Filed: December 23, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
`
`––––––––––––––––––
`
`PETITIONER’S 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.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
`
`––––––––––––––––––
`
`PETITIONER’S REPLY
`
`
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`
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`
`
`IPR2022-00031
`
`Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`Introduction .................................................................................................... 1
`I.
`II. A3UM Is Prior Art......................................................................................... 1
`A.
`Patentee Responds with Implausible Theories, Not Evidence .............. 3
`B.
`Dr. Surati’s Testimony Is Not Credible ................................................ 7
`C.
`A3UM Can Be Retrieved from the Installer DVD ............................... 9
`D. A3UM Is Accessible After Installation ............................................... 13
`E.
`EX1005 Is a True and Correct Copy of A3UM .................................. 14
`F. Mr. Birdsell Is Credible ....................................................................... 16
`III. Other Prior Art Challenges ........................................................................ 16
`IV. The Challenged Claims Are Unpatentable................................................ 17
`A.
`Claim 1 ................................................................................................ 17
`1.
`A3UM Teaches Associating Names to Digital Images Without
`Facial Recognition .................................................................... 18
`A Skilled Artisan Would Have Found Using Thumbnails
`Instead of Pins to Be Obvious Based on A3UM and Belitz ..... 20
`Claims 8 and 9 ..................................................................................... 24
`B.
`Claim 15 .............................................................................................. 25
`C.
`V. CONCLUSION ............................................................................................ 28
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`2.
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`i
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`IPR2022-00031
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`Petitioner’s Reply
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`UPDATED EXHIBIT LIST
`
`Exhibit Description
`U.S. Patent No. 10,621,228
`File History of U.S. Patent No. 10,621,228
`Declaration of Dr. Loren Terveen regarding U.S. Patent No. 10,621,228
`CV of Dr. Loren Terveen
`Aperture 3 User Manual, Apple Inc. (Feb. 2010) (“A3UM”)
`U.S. Patent App. Pub. No. 2010/0058212 A1 to Belitz et al. (“Belitz”)
`U.S. Patent No. 9,612,126 to Beletski et al.
`RESERVED
`RESERVED
`U.S. Patent No. 9,098,531 (“’531 patent”)
`U.S. Patent No. 9,552,376 (“’376 patent”)
`U.S. Patent No. 10,423,658 (“’658 patent”)
`RESERVED
`U.S. Patent No. 11,017,020 (“’020 patent”)
`File History of U.S. Patent No. 9,098,531
`File History of U.S. Patent No. 9,552,376
`File History of U.S. Patent No. 10,423,658
`RESERVED
`File History of U.S. Patent No. 11,017,020
`Declaration of Matthew Birdsell
`Apple Inc., www.apple.com (various) (Archive.org: Feb. 17 to Mar. 5,
`2010)
`Standard Affidavit, Internet Archive (Oct. 8, 2021), available at
`https://archive.org/legal/affidavit.php
`
`ii
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`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
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`1022
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`IPR2022-00031
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`Petitioner’s Reply
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`No.
`1023
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`1024
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`1025
`1026
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`1027
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`1028
`1029
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`
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`Exhibit Description
`Complaint, MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-cv-531,
`Dkt. 1 (W.D. Tex. May 25, 2021).
`Affidavit of Service, MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-
`cv-531, Dkt. 9 (W.D. Tex. Jun. 11, 2021) (service as of June 10, 2021)
`RESERVED
`Joint Motion for Entry of Agreed Scheduling Order, MemoryWeb, LLC
`v. Apple, Inc., Civ. No. 6:21-cv-531, Dkt. 24 (W.D. Tex. Oct. 1, 2021)
`Plaintiff MemoryWeb, LLC’s Initial Infringement Contentions,
`MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-cv-531 (W.D. Tex.
`Sept. 24, 2021) (service only)
`U.S. Patent App. Pub. No. 2011/0074811 A1 to Hanson et al.
`Top 11 Technologies of the Decade, IEEE Spectrum, pp. 27-63 (Jan.
`2011).
`1030 Wikipedia Entry for “Photo sharing” (Archive.org: May 6, 2011),
`available at https://web.archive.org/web/20110506092919/
`http:/en.wikipedia.org/wiki/Photo_sharing
`1031 Wikipedia Entry for “Image organizer” (Archive.org: Apr. 27, 2010),
`available at https://web.archive.org/web/20100427092553/
`https:/en.wikipedia.org/wiki/Image_organizer
`Todd Bogdan, “Announcing Picasa 3.5, now with name tags, better
`geotagging and more,” The Official Google Blog (Sept. 22, 2009)
`(Archive.org: Nov. 11, 2009), available at
`https://web.archive.org/web/20091103113337/
`http://googlephotos.blogspot.com/2009/09/announcing-picasa-35-now-
`with-name-tags.html
`Stephen Shankland, “What’s the best Web site for geotagged photos?,”
`CNET (Mar. 18, 2009), available at
`https://www.cnet.com/tech/computing/whats-the-best-web-site-for-
`geotagged-photos/
`Panoramio, “Embedding a Panoramio map into your web page”
`(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328215828/
`http://www.panoramio.com/help/embedding
`iii
`
`
`1032
`
`1033
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`1034
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`
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`IPR2022-00031
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`Petitioner’s Reply
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`Exhibit Description
`Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt Publishing
`(2007)
`Exchangeable image file format for digital still cameras: Exif Version
`2.2, JEITA CP-3451 (Apr. 2002), available at
`https://www.exif.org/Exif2-2.PDF.
