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`Case 1:14-cv-02396—PGG-MHD Document 158-4 Filed 07/19/19 Page 1 of 28
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`EXHIBIT 3
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`EXHIBIT 3
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`Case 1:14-cv-02396-PGG-MHD Document 158-4 Filed 07/19/19 Page 2 of 28
`Trials@uspto.gov
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`Paper No. 7
`571.272.7822
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`Filed: October 19, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case CBM2015-00113
`Patent 8,904,464 B1
`_______________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`I. INTRODUCTION
`A. Background
`Google Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting a
`review under the transitional program for covered business method patents of
`U.S. Patent No. 8,904,464 B1 (Ex. 1001, “the ’464 Patent”). Network-1
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`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 5,
`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324.
`The standard for instituting a covered business method patent review is
`set forth in 35 U.S.C. § 324(a), which provides as follows:
`THRESHOLD.—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`Petitioner challenges the patentability of claims 1–34 (“the challenged
`
`claims”) of the ’464 Patent under 35 U.S.C. §§ 101, 103, and 112. Taking
`into account Patent Owner’s Preliminary Response, we determine that the
`Petition demonstrates that it is more likely than not that at least one of the
`challenged claims is unpatentable. Pursuant to 35 U.S.C. § 324, we institute a
`covered business method patent review of all of the challenged claims of the
`’464 Patent.
`
`
`B. Related Matters
`The parties inform us that the ’464 Patent is the subject of the following
`lawsuit: Network-1 Technologies, Inc. v. Google Inc. and YouTube, LLC,
`Case No. 1:14-cv-09558 (S.D.N.Y.). Pet. 76–77; Paper 4, 2–3. YouTube,
`LLC is a subsidiary of Petitioner, and is acknowledged as a real party-in-
`interest. Id. In addition, four additional patents, U.S. Patent Nos. 8,640,179,
`8,205,237, 8,010,988, and 8,656,441, all issuing from applications related to
`the ’464 Patent, are subject to pending trials for inter partes review, namely
`IPR2015-00343, IPR2015-00345, IPR2015-00347, and IPR2015-00348,
`respectively.
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`C. The ’464 Patent
`The ’464 Patent relates to identifying a work, such as a digital audio or
`video file, without the need to modify the work. Ex. 1001, 1:41–46, 4:42–51.
`This identification can be accomplished through the extraction of features
`from or about the work, and comparison of those extracted features with
`records of a database or library. Id. at Abs. Thereafter, an action may be
`determined based on the identification determined. Id. at 5:21–23. Patent
`Owner refers to Figure 1 as illustrating the steps of the claimed computer-
`implemented methods (Prelim. Resp. 3–4):
`
`Fig. 1 of the ’464 Patent illustrating the claimed method
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`D. Illustrative Claim
`Claims 1 and 18 are independent, claim 1 is considered representative
`
`of the claims challenged, and claim 1 is reproduced below:
`1. A method comprising:
`receiving, by a computer system including at least one computer, a
`first electronic media work;
`correlating, by the computer system using a non-exhaustive, near
`neighbor search, the first electronic media work with an
`electronic media work identifier;
`storing, by the computer system, correlation information associating
`the first electronic media work and the electronic media work
`identifier;
`accessing, by the computer system, associated information related
`to an action to be performed in association with one or more
`electronic media works corresponding to the electronic media
`work identifier;
`generating, by the computer system, a tag associated with the first
`electronic media work;
`providing, from the computer system to a user electronic device, the
`first electronic media work and the associated tag;
`obtaining, by the computer system from the user electronic device,
`a request related to the associated tag;
`generating, using the computer system, machine-readable
`instructions based upon the associated information to be used in
`performing, at the user electronic device, the action; and
`providing, from the computer system to the user electronic device,
`the machine-readable instructions to perform the action in
`response to the request.
`Id. at 24:44–25:3.
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`Evidence of Record
`E.
