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
`
`
`APPLE INC.’S NOTICE OF APPEAL
`
`
`
`
`via P-TACTS
`Patent Trial and Appeal Board
`
`via Hand Carry
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`
`IPR2022-00032
`Patent 9,552,376 B2
`
`
`APPLE INC.’S NOTICE OF APPEAL
`
`
`
`
`via P-TACTS
`Patent Trial and Appeal Board
`
`via Hand Carry
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`IPR2022-00032
`
`INTRODUCTION
`Apple Inc.’s appeal stems from the Patent Trial and Appeal Board’s Final
`
`
`
`Written Decision entered on June 30, 2023 (Paper 42) (the “Final Written Decision”)
`
`in the above-captioned inter partes review of United States Patent No. 9,552,376 B2
`
`(“the ’376 patent”). This notice is timely filed within 63 days of the Board’s Final
`
`Written Decision. 37 C.F.R. § 90.3(a)(1).
`
`APPLE INC.’S APPEAL
`Please take notice that under 35 U.S.C. §§ 141(c), 142, 319; 37 C.F.R.
`
`§§ 90.2(a), 90.3(a); and Federal Rule of Appellate Procedure/Federal Circuit
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`Rule 15, Apple Inc. hereby appeals to the United States Court of Appeals for the
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`Federal Circuit from the Final Written Decision and all underlying decisions and
`
`orders in this action on which that decision is based.
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`APPLE INC.’S ISSUES ON APPEAL
`Apple Inc.’s issues on appeal include at least (37 C.F.R. § 90.2(a)(3)(ii)):
`
`(i) the Board’s holding that claims 1-12 of the ’376 patent had not been proven
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`unpatentable; and
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`(ii) any findings or determinations supporting or related to the aforementioned
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`issues as well as all other issues decided adversely to Apple Inc. in any orders,
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`decisions, rulings, or opinions in this proceeding.
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`Simultaneously with this submission, Apple Inc. is filing a true and correct
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`copy of this Notice of Appeal with the Director of the United States Patent and
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`1
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`IPR2022-00032
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`Trademark Office and a true and correct copy (or copies) of the same, along with the
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`required filing fee, with the Clerk of the United States Court of Appeals for the
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`Federal Circuit as set forth in the accompanying Certificate of Filing.
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`
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`Dated: August 31, 2023
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`
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`
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`Respectfully submitted,
`
`By: /Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No.: 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`
`Attorney for Petitioner
`
`2
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`CERTIFICATE OF FILING
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`The undersigned hereby certifies that, in addition to being electronically filed
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`through P-TACTS, a true and correct copy of the above-captioned APPLE INC.’S
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`NOTICE OF APPEAL is being filed by hand with the Director on August 31, 2023,
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`at the following address:
`
`
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`The undersigned also hereby certifies that a true and correct copy of the
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`above-captioned APPLE INC.’S NOTICE OF APPEAL and the filing fee is being
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`filed via CM/ECF with the Clerk’s Office of the United States Court of Appeals for
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`the Federal Circuit on August 31, 2023.
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`
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`Dated: August 31, 2023
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`Respectfully submitted,
`
`By: /Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No.: 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`
`Attorney for Petitioner
`
`
`
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that on August 31, 2023, the foregoing
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`APPLE INC.’S NOTICE OF APPEAL was served in its entirety via electronic mail
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`on the following:
`
`Jennifer Hayes
`jenhayes@nixonpeabody.com
`
`
`Matthew A. Werber
`mwerber@nixonpeabody.com
`
`George Dandalides
`gdandalides@nixonpeabody.com
`
`Daniel Schwartz
`djschwartz@nixonpeabody.com
`
`
`
`
`Dated: August 31, 2023
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`Respectfully submitted,
`
`By: /Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No.: 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`
`Attorney for Petitioner
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 42
`Entered: June 30, 2023
`
`
`
`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.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`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.”). On July 8, 2022, we instituted a review of all
`challenged claims based on all grounds in the Petition. Paper 12
`(“Inst. Dec.”). Patent Owner filed a Response. Paper 20 (“PO Resp.”).