`Information Interchange Model Version 4, IPTC-NAA (July 1999)
`Guidelines for Handling Image Metadata v. 1.0, Metadata Working
`Group (Sept. 2008), , available at
`https://web.archive.org/web/20090206012835/
`http:/metadataworkinggroup.org/pdf/mwg_guidance.pdf.
`iPhoto ’09 Review (Archive org: May 26, 2009), available at
`https://web.archive.org/web/20090901000000*/http://www.killersites.c
`om/magazine/2009/iphoto-09-review/
`Google Code, Google Maps API Reference (Archive.org: Feb. 23,
`2010), available at:
`http://code.google.com/apis/maps/documentation/reference.html
`U.S. Patent App. Pub. No. 2009/0113350 A1 to Hibino et al.
`U.S. Patent App. Pub. No. 2006/0165380 A1 to Tanaka et al.
`Flickr, Tour: Maps (Archive.org: Feb. 9, 2010), available at
`http://www.flickr.com/tour/maps
`Devin Coldewey, Review: Aperture 3, CrunchGear (Archive.org: Mar.
`22, 2010), available at http://www.crunchgear.com/2010/03/19/review-
`aperture-3/
`Tony Wu, Using Aperture 3: Part 1 (Archive.org: Apr. 2, 2010),
`available at http://www.tonywublog.com/20100330/first-good-
`impressions-using-aperture-3.html
`Complaint for Declaratory Judgment, MyHeritage (USA), Inc. et al. v.
`MemoryWeb, LLC, Case No. 1:21-cv-02666, Dkt. 1 (N.D. Ill. May 17,
`2021)
`Apple Inc., Mac OS X v10.6.3 Update (Mar. 29, 2010) (Archive.org
`Apr. 11, 2010), available at
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`iv
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`No.
`1035
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`1036
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`1037
`1038
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`1039
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`1040
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`1041
`1042
`1043
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`1044
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`1045
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`1046
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`1047
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`IPR2022-00031
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`Petitioner’s Reply
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`Exhibit Description
`https://web.archive.org/web/20100411001846/
`https://support.apple.com/kb/dl1018.
`Apple Inc., Apple Releases Aperture 3 (Feb. 9, 2010) (Archive.org
`May 20, 2010), available at
`https://web.archive.org/web/20100520085140/
`https://www.apple.com/pr/library/2010/02/0https://www.apple.com/pr/l
`ibrary/2010/02/09aperture.html.
`U.S. Patent App. Pub. No. 2007/0030391 A1 to Kim et al.
`U.S. Patent No. 7,978,936 B1 to Casillas et al.
`Apple Inc., Exploring Aperture 3 (2010), available at
`https://manuals.info.apple.com/MANUALS/1000/ MA1522/en_US/
`Exploring_Aperture_3.pdf.
`Sept. 17, 2021 eBay Order Confirmation for “Apple Aperture 3
`Academic Software DVD With Serial Code”
`RESERVED
`RESERVED
`Apple Inc., http://documentation.apple.com /en/aperture/usermanual/
`HTML Source File (Archive.org Feb. 17, 2010), available at view-
`source:https://web.archive.org/web/20100217035925/http://documentat
`ion.apple.com/en/aperture/usermanual/
`RESERVED
`
`Scott Meyers & Mike Lee, Learn Mac OS X Snow Leopard Book
`(2009) Excerpts
`Apress.com ordering page for Learn Mac OS X Snow Leopard (Sept.
`2009) Book (Archive.org: Feb. 1, 2010), available at
`https://web.archive.org/web/20100201093806/http://apress.com/book/v
`iew/9781430219460
`Mac Dev Center – Apple Developer Webpages (Archive.org: Apr. 14,
`2010), available at
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`v
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`No.
