Gracenote, Inc.v.Iceberg Industries LLC

Patent Trial and Appeal Board

Mar 7, 2014

11624973 (P.T.A.B. Mar. 7, 2014)

Trials@uspto.gov Paper 6
Tel: 571-272-7822 Entered: March 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

GRACENOTE, INC.
Petitioner

v.

ICEBERG INDUSTRIES LLC
Patent Owner
_______________

Case IPR2013-00552
Patent 7,783,489 B2
_______________

Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
Gracenote, Inc. (“Petitioner”) filed a petition to institute an inter partes
review of claims 14, 15, 17, and 18 (Paper 1; “Pet.”) of Patent No.
US 7,783,489 B2 (Ex. 1020; “the ‟489 Patent”). Iceberg Industries LLC
(“Patent Owner”) did not file a patent owner preliminary response. We have
jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a) which provides as follows:
THRESHOLD.—The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and
any response filed under section 313 shows that there is a
reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
For the reasons described below, we determine that the present record
fails to show a reasonable likelihood Petitioner will prevail in showing the
unpatentability of any claim. Accordingly, we deny institution as to all
claims of the ‟489 Patent.
A. Related Proceedings
The ʼ489 Patent is involved in concurrent district court litigation,
namely, Iceberg Indus., LLC v. SoundHound, Inc., 2-11-cv-00149 (E.D. Va.)
(March 8, 2011). See Notice Pursuant to 37 C.F.R. § 42.8 (Paper 5), 1. A
related patent, Patent No. US 7,174,293 B2 (Ex. 1001; “the ‟293 Patent”), is
challenged in a co-pending petition for inter partes review, Gracenote, Inc. v.
Iceberg Indus. LLC, IPR2013-00551. Id.
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B. The ’489 Patent
The ‟489 Patent relates to apparatus for direct audio capture and
identification of the captured audio. Ex. 1020, Abstr. With regard to the
claims challenged in the present petition, the ‟489 Patent generally teaches
using a hand-held device to capture samples of free-field audio, such as audio
signals transmitted via cable or wireless broadcast, computer networks (e.g.,
the Internet), or satellite transmission or played locally. Id. at col. 1, ll. 20-
33. For example, a sample of free-field audio may be a part of a song heard
in a coffee shop or on the radio or TV. Id. at col. 18, ll. 37-40; see also Pet.
2.
Signal samples are transmitted by the hand-held device to a
recognition site, and the recognition site then compares the received feature
signals to the stored feature signal sets. Id. at col. 4, ll. 9-29. For example,
after coupling the hand-held device to a local processor, like a personal
computer (“PC”), the processor transmits a representation of the saved
sample to a host computer system, e.g., a recognition site. Id. at figs. 1 and 2.
The recognition site, which may comprise a recognition processor and a
recognition memory, converts audio signals received from the hand-held
device into a plurality of feature time series waveforms, which may
correspond to spectrally distinct portions of the received input audio stream
and stores a plurality of feature signal sets which correspond to the feature
time series waveforms. Id. at col. 3, ll. 53-55; col. 4, ll. 19-27; see id. at fig.
3. “The recognition memory stores data corresponding to a plurality of audio
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templates [and t]he recognition processor correlates the audio signal features
transmitted from the local processor [coupleable to the audio capture device]
with at least one of the audio templates stored in the recognition processor
memory.” Id. at col. 3, ll. 55-60. Each such audio template corresponds to
substantially an entire recorded audio work, and the recognition processor is
adapted to compare the signal corresponding to the free-field audio signal to
at least one of the audio templates. The recognition memory may be a
relational database. After the recognition site identifies the signal sample
transmitted from the hand-held device, the recognition site sends information
about the signal sample to the hand-held device and may allow a user of the
hand-held device to order a copy of the song. See id. at figs. 1 and 3.
An apparatus, as recited in the challenged claims, is illustrated by the
diagram in Figure 1, reproduced below, depicting the operation of an audio
capture and identification system:
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In Figure 1 of the ‟489 Patent shown above, hand-held audio capture device 2
captures and stores, i.e., records, a free-field audio signal played, broadcast,
