Paper No. 25
`Date Filed: March 4, 2016
`
`
`
`
`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
`________________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER'S
`IDENTIFICATION OF ALLEGEDLY IMPROPER REPLY ARGUMENTS
`
`
`
`
`
`
`Date Filed: March 4, 2016
`
`
`
`
`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
`________________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER'S
`IDENTIFICATION OF ALLEGEDLY IMPROPER REPLY ARGUMENTS
`
`
`
`
`
`
`
`
`
`The Board authorized this Paper in a conference call on February 24, 2016.
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`As explained below, the five allegedly new arguments are proper because
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`"[t]he very nature of a reply is to respond to the opposition [and] [t]he need for
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`relying on evidence not previously discussed in the Petition may not exist until a
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`certain argument has been raised in the Patent Owner Response." Nintendo of Am.
`
`Inc. v. Motion Games, LLC, IPR2014-00164, Paper 51 at 24 (May 15, 2015).
`
`Argument 1: The Petition contended that Iwamura discloses the Boyer-
`
`Moore algorithm as one example of sublinear search. Paper 1 at 11 (citing Ex.
`
`1004 at ¶ 72 ("It is my opinion that Iwamura further teaches how this search can be
`
`sublinear. For example, Iwamura discloses that different 'search algorithms may be
`
`applied to perform melody searches,' . . . such as the 'Boyer-Moore algorithm.'")).
`
`Dr. Moulin explained at deposition that he mistakenly pointed to the Boyer-Moore
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`algorithm because it is sublinear with respect to the size of a query rather than the
`
`size of a database. Ex. 2006, 61:18-62:9. However, Dr. Moulin reaffirmed his
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`opinion that Iwamura discloses sublinear search (Ex. 2006, 70:13-20), and
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`repeatedly attempted to explain the bases for this opinion (e.g., Ex. 2006 at 130:4-
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`9). Rather than substantively respond regarding Iwamura's disclosure of sublinear
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`search, Patent Owner protested that "[a]ny attempt by Petitioner or its Declarant to
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`rely on some disclosure in Iwamura for the claimed sub-linear search elements
`
`beyond the referenced Boyer-Moore algorithm . . . should be rejected as . . .
`
`
`
`
`
`
`
`prejudicing the Patent Holder." Paper 17 at 17.
`
`Finally, while portions of Patent Owner’s filing constitute unauthorized
`
`surreply (see Paper 24 at 2), having now presented its rebuttal, Patent Owner cannot
`
`credibly claim prejudice. Because "the IPR statute [does not] expressly limit the
`
`Board's authority . . . to the grounds alleged in the IPR petition," the Board should
`
`consider Petitioner's argument. In re Cuozzo Speed Techs., 793 F.3d 1268, 1273.
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`Argument 2: The Petition raised the arguments that Iwamura discloses an
`
`"approximate nearest neighbor search" because (1) its "peak notes" search finds
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`near matches; and (2) it skips "'unimportant portion[s]' of the melody." Paper 1 at
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`12. Patent Owner argued that the construction of "approximate nearest neighbor"
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`was "correct, but incomplete," and should exclude searches that "always find the
`
`closest match." Paper 17 at 8. Petitioner's Reply responds that, even under Patent
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`Owner's new interpretation, Iwamura discloses an "approximate nearest neighbor
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`search" because (1) its "'peak notes' search does not necessarily even consider the
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`closest match, let alone identify it"; and (2) "the closest matching melody may fall
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`within a skipped section." Paper 20 at 13-15.
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`Argument 3: The Petition raised the argument that "Iwamura teaches a non-
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`exhaustive search that uses 'peak notes' . . . 'Peak notes are approximately 20% of
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`the total number of notes in a typical melody. That means search speed using peak
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`notes is 20% of a brute force search.'" Paper 1 at 9-10, 15. Though the Petition did
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`
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`2
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`
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`
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`not use the phrase "melody segment," the clear import is that Iwamura's search is
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`non-exhaustive because it considers only the subset of melody segments at peak
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`notes. Patent Owner subsequently reinterpreted the Board's construction of "non-
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`exhaustive search"—which excludes searches that consider "all possible
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`matches"—asserting that the "possible matches" in Iwamura were complete songs,
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`rather than the melody segments actually compared to a query melody segment.
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`Paper 17 at 30 ("the disclosed algorithm searches all records [i.e., songs] in the
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`library and is therefore an exhaustive search"). The Reply merely rebuts the
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`assertion that complete songs are the "possible matches" in Iwamura, and clarifies
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`that "melody segments" within songs are the possible matches. Paper 20 at 16-18.
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`Arguments 4-5: The Petition raised the argument that Ghias discloses an
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`"approximate nearest neighbor search" because it "locates a neighbor by
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`determining 'a ranked list of approximately matching melodies." Paper 1 at 42, 45.
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`Patent Owner then argued that the Board's construction of "approximate nearest
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`neighbor" was "correct, but incomplete," and should be read to exclude searches
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`that "always find the closest match." Paper 17 at 8. Petitioner's Reply responds
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`that Ghias discloses an "approximate nearest neighbor search" because (1) "Ghias'
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`subsequent searches do not always consider, let alone identify, the closest match
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`(Paper 20 at 21); and (2) Ghias "cannot always 'identify' the closest of a group of
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`close matches [i.e., the ranked list]" (Paper 20 at 22).
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`
`3
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`Date: March 4, 2016
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`
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`
`
`Respectfully Submitted,
`
`
`
`/s/ James J. Elacqua
`James J. Elacqua (Lead Counsel)
`USPTO Reg. No. 28,412
`Skadden, Arps, Slate, Meagher &
`Flom LLP
`525 University Avenue
`Suite 1400
`Palo Alto, California 94301
`Tel: (650) 470-4510
`Fax: (650) 798-6564
`Email: James.Elacqua@skadden.com
`
`Douglas R. Nemec (Back-Up Counsel)
`USPTO Reg. No. 41,219
`Skadden, Arps, Slate, Meagher &
`Flom LLP
`Four Times Square
`New York, NY 10036
`Tel: (212) 735-3000
`Fax: (917) 777-2419
`Email: Douglas.Nemec@skadden.com
`
`4
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`
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`§ 42.6(e) - CERTIFICATION OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
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`42.105 on the Patent Owner of a copy of this PETITIONER’S RESPONSE TO
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`PATENT OWNER'S IDENTIFICATION OF ALLEGEDLY IMPROPER REPLY
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`ARGUMENTS by email at the corresponding address of record for Patent Owner's
`
`Greg Dovel (pro hac vice)
`Dovel & Luner LLP
`201 Santa Monica Boulevard, Suite 600
`Santa Monica, CA 90941
`Telephone: (310) 656-7066
`E-mail: greg@dovellaw.com
`
`Marc A. Fenster
`Brian D. Ledahl
`Russ, August & Kabat LLP
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
`Email: mfenster@raklaw.com
`bledahl@raklaw.com
`
`/James J. Elacqua/
`James J. Elacqua (Reg. # 28,412)
`
`ATTORNEY FOR PETITIONER
`GOOGLE INC.
`
`
`
`counsel in IPR2015-00345:
`
`Charles R. Macedo (Reg. No. 32,781)
`Brian A. Comack (Reg. No. 45,343)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336-8074
`Facsimile: (212) 336-8001
`E-mail: cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`
`
`
`
`Dated: March 4, 2016
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