Paper No.
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`
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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 PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`IPR2021-01413
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`
`
`TABLE OF CONTENTS
`
`
`
`Page(s)
`
`
`Introduction ...................................................................................................... 1 
`Overview of the ‘228 Patent ............................................................................ 2 
`A. 
`The ‘228 patent ...................................................................................... 2 
`B. 
`Relevant Prosecution History ................................................................ 5 
`1. 
`The Related ‘426 Application ..................................................... 5 
`2. 
`The ‘228 Patent ........................................................................... 7 
`Summary of References Identified by Petitioner ............................................ 8 
`A.  A3UM (Ex. 1005).................................................................................. 8 
`B. 
`Belitz (Ex. 1006) ................................................................................. 10 
`  The Board Should Deny Institution Pursuant to 35 U.S.C. § 325(d) ............ 11 
`A. 
`Substantially The Same Art Was Already Considered ....................... 12 
`1. 
`The Office Already Considered Art That Is Substantially the
`Same as A3UM ......................................................................... 12 
`The Office Already Considered Art That Is Substantially the
`Same as Belitz ........................................................................... 20 
`The Office Already Substantially the Same Combination ....... 22 
`3. 
`Petitioner Did Not Show How the Office Allegedly Erred ................ 24 
`B. 
`Level of Ordinary Skill in the Art ................................................................. 25 
`  Claim Construction ........................................................................................ 25 
`  Petitioner Has Not Established a Reasonable Likelihood of Success ........... 26 
`A. 
`Petitioner Has Not Established That the Applied References
`Qualify as Printed Publication Prior Art ............................................. 26 
`1. 
`A3UM (Ex. 1005) ..................................................................... 27 
`2. 
`Other Non-Prior Art .................................................................. 44 
`Independent Claim 1 ........................................................................... 47 
`1. 
`Petitioner fails to show that A3UM discloses or renders obvious
`a “third/[fourth] set of digital files including digital photographs
`
` 
`
` 
`
` 
`
` 
`
`2. 
`
`B. 
`
`i
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`

`

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`3. 
`
`2. 
`
`and videos” ................................................................................ 47 
`Petitioner fails to meet its burden to show a POSITA would
`combine A3UM and Belitz ....................................................... 54 
`Petitioner does not identify the alleged “first[/second] location
`view in A3UM-Belitz with specificity ...................................... 62 
`Dependent Claims ............................................................................... 65 
`C. 
`  Conclusion ..................................................................................................... 65 
`
`
`
`
`ii
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`

`

`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765, 772 (Fed. Cir. 2018) .............................................................. 27, 31
`
`
`Advanced Bionics, LLC v. Med-EL Elktromedizinische Gerate GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) .................................... 11, 24, 25
`
`
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`
`876 F.3d 1350 (Fed. Cir. 2017) .......................................................................... 54
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ......................................... 12, 24
`
`Blue Calypso, LLC v. Groupon, Inc.,
`
`815 F.3d 1331, 1348 (Fed. Cir. 2016) ................................................................ 26
`
`Callaway Golf Co. v. Acushnet Co.,
`
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 65
`
`Capsugel Belgium NV v. Innercap Techs., Inc.,
`
`IPR2013-00331, Paper 9 at 15 (PTAB Dec. 9, 2013) ........................................ 33
`
`Cisco Sys., Inc. v. Centripetal Networks, Inc.,
`
`IPR2018-01436, Paper 40 (PTAB Jan. 23, 2020) .................................. 35, 36, 38
`
`Dominion Dealer Sols., LLC v. AutoAlert, Inc.,
`
`IPR2014-00684, Paper 9 at 8 (PTAB Oct. 6, 2014) ........................................... 45
`
`Eli Lilly & Co. v. Teva Pharms. Int’l GmbH,
`
`8 F.4th 1331, 1344 (Fed. Cir. 2021) ................................................................... 45
`
`Ex Parte Stuart A. Nelson,
` No. 2020-004978, 2020 WL 8186425, at *15 (PTAB Dec. 31, 2020)) ............. 35
`
`iii
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`

