Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: June 13, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2022-00222
`Patent 10,621,228 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
`
`
`
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`IPR2022-00222
`Patent 10,621,228 B2
`
`INTRODUCTION
`I.
`Petitioner, Samsung Electronics Co., Ltd., filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–19 of U.S. Patent No.
`10,621,228 B2 (Ex. 1001, “the ’228 patent”). Patent Owner, MemoryWeb,
`LLC, filed a Preliminary Response (Paper 8, “Prelim. Resp.”). With our
`authorization, Petitioner filed a Preliminary Reply to Patent Owner’s
`Preliminary Response (Paper 9, “Prelim. Reply”) and Patent Owner filed a
`Preliminary Sur-reply (Paper 10, “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. 92. Patent
`Owner states that it, MemoryWeb, LLC, is the real party in interest. Paper
`4, 2.
`
`Related Matters
`B.
`The parties state that the ’228 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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`IPR2022-00222
`Patent 10,621,228 B2
`MemoryWeb, LLC, No. 1-21-cv-02666 (N.D. Il.), Dismissed. Pet. 92; Paper
`4, 2.
`
`Petitioner states that “[t]he ’228 patent is also the subject of two IPR
`proceedings, one filed by Unified Patents LLC (IPR2021-01413) and
`another filed by Apple Inc. (IPR2022-00031)” but that “Samsung is not a
`real party-in-interest to [these] IPR proceedings.” Pet. 92.
`Patent Owner states that “[t]he ’228 patent is related to the following
`U.S. Patents: 9,098,531 (“the ’531 patent”); 9,552,376 (“the ’376 patent”);
`10,423,658 (“the ’658 patent”); 11,017,020 (“the ’020 patent”); 11,163,823
`(“the ’823 patent”), and 11,170,042 (“the ‘042 patent”).” Paper 4, 2.
`Subsequently, Patent Owner identifies the following IPR proceedings as
`related matters: Samsung Electronics Co., LTD. v. MemoryWeb LLC, IPR
`2022-00221 (’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 (’228 patent); Unified Patents, LLC v.
`MemoryWeb, LLC, IPR2021-01413, (’228 patent); and U.S. Patent
`Application No. 17/459,933. Id. at 2–3.
`The ’228 patent
`C.
`The ’228 patent, titled “Method and Apparatus for Managing Digital
`Files,” issued April 14, 2020. Ex. 1001, codes (45), (54). It “relates
`generally to the management of digital files and, more particularly, to a
`computer-implemented system and method for managing and using digital
`files such as digital photographs.” Id. at 1:21–24. The ’228 patent purports
`to resolve a need for complementing “the widespread availability of digital
`files” by providing “a medium that allows people to organize, view, preserve
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`IPR2022-00222
`Patent 10,621,228 B2
`and share these files with all the memory details captured, connected and
`vivified via an interactive interface.” Id. at 1:61–65.
`Figure 41 of the ’228 patent is reproduced below.
`
`
`
`Figure 41 shows a screenshot of a Single Application Dot-Tag Filter in
`Location Application View that allows a user’s access to digital files
`associated with a particular location. Id. at 4:7–8, 29:41–57. As shown in
`Figure 41, Location Application View 0870 displays Digital Files within an
`interactive map. Id. at Fig. 41, 29:41–44. Individual or groups of Digital
`Files are illustrated as photo thumbnails 0874, 0875 on the map and a user
`can zoom in and out or select the thumbnail to see all the Digital Files with
`the same location as depicted in Figure 34 below. Id. at Fig. 41, 29:48–55.
`Figure 34 of the ’228 patent is reproduced below.
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`Patent 10,621,228 B2
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`Figure 34 shows a screenshot of Location Application Views. Id. at 3:64.
`As shown in Figure 34, Location Application Views include a first Multiple
`Location Application View 1600 for displaying all the locations that were
`created within a user’s Application. Id. at Fig. 34, 24:16–19. A second
`Single Location Application View 1630 is displayed when one of the
`thumbnails, for example, photo thumbnail 0874 from the Location
`Application View 0870 in Figure 41 is selected. Id. at Fig. 34, 29:48–52. In
`this example, displayed in the Single Location Application View 1630 are
`the individual location name 1632, thumbnails of each Digital File within
`specific collections such as one photo 1633 taken at Wrigley Field 1634 that
`is associated with the location called Wrigley Field. Id. at Fig. 34, 24:37–
`43.
