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 IPR2022-00295
`
`
`
`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 IPR2022-00295
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
`
`
`I.
`II.
`
`B.
`C.
`D.
`E.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`BECAUSE THE ROUSKAS DECLARATION MERELY REPEATS
`THE POR IT IS ENTITLED TO NO WEIGHT ............................................. 4
`III. GROUND I: CLAIMS 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53,
`55, 57–58, AND 64–66 ARE RENDERED OBVIOUS BY
`TANIGAWA IN VIEW OF HULLFISH ........................................................ 6
`A. A POSITA Would Have Been Motivated To Combine
`Tanigawa And Hullfish ......................................................................... 6
`Tanigawa Teaches A “Network-Based Portal” ..................................... 9
`Tanigawa Teaches A “Prior Registration Process” ............................. 16
`Tanigawa Teaches “Identifiers” .......................................................... 17
`Tanigawa Teaches That A Second User’s Contact Information
`Is Not Provided To Others By Virtue Of The Second User
`Receiving A Message .......................................................................... 19
`IV. GROUND II: CLAIMS 8, 9, 43, 44, 47, 48, 50, AND 54 ARE
`RENDERED OBVIOUS BY TANIGAWA IN VIEW OF HULLFISH
`AND LOVELAND ........................................................................................ 24
`V. GROUND III: CLAIMS 37, 42, 56, 59–63, AND 67 ARE
`RENDERED OBVIOUS BY TANIGAWA IN VIEW OF HULLFISH
`AND TAKAHASHI ...................................................................................... 25
`VI. GROUND IV: CLAIM 45 IS RENDERED OBVIOUS BY
`TANIGAWA IN VIEW OF HULLFISH, LOVELAND, AND
`TAKAHASHI ................................................................................................ 25
`VII. CONCLUSION .............................................................................................. 26
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`Petitioner’s Reply to Patent Owner’s Response
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`TABLE OF AUTHORITIES
`
`Page(s)
`
` Cases
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) ............................................................................ 8
`Hulu, LLC v. Sito Mobile R&D IP, LLC,
`IPR2021-00304, Paper 30 ..................................................................................... 4
`Juniper Networks, Inc. v. Brixham Solutions, Ltd.,
`IPR2014-00425 Paper 38 ...................................................................................... 4
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 17
`Thorner v. Sony Comput. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012 ............................................................................ 11
`Uber Techs., Inc. v. X One, Inc.,
`957 F.3d 1334 (Fed. Cir. 2020) ............................................................................ 8
`Other Authorities
`37 C.F.R. § 42.65(a)………………………………………………………………...4
`
`Unless otherwise noted, all emphasis is added.
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`iii
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`LIST OF PETITIONER’S UPDATED EXHIBITS
`Description
`
`Exhibit
`No.
`
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`
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`U.S. Patent No. 10,492,038
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`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
`
`Unused
`
`U.S. Patent No. 7,287,056 (“Loveland”)
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`U.S. Patent Application 2002/0183114 (“Takahashi”)
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`U.S. Patent Application 2004/0001480 (“Tanigawa”)
`
`U.S. Patent No. 7,428,580 (“Hullfish”)
`
`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
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`
`
`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”)
`
`Patil, S. and Kobsa, A., The Challenges in Preserving Privacy in
`Awareness Systems (2003)
`Internet Engineering Task Force RFC 2779 (Instant
`Messaging/Presence Protocol Requirements) (2000)
`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)
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`v
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`Petitioner’s Reply to Patent Owner’s Response
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`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
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`1040
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`1041
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`1042
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`1043
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`Petitioner’s Reply to Patent Owner’s Response
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`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
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`least one claim challenged in the Petition” and instituting review of Claims 7–12,
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`22–24, and 33–67 (the “Challenged Claims”). ID, 73. In its Patent Owner Response
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`(“POR”), Patent Owner IngenioShare, LLC (“PO”) tacitly admits that Petitioner’s
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`grounds render large swaths of the ’038 Patent obvious. Regarding Grounds I–IV
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`(Tanigawa in view of Hullfish, Loveland, and Takahashi), PO does not specifically
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`defend the Challenged Claims other than arguing that certain elements of Claim 7
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`are not rendered obvious by Tanigawa in view of Hullfish. The few arguments PO
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`does raise are unavailing.
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`Regarding Tanigawa in view of Hullfish (Ground I), PO specifically addresses
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`only some elements of Claim 7, but as discussed immediately below, none of PO’s
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`arguments is meritorious. Moreover, all rely on an expert declaration that merely
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`parrots the POR, which is entitled to no weight. Ex. 2005 (“Rouskas Declaration”).
