Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 41
`Entered: June 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`______________
`
` IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
` IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
`______________
`
`Record of Oral Hearing
`Held: March 14, 2023
`______________
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER,
`KEVIN C. TROCK, and JASON M. REPKO, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 41
`Entered: June 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`______________
`
` IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
` IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
`______________
`
`Record of Oral Hearing
`Held: March 14, 2023
`______________
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER,
`KEVIN C. TROCK, and JASON M. REPKO, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JEFFREY P. KUSHAN, ESQ.
`Sidley Austin, LLP
`1501 K Street, N.W.
`Suite 600
`Washington, D.C. 20005
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`DAN SCHWARTZ, ESQ.
`Nixon Peabody, LLP
`70 W. Madison Avenue
`Suite 5200
`Chicago, IL 60661
`
`JENNIFER HAYES, ESQ.
`Nixon Peabody, LLP
`300 South Grand Avenue
`Suite 4100
`Los Angeles, CA 90071
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing, by video, on Tuesday,
`March 14, 2023, commencing at 1:00 p.m., EDT, at the U.S. Patent and
`Trademark Office.
`
`
`
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`2
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE REPKO: Good afternoon. This is a consolidated oral hearing
`
`for IPR 2022-00031, 32, 33 and PGR 2022-00006. I am Judge Repko joined
`by Judges Brown, Beamer and Trock. Our primary concern is your right to
`be heard so if at any time you have technical problems with this video
`hearing, and you feel like it would undermine your ability to represent your
`client any way please let us know immediately. As soon as we're aware that
`someone disconnected, we’ll pause the hearing while they reconnect.
`When you're not speaking, please mute yourself. When you do speak
`please identify yourself at the start of your remarks so our court reporter can
`get an accurate transcript. At the end of the hearing, please remain on the
`line in case the court reporter has any questions for you. Feel free to present
`yourself however you are comfortable. That means it's okay to stand. There
`are members of the public listening to the oral hearing today, so if there's
`any confidential information, I don't think there is, but if there is, you need
`to let us know so they can make sure we don't violate confidentiality.
`At this time, we'd like counsel to introduce themselves and anyone
`with them, and I'll begin with the Petitioner's counsel.
`MR. KUSHAN: Good afternoon, Your Honor. My name is Jeff
`Kushan with Sidley Austin here for Petitioner. With me is Christine Reid.
`JUDGE REPKO: Will you be presenting your arguments fully or will
`you be handing it off?
`MR. KUSHAN: I'll be handling all of the argument.
`JUDGE REPKO: Thank you. Patent Owner’s counsel, can you
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`please introduce yourself and anyone with you. Are you muted?
`MR. SCHWARTZ: Can you hear me? Sorry about that. Apologies,
`Your Honors. This is Dan Schwartz on behalf of Patent Owner
`Memoryweb. With me today is Jennifer Hayes. I will be presenting most of
`the argument and she will also be presenting a percentage of the argument as
`well.
`
`JUDGE REPKO: Thank you. Thank you. So our Hearing Order
`gave each party 90 minutes to present their arguments and since we don't
`have a clock for everyone to look at, I will time you and try to give you a
`warning when you have about five minutes remaining. Petitioner's counsel
`will begin followed by Patent Owner’s. Both parties may reserve some
`rebuttal time, but unless there's some special circumstances, you may not
`reserve more than half your total time. If you have objections, please raise
`them during your rebuttal. So with that, I’m going to invite Petitioner's
`counsel to begin. I need to know how much time you would like to reserve
`for rebuttal.
`MR. KUSHAN: I'd like to reserve approximately 30 minutes for
`rebuttal.
`JUDGE REPKO: Okay. Thank you. You may begin.
`MR. KUSHAN: Good afternoon. As you know, there are four
`patents. There's a somewhat complex record to navigate, so I'll do my best
`to make sure I cite to the right papers as I go through the issues.
`I'd like to start with a prior art dispute that has been engaged and for
`those I'm going to be referring to the papers in the ‘228 proceeding for
`simplicity and I will also attempt to show my slides here. Can you see my
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`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`slides? Great.