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`Patent 10,621,228 B2
`Figure 32 of the ’228 patent is reproduced below.
`
`
`Figure 32 shows a screenshot of People Application Views. Id. at 3:62. As
`shown in Figure 32, People Application Views include a first Multiple
`People Application View 1400 for displaying all the people that were
`created within a user’s Application, and can be selected by a user “from any
`Application Views within the Application.” Id. at Fig. 32, 22:59–64. For
`each person, such as for Jon Smith as an example, a thumbnail 1403 for that
`person is shown. Id. at Fig. 32, 23:1–5. A second Single People Profile
`Application View 1430 can be displayed. Id. at Fig. 32, 23:12–13. This
`example shows individual JC Jon Smith with the following information
`depicted: individual’s name 1431, profile photo 1440 that can be changed,
`and a number of photos 1452 associated with that person along with
`thumbnail 1446 of each photo. Id. at Fig. 32, 23:13–25.
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`IPR2022-00222
`Patent 10,621,228 B2
`D. Challenged Claims
`Petitioner challenges claims 1–19. Pet. 1. Claim 1 is the sole
`independent claim. Ex. 1001, 35:32–36:11.
`Claim 1 is reproduced below.
`1. A method comprising:
`responsive to a first input, causing a map view to be displayed on
`an interface, the map view including:
`(i) an interactive map;
`(ii) a first location selectable thumbnail image at a first
`location on the interactive map; and
`(iii) a second location selectable thumbnail image at a
`second location on the interactive map;
`responsive to an input that is indicative of a selection of the first
`location selectable thumbnail image, causing a first location view
`to be displayed on the interface, the first location view including
`(i) a first location name associated with the first location and (ii)
`a representation of at least a portion of one digital file in a first
`set of digital files, each of the digital files in the first set of digital
`files being produced from outputs of one or more digital imaging
`devices, the first set of digital files including digital files
`associated with the first location;
`responsive to an input that is indicative of a selection of the
`second location selectable thumbnail image, causing a second
`location view to be displayed on the interface, the second
`location view including (i) a second location name associated
`with the second location and (ii) a representation of at least a
`portion of one digital file in a second set of digital files, each of
`the digital files in the second set of digital files being produced
`from outputs of the one or more digital imaging devices, the
`second set of digital files including digital files associated with
`the second location; and
`responsive to a second input that is subsequent to the first input,
`causing a people view to be displayed on the interface, the people
`view including:
`(i) a first person selectable thumbnail image including a
`representation of a face of a first person, the first person
`being associated with a third set of digital files including
`digital photographs and videos;
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`IPR2022-00222
`Patent 10,621,228 B2
`(ii) a first name associated with the first person, the first
`name being displayed adjacent to the first person
`selectable thumbnail image;
`(iii) a second person selectable thumbnail image including
`a representation of a face of a second person, the second
`person being associated with a fourth set of digital files
`including digital photographs and videos; and
`(iv) a second name associated with the second person, the
`second name being displayed adjacent to the second
`person selectable thumbnail image.
`Ex. 1001, 35:32–36:11.
`Asserted Ground of Unpatentability
`E.
`Petitioner asserts the following ground of unpatentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–19
`103
`Okamura,1 Belitz2
`Pet. 1. In addition to the references listed above, Petitioner relies on the
`Declaration of Philip Greenspun, PhD (Ex. 1003). Patent Owner submits a
`declaration of Glenn Reinman, PhD (Ex. 2001).
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a) Based on Other
`IPR Petitions
`Patent Owner requests that we exercise discretion under 35 U.S.C.
`§ 314(a) to deny institution in light of other IPR petitions filed against the
`’228 patent. Prelim. Resp. 27–38 (citing, e.g., General Plastic Co., Ltd. v.
`Canon Kabushiki Kaishaat, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017)
`(precedential) (“General Plastic”)); Prelim. Sur-reply 1–2.
`
`
`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”).
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`Patent 10,621,228 B2
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
`a matter committed to the Patent Office’s discretion.”). As with other
`non-dispositive factors considered for institution under § 314(a), the Board
`weighs factors as part of a “balanced assessment of all relevant
`circumstances in the case, including the merits.” Patent Trial and Appeal
`Board Consolidated Trial Practice Guide 58 & n.2 (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“CTPG”)
`(discussing follow-on petitions and parallel proceedings).
