IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Christopher J. 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
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,621,228 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`TABLE OF CONTENTS
`
`I. 
`
`2. 
`
`3. 
`
`4. 
`
`II. 
`
`REQUIREMENTS FOR IPR .......................................................................... 1 
`A.  Grounds for Standing ................................................................................ 1 
`B.  Challenge and Relief Requested ............................................................... 1 
`C.  Claim Construction ................................................................................... 1 
`D.  Level of Ordinary Skill ............................................................................. 2 
`SUMMARY OF THE ’228 PATENT ............................................................. 2 
`A.  Brief Description ....................................................................................... 2 
`B.  Prosecution History ................................................................................... 5 
`C.  Priority Date .............................................................................................. 6 
`III.  Application of Prior Art ................................................................................... 7 
`A.  [GROUND 1] – Claims 1-19 are rendered obvious by Okamura in view
`of Belitz ..................................................................................................... 7 
`1.  Overview of Okamura ..................................................................... 7 
`2.  Overview of Belitz .......................................................................... 9 
`3. 
`Combination of Okamura and Belitz ............................................ 11 
`4.  Analysis ......................................................................................... 26 
`IV.  PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 81 
`A.  Advanced Bionics Favors Institution—§ 325(d) .................................... 82 
`B.  General Plastic Favors Institution—§ 314(a) ........................................ 82 
`1. 
`Factor 1: Petitioner (Samsung) is Separate From and Unrelated To
`Apple and Unified Patents ............................................................. 82 
`Factors 2 & 4: Petitioner (Samsung) Filed This Petition Promptly
`Following The Earlier Petitions .................................................... 83 
`Factor 3: This Petition Does Not Implicate Road-Mapping
`Concerns ........................................................................................ 84 
`Factor 5: Petitioner (Samsung) Diligently Prepared Its Petition
`After the Earlier Filings ................................................................. 84 
`Factors 6 and 7: Institution would Efficiently Promote Patent
`Quality ........................................................................................... 85 
`6.  Additional Factor: Institution Denial would Potentially Prejudice
`Petitioner ....................................................................................... 86 
`C.  Fintiv Favors Institution—§ 314(a) ........................................................ 88 
`1. 
`Factor 1: Either Party May Request Stay ...................................... 88 
`2. 
`Factor 2: Proximity of the Trial Date ............................................ 88 
`3. 
`Factor 3: Petitioner’s Diligence and Investment in the IPR
`Outweighs the Parties’ Minimal Investment in Litigation ............ 89 
`
`5. 
`
`i
`
`

`

`4. 
`
`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`Factor 4: The Petition’s Grounds Are Materially Different From
`Any That Might Be Raised in Litigation ....................................... 89 
`Factor 5: Institution Would Promote Judicial Efficiency ............. 90 
`5. 
`Factor 6: The Merits of this Petition Strongly Favor Institution .. 90 
`6. 
`V. 
`FEES .............................................................................................................. 91 
`VI.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 92 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 92 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 92 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 92 
`D.  Service Information ................................................................................ 93 
`
`
`
`
`
`
`ii
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`EXHIBITS
`
`SAMSUNG-1001 U.S. Patent No. 10,621,228 to Christopher J. Desmond, et al.
`(“the ’228 patent”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the ’228 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Philip Greenspun
`
`SAMSUNG-1004 Curriculum Vitae of Dr. Philip Greenspun
`
`SAMSUNG-1005 U.S. Patent App. Pub. No. 2011/0122153 A1 (“Okamura”)
`
`SAMSUNG-1006 U.S. Patent App. Pub. No. 2010/0058212 A1 (“Belitz”)
`
`SAMSUNG 1007-SAMSUNG 1019 RESERVED
`
`SAMSUNG-1020 Tim Grey, Adobe Photoshop Lightroom Workflow: The Digital
`Photographer's Guide (2007)
`
`
`SAMSUNG-1021 U.S. Patent App. Pub. No. 2011/0074811 A1 (“Hanson”)
`
`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/
`
`
`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
`
`
`SAMSUNG-1024 Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt
`Publishing (2007)
`
`
`
`
`iii
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`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)
`
`
`SAMSUNG-1026 U.S. Patent App. Pub. No. 2009/0113350 A1 (“Hibino”)
`
`SAMSUNG-1027 U.S. Patent App. Pub. No. 2006/0165380 A1 (“Tanaka”)
`
`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.)
