Case 1:18-cv-01608-RGA Document 22 Filed 11/01/19 Page 1 of 19 PageID #: 242
`Case 1:18-cv-01608-RGA Document 22 Filed 11/01/19 Page 1 of 19 PageID #: 242
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`GRACENOTE, INC.,
`
`Plaintiff,
`
`V.
`FREE STREAM MEDIA CORR,
`
`d/b/a SAMBA TV
`
`Defendant.
`
`)
`
`3
`3
`i
`
`)
`
`3
`
`Civil Action No. 18—1608—RGA
`
`REPORT AND RECOMMENDATION
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`I.
`
`INTRODUCTION
`
`Presently before the court in this patent infringement action is the motion to dismiss for
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`failure to state a claim upon which relief can be granted pursuant to Federal Rule of Civil
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`Procedure 12(b)(6), filed by defendant Free Stream Media Corp., d/b/a Samba TV (“Samba”).I
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`(D.I. 10) For the following reasons, I recommend that the court deny the pending motion to
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`dismiss.
`
`II.
`
`BACKGROUND
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`Plaintiff Gracenote, Inc. (“Gracenote”) is an entertainment data and technology company
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`that provides automatic content recognition (“ACR”) services to television original equipment
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`manufacturers (“OEMs”). (D.I. 1 at 1111 7-8) Gracenote is the owner by assignment of US.
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`Patent Nos. 9,066,114 (“the ’114 patent”), 9,479,831 (“the ’831 patent”), 9,407,962 (“the ’962
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`patent”), and 8,171,030 (“the ’030 patent”) (collectively, the “patents—in—suit”).
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`(Id. at W 12, 16,
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`19, 22) The ’ 1 14 patent, the ’831 patent, and the ’962 patent (collectively, the “Trigger Patents”)
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`are related and share a common specification.
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`(Id. at W 17, 20) Gracenote asserts that Samba
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`
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`1 The briefing associated with the motion to dismiss is found at D.I. 11, D1. 14, and DI. 16.
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`

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`infringes claims 1, 8, and 10 of the ‘ 1 14 patent, claims 11 and 24 of the ’831 patent, claims 1, 8,
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`and 15 of the ”962 patent, and claim 1 of the ”030 patent. (D.I. 1 at W 30, 62, 84, 109)
`
`The common specification of the Trigger Patents describes systems and methods for
`
`performing actions at a specified moment in a multimedia stream when the multimedia stream is
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`played on a playback device.
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`(’831 patent, col. 1:22-29) By way of example, the specification
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`explains that the URL of a website may be embedded into a commercial and retrieved by a
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`playback device, such as a television, to provide the viewer with additional information.
`
`(Id. at
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`col. 1:34-40) The specification describes the advantages of the invention over the prior art,
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`noting that the use of the claimed fingerprint technology eliminates the need for broadcaster
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`cooperation and accurately triggers the desired action at the appropriate point in the multimedia
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`stream without modifying the multimedia signal itself.
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`(Id. at col. 2:44-3 :25) For purposes of
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`the pending motion, the parties agree that claim 11 of the ’831 patent is representative of all
`
`asserted claims in the Trigger Patents:2
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`11. A method comprising:
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`playing back multimedia content on a multimedia playback device, including
`providing at least some of the multimedia content on a display associated with the
`multimedia playback device;
`
`during the playback of the multimedia content by the multimedia playback device,
`repeatedly deriving, by the multimedia playback device, fingerprints from
`respective segments of the multimedia content;
`
`comparing the derived fingerprints to reference fingerprints representing features
`of the multimedia content, each reference fingerprint associated with one or more
`actions;
`
`determining that one of the derived fingerprints matches one of the reference
`fingerprints; and
`
`
`
`2 (13.1. 11 at 5-6; D.I. 14 at 4)
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`

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`in response to the determining that the one of the derived fingerprints matches the
`one of the reference fingerprints, causing execution of an action associated with
`the one of the reference fingerprints, the action being associated with a time point
`indicating when, in the multimedia content, the action is to be performed.
