UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EPIC GAMES, INC.,
`Petitioner,
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`v.
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` INGENIOSHARE, LLC,
` Patent Owner.
`
`
`Case No. IPR2022-00294
`Patent No. 10,492,038
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`DECLARATION OF PROFESSOR
`GEORGE N. ROUSKAS, PH.D.
`_____________________________________________________
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`Exhibit 2005
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`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
`
`DECLARATION OF PROFESSOR
`GEORGE N. ROUSKAS, PH.D.
`_____________________________________________________
`
`Exhibit 2005
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`TABLE OF CONTENTS
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`Claim Construction
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`…………………………………
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`INTRODUCTION ………………………………………………………
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`QUALIFICATIONS …………………………………..…………..
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`BASES OF OPINIONS …………………………………..…………..
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`APPLICABLE LEGAL STANDARDS …………………..………
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`A. Ordinary Skill in the Art …………………………………
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`B.
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`C. Obviousness (35 U.S.C. § 103) …………………………..
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`TERMINOLOGY ………………………………………………………
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`GROUND I – DIACAKIS DOES NOT OBVIATE CLAIMS
`7, 10-12, 22-24, 33-36, 38-41, 46, 49, 51-53, 55, 57-58,
`OR 64-66 ………………………….…………………………………
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`A. Diacakis (Exhibit 1007) …………………………………
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`B.
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`1.
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`Diacakis Does Not Provide Or Support
`Messages ………………………………………..
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`[7.0] “Network-Based Portal” …………………………..
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`1.
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`2.
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`A “Portal” Is Not A User Terminal Or
`A “Client Communication Device” …………….
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`The ʼ038 Specification Defines “Portal”
`As A “Gateway” And Defines A “Gateway”
`As A “Networked Server”
`……………………
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`3.
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`The Functionality Of A “Portal” Is Different
`Than That Of A Client Communication Device …..
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`Page
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`1
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`1
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`6
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`6
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`6
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`8
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`9
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`12
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`12
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`12
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`18
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`19
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`21
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`21
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`22
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`The Claims Also Distinguish A “Portal”
`From A Client Communication Device
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`……….
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`23
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`The User Interface Of Diacakis Is Not A
`“Portal” ………………………………………..
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`Petitioner’s Construction Of A Network-
`Based Portal Impermissibly Requires “A
`Plurality Of Users” To Have Access To The
`First User’s Device
`…………………………..
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`Dr. Almeroth’s Testimony Is Not Supported
`By The Specification …………………………..
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`Patent Owner’s Construction Of A NBP
`Does Not Exclude A Preferred Embodiment ………
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`[7.0] Summary …………………………………
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`25
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`26
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`27
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`28
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`30
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`31
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`31
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`34
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`35
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`C.
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`D.
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`E.
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`F.
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`G.
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`[7.1] Is Not Obviated By Diacakis ……………………
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`[7.3] “Messages Are Eligible To Be Received …
`All Depending On An Identifier” Is Not Rendered
`Obvious By Diacakis …………..……………………..
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`[7.5] Is Not Obviated By Diacakis ……………………
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`[7.7] Is Not Rendered Obvious By Diacakis …………….
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`[7.8] “Even When The Message Is Received” “The
`Contact Information” “Is Not Provided” Is
`Not Rendered Obvious By Diacakis ……………………….. 36
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`1.
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`The Petitioner’s Positions On “NBP” And
`“Contact Information Not Provided” Are
`Incompatible
`…………………………………
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`36
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`ii
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`2.
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`Diacakis Teaches That The Recipient’s
`Contact Information Is Sent To The Sender’s
`Client Device …………………………………
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`i.
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`ii
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`iii
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`Diacakis Teaches A POSITA That Contact
`Information Is Provided ……………………
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`The Board Already Determined That
`Diacakis Teaches A POSITA That Contact
`Information Is Provided ……………………
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`Judge Chang Also Determined That Diacakis
`Teaches A POSITA That Contact Information
`Is Provided …………………………………
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`Diacakis’s Blocked Users Do Not Receive A
`Message ………………………………………..
