Memoryweb, LLC v. Samsung Electronics Co., Ltd.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MEMORYWEB, LLC,
Appellant
v.
SAMSUNG ELECTRONICS CO., LTD.,
Appellee
______________________
2024-1322
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No.
PGR2022-00034.
______________________
Decided: December 19, 2025
______________________
ANGELO CHRISTOPHER, Nixon Peabody LLP, Chicago,
IL, argued for appellant. Also represented by DANIEL J.
SCHWARTZ, MATTHEW A. WERBER; JENNIFER HAYES, Los
Angeles, CA.
CHRISTOPHER DRYER, Fish & Richardson PC, Washing-
ton, DC, argued for appellee. Also represented by LAUREN
ANN DEGNAN, IRENE HWANG, MICHAEL J. MCKEON;
TIMOTHY RAWSON, San Diego, CA.
______________________
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 2
Before TARANTO, SCHALL, and STARK, Circuit Judges.
SCHALL, Circuit Judge.
MemoryWeb, LLC (“MemoryWeb”) appeals a decision
of the Patent and Trademark Office, Patent Trial and Ap-
peal Board (“Board”), in a post-grant review proceeding
holding claims 1–34 of U.S. Patent No. 11,163,823 (“the
’823 patent” or “the patent”) unpatentable. Samsung Elec-
tronics Co. v. MemoryWeb, LLC, No. PGR2022-00034, 2023
WL 7923900 (P.T.A.B. Nov. 16, 2023), J.A. 1–104 (“Final
Written Decision”).1 For the following reasons, we affirm.
BACKGROUND
A
The ’823 patent is directed to computer-implemented
methods and systems for managing and displaying digital
files, such as photographs. ’823 patent col. 1 ll. 17–20. Spe-
cifically, the patent describes “a web-based digital file stor-
age system” that “include[s] a digital file repository for
storing and retrieving digital files, such as photos, a digital
tagging system configured to assign digital tags to the dig-
ital files, a sorting system, and a user interface.” Id. col. 4
ll. 33–38. The digital tagging system may include various
types of data such as a person’s name or a location. Id. col.
4 ll. 39–42. The sorting system permits sorting of the digi-
tal files and their presentation to a user based on their
1 Four patents related to the ’823 patent were in-
volved in two companion appeals argued before the panel
on the same day as this case. See generally Apple Inc. v.
MemoryWeb, LLC, No. 23-2361, 2025 WL 3494991 (Fed.
Cir. Dec. 5, 2025); MemoryWeb, LLC v. Samsung Electron-
ics Co., Ltd., No. 24-1315, 2025 WL 3494918 (Fed. Cir. Dec.
5, 2025).
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 3
corresponding data and based on user inputs via the user
interface. Id. col. 4 ll. 42–47.
The patent refers to the presentation to a user of vari-
ous “views.” See, e.g., id. col. 5 l. 54–col. 7 l. 14. A
“search[-]filter view” has a search filter that allows a user
to navigate to certain photographs based on selected filter-
ing criteria. Id. col. 3 l. 30, col. 7 ll. 15–43, col. 35 ll. 3–5.
A “location[s] view” “identifies within an interactive map
. . . where digital files were taken or originated.” Id. col. 6
ll. 14–16, col. 35 ll. 40–41.
Relevant to this appeal, the claims of the ’823 patent
require that, in the search-filter view, (i) responsive to a
first input, filtering occurs based on people/person identifi-
cations, and (ii) responsive to a second input, a locations
view is displayed and filtering occurs based on location-re-
lated information. Id. col. 35 ll. 6–9, 39–43. It is the action
taken in response to a second input that is the focus here.
Representative claim 1 of the ’823 patent recites “respon-
sive to a second input within the search-filter view, causing
the interface to display a locations view including a first
name associated with a first location, and a second name
associated with a second location.” Id. col. 35 ll. 39–43.
B
Samsung Electronics Co., Ltd., (“Samsung”) filed a pe-
tition for post-grant review challenging claims 1–34 of the
’823 patent as unpatentable. J.A. 317. Samsung chal-
lenged the claims as obvious in view of a combination of
various prior art references. Id. Relevant to this appeal
are two references describing Apple’s iPhoto ’09 photo man-
agement software program (“iPhoto”): (1) David Pogue and
J.D. Biersdorfer, iPhoto ’09 The Missing Manual (2009),
J.A. 1091–1477 (“Pogue”); and (2) Adam C. Engst, iPhoto
’09 for Mac OS X: Visual Quickstart Guide (2009), J.A.
1478–1719 (“Engst”).
