Trials@uspto.

gov Paper 29
571-272-7822 Entered: May 19, 2023

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

EPIC GAMES, INC.,

Petitioner,

v.

INGENIOSHARE, LLC,
Patent Owner.
____________

IPR2022-00202
Patent 10,142,810 B2
____________

Before THU A. DANG, PATRICK M. BOUCHER, and

STEVEN M. AMUNDSON, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge BOUCHER.

Opinion Dissenting filed by Administrative Patent Judge AMUNDSON.

BOUCHER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
IPR2022-00202
Patent 10,142,810 B2

In response to a Petition (Paper 2, “Pet.”) filed by Epic Games, Inc.

(“Petitioner”), we instituted an inter partes review of claims 1–20 of U.S.
Patent No. 10,142,810 B2 (Ex. 1001, “the ’810 patent”). Paper 9 (“Dec.”).
During the trial, IngenioShare, LLC (“Patent Owner”) filed a Response
(Paper 13, “PO Resp.”), to which Petitioner filed a Reply (Paper 16,
“Reply”) and Patent Owner filed a Sur-reply (Paper 19, “Sur-reply”). An
oral hearing was held with the parties, and a copy of the transcript was
entered into the record. Paper 28 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
claims on which we instituted trial. Based on the record before us, Petitioner
has not shown, by a preponderance of the evidence, that any of claims 1–20
is unpatentable.

I. BACKGROUND
A. The ’810 Patent
The ’810 patent relates to “automatically remov[ing] unwanted
communications.” Ex. 1001, 3:43–44. Figure 6 of the ’810 patent is
reproduced below.

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Figure 6 depicts communication system 100, which can support different

communication devices, including mobile telephones 102, computers 104,
and/or wireless personal digital assistants 106. Id. at 8:24–29. Users of such
communication devices can communicate “with like or different
communication devices,” each of which offers one or both of audio or text
communication capabilities. Id. at 8:29–32. Intercommunication of devices
102–106 can take place through network 108, which “can include one or
more of voice networks and data networks.” Id. at 8:32–35.
With the system, “[a] communication gateway or a portal is formed,”
thereby allowing a user “to receive communications from numerous sources
through different modes.” Id. at 4:13–15. “Based on the portal, the user can
securely determine who can reach him at what conditions.” Id. at 4:25–26.

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Such conditions may include the status of the user, “access priorities” of the
person trying to reach the user, and/or the urgency of the message from the
person. Id. at 4:27–32.
The following table is reproduced from the ’810 patent.

The table identifies different people and their relationships to a particular

user, as well as “ContactClasses” to which such people are assigned and
which reflect the various access priorities. Id. at 6:13–20. By way of
example, if Peter wants to make a mobile phone call to the user, Peter calls
the portal, which can be the user’s internet service provider. Id. at 6:21–23.
After verifying Peter’s identity, the portal establishes contact by creating a
virtual address for a communication session and determines that Peter
belongs to “ContactClass2.” Id. at 6:23–39. The portal implements various
connectivity options depending on the status of the user, Peter’s access
priority according to his ContactClass, and Peter’s urgency setting. Id. at
6:44–46. Connectivity options include allowing the user to receive Peter’s
call directly or asking Peter to leave a voicemail message, with the user
notified of Peter’s call by a short mobile message. Id. at 6:44–49. In some
instances, communication requests can be classified into “different degrees
of undesirability,” thereby automatically blocking some requests from the
user or automatically diverting them to be handled by another mechanism,
“such as diverting a phone call to an email or voice mail.” Id. at 4:47–52.

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B. Illustrative Claim
The ’810 patent includes three independent claims that respectively
recite “[a] computer-implemented method for managing electronic
communications using at least a network-based portal at least based on
Internet protocol” (claim 1), “[a] computing apparatus for managing
electronic communications using at least a network-based portal at least
based on Internet protocol” (claim 11), and “[a] non-transitory computer
readable medium including at least executable computer program code
stored therein for managing electronic communications using at least a
network-based portal at least based on Internet protocol” (claim 19).
Ex. 1001, 20:2–4, 21:28–30, 22:56–59. Independent claim 1 is illustrative
of the challenged claims and is reproduced below.
1. A computer-implemented method for managing electronic
communications using at least a network-based portal at least
based on Internet protocol, the method comprising:
providing a plurality of communication options to a first
user to be selected as a selected option of communication for a
message from the first user to a second user via an electronic
device associated with the second user, with the first user being
identified at least depending on a prior registration process by
the first user regarding the use of the network-based portal, and
with the plurality of communication options provided to the
first user to send messages to the electronic device associated
with the second user,
wherein the plurality of communication options
include text messaging and voice communication, and
wherein all of the communication options use one
identifier associated with the second user for the second user to
receive messages, at least in view of the network-based portal
being based on the Internet protocol;
receiving an indication regarding one of the plurality of
communication options, via the network-based portal, from an
electronic device associated with the first user, the indication

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indicating the selected option of communication for the

message from the plurality of communication options provided;
permitting the second user to block the first user from
reaching the second user via the network-based portal; and
enabling, via the network-based portal, the message to be
received by the second user through the electronic device
associated with the second user, using the selected option of
communication, based on the one identifier associated with the
second user, in view of the second user not blocking the first
user from reaching the second user, wherein a piece of
information regarding the second user blocking the first user
from reaching the second user is stored in a storage medium if
the second user has blocked the first user from reaching the
second user, with the piece of information being based on at
least an input previously submitted by the second user,
wherein the method comprises determining
availability of the second user,
wherein the method requires contact information
associated with the second user to allow the second user to
receive messages via the network-based portal,
wherein even when the message is received by the
second user through the electronic device associated with the
second user, the contact information associated with the second
user is not provided via the network-based portal to the first
user through the electronic device associated with the first user,
and
wherein the one identifier associated with the
second user is distinct from the contact information associated
with the second user.

Ex. 1001, 20:2–58.

C. Evidence
Petitioner relies on the following references:
Diacakis US 2002/0116461 A1 Aug. 22, 2002 Ex. 1007
Tanigawa US 2004/0001480 A1 Jan. 1, 2004 Ex. 1008
Hullfish US 7,428,580 B2 Sept. 23, 2008 Ex. 1009

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In addition, Petitioner relies on Declarations by Kevin C. Almeroth,

Ph.D. Exs. 1003, 1038. Patent Owner relies on a Declaration by George N.
Rouskas, Ph.D. Ex. 2005. Dr. Rouskas was cross-examined by Petitioner,
and a transcript of his deposition was entered into the record. Ex. 1042.

D. Instituted Grounds of Unpatentability

We instituted review of claims 1–20 on the following grounds.
Dec. 12, 73; Pet. 5.
Claim(s) 35 U.S.C. § 1 References
Challenged
1–20 103(a) Diacakis
1–9, 11–17, 19, 20 103(a) Tanigawa, Hullfish

E. Real Parties in Interest

The parties identify only themselves as real parties in interest.
Paper 21, 1; Paper 4, 2.

F. Related Matters
The parties identify IngenioShare, LLC v. Epic Games, Inc., No 6:21-
cv-00663 (W.D. Tex.) as a related matter. Paper 21, 1; Paper 4, 2.

1
The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103 effective
March 16, 2013. Petitioner asserts that, “[b]ased on the claimed priority date
of the ’810 Patent, Pre-AIA versions of §102(a) and §103 apply.” Pet. 4 n.1.
Patent Owner does not contest that the pre-AIA versions apply, and we
apply those versions herein.

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According to Petitioner, “[t]his case was dismissed by order of the court on

March 18, 2022.” Paper 21, 1.
Related patents are challenged by Petitioner in IPR2022-00291,
IPR2022-00294, IPR2022-00295, and IPR2022-00297. Of these, inter
partes review was instituted in IPR2022-00291, IPR2022-00294, and
IPR2022-00295, but institution was denied in IPR2022-00297.

II. ANALYSIS
A. Legal Principles
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
the differences between the claimed subject matter and the prior art are
“such that the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) when in evidence, objective
indicia of nonobviousness, i.e., secondary considerations. 2 Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in

2
The parties do not address objective indicia of nonobviousness, which
accordingly do not form part of our analysis. See Pet. 91 (“Petitioner is
unaware of any evidence of secondary considerations that would support a
finding of non-obviousness.”)

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the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).

B. Direct Testimony by Dr. Rouskas

Petitioner contends that Dr. Rouskas’s Declaration testimony is
entitled to no weight because it “repeats the [Patent Owner Response] nearly
verbatim,” “appears to contain opinions he did not develop,” and “is
contradicted by Dr. Rouskas’s own deposition testimony.” Reply 4–5.
Although Petitioner makes multiple allegations of deficiencies in
Dr. Rouskas’s direct testimony, none of these allegations is sufficiently
developed with specific examples.
First, we disagree that mere verbatim duplication between an expert
declaration and an attorney brief defines “a classic example of a cursory
expert declaration the Board disregards.” See id. at 4. The Board’s concern
is rather whether expert testimony “cite[s] to any additional supporting
evidence or provide[s] any technical reasoning to support [its] statement[s].”
Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug.
24, 2022) (precedential); see also id. at 16 (“Dr. Jones offers only a verbatim
restatement of the assertion being supported, without any supporting
evidence or technical reasoning” (emphasis added)). As Patent Owner
asserts, “Petitioner fail[s] to provide a single example of how Dr. Rouskas’s
testimony is ‘cursory or unsupported.’” Sur-reply 1.

