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` Exhibit 10
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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 IPR2015-00345
`U.S. Patent 8,205,237
`________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,205,237 UNDER 35 U.S.C. §§ 311-319
`
`
`
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 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) ................... 1
`IV. SUMMARY OF CHALLENGE AND RELIEF REQUESTED ................... 2
`V.
`SUMMARY OF THE '237 PATENT ......................................................... 3
`A. Algorithms for Automatic Content Recognition ................................ 3
`B.
`Summary of the '237 Claims ............................................................ 3
`C.
`Person of Ordinary Skill in the Art of the '237 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, 3-5, 7-9, 11-13, 15-16, 21-25, 29-30, 33,
`and 37-38 of the '237 Patent Are Anticipated By Iwamura ................. 7
`1.
`Summary of Iwamura ............................................................. 7
`2.
`Iwamura Discloses Every Element of Claims 1, 3-5, 7-9,
`11-13, 15-16, 21-25, 29-30, 33, and 37-38............................... 7
`B. Ground 2: Claims 1-25, 29-30, 32-33, 37-38, and 40 of the '237
`Patent Are Obvious Under 35 U.S.C. § 103 Over Levy in view
`of Arya.......................................................................................... 16
`1.
`Summary of Levy ................................................................ 17
`2.
`Summary of Arya................................................................. 18
`3.
`The Combination of Levy and Arya Discloses Every
`Limitation of Claims 1-25, 29-30, 32-33, 37-38, and 40 ......... 18
`A Person Having Ordinary Skill in the Art Would Have
`Been Motivated to Combine Levy with Arya......................... 20
`C. Ground 3: Claims 25, 32-33, and 40 of the '237 Patent Are
`Obvious Under 35 U.S.C. § 103 Over Iggulden in view of
`Böhm ............................................................................................ 30
`1.
`Summary of Iggulden ........................................................... 30
`2.
`Summary of Böhm ............................................................... 32
`3.
`The Combination of Iggulden and Böhm Discloses Every
`Limitation of Claims 25, 32-33, and 40 ................................. 34
`A Person Having Ordinary Skill in the Art Would Have
`Been Motivated to Combine Iggulden with Böhm ................. 35
`D. Ground 4: Claims 1-3, 5-7, 9-11, 13-15, and 21-24 Are
`Anticipated By Ghias Under U.S.C. § 102(b) .................................. 39
`1.
`Summary of Ghias ............................................................... 39
`
`4.
`
`4.
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`-i-
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`2.
`
`E.
`
`F.
`
`Ghias Discloses Every Element of Claims 1-3, 5-7, 9-11,
`13-15, and 21-24 of the '237 Patent ....................................... 40
`Ground 5: Claims 9-16 and 23-24 Are Anticipated By Wood
`Under U.S.C. § 102(e) ................................................................... 47
`1.
`Summary of Wood ............................................................... 47
`2. Wood Discloses Every Element of Claims 9-16 and 23-
`24 ........................................................................................ 48
`Ground 6: Claims 26-27 and 34-35 of the '237 Patent Are
`Obvious Under 35 U.S.C. § 103 Over Iwamura in view of Chen ...... 53
`1.
`Summary of Chen ................................................................ 54
`2.
`The Combination of Iwamura and Chen Renders Claims
`26-27 and 34-35 Obvious ..................................................... 54
`A Person Having Ordinary Skill in the Art Would Have
`Been Motivated to Combine Iwamura with Chen................... 56
`G. Ground 7: Claims 26-27 and 34-35 of the '237 Patent Are
`Obvious Under 35 U.S.C. § 103 Over Levy in view of Arya and
`Chen ............................................................................................. 57
`1.
`The Combination of Levy, Arya, and Chen Discloses
`Every Limitation of Claims 26-27 and 34-35 ......................... 58
`A Person Having Ordinary Skill in the Art Would Have
`Been Motivated to Combine Levy and Arya with Chen ......... 59
`VII. CONCLUSION ....................................................................................... 60
`
`
`3.
`
`2.
