Epic Games, Inc. v. Ingenioshare, LLC

• Court: Court of Appeals for the Federal Circuit
• Decided: April 24, 2025
• Docket: 23-2177
• Status: Unpublished

Opinion

Case: 23-2177 Document: 40 Page: 1 Filed: 04/24/2025

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

EPIC GAMES, INC., Appellant

v.

INGENIOSHARE, LLC, Appellee ______________________

2023-2177, 2023-2178, 2023-2179, 2023-2180 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2022- 00202, IPR2022-00291, IPR2022-00294, IPR2022-00295. ______________________

Decided: April 24, 2025 ______________________

CAROLYN CHANG, Marton Ribera Schumann & Chang LLP, San Francisco, CA, argued for appellant. Also repre- sented by RYAN J. MARTON.

STEPHEN ROBERT RISLEY, Kent & Risley LLC, Al- pharetta, GA, argued for appellee. ______________________

Before DYK, CLEVENGER, and PROST, Circuit Judges. Case: 23-2177 Document: 40 Page: 2 Filed: 04/24/2025

DYK, Circuit Judge. Appellant Epic Games, Inc. (“Epic”) appeals the final written decisions of the Patent Trial and Appeal Board (“Board”) in IPR2022-00202, IPR2022-00291, IPR2022- 00294, and IPR2022-00295, concerning U.S. Patent Nos. 10,142,810 (the “’810 patent”), 10,708,727 (the “’727 patent”), and 10,492,038 (the “’038 patent”) (collec- tively, the “challenged patents”). The challenged patents are generally directed to managing electronic communica- tions. The patent claims recite the term “network-based portal,” which the Board construed as residing on the server side of a network for all three patents. Based on this claim construction, the Board determined that Epic had not demonstrated that the prior art relied on in the petition disclosed a network-based portal as required by the chal- lenged patent claims, and thus that Epic had not demon- strated that claims 1–20 of the ’810 patent, claims 1–9 and 15–17 of the ’727 patent, and claims 7–12, 22–24, and 33– 67 of the ’038 patent (the “challenged claims”) were un- patentable as obvious. We affirm. BACKGROUND IngenioShare, LLC (“IngenioShare”) is the owner of the ’810, ’727, and ’038 patents. The challenged claims gener- ally recite certain patented functionality for managing electronic communications, including providing communi- cation options to a user, selecting different communication modes or options, sending and receiving messages, and al- lowing a user to block communications and control the sharing of contact information. We refer to that function- ality as the communications management functionality. The claims also recite that the communications manage- ment functionality uses “a network-based portal at least based on Internet protocol.” For example, claim 1 of the ’810 patent recites: Case: 23-2177 Document: 40 Page: 3 Filed: 04/24/2025

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1. A computer-implemented method for manag- ing electronic communications using at least a network-based portal at least based on Internet protocol, the method comprising: providing a plurality of communication op- tions to a first user to be selected as a se- lected option of communication for a message from the first user to the second user via an electronic device associated with the second user .... wherein all of the communication options use one identifier associ- ated 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 . . . 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 op- tion 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 . . . Case: 23-2177 Document: 40 Page: 4 Filed: 04/24/2025

wherein the method comprises determin- ing availability of the second user, wherein the method requires contact infor- mation 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 . . . the contact information associ- ated with the second user is not provided via the network-based portal to the first user through the electronic device associ- ated 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. ’810 patent, col. 20 ll. 2–58 (emphasis added); see also ’727 patent, col. 19 l. 61–col. 20 l. 63 (claim 1); ’038 patent, col. 21 l. 50–col. 22 l. 43 (claim 7). Epic petitioned for inter partes review (“IPR”) of the challenged claims in four separate IPRs, alleging that the claims of the three challenged patents were obvious over certain prior art references that disclosed communication management systems and electronic messaging systems. 1 The Board did not reach whether the prior art made such disclosures but instead focused its determinations on

