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. IPR2022-00295
`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
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`EPIC GAMES, INC.,
`Petitioner,
`
`v.
`
` INGENIOSHARE, LLC,
` Patent Owner.
`
`
`Case No. IPR2022-00295
`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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`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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`Claim Construction
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`…………………………………
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`TERMINOLOGY ………………………………………………………
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`GROUND I – CLAIMS 7, 10–12, 22–24, 33–36, 38–41, 46,
`49, 51–53, 55, 57–58, AND 64–66 ARE NOT RENDERED
`OBVIOUS BY TANIGAWA IN VIEW OF HULLFISH ………….…
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`Tanigawa (Exhibit 1010) …………………………………
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`A.
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`B. Hullfish (Exhibit 1011) …………………………………
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`C. A POSITA Would Not Be Motivated To Combine
`Tanigawa And Hullfish To Implement The Claimed
`Invention Of The ʼ038 Patent …………………………..
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`D.
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`1.
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`2.
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`Tanigawa And Hullfish Are Incompatible ………
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`Petitioner’s Alleged Motivation To Combine
`Is Nonsense ………………………………………..
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`[7.0] “Network-Based Portal” …………………………..
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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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`18
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`19
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`21
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`24
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`1.
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`2.
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`3.
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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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`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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`The Functionality Of A “Portal” Is Different
`Than That Of A Client Communication Device …..
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`The Claims Also Distinguish A “Portal”
`From A Client Communication Device ……………
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`Petitioner’s Construction Is Contradictory ……..
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`Tanigawa’s User Interface Is Not A
`“Network-Based Portal” …………………………..
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`Patent Owner’s Construction Of NBP Does
`Not Exclude A Preferred Embodiment
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`………
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`Petitioner’s Construction Is Contradictory ………
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`Tanigawa’s User Interface Is Not A “Network-
`Based Portal” …………………………………
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`10.
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`[7.0] Summary …………………………………
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`[7.1] “A Prior Registration Process” Is Not Obviated
`By The Combination Of Tanigawa And Hullfish ………
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`[7.3] “Messages Are Eligible To Be Received … All
`Depending On An Identifier” Is Not Rendered Obvious
`By The Alleged Combination …………………….…….
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`[7.4] “Block” Is Not Rendered Obvious By The
`Alleged Combination ………………………………….
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`E.
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`F.
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`G.
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`H.
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`I.
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`[7.5] The Alleged Combination Does Not Render
`Obvious “Enabling, Via The Network-Based Portal,
`The First Message To Be Received” “Depending On
`The Identifier” “In View Of The Second User
`Not Blocking The First User” …………………………..
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`[7.8] “Even When The Message Is Received” “The
`Contact Information” “Is Not Provided” Is Not Rendered
`Obvious By The Alleged Combination
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`The Petitioner’s Positions On “NBP” And “Contact
`Information Not Provided” Are Incompatible ……..
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`The Combination Teaches That The Recipient’s
`Contact Information Is Sent To The Sender’s Client
`Communication Device …………………………..
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`i.
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`ii.
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`iii.
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`Tanigawa Teaches A POSITA That Contact
`Information Is Provided ……………………
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`Tanigawa Teaches A POSITA That IM
`Clients Receive Presence Information ………
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`Tanigawa Teaches A POSITA That IM
`Clients Use Client Addresses To Initiate
`Communication …………………………..
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`Tanigawa Does Not Teach Or Suggest Hiding
`Contact Information …………………………..
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`Petitioner’s Reliance On Dr. Almeroth Is
`Misplaced …………………..……………………
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`Petitioner’s Argument Is Wrong And Is
`Outweighed By Patent Owner’s Evidence
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`.……..
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`The Institution Decision …………………………..
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`[7.8] Summary …………………………………
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`iii
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`42
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`46
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`48
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`49
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`GROUND II – CLAIMS 8, 9, 43, 44, 47, 48, 50, AND 54
`GROUNDII — CLAIMS8,9, 43, 44, 47, 48, 50, AND 54
`ARE NOT RENDERED OBVIOUS BY TANIGAWA
`ARE NOT RENDERED OBVIOUS BY TANIGAWA
`IN VIEW OF HULLFISH AND LOVELAND ………………..….
