PTAB

IPR2019-00423

MINDGEEK USA INC. v. University of Southern California

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1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Cataloguing Multimedia Data Using Surveying Data
  • Brief Description: The ’638 patent discloses a system for improving the cataloging and retrieval of multimedia data. The invention links a survey database to a multimedia catalog, allowing user-provided survey data (e.g., answers to questions) to be associated with specific segments of multimedia content, which can then be queried to identify relevant content.

3. Grounds for Unpatentability

Ground 1: 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 core of the argument is that the "surveying data" claimed in the ’638 patent is fully taught by Gustman's disclosure of obtaining user input and associating it with catalog elements. Specifically, Gustman teaches a system for cataloging multimedia data using a detailed catalog structure with elements like "phrase," "segment," and "keyword," which Petitioner asserted is functionally identical to the catalog in the ’638 patent.
    • Gustman's system allows a user to enter descriptive notes and create associations with catalog elements (e.g., a "phrase" element). More importantly, Gustman discloses a "quality assurance" feature where the system poses a series of questions to a user to assess the data collection process. The user can provide answers (e.g., yes/no, comments), and this information is associated with the cataloged data. Petitioner contended this functionality directly corresponds to the ’638 patent’s claimed method of "associating multimedia data with surveying data."
    • For independent claim 1, which requires "obtaining an association between survey data and at least one catalogue element," Petitioner mapped this to Gustman's disclosure of a user entering a "descriptive phrase" or answering quality assurance questions, which are then associated with a phrase or segment element in the catalog. The subsequent steps of searching the "survey data" to identify a catalog element and then identifying the associated multimedia data were mapped to Gustman's disclosure that its catalog can be indexed and queried to retrieve specific portions of multimedia data based on the user-provided input.
    • Petitioner asserted that dependent claims are also anticipated, as they recite more specific catalog elements (e.g., keyword, segment, type) and survey elements (e.g., question, answer) that are all explicitly described within Gustman’s detailed catalog and quality assurance framework. For example, claim 3’s “question element” and claim 4’s “answer element” were directly mapped to Gustman’s quality assurance screen (Fig. 5), which shows specific questions and fields for user answers.
    • Key Aspects: Petitioner emphasized that the ’638 patent appears to have adopted Gustman's catalog structure and drawings nearly verbatim. While Gustman was cited on the face of the ’638 patent, Petitioner argued that the Examiner did not apply the reference against the claims or consider the specific disclosures regarding the quality assurance questions, which form the basis of the anticipation argument.

4. Arguments Regarding Discretionary Denial

  • §315(b) Time Bar: Petitioner acknowledged that a prior complaint alleging infringement of the ’638 patent was served and later voluntarily dismissed. Under the Federal Circuit's precedent in Click-To-Call Techs., LP v. Ingenio, Inc., such a dismissal would typically trigger the one-year time bar for filing an IPR. However, Petitioner argued that Click-To-Call was incorrectly decided and filed the petition to preserve its appellate rights, noting that a petition for a writ of certiorari was pending in a related matter.
  • §325(d) Same or Substantially the Same Art: Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the Gustman reference was listed in an Information Disclosure Statement during the original prosecution, Petitioner asserted there is no evidence that the Examiner substantively considered or applied the specific teachings from Gustman that form the basis of this IPR petition, particularly the disclosures related to the quality assurance questions and their equivalence to the claimed "surveying data."

5. Relief Requested

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