IPR2021-01413
`U.S. Patent 10,621,228
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, LLC
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Case no. IPR2021-01413
`Patent 10,621,228
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`PETITIONER’S AUTHORIZED SUR-SUR REPLY TO PATENT
`OWNER’S SUR-REPLY1
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`1 The Board authorized this sur-sur reply in its October 27, 2022 email. See EX1040.
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`U.S. Patent 10,621,228
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, LLC
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`
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`Case no. IPR2021-01413
`Patent 10,621,228
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`PETITIONER’S AUTHORIZED SUR-SUR REPLY TO PATENT
`OWNER’S SUR-REPLY1
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`1 The Board authorized this sur-sur reply in its October 27, 2022 email. See EX1040.
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`I.
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`IPR2021-01413
`U.S. Patent 10,621,228
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`PATENT OWNER’S SUR-REPLY (PAPER 35), PAGE 7: LINES 9-11
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`Regarding limitations [1n], [1p],2 and claim 5, Patent Owner (“PO”) argues
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`“[i]ncluding the first name and second name at separate times would [] conflict with
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`the ‘responsive’ relationship between the ‘second input’ and ‘causing’ the display of
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`the ‘people view’” and quotes Dr. Bederson’s second deposition (EX2046) at 72:21-
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`73:9 as support, stating “Dr. Bederson agreed ‘claim limitation [1n] and [1p]
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`are…two elements of a whole claim including a people view, which has to be
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`displayed and responsive to a second input.’” Patent Owner’s Sur-Reply (“POSR”)
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`(Paper 35), 7:4-6, 7:9-11. But the inferences PO draws from Dr. Bederson’s
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`testimony take it out of context.3
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`2 Limitations [1n] and 1[p] recite the people view including: . . . (ii) a first name
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`associated with the first person, the first name being displayed adjacent to the first
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`person selectable thumbnail image [and]. . . (iv) a second name associated with the
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`second person, the second name being displayed adjacent to the second person
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`selectable thumbnail image. EX1001, claim 1; Petition (Paper 2), 55, 60. Claim
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`language is italicized herein.
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`3 The quote from Dr. Bederson’s testimony is based on questioning regarding Exhibit
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`2044, which was introduced in this proceeding for the first-time during Dr.
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`1
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`That claim limitations [1n] and [1p] are two “elements of a whole claim” does
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`IPR2021-01413
`U.S. Patent 10,621,228
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`not require that the first name and second name must be displayed simultaneously,
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`as PO suggests. Under the plain meaning of the claims, the people view that includes
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`the first name and second name of limitations [1n] and [1p] is displayed responsive
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`to a second input regardless of whether the first name and second name are displayed
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`simultaneously or at different times. EX1001, claim 1; EX2046, 68:4-24, 73:3-9,
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`73:15-24, 74:10-18, 75:8-22, 78:2-11, 78:23-79:11. The first name and second name
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`are displayed in response to the second input because they are displayed as part of
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`the people view, as a result of the people view being selected by the second input,
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`and the Petition explains how the prior art shows this. EX1001, claim 1; Petition,
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`47-52, 55-57, 60-61. Specifically, the Petition explains that when Okamura’s FACE
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`tab 412 is depressed (responsive to a second input), face cluster display area 431
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`showing thumbnail images of faces included in contents is displayed (causing a
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`Bederson’s second deposition and appears to have been created by PO. EX2046,
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`70:5-16. Dr. Bederson testified multiple times that he had not seen this exhibit
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`before, was not familiar with it, and that the exhibit lacked context in relation to the
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`Challenged Claims. Id., 72:9-12, 73:10-14, 73:23-24, 75:5-7, 75:19-22, 77:14-25,
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`190:3-12.
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`2
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`people view to be displayed), where face cluster display area 431 (the people view)
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`IPR2021-01413
`U.S. Patent 10,621,228
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`includes information 433 having a first person’s name (first name) displayed for the
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`first person’s thumbnail image and information 433 having a second person’s name
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`(second name) displayed for the second person’s thumbnail image. Id.
