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.
`
`IPR2020-00218
`Patent 9,479,831 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, GARTH D. BAER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`I.
`
`INTRODUCTION
`
`Free Stream Media Corp. d/b/a Samba TV (“Petitioner”) requests an
`
`inter partes review of claims 1–29 of U.S. Patent No. 9,479,831 B2 (“the
`
`’831 patent,” Ex. 1003). 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 claim. Accordingly,
`
`we do not institute an inter partes review of claims 1–29 of the ’831 patent.
`
`II. BACKGROUND
`
`A.
`
`The ’831 Patent
`
`The ’831 patent, titled “Method and Device for Generating and
`
`Detecting a Fingerprint Functioning as a Trigger Marker in a Multimedia
`
`Signal,” issued on October 25, 2016. Ex. 1003, at [45], [54]. The ’831
`
`patent relates to a method and device for “detecting one or more trigger
`
`actions in a multimedia signal.” Id. at 2:46–48.
`
`The written description explains that “‘connecting’ external actions to
`
`a piece of video and/or audio content” creates a more interactive television
`
`viewing or music listening experience. Id. at 1:30–34. Facilitating this
`
`function requires enabling “reliable detection of time points in a television
`
`program, a movie, a music piece, etc. where such additional information is
`
`2
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`relevant.” Id. at 1:37–40. 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 1:41–
`
`2:43.
`
`The ’831 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 2:48–53. The ’831
`
`patent purportedly achieves this by using a fingerprint as a time marker to
`
`trigger actions. Id. at 3:16–20. 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 4:25–29. The fingerprint is stored for later use in a
`
`database, memory, storage, and/or the like. Id. at 5:18–23. 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 3:29–33.
`
`According to the ’831 patent, detection of the fingerprint occurs
`
`during playback of the multimedia signal on a playback device. Id. at 5:56–
`
`61. During playback, a fingerprint stream is generated from the multimedia
`
`signal. Id. at 5:61–6:1. 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 6:12–6:36.
`
`3
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`B.
`
`Illustrative Claim
`
`Petitioner challenges claims 1–29 of the ’831 patent. Pet. 1. Of the
`
`challenged claims, claims 1, 11, 19, and 24 are independent. Claim 1 is
`
`illustrative of the subject matter in claims 1–29 and recites:
`
`1. A method comprising:
`
`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;
`
`determining, by a processor of the multimedia playback device,
`a trigger fingerprint from a segment of the multimedia content
`being played back on the multimedia playback device;
`
`accessing a plurality of reference fingerprints, each reference
`fingerprint among the plurality of reference fingerprints having
`been previously derived from a respective segment of the
`multimedia content and associated with at
`least one
`corresponding reference action;
`
`obtaining a match between the trigger fingerprint and a particular
`reference
`fingerprint among
`the plurality of
`reference
`fingerprints;
`
`reference action
`identifying a particular corresponding
`associated with the particular reference fingerprint, the particular
`corresponding reference action being associated with a time
`point indicating when, in the multimedia content, the particular
`corresponding reference action is to be performed; and
`
`performing, by the processor of the multimedia playback device,
`the particular corresponding
`reference action, wherein
`performance of the particular reference action causes the
`multimedia playback device to provide, on the display associated
`with the multimedia playback device, information related to the
`segment of the multimedia content.
`
`Ex. 1003, 8:31–60.
`
`4
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`C.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–29 of the ’831
`
`patent based on the following grounds:
`
`Claims Challenged
`
`35 U.S.C. §1 References
`
`1, 2, 5, 8–13, 15, 16,
`18–21, 23–29
`3, 4, 14, 17, 22
`4–7
`
`103(a)
`
`103(a)
`103(a)
`
`Murphy2 or Murphy in view of
`Brunk3
`Murphy in view of Brunk
`Murphy in view of Brunk and
`Kate4
`
`Pet. 21. Petitioner relies on the Declaration of Ahmed H. Tewfik, Sc.D.
`
`(Ex. 1009) to support its asserted grounds of unpatentability. In arguing
`
`against the asserted grounds of unpatentability, Patent Owner relies on the
`
`Declaration of Pierre Moulin, Sc.D. (Ex. 2001).
`
`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 possessed “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,
`
`
`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).
`3 US 2002/0126872, published Sept. 12, 2002 (Ex. 1012).
