IPR2022-00033
`Patent No. 10,423,658
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` Patent Owner’s Request for Rehearing
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,423,658
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`Inter Partes Review No. IPR2022-00033
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`PATENT OWNER’S REQUEST FOR REHEARING
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`IPR2022-00033
`Patent No. 10,423,658
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`Exhibit No.
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` Patent Owner’s Request for Rehearing
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`LISTING OF EXHIBITS
`
`
`Description
`
`2001
`
`WITHDRAWN
`
`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`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
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`Feb. 8, 2022 eBay Order Confirmation for “Apple Aperture 3
`Upgrade for Mac Brand New Photography”
`
`Apple Inc. Aperture Software License Agreement
`
`Declaration of John Leone, Cisco Systems, Inc. v. Centripetal
`Networks, Inc., IPR2018-01436, EX1005 (July 20, 2018)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual
`(Archive.org: July 26, 2010)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual
`(Archive.org: Feb. 17, 2010)
`
`RESERVED
`
`RESERVED
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`ii
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`IPR2022-00033
`Patent No. 10,423,658
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`Exhibit No.
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` Patent Owner’s Request for Rehearing
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`Description
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`2027
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`Apple, Inc., www.apple.com, (Archive.org: Mar. 12, 2010)
`
`Devin Coldewey, Review: Aperture 3, CrunchGear
`(https://techcrunch.com/2010/03/19/review-aperture-3/) (last
`accessed Feb. 2, 2022)
`
`Hilary Greenbaum, Who Made Google’s Map Pin?, The New
`York Times, (Apr. 18, 2011)
`
`Google Developers, Customizing a Google Map: Custom
`Markers (last accessed Feb. 17, 2022)
`
`KML4Earth, Google Earth/Maps Public Icons,
`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27,
`2012)
`
`Declaration of Angelo J. Christopher
`
`RESERVED
`
`RESERVED
`
`Apple, Inc., “Apple Human Interface Guidelines” (Aug. 20, 2009)
`
`Wilbert O. Galitz, “The Essential Guide to User Interface Design:
`An Introduction to GUI Design Principles and Techniques,”
`Wiley Publishing, Inc. (3rd Ed.) (2007)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. I)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. II)
`
`Declaration of Rajeev Surati, Ph.D
`
`Transcript of Deposition of Matthew Birdsell
`
`Affidavit of Nathaniel E Frank-White
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`iii
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`IPR2022-00033
`Patent No. 10,423,658
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`Exhibit No.
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` Patent Owner’s Request for Rehearing
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`Description
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`2028
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`2029
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`2030
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`2031
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`2032
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`2033
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`Cambridge English Dictionary, definition of “responsive”
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`Webster’s Third New International Dictionary, definition of
`“responsive”
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`RESERVED
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`RESERVED
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`eBay Receipt (August 15, 2022)
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`Jennifer Tidwell, Designing Interfaces, O’Reilly (1st Ed. 2005)
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`IPR2022-00033
`Patent No. 10,423,658
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` Patent Owner’s Request for Rehearing
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`TABLE OF CONTENTS
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`Page(s)
`
`
`I. 
`INTRODUCTION ........................................................................................... 1 
`STANDARDS FOR REHEARING ................................................................ 1 
`II. 
`III.  REQUESTED RELIEF ................................................................................... 1 
`IV.  ARGUMENT ................................................................................................... 2 
`A.  The Board Should Rehear its Denial of Patent Owner’s Motion to
`Exclude ............................................................................................................ 2 
`1.  The Decision Misapprehended the Deadline for Evidence Objections ..... 2 
`2.  The Decision Misapprehended and Overlooked Testimony Regarding the
`Purported Authenticity of Ex. 1005 ........................................................... 3 
`B.  The Board Should Rehear its Unpatentability Findings for Dependent
`Claims 3-4 ........................................................................................................ 5 
`1.  Factual Background .................................................................................... 6 
`2.  The Decision Misapprehended Patent Owner’s Arguments Regarding the
`Petition’s Failure to Address All Limitations ............................................ 7 
`3.  The Decision Misapprehended the Obviousness Argument in the Petition
`and Overlooked Petitioner’s Improper Reply Argument ........................... 8 
`4.  The Decision Overlooked Evidence Refuting Petitioner’s New
`Obviousness Theory ................................................................................. 10 
`C.  The Board Should Rehear its Unpatentability Findings for Dependent
`Claims 8 and 11 ............................................................................................. 12 
`D.  The Decision Misapprehended Patent Owner’s Claim Construction
`Proposals ........................................................................................................ 14 
`CONCLUSION ............................................................................................. 15 
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`V. 