`
`(’831 patent, col. 9:27—47)
`
`The ’030 patent, entitled “Method and Apparatus for Multi-Dimensional Content Search
`
`and Video Identification,” is not related to the Trigger Patents, but it is also directed to identifiers
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`for multimedia called “robust hashes.” (’030 patent, col. 15:32) Representative claim 1 of the
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`’030 patent is a method claim directed to storing robust hashes and other data associated with a
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`video in a database with “leaf nodes”:
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`1. A method of organization of a multi-dimensional video database using a robust
`hash of a multi—dimensional vector signature as a traversal index, the method
`comprising:
`
`generation of a robust hash value as a traversal index from multiple parameters
`extracted from a region of interest in a frame of a video sequence; and
`
`storing data associated with the video sequence at a leaf node addressed by the
`robust hash value, wherein the leaf node is a member of a plurality of leaf nodes
`in a multi-dimensional video database.
`
`(”030 patent, col. 15:29—3 8) Claim 1 of the ’030 patent is the only asserted claim of the ’030
`
`patent. (D.I. 1 at W 109-18)
`
`Gracenote filed this lawsuit on October 17, 2018, accusing Samba of infringing the
`
`patents—in—suit because Samba’s product uses ACR for data collection and analysis, and for
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`triggering actions such as presenting additional or alternative content. (D.I. l at W 23—27)
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`Specifically, Gracenote alleges that Samba’s infringing product analyzes fingerprints to take
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`actions such as enabling the presentation of additional or alternative content using traversal
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`indexes and a multi-dimensional database.
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`(101.)
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`

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`III.
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`LEGAL STANDARDS
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`A. Failure to State a Claim
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`Samba moves to dismiss the pending action pursuant to Rule 12(b)(6), which permits a
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`party to seek dismissal of a complaint for failure to state a claim upon which relief can be
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`granted. Fed. R. Civ. P. 12(b)(6). According to Samba, Gracenote’s complaint fails to state a
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`claim because the asserted claims of the patents-in-suit are ineligible for patent protection under
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`35 U.S.C. § 101. Patent eligibility under 35 U.S.C. § 101 is a threshold test. Bilski v. Kappos,
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`561 U.S. 593, 602 (2010). Therefore, “patent eligibility can be determined at the Rule 12(b)(6)
`
`stage .
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`.
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`. when there are no factual allegations that, taken as true, prevent resolving the eligibility
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`question as a matter of law.” Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d
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`1121, 1125 (Fed. Cir. 2018).
`
`When considering a Rule 12(b)(6) motion to dismiss, the court mhst accept as true all
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`factual allegations in the complaint and View them in the light most favorable to the plaintiff.
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`Umland v. Planco Fin. Servs., 542 F.3d 59, 64 (3d Cir. 2008). Dismissal under Rule 12(b)(6) is
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`only appropriate if the complaint does not contain “sufficient factual matter, accepted as true, to
`
`‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
`
`(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)); see also Fowler v. UPMC
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`Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). However, “a court need not ‘accept as true
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`allegations that contradict matters properly subject to judicial notice or by exhibit,’ such as the
`
`claims and the patent specification.” Secured Mail Solutions LLC v. Universal Wilde, Inc., 873
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`F.3d 905, 913 (Fed. Cir. 2017) (quoting Anderson v. Kimberly-Clark Corp, 570 F. App’x 927,
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`931 (Fed. Cir. 2014)).
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`

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`B. Patent-Eligible Subject Matter
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`Section 101 of the Patent Act provides that patentable subject matter extends to four
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`broad categories: “Whoever invents or discovers any new and useful process, machine,
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`manufacture, or composition of matter, or any new and useful improvement thereof, may obtain
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`a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The
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`Supreme Court recognizes three exceptions to the subject matter eligibility requirements of
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`§ 101: laws of nature, physical phenomena, and abstract ideas. Alice Corp. Ply. v. CLS Bank
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`Int 7, 573 US. 208, 218 (2014). The purpose of these exceptions is to protect the “basic tools of
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`scientific and technological work.” Mayo Collaborative Servs. v. Prometheus Labs, Inc, 566
`
`US. 66, 71 (2012), which are “part of the storehouse of knowledge of all men .
`
`.
