IPR2021-01413
`U.S. Patent 10,621,228
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`UNIFIED PATENTS, LLC
`Petitioner
`v.
`MEMORYWEB, LLC
`Patent Owner
`IPR2021-01413
`U.S. PATENT 10,621,228
`
`
`REPLY DECLARATION OF BENJAMIN B. BEDERSON, PH.D.
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 1 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................. 1
`I.
`II. UNDERSTANDING OF PATENT LAW ......................................................... 2
`III. THE ’228 PATENT CLAIMS ........................................................................... 2
`IV. CLAIM CONSTRUCTION ............................................................................... 6
`A.
`Claim 1: limitations [1b], [1d], and [1e] (“responsive to a first input,
`causing a map view to be displayed … the map view including: … a first
`/second] location selectable thumbnail image”) ................................................... 7
`B.
`Claim 1: limitations [1n] and [1p] ............................................................ 10
`C.
`Claim 1: limitations [1b], [1d], and Claim 3 (“the first indication feature is
`connected to the first location selectable thumbnail image”) ............................. 14
`D.
`Claim 5 ...................................................................................................... 16
`V. THE CHALLENGED CLAIMS ARE OBVIOUS UNDER MULTIPLE
`THEORIES ............................................................................................................. 18
`A.
`Limitation [1c]: “the map view including: (i) an interactive map” .......... 19
`B.
`Limitation [1d]: “[the map view including:] (ii) a first location selectable
`thumbnail image at a first location on the interactive map” ............................... 22
`C.
`Flora discloses or at least renders obvious “thumbnail image” under
`proposed construction in district court ................................................................ 42
`D.
`Limitations [1b], [1d], and [1e] ................................................................ 46
`E.
`Limitations [1g] and [1j] ........................................................................... 47
`1. Okamura and Flora (Ground 1) ................................................................ 47
`2. Okamura, Flora, and Wagner (Ground 2)/Okamura, Flora, Wagner, and
`Gilley (Ground 4) ............................................................................................. 51
`Limitations [1n] and [1p] .......................................................................... 51
`i. Okamura and Flora (Ground 1) ................................................................ 51
`i
`
`a.
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 2 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`i. Okamura, Flora, and Gilley (Ground 3)/Okamura, Flora, Wagner, and
`Gilley (Ground 4) ............................................................................................. 51
`F.
`Dependent Claims 2, 4, and 6-7 ................................................................ 52
`G.
`Claim 3 ...................................................................................................... 52
`H.
`Claim 5 ...................................................................................................... 53
`I.
`Okamura, Flora, Wagner, and Gilley (Ground 4) ..................................... 54
`VI. CONCLUSION ................................................................................................ 56
`
`
`
`
`
`ii
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 3 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`I, Benjamin B. Bederson, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`As I stated previously, I have been retained as an independent expert
`
`witness on behalf of Unified Patents, LLC (“Unified”) for the above-captioned
`
`Petition for Inter Partes Review (“IPR”) of U.S. Patent 10,621,228 (“the ’228
`
`Patent”). I am being compensated at my usual and customary rate for the time I spent
`
`in connection with this IPR. My compensation is not affected by the outcome of this
`
`IPR.
`
`2.
`
`I previously submitted a Declaration as Exhibit 1002, setting forth my
`
`background, credentials, and curriculum vitae, which provides further details
`
`(referred to herein as my “first Declaration”). I submit this second Declaration in
`
`response to the Declaration of Dr. Glenn Reinman, filed as Exhibit 2038.
`
`3.
`
`In addition to the materials I reviewed in preparing my first Declaration,
`
`in preparing this second Declaration, I have also reviewed: a) EX2038, Declaration
`
`of Dr. Glenn Reinman; b) EX1030, the redacted version of the Patent Owner’s
`
`Response filed as Paper 23, which I refer to as the POR in this declaration; and c)
`
`any other document or reference cited in the analysis of this declaration.
`
`4.
`
`In forming the opinions expressed in this Declaration, I relied upon my
`
`education and experience in the relevant field of art, and have considered the
`
`
`
`1
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 4 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`viewpoint of a person of ordinary skill in the art (“POSITA”), as of June 9, 2011. I
`
`have also considered: a) the documents listed above, b) any additional documents
`
`and references cited in the analysis below, c) the relevant legal standards, including
`
`the standard for obviousness, and d) my knowledge and experience based upon my
`
`work in this area as described below.
