Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,423,658
`
`Inter Partes Review No. IPR2022-00033
`
`
`PATENT OWNER’S SUR-REPLY
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`TABLE OF CONTENTS
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`Page(s)
`
`3. 
`4. 
`
`2. 
`
`i
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`
`A3UM IS NOT PRIOR ART .......................................................................... 1 
`A. 
`Petitioner’s uncorroborated assertions cannot establish EX1005
`as prior art .............................................................................................. 2 
`Hidden files on a DVD are not publicly accessible .............................. 4 
`Installed copy of Aperture 3 is not prior art .......................................... 5 
`Evidence does not support A3UM on Petitioner’s website as
`prior art .................................................................................................. 6 
`CLAIM CONSTRUCTION ............................................................................ 8 
`A. 
`Claim 1: “application view” .................................................................. 8 
`B. 
`Claims 3-4, 7, and 10: “responsive to … displaying” ........................... 9 
`C. 
`Claims 8 and 11: “[first/second]-person-location selectable
`element” ............................................................................................... 11 
`  THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE ................ 13 
`A. 
`Claim 1 ................................................................................................ 13 
`1. 
`Petitioner still cannot identify a distinct “application view” .... 13 
`2. 
`A POSITA would not have modified A3UM with Belitz as
`Petitioner proposes .................................................................... 14 
`No motivation to combine A3UM and Belitz ........................... 18 
`Petitioner improperly relies on non-prior art in its obviousness
`contentions ................................................................................ 19 
`Claim 5 ................................................................................................ 20 
`Claims 8-12 ......................................................................................... 22 
`Claims 3-4 (Ground 2) ........................................................................ 24 
`1. 
`The Reply improperly raises a new obviousness argument
`relating to A3UM’s Places view ............................................... 25 
`The “[first/second] map image” ................................................ 27 
`
`
`B. 
`C. 
`D. 
`
`B. 
`C. 
`D. 
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`

`

`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`
`908 F.3d 765 (Fed. Cir. 2018) ........................................................................ 5, 20
`
`Adobe Systems Inc. v. Grecia,
`
`IPR2018-00419, Paper 9 (PTAB Sept. 7, 2018) ................................................. 20
`
`Carella v. Starlight Archery & Pro Line Co.,
`
`804 F.2d 135 (Fed. Cir. 1986) .............................................................................. 3
`
`Corning Optical Communications LLC v. Dali Wireless, Inc.,
`
`IPR2021-00762, Paper 37 (PTAB Oct. 11, 2022) .......................................passim
`
`Icon Health & Fitness, Inc. v. Strava, Inc.,
`
`849 F.3d 1034 (Fed. Cir. 2017) ............................................................................ 7
`
`In-Depth Geophysical, Inc. v. Conocophillips Co.,
`
`IPR2019-00849, Paper 14 (PTAB Sept. 6, 2019) ............................................... 20
`
`In re Fulton,
`
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 18
`
`In re Klopfenstein,
`
`380 F.3d 1345 (Fed. Cir. 2004) ............................................................................ 3
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359 (Fed. Cir. 2016) .............................................................. 16, 17, 25
`
`Parrot S.A. v. Qfo Labs, Inc.,
`
`IPR2018-01690, Paper 40 (PTAB Feb. 20, 2020) ................................................ 3
`
`Power Mosfet Techs., L.L.C. v. Siemens AG,
`
`378 F.3d 1396 (Fed. Cir. 2004) .......................................................................... 12
`
`Qualcomm Inc. v. Apple Inc.,
`
`24 F.4th 1367 (Fed. Cir. 2022) ........................................................................... 19
`
`ii
`
`

