IPR2022-00221
`Patent No. 10,423,658
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`Patent Owner’s Notice of Appeal
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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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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,423,658
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`Inter Partes Review No. IPR2022-00221
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`PATENT OWNER’S NOTICE OF APPEAL
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`IPR2022-00221
`Patent No. 10,423,658
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`Pursuant to at least 35 U.S.C. §§ 141 and 142 and 37 C.F.R. §§ 90.2(a) and
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`Patent Owner’s Notice of Appeal
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`
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`90.3, notice is hereby given that Patent Owner MemoryWeb, LLC (“MemoryWeb”)
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`appeals to the United States Court of Appeals for the Federal Circuit from the Final
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`Written Decision, dated July 31, 2023 (Paper No. 40) (“Final Decision”) (attached
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`as Exhibit A) and the Decision Denying Patent Owner’s Request on Rehearing on
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`November 29, 2023 (Paper No. 42) (“Rehearing Decision”) (attached as Exhibit B)
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`entered in IPR2022-00221, and from all underlying findings, orders, decisions,
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`rulings, and opinions. This notice is timely under 37 C.F.R. § 90.3, having been filed
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`no later than 63 days after the Rehearing Decision.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), MemoryWeb states that the
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`issues on appeal may include, but are not limited to:
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` The Board’s determination that claims 1-8, 10, 11, and 13-15 of U.S. Patent
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`No. 10,423,658 were shown by a preponderance of the evidence to be
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`unpatentable under 35 U.S.C. § 103(a) in view of Okamura (Ex. 1005) and
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`Belitz (Ex. 1006), including any findings or determinations supporting or
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`related to that determination;
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` The Board’s determination that claims 3-4 of U.S. Patent No. 10,423,658 were
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`shown by a preponderance of the evidence to be unpatentable under 35 U.S.C.
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`§ 103(a) in view of Okamura (Ex. 1005), Belitz (Ex. 1006), and Rasmussen
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`IPR2022-00221
`Patent No. 10,423,658
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`(Ex. 1007), including any findings or determinations supporting or related to
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`Patent Owner’s Notice of Appeal
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`
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`that determination;
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` The Board’s determination that claims 6-8, 10, and 11 of U.S. Patent No.
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`10,423,658 were shown by a preponderance of the evidence to be
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`unpatentable under 35 U.S.C. § 103(a) in view of Okamura (Ex. 1005), Belitz
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`(Ex. 1006), and Gossweiler (Ex. 1038), including any findings or
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`determinations supporting or related to that determination;
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` The Board’s determination that claims 8, 9, 11, and 12 of U.S. Patent No.
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`10,423,658 were shown by a preponderance of the evidence to be
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`unpatentable under 35 U.S.C. § 103(a) in view of Okamura (Ex. 1005), Belitz
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`(Ex. 1006), and Yee (Ex. 1041), including any findings or determinations
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`supporting or related to that determination;
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` The Board’s determination that claims 8, 9, 11, and 12 of U.S. Patent No.
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`10,423,658 were shown by a preponderance of the evidence to be
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`unpatentable under 35 U.S.C. § 103(a) in view of Okamura (Ex. 1005), Belitz
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`(Ex. 1006), Yee (Ex. 1041), and Gossweiler (Ex. 1038), including any
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`findings or determinations supporting or related to that determination;
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` The Board’s construction of the claim term “application view”;
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` The Board’s construction of the claim phrase “responsive to a click or tap . . .
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`displaying”;
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`IPR2022-00221
`Patent No. 10,423,658
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` The Board’s construction of the claim phrase “the displaying the people view
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`Patent Owner’s Notice of Appeal
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`including displaying: … a name associated with the first person … and … a
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`name associated with the second person”;
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` The Board’s construction of the claim phrase “the displaying the album view
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`including displaying: … a first album name … and … a second album name”;
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` All other issues decided adversely to MemoryWeb in any orders, decisions,
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`rulings, and opinions.
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`A copy of this Notice of Appeal is being filed with the Patent Trial and Appeal
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`Board. In addition, this Notice of Appeal and the required docketing fees are being
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`filed with the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit.