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`1048
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`1049
`1050
`1051
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`1052
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`1053
`1054
`1055
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`1056-
`1065
`1066
`[NEW]
`1067
`[NEW]
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`1068
`[NEW]
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`IPR2022-00031
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`Petitioner’s Reply
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`Exhibit Description
`https://web.archive.org/web/20100414095727/http:/developer.apple.co
`m/mac
`Apple Inc., Mac OS X Technology Overview (Aug. 14, 2009)
`(Archive.org: Nov. 13, 2010), available at
`https://web.archive.org/web/20101113134432mp_/http://developer.app
`le.com/library/mac/documentation/MacOSX/Conceptual/OSX_Techno
`logy_Overview/OSX_Technology_Overview.pdf
`Apple Inc., Bundle Programming Guide (July 14, 2009) (Archive.org:
`May 25, 2010), available at
`https://web.archive.org/web/20100525020133/http://developer.apple.co
`m/mac/library/documentation/corefoundation/conceptual/CFBundles/In
`troduction
`Apple Inc., Resource Programming Guide (Jan. 6, 2009) (Archive.org:
`Jan. 14, 2010), available at
`https://web.archive.org/web/20100114164340/http://developer.apple.co
`m/mac/library/documentation/Cocoa/Conceptual/LoadingResources/Int
`roduction/Introduction.html
`Internet Archive Extended URLs and Corresponding Screen Shots
`
`Install Disk Screen Shots
`
`Collection of Aperture 3 Webpages (Archive.org: Mar. 16, 2010),
`Navigable from Ex. 1044, available at
`https://web.archive.org/web/20100316213353/http://www.apple.com/a
`perture/
`RESERVED
`
`Collection of Aperture 3 Webpages (Archive.org: Apr. 11, 2010),
`Navigable from Ex. 1045, available at
`https://web.archive.org/web/20100411022811/http://www.apple.com:8
`0/aperture/
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`vi
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`No.
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`1069
`[NEW]
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`1070
`[NEW]
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`1071
`[NEW]
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`1072
`[NEW]
`1073
`[NEW]
`1074
`[NEW]
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`1075
`[NEW]
`1076
`[NEW]
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`IPR2022-00031
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`Petitioner’s Reply
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`Exhibit Description
`Jason Snell, “Apple releases Aperture 3,” Macworld (Archive.org: Feb.
`11, 2010), available at
`https://web.archive.org/web/20100211033049/http://www.macworld.co
`m/article/146231/2010/02/aperture3.html
`Collection of Aperture 3 Webpages (Archive.org: Feb. 12, 2010),
`Navigable from Ex. 1077, available at
`https://web.archive.org/web/20100212221924/http://www.apple.com/a
`perture
`Panoramio, Screen Shot of “Popular photos in Google Earth”
`(Archive.org: Nov. 26, 2010), available at
`https://web.archive.org/web/20101126084240/http://www.panoramio.c
`om:80/map
`Panoramio, “Adding photos to Panoramio,” Help Webpage
`(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328220626/http://www.panoramio.c
`om/help/adding_photos
`Places View (Exhibit 1005, 30), Annotated with Arrow
`
`RESERVED
`
`Window Area Measurement Illustration, Places View (Exhibit 1005,
`30) from IPR2022-00032, Exhibit 2025
`Revealing Files on the Aperture 3 Installer DVD, Video Demonstration
`
`Screen Shot of Final Frame of the Video Demonstration in Exhibit
`1085
`Mac OS X Version 10.6.3 Screen Shot of Computer Used in the Video
`Demonstration in Exhibit 1085
`Corrected Window Area Measurement Illustration, Places View
`(Exhibit 1005, 30) from IPR2022-00032, Exhibit 2025
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`vii
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`No.
`1077
`[NEW]
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`1078
`[NEW]
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`1079
`[NEW]
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`1080
`[NEW]
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`1081
`[NEW]
`1082
`[NEW]
`1083
`[NEW]
`1084
`[NEW]
`1085
`[NEW]
`1086
`[NEW]
`1087
`[NEW]
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`IPR2022-00031
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`Petitioner’s Reply
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`Exhibit Description
`Corrected Window Area Measurement Illustration, Places View
`(Exhibit 1005, 30) from IPR2022-00032, Exhibit 2025
`Deposition of Rajeev Surati, Ph.D. (Dec. 1 & 2, 2022)
`
`Affidavit of Nathaniel E. Frank-White, Internet Archive (Dec. 12,
`2022)
`Declaration of Jeffrey P. Kushan
`
`No.
`1088
`[NEW]
`1089
`[NEW]
`1090
`[NEW]
`1091
`[NEW]
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`viii
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`IPR2022-00031
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`I.
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`Introduction
`
`Petitioner’s Reply
`
`Petitioner demonstrated that A3UM describes digital photo management
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`methods that enable users to select and view digital photos associated with a
`
`geographical location marked by an indicator on an interactive map (“Places”) and
`
`using faces of individuals in digital images (“Faces”). It also established that using
`
`a different marker on the map (a thumbnail rather than a pin) was an obvious
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`variation of A3UM based on Belitz. And it established each challenged claim was
`
`obvious over these two references.
