`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-00221
`Patent 10,423,658
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .................................................................................................. 1
`II. CLAIM CONSTRUCTION .................................................................................. 1
`A. Claim 1: “application view” .......................................................................... 2
`B. Claims 3-5, 7, 9, 10, and 12-15: “responsive to a click or tap ... displaying”
`
` ....................................................................................................................... 3
`C. Claim 5: “...displaying: … a name associated with the first person … and
`… a name associated with the second person ........................................................ 8
`D. Claim 13: “...displaying: … a first album name … and … a second album
`name ..................................................................................................................... 11
`III. GROUND 1 RENDERS OBVIOUS THE CHALLENGED CLAIMS ............ 11
`A. The Okamura-Belitz combination renders obvious “displaying the map
`including displaying … a [first/second] location selectable thumbnail image at a
`[first/second] location on the interactive map” .................................................... 11
`1. Petitioner’s first combination renders this feature obvious ..................... 12
`2. Petitioner’s second combination renders this feature obvious ................. 17
`3. Petitioner’s third combination renders this feature obvious .................... 19
`B. Okamura discloses “displaying an application view” ................................. 20
`C. Dependent claims are rendered obvious ..................................................... 22
`1. Claims 3 and 4 .......................................................................................... 22
`2. Claim 5 ..................................................................................................... 24
`3. Claims 7 and 10 ........................................................................................ 26
`4. Claims 9 and 12 ........................................................................................ 27
`5. Claim 13 ................................................................................................... 27
`6. Claims 14 and 15 ...................................................................................... 28
`IV. CONCLUSION .................................................................................................. 29 
`
`
`i
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`
`
`UPDATED EXHIBIT LIST
`
`
`SAMSUNG-1001 U.S. Patent No. 10,423,658 to Christopher J. Desmond, et al.
`(“the ’658 patent”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the ’658 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Philip Greenspun
`
`SAMSUNG-1004 Curriculum Vitae of Dr. Philip Greenspun
`
`SAMSUNG-1005 U.S. Patent App. Pub. No. 2011/0122153 A1 (“Okamura”)
`
`SAMSUNG-1006 U.S. Patent App. Pub. No. 2010/0058212 A1 (“Belitz”)
`
`SAMSUNG-1007 U.S. Patent App. Pub. No. 2006/0206264 A1 (“Rasmussen”)
`
`SAMSUNG 1008-SAMSUNG 1019 RESERVED
`
`SAMSUNG-1020 Tim Grey, Adobe Photoshop Lightroom Workflow: The Digital
`Photographer's Guide (2007)
`
`
`SAMSUNG-1021 U.S. Patent App. Pub. No. 2011/0074811 A1 (“Hanson”)
`
`SAMSUNG-1022 Stephen Shankland, “What’s the best Web site for geotagged
`photos?,” CNET (Mar. 18, 2009), available at
`https://www.cnet.com/tech/computing/whats-the-best-web-site-
`for-geotagged-photos/
`
`
`SAMSUNG-1023 Panoramio, “Embedding a Panoramio map into your web page”
`(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328215828/http://www.pano
`ramio.com:80/help/embedding
`
`
`SAMSUNG-1024 Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt
`Publishing (2007)
`
`
`
`ii
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`
`SAMSUNG-1025 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)
`
`
`SAMSUNG-1026 U.S. Patent App. Pub. No. 2009/0113350 A1 (“Hibino”)
`
`SAMSUNG-1027 U.S. Patent App. Pub. No. 2006/0165380 A1 (“Tanaka”)
`
`SAMSUNG-1028 Complaint for Infringement, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411 (W.D. Tex.)
