Apple Inc. v. MEMORYWEB, LLC, Cross-Appellant 2023-2361, 2024-1043, 2024-1050, 2024-1318,…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
MEMORYWEB, LLC,
Cross-Appellant
______________________
2023-2361, 2024-1043, 2024-1050, 2024-1318, 2024-1320
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2022-
00031, IPR2022-00032, IPR2022-00033, PGR2022-00006.
______________________
Decided: December 5, 2025
______________________
BRIAN R OBERT MATSUI, Morrison & Foerster LLP,
Washington, DC, argued for appellant. Also represented
by SETH W. L LOYD; ALEXANDRA M. AVVOCATO, New York,
NY; RICHARD H UNG, J OEL F. WACKS , San Francisco, CA;
BITA RAHEBI, REBECCA WEIRES SETRAKIAN, Los Angeles,
CA.
D ANIEL J. SCHWARTZ, Nixon Peabody LLP, Chicago, IL,
argued for cross-appellant. Also represented by ANGELO
CHRISTOPHER, MATTHEW A. WERBER ; J ENNIFER HAYES , Los
Angeles, CA.
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APPLE INC. v. MEMORYWEB, LLC 2
______________________
Before T ARANTO, SCHALL , and STARK, Circuit Judges.
T ARANTO, Circuit Judge.
Apple Inc. asked the Patent and Trademark Office
(PTO) to institute reviews—three inter partes reviews
(IPRs) and one post-grant review (PGR)—of four patents in
a family of patents owned by MemoryWeb, LLC. The four
patents—U.S. Patent Nos. 9,552,376, 10,423,658,
10,621,228, and 11,017,020—claim computer-implemented
methods for organizing and displaying digital images. In
its four petitions, one for each patent, Apple challenged all
claims. It challenged claims 6, 7, 38, and 39 of the ’020
patent on written-description grounds (in the PGR), but
otherwise it challenged all claims in the four patents as un-
patentable for obviousness over the Aperture 3 User Man-
ual (A3UM), a manual for Apple’s Aperture digital image
management software, either alone or in combination with
other prior art. The obviousness rulings are before us.
The PTO’s Patent Trial and Appeal Board (Board), af-
ter instituting the requested reviews, agreed with the writ-
ten-description challenge (not appealed here) and
otherwise held as follows. It held unpatentable for obvi-
ousness (1) all nineteen claims of the ’228 patent, (2) all fif-
teen claims of the ’658 patent, and (3) claims 1–5, 8–12, 17–
37, 40–44, and 49–59 of the ’020 patent. The Board, how-
ever, rejected Apple’s challenge to all twelve claims of the
’376 patent. It also rejected Apple’s obviousness challenge
to eight claims of the ’020 patent (claims 13–16 and 45–48).
Apple appeals with respect to the claims upheld in the
’376 IPR and ’020 PGR. MemoryWeb cross-appeals the
Board’s ’020 PGR decision respecting all claims held un-
patentable for obviousness, the ’228 IPR’s unpatentability
holding for claim 15, and the ’658 IPR’s unpatentability
holdings for claims 3–4 and 8–12. We reject all the parties’
challenges but one. The exception is for claims 13–16 and
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APPLE INC. v. MEMORYWEB, LLC 3
45–48 of the ’020 patent, for which the Board ruled that
Apple’s petition insufficiently presented an argument re-
garding the “second map image” claim element. We hold
that the Board abused its discretion in that ruling, because
the petition unambiguously duplicated, for those claims, its
obviousness theory for a nearly identical “first map image”
limitation, and the Board necessarily concluded that the
petition’s presentation for the “first map image” limitation
was sufficient. Thus, for those eight claims, we vacate the
Board’s decision in the ’020 PGR and remand for further
proceedings. We affirm the remaining challenged rulings
of the Board in all four decisions.
I
A
All four of the patents involved in this appeal belong to
the same family, sharing a specification; we generally use
the ’376 patent for specification citations. The ’020 patent
and the ’228 patent are both continuations of U.S. Patent
No. 11,163,823, not at issue here, though involved in a com-
panion appeal argued to our panel on the same day as this
case. See generally MemoryWeb, LLC v. Samsung Elec-
tronics Co., Ltd., No. 24-1322 (Fed. Cir. ______). The ’823
patent is a continuation of the ’658 patent, itself a continu-
ation of the ’376 patent. Each patent is titled “Method and
Apparatus for Managing Digital Files,” and they all relate
to methods for organizing, displaying, and navigating dis-
plays of digital imagery. See, e.g., ’376 patent, col. 1, line
64 through col. 2, line 48. The specification discloses inter-
face designs for user-accessible computer applications for
management of digital images, emphasizing what it calls
“application views” or “views,” depicted as exemplary
screen captures of what a user might see while navigating
the application. Id., col. 8, line 59 through col. 9, line 22;
e.g., id., figs. 1–7 and col. 6, lines 4–26 (describing views
depicted in figures 1–7). The different views have names
suggestive of the information contained or emphasized in
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APPLE INC. v. MEMORYWEB, LLC 4
each view, such as “location view” for a view with an inter-
active map. See id., col. 6, lines 14–19; fig. 5. A user can
navigate from one view to another according to defined re-
lationships among the different views. For example, from
a “people view” displaying thumbnail images of different
people, a user can click one such image to access a “people
profile view” with biographical information about the per-
son depicted. Id., col. 6, lines 20–26; figs. 6–7.
B
Apple filed four petitions to the Board in late 2021
seeking institution of three IPRs (of the ’376, ’658, and ’228
patents) and one PGR (of the ’020 patent), each petition
challenging all claims of the corresponding patent. In all
its petitions, Apple asserted that the challenged claims
would have been obvious over A3UM, either alone (in the
PGR of the ’020 patent) or in combination (in the ’376, ’658,
and ’228 IPRs). The other reference relevant here is U.S.
Patent Application Publication No. 2010/0058212 (Belitz),
which discloses using thumbnail images as markers on a
map.
A3UM, the first relevant reference, is a user manual
for Apple’s Aperture 3 software, a program for managing
digital images. Three functionalities of Aperture are rele-
vant on appeal, each a screen within the program display-
ing specified information about digital images: They are
called “Split View” (which displays a large image selected
from a collection of smaller images), “Places” (which dis-
plays location information about photographs on a map),
and “Faces” (which displays thumbnail photos of people).
The Aperture user interface, when navigating among Split
View, Faces, and Places, has two static elements: a toolbar
along the top of the screen, and an “inspector pane” run-
ning vertically along the lefthand side of the screen (both
of which can be hidden by the user). J.A. 2507, 2516–26;
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APPLE INC. v. MEMORYWEB, LLC 5
see J.A. 2515, 3528. Here is an example of Aperture’s Split
View, with the inspector pane and toolbar:
J.A. 2507 (annotations in original). Split View combines
two other functionalities of Aperture—called “Viewer” and
“Browser”—in one window. J.A. 2507, 2513. Viewer dis-
plays a large version of an image, and Browser displays
small thumbnail versions of many images; when in Split
View, clicking a Browser thumbnail will display that image
in larger format in Viewer. See J.A. 2675, 2712.