or otherwise made available by audio source 1, such as a radio, a compact
disc (“CD”) player, a PC, phonograph player, or a television receiver. Id. at
col. 4, ll. 60-64. Referring to Figure 2 of the ‟489 Patent, an audio capture
device, such as audio capture device 2, may be separate from or embedded in
another electronic device, such as a cellular telephone, personal digital
assistant, or any type of portable radio receiver. Id. at col. 11, l. 66-col. 12, l.
2. Audio capture device 2 includes analog-to-digital converter 7 and further
may include microphone 6. Id. at col. 12, ll. 2-8. Audio capture device 2
transmits at least a portion of the captured, free-field audio signal to the
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recognition site, such as recognition facility 4, directly or via electronic
means, for example, via personal computer 3 or a data terminal. Id. at col.
11, ll. 51-54. The transmitted portion of the captured audio signal may
comprise less than the entire captured audio work. Alternatively, instead of
storing the audio waveform of the captured audio signal, recognition features
may be extracted from the captured audio signals, compressed, and stored in
audio capture device 2. Id. at ll. 49-51.
As depicted in Figure 1, recognition facility or host computer site 4
may access recognition database 5 where templates corresponding to
substantially entire recorded audio works are stored. We understand that the
host computer site may contain the recognition processor (not shown). The
recognition processor may provide a recognition signal based on the
correlation. Id. at col. 3, ll. 60-61. Thus, after the audio signal features are
compared with the templates stored in the recognition memory, the
recognition processor may provide a recognition signal to the audio capture
device when the received feature signals match at least one of the stored
feature signal sets. Id. at col. 4, ll. 26-29; col. 4, l. 66 - col. 5, l. 4.
Figure 2, reproduced below, is illustrative of a hand-held device of the
‟489 Patent:
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Figure 2 depicts the hand-held device comprising a receiving means, such as
microphone 6; an analog to digital converter, such as analog to digital
converter 7; and a transmitter integral to the hand-held device.
Finally, Figure 3, reproduced below, is illustrative of a signal
recognition system:
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Figure 3 depicts a signal recognition system in which website computer 14
may interact with users via the Internet 13. Id. at col. 12, ll. 30-32. For
example, Figure 1, reproduced above, depicts a signal transmitted from audio
capture device 2 to host site computer at recognition facility 4 via a PC of
data terminal.
Referring to Figure 4 (not reproduced here), an audio interface and
signal processor is depicted which is used in the pattern initialization system,
e.g., pattern initialization subsystem 17 of Figure 3, to acquire audio at the
host site and to extract features for use in reference pattern generation. Id. at
col. 5, ll. 14-17. Further, the type of signal processor depicted in Figure 4
may be used in pattern initialization subsystem 17 to extract features for
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generation of reference patterns, e.g., audio templates, for storage in master
pattern database 18. Id. at fig. 3.
C. Illustrative Claim
Challenged claims 14 and 15 are independent. Challenged claims 17
and 18 depend from independent claim 15. Claim 14 is illustrative and is
reproduced below:
14. A hand-held music capture device comprising:
a microphone which receives a random portion of an analog
audio signal;
an analog-to-digital converter to convert the received portion of
the audio signal into a digital signal;
a signal processor which (i) receives a less than approximately
six second portion of the digital signal and (ii) signal processes same
into a digital time series representing the voltage waveform of the
captured audio signal;
a memory which stores the processed fixed-time portion of the
digital signal that corresponds to less than a complete audio work;
transmission structure which transmits the stored portion of the
digital signal to a recognition processor; and
indicia structure configured to indicate an identification signal
provided by the recognition processor, said identification signal
corresponding to the random portion of the analog audio signal.
D. References Relied Upon
Petitioner relies upon the following references:
Blum US 5,918,223 June 29, 1999 (Ex. 1006);
Sonoda US 6,121,530 Sept. 19, 2000 (Ex. 1008);
(filed Mar. 19, 1999)

