Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: May 20, 2022
`
`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
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
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`IPR2022-00033
`Patent 10,423,658 B2
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1 (“Pet.” or
`“Petition”)) requesting institution of an inter partes review of claims 1–15 of
`U.S. Patent No. 10,423,658 B2 (Ex. 1001, “the ’658 Patent”). MemoryWeb,
`LLC (“Patent Owner”) timely filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). Additionally, on April 4, 2022, we authorized Petitioner
`to file a preliminary reply, limited solely to addressing whether the Aperture
`3 User Manual (A3UM) (Ex. 1005) qualifies as a printed publication; we
`further authorized Patent Owner to file a preliminary sur-reply, limited
`solely to addressing Petitioner’s arguments and evidence presented in the
`reply brief. Paper 9, 2–3. Petitioner timely filed a Preliminary Reply (Paper
`10, “Prelim. Reply”) and Patent Owner timely filed a Sur-reply to
`Petitioner’s Reply (Paper 11, “Prelim. Sur-reply”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition and any response thereto
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the Petition and the evidence of record, we conclude that
`the information presented in the Petition establishes that there is a reasonable
`likelihood that Petitioner would prevail in challenging at least one of claims
`1–15 of the ’658 Patent as unpatentable under the grounds presented in the
`Petition. Pursuant to § 314, we hereby institute an inter partes review as to
`the challenged claims of the ’658 Patent.
`A. Real Parties in Interest
`In its Petition and most recently updated Mandatory Notices,
`Petitioner identifies itself, Apple Inc., as the only real party-in-interest.
`Pet. 2; Paper 6, 1. In its original and most recently updated Mandatory
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`IPR2022-00033
`Patent 10,423,658 B2
`Notices, Patent Owner identifies itself, MemoryWeb, LLC, as the only real
`party in interest. Paper 3, 2; Paper 7, 2.
`B. Related Matters
`The parties state that the ’658 Patent is related to the following U.S.
`Patents: 9,098,531 (“the ’531 Patent”); 9,552,376 (“the ’376 Patent”);
`10,621,228 (“the ’228 Patent”); 11,017,020 (“the ’020 Patent”); 11,163,823
`(“the ’823 Patent”), and 11,170,042 (“the ‘042 Patent”). Paper 6, 1; Paper 7,
`2. The parties further state that the ’658 Patent is related to pending U.S.
`Patent Application 17/459,933. Paper 6, 1; Paper 7, 3.
`The parties identify the following as related district court matters:
`• MemoryWeb, LLC v. Apple Inc., No. 6:21-cv-00531 (W.D. Tex.);
`• MemoryWeb, LLC v. Samsung Electronics Co., Ltd. et al., No.
`6:21-cv-00411 (W.D. Tex.); and
`• MyHeritage (USA), Inc. et. al. v. MemoryWeb, LLC, No. 1:21-cv-
`02666 (N.D. Ill.).
`Paper 6, 1–2; Paper 7, 2.
`Further, the parties identify the following petitions that the related
`patents are the subject of:
`• Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (’228
`Patent);
`• Samsung Electronics Co., Ltd., v. MemoryWeb, LLC, IPR2022-
`00222 (’228 Patent);
`• Apple Inc. v. MemoryWeb, LLC, IPR2022-00031 (’228 Patent);
`• Apple Inc. v. MemoryWeb, LLC, IPR2022-00032 (’376 patent);
`• Apple Inc. v. MemoryWeb, LLC, IPR2022-00111 (‘020 patent);
`and
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`IPR2022-00033
`Patent 10,423,658 B2
`• Apple Inc. v. MemoryWeb, LLC, PGR2022-00006 (‘020 patent).
`Paper 6, 1; Paper 7, 2–3.
`C. The ’658 Patent
`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.
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`IPR2022-00033
`Patent 10,423,658 B2
`As shown in the Location Application View interface of Figure 41,
`“Digital Files are displayed within an interactive map (Google map shown as
`an example).” Id. at 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, a screenshot 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).” Id.
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`at 24:22–24. The single location Locations Application View further
`displays “[t]humbnails of each Digital File within the specific collections” of
`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, a screenshot,
`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.”
