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`247. The Petition, Declaration, and corresponding charts fail to
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`demonstrate that Ghias discloses the claimed “approximate nearest neighbor
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`search.” The Petition and corresponding declaration assert that Ghias discloses the
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`“approximate nearest neighbor search” because it produces:
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`(1) “a ranked list of approximately matching melodies” (labeled
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`); or
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`(2) “the single most approximate matching melody”(labeled ):
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`248. Petition:
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`Pet. (‘237) at 42.
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`249. Petition Charts:
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`Claim 9(b):
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`Pet. (‘237) at 45.
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` NETWORK-1 EXHIBIT A2005
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`247. The Petition, Declaration, and corresponding charts fail to
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`demonstrate that Ghias discloses the claimed “approximate nearest neighbor
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`search.” The Petition and corresponding declaration assert that Ghias discloses the
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`“approximate nearest neighbor search” because it produces:
`
`(1) “a ranked list of approximately matching melodies” (labeled
`
`); or
`
`(2) “the single most approximate matching melody”(labeled ):
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`248. Petition:
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`Pet. (‘237) at 42.
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`249. Petition Charts:
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`Claim 9(b):
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`Pet. (‘237) at 45.
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`Claim 13(b.2) (referencing claim element 9(b)):
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`Pet. at 46.
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`250. Declaration:
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`Moulin Decl. (‘237) ¶124.
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`251. Declaration Charts:
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`Claim 9(b):
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`Moulin Decl. (‘237) ¶127.
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`Claim 13(b.2) referencing claim element 9(b)):
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`Moulin Decl. (‘237) ¶127.
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`252. One skilled in the art would understand that neither of the cited
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`passages discloses the claimed “approximate nearest neighbor search” because, as
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`described above, both the ranked list and single most approximate matching
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`melody always identify the closest match. I address each passage in turn:
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`253. Passage 1:
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`Ghias, 2:50-59. As noted in the Petition and Declaration, this passage states that
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`the search “outputs a ranked list of approximately matching melodies, as illustrated
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`at 26” or “the single most approximate matching melody.” As I explained above,
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`neither approach discloses the claimed “approximate nearest neighbor search.” An
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`“approximate nearest neighbor search” must identify “a close, but not necessarily
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`exact or closest, match” Section V(D); Decision (‘237) at 8. Both outputs
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`disclosed in this passage necessarily disclose an exact or the closest match and,
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`therefore, are not an “approximate nearest neighbor search.”
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`254. Passage 2:
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`Ghias, 6:60-63. This passage also does not disclose a neighbor search. As I
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`explained above, a “list of songs ranked by how well they matched the query”
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`necessarily identifies an exact or the closest match, and specifically identifies such
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`a song as the top-ranked song.
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`255. Moreover, under the proper construction of “approximate nearest
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`neighbor search,” the search must be a sub-linear search. ‘237, 9:12-19 (an
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`approximate nearest neighbor search is an “example of a sub-linear time search”);
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`Section V(D). As demonstrated above, these passages disclose a linear (rather than
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`sublinear) search.
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`
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`256. Board’s concerns: I now address the Board’s specific concerns
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`(identified in its Decision) with respect to whether Ghias discloses the claimed
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`“approximate nearest neighbor search.” In instituting Ground 2 of the ‘237 IPR,
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`the Board found that Ghias disclosed the “approximate nearest neighbor search”
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`because the error-tolerance search disclosed in Ghias “allows the user to identify
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`sets of songs that contain similar melodies:”
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`Decision (‘237) at 18-19. The Board did not explain, however, how “Ghias makes
`
`clear” that the search in Ghias will “identify[] a close, but not necessarily exact or
`
`closest, match” as required by an “approximate nearest neighbor search.”
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`
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`257. The Board noted that using an “error-tolerance,” the user can adjust
`
`the number of output matches (“The number of matches that the database 14
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`should retrieve depends upon the error-tolerance used during the key search.”
