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`Trials@uspto.gov Paper 6
`571-272-7822 Entered: June 23, 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 IPR2015-00347
`Patent 8,010,988 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`Petitioner, Google Inc., filed a Petition for inter partes review of
`claims 1–3, 7–17, 21–34, 37, 38, 40–43, 46, 47, and 49–52 of U.S. Patent
`No. 8,010,988 B2 (Ex. 1001, “the ’988 patent”). Paper 2 (“Pet.”). Patent
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`Owner, Network-1 Technologies, Inc., filed a Preliminary Response.
`Paper 5 (“Prelim. Resp.”). Institution of an inter partes review is authorized
`by statute when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration
`of the Petition and the Preliminary Response, we conclude the information
`presented shows there is a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of claims 15–17, 21–28, 31–33,
`38, 51, and 52 of the ’988 patent.
`
`A. Related Matters
`The parties state that Patent Owner has asserted the ’988 patent
`against Petitioner in Network-1 Technologies, Inc. v. Google Inc. and
`YouTube, LLC, No. 1:14-cv-02396 (S.D.N.Y.) (filed Apr. 4, 2014). Pet. 1;
`Paper 3, 2 (Patent Owner’s Mandatory Notice). Petitioner states that
`YouTube, LLC, is a subsidiary of Petitioner and a real party-in-interest with
`respect to the Petition. Pet. 1. Petitioner has filed petitions for inter partes
`review of three related patents that also are at issue in that district court
`proceeding: IPR2015-00343 (U.S. Patent No. 8,640,179 B1), IPR2015-
`00345 (U.S. Patent No. 8,205,237 B2), and IPR2015-00348 (U.S. Patent No.
`8,656,441 B1). Paper 3, 2–3.
`
`B. The ’988 Patent
`The ’988 patent relates to identifying a work, such as a digital audio
`or video file, without the need to modify the work. Ex. 1001, 1:23–28,
`4:43–49. This identification can be accomplished by extracting features
`from the work and comparing the extracted features with records in a
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`database. Id. at Abstract. Thereafter, an action associated with the work
`may be determined based on the identification of the work. Id. at 4:42–44.
`Patent Owner refers to Figure 1 as illustrating the steps of the claimed
`method (Prelim. Resp. 4):
`
`Figure 1 of the ’988 patent illustrates steps of the claimed
`method.
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`C. Illustrative Claims
`Claims 1 and 15 are the only independent claims in the ’988 patent
`and are illustrative of the subject matter of the challenged claims:
`1. A method for associating an electronic work with an
`action, the electronic work comprising at least one of audio and
`video, the method comprising:
`a) electronically extracting within a portable client device
`features from the electronic work;
`b) transmitting the extracted features from the portable
`client device to one or more servers;
`c) receiving at the portable client device from the one or
`more servers an identification of the electronic work based on
`the extracted features, wherein the identification is based on a
`non-exhaustive search identifying a neighbor;
`d) electronically determining an action based on the
`identification of the electronic work; and
`e) electronically performing the action on the portable
`client device.
`15. A method for associating an electronic work with an
`action, the electronic work comprising at least one of audio and
`video, the method comprising:
`a) electronically extracting features from the electronic
`work;
`b) electronically determining an identification of the
`electronic work based on the extracted features, wherein the
`identification is based on a non-exhaustive search identifying a
`neighbor;
`c) electronically determining an action based on the
`identification of the electronic work; and
`d) electronically performing the action.