`Petitioner relies on the following references and declaration (see
`Pet. 26–27):
`Reference or Declaration
`International Patent Publication WO 99/04568 (“Ferris”)
`U.S. Patent No. 4,381,522 (“Lambert”)
`Aristides Gionis et al., Similarity Search in High
`Dimensions via Hashing, Proceedings of the 25th
`International Conference on Very Large Data Bases, 518–29
`(“Gionis”)
`International Patent Publication WO 00/16205 (“Philyaw”) Ex. 1009
`U.S. Patent No. 5,410,326 (“Goldstein”)
`Ex. 1010
`Declaration of Dr. Pierre Moulin
`Ex. 1003
`
`Exhibit No.
`Ex. 1005
`Ex. 1007
`Ex. 1008
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`
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`Asserted Grounds of Unpatentability
`F.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (see Pet. 17–76):
`References
`Claims Challenged
`Basis
`
`1–34
`§ 101
`1–11, 13–15, 18–
`Ferris, Lambert, and Gionis
`§ 103
`28, and 30–32
`Ferris, Lambert, Gionis, and Philyaw
`16 and 33
`§ 103
`Ferris, Lambert, Gionis, and Goldstein
`12, 17, 29, and 34
`§ 103
`§ 112, 2nd ¶
`1–34
`§ 112, 1st ¶
`1–34
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`II. ANALYSIS
`A.
`Standing to Seek Covered Business Method Patent Review
`Section 18 of the AIA1 provides for the creation of a transitional
`program for reviewing covered business method patents. Section 18 limits
`
`
`1 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329
`(Sept. 16, 2011) (“AIA”).
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`review to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent,” which does not include
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1).
`37 C.F.R. § 42.302 states “[c]harged with infringement means a real and
`substantial controversy regarding infringement of a covered business method
`patent exists such that the petitioner would have standing to bring a
`declaratory judgment in Federal court.”
`Petitioner states that it was charged with infringement of the ’464
`Patent in Network-1 Technologies, Inc. v. Google Inc., Case No. 1:14-cv-
`09558 (S.D.N.Y. Dec. 3, 2014). Pet. 77. Patent Owner does not dispute this
`statement.
`i. Financial Product or Service
`A covered business method patent “claims a method or corresponding
`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1). The “legislative history explains that the definition of
`covered business method patent was drafted to encompass patents ‘claiming
`activities that are financial in nature, incidental to a financial activity or
`complementary to a financial activity.’” Transitional Program for Covered
`Business Method Patents—Definitions of Covered Business Method Patent
`and Technological Invention, 77 Fed. Reg. 48,734, 48,735, 37 C.F.R.
`§ 42.301(a) (Aug. 14, 2012) (Final Rule) (quoting 157 Cong. Rec. S5432
`(daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). The legislative history
`indicates that “financial product or service” should be interpreted broadly. Id.
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`A patent need have only one claim directed to a covered business method to
`be eligible for review. Id. at 48,736 (Response to Comment 8).
`Petitioner argues that the ’464 Patent claims relate to a financial product
`or service, citing claim 10 and its recitation that the action to be performed
`based on the information, per claim 1, is “related to an advertisement.” Pet. 3.
`Petitioner continues that “[p]roviding advertisements is a fundamental
`business practice” and that the ’464 Patent was classifiable in Class 705. Id.
`at 3–4 (citation omitted). Patent Owner does not argue that the claims of the
`’464 Patent are not directed to a financial product or service.
`We are persuaded by Petitioner that at least one claim claims a method
`that calls for an action to be performed related to an advertisement, namely
`claim 10. Advertising is a fundamental business practice. See Hulu, LLC v.
`Intertainer, Inc., CBM2014-00052, slip op. at 10 (PTAB Jun. 23, 2014)
`(Paper 10). Upon this record, we determine that Petitioner has established that
`at least one claim recites a method directed to a financial product or service
`sufficient to meet a criterion for instituting a covered business method patent
`review.
`
`ii. Technological Invention
`The definition of “covered business method patent” in Section 18(d)(1)
`of the AIA does not include patents for “technological inventions.” To
`determine whether a patent is for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological feature
`that is novel and unobvious over the prior art; and solves a technical problem
`using a technical solution.” 37 C.F.R. § 42.301(b). Both prongs must be
`satisfied in order for the patent to be excluded as a technological invention.