`

`
`
`
`
`
`TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
`
`529 F.3d 1364 (Fed. Cir. 2008) .......................................................................... 10
`
`Victoria’s Secret Stores LLC v. Andra Grp.,
`
`IPR2020-00853, Paper 12 (PTAB Oct. 22, 2020) .............................................. 19
`
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`
`853 F.3d 1272 (Fed. Cir. 2017) .......................................................................... 14
`
`Yeda Research & Dev. Co. v. Mylan Pharm. Inc.,
`
`906 F.3d 1031 (Fed. Cir. 2018) .......................................................................... 19
`
`Regulations
`37 C.F.R. § 42.23 ..................................................................................................... 14
`
`37 C.F.R. § 42.65(a) ................................................................................................. 18
`
`iii
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`

`

`
`
`Exhibit No.
`
`LISTING OF EXHIBITS
`Description
`
`2001
`
`WITHDRAWN
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`Hyunmo Kang et al., Capture, Annotated, Browse, Find, Share:
`Novel Interfaces for Personal Photo Management, International
`Journal of Human-Computer Interaction, 23(3), 315-37 (2007)
`(“Kang”)
`
`Jaffe et al., Generating Summaries and Visualization for Large
`Collections of Geo-Referenced Photographs, Proceedings of the
`8th ACM SIGMM International Workshop on Multimedia
`Information Retrieval, MIR 2006, October 26-27, 2006 (“Jaffe”)
`
`RESERVED
`
`RESERVED
`
`Feb. 8, 2022 eBay Order Confirmation for “Apple Aperture 3
`Upgrade for Mac Brand New Photography”
`
`Apple Inc. Aperture Software License Agreement
`
`Declaration of John Leone, Cisco Systems, Inc. v. Centripetal
`Networks, Inc., IPR2018-01436, EX1005 (July 20, 2018)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual
`(Archive.org: July 26, 2010)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual
`(Archive.org: Feb. 17, 2010)
`
`RESERVED
`
`RESERVED
`
`i
`
`

`

`
`
`Exhibit No.
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`Description
`
`Apple, Inc., www.apple.com, (Archive.org: Mar. 12, 2010)
`
`Devin Coldewey, Review: Aperture 3, CrunchGear
`(https://techcrunch.com/2010/03/19/review-aperture-3/) (last
`accessed Feb. 2, 2022)
`
`Hilary Greenbaum, Who Made Google’s Map Pin?, The New
`York Times, (Apr. 18, 2011)
`
`Google Developers, Customizing a Google Map: Custom
`Markers (last accessed Feb. 17, 2022)
`
`KML4Earth, Google Earth/Maps Public Icons,
`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27,
`2012)
`
`Declaration of Angelo J. Christopher
`
`RESERVED
`
`RESERVED
`
`Apple, Inc., “Apple Human Interface Guidelines” (Aug. 20, 2009)
`
`Wilbert O. Galitz, “The Essential Guide to User Interface Design:
`An Introduction to GUI Design Principles and Techniques,”
`Wiley Publishing, Inc. (3rd Ed.) (2007)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. I)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. II)
`
`Declaration of Rajeev Surati, Ph.D
`
`Transcript of Deposition of Matthew Birdsell
`
`Affidavit of Nathaniel E Frank-White
`
`Cambridge English Dictionary, definition of “responsive”
`
`ii
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`

`

`
`
`Exhibit No.
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`Description
`
`Webster’s Third New International Dictionary, definition of
`“responsive”
`
`RESERVED
`
`RESERVED
`
`eBay Receipt (August 15, 2022)
`
`Jennifer Tidwell, Designing Interfaces, O’Reilly (1st Ed. 2005)
`
`iii
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`

