Trials@uspto.gov
`571-272-7822
`
`
`Paper 15
`Entered: March 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 15
`Entered: March 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`Unified Patents, LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.” or
`“Petition”) to institute an inter partes review of claims 1–7 (“the challenged
`claims”) of U.S. Patent No. 10,621,228 B2 (Ex. 1001, “the ’228 patent”).
`MemoryWeb, LLC (“Patent Owner”) timely filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply
`(Paper 11, “Pet. Reply” or “Reply”) and Patent Owner filed a redacted
`version of its Sur-Reply available to the public (Paper 12, “PO Sur-Reply”
`or “Sur-Reply”).1
`An inter partes review may not be instituted “unless . . . there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`consideration of the entirety of the current record, we determine that
`Petitioner has shown a reasonable likelihood that it would prevail in showing
`the unpatentability of at least one of the challenged claims. Accordingly, we
`institute an inter partes review.
`B. Real Party-in-Interest
`Petitioner identifies itself as the only real party-in-interest. Pet. 1.
`Patent Owner identifies itself as the only real party-in-interest. Paper 4, 2.
`C. Related Matters
`According to the parties, the ’228 patent was asserted in the following
`district court proceedings: MemoryWeb, LLC v. Samsung Electronics Co.,
`
`
`1 Patent Owner also filed an unredacted version of its Sur-Reply available
`only to the Board and the parties. Paper 13.
`2
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`IPR2021-01413
`Patent 10,621,228 B2
`Ltd. et al., Case No. 6:21-cv-00411 (W.D. Tex.); MemoryWeb, LLC v. Apple
`Inc., Case No. 6:21-cv-00531 (W.D. Tex.); and MyHeritage (USA), Inc. et.
`al. v. MemoryWeb, LLC, Case No. 1:21-cv-02666 (N.D. Ill.). Pet. 1–2;
`Paper 4, 2; Paper 7, 2; Paper 9, 2–3.
`Patent Owner also identifies U.S. Patent No. 9,098,531 (“the ’531
`patent”), U.S. Patent No. 10,423,658 (“the ’658 patent”), U.S. Patent No.
`9,552,376 (“the ’376 patent”), U.S. Patent No. 11,017,020 (“the ’020
`patent”), U.S. Patent No. 11,163,823 (“the ’823 patent”), pending U.S.
`Patent Application 17/381,047, and pending U.S. Patent Application
`17/459,933 as related to the ’228 patent. Paper 7, 2; Paper 9, 2–3.
`Patent Owner additionally indicates the following inter partes
`proceedings as related matters: Unified Patents, LLC v. MemoryWeb, LLC,
`IPR2021-01413 (PTAB) challenging the ’228 patent; Samsung Electronics
`Co., Ltd., v. MemoryWeb, LLC, IPR2022-00222 (PTAB) challenging the
`’228 patent; Apple Inc. v. MemoryWeb, LLC, IPR2022-00031 (PTAB)
`challenging the ’228 patent; Apple Inc. v. MemoryWeb, LLC, IPR2022-
`00111 (PTAB) challenging the ’020 patent; Apple Inc. v. MemoryWeb, LLC,
`PGR2022-00006 (PTAB) challenging the ’020 patent; Apple Inc. v.
`MemoryWeb, LLC, IPR2022-00033 (PTAB) challenging the ’658 patent;
`and Apple Inc. v. MemoryWeb, LLC, IPR2022-00032 (PTAB) challenging
`the ’376 patent. Paper 7, 2; Paper 9, 2–3.
`D. The ’228 Patent (Ex. 1001)
`The ’228 patent is titled “Method and Apparatus for Managing Digital
`Files” and “relates generally to the management of digital files and, more
`particularly, to a computer-implemented system and method for managing
`and using digital files such as digital photographs.” Ex. 1001, code (54),
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`Patent 10,621,228 B2
`1:21–24. The ’228 patent describes a need for “a medium that allows people
`to organize, view, preserve and share [digital] files with all the memory
`details captured, connected and vivified via an interactive interface” and
`“allow digital files, including documents, photos, videos and audio, to tell a
`full story now, and for generations to come.” Id. at 1:60–67. The ’228
`patent provides a solution in the form of “a computer-implemented method
`of associating digital tags with digital files” and “a web-based digital file
`storage system [that] comprises a digital file repository for storing and
`retrieving digital files.” Id. at 2:3–6, 2:21–25, 2:40–45.