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`Dated: January 3, 2024
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`By:
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`4
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`Respectfully submitted,
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`/s/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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`

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`IPR2022-00221
`Patent No. 10,423,658
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`Patent Owner’s Notice of Appeal
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Notice of Appeal was served on January 3, 2024, by email:
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`Counsel for Petitioner, Samsung Electronics Co., Ltd.:
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`IPR39843-0116IP1@fr.com
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`PTABInbound@fr.com
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`axf-ptab@fr.com
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`jjm@fr.com
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`in@fr.com
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`cgreen@fr.com
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`Counsel for Petitioner, Samsung Electronics Co., Ltd.
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`By: /s/Jennifer Hayes
`Counsel for Patent Owner
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`5
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`IPR2022-00221
`Patent No. 10,423,658
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`Patent Owner’s Notice of Appeal
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`CERTIFICATE OF SERVICE
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`
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`I certify that, in addition to being filed electronically through the Patent Trial
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`and Appeal Board’s Patent Review Processing System, the original version of
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`PATENT OWNER’S NOTICE OF APPEAL was filed by Priority Mail Express
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`Number EJ 318 402 277 US pursuant to M.P.E.P. § 1216.01, 37 C.F.R. § 1.10, and
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`37 C.F.R. § 104.2 on this 3rd day of January 2024, with the Director of the United
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`States Patent and Trademark Office at the following address:
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`By: /s/Jennifer Hayes
`Counsel for Patent Owner
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`Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8, Post Office Box 1450
`Alexandria, Virginia 22313-1450
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`IPR2022-00221
`Patent No. 10,423,658
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`Patent Owner’s Notice of Appeal
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`CERTIFICATE OF SERVICE
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`
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`I certify that PATENT OWNER’S NOTICE OF APPEAL was filed
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`electronically on this 3rd day of January 2024, with the Clerk’s Office of the United
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`States Court of Appeals for the Federal Circuit, via the CM/ECF filing system:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, D.C. 20005
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`By: /s/Jennifer Hayes
`Counsel for Patent Owner
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`7
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`EXHIBIT A
`EXHIBIT A
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`Trials@uspto.gov
`571-272-7822
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`
`Paper 40
`Date: July 31, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
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`MEMORYWEB, LLC,
`Patent Owner.
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`IPR2022-00221
`Patent 10,423,658 B2
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`
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`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
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`BROWNE, Administrative Patent Judge.
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`
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`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2022-00221
`Patent 10,423,658 B2
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`I.
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`INTRODUCTION
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`We have authority to hear this inter partes review under 35 U.S.C.
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`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
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`and 37 C.F.R. § 42.73. For the reasons discussed below, we determine that
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`Petitioner, Samsung Electronics Co., Ltd. (“Samsung”), has shown by a
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`preponderance of the evidence that claims 1–13 of U.S. Patent No.
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`10,423,658 B2 (Ex. 1001, “the ’658 Patent”) are unpatentable, but has not
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`shown by a preponderance of the evidence that claims 14 and 15 are
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`unpatentable. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
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`A. Procedural History
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`The Petition (Paper 2, “Pet.” or “Petition”) requested inter partes
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`review of the claims 1–15 of the ’658 Patent (the “challenged claims”).
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`Patent Owner, MemoryWeb, LLC, filed a Preliminary Response. Paper 6
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`(“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary
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`Reply (Paper 8), and Patent Owner filed a Preliminary Sur-reply (Paper 9).
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`Based upon the record at that time, we instituted inter partes review on all
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`challenged claims on the grounds presented in the Petition. Paper 10
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`(“Institution Decision” or “Dec.”).
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`After institution, Patent Owner filed a Response (Paper 18, “PO
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`Resp.”), Petitioner filed a Reply (Paper 22, “Pet. Reply”), and Patent Owner
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`filed a Sur-reply (Paper 34, “PO Sur-reply”).
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`On June 12, 2023, an oral hearing was held. The transcript of the
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`hearing (Paper 39, “Tr.”) was entered in the record.
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`B. Real Party-in-Interest
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`Petitioner states that “Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. are the real parties in interest.” Pet. 108. Patent
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`2
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`IPR2022-00221
`Patent 10,423,658 B2
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`Owner states that it, MemoryWeb, LLC, is the real party in interest. Paper
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`3, 2.
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`C. Related Matters
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`According to the parties, the ’658 Patent was asserted in the following
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`district court proceedings: MemoryWeb, LLC v. Samsung Electronics Co.,
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`Ltd. et al., 6:21-cv-00411 (W.D. Tex.), Pending; MemoryWeb, LLC v. Apple,
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`Inc., No. 6-21-cv-00531 (W.D. Tex.), Pending; and MyHeritage (USA), Inc.
