UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner.
`
`Case No. IPR2022-00294
`Patent No. 10,492,038 B2
`
`PETITIONER’S NOTICE OF APPEAL
`
`

`

`Notice of Appeal: IPR2022-00294
`
`Pursuant to 35 U.S.C. §§ 141(c) and 142 and 37 C.F.R. § 90.2(a), Petitioner
`
`Epic Games, Inc. (“Petitioner”) hereby appeals to the U.S. Court of Appeals for the
`
`Federal Circuit from the Patent Trial and Appeals Board’s (“Board”) Final Written
`
`Decision, entered May 19, 2023 (Paper 30) (a copy of the decision is attached), and
`
`from all underlying and related findings, orders, decisions, rulings, and opinions.
`
`For the limited purpose of providing the Director with the information
`
`requested in 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates that the issues on
`
`appeal may include, but are not limited to:
`
`1. Whether the Board erred in its construing the term “network-based
`
`portal.”
`
`2. Whether, under the proper construction of “network-based portal,”
`
`Petitioner demonstrated by a preponderance of the evidence that claims
`
`7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, and 64–66
`
`of U.S. Patent No. 10,492,038 (the “’038 patent”) are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over U.S. Publication No.
`
`2002/0116461 A1 (“Diacakis”).
`
`3. Whether, under the proper construction of “network-based portal,”
`
`Petitioner demonstrated by a preponderance of the evidence that claims
`
`8, 9, 43, 44, 47, 48, 50, and 54 of the ’038 patent are unpatentable under
`
`

`

`Notice of Appeal: IPR2022-00294
`
`35 U.S.C. § 103(a) as obvious over Diacakis and U.S. Patent No.
`
`7,287,056 B2 (“Loveland”).
`
`4. Whether, under the proper construction of “network-based portal,”
`
`Petitioner demonstrated by a preponderance of the evidence that claims
`
`37, 42, 56, 59–63, and 67 of the ’038 patent are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Diacakis and U.S. Publication No.
`
`2002/0183114 A1 (“Takahashi”).
`
`5. Whether, under the proper construction of “network-based portal,”
`
`Petitioner demonstrated by a preponderance of the evidence that claim
`
`45 of the ’038 patent is unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over Diacakis, Loveland, and Takahashi.
`
`Petitioner further reserves the right to challenge any finding or determination
`
`supporting or relating to the issues above.
`
`Pursuant to 37 C.F.R. § 90.2(a), Petitioner is filing one copy of this Notice of
`
`Appeal with the Director, and electronically filing a copy of this Notice Appeal with
`
`the U.S. Court of Appeals for the Federal Circuit with the requisite filing fee, in
`
`addition to filing this Notice of Appeal with the Board.
`
`DATED: July 20, 2023
`
`Respectfully submitted,
`/s/ W. Todd Baker
`W. Todd Baker (Reg. No. 42,625)
`KIRKLAND & ELLIS LLP
`
`
`
`2
`
`

`

`Notice of Appeal: IPR2022-00294
`
`Attorney for Petitioner
`
`
`
`3
`
`

`

`Notice of Appeal: IPR2022-00294
`
`CERTIFICATE OF SERVICE
`
`I certify that on July 20, 2023, this document was served on the Director at
`
`this address, under 35 U.S.C. § 142 and 37 C.F.R. §§ 90.2(a)(1) and 90.3(a)(1):
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I certify that on July 20, 2023, this document was electronically served on the
`
`United States Court of Appeals for the Federal Circuit, under 37 C.F.R. § 90.2(a)(2),
`
`Fed. Cir. R. 15(a), and Fed. R. App. P. 15(a).
`
`I certify that on July 20, 2023, this document was electronically served on
`
`counsel for Patent Owner, under 37 C.F.R. § 42.6(e)(1)-(3):
`
`Cortney Alexander (cortneyalexander@kentrisley.com)
`Stephen R. Risley (steverisley@kentrisley.com)
`A courtesy copy was also served via overnight delivery directed to the
`
`attorney/agent of record for the patent as identified on USPTO PAIR and associated
`
`with USPTO Customer No. 34,071 at the following address:
`
`C. Thomas (No. 32,947)
`Peter Tong (No. 35,757)
`4010 Moorpark Ave., Ste. 211
`San Jose, CA 95117
`DATED: July 20, 2023
`
`Respectfully submitted,
`
`/s/ W. Todd Baker
`W. Todd Baker (Reg. No. 45,625)
`
`