A user can navigate to Places or Faces using the but-
tons on the toolbar and inspector pane, shown here:
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APPLE INC. v. MEMORYWEB, LLC 6
J.A. 2516 (inspector pane, left); 2526 (toolbar, right).
Places allows a user “[t]o view the location information for
an image or a group of images.” J.A. 2896. Its interface
looks like Split View, of which a Browser view is a portion,
but what is displayed is not a large version of a photo but
an interactive map with pins marking locations associated
with images. See J.A. 2897. In Places, unlike in Split View,
clicking an image in the Browser portion will cause a loca-
tion label and other information to appear above the asso-
ciated pin on the interactive map. J.A. 2896 Here is an
example of the Places interface once a Browser image has
been selected (with the inspector pane and toolbar cropped
out):
J.A. 2897. (annotations in original).
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APPLE INC. v. MEMORYWEB, LLC 7
Faces categorizes and displays thumbnail photographs
of people with a name associated with each image. J.A.
2879–80. Here is an example of Faces:
J.A. 2490. Selecting one of the thumbnail images will
cause other images of the same person to be displayed,
while the toolbar and inspector pane remain in the same
positions. See J.A. 2490, 2885.
Belitz, the other relevant reference in this appeal, is
titled “User Interface, Device and Method for Displaying
Special Locations on a Map.” J.A. 3584. The pertinent fea-
ture of Belitz is its disclosure of a map interface with over-
laid thumbnail images associated with certain locations on
the map. Id. (Abstract). A given thumbnail image itself is
associated with a set of images, and clicking the thumbnail
image causes a “popup window” to appear, displaying one
image in a large version above small versions of other im-
ages in the set. J.A. 3587, fig. 4c; 3593 ¶ 60.
C
The Board, on behalf of the PTO’s Director, instituted
all four requested reviews. In the first proceeding to reach
a final written decision, in May 2023, the Board held un-
patentable for obviousness all fifteen claims of the ’658 pa-
tent. Apple Inc. v. MemoryWeb, LLC, No. IPR2022-00033,
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APPLE INC. v. MEMORYWEB, LLC 8
2023 WL 5167543, at *35 (P.T.A.B. May 18, 2023) (’658 IPR
Decision). In June, two more final written decisions issued.
In the first of those decisions, in the ’020 PGR, the Board,
in a ruling unchallenged here, concluded that claims 6, 7,
38, and 39 had insufficient written-description support. It
also held unpatentable for obviousness claims 1–5, 8–12,
17–37, 40–44, and 49–59, while upholding claims 13–16
and 45–48 on the ground that Apple’s petition was insuffi-
ciently clear about its case for obviousness of those claims.
Apple Inc. v. MemoryWeb, LLC, No. PGR2022-00006, 2023
WL 3903388, at *43 (P.T.A.B. June 7, 2023) (’020 PGR De-
cision). Later that month, the Board upheld all twelve
claims of the ’376 patent, concluding that, as to one limita-
tion of all challenged claims, Apple had failed to show the
obviousness of that limitation because the petition’s theory
of obviousness rested on an incorrect description of A3UM’s
disclosure. Apple Inc. v. MemoryWeb, LLC, No. IPR2022-
00032, at 52 (P.T.A.B. June 30, 2023); J.A. 167. Finally, in
December 2023, the Board decided in the ’228 IPR that all
nineteen claims were unpatentable for obviousness. Apple
Inc. v. MemoryWeb, LLC, No. IPR2022-00031, at 101
(P.T.A.B. December 8, 2023); J.A. 270.
Apple moved for rehearing in the ’020 PGR and its re-
quest was denied. Apple timely appealed from the Board’s
unfavorable decisions in the ’376 IPR and ’020 PGR, and
MemoryWeb timely cross-appealed in the ’020 PGR. We
consolidated those appeals. MemoryWeb requested re-
hearing in the ’658 IPR, and that request was also denied.
Following that denial and the Board’s decision in the ’228
IPR, MemoryWeb timely appealed from both decisions, and
we consolidated those with the three earlier appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. §§ 141(c), 319, 329.
II
We review the Board’s conclusions of law and compli-
ance with legal standards without deference, while we
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APPLE INC. v. MEMORYWEB, LLC 9
review factual findings for substantial-evidence support.
Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1001 (Fed.
Cir. 2023). Substantial evidence is “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion.” Consolidated Edison Co. v. National Labor
Relations Board, 305 U.S. 197, 229 (1938).
We address several issues raised by Apple and
MemoryWeb, and our conclusions about those issues make
it unnecessary to address other issues presented to us. Ap-
ple contends that the Board made two errors in construing
Apple’s petitions, one in each of the ’376 IPR and the ’020
PGR, affecting all claims upheld. MemoryWeb makes a
claim-construction argument concerning claims 1–5, 8–12,
17–37, 40–44, and 49–59 of the ’020 patent and claims 8–
12 of the ’658 patent. MemoryWeb also contends that the
Board inadequately explained its decisions for claim 15 of
the ’228 patent and claims 3–4 of the ’658 patent. We ad-
dress each of those arguments in turn, setting out the rel-
evant background in greater detail as necessary.
A
We begin with Apple’s appeals from the ’020 PGR and
’376 IPR. Apple argues that, in both proceedings, the
Board erroneously interpreted Apple’s petitions, requiring
a remand for the Board to reconsider its upholding of
claims 13–16 and 45–48 of the ’020 patent and all claims of
the ’376 patent.
We review the Board’s interpretation of the content of
a petition for abuse of discretion. Corephotonics, 84 F.4th
at 1002–03 (citing Yita LLC v. MacNeil IP LLC, 69 F.4th
1356, 1366 (Fed. Cir. 2023)). The Board abuses its discre-
tion if its decision “(1) is clearly unreasonable, arbitrary, or
fanciful; (2) is based on an erroneous conclusion of law;
(3) rests on clearly erroneous fact finding; or (4) involves a
record that contains no evidence on which the Board could
rationally base its decision.” Ericsson Inc. v. Intellectual
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APPLE INC. v. MEMORYWEB, LLC 10
Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018) (cita-
tion omitted).
We vacate the Board’s upholding of claims 13–16 and
45–48 of the ’020 patent, determining that the Board
abused its discretion in the rationale for that result. We
affirm the Board’s decision in the ’376 IPR.
1
Apple argues that the Board too narrowly construed
the petition for the ’020 PGR in concluding that Apple was
too unclear about what in the prior art it was asserting
taught or rendered obvious the “second map image” ele-
ment of claims 13–16 and 45–48. We agree. Apple’s peti-
tion was sufficiently clear. We therefore must vacate the
Board’s ruling on these claims and remand for the Board to
address Apple’s theory on the merits. See Provisur Tech-
nologies, Inc. v. Weber, Inc., 50 F.4th 117, 125 (Fed. Cir.