`
`Ex. 1001, 25:14–29; 25:65–26:9.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–3, 7–17, 21–34, 37, 38, 40–43, 46,
`47, and 49–52 of the ’988 patent are unpatentable based on the following
`specific grounds (Pet. 8–60):
`
`References
`
`Ghias1
`
`Wood2
`
`Challenged Claims
`Basis
`35 U.S.C. § 102(b) 1–3, 7–9, 13–17, 21–23, 28,
`30, 31, 40, 49, and 51
`35 U.S.C. § 102(e) 1, 2, 7–9, 13–16, 21–23, 27–
`33, 38, 40–42, 47, 49, and 51
`1–3, 7–17, 21–34, 37, 38,
`Levy3 and Arya4
`35 U.S.C. § 103(a)
`40–43, 46, 47, and 49–52
`Iggulden5 and Böhm 6 35 U.S.C. § 103(a) 15–17, 21, 22, 24, 25, 27, 28,
`31, 32, 37, 40, 41, and 46
`35 U.S.C. § 102(e) 1–3, 7, 9, 13–17, 21, 23, 27–
`33, 38, 40–42, 47, 49, and 51
`35 U.S.C. § 103(a) 8, 10–12, 22, 24–26, 50, and
`52
`35 U.S.C. § 103(a) 8, 10–12, 22, 24–26, 50, and
`52
`
`Iwamura7
`
`Ghias
`
`Wood
`
`In its analysis, Petitioner relies on the declaration testimony of Dr. Pierre
`Moulin. See Ex. 1004.
`
`
`1 U.S. Patent No. 5,874,686, issued Feb. 23, 1999 (Ex. 1010, “Ghias”).
`2 U.S. Patent No. 7,743,092 B2, issued June 22, 2010 (Ex. 1015, “Wood”).
`3 U.S. Patent No. 6,505,160 B1, issued Jan. 7, 2003 (Ex. 1013, “Levy”).
`4 Sunil Arya et al., An Optimal Algorithm for Approximate Nearest Neighbor
`Searching in Fixed Dimensions, 45 Journal of the ACM 891–923 (1998)
`(Ex. 1006, “Arya”).
`5 U.S. Patent No. 6,597,405 B1, issued July 22, 2003 (Ex. 1011,
`“Iggulden”).
`6 Christian Böhm et al., Efficient Similarity Search in Digital Libraries,
`IEEE Advances in Digital Libraries, at 193–99 (2000) (Ex. 1007, “Böhm”).
`7 U.S. Patent No. 6,188,010 B1, issued Feb. 13, 2001 (Ex. 1012,
`“Iwamura”).
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`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner and Patent Owner propose constructions for several claim
`terms. For purposes of this decision, we determine that only the terms
`addressed below require express construction.
`
`1. “non-exhaustive search”
`Independent claims 1 and 15 of the ’988 patent recite that
`identification of an electronic work is based on “a non-exhaustive search.”
`Petitioner argues that a “non-exhaustive search” should be construed 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.” Pet. 6–7. Patent Owner substantially agrees, but argues that the
`last clause, “and all data within all possible matches,” would include
`improperly within a “non-exhaustive search” any search that does not
`compare “all data” in each record, even if the search was a brute force
`comparison of each record in the database. Prelim. Resp. 6. Patent Owner
`continues that the latter portion of Petitioner’s proposed construction is
`inconsistent with how the term “non-exhaustive” is used in the Specification
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`of the ’988 patent and is not part of the ordinary meaning. Id. at 6–7. We
`largely agree with Patent Owner.
`On this record, we are persuaded that the broadest reasonable
`construction of “non-exhaustive search,” consistent with the Specification, is
`“a search that locates a match without a comparison of all possible matches.”
`As Patent Owner points out, id. at 5, the written description of the
`’988 patent discusses both exhaustive and non-exhaustive searches. See
`Ex. 1001, 8:60–9:55 (“Exemplary Techniques for Matching Extracted
`Features with Database Entries”). Patent Owner also supplies an example it
`contends shows the ordinary meaning of “exhaustive search” or “brute-force
`search.” See Ex. 2001. Neither discussion mentions the evaluation of all
`data within each possible match. By contrast, Petitioner provides no support
`for its construction other than the declaration testimony of Dr. Moulin. See
`Ex. 1004 ¶ 43. To the extent Dr. Moulin testifies that a non-exhaustive
`search “encompassed anything other than a ‘brute force’ search,” id., we
`agree, but we do not find that his testimony supports the latter portion of
`Petitioner’s proposed construction, i.e., “and all data within all possible
`matches.”