`The ’228 patent describes details of an “Application” (also called the
`“MemoryWeb Application”), which is an online program that can (i) import,
`associate and embed digital tags to digital files, (ii) view, sort, annotate, and
`share digital files from various Application Views, and (iii) store the digital
`files through an interactive storage system through a user relationship table.
`Id. at 8:63–9:16. The ’228 patent explains that the Application may be
`accessible “over various user interfaces” including those of “smart phones
`(e.g., iPhones), Personal Digital Assistants (PDAs) and Tablets (e.g.,
`iPads).” Id. at 9:18–22. The Application provides views (i.e., “Application
`Views”) that utilize the Application’s ability to associate digital tags to
`digital files and display them in customized views such as Uploads,
`Collections, Slideshow, Location, Timeline, Family Tree, People Profile,
`and Recipes. Id. at 9:23–28. The views enable a user to display the user’s
`digital media files and their tagged attributes. Id. at 5:57–60. The views
`include, inter alia: a location view that “identifies within an interactive map
`([e.g.,] Google map . . .), where digital files were taken or originated . . .
`[and] can also provide additional outputs such as a journey route that
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`Patent 10,621,228 B2
`identifies the specific locations for an event or trip that can be customized by
`users”; a people view that “shows thumbnail photos of all the people in the
`system that can be clicked in for a people profile view”; and a people profile
`view that “shows a profile picture of an individual, their birth/death
`information, family relationships, overview (comments) on the person, as
`well as links to other views that contain that individual in the system.” Id. at
`6:13–30. Some views provided by the ’228 patent’s Application are shown
`in Figures 32 and 34, reproduced below. Id. at 3:61–66, 28:22–24.
`Figure 32 illustrates a People Application View (at indicator 1400)
`and a People Profile Application View (at indicator 1430). Id. at 18:37–40,
`22:59–61.
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`Patent 10,621,228 B2
`In Figure 32, above, People Application View 1400 is used to display
`all the people that were created within a user’s Application. Id. at 22:60–
`23:11. This view can be seen by selecting “People” (illustrated at menu item
`1401) from any of the Application Views within the Application, which then
`provides a list of people in various sort orders. Id. For each person, a
`thumbnail of their face along with their name is depicted, as shown in Figure
`32, where Jon Smith (item 1403) and JC Jon Smith (item 1404) along with
`some other people are illustrated. Id. Also, at the top of every Application
`View within the Application, the user can select to apply filters (Apply
`Filters at item 1451). Id. In the People Profile Application View in Figure
`32, a single profile (item 1430) is illustrated. Id. at 23:11–49. The profile
`shows: the individual’s name (displayed at the top of the page, at 1431)
`along with their nicknames (at 1433); when they were born (at 1434); their
`family members (at 1435, 1436, 1437); their biography (at 1438); and a
`profile photo (at 1439). Id. For each person, the system can allow the user
`to quickly see all the tags that are associated to a person. Id.
`In Figure 32, the system illustrates that there are four photos (1452)
`associated with that person and illustrates thumbnails of each of the four
`photos (1446). Id. These thumbnails can be selected and then the user will
`be taken to the slideshow view for that digital file. Id. If the user selects
`Locations (1443), all of the locations that the specific person has been
`tagged within will be displayed. Id. If the user selects Family Relationships
`(1444), the people that the user is associated with will be displayed in a
`family chart or tree. Id. If the user selects any of the Application Dot-Tags
`such as the individual’s mother Jane Smith (Doe) (1449), the application
`will take the user to an individual people profile view of Jane Smith (Doe).
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`Patent 10,621,228 B2
`Id. An Application Dot-Tag is a structure that enables navigation of the data
`in the Application, helps the user organize their digital files with key
`components of related information such as people, date of file, location, and
`collection, and indicates the manner in which a Digital Tag is displayed
`within the Application using pill-shaped indicators that can reside near a
`file’s image or overlaid on the file’s image. Id. at 9:40–67. The ’228 patent
`explains that the “Application Dot-Tag is more than just text” because
`“Memory-Web Application Dot-Tags act as mini search engines that allow
`the user to see how many matching files there are to that MemoryWeb Tag
`and if selected will take the user to the corresponding Application View to
`illustrate the linked search results of that Application Dot-Tag.” Id.
