`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 PATENT OWNER’S RESPONSE
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`Proceeding No. IPR2022-00222
`Attorney Docket No: 39843-0117IP1
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`TABLE OF CONTENTS
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`I. INTRODUCTION .................................................................................................. 1
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`II. CLAIM CONSTRUCTION .................................................................................. 2
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`III. GROUND 1 RENDERS OBVIOUS THE CHALLENGED CLAIMS ............ 10
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`VIII. SAMSUNG IS NOT AN RPI IN A RELATED PROCEEDING .................. 24
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`VIII. CONCLUSION ............................................................................................... 25
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`i
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`Proceeding No. IPR2022-00222
`Attorney Docket No: 39843-0117IP1
`UPDATED EXHIBIT LIST
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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 No: 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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`SAMSUNG-1039 RESERVED
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`iii
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`Proceeding No. IPR2022-00222
`Attorney Docket No: 39843-0117IP1
`SAMSUNG-1040 Transcript of the deposition of Dr. Glenn Reinman dated
`November 16, 2022
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`SAMSUNG-1041 Second Declaration of Dr. Philip Greenspun
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`SAMSUNG-1042 Adam C. Engst, Visual Quickstart Guide iPhoto ’09 (2009)
`(“Engst”)
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`SAMSUNG-1043 U.S. Patent App. Pub. No. 2009/0196510 (“Gokturk”)
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`iv
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`Proceeding No. IPR2022-00222
`Attorney Docket No: 39843-0117IP1
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`I. INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner” or “Samsung”) submits this
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`Reply to Patent Owner’s Response (“POR”) to the Petition for inter partes review
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`(“IPR”) of U.S. Patent No. 10,621,228 (the ’228 patent”) filed by MemoryWeb,
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`LLC (“Patent Owner” or “MemoryWeb”).
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`The POR arguments fail when longstanding legal principles are properly
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`applied to the factual record developed in this proceeding. The Board should reject
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`the POR arguments as they are inconsistent with, mischaracterize, and, at times,
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`ignore the teachings of the cited art, the arguments presented in the Petition, and
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`the evidence of record. In particular, MemoryWeb’s overly narrow and
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`unsupported constructions for the terms “responsive to [an] input” and “the people
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`view including: … a first name … [and] … a second name” are inconsistent with
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`the specification of the ’228 patent and the understanding of a POSITA.
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`Furthermore, Patent Owner ignores and/or mischaracterizes the teachings of
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`Okamura and Belitz to hastily push through their flawed rationale against the
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`combination.
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`In its Institution Decision, the Board found that Petitioner established a
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`reasonable likelihood that claims 1-19 (“the Challenged Claims”) of the ’228
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`patent are unpatentable. As explained herein, the POR arguments fail to rebut the
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`positions advanced in the Petition. See also SAMSUNG-1041, [1]-[37]. Thus, the
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`1
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`Board’s original reasoning and conclusions from its Institution Decision still hold.
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`Accordingly, the Board should issue a Final Written Decision finding the
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`Challenged Claims unpatentable.
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`II. CLAIM CONSTRUCTION
`In the Institution Decision (Paper 12), the Board agreed with Petitioner in
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`noting that “no claim terms requires express construction...” for purposes of
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`institution. Institution Decision, 18.
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`Yet Patent Owner, while on one hand alleging that they likewise “do[] not
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`believe claim construction is required because the plain and ordinary meanings of
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`relevant terms are clear,” focuses the vast majority of its POR arguments on a
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`handful of improperly narrow constructions that are contradicted by the testimony
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`of both experts as well as the ’228 patent itself.
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`First, with respect to claim elements [1g] and [1i], Patent Owner contends
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`that the phrase “responsive to” requires the second event to occur “‘automatically’
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`in relation to a first event without ‘requiring further user interaction.’” POR, 11.
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`For support, Patent Owner points to FIG. 32 of the ’228 patent (reproduced below)
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`and contends that pressing “People” (1401) displays the People Application View
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`without the need for “any further ‘user interaction.’” Id., 13.
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`SAMSUNG-1001, FIG. 32 (annotated)
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`However, as Dr. Greenspun explained during his deposition, a POSITA
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`would have recognized that the term “responsive to” merely requires the second
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`event to happen “subsequent to” the first event based on a combination of user
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`interaction and software implementation. EX-2002, 42:21-44:22, 51:9-52:13; see
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`also SAMSUNG-1041, [3]-[8].