`

`
`
`
`
`
`Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-01039, Paper 29 at 9 (PTAB Dec. 20, 2019) ............................... 27, 37
`
`In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986) .................................................. 27
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d. 1342, 1369 (Fed. Cir. 2012) ......................................................... 57, 61
`
`Molins PLC v. Textron, Inc.,
`48 F.3d 1172 (Fed. Cir. 1995) ............................................................................ 12
`
`
`Nautilus, Inc. v. Icon Health Fitness Inc.,
`IPR2017-01363, Paper 33 at 15-21 (PTAB Nov. 28, 2018) ........................ 42, 43
`
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 25
`
`
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 60
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348, 1368 (Fed. Cir. 2013) ................................................................ 62
`
`
`Quad Envtl. Techs. Corp. v. Union Sanitary Dist.,
`946 F.2d 870, 875 (Fed. Cir. 1991) .............................................................. 34, 35
`
`
`Qualcomm Inc. v. Apple Inc.,
`24 F.4th 1367, 2022 WL 288013 (Fed. Cir. 2022) .......................... 34, 35, 44, 46
`
`
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`929 F.3d 1363, 1369 (Fed. Cir. 2019) .........................................................passim
`
`
`Sandoz Inc. v. Abbvie Biotechnology Ltd.,
`IPR2018-000002, Paper 13 at 12-13 (May 3, 2018) .......................................... 39
`
`
`Supercell Oy v. GREE, Inc.,
`IPR2021-00501, Paper at 6 (PTAB Aug. 17, 2021) ........................................... 33
`
`
`
`iv
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`

`

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`
`
`
`Yeda Research & Dev. Co. v. Mylan Pharm. Inc.,
`906 F.3d 1031, 1041 (Fed. Cir. 2018) ................................................... 44, 45, 58
`
`
`Federal Statutes
`35 U.S.C. § 102 .................................................................................................. 26, 34
`35 U.S.C. 301(a)(1) .................................................................................................. 34
`35 U.S.C. § 311(b) ....................................................................................... 26, 33, 34
`35 U.S.C. § 325(d) ......................................................................................... 1, 11, 24
`Regulations
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.65(a) ................................................................................................. 29
`Other Authorities
`MPEP § 904 ....................................................................................................... 12, 24 
`
`
`
`
`v
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`

`

`
`
`Exhibit
`No.
`
`LISTING OF EXHIBITS
`
`Description
`
`2001
`
`Declaration of Rajeev Surati, Ph.D.
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`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, Ex. 1005 (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
`
`i
`
`

`

`
`
`Exhibit
`No.
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`Description
`
`RESERVED
`
`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)
`
`2018
`
`Declaration of Angelo J. Christopher
`
`ii
`
`

`

`
`
`MemoryWeb, LLC (“Patent Owner”) submits this preliminary response under
`
`37 C.F.R. § 42.107 to the Petition for Inter Partes Review (“Petition”) of U.S. Patent
`
`No. 10,621,228 (“the ‘228 patent”), filed by Apple, Inc. (“Petitioner” or “Apple”).
`
`
`
`Introduction
`Patent Owner respectfully requests that the Board deny institution. First, the
`
`Board should exercise its discretion to deny institution pursuant to 35 U.S.C. §
`
`325(d) because the references in the Petition, and the way they are combined, is
`
`substantially the same as a combination of references that was considered during
`
`prosecution of one of the ‘228 patent’s parent applications. Petitioner does not
`
`adequately explain why the Office allegedly erred in allowing the challenged claims
`
`despite the fact that substantially the same combination was already considered by
`
`the Office.
`
`Second, Petitioner has not demonstrated a reasonable likelihood of success on
`
`the merits. Petitioner’s challenge relies on the Aperture 3 software product user
`
`manual (“A3UM”), but Petitioner failed to meet its burden to demonstrate that
`
`A3UM qualifies as printed publication. Petitioner’s arguments also fail on the merits
`
`at least because (1) Petitioner’s speculation that A3UM used facial recognition on
`
`videos is incorrect, and it would not be obvious to modify A3UM to do so and (2)
`
`Petitioner fails to show that a person of ordinary skill in the art would have been
`
`motivated to combine A3UM and Belitz in the way Petitioner suggests.
`
`1
`
`