1 Across the different IPRs, Epic argued that the claims were obvious over different combinations of the prior art references Diacakis, Hullfish, Loveland, Tani- gawa, and/or Takahashi although Epic did not assert all of those references against every claim. Case: 23-2177 Document: 40 Page: 5 Filed: 04/24/2025

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whether the prior art disclosed the claimed “network-based portal.” In all four IPRs, the parties disputed the construction of “network-based portal” and, in particular, whether the claimed portal must reside only on the server side of the network or may also encompass client-side functionality, like a client-side user interface. Epic argued that the term is broad enough to capture client-side interfaces, and in its petitions, Epic identified figures in the prior art showing client-resident user interfaces, which Epic argued disclosed the network-based portal. See, e.g., J.A. 385, 416–17; J.A. 4607, 4639–40; J.A. 5742–43; J.A. 6943–44. Ingen- ioShare argued the claimed portal is distinguishable from a client device and instead must reside on the server side of the network. Concerned that IngenioShare’s construction would ex- clude embodiments depicted in figures 7–11 of the specifi- cations, the Board at institution disagreed that a network- based portal resides only on the server side of the network, but it invited the parties to provide additional briefing about the meaning of network-based portal. In its final written decisions, a majority of the Board determined that a network-based portal resides on the server side of the net- work. See Epic Games, Inc. v. IngenioShare, LLC, No. IPR2022-00202, Paper No. 29, at 28 (P.T.A.B. May 19, 2023) (“Board Decision”). 2 The Board began with

2 Citations to the Board’s final written decisions here are to the final written decision in IPR2022-00202 for the ’810 patent. The relevant portions of the Board’s final writ- ten decisions in IPR2022-00291, IPR2022-00294, and IPR2022-00295 are substantively identical. Compare Board Decision with Epic Games, Inc. v. IngenioShare, LLC, No. IPR2022-00291, Paper No. 30 (P.T.A.B. May 19, Case: 23-2177 Document: 40 Page: 6 Filed: 04/24/2025

dictionary definitions, which generally defined a “portal” as a website that serves as an entry point or starting site to the Internet. The Board then determined that these defi- nitions were consistent with the specification’s uses of the terms “portal” and “gateway,” which the Board concluded were synonymous. In its final written decisions, the Board ultimately accepted IngenioShare’s argument that a per- son of ordinary skill in the art would understand that fig- ures 7–11 are directed to methods performed on a client device upon receiving a message, and IngenioShare’s con- struction did not exclude embodiments from the claims. Based on its claim construction, the Board then con- cluded that Epic had not demonstrated that the prior art relied on in its petitions disclosed a server-side network- based portal. The Board determined that the interfaces that Epic identified in the prior art were “client-resident user interfaces,” Board Decision at 36–37, and were not on the server-side, and thus, Epic had not demonstrated that the challenged claims were unpatentable. Administrative Patent Judge Amundson dissented from the Board’s claim construction. He agreed with Epic that “a ‘network-based portal’ encompasses a user interface in a client device that connects clients to a network.” J.A. 61; J.A. 127; J.A. 189; accord J.A. 253. Epic timely appealed. We have jurisdiction pursuant to 35 U.S.C. § 1295(a)(4)(A).

2023), Epic Games, Inc. v. IngenioShare, LLC, No. IPR2022-00294, Paper No. 30 (P.T.A.B. May 19, 2023), Epic Games, Inc. v. IngenioShare, LLC, No. IPR2022- 00295, Paper No. 27 (P.T.A.B. May 19, 2023). Similarly, throughout this opinion, we cite to the specification of the ’810 patent, which, in relevant parts, is the same as the specification for the ’727 and ’038 patents. Case: 23-2177 Document: 40 Page: 7 Filed: 04/24/2025