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`
`
`-ii-
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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 5 of 69
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`EXHIBIT LIST
`
`U.S. Patent No. 8,205,237 to Cox
`
`Prosecution History of U.S. Patent No. 8,205,237
`
`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
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 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-SN Document 234-12 Filed 11/11/20 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 1-27, 29-30, 32-35, 37-38, and 40
`
`("the '237 Claims") of U.S. Patent No. 8,205,237 ("the '237 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 '237 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.
`
`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`
`
`
`
`
`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 8 of 69
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`Petitioner certifies that the '237 patent is available for IPR and that: (1)
`
`Petitioner does not own the '237 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 '237 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 '237 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
`
`5
`
`6
`
`7
`
`Grounds for Trial
`Anticipated by Iwamura
`
`'237 Patent Claims
`1, 3-5, 7-9, 11-13, 15-16, 21-25,
`
`29-30, 33, 37-38
`1-25, 29-30, 32-33, 37-38, 40 Obvious over Levy in View of Arya
`25, 32-33, 40
`Obvious over Iggulden in view of
`
`Böhm
`Anticipated by Ghias
`
`1-3, 5-7, 9-11, 13-15, 21-24
`
`9-16, 23-24
`
`Anticipated by Wood
`
`26-27, 34-35
`
`26-27, 34-35
`
`Obvious over Iwamura, or
`
`Iwamura in View of Chen
`Obvious over Levy in view of Arya
`
`and Chen
`
`
`
`2
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 9 of 69
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`V.
`
`SUMMARY OF THE '237 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
`
`systems universally relied on two widely known technologies: feature extraction
`
`and neighbor searching. Id. ¶ 10. 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 algorithms for 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 for large feature sets, content recognition schemes
`
`typically employed search algorithms that increased efficiency by intelligently
`
`searching only a subset of potential matches (i.e., "non-exhaustive" algorithms). Id.
`
`B.
`
`Summary of the '237 Claims
`
`The '237 patent issued from U.S. Patent App. No. 11/977,202, filed on
`
`October 23, 2007, and claims priority—through a series of applications including a
`
`continuation-in-part—to Provision App. No. 60/232,618, filed September 14, 2000.
`
`See Ex. 1001. The '237 patent has never previously been challenged in post-grant
`
`proceedings or in Court.
`
`The '237 Claims relate to identifying an unknown media work and, based on
`
`its determined identity, performing an action. Ex. 1001 at Abstract, Claims 1, 5, 9,
`
`
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`3
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 10 of 69
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`13, 25, 33. The independent '237 Claims are directed to a computer-implemented
`
`method or apparatus comprising: (1) receiving or obtaining "features . . . extracted
`
`from a media work"; (2) "determining . . . an identification of the media work
`
`using the . . . features . . . to perform" a "search of . . . media works"; and (3) either
`
`"transmitting . . . information about the identified media work to the client
`
`device" or "determining . . . an action based on the determined identification of
`
`the media work." Id. at Claims 1, 5, 9, 13, 25, 33; Ex. 1004 at ¶ 15.
`
`C.
`
`Person of Ordinary Skill in the Art of the '237 Patent
`
`In 2000, a person of ordinary skill in the art of the '237 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
`
`audio processing techniques; and 1-2 years of experience in audio, video, or image
`
`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.
`
`Variations of the term "features extracted from the media work" appear in
`
`all independent claims of the '237 patent, and should be construed to mean "a
`
`
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`4
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 11 of 69
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`quantitative representation of the features of a media work, or a subset of the
`
`features of a media work." Ex. 1004 at ¶¶ 39-42 . 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 6:51-7:11. The only unifying characteristic
`
`of these methods is that they generate a quantitative representation of the features
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`of a media work. Ex. 1004 at ¶ 40. In 2000, persons skilled in the art consistently
`
`employed this definition. Id. at ¶ 41.
`
`The term "nonexhaustive search" appears in independent claim 25 of the
`
`'237 patent, and should be construed—under the "broadest reasonable construction"
`
`standard—to mean "a search that locates a match without conducting a brute force
`
`comparison of all possible matches, and all data within all possible matches." Ex.