`So we explained that the primary reference in the four proceedings is
`the reference Exhibit 1005, which is the Aperture 3 User Manual from
`February of 2010. It was distributed as an HTML set. That's encoding the
`User Manual and it was distributed on an installer DVD. The version 3.0
`Aperture Installer DVD was also distributed on Apple's website. One of our
`experts, Dr. Terveen, explained that the HTML file set is on the aperture 3.0
`version installation DVD. It’s in a folder called the User Manual within the
`resources folder inside the Aperture 3 application bundle. The application
`bundle is actually just a directory structure so you can navigate into it and
`that's where the Apple developer guidelines say it should be.
`On slide 29 is a quote from one of those guidelines that indicates that
`Apple, in the Apple environment, the help files are typically an HTML
`format and are stored in the resources folder of the application bundle and
`you can copy the files from the DVD. Dr. Terveen, this is slide 11, Dr.
`Terveen showed you could do this. He copied it from the DVD to the local
`storage and so did their expert, Dr. Surati, that's on slide 17. He replicated
`the steps that Dr. Terveen took to get it off the DVD on to local storage.
`Now, the DVD, the files that are on the DVD, is also copied to your
`hard drive when you run the installer and that is illustrated also by Dr.
`Terveen. That's on slide 15, and he went through the process of installing it.
`He also confirmed that the copy from the DVD to the hard drive was
`identical.
`Now, another important point is that the files on the DVD existed in
`February, 2010. If you look at slide 18, Dr. Surati, their expert, confirmed
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`that once the files are written to DVD, you can modify them so that file set
`on the DVD is what existed in February of 2010.
` Now, if you go to slide 6, this is just a depiction of the PDF, which is
`Exhibit 1005 made from that file set as compared to the HTML file set we
`viewed in the browser and on the bottom of the page of every page of the
`PDF is the HTML file that created that page of the PDF. Now two people,
`two witnesses, Mr. Birdsell is an Apple employee, and Dr. Terveen,
`confirmed that the Exhibit 1005 is a complete and accurate copy of the
`HTML file set from the DVD. Dr. Terveen went in, sorry, Mr. Birdsell
`testified, that’s on slide 21 and Dr. Terveen also testified that it was a clean
`and accurate copy.
`Now Patent Owner says in their surreply that the checking that these
`two witnesses did of the authenticity of Exhibit 1005 was unreliable because
`they only spot checked, and this is a quote, “parts of the Exhibit 1005
`against the table of contents,” that’s at surreply page 3 in the ‘228. That's
`not accurate. What Dr. Terveen explained was that he checked the first
`hundred pages of the DVD to the HTML files, and then he checked every
`section of the manual and he looked at one or two pages in each section to
`make sure it was accurate. That's his testimony, and it's a very reliable
`process he went through.
`If you can go to slide 35. Mr. Birdsell had unique insights into the
`Aperture 3 User Manual because he authored it. He was the lead writer of it.
`He was familiar with how it was distributed. He also explained that there
`was a place on the Apple website where you could retrieve the Aperture 3
`User Manual. This is his testimony and what he shows you is that there is a
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`support page for Aperture 3 that presents a direct link to the user manual on
`its page. This is not a case where you have to know the name of the file and
`then search some obscure database. This is being presented to the user and
`lay people on the Apple website.
`Now you'll see that the server in this URL for this link is to the Apple
`Documentation Server documentation.apple.com. That's what Mr. Birdsell
`testified. You’ll also see it’s referring to the User Manual location for the
`files, which matches what you see on the DVD where the User Manual
`folder is.
`Now, Mr. Birdsell had specific recollections about the processes
`Apple went through to put the Aperture 3 manual on the web through the
`Apple website and in slide 36 he described the processes they went through
`to make sure that all the links worked in the manual on the HTML version,
`first on an internal server, then he moved it over to the documentation server
`and then once it was on the documentation server and available to the public,
`he testified that he checked all of those as well. He personally checked as
`well as his team.