`Petitioner filed a Reply. Paper 391 (“Reply”). Patent Owner filed a Sur-
`reply. Paper 31 (“Sur-reply”). An oral hearing was held on March 14, 2023.
`A transcript of that hearing has been entered into the record. Paper 41
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision
`is issued under 35 U.S.C. § 318(a). For the reasons that follow, Petitioner
`has not shown by a preponderance of the evidence that claims 1–12 are
`unpatentable.
`
`Related Matters
`A.
`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”).
`
`
`
`1 As authorized by the Board, Petitioner filed a corrected Reply to change
`incorrect citations to the deposition transcript of Patent Owner’s expert, Dr.
`Surati. See Ex. 3002 (email from the parties, and response from the Board).
`Patent Owner did not oppose. Id.
`
`2
`
`
`
`IPR2022-00032
`Patent 9,552,376 B2
`
`The ’376 Patent
`B.
`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.
`
`
`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.
`
`3
`
`
`
`IPR2022-00032
`Patent 9,552,376 B2
`
`
`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.
`Claims
`C.
`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;
`
`4
`
`
`
`IPR2022-00032
`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.
`
`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
`
`5
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`
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`IPR2022-00032
`Patent 9,552,376 B2
`
`A.
`
`Asserted Grounds
`E.
`Petitioner asserts that claims 1–12 are unpatentable on the following
`ground. Pet. 4.
`Claims Challenged
`1–12
`
`Reference(s)/Basis
`35 U.S.C. §
`A3UM, Belitz, and Rasmussen
`1032
`ANALYSIS
`II.
`Status of A3UM as a Printed Publication
`The Petition
`1.
`Petitioner challenges claims 1–12 as obvious over A3UM, Belitz, and
`Rasmussen. See Pet. 4. A3UM is a user manual for Apple’s Aperture 3
`product. Id. at 14. Aperture 3 is digital-image management software. Id. at
`13 (citing Ex. 1005, 1–4). Petitioner asserts that A3UM is a “printed
`publication that was publicly disseminated in February 2010.” Id. at 14.
`Thus, Petitioner asserts that A3UM is prior art under section 102. Id.
`According to Petitioner, A3UM was published in two forms: an
`HTML file set and a PDF file. Id. 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 HTML file set.”
`Petitioner obtained the A3UM HTML file set from an Aperture 3
`installation DVD. See id. at 15–16. According to Petitioner, “Dr. Terveen
`inspected Aperture 3 retail boxes obtained from Apple and from two
`independent sources and confirmed that the installation DVD in each was
`the same as the version disseminated in February of 2010 (i.e., v.3.0).”
`
`
`2 Congress amended section 103 when it passed the Leahy-Smith America
`Invents Act (AIA). Pub. L. No. 112–29, § 3(c), 125 Stat. 284, 287 (2011).
`Petitioner asserts that the claims are unpatentable under either version of
`section 103. Pet. 4.
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`6
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`IPR2022-00032
`Patent 9,552,376 B2
`Id. at 15 (citing Ex. 1003 ¶¶ 75–85). 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).
`To show that the A3UM HTML file set was publicly disseminated,
`Petitioner primarily relies on the declaration of Matthew Birdsell. Id. at 14.
`Mr. Birdsell “is an Apple employee with personal knowledge of the
`publication and dissemination of the Aperture 3 User Manual in early 2010.”
`Id. (citing Ex. 1020 ¶¶ 2–4). In February 2010, Mr. Birdsell was an
`independent contractor for Apple who “personally worked on Apple
`documentation and publications regarding each version of Aperture
`throughout its lifespan, including Aperture 3.” Ex. 1020 ¶ 2.
`The Locally Stored A3UM HTML File Set
`a.
`Mr. Birdsell testifies that the A3UM HTML 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 2010 and was copied to a
`computer’s local storage during installation of Aperture 3.” Pet. 14 (citing
`Ex. 1020 ¶¶ 12–14).
