U.S. Patent No. 10,621,228
`Patent Owner’s Request for Rehearing
`IPR2021-01413
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC
`Petitioner
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`Inter Partes Review No. IPR2021-01413
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`PATENT OWNER’S REQUEST FOR REHEARING
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`

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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`
`TABLE OF CONTENTS
`I. 
`Introduction ...................................................................................................... 1 
`Applicable Rules .............................................................................................. 1 
`II. 
`III.  Requested Relief .............................................................................................. 1 
`IV.  Argument ......................................................................................................... 2 
`A.  The Board Overlooked Patent Owner’s Argument that Unified
`Improperly Introduced New Evidence and Argument in Its Reply ................ 2 
`B.  The Board Should Rehear Its Determinations as to Limitations [1b], [1d],
`and [1e] and Claim 3........................................................................................ 3 
`1.  The Board Failed to Resolve the Parties’ Dispute Concerning the
`Appropriate Construction of “Responsive To” .......................................... 3 
`2.  The Board Overlooked Evidence and Argument in Finding Okamura-
`Flora Meet Limitations [1b], [1d], and [1e] ............................................... 4 
`3.  The Board Overlooked Evidence and Argument in Finding Claim 3
`Unpatentable ............................................................................................... 5 
`C.  The Board Should Rehear Its Determinations as to Limitations [1n] and
`[1p] and Claim 5 .............................................................................................. 7 
`1.  The Board Misapprehended Patent Owner’s Arguments When It
`Construed Limitations [1n] and [1p] .......................................................... 7 
`2.  The Board Similarly Misapprehended Patent Owner’s Arguments When
`It Construed Claim 5 ................................................................................ 11 
`3.  The Board Overlooked Evidence and Argument by Finding Okamura
`Meets Limitations [1n] and [1p] ............................................................... 11 
`4.  The Board Overlooked Evidence and Argument in Finding Claim 5
`Unpatentable ............................................................................................. 12 
`D.  The Board Overlooked Evidence and Argument in Adopting Petitioner’s
`Proposed Okamura – Flora Combination ...................................................... 13 
`E.  The Board Committed Legal Error by Improperly Shifting the Burden to
`Patent Owner to Prove Patentability .............................................................. 14 
`Conclusion ..................................................................................................... 15 
`
`
`V. 
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`
`
`
`
`i
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`

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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
`796 F.2d 443 (Fed. Cir. 1986) .............................................................................. 7
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................ 5
`Fisher & Paykel Healthcare v. ResMed Pty Ltd.,
`IPR2017-00061, Paper 37 (July 5, 2018) ........................................................... 10
`Homeland Housewares, LLC v. Whirlpool Corp.,
`865 F.3d 1372 (Fed. Cir. 2017) ............................................................................ 3
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 2
`In re Magnum Oil Tools International, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .......................................................................... 15
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008) ............................................................................ 3
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018). POR, 47-49 ..................................................... 14
`Power Integrations, Inc. v. Lee,
`797 F.3d 1318 (Fed. Cir. 2015) .......................................................................... 10
`SuperGuide Corp. v. DirecTV,
`358 F.3d 870 (Fed. Cir. 2004) .............................................................................. 8
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .......................................................................... 13
`Federal Statutes
`35 U.S.C. § 316(e) ................................................................................................... 15
`
`ii
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`

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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`Regulations
`37 C.F.R. § 42.23(b) .................................................................................................. 2
`37 C.F.R. § 42.71(c) ................................................................................................... 1
`37 C.F.R § 42.71(d) ................................................................................................... 1
`
`
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`
`
`iii
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`
`LISTING OF EXHIBITS
`
`
`Description
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`WITHDRAWN
`
`Japanese Unexamined Patent Application Publication No. 2001-
`160058 and Certified English Translation (“Fujiwara”)
`
`Japanese Unexamined Patent Application Publication No. 2007-
`323544 and Certified English Translation (“Takakura”)
`
`U.S. Patent No. 9,552,376 (“the ’376 patent”)
`
`U.S. Patent No. 10,423,658 (“the ’658 patent”)
`
`U.S. Patent No. 11,163,823 (“the ’823 patent”)
`
`’376 patent Prosecution History
`
`Reserved
`
`Transcript of October 15, 2019 Deposition of Kevin Jakel
`(IPR2019-00482)
`
`Non-confidential Brief of Barkan Wireless IP Holdings on
`Appeal from IPR2018-01186
`
`3 Questions for Unified Patents CEO Post-Oil States (Part II)
`
`Brief of Amicus Curiae Unified Patents Inc. in Cuozzo Speed
`Technologies, LLC v. Michelle K. Lee et al.