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DISCUSSION I On appeal, Epic challenges the Board’s construction of “network-based portal” as residing only on the server side of the network. Epic argues that the specification’s discus- sion of the phone performing the communications manage- ment functionality, including in figures 7–11, demonstrates that the claimed “network-based portal” is broad enough to encompass a client-side interface residing on the client device. “Claim construction requires a determination as to how a person of ordinary skill in the art would understand a claim term ‘in the context of the entire patent, including the specification.’” Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (quoting Phil- lips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). In reviewing the Board’s claim construction, we review the ultimate claim construction de novo and the Board’s subsidiary factual determinations concerning ex- trinsic evidence for substantial evidence. Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012 (Fed. Cir. 2016). In construing the claims, the specification is “the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The specification here, while not a model of clarity, discloses two general em- bodiments for performing communications management— in one embodiment, the network-based portal performs the communications management functionality and in an- other, an electronic device (e.g., a phone) performs the com- munications management functionality. For example, in the first embodiment, the specification provides that “a portal is formed allowing the user to receive communica- tions from numerous sources through different modes,” and Case: 23-2177 Document: 40 Page: 8 Filed: 04/24/2025

this portal “can be used to control the selection and setting of different intelligent communication modes for the user.” ’810 patent, col. 4 ll. 13–15, 39–41; see also id. col. 5 ll. 60– 61 (“[A] portal provides a number of intelligent communi- cation modes . . . .”). The portal can “include[] a database to keep track of the user’s different contacts . . . and the ac- cess priorities of each contact” and can “dynamically change the access priorities of a caller trying to reach the user.” Id. at col. 4 ll. 53–55, 63–64; see also id. at col. 6 l. 39 (“The database can, for example, be in the portal.”). In the second embodiment, a client device performs the same communications management functionality. The specification describes that databases and “intelligent com- munication modes [for selection] . . . are in the phone” and the phone “automatically manage[s] the communication.” ’810 patent, col. 7 ll. 13–15, 24–25; see also id. at col. 6 ll. 40–41 (“[T]he database is in a personal communication device of the user.”); id. at col. 7 ll. 6–27 (noting that defin- ing contact classes, setting up the access priority database, and categorizing a user’s contacts all may occur in the phone). The specification does not describe the portal as located in the phone even though it describes elements for the communications management functionality, like data- bases, as being in the phone. The specification describes that the phone can interact with and utilize the portal, sug- gesting the portal is separate from the phone. For example, it describes the following: A portal or gateway approach could provide general Internet access to one or more embodiments of the communication management systems so that users can configure the system behavior they desire. The portal or gateway can then facilitate download of a database or update thereto to a communication de- vice, such as a phone. Id. at col. 6 l. 66–col. 7 l. 5; see also id. at col. 6 ll. 40–44 (describing that when the database is in a personal Case: 23-2177 Document: 40 Page: 9 Filed: 04/24/2025

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communication device, “[t]he portal accesses the personal communication device”). While the specification demonstrates that the portal does not reside on the phone, it does not make clear where the network-based portal is located. 3 The claims are clear that a “portal” is “network-based.” Substantial evidence from the dictionary definitions (not presented before insti- tution) supports the Board’s determination that a portal re- sides on the server side of the network. Phillips, 415 F.3d at 1322–23 (“[J]udges are free to consult dictionaries and technical treatises [‘]at any time in order to better under- stand the underlying technology and may also rely on dic- tionary 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 docu- ments.[’]” (quoting Vitronics, 90 F.3d at 1584 n.6)). The Board, as permitted by Phillips, 4 considered the following dictionary definitions as to the meaning of the word “portal”:

3 IngenioShare argues that the specification defines a “portal” as a “gateway,” and the specification further de- fines “gateway” as a “networked server.” But even assum- ing the specification uses the term “portal” as synonymous with “gateway,” the specification’s single reference to “a gateway computer” as “one example of a networked server” is not determinative of a network-based portal residing only on a server. See Akamai Techs., Inc. v. Limelight Net- works, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015) (explain- ing that use of a term in one (preferred) embodiment “does not provide the clarity necessary to find that the patentees intended to limit the term . . . to the . . . embodiment”). 4 See also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (explaining it is Case: 23-2177 Document: 40 Page: 10 Filed: 04/24/2025

