Filed: December 23, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00033
`U.S. Patent No. 10,423,658
`
`––––––––––––––––––
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00033
`U.S. Patent No. 10,423,658
`
`––––––––––––––––––
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`Table of Contents
`
`Introduction .................................................................................................... 1
`I.
`II. Claim Construction ....................................................................................... 1
`A.
`“Application View” [Claim 1] .............................................................. 1
`B.
`“Responsive To… Displaying” [Claims 3-4, 7, and 10]....................... 2
`C.
`“[First/Second]-Person-Location-Selectable Element” [Claims 8 and
`11] .......................................................................................................... 4
`III. A3UM Is Prior Art......................................................................................... 7
`A.
`Patentee Responds with Implausible Theories, Not Evidence .............. 9
`B.
`Dr. Surati’s Testimony Is Not Credible .............................................. 13
`C.
`A3UM Can Be Retrieved from the Installer DVD ............................. 15
`D. A3UM Is Accessible After Installation ............................................... 19
`E.
`EX1005 Is a True and Correct Copy of A3UM .................................. 20
`F. Mr. Birdsell Is Credible ....................................................................... 22
`IV. The Challenged Claims Are Unpatentable................................................ 22
`A.
`Claim 1—Application View ................................................................ 22
`B.
`Claim 1—Thumbnails ......................................................................... 23
`C.
`Claim 5 ................................................................................................ 28
`D.
`Claims 8 and 11 ................................................................................... 29
`E.
`Claims 3 and 4 ..................................................................................... 32
`V. CONCLUSION ............................................................................................ 35
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`
`
`i
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`IPR2022-00033
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`Petitioner’s Reply
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`UPDATED EXHIBIT LIST
`
`Fe
`
`10,423,658
`
`1006
`
`1007
`
`1008
`
`1009
`
`|U-‘S. Patent App. Pub. No. 2010/0058212 A1 to Belitz et al. (“Belitz’’)
`
`U.S. Patent No. 9,612,126 to Beletskiet al.
`
`U.S. Patent No. 8,160,400 to Snavelyet al.
`
`RESERVED
`
`1010|U-SS. Patent No. 9,098,531 (531 Patent’)
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`US. Patent No. 9,552,376 (376 Patent’)
`
`RESERVED
`
`US. Patent No. 10,621,228 (“228 Patent’)
`
`U.S. Patent No. 11,017,020 (“020 Patent’)
`File History of U.S. Patent No. 9,098,531
`
`1020
`
`Declaration of Matthew Birdsell
`
`
`
`1021
`
`1022
`
`Apple Inc., www.apple.com (various) (Archive.org: Feb. 17 to Mar.
`5, 2010)
`
`Standard Affidavit, Internet Archive (Oct. 8, 2021), available at
`
` https://archive.org/legal/affidavit_php
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`No. Exhibit Description
`
`
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
` Complaint, MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-cv-531,
`
`Todd Bogdan, “Announcing Picasa 3.5, now with nametags, better
`geotagging and more,” The Official Google Blog (Sept. 22, 2009)
`(Archive.org: Nov. 11, 2009), available at
`https://web.archive.org/web/20091103113337/
`http://googlephotos.blogspot.com/2009/09/announcing-picasa-35-
`now-with-name-tagshtml
`
`Dkt. 1 (W.D. Tex. May 25, 2021).
`Affidavit of Service, MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-
`cv-531, Dkt. 9 (W.D. Tex. Jun. 11, 2021) (service as of June 10,
`
`Joint Motion for Entry of Agreed Scheduling Order, MemoryWeb,
`LLC v. Apple, Inc., Civ. No. 6:21-cv-531, Dkt. 24 (W.D. Tex. Oct. 1,
`
`U.S. Patent App. Pub. No. 2011/0074811 Al to Hansonetal.
`
`Top 11 Technologies ofthe Decade, IEEE Spectrum,pp. 27-63 (Jan.
`2011).
`
`Wikipedia Entry for “Photo sharing” (Archive.org: May 6, 2011),
`available at https://web.archive.org/web/20110506092919/
`http:/en.wikipedia.org/wiki/Photo_sharing
`
`Wikipedia Entry for “Image organizer” (Archive.org: Apr. 27, 2010),
`available at https://web.archive.org/web/20100427092553/
`https:/en.wikipedia.org/wiki/Image organizer
`
`Stephen Shankland, “What’s the best Web sitefor geotagged
`photos?,” CNET (Mar. 18, 2009), available at
`https://www.cnet.com/tech/computing/whats-the-best-web-site-for-
`geotagged-photos/
`
`Panoramio, “Embedding a Panoramio map into your web page”
`(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328215828/
`http://www.panoramio.com/help/embedding
`
`lll
`
`
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`IPR2022-00033
`
`Petitioner’s Reply
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`‘No.__|Exhibit Description
`
`
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
` Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt Publishing
`
`Apple Inc., Mac OS X v10.6.3 Update (Mar. 29, 2010) (Archive.org
`Apr. 11, 2010), available at
`https://web.archive.org/web/20100411001846/
`https://support.apple.com/kb/dl1018.