`Accordingly, based on the instant record and for purposes of this
`decision, we construe a “non-exhaustive search” as “a search that locates a
`match without a comparison of all possible matches.”
`
`2. “identifying a neighbor”
`Independent claims 1 and 15 of the ’988 patent also recite that the
`identification of an electronic work is based on a non-exhaustive search
`“identifying a neighbor.” Petitioner argues that the term “identifying a
`neighbor” should be construed to mean “identifying a close, but not
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`necessarily exact, match.” Pet. 7. Patent Owner largely agrees with that
`construction, arguing that “identifying a neighbor” should be defined as
`“identifying a close, but not necessarily an exact or the closest, match of a
`feature.” Prelim. Resp. 8. Patent Owner provides further refinements as to
`what “close” and “feature” mean in the context of the ’988 patent, id. at 8–9,
`but we are not persuaded that such refinements are necessary. Specifically,
`Patent Owner argues that “close” should mean “a distance or difference that
`falls within a defined threshold,” id. at 8, but we are persuaded such an
`alteration would incorporate the element of a threshold into the independent
`claims, where none is required specifically. Although the Specification
`addresses such a threshold, see Ex. 1001, 7:1–3, we are not persuaded that
`such an implicit limitation should be applied to the construction of “neighbor
`search.” Similarly, Patent Owner urges that “feature” means a “feature
`vector,” Prelim. Resp. 8, but we are persuaded that characterizing a “feature”
`as a “feature vector” would unduly limit the scope of the independent
`claims.
`Thus, on this record, and for purposes of this decision, we construe
`“identifying a neighbor” as “identifying a close, but not necessarily exact or
`closest, match.”
`
`3. “portable”
`Independent claim 1 recites several steps performed on or by a
`“portable client device.” Neither party proposes a construction for
`“portable” or “portable client device.” For purposes of this decision, we
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`construe “portable” according to its ordinary meaning as “capable of being
`easily and conveniently transported.”8
`
`B. Asserted Grounds Based on Ghias
`Petitioner contends that claims 1–3, 7–9, 13–17, 21–23, 28, 30, 31,
`40, 49, and 51 are unpatentable under 35 U.S.C. § 102(b) as anticipated by
`Ghias. Pet. 8–15. Petitioner also contends that claims 8, 10–12, 22, 24–26,
`50 and 52 would have been obvious over Ghias. Pet. 54–57.
`Ghias relates to searching for melodies. Ex. 1010, Abstract. The
`system of Ghias receives a melody input through a microphone, converts it
`into a digitized representation based on relative pitch differences between
`successive notes, and searches a database of such representations for an
`approximate match. Id. Ghias also provides that a preselected error
`tolerance may be applied to the search. Id. at 2:50–59. The results of the
`search are presented as a ranked list of approximately matching melodies, or
`alternately just one best match. Id. at 2:50–59, 6:60–63. Ghias also
`discloses that it is desirable to perform key-searching within the database
`using “an efficient approximate pattern matching algorithm,” where different
`algorithms have various running times dependent on the number of entries in
`the database. Id. at 6:7–11, 6:23–35. The system is implemented using a
`general purpose computer. Id. at 2:35–36.
`
`
`8 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 1550
`(5th ed. 1994); see also MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND
`TECHNICAL TERMS 1642 (6th ed. 2003) (defining “portable” in the same
`way).
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`2. Claims 1–3, 7–14, 30, 40, 49, and 50
`Independent claim 1 recites several steps that are performed on or by a
`“portable client device,” including “electronically extracting within a
`portable client device features from the electronic work.” Petitioner asserts
`that Ghias discloses this limitation because a “computer” performs the
`electronic extraction step of converting user input (humming) into a
`sequence of relative pitch transitions. Pet. 11 (citing Ex. 1010, Fig. 1 (item
`16)). According to Petitioner, the “computer” in Ghias is a “portable client
`device,” as recited in claim 1. Id. Petitioner’s declarant, Dr. Moulin, further
`asserts that a person skilled in the art “would have understood that the
`disclosed ‘computer’ may be a portable client device, such as a laptop.”