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`1004 at ¶ 43. The specification never uses the term "nonexhaustive" 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 ¶ 43. Any search algorithm that is not guaranteed to find an
`
`existing match is non-exhaustive under this definition. Id. at ¶ 44.
`
`Each independent '237 Claim contains one of the following terms: "identify
`
`
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`5
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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 12 of 69
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`a neighbor," "identify a near neighbor," and "nearest neighbor search." These
`
`terms should be construed to mean "identify a close, but not necessarily exact,
`
`match." Ex. 1004 at ¶ 48. In 2000, persons skilled in the art consistently employed
`
`this definition. Id. Consistent with the above, the term "neighbor" should be
`
`construed to mean "a close, but not necessarily exact, match." Id. at ¶ 50.
`
`The term "sublinear" search appears in independent claims 1, 5 and 33, and
`
`should be construed to mean "a search whose execution time has a sublinear
`
`relationship to database size." Ex. 1004 at ¶ 53. For instance, a linear search of a
`
`200-item database would take twice as long as a linear search of a 100-item
`
`database. Id. By contrast, a sublinear search of a 200-item database would take less
`
`than twice as long as a sublinear search of a 100-item database, perhaps, for
`
`instance, 1.5 times as long. Id. Thus, if search execution time were plotted as a
`
`function of database size, a linear search would yield a diagonal line of constant
`
`slope, while a sublinear search would yield a line with a slope approaching zero. Id.
`
`The specification explains that at least the following algorithms are sublinear: (1) a
`
`search with execution time proportional to the logarithm of the size of the data set
`
`(e.g., execution time proportional to A log (BN), where A and B are constants, and
`
`N is the number of entries in the database) (id. at 8:54-63 (contrasting binary search
`
`with linear search, noting that, "[i]f binary search was possible, then a database
`
`containing N vectors would require at most log(N) comparisons.")); (2) "kd-trees
`
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`6
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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 13 of 69
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`and vantage point trees" (id. at 21:56-60); (3) and "excluded middle vantage point
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`forest" (id. at 21:61-22:7). Ex. 1004 at ¶¶ 53-58. In 2000, persons skilled in the art
`
`consistently employed this definition. Ex. 1004 at ¶ 53.
`
`For all other claim terms, the plain and ordinary meaning should apply.
`
`VI. ANALYSIS OF GROUNDS FOR TRIAL
`
`A. Ground 1: Claims 1, 3-5, 7-9, 11-13, 15-16, 21-25, 29-30, 33, and
`37-38 of the '237 Patent Are Anticipated By Iwamura
`
`1.
`
`Summary of Iwamura
`
`Iwamura was filed on October 29, 1999, and issued as a patent on February
`
`13, 2001. See Ex. 1012. Accordingly, it is prior art under 35 U.S.C. § 102(e).
`
`Iwamura was not before the examiner during prosecution of the '237 patent.
`
`Iwamura discloses a computer system for identifying a melody input by a
`
`user. After a user enters a melody, the system searches a remote music database for
`
`the melody. Ex. 1012 at 1:53-56. The database then performs an action, such as
`
`sending a HTML webpage with search results back to the user. Id.at 1:64-2:1.
`
`2.
`
`Iwamura Discloses Every Element of Claims 1, 3-5, 7-9, 11-
`13, 15-16, 21-25, 29-30, 33, and 37-38
`
`All elements of all independent claims of the '237 patent are disclosed by
`
`Iwamura. Ex. 1004 at ¶¶ 67-74. First, all independent claims in the '237 patent
`
`require the receiving or obtaining of "features . . . extracted from a media work."
