Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, LLC
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,621,228
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`Inter Partes Review No. IPR2021-01413
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, LLC
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,621,228
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`Inter Partes Review No. IPR2021-01413
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`Pursuant to the Board’s December 23, 2021 email authorization (Ex. 1020),
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`Patent Owner hereby submits its Preliminary Sur-Reply to the Petition.
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`I.
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`The Board Should Deny Institution Pursuant to § 325(d)
`Discretionary denial under 35 U.S.C. § 325(d) involves a two-part inquiry: (1)
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`whether the same or substantially the same art or arguments were previously
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`presented to the Office; and (2) if so, “whether the petitioner has demonstrated that
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`the Office erred in a manner material to the patentability of challenged claims.”
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`Advanced Bionics, LLC v. Med-EL Elktromedizinische Gerate GmbH, IPR2019-
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`01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential). Petitioner argues that it
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`“need not show how the Office allegedly erred,” effectively conceding that the
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`§ 325(d) analysis turns on whether the combinations in Grounds 1-4 are substantially
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`the same as previously-considered art. Reply at 10. Petitioner also does not dispute
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`the relevance of the rejections in the related ‘426 application’s file history. See id.
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`For at least reasons discussed in Patent Owner’s Preliminary Response
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`(“PPOR”) and below, the references in the Petition are substantially the same as
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`Kang (Ex. 1009), Jaffe (Ex. 2024), and Hibino (Ex. 2025), which were considered
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`during prosecution of ‘228 patent and specifically applied in rejections in the related
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`‘426 application. See PPOR at 6-7, 33-42; Ex. 2001 at ¶¶ 65-79.
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`A. Okamura, Petitioner’s primary reference, is substantially the
`same as previously considered art
`Petitioner identifies three alleged differences between Okamura and Kang,
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`1
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`each of which is addressed in turn.
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`First, Petitioner argues that Okamura has a face tab 412 and place tab 413
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`“providing an interface for selecting whether content is displayed according to face
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`or location information.” Reply at 9. However, Kang also provides for displaying
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`content based on face or location information. See, e.g., Ex. 1009 at Fig. 9(b) (faces
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`and locations), Fig. 5(b) (locations); Ex. 2001 at ¶¶ 69-73. Indeed, Petitioner’s
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`expert, a co-author of Kang, confirms that Kang describes “organiz[ing] content
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`according to location and people.” Ex. 1002 at ¶ 42 (emphasis added).
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`Second, Petitioner argues that Okamura differs from Kang because Okamura
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`describes “an interactive map, where cluster maps 417 change color and have
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`information 418 displayed based on the position of the cursor 419.” Reply at 9.
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`However, Okamura does not have the claimed “interactive map.” POPR at 44-47;
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`Ex. 2001 at ¶¶ 82-87. Both references display content based on location, but
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`Okamura’s color changing is not sufficient disclosure of the “interactive map” of the
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`claims. Id.; see also Ex. 2001 at ¶¶ 71-73; Ex. 1002 at ¶ 42. Thus, this is not a
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`meaningful distinction.
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`Third, Petitioner argues that Okamura differs from Kang because Okamura
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`describes displaying “name information and information on the number of contents
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`including in a cluster, are displayed on the playback application.” Reply at 9.
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`However, Kang also includes “name information” and the number of photos. See,
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`2
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`e.g., Ex. 1009 at Figs. 5(a)-(c), 6, 9(b), 10.
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`Flora is substantially the same as previously considered art
`B.
`Flora is substantially the same as Jaffe and Hibino. PPOR at 39-41; Ex. 2001
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`at ¶¶ 77-79. Petitioner only proffers one alleged distinction between Flora and the
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`previously-considered art: “Flora is relied on for its geographic map 46 and media
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`view 64 and displays the location name at which content is present.” Reply at 10.
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`During prosecution of the related ‘426 application, the examiner stated that Jaffe
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`illustrates “an interactive map . . . a first thumbnail image at a first location on the
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`interactive map . . . [and] a second thumbnail image at a second location on the
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`interactive map.” Ex. 1007 at 367-69; Ex. 2001 at ¶¶ 77-78. The substantial overlap
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`between Flora and Jaffe is clear from a comparison of the figures:
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`Ex. 1005 at FIG. 2
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`Ex. 2024 at Fig. 1(a)
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`Further, Flora does not disclose “display[ing] the location name at which
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`content is present,” so this does not make Flora substantially different than Jaffe and
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`Hibino. Reply at 10. The Petition misleadingly relies on an image in Flora’s
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`3
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`prosecution file history (not Flora itself) for allegedly disclosing displaying a
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`location name. PPOR at 57-60.
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`The ‘426 application’s examiner also found that Hibino “discloses that the
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`thumbnail images are user selectable,” and further that “responsive to a click or tap
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`of the first user selectable thumbnail image” scaled replicas are displayed and that it
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`would be obvious to combine these features with Jaffe and Kang. Id. at 370. The
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`Jaffe/Hibino combination applied during the ‘426 application’s prosecution is
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`substantially the same as Flora, where clicking one of the icons 58 causes the media
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`viewer 64 to display images. Ex. 2001 at ¶ 79.