`Ex. 1004 ¶ 73 (emphasis added).
`We agree with Patent Owner that Petitioner has not shown sufficiently
`that Ghias expressly or inherently discloses a “portable client device,” as
`required for anticipation. See Prelim. Resp. 14–15; see also Orion IP, LLC
`v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010) (“[A] single prior
`art reference must expressly or inherently disclose each claim limitation to
`anticipate a claim.”). Ghias refers to the computer shown in Figure 1 as a
`“general purpose computer.” Ex. 1001, 2:35–36. This is not an express
`disclosure of a device that is “portable,” i.e., one that is capable of being
`easily and conveniently transported. Nor is it an inherent disclosure,
`because the disclosed general purpose computer is not necessarily a portable
`device, such as a laptop. See In re Robertson, 160 F.3d 743, 745 (Fed. Cir.
`1999) (holding that to establish inherent disclosure, the evidence must show
`that a feature “is necessarily present in the thing described in the reference”).
`Thus, the information presented does not demonstrate a reasonable
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`likelihood that Petitioner would prevail in showing that claim 1 and
`claims 2, 3, 7–9, 13, 14, 30, 40, and 49, which depend directly or indirectly
`from claim 1, are anticipated by Ghias.
`For the asserted obviousness ground based on Ghias, Petitioner
`addresses only the additional limitations in the challenged dependent claims.
`Pet. 54–57. The Petition does not present any additional argument or
`evidence that would support a determination that modifying Ghias to
`perform the recited method steps on a portable client device would have
`been obvious to a person having ordinary skill in the art. Thus, the
`information presented does not demonstrate a reasonable likelihood that
`Petitioner would prevail in showing that claims 8, 10–12, and 50, which
`depend directly or indirectly from claim 1, would have been obvious over
`Ghias.
`
`2. Asserted Anticipation of Claims 15–17, 21–23, 28, 31, and 51
`Patent Owner argues that Ghias does not disclose a “non-exhaustive
`neighbor search identifying a neighbor,” and therefore cannot anticipate
`independent claim 15. Prelim. Resp. 10–13. Patent Owner argues that the
`search in Ghias instead is exhaustive, detailing that the query engine
`compares the work to “all the songs” in the melody database. Id. at 10–11
`(citing Ex. 1010, 5:66–6:2). Patent Owner also argues that the search of all
`the songs is not part of a preprocessing phase in Ghias. Id. at 11. Patent
`Owner continues that the system in Ghias “applies no intelligence to the
`process of selecting the melody references in [the] melody database to be
`compared to the melody work to be identified.” Id. Patent Owner also
`asserts that Petitioner quotes Ghias out of context, arguing that the passages
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`of Ghias cited in the Petition discuss the comparison of a work with a single
`record of the database. Id. at 13.
`On the present record, we are not persuaded by Patent Owner’s
`arguments. Ghias provides that “[t]he number of matches that the
`database 14 should retrieve depends upon the error-tolerance used during
`the key-search.” Ex. 1010, 6:63–65 (emphasis added). Ghias further
`provides that “the user can perform a new query on a restricted search list
`consisting of songs just retrieved. This allows the user to identify sets of
`songs that contain similar melodies.” Id. at 7:5–8 (emphasis added). Thus,
`Ghias makes clear that the search need not be exhaustive, as Patent Owner
`argues, and will act to “identify[] a close, but not necessarily exact or
`closest, match,” per our claim construction. Additionally, given the
`“comprising” language used in the independent claims, we are not persuaded
`that the claimed methods could not cover processes with both exhaustive and
`non-exhaustive searching, as long as the latter provides identification.
