`Patent No. 10,423,658
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` Patent Owner’s Request for Rehearing
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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 REQUEST FOR REHEARING
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`IPR2022-00221
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`Exhibit No.
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` Patent Owner’s Request for Rehearing
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`LISTING OF EXHIBITS
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`
`Description
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`WITHDRAWN
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`Japanese Unexamined Patent Application Publication No. 2001-
`160058 and Certified English Translation (“Fujiwara”)
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`WITHDRAWN
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`U.S. Patent No. 6,714,215 (“Flora”)
`
`Supplemental Declaration of Kevin Jakel, Unified Patents, LLC v.
`MemoryWeb, LLC, IPR2021-01413 (Dec. 30, 2021) (redacted
`version)
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`3 Questions for Unified Patents CEO Post-Oil States (Part II)
`
`Petition for Inter Partes Review, Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00031, Paper 1 (PTAB Oct. 30, 2021)
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`Brief of Amicus Curiae Unified Patents Inc. in Cuozzo Speed
`Technologies, LLC v. Michelle K. Lee et al.
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`Unified Patents September 3, 2021 Press Release regarding
`MemoryWeb IPR
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`Unified Patents September 9, 2021 email regarding MemoryWeb
`IPR
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`Unified Patent’s website link (FAQs)
`(https://www.unifiedpatents.com/faq)
`
`Case Readiness Status Report, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411 (W.D. Tex.) (Sept. 3, 2021)
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`Amended Complaint, MemoryWeb, LLC v. Samsung Electronics
`Co., Ltd. and Samsung Electronics America, Inc., Case No. 21-
`ii
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`Description
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`cv-411 (W.D. Tex.) (Nov. 24, 2021)
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`Excerpts from Defendant Samsung Electronics Co. Ltd. and
`Samsung Electronics America, Inc.’s Initial Invalidity
`Contentions, MemoryWeb, LLC v. Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc., Case No. 21-cv-411
`(W.D. Tex.) (Jan. 31, 2022)
`
`Joint Motion for Entry of Agreed Scheduling Order, MemoryWeb,
`LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics
`America, Inc., Case No. 21-cv-411 (W.D. Tex.) (Oct. 1, 2021)
`
`MV3 Partners LLC v. Roku Inc., 6:18-cv-00308, (W.D. Texas)
`D.I. 83
`
`IAM, “The last thing anyone should think about WDTX is that it
`is patent plaintiff friendly, says Albright” (Apr. 7, 2020)
`
`Excerpt from Jennifer Tidwell, Designing Interfaces, O’Reilly (1st
`Ed. 2005)
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`Japanese Unexamined Patent Application Publication No. 2007-
`323544 and Certified English Translation (“Takakura”)
`
`Demonstrative exhibit from August 26, 2022 Greenspun
`deposition
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`U.S. Patent No. 10,621,228
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`Transcript of Deposition of Philip Greenspun, Ph.D, August 26,
`2022
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`Declaration of Professor Glenn Reinman, Ph.D.
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`Transcript of Deposition of Philip Greenspun, Ph.D, October 21,
`2022
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`iii
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`Description
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`2025
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`2026
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`2027
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`2028
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`2029
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`2030
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`2031
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`2032
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`2033
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`2034
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`Cambridge English Dictionary, definition of “responsive”
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`Webster’s Third New International Dictionary, definition of
`“responsive”
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`Wilbert O. Galitz, “The Essential Guide to User Interface Design:
`An Introduction to GUI Design Principles and Techniques,”
`Wiley Publishing, Inc. (3rd Ed.) (2007)
`
`Declaration of Matthew A. Werber
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`Declaration of Angelo J. Christopher
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`Second Declaration of Dr. Philip Greenspun, IPR2022-00222
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`Transcript of January 19, 2023 Deposition of Dr. Philip
`Greenspun, IPR2022-00222
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`Declaration of Dr. Philip Greenspun, IPR2022-00222
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`Transcript of March 27, 2023 Deposition of Philip G. Greenspun,
`Ph.D
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`Patent Owner’s Demonstrative Exhibit
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`iv
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`IPR2022-00221
`Patent No. 10,423,658
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` Patent Owner’s Request for Rehearing
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`TABLE OF CONTENTS
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`Page(s)
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`I.
`INTRODUCTION ........................................................................................... 1
`STANDARDS FOR REHEARING ................................................................ 1
`II.
`III. REQUESTED RELIEF ................................................................................... 1
`IV. ARGUMENT ................................................................................................... 2
`A. The Board Should Rehear its Claim Construction Rulings ............................. 2
`1. Claim 5: “Displaying the People View Including Displaying: . . . a Name
`Associated With the First Person . . . and a Name Associated With the
`Second Person” ........................................................................................... 2
`2. Claims 3-5, 7, 9-10, and 12-15: “responsive to a click or tap . . .