`
`
`SAMSUNG-1029 Plaintiff MemoryWeb, LLC’s First Supplemental Initial
`Infringement Contentions, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411-ADA (W.D. Tex. Nov. 24, 2021)
`
`
`SAMSUNG-1030 Agreed Scheduling Order, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411-ADA (W.D. Tex. Nov. 23, 2021)
`
`
`SAMSUNG-1031 U.S. Patent No. 6,215,523 (“Anderson”)
`
`SAMSUNG-1032 U.S. Patent App. Pub. No. 2008/0133526 (“Haitani”)
`
`SAMSUNG-1033 U.S. Patent App. Pub. No. 2008/0306921 (“Rothmuller”)
`
`SAMSUNG-1034 U.S. Patent App. Pub. No. 2013/0198602 (“Kokemohr”)
`
`SAMSUNG-1035 U.S. Patent App. Pub. No. 2013/0326338 (“Secord”)
`
`SAMSUNG-1036 U.S. Patent App. Pub. No. 2007/0016575 (“Hurst-Hiller”)
`
`SAMSUNG-1037 Stipulation Letter
`
`SAMSUNG-1038 U.S. Patent App. Pub. No. 2008/0276279 (“Gossweiler”)
`
`SAMSUNG-1039 U.S. Patent App. Pub. No. 2008/0263103 (“McGregor”)
`
`
`iii
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`SAMSUNG-1040 U.S. Patent App. Pub. No. 2006/0080342 (“Takaki”)
`
`SAMSUNG-1041 U.S. Patent App. Pub. No. 2009/0210793 (“Yee”)
`
`SAMSUNG-1042 Woody Leonhard, Windows Vista All-in-One Desk Reference
`for Dummies (2007)
`
`
`SAMSUNG-1043 Andy Rathbone, Windows Visa for Dummies (2007)
`
`SAMSUNG-1044 Email from Board Authorizing Petitioner’s Reply
`
`SAMSUNG-1045 Transcript of the deposition of Dr. Glenn Reinman dated
`November 16, 2022
`
`
`SAMSUNG-1046 Transcript of the deposition of Dr. Glenn Reinman dated
`January 24, 2023
`
`
`SAMSUNG-1047 Second Declaration of Dr. Philip Greenspun
`
`SAMSUNG-1048 Adam C. Engst, Visual Quickstart Guide iPhoto ’09 (2009)
`(“Engst”)
`
`
`SAMSUNG-1049 U.S. Patent App. Pub. No. 2009/0196510 (“Gokturk”)
`
`SAMSUNG-1050 IPR2022-00222, Paper 12, Institution Decision
`
`
`
`
`
`
`iv
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`I. INTRODUCTION
`The POR arguments fail when longstanding legal principles are properly
`
`applied to the factual record developed in this proceeding. Specifically, the POR
`
`arguments are inconsistent with, mischaracterize, and, at times, ignore the
`
`teachings of the cited art, the arguments presented in the Petition, and the evidence
`
`of record and, thus, should be rejected by the Board. In particular, MemoryWeb’s
`
`overly narrow and unsupported constructions for the terms “an application view,”
`
`“responsive to a click or tap … displaying,” “the displaying the people view
`
`including displaying: … a name associated with the first person … and … a name
`
`associated with the second person,” and “the displaying the album view including
`
`displaying: … a first album name … and … a second album name” are
`
`inconsistent with the specification of the ’658 patent and the understanding of a
`
`POSITA. Furthermore, Patent Owner ignores and/or mischaracterizes the
`
`teachings of Okamura and Belitz in an effort to support their flawed rationale
`
`against the combination.
`
`II. CLAIM CONSTRUCTION
`In the Institution Decision, the Board agreed with Petitioner in noting that
`
`“no claim terms require express construction...” for purposes of institution.
`
`Institution Decision, 11.
`
`1
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`Although Patent Owner alleged that it likewise “agrees that the claims
`
`should be afforded their plain and ordinary meaning,” it focuses much of its POR
`
`arguments on improperly narrow constructions that are contradicted by the
`
`testimony of both experts as well as the ’658 patent itself. POR, 13.
`
`A. Claim 1: “application view”
`With respect to claim element [1a], Patent Owner contends that the phrase
`
`“an application view” is “distinct from the other claimed views.” POR, 13. For
`
`support, Patent Owner refers to FIG. 35 for the claimed “application view” and
`
`contends that the “application view” is different from the “map view” in FIG. 41,
`
`the “location view” in FIG. 34, the “people view” in FIG. 32, the “person view” in
`
`FIG. 32, and the “album view” in FIG. 33. POR, 15-17.