`
`
`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)
`
`
`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)
`
`
`SAMSUNG-1031 U.S. Patent No. 6,215,523 (“Anderson”)
`
`SAMSUNG-1032 U.S. Patent App. Pub. No. 2008/0133526 (“Haitani”)
`
`SAMSUNG-1033 U.S. Patent App. Pub. No. 2008/0306921 (“Rothmuller”)
`
`SAMSUNG-1034 U.S. Patent App. Pub. No. 2013/0198602 (“Kokemohr”)
`
`SAMSUNG-1035 U.S. Patent App. Pub. No. 2013/0326338 (“Secord”)
`
`SAMSUNG-1036 U.S. Patent App. Pub. No. 2007/0016575 (“Hurst-Hiller”)
`
`SAMSUNG-1037 Stipulation Letter
`
`
`
`iv
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`LISTING OF CHALLENGED CLAIMS
`
`
`
`Claim 1
`[1pre]
`
`A method comprising:
`
`[1a]
`
`[1b]
`
`[1c]
`
`[1d]
`
`[1e]
`
`[1f]
`
`responsive to a first input, causing a map view to be displayed on an
`interface, the map view including:
`
`an interactive map;
`
`a first location selectable thumbnail image at a first location on the
`interactive map; and
`
`a second location selectable thumbnail image at a second location on
`the interactive map;
`
`responsive to an input that is indicative of a selection of the first lo-
`cation selectable thumbnail image, causing a first location view to be
`displayed on the interface, the first location view including (i) a first
`location name associated with the first location and (ii) a representa-
`tion of at least a portion of one digital file in a first set of digital files,
`each of the digital files in the first set of digital files being produced
`from outputs of one or more digital imaging devices, the first set of
`digital files including digital files associated with the first location;
`
`responsive to an input that is indicative of a selection of the second
`location selectable thumbnail image, causing a second location view
`to be displayed on the interface, the second location view including
`(i) a second location name associated with the second location and
`(ii) a representation of at least a portion of one digital file in a second
`set of digital files, each of the digital files in the second set of digital
`files being produced from outputs of the one or more digital imaging
`devices, the second set of digital files including digital files associ-
`ated with the second location; and
`
`[1g]
`
`responsive to a second input that is subsequent to the first input,
`causing a people view to be displayed on the interface, the people
`view including:
`
`v
`
`

`

`[1h]
`
`[1i]
`
`[1j]
`
`[1k]
`
`Claim 2
`[2]
`
`Claim 3
`[3]
`
`Claim 4
`[4]
`
`Claim 5
`[5]
`
`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`a first person selectable thumbnail image including a representation
`of a face of a first person, the first person being associated with a
`third set of digital files including digital photographs and videos;
`
`a first name associated with the first person, the first name being dis-
`played adjacent to the first person selectable thumbnail image;
`
`a second person selectable thumbnail image including a representa-
`tion of a face of a second person, the second person being associated
`with a fourth set of digital files including digital photographs and
`videos; and
`
`a second name associated with the second person, the second name
`being displayed adjacent to the second person selectable thumbnail
`image.
`
`The method of claim 1, wherein the map view further includes a first
`indication feature associated with the first location selectable thumb-
`nail image, the first indication feature being based on a number of
`digital files in the first set of digital files.
`
`The method of claim 2, wherein the first indication feature is con-
`nected to the first location selectable thumbnail image.
`
`The method of claim 2, wherein the first indication feature includes a
`first number indicative of the number of digital files in the first set of
`digital files.
`
`The method of claim 2, wherein the map view further includes a sec-
`ond indication feature associated with the second location selectable
`thumbnail image, the second indication feature being based on a
`number of digital files in the second set of digital files.