`

`
`
` Overview of the ‘228 Patent
`A. The ‘228 patent
`The ’228 patent is directed to inventive methods organizing and displaying
`
`digital files, such as digital photographs and videos. Ex. 2001 at ¶ 47. To this end,
`
`the ‘228 patent discloses methods “allow[ing] people to organize, view, preserve
`
`these files with all the memory details captured, connected and vivified via an
`
`interactive interface.” Ex. 1001 at 1:61-65.
`
`For example, referring to FIG. 41, the ‘228 patent discloses a map view
`
`including “an interactive map.” Ex. 1001 at 29:41-45; Ex. 2001 at ¶ 48.
`
`Ex. 1001 at FIG. 41
`
`
`
`In the map view, “individual or groups of Digital Files are illustrated as photo
`
`2
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`

`

`
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`thumbnails (see indicators 0874 and 0875)) on the map.” Ex. 1001 at 29:48-55; Ex.
`
`2001 at ¶ 49. The geographic map is interactive in that the user can, for example,
`
`“narrow the map view by either using the Zoom in/Zoom out bar (0876) on the left
`
`or simply selecting the map.” Ex. 1001 at 29:52-55, FIG. 41; Ex. 2001 at ¶ 49.
`
`The ‘228 patent also discloses that in the map view (FIG. 41), “the user can
`
`select the thumbnail to see all the Digital Files with the same location (as seen FIG.
`
`34 (indicator 1630)).” Ex. 1001 at 29:48-55; Ex. 2001 at ¶ 49.
`
`Ex. 1001 at FIG. 34
`
`
`
`3
`
`

`

`
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`In the “Single Location Application View” shown in FIG. 34, “a single location
`
`(1630) is illustrated,” which includes “[t]he individual location name” and
`
`“[t]humbnails of each Digital File within the specific collection.” Ex. 1001 at 24:22-
`
`28; Ex. 2001 at ¶ 50. Thus, the map view and location view allow users to efficiently
`
`and intuitively locate and display digital files associated with a particular location.
`
`Id.
`
`The ‘228 patent additionally discloses a people view for organizing digital
`
`files. Ex. 2001 at ¶ 51. For example, referring to FIG. 32, a people view 1400 is
`
`shown including for “each person, a thumbnail of their face along with their name is
`
`depicted.” Ex. 1001 at 22:59-23:4.
`
`
`
`Ex. 1001 at FIG. 32
`
`4
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`

`

`
`
`The “Single People Profile Application View” includes, among other things, a
`
`person’s name 1431, a profile photo 1440, and photos 1452 associated with that
`
`person. Id. at 23:12-49; Ex. 2001 at ¶ 52.
`
`B. Relevant Prosecution History
`The ‘228 patent was filed as U.S. Application No. 16/578,238, which is a
`
`continuation of U.S. Application No. 16/536,300 (now U.S. Patent No. 11,163,823),
`
`which is a continuation of U.S. Application No. 15/375,927 (now U.S. Patent No.
`
`10,423,658) (Ex.2005), which in turn is a continuation of U.S. Application No.
`
`14/193,426 (“the ‘426 application”) (now U.S. Patent No. 9,552,376). Ex. 1001,
`
`cover.
`
`1.
`The Related ‘426 Application
`The prosecution of the ‘426 application included four Office Actions. In one
`
`Office Action dated April 15, 2016 (“the April 2016 Office Action”), the examiner
`
`rejected pending independent claims 1 and 15 as purportedly obvious over a non-
`
`patent reference entitled “Capture, Annotate, Browse, Find, Share: Novel Interface
`
`for Personal Photo Management” by Kang et al. (“Kang,” Ex. 2002) in view of
`
`another non-patent reference entitled “Generating Summaries and Visualizations for
`
`Large Collections of GeoReferenced Photographs” by Jaffe et al. ( “Jaffe,” Ex. 2003)
`
`and Hibino (Ex. 1041). Ex. 1016 at 358-85; Ex. 2001 at ¶ 70.
`
`5
`
`