`Petitioner asserts that users can access the locally stored A3UM
`HTML file set “by selecting ‘Help>Aperture Help’ from the menu while
`Aperture was running and clicking ‘Aperture 3: User Manual’ on the page
`that appeared.” Id. at 16 (citing Ex. 1003 ¶¶ 86–90). According to Petitioner,
`contemporaneous Apple publications explain that the A3UM HTML file set
`is accessible through internal Aperture’s help function. Id. (citing Ex. 1051,
`7, 159; Ex. 1003 ¶ 99). Patent Owner does not dispute this. See generally PO
`Resp.; Sur-reply. We determine that Petitioner’s assertion (Pet. 16) and Dr.
`Terveen’s testimony (Ex. 1003 ¶¶ 86–90, 99) is sufficiently supported by the
`
`7
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`IPR2022-00032
`Patent 9,552,376 B2
`evidence of record. See Ex. 1020 ¶ 12(b); Ex. 1051, 7 (“Open Aperture, then
`choose Help > Aperture Help. Then click the link to the user manual”), 159
`(providing a similar explanation). Thus, we credit Dr. Terveen’s testimony
`on this issue. See Ex. 1003 ¶¶ 86–90, 99.
`In addition to the internal help function, Petitioner asserts that
`“[s]killed artisans could obtain A3UM from the Aperture 3 installation DVD
`or from computers onto which Aperture 3 had been installed.” Pet. 16. Dr.
`Terveen testifies that, to access the content of A3UM, a skilled artisan could
`open the A3UM HTML file set with a web browser. Id. at 16–17 (citing Ex.
`1003 ¶¶ 91–97). Petitioner asserts that the user “would see the same content
`and interface when opening the HTML file sets obtained from the installer
`DVD or as placed on local storage during installation of Aperture 3.” Id. at
`16–17 (citing Ex. 1003 ¶¶ 91–97).
`The A3UM HTML File Set on Apple’s Website
`b.
`Mr. Birdsell testifies that the A3UM HTML file set “was also
`published on the www.apple.com website.” Ex. 1020 ¶¶ 17–20. Petitioner
`asserts that “the A3UM HTML file set was loaded onto a publicly accessible
`website (http://documentation.apple.com/en/aperture/usermanual/) where it
`became accessible to any member of the public starting on the date of
`commercial sale of Aperture 3.” Pet. 17 (citing Ex. 1020 ¶¶ 9–11). Petitioner
`asserts that archived copies of the Aperture 3 website from 2010 “include an
`embedded URL pointing to the HTML-based User Manual” and “display the
`same table of contents entries as A3UM (EX1005), including sub-sections
`when manually selected.” Id. (citing Ex. 1003 ¶ 103; Ex. 1021, 6). Petitioner
`contends that “a skilled artisan, exercising only reasonable diligence, could
`have located A3UM by following links on the apple.com web site” or
`“[a]lternatively, that person could have located A3UM using the search
`
`8
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`IPR2022-00032
`Patent 9,552,376 B2
`feature within the apple.com web site or using well-known search engines.”
`Id. at 17–18 (citing Ex. 1003 ¶¶ 101–103; Ex. 1021; Ex. 1020 ¶¶ 18–19).
`Petitioner submits a screen capture of Apple.com from the Internet
`Archive’s Wayback Machine3 showing Aperture 3 for sale in February 2010,
`and a table of contents for the user manual. Id. at 15 (citing Ex. 1021, 2).
`Petitioner also includes three articles discussing Aperture 3 software
`and its February 9, 2010, release date. Id. (citing Exs. 1044, 1045, 1048).
`Petitioner argues that “many individuals had installed Aperture 3—and
`thereby transferred A3UM—onto their computers before June 2010, which
`required use of the installer DVD supplied via the retail package of Aperture
`3.” Id.
`For the reasons that follow, we determine that Petitioner has shown
`that the A3UM HTML file set (1) was sufficiently disseminated through the
`Aperture 3 installer DVD that was sold by Apple, and (2) was sufficiently
`publicly accessible via Apple’s website at the relevant time to meet the
`requirements to be a “printed publication” under 35 U.S.C. § 102. See id. at
`14–18.
`
`Analysis
`2.