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`The following claim drafting techniques, for example, typically do not render
`a patent a “technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable storage medium, scanners,
`display devices or databases, or specialized machines, such as an
`ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method is
`novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`77 Fed. Reg. 48,756, 48,763–64 (Aug. 14, 2012).
`
`Petitioner argues that the ’464 Patent is not for a technological
`invention because none of the claims recite a technological feature that is
`novel and nonobvious over the prior art. Pet. 5–13. Petitioner, further, argues
`that the ’464 Patent is not for a technological invention because none of the
`claims solve a technical problem using a technical solution. Id. at 13–15.
`According to Petitioner, the only technology claimed is a “computer system”
`and a “user electronic device,” which are insufficient to render the patent
`technological, and are acknowledged by Patent Owner as being conventional
`and routine equipment, and the receipt and transmission of data, without more,
`is a known process practiced on computers. Id. at 8–13. Petitioner also
`argues that the claimed step of “correlating … using a non-exhaustive, near
`neighbor search” is a known searching method, and is akin to what a person
`does in looking up a word in a dictionary. Id. at 9–10.
`Patent Owner does not argue that the claims of the ’464 Patent recite a
`novel and unobvious technological feature. We are persuaded by Petitioner
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`that the ’464 Patent is not for a technological invention because at least claim
`1 does not satisfy the first prong of the test. Claim 1 does not recite a
`technological feature that is novel or unobvious over the prior art. Claim 1
`recites a method that involves “receiving,” “correlating,” “storing,” and
`“generating,” among other steps, which are all known processes that are
`generally performed by computers during the relevant time period, i.e., at the
`time of filing the ’464 Patent. See Ex. 1001, 1:48–4:23. Therefore, we find
`that at least claim 1 does not recite a technological feature that is novel or
`unobvious over the prior art and does not satisfy the first prong of the test.
`
`For the reasons discussed above, we are persuaded by Petitioner that the
`’464 Patent is eligible for covered business method patent review.
`
`
`B.
`Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778
`F.3d 1271, 1281–82 (Fed. Cir. 2015). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes a construction for “near neighbor” and “neighbor,”
`as those limitations are recited in independent claims 1 and 18. Pet. 16–17.
`Petitioner submits that “near neighbor” should be construed to mean “close,
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`but not necessarily exact or the closest, match.” Id. Patent Owner does not
`appear to take a position on this construction.
`Upon this record and for the purposes of this Decision, we determine
`that the broadest reasonable construction of “near neighbor search” should be
`construed as “identifying a close, but not necessarily exact or closest, match.”
`Based on our review of the record before us, no explicit construction of any
`other claim term is needed at this time.
`
`
`C.
`35 U.S.C. § 101
`i. Section 101 Subject Matter Eligiblity
`For claimed subject matter to be patentable eligible, it must fall into one
`of four statutory classes set forth in 35 U.S.C. § 101: a process, a machine, a
`manufacture, or a composition of matter. The Supreme Court recognizes
`three categories of subject matter that are ineligible for patent protection:
`“laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos,
`130 S. Ct. 3218, 3225 (2010) (citation omitted). A law of nature or an
`abstract idea by itself is not patentable; however, a practical application of the
`law of nature or abstract idea may be deserving of patent protection. Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94
`(2012). To be patentable, however, a claim must do more than simply state
`the law of nature or abstract idea and add the words “apply it.” Id.
`In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
`Supreme Court recently clarified the process for analyzing claims to
`determine whether claims are directed to patent-ineligible subject matter. In
`Alice, the Supreme Court applied the framework set forth previously in Mayo,
`“for distinguishing patents that claim laws of nature, natural phenomena, and
`abstract ideas from those that claim patent-eligible applications of those
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`concepts.” Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1289). The
`first step in the analysis is to “determine whether the claims at issue are
`directed to one of those patent-ineligible concepts.” Id. (citing Mayo, 132 S.
`Ct. at 1296–97). If they are directed to a patent-ineligible concept, the second
`step in the analysis is to consider the elements of the claims “individually and
`‘as an ordered combination’ to determine whether the additional elements
`‘transform the nature of the claim’ into a patent-eligible application.” Id.