`

`IPR2022-00033
`
`
`
`Patent No. 10,423,658
`
`
`
`A3UM IS NOT PRIOR ART
`Petitioner avoids the relevant inquiry regarding A3UM’s prior art status,
`
`which is whether a POSITA “exercising reasonable diligence, would have been able
`
`to locate [A3UM] … without a priori knowledge of” A3UM. Corning Optical
`
`Communications LLC v. Dali Wireless, Inc., IPR2021-00762, Paper 37 at 20 (PTAB
`
`Oct. 11, 2022).1 Petitioner’s theories are flawed because they require a priori
`
`knowledge of Aperture 3 and A3UM. Reply, 8. A POSITA would not have
`
`possessed this prerequisite knowledge, as evidenced by Petitioner’s own expert
`
`having never heard of Aperture 3 prior to 2021. EX2023, 49:14-50:11, 52:2-4;
`
`POR, 30-31.
`
`To make up for this deficiency, Petitioner suggests Dr. Surati admitted that
`
`one would have learned of Aperture by Googling “photo editing and management
`
`software” or “photo management software.” Reply, 10. Dr. Surati was asked to
`
`speculate whether searching the exact phrase “photo editing and management
`
`software” could have yielded a result mentioning Aperture 3. EX1089, 204:9-205:3.
`
`Petitioner asked about this exact 5-word phrase not because an interested artisan
`
`would use it for a search, but because it conveniently appears in an Apple document.
`
`EX1048, 1; Corning, IPR2021-00762, Paper 37 at 26 (noting lack of evidence that
`
`
`1 Unless otherwise stated, emphasis in citations is added.
`
`1
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`

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`IPR2022-00033
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`Patent No. 10,423,658
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`“one interested in the subject matter would have used” suggested search term “absent
`
`a priori knowledge” of the reference). Tellingly, Petitioner proffers no evidence (1)
`
`that a POSITA would use its newly proposed search terms, nor (2) whether or where
`
`2011 Google search results would contain a reference to Aperture 3 or A3UM.
`
`Reply, 10. Given this lack of evidence, Petitioner’s argument as to how a POSITA
`
`would learn of Aperture 3 and A3UM rests on speculation and should be rejected.
`
`A.
`
`Petitioner’s uncorroborated assertions cannot establish EX1005
`as prior art
`As an initial matter, Petitioner lacks credible evidence as to the origins of
`
`EX1005 and incorrectly argues that Patent Owner “has not disputed that EX1005 is
`
`a true and correct copy of” A3UM. Reply, 20. First, Patent Owner objected to
`
`EX1005’s authenticity. Paper 14, 3. Second, contrary to Petitioner’s assertion that
`
`“[t]he ‘provenance’ of A3UM is also clear,” neither of Petitioner’s witnesses could
`
`explain how EX1005 was created. POR, 36; EX2026, 20:5-6, 44:15-17, 44-21:23;
`
`EX2023, 57:10-59:10. Both witnesses only “spot-checked” parts of EX1005 against
`
`a table of contents. EX2023, 62:3-12; EX2026, 41:11-16.
`
`Petitioner depends on uncorroborated assertions from its employee, Mr.
`
`Birdsell. For instance, Petitioner exclusively relies on Mr. Birdsell to purportedly
`
`show (i) the alleged numbers of Aperture 3 sales and apple.com visitors and (ii)
`
`whether EX1005 corresponds to what was allegedly uploaded to apple.com in 2010.
`
`Reply, 7, 21. Mr. Birdsell’s testimony cannot be corroborated because no such
`
`2
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`IPR2022-00033
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`
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`Patent No. 10,423,658
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`evidence exists, so it should be given little or no weight. EX2026, 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) (“unsupported oral testimony” offered “to prove prior
`
`knowledge or use…must be regarded with suspicion”); Parrot S.A. v. Qfo Labs, Inc.,
`
`IPR2018-01690, Paper 40 at 63-64 (PTAB Feb. 20, 2020) (affording party testimony
`
`little weight when not corroborated by “objective record evidence”). Petitioner’s
`
`argument that Patent Owner did not “prove bias” (Reply, 22) ignores the bias
`
`inherent in Mr. Birdsell having been employed by Petitioner for over a decade (POR,
`
`54-55).
`
`Given that Mr. Birdsell could only speculate as to the number of Aperture
`
`sales, Petitioner argues that “actual sales are not required.” Reply, 9 (citing In re
`
`Klopfenstein, 380 F.3d 1345, 1351 (Fed. Cir. 2004)). But in this case, sales are
`
`required because accessing A3UM via a DVD requires a sale. Additionally,
`
`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. Id. at 1351. Here, Aperture 3 users were bound by
`
`such a license agreement, which is yet another indication that it was not publicly
`
`accessible. EX2007, 1-2.
`
`3
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`IPR2022-00033
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`
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`Patent No. 10,423,658
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`B. Hidden files on a DVD are not publicly accessible
`In addition to failing to show that a POSITA would know of Aperture 3 and
`
`purchase a DVD, Petitioner failed to establish that a POSITA would know A3UM
`
`is hidden on the DVD. Supra, §I.A. The Reply goes to great lengths to explain how
`
`one could unhide A3UM. Reply, 13-16. These arguments underscore the need for
`
`in-depth knowledge or research regarding how Mac OS applications “are organized
`
`and distributed” to locate A3UM. Reply, 13. But a POSITA is not a Mac operating
`
`system2 expert. Petition, 12; EX1089, 15:20-16:3, 409:20-410:5. Indeed, Petitioner’s
`
`expert—who possesses more than ordinary skill—did not find the hidden files on
`
`his own and required “tips” from counsel. POR, 40-41; EX2023, 67:8-19, 73:10-22,
`
`79:10-15; Corning, IPR2021-00762, Paper 37 at 19-20 (noting counsel’s role in
`
`constructing hypothetical search in finding no public accessibility).
`
`Even if, arguendo, an artisan exercising reasonable diligence would have
`
`unhidden the files, Petitioner does not explain how navigating to the Archive.pax.gz
`
`file, copying, then decompressing it as one of numerous steps comports with
`
`reasonable diligence. Reply, 18; POR, 43-44. Nor does Petitioner dispute that the
`
`DVD lacked search functionality. POR, 47; EX2025, ¶¶119-120. Instead, Petitioner
`
`
`2 Contrary to Petitioner’s suggestion (Reply, 16), Dr. Surati did not testify that a
`
`POSITA “would know Unix” (EX1089, 15:20-16:3).
`
`4
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`