`
`Unified Patents September 3, 2021 Press Release regarding
`MemoryWeb IPR
`
`Unified Patents September 9, 2021 email regarding MemoryWeb
`IPR
`
`iv
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`
`Exhibit No.
`
`Description
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
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`2022
`
`2023
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`2024
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`2025
`
`2026
`
`2027
`
`2028
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`2029
`
`Unified Patent’s website link (Benefits for Large Company
`Members)
`
`Unified Patent’s website link (Unified Patents’ Collaborative
`Deterrence Approach)
`
`Unified Patent’s website link (Zones)
`(https://www.unifiedpatents.com/npe)
`
`Unified Patent’s website link (Success)
`(https://www.unifiedpatents.com/success)
`
`Unified Patent’s website link (FAQs)
`(https://www.unifiedpatents.com/faq)
`
`U.S. Patent App. Pub. No. 2010/0058212 A1 to Belitz et al.
`(“Belitz”)
`
`U.S. Patent No. 9,098,531 (“the ‘531 patent”)
`
`U.S. Patent No. 11,017,020 (“the ‘020 patent”)
`
`U.S. Patent No. 11,170,042 (“the ‘042 patent”)
`
`Jaffe et al., Generating Summaries and Visualization for Large
`Collections of Geo-Referenced Photographs (“Jaffe”)
`
`U.S. Patent Pub. No. 2009/0113350 (“Hibino”)
`
`U.S. Patent Pub. No. 2006/0165380 (“Tanaka”)
`
`Member Email Dated September 7, 2021 (CONFIDENTIAL)
`
`Email List for Member Email Dated September 7, 2021
`(CONFIDENTIAL)
`
`News Update Dated March 14, 2022 (CONFIDENTIAL)
`
`v
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`
`Exhibit No.
`
`Description
`
`2030
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`2031
`
`2032
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`2033
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`2034
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`2035
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`2036
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`2037
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`2038
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`2039
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`2040
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`2041
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`2042
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`Email List for News Update Dated March 14, 2022
`(CONFIDENTIAL)
`
`Unified Patents Web Page at www.unifiedpatents.com/npe/
`
`Email Dated October 24, 2021 (CONFIDENTIAL)
`
`Samsung Membership Report September 2021 Slide Deck
`(CONFIDENTIAL)
`
`Unified US Challenges Spreadsheet (CONFIDENTIAL)
`
`Transcript of the Deposition of Dr. Benjamin Bederson Dated
`May 24, 2022 Volumes. I and II.
`
`Transcript of the Deposition of Kevin Jakel Dated May 26, 2022
`(CONFIDENTIAL)
`
`Defendants’ Opening Claim Construction Brief Dated March 28,
`2022, WDTX Case No. 6:21-cv-00411-ADA
`
`Declaration of Professor Glenn Reinman, Ph.D. in Support of
`Patent Owner Response
`
`September 24, 2021 Letter from Bita Rahebi to Daniel J.
`Schwartz
`
`Japanese Unexamined Patent Application Publication No. 2007-
`323544 and Certified English Translation (“Takakura”)
`
`Cambridge English Dictionary entry for “Responsive”
`
`Cambridge English Dictionary entry for “Causing”
`
`vi
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`
`Exhibit No.
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`Description
`
`2043
`
`2044
`
`2045
`
`2046
`
`
`
`
`
`
`Dictionary.com entry for “Causing”
`
`Views # 1 - 3 Visual
`
`U.S. Patent No. 11,061,524 to Bederson et al.
`
`Transcript of the Deposition of Dr. Benjamin Bederson Dated
`September 29, 2022
`
`
`
`vii
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`

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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`I.
`
`Introduction
`Patent Owner respectfully requests rehearing under 37 C.F.R § 42.71(d) in
`
`response to the Board’s Final Written Decision (“Decision” or “FWD,” Paper 58)
`
`on the issues identified below. The Decision included certain legal errors and
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`“misapprehended or overlooked” highly material evidence and argument,
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`particularly testimonial evidence and argument offered with the Patent Owner Sur-
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`Reply (“POSR,” Paper 35), which the Board did not address. 37 C.F.R. § 42.71(d).