`Figure 34 of the ’228 patent, reproduced below, illustrates Location
`Views. Id. at 21:36–38, 24:16–17.
`
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`IPR2021-01413
`Patent 10,621,228 B2
`Figure 34, above, shows Location Application View 1600 that
`displays all the locations that were created within the user’s Application; for
`each location, a thumbnail of a digital file from that location (e.g., Wrigley
`Field 1601); a view of a single location (1630), with the individual location
`name displayed at the top of the page (1632); thumbnails of each digital file
`within the specific collection, such as a photo (1633) taken at Wrigley Field
`(1634) that is associated with the location Wrigley Field. Id. at 24:16–54.
`The ’228 patent provides that “the Application can interact with a Third
`Party Geographical Mapping System to pull maps that correspond to the
`exact location of Digital Files that have a location tag.” Id. at 32:10–13.
`Figure 41 of the ’228 patent, reproduced below, is a screenshot of an
`Application Dot-Tag Filter in a Location Application View. Id. at 4:7–8.
`
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`IPR2021-01413
`Patent 10,621,228 B2
`Figure 41, above, illustrates filtering results for an Application Dot-
`Tag filter in a Location Application View (at item 0870), providing a world
`map view that illustrates all the locations that are associated with one or
`more digital files for a user. Id. at 29:40–64, 32:15–18. As shown in Figure
`41, digital files are displayed within an interactive map (e.g., a Google map).
`Id. at 29:40–64. Individual or groups of digital files are illustrated as photo
`thumbnails (at indicators 0874 and 0875) on the map, and the user can select
`the thumbnail to see all the digital files with the same location, or the user
`can use the interactive map and narrow the map view by using a zoom
`in/zoom out bar (0876) or by selecting the map. Id. If an advanced filter is
`applied in the Locations Application View, a filter (e.g., of “JC Smith” at
`item 0872) is illustrated, and only the digital files that contain the person JC
`Smith are illustrated with their geographic location on the map. Id.
`E. Challenged Claims
`Petitioner challenges claims 1–7 of the ’228 patent. Pet. 2, 4. Claim 1
`is independent. Claim 1 is illustrative and is set out below.
`1. [1a-preamble] A method comprising:
`[1b] responsive to a first input, causing a map view to be
`displayed on an interface, [1c] the map view including:
`(i) an interactive map;
`[1d] (ii) a first location selectable thumbnail image at a first
`location on the interactive map; and
`[1e] (iii) a second location selectable thumbnail image at a
`second location on the interactive map;
`[1f] responsive to an input that is indicative of a selection of the
`first location selectable thumbnail image, causing a first location
`view to be displayed on the interface, [1g] the first location view
`including (i) a first location name associated with the first
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`IPR2021-01413
`Patent 10,621,228 B2
`location and (ii) a representation of at least a portion of one
`digital file in a first set of digital files, [1h] each of the digital
`files in the first set of digital files being produced from outputs
`of one or more digital imaging devices, the first set of digital files
`including digital files associated with the first location;
`[1i] responsive to an input that is indicative of a selection of the
`second location selectable thumbnail image, causing a second
`location view to be displayed on the interface, [1j] the second
`location view including (i) a second location name associated
`with the second location and (ii) a representation of at least a
`portion of one digital file in a second set of digital files, [1k] each
`of the digital files in the second set of digital files being produced
`from outputs of the one or more digital imaging devices, the
`second set of digital files including digital files associated with
`the second location; and
`[1l] responsive to a second input that is subsequent to the first
`input, causing a people view to be displayed on the interface,
`[1m] the people view including:
`(i) a first person selectable thumbnail image including a
`representation of a face of a first person, the first person
`being associated with a third set of digital files including
`digital photographs and videos;
`[1n] (ii) a first name associated with the first person, the first
`name being displayed adjacent to the first person selectable
`thumbnail image;
`[1o] (iii) a second person selectable thumbnail image
`including a representation of a face of a second person, the
`second person being associated with a fourth set of digital
`files including digital photographs and videos; and
`[1p] (iv) a second name associated with the second person,
`the second name being displayed adjacent to the second
`person selectable thumbnail image.
