Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: August 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00221
`Patent 10,423,658 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: August 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00221
`Patent 10,423,658 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`
`INTRODUCTION
`I.
`Petitioner, Samsung Electronics Co., Ltd., filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–15 of U.S. Patent No.
`10,423,658 B2 (Ex. 1001, “the ’658 patent”). Patent Owner, MemoryWeb,
`LLC, filed a Preliminary Response (Paper 6, “Prelim. Resp.”). With our
`authorization, Petitioner filed a Preliminary Reply to Patent Owner’s
`Preliminary Response (Paper 8, “Prelim. Reply”) and Patent Owner filed a
`Preliminary Sur-reply (Paper 9, “Prelim. Sur-reply”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition and any response thereto
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Considering
`the Petition, the arguments presented in the Preliminary Response, as well as
`all supporting evidence, we determine that Petitioner shows a reasonable
`likelihood that at least one of the challenged claims is unpatentable.
`Accordingly, we institute inter partes review.
`Real Parties in Interest
`A.
`Petitioner states that “Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. are the real parties in interest.” Pet. 108. Patent
`Owner states that it, MemoryWeb, LLC, is the real party in interest. Paper
`3, 2.
`
`Related Matters
`B.
`The parties state that the ’658 patent is the subject of the following
`civil actions: MemoryWeb, LLC v. Samsung Electronics Co., Ltd. et al.,
`6:21-cv-00411 (W.D. Tex.), Pending; MemoryWeb, LLC v. Apple, Inc., No.
`6-21-cv-00531 (W.D. Tex.), Pending; and MyHeritage (USA), Inc. et al. v.
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`Patent 10,423,658 B2
`MemoryWeb, LLC, No. 1-21-cv-02666 (N.D. Il.), Dismissed. Pet. 109;
`Paper 3, 2.
`Petitioner states that “[t]he ’658 patent is also the subject of an IPR
`proceeding filed by Apple Inc. (IPR2022-00033)” but that “Samsung is not a
`real party-in-interest to this IPR proceeding.” Pet. 109.
`Patent Owner states that “[t]he ’658 patent is related to the following
`U.S. Patents: 9,098,531 (“the ’531 patent”); 9,552,376 (“the ’376 patent”);
`10,621,228 (“the ’228 patent”); 11,017,020 (“the ’020 patent”); 11,163,823
`(“the ’823 patent”), and 11,170,042 (“the ‘042 patent”).” Paper 3, 2. Patent
`Owner additionally identifies the following IPR proceedings as related
`matters: Samsung Electronics Co., LTD. v. MemoryWeb LLC, IPR2022-
`00221 (’658 patent); Apple Inc. v. MemoryWeb, LLC, IPR2022-00111 (’020
`patent); Apple Inc. v. MemoryWeb, LLC, PGR2022-00006 (’020 patent);
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00033 (’658 patent); Apple Inc. v.
`MemoryWeb, LLC, IPR2022-00032 (’376 patent); Apple Inc. v.
`MemoryWeb, LLC, IPR2022-00031 (’658 patent); Unified Patents, LLC v.
`MemoryWeb, LLC, IPR2021-01413, (’658 patent); and U.S. Patent
`Application No. 17/459,933. Id. at 2–3.
`The ’658 patent
`C.
`The ’658 patent relates to a computer-implemented system and
`method for managing and using digital files such as digital photographs.
`Ex. 1001, 1:16–19. In particular, the ’658 patent aims to provide an
`“interactive platform” for users to gather, organize, view, navigate, search,
`share and archive Digital Files, e.g., digital photographs and videos. Id. at
`13:12–18, 13:56–59. The interactive platform may be provided via an
`“Application” having various “Application Views” for interaction with and
`organization of Digital Files. Id. at 8:59–9:7. A screenshot of an exemplary
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`type of Application View, a “Location Application View,” is shown in
`Figure 41, reproduced below. Id. at 4:3–4.
