Trials@uspto.gov
`571-272-7822
`
`Paper 42
`Date: November 22, 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
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`Denying Patent Owner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`Paper 42
`Date: November 22, 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
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`Denying Patent Owner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–15 (the “challenged claims”) of U.S. Patent
`No. 10,423,658 B2 (Ex. 1001, “the ’658 patent”). We determined, based on
`the record at that time, that the ’658 patent was eligible for inter partes
`review, and instituted review on all challenged claims on the grounds
`presented in the Petition. Paper 12 (“Institution Decision” or “Inst. Dec.”).
`On May 18, 2023, we entered a Final Written Decision (Paper 39,
`“Decision” or “Dec.”) determining, in part, that Petitioner had shown
`claims 1–15 of the ’658 patent are unpatentable by a preponderance of the
`evidence. On June 16, 2023, Patent Owner timely filed a Request for
`Rehearing of that determination in the Decision. Paper 41 (“Patent Owner’s
`Request” or “Req. Reh’g”).
`As discussed below, we agree with Patent Owner that the Decision
`misapprehended Patent Owner’s deadline for filing objections to
`Exhibit 1005 and consider those objections below.
`II. ANALYSIS
`A. Legal Standards
`The applicable requirements for a request for rehearing are set forth in
`37 C.F.R. § 42.71(d), which provides:
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, a reply, or a sur-reply.
`
`2
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`We review our Decision under an abuse of discretion standard. 37 C.F.R.
`§ 42.71(c). An abuse of discretion may arise if a decision is based on an
`erroneous interpretation of law, if a factual finding is not supported by
`substantial evidence, or if the decision represents an unreasonable judgment
`in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d
`1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`“Substantial evidence is ‘such relevant evidence as a reasonable mind might
`accept as adequate to support a conclusion.’” OSI Pharm., LLC v.
`Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (quoting Consol. Edison
`Co. v. N.L.R.B., 305 U.S. 197, 229 (1938)). “The substantial evidence
`standard asks ‘whether a reasonable fact finder could have arrived at the
`agency’s decision.’” OSI Pharm., 939 F.3d at 1381–82 (quoting Gartside,
`203 F.3d at 1312).
`
`B. Motion to Exclude
`Patent Owner filed a Motion to Exclude A3UM (Ex. 1005) on
`February 17, 2023. Paper 34. Petitioner filed an Opposition to Patent
`Owner’s Motion to Exclude on February 24, 2023. Paper 35 (“Mot. Opp”).
`In the Final Written Decision, we denied the Motion to Exclude because we
`determined that objections to Exhibit 1005 were untimely filed. Dec. 84.
`In the Request for Rehearing, Patent Owner notes that evidence
`objections must be filed within ten business days of the institution of trial,
`and that a business day is a day other than a Saturday, Sunday, or Federal
`Holiday within the District of Colombia. Req. Reh’g 2 (citing 37 C.F.R.
`§§ 42.2, 42.64(b)(1)). Patent Owner asserts that “[t]he Decision erroneously
`calculated the deadline for Patent Owner’s evidence objections as falling on
`a Federal holiday based on calendar days instead of business days.” Id. at 3.
`
`3
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`We agree with Patent Owner that in view of the May 30, 2022,
`Federal holiday, Patent Owner’s objections were timely filed on June 6,
`2022. We therefore address Patent Owner’s Motion to Exclude below.
`In the Motion to Exclude, Patent Owner asserts that Exhibit 1005 is
`neither authenticated nor self-authenticating. Paper 34, 2. Patent Owner
`asserts that “Petitioner cited testimony from its expert, Dr. Terveen, and its
`employee, Mr. Birdsell, in an attempt to establish the authenticity of
`Ex. 1005,” but that “neither Dr. Terveen nor Mr. Birdsell could properly
`authenticate Ex. 1005 as a true, correct, and complete copy of A3UM.” Id.
