Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 1 of 69
`Case 1:14-cv-02396—PGG-MHD Document 153-9 Filed 06/28/19 Page 1 of 69
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`EXHIBIT H
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`EXHIBIT H
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 2 of 69
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`Paper No. 1
`Date Filed: December 3, 2014
`
`
`Filed on behalf of: Google Inc.
`
`By:
`James J. Elacqua
`james.elacqua@skadden.com
`(650) 470-4510
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`Google Inc.
`Petitioner,
`v.
`Network-1 Technologies, Inc.
`Patent Owner.
`________________
`
`Case IPR2015-00343
`U.S. Patent 8,640,179
`________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,640,179 UNDER 35 U.S.C. §§ 311-319
`
`
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`

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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 3 of 69
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`TABLE OF CONTENTS
`
`Page
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ........................ 1
`II.
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 .................................... 1
`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ................... 2
`IV. SUMMARY OF CHALLENGE AND RELIEF REQUESTED ................... 2
`V.
`SUMMARY OF THE '179 patent .............................................................. 2
`A. Algorithms for Automatic Content Recognition ................................ 2
`B.
`Summary of the '179 Claims ............................................................ 3
`C.
`Person of Ordinary Skill in the Art of the '179 patent......................... 4
`D.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ......................... 4
`VI. ANALYSIS OF GROUNDS FOR TRIAL.................................................. 7
`A. Ground 1: Claims 1-3, 6-14, 18-19, 21-26, 30-37 of the '179
`Patent Are Obvious Over Levy In View Of Arya Under 35
`U.S.C. § 103 .................................................................................... 7
`1.
`Summary of Levy .................................................................. 8
`2.
`Summary of Arya................................................................... 8
`3.
`A Person Having Ordinary Skill in the Art Would Have
`Been Motivated to Combine Levy with Arya........................... 9
`The Combination of Levy and Arya Discloses Every
`Limitation of Claims 1-3, 9, 11-14, 18-19, 21-26, 30-31,
`and 34-37............................................................................... 9
`The Combination of Levy and Arya Additionally
`Renders Obvious Claims 6-8, 10, and 32-33 .......................... 21
`B. Ground 2: Claims 1-3, 6, 8-14, 19, 21-26, 30-31, and 34-37 of
`the '179 Patent Are Anticipated By Conwell Under 35 U.S.C. §
`102(e) ........................................................................................... 22
`1.
`Summary of Conwell ........................................................... 22
`2.
`Conwell Discloses Every Limitation of Claims 1-3, 6, 8-
`14, 19, 21-26, 30-31, and 34-37 of the '179 Patent ................. 23
`C. Ground 3: Claims 1-3, 8-14, 19, 21-22, 25, 27, 29-31, and 34-
`37 Are Anticipated By Wood Under 35 U.S.C. § 102(e) .................. 34
`1.
`Summary of Wood ............................................................... 34
`2. Wood Discloses Every Element of Claims 1-3, 8-14, 19,
`21-22, 25, 27, 29-31, and 34-37 ............................................ 35
`D. Ground 4: Claims 1-3, 8, 10-14, 18-19, 21-27, 29, 31, and 34-
`37 Are Obvious Under 35 U.S.C. § 103 Over Ghias in view of
`Philyaw ......................................................................................... 45
`
`4.
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`5.
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`-i-
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 4 of 69
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`1.
`2.
`3.
`
`Summary of Ghias ............................................................... 45
`Summary of Philyaw ............................................................ 46
`The Combination of Ghias and Philyaw Discloses Every
`Element of Claims 1-3, 8, 10-14, 18-19, 21-27, 29, 31,
`and 34-37............................................................................. 46
`A Person Having Ordinary Skill in the Art Would Have
`Been Motivated to Combine Ghias and Philyaw .................... 49
`VII. CONCLUSION ....................................................................................... 60
`
`
`4.