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`IPR2022-00033
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`
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`Patent No. 10,423,658
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`argues that a POSITA “would expect an application’s help files in HTML format
`
`would be in the Resources subfolder.” Reply, 18 (citing EX1071). However,
`
`EX1071 merely indicates that resources in an application bundle “might” contain
`
`help files. EX1071, 5. More tellingly, this still does not answer why someone would,
`
`among many other steps, manipulate the Archive.pax.gz file. EX2025, ¶122.
`
`Petitioner misleadingly portrays Dr. Surati’s testimony as “analogiz[ing]
`
`locating A3UM within the Installer DVD to finding a book in a library.” Reply, 15
`
`(citing EX1089, 407:8-19).3 Dr. Surati made no such analogy. Rather, Dr. Surati
`
`testified that finding the hidden A3UM files is akin to being told that a book is hidden
`
`in a library and being asked to find it without guidance. EX1089, 409:2-19; POR,
`
`49. The fact that someone could find the book because they already knew where it
`
`was does not mean it is publicly accessible. Acceleration Bay, LLC v. Activision
`
`Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018).
`
`C.
`Installed copy of Aperture 3 is not prior art
`With respect to locating A3UM after installing Aperture 3, the Reply does not
`
`dispute that accessing A3UM from the operating software (Petition, 18) is a public
`
`use rather than a printed publication (POR, 55). Instead, Petitioner argues A3UM
`
`
`3 Petitioner’s citation is incorrect; Patent Owner understands this refers to EX1089,
`
`409:2-19.
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`5
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`IPR2022-00033
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`Patent No. 10,423,658
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`can alternatively “be viewed with a Safari web browser without Aperture 3 running.”
`
`Reply, 20. Even if true, that does not change the fact that A3UM is a component of
`
`an installed software product that one would have to take many steps to locate. POR,
`
`50-53.
`
`D. Evidence does not support A3UM on Petitioner’s website as prior
`art
`The Petition argued that “a skilled artisan would have known to visit
`
`www.apple.com for information about Aperture and could have readily located
`
`A3UM.” Petition, 19; see also Paper 12, 14. In other words, Petitioner relies on a
`
`priori knowledge of Aperture 3 or A3UM to supply a motivation to visit apple.com.
`
`There is no evidence to support that conclusion, as evidenced by Petitioner’s expert
`
`having never heard of Aperture 3. Supra, §I. There is also no evidence that Apple
`
`was known for photo management software such that one interested in the relevant
`
`subject matter would visit apple.com. Corning, Paper 37 at 24-25 (petitioner failed
`
`to show database containing reference was known to skilled artisans).
`
`Any mention of Aperture 3 on the apple.com homepage was limited to mere
`
`weeks, which weighs against a finding of public accessibility. Reply, 12-13; POR,
`
`35. Petitioner argues that the support page “would be found by searching ‘Aperture’
`
`using apple.com’s search function.” Reply, 12. Even if true, such a search
`
`necessarily requires a priori knowledge of Aperture 3 as a photo management
`
`system. Corning, Paper 37 at 20. For instance, Petitioner does not allege searching
`
`6
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`

