Trials@uspto.gov
`571-272-7822
`
` Paper 12
`Entered: July 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00032
`Patent 9,552,376 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`JASON M. REPKO, Administrative Patent Judges.
`REPKO, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper 12
`Entered: July 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00032
`Patent 9,552,376 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`JASON M. REPKO, Administrative Patent Judges.
`REPKO, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00032
`Patent 9,552,376 B2
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a petition requesting inter partes review
`of claims 1–12 of U.S. Patent No. 9,552,376 B2 (Ex. 1001, “the ’376
`patent”). Paper 1 (“Pet.”). MemoryWeb, LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”). With the Board’s
`authorization, Petitioner filed a Preliminary Reply (“Prelim. Reply,” Paper
`10), and Patent Owner filed a Preliminary Sur-reply (“Prelim. Sur-Reply,”
`Paper 11).
`To institute an inter partes review, we must determine “that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`reasons discussed below, Petitioner has made such a showing. Thus, we
`institute an inter partes review.
`A. Related Matters
`Patent Owner identifies the following related matters: MemoryWeb,
`LLC v. Samsung Electronics Co., Ltd. et al., No. 6-21-cv-00411 (W.D.
`Tex.); MemoryWeb, LLC v. Apple Inc., No. 6-21-cv-00531 (W.D. Tex.);
`MyHeritage (USA), Inc. et al. v. MemoryWeb, LLC, No. 1-21-cv-02666
`(N.D. Ill.); IPR2022-00111; PGR2022-00006; IPR2022-00033; IPR2022-
`00031; IPR2022-00222; and IPR2021-01413. Paper 6, 2–3 (“Patent Owner’s
`Updated Mandatory Notice”).
`B. The ’376 patent
`The ’376 patent relates to a platform for managing and using digital
`files, such as digital photographs. See Ex. 1001, 1:14–17. Through the
`platform’s interface, a user can tag and select files to create views. See id. at
`5:26–35. For example, the “people view” is shown below. Id. at 6:20–26,
`Fig. 6.
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`The people view, above, shows thumbnail photos of all the people in the
`system. Id. Clicking on the thumbnail causes a “profile view,” shown below,
`to be displayed. See id.
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`The profile view, above, displays a person’s image, date of birth, date of
`death, parents’ names, and other biographical information. Id. The profile
`view also displays links to other views containing information about the
`person: Locations, Timeline, Family Tree, and Recipes. Id. at 6:27–49. The
`Locations view, for example, has an interactive map showing where the
`digital files were taken. Id. at 6:14–19.
`C. Claims
`Of the challenged claims, claims 1, 5, and 12 are independent. Claim
`5 is reproduced below.
`5. A computer-implemented method, comprising:
`storing, on one or more non-transitory computer-readable
`storage media, a plurality of digital files, each of the digital
`files having a content data portion and a metadata portion
`including tags, the content data including a digital photograph
`or image or video;
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`Patent 9,552,376 B2
`displaying, on a video display device associated with a client
`device, the digital photograph or image or video of a first of
`the digital files and overlaying thereon:
`(i) a first user selectable element, all of the digital files associated
`with a person tag being members of a first set of digital files,
`the first user selectable element having a first boundary with
`alphanumeric text therein indicating (i) a name of a person
`corresponding to the person tag and (ii) the number of digital
`files in the first set of digital files, and
`(ii) a second user selectable element, all of the digital files
`associated with a geotag being members of a second set of
`digital files, the second user selectable element having a
`second boundary with alphanumeric text therein indicating (i)
`a location name corresponding to the geotag and (ii) the
`number of digital files in the second set of digital files;
`responsive to a click or tap of the first user selectable element via
`a user interface device of the client device, displaying a
`people view on the video display device, the displaying the
`people view including displaying (i) the name of the person
`corresponding to the person tag and (ii) all of the digital
`photographs or images or videos in the first set of digital files;
`and
`responsive to a click or tap of the second user selectable element
`via the user interface device of the client device, displaying a
`location view on the video display device, the displaying the
`location view including displaying (i) the location name
`corresponding to the geotag, (ii) all of the digital photographs
`or images or videos in the second set of digital files, and (iii)
`a map image indicating geographic coordinates of the geotag.