`
`Patentee devotes almost half of its response to challenging the prior art
`
`status of A3UM. Its substantive responses ignore the claim language, the teachings
`
`of the references and many of the specific explanations in the Petition. None of
`
`those responses have any merit. The Board should find the claims unpatentable.
`
`II. A3UM Is Prior Art
`
`Facts no longer in dispute establish that, from February of 2010, skilled
`
`artisans exercising reasonable diligence could locate and retrieve A3UM (EX1005)
`
`from (i) apple.com (http://documentation.apple.com/en/aperture/usermanual/), (ii)
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`publicly distributed v3.0 Aperture 3 Installer DVDs (“Installer DVD”), and (iii)
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`local copies of Aperture 3 after installation. Petition, 14; EX1003, ¶¶69-103;
`
`EX1020, ¶¶2-4.
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`
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`1
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`IPR2022-00031
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`Petitioner’s Reply
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`First, A3UM was accessible via Apple’s website after February 9, 2010. In
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`contrast to Patentee’s theories why a skilled artisan might not have found A3UM
`
`on Apple’s website (Response, 19), Mr. Birdsell testified that at least 100,000
`
`individuals actually did access it between February and June of 2010, based on
`
`Apple analytics of “documentation.apple.com[.]” EX2026, 51:16-20, 54:6-22,
`
`55:20-56:11; also EX1020, ¶7. He also recalled loading the HTML file set that is
`
`A3UM onto a staging server on February 8, 2010, and “within a few hours after
`
`publication” on February 9, 2010, he and his team verified “the files were live and
`
`accessible to customers and that all the links worked.” EX2026, 3:19-36:12, 36:21-
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`37:25; 59:6-8; EX1020, ¶¶10-11. No evidence contradicts this testimony.
`
`Second, A3UM existed in February 2010. Witnesses from both parties
`
`testified it is located on and can be retrieved from (i) the Installer DVD and (ii) a
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`local copy of the Aperture application bundle after installation. EX1003, ¶¶77-96;
`
`EX1020, ¶¶12-16; EX2025, ¶109; EX1089, 139:20-140:1, 143:9-13. Dr. Surati
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`confirmed the Installer DVD has creation
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`modification dates establishing files on it
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`necessarily existed before February 2010.
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`EX1089, 125:3-25; EX1073, 1 (right).
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`Third, knowledge of the existence of
`
`A3UM cannot be disputed. Anyone who
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`2
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`IPR2022-00031
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`Petitioner’s Reply
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`used Aperture 3 in February 2010 could access and inspect A3UM using the
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`Aperture help window. EX1003, ¶¶86-89; EX1020, ¶12(b). The high volume of
`
`accesses of A3UM on Apple’s website confirms people were aware of A3UM
`
`starting in February 2010. Printed documentation in the Aperture 3 retail box
`
`explains the Aperture 3 user manual is on the computer after installation. EX1003,
`
`¶98; EX1051, 7, 135, 159.
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`Fourth, the Installer DVD was publicly distributed starting in February of
`
`2010. An array of evidence corroborates this, including (i) Apple’s press release
`
`(EX1048, 1), (ii) Mr. Birdsell’s recollections about its release date, his activities
`
`around that release date, and that he witnessed it for sale in Apple stores then
`
`(EX1020, ¶¶5-7; EX2026, 59:10-60:10, 62:4-21), and (iii) webpages captured
`
`between February and June 2010 reporting experiences of people using Aperture 3.
`
`EX1044, 1; EX1045, 2; EX1077, 1; EX1089, 181:14-182:11, 192:2-7, 189:10-14,
`
`170:6-13.
`
`Skilled artisans thus knew of and could retrieve A3UM starting in February
`
`2010.
`
`A.
`
`Patentee Responds with Implausible Theories, Not Evidence
`
`Patentee first claims Petitioner “fails to proffer any evidence of actual sales
`
`of the Aperture 3 product.” Response, 26-27, 37-38. But actual sales are not
`
`required (In re Klopfenstein, 380 F.3d at 1351) and Mr. Birdsell’s testimony is
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`3
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`IPR2022-00031
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`Petitioner’s Reply
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`evidence ( In re Jolley, 308 F.3d 1317, 1328 (Fed. Cir. 2002); In re Apple Inc., 979
`
`F.3d 1332, 1336 (Fed. Cir. 2020)). It also is reliable—he had clear recollections of
`
`relevant facts and his testimony is corroborated by other evidence (e.g., reports of
`
`third parties using Aperture 3 in webpages captured before June 2010). EX1044, 1;
`
`EX1045, 2; EX1077, 1; EX1089, 181:14-182:11, 192:2-7, 189:10-14, 170:6-13.
