Google Inc.v.Network-1 Technologies, Inc.Download PDFPatent Trial and Appeal BoardJun 20, 201613338079 (P.T.A.B. Jun. 20, 2016) Copy Citation 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 IPR2015-00343 Patent 8,640,179 B1 ____________ Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and JON B. TORNQUIST, Administrative Patent Judges. TURNER, Administrative Patent Judge. FINAL WRITTEN DECISION Inter Partes Review 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 I. INTRODUCTION Google Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–3, 6–14, 18, 19, 21–27, and 29–37 of U.S. Patent No. 8,640,179 B1 (Ex. 1001, “the ’179 Patent”). Network-1 IPR2015-00343 Patent 8,640,179 B1 2 Technologies, Inc. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 5 (“Prelim. Resp.”). We instituted the instant trial on June 23, 2015, pursuant to 35 U.S.C. § 314. Paper 6 (“Dec.”). Subsequently, Patent Owner filed a Response (Paper 17, “PO Resp.”), and Petitioner filed a Reply (Paper 20, “Reply”). Further to authorization provided in a conference call, Patent Owner filed a paper identifying allegedly improper arguments in the Reply (Paper 24), and Petitioner filed a response thereto (Paper 25). Oral hearing1 was held on March 9, 2016, and a transcript of the hearing was entered into the record. Paper 29 (“Tr.”). We have jurisdiction 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 set forth below, we determine that Petitioner has not shown, by a preponderance of the evidence, that claims of the ’179 Patent are unpatentable under 35 U.S.C. § 103(a). A. Related District Court Proceedings The parties inform us that the ’179 Patent is the subject of the following lawsuit: Network-1 Technologies, Inc. v. Google Inc. and YouTube, LLC, Case No. 1:14-cv-02396 (S.D.N.Y.). Pet. 1. YouTube, LLC is a subsidiary of Petitioner, and is acknowledged as a real party-in-interest. Id. In addition, three additional patents, U.S. Patent Nos. 8,205,237, 8,010,988, and 8,656,441, all issuing from applications related to the ’179 Patent, are subject to inter partes reviews, namely IPR2015-00345, IPR2015-00347, and IPR2015-00348, respectively. 1 The hearings for this review and IPR2015-00345, IPR2015-00347, and IPR2015-00348 were consolidated. IPR2015-00343 Patent 8,640,179 B1 3 B. The ’179 Patent The ’179 Patent relates to identifying a work, such as a digital audio or video file, without the need to modify the work. Ex. 1001, 1:35–40, 4:38–44. This identification can be accomplished through the extraction of features from the work, and comparison of those extracted features with records of a database or library. Id. at Abstract. Thereafter, an action may be determined based on the identification determined. Id. at 4:36–40. Figure 1, reproduced below, illustrates the steps of the claimed computer- implemented methods: Fig. 1 of the ’179 Patent illustrating the claimed method IPR2015-00343 Patent 8,640,179 B1 4 C. Illustrative Claim Claim 1 is independent, along with claims 13 and 25, is considered representative of the claims challenged, and is reproduced below: 1. A computer-implemented method comprising: (a) maintaining, by a computer system including at least one computer, a database comprising: (1) first electronic data related to identification of one or more reference electronic works; and (2) second electronic data related to action information comprising an action to perform corresponding to each of the one or more reference electronic works; (b) obtaining, by the computer system, extracted features of a first electronic work; (c) identifying, by the computer system, the first electronic work by comparing the extracted features of the first electronic work with the first electronic data in the database using a non- exhaustive neighbor search; (d) determining, by the computer system, the action information corresponding to the identified first electronic work based on the second electronic data in the database; and (e) associating, by the computer system, the determined action information with the identified first electronic work. Ex. 1001, 25:22–42 (emphasis added). D. Prior Art Relied Upon Based on the instituted grounds, Petitioner relies upon the following prior art references: Reference or Declaration Exhibit No. U.S. Patent No. 6,970,886 (“Conwell”) Ex. 1009 U.S. Patent No. 5,874,686 (“Ghias”) Ex. 1010 U.S. Patent No. 6,098,106 (“Philyaw”) Ex. 1014 IPR2015-00343 Patent 8,640,179 B1 5 E. Grounds of Unpatentability We instituted the instant trial based on the following grounds of unpatentability (Dec. 15): Claims Challenged Basis Reference(s) 1–3, 6, 8–14, 19, 21–26, 30, 31, and 34–37 § 102(e) Conwell 1–3, 8, 10–14, 18, 19, 21–27, 29, 31, and 34–37 § 103 Ghias and Philyaw II. ANALYSIS A. Claim Construction In an inter partes review, claim terms in an unexpired patent are given 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 two claim terms specifically: Claim Term Construction “non-exhaustive search” “a search that locates a match without a comparison of all possible matches” “neighbor search” “identifying a close, but not necessarily exact or closest, match.” Dec. 6–8. Patent Owner