Google Inc.v.Network-1 Technologies, Inc.

Patent Trial and Appeal Board

Jun 20, 2016

11445928 (P.T.A.B. Jun. 20, 2016)

Trials@uspto.gov Paper 30
571-272-7822 Entered: June 20, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.,
Petitioner,

v.

NETWORK-1 TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2015-00347
Patent 8,010,988 B2
____________

Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
JON B. TORNQUIST, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
Google Inc. (“Petitioner”) challenges the patentability of several claims of
U.S. Patent No. 8,010,988 B2 (Ex. 1001, “the ’988 patent”), owned by
Network-1 Technologies, Inc. (“Patent Owner”). We have jurisdiction
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under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
Petitioner has not shown by a preponderance of the evidence that claims 15–
17, 21–28, 31–33, 38, 51, and 52 of the ’988 patent are unpatentable.
A. Procedural History
Petitioner filed a Petition for inter partes review of claims 1–3, 7–17,
21–34, 37, 38, 40–43, 46, 47, and 49–52 of the ’988 patent. Paper 2
(“Pet.”). Patent Owner filed a Preliminary Response. Paper 5 (“Prelim.
Resp.”). On June 23, 2015, we instituted an inter partes review of
claims 15–17, 21–28, 31–33, 38, 51, and 52 of the ’988 patent on certain
asserted grounds of unpatentability. Paper 6 (“Dec.”).
After institution, Patent Owner filed a Patent Owner Response,
Paper 17 (“PO Resp.”), and Petitioner filed a Reply to the Patent Owner
Response, Paper 20 (“Pet. Reply”). Subsequently, Patent Owner filed a
paper identifying allegedly improper reply arguments in Petitioner’s Reply,
Paper 24, and Petitioner filed a response, Paper 25.
An oral hearing was held on March 9, 2016.1 A transcript of the
hearing has been entered into the record. Paper 29 (“Tr.”).
B. Related Matters
The parties state that Patent Owner has asserted the ’988 patent
against Petitioner in Network-1 Technologies, Inc. v. Google Inc. and
YouTube, LLC, No. 1:14-cv-02396 (S.D.N.Y.) (filed Apr. 4, 2014). Pet. 1;
Paper 3, 2 (Patent Owner’s Mandatory Notice). Petitioner states that

1 A consolidated oral hearing was held for this proceeding and Cases
IPR2015-00343, IPR2015-00345, and IPR2015-00348. See Paper 23.
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YouTube, LLC, is a subsidiary of Petitioner and a real party-in-interest with
respect to the Petition. Pet. 1. Patent Owner also has asserted related U.S.
Patent No. 8,640,179 B1 (“the ’179 patent”), U.S. Patent No. 8,205,237 B2
(“the ’237 patent”), U.S. Patent No. 8,656,441 B1 (“the ’441 patent”), and
U.S. Patent No. 8,904,464 B1 (“the ’464 patent”) in the district court
proceeding. See Paper 19, 2–3. The ’179 patent, ’237 patent, and
’441 patent are the subject of inter partes reviews in Cases IPR2015-00343,
IPR2015-00345, and IPR2015-00348, respectively, based on petitions filed
by Petitioner. The ’464 patent is the subject of a covered business method
patent review in Case CBM2015-00113 based on a petition filed by
Petitioner.
C. The ’988 Patent
The ’988 patent relates to a method of identifying a work, such as a
digital audio or video file, without the need to modify the work. Ex. 1001,
1:23–28, 4:26–27. The identification can be accomplished by extracting
features from the work and comparing the extracted features with records in
a database. Id. at Abstract, 4:50–56. Thereafter, an action associated with
the work may be determined based on the identification of the work. Id. at
4:42–44.
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Figure 1, reproduced below, illustrates steps of the claimed method:

Figure 1 of the ’988 patent illustrating steps of the claimed method

D. Illustrative Claim
Among the claims at issue in this proceeding, only claim 15 is
independent. Claim 15 reads:
15. A method for associating an electronic work with an
action, the electronic work comprising at least one of audio and
video, the method comprising:
a) electronically extracting features from the electronic
work;
b) electronically determining an identification of the
electronic work based on the extracted features, wherein the
identification is based on a non-exhaustive search identifying a
neighbor;
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c) electronically determining an action based on the
identification of the electronic work; and
d) electronically performing the action.
Ex. 1001, 25:65–26:9.
E. Asserted Grounds of Unpatentability
We instituted an inter partes review of claims 15–17, 21–28, 31–33,
38, 51, and 52 on the following grounds of unpatentability:
Reference Basis Challenged Claims
Ghias2 35 U.S.C. § 102(b) 15–17, 21–23, 28, 31, and 51
Ghias 35 U.S.C. § 103(a) 22, 24–26, and 52
Iwamura3 35 U.S.C. § 102(e) 15–17, 21, 23, 27, 28, 31–33, 38, and 51

II. DISCUSSION
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. at 13 (U.S. June 20,
2016). In our Institution Decision, we construed “a non-exhaustive search”
to mean “a search that locates a match without a comparison of all possible
matches.” Dec. 7. We disagreed with Petitioner’s view that a search that
conducts a comparison with all possible matches is nevertheless non-