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`Ghias, 6:63-65); and a new query can be performed on the restricted list (“If the
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`list is too large, the user can perform a new query on a restricted search list
`
`consisting of songs just retrieved.” Ghias, 7:5-8). But nothing in these passages or
`
`anywhere else in Ghias states or even suggests that the output of the initial list or
`
`the output of the restricted search will “identify a close, but not necessarily exact or
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`closest, match.” As I explained above, no such search is expressed in Ghias or is
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`inherent (i.e., necessarily present). Rather, the search will always (“necessarily”)
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`identify an exact or closest match. Accordingly, Ghias does not disclose the
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`claimed “approximate nearest neighbor search.”30
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`C.
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`‘237 Ground 3: The instituted claims of the ‘237 patent are not
`obvious over Iwamura and Chen.
`
`258. It is my understanding that if a combination of two references fails to
`
`teach an important claimed element, it is not possible for that combination to
`
`render the claim obvious. That is, assuming one of ordinary skill would have
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`thought to combine prior art references, those references would still be missing an
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`important element and therefore, even with the combination, one of ordinary skill
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`would still not possess the invention.
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`259. Any combination of Iwamura with Chen would still be missing the
`
`same elements addressed above in Ground 1.
`
`260. Ground 3 is directed to only dependent claims 26 and 27 which
`
`depend either directly or indirectly on independent claim 25; and claims 34 and 35
`
`which depend either directly or indirectly on independent claim 33. Pet. (‘237) at
`
`30 An approximate nearest neighbor search could miss one or more of the
`
`closest matches in the returned search results. The searches disclosed in Ghias
`
`never purport to miss one or more of the closest matches in the returned results.
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`53-56; Decision (‘237) at 22. Ground 3 presents two alternative grounds—that the
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`dependent claims “are obvious over Iwamura alone, or alternatively, over Iwamura
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`in view of Chen.” Pet. (‘237) at 53.
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`261. As I demonstrated above, Iwamura does not disclose key elements
`
`from the independent claims upon which Ground 3 is based (claims 25 and 33)
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`including:
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`(cid:120) “non-exhaustive search … to identify a near neighbor” (claim 25(b.2); and
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`(cid:120) “approximate nearest neighbor search” (claim 33(b.2)).
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`I note that Petitioner does not rely on Chen for these elements. Pet. (‘237) at 53-
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`56; Moulin Depo. 371:17-20 (addressing sublinear); Moulin Depo. 372:2-4
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`(addressing non-exhaustive); Moulin Depo. 372:5-7 (addressing approximate
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`nearest neighbor search).
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`262. Moreover, I note that Petitioner does not assert that these missing
`
`elements are obvious in light of Iwamura but rather continues to assert that they are
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`expressly disclosed in Iwamura. See e.g., Pet. (‘237) 54 (“For the reasons
`
`expressed in Ground 1 [anticipation based on Iwamura], Iwamura discloses all
`
`elements of claims 25 and 33.”). Accordingly, Ground 3 fails at least because the
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`elements from the independent claims addressed above are missing from Iwamura
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`and the Petition does not identify any basis for correcting these deficiencies based
`
`on either Iwamura or Chen.
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`VII. ‘988 patent.
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`263. The Board instituted the ‘988 IPR based on three Grounds:
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`(cid:120) Ground 1: Claims 15–17, 21–23, 28, 31, and 51 under 35 U.S.C. § 102(b) as
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`anticipated by Ghias;
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`(cid:120) Ground 2: Claims 22, 24–26, and 52 under 35 U.S.C. § 103(a) as obvious
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`over Ghias; and
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`(cid:120) Ground 3: Claims 15–17, 21, 23, 27, 28, 31–33, 38, and 51 under 35 U.S.C.
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`§ 102(e) as anticipated by Iwamura;
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`Decision (‘988) at 22. I note that the only instituted independent claim is claim 15.
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`I address each Ground in turn.
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`A.
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`‘998 Ground 1: The instituted claims of the ‘988 Patent are not
`anticipated by Ghias.
