Trials@uspto.gov
`571-272-7822
`
`
`Paper 12
`Entered: May 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 12
`Entered: May 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.” or
`“Petition”) to institute an inter partes review of claims 1–19 (“the
`challenged claims”) of U.S. Patent No. 10,621,228 B2 (Ex. 1001, “the ’228
`patent”). MemoryWeb, LLC (“Patent Owner”) timely filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). With our authorization, Petitioner
`filed a Reply (Paper 10, “Pet. Reply” or “Reply”) and Patent Owner filed a
`Sur-Reply (Paper 11, “PO Sur-Reply” or “Sur-Reply”).
`An inter partes review may not be instituted “unless . . . there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`consideration of the entirety of the current record, we determine that
`Petitioner has shown a reasonable likelihood that it would prevail in showing
`the unpatentability of at least one of the challenged claims. Accordingly, we
`institute an inter partes review.
`B. Real Party-in-Interest
`Petitioner identifies itself as the only real party-in-interest. Pet. 2;
`Paper 6, 1. Patent Owner identifies itself as the only real party in interest.
`Paper 3, 2; Paper 7, 2.
`C. Related Matters
`The parties state that the ’228 patent is related to the following U.S.
`Patents: 9,098,531 (“the ’531 Patent”); 9,552,376 (“the ’376 Patent”);
`10,423,658 (“the ’658 Patent”); 11,017,020 (“the ’020 Patent”); 11,163,823
`(“the ’823 Patent”), and 11,170,042 (“the ‘042 Patent”). Paper 6, 1; Paper 7,
`
`2
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`2. The parties further state that the ’228 patent is related to pending U.S.
`Patent Application 17/459,933. Paper 6, 1; Paper 7, 2–3.
`The parties identify the following as related district court matters:
`MemoryWeb, LLC v. Apple Inc., No. 6:21-cv-00531 (W.D. Tex.);
`MemoryWeb, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-
`00411 (W.D. Tex.); and MyHeritage (USA), Inc. et. al. v. MemoryWeb, LLC,
`No. 1:21-cv-02666 (N.D. Ill.). Paper 6, 1–2; Paper 7, 2.
`The parties identify that the ’228 patent is the subject of the following
`additional petitions: Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-
`01413; and Samsung Electronics Co., Ltd., v. MemoryWeb, LLC, IPR2022-
`00222. Paper 6, 1; Paper 7, 2–3. The parties also identify that the related
`patents are the subject of the following petitions: Apple Inc. v. MemoryWeb,
`LLC, IPR2022-00032 (’376 patent); Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00033 (’658 patent); Apple Inc. v. MemoryWeb, LLC, IPR2022-
`00111 (‘020 patent); and Apple Inc. v. MemoryWeb, LLC, PGR2022-00006
`(‘020 patent). Paper 6, 1; Paper 7, 2–3.
`D. The ’228 Patent (Ex. 1001)
`The ’228 patent is titled “Method and Apparatus for Managing Digital
`Files” and “relates generally to the management of digital files and, more
`particularly, to a computer-implemented system and method for managing
`and using digital files such as digital photographs.” Ex. 1001, code (54),
`1:21–24. The ’228 patent describes a need for “a medium that allows people
`to organize, view, preserve and share [digital] files with all the memory
`details captured, connected and vivified via an interactive interface” and
`“allow digital files, including documents, photos, videos and audio, to tell a
`full story now, and for generations to come.” Id. at 1:60–67. The ’228
`
`3
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`patent provides a solution in the form of “a computer-implemented method
`of associating digital tags with digital files” and “a web-based digital file
`storage system [that] comprises a digital file repository for storing and
`retrieving digital files.” Id. at 2:3–6, 2:21–25, 2:40–45.
`The ’228 patent describes details of an “Application” (also called the
`“MemoryWeb Application”), which is an online program that can (i) import,
`associate and embed digital tags to digital files, (ii) view, sort, annotate, and
`share digital files from various Application Views, and (iii) store the digital
`files through an interactive storage system through a user relationship table.
