UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner
`
`
`U.S. PATENT NO. 10,492,038
`
`Case IPR2022-00294
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
`INGENIOSHARE, LLC,
`Patent Owner
`
`
`U.S. PATENT NO. 10,492,038
`
`Case IPR2022-00294
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`BECAUSE THE ROUSKAS DECLARATION MERELY REPEATS
`THE POR IT IS ENTITLED TO NO WEIGHT ............................................. 3
`III. GROUND I: CLAIMS 7, 10–12, 22–24, 33–36, 39–41, 49, 51–53, 55,
`57–58, AND 64–66 ARE RENDERED OBVIOUS BY DIACAKIS ............ 4
`A. Diacakis Teaches A “Network-Based Portal” ....................................... 5
`B.
`Diacakis Teaches A “Prior Registration Process” .............................. 12
`C.
`Diacakis Teaches “Messages” ............................................................. 12
`D. Diacakis Teaches That A Second User’s Contact Information Is
`Not Provided To Others By Virtue Of The Second User
`Receiving A Message .......................................................................... 15
`IV. GROUND II: CLAIMS 8, 9, 43, 44, 47, 48, 50, AND 54 ARE
`RENDERED OBVIOUS BY DIACAKIS IN VIEW OF LOVELAND....... 18
`V. GROUND III: CLAIMS 37, 42, 56, 59–63, AND 67 ARE
`RENDERED OBVIOUS BY DIACAKIS IN VIEW OF
`TAKAHASHI ................................................................................................ 19
`VI. GROUND IV: CLAIM 45 IS RENDERED OBVIOUS BY
`DIACAKIS, LOVELAND, AND TAKAHASHI ......................................... 20
`VII. CONCLUSION .............................................................................................. 21
`
`
`
`
`
`
`
`
`ii
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
` Cases
`Hulu, LLC v. Sito Mobile R&D IP, LLC,
`IPR2021-00304, Paper 30 ..................................................................................... 3
`Juniper Networks, Inc. v. Brixham Solutions, Ltd.,
`IPR2014-00425 Paper 38 ...................................................................................... 3
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 12
`Thorner v. Sony Comput. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 7
`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................... 3
`Unless otherwise noted, all emphasis is added.
`
`
`
`iii
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`LIST OF PETITIONER’S UPDATED EXHIBITS
`Description
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`
`
`U.S. Patent No. 10,492,038
`
`File History of U.S. Patent No. 10,492,038
`
`Declaration of Dr. Kevin Almeroth in Support of Inter Partes Review
`of U.S. Patent No. 10,492,038
`Curriculum Vitae of Dr. Kevin Almeroth
`
`U.S. Provisional Patent Application No. 60/527,565
`
`U.S. Provisional Patent Application No. 60/689,686
`
`U.S. Patent Application 2002/0116461 (“Diacakis”)
`
`U.S. Patent No. 7,287,056 (“Loveland”)
`
`U.S. Patent Application 2002/0183114 (“Takahashi”)
`
`Unused
`
`Unused
`
`IngenioShare’s Infringement Contentions in Texas Litigation
`
`Texas Litigation Proposed Scheduling Order
`
`Fourteenth Supplemental Order Regarding Court Operations Under
`the Exigent Circumstances Created by the COVID-19 Pandemic
`Judge Albright’s Standing Order re Inter-District Transfer
`
`Kurose, J. and Ross, K., Computer Networking: A Top-Down
`Approach Feature the Internet (2000)
`Kuehn, S., A Play Theory Analysis of Computer-Mediated
`Telecommunication (Apr. 20, 1990)
`Telecomputing in Japan
`
`Hernandez, R., ECPA and Online Computer Privacy (1988)
`
`iv
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`
`
`Miller, A., Applications of Computer Conferencing to Teacher
`Education and Human Resource Development (1991)
