Trials@uspto.gov
`571-272-7822
`
`Paper 19
`Entered: June 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FREE STREAM MEDIA CORP.,
`D/B/A SAMBA TV,
`Petitioner,
`
`v.
`
`GRACENOTE, INC.,
`Patent Owner.
`
`IPR2020-00216
`Patent 9,066,114 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, GARTH D. BAER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 19
`Entered: June 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FREE STREAM MEDIA CORP.,
`D/B/A SAMBA TV,
`Petitioner,
`
`v.
`
`GRACENOTE, INC.,
`Patent Owner.
`
`IPR2020-00216
`Patent 9,066,114 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, GARTH D. BAER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00216
`Patent 9,066,114 B2
`
`I.
`
`INTRODUCTION
`
`Free Stream Media Corp. d/b/a Samba TV (“Petitioner”) requests an
`
`inter partes review of claims 1–14 and 16–24 of U.S. Patent No. 9,066,114
`
`B2 (“the ’114 patent,” Ex. 1001). Paper 1 (“Pet.”). Gracenote, Inc. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We may not institute an
`
`inter partes review “unless . . . there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a).
`
`Applying that standard, and upon considering the information
`
`presented in the Petition and the Preliminary Response, we determine
`
`Petitioner does not show a reasonable likelihood that it would prevail in
`
`showing the unpatentability of at least one challenged claims. Accordingly,
`
`we do not institute an inter partes review of claims 1–14 and 16–24 of the
`
`’114 patent.
`
`II. BACKGROUND
`
`A.
`
`The ’114 Patent
`
`The ’114 patent, titled “Method and Device for Generating and
`
`Detecting a Fingerprint Functioning as a Trigger Marker in a Multimedia
`
`Signal,” issued on June 23, 2015. Ex. 1001, [45], [54]. The ’114 patent
`
`relates to a method and device for associating and detecting trigger
`
`information with a multimedia signal. Id. at 1:14–21.
`
`The written description explains that more interactive television
`
`viewing or music listening experiences are created by “‘connecting’ external
`
`actions to a piece of video and/or audio content.” Id. at 1:22–26.
`
`Facilitating this function requires enabling “reliable detection of time points
`
`2
`
`
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`IPR2020-00216
`Patent 9,066,114 B2
`
`in a television program, a movie, a music piece, etc. where such additional
`
`information is relevant.” Id. at 1:29–32. Previous methods of marking time
`
`points suffered from disadvantages such as relying on broadcaster
`
`cooperation to insert time triggers, cooperation of all actors in a broadcast
`
`chain to not destroy time marking, or altering the video/audio through
`
`watermarking. Id. at 1:33–2:35.
`
`The ’114 patent purportedly enables “simple, reliable and accurate
`
`localisation of a given part of a multimedia signal” and “detection of trigger
`
`actions without modifying the multimedia signal.” Id. at 2:40–45. The ’114
`
`patent purportedly achieves this by using a fingerprint as a time marker to
`
`trigger actions. Id. at 3:7–11. To do this, a fingerprint is generated “on the
`
`basis of a part, segment, etc. . . . of the multimedia signal (101), where the
`
`segment of the multimedia signal (101) is unambiguously related with the
`
`given time point.” Id. at 4:15–19. The fingerprint is stored for later use in a
`
`database, memory, storage, and/or the like. Id. at 5:5–10. The fingerprint
`
`serves as “an identifier which is computed over that piece of audio or video
`
`and which does not change even if the content involved is subsequently
`
`transcoded, filtered or otherwise modified.” Id. at 3:20–24.
`
`According to the ’114 patent, detection of the fingerprint occurs
`
`during playback of the multimedia signal on a playback device. Id. at 5:43–
`
`48. During playback, a fingerprint stream is generated from the multimedia
`
`signal. Id. at 5:48–55. Upon detecting a match between a segment of the
`
`fingerprint stream and a fingerprint in the database, the invention determines
`
`the time point indicated by the fingerprint and executes the actions
`
`associated with that time point. Id. at 5:65–6:24.
`
`3
`
`
`
`IPR2020-00216
`Patent 9,066,114 B2
`
`B.
`
`Illustrative Claims
`
`Petitioner challenges claims 1–14 and 16–24 of the ’114 patent.
