`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VERANCE CORP.,
`Petitioner,
`
`v.
`MZ AUDIO SCIENCES, LLC,
`Patent Owner.
`____________
`
`IPR2022-01544
`Patent 7,289,961 B2
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`D.
`
`PETITIONER FAILS TO DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS .................................................. 1
`A.
`Cabot Teaches Away from the Proposed Combinations ...................... 1
`B.
`Petitioner Distorts the Teachings of Srinivasan .................................... 3
`C.
`Petitioner Cannot Strip Away the ’961 Patent’s Emphasis on
`Hiding Data ........................................................................................... 5
`Petitioner Ignores the Fact that a POSA Would Not Have
`Believed Petitioner’s Combination Would Have Been
`Beneficial ............................................................................................... 6
`Petitioner’s Attempts to Discredit the POR Fail. .................................. 8
`Petitioner Fails to Overcome Patent Owner’s Showing that
`Kudumakis Teaches Away .................................................................. 10
`Petitioner Fails to Establish Hobson as Analogous Art ...................... 12
`i.
`Hobson Is Not in the Same Field of Endeavor ......................... 13
`ii.
`Hobson Is Not Reasonably Pertinent to the Problem to Be
`Solved ........................................................................................ 15
`Petitioner’s Arguments Concerning Ground 3 Fail ............................ 17
`Petitioner Does Not Adequately Support Its Assertions
`Regarding Tilki .................................................................................... 18
`i.
`Petitioner Is Wrong About Cabot ............................................. 20
`ii.
`Petitioner Again Fails to Explain How a POSA Would
`Implement Its Proposed Combination ...................................... 20
`Petitioner’s “Bit Rate” Arguments Fail .................................... 24
`iii.
`CONCLUSION .............................................................................................. 26
`
`
`
`E.
`F.
`
`G.
`
`H.
`I.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Adidas AG v. Nike, Inc.,
`IPR2016-00922, Paper 31 (P.T.A.B. Feb. 19, 2019) ............................................. 5
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................................ 14
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992 ........................................................................ 15, 16
`Schott Gemtron Corp., v. SSW Holding Co., Inc.,
`IPR2013-00358, Paper 106 (P.T.A.B. Aug. 20, 2014) ........................................ 12
`Securitypoint Holdings, Inc. v. United States,
`129 Fed. Cl. 25 (2016) ......................................................................................... 12
`Unirac, Inc. v. EcoFasten Solar, Inc.,
`IPR2021-00532, Paper 7 (P.T.A.B. July 22, 2021) ............................................... 3
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, Paper 12 (P.T.A.B., Feb. 10, 2023) ............................................ 8
`
`
`
`
`
`
`ii
`
`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Brief Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Excerpts from John Backus, The Acoustical Foundations of
`Music (2nd ed. 1977).
`
`Excerpts from Harry F. Olson, Music, Physics and
`Engineering (2nd ed. 1967).
`
`Excerpts from McGraw-Hill Dictionary of Scientific and
`Technical Terms (6th ed. 2003).
`
`Excerpts from Arthur H. Benade, Fundamentals of Musical
`Acoustics (2nd ed. 1976).
`
`Excerpts from Harvey E. White, Physics and Music: The
`Science of Musical Sound (1980).
`
`Excerpts from Random House Webster’s Unabridged
`Dictionary (2nd ed. 2001).
`
`Excerpts from Glen M. Ballou, Handbook for Sound
`Engineers (3rd ed. 2002).
`
`U.S. Patent No. 6,995,521.
`
`Microsoft Word comparison of the specification text of Ex.
`1005 to the specification text of U.S. Patent No. 6,504,870.
`
`Shah Mahdi Hassan, Breaking down confusions over Fast
`Fourier Transform (FFT), Medium (Apr. 15, 2020),
`https://medium.com/analytics-vidhya/breaking-down-
`confusions-over-fast-fourier-transform-fft-1561a029b1ab
`(last visited July 31, 2023).
`
`Deposition transcript of Dr. Michael Scordilis dated July 28,
`2023.
`
`
`
`iii
`
`
`
`I.