`Benimoff, N. and Burns, M., Multimedia User Interfaces for
`Telecommunications Products and Services (1993)
`Falconer, W. and Hooke, J., Telecommunications Services in the
`Next Decade (1986)
`Hine, N.A., et al., An Adaptable User Interface to a Multimedia
`Telecommunications Conversation Service for People with
`Disabilities (1995)
`Bazaios, A., et al., Multimedia Architecture Offering Open Distance
`Learning Services over Internet
`Stein, J., et al., Chat and Instant Messaging Systems (2002)
`
`U.S. Patent No. 6,241,612 (“Heredia”)
`
`U.S. Patent Application 2003/0216178 (“Danieli”)
`
`International Patent Application WO 01/45343 (“Davies”)
`
`Grinter, R. and Palen, L., Instant Messaging in Teen Life (2002)
`
`File History of U.S. Patent No. 8,744,407
`
`File History of U.S. Patent No. 9,736,664
`
`U.S. Patent No. 10,492,038 Claim Listing
`
`U.S. Patent No. 6,828,924 (“Gustavsson”)
`
`Unused
`
`Unused
`
`File History of U.S. Patent No. 9,204,268
`
`Declaration of Yimeng Dou Pursuant to 37 C.F.R. 42.64(b)(2)
`
`Declaration of Jennifer A. Babbitt Pursuant to 37 C.F.R. 42.64(b)(2)
`
`Supplemental Declaration of Dr. Kevin Almeroth Pursuant to 37
`C.F.R. 42.64(b)(2)
`
`v
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`Comparison between Paper 17 (Patent Owner Response) and
`Ex. 2005 (Declaration of Professor George N. Rouskas, Ph.D.)
`Liferay.com, “What Is A Web Portal?” available at
`https://www.liferay.com/resources/l/web-portal
`Gartner, “Mobile Portal,” available at https://www.gartner.com/
`en/information-technology/glossary/mobile-portal
`Deposition Transcript of Dr. George Rouskas
`
`1040
`
`1041
`
`1042
`
`1043
`
`
`
`vi
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`I.
`
`INTRODUCTION
`In the Institution Decision (“ID”), the Board credited Petitioner’s arguments,
`
`finding “there is a reasonable likelihood Petitioner would prevail with respect to at
`
`least one claim challenged in the Petition” and instituting review of Claims 7–12,
`
`22–24, and 33–67 (the “Challenged Claims”). ID, 67. In its Patent Owner Response
`
`(“POR”), Patent Owner IngenioShare, LLC (“PO”) tacitly admits that Petitioner’s
`
`grounds render large swaths of the ’038 Patent obvious. Regarding Grounds I–IV
`
`(Diacakis in view of Loveland and Takahashi), PO does not specifically defend the
`
`Challenged Claims other than arguing that certain elements of Claim 7 are not
`
`rendered obvious by Diacakis. The few arguments PO does raise are unavailing.
`
`Regarding Diacakis (Ground I), PO specifically addresses only some elements
`
`of Claim 7, but as discussed immediately below, none of PO’s arguments is
`
`meritorious. Moreover, all rely on an expert declaration that merely parrots the POR,
`
`which is entitled to no weight. Ex. 2005 (“Rouskas Declaration”).
`
`• First, PO argues Diacakis fails to teach the claimed “network-based
`
`portal” (“NBP”) because PO argues the term “portal” does not include the
`
`user interfaces Diacakis discloses. Yet, PO’s own expert, Dr. Rouskas,
`
`admitted the term is not limited in that way. Moreover, as the Board
`
`previously found, PO’s construction would exclude the ’038 Patent’s
`
`preferred embodiments of the invention. ID, 23–24.
`
`
`
`1
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`• Second, PO argues Diacakis does not teach a “prior registration process,”
`
`but PO’s argument improperly injects a non-existent claim requirement
`
`that the registration must be done using the user’s device.
`
`• Third, PO argues Diacakis does not allow users to communicate, but this
`
`ignores Diacakis’s clear disclosures (and the Board’s findings) of client-
`
`to-client communication. ID, 40.