`
`Patentee also disputes cases about numbers of copies that must distributed to
`
`establish public availability. Response, 51-52. Those cases found numbers far
`
`fewer than 100,000 copies were sufficient. Petition, 14 (“Cisco Sys., Inc. v.
`
`Centripetal Networks, Inc., IPR2018-01436, Paper 40 at 23-31 (Jan. 23, 2020) (586
`
`sales sufficient); Mass. Inst.of Tech. v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir.
`
`1985) (six copies sufficient)”).
`
`Patentee also theorizes skilled persons might not have associated “Aperture”
`
`with “photo management” and/or could not find relevant Aperture 3 webpages on
`
`apple.com in 2010. Response, 18-23. But it’s expert refuted those theories,
`
`testifying: (i) skilled artisans could have found the Aperture 3 product page in 2010
`
`by searching Google for generic terms like “photo editing and management
`
`software” (EX1089, 203:22-204:24), (ii) searching for “Aperture support” would
`
`locate the Aperture support webpage on apple.com (Id., 187:12-189:5) (iii) the
`
`Aperture support page could be located with a Google search for “Aperture
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`support” (EX1089, 187:12-188:8; also EX1003, ¶100, Petition, 17), and (iv)
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`4
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`IPR2022-00031
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`Petitioner’s Reply
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`webpages before June 2010 associating “Aperture” with “photo management
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`software” would likely be found by Google searches (EX1089, 202:1-5, 203:12-21,
`
`194:4-11, 169:15-170:13, 181:14-182:11, 192:2-7, EX1048, 1; EX1077, 1;
`
`EX1044, 1; EX 1074, 1). He also confirmed some included direct links to
`
`www.apple.com/aperture. EX1089, 206:23-207:7; EX1078, 1 (below):
`
`
`
`
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`Patentee also contends navigating to the Aperture support page would be
`
`burdensome. Response, 22. It was not—Dr. Surati and Dr. Terveen testified a
`
`skilled artisan could locate A3UM on Aperture 3’s support page
`
`(www.apple.com/support/aperture) with a few clicks (EX1089, 207:8-208:5;
`
`EX1003, ¶101; EX1074, 4 (below)), precisely as Mr. Birdsell explained (EX1020,
`
`¶18; EX2026, 67:13-69:11). Dr. Surati demonstrated this at his deposition,
`
`reaching A3UM with three clicks. EX1089, 207:8-16, 186:8-13.
`
`
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`5
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`IPR2022-00031
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`Petitioner’s Reply
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`
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`M & K Holdings, Inc. v. Samsung Elecs. Co., 985 F.3d 1376, 1381-82 (Fed.
`
`Cir. 2021). And Aperture 3 webpages would be found by searching “Aperture”
`
`using apple.com’s search function. Voter Verified, Inc. v. Premier Election Sols.,
`
`Inc., 698 F.3d 1374, 1381 (Fed. Cir. 2012); Petition, 17; EX1020, ¶18; EX1003,
`
`¶100.
`
`Finally, skilled artisans would have known to look for “Aperture” on
`
`apple.com because they would have been familiar with Apple and its products,
`
`including Aperture 3, and would have known to search apple.com for Aperture
`
`support information. CloudFlare, Inc. v. Sable Networks, Inc., No. IPR2021-
`
`00909, Paper 42 at 41 (PTAB Oct. 18, 2022); EX1003, ¶100; EX1089, 188:9-16.
`
`Patentee admits the link to the Aperture 3 product webpage was present for several
`
`weeks in February 2010 (Response, 35; Petition, 14; EX1020, ¶17), which would
`6
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`IPR2022-00031
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`Petitioner’s Reply
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`have informed many, given that apple.com was “probably” one of the most visited
`
`websites on the planet then (EX1089, 188:9-16; EX1003, ¶100).
`
`B. Dr. Surati’s Testimony Is Not Credible
`
`Patentee, relying on Dr. Surati’s declaration, contends a skilled artisan could
`
`not have found or retrieved A3UM from the installer DVD or the Aperture
`
`application bundle after installation exercising with reasonable effort. Response,
`
`29. Dr. Surati’s testimony is not reliable. As his deposition shows, he was
`
`unfamiliar with how MacOS applications are organized and distributed, that their
`
`help files are typically stored in the application bundle, and how to reveal hidden
`
`files. EX1089, 405:20-406:19; EX2025, ¶106-109. And despite confirming a
`
`skilled person would have consulted Apple documentation or MacOS “how to”
`
`books if they had questions, he did not. EX1089, 44:2-14; 42:23-43:8, 36:2-11,
`
`405:20-406:8. He did not even review relevant passages in the single Apple
`
`guidance he did cite (“AHIG”). EX2025, ¶98; EX2021, 33, 55, 85; EX1089,
`
`406:13-19, 41:23-42:2, 42:23-43:8.
