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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`Inter Partes Review No. IPR2022-00031
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`
`PATENT OWNER’S SUR-REPLY
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`Inter Partes Review No. IPR2022-00031
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
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`INTRODUCTION ........................................................................................... 1
`A3UM IS NOT PRIOR ART .......................................................................... 2
`A.
`Petitioner’s uncorroborated assertions cannot establish EX1005
`as prior art .............................................................................................. 3
`Hidden files on a DVD are not publicly accessible .............................. 5
`B.
`Installed copy of Aperture 3 is not prior art .......................................... 7
`C.
`Evidence does not support A3UM on apple.com as prior art ............... 7
`D.
` THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE .................. 9
`A.
`Claim 1 .................................................................................................. 9
`1.
`A3UM does not disclose or render obvious a “third/[fourth] set
`of digital files including digital photographs and videos” .......... 9
`A POSITA would not have modified A3UM with Belitz as
`Petitioner proposes .................................................................... 12
`No motivation to combine A3UM and Belitz ........................... 16
`Petitioner improperly relies on non-prior art in its obviousness
`contentions ................................................................................ 17
`Claims 8-9 ........................................................................................... 18
`B.
`Claim 15 .............................................................................................. 22
`C.
` CONCLUSION ............................................................................................. 27
`
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`2.
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`3.
`4.
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`i
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`
`908 F.3d 765 (Fed. Cir. 2018) ........................................................................ 7, 18
`
`Adobe Systems Inc. v. Grecia,
`
`IPR2018-00419, Paper 9 (PTAB Sept. 7, 2018) ................................................. 18
`
`Am. Calcar, Inc. v. Am. Honda Motor Co.,
`
`651 F.3d 1318 (Fed. Cir. 2011) .......................................................................... 25
`
`Blue Calypso, LLC v. Groupon, Inc.,
`
`815 F.3d 1331 (Fed. Cir. 2016) .......................................................................... 18
`
`Carella v. Starlight Archery & Pro Line Co.,
`
`804 F.2d 135 (Fed. Cir. 1986) .............................................................................. 4
`
`Corning Optical Communications LLC v. Dali Wireless, Inc.,
`
`IPR2021-00762, Paper 37 (PTAB Oct. 11, 2022) .......................................passim
`
`Icon Health & Fitness, Inc. v. Strava, Inc.,
`
`849 F.3d 1034 (Fed. Cir. 2017) ............................................................................ 9
`
`In-Depth Geophysical, Inc. v. Conocophillips Co.,
`
`IPR2019-00849, Paper 14 (PTAB Sept. 6, 2019) ............................................... 17
`
`In re Fulton,
`
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 16
`
`In re Klopfenstein,
`
`380 F.3d 1345 (Fed. Cir. 2004) ........................................................................ 4, 5
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359 (Fed. Cir. 2016) .............................................................. 14, 15, 23
`
`Paint Point Med. Sys., Inc. v. Blephex, LLC,
`
`IPR2016-01670, Paper 44 (PTAB Feb. 28, 2018) ................................................ 4
`
`ii
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`
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`Parrot S.A. v. Qfo Labs, Inc.,
`
`IPR2018-01690, Paper 40 (PTAB Feb. 20, 2020) ................................................ 4
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 24
`
`Power Mosfet Techs., L.L.C. v. Siemens AG,
`
`378 F.3d 1396 (Fed. Cir. 2004) .......................................................................... 26
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 25
`
`Qualcomm Inc. v. Apple Inc.,
`
`24 F.4th 1367 (Fed. Cir. 2022) ........................................................................... 17
`
`TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
`
`529 F.3d 1364 (Fed. Cir. 2008) .......................................................................... 26
`
`Victoria’s Secret Stores LLC v. Andra Grp.,
`
`IPR2020-00853, Paper 12 (PTAB Oct. 22, 2020) .............................................. 17
`
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`
`853 F.3d 1272 (Fed. Cir. 2017) .......................................................................... 21
`
`Yeda Research & Dev. Co. v. Mylan Pharm. Inc.,
`
`906 F.3d 1031 (Fed. Cir. 2018) .......................................................................... 17
`
`Regulations
`37 C.F.R. § 42.23 ......................................................................................... 14, 15, 23
`
`37 C.F.R. § 42.53(d)(5)(ii) ......................................................................................... 2
`
`37 C.F.R. § 42.65(a) ................................................................................................. 16
`
`iii
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`IPR2022-00031
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` Patent No. 10,621,228
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`Exhibit
`No.
