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` Paper 30
`Trials@uspto.gov
`571-272-7822
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` Entered: June 20, 2016
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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 IPR2015-00345
`Patent 8,205,237 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`INTRODUCTION
`I.
`Google Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–27, 29, 30, 32–35, 37, 38, and 40 of U.S.
`Patent No. 8,205,237 B2 (Ex. 1001, “the ’237 Patent”). Network-1
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`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 5 (“Prelim. Resp.”). We instituted the instant trial on June
`23, 2015, with respect to claims 1–16, 21–27, 29, 30, 33–35, 37, and 38,
`pursuant to 35 U.S.C. § 314. Paper 6 (“Dec.”).
`Subsequently, Patent Owner filed a Response (Paper 17, “PO Resp.”),
`and Petitioner filed a Reply (Paper 20, “Reply”). Further to authorization
`provided in a conference call, Patent Owner filed a paper identifying
`allegedly improper arguments in the Reply (Paper 24), and Petitioner filed a
`response thereto (Paper 25). Oral hearing1 was held on March 9, 2016, and
`a transcript of the hearing was entered into the record. Paper 29 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons set forth below, we determine that Petitioner has shown, by a
`preponderance of the evidence, that claims 9–16, 23, and 24 of the ’237
`Patent are unpatentable, but has not shown that claims 1–8, 21, 22, 25–27,
`29, 30, 33–35, 37, and 38 of the ’237 Patent are unpatentable.
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`A. Related District Court Proceedings
`The parties inform us that the ’237 Patent is the subject of the
`following lawsuit: Network-1 Technologies, Inc. v. Google Inc. and
`YouTube, LLC, Case No. 1:14-cv-02396 (S.D.N.Y.). Pet. 1. YouTube, LLC
`is a subsidiary of Petitioner, and is acknowledged as a real party-in-interest.
`Id. In addition, three additional patents, U.S. Patent Nos. 8,640,179,
`8,010,988, and 8,656,441, all issuing from applications related to the ’237
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`1 The hearings for this review and IPR2015-00343, IPR2015-00347, and
`IPR2015-00348 were consolidated.
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`Patent, are subject to inter partes reviews, namely IPR2015-00343,
`IPR2015-00347, and IPR2015-00348, respectively.
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`B. The ’237 Patent
`
`The ’237 Patent relates to identifying a work, such as a digital audio
`or video file, without the need to modify the work. Ex. 1001, 1:31–36,
`4:25–31. This identification can be accomplished through the extraction of
`features from the work, and comparison of those extracted features with
`records of a database or library. Id. at Abstract. Thereafter, an action may
`be determined based on the identification determined. Id. at 4:24–25.
`Figure 1, reproduced below, illustrates the steps of the claimed computer-
`implemented methods:
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`Fig. 1 of the ’237 Patent illustrating the claimed method
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`C. Illustrative Claims
`Claim 1 is independent, along with claims 5, 9, 13, 25, and 33.
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`Claims 1, 9, and 25 are considered representative of the claims challenged,
`and are reproduced below:
`1. A computer-implemented method comprising:
`a) receiving, by a computer system including at least one
`computer, features that were extracted from a 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 a sub-linear time search of extracted
`features of identified media works to identify a neighbor; and
`c) transmitting, by the computer system, information about the
`identified media work to the client device.
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`9. A computer-implemented method comprising:
`a) receiving, by a computer system including at least one
`computer, features what 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
`c) transmitting, by the computer system, information about the
`identified media work to the client device.
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`25. A computer-implemented method comprising:
`a) obtaining, by a computer system including at least one
`computer, media work extracted features that were extracted
`from a media work, the media work uploaded from a client
`device;
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`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.
`Ex. 1001, 25:2–13, 25:62–26:5, 27:11–22 (emphases added).
`D. Prior Art Relied Upon
`Based on the instituted grounds, Petitioner relies upon the following
`prior art references:
`Reference or Declaration
`U.S. Patent No. 7,444,353 (“Chen”)
`U.S. Patent No. 5,874,686 (“Ghias”)
`U.S. Patent No. 6,188,010 ("Iwamura")
`
`Exhibit No.
