Case 6:21-cv-00411-ADA Document 52 Filed 03/28/22 Page 1 of 36
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`MEMORYWEB, LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD. (A
`KOREAN COMPANY) and SAMSUNG
`ELECTRONICS AMERICA, INC.,
`
`Defendants.
`
`Civil Action No. 21-cv-411
`
`Jury Trial Demanded
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`DEFENDANTS' OPENING CLAIM CONSTRUCTION BRIEF
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`ACTIVE 63525053v13
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION
`
`THE PATENTS-IN-SUIT
`
`III.
`
`CONSTRUCTION OF THE DISPUTED TERMS
`
`A.
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`G.
`
`H.
`
`I.
`
`J.
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`Term 1: "geotag" ('658 patent, claims 1, 3, 4)
`Term 2: "thumbnail image" ('658 patent, claims 1, 2, 5-7, 10, 13-15; '228
`patent, claims 1-3, 5, 6, 12, 18, 19; '823 patent, claims 5-7, 31)
`Term 3: "the [first / second] location being associated with the geographic
`coordinates of a [first / second] geotag" ('658 patent, claim 1)
`Term Group 4: "[first / second] set of digital photographs and videos
`including all of the digital photographs and videos associated with the [first /
`second] geotag" ('658 patent, claim 1) // "[third / fourth] set of digital
`photographs and videos including digital photographs and videos associated
`with the [first / second] person" ('658 patent, claim 5) // "the [first / second]
`set of digital files including digital files associated with the [first / second]
`location" ('228 patent, claim 1)
`Term 5: "partially overlapping the [first / second] location selectable
`thumbnail image" ('658 patent, claim 1)
`Term 6: "scaled replica" ('658 patent, claims 1, 3, 4, 7, 10, 14, 15)
`Term 7: "[first / second]-person-location selectable element" ('658 patent,
`claims 8, 9, 11, 12)
`Term 8: "digital file" ('228 patent, claims 1, 2, 4, 5, 7, 12-16, 18, 19; '823
`patent, claims 1, 5, 8, 10, 11, 15, 18, 22, 23, 25, 27, 29-34)
`Term 9: "the first digital file having a first size in the first person view and a
`second size in the first detail view, wherein the second size is greater than the
`first size" ('823 patent, claims 1, 29)
`Term 10: "profile image" ('823 patent, claims 5, 31)
`
`IV.
`
`CONCLUSION
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`Page
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`1
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`1
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`4
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`4
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`7
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`11
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`13
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`16
`22
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`24
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`26
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`27
`28
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`30
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`TABLE OF AUTHORITIES
`
`Cases
`
`Acacia Media Techs. Corp. v. New Destiny Internet Grp.,
`405 F. Supp. 2d 1127 (N.D. Cal. Dec. 7, 2005)
`
`AFG Indus., Inc. v. Cardinal IG Co.,
`239 F.3d 1239 (Fed. Cir. 2001)
`
`Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
`811 F.3d 1334 (Fed. Cir. 2016)
`
`Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361 (Fed. Cir. 2007)
`
`Ball Metal Beverage Container Corp. v. Crown Packaging Tech., Inc.,
`838 F. App'x 538 (Fed. Cir. 2020)
`
`ContentGuard Holdings, Inc. v. Amazon.com, Inc.,
`2015 WL 8073722 (E.D. Tex. Dec. 4, 2015)
`
`Datamize, LLC v. Plumtree Software, Inc.,
`417 F.3d 1342 (Fed. Cir. 2005)
`
`Digital Retail Apps, Inc. v. H-E-B, LP,
`2020 WL 376664 (W.D. Tex. Jan. 23, 2020)
`
`Dippin 'Dots, Inc. v. Mosey,
`476 F.3d 1337 (Fed. Cir. 2007)
`
`Dow Chem. Co. v. Nova Chems. Corp. (Can.),
`803 F.3d 620 (Fed. Cir. 2015)
`
`Geneva Pharms., Inc. v. GlaxoSmithKline PLC,
`349 F.3d 1373 (Fed. Cir. 2003)
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008)
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004)
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)
`
`Iridescent Networks, Inc. v. AT&T Mobility, LLC,
`933 F.3d 1345 (Fed. Cir. 2019)
`
`Joy Techs., Inc. v. Flakt, Inc.,
`6 F.3d 770 (Fed. Cir. 1993)
`
`KEYnetik, Inc. v. Samsung Elecs. Co.,
`837 F. App'x 786 (Fed. Cir. 2020)
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`ACTIVE 63525053v13
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`Page(s)
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`24
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`15
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`29
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`18
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`28
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`27
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`12
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`6, 9, 23
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`15
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`28
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`11
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`4, 26
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`6, 9, 23
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`12
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`24
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`25
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`13, 16
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`
`Liberty Ammunition, Inc. v. United States,
`835 F.3d 1388 (Fed. Cir. 2016)
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)
`
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)
`
`Metabolite Lab ys, Inc. v. Lab y Corp. of Am. Holdings,
`370 F.3d 1354 (Fed. Cir. 2004)
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014)