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`
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`-ii-
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 5 of 69
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`EXHIBIT LIST
`
`U.S. Patent No. 8,640,179 to Cox
`
`Prosecution History of U.S. Patent No. 8,640,179
`
`Visual Summary of Petition Grounds
`
`December 3, 2014 Declaration of Dr. Pierre Moulin
`
`Curriculum Vitae of Dr. Pierre Moulin
`
`Sunil Arya, et al., "An Optimal Algorithm for Approximate Nearest
`Neighbor Searching in Fixed Dimensions" ("Arya")
`
`Christian Böhm, et al., "Efficient Similarity Search in Digital
`Libraries" ("Böhm")
`
`U.S. Patent No. 7,444,353 ("Chen")
`
`U.S. Patent No. 6,970,886 ("Conwell")
`
`U.S. Patent No. 5,874,686 ("Ghias")
`
`U.S. Patent No. 6,597,405 ("Iggulden")
`
`U.S. Patent No. 6,188,010 ("Iwamura")
`
`U.S. Patent No. 6,505,160 ("Levy")
`
`U.S. Patent No. 6,098,106 ("Philyaw")
`
`U.S. Patent No. 7,743,092 ("Wood")
`
`Prosecution History of U.S. Patent App. No. 09/438,469
`
`Timo Raita, "Tuning the Boyer–Moore–Horspool String Searching
`Algorithm"
`
`Aristides Gionis, et al., "Similarity Search in High Dimensions via
`Hashing"
`
`Plaintiff Network-1 Technologies, Inc.'s Responses to Defendants
`Google, Inc. and YouTube, LLC's First Set of Interrogatories (Nos.
`
`-iii-
`
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
`
`1013
`
`1014
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`1015
`
`1016
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`1017
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`1018
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`1019
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`

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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 6 of 69
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`1-4) in Network-1 Technologies, Inc. v. Google, Inc., et al.
`(S.D.N.Y. Case No. 14-cv-2396-PGG)
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`-iv-
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 7 of 69
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`Google Inc. ("Petitioner"), petitions for inter partes review ("IPR") under 35
`
`U.S.C. §§ 311-319 and 37 C.F.R. § 42 of claims 1-3, 6-14, 18-19, 21-27, and 29-37
`
`("the '179 Claims") of U.S. Patent No. 8,640,179 ("the '179 patent") (Ex. 1001).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`Petitioner and YouTube, LLC, a subsidiary of Petitioner, are real parties-in-
`
`interest with respect to the instant petition.
`
`The '179 patent is asserted in an action captioned Network-1 Technologies,
`
`Inc. v. Google Inc., et al., Case No. 1:14-cv-2396 (S.D.N.Y.), filed April 4, 2014.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`petition. Service of any documents via hand-delivery may be made at the postal
`
`mailing address of the respective lead or back-up counsel designated below:
`
`Lead Counsel
`James J. Elacqua (Reg. # 28,412)
`SKADDEN, ARPS, SLATE, MEAGHER &
`FLOM LLP
`525 University Avenue - Suite 1400
`Palo Alto, California 94301
`Telephone:
`(650) 470-4510
`James.Elacqua@skadden.com
`
`Back-Up Counsel
`Douglas R. Nemec (Reg. # 41,219)
`SKADDEN, ARPS, SLATE, MEAGHER &
`FLOM LLP
`Four Times Square
`New York, New York 10036-6522
`Telephone:
`(212) 735-2419
`Douglas.Nemec@skadden.com
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 19-2385 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`authorize payment of any additional fees to be charged to this Deposit Account.
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 8 of 69
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`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the '179 patent is available for IPR and that: (1)
`
`Petitioner does not own the '179 patent; (2) prior to the date this Petition was filed,
`
`neither Petitioner nor any real party-in-interest filed a civil action challenging the
`
`validity of a claim in the '179 patent; (3) this Petition has been filed less than one
`
`year after April 11, 2014, which was the date on which Petitioner was served with a
`
`complaint alleging infringement of the '179 patent; and (4) neither Petitioner, any
`
`real parties-in-interest, nor any privies of Petitioner, are estopped from challenging
`
`the claims on the grounds identified in this Petition.