`
`Ex. 1001 at Claims 1, 5, 9, 13, 25, 33. Iwamura discloses the electronic extraction
`
`of features from an electronic work. In one embodiment, a microphone can be used
`
`
`
`7
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 14 of 69
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`to receive a melody input. "The microphone receives the user's voice . . . and
`
`converts it to an electronic signal" which is "analog-to-digital converted" and then
`
`"analyzed in a CPU by a FFT (Fast Fourier Transform) algorithm according to well
`
`known techniques in which FFT is used to analyze sound by obtaining frequency
`
`spectrum information from waveform data." Ex. 1012 at 4:4-12. Iwamura also
`
`discloses the extraction of "peak notes" (notes that are "higher than or equal to each
`
`of the adjacent notes"), and "dip notes" (opposite of "peak notes") from the
`
`electronic work. Id. at 6:59-61, Fig. 7. In another embodiment, Iwamura discloses
`
`the extraction of "the differential between notes" from the electronic work. Id. at
`
`8:34-35, Fig. 12, 12:24-28 ("converting the received information to a series of
`
`values . . . " and then "calculating relative pitch values from said series of values.").
`
`Second, all independent claims in the '237 patent require "determining . . . an
`
`identification of the media work using the . . . features . . . to perform" a "search
`
`of . . . media works" Ex. 1001 at Claims 1, 5, 9, 13, 25, 33. In Iwamura, the "search
`
`engine will find the closest melody from the database." Ex. 1012 at 9:24-25. For
`
`example, Iwamura instructs how to perform a search "using a peak or differential
`
`matching algorithm." Id. at 12:1-2. Iwamura also reveals that many other different
`
`"search algorithms may be applied to perform melody searches," such as the Boyer-
`
`Moore algorithm. Id. at 10:2-3, 12:63-64.
`
`Third, the independent claims in the '237 patent require "transmitting . . .
`
`
`
`8
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 15 of 69
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`information about the identified media work to the client device" (Ex. 1001 at
`
`Claims 1, 5, 9, 13) or "determining . . . an action based on the determined
`
`identification of the media work" (Ex. 1001 at Claims 25, 33). In regards to
`
`transmitting information, Iwamura discloses that "[t]he client PC receives and
`
`displays the search results on the monitor . . ." See Ex. 1012 at Abstract. "The
`
`search result can be linked to on-line music shop,"( id. at 12:12-14), "enabling the
`
`user to make an on-line purchase of the selected musical piece," (id. at 13:38-40,
`
`14:62-64). Iwamura also teaches that the server can "send[] the MIDI file to the
`
`client PC and the client PC play it." Id. at 7:62-65. In regards to determining an
`
`action, Iwamura discloses that, based on the identification of the electronic work,
`
`the search results can link to the electronic work's sound file (id. at 12:10-11), or
`
`the search results can link to an on-line music shop (id. at 12:12-14). Additionally,
`
`if the search result is not a "good match," the invention can determine that the input
`
`melody should be "automatically modified with a wildcard and further search starts
`
`with the modified melody." Id. at 11:45-48.
`
`Claim 25 of the '237 patent further requires that the search is
`
`"nonexhaustive." Ex. 1001 at Claim 25. Iwamura further teaches how this search
`
`can be non-exhaustive. For example, Iwamura teaches a non-exhaustive search that
`
`uses "peak notes." Ex. 1012 at 6:31-7:55. "Peak notes are approximately 20% of
`
`the total number of notes in a typical melody. That means search speed using peak
`
`
`
`9
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 16 of 69
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`notes is 20% of a brute force search . . . ." Id. at 9:8-11. In another example of non-
`
`exhaustive search, Iwamura teaches decreasing search time by stopping the search
`
`when computations "exceed[] a certain limit." Ex. 1012 at 7:56-57. In yet another
`
`example of non-exhaustive search, Iwamura discloses skipping "portions that
`
`should not be searched" (id. at 12:6-7), such as "repeated patterns" (id. at 9:36-44)
`
`and "unimportant portion[s]" of the melody (id. at 9:44-45).
`
`As demonstrated above and in the below chart, claims 1, 3-5, 7-9, 11-13, 15-
`
`16, 21-25, 29-30, 33, and 37-38 are anticipated by Iwamura. Ex. 1004 at ¶ 75.
`
`'237 Patent
`
`Iwamura (Ex. 1012)
`
`1. A computer-implemented method
`comprising:
`
`Non-limiting preamble.
