MindGeek USA Inc v. University Of Southern California

1. Case Identification

• Case #: IPR2019-00423
• Patent #: 6,574,638
• Filed: December 11, 2018
• Petitioner(s): MindGeek USA Inc., MindGeek S.À.R.L., et al.
• Patent Owner(s): University of Southern California; Preservation Technologies LLC
• Challenged Claims: 1-26

2. Patent Overview

• Title: Method and Apparatus for Cataloguing Multimedia Data Using Surveying Data
• Brief Description: The ’638 patent relates to a system for cataloguing multimedia data by linking it to survey data. The system allows a catalogue containing descriptive information, derived from survey questions and answers, to be queried to identify and retrieve relevant segments of the associated multimedia data.

3. Grounds for Unpatentability

Ground 1: Anticipation over Gustman - Claims 1-26 are anticipated by Gustman under 35 U.S.C. §102.

• Prior Art Relied Upon: Gustman (Patent 5,832,495).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gustman discloses every element of the challenged claims. The central contention was that Gustman teaches a nearly identical method and system for cataloguing multimedia data, and that its disclosure of collecting "user input" through a "series of questions" to assess data quality constitutes the "surveying data" recited in the ’638 patent claims.
  • Petitioner asserted that Gustman’s system, like the claimed invention, obtains an association between this survey data (user answers to questions) and at least one catalogue element. For example, Gustman discloses a user interface where a user can enter descriptive notes, answer quality assurance questions, and propose keywords, all of which are then associated with catalogue elements such as a "phrase" or "segment."
  • Petitioner further argued that Gustman teaches searching this survey data to identify catalogue elements. Gustman describes building an index on attributes and attribute elements, which can be queried to identify a set of cataloguing elements like phrases. Because user input and answers to questions are stored as attributes of these elements, querying these attributes inherently searches the survey data.
  • Finally, Petitioner contended that Gustman discloses using the identified catalogue element to identify the associated multimedia data. Gustman explicitly states that a "phrase is associated with a portion of multimedia data" and that attributes like timecodes identify the specific video portion associated with an instance of a phrase element. Therefore, once the phrase element is identified via a query, the corresponding multimedia data is also identified, meeting the final limitations of independent claims 1, 10, and 18. Petitioner provided a detailed, element-by-element chart mapping Gustman’s disclosures to all 26 challenged claims.
  • Key Aspects: Petitioner emphasized that the ’638 patent appears to have lifted significant portions of its description and drawings directly from the earlier Gustman patent, including the detailed structure of the catalogue itself (e.g., Figures 2A, 2B, 2D), arguing this demonstrates the identical nature of the disclosed systems.

4. Arguments Regarding Discretionary Denial

• Petitioner acknowledged the one-year time bar for filing an IPR under 35 U.S.C. §315(b) and recent Federal Circuit precedent (Click-To-Call Techs., LP v. Ingenio, Inc.) suggesting the bar applies even following the voluntary dismissal of a prior infringement complaint.
• Petitioner argued that this precedent was incorrectly decided and that the §315(b) time bar should not apply in such circumstances. The petition was filed to preserve Petitioner's rights of appeal on this issue, asserting that the ’638 patent remains eligible for inter partes review.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of the ’638 patent as unpatentable.