`
`However, as the ’658 patent makes clear, FIG. 35 is merely one of various
`
`“application views” that are provided as examples in the ’658 patent, including
`
`those shown in FIGS. 32-34 and 36. SAMSUNG-1001, 9:18-22; SAMSUNG-
`
`1046, 40:8-21; SAMSUNG-1047, [4]. Indeed, the ’658 patent explicitly refers to
`
`its people and location views as the “People Application View” and the “Location
`
`Application View.” SAMSUNG-1001, FIG. 32, FIG. 34, 3:58-4:4. There is
`
`nothing in the ’658 patent that distinguishes the “Uploads Application View” in
`
`FIG. 35 from the other application views in the ’658 patent, other than its focus on
`
`“Uploads” as compared to “People” or “Location.” SAMSUNG-1047, [4]. In fact,
`
`2
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`the ’658 patent repeatedly describes the existence of multiple application views
`
`and refers to all of the views in FIGS. 32-36 as application views. SAMSUNG-
`
`1001, 12:38-39 (“various Application Views”), 18:35-38 (“all Application
`
`Views”), 21:50-54 (“any of the Application Views”), 22:55-59 (“every Application
`
`View”), 28:5-8 (“When a user selects the ‘Advanced Filters’ from almost any
`
`Application View (0801) (the button can be seen in FIGS. 32, 33, 34, 35, and
`
`36)”).
`
`Moreover, Dr. Reinman acknowledged during deposition that the
`
`specification of the ’658 patent provides “examples of different application views”
`
`and that “a view like a location view is also an application view in the spec of the
`
`patent.” SAMSUNG-1046, 17:12-18; see also id., 42:9-43:15. In other words,
`
`according to the specification of the ’658 patent and per Dr. Reinman’s own
`
`testimony, a particular view can “qualify as both” an application view and a
`
`location view. Id. Similarly, according to Dr. Greenspun, there is no requirement
`
`in the ’658 patent that “an application view must be completely distinct from the
`
`other views.” SAMSUNG-1047, [5].
`
`B. Claims 3-5, 7, 9, 10, and 12-15: “responsive to a click or tap ...
`displaying”
`
`
`With respect to claims 3-5, 7, 9, 10, and 12-15, Patent Owner contends that
`
`the phrase “responsive to a click or tap … displaying” requires “a cause-effect
`
`3
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`relationship between (i) a click or tap of a certain selectable element and (ii)
`
`displaying a certain view or content.” POR, 17-19. Specifically, Patent Owner
`
`contends that there is a “direct cause-effect relationship” such that “additional
`
`clicks or taps or interviewing views” are not allowed. Id., 23-24.
`
`However, as Dr. Greenspun explained during deposition, a POSITA would
`
`have recognized that the term “responsive to” merely requires that the second
`
`event happen “subsequent to” the first event based on a combination of user
`
`interaction and software implementation. EX-2022, 42:21-44:22; EX-2024,
`
`108:20-109:12 (“But if what happens is in response to a click or tap, a web page
`
`appears . . . then we have to assume that the ordinary behavior of web pages, which
`
`include mouseovers as of the critical date for this patent, are possibilities.”);
`
`SAMSUNG-1047, [7].
`
`Indeed, in the ’658 patent, the people view that is ultimately shown to the
`
`user entails not only the initial pressing of “People” (1401) (shown in red below),
`
`but further the additional selection of a desired display order via a drop-down list
`
`(1402) (shown in purple below). See SAMSUNG-1001, FIG. 32, 22:59-67;
`
`SAMSUNG-1047, [7]. In other words, contrary to Patent Owner’s assertions, even
`
`the ’658 patent itself contemplates having intermediate user actions between the
`
`first event (i.e., “cause”) and the second event (i.e., “effect”). SAMSUNG-1047,
`
`[7].
`
`4
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`
`
`SAMSUNG-1001, FIG. 32 (annotated)
`
`When asked during deposition about the possibility of having this
`
`intermediate drop-down selection, Patent Owner’s expert Dr. Reinman
`
`acknowledged that it would be “possible.” SAMSUNG-1045, 30:19-32:3; 26:23-
`
`27:17; 52:3-23; 55:6-56:1.1 More specifically, Dr. Reinman acknowledged that
`
`additional intervening actions by the user, such as scrolling, that must be done by
`
`the user to actually view the desired content would not run afoul of the “responsive
`
`to” requirement. SAMSUNG-1046, 78:3-79:3; SAMSUNG-1047, [8].
`
`
`
` SAMSUNG-1045 contains Dr. Reinman’s testimony in IPR2022-00222
`
`
`
` 1
`
`(involving the same parties) concerning the related ’228 patent, Okamura, and
`
`Belitz.
