Epic Games Inc v. Ingenioshare LLC

1. Case Identification

• Case #: IPR2022-00291
• Patent #: 10,708,727
• Filed: December 7, 2021
• Petitioner(s): Epic Games, Inc.
• Patent Owner(s): Ingenioshare, LLC
• Challenged Claims: 1-9 and 15-17

2. Patent Overview

• Title: Internet-Based Communications System
• Brief Description: The ’727 patent discloses a computer-implemented method for facilitating electronic communication between users over an internet protocol-based portal. The system allows a first user to select from multiple communication modes (e.g., text, voice), determines a second user's availability, and enables the second user to block communications from the first user based on an identifier, all while keeping the second user's contact information confidential.

3. Grounds for Unpatentability

Ground I: Obviousness over a Single Reference - Claims 1-6, 15, and 17 are obvious over Diacakis

• Prior Art Relied Upon: Diacakis (Application # 2002/0116461).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Diacakis, which teaches a "presence and availability" (P&A) management system, discloses all limitations of claim 1. Diacakis describes a server-based system on the Internet where users communicate via various modes (text, audio, video). A second user can set preferences to categorize other users ("Important," "Restricted," "Blocked"), thereby controlling which communication modes are available to a first user. This mapping meets the claim limitations of providing multiple communication modes, blocking selected modes based on a first user's identifier, and determining availability, all while keeping the second user's underlying contact information private by using a system "indicator" for communication.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground is based on a single reference.
  • Expectation of Success (for §103 grounds): Not applicable as this ground is based on a single reference.

Ground II: Obviousness over Diacakis and Loveland - Claims 7-9 are obvious over Diacakis in view of Loveland

• Prior Art Relied Upon: Diacakis (Application # 2002/0116461) and Loveland (Patent 7,287,056).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the base system of Diacakis would be rendered obvious by incorporating the urgent notification features of Loveland. Loveland teaches a notification service that determines the appropriate method to notify a user based on context, including generating urgent notifications for messages from an "important person" that can override default settings (e.g., interrupting a phone call). This combination was argued to teach the limitations of claims 7-9, which require generating an urgent notification for a first user based on an indication from a second user.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references to improve Diacakis's system. Diacakis already taught categorizing users as "important," and Loveland provided a known technique for handling communications from such important users via urgent notifications. The combination would predictably improve the user experience by allowing important messages to be prioritized, a common goal in communication systems.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because the references are compatible, both describing communication systems that manage user context and availability, and the integration of a notification feature into a presence-aware system was a routine implementation.

Ground IV: Obviousness over Tanigawa and Hullfish - Claims 1-3, 6, 15, and 17 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 argued that Tanigawa, which discloses a communication system for text and voice chat over an IP network using nicknames as identifiers, provides the basic framework for claim 1. Hullfish was argued to supply the claimed blocking feature. Hullfish explicitly teaches a "privacy feature" where a user can send a message to a predetermined number to block an undesired source from sending future messages (e.g., SMS or instant messages). Combining Hullfish's user-controlled blocking with Tanigawa's multi-modal communication system was asserted to render the claims obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to add Hullfish's privacy and blocking features to Tanigawa's chat system to give users more control over unwanted communications. Tanigawa contemplated scenarios where a user might not wish to respond to a chat invitation, and Hullfish provided a well-understood method for implementing user-initiated blocking, which was a known technique for improving online communication systems by addressing annoying or abusive users.
  • Expectation of Success (for §103 grounds): Success was predictable as both references describe similar Internet-based communication systems where users interact via identifiers (nicknames/screen names). Incorporating a blocking function into a chat system was a common and straightforward improvement in the art.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on Diacakis in view of Takahashi (for predetermined messaging), Tanigawa/Hullfish in view of Loveland (for urgent notifications), and Tanigawa/Hullfish in view of Takahashi.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §325(d) and §314(a) (Fintiv).
• §325(d): The primary references (Diacakis and Tanigawa) were not applied or considered by the Examiner during the notably cursory prosecution of the ’727 patent, which was allowed without any office actions. Therefore, the petition raised new art and arguments.
• Fintiv Factors: Petitioner argued the Fintiv factors weighed against denial. The trial date in the parallel district court litigation was uncertain due to court backlogs and pending motions to dismiss or transfer. Petitioner acted diligently, filing within five months of the complaint. Further, Petitioner offered to stipulate that it would not pursue in district court any invalidity ground raised or that reasonably could have been raised in the IPR, mitigating concerns of duplicative efforts. Finally, Petitioner asserted the merits of the petition are strong.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-9 and 15-17 of the ’727 patent as unpatentable under §103.