`Specifically, Patent Owner argues that neither Dr. Terveen nor Mr. Birdsell
`created Exhibit 1005 and that both merely “spot-checked” the manual to
`evaluate its authenticity. Id. at 3–5.
`Patent Owner asserts that “Mr. Birdsell and Dr. Terveen’s testimony
`regarding Ex. 1005 lacks the ‘factual specificity’ required for proper
`authentication.” Id. at 5 (citing Xactware Sols., Inc. v. Pictometry Int’l
`Corp., IPR2016-00594, Paper 46 at 11–12 (PTAB Aug. 24, 2017)). In the
`Request for Rehearing, Patent Owner further asserts that “[i]t was not Patent
`Owner’s burden to identify discrepancies between Exhibit 1005 and the
`A3UM HTML file set,” and that “it was Petitioner’s burden to demonstrate
`that Ex. 1005 is what Petitioner claims it is.” Req. Reh’g 5 (citing Fed. R.
`Evid. 901; Inductev Inc. v. Witricity Corp., IPR2021-01166, Mot. Opp. 53
`(PTAB Dec. 20, 2022)). Patent Owner asserts that “[j]ust as one who only
`‘spot-checks’ a deck of cards cannot know that the deck has the correct 52
`cards, Dr. Terveen and Mr. Birdsell could not have known whether
`Exhibit 1005 is a complete and accurate copy of the HTML files.” Id. at 4
`(citing Paper 38, 2–3).
`
`4
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`We agree with Patent Owner that it was Petitioner’s burden to
`demonstrate that Exhibit 1005 is what Petitioner claims it is, but note that
`authentication is a low bar, requiring only a rational basis that the document
`is what it is asserted to be. See Inductev Inc. v. Witricity Corp., IPR2021-
`01166, Paper 35 at 53 (citing Caterpillar Inc. v. Wirtgen Am., Inc., IPR2018-
`01091, Paper 49 at 72 (Nov. 27, 2019) (quoting United States v. Turner, 934
`F.3d 794, 798 (8th Cir. 2019))). As Petitioner points out, Mr. Birdsell
`testified he was the “lead writer” of the Aperture 3 User Manual and
`personally participated in the creation and distribution of the A3UM HTML
`file set. Mot. Opp. 4 (citing Ex. 1020 ¶¶ 3–4, 8–9; Ex. 2026, 32:20–33:2,
`35:16–37:14, 18:15–22). We agree with Petitioner that “[g]iven Mr.
`Birdsell’s unique depth of familiarity with A3UM and the A3UM HTML
`file set, he was able to satisfy himself that EX1005 was a true and correct
`copy of the A3UM HTML file set distributed in February of 2010 by
`inspecting it in the manner he described.” Id. at 3–4.
`Further, as Petitioner points out, “Dr. Terveen testified that one step
`he took was to compare the first 100 pages of Exhibit 1005,” “one by one,
`. . . compar[ing] them to the corresponding pages in the user manual
`available on the computer,” and then performing a section by section
`comparison of Exhibit 1005 and the A3UM HTML file set, looking at the
`first page or two of each section. Mot. Opp. 7 (citing Ex. 2024, 380:20–
`381:3).
`Weighing the parties’ arguments and evidence, we determine that
`Petitioner demonstrates sufficiently that A3UM is what Petitioner purports it
`to be—the Aperture 3 User Manual, describing certain features and
`
`5
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`interfaces of Apple’s Aperture 3 product.1 For these reasons, Patent
`Owner’s Motion to Exclude is unconvincing.
`C. Claim Construction
`In the Final Written Decision, we found that “no claim terms require
`express construction,” and that “[t]o the extent that the meaning of any claim
`term is addressed, we use its ordinary and customary meaning.” Dec. 13.