`displaying” .................................................................................................. 5
`B. The Board Should Rehear its Unpatentability Findings for Dependent
`Claims 5 and 13 ............................................................................................... 7
`C. The Board Should Rehear its Unpatentability Findings for Dependent
`Claims 7 and 10 ............................................................................................... 8
`CONCLUSION ............................................................................................. 11
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`V.
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`IPR2022-00221
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`TABLE OF AUTHORITIES
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` Patent Owner’s Request for Rehearing
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` Page(s)
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`Cases
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`Aqua Prod., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................................... 3
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`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010) ............................................................................... 4
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`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ............................................................................... 4
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`TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
`529 F.3d 1364 (Fed. Cir. 2008) ............................................................................... 7
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`Regulations
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`37 C.F.R. § 42.71(c) ................................................................................................... 1
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`vi
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`IPR2022-00221
`Patent No. 10,423,658
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`I.
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner respectfully requests
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` Patent Owner’s Request for Rehearing
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`rehearing of the Board’s Final Written Decision (“Decision” or “FWD,” Paper 39).
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`As set forth herein, the Decision misapprehended or overlooked arguments and
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`evidence relating to its claim constructions of the phrase “responsive to” in various
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`claims and the “[first/second] name” features of claims 5 and 13. The Decision also
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`misapprehended or overlooked arguments and evidence refuting Petitioner’s
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`unpatentability arguments directed to claims 7 and 10.
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`II.
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`STANDARDS FOR REHEARING
`“A party dissatisfied with a decision may file a request for rehearing”
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`identifying “all matters the party believes the Board misapprehended or overlooked,
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`and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).
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`III. REQUESTED RELIEF
`Patent Owner respectfully requests rehearing because
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`the Decision
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`overlooked or misapprehended arguments and evidence relating to the proper claim
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`construction for (1) the phrase “responsive to” in claims 3-5, 7, 9-10, and 12-15 and
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`(2) the first and second “name” limitations in claims 5 and 13. As a result, the Board
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`should reconsider the related unpatentability findings. Additionally, the Decision
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`overlooked or misapprehended arguments and evidence in connection with the
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`“person view” recited in claims 7 and 10.
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`1
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`IV. ARGUMENT
`A. The Board Should Rehear its Claim Construction Rulings
`1.
`Claim 5: “Displaying the People View Including Displaying:
`. . . a Name Associated With the First Person . . . and a Name
`Associated With the Second Person”
`Claim 5 requires displaying a “people view” responsive to a click or tap of the
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`people selectable element, where “the displaying the people view” includes
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`displaying “a name associated with the first person” and “a name associated with
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`the second person.” EX1001, 36:31-32, 38, 46. The Decision’s finding that “nothing
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`in the ‘658 Patent requires the simultaneous display of the name[s]” overlooked or
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`misapprehended evidence that the claim does require the simultaneous display of the
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`“people view” elements. FWD, 19.
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`In particular, the Decision states that claim 5 “does not specify when the
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`names must be displayed.” Id. But the Decision overlooked evidence that (1) the first
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`person selectable thumbnail image and the first name must be displayed
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`simultaneously and (2) the second person selectable thumbnail image and the second
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`name must be displayed simultaneously. POSR, 9 (citing EX2033, 46:17-48:12);
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`POR, 26-27 (citing EX2023, ¶132 and EX2024, 105:4-12, 192:17-196:18). In
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`particular, the Decision overlooked the following admission by Samsung’s expert:
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`2
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`So you would agree then that claim five requires the
`Q.
`simultaneous display of the first person selectable thumbnail
`image and the name associated with the first person in at least
`some point in time; correct?
`A.
`I think so, yes.
`. . .
`Based on what we just talked about, you would agree that
`Q.
`the name associated with the second person needs to be displayed
`simultaneously with the second person selectable thumbnail
`image in at least some point in time; correct?
`A. Yes.
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`EX2033, 46:17-48:12 (emphases added); Aqua Prod., Inc. v. Matal, 872 F.3d 1290,
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`1325 (Fed. Cir. 2017) (agencies “must take account of all the evidence of record,
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`including that which detracts from the conclusion the agency ultimately reaches”).
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`Because it overlooked this evidence, the Decision appears to have
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`misapprehended the dispute, which was whether claim 5 requires that only one
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`name/thumbnail pair is displayed at a given time (as Petitioner proposed), or whether
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`at least two name/thumbnail pairs must be displayed simultaneously (as Patent
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`Owner proposed). POSR, 7. Patent Owner’s construction stays true to the plain claim
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`language, which requires a “people view” relating to multiple people, rather than a
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`“person view” (e.g., as required in claims 7 and 10). POSR, 8; EX2033, 44:10-17.