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`et al. v. MemoryWeb, LLC, No. 1-21-cv-02666 (N.D. Il.), Dismissed. Pet.
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`109; Paper 3, 2.
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`Petitioner states that “[t]he ’658 patent is also the subject of an IPR
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`proceeding filed by Apple Inc. (IPR2022-00033)” but that “Samsung is not
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`a real party-in-interest to this IPR proceeding.” Pet. 109.
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`Patent Owner states that “[t]he ’658 patent is related to the following
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`U.S. Patents: 9,098,531 (‘the ’531 patent’); 9,552,376 (‘the ’376 patent’);
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`10,621,228 (‘the ’228 patent’); 11,017,020 (‘the ’020 patent’); 11,163,823
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`(‘the ’823 patent’), and 11,170,042 (‘the ‘042 patent’).” Paper 3, 2. Patent
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`Owner additionally identifies the following IPR proceedings as related
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`matters: Samsung Electronics Co., LTD. v. MemoryWeb LLC, IPR2022-
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`00222 (’228 patent); Apple Inc. v. MemoryWeb, LLC, IPR2022-00111 (’020
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`patent); Apple Inc. v. MemoryWeb, LLC, PGR2022-00006 (’020 patent);
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`Apple Inc. v. MemoryWeb, LLC, IPR2022-00033 (’658 patent); Apple Inc. v.
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`MemoryWeb, LLC, IPR2022-00032 (’376 patent); Apple Inc. v.
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`MemoryWeb, LLC, IPR2022-00031 (’228 patent); Unified Patents, LLC v.
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`MemoryWeb, LLC, IPR2021-01413, (’228 patent); and U.S. Patent
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`Application No. 17/459,933. Id. at 2–3.
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`3
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`IPR2022-00221
`Patent 10,423,658 B2
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`D. The ’658 Patent
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`The ’658 Patent relates to a computer-implemented system and
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`method for managing and using digital files such as digital photographs. Ex.
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`1001, 1:16–19. In particular, the ’658 Patent aims to provide an “interactive
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`platform” for users to gather, organize, view, navigate, search, share and
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`archive digital files, e.g., digital photographs and videos. Id. at 13:12–18,
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`13:56–59. The interactive platform may be provided via an “Application”
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`having various “Application Views” for interaction with and organization of
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`digital files. Id. at 8:59–9:7. A screenshot of an exemplary type of
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`Application View, a “Location Application View,” is shown in Figure 41,
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`reproduced below. Id. at 4:3–4.
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` As shown in the Location Application View interface of Figure 41,
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`“Digital Files are displayed within an interactive map (Google map shown as
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`Patent 10,423,658 B2
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`an example).” Ex. 1001, 29:25–29. Further, “[i]n this view, individual or
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`groups of Digital Files are illustrated as photo thumbnails (see indicators
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`0874 and 0875) on the map and the user can select the thumbnail to see all
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`the Digital Files with the same location.” Id. at 29:32–36. In the case that
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`the user selects either one of the thumbnails, a “Single Location Application
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`View” interface corresponding to the location is presented to the user, as
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`shown in the bottom portion of Figure 34 reproduced below. Id.
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`Focusing on the single location (1630) Locations Application View,
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`an “individual location name is displayed at the top of the page (1632).” Ex.
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`1001, 24:22–24. The single location Locations Application View further
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`displays “[t]humbnails of each Digital File within the specific collections” of
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`digital files. Id. at 24:25–26; see id. at 23:56–59, Fig. 33. In the example
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`shown in Figure 34, “one photo (1633) taken at Wrigley Field (1634) that is
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`associated with the location called Wrigley Field” is displayed. Id. at 24:26–
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`28.
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`Turning to another Application View described by the ’658 Patent, a
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`“Multiple People Application View” is shown in Figure 32 reproduced
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`below. Id. at 3:58.
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`
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`The Multiple People Application View “can be seen by selecting
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`‘People’ (1401) from any of the Application Views within the Application.”
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`Ex. 1001, 22:46–48. As shown in Figure 32, “Multiple People Application
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`View” 1400 “display[s] all the people that were created within the user's
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`Application.” Id. at 22:44–46. “For each person, a thumbnail of their face
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`IPR2022-00221
`Patent 10,423,658 B2
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`along with their name is depicted. In this figure, Jon Smith (1403) and JC
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`Jon Smith (1404) along with some other people are illustrated.” Id. at
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`22:52–55.