`
`Nazomi Commc'ns, Inc. v. ARM Holdings, PLC,
`403 F.3d 1364 (Fed. Cir. 2005)
`
`02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)
`
`Pac. Coast Bldg. Prods., Inc. v. CertainTeed Gypsum, Inc.,
`816 F. App'x 454 (Fed. Cir. 2020)
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)
`
`Saso Golf Inc. v. Nike, Inc.,
`843 F. App'x 291 (Fed. Cir. 2021)
`
`Single Touch Interactive, Inc. v. Zoove Corp.,
`2013 WL 3802805 (N.D. Cal. July 17, 2013)
`
`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015)
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)
`
`Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999)
`
`Wi-Lan Inc. v. HTC Corp.,
`2013 U.S. Dist. LEXIS 52117 (E.D. Tex. Apr. 11, 2013)
`
`Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
`442 F.3d 1322 (Fed. Cir. 2006)
`
`Statutes
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`35 U.S.C. § 112
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`15
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`25
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`30
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`5
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`11, 26, 30
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`15
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`1
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`28
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`20, 23
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`28
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`27
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`28
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`7, 29
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`15, 17
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`4, 7
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`17
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`11
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`I.
`
`INTRODUCTION
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`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively,
`
`"Samsung") respectfully submit this Opening Claim Construction Brief. MemoryWeb, LLC
`
`("MemoryWeb") declines to propose constructions for the terms in dispute, and instead argues that
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`each term should be afforded its "plain and ordinary meaning." But if MemoryWeb really believed
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`what it is arguing, it would not have filed suit, because Samsung's accused Gallery Application clearly
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`does not meet the "plain and ordinary meaning" of several limitations. MemoryWeb therefore must
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`be applying something other than the "plain and ordinary meaning" of the disputed terms to arrive at
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`its infringement theories, or at the very least, the parties dispute what the "plain and ordinary meanings"
`
`of these terms actually are. Since reliance on the supposed "ordinary" meaning of each of these terms
`
`"does not resolve the parties' dispute," construction of these terms is necessary. 02 Micro Int'l Ltd. v.
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`Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). For the reasons set forth herein,
`
`Samsung's constructions should be adopted.
`
`H.
`
`THE PATENTS-IN-SUIT1
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`The patents-in-suit are each titled "Method and Apparatus for Managing Digital Files" and
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`share a common specification. The patents-in-suit are directed to "managing and using digital files
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`such as digital photographs." Ex. 1 at 1:18-20. The patents-in-suit describe traditional, pre-digital era
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`methods of organizing photos, such as "displaying printed copies in frames and albums," "stor[ing]
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`them in a container," and "inscrib[ing] ... significant details (people, location, event etc.)" on the back
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`of them. Id. at 1:23-29. The "evolution of digital files" brought on "explosive growth" in digital photo
`
`1 "Patents-in-suit" refers to U.S. Patent Nos. 10,423,658 ("the '658 patent") (Ex. 1); 10,621,228 ("the
`'228 patent") (Ex. 2); and 11,163,823 ("the '823 patent") (Ex. 3). For convenience, all citations to the
`common specification of the patents-in-suit will refer to the '658 patent, except where noted. Unless
`otherwise stated, all exhibits to this brief are attached to the Declaration of Allan Kassenoff, submitted
`concurrently herewith.
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`taking and "stor[ing] large amounts of photos in various `containers' of the modem age," i.e., various
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`social networks and "digital files sites." Id. at 1:35-48. The supposed problem with those prior art
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`sites was that they didn't "allow much organization of digital tags, dynamic viewing of digital files,
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`and the ability to export the digital files with new digital tags." Id. at 1:49-51. The specification
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`identifies a purported need for a "medium that allows people to organize, view, preserve and share
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`these files with all the memory details captured, connected and vivified via an interactive interface,"
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`id. at 1:56-60—a need that was ostensibly met by the alleged inventions of the patents-in-suit.