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Second, Petitioner provides only a single example to support its

allegation that the direct testimony in Dr. Rouskas’s Declaration “appears to
contain opinions he did not develop.” This example relates to an issue we
discuss at length below, namely whether a “network-based portal” recited in
the challenged claims must reside at a server side of a network or can reside
on the client side as a user interface in a client device. Reply 4–5. Petitioner
accurately states that, on cross-examination, “Dr. Rouskas admitted he was
retained months after the [Preliminary Response] was filed and that he did
not review the [Preliminary Response],” where Patent Owner argued that a
“network-based portal” must reside at a server side. Id. at 5 (citing Ex.
1042, 25:2–26:2).
Dr. Rouskas’s cross-examination also included the following
exchange:
BY MR. SHI:

Q. The essence of your opinion is that Diacakis does not

teach a network-based portal because that network-based portal
must be in a server device and not a client device; correct?

MR. RISLEY: Object to form.

THE WITNESS: That is correct, yes.

BY MR. SHI:

Q. Did you come up with this argument, Dr. Rouskas?

A. I did, yes.

Ex. 1042, 53:22–54:7. Petitioner characterizes Dr. Rouskas’s statement as

“claim[ing] he conceived of [Patent Owner’s] [network-based portal]

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argument.” Reply 5. According to Petitioner, such a claim is “not credible”

because at least some form of the argument was presented during the
preliminary phase of this proceeding, before Dr. Rouskas was retained. Id.
Petitioner did not explore Dr. Rouskas’s answer on cross-examination
in a manner that would have allowed the witness to expand on his brief
statement that “[he] did, yes.” But even if we were to agree with Petitioner’s
characterization, we see insufficient reason on that basis alone to discount
all of Dr. Rouskas’s direct testimony. As Patent Owner says, “Petitioner
cross-examined (deposed) Dr. Rouskas for two days,” and “Petitioner does
not cite to any cross-examination question that Dr. Rouskas was not able to
answer.” Sur-reply 1. The totality of Dr. Rouskas’s testimony is useful and
his direct testimony was subject to extensive cross-examination that allows
us to evaluate the weight to accord his testimony in individual contexts.
Third, Petitioner contends that, on cross-examination, “Dr. Rouskas
contradicted his declaration and admitted the opinions therein rest on
fundamental misunderstandings of the challenged claims and prior-art
references.” Reply 5. We evaluate Petitioner’s specific arguments in our
assessment of the weight to accord Dr. Rouskas’s testimony below, and see
no compelling basis to discount his direct testimony wholesale. See Sur-
reply 2 (Patent Owner asserting that “the rule of completeness shows that
Dr. Rouskas did not contradict his Declaration testimony” (citing Fed. R.
Evid. 106)).
For these reasons, we decline Petitioner’s request to give no weight to
Dr. Rouskas’s direct testimony in our analysis.

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C. Level of Ordinary Skill in the Art

In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
skill in the art” is a hypothetical construct, from whose vantage point
obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
1998). “This legal construct is akin to the ‘reasonable person’ used as a
reference in negligence determinations” and “also presumes that all prior art
references in the field of the invention are available to this hypothetical
skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
1992)).
Petitioner proposes that a person of ordinary skill in the art “would
have had a Bachelor’s degree in Computer Science, or an equivalent field,
and three to five years of experience working with Internet communication
systems.” Pet. 24. According to Petitioner, “[a]dditional education might
compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports
this articulation. See Ex. 1003 ¶¶ 70–75. Patent Owner does not propose
any different expression of the level of ordinary skill, and Dr. Rouskas
testifies that he has “employed Dr. Almeroth’s definition” in his Declaration.
Ex. 2005 ¶ 21.
Because we find Petitioner’s proposal reasonable, consistent with the
level of skill reflected by the prior art, and supported by the testimony of
Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v.

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Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an
appropriate level of skill in the art).

D. Claim Construction
The Board uses “the same claim construction standard that would be
used to construe the claim in a civil action under 35 U.S.C. 282(b), including
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b)
(2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(en banc). The specification may reveal a special definition given to a claim
term by the patentee. Phillips, 415 F.3d at 1316. If an inventor acts as his or
her own lexicographer, the definition must be set forth in the specification
with reasonable clarity, deliberateness, and precision. Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
Although Petitioner asserts in its Petition that it “does not believe that
any terms need to be construed to assess the arguments presented,” we
specifically “invite[d] the parties to provide additional briefing in the
Response, Reply, and Sur-reply about the meaning of ‘network-based portal’
in the ’810 patent’s claims.” Pet. 25; Dec. 19. We address this term as
follows, and we do not find it necessary to construe any other term for
purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
construe terms ‘that are in controversy, and only to the extent necessary to
resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).

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The phrase “network-based portal” is recited numerous times in each

of the independent claims of the ’810 patent, and its construction is central
to the parties’ respective positions regarding application of Petitioner’s
asserted prior art to the challenged claims. See generally Ex. 1001, 20:2–58,
21:28–22:24, 22:56–24:26. In particular, Petitioner broadly describes a
“network-based portal” as “a web page or interface that connects clients to a
network.” Pet. 34. Patent Owner argues that a “network-based portal”
excludes a user terminal or client communication device. PO Resp. 10–11;
see also Reply 6 (Petitioner asserting that Patent Owner’s argument that “the
[network-based portal] resides only ‘at the server-side of a network’ and
excludes user interfaces of ‘client communication devices[’]” is “wrong”).
The issue before us is therefore well-defined, namely whether a
“network-based portal” as recited in the challenged claims is sufficiently
broad to encompass residing at either a client or server side of a network, as
Petitioner contends, or is limited to residing at the server side, as Patent
Owner contends. On the preliminary record, we declined to adopt Patent
Owner’s exclusion of residing at a client side when extending our invitation
to the parties to elaborate on their positions. Dec. 17–19. But we are
mindful that “the Board is not bound by any findings made in its Institution
Decision. At that point, the Board is considering the matter preliminarily
without the benefit of a full record. The Board is free to change its view of
the merits after further development of the record, and should do so if
convinced its initial inclinations were wrong.” TriVascular, Inc. v. Samuels,
812 F.3d 1056, 1068 (Fed. Cir. 2016).
The full record developed at trial includes the Declaration of
Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue.

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Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by

Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the
Petition and neither responds to Dr. Rouskas’s opinions nor provides any
testimonial evidence to support Petitioner’s positions beyond what was
available at the preliminary stage of the proceeding. 3 See generally
Ex. 1003. In evaluating the fully developed record, we necessarily accord
greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney
argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v.
Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn
attorney argument . . . is not evidence and cannot rebut . . . other admitted
evidence . . . .”).
Our evaluation also necessarily remains cognizant that “[i]n an [inter
partes review], the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden never shifts to Patent Owner. See Dynamic

3
Petitioner filed a second Declaration by Dr. Almeroth after institution
(such that it was not available on the preliminary record), but that
Declaration is provided primarily as supplemental evidence under 37 C.F.R.
§ 42.64(b)(2) to address objections by Patent Owner to the authenticity of
various other exhibits. Ex. 1038 ¶ 2. Dr. Almeroth’s second Declaration
otherwise merely incorporates Dr. Almeroth’s “technical opinions” by
reference to his first Declaration, without providing any further facts or
expressing any further opinions that bear on the merits, including claim
construction. Id. ¶ 1.

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Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
review). Against this backdrop, we address the parties’ arguments,
ultimately concluding that Patent Owner articulates the more persuasive
position that a “network-based portal” as recited in the claims is limited to
residing at a server side of a network.

1. Dictionary Definitions
Patent Owner begins its argument by quoting dictionary definitions of
“portal” offered by Dr. Rouskas in his Declaration: (1) “In the context of the
Internet, a portal refers to any commonly used website serving as an entry
point to the Internet, usually with many links to a wide variety of
information, data, resources, and services,” Ex. 2005 ¶ 49 (quoting
https://www.techopedia.com/definition/13077/portal-internet); and
(2) “Portal is a term, generally synonymous with gateway, for a World Wide
Web site that is or proposes to be a major starting site for users when they
get connected to the Web or that users tend to visit as an anchor site. There
are general portals and specialized or niche portals,” id. (quoting
https://www.techtarget.com/whatis/definition/portal). Dr. Rouskas relies on
these dictionary definitions to distinguish a “portal” from a client
communication device, testifying specifically that “[w]ebsites are hosted on
web servers, not on client communication devices.” Id.
While we recognize that such dictionary definitions fall within the
category of extrinsic evidence, as they do not form part of an integrated
patent document, we find it useful to begin with such definitions because

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they provide context for evaluation of the intrinsic evidence. In doing so, we
recall that the Federal Circuit has advised that dictionary definitions are
“worthy of special note”: “Judges are free to consult such resources at any
time in order to better understand the underlying technology and may also
rely on dictionary definitions when construing claim terms, so long as the
dictionary definition does not contradict any definition found in or
ascertained by a reading of the patent documents.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996).
With its Reply, Petitioner counters Patent Owner’s position by
providing dictionary definitions of its own: (1) “A portal is a web-based
platform that collects information from different sources into a single user
interface and presents users with the most relevant information for their
context,” Ex. 1040; and (2) “A mobile portal is an Internet gateway that
enables mobile devices to connect remotely with an enterprise intranet or
extranet, typically via a Web browser interface,” Ex. 1041. According to
Petitioner, Dr. Rouskas “selectively disregarded” definitions like these that
include the word “interface.” Reply 7. But as Patent Owner points out,
“that a definition includes the term ‘interface’ does not mean a ‘portal’ is an
interface.” Sur-reply 4. We find Patent Owner’s explanation that “[t]he
term ‘interface’ is used to indicate how a user accesses the portal (i.e., via a
web browser interface), not what a portal is” to be consistent with
Petitioner’s preferred definitions. See id.
More generally, we discern no meaningful conflict between the
definitions provided by Dr. Rouskas and those provided by Petitioner. For
example, the second of Petitioner’s preferred definitions expressly defines a
“mobile portal” as an “Internet gateway” with certain features, thereby

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differentiating it from a web browser interface that is used to connect a

device to the portal. See Ex. 1041; Sur-reply 3. And that definition’s
expression of equivalence between a “mobile portal” and an “Internet
gateway” is consistent with the ’810 patent specification’s use of the terms
“portal” and “gateway,” as we discuss in the next subsection.

