Samsung Electronics Co Ltd v. MemoryWeb LLC

1. Case Identification

• Case #: IPR2022-00221
• Patent #: 10,423,658
• Filed: December 17, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): MemoryWeb, LLC
• Challenged Claims: 1-15

2. Patent Overview

• Title: Method and Apparatus for Managing Digital Files
• Brief Description: The ’658 patent discloses a computer-implemented method for managing and displaying digital photographs and videos. The system uses geotags to display selectable thumbnail images on an interactive map and uses face recognition to organize media into selectable, person-specific collections.

3. Grounds for Unpatentability

Ground 1: Obviousness over Okamura and Belitz - Claims 1-15 are obvious over Okamura in view of Belitz.

• Prior Art Relied Upon: Okamura (Application # 2011/0122153) and Belitz (Application # 2010/0058212).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Okamura taught most limitations of the challenged claims, including a user interface for managing digital files with selectable tabs for different views (e.g., “FACE,” “PLACE”). Okamura’s “PLACE” view disclosed displaying location-based “clusters” on an interactive map, and its “FACE” view disclosed displaying selectable, face-based thumbnails to view content associated with a person. However, Petitioner contended Okamura’s map clusters were not thumbnail images of the underlying photos. Belitz was argued to supply this missing element, as it explicitly disclosed an interactive map displaying selectable photo thumbnails at specific geographic locations, with each thumbnail having a partially overlapping “count value” indicating the number of associated photos.
  • Motivation to Combine: Petitioner asserted a POSITA would combine these references because they address the same problem of organizing and viewing digital photographs. A POSITA would have been motivated to replace Okamura’s generic map clusters with Belitz’s more informative photo thumbnails to improve usability and provide the user with a better preview of the content at each location. This modification was presented as a simple substitution of one known UI element for another, functionally equivalent element to achieve a predictable result and improve the user experience.
  • Expectation of Success: A POSITA would have had a high expectation of success because combining the teachings required only routine software engineering to substitute known UI elements. The underlying function of selecting a map marker to view associated photos remained the same, making the integration predictable.

Ground 2: Obviousness over Okamura, Belitz, and Rasmussen - Claims 3-4 are obvious over the combination of Okamura, Belitz, and Rasmussen.

• Prior Art Relied Upon: Okamura (Application # 2011/0122153), Belitz (Application # 2010/0058212), and Rasmussen (Application # 2006/0206264).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Okamura/Belitz combination to address the limitations of claims 3 and 4, which require displaying a map image that indicates the specific geographic coordinates of a selected photo. While the primary combination taught displaying a map view, Petitioner argued Rasmussen was necessary to explicitly teach displaying the textual geographic coordinate values (e.g., latitude/longitude). Rasmussen disclosed a map interface where selecting a marker could display a callout window containing geocode information.
  • Motivation to Combine: A POSITA would incorporate Rasmussen’s teaching to enhance the user experience by providing more precise location information than just a visual map marker. Adding this feature was argued to be an obvious improvement to the Okamura/Belitz system.

Ground 3: Obviousness over Okamura, Belitz, and Gossweiler - Claims 6-12 are obvious over the combination of Okamura, Belitz, and Gossweiler.

• Prior Art Relied Upon: Okamura (Application # 2011/0122153), Belitz (Application # 2010/0058212), and Gossweiler (Application # 2008/0276279).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claims related to the “people view,” specifically the limitation in claim 6 of displaying person-selectable thumbnails in alphabetical order. While Okamura taught a “people view” with face-based thumbnails, it did not explicitly disclose alphabetical sorting. Gossweiler was introduced because it taught a face index screen, similar to Okamura’s, where the displayed people “can be sorted ... alphabetically.”
  • Motivation to Combine: A POSITA would find it obvious to apply Gossweiler’s alphabetical sorting method to Okamura’s face index screen. Alphabetical sorting was argued to be a well-known and conventional technique for organizing lists of items, and applying it would have been an obvious design choice to improve usability and help users find specific people more easily.
• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 8-9 and 11-12 based on combinations including Yee (Application # 2009/0210793), which taught displaying a person-specific map showing all locations where that person has photos.

4. Key Technical Contentions (Beyond Claim Construction)

• Applicability of Okamura’s Embodiments: A central contention was that a POSITA would have understood that features described in Okamura’s first embodiment (e.g., face and event cluster views presented as an index) were also applicable to its second embodiment (a map-based location view). Petitioner argued that the second embodiment only changed the presentation of the location view, and a POSITA would have found it obvious that the separate face and event clustering functionalities would be retained alongside the new map interface. This interpretation allowed Petitioner to combine Okamura’s teachings on face/people views with its map view to meet various claim limitations.

5. Arguments Regarding Discretionary Denial

• Arguments Against §325(d) Denial: Petitioner argued denial would be improper because the primary prior art references (Okamura and Belitz) were never considered by the examiner during prosecution. The allowance was based on a conclusory statement without a substantive rejection on the merits.
• Arguments Against §314(a) Denial (Fintiv): Petitioner contended that the Fintiv factors strongly favored institution. The petition was filed nearly five months before the statutory bar date, at a very early stage in the co-pending district court litigation where no substantive orders had been issued or discovery conducted. Furthermore, the scheduled trial date in the litigation was after the projected date for a Final Written Decision (FWD) in the IPR. Petitioner also stipulated it would not pursue invalidity challenges in district court based on the same primary references if the IPR was instituted, thus avoiding duplicative efforts.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of Patent 10,423,658 as unpatentable under 35 U.S.C. §103.