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 PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
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`IPR2021-01413
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`
`
`TABLE OF CONTENTS
`
`
`
`Page(s)
`
`
`Introduction ...................................................................................................... 1 
`Overview of the ‘658 Patent ............................................................................ 2 
`A. 
`Relevant Prosecution History ................................................................ 2 
`1. 
`The Related ‘426 Application ..................................................... 2 
`2. 
`The ‘658 Patent ........................................................................... 4 
`Summary of References Identified by Petitioner ............................................ 4 
`A. 
`The ‘658 patent ...................................................................................... 5 
`B. 
`A3UM (Ex. 1005).................................................................................. 8 
`C. 
`Belitz (Ex. 1006) ................................................................................... 9 
`  The Board Should Deny Institution Pursuant to 35 U.S.C. § 325(d) .............. 9 
`A. 
`Substantially The Same Art Was Already Considered ....................... 11 
`1. 
`The Office Already Considered Art That Is Substantially the
`Same as A3UM ......................................................................... 11 
`The Office Already Considered Art That Is Substantially the
`Same as Belitz ........................................................................... 14 
`Petitioner Did Not Show How the Office Allegedly Erred ................ 17 
`B. 
`Level of Ordinary Skill in the Art ................................................................. 18 
`  Claim Construction ........................................................................................ 18 
`  Petitioner Has Not Established a Reasonable Likelihood of Success ........... 18 
`A. 
`Petitioner Has Not Established That the Applied References
`Qualify as Printed Publication Prior Art ............................................. 19 
`1. 
`A3UM (Ex. 1005) ..................................................................... 20 
`2. 
`Other Non-Prior Art .................................................................. 37 
`Independent Claim 1 ........................................................................... 40 
`1. 
`Petitioner fails to meet its burden to show a POSITA would
`combine A3UM and Belitz ....................................................... 40 
`
` 
`
` 
`
` 
`
` 
`
`2. 
`
`B. 
`
`i
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`

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`Dependent Claims ............................................................................... 48 
`C. 
`  Conclusion ..................................................................................................... 48 
`
`
`
`
`ii
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`

`

`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765, 772 (Fed. Cir. 2018) .............................................................passim
`
`
`Advanced Bionics, LLC v. Med-EL Elktromedizinische Gerate GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) .................................... 10, 17, 18
`
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ......................................... 10, 17
`
`Blue Calypso, LLC v. Groupon, Inc.,
`
`815 F.3d 1331, 1348 (Fed. Cir. 2016) ................................................................ 19
`
`Callaway Golf Co. v. Acushnet Co.,
`
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 48
`
`Capsugel Belgium NV v. Innercap Techs., Inc.,
`
`IPR2013-00331, Paper 9 at 15 (PTAB Dec. 9, 2013) ........................................ 26
`
`Cisco Sys., Inc. v. Centripetal Networks, Inc.,
`
`IPR2018-01436, Paper 40 (PTAB Jan. 23, 2020) .................................. 28, 29, 31
`
`Dominion Dealer Sols., LLC v. AutoAlert, Inc.,
`
`IPR2014-00684, Paper 9 at 8 (PTAB Oct. 6, 2014) ........................................... 38
`
`Eli Lilly & Co. v. Teva Pharms. Int’l GmbH,
`
`8 F.4th 1331, 1344 (Fed. Cir. 2021) ................................................................... 38
`
`Ex Parte Stuart A. Nelson,
` No. 2020-004978, 2020 WL 8186425, at *15 (PTAB Dec. 31, 2020)) ............. 28
`
`Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-01039, Paper 29 at 9 (PTAB Dec. 20, 2019) ................... 20, 21, 30, 38
`
`iii
`
`