2022) (vacating Board’s decision for failure to “substan-
tively engage with” party’s argument); Power Integrations
v. Lee, 797 F.3d 1318, 1325 (Fed. Cir. 2015) (vacating
Board’s decision when it focused on a “red herring” ancil-
lary to arguments made by the parties).
The ’020 patent has fifty-nine claims, of which 1 and 31
are independent. The relevant claims here are 13–16,
which depend indirectly on claim 1, and 45–48, which de-
pend indirectly on claim 31. See ’020 patent, col. 36, lines
22–46; col. 39, lines 9–32. The parties agree that claims
13–16 and claims 45–48 are mirror images of each other,
as are the underlying claims 1 and 31. See Apple’s Opening
Br. at 11; MemoryWeb’s Response Br. at 13–14. Moreover,
the disputed issue involves an element of claims 13 and 45,
which are materially identical, with nothing significant to
the issue added by claims 14–16 (dependent on claim 13)
or claims 46–48 (dependent on claim 45). We may there-
fore focus just on claim 13 and its independent claim 1.
Claim 1 requires in its method the following, the key part
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APPLE INC. v. MEMORYWEB, LLC 11
for present purposes being the emphasized requirement
about a “first person view”:
causing an interface to display a people view, the
people view including:
a first thumbnail image associated with a first per-
son,
a first name associated with the first person,
a second thumbnail image associated with a second
person, and
a second name associated with the second person;
responsive to an input that is indicative of a selec-
tion associated with the first person, causing a
first person view to be displayed on the inter-
face, the first person view including:
a first digital file associated with the first person,
the first name associated with the first person, and
a first map image;
. . . .
’020 patent, col. 35, lines 17–45 (emphases added). Claim
13 adds an element involving a “second person view”:
responsive to an input that is indicative of a selec-
tion associated with the second person, causing a
second person view to be displayed on the in-
terface, the second person view including the
second digital file associated with the second per-
son, the second name associated with the second
person, and a second map image.
Id., col. 36, lines 22–28 (emphases added).
Apple’s petition for PGR alleged that all claims of the
’020 patent were unpatentable for obviousness over A3UM.
J.A. 688. To meet claim 1’s limitation of a “first person
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APPLE INC. v. MEMORYWEB, LLC 12
view” including a “first map image,” Apple identified
A3UM’s Faces, asserting that each of the Places buttons
(one on the toolbar and one on the inspector pane), was a
first map image. J.A. 714–715 (citing J.A. 2539, 2880
(A3UM Faces disclosures)); J.A. 715 (“A3UM’s interface in-
cludes two selectable links with miniature map icons (‘first
map image[s]’).” (emphasis and alteration in original)). For
the similar “second person” and associated “second map im-
age” limitation of claim 13, Apple referred to its analysis of
claim 1’s “first map image,” writing: “A3UM discloses
providing the same functionality for each face identified by
the system . . . . Because A3UM discloses or renders obvi-
ous these features with respect to a ‘first person’ (claims 1
and 31), A3UM discloses or renders obvious these features
with respect to a ‘second person.’” J.A. 747–48 (citing J.A.
713–21) (emphases in original).
The Board held all claims but 13–16 and 45–48 un-
patentable. ’020 PGR Decision, at *43. For claim 1’s “first
map image,” the Board accepted Apple’s argument that
both Places icons met the limitation. Id. at *22–23. But
for claim 13’s “second map image,” the Board concluded
that the petition “lack[ed] any discussion of a second map
image” and failed to
explain whether (1) both the first and second map
images encompass a single instance of the [Places]
icon, (2) each of the first and second map images
encompass both instances (i.e., in the toolbar and
the [ ] inspector [pane]), or (3) one map image cor-
responds to one instance.
Id. at *35. According to the Board, Apple’s mapping of
first/second versions of other claim elements to different el-
ements of Faces (such as mapping first/second person ele-
ments to different people) made it unclear whether Apple
intended to assert that both Places icons were both first
map images and both second map images. Id. at *35–36.
The Board concluded that the petition was “completely
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APPLE INC. v. MEMORYWEB, LLC 13
silent—or at best unclear—about what [Apple] regards as
the first and second map images.” Id. at *36. Thus, the
Board rejected, as presenting untimely new rationales, Ap-
ple’s expert testimony, which focused on the Places button
in the toolbar, and Apple’s reply, which the Board read to
assert that “the second map image could be mapped to the
same feature in A3UM as the first map image.” Id. (citing
Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324,
1331–32 (Fed. Cir. 2019) and 35 U.S.C. § 312(a)(3)).
A PGR petition must identify “in writing and with par-
ticularity[ ] each claim challenged, the grounds on which
the challenge to each claim is based, and the evidence that
supports the grounds for the challenge to each claim[.]” 35
U.S.C. § 322(a)(3). That requirement includes “specify[ing]
where each element of the claim is found in the prior art.”
37 C.F.R. § 42.104(b)(4). A petitioner’s reply may not in-
troduce new arguments except to respond to arguments
made in the institution decision and certain intervening fil-
ings. See 37 C.F.R. § 42.23(b).
“It is for the Board to determine what grounds are be-
ing articulated in a petition and what arguments and evi-
dence are being referred to in the responses and any
replies.” Corephotonics, 84 F.4th at 1002. The Board acts
within its discretion to interpret a petition when it refuses
to consider an “entirely new rationale” distinct from that
presented in the petition. See Intelligent Bio-Systems, Inc.
v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir.
2016). Sometimes a petitioner’s offering of new evidence in
reply may actually constitute advancing an impermissible
new rationale. See id. at 1369–70; Ariosa Diagnostics
v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir.
2015). But the Board abuses its discretion when it parses
petitions and replies with “too fine of a filter.” Ericsson,
901 F.3d at 1379–81; see, e.g., Apple Inc v. Andrea Electron-
ics Corp., 949 F.3d 697, 705–07 (Fed. Cir. 2020). We have
also found Board error in refusing to consider arguments
“expressly incorporated” by reference to earlier portions of
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APPLE INC. v. MEMORYWEB, LLC 14
a petition. See CRFD Research, Inc. v. Matal, 876 F.3d
1330, 1346 (Fed. Cir. 2017).
In this case, we are persuaded that Apple’s petition
presented the both-Places-buttons mapping that, in reply,
it later made more explicit—entitling it to an evaluation of
that mapping on its merits under obviousness standards.
Apple’s petition repeatedly and expressly identified both
Places buttons, not just one or just the other, as each meet-
ing the “first map image” limitation of ’020 claim 1. J.A.