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`Indeed, even in the above-mentioned Patent Owner example from the ’228
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`patent, the people view that is ultimately shown to the user entails not only the
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`initial pressing of “People” (1401) (shown in red above), but further the additional
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`selection of a desired display order via a drop-down list (1402) (shown in purple
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`above). See SAMSUNG-1001, FIG. 32, 22:59-67; SAMSUNG-1041, [5]. In other
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`words, contrary to Patent Owner’s assertions, even the ’228 patent itself
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`contemplates having intermediate user actions between the first event (i.e.,
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`“cause”) and the second event (i.e., “effect”). SAMSUNG-1041, [6].
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`When asked during deposition about the possibility of having this
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`intermediate drop-down selection, Patent Owner’s expert Dr. Reinman
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`acknowledged that it would be “possible.” SAMSUNG-1040, 30:19-32:3; 26:23-
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`27:17; 52:3-23; 55:6-56:1. People view displays that are shown as a direct result
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`of the drop-down selection are nevertheless “responsive to” and would not have
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`occurred apart from the initial pressing of “People” (1401). SAMSUNG-1041, [6].
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`In short, being “responsive to” the first event does not require the second event to
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`always occur “automatically” without “further user interaction,” as Patent Owner
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`contends, and the ’228 patent provides no reason to add these words into the
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`claims. POR, 11; SAMSUNG-1041, [7]-[8].
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`Second, with respect to claim elements [1g], [1i], and [1k], Patent Owner
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`again attempts to read limitations into the claims, contending that “the people view
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`including: ... a first name ... [and] ... a second name” requires the simultaneous
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`display of both the “first name” and the “second name.” POR, 14. In so doing,
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`Patent Owner has failed to provide any credible reason to dispel the construction
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`set forth in the Institution Decision, namely that the claim does not require
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`“simultaneous display of the first and second names” and instead simply requires
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`that “the first name be displayed at some unspecified time and that the second
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`name be displayed at some unspecified time.” Institution Decision, 28.
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`That is, Patent Owner rehashes the same argument it made in the POPR,
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`again without any credible evidence.1 When asked during deposition why he
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`thought the claim required simultaneous display of both names, Dr. Reinman
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`repeatedly stated that “it is implied.” SAMSUNG-1040, 65:12-19; see also id.,
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`66:2-67:2. But he could not point to a single instance in the specification or the
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`figures of the ’228 patent to support this alleged implication.
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`The only specification support cited by Patent Owner for this overly narrow
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`interpretation appears to be the ’228 patent’s FIG. 32 and its accompanying
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`description. See POR, 17. Although the example provided in FIG. 32 seems to
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`show both a first name and a second name at the same time, nothing in the ’228
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`patent requires both names to be together visible to the user at all times.
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`SAMSUNG-1041, [9]-[10]. In fact, when asked during deposition whether FIG.
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`32 would still correspond to the display of both names if one of the names
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`happened to be momentarily hidden from view, which could happen for various
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` Patent Owner contends in the POR that Dr. Greenspun somehow agreed with
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`their construction regarding the requirement for simultaneous display. See POR,
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`16. This is simply not true; none of the cited portions from Dr. Greenspun’s
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`testimony mentions anything about the simultaneous display of the two names.
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`See id.
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`5
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`reasons under real-life conditions, Dr. Reinman could not give an answer and
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`instead deflected by saying that it is “not something [he] formed an opinion on[.]”
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`SAMSUNG-1040, 57:24-58:14; SAMSUNG-1041, [10].
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`As Dr. Greenspun clarifies, “[t]here is nothing in the claim language of the
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`’228 patent to suggest that the first name and the second name must both be
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`simultaneously visible to the user at all times.” As the Board pointed out, the
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`claim merely requires that the first name be displayed at some unspecified time and
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`that the second name also be displayed at some unspecified time.” SAMSUNG-
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`1041, [11].
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`Third, with respect to claim 18, Patent Owner appears to contend, similar to
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`the “responsive to” discussion above, that “responsive to an input” requires the
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`direct and automatic display of “the first name” and “a representation of each
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`digital file...” with no other additional user input being permitted. POR, 18;
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`SAMSUNG-1041, [13]. For reasons similar to those discussed above, there is
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`nothing in the ’228 patent or in the testimony of Dr. Reinman to suggest that being
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`“responsive to an input” means that all subsequent events that are enabled by said
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`input must always occur automatically and without further user interaction.