`Now, the other thing he testified about at his deposition was it was his
`job to monitor accesses to the Apple documentation for Aperture 3, and so
`he testified from his recollections, reviewing reports of user accesses of the
`Aperture 3 manual pages by the public and this is unique because this is a
`case where we actually have some evidence that people actually accessed the
`document from the Apple website and that is credible because he's referring
`to some of his responsibilities and his recollections about his
`responsibilities. Back then, it was his main job to do this and so he
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`remembered having to do it and checking these records of public accesses to
`the web pages.
`Now, on slide 39 is an exhibit Patent Owner introduced, Exhibit 2010.
`This is a web capture from February 17th of 2010 of the table of contents of
`the Aperture 3 User Manual. Now, this page was the subject of questioning
`by counsel of Mr. Birdsell, and what they asked him at his deposition was
`did all of the headings of this public February 17, 2010 capture of the table
`of contents match the table of contents in Exhibit 1005? Mr. Birdsell
`offered to verify that at the deposition and counsel said, I don't think we
`need you to do that. There's other evidence about this web page. Mr. Dr.
`Terveen actually looked at the source code of this page. It says at Exhibit
`1003, paragraph 102 and verified that in this are links to the individual
`HTML pages of the web manual. So there's a lot of evidence demonstrating
`that A3UM was available to the public by the DVD and on the web that it's
`authentic in the form of Exhibit 1005, and it was publicly accessible and
`actually was accessed.
`So the other challenges that Patent Owner’s lodged against this go to
`whether it's a printed publication and their main challenge is basically that a
`person of skill in the art would not have been able to locate A3UM without
`unreasonable effort. That rests on the proposition that they’ve advanced that
`a person of skill would not know in 2010 that Aperture 3 was a photo
`management program or that it was made by Apple. If it was, I think it's
`fairly clear from the record you can search for Aperture 3 in Google or on
`the Apple website, you would turn up the Apple or –
`JUDGE TROCK: Counsel?
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`
`MR. KUSHAN: Yes.
`JUDGE TROCK: Counsel, this is Judge Trock. Can you hear me?
`MR. KUSHAN: Yes, I can hear you.
`JUDGE TROCK: I have a question. This issue that you just raised
`about this public accessibility, if we have dissemination or distribution of the
`documentation here, do we even get to that consideration?
`MR. KUSHAN: Your Honor, I don't think you need to, because if
`you believe all this evidence is credible and we think it is, it is demonstrated
`it was circulated to members of the public. If you --
`JUDGE TROCK: So --
`MR. KUSHAN: Yes.
`JUDGE TROCK: -- so is it your understanding that the test under the
`law is an either/or test? Either we have dissemination to the public, we don't
`need to go and take a look at this issue of whether or not they could find it
`and how difficult it would be?
`MR. KUSHAN: Well, I think we may -- I think there's a question of
`whether a person could reasonably locate A3UM so I do believe that's part
`of the inquiry as to public availability. We believe the evidence shows that
`is met as well and to be very clear, we think there's a lot of evidence also
`showing that a person of skill would have been aware of Aperture 3, would
`have been aware of Apple's website that provides access to it and would
`have found the manual by just reasonable effort.
`JUDGE TROCK: Okay. Thank you.
`JUDGE REPKO: As a follow-up to that question. So you're arguing
`that, you know, skilled artisans exercising reasonable diligence could locate
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`and retrieve this HTML file set and you have three sources for this; right?
`So three different sources. One was the website, two was the installation
`DVD and three was the local copies after the installation. So just focusing
`on two of those sources, a DVD and the local copies, what type of tools
`would someone interested in photo editing software customarily use to sort
`of meaningfully research these types of files?
`MR. KUSHAN: There was some discussion of this in the deposition
`of Dr. Surati and also in our papers from our expert. The things you would
`do is you would look for, you known, perform Google searches for example,
`on photo management software. You would look for awareness of the
`existence of providers of photo management software. These are the things
`that people of skill would have looked to to discover examples of photo
`management software that might influence design choices and we believe
`we put in evidence that showed the process would lead to discovery of
`Aperture 3.