`(citing Mayo, 132 S. Ct. at 1297).
`In other words, the second step is to “search for an ‘inventive
`concept’—i.e., an element or combination of elements that is ‘sufficient to
`ensure that the patent in practice amounts to significantly more than a patent
`upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
`Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting abstract
`ideas ‘cannot be circumvented by attempting to limit the use of the formula to
`a particular technological environment’ or adding ‘insignificant postsolution
`activity.’” Bilski, 130 S. Ct. at 3230 (citing Diamond v. Diehr, 450 U.S. 175,
`191–92 (1981)).
`Accordingly, utilizing this framework, we review Petitioner’s allegation
`that claims 1–34 of the ’464 Patent are directed to ineligible subject matter.
`ii. Statutory Category
`Independent claims 1 and 18 recite methods, and these claimed methods
`nominally fall within the process category of statutory subject matter.
`iii. Ineligible Concept
`Petitioner argues that the claims of the ’464 Patent are directed merely
`to an abstract idea of “linking a media work to a business action.” Pet. 18.
`Petitioner continues that the abstract idea “has been performed manually for
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`decades,” and cites, as an example, reader card services, where magazines
`would provide cards in their periodicals for readers to indicate an interest in a
`particular advertisement and the advertiser could take some business action
`based on that interest. Id. at 19–20. Petitioner also argues that the claims add
`only conventional computer technology or descriptions of types of data to the
`abstract idea. Id. at 20–25.
`Patent Owner argues that Petitioner fails to provide sufficient analysis
`and evidence that the claims are directed to such an abstract idea. Prelim.
`Resp. 5–30. Patent Owner continues that the Petition fails to establish that the
`claims satisfy either step under Mayo. Id. at 6. Patent Owner argues that the
`Petitioner’s summary of the claims omits their core features, and that the
`claimed solution is rooted in computer technology and seeks to overcome a
`problem specifically arising in that realm. Id. at 6–14. Patent Owner also
`argues that Petitioner has failed to provide any analysis of its characterization
`of the claims, or how that characterization is tied to the claims, that its
`characterization omits the performance of a search and/or correlation found in
`the claims, and that the claims fail to recite specifically “business process,”
`“business actions,” or “gauging consumer interest,” as provided in Petitioner’s
`characterization. Id. at 14–22. Patent Owner also argues that Petitioner’s
`analysis does not adequately establish that the instant claims also fail step 2 of
`Mayo, i.e., whether additional elements of the claims transform the nature of
`the claims into a patent-eligible application of the abstract idea. Id. at 22–30.
`Upon review of the Petitioner’s evidence and analysis and taking into
`account Patent Owner’s Preliminary Response, we are not persuaded that the
`subject claims of the ’464 Patent are directed to the abstract idea of “linking a
`media work to a business action.”
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`Both independent claims, claims 1 and 18, recite “correlating, by the
`computer system using a non-exhaustive, near neighbor search, the first
`electronic media work with [an or the first] electronic media work identifier.”
`We are persuaded by Patent Owner that such a step cannot be properly
`summarized as “linking a media work.” This is illustrated by Petitioner’s
`example of using reader service cards, which does not require correlation and
`search, as recited in the claims. See Pet. 19–20. Although it could be argued
`that a reader “searches” the card for a box to check corresponding to a
`particular advertisement, we are persuaded that this is far from the processes
`of the claims, which require receiving an electronic media work, and
`correlating it with an identifier. Although there may be analogies between the
`processes, the claimed process requires more than mere human recognition.
`The claims require that the electronic media work be identified, through
`particular types of searching processes, to a certain degree, which is different
`than linking an advertisement to its listing on a reader service card.
`Further, we agree with Patent Owner that the claims are “‘necessarily
`rooted in computer technology in order to overcome a problem specifically
`arising in the realm of computer’ technology.” Prelim. Resp. 11 (citing DDR
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
`Both the Specification of the ’464 Patent (Ex. 1001, 22:26–34) and
`Petitioner’s declarant (Ex. 1003 ¶¶ 17–18) detail that the correlation process
`of the claims can involve searching large feature sets in an attempt to locate a
`close but not necessarily exact match. The requirement of “preprocessing”
`presumes a large number of entries for comparison, which would require the
`use of a computer in the relevant time period. It is difficult to imagine a use
`of reader service cards that would require such extensive searching and
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`processing. As such, we concur with Patent Owner that the instant claims are
`necessarily rooted in computer technology and not merely the implementation
`of a known abstract idea from the business context.