`We also have reviewed Petitioner’s arguments and claim chart and
`determine that, for purposes of this decision, Petitioner has shown
`sufficiently that Ghias discloses the remaining limitations of independent
`claim 15 and claims 16, 17, 21–23, 28, 31, and 51, which depend directly or
`indirectly from claim 15. Thus, on the present record, the information
`presented demonstrates a reasonable likelihood that Petitioner would prevail
`in showing that claims 15–17, 21–23, 28, 31, and 51 are anticipated by
`Ghias.
`
`3. Asserted Obviousness of Claims 22, 24–26, and 52
`Petitioner contends it would have been obvious to modify Ghias to
`include the additional limitations recited in claims 22, 24–26, and 52, which
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`depend indirectly from claim 15. Pet. 54–57 (citing Ex. 1004 ¶¶ 150–54).
`Patent Owner does not address the additional limitations, arguing only that
`Ghias does not disclose a “non-exhaustive search identifying a neighbor,” as
`recited in claim 15. Prelim. Resp. 15–16. Having reviewed Petitioner’s
`arguments, we are persuaded that, on the present record, the information
`presented demonstrates a reasonable likelihood that Petitioner would prevail
`in showing that claims 22, 24–26, and 52 would have been obvious over
`Ghias.
`
`C. Asserted Anticipation by Iwamura
`Petitioner contends that claims 1–3, 7, 9, 13–17, 21, 23, 27–33, 38,
`40–42, 47, 49, and 51 are unpatentable under 35 U.S.C. § 102(e) as
`anticipated by Iwamura. Pet. 16–23. 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. 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, for example, “a peak or differential
`matching algorithm.” Id. at 12:1–2. 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. Also, Iwamura
`provides for input fault tolerance so that the “search engine will find the
`closest melody from the database.” Id. at 9:24–25.
`After the search, the database server sends back the results in the form
`of a web page to the user’s personal computer (“PC”), functioning as a
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`client. Id. at Abstract, 1:59–2:1. 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
`client PC. Id. at 12:9–13.
`
`1. Claims 1–3, 7, 9, 13, 14, 29, 30, 40–42, 47, and 49
`Petitioner asserts that Iwamura discloses performing the steps of
`claim 1, including the extraction step, on a “client computer,” which
`Petitioner contends is a “portable client device.” Pet. 49 (citing Ex. 1004
`¶ 51). For reasons similar to those explained above with respect to Ghias,
`we agree with Patent Owner that Petitioner has not shown sufficiently that
`Iwamura’s description of a “personal computer (PC) which functions as a
`client, with a PC keyboard [and] monitor,” Ex. 1012, 1:61–63, is an express
`or inherent disclosure of a “portable client device.” See Prelim. Resp. 28–
`29. Thus, the information presented does not demonstrate a reasonable
`likelihood that Petitioner would prevail in showing that claim 1 and
`claims 2, 3, 7, 9, 13, 14, 29, 30, 40–42, 47, and 49, which depend directly or
`indirectly from claim 1, are anticipated by Iwamura.
`
`2. Claims 15–17, 21, 23, 27, 28, 31–33, 38, and 51
`Patent Owner argues that the search process in Iwamura is exhaustive,
`rather than “non-exhaustive,” as recited in independent claim 15. Prelim.
`Resp. 24–25. Patent Owner acknowledges that the individual comparisons
`of a work and a record in the library can be more efficient using the “peak
`note” approach disclosed in Iwamura, but notes that each record is searched,
`allegedly making the search exhaustive. Id. We note that claim 15 utilizes
`“comprising” language, such that the claimed method does not exclude
`additional, unrecited steps. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369,
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`1376 (Fed. Cir. 2004). Thus, the scope of independent claim 15 can include
`an exhaustive search, as long as it performs a non-exhaustive search as well.
`Thus, even if Patent Owner is correct and a particular search in Iwamura is
`exhaustive, that does not end the inquiry.
`Petitioner identifies Iwamura’s computational limit as an example of
`non-exhaustive searching, in that not all records in the remote music
`database necessarily are searched. Pet. 48. Patent Owner argues that
`Iwamura’s description of stopping a search when computations exceed a
`certain limit is not a non-exhaustive search because “it does not state or
`suggest that all records in the music library are not used in the comparison.”