715 (“Each of these icons represent maps and a skilled ar-
tisan would consider them to be ‘map image[s]’.”); see also
J.A. 721–22. The petition’s theory for claim 13 is duplica-
tive of its claim 1 argument: It says that “A3UM discloses
providing the same functionality for each face identified by
the system” and, referring to the relevant portion of its
claim 1 analysis, that “[b]ecause A3UM discloses or ren-
ders obvious these features with respect to a ‘first person’
(claims 1 and 31), A3UM discloses or renders obvious these
features with respect to a ‘second person.’” See J.A. 747–48
(emphases added and removed) (citing J.A. 713–21). The
only sensible reading of those passages, which “expressly
incorporated” Apple’s claim 1 arguments into its claim 13
arguments, is that Apple’s theory for “second map image”
was precisely the same as its “first map image” theory,
identifying each Places button as meeting the limitation.
CRFD, 876 F.3d at 1346.
The Board’s contrary conclusion was unreasonable.
The Board said that it was unable to discern whether Apple
meant that “one map image corresponds to only one in-
stance [of the Places button],” ’020 PGR Decision, at *36,
but the Board cited no statement in the petition that sug-
gests that possibility, nor could it, see id. at *35–36. The
only plausible support for such an interpretation is Apple’s
expert’s statement, “I’ve been talking about the Place[s]
toolbar button as being the map image,” but that statement
does not contradict the natural reading of the petition, as
what it says about the toolbar button (which is what the
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APPLE INC. v. MEMORYWEB, LLC 15
expert had been talking about) does not exclude the possi-
bility that the other Places button (in the inspector pane)
is also a map image within the meaning of the claims. See
id. at *36 (quoting J.A. 10457).
The Board also stated that the petition was ambiguous
about whether “both the first and second map images could
be a single instance of the icon [or] each of the first and
second map images could be both [icons].” Id. As that for-
mulation illustrates, there is no basis for reading the peti-
tion’s obviousness analysis for claim 13’s second map image
as different from its analysis for claim 1’s first map image.
The Board had no apparent difficulty understanding Ap-
ple’s argument in the context of claim 1’s “first map image.”
See ’020 PGR Decision, at *22–23 (Board characterizing
Apple’s claim 1 theory as being “that the Places icons” are
map images, and reproducing images of each (emphasis
added)). The Board rightly found Apple’s theory for claim
1’s map image sufficiently clear, and there was no basis for
a different conclusion regarding claim 13. Making such a
distinction about clarity is here unjustified. See Vicor
Corp. v. SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017)
(enforcing requirement of consistency). Whether a single
button could serve to meet both map-image requirements,
is, if relevant at all, a merits matter, perhaps a matter of
claim construction, and not a matter of insufficiency of the
petition.
MemoryWeb argues that the Board’s decision should be
upheld because Apple took inconsistent positions about
how “first” and “second” should be construed with respect
to different claim elements. MemoryWeb’s Response Br. at
37–38. But such different treatment, besides not neces-
sarily being incorrect under the claim language, does not
necessarily create insufficient clarity. Here, it did not cre-
ate insufficient clarity. It evidently gave MemoryWeb no
trouble, because in its patent owner response MemoryWeb
correctly characterized the petition as “identif[ying] two al-
leged examples of a ‘map image’ in A3UM, [and] not
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APPLE INC. v. MEMORYWEB, LLC 16
contend[ing] that one example corresponds to the ‘first map
image’ while the other corresponds to the ‘second map im-
age.’” J.A. 1065. That is strong confirmation that the
Board erred in failing to address what was a readily under-
standable argument.
Whether the alleged inconsistency in Apple’s treat-
ment of map images compared to other first/second ver-
sions of claim elements supports rejecting Apple’s theory
on claim-construction or other merits grounds is a matter
for the Board to consider in the first instance on remand,
constrained by any relevantly similar now-final findings of
fact and conclusions of law in the ’020 PGR and related pro-
ceedings. See Vicor, 869 F.3d at 1322. We vacate the
Board’s determination that Apple’s petition was insuffi-
cient as to claims 13–16 and 45–48 of the ’020 patent and
remand for further proceedings consistent with this opin-
ion.
2
Regarding the ’376 IPR, Apple argues that the Board,
in rejecting Apple’s challenge to all claims, ignored a mod-
ification-based obviousness theory Apple says it presented
in its petition. We see no reversible error in the Board’s
ruling on this patent.
The ’376 patent has twelve claims, of which claims 1,
5, and 12 are independent. Claim 1 involves displaying a
“map view” having an “interactive map” and two “user se-
lectable thumbnail image[s]” at associated locations on the
map and, “responsive to a click or tap of the first user se-
lectable thumbnail image, displaying a first location view
. . . not including the interactive map.” ’376 patent,
col. 35, line 13 through col. 36, line 14 (emphasis added).
Claim 12 has a substantially similar limitation. See id.,
col. 38, lines 28–37. Independent claim 5’s similar “location
view” does not have a negative limitation pertaining to the
interactive map, but Apple at the Board incorporated its
claim 1 arguments for claim 5’s location view, J.A. 11574–
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APPLE INC. v. MEMORYWEB, LLC 17
75, and it makes no separate arguments about claim 5 on
appeal, Apple’s Opening Br. at 31–48.
In its petition, Apple asserted that all claims of the ’376
patent would have been obvious over a prior-art combina-
tion including A3UM and Belitz. Its theory of obviousness
of claim 1—with its requirement of a location view having
no interactive map (repeated for claims 5 and 12, see J.A.
11574–75, 11585)—focused on the Places function in
A3UM. Apple asserted, citing the Places disclosure in
A3UM, that “A3UM discloses selecting a pin on the inter-
active map to display a thumbnail representation of all
photos matching that location in the Browser” (i.e., in the
Browser portion of Places). J.A. 11559 (citing J.A. 2897–
98). In the next sentence, Apple said: “Selecting a thumb-
nail in the Browser then prompts display of the original
digital image in the Viewer.” J.A. 11559 (citing J.A. 2712
(pertaining to Split View, not Places)). Apple’s next sen-
tence then said: “This display will be the digital image (e.g.,
a full-size photo) represented by the thumbnail in the
Browser (‘not including the interactive map’).” J.A. 11559
(citing J.A. 2512 (also not pertaining to Places)) (emphasis
in original). That is, Apple argued that clicking a Browser
thumbnail while in Places calls up Split View. See J.A.
11559–60.
With that argument about A3UM, Apple then brought
in Belitz, arguing that the ’376 patent’s claimed “map view”
could be achieved by simply replacing Places’s pins with
Belitz’s thumbnail image map markers and “retain[ing]”
the asserted functionality of A3UM of navigating to Split
View by clicking a thumbnail. Id. That modification would
have been obvious, Apple said, because “[t]he only func-
tional distinction between the operations of A3UM and Be-
litz [upon selecting a map marker] is that Belitz
automatically displays an image from the selected location
while A3UM does not.” J.A. 11563 (emphasis added).