2. Specification
a. “portal or gateway”
Both parties quote various portions of the specification of the ’810
patent as supporting their respective positions, with much of their arguments
focusing particularly on the specification’s repeated use of the phrase “portal
or gateway” (or similar variant). See, e.g., Ex. 1001, 4:13, 4:53, 6:66–67,
7:3. According to Patent Owner, such phrasing amounts to a “definition” by
the specification of a “portal” as a “communication gateway.” PO Resp. 11.
And in turn, Patent Owner says, “[t]he specification also defines a ‘gateway’
as a ‘networked server’” by stating that “[t]he remote server computer can
be a networked server coupled to the network 108. One example of a
networked server is a gateway computer for a wireless 10 electronic device,
such as a mobile telephone.” Id. at 11 (quoting Ex. 1001, 16:7–10).
We do not agree that such phrases are definitional because they lack
the deliberateness and precision that characterize definitions. See Renishaw,
158 F.3d at 1249. But they nonetheless raise a relevant question as to
whether the specification’s phrase “portal or gateway” uses different words
to describe the same thing or instead refers to distinct alternatives. See
Reply 8 (Petitioner arguing that “the ’810 Patent’s recitation of ‘portal or
gateway’ means the two are alternatives, not that one redefines the other”).

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As a matter of common English usage, we agree with Dr. Rouskas that both
understandings are possible. See Ex. 1042, 90:10–20 (testifying on cross-
examination that the word “or” can be a “disjunctive conjunction” or can be
used “to refer to things that are synonymous to each other”). Mere use of
the word “or” does not end the inquiry.
Patent Owner has the stronger position. First, Patent Owner correctly
observes that “Dr. Rouskas’s testimony that to a [person of ordinary skill in
the art] the word ‘or’ in the specification means that ‘portal’ and ‘gateway’
are used synonymously is unrebutted.” Sur-reply 4; see also Tr. 44:7–45:17
(discussing meaning of phrase to a person of ordinary skill in the art).
Second, Petitioner observes that the specification does not always use
the phrase “portal or gateway,” but sometimes uses one word or the other.
See, e.g., Ex. 1001, 4:39–53 (referring only to “portal”), 4:57–62 (referring
only to “gateway”), 5:54–6:5 (referring only to “portal”). According to
Petitioner, the specification is thus “using these phrases to describe different
embodiments, indicating that portals and gateways are two alternative means
to establish communication.” Reply 8. But Petitioner does not meaningfully
explain how such embodiments are, in fact, different. We have reviewed the
passages Petitioner identifies and we instead agree with Dr. Rouskas’s more
prosaic explanation that the specification sometimes uses one of two
equivalent terms to avoid repetition. See Ex. 1042, 91:10–15 (“So to a
person skilled in the art, this implies that instead of just saying portal or
gateway all the time and because the claims refer to portal, not gateway,
these, you know -- you know, the two terms are used synonymously.”).
Third, as we note above, one of Petitioner’s own preferred dictionary
definitions of “portal” expresses an equivalence between a “mobile portal”

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and an “Internet gateway.” Ex. 1041. This independent evidence adds

further support to Patent Owner’s position, particularly in light of its overall
consistency with Dr. Rouskas’s unrebutted testimony.

b. Implementation of Portal Functionality

When instituting this proceeding, we acknowledged that Patent Owner
supported its contention that a “network-based” portal resides at a server
side with examples drawn from the specification of the ’810 patent.
Dec. 17. Specifically, Patent Owner identified examples in which the
specification describes a “portal” as separate from a “mobile phone” or from
a person’s “wireless device.” Paper 6, 15–16 (citing Ex. 1001, 6:21–22,
6:41–42, 6:64–7:5, 16:8–10); see Dec. 17. But we sua sponte expressed a
concern that “[t]he ’810 patent’s specification discloses embodiments where
claimed functionality resides in a ‘mobile phone,’ i.e., a client-side device.”
Dec. 17–18 (citing Ex. 1001, 3:20–27, 9:11–10:8, 10:24–13:35, 15:4–61,
Figs. 7–11). When extending our invitation for the parties to elaborate on
their positions for proper construction of “network-based portal,” we
accordingly stated that “construing ‘network-based portal’ to exclude
‘client-side functionality,’ such as mobile-phone functionality, would
exclude preferred embodiments from claim scope.” Id. at 18–19. The
parties have now had a full opportunity to develop their positions and, in
particular, to address the concern we raised when instituting the proceeding.
We have reconsidered our initial view in light of that fully developed record.
The parties’ dispute on this point centers on Figures 7–11, and we
reproduce Figure 7 below, with highlighting provided by Petitioner. See
Reply 13.

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Figure 7 is “a flow diagram of a personal call response process according to

one embodiment of the invention.” Ex. 1001, 3:20–21. The patent uses
similar language to describe Figures 8–11, which relate respectively to “an
audio message response process,” “a text message response process,” “an
automated call response process,” and “a message presentation process.”
Ex. 1001, 3:22–29.
According to Patent Owner, “the embodiment[s] in Figs. 7-11 are not
embodiments concerning use of a [network-based portal],” but instead
“concern how a recipient user interacting with their client device can

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respond to an incoming call or message.” PO Resp. 17–18. This distinction

is meaningful because each of the challenged claims is directed to “[a]
computer-implemented method for managing electronic communications
using at least a network-based portal at least based on Internet protocol,”
“[a] computing apparatus for managing electronic communications using at
least a network-based portal at least based on Internet protocol,” or “[a] non-
transitory computer readable medium including at least executable computer
program code stored therein for managing electronic communications using
at least a network-based portal at least based on Internet protocol.” See
Ex. 1001, 20:2–4 (independent claim 1), 21:28–30 (independent claim 11),
22:56–59 (independent claim 19). According to Patent Owner, the
embodiments illustrated by Figures 7–11 are not directed to such
management of electronic communications, but are instead “methods
performed by the second user’s device upon receiving a message.”
PO Resp. 18 (citing Ex. 1001, Figs. 7–11; Ex. 2005 ¶ 62). As such, Patent
Owner argues, “a construction that has the [network-based portal] at a server
distinct from the second user’s communication device does not exclude a
preferred embodiment, if anything, it enables them.” Id. (citing Ex. 2005
¶ 62). Patent Owner supports its argument with testimony by Dr. Rouskas,
and we additionally note that Patent Owner’s argument is consistent with the
’810 patent specification’s description of Figures 7–11 as illustrating
“message response process[es].” Ex. 2005 ¶ 62; Ex. 1001, 3:20–29
(emphasis added).
Petitioner notes that recitations of the independent claims “allow the
second user to receive messages via the network-based portal.” Reply 12;
Ex. 1001, 20:47–48, 22:13–14, 24:4–5. The portions of Figure 7 that

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Petitioner highlights refer to “answer[ing] the incoming voice call” at step

206, “obtain[ing] and send[ing] audio message to caller” at step 214,
“obtain[ing] and send[ing] text message to caller” at step 218, and
“direct[ing] to voice mail” at step 222, which Petitioner contends are
examples where client devices “enable messages to be received.”
Reply 12–13. Petitioner appears to infer that these highlighted steps must
correspond to the claim limitation it identifies. See id. at 12–14. But even if
we agree that these are examples of client devices that “enable messages to
be received,” Petitioner cites no evidence that links such functionality to be
“via” the recited “network-based portal” as the claim also requires. See
Ex. 1001, 20:47–48, 22:13–14, 24:4–5. In other words, the issue is not
merely whether the client device is capable of implementing functionality in
some embodiments that is implemented by a server-resident network-based
portal in other embodiments (as appears to undergird the dissent’s analysis);
the issue is instead whether that functionality is specifically implemented at
the client with what Petitioner adequately shows to be “a network-based
portal.”
Petitioner argues inferentially that “[a]ll of the ’810 Patent’s
independent claims recite a[] [network-based portal]—thus, because the
patent’s figures are embodiments of the patent, they must include a[]
[network-based portal].” Reply 13–14. But Petitioner cites no legal
authority to support its implied proposition that a patent’s claims and
drawings must have such a correspondence. See Sur-reply 9 (“Petitioner’s
position that every issued claim must encompass every figure/embodiment
of a patent is wrong as a matter of law.”). Indeed, it is not particularly
uncommon that a patent describes unclaimed embodiments. See, e.g., Eli

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Lilly & Co. v. Hospira, Inc., 933 F.3d 1320, 1334 (Fed. Cir. 2019) (“Under
the disclosure-dedication rule, subject matter disclosed by a patentee, but not
claimed, is considered dedicated to the public.”). Although Petitioner asserts
that “[Patent Owner] remains silent as to the purpose of these disclosures, if
not related to the claims,” Petitioner again cites no legal authority to support
imposing such a requirement on a patent owner, and we are aware of none.
See Reply 14.
In addition to failing to cite any authority that supports its legal
position on this issue, Petitioner also cites no testimonial evidence that
supports its factual interpretation of Figures 7–11. See generally Reply. We
are accordingly left to discern how a person of ordinary skill in the art would
understand these drawings and their related descriptions by weighing
Petitioner’s attorney argument against the expert testimony of Dr. Rouskas
that Patent Owner cites. See Ex. 2005 ¶¶ 60–62. As we note above, we
necessarily accord greater weight to Dr. Rouskas’s testimonial evidence.
We reiterate that Petitioner was notified of this issue in the Institution
Decision, but declined during the trial to introduce additional expert
testimonial evidence that might bear on the issue and that Patent Owner
might have cross-examined. See Dec. 19 (“We invite the parties to provide
additional briefing in the Response, Reply, and Sur-reply about the meaning
of ‘network-based portal’ in the ’810 patent’s claims.”); 37 C.F.R.
§ 42.23(b) (authorizing reply that responds to arguments raised in a patent
owner response or institution decision without limiting introduction of new
evidence).

