Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Date: June 7, 2022
`
`
`
`
`
`
`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
`____________
`
`
`
`
`Before JONI Y. CHANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge AMUNDSON.
`
`Opinion Dissenting filed by Administrative Patent Judge CHANG.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`

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`IPR2022-00294
`Patent 10,492,038 B2
`
`
`I. INTRODUCTION
`Epic Games, Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 7–12, 22–24, and 33–67 in U.S. Patent
`No. 10,492,038 B2 (Exhibit 1001, “the ’038 patent”) under 35 U.S.C.
`§§ 311–319. Paper 1 (“Pet.”). IngenioShare, LLC (“Patent Owner”) filed
`a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`Under 37 C.F.R. § 42.4(a), we have authority to determine whether
`to institute an inter partes review. We may institute an inter partes review
`only if “the information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The
`“reasonable likelihood” standard is “a higher standard than mere notice
`pleading” but “lower than the ‘preponderance’ standard to prevail in a final
`written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`Based on the current record and for the reasons explained below,
`Petitioner has shown that there is a reasonable likelihood that it would
`prevail with respect to at least one of the challenged claims. Thus, we
`institute an inter partes review of claims 7–12, 22–24, and 33–67 in the
`’038 patent on all challenges included in the Petition.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 2. Patent
`Owner identifies itself as the real party in interest. Paper 8, 2. The parties
`do not raise any issue about real parties in interest.
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`Patent 10,492,038 B2
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`B. Related Matters
`Petitioner and Patent Owner identify the following civil action where
`Patent Owner has asserted the ’038 patent and other patents against
`Petitioner: IngenioShare, LLC v. Epic Games, Inc., No. 6:21-cv-00663-ADA
`(W.D. Tex. filed June 25, 2021) (“the Texas case”). Pet. 2; Prelim. Resp. 2;
`Paper 8, 2.
`Patent Owner identifies the following Board proceedings as related
`matters:
`
`• Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202
`(U.S. Patent No. 10,142,810 B2);
`• Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00291
`(U.S. Patent No. 10,708,727 B2);
`• Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00295
`(U.S. Patent No. 10,492,038 B2); and
`• Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00297
`(U.S. Patent No. 8,744,407 B2).
`Paper 8, 2–3.
`
`C. The ’038 Patent (Exhibit 1001)
`The ’038 patent, titled “Method and Apparatus to Manage Messaging
`Providing Different Communication Modes Depending on One Identifier
`and Not Requiring to Disclose Contact Information,” issued on
`November 26, 2019, from an application filed on September 14, 2017.
`Ex. 1001, codes (22), (45), (54). The patent identifies that application as the
`last in a series of continuation and continuation-in-part applications that
`started with an application filed on December 7, 2004. Id. at 1:10–41,
`code (63).
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`The ’038 patent explains that an individual may (1) employ numerous
`modes of communication, such as desk phone, cell phone, email, and instant
`messaging, and (2) “have more than one phone number and multiple
`electronic mail addresses.” Ex. 1001, 1:59–64. The patent states that “there
`is still a need to help manage the numerous modes of communication.” Id.
`at 2:1–3. The patent discloses “systems and methods to manage electronic
`communications.” Id. at code (57); see id. at 3:52–5:63.
`For example, the ’038 patent discloses a communications apparatus
`
`that:
`
`(1)
`
`(2)
`
`(3)
`
`“provides different communication modes to a first user,
`with messages eligible to be received by a second user
`based on any of the modes, depending on an identifier
`associated with the second user”;
`“receives an indication from the first user to select a
`communication mode for a message for the second user”;
`and
`“receive[s] contact information associated with the
`second user to allow the second user to participate, with
`the contact information not provided to the first user even
`when the message is received by the second user, and
`with the contact information being distinct from the
`identifier.”
`Ex. 1001, code (57).
`The ’038 patent explains that a “user receives the message through a
`handheld device, such as a cellular phone,” or the “message is electronically
`conveyed” to the user “based on Internet protocol through a website.”
`Ex. 1001, 2:54–57. If the “message is electronically conveyed” to the user
`through a “central network server, such as a web server based on Internet
`protocol,” a “portal or gateway” may “provide general Internet access.” Id.
`
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`at 7:9–15. For instance, the portal or gateway may “allow[] the user to
`receive communications from numerous sources through different modes.”
`Id. at 4:22–24.