Given the close relationship of the two disclosures, Apple
added, a relevant artisan would have been motivated to
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APPLE INC. v. MEMORYWEB, LLC 18
improve the user experience by reducing the number of
clicks required to display a large image. J.A. 11564.
The Board determined that Apple had failed to show
the unpatentability of any claims of the ’376 patent because
its argument that the combination met claim 1’s location
view incorrectly described the disclosure of A3UM. In par-
ticular, the Board determined that A3UM does not disclose
navigating to Split View from Places by clicking a thumb-
nail, J.A. 157—the step before making changes based on
Belitz—so A3UM would have to be modified to behave in
that way, but Apple failed to advance a theory involving
that modification or motivate it, J.A. 158–59. The Board
rejected, as untimely new rationales, Apple’s reply argu-
ments that it did present and support a theory of modifying
A3UM’s Places to behave similarly to Split View. J.A. 158–
59. In the alternative, the Board found that even if Apple’s
petition could be fairly read to advance the relevant modi-
fication, it did not persuasively support such a motivation,
particularly because the asserted advantages of the combi-
nation were outweighed by disadvantageous loss of func-
tionality in Places. See J.A. 161–63.
Apple contends on appeal, as it did before the Board,
that its theory all along was that it would have been obvi-
ous to modify A3UM’s Places disclosure with Belitz’s
thumbnail map markers and the behavior of Split View.
Apple’s Opening Br. at 31–43. But, as discussed above, the
Board acts within its discretion when it refuses to consider
a reply’s presentation of an “entirely new rationale”—one
reasonably determined not to be present in the petition.
Intelligent Bio-Systems, 821 F.3d at 1370; see Henny Penny,
938 F.3d at 1330–31 (stressing that the petition must
“identify ‘with particularity’ the ‘evidence that supports the
grounds for the challenge to each claim,’” quoting 35 U.S.C.
§ 312(a)(3), which is materially identical to 35 U.S.C.
§ 322(a)(3)). Here, the Board did not abuse its discretion in
doing just that. It reasonably read the petition as resting
on an incorrect description of A3UM’s disclosure and as not
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APPLE INC. v. MEMORYWEB, LLC 19
including, or adequately supporting, the later-asserted the-
ory of modifying A3UM to adapt Places to engage in the
behavior of Split View.
The petition’s statement that, after opening Places,
“[s]electing a thumbnail in the Browser then prompts dis-
play of the original digital image in the Viewer” is an as-
sertion about what A3UM discloses about Places, not a
contention about how A3UM could be modified. J.A. 11559
(citing A3UM’s discussion of Split View, not Places) (em-
phasis added). Apple’s further assertion that the combina-
tion would “retain this functionality” (i.e., the supposed
ability, in Places, to “display [ ] the full image” by clicking
a thumbnail) supports that understanding. J.A. 11559–60.
As the Board found, undisputed on appeal by Apple, Ap-
ple’s Opening Br. at 38–39, A3UM does not disclose the as-
serted behavior—instead, clicking a Browser thumbnail in
Places displays information on the interactive map, J.A.
156–57 (citing J.A. 2897, 2904–05).
Because of its error, Apple misstated the relationship
between A3UM and Belitz, saying that “[t]he only func-
tional distinction” between the two disclosures was Belitz’s
“automatic” display of a thumbnail upon clicking an icon
on an interactive map, compared to (what Apple described
as) two clicks in A3UM’s Places (one on a map pin, and an-
other in the Browser portion). J.A. 11562–63. That was
not the only functional distinction between the relevant
portions of the references, so the motivation to combine the
function of Split View, a different A3UM tool not as closely
conceptually related to Belitz’s map displays, went unex-
plained. See J.A. 11559–66. Even if scattered portions of
Apple’s petition could be read together to suggest a modifi-
cation theory, see Apple’s Reply Br. at 17–18, “[t]he Board
should [ ] not have to decode a petition to locate additional
arguments beyond the ones clearly made.” Netflix, Inc.
v. DivX, LLC, 84 F.4th 1371, 1377; see id. at 1377–78 (col-
lecting cases). The Board’s reading was neither “clearly
unreasonable [nor] arbitrary,” nor “rest[ing] on clearly
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APPLE INC. v. MEMORYWEB, LLC 20
erroneous fact finding,” so was not an abuse of discretion.
See Ericsson, 901 F.3d at 1379. That is enough for us to
affirm the Board’s determination that Apple failed to show
the unpatentability of all claims of the ’376 patent.
B
MemoryWeb, in its cross-appeal, argues that the Board
erroneously construed the claim term “responsive to” rele-
vant to claims 1–5, 8–12, 17–37, 40–44, and 49–59 of the
’020 patent and claims 8–12 of the ’658 patent.
We review the Board’s claim constructions and its anal-
ysis of intrinsic evidence without deference, while we re-
view factfinding based on extrinsic evidence for
substantial-evidence support. Teva Pharmaceuticals USA,
Inc. v. Sandoz, Inc., 574 U.S. 318, 331–33 (2015). We reject
MemoryWeb’s claim-construction argument.
Independent claim 1 of the ’020 patent, which is in rel-
evant part identical to claim 31, the only other independent
claim, recites:
1. A method comprising:
causing an interface to display a people view,
the people view including:
a first thumbnail image associated with a
first person,
a first name associated with the first person,
a second thumbnail image associated with a second
person, and
a second name associated with the second person;
responsive to an input that is indicative of a
selection associated with the first person,
causing a first person view to be displayed on
the interface, the first person view including:
a first digital file associated with the first person,
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APPLE INC. v. MEMORYWEB, LLC 21
the first name associated with the first person, and
a first map image;
. . . .
’020 patent, col. 35, lines 17–45 (emphases added).
Claims 8–12 of the ’658 patent depend directly or indi-
rectly on claim 7, which depends on claim 1 through claim
5. Claim 1 includes an “application view” with a “location
selectable element”; claim 5 adds a “people selectable el-
ement,” and, responsive to selecting that element, display-
ing a “people view” with a first and second “person
selectable thumbnail image.” ’658 patent, col. 35, lines 20–
24 (emphasis added); col. 36, lines 29–34, 41. Claims 7 and
8 further state:
7. The computer-implemented method of claim 5,
further comprising responsive to a click or tap
of the first person selectable thumbnail im-
age, displaying a first person view . . . .
8. The computer-implemented method of claim 7,
wherein the displaying the first person view
further includes displaying a first-person-lo-
cation selectable element.
Id., col. 36, lines 56–65 (emphases added). Claim 10 adds
to claim 7 a “displaying a second person view” step respon-
sive to selecting the “second person selectable thumbnail
image,” and claim 11 (which mirrors claim 8) has a “sec-
ond-person-location selectable element.” Id., col. 37,
lines 4–15 (emphasis added).