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We accordingly determine that Petitioner does not persuasively

support its contention that Patent Owner’s proposed construction of
“network-based portal” would exclude a preferred embodiment.

3. Prosecution History
Neither party cites the prosecution history of the ’810 patent when
addressing the meaning of “network-based portal.” See Pet. 34, 65;
PO Resp. 8–19, 47–52; Reply 6–14, 23; Sur-reply 3–9, 20. During
prosecution, the Examiner did not reject any claim based on any prior art.
See, e.g., Ex. 1002, 109–118, 170–177, 210–217, 279–286, 320–327, 372–
379. Instead, in an Examiner-initiated interview early during prosecution,
the Examiner suggested that the Applicant submit a terminal disclaimer “to
place the Application [in] condition [for] allowance.” Id. at 117. The
Applicant’s filing of such a terminal disclaimer was followed by several
Notices of Allowance as prosecution was repeatedly reopened to address
Amendments and/or Information Disclosure Statements filed by the
Applicant. See id. at 101–103, 109–118, 170–177, 210–217, 279–286, 320–
327, 372–379. In each Notice of Allowance, the Examiner indicated that the
claims were allowed based on the “history of rejection” or “previous record
of rejection” of ancestor applications and patents. Id. at 114, 175, 215, 284,
325, 377.
We note that several of the Applicant’s amendments, including a
Preliminary Amendment, introduced language that refers to the “network-
based portal,” either to a then-pending claim or a newly introduced claim.
Id. at 86–89, 154–163, 192–203, 244–255, 351–360. But the Applicant
offered no explanation for those amendments other than that they “further

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clarify the subject matter regarded as the invention.” Id. at 163, 203, 255;
see id. 89, 360 (noting amendment without explanation). And the Examiner
similarly did not address that language. See id. at 109–118, 170–177, 210–
217, 279–286, 320–327, 372–379.
While we have thus reviewed the prosecution history, we do not
consider it helpful in construing “network-based portal,” particularly in the
absence of any arguments presented by either party.

4. Other Arguments
The parties address other points that we also do not find helpful in
resolving the precise claim-construction issue before us, i.e. whether the
recited “network-based portal” is broad enough to encompass residing at a
client side of a network as well as residing at a server side. First, Patent
Owner contends that the ’810 patent specification supports concluding that a
“network-based portal” has different functionality from a client
communication device because the former “allows worldwide access to the
user” and the latter is “associated with a user.” PO Resp. 12–13. Petitioner
discounts this as “a distinction without a difference.” Reply 8–9.
While we agree that the record supports a meaningful functionality
difference between a “network-based portal” and a client communication
device, whether that difference lies in “worldwide access” does not bear on
our analysis. When questioned about this point on cross-examination,
Dr. Rouskas provided responses that we do not find illuminating because
Dr. Rouskas agreed that a user’s mobile phone allows that user worldwide
access by allowing others to communicate with the user. See Ex. 1042,

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110:20–24, 114:2–5 (“One is worldwide access to the user. A phone

provides that. There’s no question about that.”).
Second, Patent Owner contends that a contradiction arises within
independent claim 1 if the recited “network-based portal” is mapped to a
user interface on the client communication device of the recited “first user.”
PO Resp. 13–14. Patent Owner’s contention appears to be correct, such as it
is. But the contention is clearly driven by one of Petitioner’s arguments in
applying the asserted prior art to the claim, rather than as a matter of claim
construction itself. See Reply 9 (Petitioner disputing that it advances an
argument that only the first user’s device contains the network-based portal).
That is, Patent Owner’s scenario imposes an additional limit on the network-
based portal (not merely residing on a client side, but residing on a specific
client device). That scenario therefore does not address the broader claim-
construction issue that confronts us, namely whether a “network-based
portal” encompasses residing at a client side generally, rather than limited to
a specific client communication device.
We accordingly give little weight to these additional arguments by
Patent Owner in our evaluation of the claim-construction issue.

5. Summary
As we note above, we find certain of Patent Owner’s arguments
adequately rebutted by Petitioner, such that we do not consider them in our
assessment. Nevertheless, Patent Owner retains compelling arguments for
its proposed construction, supported by expert testimonial evidence,
including dictionary definitions and the ’810 patent specification’s reference
to a “portal or a gateway.” We find such references more compellingly refer

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to “portal” and “gateway” as synonyms rather than alternatives. In addition,

Patent Owner provides convincing evidence and argument that rebuts the
concern raised by the Board at institution whether Patent Owner’s proposed
construction would exclude preferred embodiments. Petitioner, who bears
the overall burden, addresses that concern only with attorney argument,
which we accord less weight.
In light of these considerations, we construe “network-based portal”
as Patent Owner advocates, namely as residing on a server side of a network.

E. Overview of the Prior Art

1. Diacakis
Diacakis “relates generally to communications and, more particularly,
to presence and availability management systems.” Ex. 1007 ¶ 3. Figure 1
of Diacakis is reproduced below.

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Figure 1 is a diagram of “a presence and availability (P&A) management

system.” Id. ¶ 24. System 10 includes P&A management server 12 in
communication with client terminal 22 via network 16. Id. P&A
management server 12 includes presence detection engine 18, availability
management engine 20, and profile database 24. Id. Functions of P&A
management server 12 include determining whether a user is present on the
network, determining whether the user is available on the network, and
communicating such presence and availability information to others,
depending on the user’s preferences. Id. ¶¶ 24–27.
Figure 4 of Diacakis is reproduced below.

Figure 4 is a diagram illustrating details of P&A management server 12. Id.

¶¶ 15, 38. As illustrated, presence detection engine 18 may be in
communication with various devices, such as landline desk phone 44,
mobile phone 46, personal computer 48, personal digital assistant 50, and
pager 52, to help determine presence information. Id. ¶¶ 43–44. Based on

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the information from such devices, presence detection engine may determine
an individual’s status 54 on particular networks, the individual’s physical
location 56, and the individual’s capabilities 58. Id. ¶ 45.
Presence information determined by presence detection engine 18 is
communicated to availability management engine 20. Id. ¶ 46. Such
presence information, in combination with the individual’s situation 60 and
the individual’s rules and preferences 64, is used to determine the
individual’s availability. Id. ¶¶ 46–47. “Additionally, the individual may
specify the observers 62 who receive the individual’s contact information,”
with such observers 62 specified on a “group basis or an individual basis.”
Id. ¶ 47.

2. Tanigawa
Tanigawa “relates to a communication technology such as Instant
Messaging (IM),” and endeavors “to achieve group chat using multimedia.”
Ex. 1008 ¶¶ 1, 8. Figure 1 of Tanigawa is reproduced below.

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Figure 1 is a schematic diagram of a voice-over-IP (“VoIP”) communication

system that includes a variety of communication devices, such as IP
terminals 7, fixed telephone 11, and mobile telephone 9. Id. ¶¶ 34–35. IM
server 4 “manages presence information of an IM client,” AP server 5
“manages connection[s] for a voice chat using VoIP,” MD server 6
“implements multi-party voice speech by mixing voice data,” and VR
server 10 “performs voice relay” with publicly switched telephone network
3 and radio communication network 2. Id. ¶ 35.
Figure 3 of Tanigawa is reproduced below.

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Figure 3 is an example of a “presence information management table” used

by IM server 4 to manage presence information. Id. ¶ 49; see id. ¶¶ 40, 47.
Chat participants are identified by nicknames 433, with the same nickname
being used for a particular user across all devices. Id. ¶¶ 133, 194. This is
illustrated in Figure 3, for example, for devices D and E, both of which
belong to “hanako,” and for devices F and G, both of which belong to
“yoshi.” See id. ¶ 50.
Figure 12 of Tanigawa is reproduced below.

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Figure 12 shows an example of a user interface of an IM client, such as may

be displayed on IP terminal 7. Id. ¶ 162. Display area 135 shows presence
information of “chatting buddies.” Id. ¶ 164. In addition, several chatting
options are provided on main menu bar 130, which includes icon 131
“indicating an operation relating to presence information,” icon 132
indicating one-to-one voice chatting, icon 133 indicating multiparty voice
chatting, and icon 134 “indicating text chatting.” Id. ¶ 163.

3. Hullfish
Hullfish “relates to electronic messaging systems in a computer
environment.” Ex. 1009, 1:6–9. Figure 5 of Hullfish is reproduced below.

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Figure 5 is a flow diagram depicting a method that incorporates a privacy

feature into receiving short-message-service (“SMS”) text messages. Id. at
8:59–61. The method is implemented when a first user (“User A”) wants to
stop receiving messages from a second user (“User B”). Id. at 8:62–64. To
implement this, User A sends a text message containing User B’s telephone
number to a predetermined telephone number. Id. at 9:1–4. Thus, when an
SMS server receives a text from User A at the predetermined telephone
number at step 502, it is determined at step 504 whether the text contains a
telephone number, i.e., User B’s number. Id. at 9:5–9. If so, future
messages from User B to User A are blocked at step 506. Id. at 9:9–18.
Otherwise, future messages are forwarded “according to user preference” at
step 508. Id. at 9:30–33.

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F. Grounds Based on Diacakis

Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C.
§ 103(a) over Diacakis. Pet. 33–60. In addressing independent claim 1,
Petitioner draws a correspondence between Diacakis’s P&A management
server and a computer that performs the recited “computer-implemented
method.” Pet. 33 (citing Ex. 1003 ¶ 88). In doing so, Petitioner observes
that Diacakis’s P&A management server is in communication with a client
terminal via a network that may be the Internet. Id. at 33–34 (citing
Ex. 1007 ¶¶ 24–25).
Figure 9 of Diacakis, annotated by Petitioner, is reproduced below.
See id. at 34.