`
`• Fourth, PO argues Diacakis fails to teach the negative limitation of a
`
`recipient’s contact information not being provided to a sender by virtue of
`
`the communication. Yet, as the Board determined, Diacakis expressly
`
`discloses that users control what contact information others may view. ID,
`
`48.
`
`
`
`PO’s arguments regarding Diacakis’s combinations with Loveland and
`
`Takahashi (Grounds II–IV) are likewise unavailing. With respect to these
`
`combinations, PO merely repeats its Ground I arguments, including that Diacakis
`
`does not allow users to communicate, which is incorrect for the reasons indicated
`
`above. Thus, Claims 7–12, 22–24, and 33–67 are invalid and obvious.
`
`
`
`2
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`II. BECAUSE THE ROUSKAS DECLARATION MERELY REPEATS
`THE POR IT IS ENTITLED TO NO WEIGHT
`The Rouskas Declaration repeats the POR nearly verbatim. Ex. 1040.1 This
`
`is a classic example of a cursory expert declaration the Board disregards. See, e.g.,
`
`Hulu, LLC v. Sito Mobile R&D IP, LLC, IPR2021-00304, Paper 30 at 68 (declarant’s
`
`“cursory and unsupported testimony entitled to little weight” where it “repeat[ed]
`
`verbatim without any additional clarification Patent Owner’s contentions from the
`
`Patent Owner Response”). The Board previously disregarded another Rouskas
`
`declaration for this very reason. See Juniper Networks, Inc. v. Brixham Solutions,
`
`Ltd., IPR2014-00425 Paper 38, at 13 (Rouskas declaration afforded “little weight
`
`because his testimony is conclusory and unsupported by evidentiary explanations”).
`
`Here, the Rouskas Declaration is “entitled to little or no weight” for the same
`
`reasons. See 37 C.F.R. § 42.65(a).
`
`Dr. Rouskas’s deposition testimony further demonstrates that his declaration
`
`is unreliable. In PO’s preliminary response (“POPR”), it argued an NBP is “at the
`
`server-side” and cannot be a user interface in a client device. Paper 10, 1–2, 12–17.
`
`
`1 The declaration substantively differs from the POR only by citing to two webpages
`
`(Ex. 2005, 21), but these websites fail to advance PO’s NBP arguments, as discussed
`
`below in Section III.A.
`
`
`
`3
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`Dr. Rouskas admitted he was retained months after the POPR was filed and that he
`
`did not review the POPR, yet he claimed he conceived of PO’s NBP argument.
`
`Ex. 1043, 25:2–26:2, 53:23–54:14. This is not credible; indeed, his declaration
`
`copied-and-pasted several portions of the POPR:
`
`POPR (Paper 10)
`
`Rouskas Declaration (Ex. 2005)
`
`
`
`
`
`E.g. Paper 10, 7–9, with Ex. 2005, ¶¶ 47–48. His declaration should be given no
`
`weight for the additional reason that it appears to contain opinions he did not
`
`develop.
`
`Moreover, as explained below, at his deposition Dr. Rouskas contradicted his
`
`declaration
`
`and
`
`admitted
`
`the opinions
`
`therein
`
`rest on
`
`fundamental
`
`misunderstandings of the challenged claims and prior-art references. Because the
`
`Rouskas Declaration contains no expert analysis nonredundant of the attorney
`
`argument in the POR and is contradicted by Dr. Rouskas’s own deposition
`
`testimony, it should be afforded no weight.
`
`III. GROUND I: CLAIMS 7, 10–12, 22–24, 33–36, 39–41, 49, 51–53, 55, 57–
`58, AND 64–66 ARE RENDERED OBVIOUS BY DIACAKIS
`Aside from the below limitations, PO does not dispute Diacakis teaches
`
`Claims 10–12, 22–24, 33–36, 39–41, 49, 51–53, 55, 57–58, and 64–66 and some of
`4
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`the elements of Claim 7. As to the few limitations PO does address, they are
`
`obvious.2
`
`A. Diacakis Teaches A “Network-Based Portal”
`As the Board recognized with respect to Element 7.0, giving the term
`
`“network-based portal” its “ordinary and customary meaning,” Diacakis discloses
`
`an NBP because it references a user interface in a client terminal connected to a
`
`P&A management server via a network. See ID, 22–24; Pet., 33–35; Ex. 1003,
`
`¶ 242. In both the ’038 Patent and Diacakis, the claimed functionality appears in
`
`mobile phones—which PO admits are client devices. POR, 19.
