`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 9,552,376
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`Inter Partes Review No. IPR2022-00032
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`IPR2022-00032
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` Patent Owner’s Preliminary Sur-Reply
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`Petitioner’s Reply (Paper 10) only serves to confirm that the Aperture 3 User
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`Manual (“A3UM,” Ex. 1005) does not qualify as a printed publication. First,
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`Petitioner has not shown that a skilled artisan exercising reasonable diligence could
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`have located the hidden HTML files on an Aperture 3 installation DVD. Second,
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`Petitioner cites no authority to support its assertion that functionality in an installed
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`software product can be considered a printed publication. Third, the Reply does not
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`address many of the issues raised in the POPR regarding A3UM’s alleged
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`availability on the web. The Board should reject Petitioner’s attempts to rewrite its
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`Petition and expert declaration in its Reply.
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`I.
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`The Hidden HTML Files on the Installation DVD are Not a Publicly
`Accessible
`Petitioner failed to demonstrate that a skilled artisan “exercising reasonable
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`diligence can locate” the hidden A3UM HTML files on an Aperture 3 installation
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`DVD. Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed.
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`Cir. 2018). Petitioner does not dispute that it would take at least 12 steps to locate
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`the A3UM HTML files on the DVD, and never explains why a skilled artisan would
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`have any reason to (i) use a Terminal command to view hidden files or (ii) locally
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`copy and decompress one of the normally-hidden sub-folders. Pet. at 14-17; Reply
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`at 4-5; Paper 8 (“POPR”) at 29-32; Ex. 2001 at ¶¶ 105-111. Petitioner also does not
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`argue that the installation DVD was searchable. POPR at 32; Reply at 4-5.
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`Petitioner complains that Patent Owner “has not and cannot cite any evidence
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`IPR2022-00032
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` Patent Owner’s Preliminary Sur-Reply
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`or case law to support its assertion that taking ‘numerous steps’” . . . is beyond the
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`‘reasonable diligence’ of a skilled and interested artisan.” Reply at 5. Tellingly,
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`Petitioner cannot cite any case law finding a reference to be a printed publication
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`under analogous facts. See id. at 4-5. Nor does Petitioner dispute that the Board’s
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`decision in Cisco Sys., Inc. v. Centripetal Networks, Inc., IPR2018-01436, Paper 40
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`(PTAB Jan. 23, 2020) involved markedly different facts. Id.; POPR at 37-40.
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`Petitioner also does not dispute the Aperture 3 license prohibits copying and
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`redistributing the HTML files in a manner akin to a confidentiality obligation. POPR
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`at 39-40.
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`Petitioner’s assertion that the POPR does not cite “any evidence” or case law
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`regarding accessibility ignores the fact that Patent Owner’s expert, Dr. Surati,
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`followed Dr. Terveen’s convoluted process for accessing the hidden HTML files and
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`concluded that a skilled artisan exercising reasonable diligence would not have done
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`so. POPR at 30-32; Ex. 2001 at ¶¶ 105-111.
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`Petitioner also mischaracterizes the POPR by responding to an argument
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`Patent Owner did not make about “unrelated HTML files.” Reply at 2. Petitioner
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`misses the point entirely. Whether the HTML files are related is irrelevant because
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`a skilled artisan exercising reasonable diligence would not locate them in the first
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`place. POPR at 30-32.
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`IPR2022-00032
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` Patent Owner’s Preliminary Sur-Reply
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`Petitioner also repeatedly mischaracterizes its own evidence. For example,
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`Petitioner argues that its expert, Dr. Terveen, testified that “skilled artisans knew
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`that user-focused support materials are distributed to consumers as HTML files used
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`by the Apple Help functionality.” Reply at 5 (citing Ex. 1003 at ¶ 94). Dr. Terveen
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`did not say this. Ex. 1003 at ¶ 94. Petitioner also argues that it “provided evidence
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`that the Aperture 3 User Manual was known to exist by such skilled artisans in early
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`2010.” Reply at 5 (citing Pet. at 15-16; Ex. 1051 at 7; Ex. 1003 at ¶ 99). None of
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`these citations support Petitioner’s assertion. Petitioner’s attempts to rewrite its
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`Petition and expert declaration are improper.
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`Petitioner’s mischaracterizations of the record and failure to distinguish the
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`authority cited in the POPR constitute tacit admissions that the Petition does not set
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`forth sufficient evidence of A3UM’s public accessibility for purposes of institution.
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`Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB
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`Dec. 20, 2019) (precedential).
