IP Law Daily, PATENT—Fed. Cir.: Non-obviousness affirmed in electronic communications management patent dispute, (Apr 25, 2025)

By Kevin M. Finson, J.D.

The PTAB did not err in finding that the claim term “network-based portal” required a server-side device because it properly relied on dictionary evidence and the board’s construction was consistent with the specification.

A patentee in the field of electronic communications management showed that the Patent Trial and Appeal Board did not err in finding its claims were not shown to be obvious, the U.S. Court of Appeals for the Federal Circuit has held. The Board’s underlying claim construction was consistent with the specification and did not exclude any preferred embodiments (Epic Games, Inc. v. IngenioShare, LLC, Nos. 23-2177,-2178, 23-2179, 23-2180 (Fed. Cir. Apr. 24, 2025)).

IngenioShare, LLC (IngenioShare) was the owner of U.S. Patents Nos. 10,142,810 (the ’810 patent), 10,708,727 (the ’727 patent), and 10,492,038 (the ’038 patent), each of which related to the management of electronic communications and each of which recited the term “network-based portal.” Epic Games, Inc. (Epic) petitioned for inter partes review on the ground of obviousness.

The Patent Trial and Appeal Board (PTAB) instituted review and determined in claim construction that a “network-based portal” must reside on the server side of a network for all three patents, and that under this construction the prior art relied upon by Epic did not disclose a “network-based portal.”

Epic appealed, challenging the Board’s claim construction.

Claim construction. Epic argued that the term “network-based portal” was broad enough to encompass client-side functionality, while IngenioShare argued that the claimed portal was distinguishable from a client-side device and must reside on the server side of the network. The Board was concerned that IngenioShare’s proposed construction would exclude embodiments depicted in the specifications of each patent and ordered additional briefing on that issue.

The Federal Circuit determined that the Board had properly considered dictionary definitions alongside the additional briefing to come to its decision that the portal must reside on the server side of the network. The embodiments relied upon by Epic were not inconsistent with this construction - while they showed that some of the functionality performed by a “network-based portal” could be performed by a user’s phone, which was a client-side device, that did not render the phone itself a “network-based portal” in the terms of the patent language.

The Federal Circuit affirmed the decision of the Board.

The Case is Nos. 23-2177, 23-2178, 23-2179, 23-2180.

Judge: Dyk, T.

Attorneys: Carolyn Chang (Marton Ribera Schumann & Chang LLP) for Epic Games, Inc. Stephen Robert Risley (Kent & Risley LLC) for IngenioShare, LLC.

Companies: Epic Games, Inc.; IngenioShare, LLC

Cases: Patent FedCirNews USPTO