`

`Notice of Appeal: IPR2022-00294
`
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Email: todd.baker@kirkland.com
`Tel: (202) 389-5000
`Fax: (202) 389-5200
`
`Attorney for Petitioner
`
`
`
`2
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 30
`Date: May 19, 2023
`
`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 THU A. DANG, PATRICK M. BOUCHER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`
`Opinion for the Board filed by Administrative Patent Judge BOUCHER.
`
`Opinion Dissenting filed by Administrative Patent Judge AMUNDSON.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`In response to a Petition (Paper 1, “Pet.”) filed by Epic Games, Inc.
`(“Petitioner”), we instituted an inter partes review of claims 7–12, 22–24,
`and 33–67 of U.S. Patent No. 10,492,038 B2 (Ex. 1001, “the ’038 patent”).
`Paper 13 (“Dec.”). During the trial, IngenioShare, LLC (“Patent Owner”)
`filed a Response (Paper 17, “PO Resp.”), to which Petitioner filed a Reply
`(Paper 19, “Reply”) and Patent Owner filed a Sur-reply (Paper 25, “Sur-
`reply”). The parties declined an oral hearing with the panel, and instead
`“rest[] on their briefs for any issues not addressed at the February 17th
`hearing directed to IPR2022-00202 and IPR2022-00291.” Ex. 3004;
`Paper 29 (order canceling oral hearing).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has not shown, by a preponderance of the evidence, that any of claims 7–12,
`22–24, and 33–67 is unpatentable.
`
`
`I. BACKGROUND
`A. The ’038 Patent
`The ’038 patent relates to “automatically remov[ing] unwanted
`communications.” Ex. 1001, 3:52–53. Figure 6 of the ’038 patent is
`reproduced below.
`
`2
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`
`Figure 6 depicts communication system 100, which can support different
`communication devices, including mobile telephones 102, computers 104,
`and/or wireless personal digital assistants 106. Id. at 8:35–40. Users of such
`communication devices can communicate “with like or different
`communication devices,” each of which offers one or both of audio or text
`communication capabilities. Id. at 8:40–43. Intercommunication of
`devices 102–106 can take place through network 108, which “can include
`one or more of voice networks and data networks.” Id. at 8:43–46.
`With the system, “[a] communication gateway or a portal is formed,”
`thereby allowing a user “to receive communications from numerous sources
`through different modes.” Id. at 4:22–24. “Based on the portal, the user can
`securely determine who can reach him at what conditions.” Id. at 4:34–35.
`
`3
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`Such conditions may include the status of the user, “access priorities” of the
`person trying to reach the user, and/or the urgency of the message from the
`person. Id. at 4:36–41.
`The following table is reproduced from the ’038 patent.
`
`
`The table identifies different people and their relationships to a particular
`user, as well as “ContactClasses” to which such people are assigned and
`which reflect the various access priorities. Id. at 6:24–32. By way of
`example, if Peter wants to make a mobile phone call to the user, Peter calls
`the portal, which can be the user’s internet service provider. Id. at 6:33–35.
`After verifying Peter’s identity, the portal establishes contact by creating a
`virtual address for a communication session and determines that Peter
`belongs to “ContactClass2.” Id. at 6:35–51. The portal implements various
`connectivity options depending on the status of the user, Peter’s access
`priority according to his ContactClass, and Peter’s urgency setting. Id. at
`6:56–58. Connectivity options include allowing the user to receive Peter’s
`call directly or asking Peter to leave a voicemail message, with the user
`notified of Peter’s call by a short mobile message. Id. at 6:56–61. In some
`instances, communication requests can be classified into “different degrees
`of undesirability,” thereby automatically blocking some requests from the
`user or automatically diverting them to be handled by another mechanism,
`“such as diverting a phone call to an email or voice mail.” Id. at 4:56–61.
`
`
`4
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`B. Illustrative Claim
`In addition to challenges of various dependent claims, Petitioner
`challenges three of the ’038 patent’s four independent claims. Independent