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`v
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`IPR2022-00033
`Patent No. 10,423,658
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` Patent Owner’s Request for Rehearing
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Bowtech, Inc. v. Mcp Ip, LLC,
`IPR2019-00379, Paper 18 (PTAB July 24, 2019) .............................................. 2, 3
`
`
`Aqua Prod., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................................. 11
`
`Google LLC v. Ecofactor, Inc.,
`IPR2021-00054, Paper 35 (PTAB Apr. 18, 2022) ................................................ 15
`
`Homeland Housewares, LLC v. Whirlpool Corp.,
`865 F.3d 1372 (Fed. Cir. 2017) ............................................................................. 15
`
`
`Inductev Inc. v. Witricity Corp.,
`IPR2021-01166, Paper 35 (PTAB Dec. 20, 2022) .................................................. 5
`
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ............................................................................. 11
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................. 15
`
`
`Wasica Finance GmbH v. Continental Automotive Systems, Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................ 13
`
`
`Statutes
`
` U.S.C. § 6103(a) ..................................................................................................... 2
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`vi
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` 5
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` Patent Owner’s Request for Rehearing
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`IPR2022-00033
`Patent No. 10,423,658
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`Regulations
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`37 C.F.R. § 42.2 ......................................................................................................... 2
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`37 C.F.R. § 42.64(b)(1) .......................................................................................... 2, 3
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`37 C.F.R. § 42.71(c) ................................................................................................... 1
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`vii
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`IPR2022-00033
`Patent No. 10,423,658
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`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner respectfully requests
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` Patent Owner’s Request for Rehearing
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`rehearing of the Board’s Final Written Decision (“Decision” or “FWD,” Paper 39).
`
`As set forth herein, the Decision misapprehended or overlooked, among other things,
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`Patent Owner’s deadline for filing evidence objections, arguments and evidence
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`relating to claims 3-4, 8, and 11, and the claim construction arguments.
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`II.
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`STANDARDS FOR REHEARING
`“A party dissatisfied with a decision may file a request for rehearing”
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`identifying “all matters the party believes the Board misapprehended or overlooked,
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`and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).
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`The request is reviewed under an abuse of discretion standard. 37 C.F.R. § 42.71(c).
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`III. REQUESTED RELIEF
`Patent Owner respectfully requests rehearing because the Decision: (1)
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`misapprehended the deadline for Patent Owner’s objections to evidence, which led
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`it to err in denying Patent Owner’s Motion to Exclude; (2) misapprehended and
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`overlooked arguments and evidence relating to claims 3 and 4; (3) misapprehended
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`or overlooked relevant claim language in claims 8 and 11; and (4) misapprehended
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`the Response in finding that Patent Owner was “late” in offering its proposed claim
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`constructions.
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`1
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`

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` Patent Owner’s Request for Rehearing
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`IPR2022-00033
`Patent No. 10,423,658
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`IV. ARGUMENT
`A. The Board Should Rehear its Denial of Patent Owner’s Motion to
`Exclude
`The Board should rehear its denial of Patent Owner’s Motion to Exclude
`
`(Paper 34; Paper 38) because the Decision misapprehended Patent Owner’s deadline
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`for filing objections to Exhibit 1005. The Board should also rehear findings relating
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`to Exhibit 1005’s purported authenticity because the Decision misapprehended and
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`overlooked evidence and argument in the Motion to Exclude.
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`1.
`
`The Decision Misapprehended the Deadline for Evidence
`Objections
`The Decision denied Patent Owner’s Motion to Exclude without addressing
`
`its merits because “[t]he deadline to file objections to Exhibit 1005 was May 30,
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`2022” and “Patent Owner’s objections to Exhibit 1005 were untimely filed” on June
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`6, 2022. FWD, 84. That is incorrect.
