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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,
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`v.
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`MEMORYWEB, LLC,
`Patent Owner.
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`Case IPR2022-00222
`Patent 10,621,228
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`PETITIONER’S REPLY TO
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
`II.
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
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`TABLE OF CONTENTS
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`GENERAL PLASTIC FAVORS INSTITUTION ON THE MERITS ............. 1
`FINTIV FAVORS INSTITUTION ON THE MERITS .................................. 4
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`i
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
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`EXHIBITS
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`SAMSUNG-1001 U.S. Patent No. 10,621,228 to Christopher J. Desmond, et al.
`(“the ’228 patent”)
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`SAMSUNG-1002 Excerpts from the Prosecution History of the ’228 Patent (“the
`Prosecution History”)
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`SAMSUNG-1003 Declaration of Dr. Philip Greenspun
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`SAMSUNG-1004 Curriculum Vitae of Dr. Philip Greenspun
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`SAMSUNG-1005 U.S. Patent App. Pub. No. 2011/0122153 A1 (“Okamura”)
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`SAMSUNG-1006 U.S. Patent App. Pub. No. 2010/0058212 A1 (“Belitz”)
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`SAMSUNG 1007-SAMSUNG 1019 RESERVED
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`SAMSUNG-1020 Tim Grey, Adobe Photoshop Lightroom Workflow: The Digital
`Photographer's Guide (2007)
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`SAMSUNG-1021 U.S. Patent App. Pub. No. 2011/0074811 A1 (“Hanson”)
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`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/
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`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
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`SAMSUNG-1024 Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt
`Publishing (2007)
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`ii
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`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)
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`SAMSUNG-1026 U.S. Patent App. Pub. No. 2009/0113350 A1 (“Hibino”)
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`SAMSUNG-1027 U.S. Patent App. Pub. No. 2006/0165380 A1 (“Tanaka”)
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`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.)
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`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)
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`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)
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`SAMSUNG-1031 U.S. Patent No. 6,215,523 (“Anderson”)
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`SAMSUNG-1032 U.S. Patent App. Pub. No. 2008/0133526 (“Haitani”)
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`SAMSUNG-1033 U.S. Patent App. Pub. No. 2008/0306921 (“Rothmuller”)
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`SAMSUNG-1034 U.S. Patent App. Pub. No. 2013/0198602 (“Kokemohr”)
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`SAMSUNG-1035 U.S. Patent App. Pub. No. 2013/0326338 (“Secord”)
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`SAMSUNG-1036 U.S. Patent App. Pub. No. 2007/0016575 (“Hurst-Hiller”)
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`SAMSUNG-1037 Stipulation Letter
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`SAMSUNG-1038 Email from Board Authorizing Petitioner’s Reply
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`iii
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`On April 12, 2022, the Board issued an email authorizing Petitioner
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`(Samsung) to file a five-page reply to Patent Owner’s Preliminary Response
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`(“POPR”). See SAMSUNG-1038. For the reasons explained below, the Board
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`should not exercise its discretion to deny Samsung’s request for IPR of U.S. Patent
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`No. 10,621,228 (“the ’228 Patent”). The General Plastic factors favor institution
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`because Samsung gained no advantage from the earlier petitions filed by Unified
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`and Apple, which are completely separate and unrelated parties over which
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`Samsung has no control. The Fintiv factors likewise favor institution because the
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`final written decision is scheduled to precede trial and Samsung’s stipulation
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`minimizes overlap between the petition and the district court proceeding. In
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`addition, the exceptionally strong merits of the advanced grounds, which rely on
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`the same primary reference (Okamura) previously found to establish a reasonable
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`likelihood of success in justifying institution of Unified’s petition, favor institution.
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`I.
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`GENERAL PLASTIC FAVORS INSTITUTION ON THE MERITS
`The General Plastic Factors overwhelmingly favor institution. Specifically,
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`Factor 1 favors institution because Samsung is separate and unrelated to prior
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`petitioners Unified and Apple. See Petition, 82-83. Indeed, not only is Samsung
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`unable to direct or control Unified and Apple, the parties are differently situated
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`and have divergent interests. For example, Unified’s petition only covers a small
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`subset of claims asserted against Samsung and thus does not adequately advance
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`1
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`Samsung’s interest in its dispute with MemoryWeb. SAMSUNG-1029, 2.
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`Further, a settlement between any one of the petitioners and MemoryWeb would
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`not extinguish the disputes for the other non-settling petitioners, and as a result,
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`each non-settling party would still need to protect its own interests. At bottom, the
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`parties are not similarly situated and this factor favors institution. Apple Inc. v.
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`Gesture Tech. Partners, LLC, IPR2021-00920, Paper 12 at 25 (Dec. 6, 2021).
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`Patent Owner further contends that General Plastic Factors 2 and 3 favor
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`denial because Samsung somehow used the earlier petitions as a roadmap to gain
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`an unfair advantage. The timing of Samsung’s filing strongly suggests otherwise.