`
`II. UNDERSTANDING OF PATENT LAW
`
`5.
`
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law was provided to me by Petitioner’s attorneys and was set
`
`forth in my first Declaration.
`
`III. THE ’228 PATENT CLAIMS
`
`6.
`
`For ease of reference, I have reproduced claims 1-7, the “Challenged
`
`Claims” in this proceeding, along with the reference numerals used to refer to
`
`specific limitations in the Petition and POR.
`
`Claim 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;”
`
`
`
`2
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 5 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`[1d] “[the map view including:] (ii) a first location selectable thumbnail image at a
`
`first location on the interactive map; and”
`
`[1e] “[the map view including:] (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
`
`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,
`
`
`
`3
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 6 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`[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] “[the people view including:] (ii) a first name associated with the first person,
`
`the first name being displayed adjacent to the first person selectable thumbnail
`
`image;”
`
`[1o] “[the people view including:] (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] “[the people view including:] (iv) a second name associated with the second
`
`person, the second name being displayed adjacent to the second person selectable
`
`thumbnail image.”
`
`
`
`
`
`4
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 7 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`
`Claim 2
`
`“The method of claim 1, wherein the map view further includes a first indication
`
`feature associated with the first location selectable thumbnail image, the first
`
`indication feature being based on a number of digital files in the first set of digital
`
`files.”
`
`
`
`Claim 3
`
`“The method of claim 2, wherein the first indication feature is connected to the first
`
`location selectable thumbnail image.”
`
`
`
`Claim 4
`
`“The method of claim 2, wherein the first indication feature includes a first number
`
`indicative of the number of digital files in the first set of digital files.”
`
`
`
`Claim 5
`
`“The method of claim 2, wherein the map view further includes a second indication
`
`feature associated with the second location selectable thumbnail image, the second
`
`indication feature being based on a number of digital files in the second set of digital
`
`files.”
`
`
`
`5
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 8 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`
`Claim 6
`
`“The method of claim 5, wherein the second indication feature is connected to the
`
`second location selectable thumbnail image.”
`
`
`
`Claim 7
`
`“The method of claim 5, wherein the second indication feature includes a second
`
`number indicative of the number of digital files in the second set of digital files.”
`
`
`IV. CLAIM CONSTRUCTION
`
`7.
`
`I understand the Patent Owner and Dr. Reinman did not propose that
`
`the Challenged Claims are construed but addressed limitations “in the event the
`
`Board determines claim construction is needed.” POR, 26-32.
`
`8.
`
`I also understand the Patent Owner and Dr. Reinman state their analysis
`
`is consistent with the “plain and ordinary meaning” of the limitations of the ’228
`
`patent. I do not agree. In my opinion, their analysis is overly restrictive and is not
`
`consistent with the plain and ordinary meaning. But regardless, under the Patent
`
`Owner’s analysis as to the plain and ordinary meaning of the claims (which is
`
`discussed below in context) or the proper plain and ordinary meaning of the claims,
`
`the Challenged Claims are still unpatentable.
`
`
`
`
`
`6
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 9 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`A. Claim 1: limitations [1b], [1d], and [1e] (“responsive to a first
`input, causing a map view to be displayed … the map view including: … a first
`/second] location selectable thumbnail image”)
`9.
`I understand that in claim 1 of the ’228 patent, limitation [1b] recites
`
`“responsive to a first input, causing a map view to be displayed on an interface,”
`
`limitation [1d] recites ““[the map view including:] (ii) a first location selectable
`
`thumbnail image at a first location on the interactive map; and”,” and limitation [1e]
`
`recites “[the map view including:] (iii) a second location selectable thumbnail image
`
`at a second location on the interactive map.”
`
`10.