`Ex. 1008
`Ex. 1010
`Ex. 1012
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`E. Grounds of Unpatentability
`We instituted the instant trial based on the following grounds of
`unpatentability (Dec. 21–22):
`Claims Challenged
`1, 3–5, 7–9, 11–13, 15, 16, 21–25, 29,
`30, 33, 37, and 38
`1–3, 5–7, 9–11, 13–15, and 21–24
`26, 27, 34, and 35
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`§ 102(b) Ghias
`§ 103
`Iwamura and Chen
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`Basis Reference(s)
`§ 102(e)
`Iwamura
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`II. ANALYSIS
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`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, No. 15–446, slip op. at 13 (U.S. June 20, 2016).
`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).
`In our Institution Decision, we construed the following claim terms
`specifically:
`Construction
`Claim Term(s)
`“a search that locates a match without a comparison
`“non-exhaustive
`of all possible matches”
`search”
`“sub-linear search” “a search whose execution time scales with a less
`than linear relationship to the size of the data set to
`be searched”
`“identifying a close, but not necessarily exact or
`closest, match”
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`“identifying a closest, but not necessarily exact
`match”
`“identifying a close match that is not necessarily the
`closest match”
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`“neighbor search,”
`“near neighbor
`search”
`“nearest neighbor
`search”
`“approximate
`nearest neighbor
`search”
`Dec. 5–9.
`Petitioner and Patent Owner agree largely with the adopted
`constructions. PO Resp. 2–11; Reply 2–6. Below, we discuss the points
`raised by the parties with respect to portions of those constructions and how
`those portions should be interpreted.
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`“sub-linear search”
`i)
`With respect to the construction of “sub-linear search,” or “sublinear
`search,” Patent Owner argues that there are two possible interpretations of
`that construction, with the “size of the data set” being the records in the data
`set being searched, or the length of an individual record in the database. PO
`Resp. 2. Patent Owner argues that the evidence of the Specification of the
`’237 Patent and the testimony of the declarants point to the size of the data
`set being the number of records being searched. Id. at 3–6. Petitioner
`responds that “size of the data set,” according to its plain meaning, would be
`“the amount of disk space a data set occupies.” Reply 2. Petitioner argues
`that the Specification of the ’237 Patent supports this interpretation. Id. at 2-
`4 (citing Ex. 1001, 21:14–26; Ex. 1020, 104:13–105:8). We agree with
`Patent Owner with respect to this claim construction.
`Although the sections of the Specification of the ’237 Patent cited by
`Petitioner relate to disk size, that size is a direct result of the number of
`records in the data set. Claim 1, for example, recites “using the received
`features extracted from the media work to perform a sub-linear time search
`of extracted features of identified media works.” For that claim, under our
`adopted claim construction, the size of the data set would be the number of
`extracted features of the identified media works. It would not be logical to
`assume that the size of the data set would be the length of an individual
`record or the amount of disk space the data set occupies when the number of
`extracted features would be readily available. Although disk space could be
`used as a measure, it would be variable with respect to the format of the disk
`space, for example. Therefore, we are not persuaded that disk space should
`be used as a determinant of data set size in the construction of “sub-linear
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`search.” As such, the data set would be the number of extracted features, in
`claim 1, irrespective of the exact number of commercials or frames.
`“non-exhaustive search”
`ii)
`With respect to the claim term “non-exhaustive search,” Patent Owner
`emphasizes that a non-exhaustive search makes a comparison without all
`possible matches but does not concern itself with whether all data within all
`possible matches have been compared. PO Resp. 6–7. Petitioner does not
`dispute the construction, and we remain persuaded that a “non-exhaustive”
`search need not consider all data within all possible matches, but rather
`should be exhaustive or non-exhaustive with respect to the number of
`records in a database. See Dec. 5–7.
`“neighbor / near neighbor search”
`iii)
`Patent Owner also contends that if a search necessarily identifies an
`exact or the closest match, it is not a neighbor or near neighbor search
`because it is not a search that identifies a close, but not necessarily exact or
`closest, match. PO Resp. 7–8. We disagree with Patent Owner that a
`neighbor search could not identify an exact or the closest match and still be a
`neighbor search. Patent Owner, in its Response, appears to take an
`“exclusive” view of the construction, arguing that if an exact or closest
`match happens to be obtained in a neighbor or near neighbor search, that
`search could not be a neighbor or near neighbor search. As discussed at Oral
`Hearing, Patent Owner agrees that if a neighbor search does produce an
`exact match, that effect does not necessarily negate the type of search
`performed. Tr. 57–60 (“MR. DOVEL: If you're doing a neighbor search,
`one that it's looking and it happens to pull up an exact match, that would still
`be a neighbor search”).