`
`In the POR, PO revives the same argument the Board already rejected: that
`
`the NBP resides only at the server-side of a network and excludes user interfaces of
`
`“client communication devices such as Diacakis’s client terminal 22.” POR, 11.
`
`PO’s argument is wrong for several reasons.
`
`First, PO relies on the Rouskas Declaration’s offering of extrinsic definitions
`
`to show that “portals” are websites, but Dr. Rouskas admitted “[t]here’s nothing to
`
`limit the portal to just a server or a website.” Compare POR, 11, with Ex. 1043,
`
`
`2 PO addresses Independent Claims 38 and 46 only with reference to Claim 7. POR,
`
`21–35.
`
`
`
`5
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`60:7–61:8; see also id., 57:7–11 (declining to equate “portals” to websites), 58:5–9
`
`(same). Moreover, Dr. Rouskas admitted the two definitions in the Rouskas
`
`Declaration were cherry-picked from search results for “portal” rather than from any
`
`nuanced inquiry or analysis. Id., 62:24–63:10. This method selectively disregarded
`
`definitions that include the word “interface.” See Exs. 1041 (“A portal is a web-
`
`based platform that collects information from different sources into a single user
`
`interface[.]”), 1042 (“A mobile portal is an Internet gateway that enables mobile
`
`devices to connect remotely . . . typically via a Web browser interface.”). In any
`
`event, PO’s argument limiting “portals” to websites is based on a fundamental
`
`misunderstanding of the claim, which Dr. Rouskas yielded in deposition: the
`
`Rouskas Declaration claims the NBP cannot be in a client device because it must be
`
`“hosted on [a] web server[],” but Dr. Rouskas acknowledged no claim limitation
`
`requires the NBP to be “hosted.” Compare Ex. 2005, ¶ 49 and Ex. 1043, 84:11–14,
`
`with id., 84:16–85:11.
`
`Second, PO incorrectly argues the ’038 Patent defines “portal” as a “gateway”
`
`and that a gateway is always a “networked server.” POR, 11–12. But the
`
`specification states that “[a] communication gateway or a portal is formed”—not
`
`that the portal is a communication gateway. Ex. 1001, 4:23–24. Indeed, the
`
`specification treats the phrase “portal or gateway” differently from the singular
`
`“portal,” using these phrases to describe different embodiments, indicating that
`
`
`
`6
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`portals and gateways are two alternative means to establish communication. See id.,
`
`4:33–47; 4:48–62, 4:62–5:4. The specification further states that “[o]ne example of
`
`a networked server is a gateway computer”—not that all gateways are servers.
`
`Ex. 1001, 16:17–19. Dr. Rouskas admits as much. Ex. 1043, 96:20–97:1 (“It
`
`doesn’t say that [gateway] means network[ed] server, yes.”); see also id., 94:18–
`
`95:1; Ex. 1003, ¶¶ 242. Dr. Rouskas nevertheless opines that the word “or” defines
`
`“portal” as “gateway.” Id., 90:17–24. But the ’038 Patent’s recitation of “portal or
`
`gateway” means the two are alternatives, not that one redefines the other. See
`
`Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1367-68 (Fed. Cir. 2012)
`
`(holding that the phrase “embedded within or attached to” did not redefine
`
`“embedded” as “attached” or vice versa).