`
`After reviewing such documentation1, Dr. Surati confirmed it teaches:
`
`
`EX1066, 316-320; EX1069, 73, 142; EX1070, 3, 15-16, 20; EX1071, 5;
`
`1
`
`EX1089, 30:1-12, 42:23-44:14, 58:17-59:12, 78:1-79:12, 87:7-20, 95:1-13, 36:2-
`
`11.
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`
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`7
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`
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`IPR2022-00031
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`Petitioner’s Reply
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`(i) MacOS applications exist as an “application bundle” with a
`
`standardized folder structure having several standard subfolders
`
`(EX2021, 33, 55, 85; EX1089, 57:2-17, 59:3-12 42:23-43:8; also
`
`EX1003 ¶93);
`
`(ii)
`
`the standard “Resources” subfolder contains various files used by the
`
`application other than executable code (EX2021, 85; EX1089, 59:13-
`
`23);
`
`(iii)
`
`the “Resources” subfolder is where help content is found that
`
`“typically consists of a set of HTML files” and HTML files in the
`
`application bundle can be opened “using an external application, such
`
`as … Safari” (EX1071, 5-6; EX1089, 97:9-13, 98:5-11; also EX1003,
`
`¶¶93-94);
`
`(iv) MacOS application bundles are distributed to users in installer
`
`packages on disk images (EX1066, 316-320; EX1069, 73, 142;
`
`EX2021, 86-88);
`
`(v) when installer packages are double clicked, they launch the Installer
`
`program that copies the application bundle and related files to a user’s
`
`computer (EX1069, 142; EX1089, 76:7-16, 54:21-55:6); and
`
`
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`8
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`
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`IPR2022-00031
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`Petitioner’s Reply
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`(vi)
`
`the contents of installer packages and application bundles can be
`
`inspected using a “Show Contents” command. (EX1069, 142;
`
`EX1070, 3-4; EX1089, 80:5-15, 86:16-23).
`
`Thus, a skilled artisan who took even the most basic steps to familiarize
`
`himself with how MacOS applications are organized and distributed would have
`
`known where to look for HTML help files (e.g., A3UM) in the Aperture 3
`
`application bundle (i.e., in the “Resources” folder) and how to retrieve them from
`
`(i) the Installer DVD and (ii) after installation, the local copy of the Aperture 3
`
`application bundle. EX1003, ¶93; EX2025, ¶109; EX1089, 44:2-14, 42:23-43:8,
`
`36:2-11, 407:20-408:8.
`
`Indeed, at his deposition, Dr. Surati analogized locating A3UM within the
`
`Installer DVD to finding a book in a library. EX1089, 407:8-19.
`
`C. A3UM Can Be Retrieved from the Installer DVD
`
`A skilled artisan asked to investigate what was on the v3.0 Aperture 3
`
`Installer Disk would start by inserting it into a Macintosh. When Dr. Surati did
`
`that, he reported seeing the window below (EX2025, ¶¶103-105, EX2001, ¶108):
`
`
`
`
`
`9
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`
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`IPR2022-00031
`
`Petitioner’s Reply
`
`The artisan would expect a MacOS Installer DVD to contain installer
`
`packages (files ending with “.pkg” or “.mpkg”). EX1066, 316; EX1089, 131:23-
`
`132:10. Not seeing any, she might inspect the “Install Aperture file,” which reveals
`
`it is an alias to a hidden meta-installation package file called “Aperture.mpkg”.
`
`EX1089, 127:3-8; EX1073, 3 (below).
`
`
`
`The artisan would know Unix (EX1089, 16:4-14) and that MacOS is based
`
`on Unix (EX1089, 71:23-72:8), so if she did not how to show hidden files in
`
`MacOS, she could display them in the Terminal by typing “ls -l -a”. That
`
`command lists hidden files and directories even if MacOS is not showing hidden
`
`files. EX1069, 112; EX1089, 72:21-24, 73:18-74:4, 108:18-21; EX1073, 6
`
`(below); EX1084; EX1085.
`
`
`
`10
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`
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`IPR2022-00031
`
`Petitioner’s Reply
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`
`
`The artisan also could lookup how to show hidden files in MacOS, which
`
`would take ~10 minutes. EX1066, 400; EX1089, 135:16-21, 136:24-137:3.