`
`
`vi
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`Claim 6
`[6]
`
`Claim 7
`[7]
`
`Claim 8
`[8]
`
`Claim 9
`[9]
`
`Claim 10
`[10]
`
`Claim 11
`[11]
`
`The method of claim 5, wherein the second indication feature is con-
`nected to the second location selectable thumbnail image.
`
`The method of claim 5, wherein the second indication feature in-
`cludes a second number indicative of the number of digital files in
`the second set of digital files.
`
`The method of claim 2, further comprising, subsequent to the map
`view being displayed on the interface, responsive to an input that is
`indicative of zooming in on the interactive map, modifying the first
`indication feature.
`
`The method of claim 2, further comprising, subsequent to the map
`view being displayed on the interface, responsive to an input that is
`indicative of zooming out on the interactive map, modifying the first
`indication feature.
`
`The method of claim 2, further comprising, subsequent to the map
`view being displayed on the interface, responsive to an input that is
`indicative of a filter selection, modifying the first indication feature.
`
`
`The method of claim 1, wherein the first location selectable thumb-
`nail image is a first collection cover image and wherein the second
`location selectable thumbnail image is a second collection cover im-
`age that is different than the first collection cover image.
`
`
`vii
`
`

`

`Claim 12
`[12]
`
`Claim 13
`[13]
`
`Claim 14
`[14]
`
`Claim 15
`[15pre]
`
`[15a]
`
`[15b]
`
`Claim 16
`[16pre]
`
`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`The method of claim 1, wherein the first location selectable thumb-
`nail image includes a representation of at least one of the digital files
`in the first set of digital files, and wherein the second location se-
`lectable thumbnail image includes a representation of at least one of
`the digital files in the second set of digital files.
`
`The method of claim 12 wherein the representation of the at least a
`portion of the one digital file in the first set of digital files is not
`overlaid on the interactive map, and wherein the representation of the
`at least a portion of the one digital file in the second set of digital
`files is not overlaid on the interactive map.
`
`The method of claim 1, wherein the first location view includes a
`representation of at least a portion of all of the digital files in the first
`set of digital files and the second location view includes a representa-
`tion of at least a portion of all of the digital files in the second set of
`digital files.
`
`The method of claim 1, further comprising
`
`responsive to an input that is indicative of a selection, in the first lo-
`cation view, of the representation of the at least a portion of the one
`digital file in the first set of digital files, causing a first digital file to
`be displayed on the interface; and
`
`responsive to an input that is indicative of a selection, in the second
`location view, of the representation of the at least a portion of the
`one digital file in the second set of digital filed, causing a second
`digital file to be displayed on the interface.
`
`The method of claim 1, further comprising:
`
`viii
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`receiving alphanumeric text as a tag;
`
`associating the tag with a first digital file in the first set of digital
`files;
`
`receiving a request to export the first digital file; and
`
`responsive to receiving the request to export, exporting the first digi-
`tal file by causing the first digital file to be communicated along with
`the tag.
`
`The method of claim 1, further comprising, prior to receiving the
`first input, causing the interface to display a plurality of selectable el-
`ements, the plurality of selectable elements including a location se-
`lectable element and a people selectable element, wherein the first
`input is indicative of a selection of the location selectable element,
`and wherein the second input is indicative of a selection of the peo-
`ple selectable element.
`
`The method of claim 1, further comprising responsive to an input
`that is indicative of a selection of the first person selectable thumb-
`nail image, causing a first person view to be displayed on the inter-
`face, the first person view including (i) the first name and (ii) a rep-
`resentation of each digital file in the third set of digital files.
`
`The method of claim 18, further comprising responsive to an input
`that is indicative of a selection of the second person selectable
`thumbnail image, causing a second person view to be displayed on
`the interface, the second person view including (i) the second name
`and (ii) a representation of each digital file in the fourth set of digital
`files.
`
`[16a]
`
`[16b]
`
`[16c]
`
`[16d]
`
`Claim 17
`[17]
`
`Claim 18
`[18]
`
`Claim 19
`[19]
`
`
`
`ix
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`Samsung Electronics Co., Ltd. (“Petitioner”) petitions for inter partes
`
`review (“IPR”) of claims 1-19 (“Challenged Claims”) of U.S. Patent No.
