`
`Filed on Behalf of NETWORK-1 TECHNOLOGIES, INC.
`
`By: 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
`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
`____________________
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,205,237 UNDER 35
`U.S.C. § 313 PURSUANT TO 37 C.F.R. § 42.107
`
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`Case No. IPR2015-00345
`U.S. Patent No. 8,205,237
`Patent Owner’s Preliminary Response
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`Table of Contents
`I.  
`Introduction. ..................................................................................................... 1 
`Overview of the ‘237 Patent. ........................................................................... 3 
`II. 
`III.   Claim Constructions. ....................................................................................... 5 
`A.  
` “non-exhaustive search.” ...................................................................... 5 
`B. 
`“sublinear.” ............................................................................................ 9 
`C.  
` “neighbor” / “near neighbor.” ............................................................ 10 
`D.  
`“nearest neighbor.” .............................................................................. 11 
`E.  
`“approximate nearest neighbor search” .............................................. 12 
`IV.   Ground 1: Anticipated by Iwamura (Ex. 1012) fails. ................................... 13 
`A.  Overview of Iwamura. ......................................................................... 13 
`B. 
`Ground 1 fails because Iwamura does not disclose the claimed
`“non-exhaustive,” “sublinear,” and “approximate nearest”
`search limitations. ................................................................................ 14 
`1. 
`Iwamura does not disclose the claimed non-exhaustive,
`sublinear, or approximate nearest elements but rather
`teaches an exhaustive, linear search. ........................................ 14 
`Response to Petitioner’s arguments. ......................................... 16 
`2. 
`V.   Ground 4: Anticipated by Ghias (Ex. 1010) fails. ........................................ 20 
`A.   Overview of Ghias. .............................................................................. 20 
`B. 
`Ground 4 fails because Ghias does not disclose the claimed
`sublinear limitations found in each challenged independent
`claim. ................................................................................................... 21 
`VI.   Ground 5: Anticipated by Wood (Ex.1015) fails. ........................................ 25 
`A.   Overview of Wood. ............................................................................. 25 
`B. 
`Ground 5 fails because Wood does not disclose the claimed
`“approximate nearest neighbor search.” ............................................. 26 
`VII.   Ground 2: Obvious over Levy (Ex. 1013) in view of Arya (Ex. 1006)
`fails. ................................................................................................................ 29 
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`A.   Overview of Levy. ............................................................................... 29 
`B.   Overview of Arya. ............................................................................... 32 
`C.   Ground 2 fails because the references fail to teach claim
`elements and teach away from the proposed combination. ................ 34 
`1. 
`Levy and Arya teach away from combining these
`references. ................................................................................. 35 
`2.   The two asserted motivations to combine Levy and Arya
`presented in the Petition both fail. ............................................ 40 
`VIII.   Ground 3: Obvious Iggulden (Ex. 1011) in view of Böhm (Ex. 1007)
`fails. ................................................................................................................ 43 
`A.  Overview of Iggulden. ......................................................................... 43 
`B. 
`Overview of Böhm. ............................................................................. 45 
`C. 
`Ground 3 fails because Iggulden and Böhm teach away from
`the proposed combination. .................................................................. 46 
`1.  
`Iggulden and Böhm teach away from combining the
`references. ................................................................................. 47 
`Petitioner’s asserted motivations to combine Iggulden
`and Böhm presented in the Petition fail. ................................... 51 
`IX.   Ground 6: Obvious over Iwamura (Ex. 1012) in view of Chen (Ex.
`1008) fails. ..................................................................................................... 53 
`X.   Ground 7: Obvious over Levy (Ex. 1013) in view of Arya (Ex. 1006)
`and Chen (Ex. 1008) fails. ............................................................................. 54 
`XI.   Conclusion. .................................................................................................... 55 
`
`
`
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`2.  