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`The Institution Decision …………………………..
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`[7.8] Summary …………………………………
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`37
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`38
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`41
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`41
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`42
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`42
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`44
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`44
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`45
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`46
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`46
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`3.
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`4.
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`5.
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`GROUND II – CLAIMS 8, 9, 43, 44, 47, 48, 50, AND 54
`ARE NOT RENDERED OBVIOUS BY DIACAKIS
`AND LOVELAND
`…………………………………..…………..
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`GROUND III – CLAIMS 37, 42, 56, 59–63, AND 67 ARE
`NOT RENDERED OBVIOUS BY DIACAKIS AND
`TAKAHASHI ………………………………………………………
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`GROUND IV – CLAIM 45 IS NOT RENDERED
`OBVIOUS BY DIACAKIS, LOVELAND, AND
`TAKAHASHI ………………………………………………………
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`CONCLUSION ………………………………………………………
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`iii
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`INTRODUCTION
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`1. My name is George Rouskas. I have been retained as an expert
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`witness to provide my independent opinions in regards with matters at issue in the
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`inter partes review of U.S. 10,492,038 (“the ’038 Patent”) in the IPR2022-00294.
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`I have been retained by IngenioShare LLC, the Patent Owner, in the above
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`proceeding.
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`2.
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`Unless otherwise noted, the statements made herein are based on my
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`personal knowledge, and if called to testify about this declaration, I could and
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`would do so competently and truthfully.
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`3.
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`A detailed record of my professional qualifications including cases in
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`which I was an expert has been submitted as Exhibit 2008 and is summarized in
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`Section II, infra.
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`4.
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`I am not a legal expert and offer no opinions on the law. However, I
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`have been informed by counsel of the various legal standards that apply, and I have
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`applied those standards in arriving at my conclusions.
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`QUALIFICATIONS
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`5.
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`I am an Alumni Distinguished Graduate Professor with Tenure in the
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`Department of Computer Science at North Carolina State University (NC State),
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`where I also serve as the Director of Graduate Programs. I am an experienced
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`researcher and educator in the field of computer networking, with expertise in
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`1
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`Internet architectures and protocols, virtualization and cloud computing, mobile
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`devices, network devices, network security and security protocols, in a variety of
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`applications including providing for the protection of information transmitted
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`between devices within and among networks.
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`6.
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`I have thirty-three years of experience in computer networking since I
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`received my bachelor’s degree in 1989. I have twenty-eight years of experience as
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`a professor in the Department of Computer Science of NC State.
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`7.
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`I have taught courses on computer networks, Internet protocols, data
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`structures and computer performance evaluation. In 1997, I created one of the
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`world’s first graduate level courses on Internet Protocols, which I continue to teach
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`regularly, and in which I cover in depth topics related to wireless and mobile
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`networks and real-time communications.
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`8.
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`In my career in this field, I have received numerous accolades for my
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`contributions to computer networking, including being elected as Fellow of the
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`IEEE in 2012. Other accolades include the Outstanding Service Award for the
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`Optical Networking Technical Committee (ONTC) of the IEEE Communication
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`Society (2019); the Joyce Hatch Service Award from the NC State Chapter of the
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`Association for Computing Machinery/Association of Information Technology
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`Professionals (ACM/AITP) (2018); the title of Distinguished Lecturer in the IEEE
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`(2010-2012); an IBM Faculty Award (2007); the Best Paper Award for the
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`2
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`International Workshop on End-to-End Virtualization and Grid Management
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`(EVGM) (2007) (with C. Castillo and K. Harfoush); the Best Paper Award for the
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`International Symposium on Communication Systems, Networks and Digital
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`Signal Processing (CSNDSP) (2006) (with B. Chen and R. Dutta); the ALCOA
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`Foundation Engineering Research Achievement Award, NC State College of
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`Engineering (2004); the Alumni Outstanding Research Award, NC State (2003);
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`the CAREER Award from the National Science Foundation (1997); and the
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`Graduate Research Award from the Georgia Tech College of Computing (1994).