`Prelim. Resp. 27. We do not agree. If, in Iwamura, the computational limit
`is reached, the search is stopped, even if not all of the records have been
`searched. Per our construction of “non-exhaustive search,” i.e., “a search
`that locates a match without a comparison of all possible matches,” we are
`persuaded on this record that the process of Iwamura, with the
`computational limit, would prevent all of the records of the remote music
`database from being searched, but ultimately would provide a match using
`an input fault tolerance process to find the closest melody. See Ex. 1012,
`7:56–57, 9:20–34.
`We also have reviewed Petitioner’s arguments and claim chart and
`determine that, for purposes of this decision, Petitioner has shown
`sufficiently that Iwamura discloses the remaining limitations of independent
`claim 15 and claims 16, 17, 21, 23, 27, 28, 31–33, 38, and 51, which depend
`directly or indirectly from claim 15. Thus, on the present record, the
`information presented demonstrates a reasonable likelihood that Petitioner
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`would prevail in showing that claims 15–17, 21, 23, 27, 28, 31–33, 38, and
`51 are anticipated by Iwamura.
`
`D. Asserted Grounds Based on Wood
`Petitioner contends that claims 1, 2, 7–9, 13–16, 21–23, 27–33, 38,
`40–42, 47, 49, and 51 are unpatentable under 35 U.S.C. § 102(e) as
`anticipated by Wood. Pet. 16–23. Petitioner also contends that claims 8,
`10–12, 22, 24–26, 50 and 52 would have been obvious over Wood. Pet. 57–
`60.
`
`1. Claims 1, 2, 7–14, 29, 30, 40–42, 47, 49, and 50
`Wood discloses a system for recognizing a musical work from a
`specimen provided by a customer, e.g., by humming or singing, and
`distributing the work to the customer over the Internet. Ex. 1015, 1:13–20.
`Recognition is performed by extracting features from the work, generating a
`pattern from the extracted features, and comparing the pattern with patterns
`in a library. Id. at 2:34–39. Feature extraction and pattern generation may
`be performed on a customer’s “home computer.” Id. at 2:8–12. Petitioner
`contends that the customer’s computer is a “portable client device,” as
`recited in claim 1. Pet. 18–19 (citing Ex. 1004 ¶ 89).
`We agree with Patent Owner that Petitioner has not shown sufficiently
`that Wood’s “home computer” is an express or inherent disclosure of a
`“portable client device.” See Prelim. Resp. 20–22. As Patent Owner notes,
`Wood describes a separate monitor and keyboard “connected to the
`computer,” Ex. 1015, 3:29–30, and Figure 2 of Wood illustrates the
`customer’s equipment as a desktop computer, id. at Fig. 2. Thus, for reasons
`similar to those discussed above with respect to Ghias, the information
`presented does not demonstrate a reasonable likelihood that Petitioner would
`
`16
`
`
`
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`
`prevail in showing that claim 1 and claims 2, 7–9, 13, 14, 29, 30, 40–42, 47,
`and 49, which depend directly or indirectly from claim 1, are anticipated by
`Wood. Similarly, the Petition does not present any additional argument or
`evidence that would support a determination that modifying Wood to
`perform the recited method steps on a portable client device would have
`been obvious to a person having ordinary skill in the art. Thus, the
`information presented does not demonstrate a reasonable likelihood that
`Petitioner would prevail in showing that claims 8, 10–12, and 50, which
`depend directly or indirectly from claim 1, would have been obvious over
`Wood.
`
`2. Claims 15, 16, 21–28, 31–33, 38, 51, and 52
`In light of the grounds on which we have instituted review of these
`claims, we do not institute an inter partes review on the grounds of
`anticipation (claims 15, 16, 21–23, 27, 28, 31–33, 38, and 51) and
`obviousness (claims 22, 24–26, and 52) based on Wood. See 37 C.F.R.