`Ex. 1001, 36:43–37–14.
`
`
`
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`IPR2022-00032
`Patent 9,552,376 B2
`
`D. References
`Exhibit No.
`Reference
`Name
`Aperture 3 User Manual, Apple Inc. (2010) 1005
`A3UM
`US 2010/0058212 A1
`1006
`Belitz
`Rasmussen US 7,620,496 B2
`1025
`E. Asserted Ground
`Petitioner asserts that claims 1–12 would have been unpatentable on
`the following ground. Pet. 4.
`Claims Challenged
`35 U.S.C. §
`1–12
`103
`
`Reference(s)/Basis
`A3UM, Belitz, and Rasmussen
`II. ANALYSIS
`A. 35 U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny
`a petition that presents the same or substantially the same art or arguments as
`were previously presented to the Office. To evaluate arguments for
`discretionary denial under § 325(d), the Board uses a two-part framework
`that considers:
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and (2)
`if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims. If a
`condition in the first part of the framework is satisfied and the
`petitioner fails to make a showing of material error, the Director
`generally will exercise discretion not to institute inter partes
`review.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8–9 (PTAB Feb. 13, 2020) (precedential).
`In applying this framework, the Board considers the following non-
`exclusive factors:
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`(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;
`(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, 17–18 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).
`Specifically, under part one of the framework in Advanced Bionics, the
`Board determines whether the same or substantially the same art or
`arguments previously were presented to the Office by reviewing factors (a),
`(b), and (d) from Becton, Dickinson. Advanced Bionics, Paper 6 at 10. Factor
`(d) relates to similar arguments being presented to the Office. Becton,
`Dickinson, Paper 8, 17–18.
`A3UM, Belitz, and Rasmussen are the basis for Petitioner’s
`challenges. See Pet. These references were not the basis for any rejection
`made by the Examiner. Id. at 85. Nor were they cited to the Examiner in an
`Information Disclosure Statement (IDS). Id. Patent Owner does not dispute
`this. See, e.g., Prelim. Resp. 13.
`Patent Owner, though, asserts that the Examiner considered
`substantially the same art and arguments during prosecution of the
`application that led to the challenged patent. Id. at 13–26. According to
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`Patent Owner, the Places feature in A3UM is substantially the same as
`disclosures in the Kang reference that was cited in an IDS and considered
`during prosecution of the ‘376 patent, because “Kang describes grouping
`images based on location similar to the Places feature in A3UM.” Id. at 14
`(citing Ex. 1002, 358–385, Ex. 2002, 13–14; Ex. 2001 ¶¶ 78–82).
`Patent Owner makes similar arguments about Belitz and Rasmussen.
`Id. at 16–22. Patent Owner compares the features in Belitz and Rasmussen
`to the high-level functionality described in other references that were
`considered by the Examiner. Id. Similarly, Patent Owner argues that “[a]t a
`high level, the Petition is relying on A3UM as disclosing storing digital
`images including metadata including location information and displaying
`pins on an interactive map, and Belitz as disclosing an interactive map
`including thumbnails.” Id. at 22 (emphasis added). Patent Owner argues that
`this is substantially the same argument that was made by the Examiner
`during prosecution. Id. at 22–23. For example, Patent Owner argues that
`Petitioner combines A3UM with Belitz in the same way that the Examiner
`combined Kang and Jaffe:
`In the April 2016 Office Action, the examiner alleged that Kang
`disclosed 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” and
`that Jaffe disclosed 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. at 23 (citing Ex. 1002, 367–370); see also id. (discussing Jaffe and Van
`der Meulen).