`Id. at 8:63–9:16. The ’228 patent explains that the Application may be
`accessible “over various user interfaces” including those of “smart phones
`(e.g., iPhones), Personal Digital Assistants (PDAs) and Tablets (e.g.,
`iPads).” Id. at 9:18–22. The Application provides views (i.e., “Application
`Views”) that utilize the Application’s ability to associate digital tags to
`digital files and display them in customized views such as Uploads,
`Collections, Slideshow, Location, Timeline, Family Tree, People Profile,
`and Recipes. Id. at 9:23–28. The views enable a user to display the user’s
`digital media files and their tagged attributes. Id. at 5:57–60. The views
`include, inter alia: a location view that “identifies within an interactive map
`([e.g.,] Google map . . .), where digital files were taken or originated . . .
`[and] can also provide additional outputs such as a journey route that
`identifies the specific locations for an event or trip that can be customized by
`users”; a people view that “shows thumbnail photos of all the people in the
`system that can be clicked in for a people profile view”; and a people profile
`view that “shows a profile picture of an individual, their birth/death
`information, family relationships, overview (comments) on the person, as
`
`4
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`well as links to other views that contain that individual in the system.” Id. at
`6:13–30. Some views provided by the ’228 patent’s Application are shown
`in Figures 32 and 34, reproduced below. Id. at 3:61–66, 28:22–24.
`Figure 32, below, illustrates a People Application View (at indicator
`1400) and a People Profile Application View (at indicator 1430). Id. at
`18:37–40, 22:59–61.
`
`
`
`In Figure 32, above, People Application View 1400 is used to display
`all the people that were created within a user’s Application. Id. at 22:60–
`23:11. This view can be seen by selecting “People” (illustrated at menu item
`
`
`
`5
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`1401) from any of the Application Views within the Application, which then
`provides a list of people in various sort orders. Id. For each person, a
`thumbnail of their face along with their name is depicted, as shown in Figure
`32, where Jon Smith (item 1403) and JC Jon Smith (item 1404) along with
`some other people are illustrated. Id. Also, at the top of every Application
`View within the Application, the user can select to apply filters (Apply
`Filters at item 1451). Id. In the People Profile Application View in Figure
`32, a single profile (item 1430) is illustrated. Id. at 23:11–49. The profile
`shows: the individual’s name (displayed at the top of the page, at 1431)
`along with their nicknames (at 1433); when they were born (at 1434); their
`family members (at 1435, 1436, 1437); their biography (at 1438); and a
`profile photo (at 1439). Id. For each person, the system can allow the user
`to quickly see all the tags that are associated to a person. Id.
`In Figure 32, the system illustrates that there are four photos (1452)
`associated with that person and illustrates thumbnails of each of the four
`photos (1446). Id. These thumbnails can be selected and then the user will
`be taken to the slideshow view for that digital file. Id. If the user selects
`Locations (1443), all of the locations that the specific person has been
`tagged within will be displayed. Id. If the user selects Family Relationships
`(1444), the people that the user is associated with will be displayed in a
`family chart or tree. Id. If the user selects any of the Application Dot-Tags
`such as the individual’s mother Jane Smith (Doe) (1449), the application
`will take the user to an individual people profile view of Jane Smith (Doe).
`Id. An Application Dot-Tag is a structure that enables navigation of the data
`in the Application, helps the user organize their digital files with key
`components of related information such as people, date of file, location, and
`
`6
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`collection, and indicates the manner in which a Digital Tag is displayed
`within the Application using pill-shaped indicators that can reside near a
`file’s image or overlaid on the file’s image. Id. at 9:40–67. The ’228 patent
`explains that the “Application Dot-Tag is more than just text” because
`“Memory-Web Application Dot-Tags act as mini search engines that allow
`the user to see how many matching files there are to that MemoryWeb Tag
`and if selected will take the user to the corresponding Application View to
`illustrate the linked search results of that Application Dot-Tag.” Id.
