Epic Games Inc v. Ingenioshare LLC

1. Case Identification

• Case #: IPR2022-00202
• Patent #: 10,142,810
• Filed: November 15, 2021
• Petitioner(s): Epic Games, Inc.
• Patent Owner(s): Ingenioshare, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Managing Electronic Communications
• Brief Description: The ’810 patent discloses a computer-implemented method for managing electronic communications over a network. The system allows a first user to select from multiple communication modes (e.g., text, voice) to contact a second user, who is identified by a single identifier; the system also permits the second user to block the first user and determines the second user’s availability, all while keeping the second user's specific contact information (e.g., phone number) private from the first user.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Diacakis.

• Prior Art Relied Upon: Diacakis (Application # 2002/0116461).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Diacakis, as a single reference, taught all limitations of the challenged claims. Diacakis described a "presence and availability (P&A) management system" that allowed users to communicate via various electronic devices (e.g., mobile phones, PCs) over a network. Petitioner contended that Diacakis disclosed the key features of independent claim 1, including: a network-based portal for selecting from a plurality of communication options (text, audio, video files); using a single identifier (a user's name) to contact a second user regardless of their device; determining the second user's availability; and permitting the second user to block the first user based on user-defined preferences and access levels (e.g., "Important," "Normal," "Restricted," and "Blocked"). Petitioner further argued that Diacakis taught that the second user's contact information (phone number, email) is not provided to the first user, as the system uses a single "indicator" to initiate contact.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Claims 1-9, 11-17, 19, and 20 are obvious over Tanigawa in view of Hullfish.

• Prior Art Relied Upon: Tanigawa (Application # 2004/0001480) and Hullfish (Patent 7,428,580).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Tanigawa taught a communication system with most of the claimed features, and Hullfish supplied the missing element of user blocking. Tanigawa disclosed a system for text and voice chat over an IP network, using various client devices including mobile phones. The system used registered "nicknames" as the single user identifier, managed user presence information to determine availability, and allowed users to transition between communication modes. Petitioner argued that Tanigawa failed to explicitly teach permitting a second user to block a first user. Hullfish, however, explicitly taught this missing feature, describing it as a "privacy feature" that allows a user to "stop receiving messages from" an undesired source. Hullfish detailed how a user could block another user's phone number to prevent future messages, and also taught time-based blocking rules (e.g., blocking messages between midnight and 6 am).
  • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Tanigawa and Hullfish to add a well-known, desirable privacy feature to an existing communication platform. The motivation was to improve the user experience by allowing users to block unwanted or abusive communications, implement parental controls, and avoid messages at inconvenient times. Petitioner contended this was a simple application of a known technique (user blocking) to an existing system (Tanigawa's chat platform) to achieve a predictable result.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because both references described compatible technologies—internet-based communication systems operating on similar computer and mobile devices.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. §325(d) or §314(a) (based on Fintiv factors) would be inappropriate.
• §325(d): Petitioner asserted that the primary references (Diacakis and Tanigawa) were never applied against the claims or discussed by the Examiner during the patent's cursory prosecution history, which involved no substantive office actions. Therefore, the petition raised new arguments and art not previously considered.
• §314(a) (Fintiv): In light of a co-pending district court case, Petitioner argued the Fintiv factors weighed against denial. Key arguments included that the trial date in the parallel litigation was uncertain and distant, institution would simplify issues for the court, Petitioner acted diligently in filing the petition, and Petitioner would stipulate not to pursue the same invalidity grounds in district court if the IPR is instituted. Petitioner also asserted the merits of the petition were strong, further weighing against discretionary denial.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’810 patent as unpatentable under 35 U.S.C. §103.