`
`The Decision misapprehended or overlooked the requirements of 37 C.F.R. §
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`42.64(b)(1), which provides that evidence objections “must be filed within ten
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`business days of the institution of the trial.” 37 C.F.R. § 42.64(b)(1) (emphasis
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`added). A “business day” is a “a day other than a Saturday, Sunday, or Federal
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`holiday within the District of Columbia.” 37 C.F.R. § 42.2. In this case, June 6, 2022
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`was ten business days after the May 20, 2022 Institution Decision. Paper 12. The
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`Decision also overlooked the fact that May 30, 2022—the last Monday in May
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`2
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`IPR2022-00033
`Patent No. 10,423,658
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`2022—was a Federal holiday. 5 U.S.C. § 6103(a); see also Bowtech, Inc. v. Mcp Ip,
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` Patent Owner’s Request for Rehearing
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`LLC, IPR2019-00379, Paper 18 at 2 n.2 (PTAB July 24, 2019) (noting that Federal
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`holidays are excluded when calculating the deadline for evidence objections).
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`The Decision erroneously calculated the deadline for Patent Owner’s evidence
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`objections as falling on a Federal holiday based on calendar days instead of business
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`days. Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner’s objections were timely
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`filed within 10 business days of the May 20, 2022 Institution Decision. Paper 14.
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`Indeed, Petitioner never argued that Patent Owner’s objections were untimely. See
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`Paper 35. Accordingly, the Board should grant rehearing to address the merits of
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`Patent Owner’s Motion to Exclude. And if the Board grants Patent Owner’s Motion
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`to Exclude on rehearing (which it should), it should vacate the Decision’s
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`unpatentability findings as they are predicated on Exhibit 1005. See FWD, 9.1
`
`2.
`
`The Decision Misapprehended and Overlooked Testimony
`Regarding the Purported Authenticity of Ex. 1005
`Although the Decision erroneously declined to address Patent Owner’s
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`Motion to Exclude, it made at least one finding relevant to Exhibit 1005’s purported
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`authenticity. Specifically, the Decision states that “Mr. Birdsell and Dr. Terveen
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`1 At a minimum, granting rehearing to address the arguments and evidence in Patent
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`Owner’s Motion to Exclude will better position the record for appellate review.
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`3
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`IPR2022-00033
`Patent No. 10,423,658
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`individually compared Ex. 1005 to the HTML file set and found no discrepancies.”
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` Patent Owner’s Request for Rehearing
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`FWD, 46 (citing Ex. 2026, 41:14-16; Ex. 2023, 61:13-17). As set forth below and in
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`Patent Owner’s Motion to Exclude, the Decision misapprehended Mr. Birdsell and
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`Dr. Terveen’s testimony and overlooked admissions demonstrating that they did not
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`compare the entirety of Ex. 1005 to the HTML file set.
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`The cited portion of Mr. Birdsell’s deposition testimony does not support the
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`Board’s finding that he compared Exhibit 1005—which contains over 1,120 pages—
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`to the HTML file set. FWD, 46 (citing Ex. 2026, 41:14-16). Rather, Mr. Birdsell
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`testified that he merely “spot-checked [Ex. 1005] against the files that were on the
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`disk and in the app” and could not “speak to the chain of custody” of the DVD he
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`used. Ex. 2026, 41:11-25 (emphasis added). Likewise, Dr. Terveen testified that he
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`“did not check all 1122 pages” and only “spot-checked” unidentified portions of Ex.
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`1005 against a DVD. Ex. 2023, 61:9-17; see also id., 62:9-12. Neither Mr. Birdsell
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`nor Dr. Terveen could identify who created Ex. 1005. Paper 34, 3-4; Paper 38, 2-3;
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`Ex. 2026, 20:5-6; Ex. 2023, 57:10-59:10. Just as one who only “spot-checks” a deck
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`of cards cannot know that the deck has the correct 52 cards, Dr. Terveen and Mr.
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`Birdsell could not have known whether Exhibit 1005 is a complete and accurate copy
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`of the HTML files. Paper 38, 2-3.
