`Filed: April 18, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00032
`U.S. Patent No. 9,552,376
`
`––––––––––––––––––
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Patent Owner urges the Board to decline institution, asserting that Petitioner
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`has failed to establish a reasonable likelihood of success in relation to establishing
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`A3UM qualifies as a printed publication. Patent Owner’s Preliminary Response
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`(“POPR”), 27. But Patent Owner’s arguments rest on distortions of both the record
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`and the legal standard for assessing public accessibility. They should be uniformly
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`disregarded.
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`I.
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`A3UM Is a Single Printed Publication
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`As the Petition explained, with support from Dr. Terveen’s and Mr. Birdsell’s
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`testimony, A3UM is a printed publication that was widely disseminated in
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`conjunction with the distribution of retail packages of Aperture 3 in the United States
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`in early 2010, (Petition, 14; EX1003, ¶¶78-82, 91-97; EX1020, ¶¶12-16), and was
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`published for download by the public from the www.apple.com website (Petition,
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`14; EX1003, ¶¶100-103; EX1020, ¶¶17-20).
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`A. A3UM Is a Single Publication that Was Publicly Disseminated
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`Patent Owner contends that A3UM is not a printed publication because it is
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`purportedly “a compilation of over seven hundred individual HTML files, rather
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`than a single document or file.” POPR, 29. This misrepresents what A3UM is, and
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`employs the incorrect legal standard for evaluating it.
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`First, Patent Owner ignores that the HTML files that comprise A3UM are
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`linked by not only their content (i.e., they together comprise the content of a single
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`1
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`
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`publication, the Aperture 3 User Manual), but by their source and organization.
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`EX1003, ¶¶78-82, 91-97. Most notably, the files are contained in a single folder
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`containing an “index.html” file that enables navigation of the set of files. EX1003,
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`¶95-97. The folder of HTML files is distributed in this form: (i) the folder is in a
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`single compressed file on the Installer DVD, and (ii) the folder exists as an
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`uncompressed folder after being transferred from the Installer DVD to the local
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`storage of the user’s computer after installation. EX1003, ¶¶78-82, 91-97
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`(explaining that the HTML file folder is within the Resources folder of the Aperture
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`3 bundle installed on the computer). A3UM thus is not a set of unrelated HTML
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`files as Patent Owner contends—it is an organized collection of contextually-linked
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`files that comprise the content of a single printed publication.
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`Second, Patent Owner’s assertions ignore governing law establishing that the
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`printed publication inquiry does not turn on the number of pages or individual files
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`a reference comprises. Instead, “an electronic publication, including an on-line
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`database or Internet publication . . . is considered to be a ‘printed publication’ . . .
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`provided the publication was accessible to persons concerned with the art to which
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`the documents relate.” Manual of Patent Examining Procedure (“MPEP”) § 2128.
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`Notably, the Board has found documents to be printed publications despite
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`comprising multiple webpages, and even videos, provided they are sufficiently
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`accessible. See e.g., Haliburton Energy Servs., Inc., v. Dynamic 3d Geosolutions
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`2
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`
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`LLC, IPR2014-01186, -01189, -01190, 2015 WL 5565065, at *10 (PTAB Jan. 12,
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`2015) (finding “a single website with multiple webpages” constitutes a single printed
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`publication because it “describes a single product, the Recon software, from a single
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`source, the austiongeo.com website”); Acco Brands Corp. v. Think Prods., IPR2015-
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`01167, Paper No. 40 at 23 (PTAB Oct. 11, 2016); Macsports, Inc. v. Idea Nuevo,
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`Inc., IPR2018-01006, 2018 WL 5928385, at *3–4 (PTAB Nov. 13, 2018) (finding
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`webpages comprising 24 photographs were “a single printed publication” because
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`“the collection of 24 images appears to be a collection of webpages that describe a
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`single product, from a single source”).
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`B. A3UM Is a User Manual, Not a Software Program
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`Patent Owner also contends that Petitioner’s reliance on A3UM “crosses the
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`line between relying on material that may arguably constitute a printed publication
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`to relying on a component within a software program that is out of bounds for an
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`IPR.” POPR, 33. Initially, Patent Owner mischaracterizes what both the Petition
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`and Dr. Terveen said, which was that a user could view the content of A3UM using
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`a web browser or by invoking the built-in Apple Help functionality within the
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`Aperture software when executing. Petition, 15-17; EX1003, ¶¶86-90, 99. The
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`Petition also repeatedly explains that Petitioner is relying on the disclosures in and
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`the public accessibility of A3UM, not the functionality or availability of the Aperture
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`3 software per se. See, e.g., Petition, 13-22; EX1003, ¶¶70-110.