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Levy US 6,505,160 B1 Jan. 7, 2003 (Ex. 1004);
(filed May 2, 2000)
Ikezoye US 6,834,308 B1 Dec. 21, 2004 (Ex. 1005);
(filed Feb. 17, 2000)
Wang US 6,990,453 B2 Jan. 24, 2006 (Ex. 1009);
(filed Apr. 20, 2001)
Rhoads US 7,562,392 B1 July 14, 2009 (Ex. 1003);
(filed Dec. 30, 1999)
David Gibson, “NAME THAT CLIP, CONTENT-BASED MUSIC
RETRIEVAL,” Conference Presentation, Berkeley CA (Aug. 19, 1999)
(published on-line at http://www.cs.berkley.edu/~dag/NameThatClip/)
(“Gibson”) (Ex. 1007).
E. The Asserted Grounds
The specific grounds asserted by Petitioner are detailed in the table
below:
Claims Statutory Basis Applied Reference(s)
14, 15, and 17 35 U.S.C. § 102(e) Wang
15 and 17 35 U.S.C. § 102(e) Ikezoye
14, 15, 17, and 18
1
35 U.S.C. § 102(e) Sonoda
14, 15, 17, and 18 35 U.S.C. § 103 Wang
14, 15, 17, and 18 35 U.S.C. § 103 Ikezoye and one or more of
Blum and Gibson

1
We note that Petitioner‟s heading for “Ground 4” alleges anticipation by
Sonoda but the table of statutory grounds lists only 35 U.S.C. § 103 and does
not include 35 U.S.C. § 102. Pet. 47. We consider this to be a typographical
error in Petitioner‟s table.
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14, 15, 17, and 18 35 U.S.C. § 103 Rhoads and one or more of
Levy, Blum, and Gibson
14, 15, 17, and 18 35 U.S.C. § 103 Sonoda
14, 15, 17, and 18 35 U.S.C. § 103 Sonoda and one or more of
Gibson and Blum