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`The Decision also states that “each page of Ex. 1005 has the file path for each
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`file located in the bottom left hand corner and the file path is consistent with the file
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`4
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`IPR2022-00033
`Patent No. 10,423,658
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`path given above for the help files.” FWD, 46. But there is no evidence that anyone
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` Patent Owner’s Request for Rehearing
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`performed such a comparison, and even if someone did and found that the listed file
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`paths were consistent with the HTML file set, that does not mean that the content of
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`Ex. 1005 is consistent with the HTML file set. It was not Patent Owner’s burden to
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`identify discrepancies between Exhibit 1005 and the A3UM HTML file set as
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`suggested in the Decision (FWD, 46), it was Petitioner’s burden to demonstrate that
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`Ex. 1005 is what Petitioner claims it is. FED. R. EVID. 901; Inductev Inc. v. Witricity
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`Corp., No. IPR2021-01166, Paper 35 at 53 (PTAB Dec. 20, 2022).
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`B.
`
`The Board Should Rehear its Unpatentability Findings for
`Dependent Claims 3-4
`Claims 3 and 4 depend from claim 1 and recite, inter alia, “responsive to a
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`click or tap of a first one of the displayed scaled replicas in the [first/second] location
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`view, displaying [1] a first digital photograph . . . in the [first/second] location view
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`and [2] a [first/second] map image.” Stated another way, claims 3 and 4 require that
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`two things are displayed responsive to a click tap of a scaled replica: (1) a first digital
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`photograph and (2) a [first/second] map image.
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`As set forth below, the Decision misapprehended or overlooked several
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`matters that warrant rehearing. First, the Decision misapprehended Patent Owner’s
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`arguments regarding the Petition’s failure to address the claim requirement of
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`“displaying a first digital photograph . . . in the [first/second] location view.” Second,
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`IPR2022-00033
`Patent No. 10,423,658
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`the Decision misapprehended the Petition’s proposed modification to A3UM and
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` Patent Owner’s Request for Rehearing
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`overlooked Patent Owner’s argument that the Reply improperly introduced a new
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`obviousness theory. Third, the Decision overlooked evidence of non-obviousness.
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`1.
`Factual Background
`In connection with claim 1, the Petition identified the A3UM screenshot
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`reproduced below as the alleged “[first/second] location view.” Pet., 47-50.
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`Ex. 1005, 437 (annotated)
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`
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`The Petition identified the “thumbnails of digital files matching the location in the
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`Browser pane,” annotated in red above, as allegedly corresponding to the claimed
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`“scaled replica of each of the digital photographs and videos in the [first/second] set
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`of digital photographs and videos.” Pet., 48-49.
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`
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`In connection with claims 3 and 4, the Petition identified A3UM’s “small Map
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`Pane” in the “Metadata Inspector” as the alleged “[first/second] map image”
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`6
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`IPR2022-00033
`Patent No. 10,423,658
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`required in claims 3 and 4. Pet., 76-77. The Petition argued that “it would have been
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` Patent Owner’s Request for Rehearing
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`obvious to modify A3UM such that selecting a photo in the Browser, in addition to
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`displaying that photo in the Viewer, would display A3UM’s Map Pane at the bottom
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`of the Inspector pane.” Id., 78.
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`2.
`
`The Decision Misapprehended Patent Owner’s Arguments
`Regarding the Petition’s Failure to Address All Limitations
`The Petition argued that A3UM discloses or renders obvious displaying the
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`“[first/second] map image” in claims 3 and 4 but failed to address where A3UM
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`purportedly discloses “displaying a first digital photograph . . . in the [first/second]
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`location view.” POR, 80 (citing Pet., 75-78); POSR, 24-25. The claim term “first
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`digital photograph” does not appear anywhere in the Petition aside from in a
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`reproduction of claims 3 and 4. Pet., 75.
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`The Decision acknowledged Patent Owner’s argument that “the Petition fails
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`to address all of the limitations of claims 3 and 4,” but did “not agree that Petitioner’s
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`alternative obviousness theory fails to address all of the limitations.” FWD, 82
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`(citing POR, 80). In particular, the Decision pointed to Petitioner’s alternative
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`obviousness theory in which “selecting a photo in the Browser, in addition to
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`displaying that photo in the Viewer, would display A3UM’s Map Pane at the bottom
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`of the Inspector pane.” FWD, 83 (citing Pet., 83). The Decision misapprehended
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`Patent Owner’s argument: Patent Owner did not argue that the Petition failed to
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`7
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`IPR2022-00033
`Patent No. 10,423,658
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`address the “[first/second] map image” requirement; it argued that the Petition failed
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` Patent Owner’s Request for Rehearing
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`to address the “displaying a first digital photograph . . . in the [first/second] location
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`view” requirement of claims 3 and 4. POR, 80; POSR, 24-25.