`
`10,621,228 (“’228 patent”).
`
`I.
`
`REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Samsung certifies that the ’228 patent is available for IPR. This petition is
`
`being filed within one year of service of a complaint against Samsung.
`
`SAMSUNG-1028. Samsung is not barred or estopped from requesting review of
`
`the Challenged Claims on the below-identified ground.
`
`B. Challenge and Relief Requested
`Samsung requests IPR of the Challenged Claims on the ground in the table
`
`below. Additional explanation is provided in SAMSUNG-1003 (Declaration of
`
`Dr. Philip Greenspun).
`
`Ground
`1
`
`1-19
`
`Claims
`
`Basis
`§103: Okamura, Belitz
`
`
`
`C. Claim Construction
`Because the evidence and the prior art’s description of the claimed elements
`
`are similar to the ’228 patent specification, no formal claim constructions are
`
`1
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`necessary in this proceeding.1 Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`
`1355, 1361 (Fed. Cir. 2011).
`
`D. Level of Ordinary Skill
`A person of ordinary skill in the art (“POSITA”) relating to the subject
`
`matter of the ’228 patent would have had (1) a bachelor’s degree in computer
`
`science, computer engineering, electrical engineering, or a related field, and (2) at
`
`least one year of experience designing graphical user interfaces for applications
`
`such as photo organization systems. SAMSUNG-1003, [27]. Additional graduate
`
`education could substitute for professional experience, or significant experience in
`
`the field could substitute for formal education. Id.
`
`II.
`
`SUMMARY OF THE ’228 PATENT
`A. Brief Description
`The ’228 patent describes displaying digital files using a “map view” or a
`
`“people view.” SAMSUNG-1001, 22:59-23:11, 34:16-54, 29:41-64, FIGS. 32, 34,
`
`41; SAMSUNG-1003, [47]-[55]. For example, the ’228 patent provides a map
`
`view (shown in FIG. 41 below) that displays an interactive map with location
`
`selectable thumbnail images. SAMSUNG-1001, 29:51-57.
`
`
`1 Petitioner is not conceding that each claim satisfies all statutory requirements, such
`
`as §§ 101 and 112, nor is Petitioner waiving any arguments concerning claim scope
`
`or grounds that can only be raised in district court.
`
`2
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`SAMSUNG-1001, FIG. 41
`
`
`
`
`
`When the user selects a thumbnail, the user interface displays a location
`
`view (shown in FIG. 34 below). SAMSUNG-1001, 6:20.
`
`3
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`SAMSUNG-1001, FIG. 34
`
`
`
`
`
`As shown in FIG. 32 below, the ’228 patent also provides a people view
`
`(upper) that displays “person selectable” thumbnail images and, responsive to
`
`selection of a person thumbnail, the user interface displays a single person view
`
`(lower). SAMSUNG-1001, 23:1-24.
`
`4
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`
`
`SAMSUNG-1001, FIG. 32
`
`B.
`Prosecution History
`The ’228 patent was allowed without a rejection on the merits. The
`
`Examiner provided only a cursory discussion of how the allowed claims were
`
`patentable in that the Examiner summarized the interview that led to allowance as
`
`“Allowable Subject Matter was discussed. … Examiner’s amendment was
`
`authorized to advance the case” and only stated that “people view” features in
`
`claim 1 were missing from two references: Hibino and Tanaka. SAMSUNG-1002,
`
`42-44. Okamura and Belitz were not considered during prosecution and
`
`demonstrate that the “people view” features of claim 1 were well-known.
`
`5
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`SAMSUNG-1003, [56].
`
`C.
`Priority Date
`The earliest priority claim of the ’228 patent is June 9, 2011. SAMSUNG-
`
`1001, Cover. In litigation, MemoryWeb identified a priority date of February 28,
`
`2014. SAMSUNG-1029, 2. The applied references pre-date June 9, 2011 and are
`
`prior art regardless of whether the ’228 patent is entitled to its earliest claimed
`
`priority. The level of skill would have been similar and the analysis presented in
`
`this petition applies equally whether June 9, 2011 or February 28, 2014 is used as
`
`the Critical Date.