`Ex. 1001, 35:32–36:11 (with brackets noting Petitioner’s labels, see Pet. 13–
`60).
`
`10
`
`
`
`Date
`May 26, 2011
`
`March 30, 2004
`
`July 7, 2011
`
`July 8, 2010
`
`Sept. 2, 2021
`
`Dec. 17, 2021
`
`Exhibit No.
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1002
`
`Ex. 2001
`
`IPR2021-01413
`Patent 10,621,228 B2
`F. Evidence
`Reference or Declaration
`U.S. Patent Application Publication
`No. 2011/0122153 A1 (“Okamura”)
`U.S. Patent No. 6,714,215 B1
`(“Flora”)
`U.S. Patent Application Publication
`No. 2011/0163971 A1 (“Wagner”)
`U.S. Patent Application Publication
`No. 2010/0172551 A1 (“Gilley”)
`Declaration of Benjamin Bederson,
`Ph.D. (“Bederson Dec.”)
`Declaration of Glenn Reinman, Ph.D.
`(“Reinman Dec.”)
`
`
`G. Asserted Grounds of Unpatentability
`Claim(s) Challenged
` 35 U.S.C. §
`1–7
`103
`1-7
`103
`1–7
`103
`1–7
`103
`
`Reference(s)
`Okamura, Flora
`Okamura, Flora, Wagner
`Okamura, Flora, Gilley
`
`Okamura, Flora, Wagner, Gilley
`
`
`Pet. 4.
`
`II. ANALYSIS
`
`A. Compliance with 35 U.S.C. § 312(a)(2)
`Patent Owner argues that we should deny institution under 35 U.S.C.
`§ 312(a)(2) because the Petition does not name all real parties in interest
`(“RPI”). Prelim. Resp. 22–28. Patent Owner argues that “Apple and
`Samsung should have been [named] as RPIs in this proceeding, and the
`
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`IPR2021-01413
`Patent 10,621,228 B2
`failure to identify Apple and Samsung is a basis for the Board to deny
`institution pursuant to 35 U.S.C. § 312.” Prelim. Resp. 28. Patent Owner
`argues that “Unified has admitted that Apple is a [subscribing] member and
`other publicly available information suggests that Samsung is also a
`member.” Prelim. Resp. 24 (citing Exs. 2009, 2010). Patent Owner also
`argues that “Apple and Samsung are both beneficiaries of the Petition
`because Unified targets patents to mitigate the risk of non-practicing-entity
`lawsuits against its members.” Id. (citing Ex. 2011, 1–2; Ex. 2012, 1).2
`Petitioner asserts that Unified is the sole RPI and provides the
`declaration of Kevin Jakel, the CEO of Unified Patents, as support. Pet.
`Reply 1; Ex. 1017. Mr. Jakel testifies that “Unified exercises sole and
`absolute discretion over its decision to contest patents,” and “does not
`discuss the preparation of any patentability challenge with Members.” Ex.
`1017 ¶¶ 4, 5. Mr. Jakel also testifies that “Unified has no explicit or implicit
`agreements with its Members about Unified performing any particular
`deterrent strategy, including the instant IPR,” and that “none of Unified’s
`Members had any prior knowledge of, or involvement in, the preparation
`and filing of the petition for the instant IPR. Unified also had no discussions
`with any Member regarding whether any Member desired Unified to
`challenge the Patent-at-Issue.” Id. ¶¶ 10, 13.
`
`
`2 We note for the record that subsequent to the filing of the petition in this
`proceeding, Apple filed a petition challenging claims of the ’228 patent (see
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031, Paper 1 (PTAB Oct. 30,
`2021), and so did Samsung (see Samsung Electronics Co., Ltd., v.
`MemoryWeb, LLC, IPR2022-00222, Paper 2 (PTAB Dec. 3, 2021)).