`
`. free to all men
`
`and reserved exclusively to none,” Bilski v. Kappos, 561 US. 593, 602 (2010) (internal quotation
`
`marks and citations omitted).
`
`The Supreme Court articulated a two—step “framework for distinguishing patents that
`
`claim laws of nature, natural phenomena, and abstract ideas from those that claim patent—eligible
`
`applications of those concepts.” Alice, 573 US. at 217; see also Mayo, 566 US. at 77—78. At
`
`step one, the court must determine whether the claims are directed to one of the three patent-
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`ineligible concepts. Alice, 573 US at 217. If the claims are not directed to a patent-ineligible
`
`concept, “the claims satisfy § 101 and [the court] need not proceed to the second step.” Core
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`Wireless Licensing S.A.R.L. v. LG Elecs., Inc, 880 F.3d 1356, 1361 (Fed. Cir. 2018). Ifthe court
`
`determines that the claims are directed to a patent-ineligible concept, the court must proceed to
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`the second step by identifying an “‘inventive concept’—i.e. , an element or combination of
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`elements that is sufficient to ensure that the patent in practice amounts to significantly more than
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`

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`a patent upon the [ineligible concept] itself.” Alice, 573 U.S. at 217—1 8 (quoting Mayo, 566 U.S.
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`at 72-73).
`
`At step one, “the claims are considered in their entirety to ascertain whether their
`
`character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active
`
`Network, Inc. , 790 F.3d 1343, 1346 (Fed. Cir. 2015); see also Afiinz'ty Labs of Texas, LLC v.
`
`DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (“The ‘abstract idea’ step of the inquiry
`
`calls upon us to look at the ‘focus of the claimed advance over the prior art’ to determine if the
`
`claim’s ‘character as a whole’ is directed to excluded subject matter.”). However, “courts must
`
`be careful to avoid oversimplifying the claims by looking at them generally and failing to
`
`account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games Am.
`
`Inc. , 837 F.3d 1299, 1313 (Fed. Cir. 2016) (internal quotation marks omitted). “At step one,
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`therefore, it is not enough to merely identify a patent-ineligible concept underlying the claim;
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`[courts] must determine whether that patent-ineligible concept is what the claim is ‘directed to.
`
`3”
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`Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016).
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`At step two, the court must “look to both the claim as a whole and the individual claim
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`elements” to determine whether they “amount[] to significantly more than a patent upon the
`
`[ineligible concept] itself.” McRO, 837 F.3d at 1312. “Simply appending conventional steps,
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`specified at a high level of generality, [is] not enough to supply an inventive concept.” Alice,
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`573 U.S. at 222 (internal quotation marks omitted). Instead, the claim elements must “involve
`
`more than performance of ‘well-understood, routine, [and] conventional activities previously
`
`known to the industry.”’ Berkhez'mer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (citation
`
`and internal quotation marks omitted); see also Mayo, 566 U.S. at 73. “The inventive concept
`
`inquiry requires more than recognizing that each claim element, by itself, was known in the art. .
`6
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`

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`.
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`.
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`[A]n inventive concept can be found in the non-conventional and non—generic arrangement of
`
`known, conventional pieces.” Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
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`F.3d 1341, 1350 (Fed. Cir. 2016).
`
`IV.
`
`DISCUSSION
`
`A.
`
`The Trigger Patents
`
`The Trigger Patents disclose systems and methods for the performance of an action at a
`
`precise time when a specific part of a multimedia stream, e. g., a scene or frame in a television
`
`program, is played on the user’s playback device, e. g. , a television.
`
`(”831 patent, col. 1:30-40)
`
`Examples of the action include insertion of an advertisement or information about an actor when
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`he appears on screen. (Id., col. 1:55—2:3)
`
`The Trigger Patents simultaneously solve two problems with the prior art described by
`
`Gracenote as the “Accuracy Problem” and the “Broadcaster Cooperation Problem.” (D.I. 14 at
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`2-3) The Accuracy Problem relates to a mistimed advertisement caused by a delay in the
`
`broadcast. (’831 patent, col. 1:34-40; 3:21-25; 5: 10—17; 6:61-65) The Broadcaster Cooperation
`
`Problem relates to the unwillingness or inability of the broadcaster to embed a marker in a
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`television program at the precise video frame desired for the required action, 1'. e. ,
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`“watermarking.” (Id. , col. 2: 10—13; 2:22-25; 2:39—43; 2:50-53)
`
`1.