`
`Third, PO argues the NBP and client devices have different functionalities
`
`because the NBP “allows worldwide access to the user,” whereas a “client
`
`communication device is ‘associated with a user.’” POR, 12–13. This is a
`
`distinction without a difference. As the Petition explains, Diacakis’s client terminal
`
`(1) connects a user to a network via the NBP and (2) is associated with that user.
`
`Pet., 33–35. For instance, as Dr. Rouskas admitted, a user’s mobile phone allows
`
`worldwide access to that user by allowing others to communicate with the user.
`
`Ex. 1043, 110:20–24, 114:2–5 (“One is worldwide access to the user. A phone
`
`
`
`7
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`provides that, there’s no question about that.”). PO offers no explanation why such
`
`a device “is not accessible ‘worldwide.’” POR, 13, 15–16.
`
`Fourth, PO counters a strawman argument (that only the sender’s device
`
`contains the NBP) that Petitioner did not advance. POR, 14, 16–17, 27–28. Relying
`
`on this mischaracterization, PO concludes Diacakis cannot meet the NBP limitation,
`
`the identifier limitation (i.e., a user’s “corresponding identifier” is “set via the
`
`network-based portal”) because a recipient cannot use the sender’s device to set the
`
`recipient’s identifier, and the negative limitation (i.e., communicating without
`
`providing contact information) because senders’ devices would have access to
`
`others’ contact information. Id. This is incorrect.
`
`As the Petition explained, all users (including senders and recipients) use
`
`Diacakis’s NBP to connect to Diacakis’s network—i.e., the NBP does not solely
`
`exist in a sender’s device. Pet., 33–35; Ex. 1003, ¶ 242. As Diacakis explains,
`
`senders and recipients access the NBP via their respective devices. See Ex. 1007,
`
`[0031] (explaining that users of Diacakis’s system 10 instruct the system how, when,
`
`and from whom they prefer to receive communications). Accordingly, as shown
`
`below in Diacakis’s Figures 1 and 9, all users of communications system 10 access
`
`it via client terminals 22, which contain user interface 112 (i.e., the NBP), indicating
`
`that both senders and recipients use this interface:
`
`
`
`8
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`
`
`PRESENCE
`DETECTION
`
`Profile
`Database
`
`
`
`TERMIAL
`
`AVAILABILITY
`MANAGEMENT
`ENGINE
`
`
`
`ENGINE
`
` Availability information from
`
`P&A management server 12
`
`Fig. 1
`
`
`
`+40
`
`112
`
`
`
`9
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`Ex. 1007, Figs. 1, 9. PO’s argument that Diacakis’s interface only allows sending
`
`(not receiving) messages fails for the same reasons. POR, 8, 22–25.
`
`Fifth, although the Board found PO’s argument excluded a preferred
`
`embodiment of the ’038 Patent (specifically Figures 7–11), PO insists its argument
`
`did not because the figures allegedly describe methods performed after receiving a
`
`message, rather than enabling receipt of a message. POR, 19–21. That is incorrect.
`
`The ’038 Patent’s claims state “the first message is received by the second user.”
`
`Ex. 1001, cls. 7, 38, 46. In fact, as the Board understood, key “recipient”
`
`functionality (i.e., allowing users to specify who may contact them and see their
`
`contact information), takes place “all in the phone,” since these phones
`
`“automatically manage the communication.” Id., 7:32–36; ID, 23–24. Thus, the
`
`NBP not only enables receipt of messages but also manages them. See Ex. 1003,
`
`¶ 263.
`
`Moreover, contrary to PO’s argument, the client devices described by the ’038
`
`Patent enable messages to be received, as annotated in Figure 7 below:
`
`
`
`10
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`Ex. 1001, Fig. 7; see also id., Figs. 8–11, 3:29–33, 9:22–10:5, 10:34–13:43, 15:12–
`
`
`
`16:19.