`
`PETITIONER FAILS TO DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS1
`A. Cabot Teaches Away from the Proposed Combinations
`Petitioner’s attempt to summarily dismiss Cabot’s express teachings is
`
`unavailing. As detailed in over ten pages of Patent Owner’s Response, Cabot’s
`
`teachings are diametrically opposed to Petitioner’s theory that a POSA reading
`
`Cabot would understand that phase shifts between fundamental tones and third
`
`harmonics are inaudible and, thus, good frequency candidates to encode data via
`
`phase manipulation. (Paper 27 (“POR”), 23-33.)
`
`Specifically, Patent Owner explained that (1) Cabot does not present the
`
`issue of whether the human ear can detect relative phase shifts as a settled
`
`question; (2) Cabot’s experimental evidence showed that listeners can detect a
`
`wide variety of phase shifts; (3) Petitioner’s arguments glossed over Cabot’s
`
`ultimate conclusion that “[t]he experiment shows phase shifts of harmonic
`
`complexes to be detectable” (POR, 16.); and (4) Cabot tested only five study
`
`participants for their second experiment involving phase shifts of 0 to 22.5 degrees
`
`because the authors “were already satisfied that a difference could be reliably
`
`perceived.” (POR, 27.). On that basis, Patent Owner argued that, while Petitioner
`
`relies on Cabot as purportedly teaching the inaudibility of phase shifts between a
`
`
`1 All emphasis added by Patent Owner unless indicated otherwise.
`
`1
`
`
`
`fundamental tone and third harmonic, Cabot, in fact, teaches away from employing
`
`phase shifts as a data-hiding method. (Id., 28.)
`
`In its two-page response, Petitioner wholly ignores the substance of Patent
`
`Owner’s rebuttal. (Paper 27 (“Reply”), 6-8.) Indeed, Petitioner does not contend
`
`with Cabot’s actual conclusions, teachings, or analysis, mentioning not a single
`
`entry from the table containing Cabot’s test data, despite the fact that the Cabot
`
`reference spans less than five pages in its entirety.
`
`Instead, Petitioner posits that because Cabot’s experiments were conducted
`
`under “pristine laboratory conditions,” a POSA would have disregarded Cabot’s
`
`teachings and found phase shifts to be “inaudible” for small phase changes and
`
`“subtle” at larger phase changes in the context of “real-world conditions.” (Reply
`
`6-7.) But Cabot’s limited observation that phase shifts below 15 degrees were
`
`difficult to hear under what Petitioner characterizes as “pristine” listening
`
`conditions cannot necessarily be translated to Petitioner’s position here that such
`
`phase shifts “would not be noticeable ‘under real-world conditions…’” (Reply, 7.)
`
`Petitioner’s supporting expert analysis does not bridge the gap, offering only
`
`conclusory opinions that a POSA would have interpreted Cabot as Petitioner
`
`posits, without explaining why. (Ex. 1003, ¶¶ 121-124.)
`
`Not only is Petitioner’s argument unsupported by any meaningful analysis
`
`from its expert, but its expert admitted that he had not opined on the audibility of
`
`2
`
`
`
`phase shifts under any other circumstances/conditions other than those in Cabot,
`
`despite Petitioner’s insistence that Cabot’s express teachings can and should be
`
`disregarded outside Cabot’s purported “pristine laboratory conditions.” (Reply, 6.)
`
`Additionally, Petitioner’s failure to even address Cabot’s contrary conclusions—
`
`first in its Petition and again in its Reply—is disqualifying for all Grounds. See
`
`Unirac, Inc. v. EcoFasten Solar, Inc., IPR2021-00532, Paper 7 at 21 (P.T.A.B.
`
`July 22, 2021) (“Petitioner has not sufficiently explained why a person having
`
`ordinary skill in the art would ignore Wentworth’s express teaching . . .”).
`
`Ultimately, Petitioner asks the Board to ignore what was actually found and
`
`presented in Cabot, extrapolate Cabot’s analysis to entirely different conditions
`
`than those in the study (with no meaningful analysis on why such extrapolation is
`
`appropriate), and find that its combination with two or three other references
`
`renders the Asserted Claims obvious. This is an abuse of the inter partes review
`
`procedure and must be rejected.