`
`
`
`As shown in the Location Application View interface of Figure 41,
`“Digital Files are displayed within an interactive map (Google map shown as
`an example).” Id. at 29:25–29. Further, “[i]n this view, individual or groups
`of Digital Files are illustrated as photo thumbnails (see indicators 0874 and
`0875) on the map and the user can select the thumbnail to see all the Digital
`Files with the same location.” Id. at 29:32–36. In the case that the user
`selects either one of the thumbnails, a “Single Location Application View”
`interface corresponding to the location is presented to the user, as shown in
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`Patent 10,423,658 B2
`the bottom portion of Figure 34, a screenshot reproduced below. Id.
`
`
`Focusing on the single location (1630) Locations Application View,
`an “individual location name is displayed at the top of the page (1632).” Id.
`at 24:22–24. The single location Locations Application View further
`displays “[t]humbnails of each Digital File within the specific collections” of
`digital files. Id. at 24:25–26; see id. at 23:56–59, Fig. 33. In the example
`shown in Figure 34, “one photo (1633) taken at Wrigley Field (1634) that is
`associated with the location called Wrigley Field” is displayed. Id. at 24:26–
`28.
`
`Turning to another Application View described by the ’658 Patent, a
`“Multiple People Application View” is shown in Figure 32, a screenshot,
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`reproduced below. Id. at 3:58.
`
`
`The Multiple People Application View “can be seen by selecting
`‘People’ (1401) from any of the Application Views within the Application.”
`Id. at 22:46–48. As shown in Figure 32, “Multiple People Application
`View” 1400 “display[s] all the people that were created within the user's
`Application.” Id. at 22:44–46. “For each person, a thumbnail of their face
`along with their name is depicted. In this figure, Jon Smith (1403) and JC
`Jon Smith (1404) along with some other people are illustrated.” Id. at
`22:52–55.
`Further, “[f]or each person,” there are “tags that are associated to
`[that] person.” Id. at 23:4–6. In “Single People Profile Application View”
`1430, associated tags are used show that there are, e.g., “four photos (1452)
`associated with that person.” Id. at 23:6–9. In another example, the person
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`“grandma” has been tagged in, and so, is associated with, 100 photos. Id. at
`24:56–59. Put another way, Digital Files have tags, e.g., in a “Tag Block of
`the Relationship Table for the Digital File,” which associate a particular
`digital file with a particular person or otherwise characterizes and documents
`the digital file. See id. at 20:1–6; 24:42–52.
`Illustrative Claims
`D.
`Petitioner challenges claims 1–15. Pet. 11. Claim 1 is the sole
`independent claim. Ex. 1001, 35:32–36:11.
`Claim 1, with Petitioner’s limitation numbering included, is
`reproduced below.
`[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:
`[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;
`[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:
`[1c] (i) a representation of an interactive map;
`[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;
`[1e] (iii) a first count value image partially overlapping the
`first location selectable thumbnail image, the first count
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`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;
`[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
`[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;
`[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
`[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
`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.
`Ex. 1001, 35:13–36:7.
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts the following grounds of unpatentability:
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`Reference(s)/Basis
`35 U.S.C. §
`Claim(s) Challenged
`Okamura,1 Belitz2
`103
`1–15
`Okamura, Belitz, Rasmussen3
`103
`3–4
`Okamura, Belitz, Gossweiler4
`103
`6–12
`Okamura, Belitz, Yee5
`103
`8–9, 11–12
`Okamura, Belitz, Gossweiler Yee
`103
`8–9, 11–12
`Pet. 11. In addition to the references listed above, Petitioner relies on the
`Declaration of Philip Greenspun, Ph.D. (Ex. 1003). Patent Owner submits a
`Declaration of Glenn Reinman, Ph.D. (Ex. 2001).
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a) in Based on
`Parallel Proceeding
`Patent Owner requests that we exercise discretion under 35 U.S.C.
`§ 314(a) to deny institution in view of parallel litigation. Prelim. Resp. 27–
`34 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”)); Prelim. Sur-reply 1–5.
`In accordance with the Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court Litigation, issued
`June 21, 2022, we will not deny institution of an IPR under Fintiv when the
`
`
`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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`petition presents compelling evidence of unpatentability.6 “Compelling,
`meritorious challenges are those in which the evidence, if unrebutted in trial,
`would plainly lead to a conclusion that one or more claims are unpatentable
`by a preponderance of the evidence.” Id. at 4.