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`SAMSUNG-1041, [13].
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`Additionally, in contravention to Patent Owner’s narrow interpretations
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`above, the claim language at issue merely recites displaying a “view” (e.g.,
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`“people view,” “first person view”) responsive to an input. The claim language
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`does not state that everything associated with the view is displayed responsive to
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`the input – it states that the view is displayed responsive to the input and that the
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`view includes various pieces of information. To illustrate, FIG. 32 of the ’228
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`patent shows an example of a “people view” where certain photos are shown.
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`However, the interface includes an “Items Per Page” button that controls how
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`many of the available photos are shown at one time to a user. SAMSUNG-1041,
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`[12].
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`SAMSUNG-1001, FIG. 32 (annotated)
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`In other words, although there may be other photos that are part of the
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`“people view” of FIG. 32, such photos are not displayed simultaneously with all
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`other photos and are not visible until the user clicks on additional buttons. Id.,
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`FIG. 32, 22:59-23:11 (“The first People Application View (1400) is used to
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`display all the people that were created within the user’s Application.”). In fact,
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`the ’228 patent describes several different mechanisms for limiting the display of
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`a view to only a portion of the information described as being included in the
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`view. See SAMSUNG-1001, 6:24-26, FIG. 6 (showing arrows that display
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`additional thumbnails of people included in the people view); 6:58-65, FIG. 13
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`(showing +,- controls that display/hide names of people included in the people
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`view; also showing a scroll bar at the side to control the portion of the view that is
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`displayed). Yet Patent Owner seems to be arguing that everything associated with
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`the people view must be shown at all times without additional user interaction
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`beyond the initial input. Such a narrow view is improper, as it is misaligned with
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`both the claim language and the specification. Renishaw P.L.C. v. Marposs
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`Societa’ Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“The construction that
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`stays true to the claim language and most naturally aligns with the patent’s
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`description of the invention will be, in the end, the correct construction.”).
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`Claim 18 and Patent Owner’s arguments for a narrow construction of it
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`reinforce these points. Specifically, claim 18 recites, “responsive to an input that
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`is indicative of a selection of the first person selectable thumbnail image, causing
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`a first person view to be displayed on the interface, the first person view including
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`(i) the first name and (ii) a representation of each digital file in the third set of
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`digital files” (emphasis added). Because the claimed first person view includes a
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`representation of “each” file, Patent Owner’s theory would require all files
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`associated with the selected person to be displayed both simultaneously and
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`responsive to the input. But the ability to display all files in this manner is
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`obviously based on the number of files associated with the person, as screen real
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`estate is not infinite. And, as discussed above, the ’228 patent clearly and
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`purposefully limited the amount of information displayed in the initial display of a
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`selected view and included controls to enable display of additional information.
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`This remains true for the first person view, which, as shown in FIG. 32 below,
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`contemplated multiple pages of associated files and provided controls for the user
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`to select the number of “Items Per Page.”
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`SAMSUNG-1001, FIG. 32 (annotated)
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`If Patent Owner’s constructions were correct, claim 18 would cover what is
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`shown in FIG. 32 only when the number of files associated with the selected
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`person fits on one page, but not when the number of files spans multiple pages.
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`But that is not what FIG. 32 shows or the ’228 patent describes. And it would be
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`illogical for the claims to be interpreted in a manner that changes based on the
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`number of files (or people) or the particular configuration of the display used to
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`present a view. For these reasons, Patent Owner’s constructions are inconsistent
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`with how a POSITA would have read the ’228 patent, and should be rejected.
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`III. GROUND 1 RENDERS OBVIOUS THE CHALLENGED CLAIMS
`As shown in the Petition and as further clarified below in response to Patent
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`Owner’s arguments in the POR, claims 1-19 are rendered obvious by Okamura in
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`view of Belitz. SAMSUNG-1041, [14].
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`A. Okamura-Belitz discloses “responsive to a second input...causing a
`people view to be displayed...the people view including:...a first name”
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`Based on the overly narrow interpretation of “responsive to,” Patent Owner
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`argues that claim limitations [1g] and [1i] are not satisfied by the Okamura-Belitz
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`combination. See supra Section II. Specifically, Patent Owner contends that the
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`limitations are not met because an additional mouse hovering action is needed. See
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`POR, 21. Patent Owner does not appear to dispute that Okamura discloses display
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`of a people view in response to an input or that Okamura’s people view includes
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`the names of the people; rather, Patent Owner appears to advance an unsupported
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`contention that the claim language requires more.