`What I actually want to point out in on this page, on this slide 52 are
`two articles discussing in March of 2010 user experiences with the Aperture
`3 software. This is notable because it actually made short circuit of some of
`the conversation that you've raised, which these are bits of the records that
`the Patent Owner and its expert, Dr. Surati, said would have conveyed to the
`skilled person information about the photo, the facial recognition capabilities
`of Aperture 3. So their testimony and their arguments in their proceeding
`have relied on these documents as something the person skilled in the art
`would know in March of 2010, because they're relying on it to suggest that
`Aperture 3 was known to not have very good facial recognition. If you
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`accept that they believe a person of skill would have been aware of these
`two things, it's hard to believe they wouldn't have found the Aperture 3
`manual. These two references and a third one on slide 53 include a URL
`link in these articles that takes you to the Aperture 3 product page on
`Apple.com that is on slide 47.
`JUDGE REPKO: So taking you back to this website, my question is
`concerning the installation DVD and local copies after installation, that is, I
`guess the HTML files are in the resource folder of the application bundle?
`MR. KUSHAN: Right.
`JUDGE REPKO: So you're saying the tools that someone would use
`customarily to search these types of files is Google. But if I go to Google,
`it’s going to send me to these web pages; right? It's not going to send me to
`the HTML files in the resource folder of the application model, for example;
`correct?
`MR. KUSHAN: But if you did a search on Google it would take you
`to the public websites. If you did a search on just the local capability of the
`Macintosh, you would likely discover these web pages. You could also just
`simply navigate to the folder where you know it's stored. If you're a
`developer you're familiar with the place and storage of the help files there in
`the application bundle and you -- yes.
`JUDGE REPKO: Okay. So those are three different ways. There's a
`Google and then you start talking about the, you know, the search within the
`operating system, I guess.
`MR. KUSHAN: Yes.
`JUDGE REPKO: Would you agree that, you know, sort of Google is
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`out of the question once we take out Apple's website; right? So you're not
`going to be able to discover the HTML files in the resource folder of the
`application bundle by using Google; right?
`MR. KUSHAN: No. I don't believe that you would search that way
`using Google for your local storage. I think you would just -- that the
`Google would be a tool you use for searching the web.
`JUDGE REPKO: Right, right. So then what type of indexing or
`cataloging, what other tools for the customary and meaningful research of
`HTML files in a resource folder in the application bundle? Would you, I
`guess it looked like there was some talk about Unix and the command line
`terminal. Is that how you're saying that we have to search and index these
`files?
`
`MR. KUSHAN: So for the local storage instance, I believe the local
`storage -- and I don't believe we have testimony directly on this in the record
`which is why I'm cautious -- but from my own personal knowledge, I know
`that there's a search function within the operating system that indexes what's
`on the hard drive of the device.
`I also would point you to the fact that if a person of skill knew where
`they were stored, where the help files are typically stored in the application
`bundle, they would just navigate to that in the drive and that's a matter of a
`few clicks to retrieve the contents and the files themselves can be viewed by
`a web browser if you just open them up like you would open up any other
`web page that was stored locally.
`JUDGE REPKO: Why is that relevant that you can open them up in a
`web browser?
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`MR. KUSHAN: Because it's showing that you have access to the
`content of the User Manual independent of running it in the Aperture 3
`program. It's any other file that’s readable by a device like that, but an
`application like that would be discoverable.
`JUDGE REPKO: So, but in order to discover that you have to know
`-- you just said you need to know where it is to begin with; right? You have
`to actually have some knowledge of the contents of those files and then
`some prior knowledge of how this is all stored and I guess there's a lot of
`evidence about how someone, I guess a developer would know how to get
`there and need to know some Unix commands as well, and so this is a
`person of ordinarily skilled art and I guess photo editing software, they
`would need to know all of these Unix commands?