`claim 7 is representative of the challenged claims and is reproduced below.
`7. 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:
`
`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,
`
`
`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
`using a mobile phone, and communication with at least an
`image, and
`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;
`
`computer program code for permitting the second user to
`block the first user from using at least the selected
`
`5
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`communication mode to reach the second user via the network-
`based portal;
`
`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;
`
`computer program code for determining availability of
`the second user; and
`
`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,
`
`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
`
`wherein the identifier associated with the second user is
`distinct from the contact information associated with the second
`user.
`
`
`Ex. 1001, 21:50–22:43.
`
`
`C. Evidence
`Petitioner relies on the following references:
`Diacakis
`US 2002/0116461 A1
`Aug. 22, 2002
`Loveland
`US 7,287,056 B2
`Oct. 23, 2007
`Takahashi
`US 2002/0183114 A1
`Dec. 5, 2002
`
`
`
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`In addition, Petitioner relies on Declarations by Kevin C. Almeroth,
`Ph.D. Exs. 1003, 1039. Patent Owner relies on a Declaration by George N.
`
`6
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`Rouskas, Ph.D. Ex. 2005. Dr. Rouskas was cross-examined by Petitioner,
`and a transcript of his deposition was entered into the record. Ex. 1043.
`
`
`References
`
`Diacakis
`
`D. Instituted Grounds of Unpatentability
`We instituted review of claims 7–12, 22–24, and 33–67 on the
`following grounds. Dec. 15, 67; Pet. 6.
`Claim(s)
`35 U.S.C.
`Challenged
`§1
`7, 10–12, 22–24, 33–36, 38–
`103(a)
`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
`
`103(a)
`103(a)
`103(a)
`
`Diacakis, Loveland
`Diacakis, Takahashi
`Diacakis, Loveland, Takahashi
`
`
`
`E. Real Parties in Interest
`The parties identify only themselves as real parties in interest.
`Paper 24, 1; Paper 8, 2.
`
`
`F. Related Matters
`The parties identify IngenioShare, LLC v. Epic Games, Inc., No 6:21-
`cv-00663 (W.D. Tex.) as a related matter. Paper 24, 1; Paper 8, 2.
`According to Petitioner, “[t]his case was dismissed by order of the court on
`March 18, 2022.” Paper 24, 1.
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103 effective
`March 16, 2013. Petitioner asserts that, “[b]ased on the claimed priority date
`of the ’038 patent, Pre-AIA versions of §102(a) and §103 apply.” Pet. 4 n.1.
`Patent Owner does not contest that the pre-AIA versions apply, and we
`apply those versions herein.
`
`7
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`In addition, Patent Owner notes that related patents are challenged by
`Petitioner in IPR2022-00202, IPR2022-00291, IPR2022-00295, and
`IPR2022-00297. Paper 8, 2–3. Of these, inter partes review was instituted
`in IPR2022-00202, IPR2022-00291, and IPR2022-00295, but institution was
`denied in IPR2022-00297.
`
`
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`the differences between the claimed subject matter 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness, i.e., secondary considerations.2 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`
`
`2 The parties do not address objective indicia of nonobviousness, which
`accordingly do not form part of our analysis. See Pet. 83 (“Petitioner is
`unaware of any evidence of secondary considerations that would support a
`finding of non-obviousness.”)
`
`8
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`
`B. Direct Testimony by Dr. Rouskas
`Petitioner contends that Dr. Rouskas’s Declaration testimony is
`entitled to no weight because it “repeats the [Patent Owner Response] nearly
`verbatim,” “appears to contain opinions he did not develop,” and “is
`contradicted by Dr. Rouskas’s own deposition testimony.” Reply 3–4.
`Although Petitioner makes multiple allegations of deficiencies in
`Dr. Rouskas’s direct testimony, none of these allegations is sufficiently
`developed with specific examples.
`First, we disagree that mere verbatim duplication between an expert
`declaration and an attorney brief defines “a classic example of a cursory
`expert declaration the Board disregards.” See id. at 3. The Board’s concern