`
`(2007)
`
`Exchangeable imagefile formatfor digital still cameras: Exif
`Version 2.2, JEITA CP-3451 (Apr. 2002), available at
`https://www.exif.org/Exif2-2.PDF.
`
`Information Interchange Model Version 4, IPTC-NAA (July 1999)
`
`Guidelines for Handling Image Metadata v. 1.0, Metadata Working
`Group (Sept. 2008), , available at
`https://web.archive.org/web/20090206012835/
`http:/metadataworkingeroup.org/pdf/mw
`idance.pdf.
`
`iPhoto ’09 Review (Archive org: May 26, 2009), available at
`https://web.archive.org/web/20090901000000*/http://www.killersite
`s.com/magazine/2009/iphoto-09-review/
`
`Google Code, Google Maps API Reference (Archive.org: Feb. 23,
`2010), availableat:
`http://code.google.com/apis/maps/documentation/reference.html
`
`U:S. Patent App. Pub. No. 2009/0113350 Al to Hibinoetal.
`
`U.S. Patent App. Pub. No. 2006/0165380 A1 to Tanakaetal.
`
`Flickr, Tour: Maps (Archive.org: Feb. 9, 2010), available at
`http://www.flickr.com/tour/maps
`
`Devin Coldewey, Review: Aperture 3, CrunchGear (Archive.org:
`Mar. 22, 2010), available at
`http://www.crunchgear.com/2010/03/19/review-aperture-3/
`
`Tony Wu, Using Aperture 3: Part I (Archive.org: Apr. 2, 2010),
`available at http://(www.tonywublog.com/20100330/first-good-
`impressions-using-aperture-3 html
`
`Complaint for Declaratory Judgment, MyHeritage (USA), Inc. et al.
`v. MemoryWeb, LLC, Case No. 1:21-cv-02666, Dkt. 1 (N.D. Ill. May
`17, 2021)
`
`1V
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`
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`IPR2022-00033
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`Petitioner’s Reply
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`‘No.__|Exhibit Description
`
` Apple Inc., Apple Releases Aperture 3 (Feb. 9, 2010) (Archive.org
`
`May20, 2010), available at
`https://web.archive.org/web/20 100520085 140/
`https://www.apple.com/pr/library/2010/02/Ohttps://;www.apple.com/p
`r/library/2010/02/09aperture.html.
`
`U.S. Patent App. Pub. No. 2007/0030391 Al to Kimetal.
`
`U.S. Patent No. 7,978,936 B1 to Casillas et al.
`
`Apple Inc., Exploring Aperture 3 (2010), available at
`https://manuals.info.apple.com/MANUALS/1000/ MA1522/en_US/
`Exploring Aperture 3 pdf.
`
`Sept. 17, 2021 eBay Order Confirmation for “Apple Aperture 3
`Academic Software DVD With Serial Code”
`
`Martin C. Brown, Hacking Google Maps and Google Earth, Wiley
`Publishing, Inc. (2006)
`
`RESERVED
`
`AppleInc., http://documentation.apple.com/en/aperture/usermanual/
`HTMLSource File (Archive.org Feb. 17, 2010), available at view-
`source:https://web.archive.org/web/20100217035925/http://documen
`tation.apple.com/en/aperture/usermanual/
`
`RESERVED
`
`Scott Meyers & Mike Lee, Learn Mac OS X Snow Leopard Book
`(2009) Excerpts
`
`Apress.com ordering page for Learn Mac OS X Snow Leopard (Sept.
`2009) Book (Archive.org: Feb. 1, 2010), available at
`https://web.archive.org/web/20100201093806/http://apress.com/boo
`k/view/9781430219460
`
`Mac Dev Center — Apple Developer Webpages (Archive.org: Apr.
`14, 2010), available at
`https://web.archive.org/web/20100414095727/http:/developer.apple.