`4 W. Kate et al., trigg&link: A New Dimension in Television Program
`Making, in Lecture Notes in Computer Science 1197, vol. 1242,
`Multimedia Applications, Services and Techniques-ECMAST ’97 (Second
`European Conference Milan, Italy May 21–23, 1997 Proceedings),
`(1997) 51–65 (Ex. 1013).
`
`5
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`including watermarking, fingerprinting and their applications—or the
`
`equivalent.” Pet. 8 (citing Ex. 1009 ¶ 54). Patent Owner agrees with
`
`Petitioner’s proposed level of ordinary skill in the art, and further proposes
`
`that “[a]dditional experience could substitute for formal education, or
`
`additional formal education could substitute for experience in the relevant
`
`technical field.” Prelim. Resp. 13.
`
`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
`
`For petitions requesting an inter partes review filed on or after
`
`November 13, 2018, we interpret a claim “using the same claim construction
`
`standard that would be used to construe the claim in a civil action under
`
`35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). The present Petition
`
`was filed on September 23, 2019, so we construe the claims of the ’831
`
`patent using the federal district court standard. Under that standard, we
`
`construe claims “in accordance with the ordinary and customary meaning of
`
`such claim as understood by one of ordinary skill in the art and the
`
`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b).
`
`Furthermore, at this stage in the proceeding, we expressly construe the
`
`claims only to the extent necessary to determine whether to institute inter
`
`6
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`Petitioner proposes constructions for the terms “a processor” and
`
`“multimedia,” and, to the extent necessary, identifies structure for the term
`
`“fingerprint detector configured to . . . .” Pet. 16–20. Patent Owner
`
`contends that “Petitioner’s claim constructions provided at the Petition,
`
`pages 16-19, do not impact Patent Owner’s arguments provided in this
`
`paper.” Prelim. Resp. 13. Patent Owner does not propose any specific
`
`constructions. See generally id.
`
`For purposes of this decision, it is not necessary for us to construe any
`
`claim term. See Nidec, 868 F.3d at 1017.
`
`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 to insert up-to-date information
`
`about the programs into the audio signal. Id. at 3:17–23. Thus, information
`
`7
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`about the programs is 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
`
`recognition system detects a match, it generates an event flag. Id. at 10:16–
`
`17, 10:32–11:4, 12:8–15, 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, 12:8–15, 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 the program. Id. at 11:32–12:16,
`
`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.
`
`8
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`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.
`
`3.
`
`Kate (Ex. 1013)
`
`Kate relates to a method of enhancing television program making by
`
`providing additional information, additional services, and enhanced
`
`programming through trigg&link. Ex. 1013, 51 (Abstract).5 Program
`
`providers may insert triggers in a broadcast stream related to the program’s
`
`content. Id. at 52. The triggers provide links to additional information
`
`located in another part of the broadcast stream, on local storage, or on the
`
`internet. Id. The additional information can be provided as static triggers,
`
`dynamic triggers, or living triggers. Id. at 53. The additional information
`
`can be displayed in three ways: replacing the current broadcast, displaying
`
`picture-in-picture, and overlaying information. Id. at 55.
`
`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
`
`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
`
`
`5 We refer to the original page numbers of the reference instead of the page
`numbers that Petitioner added.
`
`9
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`between the claimed subject matter and the prior art; (3) the level of ordinary
`
`skill in the art; and (4) objective evidence of nonobviousness.6 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 three obviousness grounds in this proceeding:
`
`(1) that the subject matter of claims 1, 2, 5, 8–13, 15, 16, 18–21, and 23–29
`
`would have been obvious over Murphy or, alternatively, over Murphy and
`
`Brunk; (2) that the subject matter of claims 3, 4, 14, 17, and 22 would have
`
`been obvious over Murphy and Brunk; and (3) that the subject matter of
`
`claims 4–7 would have been obvious over Murphy and Kate, or Murphy,
`
`Brunk, and Kate. Pet. 20–71. Patent Owner disagrees. Prelim. Resp. 14–
`
`31. 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 any of its
`
`obviousness challenges.
`
`
`6 Neither party presents any objective evidence of nonobviousness or any
`related arguments for us to consider at this stage of the proceeding.
`
`10
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`1.