`
`
`
`Reference
`Okamura
`
`Filing Date
`October 20, 2010
`
`Publication Date
`May 26, 2011
`
`Belitz
`
`August 28, 2008
`
`March 4, 2010
`
`Section
`Pre-AIA 102(a), (b), (e)
`AIA 102(a)(1), (a)(2)
`Pre-AIA 102(a), (b), (e)
`AIA 102(a)(1), (a)(2)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`
`
`
`III. Application of Prior Art2
`A.
`[GROUND 1] – Claims 1-19 are rendered obvious by
`Okamura in view of Belitz
`1. Overview of Okamura3
`Okamura discloses a user interface for “managing contents such as image
`
`files” based on locations and people associated with the content. SAMSUNG-
`
`1005, Abstract, [0091], [0110], [0313], FIG. 21, FIG. 41.
`
`As shown in FIG. 41 (below), Okamura discloses “a map view screen” that
`
`displays location-based clusters in an overlaid manner on an interactive map,
`
`where the user can select a cluster to view thumbnail images belonging to the
`
`cluster (as well as the number of digital files associated with the cluster), change
`
`the scale of the map (e.g., by adjusting the scale changing bar 781), and switch to a
`
`different screen (including a face-based index screen as described below).
`
`SAMSUNG-1005, [0215], [0354]-[0359], [0430]-[0431], FIG. 41; SAMSUNG-
`
`1003, [79]-[80]. As illustrated in FIG. 50 (below), selecting a location-based
`
`
`2 Dr. Greenspun provides a technology background at SAMSUNG-1003, [57]-[78].
`
`3 Descriptions provided for the references and combination thereof are incorpo-
`
`rated into each mapping that includes citations to these references. All emphasis is
`
`added unless otherwise indicated.
`
`7
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`cluster causes the user interface to display “contents belonging to the
`
`corresponding cluster” that are not overlaid on the interactive map. SAMSUNG-
`
`1005, [0439]-[0444].
`
`
`
`SAMSUNG-1005, FIG. 41 (left), FIG. 50 (right)
`
`In addition to its map view, Okamura discloses a people view for content
`
`that includes an index screen displaying “index images generated on the basis of
`
`face information.” SAMSUNG-1005, [0234]. The index screen includes an
`
`“image representing a face cluster, for example, a thumbnail image of each of [the]
`
`faces included in contents belonging to the face cluster” and “the pieces of
`
`information 433 related to the thumbnail image 432 [].” SAMSUNG-1005,
`
`[0246]-[0247], see also [0099], [0110], [0139], [0234], [0248]-[0260], [0267],
`
`FIG. 21; SAMSUNG-1003, [81]. As illustrated FIGS. 21 and 24 (below), selecting
`
`8
`
`

`

`Attorney Docket No. 39843-0117IP1
`IPR of U.S. Patent No. 10,621,228
`a face-based thumbnail image causes the user interface to display “contents
`
`included in the face cluster [].” SAMSUNG-1005, [0261].
`
`
`
`SAMSUNG-1005, FIG. 21 (left), FIG. 24 (right)
`
`2. Overview of Belitz
`Belitz describes a “user interface…configured to display a map and to
`
`display at least one marked location on said map.” SAMSUNG-1006, Abstract,
`
`[0001]-[0006], [0039], [0050]-[0052]. Belitz’s user interface displays map 409
`
`(see FIG. 4 below) with thumbnail images at various locations. Id. Map 409
`
`“display[s] all or a selected number of photographs stored in a device.”
`
`SAMSUNG-1006, [0016]. Belitz’s map 409 is interactive including features of
`
`“zooming in” and user operations, such as “placing a cursor above [a graphical
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`object] and clicking it.” SAMSUNG-1006, [0054]-[0056], [0060]; SAMSUNG-
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`1003, [82].