`
`B.
`Petitioner Distorts the Teachings of Srinivasan
`In numerous instances, Petitioner distorts the plain language of Srinivasan in
`
`an attempt to fill the holes in its proposed combinations—to no avail.
`
`First, Petitioner argues that Srinivasan does not mandate the use of code
`
`frequencies within the 4.8-6 kHz range, pointing to a single instance of the word
`
`“may” and ignoring the remainder of the specification that belies Petitioner’s
`
`3
`
`
`
`position. But even the language Petitioner points to does not support its argument;
`
`it merely states that the code frequencies “may be chosen” from a particular,
`
`delineated range (i.e., 4.8-6 kHz) “so as to create an inaudible wide-band noise
`
`like code.” (Ex. 1005, 7:64-8:5.) The permissive nature of the language relates to
`
`the numerous code frequencies available for use within that range; it does not
`
`teach that any code frequency in any range could be chosen in the context of this
`
`particular system. (Id.) Petitioner’s read of Srinivasan would render the stated
`
`purpose of the disclosed invention—“a system and method for adding an inaudible
`
`code to an audio signal . . .”—meaningless. (See id., 1:6-7; see also id., 8:27-28;
`
`8:35; 8:59-62.)
`
`Petitioner twists other language from Srinivasan to suit its purpose, arguing
`
`that Srinivasan does not teach that its watermarks must be inaudible. (Reply, 4-5.)
`
`As part of Srinivasan’s modification of the phase of spectral component I0 or I1,
`
`the specification discloses different kinds of modulation, including phase
`
`modulation. (Ex. 1005, 11:16-60.) The specification describes, hypothetically, that
`
`where a spectral component undergoes a maximum phase change of 180°, a code
`
`could potentially become audible, but then clarifies: “[i]n practice, however, it is
`
`not essential to perform phase modulation to this extent, as it is only necessary
`
`to ensure that the two components are either ‘close’ to one another in phase or ‘far’
`
`apart.” (Id., 11:41-47.) Petitioner points to this explanation and posits that, as a
`
`4
`
`
`
`result, Srinivasan does not require inaudibility. (Reply, 4-5.) This argument is
`
`nonsensical at best and misleading at worst.
`
`C.
`
`Petitioner Cannot Strip Away the ’961 Patent’s Emphasis on
`Hiding Data
`To skirt the problem of the Petitioner’s references teaching away from its
`
`proposed combination, Petitioner attempts to completely reframe the ’961 Patent.
`
`Specifically, Petitioner suggests that the ’961 Patent is agnostic to audibility and
`
`that Patent Owner has imported a “phantom inaudibility requirement.” (Reply, 9-
`
`10.) But the patent is entitled “Data Hiding via Phase Manipulation of Audio
`
`Signals.” (Ex. 1001, 1:1-2.) The field of the invention states that the patent is
`
`“directed to a system and method for insertion of hidden data into audio signals
`
`and retrieval of such data from audio signals.” (Id., 1:20-22.) The specification
`
`further describes that “[t]he present invention has the advantage over existing
`
`Verance algorithms of being undetectable and robust to blind signal processing
`
`attacks and of being uniquely robust to digital to analog conversion processing.”
`
`(Id., 4:31-34.) The entire purpose of the method for embedding data in audio
`
`signals as disclosed in the phase encoding steps of the Challenged Claims is to
`
`create a resulting audio signal in which the embedded data is hidden (i.e.,
`
`inaudible). (See id., 1:1-2, 1:20-22, 4:31-34.) If interpreted as Petitioner proposes,
`
`the claimed system would be inoperable for its intended purpose. See Adidas AG v.