2 U.S. Patent No. 5,874,686, issued Feb. 23, 1999 (Ex. 1010, “Ghias”).
3 U.S. Patent No. 6,188,010 B1, filed Oct. 29, 1999, issued Feb. 13, 2001
(Ex. 1012, “Iwamura”).
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exhaustive if it does not compare all data within all possible matches. Id. at
6–7.
Patent Owner agrees with our adopted construction, emphasizing that
a non-exhaustive search locates a match without a comparison of all possible
matches but is not concerned with whether all data within all possible
matches have been compared. PO Resp. 2–6. Petitioner does not challenge
our adopted construction in its Reply. See Pet. Reply 3–5 (only addressing
construction of a different claim term). For this Final Written Decision,
after considering the complete record, we maintain our construction of “a
non-exhaustive search” as “a search that locates a match without a
comparison of all possible matches.”
As explained below, the dispositive issue in this case is whether the
asserted prior art references disclose a non-exhaustive search. Accordingly,
no other claim terms require express construction.
B. Principles of Law
To prevail in challenging Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
anticipated if a single prior art reference either expressly or inherently
discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor
Am., 605 F.3d 967, 975 (Fed. Cir. 2010). A claim is unpatentable under
35 U.S.C. § 103(a) 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 of the invention to a person having ordinary skill in the
art. 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
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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. Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
C. Asserted Grounds Based on Ghias
Petitioner contends that claims 15–17, 21–23, 28, 31, and 51 are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Ghias. Pet. 8–15.
Petitioner also contends that claims 22, 24–26, and 52 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Ghias. Id. at 54–57. In support of
these asserted grounds of unpatentability, Petitioner relies on the testimony
of Dr. Pierre Moulin. Id. at 8–15 (citing Ex. 1004 ¶¶ 67–74), 54–57 (citing
Ex. 1004 ¶¶ 150–54). In response, Patent Owner argues that Ghias fails to
disclose certain limitations of claim 15, the only independent claim at issue
in this proceeding. PO Resp. 7–26. Patent Owner relies on the testimony of
Dr. George Karypis for support. Id. (citing Ex. 2005 ¶¶ 264–305). As
explained below, we conclude that Petitioner has not shown by a
preponderance of the evidence that Ghias anticipates claims 15–17, 21–23,
28, 31, and 51 or renders obvious claims 22, 24–26, and 52 of the
’988 patent.
1. Ghias
Ghias relates to searching for melodies. Ex. 1010, Abstract. The
system of Ghias receives a melody input through a microphone, converts it
into a digitized representation based on relative pitch differences between
successive notes, and searches a database of such representations for an
approximate match. Id. The converted user input is “compared with all the
songs” in the database. Id. at 5:66–6:2. Ghias also discloses that it is
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desirable to perform key-searching within the database using “an efficient
approximate pattern matching algorithm.” Id. at 6:7–11. According to
Ghias, several algorithms having various running times have been developed
that address the problem of approximate string matching. Id. at 6:23–35.
The results of the search are presented as a list of approximately
matching melodies ranked by how well they match the query, or
alternatively just one best match. Id. at 2:50–59, 6:60–63. The number of
approximate matches the system returns may depend on a preselected error
tolerance applied to the search. Id. at 2:52–53, 6:63–7:1.
A user can identify the song of interest from the results of the query.
Id. at 7:4–5. If the list is too large, the user can perform a new query on a
restricted search list consisting of songs retrieved in a first query. Id. at 7:5–
8.
2. Analysis
Petitioner contends that Ghias discloses all of the limitations of
independent claim 15, which is directed to a “method for associating an
electronic work with an action.” Pet. 9–12, 14; Pet. Reply 5–12. Among
other things, claim 15 requires determining an identification of an electronic
work based on extracted features, “wherein the identification is based on a
non-exhaustive search identifying a neighbor.” Ex. 1001, 26:3–6 (emphasis
added). As discussed above, we have construed “a non-exhaustive search”
to mean “a search that locates a match without a comparison of all possible
matches.”
Patent Owner argues that Ghias fails to disclose a non-exhaustive
search. PO Resp. 7–19. Patent Owner asserts that in searching for an
approximate match for a melody, Ghias’s system compares the converted
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input melody with “all the songs” (i.e., songs converted to representations of
relative pitch differences) in the database. Id. at 7; see Ex. 1010, 6:1–2.
Patent Owner further points out that Petitioner’s declarant, Dr. Moulin,
agrees that “all the songs” in the database in Ghias are “all possible
matches” for a search. PO Resp. 7 (citing Ex. 2006, 325:19–22); see
Ex. 2005 ¶ 266. Patent Owner also cites testimony by Dr. Moulin in which
he acknowledges that Ghias executes an exhaustive search, i.e., a
comparison of the input melody to each of the possible matches, rather than
a non-exhaustive search that does not perform a comparison to each possible
match in the database. PO Resp. 9–10 (citing Ex. 2006, 327:3–328:4); see
Ex. 2005 ¶ 267.
Notwithstanding Ghias’s disclosure of a search that compares a work
with “all the songs” in the database (i.e., all possible matches), and the
testimony of Petitioner’s declarant confirming that the described search is an
exhaustive search, Petitioner nevertheless contends that Ghias discloses a
non-exhaustive search as required by claim 15. First, Petitioner argues that
Ghias itself identifies all of its searches as non-exhaustive. Pet. 9–10, 12;
Pet. Reply 7. Specifically, Petitioner relies on the following description in
Ghias:
Several [a]lgorithms have been developed that address the
problem of approximate string matching. Running times have
ranged from O(mn) for the brute force algorithm to O(kn) or
O(nlog(m)[)], where “O” means “on the order of,” m is the
number of pitch differences in the query, and n is the size of the
string (song).
Ex. 1010, 6:23–28. Thus, according to Petitioner, Ghias describes searches
that are faster than brute force and, therefore, are non-exhaustive. Pet. 12;
Pet. Reply 7 (citing Ex. 2005 ¶ 82 (Patent Owner’s declarant equating a
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brute force search with an exhaustive search); Ex. 2001 (definition of “brute-
force search” equating the term with “exhaustive search”)). We agree with
Patent Owner, however, that the quoted passage from Ghias relates to
comparing a work with a single record in the database, not to locating a
match from among all the records in the database. See PO Resp. 12. Thus,
the cited passage in Ghias does not describe a non-exhaustive search
identifying a neighbor, as required by claim 15.
Petitioner further argues that Ghias discloses that “[p]erformance
may . . . be improved by packing all the songs into one file,” so that the non-
exhaustive (i.e., faster than brute force) search within a single record would
apply to all of the concatenated records, making the search non-exhaustive
with respect to all records (i.e., all possible matches) in the database. Pet.
Reply 7. We agree with Patent Owner that this argument represents a “new
theory” beyond that presented in the Petition with respect to the asserted
unpatentability grounds based on Ghias. Paper 24, 3. Compare Pet. 9–10,
with Pet. Reply 7. Accordingly, we do not address this new argument
improperly raised for the first time in the Reply. See 37 C.F.R. § 42.23(b);
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512,
at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its
discretion in refusing to consider reply brief arguments advocating a “new
theory” of unpatentability under 37 C.F.R. § 42.23(b)).
Petitioner also contends the system in Ghias executes a non-
exhaustive search when it performs a new query on a restricted search list
containing songs retrieved in a first query. Pet. Reply 5–6. Patent Owner
argues that (1) using a “new query” in Ghias does not disclose the claimed
non-exhaustive search, and (2) this theory should not be a basis for finding
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claims of the ’988 patent unpatentable because it is based on reasoning in
our Institution Decision that was not presented in the Petition. PO Resp. 13–
19. We need not address Patent Owner’s second argument because we are
persuaded by its first.
The figure provided in Petitioner’s Reply is illustrative and is
reproduced below:

Pet. Reply 6. As shown in the Figure from the Reply illustrating an example
of multiple searches in Ghias, a first, exhaustive search is performed on the
entire database, resulting in a restricted list of identified matches. A second
search then is performed on the restricted list. As Patent Owner points out,
the second search is an exhaustive search of Works A, C, D, and E because
only Works A, C, D, and E are possible matches, as acknowledged by
Petitioner’s declarant, Dr. Moulin. Tr. 41:3–43:11; Ex. 2006, 325:13–21,
336:13–22; see Ex. 1010, 7:4–9; Ex. 2005 ¶ 288. If the first and second
searches are viewed as separate and independent, each search is exhaustive
of the dataset being searched because each compares the query to all
possible matches. PO Resp. 15–16; see Ex. 2006, 335:13–336:12.
Alternatively, if the second search is considered the second stage of a two-
stage search, it depends on a first stage to generate a candidate set. Under
this view, the two-stage search is exhaustive because it includes a first stage
that compares the query to all songs in the database, i.e., all possible
matches. PO Resp. 16. We are persuaded by Patent Owner’s argument that
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under either view, Ghias discloses an exhaustive search rather than a non-
exhaustive search.
Petitioner argues that the subsequent searches in Ghias are non-
exhaustive because they do not consider all songs. Pet. Reply 6. But as just
discussed, we are persuaded each subsequent search is exhaustive because it
searches all possible matches. For example, the second search shown in the
figure above searches all possible matches (Works A, C, D, and E) because
Work B is not a possible match. Tr. 42:8–14. Petitioner also argues that the
queries from the first and second searches need not be the same, so that the
results for the first query could exclude results that are not matches to the
first query, but would be matches to the second query. Pet. Reply 6. As a
result, Petitioner argues, the second search would not consider the excluded
references, which are possible matches for the second query, and thus the
second search would be non-exhaustive because it would not search all
possible matches. Id. We are not persuaded by this line of reasoning. The
second search still would be exhaustive of the dataset provided to the search
algorithm. A search is not non-exhaustive simply because it does not seek
matches outside of the records that are available to the search algorithm.
For these reasons, we are not persuaded that Ghias discloses “a non-
exhaustive search identifying a neighbor,” as recited in independent
claim 15. Claims 16, 17, 21–23, 28, 31, and 51 depend from claim 15.
Therefore, Petitioner has not demonstrated that Ghias discloses each and
every limitation of claims 15–17, 21–23, 28, 31, and 51. Accordingly,
Petitioner has not shown by a preponderance of the evidence that Ghias
anticipates 15–17, 21–23, 28, 31, and 51 of the ’988 patent.
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With respect to its contention that claims 22, 24–26, and 52 would
have been obvious over Ghias, Petitioner does not present any additional
analysis of the recited “non-exhaustive search” beyond that addressed above
in connection with claim 15. Therefore, for the same reasons, Petitioner has
not shown by a preponderance of the evidence that claims 22, 24–26, and 52
are unpatentable for obviousness over Ghias.
D. Asserted Anticipation by Iwamura
Petitioner contends that claims 15–17, 21, 23, 27, 28, 31–33, 38, and
51 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Iwamura.
Pet. 46–54. In support of its contentions, Petitioner relies on the testimony
of Dr. Moulin. Id. (citing Ex. 1004 ¶¶ 138–45). In response, Patent Owner
argues that Iwamura fails to disclose certain limitations of claim 15. PO
Resp. 27–51. Patent Owner relies on the testimony of Dr. Karypis for
support. Id. (citing Ex. 2005 ¶¶ 134–37, 139–93, 195–203, 310–327). As
explained below, we conclude that Petitioner has not shown by a
preponderance of the evidence that Iwamura anticipates 15–17, 21, 23, 27,
28, 31–33, 38, and 51 of the ’988 patent.
1. Iwamura
Iwamura describes a system for identifying a melody input by a user,
whereby the system searches a remote music database for the melody.
Ex. 1012, Abstract. Iwamura discloses receiving a melody input, such as a
user’s voice, by microphone, and converting the melody into an electronic
