PTAB

PGR2022-00034

Samsung Electronics Co Ltd v. MemoryWeb LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Managing Digital Files
  • Brief Description: The ’823 patent discloses a method and system for managing digital files, such as photographs, through a graphical user interface. The interface features a "search-filter view" that allows a user to filter files based on criteria like "People" or "Locations," and navigate through different views to see files associated with a specific person or location, including a detailed view with metadata and a map.

3. Grounds for Unpatentability

Ground 1: Obviousness over Pogue and Engst - Claims 1-25 and 27-34 are obvious over Pogue in view of Engst.

  • Prior Art Relied Upon: Pogue (iPhoto ’09 The Missing Manual (2009)) and Engst (Visual Quickstart Guide iPhoto ’09 (2009)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Pogue and Engst, which both describe Apple's iPhoto ’09 software, collectively disclose all limitations of the challenged claims. iPhoto ’09 provided an interface with a "source pane" that functioned as the claimed "search-filter view," allowing users to filter photos by criteria including "Faces" and "Places." Selecting the "Faces" criterion displayed a "Faces corkboard," which Petitioner mapped to the claimed "people view." A user could then select a person's snapshot to display all photos containing that person, corresponding to the "first person view." Finally, selecting an "info box" for a specific photo would display a detail view containing the image, associated information (e.g., date, comments), and a map showing where the photo was taken, fulfilling the limitations of the claimed "detail view."
    • Motivation to Combine: Petitioner contended that the motivation to combine was explicit and direct. Pogue and Engst both serve as user manuals for the exact same commercial software product, iPhoto ’09. A person of ordinary skill in the art (POSITA) seeking a comprehensive understanding of the software's features would have naturally consulted both publications, treating them as a single, unified source of information.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the "combination" merely involved understanding the complete feature set of a single, existing, and functional software product as described across two complementary guides.

Ground 2: Obviousness over Pogue, Engst, and Belitz - Claim 26 is obvious over Pogue and Engst in view of Belitz.

  • Prior Art Relied Upon: Pogue, Engst, and Belitz (Application # 2010/0058212).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed claim 26, which requires that indications on an interactive map be a "third image and a fourth image." The primary combination of Pogue and Engst taught that iPhoto ’09 used simple "red pins" as location indicators on its map, not images. Petitioner asserted that Belitz remedied this deficiency by disclosing an interactive map that uses thumbnail images as graphical objects to mark the locations of associated photographs.
    • Motivation to Combine: A POSITA would combine Belitz’s teachings with the iPhoto ’09 system to improve user experience. Belitz taught that displaying image previews on a map was useful for giving users a clear overview of associated photos for a location. Petitioner argued it would have been a simple and obvious substitution to replace iPhoto’s generic pins with Belitz’s more informative thumbnail images. This modification was a known design alternative intended to enhance usability, a predictable improvement.
    • Expectation of Success: Success would have been expected, as this modification involved substituting one known type of map marker (pins) for another (thumbnails) to achieve the known benefit of providing a visual preview.

Ground 3: Obviousness over Pogue, Engst, and Ripps - Claims 12-14 are obvious over Pogue and Engst in view of Ripps.

  • Prior Art Relied Upon: Pogue, Engst, and Ripps (Application # 2005/0116954).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted claims 12-14, which require the display of "relationship information," specifically a "family relationship," within a person view. While iPhoto ’09 implicitly suggested relationships through labels like "Dad" or "Grandpa," it lacked a structured system for defining and displaying them. Ripps, in contrast, explicitly described a method and system for generating and displaying a graphical "family tree" with defined relationships.
    • Motivation to Combine: Petitioner argued that a POSITA would integrate the structured family relationship features from Ripps into iPhoto ’09 to enhance its organizational capabilities for a common use case: managing family photos. Ripps was motivated by creating an "aesthetically pleasing display" of family information. Combining this with iPhoto’s photo management capabilities would be an obvious improvement, providing users with richer context for their photo collections.
    • Expectation of Success: A POSITA would have reasonably expected success in combining these systems, as it involved adding a known organizational feature (family tree data) to a photo management application to achieve the predictable benefit of improved content organization and presentation.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was improper because the asserted prior art and arguments were not previously considered by the USPTO during prosecution.
  • Petitioner further argued that the factors from Apple Inc. v. Fintiv, Inc. weighed in favor of institution. The petition was filed well before the statutory bar and early in the parallel district court litigation, before significant resources were expended. To promote judicial efficiency, Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the Post-Grant Review (PGR) was instituted.

5. Relief Requested

  • Petitioner requests institution of PGR and cancellation of claims 1-34 of the ’823 patent as unpatentable.