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`Case No. IPR2015-00345
`U.S. Patent No. 8,205,237
`Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`CallCopy, Inc. v. Verint Americas, Inc.,
`IPR2013-00492, Paper 14 (PTAB Feb. 5, 2014) .................................................... 54
`Glaxo Group Ltd. v. Apotex, Inc.,
`376 F.3d 1339 (Fed. Cir. 2004) ............................................................................... 31
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................................. 36
`International Securities Exchange v. Chicago Board Options Exchange,
`IPR2014-00097, Paper 12 (PTAB May 22, 2014) ........................................... passim
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) ......................................................................... 36, 48
`Nystrom v. Trex Co.,
`424 F.3d 1136 (Fed. Cir. 2005) ............................................................................... 11
`Smart Modular Technologies v. Netlist, Inc.,
`IPR2014-01371, Paper 12 (PTAB March 13, 2015) ................................................. 8
`Statutes
`35 U.S.C. § 312 ............................................................................................................. 12
`35 U.S.C. § 316(e)......................................................................................................... 35
`Regulations
`37 C.F.R. § 42.104(b)(3) ............................................................................................... 12
`37 C.F.R. § 42.104(b)(4) ................................................................................................. 3
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`Case No. IPR2015-00345
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`Patent Owner’s Preliminary Response
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`Exhibit List
`
`EXHIBIT NO.
`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
`
`
`
`DESCRIPTION
`“Brute-force search”—http://en.wikipedia.org/wiki/Brute-
`force_search (3/19/2015)
`
`U.S. Patent No. 8,447,762 (Brendel)
`
`U.S. Patent No. 7,167,984 (Graveman)
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`I.
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`Introduction.
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`The references asserted in the Petition fall into two general categories:
`
`Category 1 consists of patent references—Ghias (Ex. 1010), Wood (Ex.
`
`1015), Levy (Ex. 1013), Iggulden (Ex. 1011), Iwamura (Ex. 1012), and Chen (Ex.
`
`1008). Rather than teaching to identify a work using the types of searches claimed
`
`in the ‘237 Patent (addressed below), these references explicitly teach using a
`
`different type of search to identify matches:
`
` Ghias teaches an exhaustive search that “compare[s] all the songs” in the
`
`database (Ghias, 5:66-6:2);
`
` Wood teaches an exhaustive search that compare a “specimen” with “each entry
`
`in the pattern library” (Wood, 6:8-23);
`
` Iwamura teaches an exhaustive search that compares the melody to be identified
`
`with each record such that “[t]he reference melody that gives the least different
`
`is returned as a search result” (Iwamura, 7:53-55);
`
` Levy teaches using exact match comparisons rather than neighbor searches to
`
`identify a match using a extracted hashed fingerprint (Levy, 9:42-61);
`
` Iggulden teaches using exact match comparisons rather than neighbor searches
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`to identify a match using an extracted hash as a “unique signature” (Iggulden,
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`9:55-57, 9:59-62); and
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` Chen provides no details as to how any search is performed.
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`Category 2 consists of academic articles—Arya (Ex. 1006), and Böhm (Ex.
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`1007)—that identify neighbor searches, but do not disclose other claim elements.
`
`The Petition presents seven overlapping and cumulative grounds. Three
`
`grounds are based on single references (grounds 1, 4, and 5); four grounds are
`
`based on combinations (grounds 2, 3, 6 and 7).
`
`For the single reference grounds (grounds 1, 4, and 5), the Petition fails to
`
`satisfy its burden of demonstrating that claimed elements are found in the asserted
`
`references. Moreover, while Petitioner identifies constructions to be applied, it
`
`fails to map key constructions onto the asserted art. For example, Petitioner
`
`construes “identify a neighbor” as “identify a close, but not necessarily exact
`
`match.” Pet. 6. But after asserting its construction, Petitioner’s construction
`
`appears nowhere in its Petition.