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`If claim 5 only displays information for one person at any given time, it would
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`effectively be a “person view,” thereby collapsing the distinction between “people”
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` Patent Owner’s Request for Rehearing
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`and a “person.”1 Id.; Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616
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`F.3d 1249, 1254 (Fed. Cir. 2010) (when “a claim lists elements separately, the clear
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`implication of the claim language is that those elements are distinct component[s] of
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`the patent invention”) (citation and quotation marks omitted).
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`The Decision also overlooked Patent Owner’s arguments regarding claim 6,
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`which requires that the “[first/second] person selectable thumbnail image[s]” in the
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`people view be displayed “in an alphabetical order based on the names.” POSR, 9;
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`Paper 39, 29:1-13. The thumbnails must be displayed simultaneously to be displayed
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`in an alphabetical order based on the names. Id. This is also consistent with the
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`specification, which clearly shows at least two thumbnails and at least two names in
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`the people view. POR, 28; POSR, 9-11.
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`1 The Decision indicates that the Board “do[es] not agree” that Petitioner’s
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`construction renders the surrounding “people view” language superfluous but does
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`not explain why. FWD, 19-20; In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir.
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`2016) (“it is not adequate to summarize and reject arguments without explaining
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`why the PTAB accepts the prevailing argument”).
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`4
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` Patent Owner’s Request for Rehearing
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`Ex. 1001, FIG. 32 (excerpted and annotated)
`The Board overlooked that since each thumbnail must be displayed
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`simultaneously with a name (as both experts agreed) and two thumbnails must be
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`displayed simultaneously (i.e., a “people view” as opposed to a “person view”), then
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`the two names must be displayed simultaneously. The Board should therefore rehear
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`its claim construction and find that claim 5 requires the simultaneous display of both
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`names.
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`2.
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`Claims 3-5, 7, 9-10, and 12-15: “responsive to a click or tap
`. . . displaying”
`The Decision construed the phrase “responsive to” as requiring “that the
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`second event happen ‘subsequent to’ the first event based on a combination of user
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`interaction and software implementation.” FWD, 18. Specifically, the Decision
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`rejected Patent Owner’s cause-effect construction because “[i]f ‘responsive to a click
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`or tap’ is construed to require a direct cause and effect relationship . . . the full scope
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`5
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`of the claim 1 is not enabled for large sets of photographs or videos” and thus “Patent
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` Patent Owner’s Request for Rehearing
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`Owner’s proposed claim construction would invalidate the claim.” Id., 17.
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`As an initial matter, the Decision appears to have misapprehended the parties’
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`arguments. Petitioner never argued that the claims would not be enabled under
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`Patent Owner’s construction. See Reply, 7-8. Rather, Petitioner argued that “Patent
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`Owner’s construction . . . would exclude examples described in the ‘658 patent.” Id.,
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`8. As discussed below, Patent Owner’s construction does not exclude disclosed
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`embodiments. Moreover, Patent Owner did not argue that its claim construction
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`prohibits scrolling if the display is not large enough to show large numbers of
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`photographs or videos simultaneously. See, e.g., Ex. 1046, 76:15-77:7, 78:3-79:19,
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`89:12-90:15.
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`In focusing on a hypothetical “large set[] of photographs and videos,” the
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`Decision overlooked or misapprehended the scope of the claimed “set.” FWD, 17.
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`The claims do not specify how many photographs and videos are in the “set.” There
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`are clear examples in the specification where every photograph and video in a “set”
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`can be displayed simultaneously. For example, FIG. 34 shows every photograph and
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`video associated with a particular geotag.
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`6
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`Ex. 1001, FIG. 34 (excerpted)
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`
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`The claims do not need to read on every possible “set” of digital photographs and
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`videos. TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed.
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`Cir. 2008); POSR, 6, 10.
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`For at least these reasons, the Board should rehear its construction of the term
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`“responsive to.”
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`B.
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`The Board Should Rehear its Unpatentability Findings for
`Dependent Claims 5 and 13
`Okamura does not disclose displaying a “first name” and “second name”
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`simultaneously in the alleged people view. POR, 64-68; POSR, 18. The Decision
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`found that Okamura disclosed the “people view” of claim 5, in part, because the
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`Decision “rejected Patent Owner’s narrow claim construction interpreting the first
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`and second name displaying terms in claim 5 to require simultaneous display of both
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`names.” FWD, 53. Accordingly, if the Board rehears its claim construction (supra,
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`§ IV.A.1), it should also rehear its unpatentability findings for claim 5.