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`• First, PO argues a POSITA would not combine these references, but
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`Petitioner and its expert, Dr. Almeroth, established several reasons why
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`Hullfish’s blocking features would improve Tanigawa, which the Board
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`credited. ID, 53–54. Instead, PO argues the entirety of the Hullfish
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`invention would not be combined with Tanigawa, which is inconsistent
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`Petitioner’s Reply to Patent Owner’s Response
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`with Petitioner’s position and unnecessary to establish obviousness. PO
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`also argues Hullfish is “incompatible” with Tanigawa, but its expert
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`admitted the opposite.
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`• Second, PO argues Tanigawa fails to teach the claimed “network-based
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`portal” (“NBP”) because PO argues the term “portal” does not include the
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`user interfaces Tanigawa discloses. Yet, PO’s own expert, Dr. Rouskas,
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`admitted the term is not limited in that way. Moreover, as the Board
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`previously found, PO’s construction would exclude the ’038 Patent’s
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`preferred embodiments of the invention. ID, 23–24.
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`• Third, PO argues Tanigawa does not teach a “prior registration process,”
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`but PO’s argument improperly injects a non-existent claim requirement
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`that the registration must be done using the user’s device.
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`• Fourth, PO argues the combination does not teach “identifiers” because
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`users’ nicknames are purportedly insufficient to route messages correctly.
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`This argument improperly reads into the claims a sufficiency-of-routing
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`requirement, for which PO has no basis.
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`• Fifth, PO argues the combination does not teach the negative limitation of
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`a recipient’s contact information not being provided to a sender by virtue
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`of the communication. But its arguments are premised on a misreading of
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`Tanigawa and the claim language. PO argues “presence information”
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`provided to Tanigawa’s users includes “contact information,” but
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`Tanigawa expressly distinguishes them, and only provides “presence
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`information” to users. PO also improperly conflates users with users’
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`modes of communication (i.e., users’ devices)—the negative limitation
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`prohibits contact information from being provided to the user, not the
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`user’s device.
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`
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`PO’s arguments regarding Tanigawa and Hullfish’s further combinations with
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`Loveland and Takahashi (Grounds II–IV) are likewise unavailing:
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`• First, regarding the combination of Tanigawa, Hullfish, and Loveland,
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`PO’s only argument is that Tanigawa and Loveland describe similar
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`functionality—strengthening the motivation to combine.
`
`• Second, PO makes no specific arguments regarding the combination of
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`Tanigawa, Hullfish, and Takahashi, nor the combination of Tanigawa,
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`Hullfish, Loveland, and Takahashi—other than reiterating the above
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`arguments regarding Tanigawa, which are incorrect.
`
`Thus, Claims 7–12, 22–24, and 33–67 are invalid and obvious.
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`3
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`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
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`is a classic example of a cursory expert declaration the Board disregards. See, e.g.,
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`Hulu, LLC v. Sito Mobile R&D IP, LLC, IPR2021-00304, Paper 30 at 68 (declarant’s
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`“cursory and unsupported testimony entitled to little weight” where it “repeat[ed]
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`verbatim without any additional clarification Patent Owner’s contentions from the
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`Patent Owner Response”). The Board previously disregarded another Rouskas
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`declaration for this very reason. See Juniper Networks, Inc. v. Brixham Solutions,
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`Ltd., IPR2014-00425 Paper 38, at 13 (Rouskas declaration afforded “little weight
`
`because his testimony is conclusory and unsupported by evidentiary explanations”).
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`Here, the Rouskas Declaration is “entitled to little or no weight” for the same
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`reasons. See 37 C.F.R. § 42.65(a).
`
`Dr. Rouskas’s deposition testimony further demonstrates that his declaration
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`is unreliable. In PO’s preliminary response (“POPR”), it argued an NBP is “at the
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`server-side” and cannot be a user interface in a client device. Paper 8, 1–2, 13–16.
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`1 The declaration substantively differs from the POR only by citing to two webpages
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`(Ex. 2005, 26), but these websites fail to advance PO’s NBP arguments, as discussed
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`below in Section III.A.
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`Dr. Rouskas admitted he was retained months after the POPR was filed and that he
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`did not review the POPR, yet he claimed he conceived of PO’s NBP argument.