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`Yet, for the reasons discussed above, “responsive to” should not be so
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`narrowly construed in this instance. And as detailed in the Petition, the Okamura-
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`Belitz combination renders obvious “responsive to a second input...causing a
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`people view to be displayed...the people view including:...a first name.” See
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`Petition, 46-53; SAMSUNG-1005, FIG. 21; SAMSUNG-1003, [133]-[143]. In
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`particular, the use of mouse hovering to obtain “‘pieces of information’ a user
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`might otherwise have to click to get” is a well-known strategy commonly
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`employed to provide the user with the desired result without unnecessarily
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`cluttering the screen with excessive content. SAMSUNG-1003, [77]; SAMSUNG-
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`1041, [15].
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`Moreover, as Dr. Greenspun previously explained, “[d]isplaying the name
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`adjacent to the thumbnail image would have been obvious, and a POSITA would
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`have been motivated to do so for allowing the user to avoid confusion on which
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`face index belongs to whom.” SAMSUNG-1003, [143]; Petition, 52-53. As Dr.
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`Greenspun further clarified, whether to show captions all the time or only just part
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`of the time is simply a matter of “design choice and maybe a function of user
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`preference.” EX-2022, 132:6-12; SAMSUNG-1041, [16]; SAMSUNG-1042, 75,
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`Fig. 4.2 (displaying names adjacent to thumbnails was well-known); SAMSUNG-
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`1043, FIG. 8 (same). Dr. Reinman does not seem to disagree and has not provided
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`an opinion to the contrary. See SAMSUNG-1040, 96:9-21 (“I did not perform
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`additional analysis to try and reengineer or improve Okamura in some way. That
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`analysis, I was not asked, nor did I perform.”); see also id., 57:24-59:1.
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`While Patent Owner suggests that such a design change would “conflict with
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`the objective of Okamura’s uncongested index screens,” a POSITA “is also a
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`person of ordinary creativity, not an automaton” and would have been more than
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`capable of designing a system that is not overly congested. KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007); SAMSUNG-1041, [16]. Rather than
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`presenting evidence to the contrary, Patent Owner’s expert simply explained that
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`he “did not perform additional analysis to try and reengineer or improve Okamura
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`in some way.” SAMSUNG-1040, 96:9-21.
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`An alternative design of Okamura, even if it were to slightly increase the
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`congestion level, would not automatically undermine a reason to modify it because
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`obviousness “does not require that the motivation be the best option, only that it be
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`a suitable option from which the prior art did not teach away.” PAR Pharm., Inc.
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`v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (emphasis omitted) (Fed. Cir. 2014)
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`(citing Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)).
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`In this case, a POSITA would have been fully capable of weighing potential
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`benefits associated with levels of congestion, for instance recognizing that the user
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`may further “avoid confusion.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d
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`1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
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`expense of another benefit...should not nullify its use as a basis to modify the
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`disclosure of one reference with the teachings of another.”); In re Urbanski, 809
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`F.3d 1237, 1244 (Fed. Cir. 2016); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
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`1165 (Fed. Cir. 2006) (holding that “[a] given course of action often has
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`simultaneous advantages and disadvantages, and this does not necessarily obviate
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`motivation to combine.”); SAMSUNG-1003, [143]; SAMSUNG-1041, [16].
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`B. Okamura-Belitz discloses “the people view including:...a first
`name...[and]...a second name”
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`Based on the overly narrow interpretation of limitations [1g], [1i], and [1k]
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`as requiring the simultaneous display of both the “first name” and the “second
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`name,” Patent Owner argues that these limitations are not met because such
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`simultaneous display is not provided by the Okamura-Belitz combination. See
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`supra Section II.
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`However, for reasons discussed above and as confirmed by the Board in the
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`Institution Decision, such simultaneous display is not required by the claims. See
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`Institution Decision, 28. Based on the proper understanding of the ’228 patent’s
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`claim language, and as explained in detail in the Petition, the Okamura-Belitz
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`combination renders obvious displaying the “first name” and the “second name” in
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`the claimed manner. See Petition, 52-53, 54-55; SAMSUNG-1003, [143]-[145];
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`SAMSUNG-1005, FIG. 21; SAMSUNG-1041, [17].