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`264. The single independent claim of the ‘988 patent instituted for trial
`
`requires a “non-exhaustive search identifying a neighbor.” ‘988, claim 15. Ghias
`
`does not disclose (1) a non-exhaustive search, (2) a search identifying a neighbor,
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`or (3) determining an action based on the identification. I address each deficiency
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`in turn.
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`1.
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`non-exhaustive search (claim element 15(b)).
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`
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`265. As I explained above in detail (Section V(B)), a “non-exhaustive
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`search” is “a search that locates a match without a comparison of all possible
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`matches.”
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`266. One skilled in the art would understand that Ghias teaches an
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`exhaustive search that compares the work to be identified (user input 23) with “all
`
`the songs” in the database—i.e., “all possible matches.” One skilled in the art
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`would understand that all “possible matches” in the system disclosed in Ghias are
`
`all of the songs in the database. My understanding is confirmed by Petitioner’s
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`Declarant:
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`Moulin Depo. 325:19-22. Ghias discloses a search that compares the work to be
`
`identified (“user input”) with all possible matches—“all the songs” in the database:
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`Ghias, 5:66-6:2. As Petitioner’s Declarant acknowledged when addressing the
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`paragraph from Ghias quoted above:
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`Moulin Depo. 339:23:-340:5.
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`Moulin Depo. 340:6-9.
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`Moulin Depo. 323:4-13.
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`267. The user input (23) is not compared with some songs in the melody
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`database (14); rather, it “is compared with all the songs.” Ghias does not disclose a
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`search algorithm that does not compare the query to every record in the reference
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`data set. Petitioner’s Declarant confirmed my understanding—that the search
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`disclosed in Ghias compares the song to be identified with each record in the
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`database and is therefore not “non-exhaustive”—“a search that locates a match
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`without a comparison of all possible matches” (Section V(B)); Decision (‘998) at
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`7):
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`Moulin Depo. 327:3-12.
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`Moulin Depo. 327:14-328:4.
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`268. The Petition and corresponding Declaration fail to demonstrate that
`
`Ghias discloses a non-exhaustive search.
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`269. Petition: As support for the claimed “non-exhaustive search,” the
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`Petition relies on the following assertions (and corresponding references to Ghias)
`
`labeled
`
`and
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`:
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`Pet. (‘988) 9-10.
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`270. Petition Charts: The charts in the Petition rely on the same assertions
`
`and passages from Ghias: Petitioner’s chart for claim 15, element [c] incorporates
`
`the chart for claim 1, element [c]:
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`Pet. (‘988) at 14. The chart for claim 1, element [c], in turn, provides:
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`Pet. (‘988) at 12.
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`271. Declaration: Petitioner’s Declaration relies on the same assertions
`
`and passages from Ghias:
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`Moulin Decl. (‘988) ¶¶69-70.
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`272. Declaration Charts: Finally, the charts in the Declaration also rely on
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`the same assertions and passages from Ghias:
`
`Moulin Decl. (‘988) ¶75.
`
`273. These are the only passages from Ghias cited by the Petitioner and
`
`Declarant to support the sub-linear claim elements. Moulin Depo. 113:15-21. The
`
`assertions relating to these passages fails to: (a) apply Petitioner’s construction (or
`
`any other construction) of non-exhaustive to Ghias; or (b) explain how an
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`“approximate string matching algorithm” is expressly or inherently a non-
`
`exhaustive search. One skilled in the art would understand that neither the
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`assertions nor the passages from Ghias disclose the claimed non-exhaustive search.
`
`I address each in turn.
`
`274. Passage 1:
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`Ghias, 6:7-11. First, this passage does not state that the algorithm is not
`
`guaranteed to yield a match (as interpreted by Petitioner). Second, and more
`
`importantly, the described algorithm does not state (or even suggest) that all
`
`possible matches in the database are not searched. The passage does not state that
`
`all matches are not considered, or even that all data in all possible matches is not
`
`considered. My understanding is confirmed by Petitioner’s Declarant:
`
`Moulin Depo. 347:13-17.
