`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No.
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 9,552,376
`
`Inter Partes Review No. IPR2022-00032
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-00032
`
`
`
`TABLE OF CONTENTS
`
`
`
`Page(s)
`
`
`Introduction ...................................................................................................... 1 
`Overview of the ‘376 Patent ............................................................................ 1 
`A. 
`The ‘376 patent ...................................................................................... 1 
`B. 
`Relevant Prosecution History ................................................................ 5 
`Summary of References Identified by Petitioner ............................................ 9 
`A.  A3UM (Ex. 1005).................................................................................. 9 
`B. 
`Belitz (Ex. 1006) ................................................................................. 10 
`C. 
`Rasmussen (Ex. 1025) ......................................................................... 10 
`  The Board Should Deny Institution Pursuant to 35 U.S.C. § 325(d) ............ 12 
`A. 
`Substantially The Same Art and Arguments Were Already
`Considered ........................................................................................... 13 
`1. 
`The Office Already Considered Art That Is Substantially the
`Same as A3UM ......................................................................... 13 
`The Office Already Considered Art That Is Substantially the
`Same as Belitz ........................................................................... 16 
`The Office Already Considered Art That Is Substantially the
`Same as Rasmussen .................................................................. 20 
`The Office Already Considered Arguments That Are
`Substantially the Same as Those Made by Petitioner ............... 22 
`Petitioner Did Not Show How the Office Allegedly Erred ................ 24 
`B. 
`Level of Ordinary Skill in the Art ................................................................. 26 
`  Claim Construction ........................................................................................ 26 
`  Petitioner Has Not Established a Reasonable Likelihood of Success ........... 27 
`A. 
`Petitioner Has Not Established That the Applied References
`Qualify as Printed Publication Prior Art ............................................. 27 
`1. 
`A3UM (Ex. 1005) ..................................................................... 29 
`2. 
`Other Non-Prior Art .................................................................. 46 
`
` 
`
` 
`
` 
`
` 
`
`2. 
`
`3. 
`
`4. 
`
`i
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`

`

`
`
`
`
`Independent Claim 1 ........................................................................... 48 
`B. 
`Independent Claim 5 ........................................................................... 60 
`C. 
`Independent Claim 12 ......................................................................... 62 
`D. 
`Dependent Claims ............................................................................... 63 
`E. 
`  Conclusion ..................................................................................................... 63 
`
`
`
`
`ii
`
`

`

`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018) .....................................................................passim
`
`
`Advanced Bionics, LLC v. Med-EL Elktromedizinische Gerate GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) .................................... 12, 24-26
`
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ............................................... 13
`
`Blue Calypso, LLC v. Groupon, Inc.,
`
`815 F.3d 1331 (Fed. Cir. 2016) .......................................................................... 28
`
`Callaway Golf Co. v. Acushnet Co.,
`
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 63
`
`Capsugel Belgium NV v. Innercap Techs., Inc.,
`
`IPR2013-00331, Paper 9 (PTAB Dec. 9, 2013) ................................................. 34
`
`Cisco Sys., Inc. v. Centripetal Networks, Inc.,
`
`IPR2018-01436, Paper 40 (PTAB Jan. 23, 2020) .................................. 36, 37, 39
`
`Dominion Dealer Sols., LLC v. AutoAlert, Inc.,
`
`IPR2014-00684, Paper 9 (PTAB Oct. 6, 2014) .................................................. 46
`
`Eli Lilly & Co. v. Teva Pharms. Int’l GmbH,
`
`8 F.4th 1331 (Fed. Cir. 2021) ............................................................................. 47
`
`Ex Parte Stuart A. Nelson,
` No. 2020-004978, 2020 WL 8186425 (PTAB Dec. 31, 2020)) ......................... 36
`
`Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) .......................... 28, 29, 38, 46
`
`iii
`
`