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`Further, “[f]or each person,” there are “tags that are associated to
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`[that] person.” Ex. 1001, 23:4–6. In “Single People Profile Application
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`View” 1430, associated tags are used show that there are, e.g., “four photos
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`(1452) associated with that person.” Id. at 23:6–9. In another example, the
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`person “grandma” has been tagged in, and so, is associated with, 100 photos.
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`Id. at 24:56–59. Put another way, digital files have tags, e.g., in a “Tag
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`Block of the Relationship Table for the Digital File,” which associate a
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`particular digital file with a particular person or otherwise characterizes and
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`documents the digital file. See id. at 20:1–6; 24:42–52.
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`E. Challenged Claims
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`Petitioner challenges claims 1–15 of the ’658 Patent. Pet. 1. Claim 1,
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`the only independent claim is reproduced below with Petitioner’s limitation
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`labeling included:
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`[1pre] 1. A computer-implemented method of displaying at least
`a portion of a plurality of (i) digital photographs, (ii) videos, or
`(iii) a combination of (i) and (ii), each of the digital photographs
`and videos being associated with a geotag indicative of
`geographic coordinates where the respective digital photograph
`or video was taken, the method comprising:
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`[1a] displaying an application view on a video display device
`including displaying a plurality of selectable elements, the
`plurality of selectable elements including a location selectable
`element;
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`[1b] responsive to a click or tap of the location selectable
`element, displaying a map view on a video display device, the
`displaying the map view including displaying:
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`IPR2022-00221
`Patent 10,423,658 B2
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`[1c] (i) a representation of an interactive map;
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`[1d] (ii) a first location selectable thumbnail image at a
`first location on the interactive map, the first location
`being associated with the geographic coordinates of a first
`geotag, a first set of digital photographs and videos
`including all of the digital photographs and videos
`associated with the first geotag;
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`[1e] (iii) a first count value image partially overlapping the
`first location selectable thumbnail image, the first count
`value image including a first number that corresponds to
`the number of digital photographs and videos in the first
`set of digital photographs and videos;
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`[1f] (iv) a second location selectable thumbnail image at a
`second location on the interactive map, the second location
`being associated with the geographic coordinates of a
`second geotag, a second set of digital photographs and
`videos including all of the digital photographs and videos
`associated with the second geotag; and
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`[1g] (v) a second count value image partially overlapping
`the second location selectable thumbnail image, the
`second count value image including a second number that
`corresponds to the number of digital photographs and
`videos in the second set of digital photographs and videos;
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`[1h] responsive to a click or tap of the first location selectable
`thumbnail image, displaying a first location view on the video
`display device, the displaying the first location view including
`displaying (i) a first location name associated with the first
`geotag and (ii) a scaled replica of each of the digital photographs
`and videos in the first set of digital photographs and videos, the
`displayed scaled replicas of each of the digital photographs and
`videos in the first set of digital photographs and videos not being
`overlaid on the interactive map; and
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`[1i] responsive to a click or tap of the second location selectable
`thumbnail image, displaying a second location view on the video
`display device, the displaying the second location view including
`displaying (i) a second location name corresponding to the
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`IPR2022-00221
`Patent 10,423,658 B2
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`second geotag and (ii) a scaled replica of each of the digital
`photographs and videos in the second set of digital photographs
`and videos, the displayed scaled replicas of each of the digital
`photographs and videos in the second set of digital photographs
`and videos not being overlaid on the interactive map.
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`Ex. 1001, 35:13–36:7; Pet. 5–6.
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`F. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability:
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`Claim(s)
`Challenged
`1–15
`3, 4
`6–12
`8, 9, 11, 12
`8, 9, 11, 12
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`35 U.S.C. §
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`Reference(s)/Basis
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`103
`103
`103
`103
`103
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`Okamura,1 Belitz2
`Okamura, Belitz, Rasmussen3
`Okamura, Belitz, Gossweiler4
`Okamura, Belitz, Yee5
`Okamura, Belitz, Gossweiler Yee
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`Pet. 11. In addition to the references listed above, Petitioner relies on the
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`Declaration of Philip Greenspun, Ph.D. (Ex. 1003). Patent Owner submits a
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`Declaration of Glenn Reinman, Ph.D. (Ex. 2001).