`

`
`
`
`
`
`In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986) .................................................. 20
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d. 1342, 1369 (Fed. Cir. 2012) ......................................................... 43, 47
`
`Molins PLC v. Textron, Inc.,
`48 F.3d 1172 (Fed. Cir. 1995) ............................................................................ 11
`
`
`Nautilus, Inc. v. Icon Health Fitness Inc.,
`IPR2017-01363, Paper 33 at 15-21 (PTAB Nov. 28, 2018) ........................ 35, 36
`
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 18
`
`
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 46
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348, 1368 (Fed. Cir. 2013) ................................................................ 48
`
`
`Quad Envtl. Techs. Corp. v. Union Sanitary Dist.,
`946 F.2d 870, 875 (Fed. Cir. 1991) .................................................................... 27
`
`
`Qualcomm Inc. v. Apple Inc.,
`24 F.4th 1367, 2022 WL 288013 (Fed. Cir. 2022) ........................... 27, 28, 37, 39
`
`
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`929 F.3d 1363, 1369 (Fed. Cir. 2019) .........................................................passim
`
`
`Sandoz Inc. v. Abbvie Biotechnology Ltd.,
`IPR2018-000002, Paper 13 at 12-13 (May 3, 2018) .......................................... 32
`
`
`Supercell Oy v. GREE, Inc.,
`IPR2021-00501, Paper at 6 (PTAB Aug. 17, 2021) ........................................... 26
`
`
`Yeda Research & Dev. Co. v. Mylan Pharm. Inc.,
`906 F.3d 1031, 1041 (Fed. Cir. 2018) ................................................... 37, 38, 44
`
`
`
`iv
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`

`

`
`
`
`
`Federal Statutes
`35 U.S.C. 301(a)(1) ................................................................................................. 26
`35 U.S.C. § 311(b) ....................................................................................... 18, 25, 26
`35 U.S.C. § 325(d) ..................................................................................... 1, 9, 10, 16
`Regulations
`37 C.F.R. § 42.65(a) ................................................................................................ 21
`Other Authorities
`MPEP § 904 ....................................................................................................... 11, 16 
`
`
`
`
`v
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`

`

`
`
`Exhibit No.
`
`LISTING OF EXHIBITS
`Description
`
`2001
`
`Declaration of Rajeev Surati, Ph.D.
`
`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, Ex. 1005 (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
`
`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
`
`ii
`
`

`

`
`
`MemoryWeb, LLC (“Patent Owner”) submits this preliminary response under
`
`37 C.F.R. § 42.107 to the Petition for Inter Partes Review (“Petition”) of U.S. Patent
`
`No. 10,423,658 (“the ‘658 patent”), filed by Apple, Inc. (“Petitioner” or “Apple”).
`
`
`
`Introduction
`Patent Owner respectfully requests that the Board deny institution. First, the
`
`Board should exercise its discretion to deny institution pursuant to 35 U.S.C. §
`
`325(d) because the references in the Petition, and the way they are combined, is
`
`substantially the same as a combination of references that was considered during
`
`prosecution of one of the ‘658 patent’s parent application. Petitioner does not
`
`adequately explain why the Office allegedly erred in allowing the challenged claims
`
`despite the fact that substantially the same combination was already considered by
`
`the Office.
`
`Second, Petitioner has not demonstrated a reasonable likelihood of success on
`
`the merits. Petitioner’s challenge relies on the Aperture 3 software product user
`
`manual (“A3UM”), but Petitioner failed to meet its burden to demonstrate that
`
`A3UM qualifies as a publicly available, printed publication. Petitioner’s arguments
`
`also fail on the merits at least because Petitioner fails to show that a person of
`
`ordinary skill in the art would have been motivated to combine A3UM and Belitz in
`
`the way Petitioner suggests.
`
`1
`
`