`
`II. Applicable Rules
`“A party dissatisfied with a decision may file a request for rehearing, [which]
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`must specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed.” 37
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`C.F.R. § 42.71(d). The request is reviewed under an abuse of discretion standard. 37
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`C.F.R. § 42.71(c).
`
`III. Requested Relief
`Patent Owner respectfully requests reconsideration of the Decision because
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`the Board: (1) overlooked Patent Owner’s argument that Unified improperly
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`introduced new evidence and argument in its Reply, (2) failed to resolve a
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`fundamental claim construction dispute concerning “responsive to,” (3) overlooked
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`Patent Owner’s reliance on express claim language and misapprehended Patent
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`Owner’s reference to the specification in the claim construction dispute concerning
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`1
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`the “people view,” (4) overlooked Patent Owner’s arguments about the prior art and
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`motivation to combine, and (5) improperly shifted the burden to Patent Owner to
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`prove patentability.
`
`IV. Argument
`A. The Board Overlooked Patent Owner’s Argument that Unified
`Improperly Introduced New Evidence and Argument in Its Reply
`The Board failed to address Patent Owner’s argument that Petitioner’s Reply
`
`and Dr. Bederson’s Reply Declaration (Ex. 1038) were improper because they
`
`presented new arguments and evidence that were not in the Petition. POSR, 1-2
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`(citing 37 C.F.R. § 42.23(b); Trial Practice Guide, 73-75; Intelligent Bio-Sys., Inc.
`
`v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016)).
`
`The Board’s failure is particularly egregious because the Board credited Dr.
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`Bederson’s Reply Declaration (EX1038) on seven occasions, without addressing
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`any of the relevant cross-examination testimony (EX2046) or Patent Owner’s
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`argument raised in the POSR addressing this evidence. See e.g., FWD, 45, 48, 97,
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`99, 106, 109; POSR, 4, 5, 7, 8, 9, 10, 11, 12, 13, 18, 21, 22 (each citing EX2046).
`
`Patent Owner, therefore, respectfully requests that the Board grant rehearing.
`
`2
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`
`B.
`
`The Board Should Rehear Its Determinations as to Limitations
`[1b], [1d], and [1e] and Claim 3
`1.
`The Board Failed to Resolve the Parties’ Dispute Concerning
`the Appropriate Construction of “Responsive To”
`While the POR stated clam construction may not be “required because the
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`plain and ordinary meaning of the claims is clear,” the Board erred by declining to
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`construe “responsive to,” particularly after Petitioner relied on prior art requiring
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`separate intervening inputs (rather than the single claimed input directly causing
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`display of the claimed view). POSR, 2-5, 17-18, 20-21; POR, 26-28.
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`This was legal error. The parties presented a fundamental disagreement
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`concerning the proper construction of “responsive to,” and the law requires that such
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`a dispute must be resolved. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
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`521 F.3d 1351, 1362 (Fed. Cir. 2008) (holding that it is the “court’s duty to resolve”
`
`a dispute regarding the scope of a claim term); Homeland Housewares, LLC v.
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`Whirlpool Corp., 865 F.3d 1372, 1375 (Fed. Cir. 2017) (holding the Board erred by
`
`failing to resolve a claim construction dispute in an IPR).
`
`The Board should have construed this phrase and adopted Patent Owner’s
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`construction of “responsive to.” Patent Owner briefed the bases for adopting its
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`construction in the POR and POSR. POSR, 2-5, POR, 26-28. Properly construed,
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`limitations [1b], [1d], and [1e] require that the “map view” (and its constituent
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`elements) displays “responsive to” the claimed “first input,” rather than after an
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`3
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`

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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
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`additional separate intervening input. Id. Similarly, properly construed, the express
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`language of claim 3 (when combined with the limitations of claims 1 and 2) requires
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`that the “map view” displayed “responsive to” the claimed “first input” must
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`“includ[e]” (i) a “thumbnail image” and (ii) “further includ[e] a first indication
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`feature … connected to the … thumbnail image.” POR, 26-28, 30-31; POSR, 2-5.