`
`5
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`This is consistent with examples in the ’658 patent that include interface
`
`controls that require additional, intermediate user actions to reveal information that
`
`is described as being part of a displayed view. FIG. 32 depicts an example of a
`
`“people view” that contemplates multiple pages within the view and includes an
`
`“Items Per Page” button that controls how many of the available photos are shown
`
`to a user on each page. SAMSUNG-1001, 22:43-52, FIG. 32. FIG. 6 depicts
`
`another example of a “people view” showing arrows that display additional
`
`thumbnails of people included in the people view. SAMSUNG-1001, 6:20-26,
`
`FIG. 6. FIG. 13 depicts another example of a “people view” that includes a scroll
`
`bar and shows +,- controls that display/hide names of people included in the people
`
`view. SAMSUNG-1001, 6:54-61, FIG. 13. As Dr. Greenspun explains, a POSITA
`
`would have found it obvious that the interface in FIG. 13 is initially displayed with
`
`all of the names of specific people hidden under the last name controls and only
`
`revealed when the user takes the additional step of clicking on a +,- control
`
`associated with the last name of interest. SAMSUNG-1047, [9]. Accordingly, in
`
`these examples of “people views,” intermediate user actions are needed to cause
`
`display of information that is described as being part of the displayed view. Id.
`
`Other types of views in the ’658 patent contemplate similar additional,
`
`intermediate user actions to cause display of information described as being part of
`
`displayed views. For example, FIG. 3 displays “a gallery view of an event or
`
`6
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`album” and FIG. 4 displays “an individual event or album view” responsive to
`
`selection of a thumbnail of an event or album displayed in FIG. 3. SAMSUNG-
`
`1001, 2:66-3:2, 6:4-13. In this example, FIG. 4 includes arrows that cause display
`
`of additional thumbnails of images that are organized in the selected event or
`
`album, but that are not displayed when the selected event or album view is initially
`
`presented. SAMSUNG-1001, FIG. 4. These additional thumbnail images are part
`
`of the displayed event or album view and only displayed when the user takes the
`
`additional, intermediate action of selecting one of the arrow controls to reveal
`
`them. SAMSUNG-1047, [10].
`
`And this operation is consistent with the claim language in claims 14 and 15.
`
`Claim 14 recites, “responsive to a click or tap of the first album selectable
`
`thumbnail image, displaying a first album view, the displaying the first album view
`
`including displaying (i) the first album name associated with the first album and
`
`(ii) a scaled replica of each of the digital photographs and videos in the third set
`
`of digital photographs and videos.”2 As Dr. Greenspun explains, the ability of a
`
`single screen to display each of the digital photographs and videos in the third set
`
`of digital photographs and videos, necessarily depends on the number of digital
`
`photographs and videos in the third set. SAMSUNG-1047, [11]. As shown in
`
`7
`
`
`
` Claim 15 recites similar features.
`
`
`
` 2
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`FIG. 4 of the ’658 patent, when the number of photographs and videos is relatively
`
`large (e.g., above a threshold number), the displayed album view includes controls
`
`that enable the user to reveal “each” of the digital photographs and videos, but only
`
`after the user takes the additional, intermediate action of selecting one of the
`
`control arrows, potentially many times. Id. For these reasons, the ’658 patent
`
`embraces the need for additional, intermediate user actions to display information
`
`that is described as being part of a displayed view. Id. Thus, Patent Owner’s
`
`construction is overly narrow and would exclude examples described in the ’658
`
`patent.
`
`C. Claim 5: “...displaying: … a name associated with the first person
`… and … a name associated with the second person
`
`
`Patent Owner contends that “displaying the people view including: ... a
`
`name associated with the first person ... [and] ... a name associated with the second
`
`person” requires displaying both names “at the same time.” POR, 26.
`
`The only specification support cited by Patent Owner for this overly narrow
`
`interpretation appears to be the ’658 patent’s FIG. 32 and its accompanying
`
`description. See POR, 28. Although the example provided in FIG. 32 seems to
`
`show both a first name and a second name at the same time, nothing in the ’658
`
`patent requires both names to be visible together to the user at all times.
`
`SAMSUNG-1047, [12]. In fact, when asked during deposition whether FIG. 32
`
`8
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`would still correspond to the display of both names if one of the names happened
`
`to be momentarily hidden from view, which could happen for various reasons
`
`under real-life conditions, Dr. Reinman could not give an answer and instead
`
`deflected by saying that it is “not something [he] formed an opinion on[.]”
`
`SAMSUNG-1045, 57:24-58:14; SAMSUNG-1047, [12].