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`Moreover, as Dr. Greenspun previously explained, it “would have been
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`obvious,” in the Okamura-Belitz combination, to “display the name adjacent to the
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`first person electable thumbnail image” without additional mouse hovering because
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`a POSITA would have recognized that doing so can help “allow[] the user to avoid
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`confusion on which face index belongs to whom.” SAMSUNG-1003, [143]-[144];
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`Petition, 52-53. As Dr. Greenspun clarified, whether to show all the names all the
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`time or only just part of the time is simply a matter of “design choice and may be a
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`function of user preference.” EX-2022, 132:6-12; SAMSUNG-1041, [18];
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`SAMSUNG-1042, 75, Fig. 4.2 (displaying names adjacent to thumbnails was well-
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`known); SAMSUNG-1043, FIG. 8 (same). Dr. Reinman has not provided an
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`opinion to the contrary. See SAMSUNG-1040, 96:9-21 (“I did not perform
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`additional analysis to try and reengineer or improve Okamura in some way. That
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`analysis, I was not asked, nor did I perform.”); see also id., 57:24-59:1. Rather,
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`Dr. Reinman acknowledged that making minor adjustments to help reduce clutter
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`could be a matter of design choice. See SAMSUNG-1040, 99:3-100:18 (“[F]or
`
`any design, there are certain choices that the designers get to make....”).
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`Moreover, as explained above, an alternative design of Okamura that may
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`slightly increase its congestion level does not automatically undermine a reason to
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`modify it because a POSITA would have nevertheless been able to weigh potential
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`benefits associated with levels of congestion, for instance recognizing doing so
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`could allow the user to further “avoid confusion.” SAMSUNG-1003, [143];
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`SAMSUNG-1041, [19].
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`C. Okamura-Belitz discloses “a [first/second] location selectable thumbnail
`image at a [first/second] location on the interactive map”
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`As laid out in detail in the Petition and throughout the original declaration of
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`Dr. Greenspun, a POSITA would have been motivated to modify Okamura in view
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`of Belitz to provide location selectable thumbnail images at corresponding
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`locations on the interactive map in the manner claimed. Petition, 11-25, 32-37;
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`SAMSUNG-1003, [86]-[101], [113]-[121].
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`In the POR, Patent Owner erroneously points to various alleged failings of
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`the combination. As further clarified below, Patent Owner’s arguments are
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`without merit.
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`1. Petitioner’s first combination renders this feature obvious
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`Regarding the proposed “first combination,” Patent Owner contends that a
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`POSITA would not have been motivated to modify Okamura with Belitz because
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`“none of Belitz’s thumbnails...convey geographical information....” POR, 34.
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`Even if that were the case, a notion with which Petitioner strongly disagrees for
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`reasons further discussed below, a POSITA would have been motivated to
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`combine Okamura and Belitz to obtain “additional benefits.” SAMSUNG-1003,
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`[88]-[92]; Petition. 12-17. For instance, in furtherance of Okamura’s stated
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`objective of better managing digital contents, the proposed combination “enhances
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`a user experience of ‘discern[ing] between the various objects’ by providing ‘a
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`good view of what location is associated with what.’” SAMSUNG-1003, [89]
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`(citing SAMSUING-1005, [0091], SAMSUNG-1006, [0002]).
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`Even if the benefits obtained by incorporating Belitz’s thumbnails into
`
`Okamura were to come at the expense of some other benefit offered by Okamura, a
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`POSITA pursuing the combination would have nevertheless been capable of
`
`weighing potential benefits associated with each, for instance recognizing that the
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`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. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed.
`
`Cir. 2000) (“The fact that the motivating benefit comes at the expense of another
`
`benefit...should not nullify its use as a basis to modify the disclosure of one
`
`reference with the teachings of another.”); SAMSUNG-1041, [20]-[22].
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`Moreover, contrary to Patent Owner’s assertions, Belitz’s thumbnails and
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`Okamura’s cluster maps are functionally equivalent in the sense that both convey
`
`geographical information. SAMSUNG-1041, [23]. In fact, Dr. Reinman does not
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`disagree. For instance, Dr. Reinman testified that “[Belitz] shows the association
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`of at least some pictures with the geographic location on the map depending on
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`how many thumbnails it’s currently presenting....” SAMSUNG-1040, 107:10-22.