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`Not only was Samsung’s petition filed shortly after the earlier petitions, it was filed
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`before any response from MemoryWeb or decision from the Board. Thus, any
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`suggestion of an unfair tactical advantage is illusory. And while Patent Owner
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`points to cherry-picked passages in alleging that “[i]t appears that Samsung used at
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`least the Apple petition as a roadmap,” it is not surprising that similar arguments
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`may arise when mapping excellent prior art (e.g., Okamura for Samsung and
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`A3UM for Apple) to identical claim limitations. Moreover, as noted, no unfair
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`advantages could be gained by Samsung because MemoryWeb’s POPR to Apple’s
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`petition was not received until nearly three months after Samsung’s petition.
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`As to timing, Samsung filed this petition expeditiously after learning of
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`Okamura and Belitz and MemoryWeb’s infringement allegations. Indeed,
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`2
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`Samsung’s petition was filed about two months after receiving MemoryWeb’s
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`infringement contentions on September 24, 2021, and almost two months prior to
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`filing its district court invalidity contentions on January 31, 2022. Although
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`MemoryWeb attempts to characterize Samsung’s actions as involving six months
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`of “delay,” the reality is that Samsung quickly and diligently formulated its
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`defenses in about two months of learning of MemoryWeb’s identification of
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`asserted claims, and filed this petition with a timing that allows the final written
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`decision to precede trial. Samsung should not have to rush formulation of its
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`defenses simply because another independent party (Unified) filed an early IPR.
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`Thus, Factors 4 and 5 weigh in favor of institution.
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`The remaining General Plastic factors likewise favor institution for reasons
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`previously discussed. See Petition, 85-88. For instance, although Patent Owner
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`tries to point to potential inefficiencies that would result from institution, Patent
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`Owner fails to allege, much less show, that the present Petition raises unusual
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`issues challenging the finite resources of the Board, or its capacity to issue a final
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`determination within the statutory deadline. Prollenium Us Inc. v. Allergan
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`Industrie, SAS, No. IPR2019-01632, Paper 18, at 28 (PTAB Mar. 31, 2020).
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`In terms of efficiency, it would be extremely inefficient for the public if
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`Unified successfully demonstrates that Okamura renders obvious a limited number
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`of claims of the ’228 patent, and Samsung’s petition, challenging all claims of the
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`3
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`’228 patent, is denied for discretionary reasons. In that situation, MemoryWeb
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`would retain claims that it is free to assert against other defendants that might have
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`been cancelled should Samsung’s petition have been instituted. At the very least,
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`the public would benefit from having Okamura-based prior art vetted against all
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`claims of the ’228 patent, and, since Okamura-based prior art is already being
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`evaluated against claims 1-7 in Unified’s IPR, it would be most efficient to
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`institute Samsung’s petition and have Okamura-based prior art evaluated against
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`all claims at this time.
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`Finally, Patent Owner’s contention that the facts here are “[n]early identical”
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`to the Valve case is flat out wrong. In Valve, the petitioner filed three petitions
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`after denial of institution of an earlier petition filed by a related party. Here,
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`Samsung filed a single petition before MemoryWeb even responded to the earlier
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`petitions, which were filed by unrelated parties. Thus, Factors 6 and 7 favor
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`institution.
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`II. FINTIV FAVORS INSTITUTION ON THE MERITS
`A holistic view of the Fintiv factors overwhelmingly supports institution,
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`with only Fintiv Factors 1 and 5 being, at worst, neutral. In particular, Patent
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`Owner does not dispute that the final written decision will come before trial, the
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`latter of which may be delayed further in view of the pending motion to transfer.
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`Regarding Fintiv Factor 4, Patent Owner contends that the “stipulation is
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`4
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`narrowly drawn to only the grounds in the petition.” POPR, 44. This is simply not
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`true. The stipulation offered by Samsung states that Samsung will not pursue
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`district court invalidity challenges based on the primary reference (Okamura) and
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`thus broadly covers various grounds both raised and not raised in the Petition.
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`As to Fintiv Factor 6, Patent Owner contends that “Petitioner has failed to
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`meet its burden to demonstrate a likelihood of success on the merits for any
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`grounds.” POPR, 44. Yet the Board, through its institution of Unified’s petition,
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`recognized the strength of Okamura, noting that “Petitioner has demonstrated a
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`reasonable likelihood of prevailing in its challenge . . . as obvious over Okamura
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`and Flora.” (Unified ID at 57). While the Okamura-Flora ground advanced by
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`Unified is distinguished from the Okamura-Belitz ground set forth in Samsung’s
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`Petition, the Unified Board nevertheless endorsed Unified’s mapping of many of
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`the critical features of the ’228 patent based on Okamura alone, such as features
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`related to the map view, the location view, and the people view. The Board’s
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`acknowledgement of Okamura’s relevance confirms the strength of the Okamura-
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`based grounds asserted against the Challenged Claims in the present petition.
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`Thus, the merits compel a finding that Factor 6 strongly favors institution.
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`Accordingly, for at least the reasons above as well as those advanced in the
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`original Petition, Petitioner respectfully requests that the Board decline to exercise
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`its discretion to deny institution, and instead institute review.
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`5
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`Dated April 19, 2022
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Hyun Jin In, Reg. No. 70,014
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`6
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on April 19, 2022, a complete and entire copy of this Petitioner’s Reply to
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`Patent Owner’s Preliminary Response and Exhibit 1038 were provided by email to
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`the Patent Owner by serving the correspondence address of record as follows:
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`Jennifer Hayes
`George Dandalides
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
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`Email: jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
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`/Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(612) 638-5731
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`7
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