Filed on behalf of NETWORK-1 TECHNOLOGIES, INC.
`
`By: Charles R. Macedo (Reg. No. 32,781)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8074
`Facsimile: (212) 336–8001
`cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`
`
`
`
`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
`__________________
`
`
`
`PATENT OWNER NETWORK-1’S
`IDENTIFICATION OF IMPROPER REPLY ARGUMENTS
`
`
`
`625458.2
`
`
`
`By: Charles R. Macedo (Reg. No. 32,781)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8074
`Facsimile: (212) 336–8001
`cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`
`
`
`
`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
`__________________
`
`
`
`PATENT OWNER NETWORK-1’S
`IDENTIFICATION OF IMPROPER REPLY ARGUMENTS
`
`
`
`625458.2
`
`
`
`
`
`
`Case No. IPR2015-00345
`
`The Board authorized this Paper in a conference call on February 24, 2016.
`
`Petitioner has the burden of making out a prima facie case in its Petition,
`
`which “must specify where each element of the claim is found in the prior art.” 37
`
`C.F.R. § 42.104(b)(4). Moreover, Petitioner’s “reply may only respond to
`
`arguments raised in the…patent owner response.” 37 C.F.R. § 42.23(b).
`
`Petitioner’s Reply in this IPR improperly raises five new theories and cites
`
`different sections of the art in an attempt to establish a new prima facie case. This
`
`Paper explains one example and identifies four others.
`
`New prima facie theory 1—Iwamura, “sublinear”
`
`Petition: “Iwamura discloses
`
`Reply: “Iwamura discloses a sublinear
`
`searching using the ‘Boyer-Moore
`
`search when .wav files are added to a
`
`algorithm’…which is sublinear.” Pet.
`
`database of MIDI files.” Reply 16-18.
`
`10-11.
`
`
`
`During cross examination, Petitioner’s declarant, confronted with the actual
`
`Boyer-Moore paper, admitted that his declaration was wrong and that Boyer-
`
`Moore is not sublinear. Moulin (Ex. A2006) 61:18-24; 74:20-24; 78:16-22.
`
`In its Reply, Petitioner did not respond to Patent Owner’s demonstration that
`
`Boyer-Moore is not sublinear. Instead, Petitioner abandoned Boyer-Moore and
`
`shifted to a new prima facie case: “Iwamura discloses a sublinear search
`
`625458.2
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`1
`
`
`
`
`when .wav files are added to a database of MIDI files.” Reply 17. This Reply
`
`Case No. IPR2015-00345
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`assertion was the first time this theory was mentioned in the IPR record and
`
`therefore cannot be used to establish Petitioner’s prima facie case. Eizo Corp. v.
`
`Barco N.V., IPR2014-00358, Paper 21 at 14 (PTAB July 14, 2015) (it is “a new
`
`argument, and we will not consider it for purposes of this Decision”).
`
`Moreover, had Patent Owner been given the opportunity to present evidence
`
`on this new theory, Patent Owner would have demonstrated that it fails. In fact,
`
`Iwamura does not disclose adding .wav files to a database of MIDI files. The only
`
`reference to .wav files in Iwamura is found at 3:65-4:4 addressing the query—the
`
`melody file generated by the user that is compared to records in the music database.
`
`The “music melody database” (5:13) does not appear until two columns later
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`(5:13-5:25), and MIDI files are the only file type in the database.
`
`New prima facie theory 2—Iwamura, “approximate nearest neighbor”
`
`Petition: Iwamura discloses an
`
`Reply: Iwamura discloses an approximate
`
`approximate nearest neighbor search
`
`nearest neighbor search because “Iwamura’s
`
`because it discloses “input fault
`
`‘peak notes’ search does not necessarily
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`tolerance[s]” and “portions that
`
`even consider the closest match, let alone
`
`should not be searched.” Pet. 12.
`
`identify it.” Reply 13-14.
`
`
`
`625458.2
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`2
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`
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`Case No. IPR2015-00345
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`New prima facie theory 3—Iwamura, “non-exhaustive”
`
`Petition: Iwamura discloses a non-
`
`Reply: Iwamura discloses a non-
`
`exhaustive search because it discloses
`
`exhaustive search because “[t]he ‘possible
`
`using “peak notes” and a search that
`
`matches’ in Iwamura are melody
`
`“can be accelerated by stopping the
`
`segments, not full songs” and “Iwamura
`
`search when computations ‘exceed[] a
`
`does not consider all melody segments.”
`
`certain limit.’” Pet. 15.
`
`Reply 8-13.
`
`
`
`New prima facie theories 4 and 5—Ghias, “approximate nearest neighbor”
`
`Petition: Ghias
`
`Reply theory 4: Ghias discloses an approximate nearest
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`discloses an
`
`neighbor search because “when Ghias performs a second
`
`approximate neighbor
`
`search on the second query considering only the results of
`
`search because it
`
`the first search, it may not consider the reference(s) that
`
`generates “a ranked
`
`would be the closest match to the second work.” Reply
`
`list of approximately
`
`20-22.
`
`matching melodies” or
`
`Reply Theory 5: “Ghias cannot always identify the
`
`“the single most
`
`closest match in a group of close matches” because
`
`approximate matching
`
`“references with the same number of character
`
`melody.” Pet. 45.
`
`mismatches may not be equal quality matches.” Reply
`
`22-24.
`
`3
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`625458.2
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`
`
`Case No. IPR2015-00345
`
`Respectfully submitted,
`
`
`
`/Charles R. Macedo/
`By:
`Charles R. Macedo (Reg. No. 32,781)
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`Gregory Dovel (admitted pro hac vice)
`Dovel & Luner, LLP
`201 Santa Monica Blvd., Suite 600
`Santa Monica, CA 90401
`(310) 656-7066
`
`Counsel for Patent Owner
`
`
`
`Dated: March 1, 2016
`
`
`
`
`
`
`
`625458.2
`
`4
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`Case No. IPR2015-00345
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER NETWORK-1’S IDENTIFICATION OF IMPROPER REPLY
`
`ARGUMENTS is being served by electronic mail this 1st day of March 2016 on
`
`counsel for Petitioner as follows:
`
`James J. Elacqua
`Douglas R. Nemec
`Skadden, Arps, Slate, Meagher & Flom LLP
`525 University Avenue
`Suite 1400
`Palo Alto, California 94301
`Telephone: (650) 470-4510
`Facsimile: (650) 798-6564
`James.Elacqua@skadden.com
`Douglas.Nemec@skadden.com
`DLGOOGLE1N@skadden.com
`
`
`
`Date: March 1, 2016
`
`
`
`
`
`
`
`
`
`
`
`By: /Charles R. Macedo/
`Charles R. Macedo
`Registration No. 32,781
`
`
`
`625458.2
`
`5
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