Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,621,228
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`Inter Partes Review No. IPR2022-00222
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`Patent No. 10,621,228
`
`Inter Partes Review No. IPR2022-00222
`
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner hereby submits objections
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`to evidence served by Petitioner on December 13, 2022 in support of its Reply (Paper
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`24). The discussion below identifies the evidence Patent Owner objects to and
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`summarizes the objections, including the Federal Rules of Evidence (“FRE”) or
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`other rules that form the basis for the objections.
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`1.
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`Ex. 1040 - “Transcript of the Deposition of Dr. Glenn Reinman
`dated November 16, 2022”
`Patent Owner objects to the following portions of Ex. 1040 cited in
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`Petitioner’s Reply:
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`Page(s) / Line(s)
`30:19-32:3
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`Objection(s)
`Vague and ambiguous, mischaracterizes evidence, outside the
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`scope of direct testimony. Petitioner asked Prof. Reinman
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`“based on experience and knowledge of how graphical user
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`interfaces work, wouldn’t it be logical that a ‘Sort By’ drop-
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`down list box that contains various criteria for sorting displayed
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`items would present the user with the ability to change the way
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`that those items are arranged or displayed.” Ex. 1040 at 30:19-
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`32:3. The question was vague and ambiguous at least as to
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`what the terms/phrases “logical,” “a ‘Sort By’ drop-down list
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`box,” “various criteria for sorting displayed items,” and “present
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`1
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`Page(s) / Line(s)
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`Objection(s)
`the user with the ability to change the way that those items are
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`arranged or displayed” referred to. See Fed. R. Evid. 611(a)
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`and 403. Petitioner failed to lay foundation as to what these
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`phrases referred to. In the preceding questioning, Petitioner
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`asked Prof. Reinman about FIG. 32 of the ‘228 patent. To the
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`extent that the questioning at 30:19-32:3 referred to FIG. 32
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`(which was unclear), the questioning mischaracterized the ‘228
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`patent. See Fed. R. Evid. 611(a) and 403. This questioning
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`was also outside the scope of Prof. Reinman’s direct testimony
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`because it did not have a sufficient underlying basis in a
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`statement made by Prof. Reinman in his declaration. See Fed.
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`R. Evid. 611(b); 37 C.F.R. § 42.53(d)(5)(ii). The question
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`called for an answer regarding the portions of the ’228 patent
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`that Prof. Reinman did not discuss or opine on in his
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`declaration.
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`26:23-27:17
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`Outside the scope of direct testimony. Petitioner asked Prof.
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`Reinman about “[w]hat happens in figure – the People view of
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`figure 32 when the user selects the ‘Sort By’ criteria of ‘Newest
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`to Oldest’ labeled as element 1402” and whether “the display of
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`2
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`Page(s) / Line(s)
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`Objection(s)
`photographs in figure 32 will or may change according to the
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`‘Sort By’ criterion that is elected by the user.” Ex. 1040, 26:23-
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`27:7. This questioning was outside the scope of Prof.
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`Reinman’s direct testimony because it did not have a sufficient
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`underlying basis in a statement made by Prof. Reinman in his
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`declaration. See Fed. R. Evid. 611(b); 37 C.F.R. §
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`42.53(d)(5)(ii). The question called for an answer regarding the
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`portions of the ’228 patent that Prof. Reinman did not discuss
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`or opine on in his declaration.
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`52:3-23
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`Vague and ambiguous, mischaracterizes the evidence,
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`incomplete hypothetical, outside the scope of direct testimony.
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`Prof. Reinman was asked “[i]n the situation where a user selects
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`the People view of figure 32 as a first action and then, as a
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`second action, selects the search criteria, there may be still
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`another action that’s required to implement or invoke that
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`search criteria causing some subset of photographs that meet the
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`criteria to appear in the display.” Ex. 1040 at 52:3-23. This
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`question was vague and ambiguous at least with respect to the
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`phrases “a user selects the People view of figure 32 as a first
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`3
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`Page(s) / Line(s)
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`Objection(s)
`action,” “as a second action, selects the search criteria,” and
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`“there may be still another action that’s required to implement
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`or invoke that search criteria causing some subset of
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`photographs that meet the criteria to appear in the display.” See
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`Fed. R. Evid. 611(a) and 403. The questioning also
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`mischaracterized the ‘228 patent. Id. This questioning was
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`outside the scope of Prof. Reinman’s direct testimony because
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`it did not have a sufficient underlying basis in a statement made
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`by Prof. Reinman in his declaration. See Fed. R. Evid. 611(b);
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`37 C.F.R. § 42.53(d)(5)(ii). The question called for an answer
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`regarding the portions of the ’228 patent that Prof. Reinman did
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`not discuss or opine on in his declaration.
