IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Desmond et al.
`In re Patent of:
`10,621,228 Attorney Docket No.: 39843-0117IP1
`U.S. Patent No.:
`April 14, 2020
`Issue Date:
`Appl. Serial No.: 16/578,238
`Filing Date:
`September 20, 2019
`Title:
`METHOD AND APPARATUS FOR MANAGING DIGITAL
`FILES
`
`SECOND DECLARATION OF DR. PHILIP GREENSPUN
`
`Declaration
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable under Section 1001 of Title 18 of
`
`the United States Code.
`
`Dated:
`
`12/13/2022
`
`By: ________________________________
`
`Philip Greenspun, Ph.D.
`
`1
`
`SAMSUNG 1041
`SAMSUNG v. MEMORYWEB
`IPR2022-00222
`
`
`
`Desmond et al.
`In re Patent of:
`10,621,228 Attorney Docket No.: 39843-0117IP1
`U.S. Patent No.:
`April 14, 2020
`Issue Date:
`Appl. Serial No.: 16/578,238
`Filing Date:
`September 20, 2019
`Title:
`METHOD AND APPARATUS FOR MANAGING DIGITAL
`FILES
`
`SECOND DECLARATION OF DR. PHILIP GREENSPUN
`
`Declaration
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable under Section 1001 of Title 18 of
`
`the United States Code.
`
`Dated:
`
`12/13/2022
`
`By: ________________________________
`
`Philip Greenspun, Ph.D.
`
`1
`
`SAMSUNG 1041
`SAMSUNG v. MEMORYWEB
`IPR2022-00222
`
`
`
`Contents
`
`
`I. GROUND 1 RENDERS OBVIOUS THE CHALLENGED CLAIMS ............................. 3
`A. Claim Construction ............................................................................................................ 3
`B. The Okamura-Belitz Combination ................................................................................... 7
`1. The Okamura-Belitz combination discloses “responsive to a second input...causing a
`people view to be displayed...the people view including:...a first name” ............................... 7
`2. The Okamura-Belitz combination discloses “the people view including:...a first
`name...[and]...a second name” ................................................................................................ 8
`3. The Okamura-Belitz combination discloses “a [first/second] location selectable thumbnail
`image at a [first/second] location on the interactive map” .................................................... 9
`4. The Okamura-Belitz combination renders obvious dependent claims 18 and 19 .............. 16
`II. CONCLUSION .................................................................................................................... 17
`
`
`
`
`
`
`
`2
`
`
`
`
`1.
`
`This Declaration expands on the conclusions that I have formed based on my
`
`analysis provided in my first declaration (SAMSUNG-1003, which is incorporated
`
`herein by reference in its entirety; “Original Declaration”) and does so in response
`
`to new arguments raised by Patent Owner. Consistent with my findings provided
`
`in my Original Declaration, and based upon my knowledge and experience and my
`
`review of the prior art publications listed above, a POSITA would have found that
`
`claims 1-19 (“the Challenged Claims”) of the ’228 patent are rendered obvious by
`
`at least the combination of as set forth in my Original Declaration.
`
`
`
`I.
`
`GROUND 1 RENDERS OBVIOUS THE CHALLENGED
`CLAIMS
`As I further clarify below in response to Patent Owner’s arguments, claims
`
`2.
`
`1-19 are rendered obvious by the combination of Okamura and Belitz.
`
`
`
`3.
`
`A. Claim Construction
`In the Patent Owner Response (“POR”), Patent Owner provides arguments
`
`related to the interpretation of certain claim terms that I do not agree with and that
`
`are further inconsistent with the Board’s findings in the Institution Decision.
`
`4.
`
`First, Patent Owner appears to argue that being “responsive to” (the first
`
`event) requires the second event to occur “‘automatically’ in relation to the first
`
`3
`
`
`
`event without ‘requiring further user interaction.’” POR, 11. To support this
`
`position, Patent Owner cites FIG. 32 of the ’228 patent and argues that pressing
`
`“People” (1401) displays the People Application View without the need for “any
`
`further ‘user interaction.’” Id., 13. I do not agree that this illustration from the
`
`’228 patent supports Patent Owner’s position.