`12
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`IPR2021-01413
`Patent 10,621,228 B2
`Section 312(a)(2) requires that the “petition identif[y] all real parties
`in interest.” This provision serves important notice functions to patent
`owners, to identify whether the petitioner is barred from bringing an IPR due
`to an RPI that is time-barred or otherwise estopped, and to the Board, to
`identify conflicts of interests that are not readily apparent from the identity
`of the petitioner. See NOF Corp. v. Nektar Therapeutics, IPR2019-01397,
`Paper 24 at 6 (PTAB Feb. 10, 2020) (citing Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 12 (November 2019), available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
`(“TPG”)). Accordingly, petitioners must comply with these requirements in
`good faith. See 37 C.F.R. § 42.11(a) (2019) (duty of good faith and candor
`in proceedings).
`Whether a non-party is an RPI is a “highly fact-dependent question”
`and must be considered on a case-by-case basis. Ventex Co. v. Columbia
`Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24,
`2019) (precedential). However, as Petitioner points out, there is no
`allegation in this proceeding of a time bar or estoppel based on an unnamed
`RPI. See Reply 1. Therefore, we need not address whether Apple and
`Samsung are unnamed RPIs because, even if either were, it would not create
`a time bar or estoppel under 35 U.S.C. § 315. Under the Board’s
`precedential decision in SharkNinja Operating LLC v. iRobot Corp.,
`IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential), an RPI
`analysis is not required at institution absent allegation of a time bar or
`estoppel based on an unnamed RPI; see also Lumentum Holdings, Inc. v.
`Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4,
`2016) (precedential) (jurisdiction to consider a petition does not require a
`
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`“correct” identification of all RPIs in a petition); Blue Coat Sys., Inc. v.
`Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017)
`(“[E]vidence [of failure to identify all RPIs] is, at best, suggestive [of] an
`issue that is not jurisdictional.”). The Federal Circuit agrees that § 312(a)(2)
`is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp &
`Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to
`identify all real parties in interest under § 312(a)(2), the Director can, and
`does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi
`One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en
`banc))).
`Accordingly, at this stage of the proceeding, we decline to determine
`whether Apple and Samsung are real parties in interest.
`B. Discretionary Denial of Institution under 35 U.S.C. § 314(a)
`
`Patent Owner asserts that “[t]he Board may exercise its discretion to
`deny institution in light of the other IPR petitions filed against this patent,”
`citing 35 U.S.C. § 314(a). Prelim. Resp. 29. Patent Owner argues that
`“there are three pending IPR petitions involving the ‘228 patent,” and
`provides a chart with related information, which is set out below. Id. at 30.
`
`In addition to this proceeding, Patent Owner’s chart of pending IPR
`proceedings involving the ’228 patent, above, identifies two subsequent
`
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`proceedings filed by Apple, Inc. (IPR2022-00031) and Samsung Electronics
`Co., Ltd. (IPR2022-00222).
`Patent Owner argues that we should exercise our discretion to deny
`institution in this proceeding because “[b]oth the Apple and Samsung
`petitions address all of the claims of the ‘228 patent; the Unified petition,
`however, only covers claims 1-7 of the ‘228 patent. It would be inefficient
`to institute the instant Unified petition because it challenges fewer than all of
`the claims.” Prelim. Resp. 31. Patent Owner points to the Board’s Trial
`Practice Guide and argues that “parallel petitions challenging the same
`patent” provide a basis for discretionary denial where the “effect . . . on the
`economy, the integrity of the patent system, the efficient administration of
`the Office, and the ability of the Office to timely complete proceedings” may
`be impacted. Id. at 29–30 (quoting TPG 58, 59). Patent Owner also argues
`that “[t]he multiple IPR petitions filed against the ‘228 patent prejudice
`MemoryWeb because they are burdensome and cumulative.” Id. at 33.
`Petitioner argues that “Unified’s first filed petition is not a ‘follow-on
`petition.’” Reply. 8. Petitioner also argues that “[t]here are no statutory
`limits on the number of petitions against a patent by different entities, and
`that Unified challenged a subset of the ’228 patent’s claims rather than all
`does not preclude institution.” Id. Petitioner further argues that “each
`petition includes different grounds and there is no basis to decline review of
`Unified’s grounds.” Id. at 9.