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`
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`1 Okamura et al., U.S. Patent Publication No. 2011/0122153 A1, published
`May 26, 2011 (Ex. 1005) (“Okamura”).
`2 Belitz et al., U.S. Patent Publication No. 2010/0058212 A1, published
`March 4, 2010 (Ex. 1006) (“Belitz”).
`3 Rasmussen, U.S. Patent Publication No. 2006/0206264 A1, published
`September 14, 2006 (Ex. 1007) (“Rasmussen).
`4 Gossweiler et al., U.S. Patent Publication No. 2008/0276279 A1, published
`November 6, 2008 (Ex. 1038) (“Gossweiler”).
`5 Yee et al., U.S. Patent Publication No. 2009/0210793 A1, published
`August 20, 2009 (Ex. 1041) (“Yee”).
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`IPR2022-00221
`Patent 10,423,658 B2
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`II. ANALYSIS
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`A. Principles of Law: Obviousness
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`A claim is unpatentable as obvious under 35 U.S.C. § 103 if the
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`differences between the subject matter sought to be patented and the prior art
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`are such that the subject matter as a whole would have been obvious to a
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`person having ordinary skill in the art to which said subject matter pertains.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations,
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`including: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in
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`the art; and (4) objective evidence of nonobviousness, i.e., secondary
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`considerations.6 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
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`17–18 (1966).
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`The Supreme Court has made clear that we apply “an expansive and
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`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
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`Whether a patent claiming the combination of prior art elements would have
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`been obvious is determined by whether the improvement is more than the
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`predictable use of prior art elements according to their established functions.
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`Id. at 417. Reaching this conclusion, however, requires more than a mere
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`showing that the prior art includes separate references covering each
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`separate limitation in a claim under examination. Unigene Labs., Inc. v.
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`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
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`requires the additional showing that a person of ordinary skill would have
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`
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`6 The current record does not present or address any evidence of
`nonobviousness.
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`IPR2022-00221
`Patent 10,423,658 B2
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`selected and combined those prior art elements in the normal course of
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`research and development to yield the claimed invention. Id.
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`B. Level of Ordinary Skill
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`In determining whether an invention would have been obvious at the
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`time it was made, we consider the level of ordinary skill in the pertinent art
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`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
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`resolving the level of ordinary skill in the art lies in the necessity of
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`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-
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`Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
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`Petitioner contends that a person of ordinary skill in the art at the time
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`of the invention of the ’658 Patent would have had the following education
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`and experience:
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`(1) a bachelor’s degree in computer science, computer
`engineering, electrical engineering, or a related field, and (2) at
`least one year of experience designing graphical user interfaces
`for applications such as photo organization systems . . .
`Additional graduate education could substitute for professional
`experience, or significant experience in the field could substitute
`for formal education.
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`Pet. 12 (citing Ex. 1003 ¶ 27). Patent Owner does not challenge this
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`definition of the level of skill at this time. Prelim. Resp. 45.
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`For purposes of this Decision, we also adopt Petitioner’s proposal as
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`reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261
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`F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate
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`level of skill in the art).
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`C. Claim Construction
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`Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction
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`standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
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`IPR2022-00221
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`2005) (en banc). Under Phillips, claim terms are generally given their
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`ordinary and customary meaning as would be understood by one with
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`ordinary skill in the art in the context of the specification, the prosecution
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`history, other claims, and even extrinsic evidence including expert and
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`inventor testimony, dictionaries, and learned treatises, although extrinsic
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`evidence is less significant than the intrinsic record. Phillips, 415 F.3d at
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`1312–17. Usually, the specification is dispositive, and it is the single best
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`guide to the meaning of a disputed term. Id. at 1315.
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`Only terms that are in controversy need to be construed, and then only
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`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
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`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
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`2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`Petitioner asserts that “no formal claim constructions are necessary in
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`this proceeding.” Pet. 11–12. For claim 1, Patent Owner proposes claim
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`construction for the terms “application view” and “responsive to a click or
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`tap . . . displaying.” PO Resp. 13–25. For claim 5, Patent Owner proposes
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`claim construction for “the displaying the people view including displaying:
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`. . . a name associated with the first person . . . and . . . a name associated
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`with the second person.” Id. at 25–28. For claim 13, Patent Owner proposes
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`claim construction for “the displaying the album view including displaying: .
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`. . a first album name . . . and . . . a second album name.” Id. at 29–30. We
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`consider each of Patent Owner’s proposed constructions.