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`Patent 9,552,376 B2
`It is undisputed that the Examiner’s rejection was not based on
`A3UM, Belitz, and Rasmussen. Pet. 85. We disagree with Patent Owner’s
`arguments because they primarily focus on the high-level similarities
`between the references in the Petition (A3UM, Belitz, and Rasmussen) and
`the references that were used in the Examiner’s rejection. Prelim. Resp. 16–
`22. Patent Owner’s arguments do not fully account for the specific
`limitations that were added to the claim in an amendment to overcome the
`Examiner’s prior-art rejection. See id. Nor do the arguments fully address
`the specific technical features found in the combination proposed by
`Petitioner that are not otherwise found in the references used in the
`Examiner’s rejection. Id.
`After reviewing the prosecution history of the ’376 patent, we agree
`with Petitioner that the claims were allowed after “adding requirements
`regarding how specific information was displayed” in the claimed user-
`interface elements. Pet. 85. For example, the Examiner discussed the high-
`level features described by Patent Owner, stating 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. Those high-level functions were clearly not the reason why the
`Examiner indicated that the claims contained allowable subject matter. Id.
`So, although Kang discusses displaying photos at each location (see,
`e.g., Ex. 2002, Fig. 5(b)), it is clear that the Examiner did not consider Kang
`to disclose the specific map view recited in the claim. See Ex. 1002, 516.
`Rather, an amendment directed to the map-view feature was made during
`prosecution, and the Examiner determined that the rejection based on Kang
`was overcome. Id. at 494–516. Petitioner, though, asserts that A3UM’s
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`Patent 9,552,376 B2
`Places view discloses the claimed map view. See, e.g., Pet. 38. Unlike
`A3UM, Kang’s “map” in Figure 9(b) consists of a collection of small icons.
`See Ex. 2002, 18–19, cited in Prelim. Resp. 15. And Kang’s Figure 5(b)
`groups photos by location but does not show a map at all. See
`Prelim. Resp. 15 (discussing and reproducing Figure 5(b)). The map in
`Places view and other specific teachings from A3UM cited in the Petition
`were not before the Examiner when the amendments to the map view were
`reviewed.
`Thus, we find that the Petition does not present the same or
`substantially the same art or arguments that were previously presented to the
`Office. See Becton, Dickinson, Paper 8 at 17–18 (factors (a), (b), and (d)).
`Because the first part of the Advanced Bionics framework is not satisfied, we
`do not proceed to the second, and we decline to exercise discretion to deny
`institution of inter partes review under 35 U.S.C. § 325(d).
`Level of Ordinary Skill in the Art
`B.
`According to Petitioner,
`A person of ordinary skill in the art in 2011 (or
`2014) would have had (1) at least a bachelor’s degree in
`computer science, computer engineering, or electrical
`engineering, and (2) at least one year of experience
`designing graphical user interfaces for applications such
`as photo management systems.
`Pet. 9 (citing Ex. 1003 ¶¶ 41–43).
`At this stage, Patent Owner does not rebut Petitioner’s proposed skill
`level. See Prelim. Resp. 26.
`For the purpose of this decision, we apply Petitioner’s proposed
`definition, which appears to be consistent with the level of skill reflected in
`the asserted reference. If Patent Owner proposes a different level of ordinary
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`Patent 9,552,376 B2
`skill in the art in its Response, the parties are encouraged to explain how the
`differences affect the obviousness analysis.
`C. Claim Construction
`We need only construe terms that are in controversy. Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999)).
`Petitioner asserts that “[b]ecause a skilled artisan would find the
`challenged claims unpatentable under any interpretation consistent with their
`plain and ordinary meaning in the context of the ’376 patent, the Board need
`not expressly construe the claims.” Pet. 13.
`Patent Owner does not propose constructions for any terms at this
`stage of the proceeding. See Prelim. Resp.
`On the current record, no terms are in controversy. So we agree with
`the parties that no claim term needs to be construed here.
`
`
`D. Obviousness over A3UM, Belitz, and Rasmussen
`The A3UM File Set
`1.
`All Petitioner’s challenges rely on A3UM. See Pet. 4. According to
`Petitioner, A3UM is a user manual for Apple’s Aperture 3 product that was
`published in two forms: an HTML file set and a PDF file. Id. at 14. The
`challenges in the Petition are based on the HTML file set. Id. (citing
`Ex. 1005). In this Decision, we refer to those files as the “A3UM file set.”