`
`IV. SUMMARY OF CHALLENGE AND RELIEF REQUESTED
`
`Petitioner asserts the following specific grounds of rejection under 35 U.S.C.
`
`§§ 102 and 103. These grounds are visually summarized in Exhibit 1003.
`
`Ground
`
`1
`
`2
`3
`
`4
`
`'179 patent Claims
`1-3, 6-14, 18-19, 21-26, 30-37
`
`Grounds for Trial
`Obvious over Levy in view
`
`of Arya
`Anticipated by Conwell
`1-3, 6, 8-14, 19, 21-26, 30-31, 34-37
`1-3, 8-14, 19, 21-22, 25, 27, 29-31, 34-37 Anticipated by Wood
`1-3, 8, 10-14, 18-19, 21-27, 29, 31,
`Obvious over Ghias in
`
`
`34-37
`view of Philyaw
`
`V.
`
`SUMMARY OF THE '179 PATENT
`
`A. Algorithms for Automatic Content Recognition
`
`In the 1990s, numerous individuals concurrently developed systems for
`
`computer-automated recognition of audio and video content. Ex. 1004 at ¶ 9. Such
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`
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`2
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`systems universally relied on two widely known technologies: feature extraction
`
`and neighbor searching. Id. Feature extraction refers to quantifying a media work in
`
`a form that—unlike a raw video feed—is easily parsed by a computer. Id. at ¶ 11.
`
`Neighbor searching refers to comparing a first set of extracted features with one or
`
`more additional sets of extracted features to locate a close, but not necessarily
`
`exact, match. Id. at ¶ 12. Because neighbor searching is computationally intensive,
`
`content recognition schemes typically increased efficiency by intelligently
`
`searching only a subset of potential matches (i.e., "non-exhaustive" algorithms). Id.
`
`B.
`
`Summary of the '179 Claims
`
`The '179 patent issued from U.S. Patent App. No. 13/338,079, filed on
`
`December 27, 2011, and claims priority—through a series of applications including
`
`a continuation-in-part—to Provisional App. No. 60/232,618, filed on September
`
`14, 2000. Ex. 1001.
`
`The '179 Claims relate to identifying an unknown media work and, based on
`
`its determined identity, associating an action with the work. Ex. 1001 at Abstract,
`
`Claims 1, 13, 25. The independent '179 Claims are directed to five elements for
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`identifying an electronic work and performing a corresponding action: (1)
`
`maintaining one or more "databases" containing "compact electronic
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`representation[s] of one or more reference electronic works" and "electronic data
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`related to an action . . . corresponding to each of the one or more reference
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`3
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`electronic works"; (2) "obtaining . . . a second digitally created compact
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`electronic representation" of an unknown work; (3) "identifying" the unknown
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`work "using a non-exhaustive neighbor search"; (4) "determining" an
`
`appropriate action based on the "electronic data related to an action"; and (5)
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`"associating . . . the determined action with the" identified work. Id. at Claim 13.
`
`See id. at Claims 1, 25; Ex. 1004 at ¶ 15.
`
`C.
`
`Person of Ordinary Skill in the Art of the '179 patent
`
`In 2000, a person of ordinary skill in the art of the '179 patent would have
`
`been highly skilled, and typically would have possessed at least an M.S. in
`
`computer science, electrical engineering, or mathematics; knowledge of video and
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`audio processing techniques; and 1-2 years of experience in audio, video, or image
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`processing. Ex. 1004 at ¶ 6.
`
`D. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`The claim terms should be given their "broadest reasonable construction in
`
`light of the specification." 37 C.F.R. § 42.100(b). Although Petitioner reserves the
`
`right to present different constructions in related litigation—which applies a
`
`different standard—proposed broadest reasonable constructions are set forth below.