`
`For the combination grounds (2, 3, 6, and 7), not only are elements missing
`
`from the proposed combinations, the alleged combinations, based on flawed
`
`premises, would not work and the references teach away from such combinations
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`rather than provide any motivation to combine. The proposed combinations of the
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`academic articles (Arya and Böhm) with the patent references (Levy and Iggulden)
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`rely on the hashing feature extraction methods taught in Levy and Iggulden. Arya
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`and Böhm, however, teach search methods that produce a meaningless “match” if
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`their neighbor searches are applied to the hashed extracted features as taught by
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`Levy and Iggulden. Moreover, the proposed combinations produce the
`
`meaningless matches less efficiently than the exact match comparisons of Levy
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`and Iggulden.
`
`The Petition fails to carry its burden under 37 C.F.R. § 42.104(b)(4) on each
`
`challenged independent claim (1, 5, 9, 13, 25, and 33) and thus fails to carry its
`
`burden on any of the challenged dependent claims (which all depend on the
`
`challenged independent claims). The Petition should be denied in its entirety.
`
`II. Overview of the ‘237 Patent.
`
`The ‘237 Patent involves a search that compares a given item to a reference
`
`database of potential matches. This Preliminary Response uses the term “work” to
`
`mean the item (e.g., a digital audio file) to be identified using the search. See ‘237,
`
`6:51-56. This Response uses “record” to mean one of the units in the reference
`
`database that the work may be compared to. See ‘237, 6:16-22. And this
`
`Response use “database” or “library” to mean the collection of all records. See
`
`‘237, 6:23-30.
`
`The independent claims of the ‘237 Patent include the following elements:
`
`[1] receiving or obtaining features extracted from a work;
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`[2] identifying the work using the extracted features to perform a search of the
`
`database, where the search is:
`
` a “sub-linear time search” (claims 1 and 5);
`
` “an approximate nearest neighbor search” (claims 9 and 13);
`
` “a non-exhaustive search … to identify a near neighbor” (claims 25); or
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` “a sublinear approximate nearest neighbor search” (claim 33); and
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`[3] either (i) transmitting information about the identified work to the client
`
`device, or (ii) determining an action based on the identity of the work.
`
`The invention claimed in the ‘237 Patent includes two distinguishing features
`
`relevant to this Petition:
`
`Feature 1: Although the language varies among the claims, each claim
`
`requires that the “identifying” must be performed based on a search that has two
`
`components:
`
`(1) a sub-linear or non-exhaustive component (reflected in the underlined
`
`language):
`
` “sub-linear time search” (claims 1 and 5);
`
` “approximate nearest neighbor search” (claims 9 and 13);
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` “non-exhaustive search … to identify a near neighbor” (claim 25); and
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` “sublinear approximate nearest neighbor search” (claim 33).
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`(2) a neighbor component (reflected in the underlined language):
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` a search that “identif[ies] a neighbor” (claims 1 and 5);
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` “an approximate nearest neighbor search” (claims 9 and 13);
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` “a nonexhuastive search … to identify a near neighbor” (claims 25); and
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` “a sublinear approximate nearest neighbor search” (claim 33).
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`Feature 2: The system must either determine an “action” based on the
`
`identification (claims 25 and 33); or transmit information about the identified
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`media work to a “client device” (claims 1, 5, 9, and 13). It is not sufficient to
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`simply to identify a match. Rather, an action must also be identified; or
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`information about the identified work must be transmitted to the client device.
`
`III. Claim Constructions.
`
`A.
`
` “non-exhaustive search.”
`
`A “non-exhaustive” search is a search using an algorithm designed to locate
`
`a match without requiring the work to be compared to all records in the database.