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`Ex. 1043, 25:2–26:2, 53:23–54:14. This is not credible; indeed, his declaration
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`copied-and-pasted several portions of the POPR:
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`POPR (Paper 8)
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`Rouskas Declaration (Ex. 2005)
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`
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`E.g., compare Paper 8, 16, with Ex. 2005, ¶ 84; compare Paper 8, 6–7, with Ex. 2005
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`¶ 61–63. His declaration should be given no weight for the additional reason that it
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`appears to contain opinions he did not develop.
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`Moreover, as explained below, at his deposition Dr. Rouskas contradicted his
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`declaration
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`and
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`admitted
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`the opinions
`
`therein
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`rest on
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`fundamental
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`misunderstandings of the challenged claims and prior-art references. Because the
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`Rouskas Declaration contains no expert analysis nonredundant of the attorney
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`argument in the POR and is contradicted by Dr. Rouskas’s own deposition
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`testimony, it should be afforded no weight.
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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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 RENDERED OBVIOUS BY TANIGAWA IN
`VIEW OF HULLFISH
`Aside from the below limitations, PO does not dispute Tanigawa in view of
`
`Hullfish teaches Claims 10–12, 22–24, 33–36, 39–41, 49, 51–53, 55, 57–58, and 64–
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`66 and some of the elements of Claim 7. As to the few limitations PO does address,
`
`they are obvious.2
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`A. A POSITA Would Have Been Motivated To Combine Tanigawa
`And Hullfish
`As the Board found, a POSITA would have been motivated to use Hullfish’s
`
`blocking features with Tanigawa because “Hullfish’s blocking features . . . would
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`have improved Tanigawa’s communications system.” ID, 53–54. For instance, the
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`combination would allow users to control their (or minors’) communications, allow
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`users to avoid abusive messages, and allow users to avoid messages at inconvenient
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`times. Id.; Pet., 33–34. Faced with this fact, PO makes a series of unfounded
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`arguments.
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`First, PO counters another strawman argument: that the Petition proposes
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`using the entirety of Hullfish’s “electronic message forwarding method” within
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`2 PO addresses Independent Claims 38 and 46 only with reference to Claim 7. POR,
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`28–46.
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`Petitioner’s Reply to Patent Owner’s Response
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`Tanigawa and that a POSITA would not use the whole “Hullfish system to forward
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`incoming SMS messages to the user’s IM account.” POR, 8, 9. PO misdescribes
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`the proposed combination. Pet., 33–36. Rather, as the Board understood, the
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`combination uses Hullfish’s specific blocking features which improve Tanigawa’s
`
`system by affording users greater control, flexibility, and privacy in communicating.
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`Id., 33–34; ID, 53–54.
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`Second, PO’s remaining motivation to combine arguments focus on minute
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`and inconsequential differences between Tanigawa and Hullfish that PO claims
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`render the references “incompatible.” POR, 9–14. But PO fails to show why these
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`differences make the references “incompatible” or would discourage a POSITA
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`from implementing Hullfish’s blocking features in Tanigawa’s system. For instance,
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`PO argues Tanigawa’s synchronous approach to chat renders it incompatible with
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`Hullfish’s blocking features, but Dr. Rouskas admits “[i]t could be possible
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`to . . . modify or to even design a synchronous system that has blocking features.”
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`Ex. 1043, 237:25–238:8; see also Ex. 1003, ¶¶ 179–85, 394 (Dr. Almeroth
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`confirming such features were well known); Pet., 34–35. PO also argues the
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`references are incompatible because Tanigawa’s users could simply decline an
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`invitation to chat (prior to chatting) rather than blocking other users. POR, 33–34.
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`But at his deposition, Dr. Rouskas recognized several scenarios where users might
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`want to stop receiving messages from others, even after a chat has begun. Ex. 1043,
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`310:10–17 (unwanted background noise), 352:6–18 (profane or abusive messages);
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`see also Ex. 1003, ¶ 180, 394 (Dr. Almeroth confirming the same), Pet., 64–65. PO
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`further argues Tanigawa’s “group messaging” is incompatible with Hullfish’s “one-
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`on-one” messaging (POR, 42–43), but Dr. Rouskas admitted Tanigawa also teaches
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`one-on-one messaging. Ex. 1010, [0008], [0036], [0163]; Ex. 1043, 296:19–24,
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`303:100–15 (admitting one-on-one chatting is a “special case” of group chatting);
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`see also Ex. 1003, ¶ 182, 394 (Dr. Almeroth explaining the similarities and
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`compatibility of the references); Pet., 34–35.