`

`
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`In the April 2016 Office Action, the examiner alleged that Kang discloses
`
`storing “a plurality of digital files . . . each of the digital files having embedded
`
`therein content data and metadata. . . the metadata including a geotag indicative of
`
`geographic coordinates where the digital photograph or image or video was taken.”
`
`Ex. 1016 at 366. The examiner also alleged that Jaffe disclosed “a representative of
`
`an interactive map . . . a first thumbnail image at a first location on the interactive
`
`map . . . [and] a second thumbnail image at a second location on the interactive map.”
`
`Id. at 367-69. Continuing, the April 2016 Office Action asserts that it would have
`
`been obvious “to modify the teachings of Kang with the teachings of Jaffe” to
`
`include, among other things, Jaffe’s interactive map and first/second thumbnail
`
`images and first/second locations on the interactive map. Id. at 369. The examiner
`
`also alleged that Hibino “discloses that the thumbnail images are user selectable,”
`
`and further that “responsive to a click or tap of the first user selectable thumbnail
`
`image” and that Hibino displays scaled replicas of associated digital photographs or
`
`images or videos. Id. at 370.
`
`In a subsequent Office Action dated June 3, 2016 (“the June 2016 Office
`
`Action”), the examiner again rejected the claims based on Kang, Jaffe, and Hibino,
`
`and further in view of Tanaka (Ex. 1042). Ex. 1016 at 433-37; Ex. 2001 at ¶ 71.
`
`The examiner again asserted that it would be obvious to modify Kang to include an
`
`interactive map, a first thumbnail image at a first location on the interactive map,
`
`6
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`

`

`
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`and a second thumbnail image at a second location on the interactive map in view of
`
`Jaffe, “with the motivation of automatically selecting a summary set of photos from
`
`a large collection of geo-referenced photographs.” Ex. 1016 at 433-435. The
`
`examiner also found that Hibino disclosed selectable thumbnails, and that it would
`
`be obvious to modify Kang/Jaffe so that the thumbnails on the map were selectable.
`
`Id. at 435-436. The examiner further applied Tanaka as disclosing count value
`
`images partially overlapping or directly connected to thumbnail images, and that it
`
`would be obvious to further modify Kang in view of Tanaka “with the motivation of
`
`sorting pictures into groups and enabling ease of operation in selecting picture data.
`
`Id. at 436-437.
`
`In the notice of allowance, the examiner acknowledged that “many systems
`
`are well known to the prior art that enable organizing, tagging, navigating, and
`
`searching collections of pictures, including pictures which have been geotagged and
`
`which may be displayed on an interactive map.” Ex. 1016 at 516. However, none
`
`of the art teach or suggest “systems such as those claimed,” which “allow[]
`
`navigation between the various enumerated views . . . wherein each view includes
`
`each of the enumerated elements.” Id.; Ex. 2001 at ¶ 72.
`
`2.
`The ‘228 Patent
`No Office Actions were issued during prosecution of the ‘228 patent. See Ex.
`
`1002. During an examiner-initiated telephone interview conducted on September
`
`7
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`

`

`
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`20, 2019, the examiner and applicant discussed claim amendments to place the
`
`application in condition for allowance. Id. at 366. The claims were amended in the
`
`notice of allowance via an examiner’s amendment. Id. at 350-66. The examiner
`
`cited Hibino and found that it “discloses similar limitations of people view in figure
`
`15 and paragraph 0052.” Id. at 361. The examiner also characterized Tanaka as
`
`disclosing “similar features of grouping pictures according to location information
`
`in figure 3, paragraphs 58, 60.” Id. at 362.
`
` Summary of References Identified by Petitioner
`Petitioner relies on at least two references: A3UM (Ex. 1005) and Belitz (Ex.
`
`1006). These reference are discussed below.
`
`A. A3UM (Ex. 1005)
`A3UM is a compilation of several hundred HTML files that comprise the user
`
`manual for Apple Inc.’s Aperture 3 software product. Ex. 1005; Petition at 13. In
`
`relevant part, A3UM describes a Faces feature and a Places feature in the Aperture
`
`3 software product. See, e.g., Ex. 1005 at 28-30; Ex. 2001 at ¶ 62.
`
`In the Places view, a push pin on a map in the view pane marks the location
`
`where an image was taken, and the selected image is shown in the browser pane.
`
`See, e.g., Ex. 1005 at 436; Ex. 2001 at ¶ 63.
`
`8
`
`

`

`
`
`Ex. 1005 at 436
`
`
`
`The Faces view organizes images based on people in the image. Ex. 1005 at
`
`28-29; Ex. 2001 at ¶ 64. A3UM says that it scans all of the images in the library to
`
`detect faces. Ex. 1005 at 418.
`
`
`
`Ex. 1005 at 29
`
`9
`
`