`
`
`
`Faced with this fact, PO argues these disclosures are “not embodiments for
`
`‘managing electronic communications using at least a network-based portal’ as are
`
`the claims of the ’038 Patent.” POR, 20. This is not correct. All of the ’038 Patent’s
`
`
`
`11
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`independent claims recite an NBP—thus, because the patent’s figures are
`
`embodiments of the patent, they must include an NBP. PO remains silent as to the
`
`purpose of these disclosures, if not related to the claims. As the Board recognized,
`
`a construction “which excludes the preferred embodiment is rarely, if ever correct.”
`
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755
`
`(Fed. Cir. 2016) (internal quotation marks omitted). PO’s argument thus fails.
`
`B. Diacakis Teaches A “Prior Registration Process”
`With respect to Element 7.1, PO does not dispute that Diacakis’s users must
`
`undergo a prior registration process. Pet., 41–42. Rather, PO argues that “a user
`
`does not go through a registration process with their Contact app before they can use
`
`[Diacakis]; they simply open it and use it.” POR, 22. Yet, the claim merely requires
`
`a “prior registration process by the first user regarding the use of the network-based
`
`portal.” Ex. 1001, cl. 7. It does not require a user to register “with their Contact
`
`app”—which PO improperly attempts to inject. PO cites nothing suggesting a user
`
`could “simply open [] and use” Diacakis’s system without any registration. POR,
`
`22.
`
`C. Diacakis Teaches “Messages”
`With respect to Elements 7.3, 7.5, 7.7, and 7.8, PO argues Diacakis “does not
`
`teach a system that actually allows a user to make a communication.” POR, 22; see
`
`id., 8, 21–27, 35. That is wrong. As the Board concluded, Diacakis discloses a first
`
`
`
`12
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`user sending a message to a second user. ID, 43; Pet., 39–42; Ex. 1003, ¶¶ 250–253.
`
`Indeed, Diacakis expressly teaches two client devices communicating with each
`
`other: “a subscriber at client terminal 22 may first attempt to communicate with an
`
`individual at client terminal 140 via one or more intermediate relay hosts 142.”
`
`Ex. 1007, [0072]. Relay host 142 can be “a presence and availability host” such as
`
`Diacakis’s P&A server. See id. This client-to-client messaging is shown below in
`
`Figure 11, which Dr. Rouskas acknowledged in deposition:
`
`See id., Fig. 11; Ex. 1043, 145:10–16; 422:19–423:1 (admitting Diacakis teaches
`
`client-to-client communication either with a P&A host or without one). Diacakis’s
`
`
`
`
`
`13
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`teachings “provide a user-friendly interface allowing subscribers to contact
`
`individuals without having to be concerned about different communication devices,
`
`their different communication devices, their addresses and capabilities.” See Pet.,
`
`44 (citing Ex. 1007, [0062]). Rather than knowing others’ phone numbers or
`
`addresses, a user “may instead refer to a single indicator and use that information to
`
`initiate point-to-point contact.” See id. The fact that Diacakis’s users may
`
`communicate without knowing others’ contact information necessarily means that
`
`they use Diacakis’s platform to communicate.3
`
`Despite this, PO argues Diacakis only informs users of other user’s presence
`
`and availability—essentially reducing Diacakis to a digital phone book—because in
`
`
`3 Moreover, in related proceedings, the Board noted that even if Diacakis had not
`
`expressly disclosed a recipient responding to a sender’s message, such a response
`
`would have been obvious. See ’727 ID, 23; see also Pet. 39–44; Ex. 1007, [0023]
`
`(noting that elements of “a typical communications network” (e.g., two users
`
`sending messages back and forth) are not discussed in detail “because such elements
`
`are well known in the art”). Accordingly, Diacakis not only discloses one user
`
`messaging another, but also renders at least obvious two users sending messages
`
`back and forth.
`
`
`
`14
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`a different proceeding (concerning the ’407 Patent), the Board concluded Diacakis
`
`does not teach a “server receiv[ing] the ‘message’ the subscriber is trying to convey.”