`
`Pet. 1. Of the challenged claims, claims 1, 8, 10, 11, 20, and 21 are
`
`independent. Claim 1 is illustrative of the subject matter in claims 1–10 and
`
`recites:
`
`1. A method comprising:
`
`determining a plurality of trigger fingerprints from content being
`played back on a playback device, each trigger fingerprint
`identifying a corresponding trigger time point of a sequence of
`trigger time points in the content and at which trigger time point
`at least one corresponding action is to be triggered, the
`determining being performed by a processor;
`
`accessing a database that includes a plurality of reference
`fingerprints, previously derived from the content, and a plurality
`of reference actions, each reference fingerprint identifying at
`least one corresponding reference action to be performed at a
`reference time point identified by the reference fingerprint;
`
`identifying the corresponding reference action by obtaining a
`match in the database between a trigger fingerprint among the
`plurality of trigger fingerprints and a reference fingerprint among
`the plurality of reference fingerprints; and
`
`performing a reference action that corresponds to the reference
`fingerprint on the playback device.
`
`Ex. 1001, 8:6–26.
`
`Claim 11 is illustrative of the subject matter in claims 11–14 and 16–
`
`24 and recites:
`
`11. A method comprising:
`
`accessing segments of content, a segment among the segments
`being associated with a corresponding action to be triggered
`during playback of the segment;
`
`4
`
`
`
`IPR2020-00216
`Patent 9,066,114 B2
`
`generating a reference fingerprint of the segment associated with
`the corresponding action, the generating being performed by a
`processor;
`
`assigning the reference fingerprint of the segment to the
`corresponding action that is to be triggered during playback of
`the segment of the content;
`
`providing access to the reference fingerprint of the segment to a
`playback device configured to match the reference fingerprint to
`a playback fingerprint derived from the segment by the playback
`device; and
`
`providing the identifier of the corresponding action to the
`playback device based on the reference fingerprint matching the
`playback fingerprint, the provided identifier causing the
`playback device to trigger the corresponding action during the
`playback of the segment.
`
`Id. at 9:34–52.
`
`C.
`
`The Asserted Ground of Unpatentability
`
`Petitioner challenges the patentability of 1–14 and 16–24 of the ’114
`
`patent based on the following ground:
`
`Claims Challenged
`
`35 U.S.C. §1 References
`
`1–14, 16–24
`
`103
`
`Murphy2 and Brunk3
`
`Pet. 15–20. Petitioner relies on the Declaration of Ahmed H. Tewfik, Sc.D.
`
`(Ex. 1007) to support its asserted grounds of unpatentability. In arguing
`
`against the asserted grounds of unpatentability, Patent Owner relies on the
`
`Declaration from Dr. Pierre Moulin (Ex. 2001).
`
`
`1 Because the claims at issue have an effective filing date before March 16,
`2013, the effective date of the applicable provisions of the Leahy Smith
`America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), we
`apply the pre-AIA version of 35 U.S.C. §§ 102 and 103 in this decision.
`2 GB 2 375 907 A, published Nov. 27, 2002 (Ex. 1011, “Murphy”).
`3 US 2002/0126872, published Sept. 12, 2002 (Ex. 1012, “Brunk”).
`
`5
`
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`IPR2020-00216
`Patent 9,066,114 B2
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`III. ANALYSIS
`
`A.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art on July 11,
`
`2003, would “have a bachelor’s degree in computer science, electrical
`
`engineering, or a related discipline and two years of experience in the
`
`relevant technical field—multimedia signal processing, including
`
`watermarking, fingerprinting and their applications—or the equivalent.”
`
`Pet. 8 (citing Ex. 1007 ¶ 54). Patent Owner asserts that, in addition to the
`
`experience identified by Petitioner, “[a]dditional experience could substitute
`
`for formal education, or additional formal education could substitute for
`
`experience in the relevant technical field.” Prelim. Resp. 12.
`
`For purposes of this decision, we agree with the parties’ proposed
`
`definition of ordinary skill in the art and further agree with Patent Owner
`
`that additional experience could substitute for formal education and formal
`
`education for experience because they are consistent with the prior art. See
`
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
`
`specific findings regarding ordinary skill level are not required “where the
`
`prior art itself reflects an appropriate level and a need for testimony is not
`
`shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`
`F.2d 158, 163 (Fed. Cir. 1985))).
`
`B.
`
`Claim Construction
`
`Petitioner provides proposed constructions for “a processor” and
`
`“multimedia,” and, to the extent necessary, identifies structure for the terms
`
`“fingerprint detector configured to . . .,” “fingerprint module configured to . .