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`“approximate nearest neighbor search”
`iv)
`With respect to the claim limitation “approximate nearest neighbor
`search,” Patent Owner argues that our construction is incomplete because the
`Specification of the ’237 Patent requires such a search to be sub-linear and a
`search that does not always find the closest match. PO Resp. 8–11. Patent
`Owner cites a section of the Specification reciting that “[o]ne example of a
`sub-linear time search is an approximate nearest neighbor search . . . [which]
`does not always find the closest point to the query,” such that if the closest
`match is guaranteed, the search is not an approximate nearest neighbor
`search. Id. at 8–9 (citing Ex. 1001, 9:12–19). Patent Owner also alleges that
`we applied “faulty logic” in excluding any non-linear aspect from the claim
`construction of “approximate nearest neighbor search.” Id. at 10.
`Petitioner responds that the statements in the Specification do not rise
`to the level of lexicography or disavowal. Reply 4–5 (citing Facebook, Inc.
`v. Pragmatus AV, LLC, 582 F. App'x 864, 868 (Fed. Cir. 2014); Renishaw
`PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998)).
`We agree, given that the cited portion provides that an approximate nearest
`neighbor search may be an example of a sublinear search, but not that all
`approximate nearest neighbor searches must be sub-linear. Additionally,
`Patent Owner has not provided persuasive evidence that all approximate
`nearest neighbor searches must be sub-linear, other than the citation to the
`Specification. As well, similar to our discussion of neighbor searches above,
`we are not persuaded that if an approximate nearest neighbor search happens
`to arrive at an exact match, that would negate the nature of the search. We
`are persuaded that an approximate nearest neighbor search would depend on
`the search methodology and not on the specific results obtained.
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`Additionally, as Petitioner points out, the instant claims confirm that
`sublinearity is not necessarily required for an approximate nearest neighbor
`search. Reply 5–6. Claim 33 recites, in part, a “sublinear approximate
`nearest neighbor search,” whereas claims 9 and 12 simply recite an
`“approximate nearest neighbor search,” without the sublinear modifier.
`Interpreting all recitations of approximate nearest neighbor searches as
`intrinsically sublinear would render the limitation in claim 33 superfluous.
`Id. (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005);
`Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270,
`1274–75 (Fed. Cir. 2012)). For this additional reason, we remain persuaded
`that an approximate nearest neighbor search corresponds to “identifying a
`close match that is not necessarily the closest match,” without a requirement
`of being sublinear.
`Upon review of the parties’ contentions and the Specification, as well
`as this entire record, we also discern no reason to modify our claim
`constructions at this juncture, other than the clarifications we have provided
`above.
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`B. Principles of Law
`To prevail in its challenges to the patentability of the claims,
`Petitioner must prove unpatentability by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under
`35 U.S.C. § 102 if a single prior art reference expressly or inherently
`describes each and every limitation set forth in the claim. See Perricone v.
`Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal
`Bros., Inc. v. Union Oil Co. of Cal, 814 F.2d 628, 631 (Fed. Cir. 1987).
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`Additionally, a patent claim is unpatentable under 35 U.S.C. § 103(a)
`if the differences between the claimed subject matter and the prior art are
`such that the subject matter, as a whole, would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic,
`504 F.3d at 1259. We analyze the asserted grounds of unpatentability in
`accordance with the above-stated principles.
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`C. Anticipation by Iwamura - Claims 1, 3–5, 7–9, 11–13, 15, 16, 21–25,
`29, 30, 33, 37, and 38
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`Petitioner argues that claims 1, 3–5, 7–9, 11–13, 15, 16, 21–25, 29,
`30, 33, 37, and 38 are anticipated by Iwamura. Pet. 7–16. Patent Owner
`disputes this anticipation, arguing that Iwamura does not conduct a sub-
`linear time search, an approximate nearest neighbor search or a non-
`exhaustive search, per the independent claims. PO Resp. 11–41. Petitioner
`counters these arguments. Reply 6–20. As discussed below, we determine
`that Petitioner has not shown, by a preponderance of the evidence, that
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`claims 1, 3–5, 7, 8, 21, 22, 25, 29, 30, 33, 37, and 38 of the ’237 Patent are
`anticipated by Iwamura. In contrast, we determine that Petitioner has
`shown, by a preponderance of the evidence, that claims 9, 11–13, 15, 16, 23,
`and 24 of the ’237 Patent are anticipated by Iwamura.