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`LISTING OF EXHIBITS
`
`Description
`
`2001
`
`WITHDRAWN
`
`2002
`
`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
`
`Hyunmo Kang et al., Capture, Annotated, Browse, Find, Share:
`Novel Interfaces for Personal Photo Management, International
`Journal of Human-Computer Interaction, 23(3), 315-37 (2007)
`(“Kang”)
`
`Jaffe et al., Generating Summaries and Visualization for Large
`Collections of Geo-Referenced Photographs, Proceedings of the
`8th ACM SIGMM International Workshop on Multimedia
`Information Retrieval, MIR 2006, October 26-27, 2006 (“Jaffe”)
`
`Allan Hoffman, Create Great iPhone Photos: Apps, Tips, Tricks,
`and Effects, No Starch Press, Inc. (Copyright 2011)
`
`U.S. Patent Publication No. 2010/0171763 (“Bhatt”)
`
`Feb. 8, 2022 eBay Order Confirmation for “Apple Aperture 3
`Upgrade for Mac Brand New Photography”
`
`Apple Inc. Aperture Software License Agreement
`
`Declaration of John Leone, Cisco Systems, Inc. v. Centripetal
`Networks, Inc., IPR2018-01436, EX1005 (July 20, 2018)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual (Archive.org:
`July 26, 2010)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual (Archive.org:
`Feb. 17, 2010)
`
`2011
`
`RESERVED
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`IPR2022-00031
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` Patent No. 10,621,228
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`Exhibit
`No.
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`Description
`
`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
`
`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`RESERVED
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`Apple, Inc., www.apple.com, (Archive.org: Mar. 12, 2010)
`
`Devin Coldewey, Review: Aperture 3, CrunchGear
`(https://techcrunch.com/2010/03/19/review-aperture-3/) (last
`accessed Feb. 2, 2022)
`
`Hilary Greenbaum, Who Made Google’s Map Pin?, The New York
`Times, (Apr. 18, 2011)
`
`Google Developers, Customizing a Google Map: Custom Markers
`(last accessed Feb. 17, 2022)
`
`KML4Earth, Google Earth/Maps Public Icons,
`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27,
`2012)
`
`Declaration of Angelo J. Christopher
`
`RESERVED
`
`RESERVED
`
`Apple, Inc., “Apple Human Interface Guidelines” (Aug. 20, 2009)
`
`Wilbert O. Galitz, “The Essential Guide to User Interface Design:
`An Introduction to GUI Design Principles and Techniques,” Wiley
`Publishing, Inc. (3rd Ed.) (2007)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. I)
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`Transcript of Deposition of Dr. Loren Terveen (Vol. II)
`
`Declaration of Rajeev Surati, Ph.D
`
`Transcript of Deposition of Matthew Birdsell
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`Exhibit
`No.
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`2027
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`2028
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`2029
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`2030
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`2031
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`2032
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`2033
`
`Description
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`Affidavit of Nathaniel E Frank-White
`
`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`eBay Receipt (August 15, 2022)
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`Jennifer Tidwell, Designing Interfaces, O’Reilly (1st Ed. 2005)
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`INTRODUCTION
`Petitioner has not shown that any challenged claim is unpatentable for two
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`primary reasons. First, Petitioner has not established that an interested artisan
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`exercising reasonable diligence would be able to locate A3UM without prior
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`knowledge of A3UM. A reference is not publicly accessible when the only ones that
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`know how to find it are those who already know where it is. For example, the fact
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`that someone who knows A3UM is hidden on an installation DVD might be able to
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`find it does not demonstrate public accessibility. There is no evidence that a skilled
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`artisan would have known of A3UM: even Petitioner’s expert had never heard of it
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`until this proceeding and required “tips” from counsel to find the hidden files.