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 4
As Pogue explains, iPhoto is software for organizing,
editing, and distributing digital photos. J.A. 1108. iPhoto
provides a search feature that allows a user to search pho-
tos based on user input. J.A. 1185–86. iPhoto also includes
a “Places” feature that plots photos on an electronic map.
J.A. 1214. To get to the Places feature, a user selects the
“Places” tab in iPhoto’s Source list, which appears on the
left side of the iPhoto window. See J.A. 1118, 1139–41. The
Places tab is the fourth item from the top under the head-
ing “LIBRARY” in the Source list. Within the Places fea-
ture, iPhoto provides a “World view,” as shown in Pogue
Figure 4-15, that displays a world map, “complete with a
red pin for every location . . . ever[ ] tagged in a photo.” J.A.
1214–16.
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 5
J.A. 71 (cropped and annotated version of Pogue Figure
4-15). iPhoto also provides, within the Places feature, a
“Browser view,” as shown in Pogue Figure 4-16, that “sorts
[a user’s] photo sets by country, state/province, town, and
even down to a landmark.” J.A. 1216.
J.A. 41 (cropped version of Pogue Figure 4-16). The World
view corresponds to the button labeled “Globe icon” in an-
notated Pogue Figure 4-15, while the Browser view corre-
sponds to the button labeled “Browser button” in Pogue
Figure 4-16. Id.; J.A. 71, J.A. 1214–16.
In its petition, Samsung asserted that selection of
iPhoto’s Places tab corresponded to the claimed “second in-
put” of claim 1 and that, “responsive to” the selection of the
Places tab, iPhoto caused the Browser view, i.e., the
claimed “locations view,” to be displayed. J.A. 349–50. In
making this argument, Samsung provided citations to
Pogue. Id. In response to Samsung’s petition, the Board
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 6
instituted post-grant review of all the challenged claims of
the ’823 patent. J.A. 2.
In its Patent Owner Response, MemoryWeb contended
that the phrase “responsive to” should be construed to “re-
quire a cause-effect relationship between (1) the second in-
put within the search-filter view and (2) causing the
interface to display the locations view.” J.A. 3527; see J.A.
3512–16. MemoryWeb also argued that “Pogue does not
disclose causing the display of the Browser [v]iew (alleged
locations view) responsive to selecting the Places tab in the
source pane to the left (alleged second input).” J.A. 3528.
Instead, MemoryWeb contended, to cause the Browser
view to be displayed, a user must first “select the Places tab
within the alleged search-filter view to cause the World
[v]iew to be displayed,” and then must “select the Browser
button within the World [v]iew (alleged map view).” J.A.
3530.
In its Reply, Samsung disputed both MemoryWeb’s
construction of “responsive to” and MemoryWeb’s descrip-
tion of the prior art. J.A. 4023–25. On the latter point,
relying on Pogue and Engst, Samsung asserted that
MemoryWeb was incorrect that iPhoto always defaults to
showing the World view when the Places tab is selected.
J.A. 4024–25. In support of its position, Samsung cited to
new testimony by its expert, Dr. Philip Greenspun, ad-
dressing both Pogue and Engst. Id. (citing J.A. 4044–45
¶¶ 16–17 (citing Pogue Figure 4-15 and stating that “Pogue
mentions that the World [v]iew button (i.e., ‘globe icon’)
should be clicked to get to the map view, further suggesting
that there will be instance[s] in which the system does not
default to showing the map view (meaning that the loca-
tions view was shown first”))). Samsung also provided ad-
ditional citations to Engst’s description of iPhoto, asserting
that the citations disclosed that selecting the Places tab
can directly lead to either the World view (also referred to
as the “map view”) or the Browser view (“locations view”),
depending on which of the two corresponding buttons (i.e.,
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 7
the World view button or the Browser button) was previ-
ously selected by the user. J.A. 4024–26 (citing J.A. 1560,
1564).
After an oral hearing, the Board issued its Final Writ-
ten Decision, in which it held all of the challenged claims
of the ’823 patent unpatentable. In connection with the
claim term at issue here, the Board began by acknowledg-
ing that the parties disputed the meaning of the term “re-
sponsive to.” The Board declined to construe the term,
however, stating that even if it adopted MemoryWeb’s
“more restrictive” construction, which “require[ed] a direct
cause-effect relationship between the ‘second input’ and
the display of the ‘locations view,’ the prior art still meets
the limitation.” J.A. 74.
Applying that narrower construction, and crediting Dr.