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`In other words, claim 3 requires that the “map view” with the “first indication
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`feature” must also be displayed “responsive to” the claimed “first input.” Id.
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`The Board’s failure to construe “responsive to” constituted legal error. When
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`the correct construction of “responsive to” is applied, Okamura does not teach the
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`limitations of claims 1 and 3. Infra, §IV.B.2-§IV.B.3. Patent Owner, therefore,
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`respectfully requests that the Board grant rehearing and construe “responsive to.”
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`2.
`
`The Board Overlooked Evidence and Argument in Finding
`Okamura-Flora Meet Limitations [1b], [1d], and [1e]
`For limitations [1b], [1d], and [1e], the Decision states:
`
`Petitioner’s proposed combination relies on Flora’s actual display of
`icons 58 and 59 on map 46 to show locations associated with media
`content, not whether Flora also describes that user input would display
`such icons. Pet. 22–27. Dr. Bederson competently explains Petitioner’s
`basis for the proposed combination, which we credit. Ex. 1038 ¶ 64.
`FWD, 48. This paragraph of Dr. Bederson’s second declaration improperly
`
`introduced new evidence and argument not presented in the Petition. Supra, §IV.A.
`
`4
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
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`
`Further, as explained in the POSR, Petitioner did rely on Flora’s requirement
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`that an intervening “user input” cause Flora’s icons to appear on the map. Pet., 28-
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`30 (citing EX1005, 7:4-13). POSR, 17-18. The Petition did not argue that selecting
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`Okamura’s PLACE tab 413 (first input) would cause the display of Flora’s
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`geographic map 46 (interactive map) with Flora’s icons 58, 59 (thumbnail image[s])
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`“responsive to” that that first input. Id.; Pet., 28-30. In fact, Petitioner and Dr.
`
`Bederson declined to acknowledge the causal relationship expressly required by the
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`“responsive to” claim term, and Dr. Bederson testified that he formed no opinion
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`regarding the possibility of an intervening input (that is not the “first input”)
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`“necessary” for displaying the map view. POSR, 18 (citing EX2046, 47:4-50:1 (“I
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`don’t think I have an opinion about that”); 175:11 – 20 (does not recall addressing
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`“intervening inputs”)).1 The Decision did not address this argument.
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`The Board should grant rehearing to address this argument.
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`3.
`
`The Board Overlooked Evidence and Argument in Finding
`Claim 3 Unpatentable
`In disputing Petitioner met its burden for claim 3, Patent Owner explained that
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`the Okamura cluster map display area 414 (map view) displayed “responsive to” the
`
`
`1 The Board credited Dr. Bederson’s Reply Declaration on this subject, but did not
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`address this relevant cross-examination testimony. FWD, 48; supra, §IV.A.
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`5
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`U.S. Patent No. 10,621,228
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`PLACE tab 413 (first input) does not include Okamura’s icon information 418 (first
`
`indication feature), as claimed. POR, 65-66; POSR, 20-21. To include icon
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`information 418, Okamura requires the entirely separate input (that is not the
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`identified “first input”) of placing “the mouse ... over a cluster map 417 by a user
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`operation.” POR, 65-66 (quoting EX1004, ¶0240).2 Id.
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`The Board did not dispute that Okamura operates in this manner or that it
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`differs from the plain and ordinary meaning of claim 3 under Patent Owner’s
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`interpretation. Instead, the Board stated that Okamura’s intervening mouse-hover
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`operation “is not part of Petitioner’s combination and therefore not relevant” because
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`the Petition “simply utilized the teaching that information 418 is displayed.” FWD,
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`106 (citing Pet. 14–18, 62–67).
`
`The Board misapprehended the Petition and overlooked Patent Owner’s
`
`arguments. As explained in the POSR, Petitioner relied on Okamura for more than
`
`merely disclosing the end result of information 418 being displayed within the
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`alleged “map view.” POSR, 21. Petitioner also relied on (i) Okamura’s cluster map
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`display area 414 as the claimed “map view,” and (ii) Okamura’s PLACE tab 413 as
`
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`2 Unless otherwise stated, all emphasis shown in case and evidentiary cites has been
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`added.
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`6
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`

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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`the claimed “first input,” responsible for “causing [the] map view to be displayed.”