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`Second, even if A3UM is found to be prior art, Petitioner failed to show any
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`challenged claim is obvious over A3UM and Belitz. The Reply mischaracterizes
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`much of the evidence, and in particular, Dr. Surati’s testimony. The Reply further
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`mischaracterizes the Petition as presenting an obviousness argument for claim 15
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`when it clearly did not. Petitioner does not dispute that at least two of its original
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`arguments about what A3UM discloses in relation to (1) facial recognition and
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`videos and (2) the Places map view have proven to be incorrect. All of this
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`underscores the conclusion that Petitioner failed to meet its burden.
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` A3UM IS NOT PRIOR ART
`Petitioner avoids the relevant inquiry regarding A3UM’s prior art status,
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`which is whether a POSITA “exercising reasonable diligence, would have been able
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`to locate [A3UM] … without a priori knowledge of” A3UM. Corning Optical
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`Communications LLC v. Dali Wireless, Inc., IPR2021-00762, Paper 37 at 20 (PTAB
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`Oct. 11, 2022).1 Petitioner’s theories are flawed because they require a priori
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`knowledge of Aperture 3 and A3UM. Reply, 3-4. A POSITA would not have
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`possessed this prerequisite knowledge of Aperture 3 and A3UM, as evidenced by
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`Petitioner’s own expert having never heard of Aperture 3 prior to 2021. EX2023,
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`49:14-50:11, 52:2-4; POR, 30-31.
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`To make up for this deficiency, Petitioner suggests Dr. Surati admitted that
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`one would have learned of Aperture by Googling “photo editing and management
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`software” or “photo management software.” Reply, 4-5.2 Dr. Surati was asked to
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`speculate whether searching the exact phrase “photo editing and management
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`software” could have yielded a result mentioning Aperture 3. EX1089, 204:9-205:3.
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`1 Unless otherwise stated, emphasis shown in case and evidence cites is added.
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`2 This questioning was outside the scope of permissible cross-examination because
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`Dr. Surati’s declaration did not offer opinions on searching the web. 37 C.F.R. §
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`42.53(d)(5)(ii).
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`Petitioner asked about this exact 5-word phrase not because an interested artisan
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`would use it for a search, but because it conveniently appears in an Apple document.
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`EX1048, 1; Corning, IPR2021-00762, Paper 37 at 26 (noting lack of evidence that
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`“one interested in the subject matter would have used” suggested search term “absent
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`a priori knowledge” of the reference). Tellingly, Petitioner proffers no evidence (1)
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`that a POSITA would use its newly proposed search terms, nor (2) whether or where
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`2011 Google search results would contain a reference to Aperture 3 or A3UM.
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`Reply, 4-5. Given this lack of evidence, Petitioner’s argument as to how a POSITA
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`would learn of Aperture 3 and A3UM rests entirely on speculation and should be
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`rejected.
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`A.
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`Petitioner’s uncorroborated assertions cannot establish EX1005
`as prior art
`As an initial matter, Petitioner lacks credible evidence as to the origins of
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`EX1005 and incorrectly argues that Patent Owner “has not disputed that EX1005 is
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`a true and correct copy of” A3UM. Reply, 14. Second, contrary to Petitioner’s
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`assertion that “[t]he ‘provenance’ of A3UM is also clear,” neither of Petitioner’s
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`witnesses could explain how EX1005 was created. Id.; POR, 23; EX2026, 20:5-6,
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`44:15-17, 44:21-23; EX2023, 57:10-59:10. Both witnesses only “spot-checked”
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`parts of EX1005 against a table of contents. EX2023, 62:3-12; EX2026, 41:11-16.