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`In particular, the specification discloses methods for "associating digital tags with digital files,"
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`including storing digital files and associated tags, searching the digital files according to the associated
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`tags, and displaying the search results. See generally id. at 1:65-2:50. The "organizational
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`functionality" of the alleged invention is described as, "[s]imilar to the concept of writing certain
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`information `on the back of a photo,'" using tags to "arrange large amounts of digital files" so as to
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`"characterize and document" them. Id. at 5:36-41. The specification also describes the "multiple
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`views from which a user can display his or her digital media files and their tagged attributes," allowing
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`a user to "select individual files, groups of files meeting specific criteria, or all files in their account
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`from which to create views." Id. at 5:54-59. The photos to be displayed in each view are selected
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`"based on either tag information already associated with the digital file upon import or the tags assigned
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`to the digital files by the user within the aforementioned organizational functionality," id. at 5:60-64—
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`just like a person, prior to the invention and/or widespread use of digital photography, might select
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`photos based on information written on the back of them, group them according to such information,
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`and/or display them in a frame, in a photo album, or on a map.
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`The claims of the patents-in-suit are directed to nothing more than simple permutations of the
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`concepts of selection, organization, and display of digital media (i.e., pictures and videos) described
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`above. For example, claim 1 of the '658 patent is directed to a "computer-implemented method of
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`displaying" photos and videos using geographic coordinates. Id. at 35:13-19. A user clicks on a
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`"location selectable element" causing a "map view" to be displayed, which includes an interactive map
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`and thumbnails at various locations on the map, representing a set of photographs and videos taken at
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`that location. Id. at 35:20-34. A "count value image partially overlapping the" thumbnail corresponds
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`to "the number of digital photographs and videos" in that set. Id. at 35:35-40. When the thumbnail is
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`selected, a "location view" is displayed including the name of an associated location and "a scaled
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`replica of each of the digital photographs and videos" in the identified set. Id. at 35:54-63. Claim 1
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`requires two such thumbnails to represent two such sets of photographs and videos. Id. at 35:41-53,
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`35:64-36:7.
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`According to claim 1 of the '228 patent, a user causes a "map view" to be displayed on the
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`screen including two "thumbnail image[s]" on an interactive map. Ex. 2 at 35:33-39. Selecting a
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`thumbnail causes a "location view" to be displayed including an associated location name and a
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`"representation of at least of a portion of a first digital file" in a set of digital files associated with the
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`referenced location. Id. at 35:40-60. "Subsequent to" that display, the user causes a "people view" to
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`be displayed, which includes "thumbnail image[s]" representing the faces of at least two people,
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`associated with sets of digital photographs and videos, and names of those people. Id. at 35:61-36:11.
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`The claims of the '823 patent are directed to a different method, and a system comprising a
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`memory and processor configured to carry out the method. Within a "search-filter view," a user causes
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`the "people view" to be displayed including images associated with at least two people. Ex. 3 at 35:2-
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`9. Selecting a person causes a "person view" to be displayed, including a "digital file" associated with
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`that person. Id. at 35:10-14, 35:26-30. Selecting the displayed digital file causes a "detail view" to
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`be displayed, which includes that digital file, as well as information associated with the digital file, and
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`a "map image" associated with the digital file. Id. at 35:15-21,35:31-38. The first digital file's "size"
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`is "greater" in the first detail view than it is in the first person view. Id. at 35:22-25. Also, a user
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`causes a "locations view" to be displayed, including names associated with at two locations. Id. at
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`35:39-43. Selecting a location causes a set of digital files associated with that location to be displayed.
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`Id. at 35:44-54.
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`III. CONSTRUCTION OF THE DISPUTED TERMS
`
`A.
`
`Term 1: "geotag" ('658 patent, claims 1, 3, 4)
`
`Samsung's Proposed Construction
`
`MemoryWeb's Proposed Construction
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`"digital data assigned to a file describing the
`latitude and longitude of the location where the
`photograph or video was taken"
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`Plain and ordinary meaning; or,
`alternative: "data associated with
`describing geographic information"
`
`in
`a
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`the
`file
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`The term "geotag" is a technical term, not used in everyday parlance; thus, it should be
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`construed to ensure it is understandable to a lay jury. See Wi-Lan Inc. v. HTC Corp., 2013 U.S. Dist.
