PTAB

IPR2022-00031

Apple Inc v. MemoryWeb LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Digital File Management System
  • Brief Description: The ’228 patent describes methods for managing digital photos using a user interface with two primary components: a "map view" for selecting photos based on the geographic location where they were taken, and a "people view" for selecting photos based on the individuals depicted in them.

3. Grounds for Unpatentability

Ground 1: Claims 1-19 are obvious over A3UM in view of Belitz

  • Prior Art Relied Upon: A3UM (Aperture 3 User Manual, Feb. 2010) and Belitz (Application # 2010/0058212).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that A3UM, a user manual for Apple's Aperture 3 software, discloses a photo management system that meets nearly every limitation of the challenged claims. A3UM taught an interface with a "Places" view (an interactive map for selecting photos by location) and a "Faces" view (for selecting photos by individuals). Petitioner argued the only significant distinction is that A3UM's "Places" map used selectable "pins" to mark photo locations, whereas the ’228 patent claims require selectable "thumbnail images" on the map. To address this, Petitioner contended that Belitz explicitly taught an interactive map interface for photo management that uses selectable photo thumbnails as graphical markers for photo locations. The combination of A3UM's comprehensive system with Belitz's map marker approach allegedly rendered the claims obvious. For dependent claims, Petitioner argued that features like displaying a photo count (claims 2, 5), zooming to modify markers (claims 8-9), or displaying photos in a separate browser pane (claim 13) were all disclosed in the proposed A3UM-Belitz combination.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine A3UM and Belitz because both references are from the same field of photo management and address the common problem of organizing and retrieving digital photos. Belitz’s use of thumbnails was presented as a well-known, functionally equivalent alternative to A3UM’s pins. A POSITA would have been motivated to substitute Belitz's thumbnail markers into A3UM's system to improve usability, as contemporary evidence suggested some users preferred the richer visual information provided by thumbnails over simple pins or dots on a map.
    • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success. The proposed modification was described as a predictable substitution of one known user interface element for another to perform the same function—identifying and selecting photos at a location. Success was further predictable because A3UM utilized the Google Maps API, which, by 2010, provided straightforward tools for developers to implement custom map markers, including photo thumbnails, with only routine effort.

4. Arguments Regarding Discretionary Denial

  • Arguments Against Fintiv Denial: Petitioner presented arguments against discretionary denial under Fintiv, contending that the factors favored institution. It was argued that the parallel district court litigation was in its nascent stages, with minimal investment by the parties and no substantive events like claim construction having occurred. Petitioner noted the district court trial was scheduled for well after the statutory deadline for a Final Written Decision (FWD) in the inter partes review (IPR). Furthermore, Petitioner stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds in the district court litigation, thereby avoiding duplicative efforts.
  • Arguments Against §325(d) Denial: Petitioner argued that denial under §325(d) would be improper because the core prior art references, A3UM and Belitz, were not before the Examiner during the original prosecution of the ’228 patent. Petitioner contended that these references are materially different from the art of record and teach the exact combination of a "map view" and "people view" that the Examiner found patentable, suggesting the Examiner erred due to an incomplete record.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-19 of Patent 10,621,228 as unpatentable.