Gracenote, Inc.

Patent Trials and Appeals Board

Jun 5, 2020

IPR2020-00217 (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.

IPR2020-00217
Patent 9,407,962 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 1–20 of U.S. Patent No. 9,407,962 B2 (“the
’962 patent,” Ex. 1002). 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 1–20 of the ’962 patent.
II. BACKGROUND
A. The ’962 Patent
The ’962 patent, titled “Method and Device for Generating and
Detecting a Fingerprint Functioning as a Trigger Marker in a Multimedia
Signal,” issued on August 2, 2016. Ex. 1002, [45], [54]. The ’962 patent
relates to a method and device for “associating trigger information with a
multimedia signal.” Id. at 1:21–23.
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 1:27–31.
Facilitating this function requires enabling “reliable detection of time points
in a television program, a movie, a music piece, etc. where such additional
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information is relevant.” Id. at 1:34–37. 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 1:38–2:39.
The ’962 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 2:44–49. The ’962
patent purportedly achieves this by using a fingerprint as a time marker to
trigger actions. Id. at 3:11–15. 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 4:20–24. The fingerprint is stored for later use in a
database, memory, storage, and/or the like. Id. at 5:12–17. 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 3:24–28.
According to the ’962 patent, detection of the fingerprint occurs
during playback of the multimedia signal on a playback device. Id. at 5:50–
55. During playback, a fingerprint stream is generated from the multimedia
signal. Id. at 55–62. 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 6:5–6:31.
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B. Illustrative Claims
Petitioner challenges claims 1–20 of the ’962 patent. Pet. 1. Of the
challenged claims, claims 1, 8, and 15 are independent. Claim 1 is
illustrative of the subject matter in claims 1–20 and recites:
1. A method comprising:
accessing a database that associates a first fingerprint with a first
action, the first fingerprint being for a first trigger time point of
a plurality of trigger time points within a multimedia signal, each
trigger time point of the plurality of trigger time points
corresponding to a segment of a plurality of segments of the
multimedia signal;
receiving a second trigger time point of the plurality of trigger
time points and a second action;
deriving, by a processor of a machine, a second fingerprint based
on a segment of the multimedia signal that corresponds to the
second trigger time point; and
updating the database to associate the second fingerprint with the
second action.
Ex. 1002, 8:13–26.
C. The Asserted Ground of Unpatentability
Petitioner challenges claims 1–20 of the ’962 patent based on the following
ground. Pet. 13–20.
Claims Challenged 35 U.S.C. §1 References
1–20 103 Murphy2 in view of Brunk3

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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Petitioner relies on the Declaration of Ahmed H. Tewfik, Sc.D.
(Ex. 1008) 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).
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. 9 (citing Ex. 1008 ¶ 49).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 the term “multimedia.”
Pet. 11–12. Patent Owner contends that “Petitioner’s claim constructions
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provided at the Petition, pages 11–12, do not impact Patent Owner’s
arguments provided in this 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
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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, 12:8–16, 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,
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Patent 9,407,962 B2
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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
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 1–20 would have
been obvious over Murphy in view of Brunk. Pet. 13–14, 20–56. Patent
Owner disagrees. Prelim. Resp. 13–37. 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 and 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. Claims 1–20 over Murphy and Brunk
The parties’ dispute at this stage centers on whether Murphy discloses
certain limitations, including “receiving a second trigger time point,” as
claims 1, 8 and 15 recite. Prelim. Resp. 12–21. Accordingly, we focus our
discussion on this limitation, which is dispositive of the parties’ dispute.
a) “receiving a second trigger time point”
Petitioner asserts that Murphy discloses receiving a second trigger
time point. Pet. 30. Petitioner points to users adding further fingerprints to a
database that already has a first trigger time point stored in the database. Id.
(citing Ex. 1008 ¶ 151; Ex. 1011, 14:5–6). Petitioner asserts that Murphy
discloses users inputting samples of an audio cue recorded off-air, where the
recognition system can process the signal and store appropriate audio cue
information into the database. Pet. 30–31 (citing Ex. 1008 ¶¶ 152–153;
Ex. 1011, 14:11–15). Dr. Tewfik states that Murphy discusses one example
where a user may tell the system (i.e., receiving) to start recording (i.e., a
second action) at the beginning of a desired program (i.e., a second trigger
time point) based on the system detecting an audio cue signature of a
program (i.e., a second fingerprint). Ex. 1008 ¶ 152 (citing Ex. 1011, 3:10–
14, 14:12–31).
Patent Owner contends that Murphy does not teach receiving a second
trigger time point. Prelim. Resp. 26. Patent Owner argues that while
Murphy’s system receives and stores an audio cue, there is no time point
information for the audio cue signature. Id. at 27–28. Patent Owner asserts
that Murphy’s audio cues recorded off-air do not provide a trigger time point
to the recognition system because the audio cue is used to record subsequent
episodes of a program, not a particular episode of a program. Id. at 29–30.
Patent Owner also argues that the Petition does not explain how a user
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performing a recording action at a particular time satisfies the recited
“receiving a second trigger time point” or how the time is “received” by the
system. Id. at 30. Patent Owner further argues that when Murphy’s system
receives an instruction to record, the user only provides the system with “the
sample of the audio cue” and not a trigger time point. Id. at 31–32 (citing
Ex. 1011, 13:27–14:1, 14:15–17; Ex. 2001 ¶ 48).
On the current record, we agree with Patent Owner that Murphy does
not teach or suggest “receiving a second trigger time point” as claims 1, 8,
and 15 require. Rather than including a trigger time point at which an action
is to be taken, Murphy discloses performing actions in real time, i.e., when
the system detects an audio cue signature. See Ex. 1011, 13:33–14:1
(describing that “[t]the recording system [] would be activated when it
detected an event flag associated with that code”). In addressing the
“receiving a second trigger time point” limitation, Petitioner identifies only
actions taken at “the point in the recording when the audio cue is
encountered,” rather than at an identified time that the system receives. Pet.
31. According to Petitioner, “[w]hen a user builds up the database, the user
adds further fingerprints, corresponding to further trigger time points.” Id. at
30. Receiving fingerprints that correspond to unspecified times is not the
same, however, as receiving a time itself, as the claims require.
Accordingly, Petitioner fails to establish a reasonable likelihood of
prevailing in its assertion that Murphy and Brunk would have rendered
obvious the subject matter of claims 1–20.
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 considered during prosecution and Brunk was
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cited and considered during prosecution of the ’962 patent. Prelim. Resp.
38–43. 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.
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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