`
`5.
`
`Rather, as I show below, the people view that gets shown to the user can
`
`require not only the initial pressing of “People” (1401) (shown in red) but also the
`
`additional selection of a desired display order through the selection in a drop-down
`
`list (1402) (shown in purple). SAMSUNG-1001, FIG. 32, 22:59-67.
`
`SAMSUNG-1001, FIG. 32 (annotated)
`
`6.
`
`That is, the ’228 patent itself contemplates having intermediate user actions
`
`between the first event (i.e., “cause”) and the second event (i.e., “effect”). Thus,
`
`people view displays that are shown as a direct result of the drop-down selection
`
`
`
`4
`
`
`
`are still “responsive to” and would not have occurred apart from the initial pressing
`
`of “People” (1401).
`
`7.
`
`As I’ve consistently stated, including in my deposition, a POSITA would
`
`have recognized that the term “responsive to” merely requires the second event to
`
`happen “subsequent to” the first event based on a combination of user interaction
`
`and software implementation. EX-2002, 42:21-44:22, 51:9-52:13.
`
`8.
`
`For at least these reasons, being “responsive to” the first event does not
`
`require the second event to always occur automatically while precluding any
`
`further user interaction.
`
`9.
`
`Second, regarding the old and obvious notion of putting captions next to
`
`photos, Patent Owner appears to be arguing that “the people view including: ... a
`
`first name ... [and] ... a second name” requires displaying both the “first name” and
`
`the “second name” at the exact same time. POR, 14.
`
`10.
`
`Indeed, there is nothing in the specification or the claims of the ’228 patent
`
`that indicates that such simultaneity is required. And while the example
`
`illustration provided in FIG. 32 of the ’228 patent seems to show both a first name
`
`and a second name at the same time, nothing in the ’228 patent requires both
`
`names to be together visible to the user at all times. Contrary to Patent Owner’s
`
`assertions, I never provided any opinion to suggest as much, and Dr. Reinman, as I
`
`5
`
`
`
`understand, couldn’t say whether momentarily hiding one of the names in FIG. 32
`
`would still fall under the claim scope. See SAMSUNG-1040, 57:24-58:14.
`
`11. There is nothing in the claim language of the ’228 patent to suggest that the
`
`first name and the second name must both be simultaneously visible to the user at
`
`all times. Indeed, as the Board pointed out, the claim merely requires that the first
`
`name be displayed at some unspecified time and that the second name also be
`
`displayed at some unspecified time.
`
`12.
`
`It’s also worth pointing out that the claim language says that what is being
`
`displayed responsive to the input is the “people view.” The claim doesn’t say that
`
`everything that’s part of the people view must all be visible. FIG. 32 of the ’228
`
`patent, for example, has an “Items Per Page” button that determines how many of
`
`the photos are visible at one time. That is, although there may be other photos that
`
`are part of the “people view,” such photos are not visible until the user additionally
`
`clicks on these buttons.
`
`13. Third, for claim 18, Patent Owner appears to argue that being “responsive to
`
`an input” requires the direct and automatic display of “the first name” and “a
`
`representation of each digital file...” with no other additional user input permitted.
`
`POR, 18. For reasons similar to what I discussed above, there is nothing in the
`
`’228 patent to suggest that being “responsive to an input” means that all
`
`6
`
`
`
`subsequent events that are enabled by said input must always occur automatically
`
`and while precluding all subsequent user interaction.
`
`
`
`B.
`The Okamura-Belitz Combination
`14. As I previously explained in the Original Declaration, Okamura in view of
`
`Belitz renders obvious claims 1-19 of the ’228 patent.
`
`1.
`
`The Okamura-Belitz combination discloses “responsive
`to a second input...causing a people view to be
`displayed...the people view including:...a first name”
`15. For reasons I discussed above, “responsive to” should not be narrowly
`
`construed to exclude additional user input—e.g., mouse hovering—that may take
`
`place. And as I previously explained, Okamura-Belitz discloses “responsive to a
`
`second input...causing a people view to be displayed...the people view
`
`including:...a first name.” SAMSUNG-1003, [133]-[143]. In particular, the use of
`
`mouse hovering to obtain “‘pieces of information’ a user might otherwise have to
`
`click to get” is a well-known strategy commonly employed to provide the user with
`
`the desired result without cluttering the screen with excessive content. This is at
`
`best a design choice for a POSITA and may depend on, for example, the resolution
`
`of the particular screen on which content is being displayed. SAMSUNG-1003,
`
`[77].