`
`a) receiving, by a computer system
`including at least one computer,
`features that were extracted from a
`media work by a client device;
`
`Iwamura discloses "receiving a search
`request [by] a database server" (Abstract,
`1:64-66) wherein the search request
`comprises features that were extracted from
`a media work "by a FFT (Fast Fourier
`Transform) algorithm according to well
`known techniques in which FFT is used to
`analyze sound by obtaining frequency
`spectrum information from waveform data"
`(4:4-12) or by using "peak notes" and "dip
`notes" (6:59-61, Fig.7), "the differential
`between notes" (8:34-35, Fig. 12); or
`"converting the received information to a
`series of values . . . " and then "calculating
`relative pitch values from said series of
`values" (12:19-33, 13:41-56).
`
`b) determining, by the computer
`system, an identification of the
`media work using the received
`
`Iwamura determines an identification of the
`media work using the extracted features by
`"find[ing] the closest melody from the
`
`
`
`10
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`Iwamura (Ex. 1012)
`
`features extracted from the media
`work to perform a sub-linear time
`search of extracted features of
`identified media works to identify a
`neighbor; and
`
`database," which is a neighbor. 9:25-38,
`12:1-2. Iwamura discloses searching using
`the "Boyer-Moore algorithm" (9:63-64,
`10:1-3), which is sublinear (Ex. 1017 at 1).
`Ex. 1004 at ¶ 72.
`
`c) transmitting, by the computer
`system, information about the
`identified media work to the client
`device.
`
`3. The computer-implemented
`method of claim 1 wherein the
`information about the identified
`media work transmitted to the client
`device includes at least one of (A) a
`title, or (B) an author.
`
`4. The computer-implemented
`method of claim 1 further
`comprising performing an action
`including at least one of promoting
`commerce or enhancing interest in
`the work.
`
`5. Apparatus comprising:
`
`a) at least one processor; and
`
`b) at least one storage device storing
`processor-executable instructions
`which, when executed by the at least
`one processor, perform a method of
`1) receiving features that were
`extracted from a media work by a
`client device,
`
`Iwamura transmits information about the
`media work to the client PC, such as
`"search results" (12:10-14), information
`regarding "on-line purchase of the selected
`musical piece" (13:38-40, 14:62-64); and a
`"MIDI file" of the song (7:62-65).
`
`Iwamura transmits information about the
`media work to the client PC, such as
`"search results" (12:10-14), information
`regarding "on-line purchase of the selected
`musical piece" (13:38-40, 14:62-64); and a
`"MIDI file" of the song (7:62-65), which
`contain at least a title.
`
`Iwamura performs the actions of displaying
`"search results" (12:10-14) and playing a
`"MIDI file" of the song (7:62-65), which
`enhance interest in the work. Iwamura
`promotes e-commerce by facilitiating "on-
`line purchase of the selected musical
`piece." 13:38-40, 14:62-64.
`
`Non-limiting preamble.
`
`Iwamura discloses a "database server i.e., a
`remote computer," including a processor.
`1:64-66.
`
`Iwamura discloses a "database server i.e., a
`remote computer," including a storage
`device storing instructions. 1:64-66.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1a.
`
`
`
`11
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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 18 of 69
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`'237 Patent
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`Iwamura (Ex. 1012)
`
`2) determining, by the computer
`system, an identification of the
`media work using the features
`extracted from the media work to
`perform a sub-linear time search of
`extracted features of identified
`media works to identify a neighbor,
`and
`3) transmitting information about
`the identified media work to the
`client device.
`7. The apparatus of claim 5 wherein
`the information about the identified
`media work transmitted to the client
`device includes at least one of (A) a
`title, or (B) an author.
`8. The apparatus of claim 5 wherein
`the method further includes
`performing an action including at
`least one of promoting commerce or
`enhancing interest in the work.
`9. A computer-implemented method
`comprising:
`a) receiving, by a computer system
`including at least one computer,
`features that were extracted from
`media work by a client device;
`
`b) determining, by the computer
`system, an identification of the
`media work using the received
`features extracted from the media
`work to perform an approximate
`nearest neighbor search of extracted
`features of identified media works,
`and
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1b.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1c.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 3.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 4.