`

`
`
`
`
`
`In re Clay, 966 F.2d 656 (Fed. Cir. 1992) ............................................................... 59
`
`In re Hall, 781 F.2d 897 (Fed. Cir. 1986) ................................................................ 28
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d. 1342 (Fed. Cir. 2012) ................................................................... 51, 55
`
`Nautilus, Inc. v. Icon Health Fitness Inc.,
`IPR2017-01363, Paper 33 (PTAB Nov. 28, 2018) ....................................... 43, 44
`
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 27
`
`
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 54
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013) .......................................................................... 56
`
`
`Quad Envtl. Techs. Corp. v. Union Sanitary Dist.,
`946 F.2d 870 (Fed. Cir. 1991) ...................................................................... 35, 36
`
`
`Qualcomm Inc. v. Apple Inc.,
`24 F.4th 1367, 2022 WL 288013 (Fed. Cir. 2022) ........................... 35, 36, 46, 47
`
`
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`929 F.3d 1363 (Fed. Cir. 2019) ...................................................................passim
`
`
`Sandoz Inc. v. Abbvie Biotechnology Ltd.,
`IPR2018-000002, Paper 13 (May 3, 2018) ......................................................... 40
`
`
`Supercell Oy v. GREE, Inc.,
`IPR2021-00501, Paper 7 (PTAB Aug. 17, 2021) ............................................... 34
`
`
`Yeda Research & Dev. Co. v. Mylan Pharm. Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) ............................................................. 46, 47, 53
`
`
`
`iv
`
`

`

`
`
`
`
`Federal Statutes
`35 U.S.C. 301(a)(1) ................................................................................................. 36
`35 U.S.C. § 311(b) ....................................................................................... 27, 35, 36
`35 U.S.C. § 325(d) ......................................................................................... 1, 12, 24
`Regulations
`37 C.F.R. § 42.65(a) ................................................................................................ 30
`
`
`v
`
`

`

`
`
`Exhibit No.
`
`LISTING OF EXHIBITS
`Description
`
`2001
`
`Declaration of Rajeev Surati, Ph.D.
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`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”)
`
`RESERVED
`
`RESERVED
`
`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)
`
`RESERVED
`
`RESERVED
`
`i
`
`

`

`
`
`Exhibit No.
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`Description
`
`Apple, Inc., www.apple.com, (Archive.org: Mar. 12, 2010)
`
`Devin Coldewey, Review: Aperture 3, CrunchGear
`(https://techcrunch.com/2010/03/19/review-aperture-3/) (last
`accessed Feb. 2, 2022)
`
`Hilary Greenbaum, Who Made Google’s Map Pin?, The New
`York Times, (Apr. 18, 2011)
`
`Google Developers, Customizing a Google Map: Custom
`Markers (last accessed Feb. 17, 2022)
`
`KML4Earth, Google Earth/Maps Public Icons,
`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27,
`2012)
`
`Declaration of Angelo J. Christopher
`
`U.S. Pat. Pub. No. 2007/0282908 to Van der Meulen et al.
`
`“Motivating Annotation for Personal Digital Photo Libraries:
`Lowering Barriers While Raising Incentives” by Kustanowitz et
`al.
`
`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. 9,552, 376 (“the ‘376 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 combinations of references that were considered during
`
`prosecution of the ‘376 patent. 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 a publicly available, printed publication. Petitioner’s arguments
`
`also fail on the merits at least because Petitioner fails to show that a person of
`
`ordinary skill in the art would have been motivated to combine A3UM, Belitz, and
`
`Rasmussen in the way Petitioner suggests.
`
` Overview of the ‘376 Patent
`A. The ‘376 patent
`The ’376 patent is directed to inventive methods for organizing and displaying
`
`1
`
`

`

`
`
`digital files, such as digital photographs and videos. Ex. 2001, ¶47. To this end, the
`
`‘376 patent discloses methods “allow[ing] people to organize, view, preserve and
`
`share these files with all the memory details captured, connected and vivified via an
`
`interactive interface.” Ex. 1001, 1:55-60.
`
`For example, referring to FIG. 41, the ‘376 patent discloses a map view
`
`including “an interactive map.” Ex. 1001, 29:26-49; Ex. 2001, ¶48.
`
`Ex. 1001 at FIG. 41
`
`
`
`In the map view, “individual or groups of Digital Files are illustrated as photo
`
`thumbnails (see indicators 0874 and 0875)) on the map.” Ex. 1001, 29:33-40; Ex.
`
`2001, ¶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
`
`2
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`

`

`
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`or simply selecting the map.” Ex. 1001, 29:38-40, FIG. 41; Ex. 2001, ¶49.
`
`The ‘376 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, 29:35-37; Ex. 2001, ¶49.
`
`Ex. 1001 at FIG. 34
`
`
`
`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, 24:25-
`
`30; Ex. 2001, ¶50. Thus, the map view and location view allow users to efficiently
`
`3
`
`