`In the Request for Rehearing, Patent Owner asserts that “Patent
`Owner’s Response noted that Petitioner applied its view of the claims’ plain
`and ordinary meaning in the Petition,” and that Patent Owner “agreed ‘that
`the claims should be afforded their plain and ordinary meaning’ but offered
`‘a discussion of that meaning’ in case the Board determined that claim
`construction was ‘necessary to resolve Petitioner’s patentability
`challenges.’” Req. Reh’g 14 (quoting Paper 20, 15 (“PO Resp.”)). Patent
`Owner further indicates that “Patent Owner’s Sur-Reply reiterated its
`original proposed constructions.” Id. (citing Paper 31, 8–13 (“PO Sur-
`reply”)). Patent Owner asserts that “[t]o the extent the Decision declined to
`adopt Patent Owner’s constructions because it understood that Patent Owner
`was required to show ‘good cause’ for proposing constructions at a ‘late
`stage in this proceeding,’ the Decision misapprehended the Response.” Id.
`(citing Dec. 12).
`As we indicated in the Decision, “[o]nly terms that are in controversy
`need to be construed, and then only to the extent necessary to resolve the
`controversy.” Dec. 12. The ordinary and customary meanings we applied in
`
`
`1 Notably, Patent Owner does not assert that the reference filed by Petitioner
`as Exhibit 1005, A3UM, is different from the HTML file set or that Ex. 1005
`reference has been altered in any substantive way that would affect the
`outcome of this proceeding. See IPR2021-01166, Paper 35 at 54.
`
`6
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`the Decision appropriately support the Decision without requiring express
`construction of any terms. Id. at 13. For these reasons, Patent Owner does
`show that the Board misapprehended or overlooked Patent Owner’s
`Response.
`
`D. Claims 3 and 4
`With respect to claims 3 and 4, Patent Owner asserts that “the
`Decision misapprehended Patent Owner’s arguments regarding the Petition’s
`failure to address the claim requirement of ‘displaying a first digital
`photograph . . . in the [first/second] location view.’” Req. Reh’g 5. Patent
`Owner further asserts that “the Decision misapprehended the Petition’s
`proposed modification to A3UM and overlooked Patent Owner’s argument
`that the Reply improperly introduced a new obviousness theory.” Id. at 6.
`Furthermore, Patent Owner asserts that the Decision overlooked evidence of
`non-obviousness. Id.
`With respect to “displaying a first digital photograph . . . in the
`[first/second] location view,” Patent Owner asserts that “the Decision does
`not identify whether or how A3UM purportedly meets the requirement of
`‘displaying a first digital photograph . . . in the [first/second] location view’
`responsive to a click or tap of a scaled replica in the [first/second] location
`view. Req. Reh’g 8 (citing Dec. 75–84).
`Further, Patent Owner argues that “[t]he Petition did not propose
`modifying A3UM so that a click or tap of a thumbnail in the Browser would
`cause a digital photograph to be displayed” but instead, according to Patent
`Owner, “[t]hat argument appeared for the first time in Petitioner’s Reply.”
`Req. Reh’g 8 (citing PO Resp. 79–82; PO Sur-reply 24–27). Patent Owner
`asserts that “[t]he Decision’s summary of the parties’ briefing cited Patent
`Owner’s argument that Petitioner’s Reply raised a new obviousness theory,”
`
`7
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`but that the Decision did not “address the merits of Patent Owner’s
`argument.” Id. at 9 (citing Dec. 82–84).
`Patent Owner argues that “there is a functional relationship between
`the Places map and the Browser where (1) selecting a pin on the map
`highlights the corresponding image in the Browser and (2) selecting an
`image in the Browser highlights the corresponding pin,” and that
`“[m]odifying A3UM so that selecting a thumbnail in the Browser replaces
`the Places map would destroy that functional relationship.” Req. Reh’g 11
`(citing PO Sur-reply 26–27; Ex. 2025 ¶¶ 213–216).
`As we stated in the Decision, the Petition asserts that “it would have
`been obvious to modify A3UM such that selecting a photo in the Browser, in
`addition to displaying that photo in the Viewer, would display A3UM’s Map
`Pane at the bottom of the Inspector pane.” Dec. 83 (citing Pet. 78). That is,
`the Decision credited this argument from the Petition which addresses
`displaying a first digital photograph in the [first/second] location view
`responsive to a click or tap of a scaled replica in the [first/second] location
`view. The argument was not raised for the first time in the Reply.