`Figure 34 of the ’228 patent, reproduced below, illustrates Location
`Views. Id. at 21:36–38, 24:16–17.
`
`Figure 34, above, shows Location Application View 1600 that
`displays all the locations that were created within the user’s Application; for
`each location, a thumbnail of a digital file from that location (e.g., Wrigley
`
`
`
`7
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`Field 1601); a view of a single location (1630), with the individual location
`name displayed at the top of the page (1632); thumbnails of each digital file
`within the specific collection, such as a photo (1633) taken at Wrigley Field
`(1634) that is associated with the location Wrigley Field. Id. at 24:16–54.
`The ’228 patent provides that “the Application can interact with a Third
`Party Geographical Mapping System to pull maps that correspond to the
`exact location of Digital Files that have a location tag.” Id. at 32:10–13.
`Figure 41 of the ’228 patent, reproduced below, is a screenshot of an
`Application Dot-Tag Filter in a Location Application View. Id. at 4:7–8.
`
`
`Figure 41, above, illustrates filtering results for an Application Dot-
`Tag filter in a Location Application View (at item 0870), providing a world
`map view that illustrates all the locations that are associated with one or
`
`
`
`8
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`more digital files for a user. Id. at 29:40–64, 32:15–18. As shown in Figure
`41, digital files are displayed within an interactive map (e.g., a Google map).
`Id. at 29:40–64. Individual or groups of digital files are illustrated as photo
`thumbnails (at indicators 0874 and 0875) on the map, and the user can select
`the thumbnail to see all the digital files with the same location, or the user
`can use the interactive map and narrow the map view by using a zoom
`in/zoom out bar (0876) or by selecting the map. Id. If an advanced filter is
`applied in the Locations Application View, a filter (e.g., of “JC Smith” at
`item 0872) is illustrated, and only the digital files that contain the person JC
`Smith are illustrated with their geographic location on the map. Id.
`E. Challenged Claims
`Petitioner challenges claims 1–19 of the ’228 patent. Pet. 3. Claim 1
`is the only independent claim of the ’228 patent. Claim 1 is set out below.
`1. A method comprising:
`responsive to a first input, causing a map view to be displayed on
`an interface, the map view including:
`(i) an interactive map;
`(ii) a first location selectable thumbnail image at a first
`location on the interactive map; and
`(iii) a second location selectable thumbnail image at a
`second location on the interactive map;
`responsive to an input that is indicative of a selection of the first
`location selectable thumbnail image, causing a first location view
`to be displayed on the interface, the first location view including
`(i) a first location name associated with the first location
`and
`(ii) a representation of at least a portion of one digital file
`in a first set of digital files, each of the digital files in the
`first set of digital files being produced from outputs of one
`
`9
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`or more digital imaging devices, the first set of digital files
`including digital files associated with the first location;
`responsive to an input that is indicative of a selection of the
`second location selectable thumbnail image, causing a second
`location view to be displayed on the interface, the second
`location view including
`(i) a second location name associated with the second
`location and
`(ii) a representation of at least a portion of one digital file
`in a second set of digital files, each of the digital files in
`the second set of digital files being produced from outputs
`of the one or more digital imaging devices, the second set
`of digital files including digital files associated with the
`second location; and
`responsive to a second input that is subsequent to the first input,
`causing a people view to be displayed on the interface, the people
`view including:
`(i) a first person selectable thumbnail image including a
`representation of a face of a first person, the first person
`being associated with a third set of digital files including
`digital photographs and videos;
`(ii) a first name associated with the first person, the first
`name being displayed adjacent to the first person
`selectable thumbnail image;
`(iii) a second person selectable thumbnail image including
`a representation of a face of a second person, the second
`person being associated with a fourth set of digital files
`including digital photographs and videos; and
`(iv) a second name associated with the second person, the
`second name being displayed adjacent to the second
`person selectable thumbnail image.