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`1.
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`Application View
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`Patent Owner contends that the claim term “application view” should
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`be construed to require an “application view that is distinct from the other
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`claimed views.” PO Resp. 13. Specifically, Patent Owner contends that
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`The claim language dictates that the ‘application view’ is
`separate and distinct relative to: (i) the map view and first/second
`location views in claim 1; (ii) the people view in claim 5; (iii) the
`first/second person views in claims 7 and 10; (iv) the album view
`in claim 13; and (vi) the first/second album views in claims 14
`and 15.
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`Id. at 13–14. In particular, Patent Owner identifies Figure 35 as “an
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`example of an application view including a plurality of selectable
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`elements that is distinct from the other views.” Id. at 17.
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`Petitioner replies that “the ’658 patent makes clear, [that] FIG. 35 is
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`merely one of various ‘application views’ that are provided as examples in
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`the ’658 patent, including those shown in FIGS. 32–34 and 36.” Pet. Reply
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`2 (citing Ex. 1001, 9:18–22; Ex. 1046, 40:8–21; Ex. 1047 ¶ 4). Petitioner
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`asserts that “the ’658 patent explicitly refers to its people and location views
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`as the ‘People Application View’ and the ‘Location Application View.’” Id.
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`(citing Ex. 1001, Figs. 32, 34, 3:58–4:4). Petitioner asserts further that
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`“[t]here is nothing in the ’658 patent that distinguishes the ‘Uploads
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`Application View’ in FIG. 35 from the other application views in the ’658
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`patent, other than its focus on ‘Uploads’ as compared to ‘People’ or
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`‘Location.’” Id. (citing Ex. 1047 ¶ 4).
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`Petitioner replies further that “Dr. Reinman acknowledged during
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`deposition that the specification of the ’658 patent provides ‘examples of
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`different application views’ and that ‘a view like a location view is also an
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`application view in the spec of the patent.’” Pet. Reply 3 (citing Ex. 1046,
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`17:12–18, 42:9–43:15). Petitioner asserts that “according to the
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`specification of the ’658 patent and per Dr. Reinman’s own testimony, a
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`particular view can ‘qualify as both’ an application view and a location
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`view.” Id.
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`The ’658 Patent states, “Application Views–The Application Views
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`utilizes the Application’s ability to associate Digital Tags to Digital Files
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`and display them in customized views such as Uploads, Collections,
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`Slideshow, Location, Timeline, Family Tree, People Profile, and Recipes.”
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`Ex. 1001, 9:18–22. Thus, we understand “application view” to mean a
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`customized display of digital tags or files and we adopt this definition of
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`“application view.” Id.
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`Turning to Patent Owner’s contention that the claim language requires
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`the application view of be separate and distinct relative to other claimed
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`views, we do not agree with Patent Owner’s sweeping statement. Rather,
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`each claim must be considered to determine if the structure of the claim
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`requires a view that is separate and distinct from the application view or if
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`the claim further defines the application view.
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`2.
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`Responsive to a Click or Tap . . . Displaying
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`Patent Owner contends that “the plain and ordinary meaning of the
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`phrase ‘responsive to a click or tap of . . . displaying’ requires a cause-effect
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`relationship between (i) a click or tap of a certain selectable element and (ii)
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`displaying a certain view or content.” PO Resp. 19 (citing Ex. 2023 ¶¶ 126,
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`130, 147–149, 156, 164). Specifically, for claims 3–5, 7, and 9–15,7 which
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`
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`7 Patent Owner does not refer to claim 1, from which these claims depend,
`which is the first claim to use this claim terminology. We focus our
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`recite this limitation, Patent Owner contends that “[t]he specification
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`confirms that the phrase ‘responsive to . . . displaying’ requires [direct]
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`causation.” Id. at 20; see also id. at 22–24. Patent Owner further contends
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`that “the specification does not disclose any examples of additional clicks or
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`taps or intervening views between the relevant click or tap and the display of
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`the relevant view or content.” Id. at 24–25 (citing Ex. 2023 ¶¶ 127, 135,
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`152, 159, 168; Am. Calcar, 651 F.3d 1318, 1340 (Fed. Cir. 2011)).