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`Id.; Pet. 14-15. Most notably, and contrary to the Decision, the Petition (i) expressly
`
`quoted and relied on Okamura’s intervening mouse-hover operation for displaying
`
`information 418 (see, Pet. 19) and corresponding “software” (see, Pet. 25-27), and
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`(ii) cited back to the same discussion in relation to the “indication feature” of claims
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`2-3. POSR, 21; Pet. 19, 25-27 (§VI.A.3.c), (quoting EX1004, ¶0240) (Petitioner
`
`stating Okamura displays information 418 when Okamura’s “mouse cursor 419 is
`
`‘placed over a cluster map 417 by a user operation’”); see also, Pet. 63, 66 (citing
`
`§VI.A.3.c for “Okamura’s teachings regarding displayed information 418” in
`
`relation to claims 2-3).
`
`The Board also overlooked Patent Owner’s argument
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`that
`
`it
`
`is
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`“‘impermissible’ to ‘pick and choose’ from the relevant portions of Okamura ‘to the
`
`exclusion of’ when and how information 418 is displayed.” POSR, 21 (citing Bausch
`
`& Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)).
`
`The Board should grant rehearing to address these arguments.
`
`C. The Board Should Rehear Its Determinations as to Limitations [1n]
`and [1p] and Claim 5
`1.
`The Board Misapprehended Patent Owner’s Arguments
`When It Construed Limitations [1n] and [1p]
`The Board disagreed with Patent Owner’s assertion that the “people view”
`
`limitations [1n] and [1p] require “the ‘simultaneous’ display of a ‘first name’ and
`
`7
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`

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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`a ‘second name’ in the same view.” FWD, 63. In doing so, the Board stated that
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`Patent Owner “incorporat[ed]” the embodiment of Fig. 32 “in order to restrict
`
`claim 1,” while noting that an “embodiment may not be read into a claim.” FWD,
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`64 (quoting SuperGuide Corp. v. DirecTV, 358 F.3d 870, 875 (Fed. Cir. 2004))
`
`(emphasis added by Board).
`
`The Decision misapprehended Patent Owner’s argument. As explained in the
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`POR and POSR, Patent Owner did not seek to read Fig. 32 into claim 1. POR, 28-
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`29, 32; POSR, 6-8. Instead, Patent Owner relied on the “express words recited in
`
`the claim” while noting that Fig. 32 “discloses an exemplary embodiment
`
`“consistent with” those express words. Id. Indeed, Patent Owner explained:
`
`the claim language expressly defines the elements of the claimed
`“people view” being “displayed” per limitation [1l] by reciting the
`transitional word “including” along with the conjunction “and.”
`EX2023, 73; EX1001, 35:61-36:11 (“display[ing] … the people view
`including: . . . (ii) a first name . . . and (iv) a second name”).
`POSR, 6. Thus, a “people view” must include the four structural elements (numbered
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`“(i)” – “(iv)”) to qualify as the claimed “people view,” and each of the four “people
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`view” elements must be present to practice the step of displaying the “people view.”
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`POR, 28-29, 32; POSR, 5-8.
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`8
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`U.S. Patent No. 10,621,228
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`IPR2021-01413
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`Patent Owner also argued that including the first name and second name at
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`separate times would “conflict with” the “responsive to” relationship between the
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`“second input” and display of the “people view” and its constituent elements. POSR,
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`7. In fact, Dr. Bederson agreed “claim limitation [1n] and [1p] are … two elements
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`of a whole claim including a people view, which has to be displayed and responsive
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`to a second input.” Id. EX2046, 72:21-73:9. The Decision overlooked this argument
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`and evidence.
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`Further, while claim 1 does not recite the word “simultaneously,” the Decision
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`failed to explain how a view that includes only a “first name” but not a “second
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`name” can qualify as the claimed “people view.” As noted in the POSR, “Claim 1
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`does not state that the people view includes a first name ‘or’ second name, or that
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`the people view may optionally include the first name without the second name.”
`
`POSR, 6-7. Indeed, Dr. Bederson agreed limitations [1n] and [1p] refer to the same
`
`“people view” including both first and second names. Id.; EX2046, 69:10 – 70:4.
`
`The Decision also overlooked this argument and evidence.