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`II.
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`Petitioner Improperly Relies on Use/Sales of the Aperture 3 Product To
`Argue A3UM is a Printed Publication
`Even if A3UM were technically accessible after installing Aperture 3 on a
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`Mac computer, it still does not qualify as a printed publication. POPR at 33-37.
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`Petitioner admits that for this theory, it is relying on “the built-in Apple Help
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`functionality within the Aperture software when executing,” but claims it is not
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`relying on “the functionality or availability of the Aperture 3 software per se.” Reply
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`at 3. This is a distinction without a difference.
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`Petitioner has not proffered any authority suggesting that functionality or files
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`within an executing software product can be properly considered a printed
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`publication. Pet. at 14-18; Reply at 3-4. Petitioner appears to acknowledge relying
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`on the “Places” or “Faces” functionality within Aperture 3, for example, would be
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`improper. Reply at 3. However, the “built-in Apple Help functionality” and the
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`underlying files on the Mac computer are, like “Places” and “Faces,” part of the
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`software product. See Ex. 1003 at ¶¶ 86-89. Petitioner is drawing an arbitrary
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`distinction between (i) files that cause A3UM to be displayed in a help window or
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`web browser and (ii) other files that cause other Aperture 3 features to be displayed.
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`Congress limited the scope of IPRs to patents and printed publications to avoid
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`the kind of fact-intensive analyses required for public use and sales grounds. POPR
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`at 34-35 (citing Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022)).
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`Petitioner asserts that its arguments premised on installing Aperture 3 do not run
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`afoul of this principle because printed publication analyses also “necessarily entail
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`such fact finding.” Reply at 4. Petitioner misses the point. Whether Aperture 3 was
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`sold or publicly used is part and parcel with Petitioner’s argument that a reasonably
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`diligent artisan could have located A3UM within an installed copy of Aperture 3.
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`The Petition expressly relies on allegations that “Apple offered for sale, sold and
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`distributed” Aperture 3 and “many individuals had installed Aperture 3 . . . onto their
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`IPR2022-00032
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` Patent Owner’s Preliminary Sur-Reply
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`computers.” Pet. at 14-15. IPRs were not intended to address these issues.
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`III. Petitioner Has Not Shown That A3UM Was Accessible on the Web
`Petitioner’s failure to show that A3UM was publicly accessible on the web is
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`underscored by its failure to address many of the issues identified in the Preliminary
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`Response concerning Petitioner’s website. POPR at 40-46. There is no evidence
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`that Ex. 1005 corresponds to the HTML files that were allegedly available on
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`apple.com in 2010. Id. at 40; Ex. 1003 at ¶ 103. Petitioner does not dispute that are
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`inconsistencies between Ex. 1005, which bears 2009 copyright dates, and the limited
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`Internet Archive Wayback Machine printouts, which bear 2011 copyright dates.
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`POPR at 40-42; Ex. 1005; Ex. 2009. Nor does Petitioner distinguish the authority
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`cited by Patent Owner finding that web-based materials were not publicly accessible.
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`POPR at 42-45.
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`What is more, Petitioner’s new-cited authority addressing multiple web pages
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`is distinguishable. See Reply at 2-3. The Board has held that “web pages do not
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`constitute a single reference” when there are “different archival dates.” DocsCorp
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`LLC v. Litera Techs., LLC, IPR2016-00542, 2016 WL 5632041, at *4 (PTAB Aug.
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`4, 2016). Similarly, Petitioner has not (and cannot) show that the hundreds of web
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`pages allegedly comprising A3UM correspond to Ex. 1005. Ex. 1003 at ¶ 103.
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`For the reasons set forth herein and the POPR, the Board should deny
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`institution.
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`IPR2022-00032
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` Patent Owner’s Preliminary Sur-Reply
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`Respectfully submitted,
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`Dated: April 25, 2022
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`By:
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` /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
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`IPR2022-00032
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` Patent Owner’s Preliminary Sur-Reply
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Preliminary Sur-Reply together with all exhibits filed therewith was served on April
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`25, 2022, upon the following parties via electronic service:
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`
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`Jeffrey P. Kushan
`Samuel A. Dillon
`Kyle S. Smith
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`samuel.dillon@sidley.com
`kyle.smith@sidley.com
`SidleyAppleMemoryWebIPRs@sidley.com
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`Counsel for Petitioner, Apple, Inc.
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`By:
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`/s/ Jennifer Hayes
`Lead Counsel for Patent Owner
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`7
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