`Figure 7 in the ’038 patent (reproduced below) depicts steps in a
`process for responding to an incoming call:
`
`
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`Figure 7 “is a flow diagram of a personal call response process 200”
`performed “by an electronic device, such as a mobile communication device
`(e.g., mobile telephone).” Ex. 1001, 9:22–26, Fig. 7; see id. at 3:29–30. The
`personal call response process permits a user to, among other things, answer
`an incoming call, respond to a caller with an audio message, and respond to
`a caller with a text message. Id. at 9:26–10:5, Fig. 7.
`Figure 8 in the ’038 patent (reproduced below) depicts steps in a
`process for responding to a caller with an audio message:
`
`
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`Figure 8 “is a flow diagram of an audio message response process 300”
`suitable for the processing performed by block 214 in Figure 7. Ex. 1001,
`10:34–38, Fig. 8; see id. at 3:31–32. The audio message response process
`permits a user to respond to a caller with a predetermined audio message or
`a custom audio message. Id. at 10:39–11:41, Fig. 8. A “mobile
`communication device (e.g., mobile telephone)” may perform the audio
`message response process. Id. at 10:42–45.
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`Figure 9 in the ’038 patent (reproduced below) depicts steps in a
`process for responding to a caller with a text message:
`
`
`Figure 9 “is a flow diagram of a text message response process 400” suitable
`for the processing performed by block 218 in Figure 7. Ex. 1001, 12:9–12,
`Fig. 9; see id. at 3:33–34. The text message response process permits a user
`to respond to a caller with a predetermined text message or a custom text
`message. Id. at 12:13–45, Fig. 9. A “mobile communication device” may
`perform the text message response process. Id. at 12:18–21.
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`Figure 10 in the ’038 patent (reproduced below) depicts steps in a
`process for responding to an incoming call:
`
`
`Figure 10 “is a flow diagram of an automated call response process 500.”
`Ex. 1001, 13:17–18, Fig. 10; see id. at 3:35–36. Figure 10’s process “is
`substantially similar in many ways to” Figure 7’s process. Id. at 13:19–21.
`But Figure 10’s process “operates to reduce user input at the mobile
`communication device by making use of stored data pertaining to its
`hardware components, configuration or preferences.” Id. at 13:21–25.
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`Figure 11 in the ’038 patent (reproduced below) depicts steps in a
`process for message presentation to a user:
`
`
`Figure 11 “is a flow diagram of a message presentation process 600”
`performed “by an electronic device, such as a mobile communication
`device.” Ex. 1001, 15:12–15, Fig. 11; see id. at 3:37–38. The message
`presentation process permits a user to receive a text message and play the
`text message as an audio message. Id. at 15:16–16:2, Fig. 11. For example,
`“the audio message can be output to a speaker of the mobile communication
`device or a headset used therewith.” Id. at 15:59–61.
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`Patent 10,492,038 B2
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`
`D. The Challenged Claims
`Petitioner challenges independent computer-readable-medium
`claim 7, claims 8–12, 22–24, and 33–37 that depend directly or indirectly
`from claim 7, independent method claim 38, claims 39–45 that depend
`directly or indirectly from claim 38, independent computer-readable-
`medium claim 46, and claims 47–67 that depend directly from claim 46.
`Pet. 6, 33–83. Claims 7 and 46 exemplify the challenged claims and read
`as follows (with numbers added for reference purposes)1:
`7. [7.0] A non-transitory computer readable medium
`including at least executable computer program code stored
`therein for managing electronic communications of a plurality
`of users using at least a network-based portal at least based on
`Internet protocol, with different communication modes allowed,
`depending on each of the plurality of users having an identifier
`for use with the different communication modes, with the
`corresponding identifier being set via the network-based portal,
`and without requiring the plurality of users to disclose their
`contact information to each other, said computer readable
`medium comprising:
`[7.1] computer program code for providing a plurality of
`communication modes to a first user to allow the first user to
`use one of the plurality of communication modes as a selected
`communication mode for a first message from the first user to a
`second user via an electronic device associated with the second
`user, with the first user being identified at least depending on a
`prior registration process by the first user regarding the use of
`the network-based portal,
`[7.2] wherein the plurality of communication modes
`include at least text communication using a personal computer,
`voice communication using a personal computer, text
`communication using a mobile phone, voice communication
`
`1 We use the same numbers that Petitioner uses to identify the claim
`limitations. See Ex. 1032 (claim listing).