`
`A “non-exhaustive” search uses an intelligent algorithm to narrow the database to
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`only a subset of potential matches. See Ex. 1004, ¶12 (“algorithms that increased
`
`efficiency by intelligently searching only a subset of potential matches (i.e., ‘non-
`
`exhaustive’ algorithms)”). For example, if there are 100 records in a database, a
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`non-exhaustive search could use an intelligent algorithm to exclude 75 records
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`from the search such that only 25 would be searched during the comparison
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`process. As the specification of the ‘237 Patent observes, these non-exhaustive
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`“forms of matching include those based on clustering, kd-trees, vantage point trees
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`and excluded middle vantage point forests” that do not systematically compare the
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`work to each record. ‘237, 8:64-67.
`
`A “non-exhaustive” search can be contrasted with an “exhaustive” search.
`
`An exhaustive search systematically checks whether each record matches the work,
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`“perhaps halting the search when the first match is found.” ‘237, 8:59-61. An
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`exhaustive search is “a very general problem-solving technique that consists of
`
`systematically enumerating all possible candidates for the solution and checking
`
`whether each candidate satisfies the problem’s statement.” Ex. 2001.1 If there are
`
`100 records in the database, an “exhaustive” search does not narrow the potential
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`matches but instead systematically compares the work with each record to
`
`determine if there is a match. Systematically comparing the work to be identified
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`with each record rather than using intelligence to narrow the records to be
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`compared is also referred to as using “brute force.” Ex. 1004, ¶44 (“a brute force
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`search conducts a comparison of every item in a search database”); Ex. 2001.
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`The Petition asserts that a “non-exhaustive search” should be construed as “a
`
`1
`Emphasis added throughout this Response, unless otherwise noted.
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`search that locates a match without conducting a brute force comparison of all
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`possible matches, and all data within all possible matches.” Pet. 5 (citing Ex.
`
`1004, ¶43). The “all data” clause (underlined above) in Petitioner’s proposed
`
`construction would improperly include as a “non-exhaustive search” any search
`
`that did not compare “all data” in each record, even if the search was a brute force
`
`comparison of each record in the database. As an illustrative example, assume the
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`work to be identified “ABC” is compared with all records in a library, including
`
`record “DEF.” When comparing “ABC” with “DEF,” the algorithm determines
`
`that there is no match between “ABC” and “DEF” after just comparing the first
`
`letter of the work “A” with the first letter of the record “D.” If the algorithm does
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`not unnecessarily compare the second and third letters, according to Petitioner, the
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`search is not “exhaustive” even though every record is compared.
`
`To support its proposed construction, Petitioner relies solely on the
`
`conclusory assertions in its declaration (Pet. 5), and fails to present any objective
`
`evidence (e.g., cites to the ‘237 Patent specification and prosecution history,
`
`dictionary definitions, or treatises). Petitioner’s “all data” clause is improper
`
`because:
`
` it is inconsistent with how the non-exhaustive search concept is used in the
`
`‘237 Patent which describes a linear exhaustive search as one where the
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`search compares the work to all “N entries,” not all data within all “N entries”
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`(see ‘237, 21:7-40; 8:59-9:52); and
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` it is not part of the ordinary meaning of “non-exhaustive search” (see Ex.
`
`2001).
`
`Petitioner’s declarant states that a non-exhaustive search is any search that is not a
`
`brute force search, and a “‘brute force’ search, in turn, is a search wherein a query
`
`is compared to every single portion of every single item in a database.” Ex. 1004
`
`¶43. The declarant provides no analysis or support for this conclusory assertion
`
`that is, therefore, insufficient to meet Petitioner’s burden. Smart Modular
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`Technologies v. Netlist, Inc., IPR2014-01371, Paper 12 at 16 (PTAB March 13,
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`2015) (“testimony is insufficient if it is merely conclusory” (quoting Schumer v.
`
`Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002))).
`
`Moreover, objective sources confirm that an “exhaustive” or “brute-force”
`
`search systematically compares the work with each record in a database, not all
`
`data within each record, for example:
`
`In computer science, brute-force search or exhaustive search, also
`known as generate and test, is a very general problem-solving
`technique that consists of systematically enumerating all possible
`candidates for the solution and checking whether each candidate
`satisfies the problem’s statement.