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`9.
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`I received my Ph.D. in Computer Science (Georgia Institute of
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`Technology, 1994); M.S. in Computer Science (Georgia Institute of Technology,
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`1991); and B.S. in Computer Engineering (National Technical University of
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`Athens, 1989).
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`10.
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`In 2000-2001, while on Sabbatical from NC State, I worked as
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`Network Architect for Vitesse Semiconductor, where I was responsible for the
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`design of a state-of-the-art 2.5 Gbps network processor.
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`11. My work as an academic began in 1994, when I joined NC State as an
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`Assistant Professor. In 1999, I was promoted to Associate Professor with Tenure.
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`In 2002, I was promoted to the position of Professor.
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`12.
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`I have held visiting positions on the faculties of a number of
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`international universities, including positions as a Distinguished Scientist at King
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`3
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`Abdulaziz University (Saudi Arabia, 2013-2021); Visiting Professor at the
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`Laboratoire d’Informatique University of Paris 6 (France, October 2012); Visiting
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`Professor at the Universidad Tecnica Federico Santa Maria (Chile, December
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`2008); and Visiting Professor at the Laboratoire de Méthodes Informatiques
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`University of Evry (France, July 2006, December 2002, June 2000).
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`13.
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`I have received funding from numerous agencies, foundations and
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`companies for research on network design and communication. The sources of
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`funding for this research include the National Science Foundation (NSF), the
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`Defense Advanced Research Projects Agency (DARPA), the National Security
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`Agency (NSA), Microsoft, IBM and Cisco.
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`14.
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`I have served in a number of leadership roles for the IEEE, including
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`as Chair of the IEEE Communications Society’s Distinguished Lecturer Selection
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`Committee (2016-2017); Vice Chair of the IEEE Communications Society’s
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`Technical and Educational Activities Council (2016-2017); and Chair of the IEEE
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`Communications Society’s Optical Networking Technical Committee (2016-2017).
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`15.
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`I have served in various founding, editorial and leadership positions
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`for publications in my field, including as founding Editor-in-Chief of IEEE
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`Networking Letters (2018-2021); founding Editor-in-Chief, Elsevier Optical
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`Switching and Networking Journal (2004-2017); Associate Editor, IEEE/OSA
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`Journal of Communications and Networking (2010-2012); Co-Guest Editor, JCM
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`4
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`Journal of Communications, Special Issue on the “Advances in Communications
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`and Networking,” vol. 6, no. 9, December 2011; Associate Editor, IEEE/ACM
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`Transactions on Networking (2000-2004); Associate Editor, Computer Networks
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`(2001-2004); Associate Editor, Optical Networks (2000-2004); and Co-Guest
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`Editor, IEEE Journal on Selected Areas in Communications, Special Issue on
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`“Protocols for Next Generation Optical WDM Networks,” vol. 18, no. 10, October
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`2000.
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`16.
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`I have graduated twenty-five Ph.D. students. Two have received
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`Ph.D. dissertation awards, one has received an NSF Career award, one became an
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`NSA Fellow, and one has been inducted in the NC State Computer Science Alumni
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`Hall of Fame. Three of my former Ph.D. students became Assistant Professors
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`upon graduation, and the rest joined significant technology companies or research
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`institutes, including RENCI (UNC-Chapel Hill), IBM Research, Google,
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`Facebook, Cisco, Oracle, Ericsson, Riverbed Technologies, Sprint, and Sierra
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`Wireless, among others. I have also graduated twelve M.S. thesis students.
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`17. During the course of my career, I have had more than 200 scientific
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`articles, three books, and ten book chapters published, which have collectively
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`received more than 9,400 citations (Google Scholar, March 14, 2022). These are
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`summarized in attached my curriculum vitae (see Ex. 2002).
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`5
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`BASES OF OPINIONS
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`18.
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`In the course of conducting my analysis and forming my opinions, I
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`have reviewed at least the items listed below:
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`i.