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`Dr. Bederson explained how the first name and second name of the people
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`view would be displayed consistent with the proper plain meaning interpretation
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`during his second deposition, in relation to the various “views” shown by Exhibit
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`2044; specifically, when asked whether “View No. 2 could be encompassed by
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`limitations [1n] and [1p],” he stated “View No. 2 is not complete…I would guess
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`probably a better answer would be to say that you see View 2 and View 3 together
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`worked in a similar way to Okamura[], perhaps they could be…part of a teaching of
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`claim limitations 1[n] and 1[p].” EX2046, 75:1-19. Dr. Bederson further explained
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`“to the extent that view 2 and view 3 represent a system that works in a comparable
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`way to Okamura, then, it perhaps could read on limitations [1n] and [1p].” EX2046,
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`78:7-10. Thus, Dr. Bederson explained the plain meaning encompasses displaying
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`what is shown in view 2 and view 3 of Exhibit 2044 at different times in the people
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`view. Id.; EX2044.
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`3
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`II.
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`POSR (PAPER 35), PAGE 7: FOOTNOTE 2
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`IPR2021-01413
`U.S. Patent 10,621,228
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`PO further argues “[c]laim 1 recites a (i) a single ‘second input’ and (ii)
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`‘causing’ the display of the ‘people view’ (that includes a first name and second
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`name) ‘responsive to’ that same ‘second input.’” POSR, 7. As a footnote to this
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`sentence (footnote 2), PO states “Dr. Bederson refused to identify a POSITA’s
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`understanding of ‘causing,’” citing to his deposition transcript at 58:4-59:6 and
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`61:15-64:3. POSR, Footnote 2.4 Notably, PO never objected to Dr. Bederson’s
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`testimony as being non-responsive. EX2046, 58:4-59:6, 61:15-64:3. Regardless, PO
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`mischaracterizes Dr. Bederson’s testimony. During Dr. Bederson’s second
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`deposition, PO questioned Dr. Bederson about the meaning of causing in view of
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`Exhibit 2043, which appears to be dictionary definitions of “cause.”5 EX2046,
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`61:15-64:3; EX2043. In response, Dr. Bederson did not simply “refuse” to identify
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`a POSITA understanding of the term. Instead, Dr. Bederson confirmed that he did
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`not have “any particular cause for concern” when reviewing the definitions in light
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`of the Petition and the prior art. Id., 63:11-64:3. The Petition explained how
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`4 The POSR improperly raises the interpretation of causing for the first time.
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`5 Dr. Bederson testified that he had not seen Exhibit 2043 before his second
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`deposition and was not familiar with it. EX2046, 61:18-21, 63:11-64:3, 190:3-12.
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`4
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`Okamura discloses or at least renders obvious causing a people view to be displayed
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`IPR2021-01413
`U.S. Patent 10,621,228
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`as recited in claim 1, showing that when Okamura’s FACE tab 412 is depressed
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`(responsive to a second input), face cluster display area 431 showing a thumbnail
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`image of each of the faces included in contents is displayed (causing a people view
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`to be displayed). See, e.g., Petition, 47-52. Nothing in Exhibit 2043 contradicts this
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`showing; if anything, it tends to emphasize how broad the term causing is,
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`encompassing, for example, events that simply “bring about” some result even if not
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`the direct effect. See, e.g., EX2043, 2, 5.
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`Dated: November 4, 2022
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`Respectfully Submitted,
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`/Ellyar Y. Barazesh/
`Ellyar Y. Barazesh
`Reg. No. 74,096
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Exhibit
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`EXHIBIT LIST
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`Description
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`U.S. Patent 10,621,228 (the “’228 patent”)
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`Declaration of Dr. Bederson
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`File History of U.S. Patent 10,621,228
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`U.S. Patent Application Publication 2011/0122153 (“Okamura”)
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`U.S. Patent 6,714,215 (“Flora”)
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`U.S. Patent Application Publication 2011/0163971 (“Wagner”)
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`U.S. Patent Application Publication 2010/0172551 (“Gilley”)
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`File History of Flora (“Flora application”)
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`Hyunmo Kang, Benjamin B. Bederson, and Bongwon Suh, Capture,
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`Annotate, Browse, Find, Share: Novel Interfaces for Personal Photo
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`Management, International Journal of Human-Computer Interaction,
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`23(3), 315-337 (2007)
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`Florida Center for Instructional Technology, iPhoto 09 Basics,
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`1010
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`retrieved from https://etc.usf.edu/te_mac/movies/pdf/iphoto09.pdf
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`1011
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`(2010)
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`Amended Complaint, MemoryWeb, LLC v. Apple, Inc., 6:21-cv-
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`00531- ADA (W.D.Tex.)