signal, which is analyzed by a Fast Fourier Transform (“FFT”) to obtain
frequency information and identify the musical notes of the melody. Id. at
4:4–14. A search program then searches a database to obtain information
about the input melody. Id. at 4:60–64.
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Iwamura describes a “peak search” algorithm that compares an
entered melody with a reference melody in a database by computing a total
absolute difference between the relative pitch data of the entered melody and
that of the reference melody. Id. at 7:21–39. Successive computations are
performed by shifting the entered melody repeatedly to align a peak note of
the entered melody with the next peak note of the reference melody. Id. at
7:21–25, 7:39–50. “In this manner, the entered melody is shifted to each
peak in each reference melody and compared. The reference melody that
gives the least difference is returned as a search result.” Id. at 7:52–55.
Iwamura further discloses that “[t]o accelerate the search,
computation of the total absolute difference can be stopped when it exceeds
a certain limit.” Id. at 7:56–57. Iwamura also explains that because peak
notes are approximately 20% of the total number of notes in a typical
melody, search speed using the peak note approach is “20% of a brute force
search which shifts the entered melody, note by note.” Id. at 9:9–11.
2. Analysis
Patent Owner argues that Iwamura fails to disclose a non-exhaustive
search. PO Resp. 27–50. Patent Owner asserts that Iwamura’s peak search
algorithm is designed to be more efficient than alternative approaches, such
as one in which the entered melody is shifted “note by note” relative to a
single reference melody. Id. at 27–28 (citing Ex. 1012, 9:9–11; Ex. 2005
¶¶ 159, 312). According to Patent Owner, Iwamura’s peak note search does
not reduce the number of reference melodies (i.e., records in the database) to
be searched, but instead speeds up the individual comparison of the work to
be identified with each record, by shifting the melody to align peak notes
rather than shifting note by note. Id. at 30 (citing Ex. 2005 ¶¶ 162–63).
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Each record in the database is searched, and the reference melody that gives
the least total absolute difference when compared with the entered melody is
returned as a search result. Id. at 30–31 (citing Ex. 1012, 7:53–55; Ex. 2005
¶ 163). Accordingly, Patent Owner continues, Iwamura discloses an
exhaustive search because it searches all records in the database. Id. (citing
Ex. 2005 ¶ 164).
Patent Owner cites testimony from Petitioner’s declarant, Dr. Moulin,
in which he agrees that Iwamura’s system compares a work to be identified
with each reference work in the database. PO Resp. 31–33 (citing Ex. 2006,
207:18–23, 223:2–8, 247:18–20, 269:19–270:2, 271:19–21); see also
Tr. 17:17 (Petitioner conceding at oral hearing that “every song is looked
at”). Dr. Moulin also acknowledges that if a non-exhaustive search is one
that does not look at each of the melodies in the database, Iwamura discloses
an exhaustive search rather than a non-exhaustive search. Ex. 2006, 233:24–
234:14; see PO Resp. 32.
Despite Dr. Moulin’s testimony and Iwamura’s description of a search
that compares an input melody to each melody in the database, Petitioner
contends that Iwamura discloses a non-exhaustive search. First, Petitioner
submits that Iwamura specifically identifies its peak note search as a non-
exhaustive search because the “search speed using peak notes is 20% of a
brute force search.” Pet. 48 (quoting Ex. 1012, 9:8–11); Pet. Reply 14
(citing Ex. 1012, 9:7–11; Ex. 2005 ¶ 82; Ex. 2001). We agree with Patent
Owner, however, that Iwamura’s peak note search accelerates a search
within a single comparison between a work to be identified and an
individual record in the database, while still comparing the work to each
record in the database. See PO Resp. 35. In other words, the peak search
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technique may improve the efficiency of an individual comparison between
an entered melody and a reference melody in the database, but it is still an
exhaustive search because it compares the entered melody with each musical
work in the database, as confirmed by Petitioner’s declarant, Dr. Moulin. Id.
(citing Ex. 2006, 269:19–270:2).
Petitioner further argues that Iwamura discloses a non-exhaustive
search because the search can be accelerated by stopping the search when