`

`
`
` Overview of the ‘658 Patent
`A. Relevant Prosecution History
`The ‘658 patent was filed as U.S. Application No. 15/375,927, which is a
`
`continuation of U.S. Application No. 14/193,426 filed on February 28, 2014 (now
`
`U.S. Patent No. 9,552,376), which is a continuation-in-part of U.S. Application No.
`
`13/157,124, filed June 9, 2011 (now U.S. Patent No. 9,098,531). Ex. 1001, cover;
`
`Ex. 1002.
`
`1.
`The Related ‘426 Application
`The prosecution of the ‘426 application included four Office Actions. In one
`
`Office Action dated April 15, 2016 (“the April 2016 Office Action”), the examiner
`
`rejected pending independent claims 1 and 15 as purportedly obvious over a non-
`
`patent reference entitled “Capture, Annotate, Browse, Find, Share: Novel Interface
`
`for Personal Photo Management” by Kang et al. (“Kang,” Ex. 2002) in view of
`
`another non-patent reference entitled “Generating Summaries and Visualizations for
`
`Large Collections of GeoReferenced Photographs” by Jaffe et al. ( “Jaffe,” Ex. 2003)
`
`and Hibino (Ex. 1041). Ex. 1016 at 358-85; Ex. 2001 at ¶ 70.
`
`In the April 2016 Office Action, the examiner alleged that Kang discloses
`
`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.”
`
`Ex. 1016 at 366. The examiner also alleged that Jaffe disclosed “a representative of
`
`2
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`

`

`
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`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 367-69. Continuing, the April 2016 Office Action asserts that it would have
`
`been obvious “to modify the teachings of Kang with the teachings of Jaffe” to
`
`include, among other things, Jaffe’s interactive map and first/second thumbnail
`
`images and first/second locations on the interactive map. Id. at 369. The examiner
`
`also alleged that Hibino “discloses that the thumbnail images are user selectable,”
`
`and further that “responsive to a click or tap of the first user selectable thumbnail
`
`image” and that Hibino displays scaled replicas of associated digital photographs or
`
`images or videos. Id. at 370.
`
`In a subsequent Office Action dated June 3, 2016 (“the June 2016 Office
`
`Action”), the examiner again rejected the claims based on Kang, Jaffe, and Hibino,
`
`and further in view of Tanaka (Ex. 1042). Ex. 1016 at 433-37; Ex. 2001 at ¶ 71.
`
`The examiner again asserted that it would be obvious to modify Kang to include 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 in view of
`
`Jaffe, “with the motivation of automatically selecting a summary set of photos from
`
`a large collection of geo-referenced photographs.” Ex. 1016 at 433-435. The
`
`examiner also found that Hibino disclosed selectable thumbnails, and that it would
`
`be obvious to modify Kang/Jaffe so that the thumbnails on the map were selectable.
`
`3
`
`

`

`
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`Id. at 435-436. The examiner further applied Tanaka as disclosing count value
`
`images partially overlapping or directly connected to thumbnail images, and that it
`
`would be obvious to further modify Kang in view of Tanaka “with the motivation of
`
`sorting pictures into groups and enabling ease of operation in selecting picture data.
`
`Id. at 436-437.
`
`In the notice of allowance, the examiner acknowledged 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. 1016 at 516. However, none
`
`of the art teach or suggest “systems such as those claimed,” which “allow[]
`
`navigation between the various enumerated views . . . wherein each view includes
`
`each of the enumerated elements.” Id.; Ex. 2001 at ¶ 72.
`
`2.
`The ‘658 Patent
`No Office Actions were issued during prosecution of the ‘658 patent. See Ex.
`
`1002. During an examiner interview, the examiner proposed amendments to then-
`
`independent claim 30. Ex. 1002 at 167. The notice of allowance cited Hibino and
`
`Tanka as “close prior art.” Id. at 174-76.
`
` Summary of References Identified by Petitioner
`Petitioner relies on two primary references: A3UM (Ex. 1005) and Belitz (Ex.
`
`1006). Each reference is discussed below.
`
`4
`
`

`

`
`
`A. The ‘658 patent
`The ’658 patent is directed to inventive methods organizing and displaying
`
`digital files, such as digital photographs and videos. Ex. 2001 at ¶ 47. To this end,
`
`the ‘658 patent discloses methods “allow[ing] people to organize, view, preserve
`
`these files with all the memory details captured, connected and vivified via an
`
`interactive interface.” Ex. 1001 at 1:56-60.
`
`For example, referring to FIG. 41, the ‘658 patent discloses a map view
`
`including “an interactive map.” Ex. 1001 at 29:25-41; Ex. 2001 at ¶ 48.
`
`Ex. 1001 at FIG. 41
`
`
`
`In the map view, “individual or groups of Digital Files are illustrated as photo
`
`thumbnails (see indicators 0874 and 0875)) on the map.” Ex. 1001 at 29:32-39; Ex.
`
`5
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`