II. CLAIM CONSTRUCTION
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b); see also Office Patent
Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) (Claim
Construction). Under the broadest reasonable construction standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002).
Petitioner proposes particular constructions for several claim terms.
Pet. 24. To determine whether to institute an inter partes review, we
construe the claim terms that Petitioner relies upon in asserting the
unpatentability of the challenged claims.
A. “signal processes same into a digital time series representing the
voltage waveform of the captured audio signal”
Claim 14 recites that the claimed “hand-held music capture device”
comprises a signal processor which receives a less than six second portion of
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the digital signal and “signal processes same into a digital time series
representing the voltage waveform of the captured audio signal.” Petitioner
argues that this claim limitation from claim 14 should mean “converting the
signal from an analog to a digital signal.” Pet. 24. Petitioner fails to provide
any support for its argument that this claim limitation should deviate from the
ordinary and customary meaning of the claim terms. See id. Furthermore,
Petitioner‟s proposed construction is contradictory to the previous limitation
in the claim 14 that recites “an analog-to-digital converter to convert the
received portion of the audio signal into a digital signal.” We are not
persuaded by Petitioner‟s argument that the “signal processor” in claim 14
does the analog to digital conversion as opposed to the “analog-to-digital
converter,” recited in claim 14. Accordingly, we do not adopt Petitioner‟s
proposed construction and find the claim limitation should be construed
according to its ordinary and customary meaning.
B. “spectrally distinct audio signal features”
Claim 15 recites a “processor extracting a time series of spectrally
distinct audio signal features from the captured free-field audio signals.”
Petitioner argues that the claim limitation “spectrally distinct audio signal
features” means “features representing a measure of energy present in
different portions of the audio spectrum.” Pet. 24.
The Specification of the ‟489 Patent describes that “[o]ne of the hand-
held device and the local processor includes circuitry which extracts a time
series of spectrally distinct audio signal features from the captured free-field
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audio signals.” Ex. 1020, col. 3, ll. 52-55 (emphasis added). Moreover, a
relevant definition of the term “spectrum” is “[a] distribution of entities or
properties arrayed in order of increasing or decreasing magnitude.” OXFORD
DICTIONARY OF SCIENCE 760 (1999) (Ex. 3001). The Specification of the
‟489 Patent describes that “audio signals are digitized and processed to
extract sequences of important features.” Ex. 1020, col. 7, ll. 57-58. For
some embodiments, the Specification of the ‟489 Patent describes that
“[t]hese features generally represent measurements of energy present in
different portions of the audio spectrum.” Id. at ll. 58-60. Petitioner fails to
provide a sufficient basis, however, for reading this particular limitation from
the Specification into claim 15.
Thus, within the context of the challenged claims, we construe the
phrase “spectrally distinct audio signal features” to mean audio signal
features that can distinguished based upon their value within a spectrum.
C. “corresponding to”
Claim 14 recites “said identification signal corresponding to the
random portion of the analog audio signal.” Claim 14 (emphasis added).
Petitioner argues that the phrase “corresponding to” should be construed to
mean that “there is a correspondence between the „identification signal‟ and
„the random portion of the analog signal.‟” Pet. 24. The Specification of the
‟489 Patent does not define expressly the term “corresponding to.”
Nevertheless, relevant definitions of the term “corresponding” are
“identical in all essentials or respects” or “similar in position, purpose, form,
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etc.” RANDOM HOUSE WEBSTER‟S COLLEGE DICTIONARY 299 (2d ed. 1999)
(Ex. 3002). Thus, within the context of the challenged claims, we construe
the phrase “corresponding to” to mean similar in form to another thing, such
that, for example, as to claim 14, the identification signal is similar in form to
the random portion of the analog audio signal.
III. DECISION TO INSTITUTE
For the reasons described below, we do not institute an inter partes
review on the grounds asserted by Petitioner against any of claims 14, 15, 17,
or 18.
IV. GROUNDS FOR REVIEW
A. Priority Date for the ’489 Patent Claims
The ‟489 Patent, issued from U.S. Patent Application No. 11/624,973
(“the ‟973 Application”), filed Jan. 19, 2007, is a continuation of the
‟293 Patent, issued from U.S. Patent Application No. 09/903,627 (“the ‟627
Application”), filed July 13, 2001, which is a continuation-in-part of
U.S. Patent Application No. 09/420,945 (Ex.1017 ; “the ‟945 Application”),
filed October 19, 1999, and claims the benefit of two provisional
applications: U.S. Provisional Application No. 60/218,824 (Ex. 1016; “the
‟824 Application”), filed July 18, 2000, and U.S. Provisional Application No.
60/155,064 (Ex. 1018; “the ‟064 Application”), filed September 21, 1999.
See Ex. 1020, items [63] and [60] on face page. Wang, Ikezoye, and Rhoads
have U.S. priority dates of July 31, 2000; February 17, 2000; and May 19,
1999; respectively. Ex. 1009 (Item [60] on face page); Ex. 1005 (Item [22]
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5/19/99
9/21/99
‟064 App.
filed
10/19/99
‟945 App.
filed
Levy Patent
filed
5/2/00
2/17/00
Ikezoye
Patent
filed
Levy Prov.
and Rhoads
Prov. filed
3/19/99
Sonoda
filed
7/18/00
‟824 App.
filed
Wang Prov.
filed
7/31/00
4/20/01
Wang Patent
filed
‟293 Patent
filed
7/13/01
12/30/99
Rhoads
Patent
filed
1/19/07
‟489 Patent
filed
on face page); Ex. 1003 (Item [60] on face page). For purposes of this
decision, we treat each of these references as entitled to the benefit of its
earliest claimed priority date. Initially, we note that Petitioner only may
request inter partes review based on statutory grounds under 35 U.S.C.
§§ 102 or 103 based on patents or printed publications. 37 C.F.R.
§ 42.104(b)(2). Further, Petitioner must identify the references relied upon
in support of its challenge to the ‟489 Patent. Id.
As shown below in our timeline (Diagram 1) of filing dates for the
‟489 Patent and Petitioner‟s references, the ‟489 Patent was filed after Wang,
Levy, Ikezoye, Fung, Rhoads, and Sonoda, but, as noted above, the ‟489
Patent claims the benefit of the ‟824 Application, filed prior to Wang, and of
the ‟064 and ‟945 Applications, filed prior to Levy, Ikezoye, and Rhoads.