`
`Dr. Surati testified the artisan also could have identified which of the ten
`
`installer packages on the Installer DVD contained the Aperture 3 application
`
`bundle by its name and properties: it has the filename “aperture.pkg” and a
`
`sufficient size. EX1089, 141:25-142:20; EX1073, 5 (below):
`
`
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`11
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`
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`IPR2022-00031
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`Petitioner’s Reply
`
`
`
`The artisan also would know to inspect installer package contents— right-
`
`clicking and selecting “Show Package Contents.” EX1089, 86:16-87:5, 100:17-
`
`101:2; EX1003, ¶79. From there, she would need only a couple steps to locate,
`
`copy and decompress the Unix gz file containing the Aperture application bundle
`
`(i.e., “Archive.pax.gz”), as Dr. Terveen demonstrated and Dr. Surati confirmed
`
`EX1003, ¶¶79-80; EX2025, ¶109 EX1089, 64:6-65:2.
`
`The artisan would expect an application's help files in HTML format would
`
`be in the Resources subfolder of the application bundle and could be opened with a
`
`web browser. EX1070, 15-16; EX1071, 5-6; EX1089, 89:10-14, 97:9-13, 98:5-11;
`
`EX1003, ¶¶80-83, 93. Consistent with that, Dr. Terveen reported that A3UM was
`
`
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`12
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`
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`IPR2022-00031
`
`Petitioner’s Reply
`
`in the “usermanual” subfolder within the Resources subfolder and its contents
`
`could be viewed with a web browser. EX1003, ¶¶81, 90-91.
`
`
`
`D. A3UM Is Accessible After Installation
`
`Patentee can’t dispute that installing Aperture 3 from the v3.0 Aperture
`
`Installer DVD is trivial or that it copies A3UM to the user’s computer. EX1003,
`
`¶¶ 83-85, 91-98; EX1020, ¶¶12, 14; EX2026, 25:19-24. Dr. Surati confirmed this.
`
`EX2025, ¶117. So Petitioner argues instead that accessing it on the hard drive after
`
`installation would impose an “unreasonable” burden. Response, 33-35.
`
`
`
`13
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`
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`IPR2022-00031
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`Petitioner’s Reply
`
`Patentee also contends A3UM is not a publication but a software
`
`component. Response, 52. But as both experts and the Apple guidelines confirm,
`
`the A3UM HTML files in the Aperture 3 application bundle can be viewed with a
`
`Safari web browser without Aperture 3 running.2 EX1003, ¶94; EX1089, 27:4-7,
`
`98:5-99:10; EX1071, 5; EX2023, 80:2-81:6; EX2026, 71:11-72:8.
`
`E.
`
`EX1005 Is a True and Correct Copy of A3UM
`
`Patentee contends “it is impossible to know if Ex. 1005 accurately represents
`
`what was available on [apple.com] in 2010” without evidence that A3UM was
`
`archived before June 2010. Response, 37. That is incorrect.
`
`First, Patentee has not disputed that EX1005 is a true and correct copy of the
`
`A3UM HTML file set on the v3.0 Aperture Installer DVD. The “provenance” of
`
`A3UM is also clear— the footer reports the path to each HTML file used to render
`
`each page, and they are all in the “usermanual” subfolder in the “Resources”
`
`subfolder of a local copy (i.e,. “file:///”) of the Aperture 3 application bundle.
`
`
`Ex parte Nelson (Response, 41) is distinguishable. That petitioner only
`
`2
`
`relied on accessibility of the software. Ex parte Nelson, No. 2020-004978, 2020
`
`WL 8186425, at *15-16 (PTAB Dec. 31, 2020).
`
`
`
`14
`
`
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`IPR2022-00031
`
`Petitioner’s Reply
`
`
`
`EX1005; EX1003, ¶81. See EX1003, ¶73; EX2024, 252:13-15 (explaining
`
`EX1005 “was produced from the HTML files themselves, not by going through
`
`Aperture’s Help system”). Dr. Surati confirmed he could retrieve the A3UM
`
`HTML file set from the Installer DVD as Dr. Terveen did. EX1089, 139:20-140:1;
`
`EX2025, ¶117; EX1003, ¶¶80-81.
`
`Second, Dr. Surati confirmed that all the files on the Installer DVD existed
`
`by January 21, 2010 and could not be modified after that date. EX1089, 125:3-25;
`
`EX1073, 1.
`
`Third, Mr. Birdsell testified that the same A3UM HTML file set was (i)
`
`packaged for distribution on the Installer DVD and (ii) loaded on apple.com.
`
`EX2026, 40:15-41:10, 41:17-42:12 (explaining they were “one-for-one copies.”);
`
`also EX1020, ¶4.
`
`Thus because EX1005 was produced from HTML files on the v3.0 Aperture
`
`Installer DVD that existed before February 2010, and because that HTML file set
`
`is “one-for-one” identical to the one accessible from the Aperture support page
`
`(i.e., apple.com/aperture/support webpage), EX1005 was publicly accessible from
`
`the apple.com website and from the Installer DVD.