`
`Claims 1, 2, 5, 8–13, 15, 16, 18–21, and 23–29
`over Murphy or Murphy and Brunk
`
`The nub of the parties’ dispute at this stage centers on whether
`
`Murphy discloses certain limitations, including the limitation “the particular
`
`corresponding reference action being associated with a time point indicating
`
`when, in the multimedia content, the particular corresponding reference
`
`action is to be performed,” that claim 1 recites.7 Prelim. Resp. 14–31. We
`
`direct our discussion on this limitation, which is dispositive of the parties’
`
`dispute.
`
`Petitioner asserts that Murphy discloses particular actions associated
`
`with time points indicating when, in the multimedia signal, the particular
`
`reference action should be performed. Pet. 35. Petitioner contends that
`
`Murphy’s recognition system detects fingerprints and generates event flags
`
`to cause the recording system to start or stop recording the signal at specific
`
`times marked by the location of the fingerprint in the signal. Id. at 35–36
`
`(citing Ex. 1009 ¶ 176; Ex. 1011, 13:20–26, 13:33–34, 14:2–3). Petitioner
`
`contends that a person of ordinary skill in the art would have understood that
`
`Murphy’s signatures could be used “to generate any desirable sequence of
`
`triggers and actions at various time points throughout the signal.” Id. at 36
`
`(citing Ex. 1009 ¶ 162; Ex. 1011, 13:8–14). Petitioner also contends that
`
`Murphy teaches actions triggered by a fingerprint at time points before or
`
`
`7 Independent claims 11, 19, and 24 each include a substantively similar
`claim limitation. Ex. 1003, 9:44–47 (claim 11), 10:32–36 (claim 19), 11:9–
`12 (claim 24). The parties treat claims 1, 11, 19, and 24 the same. See
`Pet. 52, 58, 62 (arguments for claims 11, 19, and 24 all referring back to
`Petitioner’s analysis of the limitation for claim 1), Prelim. Resp. 15–16
`(discussing claims 1, 11, 19, and 24 together). Thus, we focus our analysis
`on claim 1.
`
`11
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`after the time point of the trigger fingerprint in the signal, such as using a
`
`time delay to record the entire program or stopping recording after “the
`
`length of the programme.” Id. at 36–39 (citing Ex. 1009 ¶¶ 178–184, 209–
`
`212; Ex. 1011, Fig. 3, Fig. 4, 3:10–17, 7:29–30, 13:27–14:3, 14:32–35).
`
`And Petitioner asserts that one of ordinary skill in the art would have known
`
`to trigger actions at a sequence of points in content because the ordinarily
`
`skilled artisan knew that fingerprints were beneficial substitutes for
`
`watermarks, which were “known to be usable as time markers.” Id. at 39–40
`
`(citing Pet. § IV.B; Ex. 1009 ¶¶ 71–76; Ex. 1013, 5, 51–52, 62–64).
`
`Patent Owner responds that the timing of Murphy’s recording depends
`
`on when Murphy’s system recognizes the audio cue or detects the generated
`
`event flag. Id. at 16–18 (citing Pet. 29, 35–39; Ex. 1009 ¶¶ 166, 177;
`
`Ex. 1011, 4:16–24, 12:17–26, 13:15–26; Ex. 2001 ¶ 51). Patent Owner
`
`contends that Murphy’s alleged disclosure of triggering actions before or
`
`after the location of the signature in the audio signal does not teach an action
`
`associated with an indicated time point. Id. at 17. Patent Owner also argues
`
`that Murphy teaches away from generating an action associated with a time
`
`point because “[a]ssociating a time point with an action in Murphy’s system
`
`would thus be adding delay and rendering signal generation less real time
`
`and less preferable.” Id. at 19 (citing Ex. 2001 ¶ 52). And Patent Owner
`
`contends that Petitioner does not explain how substituting fingerprints for
`
`watermarks shows how an action is associated with a time point indicating
`
`where in the in the multimedia content an action is to be performed. Id.
