Paper No.
`
`
`
`
`
`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 SUR-REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 SUR-REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00031
`
` Patent Owner’s Preliminary Sur-Reply
`
`Petitioner’s Reply (Paper 10) only serves to confirm that the Aperture 3 User
`
`Manual (“A3UM,” Ex. 1005) does not qualify as a printed publication. First,
`
`Petitioner has not shown that a skilled artisan exercising reasonable diligence could
`
`have located the hidden HTML files on an Aperture 3 installation DVD. Second,
`
`Petitioner cites no authority to support its assertion that functionality in an installed
`
`software product can be considered a printed publication. Third, the Reply does not
`
`address many of the issues raised in the POPR regarding A3UM’s alleged
`
`availability on the web. The Board should reject Petitioner’s attempts to rewrite its
`
`Petition and expert declaration in its Reply.
`
`I.
`
`The Hidden HTML Files on the Installation DVD Were Not Publicly
`Accessible
`Petitioner failed to demonstrate that a skilled artisan “exercising reasonable
`
`diligence can locate” the hidden A3UM HTML files on an Aperture 3 installation
`
`DVD. Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed.
`
`Cir. 2018). Petitioner does not dispute that it would take at least 12 steps to locate
`
`the HTML files on the DVD, and never explains why a skilled artisan would have
`
`any reason to (i) use a Terminal command to view hidden files or (ii) locally copy
`
`and decompress one of the normally-hidden sub-folders. Pet. at 13-15; Reply at 4-
`
`5; Paper 8 (“POPR”) at 28-31; Ex. 2001 at ¶¶ 106-112. Petitioner also does not
`
`argue that the installation DVD was searchable. POPR at 31; Reply at 4-5.
`
`Petitioner complains that Patent Owner “has not and cannot cite any evidence
`1
`
`
`
`
`
`IPR2022-00031
`
` Patent Owner’s Preliminary Sur-Reply
`
`or case law to support its assertion that taking ‘numerous steps’” . . . is beyond the
`
`‘reasonable diligence’ of a skilled and interested artisan.” Reply at 5. Tellingly,
`
`Petitioner cannot cite any case law finding a reference to be a printed publication
`
`under analogous facts. See id. at 4-5. Nor does Petitioner dispute that the Board’s
`
`decision in Cisco Sys., Inc. v. Centripetal Networks, Inc., IPR2018-01436, Paper 40
`
`(PTAB Jan. 23, 2020) involved markedly different facts. Id.; POPR at 35-38.
`
`Petitioner also does not dispute the Aperture 3 license prohibits copying and
`
`redistributing the HTML files in a manner akin to a confidentiality obligation. POPR
`
`at 35-38.
`
`Petitioner’s assertion that the POPR does not cite “any evidence” or case law
`
`regarding accessibility ignores the fact that Patent Owner’s expert, Dr. Surati,
`
`followed Dr. Terveen’s convoluted process for accessing the hidden HTML files and
`
`concluded that a skilled artisan exercising reasonable diligence would not have done
`
`so. Reply at 5; POPR at 29-30; Ex. 2001 at ¶¶ 106-112.
`
`Petitioner also mischaracterizes the POPR by responding to an argument
`
`Patent Owner did not make about “unrelated HTML files.” Reply at 2. Petitioner
`
`misses the point entirely. Whether the HTML files are related is irrelevant because
`
`a skilled artisan exercising reasonable diligence would not locate them in the first
`
`place. POPR at 28-31.
`
`Petitioner also repeatedly mischaracterizes its own evidence. For example,
`
`
`
`2
`
`
`
`IPR2022-00031
`
` Patent Owner’s Preliminary Sur-Reply
`
`Petitioner argues that its expert, Dr. Terveen, testified that “skilled artisans knew
`
`that user-focused support materials are distributed to consumers as HTML files used
`
`by the Apple Help functionality.” Reply at 5 (citing Ex. 1003 at ¶ 93). Dr. Terveen
`
`did not say this. Ex. 1003 at ¶ 93. Petitioner also argues that it “provided evidence
`
`that the Aperture 3 User Manual was known to exist by such skilled artisans in early
`
`2010.” Reply at 5 (citing Pet. at 15; Ex. 1051 at 7; Ex. 1003 at ¶ 98). None of these
`
`citations support Petitioner’s assertion. Petitioner’s attempts to rewrite its Petition
`
`and expert declaration are improper.
`
`Petitioner’s mischaracterizations of the record and failure to distinguish the
`
`authority cited in the POPR constitute tacit admissions that the Petition does not set
`
`forth sufficient evidence of A3UM’s public accessibility for purposes of institution.
`
`Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB
`
`Dec. 20, 2019) (precedential).
`
`II.