`In General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, the Board
`articulated a non-exhaustive list of factors to be considered in determining
`whether to exercise discretion under § 314(a) to deny a petition
`that challenges the same patent as a previous petition. IPR2016-01357
`(PTAB Sept. 6, 2017) (precedential), slip op. 9–10. The General Plastic
`factors follow:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second petition
`and the filing of the second petition;
`5. whether the petitioner provides adequate explanation
`for the time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent;
`6. the finite resources of the Board; and
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on which
`the Director notices institution of review.
`
`Id.
`
`General Plastic involved a series of petitions challenging the same
`patent as a previous series of petitions filed by the same petitioner.
`IPR2016-01357, Paper 19 at 2–3 (PTAB Sept. 6, 2017) (precedential). As
`noted by Patent Owner, “[t]he Board has extended the first [General
`Plastics] factor to different but related petitioners as well as unrelated
`petitioners” when the second petitioner is related to the first petitioner and
`when the second petitioner used the first petition as a roadmap for its
`petition. Prelim. Resp. 29 (citing Valve Corp. v. Electronic Scripting
`Products, Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential)
`(“Valve I”); Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-
`00064, Paper 10 (May 1, 2019) (“Valve II”); Ericsson Inc. v. Uniloc 2017,
`LLC, IPR2019-01550, Paper 8 at 12 (Mar. 17, 2020)).
`Patent Owner asserts that Petitioner is related to the prior petitioners,
`Unified Patents and Apple, because “[b]oth Apple and Samsung are
`members of Unified Patents.” Prelim. Resp. 30 (citing Ex. 2005 ¶¶ 15, 19–
`21, 23). Patent Owner also asserts “that Samsung used at least the Apple
`petition as roadmap for its own petition, as evidenced by the fact that
`arguments and exhibits in the Samsung petition are identical or nearly
`identical to arguments and exhibits in the Apple petition.” Id. at 33.
`Petitioner argues that it “is separate and unrelated to prior petitioners
`Unified and Apple.” Prelim. Reply 1. (citing Pet. 82–83). Petitioner
`contends that it is “unable to direct or control Unified and Apple, the parties
`are differently situated and have divergent interests” and that “a settlement
`between any one of the petitioners and MemoryWeb would not extinguish
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`the disputes for the other non-settling petitioners, and as a result, each non-
`settling party would still need to protect its own interests.” Id. at 1–2.
`Petitioner also argues that it did not use the earlier petitions as a roadmap.
`Id. at 2. In support, Petitioner contends that “any suggestion of an unfair
`tactical advantage is illusory” and that “it is not surprising that similar
`arguments may arise when mapping excellent prior art (e.g., Okamura for
`Samsung and A3UM for Apple) to identical claim limitations.” Id.
`On the record before us, we agree with Petitioner that it is not related
`to Unified Patents or Apple because there is no evidence that it controls
`Unified Patents or Apple and its interests differ from Unified Patents and
`Apple. Pet. 82–83. Further, we agree with Petitioner that there is no
`evidence that it used the prior petitions as a roadmap because the instant
`Petition relies upon a different combination of prior art references than the
`prior petitions and because, in the case of Unified Patents’ petition, it
`challenges a different set of claims.
`The facts of this case are distinguishable from the facts of Valve I,
`Valve II, and Ericson. We decline to extend General Plastic to cover the
`facts of this case and need not consider the General Plastic factors further.
`According, we do not exercise discretion under 35 U.S.C. § 314(a) to deny
`institution of the instant Petition based on the filing of other IPR petitions
`challenging the ’228 patent.
`B. Discretionary Denial Under 35 U.S.C. § 314(a) in Based on
`Parallel Proceeding
`Patent Owner also requests that we exercise discretion under 35
`U.S.C. § 314(a) to deny institution in view of parallel litigation. Prelim.
`Resp. 39–45 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`IPR2022-00222
`Patent 10,621,228 B2
`Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)); Prelim. Sur-reply
`2–4.