`

`
`
`and intuitively locate and display digital files associated with a particular location.
`
`Id.
`
`The ‘376 patent additionally discloses a people view for organizing digital
`
`files. Ex. 2001, ¶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, 22:54-64.
`
`Ex. 1001, FIG. 32
`
`
`
`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., 22:65-23:12; Ex. 2001, ¶52.
`
`4
`
`

`

`
`
`B. Relevant Prosecution History
`The ‘376 patent was filed as U.S. Application No. 15/375,927, which is a
`
`continuation of U.S. Application No. 14/193,426 filed on February 28, 2014 (now
`
`U.S. Patent No. 9,552,376), which is a continuation-in-part of U.S. Application No.
`
`13/157,124, filed June 9, 2011 (now U.S. Patent No. 9,098,531). Ex. 1001, cover.
`
`The prosecution of the ‘376 patent included four Office Actions. In the first
`
`Office Action, dated August 11, 2015 (“the August 2015 Office Action”), the
`
`examiner rejected pending independent claims 1 and 21 as purportedly being
`
`anticipated by a non-patent reference entitled “Motivating Annotation for Personal
`
`Digital Photo Libraries: Lowering Barriers While Raising Incentives” by
`
`Kustanowitz et al. (“Kustanowitz,” Ex. 2020) and a number of dependent claims,
`
`including pending dependent claim 15 as purportedly being obvious over
`
`Kustanowitz in view of U.S. Pat. Pub. No. 2007/0282908 to Van der Meulen et al.
`
`(“Van der Meulen,” Ex. 2019). Ex. 1002, 150, 165.
`
`In the August 2015 Office Action, the examiner alleged that, with respect to
`
`independent claim 1, Kustanowitz discloses “receiving, via, a user interface device
`
`of a client device, a first tag label containing alphanumeric text created and inputted
`
`by a user of the client device,” “modifying, using a controller device, a selected first
`
`one of the tags of the metadata in a first of the digital files to include the first tag
`
`label,” “receiving, via the user interface device or another user interface device, an
`
`5
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`

`

`
`
`instruction to search for all of the digital files having at least the first tag label,”
`
`“responsive to receiving the instruction, automatically searching for all of the digital
`
`files having at least the first tag label,” and “displaying, on a video display device
`
`associated with the client device, a first indication of the first tag label.” Id. at 151
`
`– 152. With respect to dependent claim 15, the examiner alleged that Van der
`
`Meulen discloses “displaying, on the video display device, a representation of a map,
`
`all of the digital files having at least the first tag label being members of a first set
`
`of digital files, the first set of digital files including at least a first geotag and a second
`
`geotag” and “displaying a first thumbnail at a first location corresponding to the
`
`geographic coordinates of the first geotag on the map, a second thumbnail at a second
`
`location corresponding to the geographic coordinates of the second geotag on the
`
`map, and the alphanumeric text of the first tag label.” Id. at 167 – 168. Continuing,
`
`the Office Action asserted that “it would have been obvious . . . to modify the
`
`teachings of Kustanowitz with the teachings of [Van der] Meulen to include,” among
`
`other things, Van der Meulen’s map and displaying thumbnails on locations on the
`
`map that correspond to geotags associated with the thumbnails. Id. at 168.
`
`In an 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
`
`6
`
`

`

`
`
`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. 1002, 366; Ex. 2001, ¶69.
`
`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. 1002, 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., 367-69. The April 2016 Office Action asserted 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., 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., 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,
`
`7
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`

`

`
`
`and further in view of Tanaka (Ex. 1042). Ex. 1002, 433-37; Ex. 2001, ¶70. 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,
`
`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. 1002, 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., 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.,
`
`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. 1002, 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, ¶71.
`
`8
`
`

`

`
`
` Summary of References Identified by Petitioner
`Petitioner relies on three references: A3UM (Ex. 1005), Belitz (Ex. 1006), and
`
`Rasmussen (Ex. 1025). Each reference is 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, among other things, a Places feature in the Aperture
`
`3 software product. See, e.g., Ex. 1005 at 28-30; Ex. 2001 at ¶59.
`
`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 ¶60.
`
`
`
`Ex. 1005 at 436
`
`9
`
`