`

`
`
`However, Petitioner’s exhibits indicate that the facial recognition process underlying
`
`the Aperture 3 Faces feature was not successful in practice. Ex. 2001 at ¶ 65. One
`
`exhibit reports that “Faces plainly doesn’t work.” Ex. 1044 at 1. Another exhibit
`
`states that Faces “failed to recognise actual faces in many clear, topside photos.” Ex.
`
`1045 at 7.
`
`B.
`Belitz (Ex. 1006)
`Belitz is directed to a user interface for displaying “special locations” on a
`
`map. Ex. 1006 at Title, ¶¶ 2, 4, 19, 71; Ex. 2001 at ¶¶ 66-67. Belitz states that “it
`
`would be useful to be able to a present a user with an overview of associated images
`
`to special locations which enables [the] user to clearly see the associations. Ex. 1006
`
`at ¶ 4. Figs. 4(a) – (b) are screenshots of a device. Id. at ¶ 36.
`
`
`
`Ex. 1006 at Figs. 4a-b
`
`The screenshots above have a graphical object 410 that indicates a location 408 on
`
`the map 409. Ex. 1006 at ¶ 51.
`
`10
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`

`

`
`
` The Board Should Deny Institution Pursuant to 35 U.S.C. § 325(d)
`The Board has discretion to deny institution when “the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” 35 U.S.C.
`
`§ 325(d). In exercising its discretion under § 325(d), the Board applies a two-part
`
`test: (1) whether the same or substantially the same art was previously presented or
`
`whether the same or substantially the same arguments were presented to the Office;
`
`and (2) if yes to either part of prong one, the Board considers “whether the petitioner
`
`has demonstrated that the Office erred in a manner material to the patentability of
`
`challenged claims.” Advanced Bionics, LLC v. Med-EL Elktromedizinische Gerate
`
`GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential). Relevant
`
`factors for denying institution under § 325(d) include:
`
`(a) the similarities and material differences between the asserted art and
`the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art evaluated
`during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior art
`or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the Examiner
`erred in its evaluation of the asserted prior art; and
`
`11
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`

`

`
`
`(f) the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or arguments.
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at
`
`17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). As
`
`discussed below, the references in the Petition are substantially the same as
`
`references that were considered during prosecution of the ‘228 patent.
`
`A.
`Substantially The Same Art Was Already Considered
`Petitioner argues that “[n]either A3UM or Belitz was considered during
`
`examination, nor any reference like them.” Petition at 84; see also id. at 85 (“no
`
`comparable art was considered”). Petitioner is wrong: as set forth below,
`
`substantially the same art was considered during prosecution of the ‘228 patent,
`
`including references that were applied in office actions during prosecution of a
`
`parent application. See Molins PLC v. Textron, Inc., 48 F.3d 1172, 1184 (Fed. Cir.
`
`1995) (“[a]bsent proof to the contrary, we assume that the examiner did consider
`
`[initialed] references”); MPEP § 904 (“In all continuing applications, the parent
`
`applications must be reviewed by the examiner for pertinent prior art. The examiner
`
`must consider prior art which was cited and considered in the parent application”).
`
`1.
`
`The Office Already Considered Art That Is Substantially
`the Same as A3UM
`As discussed below, the Petition relies on the “Places” and “Faces” features
`
`in A3UM. See Petition at 18-20. These screens are reproduced below:
`
`12
`
`

`

`
`
`
`
`Ex. 1005 at 437 (Places)
`
`
`
`
`The Places and Faces features in A3UM are substantially the same as disclosures in
`
`Ex. 1005 at 29 (Faces)
`
`as several references that were considered during prosecution. Ex. 2001 at ¶¶ 68-
`
`105.
`
`
`
`First, the Places and Faces features in A3UM are substantially the same as the
`
`iPhone Places and Faces features shown in Hoffman, which was cited in an IDS and
`
`considered during prosecution of the ‘228 patent. Ex. 1002 at 397. Just like A3UM,
`
`Hoffman describes a map “with red pins marking locations with photos.” Ex. 2004
`
`at 32; Ex. 2001 at ¶ 76.
`
`13
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`