`
`.,” and “input module configured to . . . .” Pet. 11–15. Patent Owner
`
`contends that “Petitioner’s claim constructions provided at the Petition,
`
`pages 11–14, do not impact Patent Owner’s arguments provided in this
`
`6
`
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`IPR2020-00216
`Patent 9,066,114 B2
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`paper.” Prelim. Resp. 12. Patent Owner does not propose any specific
`
`constructions. See generally id.
`
`We decline to construe the claim terms Petitioner proposes because no
`
`express claim construction is necessary for our determination of whether to
`
`institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`C.
`
`Asserted Prior Art
`
`Before turning to Petitioner’s asserted grounds of unpatentability, we
`
`provide a brief summary of the asserted references.
`
`1. Murphy (Ex. 1011)
`
`Murphy relates to an automated recognition system that detects audio
`
`cues in a broadcast signal. Ex. 1011, Abstract. Murphy recognizes that
`
`program makers and broadcasters typically place an audio cue, such as a
`
`piece of music or jingle, immediately before a program to alert the user that
`
`a particular program is about to begin. Id. at 3:10–14. The automated
`
`recognition system uses the audio cue to automatically generate information
`
`about the program being broadcast and insert up-to-date information about
`
`the programs in the audio signal. Id. at 3:17–23. Thus, information about
`
`the programs are generated with reference to the actual broadcast signal in
`
`real-time. Id. at 2:6–11.
`
`The automated recognition system contains a database storing
`
`information on audio cues that the system is required to recognize. Id. at
`
`6:27–7:11. Specifically, the database contains a signature for the audio cue.
`
`Id. at 6:27–7:11, 8:33–9:8, 14:6–15.
`
`During operation, the audio recognition system continuously analyzes
`
`and compares an audio signal to audio cues or jingles corresponding to
`
`programs in the database. Id. at 10:1–9, 15:15–21. When the audio
`
`7
`
`
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`IPR2020-00216
`Patent 9,066,114 B2
`
`recognition system detects a match, it generates an event flag. Id. at 10:16–
`
`17, 10:32–11:4, 12:8–16, 13:21–26. The event flags are used to generate a
`
`data signal containing information for the program. Id. at 10:9–12, 10:32–
`
`11:4, 12:8–16, 13:21–26. The data signal allows receivers to display
`
`additional information or provide additional functionality to users, such as
`
`changing the channel, trail auditing, and automated recording. Id. at 10:13–
`
`11:34, 13:22–26. To perform automated recording, the automated
`
`recognition system uses audio cues in a program to generate start flags and
`
`end flags. Id. at 10:32–11:4, 13:21–26, 14:1–3. A recording system uses the
`
`event flags to start and stop recording of the program. Id. at 11:33–12:16,
`
`13:15–14:3.
`
`2. Brunk (Ex. 1012)
`
`Brunk relates to a method of generating identifying information,
`
`specifically content signatures, from data. Ex. 1012 ¶ 3. Content signatures
`
`are derived “as a function of the content item itself. The content signature
`
`can be derived through a manipulation (e.g., a transformation, mathematical
`
`representation, hash, etc.) of the content data.” Id. ¶ 5. The content
`
`signatures are also known as “robust hashes” or “fingerprints.” Id.
`
`Content signatures may be stored in databases and used to access
`
`additional data. Id. ¶ 6. For example, the content signatures may be used to
`
`associate the content signature with data specifying actions related to the
`
`signature. Id. ¶ 28–29. Actions may include providing a URL, licensing
`
`information or rights, or verifying content and access. Id.
`
`D.
`
`Legal Standard
`
`A patent claim is unpatentable as obvious if the differences between
`
`the claimed subject matter and the prior art are such that the subject matter,
`
`as a whole, would have been obvious at the time the invention was made to a
`
`8
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`IPR2020-00216
`Patent 9,066,114 B2
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`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations
`
`including: (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of ordinary
`
`skill in the art; and (4) objective evidence of nonobviousness.4 Graham v.
`
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). Petitioners cannot satisfy their
`
`burden of proving obviousness by employing “mere conclusory statements.”
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`E. Obviousness Analysis
`
`Petitioner asserts that the subject matter of claims 1–14 and 16–24
`
`would have been obvious over Murphy in view of Brunk and the knowledge
`
`of a POSITA. Pet. 15–16, 20–70. Patent Owner disagrees. Prelim.