`a) Status of A3UM as a Printed Publication
`According to the testimony of Matthew Birdsell, an Apple employee,
`the A3UM file set “was included on the installation DVD in retail packages
`of Aperture 3 that were sold and distributed within the United States in early
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`2010 and was copied to local storage of a computer during installation of
`Aperture 3 ([Ex. 1020 ¶¶ 12–16]), and . . . was also published on the
`www.apple.com website ([id. ¶¶ 17–20]).” Id. According to Petitioner, Dr.
`Terveen testifies that Exhibit 1005 “is a true and correct copy of the HTML
`file set both on the Aperture 3 installation DVDs and as copied to computers
`during Aperture 3’s installation.” Id. at 16 (citing Ex. 1003 ¶¶ 73, 90, 97,
`98). In Petitioner’s view, the Aperture 3 User Manual, Exhibit 1005, is a
`“printed publication that was publicly disseminated in February 2010.”
`Id. at 14.
`Patent Owner argues that neither the files from the DVD nor those on
`Apple’s website qualify as printed publications. See Prelim. Resp. 29–46;
`Prelim. Sur-reply.
`For the reasons that follow, Petitioner sufficiently shows, at this stage
`and on this record, a reasonable likelihood that the A3UM file set from
`Apple’s website qualifies as a printed publication. See Hulu, LLC v. Sound
`View Innovations, LLC, Case IPR2018-01039, Paper 29, at 16 (PTAB Dec.
`20, 2019) (precedential). Thus, at this stage of the proceeding, we need not
`resolve whether the A3UM file set on the DVD or installed on a computer is
`a printed publication.
`The Board has found, at institution, that a collection of related
`electronic documents, such as a website with multiple webpages, could
`qualify as a printed publication. Halliburton Energy Servs., Inc., v. Dynamic
`3d Geosolutions LLC, IPR2014-01186, IPR2014-01189, IPR2014-01190,
`Paper 13, at 15–21 (PTAB Jan. 12, 2015). In that case, the Board contrasted
`a single website with the collection of distinct documents at issue in Kyocera
`Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008). See id.
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`Kyocera held that the GSM1 technical standard at issue, which comprised a
`collection of standards, was not a single prior art reference. 545 F.3d at
`1351. The standards included “hundreds of individual specifications drafted
`by approximately ten different subgroups,” and the Federal Circuit noted
`that “one of the most knowledgeable people in the world . . . had not read the
`entire [GSM] standard and did not know of any person who had read the
`entire standard.” Id. The Board in Halliburton, though, found that the
`website at issue constituted a printed publication because the website’s
`collection of pages described a single product from a single source, and a
`person of ordinary skill in the art would have readily combined the multiple
`pages and considered them as a whole. Halliburton, Paper 13 at 15–21.
`For reasons similar to those in Halliburton, we preliminarily disagree
`with Patent Owner’s argument that A3UM is a compilation of “seven
`hundred individual HTML files,” which cannot collectively be considered a
`printed publication. Prelim. Resp. 29. Unlike the GSM standard in Kyocera,
`Petitioner sufficiently shows, at this stage and on this record, that the HTML
`files that comprise A3UM are linked by their content, source, and
`organization. Prelim. Reply 1–2. In particular, the manual’s files have a
`coherent organization and collectively function as a single document: the
`Aperture 3 User Manual. See Ex. 1005. Indeed, the text “Aperture 3 User
`Manual” appears in the header of each page, and “/aperture/usermanual/”
`appears in the URLs in the footers. See id. Also, the manual’s index page
`contains embedded hyperlinks to help the user navigate the sections. See,
`e.g., Ex. 1003 ¶¶ 102.f, 103; Ex. 1020 ¶ 19.f; Ex. 1021, 8. Thus, at this stage
`
`1 GSM stands for “Global System for Mobile Communications.” Kyocera,
`545 F.3d at 1350. “The GSM standard is a comprehensive set of
`specifications for a second generation (‘2G’) mobile network.” Id.
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`and on this record, we determine that the A3UM file set could qualify as a
`single printed publication, even though it is a collection of files, provided
`that it is publicly accessible.