` For the reasons discussed in Section F below, the instant Petition
`presents compelling evidence of unpatentability. Accordingly, we decline to
`exercise our discretion under § 314(a) to deny institution.
`Level of Ordinary Skill in the Art
`B.
`In determining the level of skill in the art, we consider the type of
`problems encountered in the art, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`technology, and the educational level of active workers in the field. Custom
`Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`Petitioner contends that a person of ordinary skill in the art at the time
`of the invention of the ’658 patent would have had the following education
`and experience:
`in computer science, computer
`(1) a bachelor’s degree
`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.
`
`
`6 Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation at 4–5 (Available at
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf).
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`Pet. 12 (citing Ex. 1003 ¶ 27). Patent Owner does not challenge this
`definition of the level of skill at this time. Prelim. Resp. 45.
`For purposes of this Decision, we also adopt Petitioner’s proposal as
`reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate
`level of skill in the art).
`Claim Construction
`C.
`For petitions filed on or after November 13, 2018, the “broadest
`reasonable interpretation” standard has been replaced with the federal court
`claim construction standard that is used to construe a claim in a civil action
`under 35 U.S.C. § 282(b). This is the same claim construction standard
`articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc), and its progeny.
`Neither Petitioner nor Patent Owner provide any explicit construction
`of any claim terms. Pet. 11–12, Prelim. Resp. 45–46. At this stage of this
`proceeding we determine that no claim terms require express construction in
`order to determine whether or not to institute inter partes review because
`doing so would have no effect on the analysis below. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’”) (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`D. Overview of the Asserted Prior art
`Okamura
`1.
`Okamura is a U.S. Patent Publication titled, “Information Processing
`Apparatus, Information Processing Method, and Program,” published May
`26, 2011. Ex. 1005, codes (43), (54). Okamura describes an information
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`processing apparatus which displays contents such as image files. Ex. 1005
`¶ 2. Okamura’s information processing apparatus also allows managing of
`contents such as recorded image files. Id. ¶ 91.
`Figure 41, reproduced below, shows an embodiment of a display of
`Okamura that includes a map view screen.
`
`
`Id. Fig. 41, ¶ 61. As shown in Figure 41, map view screen 780 displays a
`map including cluster map groups 771, 772. Id. A user can change the scale
`of map view screen 780 and can select a desired cluster map such that a
`listing of its contents is displayed in content listing display area 782. Id. Fig.
`41, ¶¶ 355–56. For example, cluster map 784 within cluster map group 772
`is selected to show it has 170 contents that can be displayed in content
`listing display area 782. Id. Fig. 41, ¶ 356. Overlapping cluster maps are
`spread out in accordance with a predetermined condition such that
`“graphical correspondence between contents may be intuitively grasped.”
`Id. Fig. 41, ¶ 358.
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`Figure 21, reproduced below, shows another embodiment of a display
`of Okamura that includes an index screen.
`
`
`Id. Fig. 21, ¶ 41. As shown in Figure 21, an index screen displays indexed
`images generated on the basis of face information. Id. Fig. 21, ¶ 234. The
`index screen includes cursor 419 for pointing to an object of instruction or
`operation on the screen. Id. Fig. 21, ¶ 234. The index screen includes
`“EVENT” tab 411, “FACE” tab 412, and “PLACE” tab 413 that are used for
`displaying a different index screen. Id. Fig. 21, ¶¶ 235–36. Okamura
`discloses that in the face cluster image display area 431 shown in Figure 21,
`images representing face clusters are displayed such that “an image
`representing a face cluster, for example, a thumbnail image of each of faces
`included in contents belonging to the face cluster can be used” by extracting
`faces and contents belonging to the face cluster. Id. Fig. 21, ¶ 246. For
`example, thumbnail image 432 in face cluster image display area 431 has 28
`contents indicated for its pieces of information 433, that can be accessed by
`a user. Id. Fig. 21, ¶ 247.
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`Figure 24, reproduced below, shows another embodiment of a display
`of Okamura that includes a content playback screen.