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`He further acknowledged that replacing cluster maps with thumbnails would not
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`result in the loss of “all geographic context.” Id., 114:8-15.
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`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
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`Fujiwara and Takakura, it can be difficult to grasp the geographical
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`correspondence between digital files because their thumbnails are not placed
`
`directly on the map. SAMSUNG-1041, [24] (citing EX-2002, FIG. 12; EX-2020,
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`FIG. 1). In contrast, it is not difficult to grasp the geographical correspondence
`
`between digital files in Belitz because, for example, a user looking at Belitz’s FIG.
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`4b can easily understand which location the thumbnail 410b is associated with and
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`which location the thumbnail 410c is associated with. SAMSUNG-1041, [24]
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`(citing SAMSUNG-1006, FIGS. 4a-4b). Thus, the alleged problems with Fujiwara
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`and Takakura that “may make it difficult to grasp the geographical
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`correspondence” of their images are not manifested in the same manner in Belitz.
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`SAMSUNG-1041, [24].
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`Patent Owner also argues that the Okamura-Belitz combination somehow
`
`violates Belitz’s stated objectives of reducing overlap because, in the proposed
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`combination, “at least some of graphical objects from Belitz overlaps on the map”
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`and, as support, provides a cropped reproduction of an illustration originally
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`provided by Dr. Greenspun:
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`
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`POR, 42
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`
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`However, a portion of Dr. Greenspun’s illustration that was not shown by
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`Patent Owner clearly shows that the combination can be achieved without any
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`overlap:
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`
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`SAMSUNG-1003, [88] (partial); SAMSUNG-1041, [25]-[26].
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`Patent Owner further attempts to undermine the Okamura-Belitz
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`combination by pointing to various other alleged defects in the motivation to
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`combine. See POR, 43-52. None have merit.
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`For instance, while Patent Owner contends that “Belitz’s thumbnails reduce
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`the ability to provide a view of ‘what location is associated with what,’” they
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`ignore the careful explanation previously provided by Dr. Greenspun. POR, 43-46.
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`Indeed, Dr. Greenspun explained in his first declaration that incorporating the
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`thumbnails of Belitz into Okamura would have resulted in the “added functionality
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`that allows a user to preview pictures associated with a given location” and do so
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`in a manner that allows the user to more “clearly see the associations.”
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`SAMSUNG-1003, [90]-[91]. Thus, instead of having to click on individual
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`clusters as in Okamura to ascertain which pictures are associated with which
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`locations, Belitz provides a way for Okamura to provide such information all at
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`once for multiple locations on the map. SAMSUNG-1041, [27].
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`Relatedly, Patent Owner further contends that “Okamura already allows a
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`user to ‘preview pictures.’” POR, 46. But as noted above, the incorporation of
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`Belitz’s thumbnails allows the user to quickly associate multiple preview pictures
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`with multiple locations on the map without having to individually navigate through
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`each of the clusters. SAMSUNG-1041, [28]. Thus, the combination of Okamura
`
`and Belitz helps improve user experience and overall content awareness by
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`providing the user with a preview of the digital files associated with multiple
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`corresponding locations. Id. In short, instead of changing the “hallmark aspects of
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`either of these references” as Patent Owner contends, the proposed combination of
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`Okamura and Belitz provides a known and predictable alternative to displaying and
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`managing digital content in a manner that can help improve user experience.
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`SAMSUNG-1003, [89]; SAMSUNG-1041, [28].
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`Lastly with regard to the “first combination,” Patent Owner’s assertion that
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`Petitioner has “failed to demonstrate that the first combination (based on
`
`Okamura’s second embodiment) would have been used with Okamura’s FACE
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`index screen 410” similarly falls flat. POR, 50. Dr. Greenspun previously
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`explained in great detail how, inter alia, “Okamura discloses or renders obvious
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`that the second input of displaying the face-based index screen is subsequent to the
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`first input of displaying a map view screen.” SAMSUNG-1003, [133]-[138]. To
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`the extent Okamura does not explicitly disclose this transition, a POSITA certainly
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`would have found it to be obvious. Id., [138]; SAMSUNG-1041, [29].
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`
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`2. Petitioner’s second combination renders this feature obvious
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`Regarding the Petitioner’s first alternative combination (“second
`
`combination”), Patent Owner contends that incorporating Belitz into Okamura in
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`the manner proposed would not be desirable to a POSITA because “much of the
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`information s
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