`With respect to the asserted functional relationship between the Places
`Map and the Browser, we note that the test for obviousness “is what the
`combined teachings of the references would have suggested to those of
`ordinary skill in the art,” and “not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary
`reference[,] nor . . . that the claimed invention must be expressly suggested
`in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA
`1981). Petitioner has demonstrated that the teachings of A3UM render the
`subject matter of claims 3 and 4 obvious notwithstanding the presence of a
`functional relationship such as the one noted by Patent Owner or whether the
`
`8
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`modification applied by Petitioner would destroy such a functional
`relationship. For these reasons, Patent Owner does not show that the Board
`misapprehended or overlooked Patent Owner’s arguments regarding claims
`3 and 4.
`
`E. Claims 8 and 11
`Patent Owner notes that claims 7 and 10 recite “responsive to a click
`or tap of the [first/second] person selectable thumbnail image, displaying a
`[first/second] person view,” and that claims 8 and 11 depend from claims 7
`and 10, respectively, and recite “wherein the displaying the [first/second]
`person view further includes displaying a [first/second]-person-location
`selectable element.” Req. Reh’g 12.
`Patent Owner asserts that “[t]he phrase ‘the displaying the first person
`view’ finds antecedent basis from the step of ‘displaying a first person view’
`recited in claim 7,” and that “[i]n turn, claim 7 requires the ‘displaying a first
`person view’ be ‘responsive to a click or tap of the first person selectable
`thumbnail image.’” Req. Reh’g 13. Patent Owner concludes that “the
`‘displaying a first-person-location selectable element’ in claim 8 must be
`‘responsive to a click or tap of the first person selectable thumbnail image’
`because it is part of the ‘displaying a first person view’ in claim 7.” Id.
`(citing PO Sur-reply 23). Patent Owner asserts that “[t]he Decision’s
`reading of claims 8 and 10 overlooked or misapprehended the import of the
`phrase ‘the displaying.’” Id.
`We do not agree that we overlooked or misapprehended this claim
`language. Rather, we addressed it on pages 73–74 of the Final Written
`Decision. The fact that Patent Owner disagrees with our resolution of this
`issue is not grounds for rehearing.
`
`9
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`
`III. CONCLUSION
`For the above reasons, after considering Patent Owner’s Request, we
`maintain the outcome of the Decision.
`Outcome of Decision on Rehearing:
`
`Claims
`1, 2, 5–15
`
`35 U.S.C. §
`103(a)
`
`3, 4
`
`103(a)
`
`References
`A3UM, Belitz
`A3UM, Belitz,
`Rassmussen
`
`Denied Granted
`1, 2, 5–15
`
`
`
`3, 4
`
`
`
`
`
`Overall
`Outcome
`
`Final Outcome of Final Written Decision after Rehearing:
`
`1–15
`
`
`
`Claims
`
`35 U.S.C. § References
`
`1, 2, 5–15
`
`103(a)
`
`3, 4
`
`103(a)
`
`
`
`Overall
`Outcome
`
`
`A3UM, Belitz
`A3UM, Belitz,
`Rassmussen
`
`
`Claims
`Shown
`Unpatentable
`1, 2, 5–15
`
`3, 4
`
`1–15
`
`Claims Not
`Shown
`Unpatentable
`
`
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Exclude is denied.
`ORDERED that Patent Owner’s Rehearing Request is denied.
`
`10
`
`
`
`IPR2022-00033
`Patent 10,423,658 B2
`FOR PETITIONER:
`
`Jeffrey Kushan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`Matthew A. Werber
`Daniel Schwartz
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`mwerber@nixonpeabody.com
`djschwartz@nixonpeabody.com
`
`11
`
`
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