Samsung Electronics Co Ltd v. MemoryWeb LLC

1. Case Identification

• Case #: IPR2022-00222
• Patent #: 10,621,228
• Filed: December 3, 2021
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): MemoryWeb, LLC
• Challenged Claims: 1-19

2. Patent Overview

• Title: Method and Apparatus for Managing Digital Files
• Brief Description: The ’228 patent discloses a method for managing and displaying digital files, such as photos and videos, through a user interface that provides a "map view" and a "people view." The map view displays location-based thumbnails on an interactive map, and the people view displays person-based thumbnails organized by facial recognition.

3. Grounds for Unpatentability

Ground 1: Obviousness over Okamura and Belitz - Claims 1-19 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 disclosed the core framework of the challenged claims, including a system for managing digital content that provides different views based on location ("place"), event, and faces ("people"). Okamura’s system displayed location-based "clusters" on an interactive map, and selecting a cluster revealed the associated digital files. Okamura also disclosed a separate "people view" with selectable, face-based thumbnails that, when selected, showed all files associated with a specific person. Petitioner contended that Okamura taught all elements of the claims except for displaying specific, location-selectable thumbnail images on the map, instead using more generic "clusters."

  • To supply this missing element, Petitioner turned to Belitz. Belitz disclosed a user interface for displaying photographs on an interactive map using selectable thumbnail images at their corresponding geographic locations. Belitz also taught displaying a numerical indicator on or near the thumbnail to show the quantity of photos at that location. Petitioner argued that combining Belitz’s thumbnail-on-map interface with Okamura's comprehensive file management system (including its "people view") would result in the invention claimed in the ’228 patent. The combined system would use Belitz’s clear thumbnail display within Okamura’s map view and retain Okamura’s distinct people view functionality, thereby meeting all limitations of independent claim 1 and the corresponding dependent claims.

  • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSITA) would have been motivated to combine Okamura and Belitz for several reasons. Both references were in the same field of endeavor (managing digital photo files) and addressed the same problem of allowing users to efficiently organize and view their photos. A POSITA would have recognized that replacing Okamura’s generic map "clusters" with Belitz's actual photo thumbnails was a simple and predictable design choice that would improve the user experience by providing a direct visual preview of the content at each location. This modification was presented as a known alternative for achieving Okamura’s stated goal of making content "easily grasped by the user."

  • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have had a high expectation of success in combining the references. The proposed modification was characterized as the simple substitution of one known user interface element (Okamura's clusters) for a functionally equivalent and well-understood alternative (Belitz's thumbnails). Implementing this change would have required only routine software programming skills and would have predictably resulted in an improved, more intuitive interface without altering the fundamental operation of either system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a).
• Advanced Bionics (§325(d)): Petitioner asserted that the primary references, Okamura and Belitz, were not considered by the USPTO during the original prosecution of the ’228 patent. Therefore, the petition raised new arguments and art that had not been previously evaluated.
• General Plastic & Fintiv (§314(a)): Petitioner contended that an analysis of the relevant factors weighed heavily against denial. It argued that it was separate and unrelated to prior petitioners challenging the ’228 patent (Unified Patents and Apple) and that its petition was filed promptly after it learned of the prior art. Regarding the parallel district court litigation, Petitioner argued that the case was in its early stages with minimal investment, and a Final Written Decision (FWD) from the IPR would issue well before the proposed trial date. To further promote efficiency and avoid overlap, Petitioner stipulated that if the IPR were instituted, it would not pursue invalidity challenges in district court based on the same prior art grounds. Finally, Petitioner asserted that the merits of its unpatentability challenge were particularly strong, which in itself justified institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’228 patent as unpatentable.