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`Petitioner also depends on uncorroborated assertions from its employee, Mr.
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`Birdsell. For instance, Petitioner exclusively relies on Mr. Birdsell to purportedly
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`show (i) the alleged numbers of Aperture 3 sales and apple.com visitors and (ii)
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`whether EX1005 corresponds to what was allegedly uploaded to apple.com in 2010.
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`Reply, 2-3. Mr. Birdsell’s testimony cannot be corroborated because no such
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`evidence exists, so it should be given little or no weight. EX2026, 54:23-55:17,
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`69:13-19, 53:16-54:17; Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135,
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`138 (Fed. Cir. 1986) (cautioning that “unsupported oral testimony” offered “to prove
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`prior knowledge or use…must be regarded with suspicion”); Parrot S.A. v. Qfo Labs,
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`Inc., IPR2018-01690, Paper 40 at 63-64 (PTAB Feb. 20, 2020) (affording party
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`testimony little weight “when objective record evidence does not sufficiently
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`corroborate it”); Paint Point Med. Sys., Inc. v. Blephex, LLC, IPR2016-01670, Paper
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`44 at 19-20 (PTAB Feb. 28, 2018) (affording “internet articles” purportedly
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`corroborating alleged sales “little weight” absent “a more credible and corroborated
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`basis”). Petitioner’s argument that Patent Owner did not “prove bias” (Reply, 22)
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`ignores the bias inherent in Mr. Birdsell having been employed by Petitioner for over
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`a decade (POR, 41-43).
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`Given that Mr. Birdsell could only speculate as to the number of Aperture
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`DVD sales, Petitioner argues that “actual sales are not required.” Reply, 3-4 (citing
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`In re Klopfenstein, 380 F.3d 1345, 1351 (Fed. Cir. 2004)). But in this case, sales are
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`required because accessing A3UM via a DVD requires a sale. Additionally,
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`Klopfenstein did not hold that “sales are not required”; the court noted that
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`“[p]rotective measures” like “license agreements” prohibiting copying weigh
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`against a finding of accessibility. Id. at 1351. Here, Aperture 3 users were bound by
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`such a license agreement, which is yet another indication that it was not publicly
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`accessible. EX2007, 1-2.
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`B. Hidden files on a DVD are not publicly accessible
`In addition to failing to show that a POSITA would know of Aperture 3 and
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`purchase a DVD, Petitioner failed to establish that a POSITA would know A3UM
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`is hidden on the DVD. Supra, §II.A. The Reply goes to great lengths to explain how
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`one could unhide and find A3UM. Reply, 7-13. These arguments underscore the
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`need for in-depth knowledge or research regarding how Mac OS applications “are
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`organized and distributed” to locate A3UM. Reply, 9. But a POSITA is not a Mac
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`operating system3 expert. Petition, 9; EX1089, 15:20-16:3, 409:20-410:5. Indeed,
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`Petitioner’s expert—who possesses more than ordinary skill—did not find the
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`hidden files on his own and required “tips” from counsel. POR, 28-29; EX2023,
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`67:8-18, 73:10-22, 79:10-15; Corning, IPR2021-00762, Paper 37 at 19-20 (noting
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`counsel’s role in constructing hypothetical search in finding no public accessibility).
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`3 Contrary to Petitioner’s suggestion (Reply, 16), Dr. Surati did not testify that a
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`POSITA “would know Unix” (EX1089, 15:20-16:3).