`com/mac
`
`Apple Inc., Mac OS X Technology Overview (Aug. 14, 2009)
`(Archive.org: Nov. 13, 2010), available at
`
`
`
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056-
`
`1065
`
`1066
`
`[NEW]
`
`1067
`[NEW]
`
`1068
`
`[NEW]
`
`1069
`
`[NEW]
`
`
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`IPR2022-00033
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`Petitioner’s Reply
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`‘No.__|Exhibit Description
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`
`
`1070
`[NEW]
`
`1071
`[NEW]
`
`1072
`[NEW]
`
`1073
`
`[NEW]
`
`1074
`[NEW]
`
`1075
`[NEW]
`
`1076
`[NEW]
`
`1077
`[NEW]
`
`1078
`
`[NEW]
`
`Apple Inc., Resource Programming Guide (Jan. 6, 2009)
`(Archive.org: Jan. 14, 2010), available at
`https://web.archive.org/web/20100114164340/http:/developer.apple.
`com/mac/library/documentation/Cocoa/Conceptual/LoadingResource
`s/Introduction/Introduction.html
`
` https://web.archive.org/web/20101113134432mp /http://developer.a
`
`pple.com/library/mac/documentation/MacOSX/Conceptual/OSX_ Te
`chnology Overview/OSX Technology Overview.pdf
`
`Apple Inc., Bundle Programming Guide (July 14, 2009)
`(Archive.org: May 25, 2010), available at
`https://web.archive.org/web/20100525020133/http://developer.apple.
`com/mac/library/documentation/corefoundation/conceptual/CFBundl
`es/Introduction
`
`Internet Archive Extended URLs and Corresponding Screen Shots
`
`Install Disk Screen Shots
`
`Collection of Aperture 3 Webpages(Archive.org: Mar. 16, 2010),
`Navigable from Ex. 1044, available at
`https://web.archive.org/web/20100316213353/http://www.apple.com
`/aperture/
`
`RESERVED
`
`Collection of Aperture 3 Webpages (Archive.org: Apr. 11, 2010),
`Navigable from Ex. 1045, available at
`https://web.archive.org/web/2010041102281 1 /http:/;www.apple.com
`:80/aperture/
`
`Jason Snell, “Apple releases Aperture 3,” Macworld (Archive.org:
`Feb. 11, 2010), available at
`https://web.archive.org/web/20100211033049/http://www.macworld.
`com/article/146231/2010/02/aperture3 html
`
`Collection of Aperture 3 Webpages(Archive.org: Feb. 12, 2010),
`Navigable from Ex. 1077, available at
`
`V1
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`IPR2022-00033
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`Petitioner’s Reply
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`‘No.__|Exhibit Description
`https://web.archive.org/web/20100212221924/http://www.apple.com
`
`/aperture
`Panoramio, Screen Shot of “Popular photos in Google Earth”
`1079
`
`[NEW]|(Archive.org: Nov. 26, 2010), available at
`https://web.archive.org/web/20101126084240/http://Awww.panoramio
`.com:80/map
`
`Panoramio, “Addingphotos to Panoramio,” Help Webpage
`1080
`[NEW]|(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328220626/http://www.panoramio
`-com/help/addingphotos
`
`
`
`
`Window Area MeasurementIllustration, Places View (Exhibit 1005,
`30) from IPR2022-00032, Exhibit 2025
`Revealing Files on the Aperture 3 Installer DVD, Video
`1084
`[NEW]|Demonstration
`1085
`Screen Shot of Final Frame of the Video Demonstration in Exhibit
`[NEW]|
`1085
`1086|Mac OS X Version 10.6.3 Screen Shot of Computer Used in the
`[NEW]|Video Demonstration in Exhibit 1085
`1087
`Corrected Window Area MeasurementIllustration, Places View
`[NEW]
`(Exhibit 1005, 30) from IPR2022-00032, Exhibit 2025
`1088
`Corrected Window Area MeasurementIllustration, Places View
`[NEW]
`(Exhibit 1005, 30) from IPR2022-00032, Exhibit 2025
`Deposition of Rajeev Surati, Ph.D. (Dec. 1 & 2, 2022)
`1089
`
`Places View (Exhibit 1005, 30), Annotated with Arrow
`
`RESERVED
`
`1081
`[NEW]
`
`1082
`[NEW]
`
`1083
`[NEW]
`
`[NEW]
`
`Affidavit of Nathaniel E. Frank-White, Internet Archive (Dec. 12,
`1090
`[NEW]|2022)
`
`vil
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`IPR2022-00033
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`Petitioner’s Reply
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`No. Exhibit Description 1091
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`Declaration of Jeffrey P. Kushan
`
`[NEW]
`
`Vill
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`IPR2022-00033
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`I.
`
`Introduction
`
`Petitioner’s Reply
`
`Patent Owner’s replies to the grounds are based on misdirection and
`
`mischaracterization of the claims and prior art. None have merit.
`
`II. Claim Construction
`
`Patentee’s constructions conflict with the claim language and intrinsic
`
`record, and do not impart patentable distinctions into the claims.