`IN VIEW OF HULLFISH AND LOVELAND
`—_...................0008
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`GROUND III – CLAIMS 37, 42, 56, 59–63, AND 67
`GROUNDIII — CLAIMS37, 42, 56, 59-63, AND 67
`ARE NOT RENDERED OBVIOUS BY TANIGAWA IN
`ARE NOT RENDERED OBVIOUS BY TANIGAWAIN
`VIEW OF HULLFISH AND TAKAHASHI ………………..…………
`VIEW OF HULLFISH AND TAKAHASHI........ 0... e cece eens
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`GROUND IV – CLAIM 45 IS NOT RENDERED OBVIOUS
`GROUNDIV — CLAIM 45 IS NOT RENDERED OBVIOUS
`BY TANIGAWA IN VIEW OF HULLFISH, LOVELAND,
`BY TANIGAWAIN VIEW OF HULLFISH, LOVELAND,
`AND TAKAHASHI ………………………………………..……..
`AND TAKAHASHI
`eee cece ccc ece cece cece eee enact ee eneeeene eee eaes
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`VII. CONCLUSION ………………………………………………
`VII. CONCLUSION oo... cece cece eee ne eee eee teaeeaeeaes
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`55
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`iv
`iv
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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 IPR2022-00295.
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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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`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 IPR2022-00295, 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 IPR2022-00295;
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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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`III. GROUND I – CLAIMS 7, 10–12, 22–24, 33–36, 38–41, 46,
`49, 51–53, 55, 57–58, AND 64–66 ARE NOT RENDERED
`OBVIOUS BY TANIGAWA IN VIEW OF HULLFISH
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`
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`34. Ground I of the Petition is based on the alleged combination of
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`Tanigawa (Exhibit 1010) and Hullfish (Exhibit 1011). Petitioner alleges that ʼ038
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`independent claims 7, 38, and 46, and dependent claims 10-12, 22-24, 33-36, 39-
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`41, 49, 51-53, 55, 57-58, and 64-66, are rendered obvious by this combination. For
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`the reasons set forth below, they are not.
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`A.
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`Tanigawa (Exhibit 1010)
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`35. Tanigawa describes a communication system for group
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`communications using text (IM) and voice (voice channel) over the Internet.
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`Group communication is a synchronous form of communication in that all users
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`must be present and available at the same time for the communication to take
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`12
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`place. Users use a client communication device such as a PC, a fixed-line
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`telephone, or a mobile telephone to communicate.
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`36. Tanigawa’s system includes:
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`(1) for text chatting, an IM server that manages text chatting among the IM
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`clients; the IM server also manages presence information of the IM clients. The
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`IM server further “manages a connection between each of the IM clients
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`participating [in] the chat and the IM server 4, merges text from each of the
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`participating IM clients and distributes the result to each of the participating IM
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`clients”. Exhibit 1010, Tanigawa at Abstract;
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`(2) for voice chatting, “an AP server 5 manages a connection between each
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`of the IM clients participating [in] the chat and an MD server 6, mixes voice from
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`each of the participating IM clients except for a focused IM client and distributes
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`the result to the focused participating IM clients.” Exhibit 1010, Tanigawa at
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`Abstract; and
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`(3) a VR server (called a voice relay server) for a telephone and IP network
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`interface, changing phone network analog data to IP digital data, and allowing
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`phone analog data to go to voice network.
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`
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`37. Tanigawa teaches that to participate in a group chat, one of the users
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`must first create a conference room and have an address and nickname assigned to
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`13
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`the conference room. Exhibit 1010, Tanigawa at [0125]-[0129], Fig. 3, and packets
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`S1006 and S1009 in Fig. 10.
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`38. Tanigawa also teaches that the contact information of the buddies as
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`well as the contact information of the conference room are sent to the users.
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`Exhibit 1010, Tanigawa at [0122]-[0123] and [0143]-0144. Indeed, Tanigawa’s
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`paragraphs [0143]-[0144] tell a POSITA that contact information is exchanged:
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`to create a buddy list in which information regarding each of the chat
`buddies is registered including various information (except for the
`authentication key at least) registered in each of the identified records
`440.