computations “exceed[] a certain limit.” Pet. 48 (quoting Ex. 1012, 7:56–
57). We agree with Patent Owner that this disclosure also refers to
improving the speed of a comparison between the work to be identified and
a single record in the reference database. See PO Resp. 38 (citing Ex. 2005
¶ 179). As Dr. Karypis explains and Dr. Moulin confirms, when the total
absolute difference computed between the entered melody and a particular
reference melody exceeds a certain limit, the computation stops, and the
search shifts to the next peak range comparison within the same record.
Id. at 38–40 (citing Ex. 2005 ¶¶ 180–81; Ex. 2006, 241:24–242:2). Thus,
Iwamura’s computation “limit” does not describe a non-exhaustive search
because Iwamura still compares a work to be identified with each reference
melody in the database.
In addition, Petitioner argues that Iwamura discloses non-exhaustive
searching because its search skips “portions that should not be searched,”
such as “repeated patterns” and “unimportant portion[s].” Pet. 48 (quoting
Ex. 1012, 12:6–7, 9:36–45); Pet. Reply 20. Again, we agree with Patent
Owner that the cited passages refer to techniques for accelerating a search
between a work to be identified and a record in the database. PO Resp. 42
(citing Ex. 2005 ¶ 185). As confirmed by Dr. Moulin, the search still
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compares the work with each musical work in the reference database. Id. at
42–43 (citing Ex. 2006, 267:13–24, 317:2–12); see also Ex. 2005 ¶ 187.
Finally, Petitioner contends that Iwamura does not consider all
“possible matches”—and therefore does not disclose a “non-exhaustive
search”—because the possible matches in Iwamura are melody segments
rather than full songs, and Iwamura does not consider all melody segments.
Pet. Reply 16–19. We are not persuaded by this argument. Iwamura
explicitly states that its search returns a reference melody as a search result.
Ex. 1012, 7:54–55; see also id. at 1:53–56 (“The invented music search
allows a user to search a database and thereby obtain the title of the work
only with its melody as input to a search engine . . . .”). Furthermore,
Petitioner’s declarant, Dr. Moulin, testifies that the possible matches in
Iwamura’s search are the reference melodies in the database. Ex. 2006,
206:12–15, 217:15–18, 247:18–20. Although Petitioner cites deposition
testimony of Patent Owner’s declarant, Dr. Karypis, in which he refers to
individual comparisons of an entered melody segment to segments in a
reference melody as “matches,” Pet. Reply 17 (citing Ex. 1020, 146:7–
147:23), he does not describe the melody segments in the database as
“possible matches.” See Tr. 31:19–32:2. For these reasons, we are not
persuaded that the possible matches for purposes of determining whether
Iwamura’s search is non-exhaustive are melody segments. As discussed,
because Iwamura’s search compares a work with every record in the
reference database, the search is exhaustive rather than non-exhaustive.
Having considered the parties’ arguments and evidence, we are not
persuaded that Iwamura discloses “a non-exhaustive search identifying a
neighbor,” as recited in independent claim 15. Claims 16, 17, 21, 23, 27, 28,
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31–33, 38, and 51 depend from claim 15. Therefore, Petitioner has not
demonstrated that Iwamura discloses each and every limitation of claims
15–17, 21, 23, 27, 28, 31–33, 38, and 51. Accordingly, Petitioner has not
shown by a preponderance of the evidence that Iwamura anticipates
claims 15–17, 21, 23, 27, 28, 31–33, 38, and 51 of the ’988 patent.
III. CONCLUSION
Based on the evidence and arguments, Petitioner has not demonstrated
by a preponderance of the evidence that (i) claims 15–17, 21–23, 28, 31, and
51 are anticipated by Ghias, (ii) claims 22, 24–26, and 52 would have been
obvious over Ghias, or (iii) claims 15–17, 21, 23, 27, 28, 31–33, 38, and 51
are anticipated by Iwamura.
IV. ORDER
Accordingly, it is:
ORDERED that claims 15–17, 21–28, 31–33, 38, 51, and 52 of the
’988 patent have not been shown to be unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2015-00347
Patent 8,010,988 B2
19
FOR PETITIONER:
James J. Elacqua
Douglas R. Nemec
Skadden, Arps, Slate, Meagher & Flom LLP
James.Elacqua@skadden.com
Douglas.Nemec@skadden.com

FOR PATENT OWNER:
Charles R. Macedo
Brian A. Comack
Amster, Rothstein & Ebenstein LLP
cmacedo@arelaw.com
N1-Google-IPR@arelaw.com

Greg Dovel
Dovel & Luner LLP
greg@dovellaw.com