`
`
`Id. Fig. 24, ¶ 44. As shown in Figure 24, content playback screen 460 can
`be displayed “when the mouse is placed over the face portion” in another
`content playback screen. Id. Fig. 24, ¶ 261. Content playback screen 460
`includes image 461 of the vicinity of the face displayed in magnified form
`and content listing display area 462 in content display area 411. Id. Fig. 24,
`¶ 261. Content listing display area 462 shows a listing of contents included
`in the face cluster (from Figure 21 for example) and also thumbnail images
`of the content. Id. Fig. 24, ¶ 261.
`Figure 50, reproduced below, shows another embodiment of a display
`of Okamura that includes a play view screen.
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`Id. Fig. 50, ¶ 70. As shown in Figure 50, play view screen 890 shows
`“images related to a cluster corresponding to the cluster map on which a
`determining operation has been made are displayed,” including “a listing of
`contents belonging to the cluster, a content’s magnified image, and the like.”
`Id. Fig. 50, ¶ 440. Play view screen 890 includes map display area 891,
`magnified image display area 892, and content listing display area 893. Id.
`Fig. 50, ¶ 441. Map display area 891 includes a map related to the
`corresponding cluster with marks indicating the generated positions of
`contents belonging to the corresponding cluster. Id. Fig. 50, ¶ 442. Content
`listing display area 893 shows a listing of contents belonging to the
`corresponding cluster which are displayed as thumbnails. Id. Fig. 50, ¶ 444.
`Magnified image display area 892 includes an image corresponding to the
`content selected from box 894 of the content listing display area 893, which
`is displayed in magnified form. Id. Fig. 50, ¶ 443.
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`Belitz
`2.
`Belitz is a U.S. Patent Publication titled, “User Interface, Device and
`Method for Displaying Special Locations on a Map,” published March 4,
`2010. Ex. 1006, codes (43), (54). Belitz describes clustered locations on a
`map for a user to overview associated images to special locations so that the
`user can “clearly see the associations.” Ex. 1006 ¶¶ 1, 4.
`Belitz relates to a “user interface . . . configured to display a map and
`to display at least one marked location on said map.” Ex. 1006, code (57).
`By way of background, Belitz explains that “[i]t is common to mark special
`locations on a map by associating a graphical object with that location.
`Examples of such locations are service points, restaurants, tourist attractions,
`visited places etc[.] and examples of graphical objects are photographs taken
`at such a location.” Id. ¶ 2. Belitz further explains “[i]f many locations are
`located close to one another they overlap and the view of the associated
`images become cluttered and it is difficult to discern between the various
`objects and the user is not provided with a good view of what location is
`associated with what.” Id. Belitz presents a user interface attempting to
`address those concerns. Id. ¶ 5. Figures 4a and 4b, reproduced below, show
`screenshots of the user interface. Id. ¶¶ 51, 55.
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`
`As shown in Figure 4a, a “map 409 is displayed of a town called
`Roskilde. A location 408 is marked by a graphical object 410.” Id. ¶ 51.
`“[G]raphical object 410 has a visual representation 411 which in this
`embodiment is a photograph that is associated with the location.” Id. ¶ 52.
`Furthermore, “graphical object 410 carries a number indicator 412 which
`presents a viewer with a number. The number indicates how many graphical
`objects 410 are associated with that location and are stacked into one
`graphical object 410.” Id. ¶ 54. Furthermore, “graphical objects stacked in
`the displayed graphical object or graphical group object 410 . . . can be
`associated with other locations that are in close proximity to the marked
`location 408” because “if the graphical objects associated with each location
`were to be displayed separately they would overlap which would clutter the
`view and be confusing to a user.” Id.
`Figure 4b shows map 408 having been “zoomed in showing the area
`in greater detail.” Id. ¶ 55. At this zoom level, graphical object 410 is “split
`up into 4 graphical objects 410a, 410b, 410c and 410d” because the display
`of those graphical objects would not overlap. Id. Those graphical objects
`themselves also consist of some number of graphical objects. Id.
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`When a graphical object, e.g., graphical object 410, 410a, 410b, 410c,
`or 410d, is selected, a popup window is displayed over the graphical object.
`Id. ¶ 60. Figure 4c, reproduced below, is a screenshot showing the user
`interface after the selection of graphical object 410c. Id.