Diagram 1

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As illustrated in Diagram 1, Rhoads and Levy claim priority to a
provisional applications, filed before the ‟064 and ‟945 Applications.
Specifically, Petitioner argues that the ‟489 Patent is not entitled to the
benefit of any priority date earlier than the filing date of the ‟293 Patent, i.e.,
July 13, 2001. See Pet. 6-14.
1. The ’064 Application
The ‟064 Application was filed September 21, 1999, and discloses an
automatic program identification system. In particular, the disclosed
invention “relates to apparatus and method for automatically recognizing
signals, particularly audio and video signals that may be transmitted via
broadcast, computer networks, or satellite transmission.” Ex. 1018, pg. 1,
ll. 5-7. Petitioner argues that the ‟064 Application does not disclose a
portable, audio capture device that stores ambient audio samples that may be
transmitted to a recognition site for analysis and identification, as required by
one or more of the challenged claims. Pet. 8 (citing Declaration of Dr. Ton
Kalker, Ex. 1012 ¶ 35). Further, Petitioner argues that the ‟064 Application
does not disclose the use of a “hand-held device” or transmitting an audio
sample or representation of an audio sample from a hand-held device to a
recognition server. Id. at 8-9 (citing Ex. 1012 ¶ 36). We agree.
Independent claims 14 and 15 describes the use of a “hand-held
device” and transmission of signals corresponding to audio signals captured
by a hand-held device to a recognition site, and receipt of identifying
information from the recognition site by the hand-held device. Ex. 1020, col.
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20, ll. 3-21 (Claim 14); col. 20, ll. 22-42 (Claim 15). Because the ‟064
Application appears to lack disclosure of these elements of the challenged,
independent claims, we are persuaded, for purposes of this decision, that
Petitioner demonstrates a reasonable likelihood that the challenged claims of
the ‟489 Patent are not entitled to the benefit of the filing date of the ‟064
Application.
2. The ’945 Application
The ‟945 Application was filed October 19, 1999, and discloses
methods and apparatus for recognizing automatically input audio or video
streams, or both. The disclosed invention is substantially similar to that
disclosed in the ‟064 Application. Ex. 1017, pg. 1, ll. 2-4; see also Ex. 1012,
Appendix B (a “redline” comparison of the ‟064 and ‟945 Applications).
Consequently, Petitioner also argues that the ‟945 Application does not
disclose a portable, audio capture device that stores ambient audio samples
that may be transmitted to a recognition site for analysis and identification.
Pet. 9 (citing Ex. 1012 ¶ 40). Again, we agree.
The ‟945 Application appears to lack disclosure of the elements of the
challenged independent claims, also missing from the ‟064 Application.
Therefore, we are persuaded, for purposes of this decision, that Petitioner
demonstrates a reasonable likelihood that challenged claims of the
‟489 Patent are not entitled to the benefit of the filing date of the ‟945
Application.
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3. The ’824 Application
The ‟824 Application was filed July 18, 2000, and discloses audio
identification systems and methods. In particular, the disclosed invention
relates to apparatus and methods for capturing selectively free-field audio
samples and automatically recognizing these signals. Ex. 1016, pg. 1, ll. 11-
12. As with the earlier applications, the audio signals may be transmitted via
broadcast, computer networks, or satellite transmission, but, alternatively,
audio recordings that are played locally may be captured and identified. Id.
at ll. 12-14. “Preferably, the user uses a hand-held audio capture device to
capture a portion of a broadcast song, and then uses the captured portion to
access a site over the Internet to order the song.” Id. at ll. 16-18. Thus, the
‟824 Application discloses the limitations of independent claims 14 and 15
missing from the ‟064 and ‟945 Applications.
Petitioner argues, however, that the ‟824 Application fails to disclose
that the hand-held device may communicate directly with a recognition site.
Pet. 10. More particularly, Petitioner argues that the ‟824 Application does
not contain a written description of either a “transmitter, integral to the hand-
held device, to transmit a signal . . . to a recognition site” or transmission of a
signal to the hand-held device by the recognition processor. Id. Instead,
referring to Figure 1 of the ‟824 Application, which is substantially the same
as Figure 1 of the ‟489 Patent, Petitioner argues that the ‟824 Application
discloses that signals captured by audio capture device 2 are transmitted to
the recognition site, e.g., host computer site 4, via a PC or data terminal. Id.