`
`275. Passage 2:
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`Ghias, 6:23-35. One skilled in the art would understand that the “approximate
`
`string matching” algorithms discussed in this passages involve matching a work
`
`with a record in the database, where the work to be identified includes an “error”
`
`so that “various forms of errors” would not prevent a proper match from being
`
`identified. The “approximate string matching” algorithm is applied when the work
`
`melody “is compared with all the songs” in the database and all of the data within
`
`each record. Ghias, 5:66-6:2; Moulin Depo. 347:13-17. This passage discusses
`
`comparing the work with a single record in the database.
`
`276. Accordingly, Ghias does not disclose a search that would even meet
`
`Petitioner’s improper construction of “non-exhaustive search,” because Ghias does
`
`not search less than “all possible matches” or even less than “all data within all
`
`possible matches.”
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`277. I observed that Petitioner only cited the two passages quoted above as
`
`support that Ghias discloses the claimed non-exhaustive search. Petitioner’s expert
`
`confirmed my observation:
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`Moulin Depo. 332:17-333:2. As I demonstrated above, these two passages fail to
`
`disclose the claimed non-exhaustive search. Accordingly, Petitioner failed to
`
`satisfy its burden of establishing that Ghias discloses the claimed non-exhaustive
`
`search.
`
`278. Moreover, Petitioner’s expert confirmed that other passages from
`
`Ghias cited in his Declaration—in an attempt to establish other claimed elements—
`
`also do not establish the claimed non-exhaustive search. Moulin Depo. 330:19-
`
`331:24; 239:22-25 (2:50-52 “does not teach excluding a portion of the database
`
`from our search”); Moulin Depo. 330:15-18 (2:50-52 (“Q. Does Ghias have any
`
`portion in where it teaches affirmatively searching only part of the database. A.
`
`Not in that sentence, no.”); Moulin Depo. 330:1-14 (2:50-52 (the “natural
`
`inference” from the statement that the “query engine 24 searches the melody
`
`database 14” is that “it’s going to search the entire database”); Moulin Depo.
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`334:2-21 (Q. “[D]oes Ghias teach looking at only a portion of the database? ... A.
`
`It does not do that in this paragraph.”); Moulin Depo. 337:7-338:17.
`
`279. Board’s concerns: I now address the Board’s specific concerns
`
`(identified in its Decision in the ‘988 IPR) with respect to whether Ghias discloses
`
`the claimed non-exhaustive search. I note that in instituting Ground 2, the Board
`
`did not rely on the arguments presented by Petitioner and its Declarant or the
`
`passages from Ghias quoted by Petitioner and its Declarant in an attempt to
`
`establish the claimed non-exhaustive search. Instead, the Board initially found that
`
`Ghias disclosed the “non-exhaustive” search because the search disclosed in Ghias
`
`could produce a list of matches based on an error-tolerance and the user can
`
`perform a “new query on a restricted search list consisting of songs just retrieved:”
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`Decision (‘988) at 12. There are two reasons why the Board’s reliance on the
`
`“new query on a restricted search list” does not satisfy Petitioner’s burden of
`
`demonstrating that the instituted clams are unpatentable based on Ghias.
`
`280. First, had the concept of a new second search based on the restricted
`
`list (and these passages from Ghias cited by the Board) disclosed the claimed “non-
`
`exhaustive search” (as I demonstrated below, they do not), it is my understanding
`
`that it could be improper for the Board to rely on these passages in finding the
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`challenged claims unpatentable because these passages were not identified by the
`
`Petitioner as support for the non-exhaustive search.
`
`281. I note that Petitioner never asserted (in the Petition, charts, or
`
`Declaration) that Ghias discloses a non-exhaustive search because the “user can
`
`perform a new query on a restricted search list consisting of songs.” The Petition
`
`does not even mention the words or concepts emphasized by the Board in its
`
`Decision and that form the basis for the Board’s preliminary finding that Ghias
`
`discloses a non-exhaustive search: “error-tolerance” and “restricted search list
`
`consisting of songs just receive.” The only references to Ghias presented by the
`
`Petitioner for the claimed non-exhaustive search are Ghias, 6:7-11 and 6:23-35
`
`addressing approximate string matching, not performing a “new query on a
`
`restricted search list consisting of songs just retrieved” based on an error tolerance.
