary to PO’s argument, the client devices described by the ’727
`
`Patent enable messages to be received, as annotated in Figure 7 below:
`
`
`
`12
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`Ex. 1001, Fig. 7; see also id., Figs. 8–11, 3:12–19, 9:4–10:3, 10:17–13:27, 14:64–
`
`
`
`15:54.
`
`
`
`13
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`
`Faced with this fact, PO argues these disclosures are “not embodiments for
`
`‘managing electronic communications using at least a network-based portal’ as are
`
`the claims of the ’727 Patent.” POR, 18. This is not correct. The ’727 Patent’s sole
`
`independent claim recites an NBP—thus, because the patent’s figures are
`
`embodiments of the patent, they must include an NBP. PO remains silent as to the
`
`purpose of these disclosures, if not related to the claims. As the Board recognized,
`
`a construction “which excludes the preferred embodiment is rarely, if ever correct.”
`
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755
`
`(Fed. Cir. 2016) (internal quotation marks omitted). PO’s argument thus fails.
`
`B. Diacakis Teaches “Messages”
`With respect to Elements 1.3 and 1.5, PO argues Diacakis “does not teach a
`
`system that actually allows a user to make a communication.” POR, 20; see id., 8,
`
`21–23, 31–32. That is wrong. As the Board concluded, Diacakis discloses a first
`
`user sending a message to a second user. ID, 23; Pet., 37–38; Ex. 1003, ¶¶ 117–21.
`
`Indeed, Diacakis expressly teaches two client devices communicating with each
`
`other: “a subscriber at client terminal 22 may first attempt to communicate with an
`
`individual at client terminal 140 via one or more intermediate relay hosts 142.”
`
`Ex. 1007, [0072]. Relay host 142 can be “a presence and availability host” such as
`
`Diacakis’s P&A server. See id. This client-to-client messaging is shown below in
`
`Figure 11, which Dr. Rouskas acknowledged in deposition:
`
`
`
`14
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`
`
`See id., Fig. 11; Ex. 1043, 145:10–16; 422:19–423:1 (admitting Diacakis teaches
`
`client-to-client communication either with a P&A host or without one). Diacakis’s
`
`teachings “provide a user-friendly interface allowing subscribers to contact
`
`individuals without having to be concerned about different communication devices,
`
`their different communication devices, their addresses and capabilities.” See Pet.,
`
`46 (citing Ex. 1007, [0062]). Rather than knowing others’ phone numbers or
`
`addresses, a user “may instead refer to a single indicator and use that information to
`
`initiate point-to-point contact.” See id. The fact that Diacakis’s users may
`
`
`
`15
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`communicate without knowing others’ contact information necessarily means that
`
`they use Diacakis’s platform to communicate.
`
`
`
`Moreover, the Board expressly noted that even if Diacakis had not expressly
`
`disclosed a recipient responding to a sender’s message, such a response would have
`
`been obvious. ID, 23; see also Pet., 44; Ex. 1007, [0023] (noting that elements of
`
`“a typical communications network” (e.g., two users sending messages back and
`
`forth) are not discussed in detail “because such elements are well known in the art”).
`
`Accordingly, Diacakis not only discloses one user messaging another, but also
`
`renders at least obvious two users sending messages back and forth.
`
`Despite this, PO argues Diacakis only informs users of other user’s presence
`
`and availability—essentially reducing Diacakis to a digital phone book—because in
`
`a different proceeding (concerning the ’407 Patent), the Board concluded Diacakis
`
`does not teach a “server receiv[ing] the ‘message’ the subscriber is trying to convey.”
`
`POR, 24 (citing Ex. 2006 at 26). But PO misreads the Board’s findings. Regarding
`
`the ’407 Petition, while the Board found Diacakis teaches both a server and “point-
`
`to-point contact” between users, its basis for denial was its finding that messages are
`
`not received by Diacakis’s server. Ex. 2006 at 25. Because the ’407 Patent (but not
`
`the ’727 Patent) requires the server receive messages, the Board did not institute the
`
`proceeding. Id. at 22 (citing ’407 Patent, cl. 1), 26. The Board did not find that
`
`
`
`16
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`Diacakis failed to teach “messages,” as PO suggests, nor would that be consistent
`
`with its ID in this proceeding. ID, 21–23.
`
`C. Diacakis Teaches That A Second User’s Contact Information Is
`Not Provided To Others By Virtue Of The Second User Receiving
`A Message
`As the Board recognized with respect to Element 1.8, Diacakis teaches the
`
`negative limitation of “not provid[ing]” contact information because it expressly
`
`teaches that users may control what contact information others may view. ID, 23–
`
`24; Pet., 46; Ex. 1003, ¶¶ 133–34. As explained below, PO’s arguments to the
`
`contrary are incorrect.
`
`First, PO again argues the negative limitation is inconsistent with an
`
`interpretation that the NBP is within the sender’s device. But as explained above in
`
`Section III.A, this argument misrepresents Petitioner’s argument.
