Trials@uspto.gov
`571-272-7822
`
`Paper 42
`Entered: November 29, 2023
`
`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
`Denying Patent Owner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 42
`Entered: November 29, 2023
`
`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
`Denying Patent Owner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–15 (the “challenged
`claims”) of U.S. Patent No. 10,423,658 B2 (Ex. 1001, “the ’658 patent”).
`We determined, based on the record at that time, that the ’658 patent was
`eligible for inter partes review, and instituted review on all challenged
`claims on the grounds presented in the Petition. Paper 10 (“Institution
`Decision” or “Inst. Dec.”).
`On July 31, 2023, we entered a Final Written Decision (Paper 40,
`“Decision” or “Dec.”) determining, in part, that Petitioner had shown
`claims 1–13 of the ’658 patent to be unpatentable by a preponderance of the
`evidence. On August 30, 2023, Patent Owner timely filed a Request for
`Rehearing of that determination in the Decision. Paper 41 (“Patent Owner’s
`Request” or “Req. Reh’g”).
`
`II. ANALYSIS
`A. Legal Standards
`The applicable requirements for a request for rehearing are set forth in
`37 C.F.R. § 42.71(d), which provides:
`A party dissatisfied with a decision may file a single request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`We review our Decision under an abuse of discretion standard. 37 C.F.R.
`§ 42.71(c). An abuse of discretion may arise if a decision is based on an
`erroneous interpretation of law, if a factual finding is not supported by
`substantial evidence, or if the decision represents an unreasonable judgment
`
`2
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d
`1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`“Substantial evidence is ‘such relevant evidence as a reasonable mind might
`accept as adequate to support a conclusion.’” OSI Pharm., LLC v.
`Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (quoting Consol. Edison
`Co. v. N.L.R.B., 305 U.S. 197, 229 (1938)). “The substantial evidence
`standard asks ‘whether a reasonable fact finder could have arrived at the
`agency’s decision.’” Id. at 1381–82 (quoting Gartside, 203 F.3d at 1312).
`B. Claim Construction
`1. Claim 5: “Displaying the People View Including Displaying:
` . . . a Name Associated With the First Person . . . and a Name
`Associated With the Second Person”
`In the Final Written Decision, we found that that the claim language
`of claim 5 which recites “displaying the people view including displaying:
`. . . a name associated with the first person . . . and a name associated with
`the second person,” does not require that the first and second names be
`displayed at the same time. Dec. 20.
`In the Request for Rehearing, Patent Owner asserts that “the Decision
`overlooked evidence that (1) the first person selectable thumbnail image and
`the first name must be displayed simultaneously and (2) the second person
`selectable thumbnail image and the second name must be displayed
`simultaneously’” Req. Reh’g 2 (citing Paper 34 (“PO Sur-reply”) 9; Paper
`18 (“PO Resp.”) 26–27). Patent Owner first argues that “the Decision
`appears to have misapprehended the dispute, which was whether claim 5
`requires that only one name/thumbnail pair is displayed at a given time (as
`Petitioner proposed), or whether at least two name/thumbnail pairs must be
`
`3
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`displayed simultaneously (as Patent Owner proposed).” Id. at 3 (citing PO
`Sur-reply 7). Patent Owner asserts that “[i]f claim 5 only displays
`information for one person at any given time, it would effectively be a
`‘person view,’ thereby collapsing the distinction between ‘people’ and a
`‘person.’ Id. at 3–4 (citing Becton, Dickinson & Co. v. Tyco Healthcare
`Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)). Patent Owner also
`argues that “[t]he Decision indicates that the Board ‘do[es] not agree’ that
`Petitioner’s construction renders the surrounding ‘people view’ language
`superfluous but does not explain why.” Id. at 4 n.1 (citing Dec. 19–20).
`Patent Owner further argues that “[t]he Decision also overlooked
`Patent Owner’s arguments regarding claim 6, which requires that the
`‘[first/second] person selectable thumbnail image[s]’ in the people view be
`displayed ‘in an alphabetical order based on the names.’” Req. Reh’g 4
`(citing PO Sur-reply 9; Paper 39, 29:1–13).
`We do not agree that we overlooked or misapprehended the dispute as
`to construction of this claim language. Rather, we addressed it on
`pages 18–20 of Final Written Decision. As we stated in the Decision,
`“nothing in the ’658 Patent requires the simultaneous display of the name of
`the first person and the name of the second person.” Dec. 19. The fact that
`Patent Owner disagrees with our resolution of this issue is not grounds for
`rehearing.
`With respect to claim 6, this argument was first presented in Patent
`Owner’s Sur-reply. PO Sur-reply 9. Patent Owner does not indicate where
`this argument was raised in the Patent Owner Response and the argument is
`not responsive to arguments raised in Petitioner’s Reply. The argument is
`therefore untimely. Further, the argument as to claim 6 does not advance
`Patent Owner’s ultimate position that “[t]he Board should . . . rehear its
`
`4
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`claim construction and find that claim 5 requires the simultaneous display of
`both names.” Req. Reh’g 5. An argument that the thumbnails must be
`displayed simultaneously to be displayed in an alphabetical order based on
`the names does not further the argument that the names must be displayed
`simultaneously. The thumbnails could be displayed alphabetically, for
`example, based on names that are known but not displayed. This would still
`result in displaying the thumbnails in alphabetical order based on the
`associated names.