`
`7
`
`
`
`16. Additionally, even if mouse hovering were to be excluded by this claim
`
`(which I strongly disagree with), I’ve previously explained that been obvious, in
`
`Okamura-Belitz, to “display the name adjacent to the first person electable
`
`thumbnail image” without additional mouse hovering because a POSITA would
`
`have recognized that doing so can help “allow[] the user to avoid confusion on
`
`which face index belongs to whom.” SAMSUNG-1003, [143]. As I stated during
`
`my deposition, whether to show captions all the time or only just part of the time is
`
`simply a matter of “design choice and maybe a function of user preference.” EX-
`
`2022, 132:6-12. And while Patent Owner appears to suggest that showing too
`
`many names may somehow be at odds with Okamura’s desire for clutter-free
`
`design, a POSITA designing such software systems would be more than capable of
`
`doing so in a way that is not congested and easy to view.
`
`2.
`
`The Okamura-Belitz combination discloses “the people
`view including:...a first name...[and]...a second name”
`17. Again, for reasons I stated above, simultaneous display of first and second
`
`names is not required by the claims of the ’228 patent. Based on this reason alone,
`
`this limitation is satisfied by the Okamura-Belitz combination.
`
`18. Additionally, as I previously explained, it would have further been obvious,
`
`in Okamura-Belitz, to “display the name adjacent to the first person electable
`
`thumbnail image” without additional mouse hovering because a POSITA would
`
`have recognized that doing so can help “allow[] the user to avoid confusion on
`
`8
`
`
`
`which face index belongs to whom.” SAMSUNG-1003, [143]-[144]. As I stated
`
`during my deposition, whether to show all the names all the time or only just part
`
`of the time is simply a matter of “design choice and may be a function of user
`
`preference.” EX-2022, 132:6-12.
`
`19. Also, as I explained above and previously in my Original Declaration, an
`
`alternative design of Okamura that may slightly increase its congestion level does
`
`not automatically undermine a reason to modify because a POSITA would have
`
`nevertheless been able to weigh potential benefits associated with levels of
`
`congestion, for instance recognizing doing so could allow the user to further “avoid
`
`confusion.” SAMSUNG-1003, [143].
`
`3.
`
`The Okamura-Belitz combination discloses “a
`[first/second] location selectable thumbnail image at a
`[first/second] location on the interactive map”
`In my original declaration, I explained in detail, using three possible
`
`20.
`
`combinations/mappings, why the Okamura-Belitz combination renders obvious
`
`this feature. See SAMSUNG-1003, [86]-[101], [113]-[121].
`
`21. Patent Owner argues, among other things, that a POSITA would not have
`
`been motivated to modify Okamura with Belitz because “none of Belitz’s
`
`thumbnails...convey geographical information....” POR, 34. Even if that were the
`
`case, a POSITA would still have been motivated to combine Okamura and Belitz
`
`to obtain “additional benefits” that I previously discussed. SAMSUNG-1003,
`
`9
`
`
`
`[88]-[92]. For example, to further advance Okamura’s objective of better
`
`managing digital contents, the proposed combination “enhances a user experience
`
`of ‘discern[ing] between the various objects’ by providing ‘a good view of what
`
`location is associated with what.’” SAMSUNG-1003, [89] (citing SAMSUING-
`
`1005, [0091], SAMSUNG-1006, [0002]).
`
`22. Okamura by itself offers multiple ways of browsing through a photo
`
`collection. As the system is built from software, it is obvious to a POSITA that an
`
`enhanced capability can be added either as an additional screen or page (way of
`
`browsing) or a modification to an existing screen or page. Even if the benefits
`
`obtained by incorporating Belitz’s thumbnails into a screen of Okamura were to
`
`come at the expense of some other benefit offered by Okamura, a POSITA
`
`pursuing the combination would have nevertheless been capable of weighing
`
`potential benefits associated with each, for instance recognizing that the benefits of
`
`viewing location-specific thumbnail images may be achieved in one instance and
`
`those of viewing location-specific cluster maps may be achieved in another.