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`LEXIS 52117, at *35-36 (E.D. Tex. Apr. 11, 2013) ("[A] construction of . . . technical term would be
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`helpful to the finder of fact."). Although the term "geotag" is never used in the specification,
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`Samsung's construction is the plain and ordinary meaning of "geotag," as understood by a person of
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`ordinary skill in the art ("POSA"), and is consistent with the intrinsic evidence. The patent defines the
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`term "tag" as "any type of digital data that can be assigned to a file to describe some aspect of that file
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`through a tagging process." Ex. 1 at 5:15-18. Thus, the patentees acted as their own lexicographer in
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`defining the term "tag." See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,1381
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`(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition"
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`by "clearly express[ing] that intent in the written description."). "Geotag" is clearly used to describe a
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`specific type of "tag," and Samsung's construction thus incorporates the specification's definition of
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`"tag." A POSA would understand the prefix "geo-" to limit the "aspect" of the file that the "geotag"
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`describes—in this case, the latitude and longitude of the location where the photograph or video was
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`taken. Declaration of Henry H. Houh, Ph.D. ("Houh Decl.") ¶¶ 40-42. MemoryWeb's position—that
`
`"geotag" refers to any sort of data "describing geographic information"—is broader than the plain and
`
`ordinary meaning of that term, and is unsupported by the intrinsic record.
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`Samsung's construction is supported by the claim language of the '658 patent. The patent
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`claims a method of displaying digital photographs and videos, each of which is "associated with a
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`geotag indicative of geographic coordinates where the respective digital photograph or video was
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`taken." Ex. 1 at 35:13-18.2 The claimed first and second locations must be "associated with the
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`geographic coordinates of a [first or second] geotag," and the sets of photos and videos represented by
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`the thumbnails on the map must also be "associated with the [first or second] geotag." Id. at 35:29-
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`34, 35:41-47. The "map image[s]" claimed in dependent claims 3 and 4, which are displayed when
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`the "scaled replicas" of photographs are selected in the "location view," also must "indicat[e] the
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`geographic coordinates of the [first or second] geotag." Id. at 36:15-27.
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`Like the term "geotag" itself, the phrase "geographic coordinates" is never used in the
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`specification. However, the term "GPS coordinates" is used. Id. at 5:29-32 ("If any meta-tag
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`information is embedded within the media (e.g., date taken and GPS coordinates)..."), 31:56-61
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`("However, if the GPS coordinates were missing from a Digital File when it was imported into the
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`Application ..."). A POSA would understand the claimed "geographic coordinates" to refer to latitude
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`and longitude, such as that used by GPS systems. For example, among other reasons, the specification
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`identifies EXIF as a preferred format for image tagging. Ex. 1 at 5:18-19. The EXIF standard provides
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`for the use of latitude and longitude coordinates, and the specification describes the disclosed
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`2 While the parties agree that the lengthy preamble of claim 1 is not limiting, it may be used to interpret
`the meaning of "geotag" within the body of the claim. See Metabolite Lab'ys, Inc. v. Lab'y Corp. of
`Am. Holdings, 370 F.3d 1354, 1362 (Fed. Cir. 2004) ("A preamble may provide context for claim
`construction.").
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`invention's use of the EXIF-specified latitude and longitude data. Id. at 11:8-12,11:32-33 (describing
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`"Global Positioning System (GPS) information that is also known as geocoding"), 15:54-16:15 ("The
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`primary EXIF tags that are read and used by MemoryWeb to generate Application Dot Tags are: ...
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`GPS Latitude (0330), GPS Latitude Ref (0331), GPS Longitude (0332), and GPS Longitude Ref
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`(0333)"); see also id. at 31:50-55, FIG. 22. Thus, a POSA would understand the term "geotag," as it
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`is used in the specification, to refer to the digital data assigned to a file describing the latitude and
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`longitude of the location where the photograph or video was taken, an understanding that is further
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`supported by relevant extrinsic evidence. See Exs. 5 and 6; Houh Decl. ¶¶ 43-45.