`
`Alice Step One
`
`At step one of the Alice inquiry, Samba contends that the asserted claims of the Trigger
`
`Patents are directed to the abstract ideas of: (1) recognizing portions of a multimedia signal and
`
`performing actions in response at a specified time, (’831 patent, claim 11; ’114 patent, claims 1,
`
`8, & 10), and (2) storing those portions of the multimedia signal and actions, (’962 patent, claims
`
`1, 8, & 15). (D.I. 11 at 10-11) Samba alleges that the claimed fingerprints used to trigger
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`responsive actions were known in the prior art, and the encoding, storage, matching, and
`
`processing features of the asserted claims are no more than generic computer functions.
`
`(Id. at
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`1 1-12)
`
`In response, Gracenote argues that the asserted claims of the Trigger Patents represent
`
`specific technological solutions to the problems of insufficient accuracy in marking a multimedia
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`stream and requiring cooperation from the broadcaster to mark the multimedia stream. (D.I. 14
`
`at 8) According to Gracenote, the asserted claims of the Trigger Patents represent an inventive
`
`narrative method of triggering action in a multimedia stream without involving a broadcaster.
`
`(Id. at 8 n.4)
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`I recommend that the court deny Samba’s motion to dismiss at step one of the Alice
`
`inquiry. The asserted claims of the Trigger Patents are not directed to an abstract idea because
`
`they provide a specific, simultaneous solution to the Accuracy Problem and the Broadcaster
`
`Cooperation Problem by reciting an improved method of using fingerprints to trigger actions in a
`
`multimedia stream. (’831 patent, col. 5:10-17; col. 2:50—53) “[T]he first step in the Alice inquiry
`
`.
`
`.
`
`. asks whether the focus of the claims is on the specific asserted improvement in computer
`
`capabilities .
`
`.
`
`. or, instead, on a process that qualifies as an ‘abstract idea’ for which computers
`
`are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp, 822 F.3d 1327, 1335-36 (Fed.
`
`Cir. 2016). The focus of the asserted claims of the Trigger Patents is on an improved method of
`
`using fingerprints to trigger specific actions in a multimedia stream without the involvement of a
`
`broadcaster.
`
`Representative claim 11 of the ’831 patent recites a technical solution to the Accuracy
`
`Problem and the Broadcaster Cooperation Problem, which amounts to an improvement to the
`
`functionality of the television or other multimedia playback device. Claim 11 requires “playing
`8
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`back multimedia content on a multimedia playback device” and, during the playback,
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`“repeatedly deriving .
`
`.
`
`. fingerprints from respective segments of the multimedia conten ” at the
`
`multimedia playback device.
`
`(’831 patent, col. 9:28-35) [Once these local fingerprints are
`
`derived from the television or other playback device during playback, the derived fingerprints are
`
`compared to reference fingerprints, “each reference fingerprint associated with one or more
`
`actions.” (Id., col. 9:36-39) When one of the derived fingerprints matches a reference
`
`fingerprint, the action associated with the reference point is then executed.
`
`(Id. , col. 9:40—47)
`
`By matching the derived and reference fingerprints, a specific portion of the broadcast can be
`
`detected, and external actions may be triggered at the relevant point of the broadcast signal,
`
`without using a specific time of the anticipated broadcast or relying on the broadcaster to modify
`
`the multimedia signal. (Id, col. 5:10-17; col. 2:50-53)
`
`These steps solve both the Broadcaster Cooperation Problem and the Accuracy Problem
`
`in a particular way by reciting a specific method of generating local fingerprints at a television,
`
`comparing those local fingerprints to a reference fingerprint, and replacing an advertisement or
`
`taking another action upon finding a match between the reference fingerprints and the local
`
`fingerprints. See Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1008 (Fed. Cir. 2018)
`
`(holding that patented method for navigating through three-dimensional spreadsheets was not
`
`abstract because the claimed method “provide [(1] a specific solution to then-existing
`
`technological problems in computers and prior art electronic spreadsheets”). Limiting the
`
`claims to the narrow context of recognizing and acting on portions of a multimedia signal in a
`
`broadcast is not enough, by itself, to render the claim patent eligible. See BSG Tech LLC v.