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`Third, Dr. Rouskas admitted that PO’s arguments boil down to a POSITA’s
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`inability to “incorporate” Hullfish wholly into Tanigawa’s system. Ex. 1043,
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`224:17–225:6. But “the test for obviousness is not whether the features of a
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`secondary reference may be bodily incorporated into the structure of the primary
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`reference.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343
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`(Fed. Cir. 2020); Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1341 (Fed. Cir.
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`2020) (“‘[I]t is not necessary that [two references] be physically combinable to
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`render obvious’ the asserted patent.”). Rather “the question is ‘whether the claimed
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`inventions are rendered obvious by the teachings of the prior art as a whole.’” Id.
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`As explained above (and recognized by the Board), the teachings of Tanigawa and
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`Hullfish as a whole render the challenged claims obvious.3
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`B.
`Tanigawa Teaches A “Network-Based Portal”
`As the Board recognized with respect to Element 7.0, giving the term
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`“network-based portal” its “ordinary and customary meaning,” Tanigawa teaches
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`the claimed NBP—namely, a user interface that connects clients to a network. See
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`ID, 23–25; Pet., 37–39; Ex. 1003, ¶¶ 397–398. In both the ’038 Patent and
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`Tanigawa, the claimed functionality appears in mobile phones—which PO admits
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`are client devices. POR, 23.
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`In the POR, PO revives the same argument the Board already rejected: that
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`the NBP resides only at the server-side of a network and excludes user interfaces of
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`client communication devices such as Tanigawa’s user interface. POR, 15–16. PO’s
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`argument is wrong for several reasons.
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`3 Dr. Rouskas further opined that a POSITA would not be motivated to combine
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`Hullfish’s blocking features in Tanigawa because the costs of modifying Tanigawa
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`would outweigh the benefits such that a POSITA would not “make a profit to
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`implement that feature.” Ex. 1043, 318:12–21. These opinions are not based on the
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`motivation-to-combine standard and should be disregarded.
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`First, PO relies on the Rouskas Declaration’s offering of extrinsic definitions
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`to show that “portals” are websites, but Dr. Rouskas admitted “[t]here’s nothing to
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`limit the portal to just a server or a website.” Compare POR, 16–17, with Ex. 1043,
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`60:7–61:8; see also id., 57:7–11 (declining to equate “portals” to websites), 58:5–9
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`(same). Moreover, Dr. Rouskas admitted the two definitions in the Rouskas
`
`Declaration were cherry-picked from search results for “portal” rather than from any
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`nuanced inquiry or analysis. Id., 62:24–63:10. This method selectively disregarded
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`definitions that include the word “interface.” See Exs. 1041 (“A portal is a web-
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`based platform that collects information from different sources into a single user
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`interface[.]”), 1042 (“A mobile portal is an Internet gateway that enables mobile
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`devices to connect remotely . . . typically via a Web browser interface.”). In any
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`event, PO’s argument limiting “portals” to websites is based on a fundamental
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`misunderstanding of the claim, which Dr. Rouskas yielded in deposition: the
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`Rouskas Declaration claims the NBP cannot be in a client device because it must be
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`“hosted on [a] web server[],” but Dr. Rouskas acknowledged no claim limitation
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`requires the NBP to be “hosted.” Compare Ex. 2005, ¶ 64 and Ex. 1043, 84:11–14,
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`with id., 84:16–85:11.
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`Second, PO incorrectly argues the ’038 Patent defines “portal” as a “gateway”
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`and that a gateway is always a “networked server.” POR, 17. But the specification
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`states that “[a] communication gateway or a portal is formed”—not that the portal is
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`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`a communication gateway. Ex. 1001, 4:23–24. Indeed, the specification treats the
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`phrase “portal or gateway” differently from the singular “portal,” using these phrases
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`to describe different embodiments, indicating that portals and gateways are two
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`alternative means to establish communication. See id., 4:33–47; 4:48–62, 4:62–5:4.
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`The specification further states that “[o]ne example of a networked server is a
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`gateway computer”—not that all gateways are servers. Ex. 1001, 16:17–19.
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`Dr. Rouskas admits as much. Ex. 1043, 96:20–97:1 (“It doesn’t say that [gateway]
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`means network[ed] server, yes.”); see also id., 94:18–95:1. Dr. Rouskas
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`nevertheless opines that the word “or” defines “portal” as “gateway.” Ex. 1043,
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`90:17–24. But the ’038 Patent’s recitation of “portal or gateway” means the two are
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`alternatives, not that one redefines the other. See Thorner v. Sony Comput. Ent. Am.