`
`Petitioner’s Declarant did not “cite anything in [his] Declaration that teaches, in
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`Ghias, performing a search that returns a list of ranked matching songs and then
`
`performing a second search on that list.” Moulin Depo. 146:21-147:21.
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`
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`282. I note that the Board, however, relied exclusively on two completely
`
`different passages from Ghias not cited by Petitioner—Ghias, 6:63-65 and 7:5-8.
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`Decision (‘988) at 12. One skilled in the art would understand that these passages
`
`address a different concept than the approximate pattern matching concept
`
`identified by Petitioner as support for the nonexhaustive search element.
`
`283. Second, using a “new query” on the “restricted search list consisting
`
`of songs just received” does not disclose the claimed “non-exhaustive search.” A
`
`“non-exhaustive search” is “a search that locates a match without a comparison of
`
`all possible matches.” See Section V(B), ¶¶X. The restricted search can be viewed
`
`in one of two ways.31 Under either view, Ghias does not disclose a non-exhaustive
`
`search. I address each view in turn.
`
`284. First view: Under the first view, the search to identify the record that
`
`matches the song being hummed is viewed as a single search with two stages.
`
`Under this view, the second search on the “restricted list” is not an independent
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`search—the two stages of the search are not independent. Rather, the search on the
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`31 Ghias provides no details or information about the search on the restricted
`
`search list.
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`“restricted list” is the second stage of a two-stage search, dependent on the first
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`stage. See Moulin Depo. 336:9-15. The second search depends on the first to
`
`generate a candidate set. A single work, i.e., the song being hummed (not two or
`
`more works), is being identified in the two-stage search. The two stages refine the
`
`identified matches; the second stage does not identify any new matches.
`
`285. To constitute a “non-exhaustive search” under this view, the two-
`
`stage search process disclosed in Ghias would have to conduct the search without
`
`comparing the work to be identified with all possible matches in the dataset. One
`
`skilled in the art would understand that the two-stage search disclosed in Ghias is
`
`exhaustive because the first stage compares the query to all possible matches in the
`
`dataset —“all the songs.” Ghias, 5:66-6:2. My understanding is confirmed by
`
`Petitioner’s Declarant:
`
`Moulin 336:3-336:12.
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`Moulin Depo. 338:6-14.
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`286. Under this view, the query on a restricted search list is part of a
`
`broader search of every record in the database, which compares the work to be
`
`identified with all possible matches—all records in the data set.
`
`287. Second view: Alternatively, the second search could be viewed as an
`
`independent second search. As disclosed in Ghias, the second search is based on a
`
`“new query”—“the user can perform a new query on a restricted search list.”
`
`Ghias, 7:4-8. The two searches, the first based on an initial query, and the second,
`
`based on a second “new query,” is reflected in this illustration:
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`To refine the list of potential matches, the “new query” (2) disclosed in Ghias must
`
`be different from the original query (1). This is because Ghias does not teach an
`
`alternative search algorithm for searching the restricted list. Rather, Ghias teaches
`
`that the same search algorithm is applied to the “new query” (2) that was
`
`previously applied to the initial query (1). If the initial query (1) is applied to the
`
`restricted list using the same algorithm, the search would produce the same
`
`restricted list rather than refine the search as intended by Ghias.32 Although the
`
`32
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`If the query remains constant—the query is not changed—but a different
`
`algorithm is applied to the restricted list, this would constitute a single search with
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`details of the new query are not disclosed, the new query (2) could theoretically be,
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`e.g., (a) a different portion of the same song, or (b) a better hummed version of the
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`same portion of the same song.
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`288. If the second new query is viewed as a second separate search, each
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`independent search would be exhaustive because (a) as I explained above, the
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`initial search compares the query to all possible matches in the database—“all the
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`songs” (Ghias, 5:66-6:2; Moulin Depo. 336:9-15) and (b) the restricted search also
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`compares the query to all “possible matches” because the search compares the new
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`query to all potential matches (illustrated by green dataset in the diagram above).