`
`Petitioner Improperly Relies on Use/Sales of the Aperture 3 Product To
`Argue A3UM is a Printed Publication
`Even if A3UM were technically accessible after installing Aperture 3 on a
`
`Mac computer, it still does not qualify as a printed publication. POPR at 31-35.
`
`Petitioner admits that for this theory, it is relying on “the built-in Apple Help
`
`functionality within the Aperture software when executing,” but claims it is not
`
`relying on “the functionality or availability of the Aperture 3 software per se.” Reply
`
`at 3. This is a distinction without a difference.
`3
`
`
`
`
`
`IPR2022-00031
`
` Patent Owner’s Preliminary Sur-Reply
`
`Petitioner has not proffered any authority suggesting that functionality or files
`
`within an executing software product can be properly considered a printed
`
`publication. Pet. at 13-17; Reply at 3-4. Petitioner appears to acknowledge relying
`
`on the “Places” or “Faces” functionality within Aperture 3, for example, would be
`
`improper. Reply at 3. However, the “built-in Apple Help functionality” and the
`
`underlying files on the Mac computer are, like “Places” and “Faces,” part of the
`
`software product. See Ex. 1003 at ¶¶ 85-88. Petitioner is drawing an arbitrary
`
`distinction between (i) files that cause A3UM to be displayed in a help window or
`
`web browser and (ii) other files that cause other Aperture 3 features to be displayed.
`
`Congress limited the scope of IPRs to patents and printed publications to avoid
`
`the kind of fact-intensive analyses that would be required for public use and sales
`
`grounds. POPR at 34-35 (citing Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed.
`
`Cir. 2022)). Petitioner asserts that its arguments premised on installing Aperture 3
`
`do not run afoul of this principle because printed publication analyses also
`
`“necessarily entail such fact finding.” Reply at 4. Petitioner misses the point.
`
`Whether Aperture 3 was sold or publicly used is part and parcel with Petitioner’s
`
`argument that a reasonably diligent artisan could have located A3UM within an
`
`installed copy of Aperture 3. The Petition expressly relies on allegations that “Apple
`
`offered for sale, sold and distributed” Aperture 3 and “many individuals had installed
`
`Aperture 3 . . . onto their computers.” Pet. at 14-15. IPRs were not intended to
`
`
`
`4
`
`
`
`IPR2022-00031
`
`address these issues.
`
` Patent Owner’s Preliminary Sur-Reply
`
`III. Petitioner Has Not Shown That A3UM Was Accessible on the Web
`Petitioner’s failure to show that A3UM was publicly accessible on the web is
`
`underscored by its failure to address many of the issues identified in the Preliminary
`
`Response concerning Petitioner’s website. POPR at 39-44. There is no evidence
`
`that Ex. 1005 corresponds to the HTML files that were allegedly available on
`
`apple.com in 2010. Id. at 39; Ex. 1003 at ¶ 102. Petitioner does not dispute that are
`
`inconsistencies between Ex. 1005, which bears 2009 copyright dates, and the limited
`
`Internet Archive Wayback Machine printouts, which bear 2011 copyright dates. Id.
`
`at 39-40; Ex. 1005; Ex. 2009. Nor does Petitioner distinguish the authority cited by
`
`Patent Owner finding that web-based materials were not publicly accessible. POPR
`
`at 41-44.
`
`Petitioner’s new-cited authority addressing multiple web pages
`
`is
`
`distinguishable. See Reply at 2-3. The Board has held that “web pages do not
`
`constitute a single reference” when there are “different archival dates.” DocsCorp
`
`LLC v. Litera Techs., LLC, IPR2016-00542, 2016 WL 5632041, at *4 (PTAB Aug.
`
`4, 2016). Similarly, Petitioner cannot show that the hundreds of alleged A3UM web
`
`pages correspond to Ex. 1005 as of the relevant date. Ex. 1003 at ¶ 102.
`
`For the reasons set forth herein and the POPR, the Board should deny
`
`institution.
`
`
`
`5
`
`
`
`IPR2022-00031
`
` Patent Owner’s Preliminary Sur-Reply
`
`Respectfully submitted,
`
`Dated: April 25, 2022
`
`
`
`
`
`By:
`
` /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
`
`
`
`6
`
`
`
`IPR2022-00031
`
` Patent Owner’s Preliminary Sur-Reply
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Preliminary Sur-Reply was served on April 25, 2022, upon the following parties via
`
`electronic service:
`
`
`
`Jeffrey P. Kushan
`Samuel A. Dillon
`Kyle S. Smith
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`samuel.dillon@sidley.com
`kyle.smith@sidley.com
`SidleyAppleMemoryWebIPRs@sidley.com
`
`
`Counsel for Petitioner, Apple, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/s/ Jennifer Hayes
`Lead Counsel for Patent Owner
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