`Id. at 22:46–48. As shown in Figure 32, “Multiple People Application
`
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`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
`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.” Id. at 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.
`D. Illustrative Claims
`Petitioner challenges claims 1–15. Claim 1 is the only independent
`claim. Claim 1 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:
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`(i) a representation of an interactive map;
`(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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`IPR2022-00033
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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.
`E. 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);
`(2) Hyunmo Kang, et al., Capture, Annotate, Browse, Find, Share:
`Novel Interfaces for Personal Photo Management, 23(3) International
`Journal of Human-Computer Interaction, 315–337 (2007) (“Kang”)
`(Ex. 2002);
`(3) Alexandar Jaffe et al., Generating Summaries and Visualization
`for Large Collections of Geo-Referenced Photographs, MIR’06
`(2006) (“Jaffe”) (Ex. 2003).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–15 would have been unpatentable on
`the following grounds:
`Claim(s) Challenged
`1, 2, 5–15
`
`Reference(s)/Basis
`A3UM, Belitz
`
`35 U.S.C. §
`103
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`Patent 10,423,658 B2
`Claim(s) Challenged
`3, 4
`
`
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`A3UM, Belitz, Rasmussen
`
`II. ANALYSIS
`A. Discretionary Denial of Institution under 35 U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny
`a petition that presents the same or substantially the same art or arguments as
`were previously presented to the Office. “[T]he art and arguments must
`have been previously presented to the Office during proceedings pertaining
`to the challenged patent.” Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB
`Feb. 13, 2020) (precedential) (“Advanced Bionics”). Advanced Bionics
`provides examples of “proceedings pertaining to the challenged patent.”
`“The proceedings in which the art was previously presented include, for
`example: examination of the underlying patent application, reexamination of
`the challenged patent, a reissue application for the challenged patent, and
`AIA post-grant proceedings involving the challenged patent.” Id. at 8.
`To evaluate arguments for discretionary denial under § 325(d), the
`Board uses a two-part framework that considers:
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and (2)
`if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims. If a
`condition in the first part of the framework is satisfied and the
`petitioner fails to make a showing of material error, the Director
`generally will exercise discretion not to institute inter partes
`review.
`Advanced Bionics, Paper 6 at 8–9 (footnote omitted).
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`Patent 10,423,658 B2
`1. Part One of the Advanced Bionics Framework
`Patent Owner asserts that “the references in the Petition are
`substantially the same as references that were considered during prosecution
`of the ‘658 patent.” Prelim. Resp. 10. According to Patent Owner, “[t]he
`Places feature in A3UM [is] substantially the same as disclosures in the
`Kang reference that was cited in an IDS and considered during prosecution
`of the ‘658 patent and during prosecution of the parent ‘426 application,”
`because “Kang describes grouping images based on location similar to the
`Places feature in A3UM.” Id. at 12 (citing Ex. 1002 ¶ 186, Ex. 1016, 358–
`386; Ex. 2002, 13–14; Ex. 2001 ¶¶ 82–84).
`Petitioner contends that A3UM pertains to videos in addition to
`photos and that this is the feature Patent Owner relied upon to obtain
`allowance of the ’658 patent. Pet. 89. We have reviewed the prosecution
`history on the ’658 patent and agree with Petitioner that the ’658 patent was
`allowed after entry of an examiner’s amendment amending the independent
`claims to require videos as well as photographs. Ex. 1002, 167–173.
`Although Kang discusses video collections as presenting additional
`challenges (Ex. 2002, 335), it is clear that the Examiner did not consider
`Kang to disclose photographs and videos as claimed in the ’658 patent in
`that the Examiner proposed adding limitations requiring both photographs
`and videos to distinguish over the prior art. Ex. 1002, 173–174. A3UM, as
`will be discussed in further detail in Section II.D.2.a below, does disclose
`these features. Thus, A3UM is not substantially the same as Kang.