`§ 42.108(a).
`
`E. Asserted Obviousness over Levy and Arya
`Petitioner contends that claims 1–3, 7–17, 21–34, 37, 38, 40–43, 46,
`47, and 49–52 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Levy and Arya. Pet. 23–36. Levy relates to identification of media objects
`based on identifiers embedded into those objects or their containers.
`Ex. 1013, Abstract. An identifier can be extracted from an object and
`mapped to an action, such as returning metadata, redirecting a request, or
`requesting additional information to identify the media object. Id. The
`identifying characteristics of the object may be a unique identifier or
`encoded metadata of the object, and preferably the system may use a hash
`
`17
`
`
`
`Case 1:14-cv-02396-PGG-SN Document 234-18 Filed 11/11/20 Page 19 of 23
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`algorithm to create statistically-unique “fingerprints” of the content of the
`object. Id. at 2:29–37, 9:40–61.
`Arya is directed to optimal algorithms for approximate nearest
`neighbor searching. Ex. 1006, Abstract. Arya discloses that its nearest
`neighbor searching is non-exhaustive and can provide significant
`improvements over brute-force searching. Id. at 19–21.
`Petitioner argues that one of ordinary skill in the art would have been
`motivated to combine the teachings of Levy and Arya. Pet. 27–28.
`Specifically, Petitioner contends that an ordinarily skilled artisan would have
`understood that due to slight discrepancies in Levy’s generated identifiers
`(i.e., fingerprints of the work), identifying a work would require finding not
`only exact matches, but also near matches. Id. at 28 (citing Ex. 1013, 9:42–
`61; Ex. 1004 ¶ 101). Petitioner argues that Arya’s teaching of approximate
`nearest neighbor searching would have allowed for such a variation in
`Levy’s identification processes. Id.
`Patent Owner argues that the “fingerprints” produced in Levy, based
`on a hash function, would be unique, but that minor changes to the content
`would result in widely varying fingerprints. Prelim. Resp. 31–32. As a
`result, outputs of hash functions that are “close,” i.e., differing by a few bits
`from each other, would provide no indication that the underlying contents
`are close or similar. Id. Patent Owner continues that “incorporating the
`neighbor search algorithm of Arya into the exact-match system of Levy will
`create erroneous meaningless results.” Id. at 37.
`We are persuaded by Patent Owner’s argument. Finding the
`approximate nearest neighbors of objects, as taught by Arya, listed by their
`“fingerprints” or unique identifiers, per Levy, would not provide a result
`
`18
`
`
`
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`commensurate with independent claims 1 and 15. The discovered
`“neighbors” would not be related to the obtained identifier, as the unique
`identifiers in the database are indexed only by the hashed extracted features.
`Therefore, on this record, we agree with Patent Owner that there would be
`no benefit in applying the approximate nearest neighbor searching of Arya to
`the fingerprinting process of Levy.
`Although we acknowledge Petitioner’s argument “that disparities in
`the source of a fingerprinted work led to slight discrepancies in generated
`fingerprints,” and the testimony of Petitioner’s declarant, Dr. Moulin, that
`ordinarily skilled artisans would want near matches, as well as exact
`fingerprint matches, Pet. 28 (citing Ex. 1004 ¶ 101), we are not persuaded
`that this would be sufficient to motivate the combination of Levy and Arya,
`given the differences discussed above. On this record, the information
`presented does not demonstrate a reasonable likelihood that Petitioner would
`prevail in showing that claims 1–3, 7–17, 21–34, 37, 38, 40–43, 46, 47, and
`49–52 would have been obvious over Levy and Arya.
`
`F. Asserted Obviousness over Iggulden and Böhm
`Petitioner contends that claims 15–17, 21, 22, 24, 25, 27, 28, 31, 32,
`37, 40, 41, and 46 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over Iggulden and Böhm. Pet. 36–46. Iggulden relates to real-time
`identification and alteration of a television broadc
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