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`In contrast, the patent claims use different, broader terminology to describe other geographic
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`information, such as location names, or digital data that is not "assigned to a file." For example, in
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`claim 1 of the related '228 patent, the claimed "map view" comprises "a [first / second] location
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`selectable thumbnail image at a [first / second] location on the interactive map," without any references
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`to "geotags" or even "geographic coordinates." Ex. 2 at 35:36-39. Similarly, while in the '658 patent,
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`a "location view" includes a "location name associated with the [first / second] geotag," Ex. 1 at 35:54-
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`36:1, the "location view" in the '228 patent and the "locations view" in the '823 patent only require
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`the location name to be "associated with a [first / second] location." Ex. 2 at 35:40-60; Ex. 3 at 35:39-
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`43. "When an applicant uses different terms in a claim it is permissible to infer that he intended his
`
`choice of different terms to reflect a differentiation in the meaning of those terms." Innova/Pure Water,
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`Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,1119 (Fed. Cir. 2004); Digital Retail Apps,
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`Inc. v. H-E-B, LP, 2020 WL 376664, at *10 (W.D. Tex. Jan. 23, 2020) ("[B]ecause the applicant used
`
`both `wirelessly transmitting' and `capturing/scanning' within the patents in suit distinctly, the Court
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`concludes wirelessly transmitting does not encompass optical scanning." (citing Innova/Pure Water)).
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`In view of the fact that the patentees used different language to claim "locations" and "geotags,"
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`MemoryWeb's position—that "geotags" can include mere "location names"—cannot be correct.
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`In fact, the specification states that "if the GPS coordinates were missing from a Digital File
`
`when it was imported into the Application (See FIG. 50 (indicators 1418 and 1419)), the user can add
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`the Location (which the application will automatically add the associated GPS tags) to the Digital File
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`using the Application Digital Tag Organizing System (see FIG. 28)." Ex. 1 at 31:56-61. Thus, the
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`Location is not the geotag itself as the system automatically adds the GPS tags based on the location
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`name. See Houh Decl. ¶¶ 47-48.
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`Thus, a POSA would understand a "geotag" to describe something more specific than mere
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`"geographic information" as MemoryWeb contends. Instead, a POSA would understand "geotag" to
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`mean "digital data assigned to a file describing the latitude and longitude of the location where the
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`photograph or video was taken." See also Houh Decl. ¶¶ 39-48.
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`B.
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`Term 2: "thumbnail image" ('658 patent, claims 1, 2, 5-7, 10, 13-15; '228
`patent, claims 1-3, 5, 6, 12, 18, 19; '823 patent, claims 5-7, 31)
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`Samsung's Proposed Construction
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`MemoryWeb's Proposed Construction
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`"reduced-sized duplicate of an image"
`
`in
`Plain and ordinary meaning; or,
`the
`alternative: "reduced-sized representation of at
`least a portion of an image"
`
`"Thumbnail image" is another technical term that warrants construction to clarify its scope and
`
`meaning for a lay jury. See, e.g., Wi-Lan, 2013 U.S. Dist. LEXIS 52117, at *35-36. For the reasons
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`discussed below, the Court should construe "thumbnail image" to mean "reduced-sized duplicate of
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`an image."
`
`The claim language does not shed any light on the construction of "thumbnail image," but the
`
`specification does. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
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`(specification is "always highly relevant," usually "dispositive," and the "single best guide to the
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`meaning of a disputed term"). The specification describes Figure 6 as a "people view" or "people
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`thumbnail view." Ex. 1 at 3:5-6,6:20-22. The "people view" is described as "show[ing] thumbnail
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`photos of all the people in the system that can be clicked in for a people profile view," while the "people
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`profile view, as shown in FIG. 7, shows a profile picture of an individual," in addition to profile
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`information about an individual. Id. at 6:20-26. As can be seen, the first "thumbnail photo" depicted
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`in Figure 6 is a reduced-sized duplicate of the "profile picture" in Figure 7:
`
`r -
`
`Crum Firestone
`
`Tim Dog
`
`Be Sherman
`
`Joe Soh=
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`Mary Vapanta
`
`Clint Dewitt
`
`Charlotte Killen
`
`•
`Chris Jeep Peter Lorigllotn
`
`Tim Dog
`
`Steve Fire
`
`I
`
`OA-
`
`Suzanne lucky
`
`Steve Fwah
`
`Ben Sher man
`
`Joe Senn,
`
`nary V,Jginia
`
`Clint Dew at
`
`Charlotte Kilian
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`kek
`
`Ex. 1, FIG. 6 (annotated)
`
`MN= MIMI
`
`I Clinton Dewitt Firestone IV
`
`July 12, 1896
`Birth:
`April 29, 1971
`Death:
`Parents' Clinton Dewitt Firestone III and Viola Miller
`Comments: He was a WWII U.S. Air force pilot and POW in WWII and veteran
`I honorably discharged in December of 1947. He worked for 44 years for the
`I Firestone Tire and Rubber Company in retail, wholesale and original equipment
`sales, marketing and management. He was born In Akron, OH and is burled In
`Columbiana, OH.