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`Even if, arguendo, an artisan exercising reasonable diligence would have
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`unhidden the files, Petitioner does not explain how navigating to the Archive.pax.gz
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`file, copying, then decompressing it as one of numerous intermediate steps comports
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`with reasonable diligence. Reply, 12; POR, 31-33. Nor does Petitioner dispute that
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`the DVD lacked search functionality. POR, 35; EX2025, ¶¶110-111. Instead,
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`Petitioner argues that a POSITA “would expect an application’s help files in HTML
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`format would be in the Resources subfolder.” Reply, 12 (citing EX1071). However,
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`EX1071 merely indicates that resources in an application bundle “might” contain
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`help files. EX1071, 5. More tellingly, this still does not answer why someone would,
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`among many other steps, manipulate the Archive.pax.gz file. EX2025, ¶113.
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`Petitioner misleadingly portrays Dr. Surati’s testimony as “analogiz[ing]
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`locating A3UM within the Installer DVD to finding a book in a library.” Reply, 9
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`(citing EX1089, 407:8-19).4 Dr. Surati made no such analogy. Rather, Dr. Surati
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`testified that finding the hidden A3UM files is akin to being told that a book has
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`been hidden in the library and then being asked to find it without guidance. EX1089,
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`409:2-19; POR, 35. The fact that someone could find the book because they already
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`4 Petitioner’s citation is incorrect; Patent Owner understands this refers to EX1089,
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`409:2-19.
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`6
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`knew where it was does not mean it is publicly accessible. Acceleration Bay, LLC v.
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`Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018).
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`C.
`Installed copy of Aperture 3 is not prior art
`With respect to locating A3UM in an installed copy of Aperture 3, the Reply
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`does not dispute that accessing A3UM from the operating software (Petition, 15) is
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`a public use rather than a printed publication (POR, 38-40). Instead, Petitioner
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`argues A3UM can alternatively “be viewed with a Safari web browser without
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`Aperture 3 running.” Reply, 14. Even if true, that does not change the fact that
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`A3UM in this context is a component of an installed software product that one would
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`have to take many steps to locate. POR, 38-41.
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`D. Evidence does not support A3UM on apple.com as prior art
`The Petition argued that “a skilled artisan would have known to visit
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`www.apple.com for information about Aperture 3 and could have readily located
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`A3UM.” Petition, 17; see also Paper 12, 14. In other words, Petitioner relies on a
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`priori knowledge of Aperture 3 or A3UM to supply a motivation to visit apple.com.
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`There is no evidence to support that conclusion, as evidenced by Petitioner’s expert
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`having never heard of Aperture 3. EX2023, 49:14-50:11, 52:2-4. There is also no
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`evidence that Apple was known for photo management software such that one
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`interested in the relevant subject matter would visit apple.com. Corning, Paper 37 at
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`7
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`24-25 (petitioner failed to show database containing reference was known to those
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`skilled artisans).
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`Any mention of Aperture 3 on the apple.com homepage was limited to mere
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`weeks, which weighs against a finding of public accessibility. Reply, 6-7; POR, 35.
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`Petitioner argues that the support page “would be found by searching ‘Aperture’
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`using apple.com’s search function.” Reply, 6. Even if true, such a search necessarily
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`requires a priori knowledge of Aperture 3 as a photo management system. Corning,
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`Paper 37 at 20. For instance, Petitioner does not allege searching “photo
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`management software” on apple.com would lead to the Aperture 3 support page.
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`Reply, 6-7. Petitioner’s assertion that “at least 100,000 individuals” visited the
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`Aperture 3 support page (but not necessarily A3UM itself) (Reply, 2) is solely based
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`on its employee’s “ballpark” guess “based on memory” of events over a decade ago.
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`EX2026, 54:15-55:4, 69:14-19. That apple.com may have been frequently visited
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`for things like phones and computers does not mean a skilled artisan interested in
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`photo management would look there. Reply, 13.5
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`5 Dr. Surati offered no opinions on A3UM’s alleged accessiblity via apple.com, so
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`Petitioner’s questioning on this issue was also outside the scope of permissible cross-
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`examination. See EX2025, ¶¶99-114; 37 C.F.R. § 42.53(d)(5)(ii).
