`571-272-7822
`
`
`Paper 39
`Entered: May 18, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00033
`Patent 10,423,658 B2
`
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`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`I.
`
`INTRODUCTION
`
`We have authority to hear this inter partes review under 35 U.S.C. § 6.
`This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37
`C.F.R. § 42.73. For the reasons discussed below, we determine that
`Petitioner, Apple, Inc. (“Apple”), has shown by a preponderance of the
`evidence that claims 1–15 (the “challenged claims”) of U.S. Patent No.
`10,423,658 B2 (Ex. 1001, “the ’658 Patent”) are unpatentable. See 35
`U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
`A. Procedural History
`The Petition (Paper 1, “Pet.” or “Petition”) requested inter partes
`review of the challenged claims of the ’658 Patent. Patent Owner,
`MemoryWeb, LLC, filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper
`10), and Patent Owner filed a Preliminary Sur-reply (Paper 11). Based upon
`the record at that time, we instituted inter partes review on all challenged
`claims on the grounds presented in the Petition. Paper 12 (“Institution
`Decision” or “Dec.”).
`After institution, Patent Owner filed a Response (Paper 20, “PO
`Resp.”), Petitioner filed a Reply (Paper 26, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 31, “PO Sur-reply”).
`Patent Owner filed a Motion to Exclude certain evidence (Paper 34).
`Petitioner opposed the Motion (Paper 35). Patent Owner filed a Reply to
`Petitioner’s Opposition to the Motion (Paper 38).
`On March 14, 2023, an oral hearing was held.
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`B. Real Party-in-Interest
`Petitioner states that it “is the real party-in-interest for this petition.”
`Pet. 2. Patent Owner states that it is the real party-in-interest. See Paper 3,
`2. See also Paper 7, 2; Paper 19, 2.
`C. Related Matters
`According to the parties, the ’658 Patent was asserted in the following
`district court proceedings: MemoryWeb, LLC v. Apple Inc., Case No. 6:21-
`cv-00531 (W.D. Tex.); MyHeritage (USA), Inc. et. al. v. MemoryWeb, LLC,
`Case No. 1:21-cv-02666 (N.D. Ill.) (dismissed); and MemoryWeb, LLC v.
`Samsung Electronics Co., Ltd. et al., Case No. 6:21-cv-00411 (W.D. Tex.).
`Pet. 3; Paper 3, 2; Paper 7, 2; Paper 19, 2.
`Patent Owner also identifies U.S. Patent No. 9,098,531 (“the ’531
`patent”), U.S. Patent No. 9,552,376 (“the ’376 patent”), U.S. Patent No.
`10,621,228 (“the ’228 patent”), U.S. Patent No. 11,017,020 (“the ’020
`patent”), U.S. Patent No. 11,163,823 (“the ’823 patent”), and pending U.S.
`Patent Application 17/459,933 as related to the ’658 Patent. Paper 7, 2–3.
`Patent Owner additionally indicates the following inter partes
`proceedings are related matters: Apple Inc. v. MemoryWeb, LLC, IPR2022-
`00111 (PTAB) challenging the ’020 patent; Apple Inc. v. MemoryWeb, LLC,
`PGR2022-00006 (PTAB) challenging the ’020 patent; Apple Inc. v.
`MemoryWeb, LLC, IPR2022-00031 (PTAB) challenging the ’228 patent;
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00032 (PTAB) challenging the
`’370 patent; and Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413
`(PTAB), (challenging the ’228 patent.
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`D. The ’658 Patent (Ex. 1001)
`The ’658 Patent relates to a computer-implemented system and
`method for managing and using digital files such as digital photographs. Ex.
`1001, 1:16–19. In particular, the ’658 Patent aims to provide an “interactive
`platform” for users to gather, organize, view, navigate, search, share and
`archive digital files, e.g., digital photographs and videos. Id. at 13:12–18,
`13:56–59. The interactive platform may be provided via an “Application”
`having various “Application Views” for interaction with and organization of
`digital files. Id. at 8:59–9:7. A screenshot of an exemplary type of
`Application View, a “Location Application View,” is shown in Figure 41,
`reproduced below. Id. at 4:3–4.