`Petitioner’s assertions with respect to Iwamura
`i)
`Iwamura discloses a system for identifying a melody input by a user,
`whereby the system searches a remote music database for the melody. Ex.
`1012, Abstract. After the search, the database server sends back the results
`in the form of a web page. Id. Iwamura discloses the extraction of features
`from an electronic work, with the melody input through a microphone,
`converted into an electronic signal, and analyzed by a Fast Fourier
`Transform (“FFT”) to obtain frequency spectrum information from the
`waveform data. Id. at 4:4–14. The extracted features are used to search the
`remote music database “using a peak or differential matching algorithm” (id.
`at 12:1–2), although other matching algorithms may be applied, including a
`Boyer-Moore algorithm. Id. at 9:57–10:3. The web page that the database
`server sends back can include a link to an on-line music shop, which can
`enable a user to make a purchase, or can include a sound file to be played by
`the PC client. Id. at 12:9–13.
`In addition, Iwamura discloses that “[t]o accelerate the search,
`computation of the total absolute difference can be stopped when it exceeds
`a certain limit.” Id. at 7:56–57. Petitioner identifies this as an example of
`Iwamura’s non-exhaustive searching, in that not all records in the remote
`music database are necessarily searched. Pet. 10. Also, Iwamura provides
`for input fault tolerance so that the “search engine will find the closest
`melody from the database” (Ex. 1012, 9:24–25), where no initial exact result
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`is obtained, which Petitioner argues is equivalent to the claimed
`“identify[ing] a neighbor,” “identify[ing] a near neighbor,” and “to perform
`an approximate nearest neighbor search.” Pet. 10–16.
`Claims 1, 3–5, 7, 8, 21, 22, 33, 37, and 38
`ii)
`Independent claims 1, 5, and 33 all recite, in part, the identification of
`the media work through the use of a sub-linear or sublinear search. Patent
`Owner argues that Iwamura does not teach an algorithm that “scales with a
`less than linear relationship to the size of the data set to be searched” where
`the data set is either the number of records in the database or “even the
`length of an individual record.” PO Resp. 11. Patent Owner points out that
`the Petition relies solely on the disclosure of the “Boyer-Moore algorithm”
`in Iwamura, which is not sub-linear based on the claim construction adopted
`above. Id. at 12 (citing Ex. 2005 ¶¶ 113–118).
`Additionally, Patent Owner argues that Petitioner’s declarant, Dr.
`Moulin, has acknowledged that sublinear is not “in relation with the size of
`the query,” but rather in relationship to database size, and that the Boyer-
`Moore algorithm is linear, as opposed to sublinear. Id. at 12–14 (citing
`Ex. 2006, 24:1–12, 25:4–12, 26:11–21, 28:4–16, 44:20–46:6, 59:6–9, 61:18–
`62:9, 68:25–69:4, 77:14–24). Further, Dr. Moulin acknowledged that his
`representation in his Declaration was wrong. Id. at 14–16 (citing Ex. 1004
`¶ 72; Ex. 2006, 67:17–21, 74:20–24, 79:9–18).
`In response, Petitioner argues that Iwamura discloses a sublinear
`search because “Iwamura's search speed scales at a less than linear
`relationship to disk space when higher resolution works are added to a
`reference database of lower resolution works.” Reply 16. This
`interpretation is based on Petitioner’s view of the claim construction of “sub-
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`linear,” which we do not find to be persuasive and we have not adopted. See
`Section II.A.i. Even assuming that songs in Imamura would occupy
`different amounts of disk space, but the same number of notes, we are
`persuaded that the number of records, i.e., melodies, would remain the same
`and each would be compared in the search process in Imamura. See Ex.
`1012, 7:53–55; Ex. 2005 ¶110. As such, we are not persuaded that Iwamura
`discloses a sublinear search process; Iwamura, therefore, cannot anticipate
`claims 1, 5, and 33, which recite such a search aspect.
`Based on the analysis of independent claims 1, 5, and 33, we are also
`persuaded that Iwamura fails to anticipate claims 3, 4, 7, 8, 21, 22, 37, and
`38, by virtue of their dependence on claims 1, 5, and 33.