`MR. KUSHAN: I think, let me try to back you up a little bit because I
`think what our position is is that it would be routine for the person of skill to
`navigate the folder structure of the local storage and I believe that would be
`true even if you have a person of skill in this case. We've demonstrated that
`the user also has access to these materials by the in application help, and
`they also have a booklet that told them that there's a help manual available to
`them.
`
`If you look at slide 9, let me put this up. So the question of whether a
`person would know about the help manual, this is a printed document in the
`box that comes with Aperture 3, the product. This tells you if you need
`more information. There's a Help User Manual that's accessible to them
`with the product. Once the person of skill knows there's a User Manual,
`which is something they would learn by inspecting the materials of the
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`product, they would know to look for it and they would have access to these
`guidelines from Apple telling you where they where it is on local storage.
`So we don't believe that these are obstacles to getting access to the manual.
`I think it’s also important, again, backing up to the point I made a
`little while ago, their witnesses, they and their witness, Dr. Surati, have
`acknowledged that the person of skill in the art would have been aware of
`the Aperture 3 product, and that would have led them to the Apple website
`for more information about that product. But I think when you understand
`that, you can either find the information by giving a direct search on the
`Apple website for Aperture 3. These links I mentioned of the publications
`point you to this page, which was from February 17th of 2010. That's the
`actual product page and if you land on this page, it's literally two clicks and
`you're on the page that is the support page for Aperture 3 which gives you
`that direct link to the User Manual. So this is (indiscernible) --
`JUDGE REPKO: So you are taking me back to the website again, I
`guess; right?
`MR. KUSHAN: Yes.
`JUDGE REPKO: Right, right.
`JUDGE TROCK: So counsel, this is Judge Trock again, and here's
`my dilemma or my question. If there is dissemination of this, do we even
`get to this question of whether somebody could find it? Because, correct me
`if I'm mistaken, but if we take a look at the Acceleration Bay, LLC v.
`Activision Blizzard, Inc., case, isn't the test for dissemination or otherwise
`made available to the public and if we have dissemination, if there is
`sufficient, for example, distribution of this product and the manual by Apple
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`do we even need to get to the second part of this?
`MR. KUSHAN: So my view is that that dissemination and the
`evidence of its dissemination would clear the hurdle that you just described
`for public availability by itself. We also have provided evidence showing
`that people of skill, there's testimony from their witness and from their
`papers saying that they're aware of information which would have led that
`person to find the User Manual on the Aperture site on Apple.com. So
`whether you do a stricter standard or a looser standard, you're going to clear
`both by the evidence that's in front of you.
`JUDGE TROCK: Okay. Thank you.
`MR. KUSHAN: So the last couple of points on prior art. I do want to
`just confirm that in addition to all this evidence, the two papers that I
`mentioned on slide 52 also are evidence that there has been a sale or transfer
`of the Aperture 3 physical product because they had to get those boxes with
`the DVD in hand and use them to install the program in order to then use it
`and to write up these comments about the behavior of the application after it
`was installed. So these papers that they’ve acknowledged exists and are
`aware -- that the person of skill in the art is aware of, is further evidence of
`the dissemination of the product.
`All right. What I'd like to do is turn to a couple of the merits issues
`and the first one I want to take up is in regard to the ‘020 patent, the 0006
`proceeding and what I want to do is take you to the slide show embodiment
`issue. In the claims of the ‘020 patent there was a claim construction issue
`raised by Patent Owner. This is the claim language of claim 1. This is what
`I referred to as the slide show element and it has language which you'll see
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
`
`frequently used throughout all of the claims of the four patents. It has kind
`of a responsive to clause followed by a causing an event clause, in this case
`responsive to an input. This is on slide 57.
`In this instance you have the responsive to an input. You have
`causing a slide show to be displayed on the interface and what we did, we
`showed in our papers that this corresponded to an example in the patent
`which reveals that there are actions that are permitted between the
`responsive to input step and this causing of the slideshow and that led us to
`the clarification of the meaning of this type of language, indicating that
`something is still responsive to that action or input if it includes intervening
`actions by the computer or a user that enable or are directly associated with
`causing that action. Now, I'm not sure if Patent Owner agrees or disagrees
`with whether there's permissible events between the two responsive to and
`causing events but what I want to do is walk through this example in their
`patent.