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`using a mobile phone, and communication with at least an
`image, and
`[7.3] wherein messages are eligible to be received by the
`electronic device associated with the second user based on any
`of the plurality of communication modes, all depending on an
`identifier associated with the second user being set by the
`second user via the network-based portal, at least in view of the
`network-based portal based on the Internet protocol;
`[7.4] computer program code for permitting the second
`user to block the first user from using at least the selected
`communication mode to reach the second user via the network-
`based portal;
`[7.5] computer program code for enabling, via the
`network-based portal, the first message to be received by the
`second user via the electronic device associated with the second
`user, using the selected communication mode, depending on the
`identifier associated with the second user, in view of the second
`user not blocking the first user from using the selected
`communication mode to reach the second user, via the network-
`based portal;
`[7.6] computer program code for determining availability
`of the second user; and
`[7.7] computer program code for receiving, from the
`second user, contact information associated with the second
`user to allow the second user to participate and at least receive
`messages via the network-based portal,
`[7.8] 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, and
`[7.9] wherein the identifier associated with the second
`user is distinct from the contact information associated with the
`second user.
`
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`46. [46.0] A non-transitory computer readable medium
`including at least executable computer program code stored
`therein that facilitates electronic communication of a plurality
`of users using at least a network-based portal at least based on
`Internet protocol, with a plurality of modes of communication
`available for the plurality of users to communicate, with each of
`the plurality of users having an identifier for use with the
`plurality of modes of communication, and without requiring the
`plurality of users to disclose their contact information to each
`other, the computer readable medium comprising:
`[46.1] computer program code for providing a plurality
`of modes of communication to a first user to allow the first user
`to use one of the plurality of modes of communication as a
`selected mode of communication for a first message to be sent
`from the first user to a second user, based on an identifier
`associated with the first user previously set by the first user via
`the network-based portal,
`[46.2] wherein the plurality of modes of communication
`supported by the network-based portal include at least text
`communication using a personal computer, voice
`communication using a personal computer, text communication
`using a mobile phone voice communication using a mobile
`phone, and communication with at least an image, and
`[46.3] wherein messages are eligible to be received
`electronically by the second user via the network-based portal,
`based on any of the plurality of modes of communication, all
`depending on an identifier associated with the second user
`previously set by the second user via the network-based portal,
`which allows the second user to efficiently maintain the second
`user’s communication using the plurality of modes of
`communication;
`[46.4] computer program code for permitting the second
`user to block the first user from using at least the selected mode
`of communication to communicate with the second user via the
`network-based portal, based on the identifier associated with
`the first user;
`
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`
`[46.5] computer program code for enabling the first
`message to be electronically provided to the second user, using
`the selected mode of communication, depending on the
`identifier associated with the second user, in view of the second
`user not blocking the first user from using the selected mode of
`communication to communicate with the second user, via the
`network-based portal;
`[46.6] computer program code for determining
`availability of the second user related to receiving messages;
`and
`
`[46.7] computer program code for receiving, from the
`second user, contact information associated with the second
`user to allow the second user to participate and at least receive
`messages via the network-based portal,
`[46.8] wherein even when the first message is received
`by the second user via the selected mode of communication, the
`contact information associated with the second user is not
`provided via the network-based portal to the first user, and
`contact information associated with the first user is not
`provided via the network-based portal to the second user, so as
`to provide an option to the second user to keep the contact
`information associated with the second user confidential from
`the first user, and to provide an option to the first user to keep
`the contact information associated with the first user
`confidential from the second user, and
`[46.9] wherein the identifier associated with the second
`user is distinct from the contact information associated with the
`second user, and the identifier associated with the first user is
`distinct from the contact information associated with the first
`user.
`Ex. 1001, 21:50–22:43, 27:37–28:39.
`
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`IPR2022-00294
`Patent 10,492,038 B2
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`
`Diacakis
`
`1007
`
`1008
`
`1009
`
`E. The Asserted References
`For its challenges, Petitioner relies on the following references:
`Name
`Reference
`Exhibit
`US 2002/0116461 A1, published Aug. 22, 2002
`(based on an application filed Feb. 5, 2002)
`US 7,287,056 B2, issued Oct. 23, 2007
`Loveland
`(based on an application filed Sept. 28, 2001)
`Takahashi US 2002/0183114 A1, published Dec. 5, 2002
`(based on an application filed May 29, 2002)
`Pet. 6. Petitioner asserts that each reference qualifies as prior art under
`§ 102(a) and § 102(b). Id. at 4; see 35 U.S.C. § 102(a)–(b) (2006).2
`At this stage of the proceeding, Patent Owner does not dispute that
`each reference qualifies as prior art. See, e.g., Prelim. Resp. 12–17.