`
`The terms "extracted features," "compact electronic representation," and
`
`"compact electronic representation comprising an extracted feature vector"
`
`appear in independent claims 1, 13, and 25 of the '179 patent, respectively, and
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`
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`4
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 11 of 69
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`should all be construed to mean "a quantitative representation of the features of a
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`media work, or a subset of the features of a media work." Ex. 1004 at ¶¶ 36-39. The
`
`patent specification recognizes that "[t]he recognition literature contains many
`
`different" extraction algorithms, including "pseudo-random sample[s] of pixels,"
`
`"the average intensities of nxn blocks of pixels," "frequency-based decomposition
`
`of the signal, such as produced by the Fourier, wavelet and or discrete cosine
`
`transforms," or "a combination of these." E.g., Ex. 1001 at 6:65-7:26. The only
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`unifying characteristic of these methods is that they generate a quantitative
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`representation of the features of a media work. Ex. 1004 at ¶ 37. In 2000, persons
`
`skilled in the art consistently employed this definition. Ex. 1004 at ¶ 38.
`
`The '179 specification further demonstrates that "compact electronic
`
`representation" and "compact electronic representation comprising an extracted
`
`feature vector" are synonymous with "extracted features." In a single passage, the
`
`specification equates all three terms: "[the purpose of the feature extraction
`
`operation is to derive a compact representation of the work that can subsequently
`
`be used for the purpose of recognition. In the case of images and video, this
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`feature vector might be . . ." Ex. 1001 at 7:3-7; e.g., id. at 20:14-15, 5:44-45, 6:41,
`
`6:47-49, 7:59-61, 8:4-5, 8:21-31, 8:47-9:2; 9:38-51. In 2000, persons skilled in the
`
`art understood that these terms were synonymous. Ex. 1004 at ¶ 39.
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`The term "non-exhaustive . . . search" appears in all independent claims of
`
`
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`5
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 12 of 69
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`the '179 patent, and should be construed—under the "broadest reasonable
`
`construction" standard—to mean "a search that locates a match without conducting
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`a brute force comparison of all possible matches, and all data within all possible
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`matches." Ex. 1004 at ¶¶ 40-44. The specification never uses the term "non-
`
`exhaustive" or "exhaustive." Ex. 1001. However, in 2000, persons skilled in the art
`
`employed multiple constructions, the broadest of which was consistent with the
`
`above definition. Ex. 1004 at ¶ 40. Any search algorithm that is not guaranteed to
`
`find an existing match is non-exhaustive under this definition. Ex. 1004 at ¶ 41.
`
`The term "neighbor search" appears in all independent claims of the '179
`
`patent, and should be construed to mean "identifying a close, but not necessarily
`
`exact, match." In 2000, persons skilled in art consistently employed this definition.
`
`Ex. 1004 at ¶ 45. Consistent with the above, the term "neighbor" should be
`
`construed to mean "a close, but not necessarily exact, match." Id. at ¶ 47.
`
`Slight variations of the term "associating . . . the determined action with
`
`the first electronic work" appear in all independent claims of the '179 patent, and
`
`should be construed to mean "establishing any relationship between an action and
`
`an identified work, including performing the action in response to identifying the
`
`work." Ex. 1004 at ¶ 48. Though the '179 specification notes that the database "may
`
`associate" known works "with associated information 136, such as an action" (Ex.
`
`1001 at 6:32-34), it never discloses the association of a newly identified work with
`
`
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`6
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 13 of 69
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`an action. However, the specification makes clear that associating an action with a
`
`newly identified work cannot refer to recording in the database that the action and
`
`the work correspond, because the database already contains this information. That
`
`is, because the '179 patent determines an action by retrieving a record in the
`
`database relating the work to the action (e.g., id. at 6:55-58), it would be
`
`nonsensical for the system to subsequently rewrite the same information back to the
`
`same database. Thus, in the absence of guidance from the specification, this term
`
`should be construed to include establishing any relationship between a work and an
`
`action. This includes performing an action in response to determining an
`
`identification, which requires establishing a relationship between a work and an
`
`action.
`
`For all other claim terms, the plain and ordinary meaning should apply.