`
`Fintiv sets forth the factors that we weigh in determining whether to
`exercise our discretion to deny institution of the inter partes review
`proceeding here under 35 U.S.C. § 314(a). See Fintiv, Paper 11 at 5–6.
`These factors are:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. “These factors relate to whether efficiency, fairness, and the merits
`support the exercise of authority to deny institution in view of an earlier trial
`date in the parallel proceeding.” Id. at 6. “[T]he Board takes a holistic view
`of whether efficiency and integrity of the system are best served by denying
`or instituting review.” Id.
`For the reasons discussed below, we decline to exercise our discretion
`to deny institution under 35 U.S.C. § 314(a).
`1. Whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted.
`Fintiv Factor 1 recognizes that a stay of litigation pending resolution
`of a PTAB trial allays concerns about inefficiency and duplication of efforts,
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`which strongly weighs against exercising the authority to deny
`institution. Fintiv, Paper 11 at 6.
`No motion for stay has been filed in the co-pending district court case.
`Pet. 88; Prelim. Resp. 40. Both parties assert that this factor is neutral. Id.
`We agree that this factor does not weigh for or against denying institution.
`Proximity of the court’s trial date to the Board’s
`2.
`projected statutory deadline for a final written decision.
`Fintiv Factor 2 looks to the “proximity of the court’s trial date to the
`Board’s projected statutory deadline.” Fintiv, Paper 11 at 9. “If the court’s
`trial date is earlier than the projected statutory deadline, the Board generally
`has weighed this fact in favor of exercising authority to deny institution
`under NHK.” Id.
`Petitioner asserts that the earliest trial date is June 3, 2022. Pet. 88.
`Patent Owner admits that “[t]he statutory deadline for the final written
`decision will be approximately the same time as the trial (June 30, 2023)”
`and submits that this factor is neutral. Prelim. Resp. 41 (citing Ex. 1030, 5).
`Given the proximity between the earliest trial date and the statutory deadline
`for our final written decision, we agree with Patent Owner that this factor
`does not weigh for or against denying institution.
`Investment in the parallel proceeding by the court and
`3.
`the parties.
`Fintiv Factor 3 considers the “investment in the parallel proceeding by
`the court and parties,” including “the amount and type of work already
`completed in the parallel litigation by the court and the parties at the time of
`the institution decision.” Fintiv, Paper 11 at 9.
`Patent Owner asserts that “there will be significant investment in the
`parallel proceedings by the Court and [itself] before the institution decision
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`deadline,” because “the court has scheduled its Markman hearing for June 3,
`2023, which is prior to the Board’s deadline for issuing the institution
`decision concerning this petition.” Prelim. Resp. 42 (citing Ex. 1030).
`Petitioner disagrees noting that as of the time of filing of the instant Petition,
`“[n]o substantive orders have been issued by the court, no depositions have
`been taken, and fact and expert discovery have not begun.” Pet. 89.
`Although, the Markman hearing is scheduled to be held before we
`issue this decision, much work —such as fact and expert discovery— still
`remains to be done in the district court case. Ex. 1030, 3–5. Thus, we
`conclude that this factor weighs against exercising discretion to deny
`institution.
`
`Overlap between issues raised in the petition and in the
`4.
`parallel proceeding.
`Fintiv Factor 4 considers whether “the petition includes the same or
`substantially the same claims, grounds, arguments, and evidence as
`presented in the parallel proceeding.” Fintiv, Paper 11 at 12. If the issues in
`the Petition overlap substantially with those raised in the parallel proceeding,
`“this fact has favored denial.” Id. “Conversely, if the petition includes
`materially different grounds, arguments, and/or evidence . . . this fact has
`tended to weigh against exercising discretion to deny institution.” Id. at
`12–13.
`Concerns about the degree of overlap may be mitigated where a
`petitioner agrees not to pursue in the parallel district court litigation the
`grounds advanced in the petition. Sand Revolution II, LLC v. Continental
`Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 11–12, 12 n.5
`(PTAB June 16, 2020) (informative). A petitioner stipulating not to pursue
`“any ground raised or that could have been reasonably raised” weighs
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`strongly in favor of not exercising discretionary denial. Sotera Wireless,
`Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1,
`2020) (precedential as to § II.A) (“Sotera”)).