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`We agree with Petitioner that Unified’s first-filed petition is not a
`“follow-on” petition,3 and we also agree with Patent Owner that the Board
`typically institutes first-filed petitions and may use its discretion to deny
`follow-on petitions. See Reply. 8; Prelim. Resp. 33. Although we
`acknowledge that Unified’s petition challenges fewer claims than the
`subsequently filed petitions, that difference, in and of itself, is insufficient to
`persuade us to deny institution of Unified’s petition. Moreover, as Petitioner
`points out, “Apple’s petition asserts different references altogether,” and
`although the Samsung petition applies Okamura, “the Unified and Samsung
`petitions . . . combine[] it with different secondary references.” Reply. 9.
`Given these circumstances, we decline to exercise our discretion
`under 35 U.S.C. § 314(a) to deny institution of inter partes review as Patent
`Owner requests.
`C. Discretionary Denial of Institution under 35 U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny
`a petition that presents the same or substantially the same art or arguments as
`were previously presented to the Office. “[T]he art and arguments must
`have been previously presented to the Office during proceedings pertaining
`to the challenged patent.” Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB
`Feb. 13, 2020) (precedential) (“Advanced Bionics”). Advanced Bionics
`
`
`3 Because we determine that Unified’s petition is not a “follow-on” petition,
`we do not apply the Board’s precedential decision in General Plastic
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`(PTAB Sept. 6, 2017). Moreover, neither party argues the General Plastic
`factors here. See Prelim. Resp. 29–33; Reply 8–9; Sur-Reply 5–6.
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`provides examples of “proceedings pertaining to the challenged patent.”
`“The proceedings in which the art was previously presented include, for
`example: examination of the underlying patent application, reexamination of
`the challenged patent, a reissue application for the challenged patent, and
`AIA post-grant proceedings involving the challenged patent.” Id. at 8.
`To evaluate arguments for discretionary denial under § 325(d), the
`Board uses a two-part framework that considers:
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and (2)
`if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims. If a
`condition in the first part of the framework is satisfied and the
`petitioner fails to make a showing of material error, the Director
`generally will exercise discretion not to institute inter partes
`review.
`Advanced Bionics, Paper 6 at 8–9 (footnote omitted).
`1. Part One of the Advanced Bionics Framework
`Patent Owner asserts that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny institution because “the references in the Petition
`are substantially the same as references that were considered during
`prosecution of the ‘228 patent.” Prelim. Resp. 33–34. Patent Owner
`acknowledges, however, that “[w]hile there was no office action during
`prosecution of the ‘228 patent, Kang and Jaffe were applied in rejections
`multiple times during prosecution of the related ‘426 application.” Id. at 41
`(citing Ex. 2007, 358–85, 421–49). Patent Owner argues that “during
`prosecution of the related ‘426 application, the examiner rejected the
`pending claims based on Kang (Ex. 1009) in view of Jaffe (Ex. 2024), and
`
`17
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`IPR2021-01413
`Patent 10,621,228 B2
`Hibino (Ex. 2025).” Id. at 34. Patent Owner argues that “[t]he portions of
`Okamura relied on in the Petition are substantially the same as disclosures in
`Kang.” Prelim. Resp. 35. Patent Owner also argues that “Jaffe and Hibino
`are substantially the same as the portions of Flora that Petitioner relies on.”
`Id. at 39.
`Petitioner disputes “that Okamura is substantially the same as Kang,”
`or that “the Petition’s arguments overlap with those of the ’426 application’s
`examination.” Reply. 9. Petitioner argues that because certain of
`Okamura’s disclosures do not exist or overlap in Kang, “the references are
`not substantially the same.” Reply. 9. Petitioner also argues that its
`combination of Okamura, Flora and Gilley provides “an explicit teaching
`regarding names displayed adjacent to thumbnail images,” and that “[t]his
`specific combination of teachings was never considered during prosecution.”
`Id. at 10. Petitioner further argues that “the Okamura and Flora combination
`is new and has not been previously considered.” Id.
`Here, the parties do not dispute that the prior art asserted by Petitioner
`in this proceeding, namely Okamura (Ex. 1004), Flora (Ex. 1005), Wagner
`(Ex. 1006), and Gilley (Ex. 1007), was not presented during prosecution of
`the ’228 patent. See Pet. 3; Prelim. Resp. 41; Ex. 1001, code (56); Ex. 1003,
`157–170. Patent Owner asserts, however, that different prior art, namely
`Kang (Ex. 1009), Jaffe (Ex. 2024), and Hibino (Ex. 2025), was presented
`during prosecution of U.S. Application No. 14/193,426 (“the ’426
`application”). Prelim. Resp. 5–7, 34; see Ex. 2007. According to Patent
`Owner, the ’426 application is an earlier, related application to U.S.