`
`I understand the Patent Owner and Dr. Reinman allege “[t]he plain and
`
`ordinary meaning of limitations [1b], [1d] and [1e] require that the “map view”
`
`displayed in response to the “first input” must “includ[e]” first and second “thumbnail
`
`image[s] … on the interactive map.” POR, 27-28. As I understand it, the Patent Owner
`
`and Dr. Reinman are arguing that under the plain meaning, there cannot be any
`
`intervening inputs between the “first input” and display of the claimed “map view,”
`
`even if the first input is a necessary input required for displaying the map view. Id.,
`
`27-28, 52-54. I do not agree. Claim 1 (and limitations [1b], [1d] and [1e] specifically)
`
`is silent as to such a restriction and this interpretation is not in accord with what a
`
`POSITA would have understood. A POSITA would have understood the plain
`
`meaning of limitations [1b], [1d], and [1e] is not so restrictive.
`
`
`
`7
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 10 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`11. The claim language is not supportive as it does not recite any
`
`restrictions to intervening inputs between a “first input” necessary for displaying the
`
`“map view” and display of the claimed “map view.” EX1001, claims 1, 3. A
`
`POSITA would have understood that this language does not preclude intervening
`
`inputs because there is no mention of a restriction in the claims.
`
`12. The specification also does not support Patent Owner’s interpretation.
`
`I understand the Patent Owner and Dr. Reinman cite to column 43, lines 34-35,
`
`Figure 41, and column 29, lines 41-56 of the ’228 patent as the only support for their
`
`position. POR, 28. But these sections of the ’228 patent are silent regarding Patent
`
`Owner’s assertion and do not limit the claims. The ’228 patent does not include a
`
`column 43, but to the extent they mean column 23, lines 34-35, this section simply
`
`states that “[i]f the user selects Locations (1443), all of the Locations that the specific
`
`person has been tagged within will be displayed.” EX1001, 23:34-35. Column 29,
`
`lines 41-56 states:
`
`“In FIG. 41, an illustration of the results for a Single Application Dot-Tag
`Filter in the Location Application View is depicted (0870). Within the
`Location Application View the Digital Files are displayed within an
`interactive map (Google map shown as an example). The Location View
`can also provide additional outputs such as a journey route that identifies
`the specific locations for an event or trip that can be customized by users.
`In this view, individual or groups of Digital Files are illustrated as photo
`thumbnails (see indicators 0874 and 0875)) on the map and the user can
`select the thumbnail to see all the Digital Files with the same location (as
`seen FIG. 34 (indicator 1630)) or the user can use the interactive map and
`
`
`
`8
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 11 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`narrow the map view by either using the zoom in/zoom out bar (0876) on
`the left or simply selecting the map. Note that the pinned locations include
`a thumbnail of the Digital File (or Collection cover) and the number of
`Digital Files for that location.”
`
`
`EX1001, 29:41-56.
`
`
`13. And Figure 41 is as follows:
`
`
`
`
`
`
`
`14. But none of these portions of the ’228 patent require that there cannot
`
`
`
`be any intervening inputs between the “first input” and display of the claimed “map
`
`view,” even if the first input is a necessary input required for displaying the map
`
`
`
`9
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 12 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`view. They explain at best the relationship between an input (e.g., selecting
`
`“Locations (1443)”) and displaying locations where a person has been tagged, where
`
`if such an input is provided, the locations “will be displayed.” EX1001, 23:34-35. I
`
`also note that the file history does not comment on this topic. Thus, in my opinion,
`
`the plain meaning should not be interpreted as Patent Owner and Dr. Reinman allege.
`
`15.
`
`In my opinion, a POSITA would have understood that the plain and
`
`ordinary meaning of limitations [1b], [1d], and [1e] (“responsive to a first input,
`
`causing a map view to be displayed … the map view including: … a first /second]
`
`location selectable thumbnail image”) encompasses having intervening input(s)
`
`between a first input necessary for displaying the map view and display of the map
`
`view, as well as no intervening input(s) between a first input necessary for displaying
`
`the map view and display of the map view. A POSITA would not have understood
`
`the plain meaning as having the interpretation argued by Patent Owner.
`
`B. Claim 1: limitations [1n] and [1p]
`16.