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`7
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`Similarly, Okamura does not disclose displaying a “first album name” and
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`“second album name” simultaneously in the alleged people view. POR, 85-89;
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`POSR, 21-22. The Decision found that Okamura disclosed the “album view” of
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`claim 13, in part, because the Decision “rejected Patent Owner’s narrow claim
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`construction interpreting the first and second album name displaying terms in claim
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`13 to require simultaneous display of both album names.” FWD, 61. Accordingly, if
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`the Board rehears its claim construction (supra, § IV.A.1), it should also rehear its
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`unpatentability findings for claim 13.
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`C. The Board Should Rehear its Unpatentability Findings for
`Dependent Claims 7 and 10
`Claims 7 and 10 recite: “responsive to a click or tap of the [first/second]
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`person selectable thumbnail image, displaying a [first/second] person view, the
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`displaying the [first/second] person view including displaying (i) the name
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`associated with the [first/second] person and (ii) a scaled replica of each of the digital
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`photographs and videos in the [third/fourth] set of digital photographs.”
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`The Petition identified FIG. 24’s content playback screen 460 as allegedly
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`corresponding to the claimed “[first/second] person view” and alleged that selecting
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`a thumbnail in FIG. 21 (the alleged people view) causes the content playback screen
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`460 to be displayed. Petition, 81; POR, 69. The Petition is incorrect: the evidence
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`demonstrated that the content playback screen 460 in FIG. 24 (alleged person view)
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`8
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`is displayed when the user selects one of the face boxes 456-459 in FIG. 23. POR,
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` Patent Owner’s Request for Rehearing
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`69-72; POSR, 13-15.
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`The Decision did not find Okamura discloses a direct transition from FIG. 21
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`to FIG. 24 (because it does not). Instead, the Decision found that “Patent Owner’s
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`argument [for claims 7 and 10] rests on its overly narrow construction of the claim
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`term ‘responsive to.’” FWD, 55. Accordingly, if the Board rehears its claim
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`construction (supra, § IV.A.2), it should also rehear its unpatentability findings for
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`these claims.
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`But even if the Board does not rehear its claim construction, the Board should
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`rehear its unpatentability findings because the Decision overlooked Patent Owner’s
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`argument that Okamura does not disclose displaying scaled replicas “responsive to”
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`a click or tap of the first/second person selectable thumbnail under “any reasonable
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`construction of ‘responsive to.’” POSR, 16 (citing EX2023, ¶¶ 272-278) (emphasis
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`added); Paper 39, 32:4-33:10. The Decision overlooked Dr. Greenspun’s admissions
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`that the second event is “not simply subsequent to” the first event and “the first event
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`has to cause something to change in the software that makes the second event
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`possible.” EX2033, 17:11-25; POSR, 1-2. Petitioner never explained how the first
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`event (selecting a person in FIG. 21) causes something to change in the software that
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`makes the second event (displaying FIG. 24) possible.
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`9
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`The Decision emphasizes that its construction of “responsive to” does not
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`allow for an infinite number of intervening events. FWD, 18. Yet the Decision
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`overlooked Dr. Greenspun’s testimony that displaying the “people view” in FIG. 32
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`of the ‘658 patent would be “responsive to” an initial login operation and even
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`turning on the computer. POSR, 3 (citing EX2033, 32:19-33:14, 34:16-35:11, 35:25-
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`37:24). This demonstrates that Petitioner’s construction is unbounded in terms of the
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`number of intervening inputs, views, and decisions between the first and events. If
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`“responsive to” allows for more than one but less than infinite intervening inputs,
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`views, and decisions, the Decision is unclear how Okamura’s disclosure—which
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`requires (1) a first face selection and first input in FIG. 21 (alleged people view) to
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`display FIG. 22, (2) a second input in FIG. 22 to display FIG. 23, and (3) a second
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`face selection and third input in FIG. 23 to display FIG. 24 (alleged person view)—
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`meets the Board’s construction. FWD, 54-55; POSR, 14-15; POR, 69-72.
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`The Decision also overlooked the fact that the person selected in FIG. 24
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`(alleged first person view) and the person selected via thumbnail 432 in FIG. 21
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`(alleged people view) are different people. POSR, 15.
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`10
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`FIG. 21 (excerpted)
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`FIG. 24 (excerpted)
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`By contrast, the claim language requires a selection in the people view associated
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`with the first person and displaying a first person associated with the first person. Id.
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`In other words, the same person that is selected in the people view must be the same
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`person in the person view. As shown above, Okamura does not disclose this. Id.
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`V. CONCLUSION
`For the reasons set forth herein, Patent Owner respectfully requests rehearing
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`and a finding that at least claims 5-15 of the ’658 patent are not unpatentable.
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`
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`Respectfully submitted,
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`Dated: August 30, 2023
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`
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`11
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`By: /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 Request for Rehearing
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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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`Request for Rehearing was served on August 30, 2023, upon the following parties
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`via electronic service:
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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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`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
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