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Initially, the Board notes that none of the challenged claims of the
‟489 Patent recites that the hand-held device communicates “directly” with
the recognition site. See, e.g., Ex. 1020, Claims 14, 15, 17, and 18. Further,
Petitioner does not propose a construction of the claim terms that limits the
hand-held device to one that communicates directly with the recognition site.
See Pet. 24. Moreover, Petitioner fails to identify any portion of the
Specification of the ‟489 Patent that so limits communication between the
hand-held device and the recognition site. See id. at 12-13. Because the
Petitioner fails to demonstrate that the claims are limited to direct
communication, we are not persuaded that the ‟824 Application fails to
provide adequate written description for the recited hand-held device or
recited communications with the recognition site.
Based on the current record, we determine that Petitioner has
demonstrated a reasonable likelihood that the challenged claims of the ‟489
Patent are not entitled to the October 19, 1999, filing date of the ‟945
Application, or the September 21, 1999, filing date of the ‟064 Application.
Additionally, we determine that Petitioner has not demonstrated a reasonable
likelihood that the challenged claims of the ‟489 Patent should be denied the
benefit of the July 18, 2000, filing date of the ‟824 Application. Thus, for
purposes of this decision, we ascribe an effective filing date of July 18, 2000,
for each challenged claim. Therefore, Petitioner has demonstrated a
reasonable likelihood that Levy, Rhoads, and Ikezoye are prior art references
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under 35 U.S.C. § 102(e), but Petitioner has not demonstrated a reasonable
likelihood that Wang is a prior art reference under 35 U.S.C. § 102(e).
B. Asserted Grounds for Unpatentability
1. Unpatentability Due to Inherency and Obviousness
For its challenges, Petitioner identifies four separate groups, each
having two or more possible challenges of the claims of the ‟489 Patent:
Group 1: as anticipated or rendered obvious by Wang, alone or in
combination with other prior art (Pet. 25-31); Group 2: as anticipated or
rendered obvious by Ikezoye, alone or in combination with other references
(id. at 31-38); Group 3: as rendered obvious by Rhoads and Levy, together
or in combination with other references (id. at 38-47); and Group 4: as
anticipated or rendered obvious by Sonoda, alone or in combination with
other references (id. at 47-54). According to 37 C.F.R. § 42.22(a)(2), the
petition must include “[a] full statement of the reasons for the relief
requested, including a detailed explanation of the significance of the evidence
. . . .” (emphasis added). See also 37 C.F.R. § 42.104(b)(4) (a petition for
inter partes review must identify how the construed claim is unpatentable
under the statutory grounds on which the petitioner challenges the claims).
Thus, parties requesting an inter partes review should “avoid submitting a
repository of all the information that a judge could possibly consider, and
instead focus on concise, well organized, easy-to-follow arguments supported
by readily identifiable evidence of record.” Office Patent Trial Practice
Guide, 77 Fed. Reg. at 48763. Petitioner, however, presents limited, if any,
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arguments in its petition apart from the various citations to the references and
to Dr. Kalker‟s Declaration (Ex. 1012) provided in the claim charts. Pet. 25-
54.
To the extent that such unexplained citations qualify as argument, they
are inadequate to demonstrate that elements of the challenged claims are
inherent in the cited references. See Idle Free Systems, Inc. v. Bergstrom,
Inc., IPR2013-00027, Paper 16, 4-5. For example, claim 15 recites that “at
least one of the hand-held device and the processor extracting a time series of
spectrally distinct audio signal features from the captured free-field audio
signals.” With respect to the challenge of anticipation by Ikezoye, Petitioner
does not cite to any portion of Ikezoye that allegedly discloses “a time series
of spectrally distinct audio signal features.” Pet. 36. Instead, Petitioner cites
to portions of the Blum and Gibson references and to Dr. Kalker‟s
Declaration. Pet. 36 (citing Ex. 1006, col. 3, ll. 7-10; Ex. 1007, p. 1, and Ex.
1012 ¶¶ 171-176). In order to demonstrate that a reference inherently
discloses a claim element, Petitioner must show that the reference
“„necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.‟” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002) (emphasis added) (citing MEHL/Biophile Int’l Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)). Petitioner‟s claim chart
