Trials@uspto.gov
`571-272-7822
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`Paper 29
`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)
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 29
`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
`Tanigawa
`US 2004/0001480 A1
`Jan. 1, 2004
`Hullfish
`US 7,428,580 B2
`Sept. 23, 2008
`
`Ex. 1007
`Ex. 1008
`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.
`
`
`35 U.S.C. §1
`
`References
`
`D. Instituted Grounds of Unpatentability
`We instituted review of claims 1–20 on the following grounds.
`Dec. 12, 73; Pet. 5.
`Claim(s)
`Challenged
`103(a)
`1–20
`1–9, 11–17, 19, 20 103(a)
`
`
`
`Diacakis
`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.
`
`
`BY MR. SHI:
`
`
`THE WITNESS: That is correct, yes.
`
`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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`IPR2022-00202
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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’
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