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`55:6-56:1
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`Vague and ambiguous, compound, incomplete hypothetical,
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`mischaracterizes the evidence, outside the scope of direct
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`testimony. Prof. Reinman was asked “[i]f the system of the
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`‘228 patent were designed so that selection of a ‘Sort By’
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`criteria did not by itself cause a re-sorting or reorganization of
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`the photographs in response to selecting that criteria, then there
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`would necessarily be some other input or action that is required
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`4
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`Page(s) / Line(s)
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`Objection(s)
`to invoke it; otherwise, we just have a – kind of dead end, right?
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`The user would never be able to implement their sort criteria?”
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`Ex. 1040 at 55:6-56:1. This questioning was vague and
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`ambiguous at least with respect to the phrases “the system of the
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`‘228 patent were designed,” “selection of a ‘Sort By’ criteria
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`did not by itself cause a re-sorting or reorganization of the
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`photographs in response to selecting that criteria,” “some other
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`input or action that is required to invoke it,” “dead end,” and
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`“able to implement their sort criteria.” See Fed. R. Evid. 611(a)
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`and 403. The questioning was also compound: Prof. Reinman
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`was explicitly asked two questions. Id. Insofar as this
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`questioning related to FIG. 32 of the ‘228 patent, the
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`questioning mischaracterize/misstates the ‘228 patent. Id. This
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`questioning was outside the scope of Prof. Reinman’s direct
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`testimony because it did not have a sufficient underlying basis
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`in a statement made by Prof. Reinman in his declaration. See
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`Fed. R. Evid. 611(b); 37 C.F.R. § 42.53(d)(5)(ii). The question
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`called for an answer regarding the portions of the ’228 patent
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`that Prof. Reinman did not discuss or opine on in his
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`5
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`Page(s) / Line(s)
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`Objection(s)
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`declaration.
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`57:24-58:14
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`Vague and ambiguous, incomplete hypothetical. Prof. Reinman
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`was asked in reference to FIG. 32 of the ‘228 patent to
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`“consider the situation where Jon Smith’s name is displayed in
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`the photograph at the farthest left, but the photo immediately
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`adjacent to Jon Smith’s right has a name associated with it but
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`momentarily hidden from view” and then asked whether
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`“People View includes a first name and a second name.” Ex.
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`1040 at 57:24-58:14. This questioning was vague and
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`ambiguous at least as to the phrase “momentarily hidden from
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`view.” Fed. R. Evid. 611(a) and 403.
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`96:9-21
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`Vague and ambiguous, compound, speculation, outside the
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`scope of direct testimony. Prof. Reinman was asked whether he
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`was “able to describe any change that the designers of the
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`system described in Okamura could have made to realize any of
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`the requirements of the claims of the ‘228 patent, or have you
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`not done that analysis.” Ex. 1040 at 96:9-21. The questioning
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`was vague and ambiguous at least as to the phrases “any
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`change,” “designers of the system described in Okamura,” and
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`6
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`Page(s) / Line(s)
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`Objection(s)
`“realize any of the requirements of the claims of the ‘228
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`patent.” Fed. R. Evid. 611(a) and 403. Petitioner failed to lay
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`foundation as to who the referenced “designers of the system
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`described in Okamura” were. The questioning was also vague
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`and ambiguous in terms of temporal scope. Id. Asking about
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`what the “designers of the system described in Okamura” could
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`have done required Prof. Reinman to speculate. See Fed. R.
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`Evid. 403, 611, 602, 701-702. To the extent “realize any of the
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`requirements of the claims of the ‘228 patent” corresponds to
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`multiple limitations recited in the ‘228 patent claims, the
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`question was also compound for impermissibly entailing
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`multiple questions. Id. Further, this questioning was outside the
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`scope of Prof. Reinman’s direct testimony because it did not
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`have a sufficient underlying basis in a statement made by Prof.
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`Reinman in his declaration. See Fed. R. Evid. 611(b); 37
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`C.F.R. § 42.53(d)(5)(ii). The question called for an answer
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`regarding the possibility of “any change” to Okamura,
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`exceeding the scope of any statement or opinion in Prof.
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`Reinman’s declaration.
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`7
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`Page(s) / Line(s)
`99:9-100:2
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`Objection(s)
`Vague, ambiguous and compound. Prof. Reinman was asked
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`whether “things such as the relative size of images and text that
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`appear on a user interface, those are a matter of design choice
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`for the system creator.” Ex. 1040 at 99:9-100:2. The question
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`was vague and ambiguous at least as to the terms/phrases
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`“things,” “relative size of images and text that appear on a user
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`interface,” and “matter of design choice.” See Fed. R. Evid.
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`611(a) and 403. Petitioner failed to lay foundation as to what
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`these phrases referred to. The questioning was also vague and
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`ambiguous in terms of temporal scope. Id. The question was
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`also compound for impermissibly entailing multiple questions
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`as to "size of images and text.” Id.
