Apple Inc v. MemoryWeb LLC

1. Case Identification

• Case #: PGR2022-00006
• Patent #: 11,017,020
• Filed: November 20, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): MemoryWeb, LLC
• Challenged Claims: 1-59

2. Patent Overview

• Title: Digital Photo Management
• Brief Description: The ’020 patent describes methods for managing digital photos using a graphical user interface. The interface includes two primary features: a “map view” for displaying photos based on the geographic location where they were taken, and a “people view” for selecting and displaying photos containing specific individuals.

3. Grounds for Unpatentability

Ground 1: Claims 1-59 are obvious over A3UM

• Prior Art Relied Upon: A3UM (Aperture 3 User Manual, published February 2010).
• Core Argument for this Ground: Petitioner argued that every limitation of the challenged claims is either directly taught by or would have been obvious from A3UM, a user manual for Apple’s own pre-existing Aperture 3 software. A3UM describes a comprehensive photo management system that was publicly available more than a year before the ’020 patent’s earliest possible priority date.
  • Prior Art Mapping:
    • Petitioner asserted that A3UM’s “Places” view directly corresponds to the ’020 patent’s claimed “map view.” A3UM discloses an interactive map (an embedded Google Map) that displays pins at locations where photos were taken. Selecting a pin displays the photos from that location in a browser pane.
    • Petitioner contended that A3UM’s “Faces” view directly corresponds to the claimed “people view.” A3UM’s interface displays snapshots of individuals whose faces have been identified in photos, along with their names. Selecting a person’s snapshot displays the photos containing that individual.
    • For the “first person view” (recited in independent claims 1 and 31), which is triggered by selecting a person and includes a digital file and a map image, Petitioner argued that A3UM discloses this functionality. Selecting a person in A3UM’s “Faces” view displays thumbnails of photos containing that person. While A3UM does not expressly show a full-size digital file in this specific view, Petitioner argued it would have been an obvious modification to a Person of Ordinary Skill in the Art (POSITA). A core paradigm of A3UM is its Viewer/Browser interface, where selecting a thumbnail in the Browser displays the full-size image in the Viewer. A POSITA would have found it a routine design choice to apply this existing functionality to the “Faces” view to improve usability.
    • For the slideshow limitation (claim 1), Petitioner pointed to A3UM’s explicit slideshow functionality, which can be initiated for any selected group of images, including those associated with a specific person.
    • For the date-based grouping limitation (claim 31), Petitioner argued that A3UM’s “Smart Albums” feature teaches this element. A3UM allows a user to create a “Smart Album” by specifying search criteria, including a specific date or date range selected from a calendar interface, which then groups all photos matching that criteria.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument focused on obvious design modifications. Petitioner argued a POSITA would be motivated to modify A3UM’s “Faces” view to display a full-size image (as in the Viewer) to improve the user experience, particularly for confirming unnamed faces, by leveraging an existing and well-understood interface paradigm within the same software.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in making any minor modifications, as it involved applying known interface elements (like the Viewer/Browser) to different sets of images (those selected via the Faces view) within the same, integrated software environment.

Ground 2: Claims 6-7 and 38-39 are unpatentable under 35 U.S.C. §112

• Core Argument for this Ground: Petitioner asserted that these claims lack adequate written description. The claims require a “people view” that includes thumbnails for multiple people (e.g., a first and second person) and a “first digital file” associated with the first person, all displayed simultaneously. Petitioner argued the ’020 patent’s specification and figures fail to describe or illustrate such a view, instead only showing a people view with thumbnails or a separate view with a full digital file, but never both together as claimed. This absence, Petitioner contended, demonstrates a lack of possession of the claimed invention.

4. Arguments Regarding Discretionary Denial

• Petitioner argued the Board should not exercise discretionary denial under §314(a) based on the Fintiv factors. The parallel district court litigation was in a very early stage, with no claim construction or significant discovery completed. The statutorily mandated Final Written Decision (FWD) in the Post Grant Review (PGR) would issue more than a year before the proposed trial date in the litigation. Furthermore, Petitioner stipulated that it would not pursue the same invalidity grounds in district court if the PGR is instituted. Critically, Petitioner argued the petition is exceptionally strong because the primary prior art, A3UM, was not before the Examiner, who therefore allowed the claims without considering the most relevant art.

5. Relief Requested

• Petitioner requested institution of a Post Grant Review and cancellation of claims 1-59 of the ’020 patent as unpatentable under 35 U.S.C. §103 and/or §112.