agrees with the adopted constructions and emphasizes that a non-exhaustive search makes a comparison without all possible matches, but does not concern itself with whether all data within all possible matches have been compared. PO Resp. 2–7. Patent Owner also contends that if a search necessarily identifies an exact or the closest match, it is not a neighbor or near neighbor search because it is not a search that identifies a IPR2015-00343 Patent 8,640,179 B1 6 close, but not necessarily exact or closest, match. Id. at 6–7. Petitioner disputes this latter assertion. Reply 3–5. Although we disagree with Patent Owner that a neighbor search could not identify an exact or the closest match and still be a neighbor search, we need not address that distinction to determine the efficacy of Petitioner’s proffered grounds of unpatentability. Upon review of the parties’ contentions and the Specification, as well as this entire record, we also discern no reason to modify our claim constructions at this juncture. B. Principles of Law To prevail in its challenges to the patentability of the claims, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 102 if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Additionally, a patent 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 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 IPR2015-00343 Patent 8,640,179 B1 7 of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1259. We analyze the asserted grounds of unpatentability in accordance with the above-stated principles. C. Anticipation by Conwell - Claims 1–3, 6, 8–14, 19, 21–26, 30, 31, and 34–37 Petitioner argues that claims 1–3, 6, 8–14, 19, 21–26, 30, 31, and 34– 37 are anticipated by Conwell. Pet. 22–34. Patent Owner disputes this anticipation, arguing that Conwell does not conduct a neighbor search or a non-exhaustive search, per independent claims 1, 13, and 25. PO Resp. 7– 32. Petitioner counters these arguments. Reply 5–12. As discussed below, we determine that Petitioner has not shown, by a preponderance of the evidence, that the subject claims of the ’179 Patent are anticipated by Conwell. Conwell is directed to a method for directing users of digital content to websites related to the content being played. Ex. 1009, Abstract. An identifier can be derived from the content, for example, by applying a hashing algorithm to some or all of the content to generate the identifier. Id. at 1:60–2:3. Conwell also discloses use of “hashing algorithms by which similar or related, but non-identical, inputs map to the same hash outputs.” Id. at 4:64–5:3. Each identifier is stored in a database along with an associated web address. Id. at 3:43–45, Figs. 3–4. The entries in the IPR2015-00343 Patent 8,640,179 B1 8 database may be sorted by identifier and the system may be keyed by identifier. Id. at 5:58–64. Patent Owner argues that the search processes in Conwell are not non- exhaustive, as required by independent claims 1, 13, and 25. PO Resp. 23– 32. Patent Owner argues that Conwell teaches identifying a match using a look-up table, but the process is not disclosed to be non-exhaustive. Id. at 24 (citing Ex. 1009, 3:43–44, 5:59–61, Fig. 3; Ex. 2005 ¶¶ 364–366). Patent Owner additionally argues that “[w]hile there are ways to search the lookup table disclosed in Conwell using a non-exhaustive approach, Conwell does not disclose any such non-exhaustive approach.” Id. at 26 (citing Ex. 2005 ¶ 369). We agree that Conwell does not explicitly disclose that the look-up is performed non-exhaustively. Further, Patent Owner argues that Conwell also does not inherently disclose using the look-up table to conduct a non-exhaustive search. Id. at 27–31. Patent Owner continues that “Conwell provides no details as to how the exact-match search between the hashed identifier of the work to be identified and the hashed identifiers in the reference database is actually performed.” Id. at 29 (citing Ex. 1009, 3:43–62). Patent Owner argues that Conwell details how its database is maintained, but does not provide specific disclosures as to how the database is searched. Id. at 31–32. We also agree that Conwell does not inherently disclose that the look-up is performed non- exhaustively. Petitioner responds that “at the time the ’179 patent was filed, it was at least ‘probable’ that one skilled in the art would use a non-exhaustive lookup to conduct a database query,” and that “[a]nticipation does not require ipsissimis verbis recitation of claim limitations.” Reply 9. However, IPR2015-00343 Patent 8,640,179 B1 9 the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Even if it would have been trivial to perform the look-up in Conwell using a non- exhaustive process, such a possible application does not demonstrate that Conwell teaches the same, as required to show anticipation. Petitioner also argues that based on the way that the inventor in the ’179 Patent refers to database lookups being performed through binary searches, Conwell’s disclosure of a database query should be understood as a non-exhaustive search. Reply 10 (citing Ex. 1001, 21:37–42). We do not agree, as we are not persuaded that the