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`C. Gilley is substantially the same as previously considered art
`Petitioner argues that Patent Owner did not explain how the portions of Gilley
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`relied on by Petitioner (see Petition at 85-96) are substantially the same as Kang.
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`Reply at 9-10. This, however, ignores the side-by-side comparison of Gilley’s FIG.
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`7 (see Petition at 85-96) and Kang’s Figure 9(b) in the POPR:
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`Ex. 1007 at FIG. 7
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`Ex. 1009 Fig. 9(b) (excerpted)
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`4
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`PPOR at 38-39; Ex. 2001 at ¶¶ 74-76.
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`This comparison clearly demonstrates Gilley and Kang have at least substantially
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`the same disclosure of images of people and their names.
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`D.
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`The Office already considered substantially the same combination
`of references
`Petitioner argues that “the Okamura and Flora combination is new and has not
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`been previously considered” and that “[t]his specific combination of teachings was
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`never considered during prosecution.” Reply at 10. In Grounds 1-4, Petitioner
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`argues that it would be obvious to modify Okamura to include Flora’s interactive
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`map. Similarly, the ‘426 application’s examiner applied a combination modifying
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`Kang with Jaffe’s interactive map and the selectable thumbnails in Hibino. Ex. 2007
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`at 367-70, 433-37. Thus, contrary to Petitioner’s suggestion, substantially the same
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`combination was already considered.
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`II. The Board Should Deny Institution Pursuant to 35 U.S.C. § 314(a), 35
`U.S.C. § 316(b) and 37 CFR § 42.108(a)
`Petitioner argues that the General Plastic factors “do[] not apply because
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`Unified’s first filed petition is not a ‘follow-on petition.’” Reply at 8. To the extent
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`Petitioner is suggesting that there is no authority for denying a first-filed petition in
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`view of a later-filed petition, this is inconsistent with Board’s Trial Practice Guide
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`clear guidance that “[t]here may be reasons besides the ‘follow-on’ petition context”
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`that favor discretionary denial pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. §
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`5
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`42.108(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide,
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`November 2019, p. 58.
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`Okamura is the primary reference in this IPR and Samsung’s follow-on
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`petition, but Petitioner contends that there are “different secondary references.”
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`Reply at 9. Petitioner, however, fails to address the fact that Flora and Samsung’s
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`secondary reference, Belitz (Ex. 2020), are substantially similar in that both
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`references are relied on for allegedly disclosing interfaces that display an interactive
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`map with selectable thumbnail images. PPOR at 31; Cf. IPR2021-01413, Paper 2
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`at pp. 11-13 and IPR2022-00222 at pp. 9-11.
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`Granting institution would be unduly burdensome for Patent Owner in view
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`of the other petitions and would not provide an effective and efficient alternative to
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`district court litigation because Petitioner only challenges a subset of the ‘228
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`patent’s claims in a way that is cumulative of at least Samsung’s petition.
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`III. Failure to Name Apple and Samsung as Real Parties in Interest
`Petitioner’s Reply only serves to further confirm that Apple and Samsung
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`should have been named as real parties in interest because they are clear beneficiaries
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`of this IPR and have a preexisting, established relationship with Petitioner.
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1350-51 (Fed. Cir.
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`2018) (“AIT”). While the Board generally does not decide real party in interest
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`disputes at the institution stage, Petitioner’s relationship with Apple and Samsung is
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`6
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`relevant at this stage because they have filed their own follow-on petitions
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`challenging the ‘228 patent.
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`Petitioner admits that Apple and Samsung
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`1024 at 5; Ex. 1025 at 4; Ex. 1023 at ¶¶ 19-20.
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`” Ex.
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` because a “non party
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`to an IPR can be a real party in interest even without entering into an express or
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`implied agreement with the petitioner to file an IPR petition.” AIT, 897 F.3d at 1354.
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`Petitioner’s suggestion that it does not know whether this IPR will benefit
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`Apple and Samsung is not credible. Reply at 7; Ex. 1023 at ¶ 13. Petitioner’s goal
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`is to either
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`” Ex. 1023 at ¶ 11.
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`Tellingly, Petitioner does not offer an explanation as to why its press releases refer
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`to related litigation involving Apple and Samsung but omits the related litigation
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`(which it knew about) involving a non-member. Ex. 2013; Ex. 2014. The only
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`reasonable interference is that Petitioner knew this IPR would benefit Apple and
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`Samsung.
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`7
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`Respectfully submitted,
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`Dated: January 6, 2022
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`By: /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
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`8
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Preliminary Sur-Reply together with all exhibits filed therewith was served on
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`January 6, 2022, upon the following parties via electronic service:
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`ellyar@unifiedpatents.com
`afawzy@unifiedpatents.com
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`Counsel for Petitioner, Unified Patents, LLC
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`By:
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`/s/ Jennifer Hayes
`Lead Counsel for Patent Owner
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`9
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