is insufficient to support the legal conclusion of inherency. See IPR2013-
00027, Paper 16, 8.
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Similarly, such unexplained citations are inadequate to demonstrate a
reason to modify the teachings of a particular reference or to combine the
teachings of two or more references to teach or suggest a limitation of a
challenged claim. For example, Petitioner cites Gibson‟s disclosure of
examining changes in the frequency spectrum in association with the claim
15 limitation requiring a “time series of spectrally distinct audio signal
features.” Pet. 36. Nevertheless, even if Gibson teaches this limitation of
claim 15, Petitioner fails to explain why a person of ordinary skill in the art
would have reason to modify Ikezoye in view of this teaching of Gibson to
achieve the invention disclosed in claim 15. Id. (citing Gibson, 1). As the
U.S. Supreme Court has explained, a party challenging a claim must show
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Petitioner‟s unexplained citations are insufficient to support the legal
conclusion of obviousness.
Because, as noted above, we have determined that Petitioner fails to
demonstrate a reasonable likelihood of prevailing in showing that Wang is a
prior art reference under 35 U.S.C. § 102(e), we determine that Petitioner
fails to demonstrate a reasonable likelihood of prevailing in its challenge to
any of the claims of the ‟489 Patent as anticipated or rendered obvious by
Wang, alone or in combination with another cited reference(s). Further, in
view of the lack of Petitioner‟s arguments regarding inherency, we determine
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that Petitioner fails to demonstrate a reasonable likelihood of prevailing in its
challenge to any of the claims of the ‟489 Patent as anticipated by Ikezoye or
Sonoda based on the inherent disclosure of any claim element. In addition,
in view of the lack of Petitioner‟s arguments regarding reasoning supporting
the modification of a cited reference or the combination of the teachings of
cited references, we determine that Petitioner fails to demonstrate a
reasonable likelihood of prevailing in its challenge to any claim of the
‟489 Patent as rendered obvious by Ikezoye or Sonoda, or the combination of
Rhoads and Levy, alone or in combination with another cited reference(s).
Consequently, we consider Petitioner‟s only remaining challenges, namely,
that claims 15 and 17 are anticipated by Ikezoye and that claims 14, 15, 17,
and 18 are anticipated by Sonoda.
2. Anticipation by Ikezoye
Ikezoye discloses methods and apparatus for identifying media content
presented on a media playing device. Ex. 1005, Abstr. Ikezoye‟s Figure 1,
reproduced below, is illustrative:
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Figure 1 is a functional block diagram of a media content identifying system
10. See id. at col. 5, l. 51-col. 9, l. 19. Ikezoye‟s media content identifying
system 10 includes a client media player 14, such as a handheld personal
digital assistant or a cellular phone (id. at col. 6, ll. 18-20), that comprises
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both media content application 18, which may play audio content by means
of sound card 20 through speakers 22 (id. at col. 6, ll. 47-54), and intercept
unit 36, which captures audio signals, e.g., free-field audio signals, played by
client media application 18, for example, by a microphone (not shown) (id. at
col. 7, ll. 41-54).
As the Federal Circuit has explained, “[a] claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added).
Claim 15 recites that “at least one of the hand-held device and the processor
extracting a time series of spectrally distinct audio signal features from the
captured free-field audio signals.” Ex. 1020, col. 20, ll. 22-42 (emphasis
added). For this limitation in claim 15, Petitioner‟s claim chart cites to
multiple references, including Ikezoye, Blum, and Gibson. Pet. 36. For its
anticipation challenge, only the citation to disclosures in Ikezoye are relevant.
Specifically, Petitioner cites to Ikezoye‟s disclosure that “a sound file may
be sampled according to its acoustic/perceptual features over time.” Pet. 36
(Ex. 1005, col. 8, ll. 4-8). Petitioner provides no explanation of how
Ikezoye‟s sampled acoustic/perceptual features anticipate the claimed step of
a processor “extracting a time series of spectrally distinct audio signal
features from the captured free-field audio signals.” Because Petitioner does
not persuade us that Ikezoye discloses these limitations set forth in claim 15,
Petitioner fails to demonstrate a reasonable likelihood of prevailing in its
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challenge to independent claim 15 as anticipated by Ikezoye. Further, in