`
`to display data for information written in the buddy list in the display
`device, whereby, the information on the chat buddies is notified to the
`user “taro”. Thus, the user “taro” can check, through the text chat he
`is executing, whether or not the buddy participating in the conference
`room can voice-chat, and, if so, which IM client (which can be
`identified from the account name and the client nickname) is used for
`the voice chat.”
`
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`Exhibit 1010, Tanigawa at [0143]-[0144]. Figs. 10, 11, and 15-19 also teach a
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`POSITA that the buddy list is sent back to user taro at terminal 7-2:
`
`
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`14
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`
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`
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`Exhibit 1010, Tanigawa at Figs. 10, 11, and 15-19.
`
`
`
`39. Tanigawa also teaches that to participate in a voice chat, the AP
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`server, not a user, calls the chat participants who respond to the AP server. Exhibit
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`1010, Tanigawa at [0147]-[0151] and packets S1018, S1019 of Fig. 11 (showing
`
`the call requests from the AP server, relayed by the VR server, and responses
`
`S1020A, S1020B, S1020C). Tanigawa also teaches a POSITA “[i]n this way, each
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`of the IM clients specified by the voice chat request is called out by the AP server
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`5.” Exhibit 1010, Tanigawa at [0151].
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`40. Tanigawa further teaches a POSITA that Tanigawa’s client devices
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`send voice packets to the address for voice chatting, not directly to the participants:
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`“[m]ore specifically, the voice packet sent from each of the IM clients to the
`
`
`
`15
`
`
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`address for voice chatting”. Exhibit 1010, Tanigawa at [0155]. The address for
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`voice chatting is assigned to the MD server. Exhibit 1010, Tanigawa at [0152].
`
`The MD server mixes the voice packets from all the IM client devices, and
`
`distributes the synthesized result to each of the IM client devices. Exhibit 1010,
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`Tanigawa at [0154]-[0156].
`
`41. Fig. 10 of Tanigawa shows an embodiment for a method for text
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`chatting among a group of users. Typically, chatting starts with terminal 7-2
`
`requesting a buddy list from the IM server.
`
`
`
`After getting the buddy list
`
`from the IM server, terminal 7-2 requests the creation of a conference room. In
`
`Fig. 10 terminal 7-2 sends a request to open a conference room to the IM server.
`
`Exhibit 1010, Tanigawa at Fig. 10 and [122]-[130]. The IM server opens the
`
`conference room, assigns it an address, and returns the information to the terminal.
`
`Then, the terminal sends a participation request to IM server that includes the list
`
`of buddies to be invited to the group chat. The IM server then sends a call for
`
`participation (invitation) to each of the buddies; the invitation includes the
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`nickname and address of the conference room. Each buddy wishing to participate
`
`in the group chat responds to the IM server with an admission request; upon
`
`reception of an admission request, the IM server updates its information to allow
`
`the terminal of the buddy who sent the admission request to participate in the chat.
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`Finally, Tanigawa teaches that the IM server merges the text messages from all
`
`
`
`16
`
`
`
`buddies to each buddy separately. As a result, all of Tanigawa’s client devices
`
`have contact information of the conference room, and the user who created the
`
`conference room has contact information of all the clients/communication devices.
`
`Exhibit 1010, Tanigawa at Fig. 10 and [130]-[139].
`
`
`
`42. Fig. 11 of Tanigawa is similar to Fig. 10 but shows an embodiment of
`
`a method for voice, rather than text, chatting among a group of users. As in Fig.
`
`10, the method starts with terminal 7-2 requesting a buddy list from the IM server.
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`After receiving the buddy list, terminal 7-2 sends a voice chat request to the AP
`
`server; the request includes the addresses of the buddies to be invited to the chat.
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`Exhibit 1010, Tanigawa at Fig. 11 and [145]-[146]. The AP server assigns an
`
`address to the voice chat and instructs the MD server to carry out voice mixing for
`
`the voice chat. The AP server then calls each of the buddies to invite them to
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`participate in the voice chat and sends them the voice chat address. Once a buddy
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`responds to the call, they can participate in the chat by sending their voice packets
`
`to the voice chat address at the MD server. The MD server mixes the voice
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`packets from each participating buddy and distributes them to each buddy.