Figure 9 is a block diagram of client terminal 22, which includes indicator

module 110 in communication with user interface 112 (highlighted in yellow
by Petitioner). Id.; Ex. 1007 ¶ 63. User interface 112 “may include, for
example, a GUI (Graphical User Interface) or a CUI (Character-based user
interface).” Ex. 1007 ¶ 63; see Ex. 1003 ¶ 92. User interface 112 may
display information about a user’s contacts, such as the contact’s name,

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work telephone number, work email address, home telephone number, home
email address, and instant-messaging (IM) address. Ex. 1007 ¶¶ 56, 59,
Fig. 8; see Ex. 1003 ¶¶ 89, 92. User interface 112 enables a user to
communicate with a contact via network 16, e.g., the Internet. Ex. 1007
¶¶ 24–25, 62–64, Fig. 9; see Ex. 1003 ¶ 107.
Both the preamble and the body of independent claim 1 recite “a
network-based portal.” Ex. 1001, 20:3, 20:11, 20:20, 20:23, 20:29, 20:31,
20:48, 20:54; see PO Resp. 19 (Patent Owner noting repeated recitation of
“network-based portal” in independent claim 1). Contending that a
“network-based portal” is “a web page or interface that connects clients to a
network,” Petitioner identifies client-resident user-interface 112 of Diacakis
as meeting the claim’s requirement for such a feature. Pet. 34. As explained
above, after evaluating the record evidence developed during the trial, we do
not adopt such a broad construction of “network-based portal.” Supra
§ II.D. Instead, we construe “network-based portal” as Patent Owner
advocates, namely as residing on a server side of a network. Id.
Because Petitioner does not show that Diacakis discloses a “network-
based portal” as so construed, we conclude that Petitioner does not show, by
a preponderance of the evidence, that independent claim 1 is unpatentable
under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with
respect to Petitioner’s analysis of independent claims 11 and 19. See
Pet. 55–57 (Petitioner’s analysis of claim 11 relying substantially on analysis
of claim 1), 59–60 (Petitioner’s analysis of claim 19 relying substantially on
analysis of claim 1). Because the deficiency in Petitioner’s showing also
applies to the dependent claims, which inherit the “network-based portal”

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limitations, we conclude that Petitioner does not show that any of claims 1–
20 is unpatentable under 35 U.S.C. § 103(a) over Diacakis.

G. Grounds Based on Tanigawa and Hullfish

Petitioner challenges claims 1–9, 11–17, 19, and 20 as unpatentable
under 35 U.S.C. § 103(a) over Tanigawa and Hullfish. Pet. 60–91.
In addressing independent claim 1, Petitioner identifies Tanigawa’s
communication system as performing most of the steps of the recited
“computer-implemented method.” Pet. 64–65. For the “network-based
portal,” Petitioner relies on the user interface illustrated in Figure 12,
reproduced above: “Tanigawa’s IP terminal contains a ‘network-based
portal,’ which is a user interface that connects clients to a network.” Id.
at 65–66. That is, similar to its analysis of independent claim 1 for its
Diacakis challenge, Petitioner relies on Tanigawa’s disclosure of a client-
resident user interface to meet the claim’s recitations of a “network-based
portal.”
The only aspects of independent claim 1 for which Petitioner relies on
a reference other than Tanigawa—specifically, Hullfish—are those that
recite aspects that involve blocking users. In particular, Petitioner contends
that the combination of Tanigawa and Hullfish renders obvious the
following two recitations: (1) “permitting the second user to block the first
user from reaching the second user via the network-based portal”; and
(2) “enabling, via the network-based portal, the message to be received by
the second user through the electronic device associated with the second
user, using the selected option of communication, based on the one identifier
associated with the second user, in view of the second user not blocking the

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first user from reaching the second user, wherein a piece of information
regarding the second user blocking the first user from reaching the second
user is stored in a storage medium if the second user has blocked the first
user from reaching the second user, with the piece of information being
based on at least an input previously submitted by the second user.” Id.
at 74–77; Ex. 1001, 20:28–43.
Under our adopted construction, Petitioner does not show that the
combination of Tanigawa and Hullfish meets the claim requirements of a
“network-based portal.” We accordingly conclude that Petitioner does not
show, by a preponderance of the evidence, that independent claim 1 is
unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish. The
same deficiency exists with respect to Petitioner’s analysis of independent
claims 11 and 19. See Pet. 85–88 (Petitioner’s analysis of claim 11 relying
substantially on analysis of claim 1), 89–90 (Petitioner’s analysis of claim
19 relying substantially on analysis of claim 1). Because the deficiency in
Petitioner’s showing also applies to the dependent claims, which inherit the
“network-based portal” limitations, we conclude that Petitioner does not
show, by a preponderance of the evidence that any of claims 1–9, 11–17, 19,
or 20 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish.

III. CONCLUSION
The table below summarizes our conclusions as to the challenged
claims.

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Claims 35 U.S.C. References Claims Claims Not

§ Shown Shown
Unpatentable Unpatentable
1–20 103(a) Diacakis 1–20
1–9, 11–17, 103(a) Tanigawa, 1–9, 11–17,
19, 20 Hullfish 19, 20
Overall 1–20
Outcome

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–20 of U.S. Patent No. 10,142,810 B2 have
not been shown, by a preponderance of the evidence, to be unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

39
Trials@uspto.gov Paper 29
571-272-7822 Entered: May 19, 2023

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

EPIC GAMES, INC.,

Petitioner,

v.

INGENIOSHARE, LLC,
Patent Owner.
____________

IPR2022-00202
Patent 10,142,810 B2
____________

AMUNDSON, Administrative Patent Judge, dissenting.

I respectfully dissent from the majority’s determination that a

“network-based portal” does not encompass a user interface in a client
device that connects clients to a network and instead may reside only on a
server side of a network. In my view, the majority gives too much weight to
the extrinsic evidence in making that determination. The Federal Circuit has
“viewed extrinsic evidence in general as less reliable than the patent and its
prosecution history in determining how to read claim terms,” e.g., because
expert testimony “is generated at the time of and for the purpose of litigation
IPR2022-00202
Patent 10,142,810 B2

and thus can suffer from bias that is not present in intrinsic evidence.”
Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc).
Below, I discuss each party’s claim-construction arguments and then
explain my analysis of the intrinsic evidence and the extrinsic evidence and
the bases for my disagreement with the majority’s claim construction.
Based on my view that a “network-based portal” encompasses a user
interface in a client device that connects clients to a network and my review
of the evidence, I also respectfully dissent from the majority’s determination
that Petitioner fails to demonstrate by a preponderance of the evidence that
the challenged claims are unpatentable.
I. BACKGROUND
The independent claims and certain dependent claims require a
“network-based portal.” Ex. 1001, 20:2–21:3 (claims 1–3), 21:28–22:36
(claims 11–13), 22:56–24:26 (claim 19). In their respective arguments, the
parties dispute the meaning of “network-based portal.” See, e.g., Pet. 34, 65;
Resp. 8–19, 47–52; Reply 6–14, 23; Sur-reply 3–4, 20. 4
Petitioner contends that a “network-based portal” encompasses
the following:
(1) “a web page or interface that connects clients
to a network”;
(2) “a user interface that connects clients to a network”;
(3) “a user interface in a client terminal”; and

4
This decision uses the following abbreviations and words to identify
documents filed with the Board: “Pet.” for the Petition (Paper 2); “Resp.”
for Patent Owner’s Response (Paper 13); “Reply” for Petitioner’s Reply
(Paper 16); “Sur-reply” for Patent Owner’s Sur-reply (Paper 19); and “Tr.”
for the transcript of the February 17, 2023, oral hearing (Paper 28).

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(4) an “interface that allows users to connect to”

a networked server.
Pet. 34, 65; Reply 6, 9, 23 (emphasis omitted); see Tr. 12:8–16.
Patent Owner equates a “portal” to a “networked server.” See Resp.
11, 49; Sur-reply 3. In particular, Patent Owner contends that the
’810 patent’s specification (1) defines a “portal” as a “gateway” and
(2) defines a “gateway” as a “networked server.” Resp. 11, 49 (citing
Ex. 1001, 4:13, 4:53–54, 6:66–67, 7:3, 16:7–10; Ex. 2005 ¶¶ 50, 131);
Tr. 44:11–17; see Sur-reply 3.
II. PATENT OWNER’S ARGUMENTS
Patent Owner asserts that the ’810 patent’s specification uses “portal”
and “gateway” synonymously. Sur-reply 3. As support, Patent Owner
quotes the following statements in the specification where the word “or”
appears between “portal” and “gateway”: “A portal or gateway approach
could provide general Internet access to one or more embodiments of the
communication management systems . . . . The portal or gateway can then
facilitate download of a database or update thereto to a communication
device, such as a phone.” Resp. 12, 16, 50 (quoting Ex. 1001, 6:66–7:5).
Patent Owner also asserts that Dr. Rouskas provides “unrebutted” testimony
that the specification uses “portal” and “gateway” synonymously because
the word “or” sometimes appears between “portal” and “gateway” in the
specification. Sur-reply 4 (citing Ex. 1042, 90:4–9, 91:10–15). According
to Patent Owner, a “portal” or “gateway” connects “distinct networks” in
contrast to a client device that does not do so. Resp. 16 (citing Ex. 2005
¶ 59).