`

`
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`2001 at ¶ 49. The geographic map is interactive in that the user can, for example,
`
`“narrow the map view by either using the Zoom in/Zoom out bar (0876) on the left
`
`or simply selecting the map.” Ex. 1001 at 29:37-39, FIG. 41; Ex. 2001 at ¶ 49.
`
`The ‘658 patent also discloses that in the map view (FIG. 41), “the user can
`
`select the thumbnail to see all the Digital Files with the same location (as seen FIG.
`
`34 (indicator 1630)).” Ex. 1001 at 29:34-36; Ex. 2001 at ¶ 49.
`
`Ex. 1001 at FIG. 34
`
`
`
`In the “Single Location Application View” shown in FIG. 34, “a single location
`
`(1630) is illustrated,” which includes “[t]he individual location name” and
`
`6
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`

`

`
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`“[t]humbnails of each Digital File within the specific collection.” Ex. 1001 at 24:22-
`
`28; Ex. 2001 at ¶ 50. Thus, the map view and location view allow users to efficiently
`
`and intuitively locate and display digital files associated with a particular location.
`
`Id.
`
`The ‘658 patent additionally discloses a people view for organizing digital
`
`files. Ex. 2001 at ¶ 51. For example, referring to FIG. 32, a people view 1400 is
`
`shown including for “each person, a thumbnail of their face along with their name is
`
`depicted.” Ex. 1001 at 22:52-62.
`
`Ex. 1001 at FIG. 32
`
`
`
`7
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`

`

`
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`The “Single People Profile Application View” includes, among other things, a
`
`person’s name 1431, a profile photo 1440, and photos 1452 associated with that
`
`person. Id. at 22:63-23:10; Ex. 2001 at ¶ 52.
`
`B. A3UM (Ex. 1005)
`A3UM is a compilation of several hundred HTML files that comprise the user
`
`manual for Apple Inc.’s Aperture 3 software product. Ex. 1005; Petition at 13. In
`
`relevant part, A3UM describes, among other things, a Places feature in the Aperture
`
`3 software product. See, e.g., Ex. 1005 at 28-30; Ex. 2001 at ¶ 62.
`
`In the Places view, a push pin on a map in the view pane marks the location
`
`where an image was taken, and the selected image is shown in the browser pane.
`
`See, e.g., Ex. 1005 at 436; Ex. 2001 at ¶ 63.
`
`
`
`Ex. 1005 at 436
`
`8
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`

`

`
`
`C. Belitz (Ex. 1006)
`Belitz is directed to a user interface for displaying “special locations” on a
`
`map. Ex. 1006 at Title, ¶¶ 2, 4, 19, 71; Ex. 2001 at ¶¶ 66-67. Belitz states that “it
`
`would be useful to be able to a present a user with an overview of associated images
`
`to special locations which enables [the] user to clearly see the associations. Ex. 1006
`
`at ¶ 4. Figs. 4(a) – (b) are screenshots of a device. Id. at ¶ 36.
`
`Ex. 1006 at FIGS. 4a-b
`
`
`
`The screenshots above have a graphical object 410 that indicates a location
`
`408 on the map 409. Ex. 1006 at ¶ 51
`
` The Board Should Deny Institution Pursuant to 35 U.S.C. § 325(d)
`The Board has discretion to deny institution when “the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” 35 U.S.C.
`
`§ 325(d). In exercising its discretion under § 325(d), the Board applies a two-part
`
`test: (1) whether the same or substantially the same art was previously presented or
`
`whether the same or substantially the same arguments were presented to the Office;
`
`9
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`