`“A given reference is ‘publicly accessible’ upon a satisfactory
`showing that such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l,
`Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). At this
`stage and on the current record, we also disagree with Patent Owner’s
`argument that the manual was not publicly accessible. See Prelim. Resp. 40–
`46; Prelim. Sur-reply 4–5. Rather, we preliminarily determine for institution
`that the declaration of Matthew Birdsell (Ex. 1020) sufficiently supports
`Petitioner’s assertions on this issue.
`In particular, according to his declaration, Mr. Birdsell is currently a
`Content Manager at Apple. Id. ¶ 2. Mr. Birdsell testifies that he worked for
`Apple since 2002 and has been a full-time Apple employee since June 2010.
`Id. ¶ 1. Mr. Birdsell testifies that he “personally worked on Apple
`documentation and publications regarding each version of Aperture
`throughout its lifespan, including Aperture 3.” Id. ¶ 2. Mr. Birdsell testifies
`that his “professional responsibilities between January and June of 2010
`included involvement with the team responsible for producing and
`distributing Aperture 3 documentation, including the Aperture 3 User
`Manual” and that he has “personal knowledge of how the Aperture 3 User
`Manual was prepared and distributed by Apple during this time frame.” Id.
`¶ 3. With respect to the A3UM file set on the website, Mr. Birdsell testifies
`that: “Any interested member of the public could locate and view the
`contents of the Aperture 3 User Manual HTML file set by retrieving it from
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`Apple’s publicly accessible documentation site:
`http://documentation.apple.com/en/aperture/usermanual/.” Id. ¶ 12.c (citing
`Ex. 1021, 6).
`Patent Owner argues that “there is no evidence of meaningful
`indexing such that a skilled artisan could reasonably locate A3UM (Ex.
`1005) from the Apple website.” Prelim. Resp. 44. Patent Owner argues that
`“[w]ithout means to search by subject matter, one would have to take several
`actions to locate the HTML file set on the Apple website,” and that “they
`would still have to ‘[c]lick links to individual sections of the Aperture 3 User
`Manual.’” Id. at 44–45. According to Patent Owner, “there would be over
`700 individual webpages to navigate through.” Id. at 45.
`Having considered the evidence of record, we preliminarily determine
`that the Birdsell Declaration sufficiently shows how the manual could be
`located through customary navigation of the website, including searching for
`it. Mr. Birdsell testifies that the Aperture 3 User Manual “could be located
`using Aperture links on the apple.com website or by searching for
`‘Aperture’ or ‘Aperture 3’ in the search box at the top right corner of the
`apple.com landing page.” Ex. 1020 ¶ 18. Mr. Birdsell also testifies that
`“[t]he Aperture 3 support page on the apple.com website contained an
`embedded URL pointing to the Aperture 3 User Manual HTML file set (i.e.,
`http://documentation.apple.com/en/aperture/usermanual/),” and that the User
`Manual on the Apple website had “links to individual sections of the
`Aperture 3 User Manual that were available on the side bar.” Id. ¶¶ 18, 19.f.
`To be sure, “‘public accessibility’ requires more than technical
`accessibility.” Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d
`765, 773 (Fed. Cir. 2018), discussed in Prelim. Resp. 42–43. For example,
`“a work is not publicly accessible if the only people who know how to find it
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`are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929
`F.3d 1363, 1372 (Fed. Cir. 2019), discussed in Prelim. Resp. 43. On this
`issue, Patent Owner argues that there is “no evidence that someone
`interested in photo management systems would know about Aperture.”
`Prelim. Resp. 44. In Patent Owner’s view, the A3UM file set was not
`sufficiently indexed on the website, and a person could not find the file set
`based on its subject matter. Id. at 44–45.
`We preliminarily determine that Petitioner provides sufficient
`evidence at this stage showing that others interested in photo management
`could have reasonably found Apple’s website and the A3UM file set. For
`example, Petitioner shows that there were links to purchase Aperture 3
`software through Apple’s website. Pet. 14–15 (citing Ex. 1021, 2). Petitioner
`provides a press release for Aperture 3. Ex. 1048, cited in Pet. 15. Dr.