`As we have addressed the patent eligibility of the independent claims,
`we need not consider the eligibility of the dependent claims, as those claims
`are acknowledged by Petitioner as only reciting conventional computer
`technology or descriptions of data types. Pet. 20–25. Thus, upon review of
`Petitioner’s evidence and analysis, and taking into account Patent Owner’s
`arguments, we are not persuaded that the challenged claims are more likely
`than not patent ineligible under 35 U.S.C. § 101.
`
`D. Obviousness over Ferris, Lambert, and Gionis
`Claims 1–11, 13–15, 18–28, and 30–32
`Petitioner argues that Ferris, in combination with Lambert and Gionis,
`renders obvious claims 1–11, 13–15, 18–28, and 30–32. Pet. 27–58.
`Petitioner argues that Ferris teaches a majority of the elements of the claims,
`arguing that it would have been obvious to add a computer to the system of
`Ferris, per Lambert, and obvious to employ a non-exhaustive, near neighbor
`search, instead of Ferris’s “sliding window,” in view of Gionis. Pet. 31–35.
`Patent Owner counters that the proposed combination fails to disclose
`limitations recited in independent claims 1 and 18, and that the alleged
`motivation to combine the references is based on conclusory, insufficient
`assertions. Prelim. Resp. 30–51. Upon review of Petitioner’s evidence and
`analysis, and taking into account Patent Owner’s arguments, we are persuaded
`that the challenged claims are more likely than not rendered obvious by the
`combination of Ferris, Lambert, and Gionis.
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`Ferris is directed to a communication system that allows for display of
`advertisements, product and service offers, and other information on a remote
`control device. Ex. 1006, Abs.
`
`Figure 3 of Ferris above illustrates its system
`Broadcasters 402 generate and send video content to central processing
`station 420 and user home 416. Id. at 10–11. Central processing station 420
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`receives the broadcast signal as it is sent and compares it to stored samples to
`determine whether any portions of the broadcast match any stored samples.
`Id. The comparison may be performed using sliding-window, square-of-
`difference techniques. Id. at 11–12. The home user’s receiving device 417, or
`remote control device, has a display that provides the aforementioned
`information. Id. at Abs. When there is a match, the central processing station
`sends a Programme Associated Data Unique Identifier (“PADUID”) to the
`device, where the user may obtain additional information, track a product, or
`make a purchase, related to the viewed television program, by actuating a
`button on the device. Id. at 13, 23–24, Figs. 2A, 4.
`Petitioner acknowledges that Ferris does not explicitly disclose a
`hardware implementation of the broadcaster 402, but argues that it would have
`been obvious to add a computer to the system of Ferris, per Lambert. Pet. 31–
`32. Petitioner asserts that the use of a computer in the broadcaster unit would
`have been well-known and would have allowed for bidirectional
`communication. Id. Petitioner cites Lambert for its disclosure of a
`broadcaster, i.e., cable television system, having a minicomputer that provides
`switching control signals to selectively couple video programs for sending to
`television transmitters. Ex. 1007, 2:34–49, Fig. 1. Petitioner continues that it
`would have been a mere matter of design choice to implement the broadcaster
`of Ferris with a computer, per Lambert, and that the combination would have
`been a simple substitution of known elements to obtain predictable results.
`Pet. 32.
`Petitioner also argues that it would have been obvious to employ a non-
`exhaustive, near neighbor search, instead of Ferris’s “sliding window,” in
`view of Gionis. Id. at 32–35. Petitioner points out that Ferris teaches the use
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`of a matching engine in its comparison process that employs a “commonly
`known algorithm (such as a sliding-window, averaged, square-of-difference
`system with an activation threshold)” to match samples with broadcasted
`programs. Pet. 32–33 (citing Ex. 1006, 12). Petitioner also points out that
`Gionis discloses a method for approximate similarity searching in high-
`dimensional data such as image and video databases, pattern recognition, and
`other data having a large number of relevant features, where the resulting
`algorithm is non-exhaustive. Pet. 33 (citing Ex. 1008, 518–519). Petitioner
`argues that it would have been a matter of design choice and the substitution
`of known elements to implement Gionis’s non-exhaustive, near neighbor
`search in the comparison process used by Ferris. Pet. 34.