`F. The Asserted Challenges to Patentability
`Petitioner asserts the following challenges to patentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`7, 10–12, 22–24,
`33–36, 38–41, 46, 49,
`51–53, 55, 57, 58,
`64–66
`8, 9, 43, 44, 47,
`48, 50, 54
`37, 42, 56, 59–63, 67
`45
`
`Diacakis, Takahashi
`Diacakis, Loveland, Takahashi
`
`Diacakis
`
`Diacakis, Loveland
`
`103(a)
`
`103(a)
`
`103(a)
`103(a)
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), amended 35 U.S.C. § 102 and § 103 effective
`March 16, 2013. Because the effective filing date of the challenged claims
`predates the AIA’s amendments to § 102 and § 103, this decision refers to
`the pre-AIA versions of § 102 and § 103.
`15
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`Pet. 6, 33–83.
`
`G. Testimonial Evidence
`To support its challenges, Petitioner relies on the declaration of Kevin
`C. Almeroth, Ph.D. (Exhibit 1003, “Almeroth Decl.”). Dr. Almeroth states,
`“I have been retained as an expert witness on behalf of Epic Games, Inc.
`(‘Epic Games’ or ‘Petitioner’) to offer technical opinions in connection
`with” the ’038 patent. Ex. 1003 ¶ 1.
`III. DISCRETIONARY DENIAL
`A. Parallel Proceeding
`Under § 314(a), the Director possesses “broad discretion” in deciding
`whether to institute an inter partes review. See 35 U.S.C. § 314(a); Saint
`Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir.
`2018). The Board decides whether to institute an inter partes review on the
`Director’s behalf. 37 C.F.R. § 42.4(a) (2021).
`Citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we
`should exercise our discretion under § 314(a) to deny institution in light of
`the Texas case where Patent Owner has asserted the ’038 patent and other
`patents against Petitioner. See Prelim. Resp. 7–12; supra § II.B.
`On March 18, 2022, the district court in the Texas case granted
`Petitioner’s motion to dismiss for improper venue, thus ending that case.
`Ex. 3001, 9.
`On March 31, 2022, we issued an Order authorizing Petitioner to file
`a Preliminary Reply addressing discretionary denial under § 314(a) and
`authorizing Patent Owner to file a Preliminary Sur-reply responding to the
`Preliminary Reply. Paper 11, 3.
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`
`On April 7, 2022, Petitioner filed a Preliminary Reply addressing
`discretionary denial under § 314(a). Paper 12 (“Prelim. Reply”). Patent
`Owner did not file a Preliminary Sur-reply.
`In the Preliminary Reply, Petitioner argues that the district court’s
`dismissal of the Texas case “moots Patent Owner’s arguments based on
`Fintiv.” Prelim. Reply 1. Petitioner also argues that “there is no basis for a
`discretionary denial under § 314(a)” based on Fintiv because “there is no
`longer any parallel proceeding.” Id.
`We agree with Petitioner that “there is no basis for a discretionary
`denial under § 314(a)” based on Fintiv because “there is no longer any
`parallel proceeding.” See Prelim. Reply 1; Ex. 3001, 9. Hence, we decline
`to exercise our discretion under § 314(a) to deny institution due to a parallel
`proceeding.
`
`B. Multiple Petitions
`Petitioner filed another petition challenging claims 7–12, 22–24, and
`33–67 of the ’038 patent, i.e., in IPR2022-00295. See Epic Games, Inc. v.
`IngenioShare, LLC, IPR2022-00295, Paper 1 at 6, 33–86 (PTAB Dec. 7,
`2021); supra § II.B. Petitioner explains that the challenges in this
`proceeding rest on Diacakis “as a primary reference” and that the challenges
`in the 00295 proceeding rest on Tanigawa3 in combination with Hullfish4 “as
`primary references.” IPR2022-00295, Paper 3 at 1.
`
`
`3 U.S. Patent Application Publication 2004/0001480 A1 to Tanigawa et al.,
`titled “Communication System and Communication Method,” filed on
`August 30, 2002, and published on January 1, 2004 (“Tanigawa”).
`4 U.S. Patent No. 7,428,580 B2 to Hullfish et al., titled “Electronic Message
`Forwarding,” filed on November 26, 2003, and issued on September 23,
`2008 (“Hullfish”).