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`ii.
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`U.S. Patent No. 10,492,038 and its prosecution history;
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`Petition in IPR2022-00294, including the exhibits;
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`iii. Declaration of Almeroth (Exhibit 1003);
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`iv.
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`vi.
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`Institution Decision in IPR2022-00294;
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`Exhibit 2001, Complaint;
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`vii. Exhibit 2002, Epic Games Inc.’s Preliminary Invalidity Contentions;
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`viii. Exhibit 2003, Order Setting Markman Hearing;
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`ix.
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`x.
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`Exhibit 2004, Epic Games Inc.’s Opening Claim Construction Brief;
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`Exhibit 2006, Decision Denying Institution, IPR2022-00297 (PTAB
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`May 26, 2022); and
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`xi.
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`Exhibit 2007, Judge Chang, IPR2022-00294, Paper No. 13 (PTAB
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`June 7, 2022) (dissent).
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`APPLICABLE LEGAL STANDARDS
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`A. Ordinary Skill in the Art
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`19. My opinions in this declaration are based on the understandings of a
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`person of ordinary skill in the art, which I understand is sometimes referred to as
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`an “ordinary artisan” or by the acronyms “POSITA” (person of ordinary skill in the
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`6
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`art) or “PHOSITA” (person having ordinary skill in the art), as of the time of the
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`invention, which I understand is here assumed to be at least as early as April 27,
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`2005 (Exhibit 1003, Almeroth Declaration at 6, ¶5). I understand that the person
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`of ordinary skill in the art is a hypothetical person who is presumed to have known
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`the relevant art at the time of the invention. By “relevant,” I mean relevant to the
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`challenged claims of the ’038 Patent.
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`20.
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`I understand that, in assessing the level of skill of a person of ordinary
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`skill in the art, one should consider the type of problems encountered in the art, the
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`prior solutions to those problems found in the prior art references, the rapidity with
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`which innovations are made, the sophistication of the technology, the level of
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`education of active workers in the field, and my own experience working with
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`those of skill in the art at the time of the invention.
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`21.
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`In this case, Dr. Almeroth has asserted in his declaration that a person
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`of ordinary skill in the art (POSITA) at the time of the ’038 Patent would have had
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`“a Bachelor’s degree in Computer Science or an equivalent field and three to five
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`years of experience working with Internet communication systems. Additional
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`education might compensate for less experience, and vice-versa.” Exhibit 1003,
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`Almeroth Declaration at 42, ¶96. I have employed Dr. Almeroth’s definition in
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`this declaration.
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`7
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`22.
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`I was at the time of invention, and am, at least one of more than
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`ordinary skill in the art through my education and research experience. As of the
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`date of the invention, I was and am very familiar with telecommunications
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`systems, Internet communications systems, computer networks, communications
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`protocols, Internet protocols, including systems and protocols related to voice
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`communications, SMS and text communications, group communications, and
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`wireless communications. Indeed, I am very familiar with people having this level
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`of skill in the area of Internet communications systems and protocols. I have been
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`teaching undergraduate and graduate level courses in computer network
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`architecture and protocols, including various techniques for voice communications,
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`SMS and text communications, group communications, and wireless
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`communications.
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`B. Claim Construction
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`23.
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`I understand that claims of the ʼ038 patent in this IPR are generally
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`interpreted according to their ordinary and customary meaning taking into
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`consideration the so-called “intrinsic evidence” of the patent consisting of (1) the
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`claim language; (2) the specification; and (3) the prosecution history. I understand
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`that the Board has discretion to take into consideration so-called “extrinsic
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`evidence” including references (prior art and non-prior art) as well as definitions
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`from dictionaries and treatises.
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`8
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`24.
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`I understand that claim terms may be explicitly defined in the patent
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`specification, or they may be implicitly defined through consistent usage in the
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`specification. I also understand that the scope of claim terms may be limited by
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`statements in the specification or prosecution history where the applicant clearly
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`disavows or disclaims subject matter in a clear and unmistakable manner.