`
`Edit bio
`
`L
`
`Locations
`
`Timeline
`
`Family Tree
`
`Recipes
`
`MOAN ki
`
`SAVE '''
`......
`
`Ex. 1, FIG. 7 (annotated)
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`The specification also discloses how thumbnails are generated and stored from an original file,
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`further supporting Samsung's construction of "thumbnail image" as a reduced-sized duplicate of an
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`image:
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`During the Read & Integrate Through Each EXIF Tag item (0201) the process will
`also upload a the [sic] original Digital File in MemoryWeb (0211), the process will
`also store a copy of the original file within the User Relationship Table (0300) and
`create five duplicate copies (0203) of different resolution sizes as follows: XL
`Duplicate File (0302, Large Duplicate File (0303), Medium Duplicate File (0304),
`Small Duplicate File (0304), and a Thumbnail Duplicate File (0306). Each
`duplicate file is used in different parts of the application depending upon the photo
`size needed for such areas within the Application such as Application Views,
`Application Dot-Tags, and Application Digital Tag Organizer System.
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`Id. at 15:9-21. Samsung's construction is further supported by relevant extrinsic evidence, including
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`evidence proffered by MemoryWeb. See, e.g., Exs. 7 and 8;3 Houh Decl. ¶¶ 53-54.
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`MemoryWeb's alternative construction, "reduced-sized representation of at least a portion of
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`an image," is inconsistent with the plain and ordinary meaning of "thumbnail image" as understood by
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`a POSA, as well as the intrinsic evidence. First, MemoryWeb's construction of "thumbnail image"
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`would encompass any manner of "representation" of an image. For example, the software could
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`"represent" an image by something other than an image, such as an icon, text, or a hyperlink to that
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`image. This is untenable, because a "thumbnail image" must be an image. See Houh Decl. ¶ 57.
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`Moreover, a POSA would not consider a "thumbnail image" to represent only a "portion" of an original
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`image; indeed, such an interpretation would contradict the intrinsic record. When the patentee wished
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`to claim a "representation of at least a portion" of an image, it used that specific language. See Ex. 2
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`at 35:44-46 (claiming "a representation of at least a portion of one digital file in a first set of digital
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`files"), 35:55-56 (claiming "a representation of at least a portion of one digital file in a second set of
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`digital files"). Again, the different claim language used here is presumed to be intentional.
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`Innova/Pure Water, 381 F.3d at 1119; Digital Retail Apps, 2020 WL 376664, at *10. Moreover, the
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`fact that "thumbnail" does not refer to merely a "portion" of an image is reflected in, e.g., Figure 32 of
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`3 Indeed, one technical publication offered by MemoryWeb makes clear that "[t]he actual size of the
`thumbnail is determined from the aspect ratio of the original image," such that "[t]humbnail images
`maintain the aspect ratio of the original image." Ex. 8 at MW Samsung_ 002971; Houh Decl. ¶ 54.
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`the patents-in-suit:
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`Multiple People Application View
`Uploads Collections
`Locations Recipe Family Tree
`
`Pv pi
`
`1401
`
`Sort By:
`
`Newest to Oldest
`
`---
`
`1402
`
`\.4r
`
`1, 50
`
`14111
`
`Fast C.,, r1f( h
`
`fiftr
`
`r
`
`Jon Smith
`
`Jane Smith (Doe)
`
`Jackson Smith
`
`JC Jon Smith
`
`1404
`
`Page:
`
`1403
`
`1401
`
`Items Per Page:
`
`20
`
`CIE]
`
`1430
`
`Single People Profile Application View
`
`Uploads Collections
`
`P o p I
`
`Locations Recipe Family Tree
`
`Fast Search
`
`e View all People 1452
`
`1431—JC Jon Smith
`
`1453
`1454
`
`/
`
`1443
`
`4/, 1449
`
`and IC)iarie smith too0
`
`MUM
`Edit
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`1447
`
`1433—Nicknames:
`1/ I/ :P304
`1434 —Born:
`1435—Parents:
`ion smith
`1436—Siblings:
`( 4)=.