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`In addition, Patent Owner contends that “[t]he plain meaning of
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`‘responsive to’ is also confirmed by extrinsic evidence. Patent Owner
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`asserts that the definition of ‘responsive’ is ‘saying or doing something as a
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`reaction to something or someone’ or ‘constituting a response or made in
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`response to something.’” PO Resp. 25 (citing Ex. 2025; Ex. 2026; Ex. 2023
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`¶¶ 128, 135, 152, 156, 165). Patent Owner further contends that “[w]hen
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`deposed, Dr. Greenspun acknowledged that for the ‘people view,’ a
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`‘computer programmer’ would understand the words of these claim
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`limitations to mean ‘a user does something like a click or tap, and then the
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`software causes the people view to be displayed.’” Id. (citing Ex. 2024,
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`81:7–20, 92:3–13, 205:9–207:13).
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`Petitioner replies, “as Dr. Greenspun explained during deposition, a
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`POSITA8 would have recognized that the term ‘responsive to’ merely
`
`requires that the second event happen ‘subsequent to’ the first event based
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`on a combination of user interaction and software implementation.” Pet.
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`Reply 4 (citing Ex. 2022, 42:21–44:22; Ex. 2024, 108:20–109:12; Ex. 1047
`
`
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`discussion on claim 1, as the interpretation of this claim terminology must be
`the same for claims 1, 3–5, 7, and 9–15.
`8 Person of ordinary skill in the art.
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`¶ 7). Petitioner asserts that “in the ’658 patent, the people view that is
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`ultimately shown to the user entails not only the initial pressing of ‘People’
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`(1401) . . . but further the additional selection of a desired display order via a
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`drop-down list (1402).” Id. (citing Ex. 1001, Fig. 32, 22:59–67; Ex. 1047
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`¶ 7)). Thus, according to Petitioner, “even the ’658 patent itself
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`contemplates having intermediate user actions between the first event (i.e.,
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`‘cause’) and the second event (i.e., ‘effect’).” Id. at 4 (citing Ex. 1047 ¶ 7).
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`Petitioner asserts further that “[w]hen asked during deposition about
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`the possibility of having this intermediate drop-down selection, Patent
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`Owner’s expert Dr. Reinman acknowledged that it would be ‘possible’” to
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`have an intermediate user action and that “additional intervening actions by
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`the user, such as scrolling, that must be done by the user to actually view the
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`desired content would not run afoul of the ‘responsive to’ requirement.” Pet.
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`Reply 5 (citing Ex. 1045,26:23–27:17; 30:19–32:3; 52:3–23; 55:6–56:1; Ex.
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`1046, 78:3–79:3; Ex. 1047 ¶ 8).
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`Patent Owner responds by arguing that during his deposition (Ex.
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`2033) “Dr. Greenspun admitted, ‘responsive to’ does not mean ‘subsequent
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`to’” in his response to the question “[d]oes the phrase ‘responsive to’ then
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`require a cause/effect relationship between the first event and the second
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`event?” PO Sur-reply 1–2 (citing Ex. 2033, 17:11–25; Ex. 2024, 81:7–20,
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`92:3–13, 205:9–207). Patent Owner then states that “[t]he parties’ dispute is
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`whether ‘responsive to’ requires a direct cause-effect relationship between
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`two events, as Patent Owner proposes, or if it also encompasses an indirect
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`cause-effect relationship that allows an infinite number of intervening
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`events, as Petitioner proposes.” Id. at 3.
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`During the oral hearing, we questioned the parties about the meaning
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`of “responsive to.” Tr. 24–29, 51. In particular, we asked how to reconcile
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`Patent Owner’s definition of “responsive to” with claim 1’s requirement that
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`all of the scaled replicas of each of the digital photographs and videos in the
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`first set of digital photographs and videos be displayed “responsive to a click
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`or tap” and that all of the scaled replicas of each of the digital photographs
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`and videos in the second set of digital photographs and videos be displayed
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`“responsive to a click or tap” in instances when the first and second sets
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`include more than 150 photographs and videos. Id.
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`In response to our questions, Patent Owner’s representative, Ms.
`
`Hayes, contended that
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`both experts testified that when the claims refer to the views, the
`claim views, it’s not necessarily what you actually see on the
`screen. Instead, the view refers to what is delivered by the
`application to the user interface device. And so, when you read
`the claims with that context, yes, there will be possibly situations
`where there are more photos than can be displayed on the actual
`screen of the device.
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`Tr. 27:3–8. However, as pointed out by Judge Trock, the claim at issue
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`(claim 1) requires displaying all of the scaled replicas of the photographs
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`