`

`
`
`and (2) if yes to either part of prong one, the Board considers “whether the petitioner
`
`has demonstrated that the Office erred in a manner material to the patentability of
`
`challenged claims.” Advanced Bionics, LLC v. Med-EL Elktromedizinische Gerate
`
`GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential). Relevant
`
`factors for denying institution under § 325(d) include:
`
`(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 at
`
`17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). As
`
`discussed below, the references in the Petition are substantially the same as
`
`references that were considered during prosecution of the ‘658 patent.
`
`10
`
`

`

`
`
`A.
`Substantially The Same Art Was Already Considered
`Petitioner argues that “[n]either A3UM or Belitz was considered during
`
`examination, nor any reference like them.” Petition at 88; see also id. at 89 (“no
`
`comparable art was considered”). Petitioner is wrong: as set forth below,
`
`substantially the same art was considered during prosecution of the ‘658 patent,
`
`including references that were applied in offices actions during prosecution of its
`
`parent application. See Molins PLC v. Textron, Inc., 48 F.3d 1172, 1184 (Fed. Cir.
`
`1995) (“[a]bsent proof to the contrary, we assume that the examiner did consider
`
`[initialed] references”); MPEP § 904 (“In all continuing applications, the parent
`
`applications must be reviewed by the examiner for pertinent prior art. The examiner
`
`must consider prior art which was cited and considered in the parent application”).
`
`1.
`
`The Office Already Considered Art That Is Substantially
`the Same as A3UM
`As discussed below, the Petition relies on the “Places” feature in A3UM. See
`
`Petition at 18-20. This screens are reproduced below:
`
`11
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`

`

`
`
`
`
`Ex. 1005 at 437
`
`The Places feature in A3UM are substantially the same as disclosures in the Kang
`
`reference that was cited in an IDS and considered during prosecution of the ‘658
`
`patent and during prosecution of the parent ‘426 application. Ex. 1002 at 186; Ex.
`
`1016 at 358-85.
`
`Kang describes grouping images based on location similar to the Places
`
`feature in A3UM. Ex. 2002 at 13-14; Ex. 2001 at ¶¶ 82-84. For example, Figure
`
`5(b) shows images grouped based on different locations (e.g., Florence, Sorrento,
`
`Tivoli, Pompeii, Capri).
`
`12
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`

`

`
`
`Ex. 2002 at Fig. 5(b)
`
`
`
`Within Figure 5(b), Kang shows the number of photos at each location (for example,
`
`10 photo(s) in Florence). Ex. 2002 at Fig. 5(b); Ex. 2001 at ¶ 83. During prosecution
`
`of the related ‘426 application, the examiner found that Kang included count values
`
`proximate to thumbnail images corresponding to a set of files having a geotag. Ex.
`
`1016 at 367.
`
`Figure 9(b) also shows images organized based on a “U.S. map” showing
`
`which states photos were taken in. Ex. 2002 at 18-19; Ex. 2001 at ¶ 84.
`
`13
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`

`

`
`
`Ex. 2002 at Fig. 9(b) (annotated)
`
`
`
`Kang is substantially similar to the Places feature in A3UM in that Kang provides
`
`for organizing images based on location. Ex. 2001 at ¶¶ 85-86.
`
`2.
`
`The Office Already Considered Art That Is Substantially
`the Same as Belitz
`As discussed herein, Petitioner relies on the thumbnail images shown in Figs.
`
`4a-4c of Belitz in its obviousness combination for the “first location selectable
`
`thumbnail image at a first location on the interactive map” and “second location
`
`selectable thumbnail image at a second location on the interactive map” claim
`
`limitations. See Petition at 24-30. The Office already considered art with
`
`substantially the same features.
`
`14
`
`