`
`
`
`15
`
`
`
`IPR2022-00031
`
`Petitioner’s Reply
`
`The only “evidence” Patentee identifies in response is a screen capture of
`
`A3UM from after June 2010 displaying a different copyright date.3 Response, 39-
`
`40. That is irrelevant—it is not EX1005. EX2026, 41:17-42:12. Also, Patentee
`
`does not identify any substantive inconsistencies between the EX1021 table of
`
`contents and the EX1005 manual.
`
`F. Mr. Birdsell Is Credible
`
`Patentee criticizes Mr. Birdsell’s testimony as based on recollections and
`
`being from an Apple employee. Response, 41-43. But witnesses ordinarily testify
`
`from their recollections, and Patentee had ample opportunity to prove bias or
`
`defective recollections and failed to do so.
`
`Mr. Birdsell’s recollections are also corroborated by other evidence. Jolley,
`
`308 F.3d 1328, Apple, 979 F.3d 1336; EX1020, ¶13 (A3UM in application bundle
`
`structure); EX1003, ¶¶70, 102, 103; EX1089, 104:6-15; EX1020, ¶¶5-7, 14-16;
`
`EX2026, 59:10-60:9, 62:4-21..
`
`III. Other Prior Art Challenges
`
`None of Patentee’s other prior art challenges have merit. Response, 43-45;
`
`EX1033, 1; EX1034, 1; EX1035, Cover-3; EX1040, 1.
`
`
`3 Source code of the page shows the copyright date is a dynamic variable set by
`
`Archive.org not a fixed value set by Apple. EX1055, 10; see also EX1003, ¶103.
`
`
`
`16
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`
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`IPR2022-00031
`
`Petitioner’s Reply
`
`First, the dates of EX1034 and EX1040 are consistent with Internet Archive
`
`URL standards, about which Dr. Surati testified extensively. EX1089, 17:14-18:19;
`
`48:7-10, 49:18-21; 169:15-170:13.
`
`Second, EX1033 and EX1035 bear dates of 2009 and 2007.
`
`Third, the ‘228 Patent references Google Maps, confirming a skilled artisan
`
`would be familiar with Google Maps API. See EX1001, Figs. 5, 41; EX1089,
`
`221:23-222:19.
`
`Fourth, the Board found a sufficient basis for combining A3UM and Belitz
`
`without relying on any of these exhibits (e.g., referencing Dr. Terveen’s use of
`
`EX1033 (Picasa) only to illustrate result of combination, Paper 12 at 50 (citing
`
`EX1003, ¶¶126, 129)).
`
`
`
`Finally, even if not prior art, “the Board can rely on evidence other than just
`
`prior art” for some purposes. Yeda Rsch. & Dev. Co. v. Mylan Pharms. Inc., 906
`
`F.3d 1031, 1041 (Fed. Cir. 2018).
`
`IV. The Challenged Claims Are Unpatentable
`A. Claim 1
`
`The Petition established that A3UM in view of Belitz renders obvious a
`
`method meeting every element of claim 1. Petition, 31-55 (citing EX1003, ¶¶ 167-
`
`185). In response, Patentee advances two arguments.
`
`
`
`17
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`
`
`IPR2022-00031
`
`Petitioner’s Reply
`
`The first is a red herring—that the supposedly deficient facial recognition
`
`capabilities described in A3UM would discourage its use with videos. Response,
`
`45-51. But the claims do not require facial recognition—they only require “the first
`
`person” to be “associated with a third set of digital files…” EX1001, 35:65-67.
`
`A3UM (like the ’228 patent) teach making that association manually, without
`
`facial recognition. Petition 53-55. And Patentee’s criticism of facial recognition in
`
`Aperture is both wrong and irrelevant.
`
`The second contends a skilled person would not have modified the “Places”
`
`interface to use thumbnails instead of pins because doing so would “clutter” the
`
`interface. Response, 56-60. But that ignores that the claims require only two
`
`thumbnails and encompass even a “cluttered” interface. EX1089, 362:25-363:14.
`
`Neither argument thus has any merit.
`
`1.
`
`A3UM Teaches Associating Names to Digital Images Without
`Facial Recognition
`
`Patentee responds to the showing that claim 1 was obvious by arguing
`
`A3UM does not teach the use of facial recognition for videos. Response, 45. But
`
`claim 1 does not require associating digital files (including videos) with people by
`
`facial recognition. EX1089, 291:5-9; 295:1-10.
`
`The Petition explained that A3UM describes “digital images” including
`
`photos, videos, and sound files, and several examples show videos in libraries and
`
`being treated interchangeably with photos. Petition, 49-50. It explained geo-
`18
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`
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`IPR2022-00031
`
`Petitioner’s Reply
`
`tagging photos and videos for display on a map was well-known, and because
`
`A3UM supports metadata tagging of digital image files, enabling videos to be used
`
`in Places was o
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