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To support its contention concerning the equivalence of a “gateway”

and a “networked server,” Patent Owner quotes the following statements in
the specification: “The remote server computer can be a networked server
coupled to the network 108. One example of a networked server is a
gateway computer for a wireless 10 [sic] electronic device, such as a mobile
telephone.” Resp. 11, 49 (quoting Ex. 1001, 16:7–10).
Further, Patent Owner asserts that the specification “does not define”
a “portal” or “network-based portal” as a client device. Resp. 11, 49 (citing
Ex. 2005 ¶¶ 50, 131). Patent Owner asserts that a “portal” or “network-
based portal” differs from a client device because a client device is
“associated with a user,” whereas a “portal” or “network-based portal” must
allow “worldwide access” to a user and permit the user “to receive messages
from multiple senders.” Id. at 12–13, 15–16, 50–51 (emphasis omitted)
(quoting Ex. 1001, 2:17–20, 4:43–44, 6:21–38, 6:66–7:2); see id. at 7;
Sur-reply 4–5, 7. Patent Owner also asserts that a “portal” or “network-
based portal” resides at a “server distinct from” a client device. Resp. 18;
see Sur-reply 3.
Additionally, Patent Owner contends that the claim language
distinguishes a “network-based portal” from a client device. See Resp.
13–14, 51. Patent Owner bases that contention on limitations [1.8] and [1.9]
that read as follows:
[1.8] wherein the method requires contact information
associated with the second user to allow the second user to
receive messages via the network-based portal; and
[1.9] wherein even when the message is received by the
second user through the electronic device associated with the
second user based on the one identifier associated with the
second user, the contact information associated with the second

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user is not provided via the network-based portal to the first

user through the electronic device associated with the first user.
Id. at 13, 51; see Ex. 1001, 20:46–55.
Specifically, Patent Owner asserts that if the first user’s client device
“is the claimed network-based portal,” then “claim 1 could not possibly be
carried out” because:
(1) limitation [1.8] requires the recipient’s (second user’s)
“contact information for messages to be received” via the
network-based portal, i.e., via the sender’s (first user’s)
client device; and
(2) limitation [1.9] requires that the recipient’s (second
user’s) “contact information not be provided to” the
sender’s (first user’s) client device.
Resp. 13–14; see id. at 26–27. According to Patent Owner, Petitioner’s
position “leads to a contradiction, making the method useless.” Id. at 14; see
id. at 27.
To further support its position, Patent Owner quotes two undated
online definitions of “portal” that Dr. Rouskas found with a Google search.
Resp. 10–11, 48–49; see Ex. 1042, 61:17–63:10; Ex. 2005 ¶¶ 49, 130.
Patent Owner quotes the first online definition located at https://www.
techopedia.com/definition/13077/portal-internet as follows: “In the context
of the Internet, a portal refers to any commonly used website serving as an
entry point to the Internet, usually with many links to a wide variety of
information, data, resources and services.” Resp. 10, 48; Ex. 2005
¶¶ 49, 130. Patent Owner asserts that websites are “hosted on web servers”
and not on client devices. Resp. 11, 49 (citing Ex. 2005 ¶¶ 49, 130). Patent
Owner quotes the second online definition located at https://www.techtarget.
com/whatis/definition/portal as follows: “Portal is a term, generally

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synonymous with gateway, for a World Wide Web site that is or proposes to
be a major starting site for users when they get connected to the Web or that
users tend to visit as an anchor site.” Resp. 10–11, 48–49; Ex. 2005
¶¶ 49, 130.
Patent Owner notes that the Institution Decision cited the
embodiments in the ’810 patent’s Figures 7–11 when stating that the
’810 patent “discloses embodiments where claimed functionality resides in a
‘mobile phone,’ i.e., a client-side device.” Resp. 16–17 (quoting Inst. Dec.
17–18). Patent Owner contends that “claim 1 concerns ‘managing electronic
communications using at least a network-based portal.’” Id. at 18. Patent
Owner then contends that the embodiments in Figures 7–11 are “methods
performed by the second user’s device upon receiving a message” and “not
embodiments for ‘managing electronic communications using at least a
network based portal’ as are the claims of the ’810 Patent.” Id. (emphasis
omitted); see id. at 18–19; Sur-reply 8–9.
III. PETITIONER’S ARGUMENTS
Petitioner asserts that the ’810 patent discloses the claimed
functionality for a “network-based portal” residing in a client device, e.g., in
a mobile phone. Reply 6. Petitioner asserts that independent claims 1, 11,
and 19 require “the second user to receive messages.” Id. at 12 (emphasis
omitted). Petitioner then contends that the ’810 patent discloses (1) the
recipient functionality of “allowing users to specify who may contact them
and see their contact information” taking place “all in the phone” and (2) the
phone “automatically manag[ing] the communication.” Id. (citing Ex. 1001,
7:13–22) (quoting Ex. 1001, 7:21–22, 7:24–25). Petitioner also contends
that a “network-based portal” residing in a client device enables not only

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message receipt but also message management. Id. (citing Ex. 1003
¶¶ 107–108).
To support its contentions about message receipt and message
management taking place “all in the phone,” Petitioner provides the
highlighted version of the ’810 patent’s Figure 7 reproduced below
(Reply 13):

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Figure 7 “is a flow diagram of a personal call response process 200”

performed “by an electronic device, such as a mobile communication device
(e.g., mobile telephone).” Ex. 1001, 9:11–15, Fig. 7; see id. at 3:20–21.
This highlighted version of Figure 7 includes yellow highlighting over the
following steps in process 200:
• step 206 “answer the incoming voice call”;
• step 214 “obtain and send audio message to caller”;
• step 218 “obtain and send text message to caller”; and
• step 222 “direct to voicemail.”
See Reply 13. Petitioner argues that “because the patent’s figures are
embodiments of the patent, they must include” a “network-based portal.”
Id. at 13–14.
Further, Petitioner asserts that the ’810 patent’s specification “treats
the phrase ‘portal or gateway’ differently from the singular ‘portal,’ using
these phrases to describe different embodiments, indicating that portals and
gateways are two alternative means to establish communication.” Reply 8
(citing Ex. 1001, 4:53–54, 6:66–67, 7:3). Petitioner also asserts that the
specification’s “recitation of ‘portal or gateway’ means the two are
alternatives, not that one redefines the other.” Id. (citing Thorner v. Sony
Comput. Entm’t Am. LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012)).
Regarding Patent Owner’s assertion that websites are “hosted on web
servers” and not on client devices, Petitioner argues that no claim requires
that a “network-based portal” be “hosted.” Reply 7; see Resp. 11, 49.
Additionally, Petitioner contends that Patent Owner’s assertion about
a “network-based portal” differing from a client device because a client
device is “associated with a user” lacks merit since a client device may

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include a “network-based portal” that “connects a user to a network” even

though the client device is “associated with a user.” Reply 8; see Resp.
12–13, 49–51. Petitioner contends that Dr. Rouskas concedes that “a user’s
mobile phone allows worldwide access to that user by allowing others to
communicate with the user.” Reply 8–9 (citing Ex. 1042, 110:20–24,
114:2–5).
Petitioner criticizes the two online definitions of “portal” that
Dr. Rouskas found as “cherry-picked from search results for ‘portal’ rather
than from any nuanced inquiry or analysis.” Reply 7 (citing Ex. 1042,
62:24–63:10); Tr. 74:5–16. According to Petitioner, Dr. Rouskas
“selectively disregarded definitions that include the word ‘interface.’”
Reply 7. To undermine Dr. Rouskas’s credibility, Petitioner introduces two
online definitions of “portal” with 2022 copyright dates that include the
word “interface.” Id.; see Ex. 1040, 1, 5; Ex. 1041, 1, 5; Tr. 73:22–74:16,
75:8–76:7. Petitioner does not rely on those online definitions to establish
the meaning of “network-based portal.” Tr. 75:8–76:7.
Petitioner quotes the first online definition located at https://www.
liferay.com/resources/l/web-portal as follows: “A portal is a web-based
platform that collects information from different sources into a single user
interface.” Reply 7 (emphasis omitted) (quoting Ex. 1040, 1). Petitioner
quotes the second online definition located at https://www.gartner.com/en/
information-technology/glossary/mobile-portal as follows: “A mobile portal
is an Internet gateway that enables mobile devices to connect remotely . . .
typically via a Web browser interface.” Id. (alteration by Petitioner)
(emphasis omitted) (quoting Ex. 1041, 1).

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IV. ANALYSIS
After analyzing the intrinsic evidence and the extrinsic evidence, I
agree with Petitioner that a “network-based portal” encompasses a user
interface in a client device that connects clients to a network. See Pet.
34, 65; Reply 6, 9, 23. Below, I explain my analysis of the intrinsic
evidence and the extrinsic evidence.
Independent claims 1, 11, and 19 recite “managing electronic
communications using at least a network-based portal.” Ex. 1001, 20:2–3,
21:28–29, 22:58–59. The ’810 patent’s specification discloses and depicts
“managing electronic communications” using a “phone” or a “mobile
telephone,” i.e., a client device with a user interface. See id. at 3:7–29,
4:39–41, 5:60–62, 7:6–25, 7:41–45, 8:7–10, 9:4–7, 9:11–13:35, 14:36–45,
14:54–59, 15:4–61, 17:60–62, 18:1–4, 18:12–20, Figs. 1–11.
For example, Figures 7–11 depict “managing” functionality as recited
in claims 1, 11, and 19 performed “by an electronic device, such as a mobile
communication device (e.g., mobile telephone)” as follows:
• providing a first user with a voice communication option
and a text communication option, e.g., as recited in
limitations [1.1], [1.2], [11.3], [11.4], [19.1], and [19.2];
• receiving an indication regarding the voice
communication option or the text communication option,
e.g., as recited in limitations [1.4], [11.6], and [19.4];
• enabling a second user to receive a voice message or a
text message using the selected communication option in
view of the second user not blocking the first user, e.g.,
as recited in limitations [1.6], [11.8], and [19.6]; and
• allowing the second user to receive messages through an
electronic device associated with the second user, e.g., as