`I understand that in claim 1 of the ’228 patent, limitation [1n] recites
`
`“[the people view including:] (ii) a first name associated with the first person, the
`
`first name being displayed adjacent to the first person selectable thumbnail image”
`
`and limitation [1p] recites “[the people view including:] (iv) a second name
`
`associated with the second person, the second name being displayed adjacent to the
`
`second person selectable thumbnail image.”
`10
`
`
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 13 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`I understand the Patent Owner and Dr. Reinman allege “[t]he plain and
`
`17.
`
`ordinary meaning of limitations [1n] and [1p] require that the ‘people view’ must
`
`‘includ[e]’ both a ‘first name’ and a ‘second name’ displayed in the same view.”
`
`POR, 28-29. As I understand it, the Patent Owner and Dr. Reinman are arguing that
`
`under the plain meaning, the first name and second name must be displayed at the
`
`same time or “simultaneously.” POR, 28-29, 63-64. I do not agree.
`
`18. A POSITA would have understood the plain meaning of limitations
`
`[1n] and [1p] is not so restrictive. Claim 1 does not recite displaying first and second
`
`names simultaneously; the claim language does not support PO’s additional
`
`requirement as it does not recite displaying first and second names such that they
`
`must be displayed simultaneously. EX1001, claim 1. The specification also does not
`
`support PO’s interpretation as it is not limiting. The Patent Owner and Dr. Reinman
`
`cite to column 22, line 59-column 23, line 4 and Figure 32 of the ’228 patent as the
`
`only support for their position. POR, 29. But these sections of the ’228 patent do not
`
`limit the claims. Column 22, line 59-column 23, line 4 states:
`
`“In FIG. 32, both of the People Application Views are illustrated. The first
`People Application View (1400) is used to display all the people that were
`created within the user's Application. This view can be seen by selecting
`"People" (1401) from any of the Application Views within the Application.
`The people can be listed in various sort orders though of Application Dot-
`Tags (0707) in the future including Family Trees, Timespan, etc. and each of
`these MemoryWeb Tags will go through the same continuous link of Applica-
`60 tion Dot-Tag process. For an additional type of Application Dot-Tag, the
`
`
`
`11
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 14 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`system will receive data from the User Relationship Table and displays the
`relationship data in the corresponding view for that type of Application Dot-
`Tag (0714). 65 a drop-down (1402) such as: Newest to Oldest (added), Oldest
`to Newest (added), Alphabetical (A-Z), Alphabetical (Z-A), etc. Additional
`sorts are contemplated such as age sort. For each person, a thumbnail of their
`face along with their name is depicted. In this figure, Jon Smith (1403) and
`JC Jon Smith (1404) along with some other people are illustrated.”
`
`
`19. Figure 32 is as follows:
`
`
`20. But none of these portions of the ’228 patent require that a first name
`
`
`
`
`
`
`of a first person and a second name of a second person be displayed simultaneously.
`12
`
`
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 15 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`Instead, these passages merely teach aspects of an example embodiment, and do not
`
`impose any clear and explicit or unequivocable requirement on the claims. I also
`
`note that the file history does not comment on this topic. Thus, a POSITA would not
`
`have understood that the plain meaning of limitations [1n] and [1p] is as restrictive
`
`as POSITA asserts. A POSITA would have not have understood the plain meaning
`
`as having the interpretation argued by Patent Owner. A POSITA would have instead
`
`understood that the plain meaning encompasses when a first name and second name
`
`are displayed simultaneously in a people view and also at different times in a people
`
`view. This POSITA understanding is corroborated by U.S. Patent Application
`
`Publication 2008/0126958 to Louie (“Louie”) (EX1037) that explains user interface
`
`elements, known as “UIEs,” can be “displayed at the same time or at different times”
`
`in a user interface display view. EX1037, ¶¶0034-0038, Fig. 2. A UIE can be a
`
`widget, control, graphic, text box, or “any and all other paraphernalia that a window
`
`can have or contain.” Id., ¶0037. In Louie, a graphical user interface (GUI) 30 is
`
`displayed on a desktop window 28 interface, where GUI 30 is a view displaying
`
`various of the UIEs in different arrangements. Id., ¶¶0025, 0033-0038, 40, 48, Fig.
`
`2.
`
`
`
`13
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 16 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`C. Claim 1: limitations [1b], [1d], and Claim 3 (“the first indication
`feature is connected to the first location selectable thumbnail image”)
`21.