`Patent Owner asserts further that “Jaffe is substantially the same as
`Belitz,” because both references show an interactive map with first and
`second thumbnail images. Prelim. Resp. 15. Even if, however, we accept
`Patent Owner’s assertion that Belitz is substantially the same as Jaffe, that
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`does not mean that the Petition relies on substantially the same prior art that
`was previously presented to the Office because Belitz is presented in
`combination with A3UM which discloses the feature relied upon to obtain
`allowance of the ’658 patent. Patent Owner also asserts that “the
`combination of Jaffe, Hibino, and Tanaka is substantially the same as Belitz
`as applied in the Petition.” Id. at 16–17 (citing Ex. 2001 ¶¶ 104–105). This
`argument is unconvincing for the same reason.
`To the extent that Patent Owner asserts that the Petition relies on
`substantially the same arguments as previously presented, we disagree as no
`arguments pertaining to videos, the feature relied upon to obtain allowance
`of the ’658 patent, were made.
`For these reasons, we find that the Petition does not present the same
`or substantially the same art or arguments that previously were presented to
`the Office. Because we find that neither of the conditions of Part One of the
`Advanced Bionics framework is satisfied, we do not proceed to Part Two of
`the framework. Accordingly, we decline to exercise discretion to deny
`institution of inter partes review under 35 U.S.C. § 325(d).
`B. Level of Ordinary Skill in the Art
`In determining the level of skill in the art, we consider the type of
`problems encountered in the art, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`technology, and the educational level of active workers in the field. Custom
`Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`Petitioner contends that a “person of ordinary skill in the art in 2011
`(or 2014) would have had (1) at least a bachelor’s degree in computer
`science, computer engineering, or electrical engineering, and (2) at least one
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`year of experience designing graphical user interfaces for applications such
`as photo management systems.” Pet. 9 (citing Ex. 1003 ¶¶ 41–43). At this
`stage in the proceeding, Patent Owner does not contest Petitioner’s
`contention. See Prelim. Resp. 18.
`Based on the record presented, including our review of the ’658 patent
`and the types of problems and solutions described in the patent and the cited
`prior art, we adopt Petitioner’s assessment of the level of ordinary skill in
`the art and apply it for purposes of this Decision.
`C. Claim Construction
`For petitions filed on or after November 13, 2018, the “broadest
`reasonable interpretation” standard has been replaced with the federal court
`claim construction standard that is used to construe a claim in a civil action
`under 35 U.S.C. § 282(b). This is the same claim construction standard
`articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc), and its progeny.
`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.
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`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 states that “the Board need not expressly construe the
`claims.” Pet. 12–13. Patent owner “agrees that the claims can be afforded
`their plain and ordinary meaning and that no construction is necessary.”
`Prelim. Resp. 18.
`For purposes of this Decision, we determine 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”).
`D. Patentability Challenges
`As indicated above, Petitioner presents a first ground challenging the
`patentability of claims 1, 2, and 5–15 of the ’658 Patent under 35 U.S.C.
`§ 103(a) as obvious over the combination of A3UM and Belitz. Pet. 3.
`Petitioner’s second ground challenges the patentability of claims 3 and 4 of
`the ’658 Patent under 35 U.S.C. § 103(a) as obvious over the combination of
`A3UM, Belitz, and Rasmussen.
`1. Principles of Law: Obviousness
`A claim is unpatentable 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 at the time the
`invention was made 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,
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`i.e., secondary considerations. 1 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 at the time of
`the invention would have selected and combined those prior art elements in
`the normal course of research and development to yield the claimed
`invention. Id.
`2. Relevant Prior Art
`a) A3UM (Ex. 1005)
`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
`
`
`1 The current record does not present or address any evidence of
`nonobviousness.
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`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.
`
`
`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
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`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.
`
`
`“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
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`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.
`
`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 436–437.
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`As shown above, “location pins mark the locations where images
`or groups of images were shot.” Id. at 436–437. 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 images
`corresponding to a named person. Id. at 417–419. Those suggested images
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`can be confirmed as matches for the named person by selecting the
`“Confirm Faces” button. Id. at 80, 419. Alternatively, an image can have a
`name manually assigned to it. Id. at 421–422.