`A person is not entitled to a patent if their invention was “described in
`a printed publication . . . before the effective filing date of the claimed
`invention.” 35 U.S.C. § 102(a)(1). The determination of whether a document
`is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case
`inquiry into the facts and circumstances surrounding the reference’s
`disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d
`
`
`3 The Internet Archive’s Wayback Machine, from Archive.org, archives
`webpages. Ex. 1022, 1 (Archive.org affidavit); Pet. 15 n.1.
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`9
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`IPR2022-00032
`Patent 9,552,376 B2
`1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350
`(Fed. Cir. 2004)).
`“Because there are many ways in which a reference may be
`disseminated to the interested public, ‘public accessibility’ has been called
`the touchstone in determining whether a reference constitutes a ‘printed
`publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon,
`Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d
`897, 898–99 (Fed. Cir. 1986)). “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) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378
`(Fed. Cir. 2006)).
`Is A3UM an executing software program?
`a.
`Patent Owner argues that the A3UM HTML file set is not a “printed
`publication” as that term is used in Section 102. See PO Resp. 41–44; Sur-
`reply 6–7. Patent Owner argues that, because users can only access the
`contents for A3UM when running the software program or following
`installation of the Aperture 3 application, A3UM “is part of an executing
`software program,” which “cannot be the basis of an IPR.” PO Resp. 44
`(citing Ex Parte Nelson, No. 2020-004978, 2020 WL 8186425, at *15
`(PTAB Dec. 31, 2020); Capsugel Belgium NV v. Innercap Techs., Inc.,
`IPR2013-00331, Paper 9 at 15 (PTAB Dec. 9, 2013); Supercell Oy v. GREE,
`Inc., IPR2021-00501, Paper 7 at 6 (PTAB Aug. 17, 2021)); Sur-reply 6–7.
`We disagree that the A3UM HTML file set is an executing software
`program. The files can be read and rendered by software, including but not
`
`10
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`IPR2022-00032
`Patent 9,552,376 B2
`limited to Aperture 3. See, e.g., Ex. 1089, 98:5–99:10; Ex. 2023, 80:2–81:6.
`In the context of the printed publication requirement of Section 102, there is
`not a meaningful difference between the A3UM HTML file set and other
`documents stored on a computer.
`The files themselves are linked by their content, source, and
`organization to form the Aperture 3 user manual. See Ex. 1005. The A3UM
`HTML file set has a coherent organization, and the files collectively
`function as a single document separate from the executing software itself
`(Aperture 3). See id. For example, the text “Aperture 3 User Manual”
`appears in the header of each page, and “/aperture/usermanual/” appears in
`the footers. See id. Also, the manual’s index page contains embedded
`hyperlinks to help the user navigate the manual’s sections. See, e.g., Ex.
`1003 ¶¶ 102.f, 103; Ex. 1020 ¶ 19.f; Ex. 1021, 8. Based on its form and
`purpose, the A3UM HTML file set should be considered a single document
`that is separate from the executing software itself.
`Patent Owner argues that the A3UM HTML file set was hidden on the
`installation disk and required “a convoluted series of steps that likely proved
`challenging even to Petitioner’s expert” to find. PO Resp. 39–40. In Patent
`Owner’s view, because the A3UM HTML file set is embedded within
`Aperture 3, there is not a “bright line demarcation” between the product and
`user manual. Id. at 40 (citing Cisco Sys., Inc. v. Centripetal Networks, Inc.,
`IPR2018-01436, Paper 40 at 23 (PTAB Jan. 23, 2020)).
`We disagree. Both Petitioner and Patent Owner demonstrate that the
`A3UM HTML file set can be opened from the DVD installer disk before
`installation and from local storage after installation. Ex. 1020 ¶¶ 12–16; Ex.
`1003 ¶ 95; Ex. 1089, 27:4–7, 98:5–99:10; Ex. 1071, 5; Ex. 2023, 80:2–81:6;
`Ex. 2026, 71:11–72:8. Although the user manual is accessible through the
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`11
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`IPR2022-00032
`Patent 9,552,376 B2
`actual Aperture 3 software in the internal help functionality after installation,
`that does not necessarily make it part of a product. Rather, the files are in a
`folder on their own and their contents can be accessed without Aperture 3
`running. Ex. 1089, 98:5–99:10; Ex. 2023, 80:2–81:6.