`
`When asked during deposition why he thought the claim limitation required
`
`simultaneous display of both names, Dr. Reinman repeatedly stated that “it is
`
`implied.” SAMSUNG-1045, 65:12-19; see also id., 66:2-67:2. But he could not
`
`point to a single instance in the specification or the figures of the ’658 patent to
`
`support this alleged implication. As Dr. Greenspun clarifies, claim 5 does not
`
`require simultaneous display. SAMSUNG-2024, 112:4-6; SAMSUNG-1047, [12].
`
`But the claim language at issue merely recites displaying a “view” (e.g.,
`
`“people view,” “album view,” etc.) responsive to a click or tap. The claim
`
`language does not state that everything associated with the view is displayed
`
`responsive to the click or tap – it states that the view is displayed responsive to the
`
`click or tap and that the view includes various pieces of information. To
`
`illustrate, FIG. 32 of the ’658 patent depicts an example of a “people view” where
`
`certain photos are shown. However, the interface includes an “Items Per Page”
`
`button that controls how many of the available photos are shown at one time to a
`
`user. SAMSUNG-1047, [13].
`
`9
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`
`
`SAMSUNG-1001, FIG. 32 (annotated)
`
`In other words, although there may be other photos that are part of the
`
`“people view” of FIG. 32, such photos are not displayed simultaneously with all
`
`other photos and are not visible until the user clicks on additional buttons.
`
`SAMSUNG-1001, FIG. 32, 22:44-48 (“The first People Application View (1400)
`
`is used to display all the people that were created within the user’s Application.”).
`
`In fact, the ’658 patent describes several different mechanisms for limiting the
`
`display of a view to only a portion of the information described as being included
`
`in the view. See SAMSUNG-1001, 6:20-26, FIG. 6 (showing arrows that display
`
`additional thumbnails of people included in the people view); 6:54-61, FIG. 13
`
`(showing +,- controls that display/hide names of people included in the people
`
`view; also showing a scroll bar at the side to control the portion of the view that is
`
`displayed). Yet, Patent Owner seems to be arguing that everything associated
`
`with the people view must be shown at all times without additional user
`
`10
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`interaction beyond the initial input. Such a narrow view is improper, as it is
`
`inconsistent with both the claim language and the specification. See SAMSUNG-
`
`1047, [14]; Renishaw P.L.C. v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1250
`
`(Fed. Cir. 1998).
`
`D. Claim 13: “...displaying: … a first album name … and … a second
`album name
`
`With respect to claim 13, Patent Owner contends, similar to the people view
`
`discussion above, that “displaying the album view” requires displaying both a first
`
`album name and a second album name “at the same time.” POR, 29. For similar
`
`reasons as articulated above with respect to claim 5, claim 13 does not require
`
`simultaneous display of the first and second album names. SAMSUNG-1047,
`
`[15].
`
`For these reasons, Patent Owner’s constructions are inconsistent with how a
`
`POSITA would have read the ’658 patent, and should be rejected.
`
`III. GROUND 1 RENDERS OBVIOUS THE CHALLENGED CLAIMS
`As shown in the Petition, claims 1-15 are obvious over Okamura and Belitz.
`
`SAMSUNG-1047, [16].
`
`A. The Okamura-Belitz combination renders obvious “displaying the
`map including displaying … a [first/second] location selectable
`thumbnail image at a [first/second] location on the interactive
`map”
`
`11
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`As laid out in the Petition and the original declaration of Dr. Greenspun, a
`
`POSITA would have been motivated to modify Okamura in view of Belitz to
`
`provide location selectable thumbnail images at corresponding locations on the
`
`interactive map in the manner claimed. Petition, 17-30; SAMSUNG-1003, [77]-
`
`[98].
`
`In the POR, Patent Owner erroneously points to various alleged failings of
`
`the combination. As further clarified below, Patent Owner’s arguments lack merit.
`
`1. Petitioner’s first combination renders this feature obvious
`Regarding the proposed “first combination,” Patent Owner contends that a
`
`POSITA would not have been motivated to modify Okamura with Belitz because
`
`“none of Belitz’s thumbnails ... convey geographical information ....” POR, 36.