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`Consistent with the Petition’s failure to do so, the Decision does not identify
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`whether or how A3UM purportedly meets the requirement of “displaying a first
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`digital photograph . . . in the [first/second] location view” responsive to a click or
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`tap of a scaled replica in the [first/second] location view. FWD, 75-84.
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`3.
`
`The Decision Misapprehended the Obviousness Argument in
`the Petition and Overlooked Petitioner’s Improper Reply
`Argument
`The Decision also misapprehended Petitioner’s obviousness theory for the
`
`same limitation. The Petition did not propose modifying A3UM so that a click or
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`tap of a thumbnail in the Browser would cause a digital photograph to be displayed.
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`POR, 79-82; POSR, 24-27. That argument appeared for the first time in Petitioner’s
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`Reply. POSR, 25-27.
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`Dr. Terveen testified in his declaration that “[s]electing a thumbnail in the
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`Browser then prompts the display of the original digital image in the Viewer, which
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`replaces the Places map view.” Ex. 1003, ¶ 194; POR, 80-81; POSR, 26. But Dr.
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`Terveen admitted during cross-examination that selecting a thumbnail in the
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`Browser does not replace the Places map view. Ex. 2023, 152:10-154:22; Ex. 2024,
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`323:7-324:16; POR, 80-82; POSR, 25-26. Petitioner did not dispute that Dr.
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`IPR2022-00033
`Patent No. 10,423,658
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`Terveen’s declaration was wrong; it merely cast aside Dr. Terveen’s error as
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` Patent Owner’s Request for Rehearing
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`“irrelevant.” FWD, 81; Reply, 32. But Dr. Terveen’s error is relevant because it
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`demonstrates that he based his opinion on the erroneous premise that A3UM already
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`discloses selecting a thumbnail in the Browser replaces the Places map view.
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`The Petition’s proposed modification to A3UM only related to the
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`“[first/second] map image” limitation – not the “displaying a first digital photograph
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`. . . in the [first/second] location view” limitation. Pet., 78-80. Dr. Terveen made
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`clear that “the A3UM technique of selecting the thumbnail in the Browser to prompt
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`display of the full image would be retained” in Petitioner’s proposed modification.
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`Ex. 1003, ¶ 195 (emphasis added); POSR, 26. In other words, Dr. Terveen
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`presupposed that selecting a thumbnail in the Browser replaces the Places map and
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`that this functionality “would be retained” in the proposed modification; not that
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`this functionality would be added in the modification. Id. The Decision
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`misapprehended or overlooked Dr. Terveen’s
`
`testimony unambiguously
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`demonstrating that Petitioner did not propose modifying A3UM so that selecting an
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`image in the Browser would replace the Places map in the initial Petition. POSR, 26.
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`The Decision’s summary of the parties’ briefing cited Patent Owner’s
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`argument that Petitioner’s Reply raised a new obviousness theory. FWD, 82 (quoting
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`POSR, 26). But that is all the Decision did. Nowhere did the Decision address the
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`merits of Patent Owner’s argument. FWD, 82-84. Despite Patent Owner’s argument,
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`IPR2022-00033
`Patent No. 10,423,658
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`the Decision makes no finding as to where the Petition argued that it would have
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` Patent Owner’s Request for Rehearing
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`been obvious to modify A3UM so that selecting an image in the Browser replaces
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`the Places map. Id. That is because the Petition made no such argument. POSR, 26.
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`While Patent Owner presented evidence that Petitioner’s new modification
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`would not have been obvious (infra, § IV.B.4), that does not mean that the Petition
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`proposed such a modification. Patent Owner’s Sur-Reply explicitly qualified this
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`evidence as being responsive to a new theory. POSR, 26 (“even if Petitioner’s new
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`argument is considered . . . ”). For example, Dr. Surati testified:
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`While I understand they have not done so, to the extent
`Petitioner or Dr. Terveen were to assert that it would be
`obvious to modify A3UM such that selecting an image in
`the Browser would cause a full-size image to be displayed
`and replace the map in the Places view, I disagree.
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`Ex. 2025, ¶ 213 (emphasis added). Patent Owner addressed this issue in anticipation
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`of Petitioner potentially mischaracterizing the Petition in view of Dr. Terveen’s
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`admissions contradicting his declaration testimony. Compare Ex. 1003, ¶¶ 194-195
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`with EX2023, 152:10-154:22; EX2024, 323:7-324:16.