`
`A.
`
`“Application View” [Claim 1]
`
`Patentee contends “application view” means a “view that is distinct from the
`
`map view, the first location view, and the second location view….” Response, 15.
`
`But that conflicts with the specification, which uses “application view” to mean
`
`any of a number of types of “Application Views.” As it states (EX1001, 9:18-22):
`
`
`
`Similarly, at EX1001, 3:58-62:
`
`
`
`
`
`1
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`IPR2022-00033
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`Petitioner’s Reply
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`
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`
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`The specification also describes navigating from any of the application
`
`views to a particular one. EX1001, 21:50-52, 23:37-40, 24:5. These examples
`
`align with the claim language, which specifies starting at any application view with
`
`the recited elements and then displaying one type of Application View.
`
`
`
`Patentee argues the use of different terms compels different meanings.
`
`Response, 15-16. But reading “Application View” as a genus and “map view” as a
`
`“species” satisfies that principle and is consistent with the specification.
`
`Thus, “application view” means “a type of application view.”
`
`B.
`
`“Responsive To… Displaying” [Claims 3-4, 7, and 10]
`
`Patentee contends “responsive to…displaying” should be construed as
`
`requiring a cause-effect relationship between the claimed “click or tap” and the
`
`corresponding display of “a [first/second] map image” or “[first/second] person
`
`view….” Response, 20-22 (citing EX1001 2:64-65, 5:64-6:1). Its arguments
`
`regarding prior art allege that this must occur without any intervening user
`
`interaction. Resp. §§ VI.C.4., VI.D.3; Response, 19-24.
`
`2
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`IPR2022-00033
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`Petitioner’s Reply
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`But Patentee’s expert disagreed—after analyzing analogous “responsive to
`
`…” claim language in a related patent with the same disclosure1 he testified the
`
`disclosed steps met that language even though intervening events occur between
`
`the initial “selection” and the subsequent action. EX1089, 379:18-382:23. That
`
`claim specified that a “slideshow” was “responsive to an input that is indicative of
`
`a selection.” PGR2022-00006 (EX1001, 35:41-45). The corresponding
`
`embodiment of that slideshow described a process where:
`
`(i) when the user clicks a digital file in a first view, it displays a different
`
`“Slideshow View” with a play icon (“0757”)2 and thumbnails (“0758”); and
`
`(ii) the slideshow only starts when the user clicks an icon or thumbnail in
`
`that different Slideshow view, not the digital file in the first view.3
`
`
`EX1001 has the same disclosure as U.S. Patent No. 11,017,020. See,
`
`1
`
`EX1089, 287:15-19.
`
`2
`
`EX1001, 21:50-52, 21:60-65; 22:5-10; EX1089, 371:3-24, 368:22-371:4,
`
`367:4-368:21.
`
`3
`
`EX1001, 22:5-12; EX1089, 374:14-375:1; also EX1089, 370:1-8:
`
`3
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`
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`IPR2022-00033
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`Petitioner’s Reply
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`
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`A construction that excludes a preferred embodiment of an invention “is rarely, if
`
`ever, correct….” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
`
`(Fed.Cir. 1996).
`
`
`
`Consequently, as understood by Patentee’s expert, an action (e.g., displaying
`
`a view) can be “responsive to an input that is indicative of a selection” even if
`
`there are intervening events (e.g., user interactions). That aligns with the plain
`
`meaning of “responsive to an input indicative of a selection, causing [action]”
`
`because the subsequent action is the ultimate consequence of the original input.
`
`Petitioner requests the Board confirm that “responsive to … displaying”
`
`encompasses methods that include intervening actions by a user to enable or that
`
`are associated with the displaying action.
`
`C.
`
`“[First/Second]-Person-Location-Selectable Element” [Claims 8
`and 11]
`
`4
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`IPR2022-00033
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`Petitioner’s Reply
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`Patentee attempts to import restrictions into the claim term “[first/second]-
`
`person-location-selectable element,” contending “first” and “second” person-
`
`location-selectable-elements must be distinct from one another. Response, 25-27.
`
`Nothing in the claim language or disclosure supports doing that.
`
`First, “person-location-selectable element is not used in the disclosure—it
`
`appears only in claims 8 and 11. Second, unlike other types of “selectable elements”
`
`referenced in claims 1, 5, and 7, there are no attributes or requirements identified in
`
`claims 8 and 11 for the “first/second-person-location selectable element.” Third, the
`
`only purpose this element is to cause display of “a representation of all locations
`
`having a digital photograph or video associated with the first person.” EX1001,
`
`36:66-37:2. Its appearance is thus irrelevant.