The Board held the relevant ’020 and ’658 claims un-
patentable for obviousness on similar grounds. In the ’020
PGR, Apple argued that the “first map image” of claims 1
and 31 was disclosed by the Places buttons of A3UM’s
toolbar and inspector pane when in the Faces view (a “first
person view”). J.A. 715; see J.A. 713–14. MemoryWeb, in
response, argued for an express construction of “responsive
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APPLE INC. v. MEMORYWEB, LLC 22
to an input . . . causing a first person view to be displayed”
as requiring a “causal relationship,” J.A. 984–88, and made
a similar argument about a different “responsive to” limi-
tation, J.A. 991–92. MemoryWeb contended that display-
ing the Places buttons lacked such a causal relationship
because the buttons are static user interface elements of
A3UM—that is, the Places buttons “are in exactly the same
state on the interface regardless of any input in a Faces
view.” J.A. 1037 (emphasis in original).
The Board disagreed. It declined to expressly construe
“responsive to.” ’020 PGR Decision, at *13–15. Analyzing
the prior-art combination, the Board reasoned that Apple
had shown the entire A3UM interface (including the visible
toolbar and inspector pane) to be the claimed first person
view. Id. at *24. Stating that it was applying
MemoryWeb’s construction of “responsive to” as requiring
a causal relationship, the Board reasoned that “A3UM de-
scribes a cause-effect relationship between the input and
the display of a view of the images, the toolbar, and the
inspector panes.” Id. at *23–24. Both the Places buttons
on the toolbar and inspector pane (which represent maps)
were therefore capable of being the claimed “first map im-
age.” Id. at *24. According to the Board, MemoryWeb’s
argument to the contrary implicitly, and erroneously,
rested on the idea that the first map image must be dis-
played only in the first person view. Id. at *22–23.
MemoryWeb made a similar argument, rejected by the
Board for the same reasons, in the ’658 IPR. In that IPR,
Apple’s petition argued that the “location selectable ele-
ment” of claim 1 and the first and second “person-location
selectable element” of claims 8 and 11 read on the Places
buttons of the toolbar and inspector pane visible in A3UM’s
Faces. J.A. 39303, 39328–29. MemoryWeb, in response,
conceded that the “claims should be afforded their plain
and ordinary meaning,” but then offered a “discussion” of
its own understanding of certain claim terms. J.A. 39595.
That discussion included the ideas that “responsive to”
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APPLE INC. v. MEMORYWEB, LLC 23
requires a “cause-effect relationship,” J.A. 39600–01, and
that the first/second-person-location selectable elements of
claims 8 and 11 must be “distinct from the location se-
lectable element [of claim 1],” J.A. 39604–05. MemoryWeb
then contended that the Places buttons were not displayed
“responsive to” an input, as required, because they “are
both persistently included and displayed by default” in
A3UM’s interface. J.A. 39652.
The Board rejected MemoryWeb’s contentions. First,
it held that no express claim construction was required be-
cause MemoryWeb had agreed that ordinary meaning suf-
ficed. ’658 IPR Decision, at *5. Second, it wrote that
“nothing [ ] precludes the Places tab from being both the
selectable location element required by claim 1, and either
the first-person-location selectable element required by
claim 8 or the second-person-location selectable element re-
quired by claim 11.” Id. at *31.
1
MemoryWeb’s position on appeal pertinent to these
’020 and ’658 claims is that, for an interface element to be
displayed “responsive to” an input, it must “not [be] dis-
played independently,” and that the Board improperly con-
strued the claims otherwise. MemoryWeb’s Response Br.
at 78 (emphasis removed). By “not displayed inde-
pendently,” MemoryWeb appears to mean that none of the
elements recited after a “responsive to” clause was already
displayed. See id. at 77–78.
We briefly address some preliminary issues before
reaching the crux of the claim-construction question. First,
we observe that it is unclear how MemoryWeb’s argument
bears on ’658 claim 10, which has no “person-location se-
lectable element,” so we affirm the Board’s ruling of un-
patentability for that claim without further discussion.
Second, we observe that, although the Board framed
the question in the ’658 IPR as whether the location
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APPLE INC. v. MEMORYWEB, LLC 24
selectable element of claim 1 could be the same as the
first/second-person-location selectable elements of claims 8
and 11, the Board’s conclusion amounts to the same thing
as saying that the latter elements may appear “inde-
pendently,” to use MemoryWeb’s phrasing, so we can treat
both the ’658 IPR and ’020 PGR decisions together in that
respect.
Third, it is possible to read the Board’s decisions in the
’020 PGR and ’658 IPR as either applying MemoryWeb’s
“responsive to” construction (“causal relationship” in the
former case, and ordinary meaning in the latter) or adopt-
ing a different construction (because, in each case, the
Board understood the requisite causal relationship differ-
ently from MemoryWeb). On the first reading, it was rea-
sonable for the Board to say that, following a computer
input, what remained visible on the screen was responsive
to that input, whether because those steps bear a causal
relationship or because the situation described comes
within the ordinary meaning of “responsive to.” After all,
different inputs (e.g., turning the computer or the screen
off or closing the application) could have caused nothing to
be visible, or caused the Places buttons to disappear. See
J.A. 2515, 3528. Thus, to the extent MemoryWeb chal-
lenges the Board’s application of MemoryWeb’s claim con-
structions to the relevant facts, we discern no error.
2
We now turn to whether the claim term “responsive to”
requires that the associated elements newly appear on the
screen. We hold that it does not.
Claim terms are to be given the ordinary meaning a
relevant artisan would understand from the claims them-
selves and the context of the patent. Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
Consistent with that principle, we will not, in general, read
a negative limitation into the claims unless disclaimer, lex-
icography, or other intrinsic evidence supports such a
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APPLE INC. v. MEMORYWEB, LLC 25
reading. See Omega Engineering, Inc. v. Raytek Corp., 334
F.3d 1314, 1323 (Fed. Cir. 2003).
Nothing in the claim language requires MemoryWeb’s
interpretation, which runs contrary to the customary un-
derstanding of “responsive to.” The term certainly requires
a causal relationship, but causation comes in degrees.
MemoryWeb essentially asks us to impose the nearest and
narrowest sense of causation, and interpret the claims to
require that but for the relevant user input, and only that
input, no map image (or location selectable element) would
be present. “Responsive to” has a broader connotation than
that cramped reading.
The specification confirms that a broader connota-
tion—encompassing static elements, i.e., those visible on a
screen both before and after an input—is the right one.