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`IPR2022-00033
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`Patent No. 10,423,658
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`“photo management software” on apple.com would lead to the support page. Reply,
`
`11-12. Petitioner’s assertion that “at least 100,000 individuals” visited the Aperture
`
`3 support page (but not necessarily A3UM itself) (Reply, 7) is solely based on its
`
`employee’s “ballpark” guess “based on memory” of events over a decade ago.
`
`EX2026, 54:15-55:4, 69:14-19. That apple.com may have been frequently visited
`
`for things like phones and computers does not mean a skilled artisan interested in
`
`photo management would look there. Reply, 13.
`
`Finally, Petitioner’s only support for EX1005 (which was created from a
`
`DVD) corresponding to what was allegedly available on apple.com is its employee’s
`
`uncorroborated say-so. Reply, 21-22. Petitioner does not dispute that the Internet
`
`Archive capture it relied on shows a different copyright date than EX1005. Reply,
`
`22; Petition, 19 (citing EX1021); EX2009; POR, 40. Instead, Petitioner argues this
`
`discrepancy should be ignored because the “[s]ource code shows the copyright date
`
`is a dynamic variable set by Archive.org.” Reply, 22 n.6. While EX1055 purportedly
`
`shows the code, Petitioner’s attorney argument regarding its meaning “is not
`
`evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed.
`
`Cir. 2017).
`
`7
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`

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`IPR2022-00033
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`
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`Patent No. 10,423,658
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` CLAIM CONSTRUCTION
`
`A. Claim 1: “application view”
`
`Claim
`Term
`application
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`application view that is distinct from
`
`a type of application view
`
`view
`
`the map view
`
`
`
`The parties’ dispute is whether the “application view” can be the same view
`
`as, for example, the “map view” or the “people view.” POR, 15-19. The Board
`
`should adopt Patent Owner’s construction answering that question in the negative
`
`because (1) the claim language creates a presumption that the “application view” is
`
`different than the other views and (2) the claims require navigating from the
`
`“application view” to other views, logically foreclosing them from being the same.
`
`Id., 15-16. Tellingly, Petitioner cites no expert testimony or authority in support of
`
`its construction. Reply, 1-2.
`
`Petitioner acknowledges that “the use of different terms compels different
`
`meanings,” but argues for its construction because (i) the specification describes
`
`“navigating from any of the application views to a particular one,” and (ii) because
`
`the “application view” is a “genus” covering any “species.” Reply, 2. However,
`
`Petitioner’s argument disregards the words of the claim, which include “displaying
`
`an application view,” then, responsive to a click/tap of the location selectable
`
`element in the application view, displaying a separate “map view.” Petitioner’s
`
`8
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`