`
`Even if that were the case, a notion with which Petitioner strongly disagrees for
`
`reasons further discussed below, a POSITA would still have been motivated to
`
`combine Okamura and Belitz to obtain “additional benefits.” SAMSUNG-1003,
`
`[84]-[98]; Petition, 22-30. For instance, in furtherance of Okamura’s stated
`
`objective of better managing digital content, the proposed combination “enhances a
`
`user experience of ‘discern[ing] between the various objects’ by providing ‘a good
`
`view of what location is associated with what.’” SAMSUNG-1003, [87] (citing
`
`SAMSUING-1005, [0091], SAMSUNG-1006, [0002]).
`
`12
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`Even if the benefits3 obtained by incorporating Belitz’s thumbnails into
`
`Okamura were to come at the expense of some other benefit offered by Okamura, a
`
`POSITA pursuing the combination would have nevertheless been capable of
`
`weighing potential benefits associated with each, for instance recognizing that the
`
`benefits of viewing location-specific thumbnail images may be achieved in one
`
`instance and those of viewing location-specific cluster maps may be achieved in
`
`another. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed.
`
`Cir. 2000); SAMSUNG-1047, [17]-[18].
`
`Moreover, contrary to Patent Owner’s assertions, Belitz’s thumbnails and
`
`Okamura’s cluster maps are functionally equivalent in the sense that both convey
`
`geographical information. SAMSUNG-1047, [19]; POR, 49-51. In fact, Dr.
`
`Reinman does not disagree. For instance, Dr. Reinman testified that “[Belitz]
`
`shows the association of at least some pictures with the geographic location on the
`
`map depending on how many thumbnails it’s currently presenting....”
`
`SAMSUNG-1045, 107:10-22. He further acknowledged that replacing cluster
`
`maps with thumbnails would not result in the loss of “all geographic context.” Id.,
`
`114:8-15.
`
`
`
` Such as “to provide added functionality that allows a user to preview pictures
`
`
`
` 3
`
`associated with a given location as taught by Belitz.” SAMSUNG-1003, [88]-[89].
`
`13
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`Patent Owner further argues that the proposed combination of Okamura and
`
`Belitz “carries the same disadvantages as the ‘related art’ references (Fujiwara and
`
`Takakura)” mentioned in Okamura. POR, 38-44. However, in both Fujiwara (EX-
`
`2002) and Takakura (EX-2019), it can be difficult to grasp the geographical
`
`correspondence between digital files because their thumbnails are not placed
`
`directly on the map. SAMSUNG-1047, [20] (citing EX-2002, FIG. 12; EX-2019,
`
`FIG. 1). In contrast, it is not difficult to grasp the geographical correspondence
`
`between digital files in Belitz because, for example, a user looking at Belitz’s FIG.
`
`4b can easily understand which location the thumbnail 410b is associated with and
`
`which location the thumbnail 410c is associated with, by virtue of the location of
`
`the thumbnails on the map. SAMSUNG-1047, [20] (citing SAMSUNG-1006,
`
`FIGS. 4a-4b). Thus, the alleged problems with Fujiwara and Takakura that “may
`
`make it difficult to grasp the geographical correspondence” of their images are not
`
`manifested in the same manner in Belitz. SAMSUNG-1047, [20]-[21]; POR, 39.
`
`Patent Owner also argues that the Okamura-Belitz combination somehow
`
`conflicts with Belitz’s stated objectives of reducing clutter because the proposed
`
`combination “would clutter the view and be confusing to a user,” while referring to
`
`a cropped reproduction of an illustration originally provided by Dr. Greenspun.
`
`POR, 44-45.
`
`14
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`
`
`POR, 42
`
`
`
`However, a portion of Dr. Greenspun’s illustration that was not shown by
`
`Patent Owner clearly shows that the combination can be achieved without any
`
`overlap:
`
`
`
`SAMSUNG-1003, [88] (partial); SAMSUNG-1047, [23].
`
`Patent Owner further attempts to undermine the Okamura-Belitz
`
`combination by pointing to various other alleged defects in the motivation to
`
`combine. See POR, 45-53. None have merit.
`
`15
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`For instance, Patent Owner contends that “Belitz’s thumbnails reduce the
`
`ability to provide a view of ‘what location is associated with what’” while ignoring
`
`the careful explanation previously provided by Dr. Greenspun. POR, 45-48.
`
`Indeed, Dr. Greenspun explained in his first declaration that incorporating the
`
`thumbnails of Belitz into Okamura would have resulted in the “added functionality
`
`that allows a user to preview pictures associated with a given location” and do so
`
`in a manner that allows the user to more “clearly see the associations.”