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`Ex. 2001—each candidate is checked, not all data within each candidate.
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`In fact, Petitioner’s own declarant twice confirmed that a “non-exhaustive”
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`search searches a subset of “potential matches,” not a subset of “all data within all
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`potential matches”:
`
`Because neighbor searching is computationally intensive, content
`recognition schemes typically employed search algorithms that
`increased efficiency by intelligently searching only a subset of
`potential matches (i.e., ‘non-exhaustive’ algorithms).
`Ex. 1004 (Petitioner’s declaration), ¶12.
`
`to maximize search efficiency, persons skilled in the art routinely
`employed more efficient searches that did not conduct a comparison
`of every single item in a database, sometimes referred to as non-
`exhaustive searches.
`Ex. 1004 (Petitioner’s declaration), ¶43.
`
`As demonstrated below, the Petition fails under either the proper
`
`construction of “non-exhaustive” or under Petitioner’s improper construction that
`
`includes the “all data” clause.
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`B.
`
`“sublinear.”
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`A “sublinear search” (a type of non-exhaustive search) is “a search whose
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`execution time scales with a less than linear relationship to the size of the data set
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`to be searched, assuming computing power is held constant” where the “size of the
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`data set” is the number of potential matches in the data set (i.e., the “number of
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`entries in the search database”—Ex. 1004, ¶54).
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`Petitioner asserts that a “sublinear search” is a “search whose execution time
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`has a sublinear relationship to database size.” Pet. 6.
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`As demonstrated below, the Petition fails under either construction.
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`C.
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` “neighbor” / “near neighbor.”
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`Petitioner asserts that “identify a neighbor” and “identify a near neighbor”
`
`should all be construed to mean “identifying a close, but not necessarily exact,
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`match.” Pet. 5-6 (also construing “neighbor” as “a close, but not necessarily
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`exact, match”).
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`Network-1 defines “identify a neighbor” and “identify a near neighbor” as
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`“(i) as identifying a close, but not necessarily an exact or the closest, match of a
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`feature, (ii) where “close” means a distance or difference that falls within a defined
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`threshold, and (iii) where “feature” means a feature vector, compact electronic
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`representation, or set of extracted features. The parties effectively agree on the
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`first part of Network-1’s construction—“identifying a close, but not necessarily an
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`exact or the closest, match.” The second part clarifies what constitutes a “close”
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`match as required by the ‘237 specification.2 The third part clarifies what is being
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`compared in the various claims of the ‘237 Patent and related patents.
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`As demonstrated below, the Petition fails under either construction.
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`D.
`
`“nearest neighbor.”
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`Petitioner asserts that “near neighbor” and “nearest neighbor” have the exact
`
`same meaning. Pet. 5-6. This is incorrect. While as explained above, “neighbor”
`
`refers to a close, but not necessarily exact or the closest match, a “nearest neighbor,
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`is the closest, but not necessarily exact match. ‘237, 9:14-15 (“A nearest neighbor
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`search always finds the closest point to the query”).
`
`“When different words or phrases are used in separate claims, a difference in
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`meaning is presumed.” Nystrom v. Trex Co., 424 F.3d 1136, 1143 (Fed. Cir.
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`2005). “Near” and “nearest” have related but not identical meanings and Petitioner
`
`disregards this distinction. Moreover, Petitioner and its declarant provide no
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`2
`The ‘237 specification describes “neighbor” searches as determining a match
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`(or lack of match) based on a threshold. See e.g., ‘237, 6:38-40 (“If a match, or a
`
`match within a predetermined threshold is determined, then the associated work
`
`identifier 116 is read.”); id., 22:4-6 (“if the distance between the query and the
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`nearest neighbor exceeds a threshold, then they are considered not to match.”)
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`evidence, support, or reasoning for its unsupported assertion that “near” and
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`“nearest” have identical meanings.