inventor was disclosing that all database lookups are not exhaustive searches, i.e., a global attribute for database lookups. As discussed at oral hearing, the inventor’s discussion is based on the large number of entries contained in a database, and Petitioner has pointed to nothing in Conwell itself that discusses a number of database entries or the type of search employed. Tr. 21–22. As well, Petitioner argues that the genus of searching is very limited, i.e., exhaustive and non-exhaustive, and that “one would have envisaged a ‘non-exhaustive’ search as the predominant form of ‘database query,’” such that Conwell discloses the elements of the claims in substance. Reply 11–12 (citing Ex. 2005 ¶ 371; In re Gleave, 560 F.3d 1331, 1334, 1337–38 (Fed. Cir. 2009)). We do not agree. Instead, we find persuasive the testimony of Dr. Karypis that exhaustive methods may be employed to perform the database lookup in Conwell, and that Conwell does not disclose any non- exhaustive approach. Ex. 2005 ¶¶ 367–369. Although Petitioner alleges that Dr. Karypis’s declaration “is replete with attorney argument presented IPR2015-00343 Patent 8,640,179 B1 10 in the guise of expert testimony,” and thus entitled to little weight (Reply 19), we find no fault with his specific review and interpretation of Conwell, and we are persuaded that it demonstrates that the lookup processes in Conwell need not be non-exhaustive. Based on the analysis of independent claims 1, 13, and 25, we are likewise persuaded that Conwell also fails to anticipate claims 2, 3, 6, 8–12, 14, 19, 21–24, 26, 30, 31, and 34–37, by virtue of their dependence on the independent claims. Therefore, we are not persuaded that Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 8–14, 19, 21–26, 30, 31, and 34–37 of the ’179 Patent are unpatentable under 35 U.S.C. § 102 as being anticipated by Conwell. D. Obviousness Over Ghias and Philyaw - Claims 1–3, 8, 10–14, 18, 19, 21–27, 29, 31, and 34–37 Petitioner argues that claims 1–3, 8, 10–14, 18, 19, 21–27, 29, 31, and 34–37 are rendered obvious over Ghias and Philyaw. Pet. 45–60. Patent Owner disputes this ground, arguing that the combination of Ghias and Philyaw does not conduct a neighbor search or a non-exhaustive search, per independent claims 1, 13, and 25. PO Resp. 32–51. Petitioner counters these arguments. Reply 12–18. As discussed below, we determine that Petitioner has not shown, by a preponderance of the evidence, that the subject claims of the ’179 Patent are rendered obvious over Ghias and Philyaw. 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 IPR2015-00343 Patent 8,640,179 B1 11 successive notes, and searches a database of such representations for an approximate match. Id. Ghias also provides that a preselected error tolerance may be applied to the search. Id. at 2:50–59. The results of the search are presented as a ranked list of approximately matching melodies, or alternately just one best match. Id. at 2:50–59, 6:60–63. Ghias also discloses that it is desirable to perform key-searching within the database using “an efficient approximate pattern matching algorithm,” where different algorithms have various running times dependent on the number of entries in the database. Id. at 6:7–11, 6:23–35. In addition, Petitioner cites to Philyaw for its disclosure of extracting identifying information embedded into a broadcast signal and directing a computer to receive and display appropriate product information based on the identifying information, such as an advertisement. Ex. 1014, Abstract, 1:66–2:8. This display is accomplished by having the computer query an Advertiser Reference Server (“ARS”), which has a database of product codes and associated URLs, and returns an advertiser’s URL for display. Id. at 5:23–27, 5:50–58, 5:64–6:2. Petitioner continues that a person of ordinary skill in the art would have been motivated to combine Ghias and Philyaw because it allows for the presentation of “advertisements related to content without undertaking the time consuming and expensive step of embedding identifying information in content.” Pet. 49. The teachings of Ghias and Philyaw with respect to all of the specific elements of the challenged claims are presented in Petitioner’s claim chart. Id. at 50–60. Patent Owner argues that Ghias fails to teach a non-exhaustive search, per independent claims 1, 13, and 25, where Petitioner relies upon Ghias as IPR2015-00343 Patent 8,640,179 B1 12 teaching or suggesting that element of the claims. PO Resp. 33–39. Patent Owner argues that Ghias discloses a search that compares a work with all possible matches, i.e., every record in the database, as acknowledged by Petitioner’s declarant, Dr. Pierre Moulin. Id. at 33–36 (citing Ex. 1010, 5:66–6:2; Ex. 2006, 323:4–13, 325:19–22, 327:3–12, 339:23–340:5, 340:6– 9). Additionally, Patent Owner argues that Ghias’s disclosure of a non- exhaustive search is related to comparing a work with a single record in the database, and not with respect to all of the records in the database. Id. at 36– 39 (citing Pet. 47–48, 51; Ex. 1004 ¶¶ 120, 129; Ex. 1010, 5:7–11, 5:66–6:2, 6:23–35; Ex. 2005 ¶¶ 274–275; Ex. 