`Terveen testifies that “a skilled artisan interested in locating A3UM or
`learning about Apple’s Aperture 3 software would have been able to locate
`A3UM via www.apple.com by simply visiting the dedicated Aperture 3
`support page on Apple.com.” Ex. 1003 ¶ 101. According to Dr. Terveen, “A
`skilled artisan would have been provided with a straightforward path to
`access the web-hosted version of A3UM from the www.apple.com
`homepage.” Id. ¶ 102.
`Thus, from the current record, we determine that Petitioner’s position
`is based on more than mere technical accessibility. Rather, Petitioner has
`provided sufficient evidence, at this stage and for institution, that people
`interested in photo management systems would have been independently
`aware of the A3UM file set on Apple’s website (see, e.g., Pet. 14–15;
`Ex. 1021, 2; Ex. 1048), and an interested researcher, applying reasonable
`diligence, would have found the A3UM file set using the search function and
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`the links to the support page, as described by Dr. Terveen (see, e.g.,
`Ex. 1003 ¶¶ 101–102). See Samsung Elecs., 929 F.3d. at 1369 (citing Voter
`Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1381 (Fed.
`Cir. 2012)).
`Patent Owner also argues that “Petitioner fails to establish that Ex.
`1005 is a true and correct copy of the HTML file set allegedly accessible
`through Petitioner’s website” and that “there is at least one inconsistency
`between Ex. 1005 and Petitioner’s limited Internet Archive printouts.”
`Prelim. Resp. 40–41. According to Patent Owner, “Petitioner has not (and
`cannot) show that the hundreds of web pages allegedly comprising A3UM
`correspond to Ex. 1005.” Prelim. Sur-reply 5.
`We note that the A3UM file set and the printout from the Internet
`Archive’s Wayback Machine are not identical. Compare Ex. 1021, with
`Ex. 1005. And Petitioner has provided only some of the pages from the
`Internet Archive’s Wayback Machine. See Ex. 1021. Mr. Birdsell, however,
`testifies that Exhibit 1005 “is an accurate copy of the Aperture 3 User
`Manual that was distributed with the initial version of the Aperture 3 product
`(i.e., version 3.0),” and that the Aperture 3 User Manual also existed as an
`interlinked set of HTML files made publicly accessible on Apple servers
`“where it could be retrieved and viewed by any member of the public.” Ex.
`1020 ¶¶ 4, 9–10. At this stage, Mr. Birdsell’s testimony sufficiently supports
`Petitioner’s position.
`Our decision on this issue is preliminary. We invite the parties to
`further address how the identified differences between the printout from
`Internet Archive’s Wayback Machine (Exhibit 1021) and Exhibit 1005
`might affect our final decision on the patentability of the challenged claims.
`
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`IPR2022-00032
`Patent 9,552,376 B2
`We conclude that, from the current record and for the purpose of
`institution, Petitioner has submitted evidence sufficient to establish a
`reasonable likelihood that the A3UM file set on Apple’s website was
`publicly accessible before the critical date of the challenged patent and that
`the A3UM reference qualifies as a printed publication.
`2. Belitz
`Belitz is a U.S. Patent Publication that relates to a user interface that
`displays a map with marked locations. Ex. 1006, code (57). Belitz explains
`“[i]f many locations are located close to one another they overlap and the
`view of the associated images become cluttered and it is difficult to discern
`between the various objects and the user is not provided with a good view of
`what location is associated with what.” Id. ¶ 2. According to Belitz, the
`disclosed user interface addresses those concerns. Id. ¶ 5. Figures 4a and 4b,
`below, show screenshots of the user interface. Id. ¶ 51, 55.
`
`Figure 4a, above, shows map 409. Id. ¶ 51. On the map, location 408 is
`marked by a graphical object 410. Id. Graphical object 410 contains visual
`
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`IPR2022-00032
`Patent 9,552,376 B2
`representation 411. Id. ¶ 52. Visual representation 411 can be a photograph
`that is associated with the location. Id. Number indicator 412 shows how
`many graphical objects 410 are “stacked” at that location. Id. ¶ 54.