`

`
`
`Specifically, Jaffe (Ex. 2003) was cited and considered during prosecution of
`
`the ‘658 patent. Ex. 1002 at 186 (showing Jaffe considered on IDS). Jaffe was also
`
`applied as a secondary reference in claim rejections during prosecution of the parent
`
`‘426 application. See, e.g., Ex. 1016 at 358-85, 366-370. Jaffe illustrates an
`
`interactive map with a first and second thumbnail image. Ex. 2001 at ¶ 94.
`
`
`
`Ex. 2003 at Fig. 1(a)
`
`As discussed above, during prosecution of the ‘426 application, the examiner
`
`concluded that Jaffe discloses “a representation 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.” Ex. 1016 at 367-69;
`
`Ex. 2001 at ¶ 95. Thus, Jaffe is substantially the same as Belitz in the way that
`
`Petitioner relies on Belitz, as shown by the comparison below:
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`Ex. 1006 at Fig. 4(b)
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`Ex. 2003 at Fig. 1(a)
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`As shown, Fig. 4(b) of Belitz is substantially the same as Figure 1(a) of Jaffe
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`because it has a first image and a second image (associated with digital files) at
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`different locations on a map. Ex. 2001 at ¶¶ 94, 98. Likewise, the alleged Panoramio
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`and Picasa references Petitioner relies on are substantially the same as Jaffe. Id. at
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`¶¶ 96-97.
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`Additionally, in the June 2016 Office Action during prosecution of the parent
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`‘426 application, the examiner found that Hibino disclosed selectable thumbnails,
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`and that it would be obvious to modify Kang/Jaffe so that the thumbnails on the map
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`were selectable. Ex. 1016 at 435-436. The examiner further applied Tanaka as
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`disclosing count value images partially overlapping or directly connected to
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`thumbnail images, and that it would be obvious to further modify Kang in view of
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`Tanaka “with the motivation of sorting pictures into groups and enabling ease of
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`operation in selecting picture data. Id. at 436-437. Thus, the combination of Jaffe,
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`Hibino, and Tanaka is substantially the same as Belitz as applied in the Petition. Ex.
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`2001 at ¶¶ 104-105.
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`B.
`Petitioner Did Not Show How the Office Allegedly Erred
`Petitioner argues that “no factors relevant to § 325(d) favor the Board
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`exercising its discretion to not institute trial” but offers no rationale or analysis of
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`the Becton factors. Petition at 89. While Petitioner is correct that A3UM and Belitz
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`were not specifically considered during prosecution, that alone is not dispositive.
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`See Advanced Bionics, IPR2019-01469, Paper 6 at 7 (the § 325(d) inquiry considers
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`whether “substantially the same art was previously presented”) (emphasis added).
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`As discussed above, the portions of A3UM that Petitioner relies on are
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`substantially similar to Kang. Supra § IV.A.1. Similarly, the portions of Belitz that
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`Petitioner relies are substantially the same as the Jaffe, Hibino, and Tanaka
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`combination. Supra § IV.A.2. Petitioner’s proposed combination—modifying
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`A3UM with Belitz to have thumbnails with count values on an interactive map—is
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`substantially the same as the Kang, Jaffe, Hibino, and Tanka combination that was
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`applied during prosecution of the parent ‘426 application. Supra § IV.A.3. During
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`prosecution of the ‘658 patent, the Office was aware of these references and ways to
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`combine them. See MPEP § 904. The Office determined that the claims of the ‘658
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`patent were patentable despite having thoroughly considering substantially the same
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`combination of references as in the Petition. Accordingly, the Board should exercise
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`its discretion to deny institution. See Advanced Bionics, Paper 6 at 9 (“If reasonable
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`minds can disagree regarding the purported treatment of the art or arguments, it
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`cannot be said that the Office erred in a manner material to patentability”)
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` Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art (“POSITA”)
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`“would have had (1) at least a bachelor’s degree in computer science, computer
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`engineering, or electrical engineering, and (2) at least one year of experience
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`designing graphical user interfaces for applications such as photo management
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`systems.” Petition at 9 (citing Ex. 1003 at ¶¶ 41-43). Patent Owner reserves the
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`right to challenge Petitioner’s proposed level of skill in the art and offer its own
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`proposal if institution is granted.
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` Claim Construction
`For purposes of this Preliminary Response, Patent Owner agrees that the
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`claims can be afforded their plain and ordinary meaning and that no construction is
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`necessary for the Board to deny institution. Pet. at 8; Nidec Motor Corp. v.
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`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Patent
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`Owner reserves the right to propose claim constructions in its Patent Owner