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`Attorney Docket No. 39843-0117IP1
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`SAMSUNG-1006, FIGS. 4a-c
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`
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`Each thumbnail (e.g., thumbnails 410a-d in FIG. 4b) is associated with a
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`location, and “examples of associations are photographs that have been taken at
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`those coordinates.” SAMSUNG-1006, [0052], [0062]. Belitz also displays a count
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`value partially overlapping the right corner of each thumbnail image (e.g., “6” for
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`thumbnail 410 in FIG. 4a). SAMSUNG-1006, [0052]; SAMSUNG-1003, [83]-
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`[84].
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`Responsive to selection of a thumbnail (e.g., thumbnail 410c), Belitz’s user
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`interface displays visual representations associated with the selected thumbnail on
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`a pop-up window 413 (illustrated in FIG. 4c). SAMSUNG-1006, [0057], [0060],
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`[0062]; SAMSUNG-1003, [85]. The user “can easily scroll back and forth among
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`these associated images and preview them in the popup window 413.” Id.
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`3.
`Combination of Okamura and Belitz
`As Dr. Greenspun explains, a POSITA would have found it obvious to
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`combine Okamura and Belitz (“Okamura-Belitz”). SAMSUNG-1003, [86]. Both
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`references (and the ’228 patent) come from the same field of endeavor: “managing
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`and using digital files such as photographs.” SAMSUNG-1001, 1:21-24;
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`SAMSUNG-1005, [0002], [0091]; SAMSUNG-1006, [0001], [0062]. Further,
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`Okamura and Belitz address the same problem (also purportedly solved by the
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`’228 patent): allowing “people to organize, view, preserve and share” their digital
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`photographs. SAMSUNG-1001, 1:61-67; SAMSUNG-1005, [0007]-[0013];
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`SAMSUNG-1006, [0002]-[0005]. Okamura and Belitz also describe analogous
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`techniques—both describe use of an interactive map with user-selectable markers
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`(clusters or thumbnail images) specifying the locations of photos and/or videos,
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`and use of those markers to retrieve the digital photos and/or videos linked to those
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`locations. SAMSUNG-1005, Abstract, [0091], [0110], [0313], FIGS. 18-21, FIG.
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`41; SAMSUNG-1006, [0039], [0050]-[0055], [0062]. With this background, a
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`IPR of U.S. Patent No. 10,621,228
`POSITA would have readily turned to Belitz when reviewing Okamura and would
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`have found it obvious to incorporate features of Belitz in Okamura. SAMSUNG-
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`1003, [86].
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`As Dr. Greenspun explains, a POSITA would have combined Okamura and
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`Belitz in two, alternative ways. SAMSUNG-1003, [87]. First, a POSITA would
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`have found it obvious to replace the location-based clusters used in Okamura’s
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`map view (shown in FIG. 41) with the thumbnail images used in Belitz’s map
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`view. Id. With this replacement, Okamura’s map view would function as
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`described in Okamura, except that it would display, on the map view, thumbnail
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`images as described by Belitz, instead of Okamura’s location-based clusters. Id.
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`Second, as an alternative way of viewing the combination of Okamura and Belitz,
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`a POSITA would have found it obvious to replace Okamura’s map-related views
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`(e.g., cluster map view shown in FIG. 18 or map view shown in FIG. 41) with
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`Belitz’s map view. Id. In this alternative, when a user provides input to display a
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`map-related view in Okamura, the combined system would display Belitz’s map
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`view, instead of Okamura’s. Id. As discussed below, both of these alternatives for
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`combining Okamura and Belitz would have been obvious to a POSITA and
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`independently render the Challenged Claims obvious.