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`4.
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`The Decision Overlooked Evidence Refuting Petitioner’s
`New Obviousness Theory
`Even if the Petition proposed modifying A3UM so that selecting a thumbnail
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`in the Browser would replace the Places map (which it did not), the Decision
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`10
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`IPR2022-00033
`Patent No. 10,423,658
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`overlooked evidence that a POSITA would not make that modification to A3UM.
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` Patent Owner’s Request for Rehearing
`
`POSR, 26-27. As explained by Dr. Surati, in A3UM’s Places view, there is a
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`functional relationship between the Places map and the Browser where (1) selecting
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`a pin on the map highlights the corresponding image in the Browser and (2) selecting
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`an image in the Browser highlights the corresponding pin. POSR, 26-27; Ex. 2025,
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`¶¶ 213-216. Modifying A3UM so that selecting a thumbnail in the Browser replaces
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`the Places map would destroy that functional relationship. Id. For example, the user
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`would not be able to select a different pin on the map and investigate associated
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`images because the map would have been replaced. Id.
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`The Decision cited this evidence in its summary of the parties’ respective
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`arguments but overlooked the evidence in its substantive analysis. FWD, 82-84. The
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`Federal Circuit has instructed that “it is not adequate to summarize and reject
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`arguments without explaining why the PTAB accepts the prevailing argument.” In
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`re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016); see also Aqua Prod., Inc.
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`v. Matal, 872 F.3d 1290, 1325 (Fed. Cir. 2017) (agencies “must take account of all
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`the evidence of record, including that which detracts from the conclusion the agency
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`ultimately reaches”). The Board should grant rehearing to address this evidence that
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`it overlooked or misapprehended.
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`11
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`IPR2022-00033
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
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`C. The Board Should Rehear its Unpatentability Findings for
`Dependent Claims 8 and 11
`Claims 7 and 10 recite, inter alia, “responsive to a click or tap of the
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`[first/second] person selectable thumbnail image, displaying a [first/second] person
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`view.” Patent Owner demonstrated that the phrase “responsive to” requires a cause-
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`effect relationship, and the Decision did not find otherwise. POR, 19-24; POSR, 9-
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`11. Claims 8 and 11 depend from claims 7 and 10, respectively, and recite “wherein
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`the displaying the [first/second] person view further includes displaying a
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`[first/second]-person-location selectable element.”
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`The Decision acknowledged Patent Owner’s argument that the alleged
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`[first/second]-person-location selectable element in A3UM is not displayed
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`responsive to a click or tap of the [first/second] person selectable thumbnail image
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`under either party’s proposed construction for the phrase “responsive to.” FWD, 70,
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`72; POR, 72-73; POSR, 23-24. But the Decision found Patent Owner’s “responsive
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`to” argument irrelevant because “all claims 8 and 11 require is ‘that the person view
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`further includes displaying the specified element—it does not require independently
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`displaying those elements.” FWD, 74 (quoting Reply, 30).
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`The Decision misapprehended or overlooked the surrounding claim language.
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`Contrary to the Board’s finding in the Decision, claims 8 and 11 do not say that the
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`[first/second] person view “further includes displaying” the [first/second]-person-
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`IPR2022-00033
`Patent No. 10,423,658
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`location selectable element. FWD, 74. Instead, claim 8 recites “wherein the
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` Patent Owner’s Request for Rehearing
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`displaying the first person view further includes displaying a first-person-location
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`selectable element.” The phrase “the displaying the first person view” finds
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`antecedent basis from the step of “displaying a first person view” recited in claim 7.
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`In turn, claim 7 requires the “displaying a first person view” be “responsive to a click
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`or tap of the first person selectable thumbnail image.” Taken together, claim 8 clearly
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`requires that “displaying a first-person-location selectable element” is part of the
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`same transaction as “displaying a first person view,” which must be “responsive to
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`a click or tap of the first person selectable thumbnail image.” In other words, the
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`“displaying a first-person-location selectable element” in claim 8 must be
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`“responsive to a click or tap of the first person selectable thumbnail image” because
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`it is part of the “displaying a first person view” in claim 7. POSR, 23.