`
`Nike, Inc., IPR2016-00922, Paper 31 at 46 (P.T.A.B. Feb. 19, 2019) (non-
`
`5
`
`
`
`precedential) (“[C]ombinations that change the ‘basic principles under which the
`
`[prior art] was designed to operate,’ or that render the prior art ‘inoperable for its
`
`intended purpose,’ may fail to support a conclusion of obviousness.”) (citations
`
`omitted). Petitioner tacitly acknowledges its understanding that the ’961 requires
`
`inaudibility. See, e.g., Paper 7 (“Pet.”), 28 (“POSA would have understood it was
`
`unnecessary for inaudibility to place the codes at the ‘edges’ of the fundamental
`
`and its harmonics.”).
`
`Petitioner’s argument that its proposed combination need not produce an
`
`“optimum system” is similarly misplaced. (Reply, 10-11.) Patent Owner does not
`
`contend that Petitioner’s proposed combination would not result in a “perfect”
`
`system, as alleged by Petitioner, but that using a fundamental and third harmonic
`
`as Srinivasan’s code frequencies would contradict the express purpose of
`
`Srinivasan. (POR, 36-41.) Petitioner does not—and cannot—overcome this
`
`fundamental inconsistency between its references.
`
`D.
`
`Petitioner Ignores the Fact that a POSA Would Not Have
`Believed Petitioner’s Combination Would Have Been Beneficial
`Petitioner argues that Patent Owner failed to address the “multiple reasons
`
`
`
`for the proposed modification of Srinivasan [] with Cabot [] and Kudumakis [],
`
`including improved security and robustness.” (Reply, 1.) Not so. For example,
`
`Patent Owner explained in its Response that Kudumakis’s teachings of
`
`“[m]anipulating the weaker spectral components means Kudumakis’s method is
`
`6
`
`
`
`not robust, and the code can be readily removed by, for example, audio
`
`compression.” (POR, 19.) And while Petitioner claims that a POSA would have
`
`been motivated to alter Kudumakis to embed data “in a lower range of frequencies”
`
`to “expand the use of watermarks in telephony and video conferencing
`
`applications,” (Reply, 2.) this allegation impermissibly ignores the fact that
`
`“Kudumakis teaches away from encoding data at the fundamental and overtones,”
`
`(POR, 57.) because Kudumakis discloses that ‘codes are more perceptible if the
`
`notch frequencies coincide with the main frequency component of the signal.”
`
`(POR, 57.) (quotation omitted) (emphasis in original).)
`
`Additionally, Petitioner’s expert admits that a POSA looking to make a
`
`secure, robust watermark would have had “a very strong motivation” to make the
`
`watermark “inaudible so that only the people would need to detect it can detect it
`
`and not a causal listener or an adversary.” (Ex. 2011, 51:4-7, 59:5-60:19.)
`
`Similarly, Srinivasan teaches adding only “an inaudible code to an audio signal.”
`
`(POR, 42 (quoting Ex. 1005, 1:6-7).) Thus, a POSA reading Kudumakis would not
`
`have been motivated to alter its teachings by instead “selecting the fundamental
`
`and its overtone (third harmonic) spanning lower frequency ranges,” in
`
`combination with Srinivasan, since Kudumakis teaches that codes placed within
`
`“the main frequency component” would be “more perceptible.” (Ex. 1007, 3:4-6.)
`
`The same is true for any combination including Cabot, since, as described in the
`
`7
`
`
`
`POR and above, Cabot also teaches that Petitioner’s proposed combination would
`
`have resulted in an audible watermark, thus teaching away from Petitioner’s
`
`proposed combination. (See POR, 23-29.)
`
`E.
`Petitioner’s Attempts to Discredit the POR Fail.
`Unable to muster a solid response to the POR, Petitioner instead resorts to
`
`tertiary attacks that fall flat. First, Petitioner criticizes the POR for not being
`
`accompanied by an expert declaration. (Reply, 24.) But as Petitioner’s expert
`
`declaration does nothing more than parrot the Petition, it is entitled to little weight.
`
`Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (P.T.A.B., Feb. 10,
`
`2023) (Precedential) (Director affirming disregard of Petitioner’s expert
`
`declaration that “copies, word-for-word, Petitioner’s conclusory assertions.”).
`
`Moreover, when deposed, Petitioner’s own expert conceded Patent Owner’s
`
`arguments, thus rendering a further declaration providing these points superfluous.