`
`VI. ANALYSIS OF GROUNDS FOR TRIAL
`
`A. Ground 1: Claims 1-3, 6-14, 18-19, 21-26, 30-37 of the '179 Patent
`Are Obvious Over Levy In View Of Arya Under 35 U.S.C. § 103
`
`Levy was filed on May 2, 2000, and issued on January 7, 2003. Ex. 1013.
`
`Accordingly, Levy is prior art to the '179 patent under 35 U.S.C. § 102(e). Arya
`
`was published on July 6, 1998, and is therefore prior art under 35 U.S.C. § 102(b).
`
`Levy was before the examiner during prosecution of the '179 patent, but was never
`
`cited. Arya was not before the examiner during prosecution.
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 14 of 69
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`1.
`
`Summary of Levy
`
`Levy discloses identifying a media work and executing a related action. Ex.
`
`1013 at Abstract. In particular, Levy teaches "a decoding process that extracts [an]
`
`identifier from a media object" (id.); "a server [that] maps the identifier to an
`
`action" (id.); and "executing the action" (id. at 16:31-42). Levy discloses
`
`embodiments that "derive the identifier from the signal" in which case "the
`
`embedding process is unnecessary." Ex. 1013 at 9:42-61. A client may perform
`
`extraction (id. at 16:60-61) or transmit a work to a server to perform the extraction
`
`(id. at 17:11-13). Id. at 4:35-37. Levy discloses using a determined identity to
`
`display "title, artist, lyrics," and other information (id. at 2:46-53) or "perform[] an
`
`electronic transaction (selling products like CDs, DVDs, concert tickets, etc. via
`
`computer transaction using credit cards . . .)." Id. at 13:50-67.
`
`2.
`
`Summary of Arya
`
`Arya discloses a neighbor search algorithm wherein "set S of n data points"
`
`is "preprocess[ed] . . . into a data structure, so that given any query point q . . . the k
`
`nearest neighbors of q can be computed." Ex. 1006 at 1. This neighbor search is
`
`non-exhaustive, and "can provide significant improvements over brute-force
`
`search." Id. at 4, 2, 19 (explaining that, unlike brute force search, Arya "can
`
`enumerate the m nearest cells to q in O(md log n) time").
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`8
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 15 of 69
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`3.
`
`A Person Having Ordinary Skill in the Art Would Have
`Been Motivated to Combine Levy with Arya
`
`A person having ordinary skill in the art would have been motivated to
`
`combine Levy with Arya. Ex. 1004 at ¶¶ 60-61. Levy discloses extracting a
`
`"fingerprint of the audio signal based on a specified fingerprinting algorithm" (Ex.
`
`1013 at 9:42-61) "to identify the media object" (id. at 1:48-55). Persons skilled in
`
`the art at the time understood that fingerprinting algorithms were designed to
`
`generate a "statistically unique identifier of" the media work, but that disparities in
`
`the source of a fingerprinted work led to slight discrepancies in generated
`
`fingerprints. Id. at 9:42-61; Ex. 1004 at ¶ 61. Thus, persons skilled in the art
`
`understood that identifying a media work required not only locating exact
`
`fingerprint matches, but also near matches. Ex. 1004 at ¶ 61. Arya expands on the
`
`teachings of Levy by providing an algorithm to run such a search for "approximate
`
`nearest neighbor[s]." Ex. 1006 at 1. Indeed, Arya explicitly envisioned that such
`
`"[n]earest neighbor searching is an important problem in a variety of applications,
`
`including . . . pattern recognition . . . [and] multimedia databases." Id. at 2.
`
`4.
`
`The Combination of Levy and Arya Discloses Every
`Limitation of Claims 1-3, 9, 11-14, 18-19, 21-26, 30-31, and
`34-37
`
`The combination of Levy and Arya discloses all five elements of the
`
`independent '179 Claims. Ex. 1004 at ¶¶ 63-68. First, the '179 Claims require
`
`"databases" containing "compact electronic representation[s] of one or more
`
`
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`9
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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 16 of 69
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`reference electronic works" and "electronic data related to an action . . .