`2. Claims 3–5, 7, 9, 10, and 12–15: “Responsive
`to a Click or Tap . . . Displaying”
`In the Final Written Decision, we found that “‘responsive to’ merely
`requires that the second event happen ‘subsequent to’ the first event based
`on a combination of user interaction and software implementation.” Dec. 18
`(quoting Pet. Reply 4).
`In the Request for Rehearing, Patent Owner states that “the Decision
`rejected Patent Owner’s cause-effect construction because ‘[i]f ‘responsive
`to a click or tap’ is construed to require a direct cause and effect relationship
`. . . the full scope of the claim 1 is not enabled for large sets of photographs
`or videos.’” Req. Reh’g 5–6 (citing Dec. 17). Patent Owner asserts that
`“Petitioner never argued that the claims would not be enabled under Patent
`Owner’s construction,” and that “Patent Owner’s construction does not
`exclude disclosed embodiments.” Id. at 6. Patent Owner further asserts that
`it “did not argue that its claim construction prohibits scrolling if the display
`is not large enough to show large numbers of photographs or videos
`simultaneously.” Id. Patent Owner concludes that, therefore, “the Decision
`appears to have misapprehended the parties’ arguments.” Id.
`
`5
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`Patent Owner also asserts that “[i]n focusing on a hypothetical ‘large
`set[] of photographs and videos,’ the Decision overlooked or
`misapprehended the scope of the claimed ‘set.’” Req. Reh’g 6 (citing Dec.
`17). Patent Owner asserts that “the claims do not need to read on every
`possible ‘set’ of digital photographs and videos.” Id. at 7 (citing TIP Sys.,
`LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir.
`2008); PO Sur-reply 6, 10).
`We do not agree that we overlooked or misapprehended the arguments
`related to this claim language. Rather, we addressed them on pages 14–18
`of Final Written Decision. We ultimately credited Dr. Greenspun’s
`testimony regarding claim construction for “responsive to a click or tap,”
`and adopted the definition advanced by Petitioner and supported by Dr.
`Greenspun as our own. Dec. 18. The fact that Patent Owner disagrees with
`our resolution of this issue is not grounds for rehearing.
`C. Claims 5 and 13
`With respect to claims 5 and 13, Patent Owner states that “the
`Decision found that Okamura disclosed the ‘people view’ of claim 5, in part,
`because the Decision ‘rejected Patent Owner’s narrow claim construction
`interpreting the first and second name displaying terms in claim 5 to require
`simultaneous display of both names.’” Req. Reh’g 7 (quoting Dec. 53).
`Patent Owner further states that “the Decision ‘rejected Patent Owner’s
`narrow claim construction interpreting the first and second album name
`displaying terms in claim 13 to require simultaneous display of both album
`names.’” Id. at 8 (quoting Dec. 61). Patent Owner asserts that if we rehear
`our construction of claim 5 in view of its arguments regarding display of
`both names, that we should also rehear our unpatentability findings for
`claims 5 and 13.
`
`6
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`As discussed above, we do not reconsider our construction of
`“displaying the people view including displaying: . . . a name associated
`with the first person . . . and a name associated with the second person,” as
`recited in claim 5, and therefore, we need not reconsider Patent Owner’s
`arguments regarding claims 5 and 13. Ex. 1001, 36:28–49.
`D. Claims 7 and 10
`Patent Owner notes that claims 7 and 10 recite “responsive to a click
`or tap of the [first/second] person selectable thumbnail image, displaying a
`[first/second] person view including displaying (i) the name associated with
`the [first/second] person and (ii) a scaled replica of each of the digital
`photographs and videos in the [third/fourth] set of digital photographs.”
`Req. Reh’g 8. Patent Owner asserts that “[t]he Petition identified
`[Okamura’s] FIG. 24’s content playback screen 460 as allegedly
`corresponding to the claimed ‘[first/second] person view’ and alleged that
`selecting a thumbnail in FIG. 21 (the alleged people view) causes the content
`playback screen 460 to be displayed.” Id. (citing Pet. 81; PO Resp. 69).
`Patent Owner asserts that this is incorrect, and instead that “the evidence
`demonstrated that the content playback screen 460 in FIG. 24 (alleged
`person view) is displayed when the user selects one of the face boxes 456–
`459 in FIG. 23.” Id. at 8–9 (citing PO Resp. 69–72; PO Sur-reply 13–15).
`Patent Owner asserts that we did not find that Okamura discloses a
`direct transition from figure 21 to figure 24 but that we instead found that
`“Patent Owner’s argument . . . rests on its overly narrow construction of the
`claim term ‘responsive to.’” Req. Reh’g at 9 (citing Dec. 55). Patent Owner
`concludes that if we rehear this claim construction, we should also rehear the
`unpatentability findings for these claims. Id.