`
`A recent Federal Circuit case, Salazar v. AT&T Mobility LLC, further
`
`reinforces Patent Owner’s construction. Salazar, 2023 WL 2778774 at *3-5 (April
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`5, 2023). In Salazar, the Federal Circuit addressed the meaning of the definite
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`articles “said” or “the” in a claim, affirming a district court claim construction that
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`required the same microprocessor “be capable of performing all recited
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`functionality.” Id. at *5. Like in Salazar, claim 1 of the ‘228 patent requires that “the
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`people view” include “all recited” elements. Id. Ex. 1001, 35:63-36:11. “[T]he
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`people view” refers to the people view that is displayed “responsive to” the second
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`input. Id., 35: 61-63.
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`Moreover, it was both appropriate and necessary for Patent Owner to
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`reference consistent disclosures in the specification, including Figure 32, when
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`addressing this construction. Phillips v. AWH Corp. requires the Board to consider
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`the disclosed embodiments (i.e., Figure 32) when construing the claims. Phillips,
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`415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc) (holding the claims must be
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`construed in light of the specification).
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`The Board’s misapprehension of Patent Owner’s arguments warrants
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`rehearing. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1323-24 (Fed. Cir. 2015)
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`(reversing unpatentability finding when the Board “misconstrued” patent owner’s
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`“claim construction argument”). The newly issued Salazar decision also reinforces
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`Patent Owner’s construction and warrants reconsideration. See e.g., Fisher & Paykel
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`Healthcare v. ResMed Pty Ltd., IPR2017-00061, Paper 37 at 3 (July 5, 2018)
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`(granting rehearing in light of intervening Supreme Court SAS precedent). When the
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`correct construction is applied, Okamura does not teach limitations [1n] and [1p].
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`Infra, §IV.C.3. Patent Owner, therefore, respectfully requests that the Board grant
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`rehearing and adopt Patent Owner’s construction of the “people view” limitations.
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`2.
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`The Board Similarly Misapprehended Patent Owner’s
`Arguments When It Construed Claim 5
`The Board overlooked the same argument and evidence when it disagreed that
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`claim 5 requires simultaneously including a “first indication feature” and a “second
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`indication feature” in the same “map view.” POR, 32; POSR, 8; FWD, 108. Because
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`the Board applied the “same analysis” of limitations [1n], [1p] to claim 5, the Board
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`should rehear Patent Owner’s claim construction argument as to claim 5 for the same
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`reasons discussed immediately above. Id.; supra, § IV.C.1. When the correct
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`construction is applied, Okamura does not teach claim 5. Infra, §IV.C.4.
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`3.
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`The Board Overlooked Evidence and Argument by Finding
`Okamura Meets Limitations [1n] and [1p]
`To the extent the Board rehears the construction issues, it should also rehear
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`the finding that Okamura meets limitations [1n] and [1p]; see also, infra, § IV.E
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`(addressing the Board’s alternative reliance on Okamura-Gilley for limitations [1n]
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`and [1p]). For “people view” limitations [1n] and [1p], Petitioner relied only on
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`Okamura under Ground 1. Pet. 55, 60-61. Patent Owner established that Okamura
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`fails to disclose that its face cluster display area 431 (alleged people view) includes
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`both a “first name” and second name” in the same view, as required by the express
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`language of claim 1. POR 63-64; POSR, 20. Neither Petitioner nor the Board
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`disputed this deficiency. Instead, the Board disputed Patent Owner’s construction.
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`FWD, 64.
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`The Board should grant rehearing with respect to its finding that Okamura
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`discloses limitations [1n] and [1p].
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`4.
`
`The Board Overlooked Evidence and Argument in Finding
`Claim 5 Unpatentable
`As discussed above, claim 5, when properly construed, requires a “map view”
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`that includes a “first indication feature” and a “second indication feature” in the same
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`view. Supra, § IV.C.2.
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`Petitioner relied exclusively on Okamura’s cluster map display area 414 as
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`the claimed “map view” and Okamura’s information/number of contents 418 as the
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`first/second indication features. POR, 66-68; POSR, 22; Pet., 67-68. However,
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`Patent Owner established Okamura requires a mouse hover to display an indication
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`feature and that “doing so displays a number of contents indication for one location
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`thumbnail image only.” POR, 66-68; POSR, 22. Neither the Board nor the Petitioner
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`deny that Okamura operates in this manner. Instead, the Board denied that claim 5
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`requires simultaneously including a first/second “indication feature[s]” in the same
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`view. FWD, 108. To the extent the Board rehears its construction requiring the
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`simultaneous display of the claimed elements in the views, it should also rehear its
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`finding that Okamura meets this limitation. Supra, § IV.C.2.