`
`Patentee and its expert identify the “first/second-person-location selectable
`
`element” as being a menu item titled “Locations” which is identical in multiple
`
`views. Response, 25-27; EX2025, ¶¶150-151. If anything, this confirms the same
`
`element can satisfy the claim when used in different views. The absence of any
`
`description or claim language that illuminates any required characteristic of a
`
`“first/second-person-location selectable element” further precludes reading any
`
`restrictions into this term, much less a requirement that “first” and “second” versions
`
`be “distinct elements.” If a construction of “[first/second]-person-location selectable
`
`5
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`IPR2022-00033
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`Petitioner’s Reply
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`element” is necessary, its ordinary meaning should be used: “a location selectable
`
`element in the [first/second] person view.”
`
`
`
`III. Other Prior Art Challenges
`
`None of Patentee’s other prior art challenges have merit. Response, 43-45;
`
`EX1033, 1; EX1034, 1; EX1035, Cover-3; EX1040, 1.
`
`First, the dates of EX1034 and EX1040 are consistent with Internet Archive
`
`URL standards, about which Dr. Surati testified extensively. EX1089, 17:14-18:19,
`
`48:7-10, 49:18-21, 169:15-170:13.
`
`Second, EX1033 and EX1035 bear dates of 2009 and 2007.
`
`Third, the ’376 Patent references Google Maps, confirming a skilled artisan
`
`would be familiar with Google Maps API. See EX1001, Figs. 5, 41; EX1089,
`
`221:23-222:19.
`
`Fourth, the Board found a sufficient basis for combining A3UM and Belitz
`
`without relying on any of these exhibits for reasonable expectation of success
`
`(referencing Dr. Terveen’s use of EX1033 (Picasa) only to illustrate result of
`
`combination, Paper 12 at 50 (citing EX1003, ¶¶126, 129)).
`
`
`
`Finally, even if not prior art, “the Board can rely on evidence other than just
`
`prior art” for some purposes. Yeda Rsch. & Dev. Co. v. Mylan Pharms. Inc., 906
`
`F.3d 1031, 1041 (Fed. Cir. 2018).
`
`6
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`IPR2022-00033
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`
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`IV. A3UM Is Prior Art
`
`Petitioner’s Reply
`
`Facts no longer in dispute establish that, from February of 2010, skilled
`
`artisans exercising reasonable diligence could locate and retrieve A3UM (EX1005)
`
`from (i) apple.com (http://documentation.apple.com/en/aperture/usermanual/), (ii)
`
`publicly distributed v3.0 Aperture 3 Installer DVDs (“Installer DVD”), and (iii)
`
`local copies of Aperture 3 after installation. Petition, 12; EX1003, ¶¶ 70-104;
`
`EX1020, ¶¶2-4.
`
`First, A3UM was accessible via Apple’s website after February 9, 2010. In
`
`contrast to Patentee’s theories why a skilled artisan might not have found A3UM
`
`on Apple’s website (Response, 30), Mr. Birdsell testified that at least 100,000
`
`individuals actually did access it between February and June of 2010, based on his
`
`recollection of Apple analytical reports of “documentation.apple.com[.]” EX2026,
`
`51:16-20, 54:6-22, 55:20-56:11; also EX1020 ¶7. He also recalled loading the
`
`HTML file set that is A3UM onto a staging server on February 8, 2010, and
`
`“within a few hours after publication” on February 9, 2010, he and his team
`
`verified “the files were live and accessible to customers and that all the links
`
`worked.” EX2026, 36:19-36:12, 36:21-37:25; 59:6-8; EX1020, ¶¶10-11. No
`
`evidence contradicts this testimony.
`
`7
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`IPR2022-00033
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`Petitioner’s Reply
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`Second, A3UM existed in February 2010. Witnesses from both parties
`
`testified it is located on and can beretrieved from (i) the Installer DVD and(11) a
`
`local copy of the Aperture application bundleafterinstallation. EX1003, 9775-94:
`
`EX2001, (108; EX2025, 4118; EX2026, 25:19-24; EX1089, 139:20-140:1, 143:9-
`
`13. Dr. Surati confirmed the Installer DVD
`
`has creation-modification dates establishing
`
`®Y Modified: Jan 21, 2010 9:02 PM
`¥ Spotlight Comments
`
`Used: 7.29 GB on disk (7,293,329,408 bytes) Third, knowledge of the existence of
`
`files on it necessarily existed before
`
`February 2010. EX1089, 125:3-25;
`
`EX1073, 1 (right).