`
`corresponding to each of the one or more reference electronic works ." Ex. 1001 at
`
`Claims 1, 13, 25. As depicted in Figure 1, Levy discloses a database including first
`
`identifying information that is mapped to second action information. Ex. 1013 at
`
`Fig. 1, 4:40-61, 17:32-35 ("searching a database for additional information related
`
`to the audio signal from which the fingerprint is derived").
`
`Second, the '179 Claims require "obtaining . . . a second digitally created
`
`compact electronic representation"—or, synonymously, "extracted features" or a
`
`"feature vector"—of an unknown work. Ex. 1001 at Claims 1, 13, 25. Levy teaches
`
`that identifiers can be "derive[d] from the audio signal." Ex. 1013 at 2:29-37, 3:59-
`
`64. Levy also discloses the use of hash algorithms to create statistically-unique
`
`"fingerprints" of content. Id. at 9:40-61.
`
`Third, the '179 Claims require "identifying" the unknown work "using a non-
`
`exhaustive neighbor search." Ex. 1001 at Claims 1, 13, 25. Levy teaches that the
`
`decoded identifier is transmitted to the server, which then uses the identifier to
`
`determine the identity of the electronic work and the actions associated with it. Ex.
`
`1013 at 4:49-56, Fig. 1. Arya discloses a neighbor search wherein a "set S of n data
`
`points" is "preprocess[ed] . . . into a data structure, so that given any query point
`
`q . . . the k nearest neighbors of q can be computed." Ex. 1006 at 1. This neighbor
`
`search is non-exhaustive, and "can provide significant improvements over brute-
`
`
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`10
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`

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`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 17 of 69
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`force search." Id. at 4, 2, 19 (explaining that, unlike brute force search, Arya "can
`
`enumerate the m nearest cells to q in O(md log n) time"). Ex. 1004 at ¶ 66.
`
`Fourth, the '179 Claims require "determining" an appropriate action based on
`
`the "electronic data related to an action." Ex. 1001 at 1, 13, 25. Levy discloses that
`
`the server takes the identifier, and using the mapping process, determines the
`
`proper action or actions that are associated with that identifier. Ex. 1013 at 2:46-48,
`
`4:49-61, Fig. 1, Abstract, 1:48-55.
`
`Fifth, the '179 Claims require "associating . . . the determined action with
`
`the" identified work, which encompasses performing an action. Ex. 1001 at Claims
`
`1, 13, 25; Ex. 1004 at ¶ 68. Levy discloses, after mapping the identifier to an
`
`action, "executing the action." Id. at 16:31-42, 16:58-17:3, 17:9-18, 4:62-5:16;
`
`13:50-67; 6:60-65.
`
`As demonstrated above and in the below chart1, claims 1-3, 9, 11-14, 18-19,
`
`21-26, 30-31, and 34-37 are taught by Levy and Ayra, and are therefore
`
`unpatentable. Ex. 1004 at ¶ 69.
`
`'179 patent
`
`Levy (Ex. 1013) and Arya (Ex. 1006)
`
`1. A computer-implemented method
`comprising:
`(a) maintaining, by a computer system
`including at least one computer, a
`database comprising:
`
`Non-limiting preamble.
`
`Levy teaches a database of content
`identifiers and actions that are linked to
`the content. Fig. 1, 4:49-61.
`
`
`1 Unless otherwise indicated, citations in this claim chart are to Levy (Ex. 1013).
`
`
`
`11
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`

`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 18 of 69
`
`'179 patent
`
`Levy (Ex. 1013) and Arya (Ex. 1006)
`
`(1) first electronic data related to
`identification of one or more reference
`electronic works; and
`(2) second electronic data related to
`action information comprising an
`action to perform corresponding to
`each of the one or more reference
`electronic works;
`
`(b) obtaining, by the computer system,
`extracted features of a first electronic
`work;
`
`(c) identifying, by the computer
`system, the first electronic work by
`comparing the extracted features of the
`first electronic work with the first
`electronic data in the database using a
`non-exhaustive neighbor search;
`
`Levy teaches a first electronic data that
`has content-identifying information.
