Apple Inc. v. Memoryweb, LLC

• Decision Date: 18 May 2023
• Docket Number: IPR2022-00033,Patent 10,423,658 B2
• Parties: APPLE INC., Petitioner, v. MEMORYWEB, LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

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APPLE INC., Petitioner,
v.
MEMORYWEB, LLC, Patent Owner.

No. IPR2022-00033

Patent 10,423,658 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 18, 2023

PETITIONER: Jeffrey P. Kushan Thomas A. Broughan, III Scott M. Border SIDLEY AUSTIN LLP

PATENT OWNER: Jennifer Hayes George Dandalides NIXON PEABODY LLP

Before LYNNE H. BROWNE, NORMAN H. BEAMER, and KEVIN C. TROCK, Administrative Patent Judges.

JUDGMENT

BROWNE, Administrative Patent Judge.

Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a)

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I. INTRODUCTION

We have authority to hear this inter partes review under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, we determine that Petitioner, Apple, Inc. ("Apple"), has shown by a preponderance of the evidence that claims 1-15 (the "challenged claims") of U.S. Patent No. 10,423,658 B2 (Ex. 1001, "the '658 Patent") are unpatentable. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).

A. Procedural History

The Petition (Paper 1, "Pet." or "Petition") requested inter partes review of the challenged claims of the '658 Patent. Patent Owner, MemoryWeb, LLC, filed a Preliminary Response. Paper 8 ("Prelim. Resp."). With our authorization, Petitioner filed a Preliminary Reply (Paper 10), and Patent Owner filed a Preliminary Sur-reply (Paper 11). Based upon the record at that time, we instituted inter partes review on all challenged claims on the grounds presented in the Petition. Paper 12 ("Institution Decision" or "Dec.").

After institution, Patent Owner filed a Response (Paper 20, "PO Resp."), Petitioner filed a Reply (Paper 26, "Pet. Reply"), and Patent Owner filed a Sur-reply (Paper 31, "PO Sur-reply").

Patent Owner filed a Motion to Exclude certain evidence (Paper 34). Petitioner opposed the Motion (Paper 35). Patent Owner filed a Reply to Petitioner's Opposition to the Motion (Paper 38).

On March 14, 2023, an oral hearing was held.

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B. Real Party-in-Interest

Petitioner states that it "is the real party-in-interest for this petition." Pet. 2. Patent Owner states that it is the real party-in-interest. See Paper 3, 2. See also Paper 7, 2; Paper 19, 2.

C. Related Matters

According to the parties, the '658 Patent was asserted in the following district court proceedings: MemoryWeb, LLC v. Apple Inc., Case No. 6:21-cv-00531 (W.D. Tex.); MyHeritage (USA), Inc. et. al. v. MemoryWeb, LLC, Case No. 1:21-cv-02666 (N.D. Ill.) (dismissed); and MemoryWeb, LLC v. Samsung Electronics Co., Ltd. et al., Case No. 6:21-cv-00411 (W.D. Tex.). Pet. 3; Paper 3, 2; Paper 7, 2; Paper 19, 2.

Patent Owner also identifies U.S. Patent No. 9,098,531 ("the '531 patent"), U.S. Patent No. 9,552,376 ("the '376 patent"), U.S. Patent No. 10,621,228 ("the '228 patent"), U.S. Patent No. 11,017,020 ("the '020 patent"), U.S. Patent No. 11,163,823 ("the '823 patent"), and pending U.S. Patent Application 17/459,933 as related to the '658 Patent. Paper 7, 2-3.

Patent Owner additionally indicates the following inter partes proceedings are related matters: Apple Inc. v. MemoryWeb, LLC, IPR2022-00111 (PTAB) challenging the '020 patent; Apple Inc. v. MemoryWeb, LLC, PGR2022-00006 (PTAB) challenging the '020 patent; Apple Inc. v. MemoryWeb, LLC, IPR2022-00031 (PTAB) challenging the '228 patent; Apple Inc. v. MemoryWeb, LLC, IPR2022-00032 (PTAB) challenging the '370 patent; and Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (PTAB), (challenging the '228 patent.

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D. The '658 Patent (Ex. 1001)

The '658 Patent relates to a computer-implemented system and method for managing and using digital files such as digital photographs. Ex. 1001, 1:16-19. In particular, the '658 Patent aims to provide an "interactive platform" for users to gather, organize, view, navigate, search, share and archive digital files, e.g., digital photographs and videos. Id. at 13:12-18, 13:56-59. The interactive platform may be provided via an "Application" having various "Application Views" for interaction with and organization of digital files. Id. at 8:59-9:7. A screenshot of an exemplary type of Application View, a "Location Application View," is shown in Figure 41, reproduced below. Id. at 4:3-4.