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`Exhibit
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`1012
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Description
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`Complaint, MemoryWeb, LLC v. Samsung Electronics Co., Ltd. and
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`Samsung Electronics America, Inc., 6:21-cv-00411-ADA (W.D.Tex.)
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`Excerpts from Designing the User Interface, Strategies for Effective
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`1013
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`Human-Computer Interaction by Ben Shneiderman and Catherine
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`Plaisant, 5th Edition (2010)
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`Benjamin B. Bederson, PhotoMesa: A Zoomable Image Browser
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`Using Quantum Treemaps and Bubblemaps, Proceedings of the 14th
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`1014
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`Annual ACM Symposium on User Interface Software and Technology
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`(UIST ’01), 71–80, Association for Computing Machinery, New York,
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`NY, USA, (2001)
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`Bongwon Suh, Haibin Ling, Benjamin B. Bederson, and David W.
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`Jacobs, Automatic Thumbnail Cropping and its Effectiveness,
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`1015
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`Proceedings of the 16th Annual ACM symposium on User Interface
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`Software and Technology (UIST '03), 95–104, Association for
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`Computing Machinery, New York, NY, USA, (2003)
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`Ben Shneiderman, Benjamin B. Bederson, and Steven M. Drucker,
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`1016
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`Find that photo! Interface strategies to annotate, browse, and share,
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`Commun. ACM 49, 4 (April 2006), 69–71.
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Exhibit
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`1017
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`1018
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`Declaration of Keven Jakel
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`Docket Reports
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`Description
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`NASA, Space Station Assembly, Baikonur Cosmodrome, retrieved
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`from
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`http://www.nasa.gov/mission_pages/station/structure/elements/baikon
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`ur.html
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`Authorization Email from the Board for Petitioner’s Reply
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`Blog Post regarding Petition Filing
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`REDACTED Supplemental Declaration of Keven Jakel
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`CONFIDENTIAL Supplemental Declaration of Keven Jakel
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`CONFIDENTIAL Apple Membership Agreement
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`CONFIDENTIAL Samsung Membership Agreement
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`Newsletter regarding Petition Filing
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`Email list summary for Newsletter
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`News Update regarding Petition Filing
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`CONFIDENTIAL Email list for News Update
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`REDACTED version of Patent Owner Response
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`REDACTED Transcript of Kevin Jakel Deposition
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`1019
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`1020
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`1021
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`1022
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`1024
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`1025
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`1031
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`Exhibit
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`Description
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Joint Claim Construction Statement, MemoryWeb, LLC v. Samsung
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`1032
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`Electronics Co., Ltd (a Korean Company) and Samsung Electronics
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`America, Inc., 6:21-cv-00411-ADA (W.D.Tex)
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`1033
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`U.S. Patent 6,259,819 (“Andrew”)
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`Transcript of the Deposition of Glenn Reinman, Ph.D. dated August
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`18, 2022
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`Definition of the Cambridge English Dictionary
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`Definition of the Dictionary.com Dictionary
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`U.S. Patent Applicant Publication 2008/0126958 (“Louie”)
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`Reply Declaration of Dr. Bederson
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`REDACTED version of Patent Owner’s Sur-Reply
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`Authorization Email from the Board for Petitioner’s Sur-Sur Reply
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`IPR2021-01413
`U.S. Patent 10,621,228
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing PETITIONER’S SUR-SUR
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`REPLY TO PATENT OWNER’S SUR-REPLY and EXHIBIT 1040 was served
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`on November 4, 2022, via e-mail, as agreed to by counsel, upon the following
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`counsel of record for Patent Owner:
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`Jennifer Hayes
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`jenhayes@nixonpeabody.com
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`George Dandalides
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`gdandalides@nixonpeabody.com
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`Matthew A. Werber
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`mwerber@nixonpeabody.com
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Paralegal
`Unified Patents, LLC
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`Dated: November 4, 2022
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