`Ex. 1001, 35:32–36:11 (format adjusted).
`
`10
`
`
`
`F. Evidence
`Reference or Declaration
`Aperture 3 User Manual, Apple Inc.
`(“A3UM”)
`U.S. Publication No. 2010/0058212
`A1 (“Belitz”)
`Declaration of Loren Terveen, Ph.D.
`(“Terveen Dec.”)
`Declaration of Rajeev Surati, Ph.D.
`(“Surati Dec.”)
`Declaration of Matthew Birdsell
`(“Birdsell Dec.”)
`
`
`G. Asserted Grounds of Unpatentability
`Claim(s) Challenged
` 35 U.S.C. §
`1–19
`103
`
`March 4, 2010
`
`Oct. 30, 2021
`
`Feb. 23, 2022
`
`Oct. 29, 2021
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`Date
`2009
`
`Exhibit No.
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1003
`
`Ex. 2001
`
`Ex. 1020
`
`Reference(s)
`A3UM, Belitz
`
`
`Pet. 3.
`
`II. ANALYSIS
`
`A. Discretionary Denial of Institution under 35 U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny
`a petition that presents the same or substantially the same art or arguments as
`were previously presented to the Office. “[T]he art and arguments must
`have been previously presented to the Office during proceedings pertaining
`to the challenged patent.” Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB
`Feb. 13, 2020) (precedential) (“Advanced Bionics”). Advanced Bionics
`provides examples of “proceedings pertaining to the challenged patent.”
`
`11
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`“The proceedings in which the art was previously presented include, for
`example: examination of the underlying patent application, reexamination of
`the challenged patent, a reissue application for the challenged patent, and
`AIA post-grant proceedings involving the challenged patent.” Id. at 8.
`To evaluate arguments for discretionary denial under § 325(d), the
`Board uses a two-part framework that considers:
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and (2)
`if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims. If a
`condition in the first part of the framework is satisfied and the
`petitioner fails to make a showing of material error, the Director
`generally will exercise discretion not to institute inter partes
`review.
`Advanced Bionics, Paper 6 at 8–9 (footnote omitted).
`Patent Owner asserts that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny institution because “the references in the Petition
`are substantially the same as references that were considered during
`prosecution of the ‘228 patent.” Prelim. Resp. 12. Patent Owner also argues
`that “[t]he alleged obviousness combination in the Petition is substantially
`the same as the Kang-Jaffe-Hibino-Tanaka [combination] already considered
`by the Office . . . during prosecution of the ’426 application.” Id. at 22.1
`
`
`1 According to Patent Owner, the ’426 application is an earlier, related
`application to U.S. Application No. 16/578,238 (“the ’238 application”), the
`application that matured into the ’228 patent at issue in this proceeding. See
`Prelim. Resp. 5. Based on information provided by Patent Owner, the ’426
`application appears to be the great-grandparent of the ’238 application. Id.
`12
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`Petitioner asserts, and Patent Owner does not dispute, that “[t]he prior
`art used in the Petition—A3UM and Belitz—was not before the Examiner
`during examination of the ’228 patent nor its related patents.” Pet. 85; see
`Prelim. Resp. 11–25. Thus, there does not appear to be any dispute that the
`prior art asserted by Petitioner in this proceeding, A3UM (Ex. 1005) and
`Belitz (Ex. 1006), was not previously presented to the Office during
`prosecution of the ’228 patent or its related patents.
`Patent Owner asserts, however, that other prior art, namely Hoffman
`(Ex. 2004), Bhatt (Ex. 2005), and Jaffe (Ex. 2003)2 was disclosed on an IDS
`during prosecution of the ’228 patent (Prelim. Resp. 13, 18, 20) and that
`Kang (Ex. 1002), Jaffe (Ex. 2003), Hibino (Ex. 1041), and Tanaka
`(Ex. 1042) were considered by the Office during prosecution of the ’426
`great-grandparent application (Prelim. Resp. 14, 21, 22–24).