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`IPR2022-00033
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`Patent No. 10,423,658
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`genus/species argument renders the phrase “responsive to…displaying” meaningless
`
`as Petitioner’s reasoning would allow for displaying a map view, then responsive to
`
`a click/tap of a location selectable element in the map view, displaying the same map
`
`view. Reply, 1-2, 23.
`
`B. Claims 3-4, 7, and 10: “responsive to … displaying”
`Claim Term
`Patent Owner’s
`Petitioner’s Construction
`Construction
`requiring a cause-effect
`
`encompasses methods that
`
`“responsive
`
`to…displaying”
`
`relationship between (i) a
`
`include intervening actions by a
`
`certain click or tap and (ii)
`
`user to enable or that are
`
`displaying certain
`
`associated with the displaying
`
`information
`
`action (Reply, 4)
`
`
`
`Petitioner argues for a construction that effectively means “subsequent to” and
`
`mischaracterizes Patent Owner’s construction as prohibiting “any intervening user
`
`action.” Reply, 2. Patent Owner’s construction is that the plain meaning of
`
`“responsive to” requires a cause-effect relationship. Reply, 2; POR, 20. Petitioner
`
`ignores the entirety of the evidence: examples in the specification, extrinsic evidence
`
`and authority from the Federal Circuit, the Board, and other courts holding that
`
`“responsive to” requires a cause-effect relationship. POR, 20-24. Petitioner’s expert
`
`did not offer opinions supporting Petitioner’s construction. EX1003, ¶¶54-55.
`
`9
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`IPR2022-00033
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`Patent No. 10,423,658
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`Instead, Petitioner argues that Dr. Surati agreed that “responsive to” can
`
`encompass intervening actions. Reply, 3-4. However, Dr. Surati did not agree with
`
`Petitioner as the Reply mischaracterizes the testimony. First, Dr. Surati was not
`
`specifically asked about the meaning of “responsive to.” EX1089, 379:18-380:12.
`
`Instead, he was asked a convoluted question as to whether an example in the
`
`specification “falls within the scope of” a 41-word claim limitation related to a
`
`“slideshow” in another patent. Id. Second, Petitioner ignores Dr. Surati’s caveats
`
`that he was unable to spend “as much time as … [he] would want to thinking about”
`
`the question, he was merely giving his “first reaction,” and he had not “considered
`
`whether the whole claim would apply to” the example. Id., 381:11-22, 403:4-25.
`
`Third, Dr. Surati said that Petitioner’s intervening interaction example “seems …
`
`similar” to the claim limitation, not that it fell within its scope. Id., 381:23-25.
`
`Petitioner also ignores another “slideshow” example in the specification
`
`consistent with Patent Owner’s cause-effect construction where no intervening
`
`inputs occur: “[f]or any of the views, the user can click on the digital file to start a
`
`slideshow feature.” EX1001, 7:11-14. That the specification discloses multiple
`
`examples does not compel Petitioner’s construction because “an alternative
`
`embodiment disclosed in the [patent]…does not outweigh the language of the
`
`claim.” TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed.
`
`Cir. 2008).
`
`10
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`