`
` As shown in the Location Application View interface of Figure 41,
`“Digital Files are displayed within an interactive map (Google map shown as
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`an example).” Ex. 1001, 29:25–29. Further, “[i]n this view, individual or
`groups of Digital Files are illustrated as photo thumbnails (see indicators
`0874 and 0875) on the map and the user can select the thumbnail to see all
`the Digital Files with the same location.” Id. at 29:32–36. In the case that
`the user selects either one of the thumbnails, a “Single Location Application
`View” interface corresponding to the location is presented to the user, as
`shown in the bottom portion of Figure 34 reproduced below. Id.
`
`Focusing on the single location (1630) Locations Application View,
`an “individual location name is displayed at the top of the page (1632).” Ex.
`1001, 24:22–24. The single location Locations Application View further
`displays “[t]humbnails of each Digital File within the specific collections” of
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`digital files. Id. at 24:25–26; see id. at 23:56–59, Fig. 33. In the example
`shown in Figure 34, “one photo (1633) taken at Wrigley Field (1634) that is
`associated with the location called Wrigley Field” is displayed. Id. at 24:26–
`28.
`
`Turning to another Application View described by the ’658 Patent, a
`“Multiple People Application View” is shown in Figure 32 reproduced
`below. Id. at 3:58.
`
`
`The Multiple People Application View “can be seen by selecting
`‘People’ (1401) from any of the Application Views within the Application.”
`Ex. 1001, 22:46–48. As shown in Figure 32, “Multiple People Application
`View” 1400 “display[s] all the people that were created within the user's
`Application.” Id. at 22:44–46. “For each person, a thumbnail of their face
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`along with their name is depicted. In this figure, Jon Smith (1403) and JC
`Jon Smith (1404) along with some other people are illustrated.” Id. at
`22:52–55.
`Further, “[f]or each person,” there are “tags that are associated to
`[that] person.” Ex. 1001, 23:4–6. In “Single People Profile Application
`View” 1430, associated tags are used show that there are, e.g., “four photos
`(1452) associated with that person.” Id. at 23:6–9. In another example, the
`person “grandma” has been tagged in, and so, is associated with, 100 photos.
`Id. at 24:56–59. Put another way, digital files have tags, e.g., in a “Tag
`Block of the Relationship Table for the Digital File,” which associate a
`particular digital file with a particular person or otherwise characterizes and
`documents the digital file. See id. at 20:1–6; 24:42–52.
`E. Challenged Claims
`Petitioner challenges claims 1–15 of the ’658 Patent. Pet. 1. Claim 1,
`the only independent claim is reproduced below:
`1. A computer-implemented method of displaying at least a
`portion of a plurality of (i) digital photographs, (ii) videos, or (iii)
`a combination of (i) and (ii), each of the digital photographs and
`videos being associated with a geotag indicative of geographic
`coordinates where the respective digital photograph or video was
`taken, the method comprising:
`displaying an application view on a video display device
`including displaying a plurality of selectable elements, the
`plurality of selectable elements including a location selectable
`element;
`responsive to a click or tap of the location selectable element,
`displaying a map view on a video display device, the displaying
`the map view including displaying:
`(i) a representation of an interactive map;
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`(ii) a first location selectable thumbnail image at a first
`location on the interactive map, the first location being
`associated with the geographic coordinates of a first
`geotag, a first set of digital photographs and videos
`including all of the digital photographs and videos
`associated with the first geotag;
`(iii) a first count value image partially overlapping the first
`location selectable thumbnail image, the first count value
`image including a first number that corresponds to the
`number of digital photographs and videos in the first set of
`digital photographs and videos;
`(iv) a second location selectable thumbnail image at a
`second location on the interactive map, the second location
`being associated with the geographic coordinates of a
`second geotag, a second set of digital photographs and
`videos including all of the digital photographs and videos
`associated with the second geotag; and
`(v) a second count value image partially overlapping the
`second location selectable thumbnail image, the second
`count value image including a second number that
`corresponds to the number of digital photographs and
`videos in the second set of digital photographs and videos;
`responsive to a click or tap of the first location selectable
`thumbnail image, displaying a first location view on the video
`display device, the displaying the first location view including
`displaying (i) a first location name associated with the first
`geotag and (ii) a scaled replica of each of the digital photographs
`and videos in the first set of digital photographs and videos, the
`displayed scaled replicas of each of the digital photographs and
`videos in the first set of digital photographs and videos not being
`overlaid on the interactive map; and
`responsive to a click or tap of the second location selectable
`thumbnail image, displaying a second location view on the video
`display device, the displaying the second location view including
`displaying (i) a second location name corresponding to the
`second geotag and (ii) a scaled replica of each of the digital
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`photographs and videos in the second set of digital photographs
`and videos, the displayed scaled replicas of each of the digital
`photographs and videos in the second set of digital photographs
`and videos not being overlaid on the interactive map.