`is rather whether expert testimony “cite[s] to any additional supporting
`evidence or provide[s] any technical reasoning to support [its] statement[s].”
`Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug.
`24, 2022) (precedential); see also id. at 16 (“Dr. Jones offers only a verbatim
`restatement of the assertion being supported, without any supporting
`evidence or technical reasoning” (emphasis added)). As Patent Owner
`asserts, “Petitioner fail[s] to provide a single example of how Dr. Rouskas’s
`testimony is ‘cursory or unsupported.’” Sur-reply 1.
`
`9
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`Second, Petitioner provides only a single example to support its
`allegation that the direct testimony in Dr. Rouskas’s Declaration “appears to
`contain opinions he did not develop.” This example relates to an issue we
`discuss at length below, namely whether a “network-based portal” recited in
`the challenged claims must reside at a server side of a network or can reside
`on a client side as a user interface in a client device. Reply 4. Petitioner
`accurately states that, on cross-examination, “Dr. Rouskas admitted he was
`retained months after the [Preliminary Response] was filed and that he did
`not review the [Preliminary Response],” where Patent Owner argued that a
`“network-based portal” must reside at a server side. Id. (citing Ex. 1043,
`25:2–26:2).
`Dr. Rouskas’s cross-examination also included the following
`exchange:
`BY MR. SHI:
`
`
`Q. The essence of your opinion is that Diacakis does not
`teach a network-based portal because that network-based portal
`must be in a server device and not a client device; correct?
`
`MR. RISLEY: Object to form.
`
`
`BY MR. SHI:
`
`
`THE WITNESS: That is correct, yes.
`
`Q. Did you come up with this argument, Dr. Rouskas?
`
`
`
`
`
`A. I did, yes.
`
`
`Ex. 1043, 53:22–54:7. Petitioner characterizes Dr. Rouskas’s statement as
`“claim[ing] he conceived of [Patent Owner’s] [network-based portal]
`
`10
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`argument.” Reply 4. According to Petitioner, such a claim is “not credible”
`because at least some form of the argument was presented during the
`preliminary phase of this proceeding, before Dr. Rouskas was retained. Id.
`Petitioner did not explore Dr. Rouskas’s answer on cross-examination
`in a manner that would have allowed the witness to expand on his brief
`statement that “[he] did, yes.” But even if we were to agree with Petitioner’s
`characterization, we see insufficient reason on that basis alone to discount
`all of Dr. Rouskas’s direct testimony. As Patent Owner says, “Petitioner
`cross-examined (deposed) Dr. Rouskas for two days,” and “Petitioner does
`not cite to any cross-examination question that Dr. Rouskas was not able to
`answer.” Sur-reply 1. The totality of Dr. Rouskas’s testimony is useful and
`his direct testimony was subject to extensive cross-examination that allows
`us to evaluate the weight to accord his testimony in individual contexts.
`Third, Petitioner contends that, on cross-examination, “Dr. Rouskas
`contradicted his declaration and admitted the opinions therein rest on
`fundamental misunderstandings of the challenged claims and prior-art
`references.” Reply 4. We evaluate Petitioner’s specific arguments in our
`assessment of the weight to accord Dr. Rouskas’s testimony below, and see
`no compelling basis to discount his direct testimony wholesale. See Sur-
`reply 2 (Patent Owner asserting that “the rule of completeness shows that
`Dr. Rouskas did not contradict his Declaration testimony” (citing Fed. R.
`Evid. 106)).
`For these reasons, we decline Petitioner’s request to give no weight to
`Dr. Rouskas’s direct testimony in our analysis.
`
`
`11
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`skill in the art” is a hypothetical construct, from whose vantage point
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`references in the field of the invention are available to this hypothetical
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`1992)).
`Petitioner proposes 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. According to Petitioner, “[a]dditional education might
`compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports
`this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose
`any different expression of the level of ordinary skill, and Dr. Rouskas