`So if you go to slide 62, we showed how there was this example and
`some of the steps taken to meet the requirements of the clause. The first
`thing that happens in this example is that in any of the application views, the
`user will select a digital file and they select that digital file that does not
`cause the slideshow to start. What it does is it causes the display of the
`slideshow view on the bottom of this page.
`Then in order to actually cause the slideshow to start, this is slide 63,
`the user clicks on one of these icons or buttons on the bottom left of the
`slideshow view, and that is the thing, that user intervention which causes the
`start of the slideshow. Now we put this example in front of their expert and
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`asked him does this example fit into the language of that clause and we gave
`him the text, told him to think about it. Slide 61 is his answer. It's a long
`answer, but what you see him saying is yes, that example in this patent falls
`within the scope of that clause that we've just been discussing and you can
`read it yourself and confirm that, but it's very clear that he found those
`actions which allow a computer display of another window and a user action
`was sufficient.
`Now, if you go to slide 65, that's particularly probative on the prior art
`issue we have here. This is the starting point in A3UM. The user picks
`photos they want to have shown in a slideshow. They invoke a window,
`which is on slide 66. This is a slideshow window that is provoked by a key
`combination and on the window is a small image and a little button. You
`click that button to start the slideshow. That sounds very familiar to what
`we just saw and I have on slide 67 an illustration of the two ways they start
`the slideshow after they've selected the image they want to be in the
`slideshow. We see no distinction between what the claims cover and what
`you see in A3UM and we also identified other examples in the A3UM
`disclosure where you can start a shuttling process using that same view or
`manually advance back and forth. Those track some of the testimony of
`their expert, Dr. Surati, that those would also be embodiments of a
`slideshow.
`I'd like to move over to one of the common issues found in the three
`or four proceedings. What I have at the end of our slide deck are some
`slides that just kind of give you the correlation of the different page numbers
`and claim numbers among the proceedings. So this is issue No. 2 and these
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`are the page and claim number sites. What I'd like to do on slide -- that's on
`slide 19. This is, as I said, something that you see happening are basis of the
`grounds and a number of the proceedings.
`On slide 92, we have addressed an example of this from the ‘228
`patent, the 31 proceeding. What you do is this example we gave showed
`that a person school would start with the places view. There's a map there
`with a pin which you select. When you select that pin it shows a number of
`photos that are associated with that location in the bottom called the
`browser. So this is a view which has a map and a browser. Our challenge in
`the normal behavior of the places map right here, if you then click one of the
`thumbnails, what you get is a little tab showing up above the location you
`picked That’s the unmodified behavior of A3UM in places. That was not
`our ground.
`The basis of our challenge was that you would modify this behavior,
`and this is on slide 93, this is from our petition. When you click the photo
`thumbnail in the browser, instead of putting a display on the map, it switches
`the view to a different view that's available in A3UM which is called the
`split view. The split view puts the full size image in the viewer on the top
`and keeps the browser on the bottom. So our position was click the
`thumbnail and it switches the view to display the full size image.
`Now, this is also clear from our expert’s testimony on slide 94. He
`explains on the bottom quote when you select the thumbnail that replaces the
`places map view. We know that they're aware that was our position because
`in their response, they addressed that combination. They told us in their
`Patent Owner Response before we filed our reply, why they thought that was
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`IPR2022-00031 Patent 10,621,228
`IPR2022-00032 Patent 9,552,376
`IPR2022-00033 Patent 10,423,658
`PGR2022-00006 Patent 11,017,020
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`not a viable modification to make and they proposed, they argued that
`changing the configuration of the places, to do that would destroy the
`functionality they described that’s needed, the original unmodified behavior
`of places. So we didn't make a new argument in our Reply. That was the
`position we advanced in our petition.
`If you look at the proposal we made, the modified behavior is actually
`just using an int
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