`Patent Owner argues that A3UM is substantially the same art as
`Hoffman, Kang, and Bhatt because A3UM allegedly describes certain
`features that Patent Owner argues are also described by these references.
`For example, Patent Owner argues that “the Places and Faces features in
`A3UM are substantially the same as the iPhone Places and Faces features
`shown in Hoffman.” Id. at 13 (citing Ex. 1002, 397). Patent Owner argues
`that Hoffman describes “a map ‘with red pins marking locations with
`photos,’” and “a Faces feature ‘that sorts your images by occasion and by
`individual’” that are the “same features that the Petition relies on from
`
`
`2 Patent Owner’s citation to Jaffee (Ex. 2003) being cited on page 389 of an
`IDS (Ex. 1002) appears incorrect. See Prelim. Resp. 20. Patent Owner’s
`citation appears to be to a Jaffe patent, U.S. Patent No. 9,507,778, not the
`Jaffee publication Patent Owner references (Ex. 2003).
`13
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`A3UM.” Prelim. Resp. 13–14 (citing Ex. 2001 ¶ 76; Ex. 2004, 32; Pet. 18–
`19, 32–34). But even if we accept Patent Owner’s assertion that Hoffman
`describes “a map ‘with red pins marking locations with photos,’” and “a
`Faces feature ‘that sorts your images by occasion and by individual,’”
`describing these particular features does not make A3UM “substantially the
`same art” as Hoffman.
`Consideration of the A3UM and Hoffman references shows how
`different they are from each other. A3UM is Apple’s Aperture3 User
`Manual, which was prepared and distributed by Apple with Apple’s
`Aperture 3 photo editing and management software product and made
`available online through the Apple.com website. Ex. 1020 ¶¶ 5, 8. Apple
`described the new Aperture 3 product as photography software with over
`200 new features, including “[o]rganization with Faces and Places,” that
`provided “powerful yet easy-to-use tools to refine images, showcase your
`photography, and manage massive libraries.” Ex. 1021, 7. Apple described
`the Aperture 3 User Manual as a “comprehensive document [that] describes
`the Aperture interface, commands, and menus and gives step-by-step
`instructions for creating Aperture libraries and for accomplishing specific
`tasks.” Ex. 1005, 3.
`The Aperture 3 User Manual included sections such as “Creating
`Projects” (Ex. 1005, 9), “Viewing Projects in Projects View” (id. at 10),
`“Importing Images with the Import Browser” (id. at 12), “Viewing and
`Working with Images” (id. at 15–17), “Assigning Keywords to Images” (id.
`at 26–27), “Organizing Photos of People with Faces” (id. at 28–29),
`“Locating Your Images on a Map with Places” (id. at 30), and “Publishing
`
`14
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`Images in Web Galleries and Web Journals” (id. at 38–39), among other
`topics.
`In contrast, Hoffman is a third-party publication titled, Create Great
`iPhone Photos: Apps, Tips, Tricks, and Effects. Ex. 2004. Hoffman
`includes sections such as “iPhone Camera Essentials,” “Customize Your
`iPhone Camera,” “Photoshop in Your Pocket,” “Filters, Effects, and
`Recipes,” “Fun and Offbeat Effects,” “Snap—and Share,” and “Your
`Photoblog,” among others. Ex. 2004, 5–9.
`Moreover, the features identified by Patent Owner in Hoffman, such
`as a map with red pins marking locations of photos, or a Faces feature that
`sorts images by occasion or individual, do not encompass particular features
`described in A3UM that Petitioner applies against independent claim 1 as
`part of Petitioner’s obviousness challenge, such as A3UM’s description of a
`user associating a video file with a person in the same manner as is done for
`digital photographs. See, e.g., Pet. 50–52. This difference between A3UM
`and Hoffman is significant because independent claim 1 requires a second
`person selectable thumbnail image . . . associated with a fourth set of digital
`files including digital photographs and videos. This distinction between
`A3UM and Hoffman, as well as the other material differences between the
`two references, demonstrates that A3UM and Hoffman are not “substantially
`the same art” for purposes of a 325(d) analysis.