• “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 va- riety of information, data, resources, and services.” J.A. 5412 (quoting Portal (Internet), Techopedia (last updated Dec. 2016), https://www.techope- dia.com/definition/13077/portal-internet). • “Portal is a term, generally synonymous with gate- way, 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.” J.A. 5412 (quoting Portal, Tech- Target (last updated Dec. 2021), https://www.tech- target.com/whatis/definition/portal). • “A portal is a web-based platform that collects infor- mation from different sources into a single user in- terface and presents users with the most relevant information for their context.” J.A. 3816. • “A mobile portal is an Internet gateway that enables mobile devices to connect remotely with an enter- prise intranet or extranet, typically via a Web browser interface.” J.A. 3821. These dictionary definitions generally describe portals as “websites” or “web-based platforms.” IngenioShare’s ex- pert Dr. George Rouskas provided the first two definitions and further opined that “[w]ebsites are hosted on web serv- ers, not on client communication devices.” J.A. 5412 ¶ 49. He further opined that the definitions are consistent with his understanding of the word portal based on his more

“entirely appropriate” to turn to extrinsic evidence when “the intrinsic evidence is silent as to the plain meaning of a term”). Case: 23-2177 Document: 40 Page: 11 Filed: 04/24/2025

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than thirty years of experience and that these definitions had not changed over the last twenty–thirty years. We agree with the Board that there is no “meaningful conflict” between the definitions and that they provide con- text for understanding the meaning of network-based por- tal. Board Decision at 17. Construing “network-based portal” to reside on the server side of a network is not in- consistent with the claim language or specification. That there are embodiments in the specification where the com- munications management functionality is performed by the phone does not mean that a portal resides on the phone, and as already explained, the specification instead sup- ports the view that the network-based portal is not a part of the phone. Epic argues that figures 7–11 show embodiments where “network-based portal” functionality is performed by a user’s phone, and construing “network-based portal” to reside on the server side of a network excludes preferred embodiments. See Appellant’s Reply Br. 17. Figures 7–11 depict a portion of communication management (call, audio message, text message, and reply message responses as well as a message presentation process) performed by an electronic device such as a phone. The Board determined that “the issue is not merely whether the client device is capable of implementing functionality in some embodi- ments that is implemented by a server-resident network- based portal in other embodiments[,] [but] . . . instead whether that functionality is specifically implemented at the client with what Petitioner adequately shows to be a ‘network-based portal.’” Board Decision at 23. In other words, that the figures depict processes performed on a phone does not mean that the network-based portal is lo- cated on the phone. These figures and their descriptions are not inconsistent with an embodiment where some func- tionality is performed by a phone and other functionality is performed by a server-side network-based portal. Notably, Case: 23-2177 Document: 40 Page: 12 Filed: 04/24/2025

the portions of the specification describing these figures does not use the term “portal” or “network-based portal.” To be sure, the definition of “network-based portal” as residing on the server side of the network does not exclude combining the network-based portal with a phone to per- form the communications management functionality or ac- cessing the portal through the phone. As explained, the specification in fact contemplates such a combination. But Epic did not dispute the Board’s determination that the in- terfaces it identified on the electronic devices in the prior art were “client-resident user interfaces,” and it did not ar- gue that the prior art rendered the claims obvious because it depicted communication functionality performed by a phone in combination with a network-based portal as de- fined by the Board. CONCLUSION We have considered the parties remaining arguments and find them unpersuasive. We affirm the Board’s claim construction that a “network-based portal” resides on the server side of a network and its determination that Epic did not demonstrate that the claims are unpatentable as obvious. AFFIRMED