Gracenote, Inc.

Patent Trials and Appeals Board

Jun 5, 2020

IPR2020-00216 (P.T.A.B. Jun. 5, 2020)

Trials@uspto.gov Paper 19
571-272-7822 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

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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
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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.
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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;
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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”).
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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
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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
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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
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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.
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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
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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.
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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
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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.

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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.
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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