`

`
`
`B.
`Belitz (Ex. 1006)
`Belitz is directed to a user interface for displaying “special locations” on a
`
`map. Ex. 1006, Title, ¶¶ 2, 4, 19, 71; Ex. 2001, ¶¶63-64. 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,
`
`¶4. Figs. 4(a) – (b) are screenshots of a device. Id., ¶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, ¶51.
`
`C. Rasmussen (Ex. 1025)
`Rasmussen is directed to a digital map including a “combined map scale and
`
`measuring tool.” Ex. 1025, 4:44-45; Ex. 2001, ¶65. “The combined map scale and
`
`measuring tool has two general modes of operation: scale mode and tool mode.” Ex.
`
`1025, 4:44-45. When “[i]n the scale mode, the scale indicates the correct scale” for
`
`the map. Id. at 4:45-46. A user can utilize the “tool mode” to “meaur[e] the distance
`
`10
`
`

`

`
`
`between two user selected points.” Id. at 9:37 – 38. As explained in Rasumussen,
`
`“[i]f the user clicks to the tool 205b endpoints of the line between them, an
`
`information window . . . opens to show information about the map locations marked
`
`by the tool 205b endpoints.” Id. at 10:17-22. In one embodiment, the information
`
`window “includes latitude/longitude and/or geocode information.” Id. at 10:26-27.
`
`Rasmussen’s Fig. 2 depicts a digital map including such an information window.
`
`Ex. 2001, ¶65.
`
`
`
`Ex. 1025 at FIG. 2
`
`11
`
`

`

`
`
`As depicted in Rasmussen’s Fig. 2, the information window 215 includes a “point
`
`name,” a “Lat/Lon” value, a “Geo Code” value, and “Driving Directions” selection.
`
`Ex. 1025, Fig. 2; Ex. 2001, ¶66.
`
` 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;
`
`12
`
`