`
`Resp. 12–37. Having considered the information and evidence Petitioner
`
`provides, including the relevant portions of Dr. Tewfik’s declaration, we
`
`determine Petitioner does not show a reasonable likelihood of prevailing on
`
`its obviousness challenges based on Murphy in view of Brunk for the
`
`reasons explained below.
`
`
`4 Neither party presents any objective evidence of nonobviousness or any
`related arguments for us to consider at this stage of the proceeding.
`
`9
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`IPR2020-00216
`Patent 9,066,114 B2
`
`1.
`
`“reference time point” (Claims 1–10)
`
`Claims 1–10 require “each reference fingerprint identifying at least
`
`one corresponding reference action to be performed at a reference time
`
`point.” Petitioner asserts that Murphy discloses the claimed a reference time
`
`point. Pet. 24–31. In particular, Petitioner asserts that “Murphy discloses
`
`taking actions (e.g., display information, start recording, stop recording) at a
`
`time referenced to the location of the cues in the signal, for example, the
`
`time the cue is recognized.” Id. at 29 (citing Ex. 1011, 13:8–14, 13:20–26,
`
`13:33–34, 14:2–3; Ex. 1007 ¶¶ 132, 134–135). Petitioner asserts that
`
`Murphy’s fingerprint recognition system triggers actions by recognizing a
`
`particular audio cue and then generating an action-specific event flag. Id.
`
`at 30. Petitioner contends that “a POSITA would understand that the event
`
`flag may be a ‘start recording’ event flag based on the database linking: (i)
`
`the signature of an audio cue identifying the start of a program, and (ii) the
`
`code used to signify that the user wants the associated program to be
`
`recorded.” Id. (citing Ex. 1007 ¶¶ 132–133, 148–150).
`
`Patent Owner argues that Murphy fails to teach the recited reference
`
`time point identified by the reference fingerprint. Prelim. Resp. 12–17.
`
`Specifically, Patent Owner argues that Murphy’s stored audio cue signature
`
`does not identify a specific time point, i.e. a reference time point, to perform
`
`the corresponding reference action. Id. at 13–14. Patent Owner contends
`
`that Murphy’s audio cue signature stored in the database may be used to
`
`detect repeated occurrences of the audio cue during the program, and thus
`
`has no relationship or otherwise identify a reference time point for actions in
`
`the broadcast. Id. at 14–16.
`
`We agree with Patent Owner that Murphy does not teach or suggest “a
`
`reference time point identified by the reference fingerprint” at which a
`
`10
`
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`IPR2020-00216
`Patent 9,066,114 B2
`
`reference action is to be performed, as claims 1, 8, and 10 require. Rather
`
`than identifying a specific reference time at which an action is taken,
`
`Murphy discloses performing the reference action in real time, i.e., when it
`
`detects the audio cue signature. See Ex. 1011, 13:33–14:1 (describing that
`
`“[t]the recording system 82 would be activated when it detected an event
`
`flag associated with that code”). In addressing the reference time limitation,
`
`Petitioner’s expert, Dr. Tewfik identifies only taking actions at “the time the
`
`cue is recognized,” Ex. 1007 ¶ 148, rather than at some specified reference
`
`time. See id. ¶ 170 (explaining that in Murphy, “the process of recognizing
`
`the [audio] cues takes time and then causes the immediate triggering of the
`
`action”).
`
`The only reference in Murphy related to delayed action is Murphy’s
`
`teaching that “to avoid the possibility of losing the initial part of the
`
`programme, the automated recording system 76 may be configured to record
`
`a delayed version of the audio signal provided by a time delay unit 74.”
`
`Ex. 1011, 12:23–26. It is not apparent, however (and Petitioner does not
`
`explain), how recording a delayed version of an audio signal equates with or
`
`necessarily requires including a reference time for Murphy’s start/stop
`
`recording event in Murphy’s audio cue signature. See Pet. 29, 34–40. Thus,
`
`on the current record, Petitioner has not shown sufficiently that Murphy
`
`teaches or suggests the claimed reference time point. Accordingly,
`
`Petitioner has not established a reasonable likelihood of prevailing in its
`
`assertion that claims 1–10 would have been obvious over Murphy, Brunk,
`
`and a POSITA’s knowledge.
`
`2.
`
`“triggered during playback” (Claims 11–14 and 16–24)
`
`Claims 11–14 and 16–24 require an “action to be triggered during
`
`playback of the segment.” Ex. 1001, 9:36–37, 10:41–42, 10:59–60.