`testifies that he has “employed Dr. Almeroth’s definition” in his Declaration.
`Ex. 2005 ¶ 21.
`Because we find Petitioner’s proposal reasonable, consistent with the
`level of skill reflected by the prior art, and supported by the testimony of
`Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v.
`
`12
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an
`appropriate level of skill in the art).
`
`
`D. Claim Construction
`The Board uses “the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b)
`(2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc). The specification may reveal a special definition given to a claim
`term by the patentee. Phillips, 415 F.3d at 1316. If an inventor acts as his or
`her own lexicographer, the definition must be set forth in the specification
`with reasonable clarity, deliberateness, and precision. Renishaw PLC v.
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
`Although Petitioner asserts in its Petition that it “does not believe that
`any terms need to be construed to assess the arguments presented,” we
`specifically “invite[d] the parties to provide additional briefing in the
`Response, Reply, and Sur-reply about the meaning of ‘network-based portal’
`in the ’038 patent’s claims.” Pet. 26; Dec. 24. We address this term as
`follows, and we do not find it necessary to construe any other term for
`purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`13
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`The phrase “network-based portal” is recited numerous times in the
`challenged independent claims of the ’038 patent, and its construction is
`central to the parties’ respective positions regarding application of
`Petitioner’s asserted prior art to the challenged claims. See generally
`Ex. 1001, 21:50–22:43, 26:1–57, 27:37–28:39. In particular, Petitioner
`broadly describes a “network-based portal” as “a web page or interface that
`connects clients to a network.” Pet. 34. Patent Owner argues that a
`“network-based portal” excludes a user terminal or client communication
`device. PO Resp. 11; see also Reply 5 (Petitioner asserting that Patent
`Owner’s argument that “the [network-based portal] resides only at the
`server-side of a network and excludes user interfaces of ‘client
`communication devices[’]” is “wrong”).
`The issue before us is therefore well-defined, namely whether a
`“network-based portal” as recited in the challenged claims is sufficiently
`broad to encompass residing at either a client or server side of a network, as
`Petitioner contends, or is limited to residing at the server side, as Patent
`Owner contends. On the preliminary record, we declined to adopt Patent
`Owner’s exclusion of residing at a client side when extending our invitation
`to the parties to elaborate on their positions. Dec. 23–24. But we are
`mindful that “the Board is not bound by any findings made in its Institution
`Decision. At that point, the Board is considering the matter preliminarily
`without the benefit of a full record. The Board is free to change its view of
`the merits after further development of the record, and should do so if
`convinced its initial inclinations were wrong.” TriVascular, Inc. v. Samuels,
`812 F.3d 1056, 1068 (Fed. Cir. 2016).
`
`14
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`
`The full record developed at trial includes the Declaration of
`Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue.
`Ex. 2005 ¶¶ 46–67. Although the record also includes a Declaration by
`Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the
`Petition and neither responds to Dr. Rouskas’s opinions nor provides any
`testimonial evidence to support Petitioner’s positions beyond what was
`available at the preliminary stage of the proceeding. 3 See generally
`Ex. 1003. In evaluating the fully developed record, we necessarily accord
`greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney
`argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v.
`Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn
`attorney argument . . . is not evidence and cannot rebut . . . other admitted
`evidence . . . .”).
`Our evaluation also necessarily remains cognizant that “[i]n an [inter
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`
`
`3 Petitioner filed a second Declaration by Dr. Almeroth after institution
`(such that it was not available on the preliminary record), but that