`

`
`
`
`
`
`Ex. 2004 at 32 (iPhone Places)
`
`
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`Ex. 1005 at 437 (Aperture 3 Places)
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`Hoffman states that when a user can “[t]ap a pin” to “see how many images are
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`tagged for that location” and then “[t]ap the arrow in the blue circle to view those
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`images.” Ex. 2004 at 32. Hoffman also describes a Faces feature “that sorts your
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`images by occasion and by individual” using “face detection technology to find
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`people in your photos.” Ex. 2004 at 32. These are same features that the Petition
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`relies on from A3UM. See Petition at 18-19, 32-34; Ex. 2001 at ¶ 76.
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`Second, the Places and Faces features in A3UM are substantially the same as
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`features in Kang, which was cited in an IDS (Ex. 1002 at 396) and applied in
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`rejections during prosecution of the related ‘426 application (see Ex. 1016 at 358-
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`85). Like the Faces feature in A3UM, Kang describes organizing images based on
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`people. Ex. 2002 at 18-19; Ex. 2001 at ¶¶ 78-80.
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`Ex. 2002 at Fig. 9(b) (annotated)
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`Kang also describes searching photos based on “the people in the photos” and
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`displaying “how many people (and who) appear in the searched photos.” Ex. 2002
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`at 19-20; Ex. 2001 at ¶ 79. Figure 3 of Kang illustrates “clusters of identified
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`people.” Ex. 2002 at 8; Ex. 2001 at ¶ 80.
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`Ex. 2002 at 9 (Figure 3)
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`These descriptions in Kang are substantially the same as the Faces feature in A3UM
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`in that they both organize photos based on people or faces. Ex. 2001 at ¶ 81.
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`Ex. 1005 at 29 (excerpted)
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`Ex. 2002 at Fig. 9(b) (excerpted)
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`Kang also describes grouping images based on location similar to the Places
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`feature in A3UM. Ex. 2002 at 13-14; Ex. 2001 at ¶¶ 82-84. For example, Figure 5(b)
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`shows images grouped based on different locations (e.g., Florence, Sorrento, Tivoli,
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`Pompeii, Capri).
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`Ex. 2002 at Fig. 5(b)
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`Within Figure 5(b), Kang shows the number of photos at each location (for example,
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`10 photo(s) in Florence). Ex. 2002 at Fig. 5(b); Ex. 2001 at ¶ 83. During prosecution
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`of the related ‘426 application, the examiner found that Kang included count values
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`proximate to thumbnail images corresponding to a set of files having a geotag. Ex.
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`1016 at 367.
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`Figure 9(b) also shows images organized based on a “U.S. map” showing
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`which states photos were taken in. Ex. 2002 at 18-19; Ex. 2001 at ¶ 84.
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`Ex. 2002 at Fig. 9(b) (annotated)
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`Kang is substantially similar to the Places feature in A3UM in that Kang provides
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`for organizing images based on location. Ex. 2001 at ¶¶ 85-86.
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`Third, Bhatt—which is assigned to Petitioner—was cited and considered by
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`the examiner. Ex. 1002 at 392. Bhatt describes substantially the same features as
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`the Places view in A3UM. Ex. 2005; Ex. 2001 at ¶ 88. For example, FIG. 2
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`illustrates a location panel 200, a map 205, and an object 210 resembling a pin on
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`the map 205 where the selected image was captured. Ex. 2005 at ¶¶ 23-24.
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`18
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`Ex. 2005 at FIG. 3
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`FIGS. 4A-4C of Bhatt show maps with multiple push pins indicating the
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`locations of images. Ex. 2005 at ¶ 41; Ex. 2001 at ¶ 89.
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`As shown by the comparison below, Bhatt’s maps with push pins are substantially
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`the same as the Places feature in A3UM that Petitioner relies on. Ex. 2001 at ¶ 90.
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`Ex. 1005 at 437
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`Ex. 2005 at FIG. 4A
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`A3UM does not contain anything new that was not previously considered by
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`the Office during prosecution. Ex. 2001 at ¶ 91. Petitioner’s assertion that “no
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`comparable art [to A3UM] was considered” is simply incorrect. Petition at 85.
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`2.
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`The Office Already Considered Art That Is Substantially
`the Same as Belitz
`As discussed herein, Petitioner relies on the thumbnail images shown in Figs.
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`4a-4c of Belitz in its obviousness combination for the “first location selectable
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`thumbnail image at a first location on the interactive map” and “second location
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`selectable thumbnail image at a second location on the interactive map” claim