The drawings depict several screen captures, each having
the same toolbar at the top of the screen and each labeled
a “view.” ’020 patent, figs. 32–36. Other disclosures simi-
larly employ static design elements. See id., figs. 4, 6, 9, 17
(left and right arrows in same position on different
screens); figs. 11–16 (vertical scroll bar). The presence of
these elements in the specification’s exemplary views,
given the ubiquity of such familiar features in computer
programs, reinforces the natural understanding of “respon-
sive to” in the context of the patent—that static elements
remaining on a screen following an input are responsive to
that input. One would expect, had the patent drafter
meant to claim only the parts of a view that newly appear
responsive to an input, or appear responsive only to some
input, that the patent would disclaim the many disclosed
static interface elements. MemoryWeb identifies no such
disclaimer, nor any other evidence for its reading, so fails
to show that we should read such a limitation into the
claims. See Omega, 334 F.3d at 1323. Because the intrin-
sic evidence is dispositive, and refutes MemoryWeb’s nar-
row construction of “responsive to,” we affirm the Board’s
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APPLE INC. v. MEMORYWEB, LLC 26
ruling that ’020 claims 1–5, 8–12, 17–37, 40–44, and 49–59
and ’658 claims 8–12 are unpatentable for obviousness.
C
Regarding the ’228 patent and certain claims of the
’658 patents, MemoryWeb argues that the Board violated
Administrative Procedure Act (APA) requirements of ade-
quate explanation and substantial-evidence support in cer-
tain of its unpatentability holdings. We review the Board’s
decisions under the standards of the APA, 5 U.S.C § 706.
TQ Delta, LLC v. CISCO Systems, Inc., 942 F.3d 1352,
1357–58 (Fed. Cir. 2019). We apply the principle that “the
Board is obligated to ‘provide an administrative record
showing the evidence on which the findings are based, ac-
companied by the [Board’s] reasoning in reaching its con-
clusions.’” Id. at 1358 (citing In re Lee, 277 F.3d 1338, 1342
(Fed. Cir. 2002)). We reject MemoryWeb’s APA arguments.
1
With respect to claim 15 of the ’228 patent,
MemoryWeb contends that the Board violated the ade-
quate-explanation requirement of the APA by merely sum-
marizing and rejecting MemoryWeb’s arguments.
MemoryWeb’s Response Br. at 59–68. We disagree and af-
firm the Board’s determination of unpatentability.
Claim 15 of the ’228 patent depends on independent
claim 1. Claim 1, as relevant here, includes a “first” and
“second” “location view,” each of which has a “representa-
tion of at least a portion of one digital file in a [first/second]
set of digital files . . . associated with the [first/second] lo-
cation.” ’228 patent, col. 35, lines 40–60. Claim 15 further
includes the following step:
responsive to an input that is indicative of a selec-
tion, in the first location view, of the representation
of the at least a portion of the one digital file in the
first set of digital files, causing a first digital file to
be displayed on the interface . . . .
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APPLE INC. v. MEMORYWEB, LLC 27
Id., col. 37, lines 2–6. Claim 15 also has a materially iden-
tical limitation for the “second” location view and set of dig-
ital files. Id., col. 37, lines 7–10.
In Apple’s ’228 IPR petition, as in its ’376 IPR petition,
Apple asserted that selecting an image in the Browser of
A3UM’s Places “prompts the display of the original digital
image in the Viewer.” J.A. 21908. According to Apple, were
A3UM modified to include Belitz’s overlaid thumbnail im-
ages instead of A3UM’s pins, the combination would “re-
tain[ ]” the ability to display one of the images by clicking
it on the map (rather than clicking a pin to display images
in the Browser and then clicking one of those images). J.A.
21909. That modification would then meet the two “caus-
ing a [first/second] digital file to be displayed on the inter-
face” limitations of claim 15. J.A. 21908–09. MemoryWeb,
in response, pointed out Apple’s error, arguing that
A3UM’s disclosure of Places does not “show a selected im-
age in the Browser replacing the map with a full-size ver-
sion.” J.A. 22240. The Board, without rejecting
MemoryWeb’s factual contention, nevertheless determined
that claim 15 would have been obvious because “[n]owhere
does claim 15 . . . recite a requirement to ‘replace the map
with a full-size version of the image’ as [MemoryWeb] sug-
gests.” J.A. 266.
On appeal, MemoryWeb contends that the Board vio-
lated the APA by summarily rejecting MemoryWeb’s argu-
ments and failing to make “express findings regarding how
the prior art teaches or suggests the subject matter of claim
15.” MemoryWeb’s Response Br. at 61; see id. at 59–68. In
particular, it argues that the Board improperly failed to
recognize that Apple’s petition’s theory of claim 15’s obvi-
ousness rested on the same error regarding A3UM’s disclo-
sure that Apple made in the ’376 petition. Id. at 65–68.
Insufficient explanation or identification of evidence
may render a Board decision inadequate under the APA.
TQ Delta, 942 F.3d at 1358. But the Board is “not required
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APPLE INC. v. MEMORYWEB, LLC 28
to address undisputed matters.” In re Nuvasive, Inc., 841
F.3d 966, 974 (Fed. Cir. 2016). The latter principle means
that here the Board did not err in rejecting MemoryWeb’s
arguments for claim 15.
Claim 15 requires, essentially, that two images be dis-
played by selecting them from a view containing a map.
’228 patent, col. 37, lines 2–10. MemoryWeb argued that
the asserted combination would not “replac[e] the map with
a full-size version” of a selected image. J.A. 22240 (empha-
ses added). But causing the interactive map to disappear
and displaying a large version of an image are not require-
ments of ’228 claim 15—though they are requirements of
’376 claim 1. Compare ’228 patent, col. 37, lines 2–10, with
’376 patent, col. 35, lines 51–65. MemoryWeb failed to dis-
pute that A3UM discloses causing an image to be displayed
by selecting it in the Browser from Places, which is what
claim 15 requires. See J.A. 22238–42 (MemoryWeb’s pa-
tent owner response); J.A. 22389–93 (sur-reply). Indeed,
the evidence MemoryWeb cited in its response shows
Browser thumbnail images displayed on the screen in
Places after they are selected, so it is difficult to imagine
how the Board could have known that there was a dispute
over that limitation. See J.A. 22242.
In these circumstances, the Board was not required to
address the uncontested issue of how the combination met
the limitations of claim 15. See Nuvasive, 841 F.3d at 974.
Rather, the Board satisfied its obligation to provide an ad-
ministrative record containing sufficient reasoning by con-
sidering MemoryWeb’s argument, correctly observing that
no limitation of claim 15 was implicated in that argument,
and explaining that MemoryWeb’s point was irrelevant, re-
gardless of whether it was factually accurate. Accordingly,
we affirm the Board’s decision that claim 15 of the ’228 pa-
tent is unpatentable for obviousness.
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APPLE INC. v. MEMORYWEB, LLC 29
2
MemoryWeb argues that the Board’s ’658 IPR decision,
in determining that claims 3 and 4 were unpatentable,
failed to recognize the petition’s erroneous description of
the disclosure of A3UM, was inadequately explained, and
was unsupported by substantial evidence. MemoryWeb’s
Response Br. at 68–73. We disagree.