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`The records that are not on the restricted list (i.e., in the blue dataset but not the
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`green dataset) are not “possible matches” for the restricted search. The first search
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`excludes from the list of ranked songs those songs that are not possible matches
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`such that the “restricted search list” comprises “all possible matches.” Moulin
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`Depo. 336:13-327:6; 335:13-336:12.
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`289. The only algorithm Ghias teaches for conducting a search is to
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`compare a query statement against every record in the data set against which the
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`algorithm is to be run—and is thus always an exhaustive search. Accordingly,
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`two stages because the query does not change (i.e., the first view I addressed
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`above).
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`whether the two-stage search is viewed as a single search or two separate searches,
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`the searches compare the work to be identified with “all possible matches” and are
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`therefore exhaustive searches.
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`290. The Board also noted that if Ghias disclosed an exhaustive search,
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`Ghias would still disclose this element if Ghias also disclosed a non-exhaustive
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`search:
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`Decision (‘988) at 12. Because, as I described above, Ghias does not disclose any
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`non-exhaustive search, Ghias does not anticipate.
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`2.
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`search identifying a neighbor (claim element 15(b)).
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`
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`291.
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`In instituting Ground 1, the Board did not specifically find that Ghias
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`disclosed a search identifying a neighbor. Decision (‘988) at 12.
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`292. As I explained in detail above, a search identifying a neighbor means
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`a search identifying “a close, but no necessarily exact or closest, match.” Section
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`V(C) ¶¶X; Decision (‘988) at 12.
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`293. As I explained above in detail, Ghias does not disclose a search that
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`identifies a neighbor because the searches disclosed in Ghias always identify an
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`exact or the closest match. Ghias teaches a search that generates three possible
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`outputs:
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`(1) an exact match (Ghias 2:53-59 (“exact matching melody”));
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`(2) a “ranked list of approximately matching melodies” (Ghias, 2:50-59;
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`Ghias, 6:60-63 (“a list of songs ranked by how well they matched the
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`query”); Moulin Depo. 118:9-22); or
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`(3) “the single most approximate matching melody” (Ghias, 2:50-59).
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`As I demonstrated above, for each output, the Ghias search necessarily identifies
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`an exact or closest match. Moulin Depo. 352:22-353:2. Accordingly, Ghias does
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`not disclose a search “identifying a neighbor.”
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`294. The Petition and corresponding Declaration fail to demonstrate that
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`Ghias discloses a search “identifying a neighbor.”
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`295. Petition: As support for the claimed “identifying a neighbor,” I note
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`that the Petition relies on the following:
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`Pet. (‘988) 10.
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`296. Petition Charts: The charts in the Petition the same assertions and
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`passages from Ghias:
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`187
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`Petitioner’s chart for claim 15, element [c] incorporates the chart for claim 1,
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`element [c]:
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`Pet. (‘988) at 14. The chart for claim 1, element [c], in turn, provides:
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`Pet. (‘988) at 12.
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`297. Declaration: Petitioner’s Declaration relies on the same assertion and
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`passages from Ghias:
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`188
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`Moulin Decl. (‘988) ¶¶69-70.
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`298. Declaration Charts: Finally, the charts in the declaration also rely on
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`the same two assertions and the same two passages from Ghias:
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`Moulin Decl. (‘988) ¶75.
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`299. Neither the assertions nor the passages from Ghias disclose the
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`claimed non-exhaustive search because, as described in detail above, both the
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`ranked list and single most approximate matching melody outputs always identify
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`the closest match.
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`3. determining an action based on the identification (claim
`element 15(c)).
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`300. The instituted claims are not anticipated by Ghias because the Petition
`
`fails to demonstrate that Ghias discloses “determining an action based on the
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`identification of the electronic work” and “performing the action.”
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`301. Claim 15—the only instituted independent claim—claims a method
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`comprising four steps. Steps (b) through (d) are:
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`As reflected in the claim, “determining an action” in step (c) and “performing the
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`action” in step (d) must be based on the “identification of the electronic work”
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`from step (b).