`
`
`As shown in Figure 4c, the “popup window shows at least some of the
`visual representations 411 of the graphical object 410c.” Ex. 1006 ¶ 60.
`“One 414 of the visual representations 411 or images as they are in this
`embodiment is shown in a larger size than the others which are shown in a
`list 415.” Id. In some embodiments, “graphical objects are photographs that
`are associated with the location where they were taken. The visual
`representations are thumbnails of the photographs.” Id. ¶ 62.
`Principles of Law
`E.
`A petition must show how the construed claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`Petitioner bears the burden of demonstrating a reasonable likelihood that it
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`would prevail with respect to at least one challenged claim for a petition to
`be granted. 35 U.S.C. § 314(a).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Secondary considerations may include long-felt but unsolved
`need, failure of others, unexpected results, commercial success, copying,
`licensing, and praise. See Graham, 383 U.S. at 17–18; Leapfrog Enters.,
`Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). We
`analyze the asserted grounds with these principles in mind.
`F. Obviousness under 35 U.S.C. § 103
`Petitioner contends that claims 1–15 are unpatentable over
`combination of Okamura and Belitz. Pet. 21–103. Patent Owner disputes
`Petitioner’s contentions. Prelim. Resp. 35–53.
`Independent Claim 1
`1.
`For each limitation of claim 1, Petitioner asserts that Okamura alone
`or in combination with Belitz meets that limitation. Pet. 34–64. Petitioner
`also provides the testimony of Dr. Greenspun, in support of its position with
`respect to the limitations of claim 1. Ex. 1003 ¶¶ 99–148. Patent Owner
`does not contest Petitioner’s findings for every limitation. For the
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`uncontested limitations, we have considered Petitioner’s evidence and
`arguments with respect to these limitations, including the relevant testimony
`of Dr. Greenspun and find it to be sufficient to show that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that
`Okamura, either alone or in combination with Belitz, discloses them.
`Accordingly, we focus our discussion on the contested limitations and Patent
`Owner’s argument that “Petitioner has not shown that it would have been
`obvious to modify Okamura with Belitz in any of the ways suggested in the
`Petition.” Prelim. Resp. 34.
`a. Displaying of the “Map View” As Required by
`Limitations [1b]–[1d]and [1f]7
`Petitioner asserts that “Okamura discloses a map view that displays
`cluster maps on a map for a user ‘to intuitively grasp the geographical
`correspondence between the cluster maps.’” Pet. 38 (citing Ex. 1005 ¶ 312).
`Petitioner asserts that “Okamura’s map view screen is ‘a display screen that
`displays cluster maps in an overlaid manner on a map, and corresponds to
`the map view screen 780 shown in FIG. 41.’” Id. (citing Ex. 1005 ¶ 431;
`Ex. 1003 ¶ 107). In addition, Petitioner asserts that Okamura’s “clusters
`a[re] ‘thumbnail’ images of a portion of a map” and “to the extent that the
`location-based clusters in Okamura’s map view are not ‘thumbnail image[s]’
`as claimed, a POSITA8 would have been motivated to combine Okamura
`and Belitz such that Okamura’s map view displays selectable thumbnail
`images as disclosed in Belitz to obtain additional benefits.” Id. at 22–23
`
`
`7 As labeled by Patent Owner in its Preliminary Response.
`8 Person of ordinary skill in the art.
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`IPR2022-00221
`Patent 10,423,658 B2
`(citing Ex. 1005 ¶¶ 135, 221–223, 229–231; Ex. 1003 ¶ 86) (emphasis
`added).
`
`b. First Combination of Okamura and Belitz
`Petitioner asserts that a person of ordinary skill in the art “would have
`understood that selectable graphical clusters would have been obvious to
`replace with ‘smaller versions of the captured images (e.g., thumbnail
`images).’” Pet 25 (citing Ex. 1021 ¶ 30). According to Petitioner,
`“[o]rganizing digital files using location selectable thumbnails would
`achieve Okamura’s objective of ‘managing contents.’” Id. at 24 (citing Ex.