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`IPR2022-00033
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`Patent No. 10,423,658
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`In sum, Petitioner attempts to equate qualified and at best ambiguous
`
`testimony that an example including intervening inputs seems “similar” to a different
`
`claim limitation in a different patent as an admission that “responsive to” allows for
`
`any number of intervening inputs. Reply, 2-4. It is telling that this is Petitioner’s only
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`“evidence” in support of its construction.
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`C. Claims 8 and 11: “[first/second]-person-location selectable
`element”
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`Claim Term
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`Patent Owner’s Construction
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`“[first/second]-
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`first/second-person-location selectable element
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`Petitioner’s
`Construction
`a location
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`person-
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`location
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`in the first/second person view that is distinct
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`selectable
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`from the location selectable element and the
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`element in the
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`selectable
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`second/first-person-location selectable element
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`[first/second]
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`element
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`in the second/first person view
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`person view
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`Petitioner does not dispute that the “[first/second]-person-location selectable
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`element[s]” must be distinct from the “location selectable element.” POR, 24-27;
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`Reply, 5-6. The dispute is whether a single selectable element can be both the “first-
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`person-location selectable element” and the “second-person-location selectable
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`element.” Id. Both the plain claim language and precedent confirm these elements
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`must be distinct. POR, 24-27. Petitioner’s construction would render the words
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`11
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`“first” and “second” meaningless. Power Mosfet Techs., L.L.C. v. Siemens AG, 378
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`F.3d 1396, 1410 (Fed. Cir. 2004).
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`Petitioner again cites no expert testimony to support its proposed construction.
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`Reply, 5-6. In fact, Petitioner’s expert confirmed that the “‘first’ and ‘second’ claim
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`elements” require “disclosure of multiple such elements.” EX1003, ¶55. Consistent
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`with this understanding, the “first person” and “second person” in claim 5 refers to
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`two distinct people. POR, 27; Reply, 5-6. The same is true for other instances of
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`“first/second” elements, such as the “first” and “second” locations. Id. Petitioner
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`offers no credible legal or factual justification for construing the “[first/second]-
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`person-location selectable element[s]” differently
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`than, for example,
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`the
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`“[first/second] person” because none exists. Reply, 5-6.
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`Petitioner’s argument that the claims and specification do not require that the
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`“[first/second]-person-location selectable element[s]” have different appearances is
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`a red herring. Reply, 5. Patent Owner’s construction requires two distinct “person-
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`location selectable element[s]”; not different visual content. POR, 24-27.
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`Petitioner’s proposed substitution of Belitz’s thumbnails for A3UM’s pins (below)
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`illustrates this distinction.
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`Petition, 26; Reply, 26
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`
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`Claim 1 requires distinct “[first/second] thumbnail image[s]” at “[first/second]
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`location[s].” EX2024, 301:10-24. In Petitioner’s illustration, the thumbnails have
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`the same appearance but are nonetheless distinct elements. Reply, 26. That is all that
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`is required for the “[first/second]-person-location selectable element[s].”
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`Finally, Petitioner ignores legal authority holding that first/second modifiers
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`are used to distinguish distinct elements of the invention. POR, 27. Petitioner cites
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`no authority for the proposition that first/second instances of a claim element can be
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`met by a single element in the prior art. Reply, 5-6.
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` THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
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`A. Claim 1
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`1.
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`Petitioner still cannot identify a distinct “application view”
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`Contrary to Petitioner’s suggestion that it specifically identified “different
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`interfaces that met the requirements” of claim 1 (Reply, 23), the Petition identified
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`A3UM’s “user interface” as the claimed “application view” (Petition, 36; EX1003,
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`¶154; EX2024, 295:21-296:15, 296:21-297:6). The Petition’s only alleged examples
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`of an “application view” were A3UM’s “Faces and Places views.” Petition, 36. But
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`Petitioner also relied on the same Faces and Places views for the people view of
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`claim 5 (Petition, 51-52) and the map view of claim 1 (id., 37-40), respectively. As
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`discussed above, the “application view” and the other claimed views are separate
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`and distinct views. Supra, §II.A.
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`Recognizing the Petition’s shortcomings, Petitioner now argues that “any of