`
`(See, POR, 29-33.) Second, Petitioner criticizes Patent Owner for not including the
`
`entirety of its Q and A with Dr. Scordilis in its briefing. However, it appears that
`
`Dr. Scordilis was coached to include the same rehearsed answers as part of every
`
`question, such that his answers to basic questions were routinely many pages long.
`
`(See, e.g., Ex. 2011, 49:3-56:22 (consisting of a single question and an eight-page
`
`response by Dr. Scordilis).) Thus, as is evident from even the briefest review of Dr.
`
`Scordilis’s transcript, Patent Owner’s quotation of only parts of his answers is a
`
`8
`
`
`
`matter of necessity, given Dr. Scordilis’s propensity toward the verbose, rather
`
`than being “misleading” as Petitioner incorrectly asserts. Third, Petitioner cites
`
`certain testimony from Dr. Scordilis as support for the proposition that Cabot is not
`
`relevant to “typical situations of a listener listening” in the “real-world.” (Reply,
`
`27.) But what Petitioner ignores is that the goal of the patented invention is not to
`
`make a watermark inaudible to the average listener. Rather, the invention aims to
`
`make a watermark inaudible from a sophisticated and trained listener who seeks to
`
`detect and remove the watermark, as Petitioner’s expert admits:
`
`Q. Watermarking technology isn’t geared towards whether the casual
`listener on the street can detect the watermark. Correct?
`
`…
`
`A. Watermark technology is geared towards not being detectable by
`anybody, any listener, whether it’s a casual listener or a noncasual listener or
`even an acoustics expert. It would be desirable that even an acoustics expert
`would not detect audibly the presence of the watermark. That’s a very –
`that’s something that is extremely desirable for any watermarking method.
`
`(Ex. 2011, 76:5-12, see also id. 51:4-7, 59:5-60:19 (“So you don’t want to make it
`
`audible. You want to make it detectable to the system that will detect it and extract
`
`it and do whatever it needs to do with it, but certainly you don’t want to make it
`
`detectable by anybody else or anybody, period.”). And in the case of the trained
`
`listener, Petitioner’s expert further admits that Cabot’s data applies:
`
`9
`
`
`
`Q. So is it your opinion that an ordinary person on the street listening to
`speech, music, et cetera, could, after repeated exposure, increase their ability
`to detect phase changes?
`
`A. Yeah, the category of persons you just described could be trained to
`perform Cabot’s experiment. They could participate in Cabot’s experiment.
`And I would expect that unless they have some hearing problem, some of
`them, and if they have normal hearing, they would perform in a similar
`fashion than those people that took part in Cabots study.
`
`I can tell – I can tell that with certainty now, that particular stimulus.
`
`(Ex. 2011, 42:7-21, see also id. 40:16-42:6 (“A POSA and an average listener,
`
`both these groups of people are not professional listeners. Now, however, if they’re
`
`exposed to audible stimuli for the purpose of, say, evaluating a phase distortion
`
`issue or a phase masking issue or a phase watermarking application, then in this –
`
`in this process they will sharpen their skills.”).)
`
`F.
`
`Petitioner Fails to Overcome Patent Owner’s Showing that
`Kudumakis Teaches Away
`The Reply contends that Patent Owner has misconstrued the proposed
`
`Srinivasan/Cabot/Kudumakis combination by presuming that it alters the phase of
`
`the fundamental tone or employs Kudumakis’s notch coding, denouncing both
`
`assumptions as erroneous. (Reply, 11.) However, the Petition expressly asserts that
`
`the purported combination would “execute the data-encoding phase shifts directly
`
`10
`
`
`
`at the fundamental or third harmonic to ensure the phase shifts were inaudible.”
`
`(Pet., 28.)