`Similarly, none of the features identified by Patent Owner as being
`described in Kang or Bhatt, such as searching and organizing photos based
`on people or faces (Kang), grouping images based on different locations
`(Kang), or maps with multiple pins indicating the location of images (Bhatt),
`address A3UM’s description of a user associating a video file with a person
`
`15
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`in the same manner as is done for digital photographs that Petitioner applies
`against independent claim 1 in its obviousness challenge. See, e.g., Pet. 50–
`52; Prelim. Resp. 14–20. This distinction between A3UM, Kang, and Bhatt,
`as well as the other material differences between the references,
`demonstrates that A3UM, Kang, and Bhatt are not “substantially the same
`art” for purposes of 325(d).
`Patent Owner’s attempt to equate Jaffe and Belitz is also ineffective.
`Patent Owner asserts that the Office already considered art that is
`substantially the same as Belitz, arguing that Jaffee “is substantially the
`same as Belitz in the way that Petitioner relies on Belitz,” because each has
`figures that “have a first image and a second image (associated with digital
`files) at different locations on a map.” Prelim. Resp. 22 (citing Ex. 2001 ¶¶
`94, 98).
`However, even if we accept Patent Owner’s assertion that Jaffe shows
`figures that “have a first image and a second image (associated with digital
`files) at different locations on a map,” describing these particular features
`does not make Belitz “substantially the same art” as Jaffe.
`Consideration of the Jaffee and Belitz references shows how different
`they are from each other. For example, Jaffe (Ex. 2003) is a publication
`entitled, Generating Summaries and Visualization for Large Collections of
`Geo-Referenced Photographs, that describes a
`summary algorithm [] based on spatial patterns in photo sets, as
`well as textual-topical patterns and user (photographer) identity
`cues. The algorithm can be expanded to support social, temporal,
`and other factors. The summary can thus be biased by the content
`of the query, the user making the query, and the context in which
`the query is made.
`Ex. 2003, Abstr.
`
`16
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`In contrast, Belitz is a U.S. Patent Application describing a user
`interface with a controller to display a map and at least one marked location
`associated with a graphical object, where the controller determines whether
`the first graphical object will overlap with a second graphical object, and if
`so, to create a third graphical object or a graphical group object associated
`with the first and second graphical objects. Ex. 1006 ¶ 6.
`As Patent Owner points out, Jaffe at the time was being considered as
`part of a combination with Kang and Hibino during prosecution of the ’426
`application, the ’228 patent’s great-grandparent application, against the then
`pending claims, whereas here, Belitz is being considered in combination
`with A3UM against current claims 1–19.
`Moreover, the features Patent Owner identifies in Jaffe, figures that
`“have a first image and a second image (associated with digital files) at
`different locations on a map,” do not address particular features, such as
`displaying location names as disclosed in Belitz, that Petitioner applies
`against independent claim 1 as part of Petitioner’s obviousness challenge.
`For example, Petitioner argues that “Belitz discloses displaying location
`names in addition to location-associated pictures when a graphical object is
`selected.” Pet. 41 (citing Ex. 1006 ¶ 60). “Thus,” argues Petitioner,
`“selection of a thumbnail would cause display of (i) a callout with at least
`the location name and (ii) selected thumbnails of digital files matching the
`location in the Browser pane.” Pet. 41 (citing Ex. 1005, 436–438; Ex. 1003
`¶ 157). This distinction between Belitz and Jaffe, as well as the other
`material differences between the two references, demonstrates that Belitz
`and Jaffe are not “substantially the same art” for purposes of 325(d).
`
`17
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`Finally, Patent Owner argues that “The alleged obviousness
`combination in the Petition is substantially the same as the Kang-Jaffe-
`Hibino-Tanaka [combination] already considered by the Office.” Prelim.