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`Petitioner contends that the Board should institute a trial in both
`proceedings for the following reasons:
`(i)
`“the length and large number (44) of challenged claims”;
`(ii)
`“given common issues across the Petitions, the burden
`to consider all Petitions is not substantially greater than
`considering just one”; and
`(iii) “Petitioner has filed . . . petitions for inter partes review
`of two patents in the same family as the ’038 Patent (U.S.
`Patent Nos. 10,142,810 and 10,708,727), and those
`petitions similarly present grounds based on Diacakis
`and on Tanigawa in combination with Hullfish.”
`IPR2022-00295, Paper 3 at 1; see supra § II.B.
`Petitioner also contends that the “combination of Tanigawa and
`Hullfish is not cumulative over Diacakis.” IPR2022-00295, Paper 3 at 3.
`Specifically, Petitioner asserts that “Diacakis is directed to a
`communciations [sic] system with a ‘presence and availability management
`system,’ used to detect when a user is available to communicate and to
`notify another of the user’s availability information.” Id. According to
`Petitioner, “Diacakis teaches that users can block others (thereby preventing
`them from communicating with them) across specific modes of
`communication by defining ‘access levels’ to give different people different
`levels of access at different times.” Id. Petitioner asserts that “Tanigawa (as
`modified by Hullfish) teaches a server directed towards a communications
`system specifically facilitating transitions between text chat and voice chat
`in both a group setting and a one-on-one setting.” Id. Petitioner also asserts
`that in the Tanigawa-Hullfish combination “users can block others—not
`through defined access levels, as in Diacakis—by identifying a user to be
`
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`blocked by a ‘pre-determined telephone number,’ a process that prevents the
`blocked user from further communicating with the blocking user.” Id.
`Patent Owner does not argue that we should exercise our discretion
`under § 314(a) to deny institution due to multiple petitions. See, e.g.,
`Prelim. Resp. 7–12.
`Under the circumstances here, two petitions challenging claims in the
`’038 patent will not place a substantial and unnecessary burden on the Board
`or Patent Owner. In IPR2022-00202, the Board will consider challenges to
`related U.S. Patent No. 10,142,810 B2 based on Diacakis and alternatively
`the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare,
`LLC, IPR2022-00202, Paper 9 (PTAB May 23, 2022) (granting institution of
`inter partes review); supra § II.B. In IPR2022-00291, the Board will
`similarly consider challenges to related U.S. Patent No. 10,708,727 B2 based
`on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic
`Games, Inc. v. IngenioShare, LLC, IPR2022-00291, Paper 10 (PTAB
`May 24, 2022) (granting institution of inter partes review); supra § II.B.
`Thus, in other proceedings the Board will consider and become familiar with
`Diacakis, Tanigawa, and Hullfish and the relevance of those references to
`claims in related patents.
`Additionally, Patent Owner has asserted a large number of claims
`in the ’038 patent against Petitioner in the Texas case, and Petitioner
`challenges a large number of claims in the ’038 patent. See Pet. 33–83;
`Ex. 1012, 1–2. The PTAB Consolidated Trial Practice Guide (“CTPG”)
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`notes that “more than one petition may be necessary” when “the patent
`owner has asserted a large number of claims in litigation.” CTPG 59.5
`Moreover, for the reasons stated by Petitioner, there are material
`differences between Diacakis and the Tanigawa-Hullfish combination. See
`IPR2022-00295, Paper 3 at 3.
`Hence, we decline to exercise our discretion under § 314(a) to deny
`institution due to multiple petitions. See Weber, Inc. v. Provisur Techs.,
`Inc., IPR2019-01465, Paper 10 at 10–11 (PTAB Feb. 20, 2020) (declining
`to exercise discretion under § 314(a) to deny institution because “material
`differences exist between the challenges in the two petitions and both
`petitions present meritorious challenges”).
`IV. PATENTABILITY ANALYSIS
`A. Legal Principles: Obviousness
`A patent may not be obtained “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a) (2006). An obviousness analysis involves underlying
`factual inquiries including (1) the scope and content of the prior art;
`(2) differences between the claimed invention and the prior art; (3) the level
`of ordinary skill in the art; and (4) where in evidence, objective indicia of
`nonobviousness, such as commercial success, long-felt but unsolved needs,
`and failure of others.6 Graham v. John Deere Co., 383 U.S. 1, 1718, 35–36
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`6 The record does not include evidence concerning objective indicia of
`nonobviousness.