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`E. “approximate nearest neighbor search”
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`Petitioner fails to provide any construction of “approximate nearest neighbor
`
`search” and therefore fails to satisfy its burden as to the claims that include this
`
`phrase. The controlling statute mandates that a petition for IPR “may be
`
`considered only if ... the petition provides such other information as the Director
`
`may require by regulation.” 35 U.S.C. § 312. The controlling regulation states
`
`that “the petition must set forth ... how the challenged claim is to be construed.”
`
`37 C.F.R. § 42.104(b)(3). The Petition fails to identify any construction of the
`
`phrase “approximate nearest neighbor search.” Pet. 1-53. Accordingly, the
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`Petition should be rejected at the threshold with respect to claims 9 and 13 (and
`
`claims dependent on these claims) that includes this phrase.
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`The specification of the ‘237 Patent states that the claimed “approximate
`
`nearest neighbor search” is a sub-linear neighbor search, that does not always find
`
`the closest point to the query—i.e., does not always find the closest match:
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`One example of a sub-linear time search is an approximate nearest
`neighbor search. A nearest neighbor search always finds the closest
`point to the query. An approximate nearest neighbor search does not
`always find the closest point to the query. For example, it might do so
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`with some probability, or it might provide any point within some
`small distance of the closest point.
`‘237, 9:12-19.
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`IV. Ground 1: Anticipated by Iwamura (Ex. 1012) fails.
`
`A. Overview of Iwamura.
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`Iwamura discloses a “method to enable one to search for a song title when
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`only its melody is known.” Iwamura, Abstract. “A remote music database with
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`melody information is searched for the melody entered by the user, using for
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`example, a peak or differential matching algorithm.” Iwamura, Abstract.
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`The searching process disclosed in Iwamura is exhaustive rather than the
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`claimed “non-exhaustive,” “sublinear,” or “approximate nearest” search. Iwamura
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`discloses a searching algorithm that is designed to be more efficient than
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`alternatives by matching up peak notes from the reference with the peak notes in
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`the database when comparing the data. “Peak notes are also detected and marked
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`when the data base is built.” Iwamura, 6:59-60. “A fast search is performed by
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`using a peak or differential matching algorithm.” Iwamura, 12:1-2.
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`While the individual comparisons of a work and a record in the library can
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`be more efficient using the “peak note” approach disclosed in Iwamura (“search
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`speed can be increased”), in doing so each record in the library is searched as part
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`of the disclosed algorithm and “[t]he reference melody that gives the least
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`difference is returned as a search result.” Iwamura, 7:53-55.
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`Case No. IPR2015-00345
`U.S. Patent No. 8,205,237
`Patent Owner’s Preliminary Response
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`B. Ground 1 fails because Iwamura does not disclose the claimed
`“non-exhaustive,” “sublinear,” and “approximate nearest” search
`limitations.
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`Each independent claim of the ‘237 Patent includes a claimed a non-
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`exhaustive, sublinear, or approximate nearest element:
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` “sub-linear time search” (claims 1 and 5);
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` “approximate nearest neighbor search” (claims 9 and 13);
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` “nonexhaustive search … to identify a near neighbor” (claims 25); or
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` “sublinear approximate nearest neighbor search” (claim 33).
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`1.
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`Iwamura does not disclose the claimed non-exhaustive,
`sublinear, or approximate nearest elements but rather
`teaches an exhaustive, linear search.
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`Iwamura discloses an exhaustive, linear searching algorithm that is designed
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`to be more efficient than alternatives by comparing peak notes from the reference
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`with the peak notes in the database. Iwamura, 6:59-60, 12:1-2. While the
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`individual comparisons of a work to a record in the library can be more efficient
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`using this approach, Iwamura does not teach an algorithm that avoids an
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`exhaustive search. Instead, each melody in the melody database is processed as
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`part of the disclosed comparison and “[t]he reference melody that gives the least
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`different is returned as a search result.” Iwamura, 7:53-55. Because the search
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`algorithm disclosed in Iwamura does not reduce the number of records to be
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`Case No. IPR2015-00345
`U.S. Patent No. 8,205,237
`Patent Owner’s Preliminary Response
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`searched during a search but rather speeds up the comparison of the work to each
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`record by matching peaks, the disclosed algorithm searches all records in the
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`library and the computational time that the disclosed search takes to make such
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`comparisons grows linearly with the number of records in the database.