`
`Capacity: 73868
`Available: 83.9 MB
`
`A3UM cannotbe disputed. Anyone who used Aperture 3 in February 2010 could
`
`access and inspect A3UM using the Aperture help window. EX1003, 4987-90:
`
`EX1020, §12(b). The high volumeof accesses of A3UM on Apple’s website
`
`confirms people were aware of A3UM starting in February 2010. Printed
`
`documentation in the Aperture 3 retail box explains the Aperture 3 user manualis
`
`on the computerafter installation. EX1003, 999: EX1051, 7, 135, 159.
`
`Fourth, the Installer DVD waspublicly distributed starting in February of
`
`2010. An array of evidence corroboratesthis, including (1) Apple’s press release
`
`(EX1048, 1), (41) Mr. Birdsell’s recollections aboutits release date, his activities
`
`aroundthat release date, and that he witnessedit for sale in Apple stores then
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`(EX1020, ¶¶5-7; EX2026, 59:10-60:10, 62:4-21), and (iii) webpages captured
`
`between February and June 2010 reporting experiences of people using Aperture 3
`
`( EX1044, 1; EX1045, 2; EX1077, 1; EX1089, 181:14-182:11, 192:2-7, 189:10-14,
`
`170:6-13).
`
`Skilled artisans thus knew of and could have retrieved A3UM starting in
`
`February 2010.
`
`A.
`
`Patentee Responds with Implausible Theories, Not Evidence
`
`Patent Owner first claims Petitioner “fails to proffer any evidence of actual
`
`sales of the Aperture 3 product.” Response, 49. But actual sales are not required (In
`
`re Klopfenstein, 380 F.3d at 1351) and Mr. Birdsell’s testimony is evidence (In re
`
`Jolley, 308 F.3d 1317, 1328 (Fed. Cir. 2002); In re Apple Inc., 979 F.3d 1332,
`
`1336 (Fed. Cir. 2020)). It also is reliable—he had clear recollections of relevant
`
`facts and his testimony is corroborated by other evidence (e.g., reports of third
`
`parties using Aperture 3 in webpages captured before June 2010). EX1044,
`
`1;EX1045, 2; EX1077, 1; EX1089, 181:14-182:11, 192:2-7, 189:10-14, 170:6-13.
`
`Patentee also disputes cases about numbers of copies that must distributed to
`
`establish public availability. Response, 51-52. Those cases found numbers far
`
`fewer than 100,000 copies were sufficient. Petition, 14 (“Cisco Sys., Inc. v.
`
`Centripetal Networks, Inc., IPR2018-01436, Paper 40 at 23-31 (Jan. 23, 2020) (586
`
`9
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`sales sufficient); Mass. Inst.of Tech. v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir.
`
`1985) (six copies sufficient)”).
`
`Patentee also theorizes skilled persons might not have associated “Aperture”
`
`with “photo management” and or could not find relevant Aperture 3 webpages on
`
`apple.com in 2010. Response, 32-37. But it’s expert refuted those theories,
`
`testifying: (i) skilled artisans could have found the Aperture 3 product page in 2010
`
`by searching Google for generic terms like “photo editing and management
`
`software” (EX1089, 203:22-204:24), (ii) searching for “Aperture support” would
`
`locate the Aperture support webpage on apple.com (Id., 187:12-189:5) (iii) the
`
`Aperture support page could be located with a Google search for “Aperture
`
`support” (EX1089, 187:12-188:8; also EX1003, ¶100, Petition, 19), and (iv)
`
`webpages before June 2010 associating “Aperture” with “photo management
`
`software” would likely be found by Google searches (EX1089, 202:1-5, 203:12-21,
`
`194:4-11, 169:15-170:13, 181:14-182:11, 192:2-7, EX1048, 1; EX1077, 1;
`
`EX1044, 1; EX 1074, 1). He also confirmed some included direct links to
`
`www.apple.com/aperture (EX1089, 206:23-207:7), EX1078, 1 (below):
`
`10
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`
`
`
`
`Patentee contends navigating to the Aperture support page would be
`
`burdensome. Response, 36-37. It was not—Dr. Surati and Dr. Terveen testified a
`
`skilled artisan could locate A3UM on Aperture 3’s support page
`
`(www.apple.com/support/aperture) with a few clicks (EX1089, 207:8-208:5;
`
`EX1003, ¶101; EX1074, 4 (below)), precisely as Mr. Birdsell explained (EX1020,
`
`¶18; EX2026, 67:13-69:11). Dr. Surati demonstrated this at his deposition,
`
`reaching A3UM with three clicks. EX1089, 207:8-16, 186:8-13.
`
`11
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`
`
`M & K Holdings, Inc. v. Samsung Elecs. Co., 985 F.3d 1376, 1381-82 (Fed. Cir.