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`C. Obviousness (35 U.S.C. § 103)
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`25.
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`I have been informed that a patent may be invalid if the claimed
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`invention considered as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art. 35 U.S.C. § 103. I have been
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`informed that the following factors must be evaluated to determine whether
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`Petitioner has met its burden of proof on obviousness: (1) the scope and content of
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`the prior art; (2) the level of ordinary skill in the art; and (3) the differences
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`between the claimed subject matter and the prior art. Based on these factual
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`inquiries, it must then be determined, as a matter of law (4) whether or not the
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`claimed subject matter as a whole would have been obvious to one of ordinary skill
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`in the art at the time the alleged invention was made.
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`26.
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`I understand that a finding of obviousness requires a showing that as
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`of the date of the invention (a) the prior art teaches or suggests each of the
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`limitations of the claim; (b) there exists an apparent reason or motivation to
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`combine and/or modify the prior art as proposed; and (c) a person of ordinary skill
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`9
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`would have a reasonable expectation of success, including that the proposed
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`combination and/or modification of the prior art would operate for its intended
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`purpose.
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`27.
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`I have been informed that a claim is not proved obvious merely by
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`demonstrating that each of the elements was independently known in the prior art.
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`I have been informed that many, if not all, inventions rely on building blocks
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`already known, and claimed inventions almost of necessity will likely be
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`combinations of what is already known.
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`28.
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`I have been informed that it is important in the obviousness inquiry to
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`identify whether a reason existed at the time of the invention that would have given
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`a POSITA motivation to combine and/or modify the prior art references in the
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`manner proposed by the Petitioners so as to arrive at the claimed invention. Put
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`another way, a finding of obviousness should be supported by an apparent reason
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`to combine and/or modify the prior art references as proposed by the Petitioners.
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`29.
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`I also understand that the obviousness inquiry should guard against
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`hindsight bias or hindsight reconstruction where after-the-fact reasoning is applied
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`to combine prior art elements using the claimed invention as a template, without
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`establishing that, as of the date of the invention, there exists a motivation to
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`combine or apparent reason to combine and/or modify the prior art as proposed.
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`10
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`30.
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`I have been informed that it is important in the obviousness inquiry
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`that it is understood how the combination of references is supposed to work. An
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`explanation of the operation of the combined references is often a prerequisite to
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`showing that a person of ordinary skill in the art would have been motivated to
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`make the proposed combination and would have had a reasonable expectation of
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`success in doing so.
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`31.
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`In assessing obviousness, I have been instructed to consider both the
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`ordinary creativity and common sense of the person of ordinary skill in the art. I
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`also understand that it is impermissible for common sense to be applied so as to fill
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`gaps in prior art that fails to teach or suggest a limitation of the claim.
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`32.
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`In assessing obviousness, I have been instructed that, in order to
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`qualify as proper prior art for an obviousness analysis, a reference must qualify as
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`analogous art. I have been informed that a reference qualifies as analogous art with
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`respect to the claims if it is either: (1) from the same field or endeavor as the
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`patent; or (2) the reference is reasonably pertinent to the particular problem
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`addressed by the invention. I have also been informed that in order for a reference
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`to be reasonably pertinent, it must logically have commended itself during the
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`ordinary course of development to an inventor’s attention in considering his
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`problem.
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`11
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`TERMINOLOGY
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`33. The claims of the ʼ038 patent use the term “first user” to refer to the
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`sender and “second user” to refer to the recipient of a message. The specification
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`and the prior art references use other terminology as well, including “user,”
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`“client,” “subscriber,” “person,” etc. To avoid confusion, Patent Owner and I use
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`the terms “sender” and “recipient” herein.
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`GROUND I – DIACAKIS DOES NOT OBVIATE CLAIMS 7, 10-12,
`22-24, 33-36, 38-41, 46, 49, 51-53, 55, 57-58 OR 64-66
`
`A. Diacakis (Exhibit 1007)
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`
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`34. Diacakis teaches a “presence and availability management system.”