`

`
`
`(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
`(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 ‘376 patent.
`
`A.
`
`Substantially The Same Art and Arguments Were Already
`Considered
`Petitioner argues that A3UM, Belitz and Rasmussen were not considered
`
`during examination and that no comparable art was considered. Petition, 85.
`
`Petitioner does not specifically address any of the art considered by the examiner.
`
`As set forth below, substantially the same art and arguments were considered during
`
`prosecution of the ‘376 patent.
`
`1.
`
`The Office Already Considered Art That Is Substantially
`the Same as A3UM
`As discussed below, the Petition relies on the “Places” feature in A3UM. See
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`Petition, 18-20. These screens are reproduced below:
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`Ex. 1005, 437
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`The Places feature in A3UM is substantially the same as disclosures in the Kang
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`reference that was relied on by the examiner during prosecution of the ‘376 patent.
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`Ex. 1002, 358-85.
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`Kang describes grouping images based on location similar to the Places
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`feature in A3UM. Ex. 2002, 13-14; Ex. 2001, ¶¶78-82. 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, 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, Fig. 5(b); Ex. 2001, ¶78. During prosecution of
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`the ‘376 patent, the examiner found that Kang included count values proximate to
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`thumbnail images corresponding to a set of files having a geotag. Ex. 1002, 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, 18-19; Ex. 2001, ¶80.
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`Ex. 2002, 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, ¶¶81-83.
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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 22-34. 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 of
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`the ‘376 patent. Ex. 1002, 358-85, 366-70. Jaffe illustrates an interactive map with
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`a first and second thumbnail image. Ex. 2001, ¶86.
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`Ex. 2003, Fig. 1(a)
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`As discussed above, during prosecution of the ‘376 patent, 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. 1002, 367-69;
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`Ex. 2001, ¶87. 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, Fig. 4(b)
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`Ex. 2003, Fig. 1(a)
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`As shown, Fig. 4(b) of Belitz is substantially the same as Figure 1(a) of Jaffe
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`because it has a first image and a second image (associated with digital files) at
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`different locations on a map. Ex. 2001, ¶¶86, 90. Likewise, the alleged Panoramio
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`and Picasa references Petitioner relies on are substantially the same as Jaffe. Id., ¶¶
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`88-89.
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`Additionally, in the June 2016 Office Action, the examiner found that Hibino
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`disclosed selectable thumbnails, and that it would be obvious to modify Kang/Jaffe
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`so that the thumbnails on the map were selectable. Ex. 1002, 435-36. The examiner
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`further applied Tanaka as disclosing count value images partially overlapping or
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`directly connected to thumbnail images, and that it would be obvious to further
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`modify Kang in view of Tanaka “with the motivation of sorting pictures into groups
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`and enabling ease of operation in selecting picture data. Id., 436-37. Thus, the
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`combination of Jaffe, Hibino, and Tanaka is substantially the same as Belitz as
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`applied in the Petition. Ex. 2001, ¶¶96, 99, 102.
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`Further, in the August 2015 Office Action, the examiner argued that Van der
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`“Meulen discloses . . . displaying a first thumbnail at a first location corresponding
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`to the geographic coordinates of the first geotag on the map, a second thumbnail at
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`a second location corresponding to the geographic coordinates of the second geotag
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`on the map, and the alphanumeric text of the first tag label.” Ex. 1002, 167 – 168.
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`Van der Meulen describes “media management techniques” that include the
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`generation of a map. Ex. 2019, ¶9. As explained in Van der Meulen, the “[m]ap
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`generator 112 may be arranged to generate electronic maps.” Id., ¶36. The “[m]ap
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`generator may create an electronic map using digital map information stored in a
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`map database 128, for example.” Id. According to Van der Meulen, the “[m]ap
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`generator 112 may position an image for a media object on the electronic map using
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`location information associated with the media object” and “may display a visual
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`content indicator (e.g., a thumbnail image) for a single media object . . . on a
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`location indicated by the relevant location information.” Id. (emphasis added). The
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`Patent Office understood Van der Meulen as disclosing the generation of an
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`electronic map that includes thumbnail images of media content located on the map
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`based on a location associated with the media content. Ex. 1002, 167-168. As
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`Petitioner relies on Belitz as disclosing thumbnails images on a map, the disclosure
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`of the Van der Meulen reference, relied on by the examiner in an Office Action
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`during prosecution of the ‘376 Patent, is substantially similar to the disclosure of
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`Belitz upon which Petitioner relies. Ex. 2001, ¶¶103-104.
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`In sum, the Belitz reference relied on by Petitioner is substantially similar to
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`the disclosure of not only Jaffe, but also Hibino and Van der Meulen, which were
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`cited in Office Actions during prosecution of the ‘376 Patent.
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`3.
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`The Office Already Considered Art That Is Substantially
`the Same as Rasmussen
`Petitioner relies on Rasmussen as disclosing “displaying a map marker popup
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`window (215) comprising ‘latitude/longitude and/or geocode information.’”
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`Petition at 33. Specifically, Petitioner relies on Rasmussen as disclosing “display
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`options available through the EM-API that support detailed location information,
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`including displaying a map marker popup window
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`(215) comprising
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`‘latitude/longitude and/or geocode information.’” Petition, 25.
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`However, during the prosecution of the ‘376 patent, the examiner relied upon
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`art that is substantially similar to Rasmussen in rejecting the claims of the ‘376
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`patent. Ex. 1002, 142 – 177 and 358 – 385. As Petitioner asserts with respect to
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`Rasmussen, the Patent Office found Van der Meulen discloses displaying GPS
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`information associated with a media object on a map. See Ex. 2019, ¶¶27, 34-37;
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`Ex. 1002, 142 – 177 and 358 – 385.
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`Van der Meulen recites that a “[m]ap generator 112 may position an image
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`for a media object on the electronic map using location information associated with
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`the media object.” Ex. 2019, ¶37. Further, Van der Meulen explains that the “[m]ap
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`generator 112 may display a visual content indicator (e.g., thumbnail image) for a
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`single media object, a media album 162-1-s, or a media album collection 164-1-t, on
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`a location indicated by the relevant location information.” Id. The Patent Office
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`asserted that Van der Meulen discloses the presentation of an electronic map
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`including thumbnails of media objects positioned at locations associated with the
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`media objects. Ex. 1002, p. 168. In addition to the thumbnails, Van der Meulen
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`discloses that the “[m]ap generator 112 may also display other associated metadata
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`for one or more media objects on the electronic map as well.” Ex. 2019, ¶37. Van
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`der Meulen lists names of metadata (i.e., EXIF field names) types, as well as their
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`descriptions, in Table 1. See id., Table 1. Of relevance to the current discussion,
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`Table 1 lists 30 different metadata types that are associated with location (i.e., GPS)
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`information. See id. For example, Table 1 lists “GPSLatitude” with a description
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`“Latitude” an