`I understand that in claim 1 of the ’228 patent, limitation [1b] recites
`
`“responsive to a first input, causing a map view to be displayed on an interface,” and
`
`limitation [1d] recites “[the map view including:] (ii) a first location selectable
`
`thumbnail image at a first location on the interactive map.”
`
`22.
`
`I understand that claim 3 of the ’228 patent recites “[t]he method
`
`of claim 2, wherein the first indication feature is connected to the first location
`
`selectable thumbnail image.”
`
`23. And for completeness, since claim 3 depends on claim 2, I understand
`
`claim 2 of the ’228 patent recites “[t]he method of claim 1, wherein the map view
`
`further includes a first indication feature associated with the first location selectable
`
`thumbnail image, the first indication feature being based on a number of digital files
`
`in the first set of digital files.”
`
`24.
`
`I understand the Patent Owner and Dr. Reinman allege “[t]he plain and
`
`ordinary meaning of limitations [1b], [1d] and claim 3 require that that the ‘map view’
`
`displayed in response to the ‘first input’ must ‘includ[e]’ (i) a first “thumbnail image …
`
`on the interactive map’ and also include (ii) an ‘indication feature’ that is ‘connected
`
`to’ that first thumbnail image on that interactive map.” POR, 30-31. I understand the
`
`Patent Owner and Dr. Reinman are arguing that under the plain meaning, there
`
`
`
`14
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 17 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`cannot be any intervening inputs between the “first input” and display of the claimed
`
`“map view” that includes a “first indication feature,” even if the first input is a
`
`necessary input required for displaying the map view. Id., 30-31, 64-66. I do not
`
`agree.
`
`25. A POSITA would have understood the plain meaning of limitations
`
`[1b] and [1d], and claim 3, is not so restrictive for the same reasons I discussed
`
`previously in Section IV.A. Claims 1-3 do not recite such restrictions as to
`
`intervening inputs. A POSITA would have understood that the claim language does
`
`not preclude intervening inputs because there is no mention of a restriction in the
`
`claims. The specification also does not support PO’s additional requirement. The
`
`Patent Owner and Dr. Reinman again cite to Column 29, lines 41-56, Figure 41 and
`
`column 41, lines 34-35 (which is not in the patent, and I understand they appear to
`
`intend column 23, lines 34-35), but these sections again do not require that there
`
`cannot be any intervening inputs between the “first input” and display of the claimed
`
`“map view” having a “first indication feature.” I also note that the file history does
`
`not comment on this topic. Thus, in my opinion, the plain meaning should not be
`
`interpreted as Patent Owner and Dr. Reinman allege.
`
`26.
`
`In my opinion, the plain and ordinary meaning of limitations [1b], [1d],
`
`and claim 3 (“the first indication feature is connected to the first location selectable
`
`
`
`15
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 18 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`thumbnail image”) encompasses having intervening input(s) between a first input
`
`necessary for displaying the map view and display of the map view having a first
`
`indication feature, as well as no intervening input(s) between a first input necessary
`
`for displaying the map view and display of the map view having a first indication
`
`feature. A POSITA would not have understood the plain meaning as having the
`
`interpretation argued by Patent Owner.
`
`D. Claim 5
`27.
`I understand that claim 5 of the ’228 patent recites “The method
`
`of claim 2, wherein the map view further includes a second indication feature
`
`associated with the second location selectable thumbnail image, the second
`
`indication feature being based on a number of digital files in the second set of digital
`
`files.”
`
`28. And for completeness, since claim 5 depends on claim 2, I understand
`
`claim 2 of the ’228 patent recites “The method of claim 1, wherein the map view
`
`further includes a first indication feature associated with the first location selectable
`
`thumbnail image, the first indication feature being based on a number of digital files
`
`in the first set of digital files.”
`
`29.
`
`I understand the Patent Owner and Dr. Reinman allege “[t]he plain and
`
`ordinary meaning of limitations of claim 5 requires that the ‘map view’ must
`
`
`
`16
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 19 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`‘includ[e]’ both a ‘first indication feature’ and a ‘second indication feature’
`
`displayed in the same view.” POR, 32. As I understand it, the Patent Owner and Dr.