Independent claim 1 of the ’658 patent recites two rel-
evant views: a “map view” and a “location view.” ’658 pa-
tent, col. 35, lines 24–27, 54–63. The map view contains an
interactive map and
a first location selectable thumbnail image at a
first location on the interactive map, the first loca-
tion being associated with the geographic coordi-
nates 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[.]
Id., col. 35, lines 29–34. Displaying the “first location view”
“responsive to a click or tap of the first location selectable
thumbnail image” includes displaying a “location name”
and “a scaled replica of each of the digital photographs and
videos in the first set of digital photographs and videos . . .
[those] not being overlaid on the interactive map.” Id., col.
35, lines 54–63. Claim 3, on which claim 4 depends, adds
a further step—from claim 1’s location view,
responsive to a click or tap of a first one of
the displayed scaled replicas in the first loca-
tion view, displaying a first digital photo-
graph associated with the first scaled replica in
the first location view and a first map image[.]
Id., col. 36, lines 15–20 (emphases added).
Apple argued, and the Board agreed, that claims 3 and
4 would have been obvious over A3UM in view of Belitz and
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APPLE INC. v. MEMORYWEB, LLC 30
another reference. ’658 IPR Decision, at *31–35. Apple
made two arguments for obviousness. First, it said that
A3UM already disclosed claim 3’s “displaying a first digital
photograph . . . and a first map image,” because A3UM’s
inspector pane could be configured to display a small map
upon displaying a photo in the Viewer, and therefore, from
Places, “selecting one of the photos in the Browser would,
with a single click, display (i) the photo in the Viewer and
(ii) the photo’s information (and map) in the [inspector
pane].” J.A. 39344 (petition). Second, Apple’s petition as-
serted in the alternative that “it would have been obvious
to modify A3UM such that selecting a photo in the Browser,
in addition to displaying that photo in the Viewer, would
display A3UM’s Map Pane[, the requisite ‘first map im-
age,’] at the bottom of the [i]nspector pane.” Id. A relevant
artisan would have been motivated to modify A3UM in that
way, according to Apple, in part because “[s]mall maps
were known and useful [user interface] elements” that
could perform known functions to enhance the photo-
browsing experience. J.A. 39345.
The Board agreed with MemoryWeb that Apple’s first
theory of obviousness misstated A3UM’s disclosure, mak-
ing an error similar to the one in Apple’s ’376 IPR petition,
discussed above. ’658 IPR Decision, at *34. It nevertheless
held claims 3 and 4 unpatentable for obviousness based on
Apple’s alternative theory that it would have been obvious
to modify A3UM to meet the claims. Id. at *34–35. The
Board elaborated, in its decision denying MemoryWeb’s re-
hearing request, that it “credited” Apple’s argument in sup-
port of that theory and concluded that a relevant artisan
would have been motivated to modify notwithstanding dis-
advantages identified by MemoryWeb. J.A. 367.
We note, first, that whether Apple’s petition in the ’658
IPR contained the same factual error that proved fatal to
the obviousness theory of the ’376 IPR is of no moment
here, where Apple’s petition (unlike its petition in the ’376
IPR) expressly stated an alternative obviousness theory
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APPLE INC. v. MEMORYWEB, LLC 31
based on modifying A3UM and articulated a motivation to
combine. J.A. 39344. What remains is MemoryWeb’s con-
tention that the Board’s acceptance of Apple’s alternative
theory was inadequately explained and insufficiently sup-
ported by the evidence. See MemoryWeb’s Response Br. at
71–73.
“We may affirm an agency ruling if we may reasonably
discern that it followed a proper path, even if that path is
less than perfectly clear.” Ariosa, 805 F.3d at 1365 (citing
Bowman Transportation, Inc. v. Arkansas-Best Freight
System, Inc., 419 U.S. 281, 285–86 (1974)). While “it is not
adequate for the Board to summarize and reject argu-
ments” without explanation, we have repeatedly said that
“the Board is not required to address every argument
raised by a party or explain every possible reason support-
ing its conclusion.” Medtronic, Inc. v. Teleflex Innovations
S.a.r.l, 70 F.4th 1331, 1344 (Fed. Cir. 2023) (quoting In re
Nuvasive, Inc., 842 F.3d 1736, 1383 (Fed. Cir. 2016), and
Yeda Research v. Mylan Pharmaceuticals Inc., 906 F.3d
1031, 1046 (Fed. Cir. 2018)) (cleaned up). To determine
whether the Board’s decision complies with the APA, we
may consider the explanations given and evidence identi-
fied by the Board in a rehearing decision. See AC Technol-
ogies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1364–65
(Fed. Cir. 2019).
The Board’s path here was reasonably discernable and
proper. In its final written decision, the Board described
the theory of Apple’s petition at length and concluded that
Apple “provides reasoning in support of the proposed mod-
ification” and “addresses all of the limitations of claims 3
and 4.” ’658 IPR Decision, at *34; see id. at *31–33. The
petition’s stated motivation to modify, citing expert testi-
mony, was that displaying a small map image with a photo
would “enhance the [photo] browsing experience” and “con-
veniently display [ ] information” such as where the photo
was taken. J.A. 39345–46 (citing J.A. 40484–85 ¶¶ 202–
04). It was reasonably inferable from those statements,
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APPLE INC. v. MEMORYWEB, LLC 32
combined with the Board’s consideration and rejection of
each of MemoryWeb’s contrary arguments, that the Board
had adopted the petition’s argument. See ’658 IPR Deci-
sion, at *34–35; Medtronic, 70 F.4th at 1344 (holding that
it was enough, to satisfy the APA, that the record “sug-
gest[ed]” that the Board considered and weighed all of the
arguments and “expressly identif[ied] the prevailing argu-
ment”). That implication was made explicit in the rehear-
ing decision, which clarified that the Board “credited” the
petition’s corresponding arguments. J.A. 367. Contrary to
MemoryWeb’s assertions that the Board failed to cite “any
evidence” in support of its obviousness determination,
MemoryWeb’s Response Br. at 72 (emphasis removed), the
Board permissibly adopted the petition’s theory, see Med-
tronic, 70 F.4th at 1344, which cited relevant expert testi-
mony adequate to support the Board’s conclusion, see ’658
IPR Decision, at *34–35. Because the Board’s decision was
sufficiently clear and supported by the record, we affirm
the determination of unpatentability of claims 3 and 4 of
the ’658 patent. See Ariosa, 805 F.3d at 1365.
III
We have thoroughly considered the parties’ remaining
arguments and find them unpersuasive. For the foregoing
reasons, we affirm the decisions of the Board with respect
to the ’658, ’228, and ’376 patents, as well as the Board’s
determination that ’020 claims 1–5, 8–12, 17–37, 40–44,
and 49–59 are unpatentable for obviousness. We vacate
the Board’s ruling that Apple’s petition was insufficient as
to claims 13–16 and 45–48 of the ’020 patent and remand
for further proceedings consistent with this opinion.
The parties shall bear their own costs.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
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