`1437 —Children:
`1438—geogra phy: IC was named after his great, great grandfather from German who's real name was Johan Christoph.
`
`I ,1439
`
`1452
`
`/
`
`1443
`
`/
`
`1444
`
`/
`
`1445
`
`1441 / 1442
`
`I
`Change Profile Photo
`
`\
`
`1440
`
`Page: Ell
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`Collections 2 Facial Recognitions
`
`.
`.
`. •i11,
`-
`
`3 Locations
`
`7 Family Relationships
`
`1 Reope
`
`1446
`
`i
`.,.r
`1 ...•
`f
`
`I- 1
`
`IV
`
`Items Per Page:
`
`20
`
`50
`
`100
`
`Ex. 1, FIG. 32 (annotated).
`
`There are nine total images displayed in the two different "People Application Views" depicted
`
`in Figure 32. Ex. 1 at 22:43-44. The top portion of Figure 32, the "People Application View," is
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`described as displaying "all the people that were created within the user's Application." Id. at 22:44-
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`46. "For each person, a thumbnail of their face along with their name is depicted." Id. at 22:52-53.
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`The bottom portion of Figure 32 illustrates "a single people profile (1430)." Id. at 22:63-64. "The
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`Person Profile Photo of that individual is illustrated (1439)." Id. at 23:1-2. "In this example, the
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`system illustrates that there are four photos (1452) associated with that person and will also illustrate
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`thumbnails of each of the four photos (1446). These thumbnails can be selected." Id. at 23:6-10. Of
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`the nine images depicted in Figure 32, only one of them is not described as a "thumbnail" (item 1439);
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`it is also the only one of those nine images that is clearly a "portion" of an image in the depicted system,
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`a "thumbnail" of which is depicted twice in the two views, as shown by the annotations above. This
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`demonstrates that the patentee understood the difference between a "thumbnail image," which is a
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`reduced-sized duplicate of an original image, and other types of images, which are not duplicates and,
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`thus, not "thumbnail images." See Houh Decl. ¶ 59. A POSA, in light of the disclosures in the patents-
`
`in-suit, would understand the ordinary meaning of "thumbnail image" not to encompass
`
`"representations" of "portions" of images. Rather, a POSA would understand that the plain and
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`ordinary meaning of "thumbnail image" is "reduced-sized duplicate of an image."
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`Accordingly, the Court should adopt Samsung's construction so that a lay jury may understand
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`the scope and meaning of the term "thumbnail image."
`
`C.
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`Term 3: "the [first / second] location being associated with the geographic
`coordinates of a [first / second] geotag" ('658 patent, claim 1)
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`Samsung's Proposed Construction
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`MemoryWeb's Proposed Construction
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`Indefinite
`
`Plain and ordinary meaning
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`Claims are indefinite under 35 U.S.C. § 112 ¶ 2 when they "fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments,
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`Inc., 572 U.S. 898, 901 (2014). While "absolute precision is unattainable," the definiteness
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`requirement "mandates clarity." Id. at 910. "[A] patent must be precise enough to afford clear notice
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`of what is claimed, thereby apprising the public of what is still open to them." Id. at 909 (internal
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`quotation and alteration marks omitted); see also Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349
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`F.3d 1373, 1384 (Fed. Cir. 2003) ("A claim is indefinite if its legal scope is not clear enough that a
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`person of ordinary skill in the art could determine whether a particular [product] infringes or not.").
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`Similarly to the law relating to "terms of degree," when "faced with a purely subjective phrase
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`. . . a court must determine whether the patent's specification supplies some standard for measuring the
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`scope of the phrase." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,1351 (Fed. Cir. 2005).
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`"The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a
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`particular individual purportedly practicing the invention." Id. at 1350. But merely providing "some"
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`standard is not enough. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,1370-71 (Fed. Cir. 2014).
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`Rather, "[t]he claims, when read in light of the specification and the prosecution history, must provide
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`objective boundaries for those of skill in the art." Id. "[A] term of degree fails to provide sufficient
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`notice of its scope if it depends `on the unpredictable vagaries of any one person's opinion.' Id.
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`(quoting Datamize, 417 F.3d at 1350).
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`Here, the '658 patent requires a map view including "a first location selectable thumbnail
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`image at a first location on the in