Apple Inc v. MeMoryWeb LLC

1. Case Identification

• Case #: IPR2022-00032
• Patent #: 9,552,376
• Filed: November 8, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): MemoryWeb, LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Digital Photo Management Methods
• Brief Description: The ’376 patent claims methods for managing digital photos using user interface elements to display desired photos. The methods include displaying a "map view" showing where photos were taken and displaying selectable tags overlaid on an image that link to related images.

3. Grounds for Unpatentability

Ground 1: Obviousness over A3UM, Belitz, and Rasmussen - Claims 1-12 are obvious over A3UM in view of Belitz and Rasmussen.

• Prior Art Relied Upon: A3UM (Aperture 3 User Manual, Feb. 2010), Belitz (Application # 2010/0058212), and Rasmussen (Patent 7,620,496).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of these three references teaches every limitation of the challenged claims. The primary reference, A3UM, which was not before the examiner, discloses a sophisticated photo management system with most of the claimed features. A3UM teaches a "Places" view with an interactive map (using the Google Maps API) that displays pins at photo locations, and a "Faces" view for tagging and organizing photos by person.

  Petitioner asserted that the few distinctions between A3UM and the claims are rendered obvious by the secondary references. Specifically, where the ’376 patent requires using "thumbnail images" as selectable map markers, A3UM uses simple pins. Belitz was cited to cure this distinction by explicitly teaching the use of selectable photo thumbnails on an interactive map to represent photo locations. Belitz also teaches overlaying a count of photos on these thumbnails.

  Furthermore, where the ’376 patent requires "indicating the geographical coordinates" on a map image, A3UM does not explicitly display the coordinate values on its map. Rasmussen was cited to teach this feature, as it discloses displaying specific latitude/longitude coordinates in a callout window associated with a map marker in a Google Maps-based system. The combination of these teachings, Petitioner argued, satisfies all limitations of independent claims 1, 5, and 12, as well as their dependent claims.

  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine A3UM and Belitz because they exist in the same field of endeavor (photo management), address the same problems (organizing and viewing photos geographically), and use analogous techniques (interactive maps with markers). A POSITA would have recognized Belitz's thumbnail markers as a functional and known alternative to A3UM's pins, motivated by the desire to improve usability by providing users with a clearer visual cue of the photos at a given location.

  A POSITA would have been further motivated to incorporate Rasmussen's teachings to display geographic coordinates. This modification would address a known user preference for seeing precise location data and would have been a simple addition, as A3UM already used the extensible Google Maps API that Rasmussen describes. The motivation was to combine known features to create a more feature-rich and useful product.

  • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success in making these combinations. Modifying A3UM to use Belitz's thumbnail-and-count markers instead of pins was described as the predictable substitution of one known UI element for another to achieve a predictable result. Similarly, adding Rasmussen's coordinate display to A3UM's Google Map interface would involve using a standard, well-documented API function to implement a known feature, leading to a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §314(a) (based on Fintiv factors) or §325(d).
• Arguments against §314(a) Fintiv Denial: Petitioner contended that the factors strongly favor institution. The parallel district court litigation was in its early stages with minimal investment from the parties. The scheduled trial date of May 30, 2023, was well after a Final Written Decision (FWD) would be due in the IPR. Petitioner also stipulated that, if trial is instituted, it will not assert in the parallel litigation that any challenged claim is invalid on the same grounds raised in the petition. Finally, Petitioner argued the petition presents a strong case for unpatentability, as it relies on compelling prior art (A3UM, Belitz) that was never considered by the USPTO during prosecution.
• Arguments against §325(d) Denial: Petitioner argued that denial under §325(d) would be improper because the core prior art references—A3UM, Belitz, and Rasmussen—are new and were not before the Examiner. Petitioner contended this art is materially different from the art of record and that the Examiner did not have the benefit of the expert declaration provided with the petition, thus warranting a fresh review.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of Patent 9,552,376 as unpatentable under 35 U.S.C. §103.