`
`Second, PO relies on Judge Chang’s dissenting opinion in a related
`
`proceeding to argue that Diacakis does not teach the negative limitation (POR, 29–
`
`30), but the Board considered and rejected those views in granting institution.
`
`Neither the POR nor the Rouskas Declaration provides any additional analysis or
`
`evidence related to those already-considered views. Ex. 1043, 193:4–13. Moreover,
`
`as explained in the following paragraphs, PO’s arguments are unavailing.
`
`Third, PO argues the negative limitation is unmet because Diacakis includes
`
`examples (including Figure 8) where users’ contact information is provided to
`
`
`
`17
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`others. POR, 28–29. Yet, as the Board previously recognized, Diacakis’s users can
`
`choose (but are not required) to disclose their contact information, thereby satisfying
`
`the negative limitation. ID, 23–24; Pet., 46; Ex. 1003, ¶¶ 133–34. PO misleadingly
`
`quotes half a sentence from Diacakis to argue that when a subscriber attempts to
`
`send an IM, “server 12 provides the appropriate IM address to the subscriber.” Id.,
`
`citing Ex. 1007 [0062]. But tellingly, the remainder of the sentence explains that the
`
`server “tak[es] into account [the recipient’s] preference settings for the subscriber’s
`
`access group as stored.” Ex. 1007, [0062]. Thus, the Diacakis system does not
`
`provide contact information simply because one user contacts another; rather, it
`
`determines whether or not to provide information subject to the recipient’s
`
`preferences.
`
`Fourth, PO improperly conflates two techniques that allow Diacakis’s users
`
`to control their interactions. PO argues that Diacakis’s descriptions of “blocked”
`
`individuals fail to teach the negative limitation that contact information is not
`
`provided. POR, 31 (citing Ex. 2007, 72–73). Blocking, however, is not the part of
`
`Diacakis that Petitioner relies on to teach the negative limitation. As explained in
`
`the Petition, users separately can “control what contact information observers are
`
`allowed to view.” Pet., 46 (citing Ex. 1007, [0007]). PO’s argument regarding
`
`blocking is irrelevant to Diacakis’s disclosure of this independent method of control.
`
`
`
`18
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`
`Fifth, PO confuses Diacakis’s presence and availability (“P&A”) information
`
`with contact information, arguing that disclosure of the former necessarily means
`
`disclosure of the latter. POR, 26–29; Ex. 1043, 168:7–11, 170:2–8. This is
`
`incorrect. Diacakis explains that P&A information means “what communications
`
`network a user is on, and whether or not the user is reachable for each of the
`
`networks.” Ex. 1007, [0006]. This is different from contact information, such as a
`
`phone number. See id., [0007], [0047] (treating P&A preferences differently from
`
`contact information preferences); Pet., 25–29, 47; Ex. 1003, ¶¶ 99–101. Although
`
`PO relies on the Rouskas Declaration for its misreading of Diacakis, Dr. Rouskas
`
`admitted his opinions were based on the misbelief that, under paragraph [0048],
`
`Diacakis’s users’ contact information is distributed to others, regardless of how users
`
`specify their contact information should be distributed. Ex. 1043, 215:12–18. This
`
`passage, however, indicates that already-published contact information may be
`
`automatically updated to reflect changes to the user’s profile. Ex. 1007, [0048]; see
`
`also id., [0062] (indicating contact information is provided only in view of user’s
`
`preference settings). Thus, PO is wrong.
`
`IV. GROUNDS II–III: CLAIMS 7–9 AND 16 ARE RENDERED OBVIOUS
`BY DIACAKIS IN VIEW OF LOVELAND AND TAKAHASHI,
`RESPECTIVELY
`Regarding Claims 7–9 (Ground II), the Board found that “Petitioner
`
`demonstrates a reasonable likelihood of prevailing on its challenge of Claims 7–9 as
`
`
`
`19
`
`

`

`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00291 (U.S. Pat. No. 10,708,727)
`
`unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland.” ID, 25–26.
`
`Indeed, this combination would allow users to receive notifications of urgent
`
`messages and messages from important individuals. Pet., 53–54; Ex. 1003, ¶¶ 152–
`
`55.
`
`Despite this, PO argues Diacakis and Loveland are “diametrically opposite to
`
`each other” based on PO’s incorrect argument that Diacakis does not allow users to
`
`send messages. POR, 31–32. As explained in Section III.B, however, Diacakis
`
`teaches sending messages. PO also argues without explanation that “it is not clear
`
`how the two systems would be combined, how the combination would operate, or
`
`what the combination would accomplish.” POR, 32. PO’s conclusory assertion
`
`should be disregarded. As explained in the Petition and by Dr. Almeroth, a POSITA
`
`would have been motivated to implement Loveland’s urgent message notification
`
`features in Diacakis’ communications system for several reasons—including
`
`notifying users of incoming urgent messages—which would have involved routine
`
`implementation with no technical risks. Pet., 53–57; Ex. 1003, ¶¶ 152–161.
`
`Regarding Claim 16 (Ground III), PO raises no arguments regarding the
`
`Diacakis and Takahashi combination beyond its Ground I arguments. For the
`
`reasons explaine