`
`Buyseasons, Inc, 899 F.3d 1281, 1287 (Fed. Cir. 2018) (“[A] claim is not patent eligible merely
`
`because it applies an abstract idea in a narrow way. For an application of an abstract idea to
`9
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`satisfy step one, the claim’s focus must be something other than the abstract idea itself”).
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`However, what is claimed in the Trigger Patents is more than the application of an abstract idea
`
`in a narrow way because the focus of the claims is on an improvement to the technology, as
`
`opposed to the collection, storage, and display of data.
`
`The abstract ideas identified by Samba are broader than the language of the asserted
`
`claims of the Trigger Patents. Samba’s position is that the asserted claims are directed to
`
`“recognizing portions of a multimedia signal and performing actions in response at a specified
`
`time,” but this summary of the asserted claims would encompass concepts such as watermarking,
`
`which are not covered by the asserted claims of the Trigger Patents. The specification explains
`
`that a watermark is embedded in a video frame at a relevant point to trigger a specified action at
`
`that time, which falls within the scope of Samba’s proposed abstract idea.
`
`(’831 patent, col.
`
`2:39—43) However, the asserted claims of the Trigger Patents do not extend to watermarking
`
`because they require the continuous marking of segments of multimedia content and a
`
`comparison of those markings to the claimed reference fingerprints to find a match, which then
`
`leads to the execution of a specific action. (Id., col. 9:27-47) In contrast, watermarking
`
`“necessarily changes the video/audio.” (Id., col. 2:43)
`
`The specification explains that the claimed invention “enable[s] detection of trigger
`
`actions without modifying the multimedia signal” to avoid the disadvantage of watermarking,
`
`which “necessarily changes the video/audio.” (Id. at col. 2:42-43, 2:52-53) In this regard, the
`
`abstract idea identified by Samba does not accurately reflect the scope of the asserted claims of
`
`the Trigger Patents. See Groove Digital, Inc. v. Jam City, Inc., CA. No. 18—1331-RGA, 2019
`
`WL 351254, at *3 (D. Del. Jan. 29, 2019) (denying the defendant’s motion to dismiss based on §
`
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`101 because the defendant’s proposed abstract ideas did not “satisfactorily capture the substance
`
`of the claims”).
`
`Similarly, Samba’s description of the abstract idea would encompass trigger points based
`
`on the time of day. Claim 11 of the ’831 patent excludes trigger points based on the time of day
`
`by claiming that the playback device repeatedly derives “fingerprints from respective segments
`
`of the multimedia content.” (’831 patent, col. 9:33-35) The specification emphasizes that an
`
`advantage of the invention of the Trigger Patents is that “the fingerprint matching ensures that
`
`the trigger actions still appear at the correct corresponding moment in the broadcast since the
`
`invention is time-independent but content—dependent.” (Id. at 6:62—65)
`
`The asserted claims of the Trigger Patents claim fingerprints which perform the function
`
`of marking specific points in a multimedia stream to trigger specific actions delivered to a
`
`multimedia playback device. (’831 patent, col. 9:27-47) The asserted claims, read as a whole,
`
`are directed to a system and method of implementing accurate fingerprinting in a multimedia
`
`stream to avoid the necessity of involving broadcaster cooperation. (Id.) In this regard, the
`
`asserted claims of the Trigger Patents recite a particular manner of marking portions of a
`
`multimedia stream, resulting in an improvement to the manner in which multimedia content is
`
`played back on a multimedia playback device.
`
`Samba’s comparison of the Trigger Patents to the real-world case of a stagehand lifting a
`
`curtain at a designated time in a performance of Romeo and Juliet fails to account for the
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`functional improvement achieved by comparing continuously-generated fingerprints in the
`
`multimedia stream with marked fingerprints in the database.
`
`(’831 patent, Abstract) The Federal
`
`Circuit has held that “[i]t is not enough .