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`(1966); Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047–48
`(Fed. Cir. 2016) (en banc). When evaluating a combination of references,
`an obviousness analysis should address “whether there was an apparent
`reason to combine the known elements in the fashion claimed by the patent
`at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`We analyze the obviousness issues according to these principles.
`B. Level of Ordinary Skill in the Art
`Factors pertinent to determining the level of ordinary skill in the art
`include (1) the educational level of the inventor; (2) the type of problems
`encountered in the art; (3) prior-art solutions to those problems; (4) the
`rapidity with which innovations are made; (5) the sophistication of the
`technology; and (6) the educational level of workers active in the field.
`Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir.
`1983). Not all factors may exist in every case, and one or more of these or
`other factors may predominate in a particular case. Id. These factors are not
`exhaustive, but merely a guide to determining the level of ordinary skill in
`the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir.
`2007). Moreover, the prior art itself may reflect an appropriate skill level.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`Petitioner asserts that a person of ordinary skill in the art “would have
`had a Bachelor’s degree in Computer Science, or an equivalent field, and
`three to five years of experience working with Internet communication
`systems.” Pet. 25. Petitioner also asserts that “[a]dditional education might
`compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s
`testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 92–97.
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`At this stage of the proceeding, Patent Owner does not address the
`educational level or work experience of a person of ordinary skill in the art.
`See, e.g., Prelim. Resp. 1–7, 12–17.
`Based on the current record and for purposes of institution, we accept
`Petitioner’s description of an ordinarily skilled artisan as consistent with the
`’038 patent and the asserted prior art.
`C. Claim Construction
`1. GENERALLY
`We construe claim terms “using the same claim construction
`standard” that district courts use to construe claim terms in civil actions
`under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b). Under that standard,
`claim terms “are given their ordinary and customary meaning, which is the
`meaning the term would have to a person of ordinary skill in the art at the
`time of the invention.” Power Integrations, Inc. v. Fairchild Semiconductor
`Int’l, Inc., 904 F.3d 965, 971 (Fed. Cir. 2018) (citing Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). The meaning of claim
`terms may be determined by “look[ing] principally to the intrinsic evidence
`of record, examining the claim language itself, the written description, and
`the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner “does not believe that any terms need to be construed to
`assess the arguments presented” in the Petition and does not propose a
`construction for any claim language. Pet. 26.
`Patent Owner does not propose a construction for any claim language.
`See Prelim. Resp. 4–5, 12.
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`2. “NETWORK-BASED PORTAL”
`Each challenged independent claim requires a “network-based portal.”
`Ex. 1001, 21:50–22:43, 26:1–57, 27:37–28:39. Although Patent Owner does
`not propose a construction for a “network-based portal,” Patent Owner
`proposes restrictions on that term. See Prelim. Resp. 1–2, 4–5, 12–14. In
`particular, Patent Owner contends that a “network-based portal” resides only
`“at the server-side of a network” and excludes “client-side functionality.”
`Id. at 1–2, 4, 12–14. According to Patent Owner, the ’038 patent’s
`specification “universally indicates that the network-based portal is at the
`server-side.” Id. at 1. Patent Owner identifies places where the specification
`describes a “portal” as separate from a “mobile telephone” and a “person’s
`wireless device.” Id. at 4–5, 13 (citing Ex. 1001, 6:33–34, 6:53–54, 7:9–17,
`16:17–19, code (57)). Further, Patent Owner asserts that the specification
`“certainly does not support the interpretation that a user interface at a client
`constitutes a network-based portal.” Id. at 13–14.
`Based on the current record, we disagree with Patent Owner that a
`“network-based portal” resides only “at the server-side of a network” and
`excludes “client-side functionality.” See Prelim. Resp. 1–2, 4, 12–14. The
`’038 patent’s specification discloses embodiments where claimed
`functionality resides in a “mobile phone,” i.e., a client-side device. See
`Ex. 1001, 3:29–38, 9:22–10:19, 10:34–13:43, 15:12–16:2, Figs. 7–11.
`As an example, Figures 7 through 11 depict steps in processes that
`include:
`
`• providing a first user with a voice communication mode
`and a text communication mode, e.g., as recited in
`limitations [7.1] and [7.2];
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`• enabling a second user to receive a voice message or a
`text message using a selected communication mode in
`view of the second user not blocking the first user, e.g.,
`as recited in limitations [7.4] and [7.5]; and
`• allowing the second user to receive messages through an
`electronic device associated with the second user, e.g., as
`recited in limitation [7.8].
`Ex. 1001