PTAB

IPR2022-00033

Apple Inc v. MemoryWeb LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Digital File Management
  • Brief Description: The ’658 patent discloses computer-implemented methods for managing and displaying digital files, such as photos and videos. The system uses various selectable interface elements to organize and retrieve files based on metadata, including displaying files on an interactive map view based on their geographic location.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 5-15 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 argued that A3UM, a user manual for Apple’s photo management software, discloses nearly all limitations of the challenged claims. A3UM teaches a “Places” view that displays an interactive Google Map with selectable pins at locations where photos were taken. Selecting a pin displays the corresponding photos in a browser pane. The only significant element A3UM arguably lacks is the use of “thumbnail images” as the map markers. Belitz was alleged to supply this missing element, as it explicitly teaches a user interface with an interactive map where photo locations are marked with selectable photo thumbnails, which can also be overlaid with a count of the photos at that location. The combination of A3UM’s comprehensive photo management system with Belitz’s specific teaching of using thumbnails as map markers renders the claims obvious.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine A3UM and Belitz because both relate to the same field of photo management and address the same problem of organizing and viewing digital photos. Belitz’s use of thumbnails instead of generic pins was presented as a known and functionally equivalent alternative. A POSITA would have recognized that replacing A3UM’s pins with Belitz’s more informative thumbnails would be a predictable design choice to improve usability, as it provides users with a visual preview of the images at a given location directly on the map.
    • Expectation of Success: Petitioner asserted a high expectation of success. A3UM’s map feature was built on the Google Maps API, which was widely known before 2011 to be easily customizable. Implementing custom markers, such as photo thumbnails as taught by Belitz, was a routine task for developers and a common feature in many contemporary applications like Picasa Web Albums and Panoramio.

Ground 2: Claims 3-4 are obvious over A3UM, 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: This ground addresses the additional limitations in claims 3 and 4, which require displaying a map image that indicates the specific geographic coordinates (e.g., latitude/longitude) of a selected photo. Petitioner argued that the combination of A3UM and Belitz provides the base system as described in Ground 1. A3UM itself discloses a “Metadata Inspector” pane that can display a small map with a pin for a selected photo. However, to the extent A3UM’s map pane does not explicitly display the text of the coordinates, Rasmussen teaches this feature. Rasmussen discloses a digital mapping system that displays a map marker popup window showing detailed location information, including “latitude/longitude and/or geocode information.”
    • Motivation to Combine: A POSITA would have been motivated to incorporate Rasmussen’s teaching into the A3UM/Belitz system to enhance the user experience. Displaying precise GPS coordinates was a known technique for providing users with detailed location data. Since A3UM already used GPS metadata to place pins on the map and allowed users to view metadata, adding an explicit display of the coordinates on the map view as taught by Rasmussen would have been a logical and incremental improvement to provide more comprehensive information to the user.
    • Expectation of Success: The expectation of success was argued to be high. Modifying a map marker’s callout or information window on a Google Maps-based platform (as used in A3UM) to include additional text strings like GPS coordinates was a straightforward task for a skilled artisan.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under Fintiv. The parallel district court litigation was in its early stages, with a proposed trial date far in the future, meaning a Final Written Decision (FWD) in the IPR would issue well before trial.
  • Petitioner stipulated that, if the IPR is instituted, it will not assert the same invalidity grounds in the district court litigation, mitigating concerns about overlapping issues and duplicative efforts.
  • Petitioner emphasized the strength of the petition, noting that the primary prior art references (A3UM and Belitz) were not before the examiner during the original prosecution, and thus the petition raised issues that had never been substantively considered by the USPTO.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’658 patent as unpatentable.