Greenspun’s testimony, the Board determined:
Based on the evidence of record, a person of ordi-
nary skill in the art would understand that iPhoto,
as described by Pogue, and corroborated by Engst,
does not default to showing the World view as Pa-
tent Owner contends, but that selecting the
“Places” tab on the source pane can directly lead to
either the “Locations view” (Browser view window
shown in Pogue 4-16) or the “Locations view (map)”
(World view window shown in Pogue 4-15) identi-
fied by Petitioner.
J.A.75.
Having concluded that Samsung had demonstrated
that the prior art taught each element of claims 1–34 of the
’823 patent, the Board concluded that the claims had been
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 8
shown to be unpatentable.2 MemoryWeb timely appealed.
We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A)
and 35 U.S.C. §§ 141(c) and 329.
DISCUSSION
We review the Board’s legal conclusions de novo and its
findings of fact for substantial evidence. Google LLC v.
Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1380 (Fed. Cir.
2022). Substantial evidence is “such relevant evidence as
a reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. Nat’l Lab. Rels. Bd., 305
U.S. 197, 229 (1938). Obviousness is a question of law
based on underlying findings of fact, such as the scope and
content of the prior art. Ancora Techs., Inc. v. Roku, Inc.,
140 F.4th 1351, 1357 (Fed. Cir. 2025).
MemoryWeb makes two arguments in its appeal. We
address each in turn.
A
First, MemoryWeb argues that the Board erred in find-
ing that Pogue discloses displaying the claimed locations
2 In addition to Pogue and Engst, Samsung’s obvi-
ousness challenge for claims 12–14 and its obviousness
challenge for claim 26 relied upon U.S. Patent Publ. No.
2005/0116954 to Ripps, and U.S. Patent Publ. No.
2010/0058212 to Belitz (“Belitz”), respectively. The Board
instituted both challenges. With respect to claims 12–14,
having determined that these claims were unpatentable
based on the combination of Pogue and Engst, the Board
did not reach Samsung’s arguments on this ground. J.A.
100. With respect to claim 26, the Board agreed with Sam-
sung that the combination of Pogue, Engst, and Belitz ren-
dered claim 26 obvious. J.A. 99–100. In its appeal,
MemoryWeb does not make any arguments pertaining to
claim 26 or Belitz.
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 9
view responsive to a second input and asserts that the
Board should have performed an inherency analysis. Ap-
pellant’s Br. 20–24. MemoryWeb contends that Pogue does
not expressly disclose that selection of the Places tab leads
directly to the Browser view and that, in concluding that a
skilled artisan “would understand” that selecting the
Places tab “can directly lead to either” the Browser view or
the World view, the Board erroneously relied on the “mere
possibilit[y]” that the feature was disclosed. Id. at 20–22
(quoting J.A. 75, PersonalWeb Techs., LLC v. Apple, Inc.,
917 F.3d 1376, 1382 (Fed. Cir. 2019)); see also id. at 22 (dis-
cussing whether functionality is “necessarily present” or
the “natural result of the combination of [explicitly dis-
closed] elements” under PAR Pharm., Inc. v. TWI Pharms.,
Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014)). In making
this argument, MemoryWeb relies on a nonprecedential de-
cision in LBT IP I LLC v. Apple Inc., No. 2022-1613, 2023
WL 3914920, at *3–4 (Fed. Cir. June 9, 2023)), where our
court reversed a determination of obviousness by the Board
when the patent challenger had made an argument that
was “substantively one of inherency” but did not provide
evidence that a feature “must necessarily be present.”
We are not persuaded that Samsung’s arguments be-
fore the Board invoked inherency. Instead, Samsung and
MemoryWeb presented alternative arguments to the Board
about whether the prior art disclosed that selection of the
Places tab directly caused the display of the Browser view
or whether an additional step needed to be undertaken be-
fore the Browser view would be displayed. The Board con-
sidered the arguments and evidence before it and found
that “[t]he weight of the evidence shows that”
MemoryWeb’s interpretation of the prior art “is incorrect.”
J.A. 75. The Board instead adopted Samsung’s interpreta-
tion of Pogue that “selecting the ‘Places’ tab on the source
pane can directly lead to either” the Browser view or the
World view. Id. This finding is supported by substantial
evidence in the form of Dr. Greenspun’s testimony, J.A.
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 10
4044–45 ¶¶ 16–17, and Pogue, which instructs a user to
click on the World view icon to get to the map view, J.A.
1214 (“Click the globe icon to see your photo locations in
World view.”). It is additionally supported by Engst’s dis-
closure that upon selecting the Places tab, a user may need
to “click the World [v]iew button” to view the map view.
J.A. 1564; see J.A. 1560.