`We are persuaded that Petitioner has shown that it is more likely than
`not that the combination would have been obvious, per the analysis and claim
`charts provided in the Petition, in view of the testimony of Dr. Pierre Moulin
`(Ex. 1003). As discussed above, Patent Owner argues that the combination of
`references fails to teach or suggest all of the elements of the claims, and that
`the motivation to combine the references is insufficient. Prelim. Resp. 30-51.
`We address the points raised by Patent Owner in turn below.
`Patent Owner argues that the combination of Ferris, Lambert, and
`Gionis fails to teach or suggest elements of independent claims 1 and 18,
`namely “providing, from the computer system to a user electronic device, the
`first electronic media work and the associated tag,” from claim 1, with claim
`18 having a similar recitation. Prelim. Resp. 34. Patent Owner continues that
`the claims require that both the “media work” and the “tag” be provided from
`the computer system to a single device. Id. However, Ferris, relied upon by
`Petitioner for this element, only provides the “tag” to the user electronic
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`device (element 417), but provides the “media work” to another device,
`namely the content receiver (element 405). Id. at 35–37. Based on this,
`Patent Owner argues that Ferris, and thus the combination of references, does
`not teach or suggest the cited element of claims 1 and 18.
`The Petition cites, with respect to this element, Ferris as teaching the
`receipt of both the tag and the media by the remote control device. Pet. 40–
`41. The cited section of Ferris details:
`The apparatus, for example a remote control can determine
`whether a channel is selected on a broadcast receiver. In the
`case of a remote control this can be by way of selection by a
`user. A confirmation of the correct channel can be obtained by
`receiving a signal from the broadcast receiver, for example
`using a microphone and comparing
`the signal with a
`predetermined signal or a signal received at this apparatus.
`Ex. 1006, 6 (emphasis added). Based on this disclosure, the remote control
`device receives both the tag, i.e., PADUID, and the media work, i.e, the
`broadcast signal received and transmitted to a microphone in the remote
`control device.
`
`Patent Owner acknowledges this disclosure, but argues that it is
`insufficient to meet the claims. Patent Owner argues that broadcasters in
`Ferris do not transmit a signal to the remote control, but rather the remote
`control receives a signal from the broadcast receiver instead. Prelim. Resp.
`39. The independent claims do not recite, however, that the computer system
`transmits both the media work and tag directly to the user electronic device.
`Given the “comprising” language utilized by claims 1 and 18, those claims
`should also cover the indirect provision of the signals, as well as the direct
`provision.
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`Patent Owner also argues that the “signal” received by the remote
`control in Ferris is not the claimed “media work” because the transmitted
`signal includes both live and taped video, whereas the signal received by the
`remote control is merely audio, via a microphone. Id. at 39–41. Patent Owner
`continues that what Petitioner asserts to be the equivalent media work, with
`video, is not the same media work received. Id. We do not agree. Ferris
`specifically recites that “[b]roadcasters 402 generate content from a number of
`sources 403, depending on the broadcast medium in use.” Ex. 1006, 10
`(emphasis added). Ferris goes on to talk about a television broadcaster, as an
`example, but does not limit its disclosure to broadcast media requiring video,
`and includes a discussion of “terrestrial radio-frequency broadcast.” Id. at 11.
`As such, we are persuaded that Ferris is applicable to audio-only
`embodiments, where the transmitted signal would be nearly identical to the
`signal received by the remote control device in Ferris.
`Also, we are not persuaded that the claims require the entirety of the
`media work must be received or that the media work cannot be partially
`transformed. In many cases, the substantial portion of the media work may be
`audio only, such as with a musical broadcast on television, where the receipt
`of a less than complete work would be acceptable. As such, we do not find
`Patent Owner’s a