`
`2021). And Aperture 3 webpages would be found by searching “Aperture” using
`
`apple.com’s search function. Voter Verified, Inc. v. Premier Election Sols., Inc.,
`
`698 F.3d 1374, 1381 (Fed. Cir. 2012); Petition, 16-17; EX1020, ¶18; EX1003,
`
`¶101.
`
`Finally, skilled artisans would have known to look for “Aperture” on
`
`apple.com because they would have been familiar with Apple and its products,
`
`including Aperture 3, and would have known to search apple.com for Aperture
`
`support information. CloudFlare, Inc. v. Sable Networks, Inc., No. IPR2021-
`
`00909, Paper 42 at 41 (PTAB Oct. 18, 2022); EX1003, ¶101, EX1089, 188:9-16.
`
`Patentee admits the link to the Aperture 3 product webpage was present for several
`
`weeks in February 2010 (Response, 50; Petition, 13-17; EX1020, ¶17) which
`
`12
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`would have informed many, given that apple.com was “probably” one of the most
`
`visited websites on the planet then (EX1089, 188:9-16; EX1003, ¶101).
`
`B. Dr. Surati’s Testimony Is Not Credible
`
`Patentee, relying on Dr. Surati’s declaration, contends a skilled artisan could
`
`not have found or retrieved A3UM from the installer DVD or the Aperture
`
`application bundle after installation with reasonable effort. Response, 44. Dr.
`
`Surati’s testimony is not reliable. As his deposition shows, he was unfamiliar with
`
`how MacOS applications are organized and distributed, that their help files are
`
`typically stored in the application bundle, and how to reveal hidden files. EX1089,
`
`405:20-406:19; EX2025, ¶ 114-117. And despite confirming a skilled person
`
`would have consulted Apple documentation or MacOS “how to” books if they had
`
`questions, he did not. EX1089 44:2-14; 42:23-43:8, 36:2-11, 405:20-406:8. He did
`
`not even review relevant passages in the single Apple guidance he did cite
`
`(“AHIG”). EX2025, ¶106; EX2021, 33, 55, 85; EX1089, 406:13-19, 41:23-42:2,
`
`42:23-43:8.
`
`After reviewing such documentation4, Dr. Surati confirmed it teaches:
`
`
`EX1089, 30:1-12; 42:23-44:14; EX1066, 316-320, EX1069, 73, 142;
`
`4
`
`EX1070, 3, 15-16, 20; EX1071, 5; EX1089, 58:17-59:12, 78:1-79:12, 87:7-20,
`
`95:1-13, 36:2-11.
`
`13
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`(i) MacOS applications exist as an “application bundle” with a
`
`standardized folder structure having several standard subfolders
`
`(EX2021, 33, 55, 85; EX1089, 57:2-17, 59:3-12 42:23-43:8; also
`
`EX1003 ¶93);
`
`(ii)
`
`the standard “Resources” subfolder contains various files used by the
`
`application other than executable code (EX2021, 85; EX1089, 59:13-
`
`23);
`
`(iii)
`
`the “Resources” subfolder is where help content is found that
`
`“typically consists of a set of HTML files” and HTML files in the
`
`application bundle can be opened “using an external application, such
`
`as … Safari” (EX1071, 5-6; EX1089, 97:9-13, 98:5-11; also EX1003,
`
`¶¶93-94);
`
`(iv) MacOS application bundles are distributed to users in installer
`
`packages on disk images (EX1066, 316-320, EX1069, 73, 142;
`
`EX2021, 86-88);
`
`(v) when installer packages are double clicked, they launch the Installer
`
`program that copies the application bundle and related files to a user’s
`
`computer (EX1069, 142; EX1089, 76:7-16, 54:21-55:6); and
`
`14
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`(vi)
`
`the contents of installer packages and application bundles can be
`
`inspected using a “Show Contents” command. (EX1069, 142;
`
`EX1070, 3-4; EX1089, 80:5-15, 86:16-23)
`
`Thus, a skilled artisan who took even the most basic steps to familiarize
`
`himself with how MacOS applications are organized and distributed would have
`
`known where to look for HTML help files (e.g., A3UM) in the Aperture 3
`
`application bundle (i.e., in the “Resources” folder) and how to retrieve them from
`
`(i) the Installer DVD and (ii) after installation, the local copy of the Aperture 3
`
`application bundle. EX1003, ¶93-94; EX2025, ¶118; EX1089, 44:2-14, 42:23-
`
`43:8, 36:2-11, 407:20-408:8.
`
`Indeed, at his deposition, Dr. Surati analogized locating A3UM within the
`
`Installer DVD to finding a book in a library. EX1089, 407:8-19.