`Ex. 1001, 35:13–36:7.
`F. Evidence
`Petitioner relies upon the following evidence:
`
`(1) Aperture 3 User Manual, Apple Inc. (2009) (“A3UM”) (Ex.
`1005);
`(2) U.S. Publication No. 2010/0058212 A1, published Mar. 4,
`2010 (“Belitz”) (Ex. 1006);
`(3) U.S. Patent. No. 7,620,496 B2, issued November 17, 2009
`(“Rasmussen”) (Ex. 1025); and
`(4) Declaration of Dr. Loren Terveen (Ex. 1003).
`Patent Owner relies upon the following evidence:
`(1) Declaration of Rajeev Surati, Ph.D. (Ex. 2001).
`G. Asserted Grounds of Unpatentability
`Claim(s) Challenged
` 35 U.S.C. §1
`1, 2, 5–15
`103(a)
`3, 4
`103(a)
`
`Reference(s)
`A3UM, Belitz
`A3UM, Belitz, Rasmussen
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`1 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. The ’658 Patent claims priority
`to Patent Application No. 13/157,214, providing an effective filing date of
`June 9, 2011. See Ex. 1001, code (63). Because this priority date is before
`the effective date of the applicable AIA amendments (March 16, 2013), we
`use the pre-AIA version of 35 U.S.C. § 103 in this proceeding.
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`II. ANALYSIS
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`A. Principles of Law: Obviousness
`A claim is unpatentable as obvious under 35 U.S.C. § 103 if the
`differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of nonobviousness, i.e., secondary
`considerations.2 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
`17–18 (1966).
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. Reaching this conclusion, however, requires more than a mere
`showing that the prior art includes separate references covering each
`separate limitation in a claim under examination. Unigene Labs., Inc. v.
`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
`requires the additional showing that a person of ordinary skill would have
`
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`2 The current record does not present or address any evidence of
`nonobviousness.
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`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention. Id.
`B. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`(1966). “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner contends that a person of ordinary skill in the art “would
`have had (1) at least a bachelor’s degree in computer science, computer
`engineering, or electrical engineering, and (2) at least one year of experience
`designing graphical user interfaces for applications such as photo
`management systems.” Pet. 9 (citing Ex. 1003 ¶¶ 41–43). Patent Owner
`“does not dispute Petitioner’s proposed level of skill.” PO Resp. 14.
`Petitioner’s description of the level of ordinary skill is generally
`consistent with the subject matter of the ’658 Patent, with the exception of
`the qualifier “at least,” which creates a vagueness that may extend the level
`to that reflecting an expert. Based on the record presented, including our
`review of the ’658 Patent and the types of problems and solutions described
`in the ’658 Patent and the cited prior art, we determine that a person of
`ordinary skill in the art is a person with a bachelor’s degree in computer
`science, computer engineering, electrical engineering, or a related field, with
`two years of academic or industry experience designing graphical user
`interfaces for applications such as photo management systems.
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`C. Claim Construction
`Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction
`standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). Under Phillips, claim terms are generally given their
`ordinary and customary meaning as would be understood by one with
`ordinary skill in the art in the context of the specification, the prosecution
`history, other claims, and even extrinsic evidence including expert and
`inventor testimony, dictionaries, and learned treatises, although extrinsic
`evidence is less significant than the intrinsic record. Phillips, 415 F.3d at
`1312–17. Usually, the specification is dispositive, and it is the single best
`guide to the meaning of a disputed term. Id. at 1315.
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner asserts that “the Board need not expressly construe the
`claims.” Pet. 12. “Patent Owner agrees that the claims should be afforded
`their plain and ordinary meaning, but offers a discussion of that meaning in
`connection with certain terms and phrases . . . in the event the Board
`determines that is necessary to resolve Petitioner’s patentability challenges.”