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`3
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`
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Patent Owner also contends that assessing “whether and how a skilled artisan
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`would be able to access files in an installed software product . . . is the type of fact-
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`intensive ‘inquir[y] Congress was seeking to avoid’ in limiting the scope of IPRs.”
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`POPR, 36. But public accessibility inquiries necessarily entail such fact-finding to
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`determine if “persons interested and ordinarily skilled in the subject matter or art,
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`exercising reasonable diligence, can locate” a given reference. Jazz Pharms. v.
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`Amneal Pharms., 895 F.3d 1347, 1355 (Fed. Cir. 2018); see Ex Parte Nelson,
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`IPR2020-004978, 2020 WL 8186425, at *15 (PTAB Dec. 31, 2020) (Board
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`assessing evidence that software manuals were distributed with copies of the
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`underlying program); Cisco Sys., Inc. v. Centripetal Networks, Inc., IPR2018-01436,
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`Paper 40 at 23-24 (PTAB Jan. 23, 2020) (Board assessing accessibility of user
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`manual “enclosed on documentation disks (CD-ROM/DVD) included with each”
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`product). That A3UM is on an installation DVD is of no consequence.
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`II.
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`A3UM is Publicly Accessible
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`Patent Owner next contends that A3UM was not publicly accessible because
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`Dr. Terveen does not explain “(1) why a skilled artisan would have any reason to
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`believe the installation DVD contained hidden files or (2) how one would configure
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`their Mac to view them.” POPR, 30. Relatedly, Patent Owner complains that a
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`“person would have to take numerous steps to find [a] local copy of the HTML files
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`. . . .” POPR, 34. None of these assertions is accurate or legally relevant.
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`4
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`
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Public accessibility is assessed using the perspective of an interested and
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`skilled artisan. See Jazz Pharms., 895 F.3d at 1355. As relevant here, Petitioner
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`provided evidence that the Aperture 3 User Manual was known to exist by such
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`skilled artisans in early 2010 and was provided with the Aperture 3 software product.
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`Petition, 15-16; EX 1051, 7; 159; EX1003, ¶99. Dr. Terveen also explained that
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`skilled artisans knew that user-focused support materials are distributed to
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`consumers as HTML files used by the Apple Help functionality and copied to a
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`user’s local storage during installation. EX1003, ¶94. Such skilled artisans could
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`have easily located and retrieved those HTML files, which together comprise the
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`Aperture 3 User Manual, as demonstrated by Dr. Terveen, on the Installer DVD or
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`on the local file system after installation. EX1003, ¶¶80-82, 91-97. Requiring the
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`performance of steps that are routine to a skilled artisan in order to retrieve and
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`inspect a document does not render it inaccessible to the public. Patent Owner
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`likewise has not and cannot cite any evidence or case law to support its assertion that
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`taking “numerous steps,” (POPR, 30, 34), such as six or even twelve steps, is beyond
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`the “reasonable diligence” of a skilled and interested artisan. See Jazz Pharms., 895
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`F.3d at 1355.
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`Accordingly, the Board should institute inter partes review and should treat
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`A3UM as a single printed publication for purposes of 35 U.S.C. § 102.
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`
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`5
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Dated: April 18, 2022
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`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
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`6
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`CERTIFICATE OF COMPLIANCE
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`I hereby certify that this Petitioner’s Reply To Patent Owner’s Preliminary
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`Response complies with the Board’s April 4, 2022 Order (Paper 8), excluding the
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`parts of this brief exempted by 37 C.F.R. § 42.24.
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`
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`
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`Dated: April 18, 2022
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`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
`
`
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`IPR2022-00032 Petitioner’s Reply to Patent Owner’s Preliminary Response
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 18th day of
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`April, 2022, copies of this Petitioner’s Reply To Patent Owner’s Preliminary
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`Response have been served in their entirety by electronic mail on the following
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`counsel of record for Patent Owner:
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`Jennifer Hayes – jenhayes@nixonpeabody.com
`George Dandalides – gdandalides@nixonpeabody.com
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`Dated: April 18, 2022
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`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
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