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`Response should the Board institute an IPR.
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` Petitioner Has Not Established a Reasonable Likelihood of Success
`The Petition does not give rise to a reasonable likelihood of success on the
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`merits. Petitioner has not met its burden and review should not be instituted for the
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`two grounds in the Petition: purported obviousness over A3UM (Ex. 1005) in view
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`of Belitz (Ex. 1006) (claims 1-2 and 5-15) and purported obviousness over A3UM
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`in view of Belitz and Rasmussen (Ex. 1025) (claims 3-4). Petitioner has failed to
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`demonstrate a reasonable likelihood of success because (1) it has not meet its burden
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`to demonstrate that the hundreds of HTML files that make up A3UM were a publicly
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`available printed publication; and (2) it has not met its burden to show that a POSITA
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`would modify A3UM with Belitz.
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`A.
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`Petitioner Has Not Established That the Applied References
`Qualify as Printed Publication Prior Art
`An IPR may be instituted “only on the basis of prior art consisting of patents
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`or printed publications.” 35 U.S.C. § 311(b). This statutory text of § 102 requires:
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`“(1) that a putative prior art reference be printed and (2) that the reference be
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`published.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1369 (Fed.
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`Cir. 2019). Whether a reference was publicly accessible is the “touchstone” in
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`determining whether the reference qualifies as a printed publication. Blue Calypso,
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`LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016).
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`In assessing public accessibility, courts consider whether “persons interested
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`and ordinarily skilled in the subject matter or art, exercising reasonable diligence,
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`can locate” the reference. Acceleration Bay, LLC v. Activision Blizzard Inc., 908
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`F.3d 765, 772 (Fed. Cir. 2018). The fact that one can theoretically locate the
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`reference on the Internet, for example, is not enough because public accessibility
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`requires more than technical accessibility. Id. at 773. “In certain situations,
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`particularly for manuscripts or dissertations stored in libraries, courts may inquire
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`whether a reference was sufficiently indexed, catalogued, and shelved.” Hulu, LLC
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`v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 9 (PTAB Dec. 20,
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`2019) (precedential) (citing In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986)).
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`“[A]t the institution stage, the petition must identify, with particularity,
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`evidence sufficient to establish a reasonable likelihood that the reference was
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`publicly accessible before the critical date . . . and that there is a reasonable
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`likelihood that it qualifies as a printed publication.” Hulu, Paper 29 at 13. While
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`Petitioner need not prove public accessibility by a preponderance of the evidence for
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`institution, the Board typically requires “strong indicia that an asserted reference was
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`publicly accessible” at this stage. Id. at 18.
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`1.
`A3UM (Ex. 1005)
`Petitioner alleges that the user manual for its Aperture 3 product existed in at
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`least two forms: (1) a PDF and (2) an HTML file set. Petition at 12-13; Ex. 1020 at
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`¶ 9. Petitioner disavows any reliance on the PDF, so only the HTML file set is at
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`issue in this IPR. Id. at 13. Petitioner refers to an HTML file “set,” but never
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`identifies how many individual files are in this HTML file set. Based on the
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`information currently available to Patent Owner, it appears that Ex. 1005 is a
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`compilation of over seven hundred individual HTML files, rather than a single
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`document or file. Ex. 2001 at ¶ 112. Petitioner proffers no authority for the
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`proposition that hundreds of HTML files can collectively be considered a single
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`printed publication.
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`Petitioner alleges that the HTML file set qualifies as a printed publication
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`because it (1) “was included on the installation DVD in retail packages of Aperture
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`3 that were sold and distributed . . . in early 2010 and was copied to local storage of
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`a computer during installation of Aperture 3” and (2) “was also published on the
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`www.apple.com website.” Petition at 13 (citing Ex. 1020 at ¶¶ 12-20). As discussed
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`below, the Petition lacks the requisite “strong indicia” of public accessibility
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`required for institution. Hulu, Paper 29 at 9.
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`a. HTML Files on the Aperture 3 Installation DVD
`Dr. Terveen asserts that a skilled artisan “would have been able to re