`
`23. Furthermore, contrary to Patent Owner’s assertions, Belitz’s thumbnails and
`
`Okamura’s cluster maps are functionally equivalent in the sense that they both
`
`convey geographical information. In fact, Dr. Reinman seems to agree with me,
`
`for instance noting during deposition that “[Belitz] shows the association of at least
`
`some pictures with the geographic location on the map depending on how many
`
`10
`
`
`
`thumbnails it’s currently presenting....” SAMSUNG-1040, 107:10-22. He further
`
`acknowledged that replacing cluster maps with thumbnails would not result in the
`
`loss of “all geographic context.” Id., 114: 8-15.
`
`24. Patent Owner further argues that the proposed combination of Okamura and
`
`Belitz “carries the same noted disadvantages as the ‘related art’ references
`
`(Fujiwara and Takakura)” mentioned in Okamura. POR, 35-36. However, in both
`
`Fujiwara and Takakura, it can be difficult to grasp the geographical
`
`correspondence between digital files because their thumbnails are not placed
`
`directly on the map. See EX-2002, FIG. 12; EX-2020, FIG. 1. In contrast, it is not
`
`difficult to grasp the geographical correspondence between digital files in Believe
`
`because, for example, a user looking at Belitz’s FIG. 4b can easily understand
`
`which location the thumbnail 410b is associated with and which location the
`
`thumbnail 410c is associated with. See SAMSUNG-1006, FIGS. 4a-4b. Thus, the
`
`alleged problems with Fujiwara and Takakura that “may make it difficult to grasp
`
`the geographical correspondence” of their images are not present in the same way
`
`in Belitz.
`
`25. Patent Owner also argues that the Okamura-Belitz goes against Belitz’s
`
`stated objectives of reducing overlap because “at least some of graphical objects
`
`from Belitz overlaps on the map” and, as support, provides a cropped reproduction
`
`of an illustration I originally provided in the Original Declaration:
`
`11
`
`
`
`
`
`POR, 42
`
`26. However, a portion of my illustration that was not shown by Patent Owner
`
`clearly shows that the combination can be achieved without any overlap:
`
`SAMSUNG-1003, [88] (partial)
`
`
`
`27. Patent Owner also argues that “Belitz’s thumbnails reduce the ability to
`
`provide a view of ‘what location is associated with what.’” POR, 43-46. In fact, I
`
`previously explained in my Original that incorporating the thumbnails of Belitz
`
`into Okamura would have resulted in the “added functionality that allows a user to
`
`preview pictures associated with a given location” and do so in a manner that
`
`allows the user to more “clearly see the associations.” SAMSUNG-1003, [90]-
`
`12
`
`
`
`[91]. That is, instead of having to click on individual clusters as in Okamura to
`
`ascertain which pictures are associated with which locations, Belitz provides a
`
`easy-to-implement way for Okamura to provide such information all at once for
`
`multiple locations on the map.
`
`28. Patent Owner also argues that “Okamura already allows a user to ‘preview
`
`pictures.’” POR, 46. But as I explained above, the incorporation of Belitz’s
`
`thumbnails allows the user to quickly associate multiple preview pictures with
`
`multiple locations on the map without having to individually navigate through each
`
`of the clusters. Therefore, the combination of Okamura and Belitz helps improve
`
`user experience and overall content awareness by providing the user with a
`
`preview of the digital files associated with multiple corresponding locations. Thus,
`
`the proposed combination of Okamura and Belitz provides a known and
`
`predictable alternative to displaying and managing digital content in a manner that
`
`can help improve user experience.