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`LLC, 669 F.3d 1362, 1367-68 (Fed. Cir. 2012) (holding that the phrase “embedded
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`within or attached to” did not redefine “embedded” as “attached” or vice versa).
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`Third, PO argues the NBP and client devices have different functionalities
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`because the NBP “allows worldwide access to the user,” whereas a “client
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`communication device is ‘associated with a user.’” POR, 18–19. This is a
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`distinction without a difference. As the Petition explains, Tanigawa’s client terminal
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`(1) connects a user to a network via the NBP and (2) is associated with that user.
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`Pet., 37–39. For instance, as Dr. Rouskas admitted, a user’s mobile phone allows
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`worldwide access to that user by allowing others to communicate with the user.
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`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`Ex. 1043, 110:20–24, 114:2–5 (“One is worldwide access to the user. A phone
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`provides that. There’s no question about that.”). PO offers no explanation why such
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`a device “is not accessible ‘worldwide.’” POR, 22.
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`Fourth, PO counters a strawman argument (that only the sender’s device
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`contains the NBP) that Petitioner did not advance. POR, 20–21, 24–25, 35–36.
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`Relying on this mischaracterization, PO concludes Tanigawa cannot meet the NBP
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`limitation, the identifier limitation (i.e., a user’s “corresponding identifier” is “set
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`via the network-based portal”) because a recipient cannot use the sender’s device to
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`set the recipient’s identifier, and the negative limitation (i.e., communicating without
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`providing contact information) because senders’ devices would have access to
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`others’ contact information. Id. This is incorrect.
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`As the Petition explained, all users (including senders and recipients) use
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`Tanigawa’s NBP to connect to Tanigawa’s network—i.e., the NBP does not solely
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`exist in a sender’s device. Pet., 37–39; Ex. 1003, ¶ 398. As Tanigawa explains,
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`senders and recipients access the NBP via their respective devices. See Ex. 1010,
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`[0162], Fig. 12. Accordingly, as shown below in Tanigawa’s Figures 1 and 12, all
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`users of Tanigawa’s system access it via client terminals (7-1, 7-2, 7-3), which
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`contain a user interface that connects clients to a network (i.e., the NBP), indicating
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`that both senders and recipients use this interface:
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`12
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`-FIG.1
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`Ex. 1010, Figs. 1, 12.
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`Fifth, although the Board found PO’s argument excluded a preferred
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`embodiment of the ’038 Patent (specifically Figures 7–11), PO insists its argument
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`did not because the figures allegedly describe methods performed after receiving a
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`message, rather than enabling receipt of a message. POR, 22–24. That is incorrect.
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`The ’038 Patent’s claims state “the first message is received by the second user.”
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`Ex. 1001, cls. 7, 38, 46. In fact, as the Board understood, key “recipient”
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`functionality (i.e., allowing users to specify who may contact them and see their
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`contact information), takes place “all in the phone,” since these phones
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`“automatically manage the communication.” Id., 7:32–36; ID, 23–24. Thus, the
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`NBP not only enables receipt of messages but also manages them. See Ex. 1003,
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`¶¶ 397–98.
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`Moreover, contrary to PO’s argument, the client devices described by the ’038
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`Patent enable messages to be received, as annotated in Figure 7 below:
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`15
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`Ex. 1001, Fig. 7; see also id., Figs. 8–11, 3:29–33, 9:22–10:5, 10:34–13:43, 15:12–
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`16:19.
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`
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`Faced with this fact, PO argues these disclosures are “not embodiments for
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`‘managing electronic communications using at least a network-based portal’ as are
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`the claims of the ’038 Patent.” POR, 24. This is not correct. All of the ’038 Patent’s
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`independent claims recite an NBP—thus, because the patent’s figures are
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`embodiments of the patent, they must include an NBP. PO remains silent as to the
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`purpose of these disclosures, if not related to the claims. As the Board recognized,
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`a construction “which excludes the preferred embodiment is rarely, if ever correct.”
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`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755
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`(Fed. Cir. 2016) (internal quotation marks omitted). PO’s argument thus fails.
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`C. Tanigawa Teaches A “Prior Registration Process”
`With respect to Element 7.1, PO concedes both Tanigawa and Hullfish teach
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`users registering with a server. POR, 28. The Board also acknowledged this point.