`PO Resp. 15. In its Sur-reply, Patent Owner proposes constructions for the
`claim terms “application view,” “responsive to displaying,” and
`“[first/second]-person-location selectable element.” PO Sur-reply 8–13.
`Patent Owner has not shown good cause as to why we should consider these
`claims constructions at this late stage in this proceeding.
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`We agree with the Petitioner that no claim terms require express
`construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that
`are in controversy need to be construed, and “only to the extent necessary to
`resolve the controversy”). To the extent that the meaning of any claim term
`is addressed, we use its ordinary and customary meaning as discussed in our
`analysis below.
`D. Relevant Prior Art
`A3UM (Ex. 1005)
`1.
`A3UM is a user manual for Apple’s Aperture software product,
`showing a copyright date of 2009. Ex. 1005, 3. Petitioner asserts that
`A3UM is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 12.
`A3UM explains that the Aperture software product (“Aperture”) is a
`“digital image management system that can track thousands of digital
`images and provides . . . image management and adjustment tools” and
`allows the user to “work with high-quality JPEG, TIFF, and RAW image
`files-and even HD video files.” Ex. 1005, 1–2. A3UM states that Aperture
`organizes “photos, audio clips, and video clips.” Id. at 21. A3UM
`“describes the Aperture interface, commands, and menus and gives step-by-
`step instructions for creating Aperture libraries and for accomplishing
`specific tasks.” Id. at 3. One particular Aperture interface is the Aperture
`main window, reproduced below in an Aperture main window screenshot.
`Id. at 46.
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`The Aperture main window shows various interface features including
`an “Inspector pane,” a “Toolbar,” a “Viewer,” a “Browser,” and a “Vault
`pane.” Id. The Browser displays “thumbnail images contained in a folder,
`project, or album.” Id. at 47. In this example, a “single row of thumbnails”
`is displayed. Id. at 47–48. The Browser also displays “video files
`[imported] into Aperture.” Id. at 271. Next, the Viewer shows selected
`thumbnails from the Browser at full size, or allows side-by-side image
`comparison. Id. at 51. If video items were selected from the Browser, the
`Viewer can display those videos. Id. at 271. Further, the Inspector pane
`provides access to a Library inspector, via its Library tab, reproduced in an
`Inspector Pane screenshot below. Id. at 54.
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`“The Library inspector holds containers—projects, folders, and
`albums—” which are used to organize images. Id. at 55. When a particular
`“project, folder, or album in the Library inspector” is selected, “the images
`are displayed in the Browser and Viewer.” Id. Further, the “Library
`inspector also provides a number of ways to view items in the library” and
`provides access to additional Aperture interface views, such as a Places view
`and a Faces view. Id. Those additional views are accessed by selecting the
`Places or Faces item in the Library inspector (as shown in the Inspector Pane
`screenshot) or by selecting the Places or Faces button in the toolbar (as
`shown in the Aperture main window screenshot). Id. at 81, 424.
`The Places view “automatically plots the location of each image on
`[a] map” and provides “images associated with a location.” Id. at 435–436.
`That is, the Places view organizes “images by the locations where they were
`taken” and “categorizes the images by location and coverts” the location to
`“place names, such as Vancouver, Canada.” Id. at 30. A screenshot of one
`exemplary Places view, within the overall Aperture main window, is
`reproduced below. Id.
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`Another exemplary screenshot of the Places view showing “location
`pins [to] mark the locations where images or groups of images were shot” is
`reproduced below. Id. at 435–437.
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`As shown above, “location pins mark the locations where images
`or groups of images were shot.” Id. at 435–437. In particular, the
`screenshot shows a location pin having a text callout indicating that number
`of photos were taken at a national park. When a pin is selected, “the image
`or images associated with the location marked by the [selected] pin are
`selected in the Browser.” Id. at 436.
`Turning to the Faces view, the Faces view “show[s] all the photos of
`people with assigned names in the Aperture library.” Id. at 78. A screenshot
`of the Faces view, within the overall Aperture main window, showing
`images of people with assigned names, is reproduced below. Id. at 29, 78.
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`By selecting a “person’s snapshot in Faces view,” Aperture displays
`“all of the images in [the] library in which a person appears.” Id. at 29, 79.