`
`7
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`Patent Owner asserts that “even if the Board does not rehear its claim
`construction, the Board should rehear its unpatentability findings because
`the Decision overlooked Patent Owner’s argument that Okamura does not
`disclose displaying scaled replicas ‘responsive to’ a click or tap of the
`first/second person selectable thumbnail under ‘any reasonable construction
`of ‘responsive to.’” Req. Reh’g 9. Patent Owner explains that
`If “responsive to” allows for more than one but less than
`infinite intervening inputs, views, and decisions, the Decision is
`unclear how Okamura’s disclosure—which requires (1) a first
`face selection and first input in FIG. 21 (alleged people view) to
`display FIG. 22, (2) a second input in FIG. 22 to display FIG.
`23, and (3) a second face selection and third input in FIG. 23 to
`display FIG. 24 (alleged person view)—meets the Board’s
`construction.
`Id. at 10.
`Finally, Patent Owner asserts that we “overlooked the fact that the
`person selected in FIG. 24 (alleged first person view) and the person selected
`via thumbnail 432 in FIG. 21 (alleged people view) are different people.”
`Req. Reh’g 10.
`As discussed above, we do not reconsider our construction of
`“responsive to a click or tap . . . displaying,” and therefore, Patent Owner
`does not demonstrate a basis for rehearing based on this construction.
`Further, Patent Owner does not otherwise present any basis for rehearing our
`decision based on our application of Okamura. We address the application
`of Okamura to claims 7 and 10 on pages 54–55 of the Decision. The fact
`that Patent Owner disagrees with our resolution of this issue is not grounds
`for rehearing.
`With respect to Patent Owner’s argument that we overlooked that the
`person selected in figure 24 is different than the person selected in figure 21,
`
`8
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`we point out that the test for obviousness “is what the combined teachings of
`the references would have suggested to those of ordinary skill in the art,”
`and “not whether the features of a secondary reference may be bodily
`incorporated into the structure of the primary reference[,] nor . . . that the
`claimed invention must be expressly suggested in any one or all of the
`references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “A person of
`ordinary skill is also a person of ordinary creativity, not an automaton.”
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Petitioner has
`demonstrated that the teachings of Okamura render the subject matter of
`claims 7 and 10 obvious whether or not the person selected in figure 24 of
`Okamura is the same as person selected in figure 21.
`For these reasons, Patent Owner does not show that the Board
`misapprehended or overlooked Patent Owner’s arguments regarding claims
`7 and 10.
`
`9
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`
`III. CONCLUSION
`For the above reasons, after considering Patent Owner’s Request, we
`maintain the outcome of the Decision.
`Outcome of Decision on Rehearing:
`
`Claims
`
`5–8, 10, 11,
`13–15
`
`35 U.S.C.
`§
`
`103(a)
`
`6–8, 10, 11
`
`103(a)
`
`8, 9, 11, 12
`
`103(a)
`
`8, 9, 11, 12
`
`103(a)
`
`
`
`Overall
`Outcome
`
`
`Reference(s)/Basis Denied
`
`Granted
`
`Okamura, Belitz 5–8, 10, 11,
`13
`
`Okamura, Belitz,
`Gossweiler
`Okamura, Belitz,
`Yee
`Okamura, Belitz,
`Yee, Gossweiler
`
`
`6–8, 10, 11
`
`8, 9, 11, 12
`
`8, 9, 11, 12
`
`5–13
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`Final Outcome of Final Written Decision after Rehearing:
`
`Claims
`
`35 U.S.C.
`§
`
`Reference(s)/
`Basis
`
`1–15
`
`103(a)
`
`3, 4
`
`103(a)
`
`6–12
`
`103(a)
`
`8, 9, 11, 12
`
`103(a)
`
`8, 9, 11, 12
`
`103(a)
`
`Okamura,
`Belitz
`Okamura,
`Belitz,
`Rasmussen
`Okamura,
`Belitz,
`Gossweiler
`Okamura,
`Belitz, Yee
`Okamura,
`Belitz, Yee,
`Gossweiler
`
`Claims
`Shown
`Unpatentable
`1–8, 10, 11,
`13
`
`Claims Not
`Shown
`Unpatentable
`
`9, 12, 14, 15
`
`3, 4
`
`
`
`6–8, 10, 11
`
`9, 12
`
`8, 9, 11, 12
`
`8, 9, 11, 12
`
`
`
`
`
`
`
`
`
`1–13
`
`14, 15
`
`Overall
`Outcome
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Rehearing Request is denied.
`
`11
`
`
`
`IPR2022-00221
`Patent 10,423,658 B2
`For PETITIONER:
`Walter Renner
`Jeremy Monaldo
`Hyun Jin In
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`
`
`For PATENT OWNER:
`Jennifer Hayes
`George Dandalides
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`
`
`
`12
`
`
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