`
`Reinman are arguing that under the plain meaning, the first indication feature and
`
`second indication feature must be displayed at the same time or “simultaneously.”
`
`POR, 28-29, 66-68. I do not agree.
`
`30. A POSITA would have understood that the plain meaning of claim 5 is
`
`not so restrictive. The claim language does not support Patent Owner’s assertion as
`
`claims 1-2 and 5 do not recite that the first indication feature and second indication
`
`feature must be displayed simultaneously. The specification also does not support
`
`Patent Owner’s assertion. The Patent Owner and Dr. Reinman cite only to Figure 41
`
`as the only support for their position. But this figure alone does not limit the claim.
`
`The patent is silent as to a requirement that the first indication feature and second
`
`indication feature must be displayed in the same view (i.e., at the same time). The
`
`patent at best describes an example embodiment in Figure 41, and does not impose
`
`any clear and explicit or unequivocable requirement on the claims. I also note that
`
`the file history does not comment on this topic. Thus, a POSITA would not have
`
`understood that the plain meaning claim 5 is as restrictive as Patent Owner asserts.
`
`A POSITA would have understood that the plain meaning encompasses when the
`
`first indication feature and second indication feature are displayed simultaneously in
`
`
`
`17
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 20 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`a map view and also when first and second indication features are displayed at
`
`different times in a map view. This POSITA understanding is corroborated by Louie
`
`(EX1037) that explains user interface elements, known as “UIEs,” can be “displayed
`
`at the same time or at different times” in a user interface display view. EX1037,
`
`¶¶0034-0038. A UIE can be a widget, control, graphic, text box, or “any and all other
`
`paraphernalia that a window can have or contain.” Id., ¶0037. In Louie, a graphical
`
`user interface (GUI) 30 is displayed on a desktop window 28 interface, where GUI
`
`30 is a view displaying various of the UIEs in different arrangements. Id., ¶¶0025,
`
`0033-0038, 40, 48, Fig. 2. A POSITA would not have understood the plain meaning
`
`as having the interpretation argued by Patent Owner.
`
`V. THE CHALLENGED CLAIMS ARE OBVIOUS UNDER MULTIPLE
`
`THEORIES
`
`31. As an initial matter, I note that I did perform an element-by-element
`
`analysis of the Challenged Claims when forming my opinions regarding obviousness
`
`of the Challenged Claims in my first declaration. This is shown in my first
`
`declaration (EX1002) at least in ¶3 and ¶166, where I state “I have reviewed, had
`
`input into, and endorse the technological discussions in the Petitioner’s Petition for
`
`Inter Partes Review of U.S. Patent 10,621,228 challenging claims 1-7, including the
`
`statements in the Petition regarding the ’228 Patent, the scope of the claims, the prior
`
`
`
`18
`
`UNIFIED PATENTS EXHIBIT 1038
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 21 of 60
`
`

`

`IPR2021-01413
`U.S. Patent 10,621,228
`Second Declaration of Benjamin B. Bederson, Ph.D.
`art’s disclosure of the claims, and the statements throughout the Petition regarding a
`
`person of ordinary skill in the art’s (POSITA’s) knowledge and understanding”
`
`(EX1002, ¶3) and “I agree with the mapping of prior art to the limitations of the
`
`Challenged Claims in the Petition and the technical issues addressed in the Petition”
`
`(EX1002, ¶166). I further reproduced the grounds of the petition that analyze each
`
`claim element in relation to the prior art in my first declaration as attachment C.
`
`EX1002, attachment C. I also testified at my deposition in this proceeding that I had
`
`performed such an analysis. See, e.g., EX2036, 81:10-16, 104:18-105:14, 105:25-
`
`106:9.
`
`
`
`A. Limitation [1c]: “the map view including: (i) an interactive map”
`
`32.
`
`I understand that the Patent Owner and Dr. Reinman argue Okamura
`
`alone does not render obvious a “map view including…an interactive map”1 stating
`
`the Petition “provides no obviousness analysis based on Okamura’s cluster maps.”
`
`POR, 34-37. Patent Owner argues that “the 3x