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`limitations. See Petition at 24-31. The Office already considered art with
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`substantially the same features.
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`Specifically, Jaffe (Ex. 2003) was cited and considered during prosecution
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`of the ‘228 patent. Ex. 1002 at 389 (showing Jaffe considered on IDS). Jaffe was
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`also applied as a secondary reference in claim rejections during prosecution of the
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`related ‘426 application. See, e.g., Ex. 1016 at 358-85, 366-370. Jaffe illustrates
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`an interactive map with a first and second thumbnail image. Ex. 2001 at ¶ 94.
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`Ex. 2003 at Fig. 1(a)
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`As discussed above, during prosecution of the ‘426 application, the examiner
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`concluded that Jaffe discloses “a representation of an interactive map . . . a first
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`thumbnail image at a first location on the interactive map . . . [and] a second
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`thumbnail image at a second location on the interactive map.” Ex. 1016 at 367-69;
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`Ex. 2001 at ¶ 95. Thus, Jaffe is substantially the same as Belitz in the way that
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`Petitioner relies on Belitz, as shown by the comparison below:
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`Ex. 1006 at Fig. 4b
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`Ex. 2003 at Fig. 1(a)
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`As shown, Fig. 4b of Belitz is substantially the same as Figure 1(a) of Jaffe because
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`these figures have a first image and a second image (associated with digital files) at
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`different locations on a map. Ex. 2001 at ¶¶ 94, 98. Likewise, the alleged Panoramio
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`and Picasa references Petitioner relies on are substantially the same as Jaffe. Id. at
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`¶¶ 96-97.
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`3.
`The Office Already Substantially the Same Combination
`The alleged obviousness combination in the Petition is substantially the same
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`as the Kang-Jaffe-Hibino-Tanaka already considered by the Office. As discussed
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`above, during prosecution of the ‘426 application, the examiner asserted in the April
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`2016 Office Action that it would be obvious to modify Kang to include an interactive
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`map with a first thumbnail at a first location and a second thumbnail at a second
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`location in view of Jaffe. Ex. 1016 at 368-69. The examiner asserted that one would
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`be motivated to do to facilitate “automatically selecting a summary set of photos
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`from a large collection of geo-referenced photographs.” Ex. 1016 at 433-435. The
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`examiner also asserted that it would be obvious in view of Hibino to modify Kang
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`and Jaffe so that responsive to a click or tap of the first/second user selectable
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`thumbnail image, a third/fourth view would be displayed that is not overlaid on the
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`interactive map and includes scaled replicas of the digital files in the first/second set
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`of digital files having the first/second geotag. Id. at 381-83.
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`In the June 2016 Office Action, the examiner again asserted that it would be
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`obvious to modify Kang in view of Jaffe and Hibino to have an interactive map with
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`selectable thumbnails. Ex. 1016 at 435-436. The examiner also asserted that it
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`would have been obvious to further modify this combination in view of Tanaka to
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`add count value images partially overlapping or directly connected to thumbnail
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`images, “with the motivation of sorting pictures into groups and enabling ease of
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`operation in selecting picture data.” Id. at 436-437.
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`The combination of A3UM and Belitz in the Petition is substantially the same
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`as the Kang, Jaffe, Hibino, and Tanaka combination discussed above. Ex. 2001 at
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`105. The examiner proposed modifying Kang (which as discussed above organizes
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`photos by people and locations) to include an interactive map with a first thumbnail
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`at a first location on the map and a second thumbnail at a second location on the map
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`in view Jaffe and Hibino. Ex. 1016 at 368-383, 435-437. Similarly, Petitioner is
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`proposing to modify A3UM to include an interactive map with a first thumbnail at a
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`23
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`first location on the map and a second thumbnail at a second location on the map in
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`view of Belitz. See Petition at 24-31.
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`B.
`Petitioner Did Not Show How the Office Allegedly Erred
`Petitioner argues that “no factors relevant to § 325(d) favor the Board
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`exercising its discretion to not institute trial” but offers no rationale or analysis of
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`the Becton factors. Petition at 85. While Petition