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`The Decision’s reading of claims 8 and 10 overlooked or misapprehended the
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`import of the phrase “the displaying,” which must have meaning because “[i]t is
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`highly disfavored to construe terms in a way that renders them void, meaningless, or
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`superfluous.” Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853
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`F.3d 1272, 1288 n.10 (Fed. Cir. 2017). What is more, the Decision seemingly
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`acknowledges that the phrase “responsive to” in claim 7 “pertains to” displaying (i)
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`the name associated with the first person and (ii) a scaled replica of each of the digital
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`photographs and videos in the third set of digital photographs.” FWD, 73-74. Just as
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`13
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`IPR2022-00033
`Patent No. 10,423,658
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`displaying the name and scaled replica is “responsive to” the click or tap, displaying
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` Patent Owner’s Request for Rehearing
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`the “[first/second]-person-location selectable element” is “responsive to” the click
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`or tap. There is no reason to treat claim 8 differently than claim 7.
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`D. The Decision Misapprehended Patent Owner’s Claim
`Construction Proposals
`To the extent the Decision declined to adopt Patent Owner’s constructions
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`because it understood that Patent Owner was required to show “good cause” for
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`proposing constructions at a “late stage in this proceeding,” the Decision
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`misapprehended the Response. FWD, 12.
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`Patent Owner’s Response noted that Petitioner applied its view of the claims’
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`plain and ordinary meaning in the Petition. POR, 15 (citing Pet., 12). Patent Owner
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`agreed “that the claims should be afforded their plain and ordinary meaning” but
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`offered “a discussion of that meaning” in case the Board determined that claim
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`construction was “necessary to resolve Petitioner’s patentability challenges.” Id. The
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`Response proposed claim constructions. POR, 15-27. Petitioner responded and
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`offered counterproposals. Reply, 1-6. With the parties’ disputes crystallized, Patent
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`Owner’s Sur-Reply reiterated its original proposed constructions. POSR, 8-13.
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`Patent Owner did not propose its claim constructions “late” in this proceeding
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`– it proposed them in the Response. FWD, 12; POR, 15-27. The Response’s
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`reference to “plain and ordinary meaning” did not negate Patent Owner’s proposed
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`14
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`IPR2022-00033
`Patent No. 10,423,658
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`constructions, which reflect what the plain and ordinary meaning is. POR, 15.
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` Patent Owner’s Request for Rehearing
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`Similarly, Patent Owner’s qualification that claim construction might not be
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`“necessary to resolve Petitioner’s patentability challenges” was merely an
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`acknowledgement that the Board would not need to construe any terms, for example,
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`if it found that A3UM was not prior art or that a POSITA would not combine A3UM
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`and Belitz. POR, 28-65; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
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`868 F.3d 1013, 1017 (Fed. Cir. 2017).
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`When the parties raise a claim construction dispute, the Board “must resolve
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`such disputes.” Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
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`1375 (Fed. Cir. 2017). The Board construes terms to resolve disputes even where
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`both parties agreed that no constructions were necessary. See, e.g., Google LLC v.
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`Ecofactor, Inc., IPR2021-00054, Paper 35 at 10 (PTAB Apr. 18, 2022). To say that
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`Patent Owner’s proposed constructions were “late” when Patent Owner explicitly
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`proposed them in its Response, Petitioner responded in its Reply, and Patent Owner
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`argued for the same constructions in its Sur-Reply reflects a misapprehension of the
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`conduct of this proceeding and warrants rehearing.
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`V. CONCLUSION
`For the reasons set forth herein, Patent Owner respectfully requests rehearing
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`and a finding that claims 1-15 of the ’658 patent are not unpatentable.
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`15
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`IPR2022-00033
`Patent No. 10,423,658
`
`
`Respectfully submitted,
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` Patent Owner’s Request for Rehearing
`
`Dated: June 16, 2023
`
`
`
`
`
`
`
`By: /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
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`16
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`IPR2022-00033
`Patent No. 10,423,658
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`
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` Patent Owner’s Request for Rehearing
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Request for Rehearing was served on June 16, 2023, upon the following parties via
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`electronic service:
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Scott M. Border
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`tbroughan@sidley.com
`sborder@sidley.com
`SidleyAppleMemoryWebIPRs@sidley.com
`
`Counsel for Petitioner, Apple Inc.
`
`
`
`
`
`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
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`17
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