`
`When encoding occurs at the fundamental, as explicitly stated in the
`
`Petition, a POSA would not refer to Kudumakis because it pertains to manipulating
`
`the weaker masked spectral components surrounding stronger harmonics, not the
`
`manipulation of the harmonics themselves. Additionally, Kudumakis advises
`
`against altering a signal’s most prominent frequency components (such as its
`
`fundamental and harmonics) because inserted codes would become more
`
`discernible in such instances. (POR, 44; Ex. 1007, 3:4-6.) Although the Reply
`
`acknowledges that Kudumakis teaches encoding at the “edges” of strong spectral
`
`components, it fails to elucidate why a POSA aiming to encode at robust spectral
`
`components would turn to Kudumakis, which explicitly instructs encoding at the
`
`edges rather than within the harmonics, contrary to what is taught and disclosed in
`
`the ’961 patent.
`
`Furthermore, Petitioner now asserts that the proposed combination
`
`encompasses the “differential phase encoding technique of Srinivasan, using the
`
`fundamental and the third harmonic as f0 and f1, and changing the phase of the
`
`third harmonic as explained in Cabot.” (Reply, 12.) In essence, Petitioner appears
`
`to concede that there is no trace of Kudumakis in the combination, signifying that
`
`no modification arises from Kudumakis. Despite this acknowledgment, the Reply
`
`11
`
`
`
`contends that Kudumakis furnishes “motivation for using locations of harmonic
`
`and fundamentals to enhance security against malicious attacks since those
`
`locations changed unpredictably throughout the audio signal.” However,
`
`Kudumakis does not advocate encoding at the harmonic or fundamental levels;
`
`instead, it advocates encoding near strong spectral components to leverage auditory
`
`masking. (POR, 18.) Thus, Kudumakis does not offer the motivation ascribed by
`
`Petitioner.
`
`G.
`Petitioner Fails to Establish Hobson as Analogous Art
`Petitioner is required to establish that Hobson is analogous art. However, in
`
`the Reply, Petitioner fails to present even a semblance of evidence on this pivotal
`
`factual matter, relying solely on unsupported arguments from its legal counsel.
`
`This lack of substantiation mirrors precedents where petitioners fell short in
`
`meeting their burden, as observed in Schott Gemtron Corp., v. SSW Holding Co.,
`
`Inc., IPR2013-00358, Paper 106, at 22 (P.T.A.B. Aug. 20, 2014). There, the Final
`
`Written Decision noted the petitioner’s failure to carry its burden, specifically
`
`noting the absence of any testimony, especially regarding why a particular
`
`reference would qualify as analogous art to the patent in question. See also
`
`Securitypoint Holdings, Inc. v. United States, 129 Fed. Cl. 25, 39 (2016) (reference
`
`not analogous art where “no witness explained why it would be consulted by a
`
`12
`
`
`
`skilled artisan outside of the inference drawn from the fact that it also moves trays
`
`with carts.”)
`
`i.
`Hobson Is Not in the Same Field of Endeavor
`Initially, the Petitioner conspicuously sidesteps the compelling evidence
`
`provided by the Patent Owner, which distinctly illustrates that Hobson operates in
`
`a dissimilar field of endeavor based on the Patent Office’s classification system.
`
`This objective system stands as a potent indicator, recognized by courts as
`
`substantial evidence, for discerning whether patents belong to non-analogous
`
`fields. (POR, 51-55.)
`
`Moreover, the Reply glaringly overlooks the Patent Owner’s assertion that
`
`Hobson is not directed to audio watermarking, let alone the distinctive challenges
`
`inherent in this domain. Instead, the Petitioner erroneously contends that Hobson
`
`and the ’961 patent both pertain to “watermark embedding methods for digital
`
`media.” (Reply, 13.) However, this maneuver to expand the problem scope of the
`
`’961 patent to encompass “digital media” rather than focusing on embedding
`
`watermarks in audio signals resembles the improper high-level abstractions
`
`commonly encountered in Section 101 analyses. Such over-abstractions tend to
`
`excessively encompass any desired subject matter, deviating from a patent’s
`
`specific domain, and would effectively render the Federal Circuit’s test a nullity.
`
`13
`
`
`
`Further, the Reply fails to counter or address the Patent Owner’s observation
`
`that Hobson primarily concerns itself with “methods for improving confidence in
`
`and for authentication of watermarked digital images,” distinctly aimed at
`
`detecting tampering in visual images that are already watermarked. (Ex. 1042,
`
`Cover, 1:6-7, see also id. at 1:48-50, Abstract; POR, 51, 21-23.)