`Application No. 16/578,238 (“the ’238 application”), the application that
`matured into the ’228 patent at issue in this proceeding. See Prelim. Resp.
`
`18
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`IPR2021-01413
`Patent 10,621,228 B2
`5–6. Based on information provided by Patent Owner, the ’426 application
`appears to be the great-grandparent of the ’238 application. Id.
`In our view, neither the art, nor the arguments, presented by the
`Petition are the same, or substantially the same, as the art or the arguments
`presented during examination of the great-grandparent ’426 application.
`Patent Owner attempts to equate the Kang and Okamura references by
`arguing that “Figure 9(b) of Kang is substantially similar to [Figure] 21 of
`Okamura in that they both illustrate photo organization based on
`people/faces,” and that “Figure 9(b) of Kang is substantially similar to
`[Figure] 18 of Okamura in that both convey location information associated
`with images without needing to display an entire geographic map.” Prelim.
`Resp. 36, 38. But even if we accept Patent Owner’s assertion that Figure
`9(b) of Kang is “substantially similar” to Figures 18 and 21 of Okamura,
`having a “substantially similar” figure does not make Kang “substantially
`the same” as Okamura.
`For example, Kang is a printed publication entitled, Capture,
`Annotate, Browse, Find, Share: Novel Interfaces for Personal Photo
`Management, which describes “tools which better support accurate, rapid,
`and safe shared annotations with comfortable and efficient browsing and
`search.” Ex. 1009, 1. Kang’s Figure 9(b), cited by Patent Owner, relates to
`a “Semantic Region project” that “provides an interactive visualization
`technique called region brushing to support meaning extraction by
`visualizing the relationships among the semantic regions.” Id. at 18. Kang
`explains that
`[b]ecause a photo can be contained in multiple regions across the
`different models; many
`questions
`concerning
`the
`interrelationships of models can be answered through region
`
`19
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`IPR2021-01413
`Patent 10,621,228 B2
`brushing. Such questions might be, “Find the name of the
`conferences that all nine people participated in and where was
`the conference held?” [or] “What was the name of the conference
`held in Atlanta, Georgia, and who did not appear in the photos
`taken at this conference?”
`Id. at 18–19.
`Okamura, on the other hand, is a U.S. Patent entitled, Information
`Processing Apparatus, Information Processing Method, And Program,
`which is directed to, among other things, “a display control section that
`displays the background image and the plurality of superimposed images on
`a display section in such a way that the reference image is placed at the set
`coordinates in the background image.” Ex. 1004, codes (54), (57)(Abstr.)
`With respect to Okamura’s Figure 18, cited by Patent Owner, Okamura
`explains that Figure 18 “show[s] an example of display of an index screen
`that displays cluster maps as index images,” where “there are provided an
`‘EVENT’ tab 411, a ‘FACE’ tab 412, a ‘PLACE’ tab 413, a cluster map
`display area 414, and left and right buttons 415 and 416.” Id. ¶¶ 234, 235.
`Okamura further explains that “when the mouse is placed over a cluster map
`417 by a user operation on the index screen 410 shown in FIG. 18 . . . the
`color of the cluster map 417 is changed, and pieces of information 418
`related to the cluster map 417 are displayed. For example . . . the cluster
`title ‘Mt. Fuji’ of the cluster” or “information on the latitude and longitude
`of the center position of the cluster corresponding to the cluster map . . . is
`displayed.” Id. ¶ 240.
`With respect to Okamura’s Figure 21, Okamura explains that Figure
`21 shows “images representing face clusters generated by the face cluster
`
`20
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`IPR2021-01413
`Patent 10,621,228 B2
`generating section 140 and stored in the cluster information storing section
`240 are displayed,” where
`a thumbnail image of each of faces included in contents
`belonging to the face cluster can be used. For example, as such
`a thumbnail image of a face, faces included in the contents
`belonging to the face cluster are extracted, the best-shot face is
`selected from among these extracted faces, and the thumbnail
`image of this selected face can be used.
`Id. ¶ 246. Okam
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