`
`C. A3UM Can Be Retrieved from the Installer DVD
`
`A skilled artisan asked to investigate what was on the v3.0 Aperture 3
`
`Installer Disk would start by inserting it into a Macintosh. When Dr. Surati did
`
`that, he reported seeing the window below (EX2025, ¶¶114, EX2001, ¶108):
`
`
`
`15
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`The artisan would expect a MacOS Installer DVD to contain installer
`
`packages (files ending with “.pkg” or “.mpkg.”). EX1066, 316; EX1089, 131:23-
`
`132:10. Not seeing any, she might inspect the “Install Aperture file,” which reveals
`
`it is an alias to a hidden meta-installation package file called “Aperture.mpkg”.
`
`EX1089, 127:3-8; EX1073, 3 (below).
`
`
`
`The artisan would know Unix (EX1089, 16:4-14) and that MacOS is based
`
`on Unix (EX1089, 71:23-72:8), so if she did not how to show hidden files in
`
`MacOS, she could display them in the Terminal by typing “ls -l -a”. That
`
`command lists hidden files and directories even if MacOS is not showing hidden
`
`files. EX1069, 112; EX1089, 72:21-24, 73:18-74:4, 108:18-21; EX1073, 6
`
`(below); EX1084, EX1085.
`
`16
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`
`
`The artisan also could lookup how to show hidden files in MacOS, which
`
`would take ~10 minutes. EX1066, 400; EX1089, 135:16-21, 136:24-137:3.
`
`Dr. Surati testified the artisan also could have identified which of the ten
`
`installer packages on the Installer DVD contained the Aperture 3 application
`
`bundle by its name and properties: it has the filename “aperture.pkg” and a
`
`sufficient size. EX1089, 141:25-142:20; EX1073, 5 (below):
`
`17
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`The artisan also would know to inspect installer package contents—right-clicking
`
`and selecting “Show Package Contents.” EX1089, 86:16-87:5, 100:17-101:2,
`
`EX1003, ¶79. From there, she would need only a couple steps to locate, copy and
`
`decompress the Unix gz file containing the Aperture application bundle (i.e.,
`
`“Archive.pax.gz”), as Dr. Terveen demonstrated and Dr. Surati confirmed.
`
`EX1003, ¶¶79-80; EX2025, ¶118; EX1089, 64:6-65:2.
`
`The artisan would expect an application’s help files in HTML format would
`
`be in the Resources subfolder of the application bundle and could be opened with a
`
`web browser. EX1070, 15-16, EX1071, 5-6; EX1089, 89:10-14, 97:9-13, 98:5-11;
`
`EX1003, ¶¶80-83, 93. Consistent with that, Dr. Terveen reported that A3UM was
`
`18
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`in the “usermanual” subfolder within the Resources subfolder and its contents
`
`could be viewed with a web browser. EX1003, ¶¶81, 90-91.
`
`
`
`D. A3UM Is Accessible After Installation
`
`Patentee can’t dispute that installing Aperture 3 from the v3.0 Aperture
`
`Installer DVD is trivial or that it copies A3UM to the user’s computer. EX1003,
`
`¶¶ 80-85, 91-98; EX1020, ¶¶12, 14; EX2026, 25:19-24. Dr. Surati confirmed this.
`
`EX2025, ¶117. So Petitioner argues instead that accessing it on the hard drive after
`
`installation would impose an “unreasonable” burden. Response, 42-48.
`
`19
`
`
`
`IPR2022-00033
`
`Petitioner’s Reply
`
`Patentee also contends A3UM is not a publication but a software
`
`component. Response, 38, 41. But as both experts and the Apple guidelines
`
`confirm, the A3UM HTML files in the Aperture 3 application bundle can be
`
`viewed with a Safari web browser without Aperture 3 running.5 EX1003, ¶95;
`
`EX1089, 27:4-7, 98:5-99:10; EX1071, 5; EX2023, 80:2-81:6; EX2026, 71:11-
`
`72:8.
`
`E.
`
`EX1005 Is a True and Correct Copy of A3UM
`
`Patentee contends “it is impossible to know if Ex. 1005 accurately represents
`
`what was available on [apple.com] in 2010” without evidence that A3UM was
`
`archived before June 2010. Response, 37. That is incorrect.
`
`First, Patentee has not disputed that EX1005 is a true and correct copy of the
`
`A3UM HTML file set on the v3.0 Aperture Installer DVD. The “provenance” of
`
`A3UM is also clear— the footer reports the path to each HTML file used to render
`
`each page, and they are all in the “usermanual” subfolder in the “Resources”
`
`subfolder of a local copy (i.e,. “file:///”) of the Aperture 3 application bundle.
`
`
`Ex parte Nelson (Response, 41) is dis
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