view of these deficiencies in the application of Ikezoye to independent claim
15, Petitioner also fails to demonstrate a reasonable likelihood of prevailing
in its challenge to dependent claim 17 as anticipated by Ikezoye.
3. Anticipation by Sonoda
Sonoda discloses an Internet-based melody retrieval system with
identification thresholds determined by using a distribution of pitch and a
span of notes. Ex. 1008, Abstr. Sonoda‟s Figure 3, reproduced and
annotated below, is illustrative:
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Figure 3 depicts a flow chart of the melody retrieval system of Sonoda. See
id. at col. 3, l. 56-col. 4, l. 20. Sonoda‟s melody retrieval system discloses
Song Input Device B, such as a cellular phone (id. at col. 2, ll. 48-51), that
comprises a microphone, into which a user may sing, hum, or whistle a song
to be identified (id. at col. 3, ll. 56-7 (describing step S105)). The sung,
hummed, or whistled song, e.g., a free-field audio signal, is an analog input,
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and the input song undergoes an analog-to-digital conversion before
transmission to Retrieval System A. Id. at col. 3, l. 56-col. 4, l. 7.
Claim 14 recites that “a signal processor which (i) receives a less than
approximately six second portion of the digital signal” (emphasis added).
For this claim limitation, Petitioner cites Sonoda‟s disclosure that “[a] song is
inputted by singing, humming, or whistling into a microphone 10 . . .” Pet.
48 (citing Ex. 1008, col. 3, ll. 56-57). Petitioner fails, however, to provide
any citation for receiving less than a six second portion of the digital signal,
as required by claim 14. Petitioner‟s claim chart also cites to Dr. Kalker‟s
Declaration for this limitation in claim 14, but reliance on Dr. Kalker‟s
Declaration to supply elements missing from Sonoda is not appropriate in an
anticipation rejection. See Pet. 48-49 (citing Ex. 1012, ¶¶ 321-322
(discussing the Gibson reference)).
As discussed above, “[a] claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., 814 F.2d at 631
(emphasis added). Petitioner fails to demonstrate that Sonoda discloses “a
signal processor which (i) receives a less than approximately six second
portion of the digital signal,” as required by claim 14. In view of this
deficiency in the application of Sonoda to claim 14, Petitioner fails to
demonstrate a reasonable likelihood of prevailing in its challenge to claim 14
as anticipated by Sonoda.
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Claim 15 recites that “at least one of the hand-held device and the
processor extracting a time series of spectrally distinct audio signal features
from the captured free-field audio signals.” Ex. 1020, col. 20, ll. 22-42
(emphasis added). Petitioner‟s claim chart cites to multiple references with
respect to this limitation from claim 15, including Sonoda, Blum, and
Gibson. Pet. 36. For its anticipation challenge, only the citation to
disclosures in Sonoda are relevant. Specifically, Petitioner cites to Sonoda‟s
disclosure that
“[a]n onset time of the voiced sound is divided off as an onset
time of each note, a time difference (number of frame) with an
onset time of the next note is determined as the span of the note,
and the maximum value among the fundamental frequencies of
each note contained during its span is defined as the highest
pitch values (S109).”
Pet. 52 (Ex. 1008, col. 3, l. 65-col. 4, l. 3). Petitioner provides no
explanation of how Sonoda‟s onset time of each note anticipates the claimed
step of a processor “extracting a time series of spectrally distinct audio signal
features from the captured free-field audio signals.” Because Petitioner does
not persuade us that Sonoda discloses these limitations set forth in claim 15,
Petitioner fails to demonstrate a reasonable likelihood of prevailing in its
challenge to independent claim 15 as anticipated by Sonoda. Further, in view
of these deficiencies in the application of Sonoda to their base claim, claim
15, Petitioner also fails to demonstrate a reasonable likelihood of prevailing
in its challenge to dependent claims 17 and 18 as anticipated by Sonoda.

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V. CONCLUSION
For the foregoing reasons, we determine that Petitioner fails to
demonstrate a reasonable likelihood of prevailing on its challenge to the
patentability of claims 14, 15, 17, and 18 of the ʼ489 Patent.
VI. ORDER
For the reasons given, it is
ORDERED that the petition is denied as to all challenged claims of the
‟489 Patent.

PETITIONER:

Robert A. Hulse
Darren E. Donnelly
Jason E. Amsel
FENWICK & WEST, LLP
rhulse@fenwick.com
ddonnelly@fenwick.com
jamsel@fenwick.com

PATENT OWNER:

Michael S. Tomsa
Richard P. Bauer
KATTEN MUCHIN ROSENMAN LLP
Michael.Tomsa@kattenlaw.com
Richard.Bauser@kattenlaw.com