`A screenshot of all the images of a selected person is reproduced below. Id.
`at 79–80; see id. at 29.
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`As shown above, “all the confirmed images of that person appear at
`the top of the Faces browser, and all the suggested images of the person
`appear in a separate section below the confirmed images.” Id. at 79–80.
`The suggested images of the person are determined in an automated process
`which uses “face detection and face recognition technology” to suggest
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`images corresponding to a named person. Id. at 417–419. Those suggested
`images can be confirmed as matches for the named person by selecting the
`“Confirm Faces” button. Id. at 80, 425. Alternatively, an image can have a
`name manually assigned to it. Id. at 421–422.
`Belitz (Ex. 1006)
`2.
`Belitz is a U.S. Patent Publication that published on March 4, 2010,
`more than one year before the earliest priority date of the ’658 Patent.
`Ex. 1001, code (22), (60); Ex. 1006, code (43). Petitioner asserts that Belitz
`is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 21.
`Belitz relates to a “user interface . . . configured to display a map and
`to display at least one marked location on said map.” Ex. 1006, code (57).
`By way of background, Belitz explains that “[i]t is common to mark special
`locations on a map by associating a graphical object with that location.
`Examples of such locations are service points, restaurants, tourist attractions,
`visited places etc[.] and examples of graphical objects are photographs taken
`at such a location.” Id. ¶ 2. Belitz further explains “[i]f many locations are
`located close to one another they overlap and the view of the associated
`images become cluttered and it is difficult to discern between the various
`objects and the user is not provided with a good view of what location is
`associated with what.” Id. Belitz presents a user interface attempting to
`address those concerns. Id. ¶ 5. Figures 4a and 4b, reproduced below, show
`screenshots of the user interface. Id. ¶ 51, 55.
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`As shown in Figure 4a, a “map 409 is displayed of a town called
`Roskilde. A location 408 is marked by a graphical object 410.” Id. ¶ 51.
`“[G]raphical object 410 has a visual representation 411 which in this
`embodiment is a photograph that is associated with the location.” Id. ¶ 52.
`Furthermore, “graphical object 410 carries a number indicator 412 which
`presents a viewer with a number. The number indicates how many graphical
`objects 410 are associated with that location and are stacked into one
`graphical object 410.” Id. ¶ 54. Furthermore, “graphical objects stacked in
`the displayed graphical object or graphical group object 410 . . . can be
`associated with other locations that are in close proximity to the marked
`location 408” because “if the graphical objects associated with each location
`were to be displayed separately they would overlap which would clutter the
`view and be confusing to a user.” Id.
`Figure 4b shows map 408 having been “zoomed in showing the area
`in greater detail.” Id. ¶ 55. At this zoom level, graphical object 410 is “split
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`up into 4 graphical objects 410a, 410b, 410c and 410d” because the display
`of those graphical objects would not overlap. Id. Those graphical objects
`themselves also consist of some number of graphical objects. Id.
`When a graphical object, e.g., graphical object 410, 410a, 410b, 410c,
`or 410d, is selected, a popup window is displayed over the graphical object.
`Id. ¶ 60. Figure 4c, reproduced below, is a screenshot showing the user
`interface after the selection of graphical object 410c. Id.
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`
`As shown in Figure 4c, the “popup window shows at least some of the
`visual representations 411 of the graphical object 410c.”. One 414 of the
`visual representations 411 or images as they are in this embodiment is
`shown in a larger size than the others which are shown in a list 415.” Id. In
`some embodiments, “graphical objects are photographs that are associated
`with the location where they were taken. The visual representations are
`thumbnails of the photographs.” Id. ¶ 62.
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`Rasmussen (Ex. 1025)
`3.
`Rasmussen is a U.S. Patent that issued on November 17, 2009, more
`than one year before the earliest priority date of the ’658 Patent. Ex. 1001,
`code (22), (60); Ex. 1025, code (45). Petitioner asserts that Rasmussen is
`prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 23.
`Rasmussen “relates to digital mapping systems, and more particularly,
`to techniques that provide more accurate and useful map scales.” Ex. 1025,
`1:18–20. In particular, Rasmussen describes digital map tools and user
`interface options for a digital map. Id. at 9:35–49, 48. Figure 2, reproduced
`below, shows exemplary tools and interface options. Id.