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`Finally, Petitioner’s only support for EX1005 (which was created from a
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`DVD) corresponding to what was allegedly available on apple.com is its employee’s
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`uncorroborated say-so. Reply, 15. Petitioner does not dispute that the Internet
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`Archive capture it relied on shows a different copyright date than EX1005. Reply,
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`16; Petition, 14 (citing EX1021); EX2009; POR, 24-25. Instead, Petitioner argues
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`this discrepancy should be ignored because the “[s]ource code shows the copyright
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`date is a dynamic variable set by Archive.org.” Reply, 16 n.3. While EX1055
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`purportedly shows the code, without more, Petitioner’s attorney arguments
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`regarding the meaning of that code “is not evidence.” Icon Health & Fitness, Inc. v.
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`Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017).
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` THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
`A. Claim 1
`1.
`A3UM does not disclose or render obvious a “third/[fourth]
`set of digital files including digital photographs and videos”
`Claim 1 requires that the “[first/second] person” is associated with
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`“third/[fourth] set of digital files including digital photographs and videos.”
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`EX1001, 35:65-36:8. In response to the myriad of reasons why A3UM does not
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`disclose or render obvious the “videos” aspect of these claim limitations, Petitioner
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`argues that “the claims do not require facial recognition.” Reply, 18. Patent Owner
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`agrees. Petitioner put facial recognition at issue when it argued A3UM applies facial
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`recognition to videos to associate them with people. See Petition, 50-52; EX1003,
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`¶¶178-182.
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`Specifically, Petitioner argued that because the “Name” button is active in a
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`screenshot including a video, A3UM must have performed facial recognition on the
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`video. Petition, 50-52. For example, Petitioner argued that Aperture must have
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`detected a face in the video below because the “Name” button was active.
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`Petition, 51; EX1005, 23, 271. As previously established, this is demonstrably
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`wrong. POR, 47-49. Indeed, Dr. Terveen confirmed that he needed to “revise” his
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`opinions on this point, which demonstrates that his opinions are not credible.
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`EX2024, 372:16-375:21. While Petitioner brushes its erroneous theory aside as
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`“irrelevant,” Petitioner’s reliance on alternative theories does not change any of this.
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`Reply, 18.
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`In an attempt to address these shortcomings, Petitioner argues that Dr. Surati
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`“admitted that A3UM teaches manually associating names with digital files (which
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`can include video and sound files).” Reply, 19. Petitioner’s citations to the transcript
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`do not support this contention. EX1089, 281:3-15, 282:5-10. Dr. Surati explained
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`that manually associating an image with a person is only possible “if there is a face
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`that’s recognized in the box,” i.e., if a face is detected in the image. EX1089, 291:6-
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`21. Additionally, A3UM’s manual process is limited to “image[s].” EX1005, 422.
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`Petitioner’s argument that the word “image” in A3UM encompasses videos (Reply,
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`18; Petition, 49) is specious because A3UM explicitly defines “image” in a way that
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`excludes videos and consistently uses the words “image” and “videos” separately
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`(POR, 46; EX1005, 1111). In sum, A3UM does not disclose allowing a user to use
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`the “Name” feature with videos. EX2025, ¶151; EX2024, 363:2-7; POR, 46.
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`The Petition’s only obviousness contention involved modifying A3UM to
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`detect faces in videos. Petition, 52. A POSITA would not make that modification at
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`least because (1) the evidence shows that A3UM’s facial recognition for images
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`suffered from numerous problems and (2) extending that functionality to videos
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`would exacerbate those problems. POR, 50-51. The Reply does nothing to refute the
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`first point. See Reply, 18-19. Instead, Petitioner misleadingly claims that Dr. Surati
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`admitted “using keyframes would impose the same burden as processing a photo.”