`
`On the current record, we find that Patent Owner has the better
`
`position. Claim 1 requires that the reference fingerprint itself is associated
`
`with a time point indicating when, in the multimedia content, the particular
`
`corresponding reference action is to be performed. We agree with Petitioner
`
`12
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`that Murphy teaches, inter alia, generating event flags to cause the recording
`
`system to start or stop recording the signal and that Murphy teaches using a
`
`time delay. Ex. 1011, 13:15–14:3, 14:32–35. Although these teachings
`
`implicate time, Petitioner does not explain adequately how Murphy’s system
`
`associates the audio cue signature stored in the database (i.e., fingerprint)
`
`with a particular time point in the audio signal indicating when the action is
`
`to be performed. Rather, as Patent Owner argues, Murphy discloses
`
`performing the action when it detects the audio cue signature. For example,
`
`Murphy explains that “[w]hen a match with a particular audio cue is
`
`detected an event flag is set” and “recording system 82 would be activated
`
`when it detected an event flag associated with that code.” Ex. 1011, 13:20–
`
`26, 13:33–14:1. And Petitioner states that “when a detected signature in the
`
`signal (a trigger fingerprint) is matched to a pre-processed signature (a
`
`reference fingerprint), an action is triggered using an action-specific control
`
`signal (“event flag”) that triggers corresponding actions.” Pet. 29 (citing
`
`Ex. 1011, 10:1–2, 13:21–26). Murphy’s disclosure, and Petitioner’s claim
`
`mapping, ties performing the action to detecting the fingerprint (i.e.,
`
`determining a trigger fingerprint) and does not associate the reference action
`
`with a particular time point. Dr. Tewfik acknowledges as much, testifying
`
`that “the process of recognizing the audio cue takes time and then causes the
`
`immediate triggering of the action.” Ex. 1009 ¶ 177.
`
`As to time delay, Murphy explains 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. Murphy also states that the
`
`automated recording system “would start recording when the news bulletin
`
`event flag is detected.” Id. at 12:8–16. It does not follow from this
`
`13
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`disclosure, however, that the reference action (i.e., starting or stopping
`
`recording) is associated with a time point indicating when it is to be
`
`performed. In other words, Murphy indicates that starting or stopping
`
`recording will occur, but that is not the same as associating the starting or
`
`stopping with a particular time point in the multimedia signal.
`
`Petitioner’s assertion that a person of ordinary skill in the art would
`
`have known how to trigger actions at a sequence of points in content because
`
`fingerprints are a substitute for known watermarking also is unpersuasive.
`
`Even assuming that watermarks were “usable as time markers,” Pet. 39,
`
`Petitioner fails to explain how those time markers would have worked in
`
`Murphy’s system, which does not associate the action with a time point.
`
`See, e.g., Ex. 1011, 13:33–14:1. Accordingly, Petitioner fails to establish a
`
`reasonable likelihood of prevailing in its assertion that Murphy, or Murphy
`
`and Brunk, would have rendered obvious the subject matter of claims 1, 2, 5,
`
`8–13, 15, 16, 18–21, and 23–29.
`
`2.
`
`Remaining grounds
`
`Petitioner asserts that the subject matter of claims 3, 4, 14, 17, and 22
`
`would have been obvious over Murphy and Brunk and that the subject
`
`matter of claims 4–7 would have been obvious over Murphy and Kate or
`
`Murphy, Brunk and Kate. See, e.g., Pet. 21. Claims 3–7, 14, 17, and 22
`
`depend, directly or indirectly, from one of claims 1, 11, 19, and 24 and also
`
`require “the particular corresponding reference action being associated with
`
`a time point indicating when, in the multimedia content, the particular
`
`corresponding reference action is to be performed.” Petitioner does not rely
`
`on either Brunk or Kate to cure the deficiencies we identify in Murphy.
`
`Accordingly, for the reasons set forth above, Petitioner does not establish a
`
`reasonable likelihood of prevailing in its assertion that Murphy and Brunk,
`
`14
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`Murphy and Kate, or Murphy, Brunk, and Kate would have rendered
`
`obvious the subject matter of claims 3–7, 14, 17, and 22.
`
`F.
`
`Discretion to Deny Institution under 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 the Office considered during prosecution of the
`
`application leading to the ’831 patent, and Murphy and Brunk were
`
`considered during prosecution of at least one patent in the same family as the
`
`’831 patent. Prelim. Resp. 32–39. Because we deny the Petition on its
`
`merits, we do not reach Patent Owner’s request for discretionary denial.
`
`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.
`
`15
`
`

`

`IPR2020-00218
`Patent 9,479,831 B2
`
`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
`
`16
`
`