IP Law Daily, PATENT—Fed. Cir.: Largely favorable ruling for Apple in IPR appeals over photo tagging software patents, (Dec 5, 2025)

By Ravindra Kumar Singh, B.L.

PTAB erred in rejecting Apple's duplicative claim mapping on eight claims; obviousness rulings on the remaining claims affirmed.

In a non-precedential disposition, the U.S. Court of Appeals for the Federal Circuit issued a largely favorable ruling for Apple Inc. in a multi-patent appeal upholding the Patent Trial and Appeal Board’s (PTAB) decisions that found most claims across four photo-tagging patents unpatentable for obviousness. However, the court reversed and remanded as to eight claims of one patent, concluding that the PTAB abused its discretion in rejecting Apple’s arguments as inadequately presented. The court also affirmed the Board’s denial of Apple’s petition on another patent and dismissed the patent holder’s cross-appeals challenging the Board’s unpatentability determinations and claim constructions. In a related decision issued concurrently, the court dismissed MemoryWeb’s challenge to PTAB rulings in Samsung-initiated IPRs involving the same patents (Apple Inc. v. MemoryWeb, LLC, Nos. 23-2361, 24-1043, 24-1050, 24-1318, 24-1320 (Fed. Cir. Dec. 5, 2025)) (MemoryWeb, LLC v. Samsung Electronics Co., Ltd., Nos. 24-1315, 24-1316 (Fed. Cir. Dec. 5, 2025)).

Background. Apple Inc., the appellant, is the developer of Aperture, a digital photo editing and organizing software. In late 2021, it sought to challenge a portfolio of four patents held by MemoryWeb, LLC, a software firm specializing in image tagging and metadata organization technologies.

Apple filed three inter partes review (IPR) petitions and one post-grant review (PGR) against U.S. Patent Nos. 9,552,376 (’376), 10,423,658 (’658), 10,621,228 (’228), and 11,017,020 (’020), all related to graphical interfaces and digital image organization systems. Apple asserted that the claims were unpatentable for obviousness based on the Aperture 3 User Manual (A3UM) and a secondary prior art reference, U.S. Patent Application Publication No. 2010/0058212 (Belitz).

The PTAB instituted all four proceedings. In its final written decisions, the Board held all 15 claims of the ’658 patent and all 19 claims of the ’228 patent unpatentable for obviousness. It also found most claims of the ’020 patent unpatentable, but upheld eight dependent claims—claims 13–16 and 45–48—on the ground that Apple’s petition had not sufficiently explained how the prior art addressed a particular “second map image” limitation. As to the ’376 patent, the PTAB rejected Apple’s obviousness challenge in full, concluding that Apple’s petition mischaracterized how Aperture’s interface operated and failed to show that key limitations were disclosed or rendered obvious. MemoryWeb cross-appealed the PTAB’s invalidation rulings on the ’228, ’658, and most of the ’020 patent claims, while defending the Board’s reasoning for upholding the surviving ’020 and ’376 claims.

Claims of the ’020 patent. The Federal Circuit held that the PTAB abused its discretion in concluding Apple’s petition did not sufficiently present an obviousness argument for the “second map image” limitation in claims 13–16 and 45–48 of the ’020 patent. The Board had found the petition unclear as to whether Apple was relying on one or both “Places” buttons (located on the Aperture toolbar and inspector pane) to meet this claim limitation. The court disagreed, finding that Apple had unambiguously incorporated its argument for the “first map image” from claim 1, which the Board had already deemed sufficient.

Quoting CRFD Research, Inc. v. Matal, 876 F.3d 1330 (Fed. Cir. 2017), the court emphasized that duplicative arguments do not require repetition and that express incorporation of a prior analysis satisfies petition requirements under 35 U.S.C. § 322(a)(3). The Board’s parsing of the petition imposed an unreasonably fine-grained standard and constituted reversible error under Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374 (Fed. Cir. 2018).

Accordingly, the court vacated the Board's determination and remanded.

Affirmance on the ’376 patent. Apple also challenged the PTAB’s rejection of its petition on all 12 claims of the ’376 patent, arguing that the Board improperly ignored its theory involving a modification of Aperture’s “Places” view using Belitz’s thumbnail markers.

The Federal Circuit affirmed. The panel concluded that Apple’s petition did not clearly present a modification-based theory but instead relied on an erroneous assertion that Aperture’s Places view already had the claimed functionality. The court reaffirmed the principle that new theories cannot be advanced for the first time in a reply, citing Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). The PTAB’s refusal to extrapolate Apple’s argument from a flawed premise was therefore not an abuse of discretion.

“Responsive To” claim construction. MemoryWeb’s cross-appeal contested the PTAB’s construction of “responsive to” in the ’658 and ’020 patents. It argued that interface elements visible in both the initial and subsequent views (i.e., static UI elements like the Places buttons) could not be displayed “responsive to” user input.

The Federal Circuit rejected this narrow construction. Relying on Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), and visual examples from the patent specification, the court held that “responsive to” does not exclude static elements if their continued display results from a causal input. The Board’s application of the term was consistent with the plain meaning and intrinsic evidence, particularly in light of how the patents depicted persistent toolbars and scroll elements across multiple views.

Administrative Procedure Act challenge. MemoryWeb also asserted that the PTAB failed to adequately explain its rulings on claim 15 of the '228 patent and claims 3–4 of the '658 patent. It argued that Apple's petitions relied on flawed assertions about Aperture's interface, but the Board did not address them.

The Federal Circuit disagreed. It found that the PTAB’s reasoning—that claim 15 did not require the display of a full-size image replacing the map—was adequate and supported by substantial evidence. The court reiterated the standard from TQ Delta, LLC v. Cisco Systems, Inc., 942 F.3d 1352 (Fed. Cir. 2019), emphasizing that the APA does not require the Board to address every argument in detail where the core reasoning is clear and supported.

Companion appeal. In a related decision involving the same patents, the court dismissed MemoryWeb’s challenge to PTAB rulings in Samsung-initiated IPRs. MemoryWeb had failed to pursue overlapping claims in its Apple appeals, rendering portions of the Samsung case moot. The court vacated the PTAB’s rulings on claims 3–4 and 8–12 of the ’658 patent and claim 15 of the ’228 patent, but dismissed the rest (MemoryWeb, LLC v. Samsung Electronics Co., Ltd., Nos. 2024-1315, 2024-1316 (Fed. Cir. Dec. 5, 2025)).

The Case is Nos. 23-2361, 24-1043, 24-1050, 24-1318, 24-1320 and Nos. 24-1315, 24-1316.

Judge: Taranto, R.

Attorneys: Brian Robert Matsui (Morrison & Foerster LLP) for Apple Inc. Jennifer Hayes (Nixon Peabody LLP) for MemoryWeb, LLC. Lauren Ann Degnan (Fish & Richardson PC) for Samsung Electronics Co., Ltd.

Companies: Apple, Inc.; MemoryWeb, LLC; Samsung Electronics Co., Ltd.

Cases: Patent TechnologyInternet FedCirNews USPTO