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`[A3UM’s] views that include the Toolbar and Inspector” are the claimed
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`“application view.” This new argument is impermissible. Reply, 23; 37 C.F.R. §
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`42.23. Petitioner cannot now identify a new “view” in A3UM as the “application
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`view” when the Petition mapped the “application view” to A3UM’s “user interface”
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`and only gave the “Faces and Places views” as examples. Wasica Finance GmbH v.
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`Continental Automotive Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).
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`2.
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`A POSITA would not have modified A3UM with Belitz as
`Petitioner proposes
`A POSITA would not modify A3UM with Belitz as proposed by Petitioner
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`because the modification would result in redundant information being displayed.
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`POR, 58-60. Specifically, Petitioner’s modification results in two different
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`numerical labels on the interface: Belitz’s count numbers and A3UM’s location label
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`numbers. EX2024, 304:19-306:3.
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`Petition, 26 (annotated)
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`
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`Petitioner does not dispute that a POSITA would have avoided redundancy in
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`designing user interfaces. Reply, 25-26; POR, 59-60; EX2025, ¶¶168-171; EX2022,
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`82, 288. Instead, Petitioner argues there is no redundancy because “the label
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`provides the name of the location and a (more descriptive) count of images.” Reply,
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`25. But as argued by Petitioner, the A3UM label and the Belitz count value would
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`have the same number. EX2024, 305:8-306:3; Petition, 45-46.4 Petitioner also does
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`not explain how A3UM’s location label provides a “more descriptive[] count.”
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`Reply, 25.
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`In addition, a POSITA would not replace A3UM’s pins with Belitz’s
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`thumbnails because doing so would substantially obscure and clutter the underlying
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`4 Similarly, because Petitioner argues the Browser below the map includes a location
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`name, location label’s name is redundant. Petition, 47-48.
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`map. POR, 60-61. Petitioner does not dispute that a POSITA would avoid doing this.
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`Reply, 24-25. Instead, Petitioner responds that the claims only require two
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`thumbnails having any size. Id., 25. This is a red herring. In Petitioner’s proposed
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`combination, every A3UM pin is replaced with a Belitz thumbnail.
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`Reply, 26; Petition, 26
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`
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`In other words, Petitioner proposed a 1-for-1 substitution of pins for thumbnails,
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`necessarily obscuring more of the underlying map. EX2024, 306:4-9.
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`
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`Petitioner’s suggestion that the size of Belitz’s thumbnails could be modified
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`to avoid map obstruction because the claims “permit use [of – sic] thumbnails of any
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`size” is a new argument not presented in the Petition. Reply, 26; Petition, 41-43;
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369-70 (Fed.
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`Cir. 2016). Indeed, Dr. Terveen “didn’t try to deal with” potential thumbnail size
`
`modifications. EX2024, 307:15-308:14. In any event, Petitioner fails to explain how
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`its new thumbnail size modification would work. Reply, 26. As shown below, the
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`only apparent way to have thumbnails not obscure more of the map is to make them
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`pin-sized, seemingly eliminating any utility to using a thumbnail.
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`Reply, 26 (modified)
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`
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`The Reply also claims that Patent Owner “ignore[d]” Petitioner’s argument
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`that A3UM and Belitz describe grouping multiple markers into a single marker to
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`obscure less of the map. Reply, 24. However, the Petition did not argue that multiple
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`A3UM pins would be combined into one Belitz thumbnail; rather, Petitioner
`
`proposed a 1-for-1 substitution. Petition, 26; EX2024, 308:15-310:9. The Reply’s
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`additional proposed modification reducing the number of thumbnails is another new,
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`impermissible argument. Intelligent Bio-Systems, 821 F.3d at 1369-70. But even if
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`the thumbnails were consolidated to reduce obstruction of the map (and Petitioner
`
`does not explain how this would be done), Dr. Surati explained that doing so still
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`results in a loss of information. EX2025, ¶183. For example, if 5 pins at 5 locations
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`are consolidated into 1 thumbnail at 1 location, the specific location information for
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`4 of the 5 original pins (i.e., 80% of the location information) is lost for a given zoom
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`level. Id.
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`3.
`No motivation to combine A3UM and Belitz
`Much of the Petition suggested only that the proposed A3UM-Belitz
`
`combination was possible rather than why a POSITA would modify A3UM. POR,
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`60-63. In reply, Petitioner argues that the proposed A3UM-Belitz combination need
`
`not be the “preferred” or “most desirable implementation,” but acknowledges that
`
`the evidence must show “a reason to modify the prior art in the claimed manner.”
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`Reply, 26-27. Indeed, Petitioner’s cited authority confirms that “the prior art as a
`
`whole must ‘suggest the desirability’ of the combination.” In re Fulton, 391 F.3d
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`1195, 1200 (Fed. Cir. 2004). The Reply identifies only two allegedly desirable
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`aspects of Petitioner’s combination. Reply, 27.
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`Petitioner first asserts that using thumbnails instead of pins would al