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`Reply, 19. Once again, this contention is not supported by the transcript. EX1089,
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`284:25-285:11, 281:3-15, 276:3-17, 291:6-292:15. Dr. Surati merely agreed that it
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`is possible to extract a JPEG from a video. Id., 284:25-285:11. As Dr. Surati
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`previously explained, even if keyframes are used, applying facial recognition to a
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`video would increase the processing burden exponentially and seriously degrade the
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`interface’s performance. EX2025, ¶¶172-179. For at least these reasons, a POSITA
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`would not have modified A3UM to extend its unreliable facial recognition feature
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`to videos. Id.
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`2.
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`A POSITA would not have modified A3UM with Belitz as
`Petitioner proposes
`A POSITA would not modify A3UM with Belitz as proposed by Petitioner
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`because the modification would result in redundant information being displayed.
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`POR, 53-54. Specifically, Petitioner’s modification results in two different
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`numerical labels on the interface: Belitz’s count numbers and A3UM’s location label
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`numbers. EX2024, 304:19-306:3.
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`Petition, 27 (annotated)
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`12
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`Petitioner does not dispute that a POSITA would have avoided redundancy in
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`designing user interfaces. Reply, 21; POR, 54; EX2025, ¶¶124-126; EX2022, 82,
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`288. Instead, Petitioner argues there is no redundancy because “the label provides
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`the name of the location and a (more descriptive) count of images.” Reply, 21. But
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`as argued by Petitioner, the A3UM label and the Belitz count value would have the
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`same number. EX2024, 305:8-306:3.6 Petitioner also does not explain how A3UM’s
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`location label provides a “more descriptive[] count.” Reply, 21.
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`In addition, a POSITA would not make Petitioner’s proposed modification of
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`replacing A3UM’s pins with Belitz’s thumbnails because doing so would
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`substantially obscure the underlying map and clutter the interface. POR, 54-56.
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`Petitioner does not dispute that a POSITA would avoid map obstruction and clutter
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`in designing a user interface. Reply, 20-23. Instead, Petitioner responds that the
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`claims only require two thumbnails that can be any size. Reply, 20-22. This is a red
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`herring. In Petitioner’s proposed combination, every A3UM pin is replaced with one
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`of Belitz’s thumbnails.
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`6 Similarly, because Petitioner argues the Browser below the map includes a location
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`name, the “name of the location” in the location label is redundant. Petition, 40.
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`13
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`Reply, 22; Petition, 27
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`In other words, Petitioner proposed a 1-for-1 substitution of pins for thumbnails for
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`the entire library, necessarily obscuring more of the underlying map. EX2024,
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`306:4-9.
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`Petitioner’s suggestion that the size of Belitz’s thumbnails could be modified
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`to avoid map obstruction because the claims allow for the thumbnails to be “of any
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`size on a map” is a new argument not presented in the Petition. Reply, 22; Petition,
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`24-31; 37 C.F.R. § 42.23; Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
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`F.3d 1359, 1369-70 (Fed. Cir. 2016). Indeed, Dr. Terveen “didn’t try to deal with”
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`potential thumbnail size modifications. EX2024, 307:15-308:14. In any event,
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`Petitioner fails to explain how its new thumbnail size modification would work.
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`Reply, 22. As shown below, the only apparent way to have thumbnails not obscure
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`more of the map is to make them pin-sized, seemingly eliminating any utility to
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`using a thumbnail in the first place.
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`14
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`Reply, 26 (modified)
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`The Reply also claims that Patent Owner “ignore[d]” Petitioner’s argument
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`that A3UM and Belitz describe grouping markers into fewer markers. Reply, 21. Not
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`true. The Petition did not argue that multiple A3UM pins would be combined into
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`one thumbnail – it proposed a 1-for-1 substitution. Petition, 27. Dr. Terveen did not
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`opine on grouping together the thumbnails that replace the pins. EX2024, 308:15-
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`309:3. This additional proposed modification to A3UM and Belitz is another new,
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`impermissible argument. 37 C.F.R. § 42.23; Intelligent Bio-Systems, 821 F.3d at
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`1369-70. But even if the thumbnails were consolidated to reduce obstruction of the
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`map, Dr. Surati explained that doing so still results in a loss of information, albeit in
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`a different way. EX2025, ¶139. For example, if 5 pins at 5 locations are consolidated
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`into 1 thumbnail at 1 location, the specific location information for 4 of the 5 original
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`pins (i.e., 80% of the location information) is lost for a given zoom level. Id.