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`Diacakis defines “presence” as “the ability of an individual to access a particular
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`communications network” and “availability” as “the willingness of an individual
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`who is present in one or more communications networks to be reached by one or
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`more persons.” Exhibit 1007, Diacakis at [0003], [0026], [0027].
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`
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`35. Diacakis’s presence and availability (P&A) management system
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`determines whether a user is present on the network (i.e., whether the user’s device
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`is powered on); determines whether a user is available on the network (whether the
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`user is willing to receive communications from others); and communicates P&A
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`information to others, depending on the user’s preference.
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`12
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`Exhibit 1007, Diacakis at Fig. 4.
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`36. Diacakis teaches that an individual may create profiles, such as the
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`office profile in Fig. 2, to instruct the P&A system how to distribute his/her contact
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`information. A profile specifies what subset of the individual’s contact
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`information subscribers at a given access level receive:
`
`For example, an individual may have an office profile as indicated in
`FIG. 2. Thus, a subscriber with an access level of “Important” would
`receive the items marked “Yes” in the “Important” column, with the
`preference indicated (where appropriate), thereby making it very easy
`for “important” subscribers to communicate with the individual.
`Persons in the “Normal” access level would receive less contact
`information than persons in the “Important” access level, and persons
`in the “Restricted” access level would receive even less contact
`information.
`
`
`Exhibit 1007, Diacakis at [0032] (emphasis added).
`
`
`
`13
`
`
`
`
`
`37. Diacakis Fig. 3 also shows that subscribers at the “Restricted” access
`
`level receive only the voicemail number, subscribers in the “Normal” access level
`
`receive the work phone number, voicemail number, and e-mail, and subscribers in
`
`the “Important” access level receive two phone numbers, a voicemail number, two
`
`e-mails, and an IM address. Also, “the indicator module 110 may determine
`
`whether an address for each data content type (e.g., telephone, text (IM), video,
`
`graphic, audio, etc.) has been transmitted from the P&A management server 12.”
`
`Exhibit 1007, Diacakis at [0066].
`
`
`
`Exhibit 1007, Diacakis at Fig. 3.
`
`
`
`38. According to Diacakis, the P&A management system employs a
`
`publisher-subscriber model that updates the subscribers of an individual’s presence
`
`and availability status as soon as the individual publishes a change to the profile:
`
`
`
`14
`
`
`
`When the individual transmits a change in profile to the server 12, the
`server publishes the change to each of the connected clients 22 that
`are subscribers of the individual's information. The publisher-
`subscriber model enables subscribers to observe a particular
`individual’s P&A information instantly.
`
`
`Exhibit 1007, Diacakis at [0029].
`
`
`
`39. Subscribers access an individual’s P&A information on their client
`
`terminals via a “Contacts Program” akin to the Contacts application in today’s
`
`smartphones. Exhibit 1007, Diacakis at [0056] and Fig. 8.
`
`
`As shown in the left-hand window of Fig. 8, a subscriber has access to the contact
`
`
`
`information of an individual:
`
`As illustrated, the subscriber may navigate the list of names in the
`right hand window (“Contacts Program”) to access the P&A
`
`
`
`15
`
`
`
`information regarding the highlighted individual in the left hand
`window (“Contact Properties”).
`
`
`Exhibit 1007, Diacakis at [0056]. For instance, the left-hand window in Fig. 8
`
`shows multiple phone numbers, voice numbers, IM addresses, and e-mails for the
`
`contact “Jonathan” who is highlighted in the right-hand window of Fig. 8. Exhibit
`
`1007, Diacakis at Fig. 8.
`
`
`
`40. Diacakis’s P&A management system updates the availability
`
`information by updating the indicator next to each availability means (i.e., piece of
`
`contact information):
`
`The contact information in the left hand window may be updated
`based on availability information transmitted from the identified
`individual’s P&A management server 12.
`
`
`Exhibit 1007, Diacakis at [0056]. For instance, according to the left-hand window,
`
`contact “Jonathan” is available by all means except the second IM address. Exhibit
`
`1007, Diacakis at Fig. 8.