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`302.
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`It is my understanding that the third and fourth steps—(c) determining
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`an action based on the identification, and (d) performing the action—must have
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`meaning beyond that encompassed by step (b) “determining an identification”
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`because all limitations in a claim must be considered meaningful.
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`303. The Petition asserts that Ghias discloses step (c)—“determining an
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`action based on the identification”—in two ways:
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`(1) “using the result of a search to determine the potential matches;” and
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`(2) “allowing the user to perform a ‘new query on a restricted search list
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`consisting of songs just retrieved.”
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`Pet. (‘988) at 10; 12; Moulin Decl. (‘988) ¶¶71, 75. Neither discloses “determining
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`an action based on the identification” for at least two reasons.
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`304. First, according to Petitioner, both (a) “determin[ing] the potential
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`matches,” and (b) performing a search on a restricted list constitute the second step
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`(b)—“determining an identification of the electronic work.” In claim 15,
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`determining the action must be “based on the identification.” Accordingly, the
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`system must first identify the electronic work, and then, based on the identity of
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`the work, “determine an action.”
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`(1) “[D]etermine the potential matches” is part of “determining an
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`identification of the electronic work” and therefore cannot be an action
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`based on the identification of the electronic work.
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`(2) Similarly, performing a search on a restricted list of potential matches is
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`identified as part of “identification of the electronic work.”
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`See Decision (‘988) at 12 (“Ghias provides that ‘[t]he number of matches that the
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`database 14 should retrieve depends upon the error-tolerance used during the key-
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`search.’ Ex. 1010, 6:63–65 (emphasis added). Ghias further provides that ‘the user
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`can perform a new query on a restricted search list consisting of songs just
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`retrieved. This allows the user to identify sets of songs that contain similar
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`melodies.’ Id. at 7:5–8 (emphasis added).”) If the search on the restricted list is
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`part of the search identifying the match, it cannot also be the action based on that
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`search. Accordingly, the Petition fails to identify steps (c) and (d) in Ghias.
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`305. Second, Ghias does not determine an action “based on the
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`identification of the electronic work.” One skilled in the art would understand that,
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`to be “based on” the identification, the action must depend upon the identification.
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`In Ghias, the actions identified by Petitioner are performed independent of the
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`identification.
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`(1) “[D]etermine the potential matches” is part of the process of identifying
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`the work and therefore is not based on the identification of the electronic
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`work.
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`(2) Similarly, performing a search on a restricted list of potential matches is
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`not based on the identification of the work.
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`Rather, whether a new query is performed on a restricted search list is solely a
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`consequence of the number of potential matches, not the identity of the matches.
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`Thus, this action performed by Ghias is the same regardless of the identity of the
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`electronic work.
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`B.
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`‘988 Ground 2: The instituted claims of the ‘998 patent are not
`obvious over Ghias.
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`
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`306. Ground 2 relies exclusively on Ghias and is directed to only
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`dependent claims 22, 24-26, and 52, which depend (indirectly) on independent
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`claim 15. Pet. (‘988) at 54-57; Decision (‘988) at 22.
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`
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`307. As I demonstrated above, Ghias does not disclose elements from the
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`independent claim upon which Ground 2 is based (claim 15) including:
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`(cid:120) “non-exhaustive search identifying a neighbor” (claim element 15(b));
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`(cid:120) “electronically determining an action based on the identification of the
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`electronic work” (claim element 15(c)); and
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`(cid:120) “electronically performing the action” (claim element 15(d)).
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`308. In Ground 2, Petitioner (and the Board) do not assert that these
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`missing elements are obvious in light of Ghias but rather assert that these missing
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`elements are expressly disclosed in Ghias. See e.g., Pet. (‘988) at 55 (“For the
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`reasons expressed in Ground 1 [anticipated by Ghias], Ghias discloses all elements
`
`of claims 1 and 15.”). Accordingly, Ground 2 fails because the elements from the
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`193
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