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`As to the first way of combining Okamura and Belitz, as discussed in
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`Section III.A.1, Okamura discloses a map view (shown in FIG. 41) that displays
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`location-based clusters over an interactive map. Although Okamura describes its
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`clusters as “thumbnail” images of a portion of a map (SAMSUNG-1005, [0135],
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`[0221]-[0223], [0229]-[0231]), to the extent that the location-based clusters in
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`Okamura’s map view are not “thumbnail image[s]” as claimed, a POSITA would
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`have been motivated to combine Okamura and Belitz such that Okamura’s map
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`view displays selectable thumbnail images as disclosed in Belitz to obtain the
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`additional benefits as outlined below. SAMSUNG-1003, [88]. Below, Okamura’s
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`FIG. 41 has been modified to provide an example of how a POSITA would have
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`replaced Okamura’s location-based clusters with Belitz’s thumbnail images:
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`Attorney Docket No. 39843-0117IP1
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`
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`SAMSUNG-1006, FIG. 4a-b (top); SAMSUNG-1005, FIG. 41 (bottom)
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`A POSITA would have found it obvious that the above-described way of
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`organizing digital files using location selectable thumbnails would achieve
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`Okamura’s objective of “managing contents.” SAMSUNG-1005, [0091].
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`Specifically, as discussed in Belitz, the combination enhances a user’s experience
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`of “discern[ing] between the various objects” by providing “a good view of what
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`location is associated with what.” SAMSUNG-1006, [0002]. This teaching by
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`Belitz is consistent with Okamura’s objective, which is also to improve the user
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`experience: “each of contents belonging to each cluster can be also easily grasped
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`by the user.” SAMSUNG-1005, [0215]. Okamura and Belitz also describe
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`analogous methods of displaying an interactive map with user-selectable elements
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`(e.g., Belitz’s thumbnail images and Okamura’s clusters) and retrieving digital files
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`(e.g., photos and videos) associated with a given location. SAMSUNG-1003, [89].
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`A POSITA would have understood that Belitz’s thumbnail images displayed
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`on the interactive map are functionally equivalent to Okamura's location-based
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`clusters (at least because (1) both Belitz’s thumbnail images and Okamura's
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`clusters are associated with a given location, (2) both are displayed on the
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`interactive map, and (3) both are dynamically generated/modified based on user
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`interaction including zooming in/out on the map) and could be used as an
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`alternative to the clusters on Okamura's map view screen. SAMSUNG-1003, [90].
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`It would have been obvious to a POSITA to incorporate Belitz’s thumbnail images
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`(including a count indicator) to provide added functionality that allows a user to
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`preview pictures associated with a given location as taught by Belitz. SAMSUNG-
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`1006, [0004]; SAMSUNG-1003, [90].
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`A POSITA would have been motivated to make this modification because
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`Belitz teaches that “it would be useful to be able to present a user with an overview
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`of associated images to special locations which enables [the] user to clearly see the
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`associations.” SAMSUNG-1006, [0004], [0015]. A POSITA also would have
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`considered Belitz’s thumbnail technique to be a known and predictable alternative
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`to Okamura’s clusters, and that using thumbnails could appeal to certain users,
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`thereby improving usability for such users. SAMSUNG-1003, [91]. For example,
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`a POSITA would have known, before 2010, that certain users preferred interactive
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`maps that used thumbnails to identify the locations of photos. Id. (citing
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`SAMSUNG-1022, 4 (“Where Picasa has the edge over Flickr and SmugMug is in
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`showing thumbnails of each image on the map.”)).
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`Indeed, contemporaneous evidence shows that a POSITA would have
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`understood that selectable graphical clusters would have been obvious to replace
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`with “smaller versions of the captured images (e.g., thumbnail images).”
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`SAMSUNG-1021, [0030]. The well-known nature of using location selectable
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`thumbnails and a POSITA’s understanding of location selectable thumbnails as an
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`obvious option for presenting digital files is further demonstrated by multiple
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`applications (e.g., Picasa, Panoramio; shown below) that displayed thumbnail
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`images on a map. SAMSUNG-1022; SAMSUNG-1023; SAMSUNG-1024, 239,
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`243; SAMSUNG-1003, [92].
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`Attorney Docket No. 39843-0117IP1
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`SAMSUNG-1022 (left); SAMSUNG-1023 (right)
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`Alternatively, in the second way of combining Okamura and Belitz
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`discussed above, a POSITA would have found it obvious to substitute Okamura’s
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`map-related views (including the interactive map and selectable location-based
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`clusters) with Belitz’s interactive map (including selectable thumbnail images), for
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`at least the same reasons described above including the user’s increased