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`100:3-18
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`Vague and ambiguous. Prof. Reinman was asked whether it is
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`“also a matter of design choice when someone is building a
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`system for a user interface that displays images and associated
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`text as to what type of an actual display or screen size will be
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`used as part of that system.” Ex. 1040 at 100:3-18. The
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`question was vague and ambiguous at least as to the
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`terms/phrases “building a system for a user interface” and “what
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`8
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`Page(s) / Line(s)
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`Objection(s)
`type of an actual display or screen size will be used as part of
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`the system.” See Fed. R. Evid. 611(a) and 403. Petitioner
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`failed to lay foundation as to what these phrases referred to.
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`The questioning was also vague and ambiguous in terms of
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`temporal scope. Id.
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`107:10-22
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`Vague and ambiguous. Prof. Reinman was asked whether “an
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`objective of the system described in Belitz is to provide an
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`overview of which graphical objects, in some cases
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`photographs, are associated with particular locations on a map.”
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`Ex. 1040 at 107:10-22. The question was vague and
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`ambiguous at least as to the phrase “objective of the system
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`described in Belitz,” “an overview,” and “which graphical
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`objects, in some cases photographs, are associated with
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`particular locations on a map.” See Fed. R. Evid. 611(a) and
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`403.
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`2.
`Ex. 1041 - “Second Declaration of Dr. Philip Greenspun”
`Patent Owner objects to Ex. 1041 to the extent it purports to incorporate by
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`reference the entirety of Ex. 1003, which Patent Owner previously objected to as
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`inadmissible evidence. See Ex. 1041 at ¶ 1; Paper 14 at 1-2. For example, Patent
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`9
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`Owner previously objected to paragraphs 57-190 of Ex. 1003 under FRE 602, 702,
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`and 703 and paragraphs 64, 66, 69, 70, 91, 92, 97, and 183 of Ex. 1003 to the extent
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`those paragraphs rely on Exhibits 1020, 1022, 1023, and/or 1024, which Patent
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`Owner objected to as inadmissible evidence. Paper 14 at 1-2. Patent Owner hereby
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`incorporates its prior objections to Ex. 1003 and objects to Ex. 1041 on the same
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`grounds to the extent Ex. 1041 incorporates by reference Ex. 1003.
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`Patent Owner objects to paragraphs 2-35 of Ex. 1041, under FRE 602 and 703,
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`and as lacking foundation, assuming facts not in evidence, containing testimony on
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`matters as to which the witness lacks personal knowledge, containing hearsay and
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`as being conclusory. Paragraphs 2-35 are also objected to under FRE 702 for failing
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`to demonstrate that the declarant is qualified as an expert in the relevant subject-
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`matter. Paragraphs 2-35 are further objected to under FRE 702(b), (c) and (d) as
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`failing to be based upon sufficient facts or data, as the product of unreliable
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`principles and methods and for failing to reliably apply sound principles and
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`methods to the facts of the case.
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`Patent Owner also objects to paragraphs 10 and 23 of Ex. 1041 under FRE
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`703 as these paragraphs rely on portions of Ex. 1040 that Patent Owner objects to as
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`inadmissible evidence.
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`3.
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`Ex. 1042 – Adam C. Engst, Visual Quickstart Guide iPhoto ’09
`(2009) (“Engst”)
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`Patent Owner objects to Ex. 1042 as hearsay offered for a hearsay purpose
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`10
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`and to which no valid exception applies. See Fed. R. Evid. 801-807. Patent Owner
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`objects to Ex. 1042 as not authenticated and not self-authenticating. See Fed. R.
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`Evid. 901-902. Petitioner provides no authenticating declaration explaining what
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`Ex. 1042 is, how it was acquired, or how it was made. Patent Owner objects to Ex.
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`1042 because it is not sufficiently relevant, and any relevance is outweighed by the
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`risks of confusion, substantial danger of unfair prejudice, and/or misleading the fact
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`finder. See Fed. R. Evid. 401-403.
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`Ex. 1043 - “U.S. Patent App. Pub. No. 2009/0196510 (“Gokturk”)
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`4.
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`Patent Owner objects to Ex. 1043 because it is not sufficiently relevant, and
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`any relevance is outweighed by the risks of confusion, substantial danger of unfair
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`prejudice, and/or misleading the fact finder. See Fed. R. Evid. 401-403.
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`Respectfully submitted,
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`Dated: December 20, 2022
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`11
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`By: /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Objections to Evidence was served on December 20, 2022, upon the following
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`parties via electronic service:
`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`IPR39843-0117IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`cgreen@fr.com
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`Counsel for Petitioner, Samsung Electronics Co., Ltd.
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`By:
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`/s/ Jennifer Hayes
`Lead Counsel for Patent Owner
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`12
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