`1005 ¶ 91. In addition, Petitioner contends that a person of ordinary skill in
`the art
`images
`thumbnail
`that Belitz’s
` would have understood
`displayed on the interactive map are functionally equivalent to
`Okamura's location-based clusters ((1) both Belitz’s thumbnail
`images and Okamura’s clusters are associated with a given
`location, (2) both are displayed on the interactive map, and (3)
`both are dynamically generated/modified based on user
`interaction including zooming in/out on the map) and could be
`used as an alternative to the clusters on Okamura’s map view
`screen.
`Id. (citing Ex. 1003 ¶ 88). Thus, according to Petitioner a person of ordinary
`skill in the art would have found it obvious “to incorporate Belitz’s
`thumbnail images (including a count indicator) to provide added
`functionality that allows a user to preview pictures associated with a
`given location.” Id. at 24–25 (citing Ex. 1006 ¶ 25).
`Petitioner provides further reasoning in support of the proposed combination
`on pages 38–39 of the Petition.
`
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`Patent Owner contends that Petitioner “has not met its burden” for
`limitations [1b]–[1d] and [1f]. Prelim. Resp. 36. Specifically, Patent Owner
`contends that “the intended purpose of the cluster maps in Okamura are to
`allow ‘the position corresponding to each cluster’ to ‘be grasped from a map
`corresponding to each cluster.’” Id. at 37 (citing Ex. 1005 ¶ 215; Ex. 2001 ¶
`96). According to Patent Owner, “[e]ach cluster map’s scale is selected so
`that ‘the shooting area or the like of each of [the] contents belonging to each
`cluster can also be easily grasped by the user.’” Id. at 37–38. Patent Owner
`contends further that “[u]nlike the cluster maps in Okamura, the graphical
`objects 410a-410d from Belitz in and of themselves do not convey
`geographical information.” Id. at 38 (citing Ex. 2001 ¶ 97). Thus, according
`to Patent Owner, “[i]f the cluster maps in FIG. 41 of Okamura were replaced
`with graphical objects 410a-410d from Belitz, this both entirely eliminates
`the cluster map information and also covers the underlying map.” Id. (citing
`Pet. 23; Ex. 2001 ¶ 97). Patent Owner argues that “[t]his is contrary to
`Okamura’s objectives of using cluster maps so that (1) ‘the position
`corresponding to each cluster can be grasped from a map corresponding to
`each cluster’ and (2) ‘the shooting area or the like of each of [the] contents
`belonging to each cluster can also be easily grasped by the user.’” Id. (citing
`Ex. 1005 ¶ 215; Ex. 2001 ¶ 97).
`In addition, Patent Owner contends that in the combination proposed
`by Petitioner, at least some of the graphical objects would overlap on the
`map and this is contrary to Belitz’s teachings. Prelim. Resp. 38–39. Patent
`Owner argues that “Belitz teaches that [the] graphical objects should not
`touch or even be close to one another because otherwise this ‘would clutter
`the view and be confusing to a user’” and, thus, a person of ordinary skill in
`the art would be discouraged from combining Okamura and Belitz in the
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`IPR2022-00221
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`manner proposed in the Petition. Id. at 39 (citing Ex. 1006 ¶¶ 54–58; Ex.
`2001 ¶¶ 94–95).
`We do not understand Petitioner’s proposed combination to replace
`Okamura’s cluster maps with Belitz’s graphical objects. Rather, we
`understand Petitioner’s challenge to replace Okamura’s location-based
`clusters with Belitz’s thumbnails. On the record before us, we agree with
`Petitioner that such modification “involves the simple substitution of one
`known user interface element (Okamura’s clusters) with another known user
`interface element (Belitz’s thumbnails), which would have been routine” for
`a person of ordinary skill in the art.” Pet. 29. Thus, Petitioner has
`sufficiently demonstrated, for purposes of institution, that a person of
`ordinary skill in the art would have combined Okamura and Belitz in the
`manner proposed in its first combination.
`c. Second Combination of Okamura and Belitz
`Petitioner asserts that a person of ordinary skill in the art “would have
`found it obvious to substitute Okamura’s map-related views with Belitz’s
`interactive map for the same reasons described above including the user’s
`increased awareness of digital files associated with various locations.” Pet.
`26 (citing Ex. 1005 ¶¶ 354–356, 430, Fig. 49; Ex. 1006 ¶¶ 51–53, 62, Fig
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