(Image Omitted)

As shown in the Location Application View interface of Figure 41, "Digital Files are displayed within an interactive map (Google map shown as

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an example)." Ex. 1001, 29:25-29. Further, "[i]n this view, individual or groups of Digital Files are illustrated as photo thumbnails (see indicators 0874 and 0875) on the map and the user can select the thumbnail to see all the Digital Files with the same location." Id. at 29:32-36. In the case that the user selects either one of the thumbnails, a "Single Location Application View" interface corresponding to the location is presented to the user, as shown in the bottom portion of Figure 34 reproduced below. Id.

(Image Omitted)

Focusing on the single location (1630) Locations Application View, an "individual location name is displayed at the top of the page (1632)." Ex. 1001, 24:22-24. The single location Locations Application View further displays "[t]humbnails of each Digital File within the specific collections" of

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digital files. Id. at 24:25-26; see id. at 23:56-59, Fig. 33. In the example shown in Figure 34, "one photo (1633) taken at Wrigley Field (1634) that is associated with the location called Wrigley Field" is displayed. Id. at 24:2628.

Turning to another Application View described by the '658 Patent, a "Multiple People Application View" is shown in Figure 32 reproduced below. Id. at 3:58.

(Image Omitted)

The Multiple People Application View "can be seen by selecting 'People' (1401) from any of the Application Views within the Application." Ex. 1001, 22:46-48. As shown in Figure 32, "Multiple People Application View" 1400 "display[s] all the people that were created within the user's Application." Id. at 22:44-46. "For each person, a thumbnail of their face

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along with their name is depicted. In this figure, Jon Smith (1403) and JC Jon Smith (1404) along with some other people are illustrated." Id. at 22:52-55.

Further, "[f]or each person," there are "tags that are associated to [that] person." Ex. 1001, 23:4-6. In "Single People Profile Application View" 1430, associated tags are used show that there are, e.g., "four photos (1452) associated with that person." Id. at 23:6-9. In another example, the person "grandma" has been tagged in, and so, is associated with, 100 photos. Id. at 24:56-59. Put another way, digital files have tags, e.g., in a "Tag Block of the Relationship Table for the Digital File," which associate a particular digital file with a particular person or otherwise characterizes and documents the digital file. See id. at 20:1-6; 24:42-52.

E. Challenged Claims

Petitioner challenges claims 1-15 of the '658 Patent. Pet. 1. Claim 1, the only independent claim is reproduced below:

1. A computer-implemented method of displaying at least a portion of a plurality of (i) digital photographs, (ii) videos, or (iii) a combination of (i) and (ii), each of the digital photographs and videos being associated with a geotag indicative of geographic coordinates where the respective digital photograph or video was taken, the method comprising:

displaying an application view on a video display device including displaying a plurality of selectable elements, the plurality of selectable elements including a location selectable element;

responsive to a click or tap of the location selectable element, displaying a map view on a video display device, the displaying the map view including displaying:

(i) a representation of an interactive map;

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(ii) a first location selectable thumbnail image at a first location on the interactive map, the first location being associated with the geographic coordinates of a first geotag, a first set of digital photographs and videos including all of the digital photographs and videos associated with the first geotag;

(iii) a first count value image partially overlapping the first location selectable thumbnail image, the first count value image including a first number that corresponds to the number of digital photographs and videos in the first set of digital photographs and videos;

(iv) a second location selectable thumbnail image at a second location on the interactive map, the second location being associated with the geographic coordinates of a second geotag, a second set of digital photographs and videos including all of the digital photographs and videos associated with the second geotag; and

(v) a second count value image partially overlapping the second location selectable thumbnail image, the second count value image including a second number that corresponds to the number of digital photographs and videos in the second set of digital photographs and videos;

responsive to a click or tap of the first location selectable thumbnail image, displaying a first location view on the video display device, the displaying the first location view including displaying (i) a first location name associated with the first geotag and (ii) a scaled replica of each of the digital photographs and videos in the first set of digital photographs and videos, the displayed scaled replicas of each of the digital photographs and videos in the first set of digital photographs and videos not being overlaid on the interactive map; and

responsive to a click or tap of the second location selectable thumbnail image, displaying a second location view on the video display device, the displaying the second location view including displaying (i) a second location name corresponding to the second geotag and (ii) a scaled replica of each of the digital

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