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recited in limitations [1.8], [1.9], [11.10], [11.11], [19.8],

and [19.9].
Ex. 1001, 9:11–61, 10:24–14:49, 15:4–61, 20:2–58, 21:28–22:24,
22:56–24:26, Figs. 7–11; see id. at 3:20–29, 9:62–10:8.
Further, Figures 7–11 depict “managing” functionality as recited in
certain dependent claims. Specifically, dependent claims 8, 9, and 16 recite
actions that may occur depending on a “period of time,” e.g., “not presenting
the message to the second user depending on a period of time.” Ex. 1001,
21:19–24 (claims 8–9), 22:44–47 (claim 16). The specification’s disclosure
of actions that may occur depending on a “period of time” appears in the
discussion of Figure 7 depicting steps performed “by an electronic device,
such as a mobile communication device (e.g., mobile telephone).” Id. at
9:11–15, 10:9–23, Fig. 7.
In particular, the specification explains that “an automated decision
process to decide whether to answer a call,” such as step 204 “answer?”
in Figure 7, may be “based on time.” Ex. 1001, 10:9–11, Fig. 7. The
specification then provides the following example of not presenting a
message to a user depending on a “period of time” or “time period”: “[T]he
called party can previously set a rule, such as that from midnight to 6 am, the
party does not want to answer voice calls. Then, during this time period, the
electronic device can automatically decide not to answer incoming calls.”
Id. at 10:11–16.
As discussed above, Petitioner argues that “because the patent’s
figures are embodiments of the patent, they must include” a “network-based
portal.” Reply 13–14; see supra § III. Petitioner’s argument disregards the
general principle that a patent may disclose unclaimed embodiments. See

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MyMail, Ltd. v. Am. Online, Inc., 476 F.3d 1372, 1377 (Fed. Cir. 2007).
Nonetheless, as also discussed above, Figures 7–11 illustrate claimed
embodiments, i.e., by depicting “managing” functionality as recited in
various claims performed “by an electronic device, such as a mobile
communication device (e.g., mobile telephone).” See Ex. 1001, 9:11–61,
10:24–14:49, 15:4–61, 20:2–58, 21:19–24, 21:28–22:24, 22:44–47,
22:56–24:26, Figs. 7–11.
Additionally, the specification indicates that a “portal” may reside
in a “phone,” i.e., a client device with a user interface. Ex. 1001, 4:39–41,
5:60–62, 7:13–22, 7:41–43, 14:54–57, 18:1–4, Figs. 1–5. In particular,
the specification explains that “a portal provides a number of intelligent
communication modes (ICM) for the user to select as shown in FIG. 1” and
“the intelligent communication modes shown in FIG. 1 for the user to select
are in the phone.” Id. at 5:60–62, 7:13–14. The specification also explains
that “the portal can be used to control the selection and setting of different
intelligent communication modes” and “communication mode changes can
be performed at an electronic device to better suit the needs or condition
of the electronic device or user preferences.” Id. at 4:39–41, 7:41–43,
14:54–57, 18:1–4. Because “the portal can be used to control the selection
and setting of different intelligent communication modes” and
“communication mode changes can be performed at an electronic device,”
e.g., at a “phone,” the “portal” can reside in a “phone.”
The specification discloses an example of “managing electronic
communications” using a “phone.” See Ex. 1001, 7:15–25. In particular,
the specification explains that “the phone could automatically manage the

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communication” from various individuals after a user configures the phone

as follows:
define the contact classes, such as the ones shown in FIG. 2;
set up the urgency classes, such as the ones shown in FIG. 3;
define the statuses, such as the ones shown in FIG. 4; set up
the Access Priority Database, such as the one shown in FIG. 5;
and categorize a number of the user’s contacts into the
corresponding ContactClasses, all in the phone.
Id. at 7:15–22, Figs. 1–5; see id. at 18:12–20.
The specification discloses other techniques for “managing electronic
communications” using a “phone” as follows:
• “keep information in local databases, such as in such
a phone”;
• configure “user settings (e.g., preferences) to decline
calls/messages matching certain criteria”;
• “reduce user input at the mobile communication device
by making use of stored data pertaining to its hardware
components, configuration or preferences”;
• “provide feedback to a caller without answering a voice
call from the caller”;
• “choose not to take the voice call from the calling party”
and instead “provide the calling party with some limited
information,” e.g., “in an audio or textual format”;
• “enable the called party to provide a brief audio or text
message to the calling party”;
• “automatically (i.e., without user input) respond to
the calling party via an audio or text message”; and
• “communicate in different ways depending on device
configuration, user preferences, prior history, time or
other criteria.”

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Ex. 1001, 7:11–13, 7:43–45, 8:7–10, 9:4–7, 13:11–17, 14:36–45, 14:57–59,

17:60–62, 18:12–20; see id. at 13:36–47.
For these reasons, the ’810 patent’s specification discloses and depicts
“managing electronic communications” using a “phone” or a “mobile
telephone,” i.e., a client device with a user interface. See Ex. 1001, 3:7–29,
4:39–41, 5:60–62, 7:6–25, 7:41–45, 8:7–10, 9:4–7, 9:11–13:35, 14:36–45,
14:54–59, 15:4–61, 17:60–62, 18:1–4, 18:12–20, Figs. 1–11. For example,
the specification explains that “the portal can be used to control the selection
and setting of different intelligent communication modes” and
“communication mode changes can be performed at an electronic device,”
e.g., at a “phone” with the “portal.” Id. at 4:39–41, 7:41–43, 14:54–57,
18:1–4. Hence, construing “network-based portal” to exclude a user
interface in a client device that connects clients to a network would exclude
preferred embodiments from claim scope. See id. at 3:7–29, 4:39–41,
5:60–62, 7:6–25, 7:41–45, 8:7–10, 9:4–7, 9:11–13:35, 14:36–45, 14:54–59,
15:4–61, 17:60–62, 18:1–4, 18:12–20, 20:2–58, 21:19–24, 21:28–22:24,
22:44–47, 22:56–24:26, Figs. 1–11. As discussed above, those preferred
embodiments include mobile devices covered by the independent claims and
certain dependent claims.
A construction excluding a preferred embodiment is “rarely, if ever
correct.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
815 F.3d 747, 755 (Fed. Cir. 2016). Those rare circumstances do not exist
here.
Moreover, a patent’s drawings “must show every feature of the
invention specified in the claims.” 37 C.F.R. § 1.83(a). The ’810 patent’s
drawings do not show a “portal” or “network-based portal” residing at

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a “server distinct from” a client device according to Patent Owner’s

arguments. See Ex. 1001, 3:18–19, 8:24–9:10, Fig. 6; Resp. 18; Sur-reply 3.
The drawings do not even show a server. See Ex. 1001, 8:24–9:10, Fig. 6.
Patent Owner does not contend otherwise. See, e.g., Resp. 8–19, 47–54;
Sur-reply 3–9, 20. But the drawings do show mobile telephones (items 102
in Figure 6) and steps performed by mobile telephones. Ex. 1001, 3:18–29,
8:24–29, 9:11–15, 10:24–28, 12:1–4, 13:9–17, 15:4–7, Figs. 6–11.
Consistent with the specification, the claim language does not
preclude a “network-based portal” from encompassing a user interface
in a client device that connects clients to a network. See, e.g., Ex. 1001,
20:2–21:3 (claims 1–3), 21:28–22:36 (claims 11–13), 22:56–24:26
(claim 19). For instance, no claim recites a “server.” Id. at 20:2–24:32.
And no claim specifies a location for a “network-based portal.” Id. If the
patentee had wanted to limit the location for a “network-based portal,” the
patentee could have readily done so by reciting a “network-based portal at
a server.” As evidence of this, certain claims in related U.S. Patent No.
10,492,038 B2 expressly recite a “server.” IPR2022-00294, Ex. 1001,
20:13–21:18 (claim 1), 21:22–49 (claims 3–6).
Patent Owner misinterprets claim 1 when asserting that if the first
user’s client device “is the claimed network-based portal,” then “claim 1
could not possibly be carried out.” See Resp. 13–14. Patent Owner’s
assertion rests on the erroneous premise that limitation [1.9] “requires that
the [second user’s] contact information not be provided to” the first user’s
client device. See id. at 14.
Limitation [1.9] specifies that “the contact information associated
with the second user is not provided via the network-based portal to the first

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user through the electronic device associated with the first user.” Ex. 1001,
20:52–55. Limitation [1.9] does not exclude sending the second user’s
“contact information” to the first user’s client device and then preventing the
first user from viewing the second user’s “contact information,” e.g., by
precluding the first user’s client device from displaying the second user’s
“contact information.” See id. at 20:49–55.
The ’810 patent’s specification supports this interpretation by
explaining that (1) “the user can be aware of the identity of the caller even
without being informed of the number of the caller” and (2) “the caller can
reach the user without being aware of the number of the phone the user
is using to receive the call.” Ex. 1001, 5:22–27. Additionally, the
specification discloses an example where a second user with a “cellular
phone” talks to a first user and the first user “is not aware of the phone
number of the cellular phone.” Id. at 2:50–54.
Patent Owner’s contention that the embodiments in Figures 7–11 are
“not embodiments for ‘managing electronic communications using at least a
network based portal’ as are the claims of the ’810 Patent” lacks merit. See
Resp. 18. The ’810 patent’s specification explains that the description and
the drawings illustrate “by way of example the principles of the invention.”
Ex. 1001, 2:66–3:3. Further, as discussed above, Figures 7–11 depict
“managing” functionality as recited in the independent claims and certain
dependent claims performed “by an electronic device, such as a mobile
communication device (e.g., mobile telephone).” See, e.g., Ex. 1001,
9:11–61, 10:24–14:49, 15:4–61, 20:2–58, 21:19–24, 21:28–22:24, 22:44–47,
22:56–24:26, Figs. 7–11; see also id. at 3:20–29, 9:62–10:8.