`Specifically, graphical objects stacked in the displayed graphical object or
`graphical group object 410 can be associated with other locations that are
`near marked location 408. Id.
`
`3. Rasmussen
`Rasmussen is a U.S. Patent that describes a digital map and tools for
`interacting with it. Ex. 1025, 9:35–49. In one example, a user creates a
`measuring tool on the map by positioning endpoints at various locations. Id.
`at 9:61–65. The user clicks the endpoints or the line between them to open
`an information window. Id. at 10:17–27. The window can display
`“latitude/longitude and/or geocode information.” Id.
`4. Independent Claim 1
`Petitioner asserts that the subject matter recited in claim 1 is obvious
`over A3UM, Belitz, and Rasmussen. Pet. 26–79. Petitioner relies on
`A3UM’s teachings for all the limitations of claim 1 except for the thumbnail
`images and a “map image indicating geographical coordinates.” See, e.g.,
`id. at 26. For the recited thumbnail images and coordinates, Petitioner relies
`on Belitz and Rasmussen in its obviousness rationale. Id.
`Patent Owner argues that Petitioner has not shown that it would have
`been obvious to modify A3UM with Belitz and Rasmussen.
`Prelim. Resp. 48–59. For the reasons that follow, we disagree with Patent
`Owner at this stage and on this record.
`a) “thumbnail image”
`Claim 1 recites, in part, “a first user selectable thumbnail image at a
`first location on the interactive map corresponding to the geographic
`
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`IPR2022-00032
`Patent 9,552,376 B2
`coordinates of a first geotag.” Ex. 1001, 35:29–33. Claim 1 recites similar
`limitations about a second thumbnail image at a second location.
`Id. at 35:40–44.
`Petitioner asserts that, in a related proceeding, the meaning of
`“thumbnail image” is disputed. Pet. 26. Here, Petitioner gives “thumbnail
`image” its ordinary and customary meaning. Id. at 13. Patent Owner does
`not provide a construction for this term. See Prelim. Resp. 26–27.
`According to the ’376 patent, a thumbnail image is “for previewing
`the picture on the camera’s LCD Screen, in file managers, or in photo
`manipulation software.” Ex. 1001, 11:29–31. For example, in the “Location
`Application View,” the thumbnails are indicators 0874 and 0875. Id. at
`29:33–37. Figure 41, below, shows that view.
`
`Figure 41 above shows indicators 0874 and 0875 at locations on a world
`map. Id. at 29:34–35. These indicators have a “photo thumbnail” and a
`
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`Patent 9,552,376 B2
`number overlaid on the upper right corner. Id., Fig. 41. The user can select
`the “photo thumbnail” to see all the digital files with the same location.
`Id. at 29:35–36. In other views, the user selects the thumbnail images to
`initiate actions corresponding to the related digital files. See, e.g.,
`id. at 22:45–64, 24:24–41; 24:54–25:11; 27:29–53.
`As part of its obviousness rationale addressing the recited “thumbnail
`image,” Petitioner relies on A3UM’s interactive map. Pet. 19–20. Petitioner
`asserts that selecting a pin on A3UM’s map displays the photos in the
`“Browser” shown below. Id. (citing Ex. 1005, 436–437).
`
`The figure above is a screenshot of the interface described in A3UM.
`Ex. 1005, 437. The interface contains a map. Id. The map is annotated with a
`line identifying a “Location pin.” Id. A single pin might represent a group of
`
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`images “shot in close proximity.” Id. The bottom of the interface displays
`five images. Id. The annotation below the images says, “Images shot in the
`selected location.” Id.
`According to Petitioner, Belitz suggests modifying A3UM to use
`photo thumbnails instead of pins in A3UM’s interactive map. Pet. 27–32.
`Petitioner illustrates this proposed modification in the figure below. Id. at
`29.
`
`
`
`Petitioner’s figure, above, is a map view from A3UM (left) with red pin
`markers next to a map view (right) representing the proposed combinatio
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