`
`As shown in Figure 2, a user may position endpoints at various
`locations on the map, creating measuring tool 205b between the endpoints.
`Id. at 9:61–65. “If the user clicks the tool 205b endpoints or the line
`between them, an information window . . . opens to show information about
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`the map locations marked by the tool 205b endpoints.” Id. at 10:17–23. For
`example, “information window 215 is shown, and includes
`latitude/longitude and/or geocode information.” Id. at 10:25–27.
`E. A3UM as a Printed Publication
`Petitioner argues that A3UM should be considered a printed
`publication because A3UM was publicly available through the Aperture 3
`website and software DVD. Pet. 12–17. Patent Owner disputes this and
`claims that Petitioner “has failed to establish that A3UM qualifies as printed
`publication prior art [under Section 102] by a preponderance of the
`evidence.” PO Resp. 28.
`Applicable Law
`1.
`Our governing statutes provide “[a] petitioner in an inter partes
`review may request to cancel as unpatentable one or more claims of a patent
`only on a ground that could be raised under section 102 or 103 and only on
`the basis of prior art consisting of patents or printed publications.” 35
`U.S.C. § 311(b). Although Patent Owner challenges whether A3UM is a
`printed publication, the burden of persuasion remains on Petitioner to
`demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat'l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
`Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
`(discussing the burden of proof in an inter partes review). Petitioner must
`demonstrate by a preponderance of the evidence that the challenged claims
`are unpatentable—including showing that the references relied upon are
`patents or printed publications. See 35 U.S.C. § 311(b); Nobel Biocare
`Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018), as
`amended (Sept. 20, 2018). “The preponderance of the evidence standard
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`applicable to inter partes reviews requires proof that a fact was more likely
`than not to have occurred.” Instradent USA, Inc. v. Nobel Biocare Servs.
`AG, IPR2015-01786, Paper 106 at 33 (PTAB Feb. 15, 2017) (internal
`quotations omitted).
`The determination of whether a reference qualifies as a “printed
`publication” is a legal conclusion based on underlying factual findings.
`Nobel, 903 F.3d at 1375 (citing Jazz Pharm., Inc. v. Amneal Pharm., LLC,
`895 F.3d 1347, 1356 (Fed. Cir. 2018)). The underlying factual findings
`include whether the reference was publicly accessible. Id. (citing In re NTP,
`Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011)).
`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 1368, 1380 (Fed. Cir. 2018)
`(citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). In certain
`situations, particularly for manuscripts or dissertations stored in libraries,
`courts may inquire whether a reference was sufficiently indexed, catalogued,
`and shelved. See, e.g., In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986); In
`re Lister, 583 F.3d 1307, 1315 (Fed. Cir. 2009) (manuscript became publicly
`accessible once it was placed in a searchable database). In other situations,
`such as for information displayed at meetings and trade shows, courts have
`explained that indexing is not required if it was sufficiently disseminated.
`See Medtronic, 891 F.3d at 1381 (citing Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358, 1365 (Fed. Cir. 2014)). The Federal Circuit has summarized
`that “[w]hile cataloging and indexing have played a significant role in our
`cases involving library references, we have explained that neither cataloging
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`nor indexing is a necessary condition for a reference to be publicly
`accessible.” Lister, 583 F.3d at 1312 (citing Klopfenstein, 380 F.3d at
`1348).
` “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 at
`898–99). “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)). The Federal Circuit has “interpreted § 102 broadly, finding that
`even relatively obscure documents qualify as prior art so long as the relevant
`public has a means of accessing them.” GoPro, Inc. v. Contour IP Holding
`LLC, 908 F.3d 690, 693 (Fed. Cir. 2018).
`What constitutes a “printed publication” must also be determined in
`light of the technology employed. Samsung Elecs. Co. v. Infobridge Pte.
`Ltd., 929 F.3d 1363, 1369 (Fed. Cir. 2019) (citing Wyer, 655 F.2d at 226).
`Public accessibility requires more than technical accessibility. Id. (citing
`Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed.
`Cir. 2018)). “[A] work is not publicly accessible if the only people who
`know how to find it are the ones who created it.” Id. at 1372. On the other
`hand, “a petitioner need not establish that specific p