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Additionally, contrary to Patent Owner’s contention, the ’810 patent’s

specification does not (1) define a “portal” as a “gateway” or (2) define a
“gateway” as a “networked server.” See Resp. 11, 49; Sur-reply 3–4. An
analysis of the specification shows that each part of Patent Owner’s attempt
to equate a “portal” to a “networked server” fails.
Regarding a “portal” and a “gateway,” the specification explains that
a “portal” and a “gateway” have functionality that overlaps but differs
in different embodiments as follows:
A number of embodiments depend on the different
modes of communication converging onto the internet protocol
platform. A communication gateway or a portal is formed
allowing the user to receive communications from numerous
sources through different modes. . . .
One embodiment of the invention uses an open portal
based on the web. Based on the portal, the user can securely
determine who can reach him at what conditions. . . .
Thus, in one embodiment, the portal can be used to
control the selection and setting of different intelligent
communication modes for the user. These intelligent
communication modes allow priorities of various kinds
of communication options to be set by the user. . . . The portal
. . . can dynamically determine, for example, whether a call
initiated at different time by different callers should be accepted
by the user in real-time or handled by other mechanisms. . . .
In one embodiment, the portal or gateway also includes
a database to keep track of the user’s different contacts or
acquaintances, and the access priorities of each contact. . . .
In one embodiment, the portal can dynamically change
the access priorities of a caller trying to reach the user. . . .
Ex. 1001, 4:11–15, 4:24–26, 4:39–47, 4:53–55, 4:63–64.

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The ’810 patent’s specification uses the phrase “portal or gateway”

three times and the phrase “communication gateway or a portal” once.
Ex. 1001, 4:13–15, 4:53–57, 6:66–7:5. The specification uses the word
“portal” or “gateway” separately and unconnected by “or” more than twenty
times. See, e.g., id. at 4:11–7:5, code (57). The specification sometimes
uses the phrase “portal or gateway” and sometimes uses the word “portal”
or “gateway” separately to describe functionality that overlaps but differs
in different embodiments, not to avoid repetition as Patent Owner contends.
The specification’s infrequent use of “or” between “portal” and “gateway”
does not define “portal” to mean “gateway” or show that “portal” and
“gateway” are used synonymously.
The Authoritative Dictionary of IEEE Standards Terms (7th ed. 2000)
defines “gateway” as follows:
(1) “A functional unit that interconnects a local area network
(LAN) with another network having different higher
layer protocols”;
(2) “A dedicated computer that attaches to two or more
networks and that routes packets from one to the other”;
and
(3) “In networking, a device that connects two systems that
use different protocols.”
IEEE 100 at 477 (Ex. 3003, 3). Additionally, the Microsoft Computer
Dictionary (5th ed. 2002) defines “gateway” as follows: “A device that
connects networks using different communications protocols so that
information can be passed from one to the other. A gateway both transfers
information and converts it to a form compatible with the protocols used by
the receiving network.” Microsoft Comput. Dictionary at 232 (Ex. 3004, 3).
The Microsoft Internet & Networking Dictionary (2003) defines “gateway”

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the same way as the Microsoft Computer Dictionary. Microsoft Inter. &
Networking Dictionary at 98 (Ex. 3005, 3).
Consistent with those definitions of “gateway,” Patent Owner
contends and Dr. Rouskas testifies that a “gateway connects distinct
networks.” Resp. 16; Ex. 2005 ¶ 59. Inconsistent with those definitions of
“gateway,” however, the ’810 patent’s specification describes a “portal” as
performing other functions. See, e.g., Ex. 1001, 4:39–41, 4:63–64, 5:1–3,
5:19–20, 5:53–65, 6:21–43; Tr. 15:24–16:14.
As an example, the specification explains that “a portal provides
a number of intelligent communication modes (ICM) for the user to select”
and “the portal can be used to control the selection and setting of different
intelligent communication modes for the user.” Ex. 1001, 4:39–41, 5:60–62,
Fig. 1. As another example, the specification explains that “a portal also
holds the user’s electronic calendar.” Id. at 5:53–54. As yet another
example, the specification explains that “the portal can dynamically change
the access priorities of a caller trying to reach the user.” Id. at 4:63–64.
Patent Owner does not contend that a “gateway” performs these “portal”
functions. See, e.g., Resp. 8–19, 47–54; Sur-reply 3–9, 20.
As noted above, Patent Owner asserts that Dr. Rouskas provides
“unrebutted” testimony that the ’810 patent’s specification uses “portal” and
“gateway” synonymously because the word “or” sometimes appears
between “portal” and “gateway” in the specification. Sur-reply 4 (citing
Ex. 1042, 90:4–9, 91:10–15); see supra § II. Although expert testimony
“may be useful,” e.g., to “provide background on the technology at issue” or
“explain how an invention works,” expert testimony “is unlikely to result
in a reliable interpretation of patent claim scope unless considered in the

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context of the intrinsic evidence.” Phillips, 415 F.3d at 1318–19. Here, in

the context of the intrinsic evidence, e.g., the specification, Dr. Rouskas’s
testimony seeks to contradict the specification’s infrequent use of “or”
between “portal” and “gateway” compared to the many places where
“portal” and “gateway” appear separately to describe functionality that
overlaps but differs in different embodiments. See Ex. 1001, 4:11–7:5,
code (57); Ex. 1042, 88:5–91:15.
Moreover, Dr. Almeroth’s testimony refutes Dr. Rouskas’s testimony.
See Ex. 1003 ¶¶ 34, 39, 59–69, 89, 192. Specifically, Dr. Almeroth testifies
that he considered the ’810 patent’s claims, specification, and prosecution
history. Id. ¶¶ 34, 59–69. He understands that “claims in an IPR are given
their plain and ordinary meaning as understood by a person of ordinary skill
in the art in view of the specification and prosecution history, unless those
sources show an intent to depart from such meaning.” Id. ¶ 39. He also
testifies that a person of ordinary skill in the art would have understood that
a “network-based portal” encompasses (1) “an interface that users employ to
connect” to a server and (2) “a user interface . . . connecting clients devices
to a network.” Id. ¶¶ 89, 192.
Regarding a “gateway” and a “networked server,” the ’810 patent’s
specification describes a “gateway computer” as one type of “networked
server” when discussing text-to-speech conversion as follows:
While text-to-speech conversion, particularly if high quality is
desired, requires substantial processing capabilities, mobile
electronic devices, such as mobile communication devices,
given their small form factor and price competition, tend to
have limited processing capability. Accordingly, in one
embodiment, text-to-speech conversion can be off-loaded from
the mobile device. For example, a remote server computer can

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be provided the text message and produce the resulting audio

message, and then supply the audio message to the mobile
device. The remote server computer can be a networked server
coupled to the network 108. One example of a networked
server is a gateway computer for a wireless electronic device,
such as a mobile telephone.
Ex. 1001, 15:64–16:10. Hence, contrary to Patent Owner’s contention, the
specification does not define “gateway” to mean “networked server” or use
“gateway” and “networked server” as synonyms. See Resp. 11, 49.
The ’810 patent’s specification also explains that “[t]he portal allows
worldwide access to the user.” Ex. 1001, 4:43–44. As discussed above,
Patent Owner asserts that a “portal” or “network-based portal” must allow
“worldwide access” to a user and permit the user “to receive messages from
multiple senders.” Resp. 12–13, 15–16, 50–51 (emphasis omitted) (quoting
Ex. 1001, 4:43–44); see id. at 7; Sur-reply 4–5; supra § II. With that
assertion, however, Patent Owner wrongly seeks to read a limitation from
the specification into the claims. See Resp. 12–13, 15–16, 50–51; In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In any event, a user
interface in a client device that connects the client device to a network such
as the Internet allows “worldwide access” to a user and permits the user “to
receive messages from multiple senders.” See Ex. 1042, 110:20–24,
114:2–5.
As for the undated or 2022 definitions of “portal” that the parties cite,
no party provides evidence that any of those definitions applied at the time
of the invention. See Resp. 10–11, 48–49; Reply 7; Ex. 1040, 1–5;
Ex. 1041, 1–5; Ex. 2005 ¶¶ 49, 130. The issue here involves determining
the meaning of “network-based portal” to “a person of ordinary skill in the
art at the time of the invention.” See Power Integrations, 904 F.3d at 971.

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Hence, the definitions of “portal” that the parties cite provide little, if any,
help in resolving that issue.
As for the ’810 patent’s prosecution history, neither party cites the
prosecution history when addressing the meaning of “network-based portal.”
See Pet. 34, 65; Resp. 8–19, 47–52; Reply 6–14, 23; Sur-reply 3–4, 20.
I have reviewed the prosecution history and consider it unhelpful in
determining the meaning of “network-based portal.”
During prosecution, the Examiner did not reject any claim based
on any prior art. See, e.g., Ex. 1002, 109–18, 170–77, 210–17, 279–86,
320–27, 372–79. In an Examiner-initiated interview early during
prosecution, the Examiner suggested that the applicant submit a terminal
disclaimer “to place the Application [in] condition [for] allowance.” Id.
at 117. After the applicant submitted a terminal disclaimer, the Examiner
allowed the claims based on the terminal disclaimer and the “history of
rejection” of ancestor applications and patents. Id. at 114, 117, 175, 215,
284, 325, 377.
After analyzing the intrinsic evidence and the extrinsic evidence, and
for the reasons discussed above, I agree with Petitioner that a “network-
based portal” encompasses a user interface in a client device that connects
clients to a network.

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Patent 10,142,810 B2

PETITIONER:

W. Todd Baker
Yimeng Dou
KIRKLAND & ELLIS LLP
todd.baker@kirkland.com
yimeng.dou@kirkland.com

PATENT OWNER:

Stephen R. Risley
Cortney S. Alexander
KENT & RISLEY LLC
steverisley@kentrisley.com
cortneyalexander@kentrisley.com

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