`iii) Claims 9–11, 13–15, 23 and 24
`Based on Petitioner’s assertions with respect to Iwamura, discussed
`above, we are persuaded that Petitioner has demonstrated that independent
`claims 9 and 13 are anticipated by Iwamura. Iwamura discloses that
`received features, extracted from a media work, are identified through an
`approximate nearest neighbor search of extracted features of identified
`media works, with information about the identified media work transmitted
`back. We discuss Patent Owner’s arguments against anticipation below.
`Independent claims 9 and 13 both recite, in part, the identification of
`the media work through the use of an approximate nearest neighbor search
`of extracted features of identified media works. Patent Owner argues that
`Iwamura does not disclose an approximate nearest neighbor search because
`Iwamura does not disclose “identifying a close match that is not necessarily
`the closest match.” PO Resp. 19. Patent Owner asserts that because
`Iwamura discloses a search that always identifies an exact or closest match,
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`it cannot disclose an approximate nearest neighbor search. Id. Additionally,
`Patent Owner argues that the Petition fails to explain why the fault tolerance
`capability and skipped portion are relevant to or disclose an approximate
`nearest neighbor search, or how they enable a search to return a result other
`than the closest match. Id. at 19–23. We do not agree.
`As Petitioner demonstrates, the search in Iwamura through “peak
`notes” does not necessarily consider the closest match, or identify it. Pet. 8,
`10, 15; Reply 13–14; Ex. 1012, 7: 37–39, 52–55, 9:36–52, 12:6–9; Ex. 2005
`¶¶ 162–63. As such, if the closest matching melody segment does not occur
`at a peak alignment, Iwamura will not consider or locate that segment.
`Therefore, Iwamura will not always locate the closest matching melody
`segment, and discloses an approximate nearest neighbor search.
`Patent Owner also argues that an approximate nearest neighbor search
`is a sub-linear search, and that “there is no evidence that the referenced
`‘fault tolerance capability of Iwamura’ teaches a sublinear search.” PO
`Resp. 25 (Citing Ex. 2005 ¶ 157), id. at 20–23. Given the discussion above
`that we are not persuaded that an approximate nearest neighbor search must
`be a sub-linear search, we likewise do not find this argument to be
`persuasive.
`With respect to dependent claims 11, 12, 15, 16, 23, and 24, we are
`persuaded that Petitioner has demonstrated that Iwamura teaches the
`elements of those dependent claims, as set forth in the Petition. See Pet. 11,
`13–14.
`iv) Claims 25, 29, and 30
`Independent claim 25 recites, in part, the identification of the media
`work through the use of a nonexhaustive search. Patent Owner argues that
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`Iwamura fails to disclose a nonexhaustive search. PO Resp. 25–38. Patent
`Owner asserts that Iwamura’s peak search algorithm is designed to be more
`efficient than alternative approaches, such as one in which the entered
`melody is shifted “note by note” relative to a single reference melody. Id. at
`25–26 (citing Ex. 1012, 12:1–2; Ex. 2005 ¶¶ 159–166; see also ¶ 312).
`According to Patent Owner, Iwamura’s peak note search does not reduce the
`number of reference melodies (i.e., records in the database) to be searched,
`but instead speeds up the individual comparison of the work to be identified
`with each record, by shifting the melody to align peak notes rather than
`shifting note by note. Id. (citing Ex. 2005 ¶ 163). Each record in the
`database is searched, and the reference melody that gives the least total
`absolute difference when compared with the entered melody is returned as a
`search result. Id. at 26 (citing Ex. 1012, 7:53–55; Ex. 2005 ¶ 163).
`Accordingly, Patent Owner continues, Iwamura discloses an exhaustive
`search because it searches all records in the database. Id. (citing Ex. 2005
`¶ 164).
`Patent Owner cites testimony from Petitioner’s declarant, Dr. Moulin,
`in which he agrees that Iwamura’s system compares a work to be identified
`with each reference work in the database. PO Resp. 26–28 (citing Ex. 2006,
`207:18–23, 223:2–8, 247:18–20, 269:19–270:2, 271:19–21); see also
`Tr. 17:17 (Petitioner conceding at oral hearing that “every song is looked
`at”). Dr. Moulin also acknowledges that if a non-exhaustive search is one
`that does not look at each of the melodies in the database, Iwamura discloses
`an exhaustive search rather than a non-exhaustive search. Ex. 2006, 233:24–
`234:14; see PO Resp. 27.