`The evidence does not show that finding the files required “a
`convoluted series of steps,” as Patent Owner argues. PO Resp. 39–40. As
`discussed in detail below, the files could be located and revealed with only a
`few commands. See, e.g., Reply 10–11. Also, the A3UM HTML file set was
`available on the Aperture 3 website. See, e.g., Ex. 1021. This shows that the
`user manual functioned as a standalone document outside the Aperture 3
`software. See id. So, although the A3UM HTML file set could be viewed by
`executing Aperture 3, that was only one of several ways to view the files.
`Thus, we determine that the A3UM HTML file set is not executing
`software or inseparable from it. Rather, the A3UM HTML file set is read
`and displayed by an executing software program, which is not meaningfully
`different from any other document stored on a computer.
`b. Was the A3UM HTML file set publicly accessible via distribution of
`the Aperture 3 DVD?
`Sales of the Aperture 3 DVD
`i.
`Petitioner asserts that Apple sold and distributed the Aperture 3 DVD,
`which installed A3UM HTML file set on a user’s computer. Pet. 14 (citing
`Ex. 1020 ¶¶ 12–16). Petitioner relies on the testimony of Mr. Birdsell to
`support this argument. See id. Mr. Birdsell testified that “more than 100,000
`customers had purchased and were using the Aperture 3 product between
`February and June of 2010,” which he based on his personal “experience
`with the utilization levels of the help resources on the Apple.com website at
`the time.” Ex. 1020 ¶ 7. According to Mr. Birdsell’s testimony, website
`
`12
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`IPR2022-00032
`Patent 9,552,376 B2
`analytics for documentation.Apple.com corresponded to sales figures, and
`website access volume for Aperture 3 indicated that about 100,000 people
`had purchased the product. Ex. 2026, 51:16–20; 54:6–22.
`Patent Owner argues that Petitioner’s evidence of sales is insufficient
`to show that the A3UM HTML file set was publicly accessible.
`PO Resp. 29–30. Patent Owner argues that Mr. Birdsell “merely ‘believe[s]’
`that a number of customers purchased and were using the Aperture 3 product
`before June of 2010.” Id. at 29. Patent Owner argues that Mr. Birdsell’s
`testimony on sales of Aperture 3 is offered “without any evidentiary support
`or conducting a personal investigation” and “[m]ere speculation about the
`number of Aperture 3 purchases falls short of the preponderance of the
`evidence burden Petitioner is required to meet.” Id. at 40–41 (citing Ex.
`1020 ¶¶ 5–7; Ex. 2026, 53:16–55:17, 61:15–62:3; Instradent USA, Inc. v.
`Nobel Biocare Servs. AG, IPR2015-01786, Paper 106 at 33 (PTAB Feb. 15,
`2017); Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1373 n.3
`(Fed. Cir. 2019)). Patent Owner argues that Petitioner’s evidence, at best,
`only shows offers for sale. Id. at 51 (citing Ex. 1021, 1–2; Ex. 2026, 56:23–
`57:9).
`But “a petitioner need not establish that specific persons actually
`accessed or received a work to show that the work was publicly accessible.”
`Samsung, 929 F.3d at 1374. “In fact, a limited distribution can make a work
`publicly accessible under certain circumstances.” Id. (citing GoPro, Inc. v.
`Contour IP Holding LLC, 908 F.3d 690, 694 (Fed. Cir. 2018)).
`Here, Patent Owner does not dispute Petitioner’s evidence that Apple
`offered to sell Aperture 3, or that a copy of A3UM was included on the
`Aperture 3 installer DVD sold in the relevant timeframe. See PO Resp. 29–
`30, 40–41, 51. Rather, Patent Owner disputes whether there were actual
`
`13
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`IPR2022-00032
`Patent 9,552,376 B2
`sales of the DVD with the A3UM HTML file set. Reply 3–4 (citing Ex.