`
`.
`
`. to merely trace the invention to some real—world
`
`analogy.” Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1011 (Fed. Cir. 2018)
`11
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`(observing that the question of whether anyone has ever used tabs to organize information was
`
`reserved for an analysis under §§ 102 and 103). Instead, the court must consider the claims as a
`
`whole to determine whether they are directed to a functional improvement. Id. Like the
`
`notebook tabs in Digital Engines, the fingerprints claimed in the Trigger Patents function as
`
`structures that allow a user to accurately identify portions of multimedia content and execute an
`
`action associated with the fingerprints.
`
`The asserted claims in the Trigger Patents are analogous to the claims at issue in Thales
`
`Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), in which the Federal Circuit
`
`upheld the validity of the asserted claims on a § 101 challenge. In Thales, the Federal Circuit
`
`determined that the use of conventional sensors and a mathematical equation to more accurately
`
`calculate the position of an object on a moving platform did not render the claims ineligible
`
`because the claims identified a particular configuration of the sensors and a particular way of
`
`using the raw data that eliminated problems inherent in prior art methods. Thales, 850 F.3d at
`
`1349. Although the inertial sensors were conventional, the claims were not directed to an
`
`abstract idea because they improved the accuracy of the calculation of the helmet’s position
`
`relative to the airplane, and they eliminated the necessity of measuring the position and
`
`orientation of the helmet and the airplane in comparison to Earth. Id. at 1348. Similarly, the
`
`asserted claims of the Trigger Patent recite known fingerprints in an unconventional manner to
`
`improve the accuracy of a trigger’s position within a multimedia stream. (’831 patent, col. 3 :21-
`
`25) Like the claims in Thales, which are directed to systems and methods of using inertial
`
`sensors in a non-conventional manner to reduce errors in measuring the relative position between
`
`the helmet and the airplane, the asserted claims of the Trigger Patents are directed to systems and
`
`methods of using fingerprints in a non-conventional manner to increase the accuracy of the
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`location of a given time point of a multimedia signal by using a segment of the signal itself.
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`(Id.
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`at col. 5:10-13)
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`According to Samba, the asserted claims of the Trigger Patents are more analogous to the
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`claims at issue in Smart Systems Innovations, LLC v. Chicago Transz'tAuthorz'ty, 873 F.3d 1364
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`(Fed. Cir. 2017) and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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`In both cases, the Federal Circuit concluded that the asserted claims were directed to an abstract
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`idea under § 101. In Smart Systems, the Federal Circuit determined that the asserted claims were
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`directed to the abstract ideas of collection, storage, and recognition of financial data, and
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`restricting the field of the invention to financial transactions in mass transit was insufficient to
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`render the invention patent-eligible. SS1, 873 F.3d at 1372. The Federal Circuit observed that
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`the claims did not recite a new type of bankcard, turnstile, or database, nor did they recite a
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`method for processing data that improved the existing technological processes. Id. The asserted
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`claims recited a “hash identifier,” which the Federal Circuit defined as “consist[ing] of data
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`extracted from a bankcard to create a ‘digital fingerprint” of the card that a bankcard terminal
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`processor uses to identify the card in question.” Id. at 1374 n.9. The Federal Circuit concluded
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`that “[a] hash identifier is a generic and routine concept that does not transform the claims to a
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`patent eligible application of the abstract idea.” Id.
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`However, the claims at issue in Smart Systems are distinguishable from the asserted
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`claims of the Trigger Patents because the Trigger Patents focus on a specific improvement to an
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`existing technological process by claiming a method of comparing one set of reference
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`fingerprints to another set of fingerprints derived from the broadcast signal. In this regard, the
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`Trigger Patents go beyond the collection, analysis, and display of data without any particular
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`improvement. Whereas the financial transaction at issue in Smart Systems amounts to paying
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`transit fare with a credit card at its core, the Trigger Patents alter the way fingerprints are utilized
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`in a multimedia stream to perform an external action, such as replacing an advertisement, at a
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`specific point in the signal without modifying the signal itself.
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`(’831 patent, col. 5: 10—17; col.