`
`
`
`41. Diacakis teaches conventional systems that display multiple entries
`
`for a contact, each entry corresponding to an available address, e.g., as in the left-
`
`hand window of Fig. 8, where there are multiple lines for contact Jonathan. Exhibit
`
`1007, Diacakis at Fig. 8. Diacakis, on the other hand, discloses a method which
`
`“may relate the various entries for an individual and merge them together as one
`
`entry.” Id. at [0059]. For instance, the left-hand window of Fig. 8 shows that
`
`contact Jonathan is available on one IM address but not the other. Id. at Fig. 8.
`16
`
`
`
`
`
`This information is summarized in the right-hand window into a single IM icon
`
`that shows contact Jonathan as available through IM. Similarly, contact Jonathan
`
`is available on both phone numbers listed in the left-hand window, and this is
`
`summarized into a single phone icon in the right-hand window that shows contact
`
`Jonathan as available via a telephone. Id.
`
`
`
`42. As explained in Diacakis, the user interface is implemented at the
`
`subscriber (client) terminal and is simply the interface of the subscriber’s Contact
`
`application:
`
`The indicator module 110 may receive availability information from
`one or more P&A management servers 12 and merge the contact
`information for each individual into a single indicator, as described
`previously in connection with FIG. 8, for display by the user interface
`112.
`
`
`Exhibit 1007, Diacakis at [0064]. Therefore, the user interface of Diacakis simply
`
`allows the subscriber who owns the device to access all his/her contacts and their
`
`availability – it does not enable worldwide access to a particular individual.
`
`
`
`43. Diacakis also teaches that the names appearing in Fig. 8 are simply
`
`the names of the subscriber’s contacts:
`
`the subscriber may navigate the list of names in the right hand
`window (“Contacts Program”) to access the P&A information
`regarding the highlighted individual in the left hand window
`(“Contact Properties”).
`
`
`Exhibit 1007, Diacakis at [0056].
`
`
`
`17
`
`
`
`For example, with reference to FIG. 8, the indicator for Jonathan
`identifies Jonathan by name and indicates that Jonathan is available to
`the subscriber to receive data content by telephone and instant
`messaging.
`
`
`Exhibit 1007, Diacakis at [0064]. Diacakis’s use of first names in the Contacts
`
`Program indicates that these are not meant as unique identifiers.
`
`
`
`
`
`1.
`
`Diacakis Does Not Provide Or Support Messages
`
`44. Diacakis is an improved P&A system that does not include a
`
`communication system for users to interact, i.e., Diacakis does not provide or
`
`support messages communicated from one user to another, as independent claims
`
`7, 38, and 46 of the ʼ038 patent requires. For example, Diacakis does not show
`
`anyone making a call or receiving a call via the P&A system.
`
`45.
`
`In a related IPR proceeding, the Board recently determined that
`
`Diacakis does not provide messages from a subscriber to an individual:
`
`In short, based on the evidence of record, Petitioner shows only that
`the server in Diacakis provides the appropriate address or phone
`number and the presence and availability information regarding the
`individual to the subscriber who wishes to contact an individual, not
`that the server receives the “message” the subscriber is trying to
`convey to the individual.
`
`
`Exhibit 2006, Decision Denying Institution, IPR2022-00297 at 26 (PTAB May 26,
`
`2022) (emphasis added).
`
`
`
`
`
`
`
`18
`
`
`
`
`
`B.
`
`[7.0] “Network-Based Portal” (“NBP”)1
`
`46. The Petition defines a “network-based portal” as “a web page or
`
`interface that connects clients to a network.” See Petition at 34, 55-56, and 57.
`
`Petitioner points to the “client terminal 22” containing the “user interface 112”:
`
`
`
`
`
`
`1 The claim term “network-based portal” appears several times throughout claim 7
`(and independent claims 38 and 46). Since this claim term first appears in [7.0],
`Patent Owner and I address it here.