`
`SAMSUNG-1003, [88]-[89]. Thus, instead of having to click on individual
`
`clusters as in Okamura to ascertain which pictures are associated with which
`
`locations, Belitz provides a way for Okamura to provide such information all at
`
`once for multiple locations on the map. SAMSUNG-1047, [22]-[24].
`
`Relatedly, Patent Owner further contends that “Okamura already allows a
`
`user to ‘preview pictures.’” POR, 48. But as noted above, the incorporation of
`
`Belitz’s thumbnails allows the user to quickly associate multiple preview pictures
`
`with multiple locations on the map without having to individually navigate through
`
`each of the clusters. SAMSUNG-1047, [25]. Thus, the combination of Okamura
`
`and Belitz helps improve user experience and overall content awareness by
`
`providing the user with a preview of the digital files associated with multiple
`
`corresponding locations. Id. In short, instead of changing the “hallmark aspects of
`
`either of these references” as Patent Owner contends, the proposed combination of
`
`16
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`Okamura and Belitz provides a known and predictable alternative to displaying and
`
`managing digital content in a manner that can help improve user experience.
`
`SAMSUNG-1003, [89]; SAMSUNG-1047, [25].
`
`Lastly with regard to the “first combination,” Patent Owner’s assertion that
`
`Petitioner has “failed to demonstrate that the first combination (based on
`
`Okamura’s second embodiment) would have been used with Okamura’s FACE
`
`index screen 410” similarly falls flat. POR, 52. Dr. Greenspun previously
`
`explained in great detail how, inter alia, “the use of Okamura’s map view from
`
`FIG. 41 in conjunction with Okamura’s face view from FIG. 21 … is appropriate
`
`and obvious.” SAMSUNG-1003, [96]-[98]. To the extent Okamura does not
`
`explicitly disclose this transition, a POSITA would have certainly found it obvious.
`
`SAMSUNG-1047, [26].
`
`2. Petitioner’s second combination renders this feature obvious
`Regarding Petitioner’s first alternative combination (“second combination”),
`
`Patent Owner contends that incorporating Belitz into Okamura in the proposed
`
`manner would not be desirable to a POSITA because “much of the information
`
`shown in FIG. 41 of Okamura would be lost if it were displayed according to
`
`Belitz.” POR, 56. Patent Owner further provides the following modified drawing
`
`of Okamura to illustrate the alleged loss of geographical information:
`
`17
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`
`POR, 57
`
`
`
`
`
`However, as is readily apparent from Patent Owner’s illustration above,
`
`Patent Owner appears to have added a conspicuously large and opaque border
`
`around Belitz’s thumbnail images in an attempt to exaggerate the alleged loss of
`
`geographical information. SAMSUNG-1047, [27]-[28]. Yet no such borders are
`
`present in Belitz, as seen below. Id.
`
`
`
`SAMSUNG-1006, FIGS. 4a-4b.
`
`18
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Docket No: 39843-0116IP1
`And even if such a border were to be originally present, both Dr. Reinman
`
`and Dr. Greenspun agree that reducing clutter through simple design changes,
`
`which would include minimizing any obtrusive borders, would have been well-
`
`known to a POSITA. SAMSUNG-1045, 99:3-100:18; SAMSUNG-1047, [29].
`
`
`
`Moreover, as previously explained by Dr. Greenspun, the second
`
`combination can improve user experience and content awareness by providing the
`
`user with a preview of the digital files associated with the corresponding location.
`
`See SAMSUNG-1003, [91]. Furthermore, a POSITA would have nevertheless
`
`been able to weigh potential benefits associated with both cluster maps and
`
`thumbnails to help achieve the desired user experience and convenience for the
`
`particular dataset, zoom level, etc. SAMSUNG-1047, [30].
`
`3. Petitioner’s third combination renders this feature obvious
`Regarding Petitioner’s second alternative combination (“third
`
`combination”), Patent Owner contends that a POSITA would not have eliminated
`
`cluster maps and that additional problems may occur at different zoom levels.
`
`POR, 58-60. However, a POSITA is not an automaton and is fully capable of
`
`employing inferences and creative steps when seeking to improve a primary
`
`reference, based on the teachings of a secondary reference. See KSR Int'l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 421 (2007)). Further, the proposed combination is not
`
`a physical extraction of components from Belitz that are grafted onto Okamura. In
`
`19
`
`

`

`Proceeding No. IPR2022-00221
`Attorney Dock