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`15
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`3.
`No motivation to combine A3UM and Belitz
`Much of the Petition suggested only that the proposed A3UM-Belitz
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`combination was possible rather than why a POSITA would modify A3UM. POR,
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`55-58. In response, Petitioner argues that the proposed A3UM-Belitz combination
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`need not be
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`the “preferred” or “most desirable
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`implementation,” while
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`acknowledging that the evidence must show “a reason to modify the prior art in the
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`claimed manner.” Reply, 22-23. Indeed, Petitioner’s cited authority confirms that
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`“the prior art as a whole must ‘suggest the desirability” of the combination.” In re
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`Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). The Reply identifies only two
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`allegedly desirable aspects of Petitioner’s combination. Reply, 23.
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`Petitioner first asserts that using thumbnails instead of pins would allegedly
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`allow “users to more quickly identify the map marker they want to select.” Id. (citing
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`EX1003, ¶129). As an initial matter, this argument was not included in the Petition.
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`See Petition, 28 (citing EX1003, ¶129). In any event, neither Petitioner nor Dr.
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`Terveen explain how thumbnails would be quicker than pins. Reply, 23; EX1003,
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`¶129; 37 C.F.R. § 42.65(a).
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`Petitioner asserts secondarily that modifying A3UM “presents useful
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`information to a user.” Reply, 23. But Petitioner does not explain how thumbnails
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`would convey more “useful information” than pins. Id.; EX1003, ¶196. Indeed, this
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`new assertion is refuted by the Petition, which stated that the only difference between
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`A3UM’s pins and Belitz’s thumbnails is the “style and manner of presenting”
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`information – not the content of the information. Petition, 57; see also, id., 25
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`(arguing pins and thumbnails are functionally equivalent). If pins and thumbnails
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`only differ stylistically, neither conveys more “useful information” than the other.
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`4.
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`improperly relies on non-prior art
`Petitioner
`obviousness contentions
`Petitioner does not dispute that it is relying on Exs. 1035 and 1040, which
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`in
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`its
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`relate to Google Maps, to demonstrate that a POSITA would have a reasonable
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`expectation of success in combining A3UM and Belitz. POR, 43-44; Reply 17, 24.
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`While non-prior art can be used for some purposes in an obviousness analysis,
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`proving a reasonable expectation of success is not one of them. Yeda Research &
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`Dev. Co. v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-42 (Fed. Cir. 2018). To the
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`extent Petitioner is suggesting that the ‘228 patent’s reference to Google Maps is
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`admitted prior art (Reply, 17), reliance on alleged admitted prior art is not permitted
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`in an IPR. Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1375 (Fed. Cir. 2022).
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`For EX1035, Petitioner’s only evidence of its alleged accessibility is its
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`“2007” marking. Reply, 17. It is well-settled that this is insufficient to demonstrate
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`public accessibility. See, e.g., Victoria’s Secret Stores LLC v. Andra Grp., IPR2020-
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`00853, Paper 12 at 24-25 (PTAB Oct. 22, 2020) (noting that copyright date alone is
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`not sufficient even at the institution stage); In-Depth Geophysical, Inc. v.
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`Conocophillips Co., IPR2019-00849, Paper 14 at 10-11 (PTAB Sept. 6, 2019)
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`17
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`(finding that “vague date listed on a website page” does not establish public
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`accessibility).
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`For EX1040, Petitioner’s only evidence of its alleged accessibility is an
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`Inter
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