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`Alternatively, over Patent Owner’s objection, the Board adopted a new
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`obviousness theory Petitioner raised for the first time in reply. POSR, 2, 22; FWD,
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`109 (citing EX1038, ¶73); supra, §IV.A. In particular, the Board relied on Dr.
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`Bederson’s new Reply opinion that Okamura “renders obvious claim 5” under an
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`interpretation requiring “simultaneous” inclusion of first/second indication features.
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`EX1038, ¶73. The Board did not address Patent Owner’s objection or Dr. Bederson’s
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`relevant testimony. Supra, §IV.A; POSR, 2, 22 (citing Ex. 2046, 177:13-21).
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`The Board should grant rehearing to address these arguments.
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`D. The Board Overlooked Evidence and Argument in Adopting
`Petitioner’s Proposed Okamura – Flora Combination
`Despite acknowledging Okamura, at the very least, expresses a “preference”
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`for presenting multiple “cluster maps” rather than a single map, as Flora discloses,
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`the Board nevertheless found that a POSITA would have combined Okamura and
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`Flora. FWD, 99, 102-103. The Decision overlooked the following arguments:
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`1. Patent Owner argued, citing Trivascular, Inc. v. Samuels, 812 F.3d 1056,
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`1068 (Fed. Cir. 2016), that Petitioner’s proposed combination would
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`eliminate Okamura’s “primary objective” of presenting multiple cluster
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`maps having differing scales to avoid the scaling issues associated with
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`presenting only a single map. POR, 10, 44-45, 48-49; POSR 11-12;
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`EX1004, Fig. 18, ¶¶0019, 0093, 0215, 0219; EX2038, ¶¶113-116.
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`2. Patent Owner argued that Okamura’s stated preference is relevant to
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`whether a person of skill in the art would combine Okamura and Flora,
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`even if it does not teach away, citing Polaris Indus., Inc. v. Arctic Cat,
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`Inc., 882 F.3d 1056, 1070 (Fed. Cir. 2018). POR, 47-49; POSR, 13-14.
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`3. Petitioner’s Okamura Figs. 27A-B argument was not in the Petition and
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`was presented for the first time in the Reply. POSR, 14-15; Pet., 22-27.
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`The Board should grant rehearing to address these arguments.
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`E.
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`The Board Committed Legal Error by Improperly Shifting the
`Burden to Patent Owner to Prove Patentability
`The Decision noted that Patent Owner argued that Petitioner does not provide
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`a rationale for combining Okamura, Flora, Wagner and Gilley, but faults Patent
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`Owner for not arguing a skilled artisan “that the ordinary artisan in this field of
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`endeavor does not possess the knowledge and skills rendering him incapable of
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`combining the prior art references.” FWD, 100; POR, 76. This is legal error.
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`To require Patent Owner to demonstrate that a skilled artisan is incapable of
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`combining the prior art improperly shifted the burden to Patent Owner and is
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`reversible error. In other words, Petitioner failed to establish the skilled artisan’s
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`capabilities and, rather than finding Petitioner failed to meet its burden, the Decision
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`improperly rested on Patent Owner’s alleged failure to establish that the skilled
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`artisan was not incapable. However, “[in] an inter partes review, the burden of
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`U.S. Patent No. 10,621,228
`Patent Owner’s Patent Owner’s Request for Rehearing
`IPR2021-01413
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`persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the
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`evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see
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`also In re Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1377 (Fed. Cir.
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`2016) (same).
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`The Board also overlooked Patent Owner’s argument that Petitioner failed to
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`establish “a skilled artisan would have been motivated” to combine Okamura, Flora
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`and Gilley to meet limitations [1n] and [1p]. FWD, 64; POR, 73-74; POSR, 20.
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`Because the Board improperly shifted the burden to Patent Owner to prove
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`patentability and overlooked Patent Owner’s argument, rehearing should be granted.
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`V. Conclusion
`For the reasons outlined herein, Patent Owner respectfully requests rehearing
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`and a finding that claims 1-7 of the ’228 patent are not unpatentable.
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`Respectfully submitted,
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`Dated: April 13, 2023
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`By: /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Aven