`Fig. 1, 4:49-61.
`
`Levy teaches second electronic data that
`contains the action or actions to be
`associated with the content-identifying
`information. Fig. 1, 4:49-61.
`
`Levy obtains the extracted features (i.e.,
`the identifier) by extracting them from
`an audio signal. 4:33-39, 3:59-61, 9:40-
`61, 12:37-41, 16:60-61. The extraction
`process comprises "comput[ing] a
`fingerprint of the audio signal based on
`a specified fingerprinting algorithm." Id.
`at 9:42-61. "[T]he decoding process
`may be implemented in a variety of"
`computers. 14:35-42.
`
`Levy teaches that the server uses the
`identifier to identify the work. 4:49-61.
`The "decoding device or programmatic
`process extracts the identifier from the
`object and uses it to retrieve related data
`or actions ('metadata') . . . the metadata
`typically includes the title, artist." 2:46-
`53. The server provides the
`identification to the decoder by
`"performing database look up to
`uniquely identify a media object."
`13:62-63. Arya further discloses
`identifying a neighbor using a non-
`exhaustive search that "can provide
`significant improvements over brute
`force search" in part because it allows
`some "relatively small average error."
`Ex. 1006 at 4, 3, 19-21. Ex. 1004 at ¶¶
`60-61.
`
`
`
`12
`
`

`

`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 19 of 69
`
`'179 patent
`
`Levy (Ex. 1013) and Arya (Ex. 1006)
`
`(d) determining, by the computer
`system, the action information
`corresponding to the identified first
`electronic work based on the second
`electronic data in the database; and
`
`(e) associating, by the computer
`system, the determined action
`information with the identified first
`electronic work.
`
`2. The computer-implemented method
`of claim 1, wherein the step of
`obtaining comprises receiving the first
`electronic work and extracting the
`extracted features from the first
`electronic work.
`
`Levy discloses that "[t]he server, in
`turn, maps the identifier to an action" to
`determine action information
`corresponding to the first electronic
`work. Abstract, 1:48-55. "To find the
`associated action or actions, the
`server . . . may: 1) look up the data and
`actions in a local database stored in its
`memory subsystem; 2) route the
`identifier to one or more other servers
`via the network, which in turn look up
`related actions and data associated with
`the identifier; or 3) perform some
`combination." 4:53-61.
`
`Levy discloses "executing the action."
`16:31-32, 16:58-17:3, 17:9-18. Levy
`further discloses that the action could be
`any of a "variety of actions," including
`"downloading media signals in
`streaming or file format" or "returning
`data and HTML links" on a portable
`client device. 13:50-67.
`
`Levy teaches that the user device may
`receive the first electronic work from
`"ambient audio waves" "and then
`extract[] the [extracted features] from
`the signal." 4:33-39. Alternatively, Levy
`discloses receiving the first electronic
`work from "wire networks," "wireless
`networks," "broadcast," "Digital
`Versatile Disc (DVD), minidisk, or
`compact disk (CD)" (2:7-21, 2:29-37)
`and subsequently extracting features
`(4:33-39, 3:59-61, 9:40-61, 12:37-41).
`
`3. The computer-implemented method
`of claim 2, wherein the first electronic
`work is received from at least one of a
`set-top-box, a video recorder, a cell
`
`Levy teaches that "a user ultimately
`receives the linked object in a player,
`tuner, or capture device" by
`"transferring an audio object over a
`
`
`
`13
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`

`

`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 20 of 69
`
`'179 patent
`
`Levy (Ex. 1013) and Arya (Ex. 1006)
`
`phone, a computer, or a portable
`device.