2006, 332:17–333:2, 347:13–17). Upon review of the evidence cited in the Petition, and Petitioner’s and Patent Owner’s evidence and arguments, we agree with Patent Owner. Patent Owner next turns to the position that we took in the Institution Decision with respect to the teachings and suggestions from Ghias. Id. at 39–46 (citing Dec. 14). We determined that Ghias disclosed that a new query could be performed on a restricted search list, and that this would be equivalent to a non-exhaustive search, as claimed. Dec. 14. Patent Owner argues that there are two reasons why reliance on the new query on a restricted search list does not satisfy Petitioner’s burden of showing Ghias discloses a non-exhaustive search: 1) because the “second” search could be viewed as a separate independent search, with both searches being exhaustive, or, if viewed as a single search, all of the records would be compared by that single search, making it exhaustive; and 2) that our reasoning, in the Institution Decision, should not be a basis for finding the instituted claims unpatentable because that reasoning was not identified in the Petition. PO Resp. 39–46. IPR2015-00343 Patent 8,640,179 B1 13 We need not reach second reason, as we are persuaded by the first reason provided by Patent Owner. The figure provided in Petitioner’s Reply is illustrative and is reproduced below: Figure from Petitioner’s Reply illustrating multiple searches in Ghias Reply 13. As Patent Owner points out, the second search of the identified matches is performed exhaustively of Works A, C, D, and E. Tr. 40–43 (citing Ex. 1010 7:4–9; Ex. 2005 ¶ 288; Ex. 2006, 325:12–21, 336:12–22). If viewed as separate and independent searches, both would be exhaustive of the data set being searched, and if viewed as a single search, all of the initially input records of the data set (i.e., Works A–E) would be searched by that single search, making it exhaustive. As such, we agree that Ghias does not teach or suggest a non-exhaustive search, as recited in the independent claims. Petitioner responds that Ghias’s subsequent searches are non- exhaustive (Reply 13–14), but we have addressed the same in the prior paragraph, not finding it to be persuasive. Petitioner also argues that the queries from the “first” and “second” searches need not be the same, and in fact would likely be different, such that the results for the first query could exclude non-matches from the results, where those non-matches would be matches for the second query, so that the subsequent search for the second IPR2015-00343 Patent 8,640,179 B1 14 query would not consider these excluded references. Id. at 14. We are not persuaded, however, as the search would still be exhaustive to the dataset provided to the search algorithm. As discussed above, we construe “non- exhaustive search” as “a search that locates a match without a comparison of all possible matches.” We are not persuaded that simply because a search does not seek matches outside of its input records would make that search non-exhaustive; that would make every search non-exhaustive, because it is, by definition, limited to the records input or available to the search algorithm. Petitioner also argues that Ghias discloses that its string matching algorithms operate faster than a brute force search (Reply 14–15), but we are persuaded, as discussed above, that this disclosure is related to comparing a work with a single record in the database, and not with respect to all of the records in the database. Petitioner also argues that Ghias discloses that performance may be improved by “packing all the songs into one file,” whereby the non-exhaustive searching within a record would apply to all of the concatenated record, making the search of the records non-exhaustive. Id. at 15. With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. 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)). IPR2015-00343 Patent 8,640,179 B1 15 Based on the analysis of independent claims 1, 13, and 25 above, we are likewise persuaded that Ghias and Philyaw also fails to teach or suggest claims 2, 3, 8, 10–12, 14, 18, 19, 21–24, 26, 27, 29, 31, and 34–37, by virtue of their dependence on the independent claims. Therefore, we are not persuaded that Petitioner has established by a preponderance of the evidence that claims 1–3, 8, 10–14, 18, 19, 21–27, 29, 31, and 34–37 of the ’179 Patent are unpatentable under 35 U.S.C. § 103 as being obvious over Ghias and Philyaw. III. CONCLUSION For the foregoing reasons, we conclude that Petitioner has not demonstrated, by a preponderance of the evidence, that claims 1–3, 6–14, 18, 19, 21–27, and 29–37 of the ’179 Patent are unpatentable. IV. ORDER In consideration of the foregoing, it is ORDERED that claims 1–3, 6–14, 18, 19, 21–27, and 29–37 of the ’179 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. IPR2015-00343 Patent 8,640,179 B1 16 For PETITIONER: James J. Elacqua Douglas R. Nemec SKADDEN, ARPS, SLATE, MEAGHER & FLOM DLGOOGLE1N@skadden.com 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 Gregory Dovel DOVEL & LUNER, LLP greg@dovellaw.com Copy with citationCopy as parenthetical citation