`
`
`
`19
`
`
`
`
`
`Petitioner contends “Diacakis’ client terminal 22” contains “a network-based
`
`portal”. See Petition at 34-35 (emphasis added).
`
`47. With respect to “client terminal 22,” Diacakis repeatedly teaches that
`
`the client terminal is just that, a client terminal at the client side of a network; it is
`
`not a server at the server side of a network. See Exhibit 1007, Diacakis at [0024],
`
`[0030], [0034], [0035], and [0056]. Diacakis’s “client terminal” is a
`
`“communication device”:
`
`The client terminal 22 is illustrated as a personal computer in FIG. 1,
`although according to other embodiments the client terminal may be
`another type of communication device such as, for example, a wireless
`telephone (such as a WAP (Wireless Application Protocol)-enabled
`phone) or a wireless or connected personal digital assistant (PDA).
`
`
`Exhibit 1007, Diacakis at [0024] (emphasis added).
`
`
`
`48. With respect to the “user interface 112,” Diacakis teaches that the
`
`“user interface 112” is provided by the client device and that it “may include, for
`20
`
`
`
`
`
`example, a GUI (Graphical User Interface) or a CUI (Character-based user
`
`interface).” Exhibit 1007, Diacakis at [0063].
`
`1.
`
`A “Portal” Is Not A User Terminal Or A Client
`Communication Device
`
`49.
`
`“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.” See, e.g.,
`
`https://www.techopedia.com/definition/13077/portal-internet. “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.” See, e.g.,
`
`https://www.techtarget.com/whatis/definition/portal. Websites are hosted on web
`
`servers, not on client communication devices such as Diacakis’s client terminal 22.
`
`Id.
`
`
`
`2.
`
`The ʼ038 Specification Defines “Portal” As A “Gateway”
`And Defines A “Gateway” As A “Networked Server”
`
`50. Consistent with its common meaning, the specification of the ʼ038
`
`patent defines a “portal” as a “communication gateway”. Exhibit 1001, ʼ038 Patent
`
`at Col. 4, line 22, Col. 4, lines 62-63, Col. 7, lines 11-12, and Col. 7, line 15. The
`
`specification also defines a “gateway” as a “networked server”:
`
`
`
`21
`
`
`
`The remote server computer can be a networked server coupled to the
`network 108. One example of a networked server is a gateway
`computer for a wireless 10 electronic device, such as a mobile
`telephone.
`
`
`Exhibit 1001, ʼ038 Patent at Col. 16, lines 15-18. Importantly, the ʼ038
`
`specification does not define “portal” or “network-based portal” as an end-user
`
`device or client communication device. Id.
`
`
`
`
`
`
`
`3.
`
`The Functionality Of A “Portal” Is Different Than That Of
`A Client Communication Device
`
`51. Based on the ʼ038 specification’s use of the term “portal”, a POSITA
`
`would understand that the functionality of the claimed “portal” is different than
`
`that of a client communication device. Specifically, a POSITA would understand
`
`that a portal allows “worldwide access”, whereas a client communication device is
`
`“associated with a user”. This is consistent with the teachings of the ʼ038
`
`specification:
`
`(1)
`
`“The portal allows worldwide access to the user”
`
`
`
`
`
`Exhibit 1001, ʼ038 Patent at Col. 4, lines 52-53;
`
`“A portal or gateway approach could provide general Internet
`(2)
`access to one or more embodiments of the communication management
`systems”
`
`
`Id. at Col. 7, lines 11-14 (indicating that a portal can be accessed by multiple users
`
`through the Internet);
`
`
`
`22
`
`
`
`“Peter wants to make a mobile phone call to the user. In one
`(3)
`embodiment, Peter calls a portal…. In another example, Peter is also a
`registered user of the portal.”
`
`
`Id. at Col. 6, lines 33-39 (indicating again that multiple users may access the
`
`portal);
`
`
`
`“not provided to the first user via the electronic device
`(4)
`
`associated with the first user, … the message is received by the secon
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