`
`Non-limiting preamble.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1a
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1b.
`Furthermore, Iwamura uses an approximate
`nearest neighbor "search engine [that] has .
`. . input fault tolerance capability" (10:17-
`18), and skips "portions that should not be
`searched" (12:6-7), such as "repeated
`patterns" (9:36-44), and "unimportant
`portion[s]" of the melody (9:44-45).
`
`c) transmitting, by the computer
`system, information about the
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1c
`
`
`
`12
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`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 19 of 69
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`'237 Patent
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`Iwamura (Ex. 1012)
`
`identified media work to the client
`device.
`11. The method of claim 9 wherein
`the information about the identified
`media work transmitted to the client
`device includes at least one of (A) a
`title, or (B) an author.
`12. The method of claim 9 further
`comprising performing an action
`including at least one of promoting
`commerce or enhancing interest in
`the work.
`13. Apparatus comprising:
`
`a) at least one processor; and
`
`b) at least one storage device storing
`processor-executable instructions
`which, when executed by the at least
`one processor, perform a method of
`1) receiving features that were
`extracted from a media work by a
`client device,
`2) determining, by the computer
`system, an identification of the
`media work using the received
`features extracted from the media
`work to perform an approximate
`nearest neighbor search of extracted
`features of identified media works,
`and
`3) transmitting information about
`the identified media work to the
`client device.
`15. The apparatus of claim 13
`wherein information about the
`identified media work transmitted to
`the client device includes at least
`one of (A) a title, or (B) an author.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 3.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 4.
`
`Non-limiting preamble.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 5a.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 5b.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1a.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 9b.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 1c.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 3.
`
`
`
`13
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`

`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 20 of 69
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`Iwamura (Ex. 1012)
`
`16. The apparatus of claim 13
`wherein the method further includes
`performing an action including at
`least one of promoting commerce or
`enhancing interest in the work.
`21. The computer-implemented
`method of claim 1 wherein at least
`one of the acts of receiving or
`transmitting is performed via a
`direct communication between the
`client device and the computer
`system.
`22. The computer-implemented
`method of claim 1 wherein at least
`one of the acts of receiving or
`transmitting is performed via an
`indirect communication between the
`client device and the computer
`system.
`23. The computer-implemented
`method of claim 9 wherein at least
`one of the acts of receiving or
`transmitting is performed via a
`direct communication between the
`client device and the computer
`system.
`24. The computer-implemented
`method of claim 9 wherein at least
`one of the acts of receiving or
`transmitting is performed via an
`indirect communication between the
`client device and the computer
`system.
`25. A computer-implemented
`method comprising:
`a) obtaining, by a computer system
`including at least one computer,
`media work extracted features that
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 4.
`
`Iwamura discloses the use of "Internet or
`other network connection," both of which
`encompass, for example, direct
`communication between adjacent network
`nodes. 1:64.
`
`Iwamura discloses the use of "Internet or
`other network connection," both of which
`encompass, for example, indirect
`communication between non-adjacent
`network nodes. 1:64.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 21.
`
`Petitioner incorporates the above
`discussion of Iwamura regarding Claim 22.
`
`Non-limiting preamble.
`
`A "web server," which is a computer
`system, obtains "melody data" from a
`"client computer." 4:35-36, 12:19-33,
`
`
`
`14
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`

`Case 1:14-cv-02396-PGG-SN Document 234-12 Filed 11/11/20 Page 21 of 69
`
`'237 Patent
`
`Iwamura (Ex. 1012)
`
`were extracted from a media work,
`the media work uploaded from a
`client device;
`
`b) determining, by the computer
`system, an identification of the
`media work using the media work
`extracted features to perform a
`nonexhaustive search of reference
`extracted features of reference
`media works to identify a near
`neighbor; and
`
`c) determining, by the computer
`system, an action based on the
`determined identification of the
`media work.
`
`29. The method of claim 25,
`wherein the action comprises
`providing a link to a Web site.
`
`13:41-56. This melody data