`
`POR, 26 (citing Ex. 2006 at 26). But PO misreads the Board’s findings. Regarding
`
`the ’407 Petition, while the Board found Diacakis teaches both a server and “point-
`
`to-point contact” between users, its basis for denial was its finding that messages are
`
`not received by Diacakis’s server. Ex. 2006 at 25. Because the ’407 Patent (but not
`
`the ’038 Patent) requires the server receive messages, the Board did not institute the
`
`proceeding. Id. at 22 (citing ’407 Patent, cl. 1), 26. The Board did not find that
`
`Diacakis failed to teach “messages,” as PO suggests, nor would that be consistent
`
`with its ID in this proceeding. ID, 40, 43, 45–46.
`
`D. Diacakis Teaches That A Second User’s Contact Information Is
`Not Provided To Others By Virtue Of The Second User Receiving
`A Message
`As the Board recognized with respect to Element 7.8, Diacakis teaches the
`
`negative limitation of “not provid[ing]” contact information because it expressly
`
`teaches that users may control what contact information others may view. ID, 47–
`
`48; Pet., 47–48; Ex. 1003, ¶ 263. As explained below, PO’s arguments to the
`
`contrary are incorrect.
`
`First, PO again argues the negative limitation is inconsistent with an
`
`interpretation that the NBP is within the sender’s device. POR, 27–28. But as
`
`explained above in Section III.A, this argument misrepresents Petitioner’s argument.
`
`
`
`15
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`Second, PO relies on Judge Chang’s dissenting opinion to argue that Diacakis
`
`does not teach the negative limitation (POR, 32–33), but the Board considered and
`
`rejected those views in granting institution. Neither the POR nor the Rouskas
`
`Declaration provides any additional analysis or evidence related to those already-
`
`considered views. Ex. 1043, 193:4–13. Moreover, as explained in the following
`
`paragraphs, PO’s arguments are unavailing.
`
`Third, PO argues the negative limitation is unmet because Diacakis includes
`
`examples (including Figure 8) where users’ contact information is provided to
`
`others. POR, 29–32. Yet, as the Board previously recognized, Diacakis’s users can
`
`choose (but are not required) to disclose their contact information, thereby satisfying
`
`the negative limitation. ID, 48; Pet., 47–48; Ex. 1003, ¶ 263. PO misleadingly
`
`quotes half a sentence from Diacakis to argue that when a subscriber attempts to
`
`send an IM, “server 12 provides the appropriate IM address to the subscriber.” Id.
`
`(quoting Ex. 1007, [0062]). But tellingly, the remainder of the sentence explains
`
`that the server “tak[es] into account [the recipient’s] preference settings for the
`
`subscriber’s access group as stored.” Ex. 1007, [0062]. Thus, the Diacakis system
`
`does not provide contact information simply because one user contacts another;
`
`rather, it determines whether or not to provide information subject to the recipient’s
`
`preferences.
`
`
`
`16
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`Fourth, PO improperly conflates two techniques that allow Diacakis’s users
`
`to control their interactions. PO argues that Diacakis’s descriptions of “blocked”
`
`individuals fail to teach the negative limitation that contact information is not
`
`provided. POR, 33 (citing Ex. 2007, 72–73). Blocking, however, is not the part of
`
`Diacakis that Petitioner relies on to teach the negative limitation. As explained in
`
`the Petition, users separately can “control what contact information observers are
`
`allowed to view.” Pet., 47–48 (citing Ex. 1007, [0007]); see also Ex. 1007, [0047]).
`
`PO’s argument regarding blocking is irrelevant to Diacakis’s disclosure of this
`
`independent method of control.