`
`9. The computer-implemented method
`of claim 1, wherein at least one of the
`first electronic work or the extracted
`features of the first electronic work is
`obtained from at least one of a set-top-
`box, a video recorder, a cell phone, a
`computer, or a portable device, and
`wherein the action information
`comprises commercial transaction data,
`and the method further comprises:
`
`electronically performing the
`commercial transaction through the at
`least one of a set-top-box, a video
`recorder, a cell phone, a computer, or a
`portable device using the commercial
`transaction data.
`
`11. The computer-implemented method
`of claim 1, wherein the action
`comprises at least one of directing a
`user to a website related to the first
`electronic work, initiating an e-
`commerce transaction, or dialing a
`phone number.
`12. The computer-implemented method
`of claim 1, wherein the action
`comprises providing and/or displaying
`
`computer network, streaming the object
`over a computer network, or
`broadcasting" from a computer. 4:26-
`32, Fig. 1.
`
`Levy teaches that the server obtains the
`extracted features from the user device,
`which can be a computer or portable
`device such as a player, tuner, or other
`capture device. 4:33-43. Levy further
`teaches that action information can
`comprise commercial transaction data,
`such as "performing an electronic
`transaction (selling products like CDs,
`DVDs, concert tickets, etc. via
`computer transaction using credit cards,
`digital money, etc.)" (13:56-58, 2:59-
`61) or "information about themselves"
`that users provide "when they register
`their decoding device" (2:67-3:2).
`
`Levy discloses, through a computer,
`"perform[ing] an electronic transaction
`. . . " using the commercial transaction
`data. 13:56-58. Levy additionally
`discloses, through a computer,
`performing a commercial transaction
`using the commercial transaction data
`consisting of user registration data.
`2:67-3:2
`
`Levy teaches that the linked action can
`provide URLS to web sites and
`information about buying and sampling
`opportunities. 2:48-53; 3:4-21, 6:43-59,
`13:53-54.
`
`Levy teaches providing "metadata" that
`is associated with the electronic work,
`which may include the title, artist,
`
`
`
`14
`
`

`

`Case 1:14-cv-02396-PGG-MHD Document 153-9 Filed 06/28/19 Page 21 of 69
`
`'179 patent
`
`Levy (Ex. 1013) and Arya (Ex. 1006)
`
`additional information in association
`with the first electronic work.
`
`13. A computer-implemented method
`comprising:
`
`(a) maintaining, by a computer system,
`one or more databases comprising:
`(1) first electronic data comprising a
`first digitally created compact
`electronic representation of one or
`more reference electronic works; and
`
`(2) second electronic data related to an
`action, the action comprising providing
`and/or displaying an advertisement
`corresponding to each of the one or
`more reference electronic works;
`
`(b) obtaining, by the computer system,
`a second digitally created compact
`electronic representation of a first
`electronic work;
`
`(c) identifying, by the computer
`system, a matching reference electronic
`work that matches the first electronic
`work by comparing the first electronic
`data with the second digitally created
`compact electronic representation using
`a non-exhaustive neighbor search;
`(d) determining, by the computer
`system, the action corresponding to the
`
`lyrics, copyright owner, and other
`information. 2:46-53, 13:50-67, 16:31-
`43 ("returning data to the player
`device"), 4:49-53 ("the server
`determines an associated action to
`perform, such as . . . returning metadata
`"), Abstract ("returning metadata").
`
`Non-limiting preamble.
`
`Petitioner incorporates the above
`discussion of Levy regarding Claim 1a.
`
`Petitioner incorporates the above
`discussion of Levy regarding Claim
`1(a)(1).
`
`Petitioner incorporates the above
`discussion of Levy regarding Claim
`1(a)(2). Levy further teaches an action
`that is providing and/or displaying an
`advertisement, such as "electronic
`buying opportunities for music, concert
`tickets, clothing, etc." 3:4-21, 5:39-50,
`6:54-59, 17:9-18, 17:21-26, 2:48-53.
`
`Petitioner incorporates the above
`discussion of Levy regarding Claim 1b.
`As explained above, the term "compact
`electronic representation" is
`synonymous with "extracted features."
`
`Petitioner incorporates the above
`discussion of Levy and Arya reg