`
`Petitioner’s attempt to conflate the ’961 patent with visual watermarking is
`
`futile. Although Petitioner cites an example in the specification illustrating
`
`embedding a message in a bitmap image to expound on the concept of
`
`steganography generally, this example merely elucidates a general concept and
`
`does not inherently link to the invention described in the ’961 patent. (Reply, 13-
`
`14; Ex. 1001, 1:4-52, 61-62.)
`
`The “field of endeavor” test requires “reference to explanations of the
`
`invention’s subject matter in the patent application, including the embodiments,
`
`function, and structure of the claimed invention.” In re Bigio, 381 F.3d 1320, 1325
`
`(Fed. Cir. 2004). The Federal Circuit has also instructed that the factfinder must
`
`consider each reference’s disclosure given “the reality of the circumstances” and to
`
`“weigh those circumstances from the vantage point of the common sense likely to
`
`be exerted by one of ordinary skill in the art in assessing the scope of the
`
`endeavor.” Id. at 1326. Here, Petitioner defaulted on its burden in not providing
`
`evidence from a POSA assessing the scope of the endeavor. Moreover, Petitioner’s
`
`14
`
`
`
`failure to engage in this essential analysis is glaring. Relying on tertiary references
`
`to fabricate a connection between audio and visual watermarking falls short.
`
`Petitioner fails to explain how manipulating the fundamental and overtones (the
`
`subject matter, embodiments, and structure of the ’961 patent) to embed hidden
`
`audio data in an audio signal (the function of the ’961 patent) relates to the use of
`
`confidence values (the subject matter, embodiments, and structure of Hobson) to
`
`detect tampering in visual images that are already watermarked (the function of
`
`Hobson).
`
`ii. Hobson Is Not Reasonably Pertinent to the Problem to Be
`Solved
`Petitioner conspicuously skirts the Patent Owner’s observation that the ’961
`
`patent confronts the distinct challenges surrounding encoding imperceptible data
`
`resilient enough to endure standard audio processing techniques. In stark contrast,
`
`Hobson is concerned with detecting tampering in watermarked images. (POR, 55.)
`
`Hobson explicitly states it does not target any specific visual watermarking
`
`technique but aims to enhance confidence in watermarked images. (Ex. 1042, 1:48-
`
`50; POR, 55.)
`
`Furthermore, Petitioner fails to grapple with the Federal Circuit’s
`
`“reasonably pertinent” test—a crucial requirement regarding whether Hobson
`
`“commended itself to an inventor’s attention in considering his problem.” In re
`
`Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Hobson’s focus on detecting tampering
`
`15
`
`
`
`diverges significantly from the concerns of embedding imperceptible audio
`
`watermarks. Petitioner offers no rationale for why a POSA concerned with
`
`imperceptible audio watermarking would turn to techniques aimed at visual
`
`tampering detection. See id. at 659-60 (concluding that a reference that sought to
`
`recover oil from rock was not reasonably pertinent to the problem of “preventing
`
`loss of stored product to tank dead volume while preventing contamination of such
`
`product”—even though both references generally related to the petroleum
`
`industry.)
`
`Petitioner’s contention regarding Hobson’s relevance—suggesting that
`
`embedding watermarks in multiple places enhances robustness—remains
`
`unsubstantiated. Notably, the inventors explicitly highlighted the ’961 patent’s
`
`robustness against blind signal processing attacks and digital-to-analog conversion
`
`processing. These were precisely the robustness issues the inventors sought to
`
`address. Petitioner fails to elucidate why a POSA grappling with such concerns
`
`would refer to Hobson. Petitioner’s retrospective attempt to tie Hobson’s relevance
`
`lacks a specific link to the precise problems and concerns the inventors of the ’961
`
`patent endeavored to resolve.
`
`Lastly, Patent Owner disagrees that it has mischaracterized Hobson as
`
`relating to fragile watermarks. (Reply, 16-17.) Even assuming, for argument’s
`
`sake, that Hobson does not describe fragile watermarks, this contention fails to
`
`16
`
`
`
`remedy the Reply’s fundamental flaw: the inability to establish why a POSA
`
`exploring imperceptible audio watermark embedding would seek guidance from
`
`visual image anti-tampering techniques.