`
`Fifth, PO confuses Diacakis’s presence and availability (“P&A”) information
`
`with contact information, arguing that disclosure of the former necessarily means
`
`disclosure of the latter. POR, 29–32, 34–35; Ex. 1043, 168:7–11, 170:2–8. This is
`
`incorrect. Diacakis explains that P&A information means “what communications
`
`network a user is on, and whether or not the user is reachable for each of the
`
`networks.” Ex. 1007, [0006]. This is different from contact information, such as a
`
`phone number. See id., [0007], [0047] (treating P&A preferences differently from
`
`contact information preferences); Pet., 28–30; Ex. 1003, ¶¶ 99–101. Although PO
`
`relies on the Rouskas Declaration for its misreading of Diacakis, Dr. Rouskas
`
`admitted his opinions were based on the misbelief that, under paragraph [0048],
`
`Diacakis’s users’ contact information is distributed to others, regardless of how users
`
`
`
`17
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`specify their contact information should be distributed. Ex. 1043, 215:12–18. This
`
`passage, however, indicates that already-published contact information may be
`
`automatically updated to reflect changes to the user’s profile. Ex. 1007, [0048]; see
`
`also id., [0062] (indicating contact information is provided only in view of user’s
`
`preference settings). Thus, PO is wrong.
`
`IV. GROUND II: CLAIMS 8, 9, 43, 44, 47, 48, 50, AND 54 ARE
`RENDERED OBVIOUS BY DIACAKIS IN VIEW OF LOVELAND
`Regarding Claims 8, 9, 43, 44, 47, 48, 50, and 54, the Board found that
`
`“Petitioner demonstrates a reasonable likelihood of prevailing in proving these
`
`claims unpatentable under § 103(a) as obvious over Diacakis and Loveland.” ID,
`
`58. Indeed, this combination would allow users to receive notifications of urgent
`
`messages and messages from important individuals. Pet., 69–73; Ex. 1003, ¶ 353.
`
`Despite this, PO argues Diacakis and Loveland are “diametrically opposite to
`
`each other” based on PO’s incorrect argument that Diacakis does not allow users to
`
`send messages back and forth. POR, 36. As explained in Section III.C, however,
`
`Diacakis teaches sending messages. Further, PO argues that Diacakis and Loveland
`
`are opposed because Diacakis teaches notifying “senders” while Loveland teaches
`
`notifying “recipients.” Id. This is a distinction without a difference. PO has not
`
`pointed to any evidence or reasoning suggesting that a communications system (like
`
`that of Diacakis or Loveland) cannot send notifications to senders and recipients
`
`
`
`18
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`alike. Rather, as Dr. Almeroth explained, a POSITA would have understood that, in
`
`communications systems like Diacakis’s, recipients “would commonly receive a
`
`notification” (Ex. 1003, ¶¶ 326–27). PO’s attempt to limit Diacakis’s notifications
`
`to “senders” and Loveland’s notifications to “recipients” cannot stand.
`
`PO also argues without explanation that “it is not clear how the two systems
`
`would be combined, how the combination would operate, or what the combination
`
`would accomplish.” POR, 36. PO’s conclusory assertion should be disregarded. As
`
`explained in the Petition and by Dr. Almeroth, a POSITA would have been
`
`motivated to implement Loveland’s urgent message notification features in
`
`Diacakis’ communications system for several reasons—including notifying users of
`
`incoming urgent messages—which would have involved routine implementation
`
`with no technical risks. Pet., 69–73; Ex. 1003, ¶¶ 152–161, 353.
`
`V. GROUND III: CLAIMS 37, 42, 56, 59–63, AND 67 ARE RENDERED
`OBVIOUS BY DIACAKIS IN VIEW OF TAKAHASHI
`Regarding Claims 37, 42, 56, 59–63, and 67, the Board found that “Petitioner
`
`demonstrates a reasonable likelihood of prevailing in proving these claims
`
`unpatentable under § 103(a) as obvious over Diacakis and Takahashi.” ID, 64.
`
`Indeed, implementing Takahashi’s predetermined messaging features in Diacakis’
`
`communications system would allow users to achieve efficient communication with
`
`minimal disruption. Pet., 75–78; Ex. 1003, ¶ 370.
`
`
`
`19
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00294 (U.S. Pat. No. 10,492,038)
`
`
`Despite this, PO argues Diacakis and Takahashi are “antithetical to each
`
`other” only based on PO’s incorrect argum
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