`b) Prior Art Status of A3UM
`Patent Owner asserts that Petitioner “has not meet its burden to
`demonstrate that the hundreds of HTML files that make up A3UM were a
`publicly available printed publication.” Prelim. Resp. 19. Petitioner
`disagrees, and argues that “[e]xtensive evidence establishes that A3UM
`(EX1005) was a printed publication that was publicly disseminated in
`February 2010,” and thus qualifies as prior art to the ’658 patent. Pet. 12.
`“[A]t the institution stage, the petition must identify, with
`particularity, evidence sufficient to establish a reasonable likelihood that the
`reference was publicly accessible before the critical date of the challenged
`patent, and therefore that there is a reasonable likelihood that it qualifies as
`printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). “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).” Id. at 10 (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
`1331, 1348 (Fed. Cir. 2016). “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.” Hulu at 10–11 (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511
`F.3d 1186, 1194 (Fed. Cir. 2008).
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`Here, Petitioner submits evidence that A3UM, Apple’s Aperture 3
`User Manual (Ex. 1005) was publicly available and publicly disseminated as
`early as February 2010. 2 Petitioner provides the declaration of Mr. Matthew
`Birdsell (Ex. 1020), a Content Manager at Apple, who testifies that he
`worked for Apple since 2002 and has been a full-time Apple employee since
`June 2010. Ex. 1020 ¶ 1. Mr. Birdsell testifies that he “personally worked
`on Apple documentation and publications regarding each version of
`Aperture throughout its lifespan, including Aperture 3.” Id. ¶ 2.
`Mr. Birdsell testifies that his “professional responsibilities between
`January and June of 2010 included involvement with the team responsible
`for producing and distributing Aperture 3 documentation, including the
`Aperture 3 User Manual” and that he has “personal knowledge of how the
`Aperture 3 User Manual was prepared and distributed by Apple during this
`time frame.” Ex. 1020 ¶ 3. Mr. Birdsell also testifies that “[i]n connection
`with the release of the Aperture 3 product, Apple produced and publicly
`distributed a comprehensive user manual describing the features and
`operation of the Aperture 3 product, which was called the Aperture 3 User
`Manual. Apple distributed the Aperture 3 User Manual on the physical
`media in the Aperture 3 retail product and through the Apple.com website.”
`
`
`2 The ’658 patent has a filing date of December 12, 2016, but also indicates
`that it is related to application No. 13/157,214 filed on June 9, 2011. Ex.
`1001, codes 22, 63. Petitioner acknowledges that the earliest filing date
`claimed by the ’658 patent is June 9, 2011, but advises that “Patent Owner
`has represented in related litigation that claims 1–5, and 7–15 are only
`entitled to a priority date of February 28, 2014.” Pet. 8 (citing Ex. 1027, 2).
`Petitioner asserts that “[u]nder either date, the references at issue are prior
`art.” Id. Patent Owner does not appear to contest Petitioner’s assertions or
`address the ’658 patent’s critical date for prior art purposes. See generally,
`Prelim. Resp.
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`Id. ¶ 8. Mr. Birdsell testifies that “[s]tarting in early February 2010, Apple
`sold the Aperture 3 product in its retail stores, on the Apple web store, and
`distributed it in retail channels in the United States.” Id. ¶ 5.
`Mr. Birdsell further testifies that “I am personally familiar with the
`Aperture 3 User Manual that was distributed with the Aperture 3 product. I
`have reviewed Exhibit 1005, and can confirm it is an accurate copy of the
`Aperture 3 User Manual that was distributed with the initial version of the
`Aperture 3 product (i.e., version 3.0).” Ex. 1020 ¶ 4. According to Mr.
`Birdsell, “the Aperture 3 User Manual was available to the public via
`www.apple.com starting on the launch date of the Aperture 3 product in
`February 2010 and continuing past June 2010.” Id. ¶ 11. Mr. Birdsell
`testifies that “[a]ny interested member of the public could locate and view
`the contents of the Aperture 3 User Manual HTML file set by retrieving it
`from Apple’s publicly accessible documentation site:
`http://documentation.apple.com/en/aperture/usermanual/.” Id. ¶ 12.c. 3
`Mr. Birdsell testifies that the Aperture 3 User Manual “could be
`located using Aperture links on the apple.com website or by searching for
`“Aperture” or “Aperture 3”