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`ID, 41–44. Indeed, Tanigawa teaches that users register nicknames, account names,
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`authentication keys, and addresses. Ex. 1010, [0085]. Further, Tanigawa discloses
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`a log-in process where users’ credentials are compared to pre-existing (i.e., pre-
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`registered) entries in the presence information management table. See id., [0118]–
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`[0119]; Pet., 45–46; Ex. 1003, ¶¶ 409–10.
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`16
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`PO’s only argument is that “[n]either Tanigawa nor Hullfish . . . teach a user
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`registering with their own client device.” POR, 28. But the claim does not require
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`a user registering “with their own client device.” It requires that the “prior
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`registration process” be “regarding the use of the network-based portal.” Ex. 1001,
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`cl. 7, 38. PO’s attempt to add extraneous language to the claim is unsupported and
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`irrelevant.
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`To the extent PO believes a user must register “with their own client device”
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`because Tanigawa’s NBP exists in users’ client devices, this argument fares no
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`better. The mere fact that the claimed NBP can exist in a client device does not add
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`a claim requirement that registration must be performed with such device. PO cites
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`nothing to support this argument.
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`D. Tanigawa Teaches “Identifiers”
`With respect to Element 7.3, as explained in the Petition, Tanigawa teaches
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`“messages are eligible to be received by the electronic device associated with the
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`second user . . . all depending on an identifier associated with the second user”
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`(Ex. 1001, cl. 7) because, even where a second user has multiple devices, these
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`devices are identified by the same nickname (i.e., “Hanako” for clients D and E and
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`“Yoshi” for clients F and G):
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`Ex. 1010, Figs. 3, 10 (excerpt), [0194]. The Board credited these disclosures. ID,
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`45–46; Pet., 49–49; Ex. 1003, ¶¶ 413–415.
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`PO argues a Tanigawa user’s nickname cannot be the claimed identifier
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`because it “is not by itself sufficient information to route the message correctly.”
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`POR, 30. The claims have no such sufficiency-of-routing requirement. PO’s
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`attempt to add limitations to the claim should be rejected. Moreover, Dr. Rouskas
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`admitted that Internet-based chat clients prior to the ’810 Patent (which has the same
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`priority date as the ’038 Patent) allowed users to communicate using identifiers like
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`those in Tanigawa. Ex. 1043, 284:23–285:9.
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`E.
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`Tanigawa 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 found with respect to Element 7.8, Tanigawa teaches that the
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`second user’s contact information is not provided to the first user via the network-
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`based portal. See ID, 50–52; Pet., 54–55; Ex. 1003, ¶¶ 428–30. As Dr. Almeroth
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`explained, Tanigawa’s Figure 12 (the user interface where two users have begun
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`communicating) shows no contact information being provided:
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`Ex. 1003, ¶ 430; ID, 51–52 (“The highlighted display area for text chatting does not
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`provide contact information for the chat participants.”). PO’s arguments to the
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`contrary are unsupported.
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00295 (U.S. Pat. No. 10,492,038)
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`First, PO argues Tanigawa “teaches a POSITA that contact information is
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`sent to the sender’s client communication device” because users may “download
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`presence information of the other chat participants,” and according to PO, “presence
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`information” includes “contact information.” POR, 37, 44–45 (citing Ex. 1010,
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`[0122]). This argument fails because Tanigawa expressly defines “presence
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`information” as “information indicating the user can chat: ‘available’ and
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`information indicating that the user is busy and cannot chat; ‘Don’t Disturb.’”
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`Ex. 1010, [0120]; see also id., [0050] (describing separate fields for “registering an
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`address” and “registering presence information”), [0121]. “Presence information”
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`does not include “contact information.” See Ex. 1003, ¶ 429. Although PO says
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`Tanigawa’s Figure 3 (“Presence Information Management Table 488”) shows that
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`“contact information” is a portion of the “presence information” in the table (POR,
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`38–39), the figure makes clear that “presence information” merely refers to a user’s
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`online presence, such as “text/voice,” “off,” “idle,” “text,” or “voice” shown in
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`column 435:
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`Petitioner’s Reply to Patent Owner’s Response
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`Ex. 1010, Fig. 3. Presence information does not include addresses 432 (i.e., the
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`claimed “contact information”).
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`Second, PO argues this limitation is not met because Tanigawa teaches that a
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`second user’s address information, contained in field 432, is sent to a first user’s
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`communication device. POR, 37–39 (citing Ex. 1010, [0123]), 44–46; Ex. 1043,
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`276:16–21. The ’028 Patent, however, treats “users” separately from their
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`associ
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