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`2:5 0-5 3) The claimed method of deriving fingerprints from the multimedia stream for
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`comparison with reference fingerprints to trigger an action at a specific point in the signal was
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`not known in the prior art. (Id, col. 3:16-25)
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`In Electric Power Group, LLC v. Alstom SA, 830 F.3d 1350 (Fed. Cir. 2016), the
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`Federal Circuit concluded that the asserted claims for performing real—time performance
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`monitoring of an electric power grid were abstract because they “d[id] not go beyond requiring
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`the collection, analysis, and display of available information in a particular field.” Elec. Power
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`Grp. , 830 F.3d at 1351. The Federal Circuit concluded that the purported advance of the claims
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`amounted to a process of gathering, analyzing, and displaying a specific kind of information, as
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`opposed to claiming a particular inventive technology for performing those functions. Id. at
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`1354. In contrast, the asserted claims of the Trigger Patents are directed to a method of
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`achieving a specific solution to a known technological problem in the field of the invention,
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`thereby improving the computer technology itself.
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`(’831 patent, col. 5:10—17; col. 2:50-53) The
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`Federal Circuit recognized this “distinction between ends sought and particular means of
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`achieving them, between desired results (functions) and particular ways of achieving
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`(performing) them” in Electric Power, observing that “there is a critical difference between
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`patenting a particular concrete solution to a problem and attempting to patent the abstract idea of
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`a solution to the problem in general.” Elec. Power Grp., 830 F.3d at 1356.
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`2.
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`Alice Step Two
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`Having determined that the asserted claims of the Trigger Patents are not directed to an
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`abstract idea, the court need not proceed to step two of the Alice framework. If the claims are
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`not directed to a patent-ineligible concept, “the claims satisfy § 101 and [the court] need not
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`proceed to the second step.” Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc, 880 F.3d 1356,
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`1361 (Fed. Cir. 2018) (citing Visual Memory LLC v. NVIDIA Corp, 867 F.3d 1253, 1262 (Fed.
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`Cir. 2017)).
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`B.
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`The ’030 Patent
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`1.
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`Alice Step One
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`Samba contends that claim 1 of the ’030 patent is ineligible because it is directed to the
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`abstract concept of “creating identifying data (a robust hash from a video) and storing and
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`indexing the identifiers and other video information in a database.” (D1. 11 at 18) According to
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`Samba, the fact that the asserted claims are limited to a certain field or type of data does not save
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`them from ineligibility under § 101 Where, as here, the patent does not purport to have invented
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`robust hashes or a database with leaf nodes.
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`(Id. at 18-19) Samba alleges that the Federal
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`Circuit’s decision in Enfish is inapposite because the asserted claims recited a new type of
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`database structure with a self—referential table. (D.I. 16 at 10) In contrast, Samba contends that
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`the ’030 patent is directed to storing a particular type of information in a known database type,
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`and the invention does not create a new database structure. (Id)
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`In response, Gracenote alleges that the asserted claim of the ’030 patent is not directed to
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`an abstract idea because it recites the improved organization of a multi-dimensional Video
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`database through the generation of a robust hash used as a traversal index, which specifies the
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`address of a leaf node Where data is stored. (D.I. 14 at 18—19) According to Gracenote, the
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`claimed invention of the ”030 patent improves the accuracy and efficiency of video database
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`searches by using characteristics of the video to index stored video information and address leaf
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`nodes.
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`(Id. at 19)
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`I recommend that the court deny Samba’s motion to dismiss based on the eligibility of
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`the ’030 patent under § 101. The invention is directed to the improved organization of a multi-
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`dimensional video database. (’030 patent, Abstract) This improvement is accomplished through
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`the generation of a “robust hash,”3 derived from certain parameters extracted from a region of
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`interest, that is used as a traversal index. (Id, col. 2:29-33)
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`Claim 1 of the ’030 patent is similar to the claims found to be patent eligible in Enfish,
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`LLC v. Microsoft Corp. The asserted claims in Enfish recited “[a] data storage and retrieval
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`system” that disclosed “an indexing technique [for a database] that allows for faster searching of
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`data.” Enfish, 822 F.3d at 1333, 1336. The indexing technique at issue in Enfish is com