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`Despite Dr. Moulin’s testimony and Iwamura’s description of a search
`that compares an input melody to each melody in the database, Petitioner
`contends that Iwamura discloses a non-exhaustive search. First, Petitioner
`submits that Iwamura specifically identifies its peak note search as a non-
`exhaustive search because the “search speed using peak notes is 20% of a
`brute force search.” Pet. 9–10 (quoting Ex. 1012, 9:8–11); Reply 7–8 (citing
`Ex. 1012, 9:7–11; Ex. 2005 ¶ 82; Ex. 2001). We agree with Patent Owner,
`however, that Iwamura’s peak note search accelerates a search within a
`single comparison between a work to be identified and an individual record
`in the database, while still comparing the work to each record in the
`database. See PO Resp. 29–30. In other words, the peak search technique
`may improve the efficiency of an individual comparison between an entered
`melody and a reference melody in the database, but it is still an exhaustive
`search because it compares the entered melody with each musical work in
`the database, as confirmed by Petitioner’s declarant, Dr. Moulin. Id. (citing
`Ex. 2006, 269:19–270:2).
`Petitioner further argues that Iwamura discloses a non-exhaustive
`search because the search can be accelerated by stopping the search when
`computations “exceed[] a certain limit.” Pet. 10 (quoting Ex. 1012, 7:56–
`57). We agree with Patent Owner that this disclosure also refers to
`improving the speed of a comparison between the work to be identified and
`a single record in the reference database. See PO Resp. 32 (citing Ex. 2005
`¶ 179). As Dr. Karypis explains and Dr. Moulin confirms, when the total
`absolute difference computed between the entered melody and a particular
`reference melody exceeds a certain limit, the computation stops, and the
`search shifts to the next peak range comparison within the same record.
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`Id. at 32–35 (citing Ex. 2005 ¶¶ 180–81; Ex. 2006, 241:24–242:2). Thus,
`Iwamura’s computation “limit” does not describe a non-exhaustive search
`because Iwamura still compares a work to be identified with each reference
`melody in the database.
`In addition, Petitioner argues that Iwamura discloses non-exhaustive
`searching because its search skips “portions that should not be searched,”
`such as “repeated patterns” and “unimportant portion[s].” Pet. 10 (quoting
`Ex. 1012, 12:6–7, 9:36–45); Reply 13. Again, we agree with Patent Owner
`that the cited passages refer to techniques for accelerating a search between
`a work to be identified and a record in the database. PO Resp. 35 (citing
`Ex. 2005 ¶ 185). As confirmed by Dr. Moulin, the search still compares the
`work with each musical work in the reference database. Id. at 35–36 (citing
`Ex. 2006, 267:13–24, 317:2–12); see also Ex. 2005 ¶ 187.
`Finally, Petitioner contends that Iwamura does not consider all
`“possible matches”—and therefore does not disclose a “non-exhaustive
`search”—because the possible matches in Iwamura are melody segments
`rather than full songs, and Iwamura does not consider all melody segments.
`Reply 12–13. We are not persuaded by this argument. Iwamura explicitly
`states that its search returns a reference melody as a search result. Ex. 1012,
`7:54–55; see also id. at 1:53–56 (“The invented music search allows a user
`to search a database and thereby obtain the title of the work only with its
`melody as input to a search engine . . . .”). Furthermore, Petitioner’s
`declarant, Dr. Moulin, testifies that the possible matches in Iwamura’s
`search are the reference melodies in the database. Ex. 2006, 206:12–15,
`217:15–18, 247:18–20. Although Petitioner cites deposition testimony of
`Patent Owner’s declarant, Dr. Karypis, in which he refers to individual
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`comparisons of an entered melody segment to segments in a reference
`melody as “matches,” Reply 12–13 (citing Ex. 1020, 134:5–135:10), he does
`not describe the melody segments in the database as “possible matches.”
`See Tr. 31:19–32:2. For these reasons, we are not persuaded that the
`possible matches for purposes of determining whether Iwamura’s search is
`non-exhaustive are melody segments. As discussed, because Iwamura’s
`search compares a work with every record in th
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