`Resp. 22. Patent Owner argues that
`[t]he examiner proposed modifying Kang (which as discussed
`above organizes photos by people and locations) to include an
`interactive map with a first thumbnail at a first location on the
`map and a second thumbnail at a second location on the map in
`view Jaffe and Hibino. Ex. 1016 at 368-383, 435-437. Similarly,
`Petitioner is proposing to modify A3UM to include an interactive
`map with a first thumbnail at a first location on the map and a
`second thumbnail at a second location on the map in view of
`Belitz. See Petition at 24-31.
`Prelim. Resp. 23–24.
`We disagree. As discussed above, Petitioner presents a combination
`of A3UM and Belitz, art that was not previously presented to the Office, that
`is different from art previously considered by the Office, namely Kang,
`Jaffe, Hibino, and Tanaka. Moreover, Petitioner’s presentation of A3UM
`and Belitz encompasses certain features, such as a user associating a video
`file with a person in the same manner as is done for digital photographs and
`displaying location names in addition to location-associated pictures when a
`graphical object is selected, that were not apparent in Kang, Jaffe, Hibino,
`and Tanaka.
`In our view, neither the art, nor the arguments, presented by the
`Petition are the same, or substantially the same, as the art or the arguments
`presented during examination of the ’228 patent or the ’426 application, in
`part because the Petition asserts different prior art against different claims
`than the art presented during these prior examinations.
`
`18
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`For these reasons, we find that the Petition does not present the same
`or substantially the same art or arguments that previously were presented to
`the Office. Because we find that neither of the conditions of Part One of the
`Advanced Bionics framework is satisfied, we do not proceed to Part Two of
`the framework. Accordingly, we decline to exercise discretion to deny
`institution of inter partes review under 35 U.S.C. § 325(d).
`B. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`(1966). “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`In determining the level of skill in the art, we consider the type of
`problems encountered in the art, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`technology, and the educational level of active workers in the field. Custom
`Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`Petitioner contends that a “person of ordinary skill in the art in the
`field of the ’228 patent in 2011 (or 2014) would have had (1) at least a
`bachelor’s degree in computer science, computer engineering, or electrical
`engineering, and (2) at least one year of experience designing graphical user
`interfaces for applications such as photo management systems.” Pet. 9
`(citing Ex. 1003 ¶¶ 41–43). At this stage in the proceeding, Patent Owner
`does not contest Petitioner’s position, but “reserves the right to challenge
`
`19
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`Petitioner’s proposed level of skill in the art and offer its own proposal if
`institution is granted.” Prelim. Resp. 25.
`Based on the record presented, including our review of the ’228 patent
`and the types of problems and solutions described in the patent and the cited
`prior art, we adopt Petitioner’s assessment of the level of ordinary skill in
`the art and apply it for purposes of this Decision. To the extent the parties
`disagree as to the level of ordinary skill in the art, the parties may address
`the issue in their papers during trial and explain, for example, how a
`different definition would impact the obviousness analysis of the challenged
`claims.
`C. Claim Construction
`Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction
`standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). Under Phillips, claim terms are generally given their
`ordinary and customary meaning as would be understood by one with
`ordinary skill in the art in the context of the specification, the prosecution
`history, other claims, and even extrinsic evidence including expert and
`inventor testimony, dictionaries, and learned treatises, although extrinsic
`evidence is less significant than the intrinsic record. Phillips, 415 F.3d at
`1312–17. Usually, the specification is dispositive, and it is the single best
`guide to the meaning of a disputed term. Id. at 1315.
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`20
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`Petitioner states that “the Board need not expressly construe the
`claims.” Pet. 13. Patent owner “agrees that the claims can be afforded their
`plain and ordinary meaning and that no construction is necessary.” Prelim.
`Resp. 25.
`For purposes of this Decision, we determine that no claim terms
`requi
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