`
`11
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`IPR2020-00216
`Patent 9,066,114 B2
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`Petitioner asserts that Murphy discloses this limitation because “[a] POSITA
`
`would have understood that Murphy’s time delay can be employed to allow
`
`the action to be triggered during playback of the segment containing the
`
`fingerprint that triggers the action.” Pet. 48 (citing Ex. 1007 ¶ 218).
`
`Elaborating on Petitioner’s theory, Dr. Tewfik states “one of ordinary skill in
`
`the art would have understood that Murphy’s teachings regarding use of a
`
`time delay enable the system to trigger an action during the content
`
`containing the fingerprint by setting the delay to slightly less than the length
`
`of the segment.” Ex. 1007 ¶ 218.
`
`Patent Owner argues that Murphy’s receiver does not trigger actions
`
`during the playback of the segment associated with the fingerprinted
`
`segment. Prelim. Resp. 22. Patent Owner contends that Murphy’s system
`
`triggers actions after playback of the segment. Id. at 22–23. Patent Owner
`
`also contends that Dr. Tewfik does not provide a basis for triggering the
`
`action during playback. Id. at 23–25. Patent Owner argues further that
`
`incorporating a time delay would directly counter Petitioner’s motivation for
`
`modifying the receiver to incorporate the delay. Id. at 25–27. Patent Owner
`
`also argues that the delayed recording takes place after the audio signal is
`
`played over the loudspeaker, which is what Petitioner maps to the content
`
`that is played back. Id. at 27–29.
`
`We agree with Patent Owner that Petitioner has not adequately
`
`explained how Murphy teaches or suggests triggering actions during
`
`segment playback as claims 11, 20, and 21 require. Murphy describes only a
`
`generic time delay, not a particular one such that Murphy’s action (start/stop
`
`recording) would be triggered during segment playback. See Ex. 1011,
`
`12:23–26 (“to avoid the possibility of losing the initial part of the
`
`programme, the automated recording system 76 may be configured to record
`
`12
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`IPR2020-00216
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`a delayed version of the audio signal”). Although Dr. Tewfik’s proposed
`
`modification to Murphy—i.e., setting the delay to slightly less than the
`
`length of the segment (Ex. 1007 ¶ 218)—would result in the claimed action
`
`“triggered during playback,” neither the Petition nor Dr. Tewfik’s testimony
`
`explains why it would be obvious to configure Murphy in that particular
`
`way. Moreover, as Patent Owner notes, incorporating a time delay that is
`
`slightly less than the length of the segment runs counter to Dr. Tewfik’s
`
`opinion elsewhere that a skilled artisan would have set the delay to be the
`
`same as the segment’s length. See Prelim. Resp. 25–26 (quoting Ex. 1007
`
`¶¶ 175–176 (asserting that “one of ordinary skill in the art would find it
`
`obvious to configure the length of delay unit 74 to be the same
`
`standardized length as the audio cue segment to allow the recording
`
`action start at a time that includes the content that serves as the reference
`
`audio cue”). Given this deficiency, we find that Petitioner has not produced
`
`the required “articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 418 (2007). Therefore, on this record, Petitioner has not
`
`shown a reasonable likelihood that it would prevail in establishing claims
`
`11–14 and 16–24 would have been obvious over the asserted prior art.
`
`F.
`
`35 U.S.C. § 325(d)
`
`Patent Owner argues that we should exercise discretion under
`
`35 U.S.C. § 325(d) to deny institution of the proceeding because Murphy is
`
`cumulative of two references considered during prosecution and Brunk was
`
`cited and considered during prosecution of the ’114 patent. Prelim. Resp.
`
`41–47. Because we deny the Petition on its merits, we do not reach Patent
`
`Owner’s request for discretionary denial.
`
`
`
`13
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`IPR2020-00216
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`IV. CONCLUSION
`
`Taking account of the information presented in the Petition, the
`
`Preliminary Response, and the evidence of record, we determine that
`
`Petitioner fails to demonstrate a reasonable likelihood of prevailing at trial as
`
`to any challenged claim.
`
`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied, and no trial is instituted.
`
`14
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`FOR PETITIONER:
`
`Donald Daybell
`Alyssa Caridis
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`d2dtabdocket@orrick.com
`a8cptabdocket@orrick.com
`
`
`FOR PATENT OWNER:
`
`Jennifer Bailey
`Robin Snader
`Jason Mudd
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`robin.snader@eriseip.com
`jason.mudd@eriseip.com
`
`
`15
`
`
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