`2026, 54:23–55:17, 69:13–19, 53:16–54:17; Carella v. Starlight Archery &
`Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986); Parrot S.A. v. Qfo Labs,
`Inc., IPR2018-01690, Paper 40 at 63–64 (PTAB Feb. 20, 2020); Paint Point
`Med. Sys., Inc. v. Blephex, LLC, IPR2016-01670, Paper 44 at 19–20 (PTAB
`Feb. 28, 2018)). Yet, even if the number of sales cannot be directly
`corroborated, Patent Owner has not offered any evidence beyond attorney
`argument that suggests Mr. Birdsell’s testimony that there were over
`100,000 sales is unreliable. See Reply 3; PO Resp. 29–30, 40–41, 51.
`On the other hand, Petitioner’s evidence is beyond mere speculation.
`Rather, we determine Petitioner has shown that Apple sold a sufficient
`number of DVDs that contained the A3UM HTML file set. Mr. Birdsell’s
`testimony on this issue is credible and adequately supported by
`corroborating evidence. Ex. 1020 ¶ 7. For instance, Aperture 3 was marketed
`as shown by a press release (Exhibit 1048) and a feature on the home page
`of Apple (Exhibit 1021). Patent Owner’s expert noted that Apple’s website
`was “probably” one of the most visited websites in the world in 2010.
`Ex. 1089, 188:9–16. In fact, Mr. Birdsell testified that that the presence of
`Aperture 3 on the Apple home page meant that it received “top billing.”
`Ex. 2026, 57:3–12. Also, Petitioner has provided two articles about Aperture
`from 2010 that discuss using an installed copy. See Ex. 1044, 2
`(“[I]nstallation of Aperture 3 took ages.”), 1045, 3 (“Before I installed
`Aperture 3 . . . .”).
`We agree with Petitioner that the 100,000 copies sold “far exceeds the
`number of disclosures recognized under the relevant dissemination law for
`printed publications.” Pet. 15 (quoting Cisco, IPR2018-01436, Paper 40 at
`23–31 (finding 586 copies to be sufficient for being publicly available
`
`14
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`IPR2022-00032
`Patent 9,552,376 B2
`through dissemination); citing Mass. Inst. of Tech. v. AB Fortia, 774 F.2d
`1104, 1109 (Fed. Cir. 1985) (determining six copies sufficient for
`dissemination)).
`Patent Owner argues that Petitioner is “unable to distinguish between
`users who purchased retail boxes of Aperture 3 versus those who upgraded
`from Aperture 2 to Aperture 3” without having the Aperture 3 DVD.
`PO Resp. 30 (citing Ex. 2026, 62:23–63:20; 65:5–13); see also id. at 41. In
`Patent Owner’s view, customers who purchased the DVD would not have
`navigated to the website. Id. at 30.
`Yet, even without the knowledge of the exact number of users that
`purchased Aperture 3 retail boxes with the DVD instead of upgrading from
`Aperture 2 without the DVD, it is far more likely than not that a sufficient
`number of the over 100,000 people that purchased Aperture 3 did so by
`purchasing the DVD for it to be considered publicly disseminated.
`Ex. 1020 ¶ 7. That is, under a preponderance-of-the-evidence standard,
`Petitioner has shown that Apple publicly disseminated the A3UM HTML
`file set in “thousands of retail boxes containing the Aperture 3 installation
`DVD to users between February 2010 and June 9, 2010.” Pet. 14 (citing
`Ex. 1020 ¶ 7; Ex. 1021, 2; Ex. 1044; Ex. 1045; Ex. 1048).
`Patent Owner argues that Dr. Terveen, an alleged person of ordinary
`skill in the art, had no knowledge of any Aperture 3 sales prior to this case.
`PO Resp. 40; see also id. at 22. But Petitioner need not show specific
`persons accessed Aperture 3, let alone that every person of ordinary skill in
`the art knew about Aperture 3 or its sales.
`Patent Owner argues that “Klopfenstein did not hold that ‘sales are not
`required;’ the court noted that ‘[p]rotective measures’ like ‘license
`agreements’ prohibiting copying weigh against a finding of accessibility.”