`Declaration is provided primarily as supplemental evidence under 37 C.F.R.
`§ 42.64(b)(2) to address objections by Patent Owner to the authenticity of
`various other exhibits. Ex. 1039 ¶ 2. Dr. Almeroth’s second Declaration
`otherwise merely incorporates Dr. Almeroth’s “technical opinions” by
`reference to his first Declaration, without providing any further facts or
`expressing any further opinions that bear on the merits, including claim
`construction. Id. ¶ 1.
`
`15
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`Against this backdrop, we address the parties’ arguments, ultimately
`concluding that Patent Owner articulates the more persuasive position that a
`“network-based portal” as recited in the claims is limited to residing at a
`server side of a network.
`
`
`1. Dictionary Definitions
`Patent Owner begins its argument by quoting dictionary definitions of
`“portal” offered by Dr. Rouskas in his Declaration: (1) “In the context of the
`Internet, a portal refers to any commonly used website serving as an entry
`point to the Internet, usually with many links to a wide variety of
`information, data, resources, and services,” Ex. 2005 ¶ 49 (quoting
`https://www.techopedia.com/definition/13077/portal-internet); and
`(2) “Portal is a term, generally synonymous with gateway, for a World Wide
`Web site that is or proposes to be a major starting site for users when they
`get connected to the Web or that users tend to visit as an anchor site. There
`are general portals and specialized or niche portals,” id. (quoting
`https://www.techtarget.com/whatis/definition/portal). Dr. Rouskas relies on
`these dictionary definitions to distinguish a “portal” from a client
`communication device, testifying specifically that “[w]ebsites are hosted on
`web servers, not on client communication devices.” Id.
`While we recognize that such dictionary definitions fall within the
`category of extrinsic evidence, as they do not form part of an integrated
`
`16
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`patent document, we find it useful to begin with such definitions because
`they provide context for evaluation of the intrinsic evidence. In doing so, we
`recall that the Federal Circuit has advised that dictionary definitions are
`“worthy of special note”: “Judges are free to consult such resources at any
`time in order to better understand the underlying technology and may also
`rely on dictionary definitions when construing claim terms, so long as the
`dictionary definition does not contradict any definition found in or
`ascertained by a reading of the patent documents.” Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996).
`With its Reply, Petitioner counters Patent Owner’s position by
`providing dictionary definitions of its own: (1) “A portal is a web-based
`platform that collects information from different sources into a single user
`interface and presents users with the most relevant information for their
`context,” Ex. 1041; and (2) “A mobile portal is an Internet gateway that
`enables mobile devices to connect remotely with an enterprise intranet or
`extranet, typically via a Web browser interface,” Ex. 1042. According to
`Petitioner, Dr. Rouskas “selectively disregarded” definitions like these that
`include the word “interface.” Reply 6. But as Patent Owner points out,
`“that a definition includes the term ‘interface’ does not mean a ‘portal’ is an
`interface.” Sur-reply 4. We find Patent Owner’s explanation that “[t]he
`term ‘interface’ is used to indicate how a user accesses the portal (i.e., via a
`web browser interface), not what a portal is” to be consistent with
`Petitioner’s preferred definitions. See id.
`More generally, we discern no meaningful conflict between the
`definitions provided by Dr. Rouskas and those provided by Petitioner. For
`example, the second of Petitioner’s preferred definitions expressly defines a
`
`17
`
`

`

`IPR2022-00294
`Patent 10,492,038 B2
`
`“mobile portal” as an “Internet gateway” with certain features, thereby
`differentiating it from a web browser interface that is used to connect a
`device to the portal. See Ex. 1042; Sur-reply 3. And that definition’s
`expression of equivalence between a “mobile portal” and an “Internet
`gateway” is consistent with the ’038 patent specification’s use of the terms
`“portal” and “gateway,” as we discuss in the next subsection.
`
`
`2. Specification
`a. “portal