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`Therefore, Tanigawa teaches that all client devices have the voice chat address, and
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`that the user who initiated the voice chat has the contact information of all client
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`devices. Exhibit 1010, Tanigawa at Fig. 11 and [147]-[154].
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`17
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`
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`B. Hullfish (Exhibit 1011)
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`43. Hullfish is directed to managing electronic message communications
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`between two users. The electronic message communications of Hullfish are an
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`asynchronous form of communication in that the recipient does not have to be
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`present and available at the time the message is sent by the sender. Exhibit, 1011,
`
`Hullfish. Hullfish teaches that an SMS message sent by a first user may be
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`forwarded as an SMS message to a second user’s mobile phone/client device or as
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`an IM message to a second user’s IM-enabled client communication device.
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`Hullfish also teaches a method for blocking SMS messages based on source
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`information or other rules such as time and date.
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`
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`
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`C. A POSITA Would Not Be Motivated To Combine Tanigawa
`And Hullfish To Implement The Claimed Invention Of The ʼ038
`Patent
`
`44. Tanigawa’s synchronous system is for extending voice and text
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`message communications from a one-to-one system to a group system. Exhibit
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`1010, Tanigawa at [0005]-[0006]. Hullfish’s asynchronous electronic message
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`forwarding method, on the other hand, is a one-to-one system for sending SMS
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`messages using IM. Exhibit 1011, Hullfish. A POSITA would not have been
`
`motivated to combine Hullfish with Tanigawa.
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`18
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`
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`1.
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`Tanigawa And Hullfish Are Incompatible
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`45. A POSITA would not have combined Hullfish with Tanigawa because
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`they are incompatible for at least the following reasons.
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`46. First, Tanigawa’s system is synchronous in that users participating in
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`a group (voice or text) chat are present and available at the same time. Hullfish’s
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`system, on the other hand, is asynchronous in that an SMS message can be sent
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`without consulting the receiver or knowing whether the user is available. By
`
`definition, Tanigawa’s group chat system may not be used in asynchronous mode,
`
`as users who are not present or available at the same time cannot possibly
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`participate in a group chat. Conversely, Hullfish’s asynchronous message
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`forwarding system cannot be used in a synchronous group chat: when a user is
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`participating, say, in a group SMS chat on his/her phone, and hence is present and
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`available on SMS, there is no reason to use the Hullfish system to forward
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`incoming SMS messages to the user’s IM account.
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`47. Second, despite Petitioner’s claim that a POSITA would be motivated
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`to implement the blocking features of Hullfish in Tanigawa’s system (Petition at
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`33-34), Tanigawa expressly states that it is an object of the invention to “achieve
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`group chat using multimedia” among buddies, i.e., users who have mutually agreed
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`to engage in communication. Exhibit 1010, Tanigawa at [0008], [0010]. Tanigawa
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`never teaches a user to block a buddy. In fact, a POSITA would understand that if
`
`
`
`19
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`
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`a user wishes to stop communicating with a buddy there would not be any need to
`
`use the Hullfish blocking feature; the user may simply remove the buddy from
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`his/her buddy list. Even if Tanigawa did teach that a user may decline an
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`invitation to join a group chat, a POSITA would understand that just because a user
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`who is in an important meeting may decline a call or group chat invitation from a
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`buddy, it does not mean the user wishes to permanently stop receiving all messages
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`from his/her buddies participating in the chat. Importantly, the fact that a
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`Tanigawa user may decline the group chat invitation is possible only because the
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`user is receiving messages from the buddy who sent the invitation. Therefore,
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`Tanigawa’s teachings are antithetical to the Hullfish blocking feature.
`
`48. Third, in Tanigawa, users join a group chat by contacting a
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`“conference room.” Exhibit 1010, Tanigawa at [0135]. Tanigawa also teaches that
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`a conference room is created (opened) [0125]-[0129], users are sent the conference
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`room address and invited to join [0131]-[0134], and they use the conference room
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`address to request admission (join) to the conference room [0135]-[0138]. Exhibit
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`1010, Ta
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