Contrary to MemoryWeb’s argument, LBT does not
support its position. In that case, the patent challenger
conceded that there was no explicit disclosure of a claim
element and presented expert testimony that “a skilled ar-
tisan would understand” the missing element was present.
2023 WL 3914920, at *3. In contrast, here Samsung ar-
gued, and the Board agreed, that Pogue discloses the per-
tinent limitation. J.A. 75 (“The weight of the evidence
shows that Patent Owner’s argument that the prior art, in
particular Pogue, ‘does not disclose causing the display of
the Browser [v]iew (alleged locations view) responsive to
selecting the Places tab in the source pane to the left (al-
leged second input),’ is incorrect.” (internal citation omit-
ted)). In addition, in LBT, the petitioner’s expert
“repeatedly used qualifying language such as ‘presumably,’
‘maybe,’ and ‘might,’” when addressing what a skilled arti-
san would understand the reference at issue to mean. 2023
WL 3914920, at *3. Dr. Greenspun’s testimony, however,
does not describe the display of the Browser view after the
Places tab is selected as merely being a possibility. In-
stead, Dr. Greenspun explained that “Pogue mentions that
the World [v]iew button (i.e., ‘globe icon’) should be clicked
to get to the map view, further suggesting that there will be
instance[s] in which the system does not default to showing
the map view (meaning that the locations view was shown
first).” J.A. 74 (emphasis added) (second alteration in orig-
inal) (quoting J.A. 4045 ¶ 17). MemoryWeb makes much of
Dr. Greenspun’s use of the word “suggesting” in this state-
ment, but we have long held what a reference “suggests” is
an appropriate consideration in an obviousness analysis.
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 11
See In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (“[A] ref-
erence must be considered not only for what it expressly
teaches, but also for what it fairly suggests.” (alteration in
original)); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979)
(explaining that in determining obviousness, all references
are assessed “on the basis of what they reasonably disclose
and suggest to one skilled in the art” (quoting In re Baum,
374 F.2d 1004, 1009 (CCPA 1967))).3
Additionally, the Board determined that Engst further
supports the understanding that selecting the Places tab
can directly lead to either the map view or the locations
view. J.A. 74–75 (citing J.A. 4044–45 ¶¶ 16–17). Although
MemoryWeb alludes to the Board’s reliance on Engst as be-
ing improper since Samsung’s petition cited only to Pogue
as teaching this claim element, MemoryWeb does not di-
rectly challenge the Board’s reliance on the evidence and
arguments Samsung provided in its Reply, which included
additional citations to Engst. For the foregoing reasons we
conclude that the Board’s determinations regarding the
content of the prior art are supported by substantial evi-
dence.
3 At oral argument, counsel for MemoryWeb
acknowledged that reliance on what a reference “suggests
to a person of skill in the art” is proper in an obviousness
analysis, but argued that Samsung never argued obvious-
ness for the second input limitation, since Samsung’s peti-
tion cited solely to Pogue for the element. Oral arg. 5:30–
5:50, 24:55–26:50, https://www.cafc.uscourts.gov/oral-ar-
guments/24-1322_11032025.mp3. We do not read the peti-
tion so narrowly. The petition specifically relied upon 35
U.S.C. § 103, asserted that “iPhoto” rendered the claim
limitation obvious, and defined and described iPhoto as en-
compassing both Pogue and Engst, since they both describe
the same Apple software. J.A. 317, 349, 322–24 & *n.5.
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO., LTD. 12
B
MemoryWeb’s second argument is that the Board erred
by failing to construe “responsive to.” It urges us to con-
strue the claim term in the first instance. As noted above,
in the Final Written Decision, the Board declined to con-
strue “responsive to,” since the Board’s fact findings estab-
lished that the claims were obvious in view of the prior art
even under MemoryWeb’s more restrictive construction.
J.A. 74. Having concluded that a construction was not nec-
essary to resolve the controversy, the Board did not err in
declining to construe “responsive to.” See Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (explaining that the Board “need only
construe terms . . . to the extent necessary to resolve the
controversy” (internal quotation marks and citation omit-
ted)). Concluding that there was no error in the Board’s
approach, we similarly decline to address claim construc-
tion here.4
CONCLUSION
We have considered MemoryWeb’s remaining argu-
ments and find them unpersuasive. For the foregoing rea-
sons, we affirm the Board’s Final Written Decision.
AFFIRMED
4 We note, however, that our panel construed “re-
sponsive to” in Apple, 2025 WL 3494991, at *8–11, in a way
that rejected a similar, although not identical, claim con-
struction argument by MemoryWeb.
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