`
`15
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`IPR2022-00032
`Patent 9,552,376 B2
`Sur-reply 4 (citing In re Klopfenstein, 380 F.3d at 1351). Patent Owner
`argues that “Aperture 3 users were bound by a license agreement” that
`prohibits copying A3UM as part of the software program, so actual sales are
`required. Id. (citing Ex. 2007, 1–2). Even assuming this is true, for the
`reasons discussed above, Petitioner has provided sufficient evidence
`concerning actual sales. So Patent Owner’s argument here is unavailing.
`Thus, Petitioner has shown that the A3UM HTML file set was
`sufficiently disseminated on the Aperture 3 installer DVD that was sold by
`Apple. See Pet. 14–17.
`Indexing of the A3UM HTML File Set
`ii.
`“[I]ndexing is not required to show that a work is publicly accessible.”
`Samsung, 929 F.3d at 1369. Yet, “[w]hen a reference is uploaded to a
`website or deposited in a library, the fact that the reference is indexed or
`cataloged in some way can indicate that it is publicly accessible.” Id.
`Patent Owner analogizes finding the files on the Aperture 3 DVD to
`locating books in a physical library:
`The physical analogy would be requiring a person to know
`about the existence of a hidden section of a library (the *pkg.
`files), know how to access the hidden section of the library (i.e.,
`unhiding the hidden files), know to move a portion of the
`hidden library section to another location (decompressing the
`Archive.pax.gz file), then know to navigate through thousands
`of shelves to collect a particular set of 746 books (the HTML
`file set).
`PO Resp. 38; see also Sur-reply 6 (arguing that finding the files is like
`“being told that a book has been hidden in the library and then being asked
`to find it without guidance”) (citing Ex. 1089, 409:2–19; PO Resp. 38).
`According to Patent Owner, Petitioner does not argue that “the installation
`DVD included any search functionality for locating the HTML file set,” and
`
`16
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`IPR2022-00032
`Patent 9,552,376 B2
`Dr. Terveen’s assertion that “a POSITA[4] would somehow look for hidden
`files, locally save and decompress one, then navigate through numerous sub-
`folders is implausible and does not satisfy the requirements of public
`accessibility.” PO Resp. 38.
`Patent Owner argues that the HTML file set was intentionally
`“hidden” or “invisible” on the installation DVDs and that Petitioner’s own
`expert was unable to “testify that he knew where or how to find the ‘hidden
`files’ on his own” and that “his testimony suggests Petitioner’s counsel
`provided him with ‘tips’ on how to find the hidden files.” Id. at 31–32
`(citing Ex. 2023, 63:23–64:5, 64:19–66:10; 67:8–19; 73:10–22, 79:10–15);
`Sur-reply 5–6 (arguing that hidden files are not publicly accessible). Patent
`Owner argues that Dr. Terveen took many steps to locate the files. PO Resp.
`32–38. Patent Owner argues that, when questioned, Dr. Terveen could not
`recall how long the process took. Id. at 38 (citing Ex. 2023, 101:11–102:20).
`Patent Owner argues that, to find the files, a person of ordinary skill in the
`art needed to already know what to look for and where to look, or needed to
`expand and inspect every single folder. Id. at 37.
`Yet “a printed publication need not be easily searchable after
`publication if it was sufficiently disseminated at the time of its publication.”
`Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014). For
`the reasons explained in Section II.A.2.b.i, the A3UM HTML file set was
`sufficiently disseminated through use of the help functionality on the
`Aperture 3 installer DVD that anyone could purchase, even if the files were
`not visible on the DVD itself. That is, even without considering whether the
`
`
`4 A person of ordinary skill in the art.
`
`17
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`IPR2022-00032
`Patent 9,552,376 B2
`reference was sufficiently indexed, Petitioner’s has shown that A3UM was
`sufficiently disseminated.
`Still, Petitioner’s evidence of indexing is sufficient and bolsters its
`case that A3UM was accessible. The relevant inquiry here is whether the
`reference was made
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