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`Accordingly, Iwamura teaches:
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` an exhaustive search rather than the claimed “non-exhaustive” search,
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`because it searches all records in the database;
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` a linear search rather than the claimed “sublinear” search, because the
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`computational time that it takes to perform a search grows linearly as new
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`records are added to the database; and
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` a nearest neighbor search, rather than the claimed “approximate nearest
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`neighbor search” because Iwamura teaches that the melody that “gives the
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`least difference is returned as a search result” (Iwamura, 7:52-55; ‘237, 9:14-
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`17).
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`The Petition (and corresponding declaration) fails to apply its constructions
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`of “sublinear,” “non-exhaustive,” or “approximate nearest neighbor” (or any other
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`constructions) to Iwamura. Accordingly, Petitioner fails to satisfy its burden of
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`demonstrating that Iwamura anticipates because it fails to “map the construed
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`claim language to the teachings of the asserted prior art references.” International
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`Case No. IPR2015-00345
`U.S. Patent No. 8,205,237
`Patent Owner’s Preliminary Response
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`Securities Exchange v. Chicago Board Options Exchange, IPR2014-00097, Paper
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`12 at 26 (PTAB May 22, 2014).
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`2.
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`Response to Petitioner’s arguments.
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`As support for the claimed non-exhaustive, sublinear, and approximate
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`nearest search elements, Petitioner (and corresponding declaration) makes several
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`assertions, none of which satisfy Petitioner’s burden of demonstrating that
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`Iwamura discloses these claimed elements.
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`“non-exhaustive search” (claim element 25(b)): Petitioner makes two
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`assertions which are addressed in turn.
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`Petitioner’s Assertion 1: “Iwamura further discloses non-exhaustive search
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`algorithms using ‘peak notes’ (6:31-7:55), which ‘are approximately 20% of the
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`total number of notes in a typical melody,’ meaning ‘search speed using peak notes
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`is 20% of a brute force search’ (9:9-10).” Pet. 15.
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`Under the proper construction of “non-exhaustive,” these passages from
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`Iwamura do not disclose a non-exhaustive search because they do not state or
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`suggest that all references in the music library are not used in the comparison.
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`Rather, all reference melodies are compared and “[t]he reference melody that gives
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`the least difference is returned as a search result.” Iwamura, 7:52-55.
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`Case No. IPR2015-00345
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`Patent Owner’s Preliminary Response
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`Moreover, even using the “all data” clause in Petitioner’s improper
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`construction—a non-exhaustive “search … locates a match without conducting a
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`brute force comparison of … all data within all possible matches,”—the algorithm
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`disclosed in Iwamura still falls under this definition because it compares “all data
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`within all possible matches.” First, in implementing the comparison disclosed in
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`Iwamura, every piece of data in every potential match must be analyzed to
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`determine if it is a peak note—there is no way to identify the peak notes without
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`analyzing every data point. See, e.g., Iwamura 7:1-4. Second, when comparing a
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`song to be identified with each potential match, the peaks of the song to be
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`identified are lined up with the peaks of the reference work to expedite the
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`comparison: “In this manner, the entered melody is shifted to each peak in each
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`reference melody and compared.” Iwamura, 7:52-55. But in doing so, this does
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`not mean that only the peaks from the work to be identified are compared to the
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`reference work. Rather, once the peaks are lined up, both the peaks and valleys
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`(all data) is compared.
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`Petitioner’s Assertion 2: “The search is further non-exhaustive because it
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`can be accelerated