`
`29. Lastly with regard to my “first combination,” Patent Owner asserts that
`
`Petitioner has “failed to demonstrate that the first combination (based on
`
`Okamura’s second embodiment) would have been used with Okamura’s FACE
`
`index screen 410”. POR, 50. But as I explained previously, “Okamura discloses
`
`or renders obvious that the second input of displaying the face-based index screen
`
`is subsequent to the first input of displaying a map view screen.” SAMSUNG-
`
`13
`
`
`
`1003, [133]-[138]. That is, even if Okamura were to not explicitly disclose this
`
`transition, a POSITA certainly would have found it to be obvious.
`
`30. Regarding my first alternative combination (“second combination”), Patent
`
`Owner argued that incorporating Belitz into Okamura would not be desirable to a
`
`POSITA because “much of the information shown in FIG. 41 of Okamura would
`
`be lost if it were displayed according to Belitz.” POR, 55. Patent Owner provides
`
`the following modified drawing of Okamura to illustrate the alleged loss of
`
`geographical information:
`
`POR, 55-56
`
`
`
`31. But Patent Owner appears to have added a large and opaque border around
`
`Belitz’s thumbnail images in an attempt to exaggerate the alleged loss of
`
`geographical information. No such borders are present in Belitz, and even if such
`
`a border were to be originally present, a POSITA would certainly know how to
`
`14
`
`
`
`reduce clutter through simple design changes, which including minimizing any
`
`obtrusive/unnecessary borders that may exist. Adjusting a computer display to
`
`reduce clutter, often depending on the map scale and the size of the underlying
`
`database, was conventional for a POSITA.
`
`32. And as I also explained previously, the second combination can help
`
`improve user experience and content awareness by providing the user with a
`
`preview of the digital files associated with the corresponding location. See
`
`SAMSUNG-1003, [87], [93]-[101]. A POSITA would have been able to weigh
`
`potential benefits associated with each of cluster maps and thumbnails to help
`
`achieve the desired user experience and convenience for the particular dataset,
`
`zoom level, etc.
`
`33. Regarding my second alternative combination (“third combination”), Patent
`
`Owner states that a POSITA would not have eliminated cluster maps and that
`
`additional problems may occur at different zoom levels. POR, 57-59. However, as
`
`I previously explained, a POSITA would have known to combine Okamura and
`
`Belitz using known programming techniques and, if needed, make simple software
`
`modifications to implement in a predictable manner. See SAMSUNG-1003, [96]-
`
`[97]. Among other things, if the Okamura-Belitz combination were to work less
`
`effectively at certain map scales, a POSITA would certainly know how to adjust
`
`the display of Okamura-Belitz depending on the zoom level. For instance, for a
`
`15
`
`
`
`zoomed-out map, the display shown in Okamura’s FIG. 41 may be preferred. For
`
`a zoomed-in map, on the other hand, the incorporation of Belitz’s thumbnails may
`
`be preferred. These are simple design choice decisions that a POSITA would have
`
`considered. Software like the one in Okamura and Belitz is not like a mechanical
`
`system where replacing one part with another precludes that one part from
`
`continuing to be in the same physical space.
`
`4.
`
`The Okamura-Belitz combination renders obvious
`dependent claims 18 and 19
`34. Regarding dependent claims 18 and 19, Patent Owner argues that Okamura
`
`is deficient because “the view of ‘FIG. 24 ... is displayed when the mouse is place
`
`over [a] face portion.’” POR, 62. However, for reasons explained, being
`
`“responsive to” the first event does not require the second event to always occur
`
`automatically without further user interaction. For at least this reason, Patent
`
`Owner’s arguments regarding claims 18 and 19 are incorrect.
`
`35. And as I previously explained in my Original Declaration, a POSITA would
`
`have found it obvious to always display the first name (e.g., next to the image 461
`
`adjacent to the face) to improve recognition of the first person. SAMSUNG-1003,
`
`[189]. Indeed, whether to show certain text all the time or only just part of the time
`
`is simply a matter of “design choice and maybe a function of user preference.”
`
`EX-2022, 132:6-12.
`
`
`
`16
`
`
`
`II. CONCLUSION
`I reserve the right to supplement my opinions to address any information
`
`36.
`
`obtained, or positions taken, based on any new information introduced throughout
`
`this proceeding.
`
`37.
`
`I declare under penalty of perjury that the foregoing is true and accurate to
`
`the best of my ability.
`
`17
`
`
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