`Petitioner asserts that it “has eliminated risk of duplicated effort by
`voluntarily stipulating to counsel for [Patent Owner] that, if the Board
`institutes an IPR based on this petition, Samsung will not pursue district
`court invalidity challenges based on the primary reference asserted in this
`petition.” Pet. 90 (citing Ex. 1037; Tide v. UPL (IPR2020-01113).
`Patent Owner asserts that “the arguments and references in the
`Petition substantially overlap with those at issue in the parallel district court
`litigation.” Prelim. Resp. 43. Patent Owner also asserts that because
`Petitioner’s stipulation “is narrowly drawn to only the grounds in the
`petition” it “does not cover any of the other grounds that Samsung raised or
`could have raised” and therefore, “does not ensure that this inter partes
`review is a “true alternative” to the district court proceeding.” Id. at 44
`(citing Ex. 1037; Ex. 2014; Sotera, IPR2020-01019, Paper 12 at 19). Patent
`Owner also points out that Petitioner “presents eleven additional grounds for
`invalidity in its invalidity contentions which are not covered by the
`stipulation.” Prelim. Sur-reply 3 (citing Ex. 2014, p. 30).
`The question before us for this factor, however, is not whether the
`stipulation covers all grounds in the district court proceeding, but whether it
`covers all grounds in the Petition which overlap with grounds raised in the
`district court. We find Petitioner’s proposed stipulation to be broader than
`the stipulation in Sand Revolution II, LLC v. Continental Intermodal Group
`– Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020)
`(informative), because Petitioner’s stipulation includes any grounds
`involving Okamura, and not just the grounds asserted in the Petition.
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`Ex. 1037. This stipulation mitigates concerns regarding duplicative efforts
`and potentially conflicting decisions. Thus, this factor weighs in favor of
`not exercising discretion to deny institution.
`5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party.
`Fintiv Factor 5 looks to “whether the petitioner and the defendant in
`the parallel proceeding are the same party.” Fintiv, Paper 11 at 14. “If a
`petitioner is unrelated to a defendant in an earlier court proceeding, the
`Board has weighed this fact against exercising discretion to deny
`institution.” Id. at 13–14.
`The parties in the district court litigation and this proceeding are the
`same. Pet. 90; Prelim. Resp. 44. Thus, this factor weighs in favor of not
`exercising discretion to deny institution.
`Other circumstances that impact the Board’s exercise of
`6.
`discretion, including the merits.
`Fintiv Factor 6 looks to whether “other circumstances” exist that
`might “impact the Board’s exercise of discretion, including the merits.”
`Fintiv, Paper 11 at 14.
`Patent Owner asserts that “Petitioner has failed to meet its burden to
`demonstrate a likelihood of success on the merits for any ground.” Prelim.
`Resp. 44 (citing id. at 46–683). Petitioner contends that “[t]he merits of this
`petition are particularly strong.” Pet. 91.
` We do not express a view on the strength of Petitioner’s substantive
`case other than our determination that, at this stage, Petitioner has
`demonstrated a reasonable likelihood of succeeding with respect to the
`
`
`3 Patent Owner cites § VII of its Preliminary Response, however, it discusses
`the alleged flaws in Petitioner’s challenges in § VIII (i.e. pp. 46–83).
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`patentability of at least one claim. This factor does not weigh for or against
`exercising discretion to institute in this case.
`Conclusion on Discretionary Denial under 35 U.S.C.
`7.
`§ 314(a)
`We consider the above factors and take “a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review.” Fintiv, Paper 11 at 6. Although there has been some
`investment in the district court litigation, and no stay has been granted, other
`factors weigh more heavily against exercising discretion to deny institution.
`In particular, the fact that the final written decision in this proceeding is due
`at approximately the same time as the earliest trial date in the district court
`proceeding, and that Petitioner has demonstrated a reasonable likelihood of
`succeeding with respect to at least one claim, persuade us not to exercise
`discretion under § 314(a) to deny institution.
`Based on a holistic review of the Fintiv factors, we decline to exercise
`our discretion under § 314(a) to deny institution.
`Level of Ordinary Skill in the Art
`C.
`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 ’228 patent would have had the following education
`and experience:
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`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.
`Pet. 2 (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).
`D. Claim Construction
`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. 1–2, 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)).
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`E. 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 (45), (54). Okamura describes an information
`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
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`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.
`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
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`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.
`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 include