`
`In sum, the Reply neglects to engage with the pivotal distinctions between
`
`the concerns addressed by the ’961 patent and Hobson, and it fails to provide a
`
`compelling rationale for why a POSA focused on imperceptible audio
`
`watermarking would turn to visual image anti-tampering methods like those
`
`described in Hobson.
`
`H.
`Petitioner’s Arguments Concerning Ground 3 Fail
`In its Reply regarding Ground 3, Petitioner attempts to sidestep Kudumakis’s
`
`teaching away by asserting that Petitioner “does not advocate using Kudumakis’s
`
`notch embedding but rather relies on Tilki’s phase embedding at selected
`
`frequency components.” (Reply, 18.) But this misses Patent Owner’s point.
`
`Petitioner is relying on Kudumakis as allegedly teaching the use of a fundamental
`
`and third harmonic as the “selected frequency components” for use with Tilki’s
`
`differential phase encoding method. (See, e.g., Pet., 58.) Petitioner argues that
`
`Patent Owner misinterprets Kudumakis but, as explained in Section II, supra,
`
`Petitioner ignores that Kudumakis expressly teaches away from embedding data at
`
`the fundamental and overtones such as, for example, the third harmonic.
`
`17
`
`
`
`Petitioner’s remaining arguments regarding Ground 3 are similarly
`
`unavailing.
`
`I.
`
`Petitioner Does Not Adequately Support Its Assertions Regarding
`Tilki
`Petitioner continues to assert in a conclusory manner that Tilki’s differential
`
`phase encoding/decoding method is simpler than Kudumakis’s notch embedding.
`
`(Reply, 18-19.) Petitioner claims that Dr. Scordilis “explained that, compared to
`
`notch embedding that required designing a complex notch filter based on
`
`characteristics of the original signal, phase embedding only required applying a
`
`phase shift,” again citing to a single paragraph of Dr. Scordilis’s Declaration that
`
`merely parrots the Petition. (Reply, 18-19.) But this merely reinforces Patent
`
`Owner’s argument that in the cited paragraph 191, Dr. Scordilis does not “explain”
`
`anything, he merely concludes that phase embedding is less complex than notch
`
`embedding.
`
`Petitioner attempts to bolster its argument by citing a different paragraph in
`
`Dr. Scordilis’s Declaration—paragraph 220—that includes an annotated
`
`Kudumakis Figure 1. Petitioner’s reliance on this paragraph is similarly misplaced.
`
`There, Dr. Scordilis opines that “Tilki does not show a block diagram of its
`
`encoder but Kudumakis does. Kudumakis’s ‘Encoder’ encodes in ‘notches,’ so a
`
`different encoder (shown by annotated Kudumakis FIG. 1(a) below) would have
`
`been used to implement Tilki’s differential phase encoding.” (Ex. 1003, ¶ 219.) Dr.
`
`18
`
`
`
`Scordilis then depicts an annotated version of Kudumakis’s Figure 1, allegedly
`
`showing “[t]he encoder a POSA would have implemented based on Kudumakis,
`
`Tilki, and Cabot.” (Id. at ¶ 220.)
`
`
`
`After admitting that “Tilki does not show a block diagram of its encoder,”
`
`(Ex. 1003, ¶ 219), Dr. Scordilis nevertheless insists that a POSA would have
`
`replaced Tilki’s encoder with the Kudumakis encoder modified in the way Dr.
`
`Scordilis depicts in his annotated Kudumakis Figure 1. But Dr. Scordilis does not
`
`explain how a POSA would have implemented his proposed changes to
`
`Kudumakis’s encoder, or why a POSA would have expected such a modified
`
`Kudumakis encoder to work in place of Tilki’s encoder. Instead, he merely
`
`concludes that “[a] POSA would have used a programmed processor to implement
`
`this encoder with a reasonable expectation of success, because that was a routine,
`
`conventional and obvious way
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