PTAB

IPR2020-00217

Free Stream Media Corp v. Gracenote Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Device for Generating and Detecting a Fingerprint Functioning as a Trigger Marker in a Multimedia Signal
  • Brief Description: The ’962 patent discloses methods and systems for using audio/video "fingerprints" as trigger markers to initiate actions during media playback. The system generates fingerprints from segments of a multimedia signal, stores them in a database associated with specific actions, and later detects these fingerprints during playback to trigger the corresponding actions.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Murphy in view of Brunk

  • Prior Art Relied Upon: Murphy (U.K. Published Patent Application GB 2,375,907A) and Brunk (Application # 2002/0126872).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Murphy and Brunk discloses all limitations of the challenged claims. Murphy taught an automated recognition system that generates fingerprints (termed "audio cues" or "signatures") from a multimedia signal at specific trigger time points to perform actions, such as starting a recording or displaying information. Petitioner contended that Murphy discloses generating, storing, detecting, and matching fingerprints to trigger actions, thus teaching most elements of independent claims 1 and 8. However, Murphy did not expressly teach storing the actions in the same database as their corresponding fingerprints. Brunk allegedly supplied this missing element by teaching the use of content signatures (fingerprints) stored in a database as an index to access associated data, including a "desired action or behavior," stored in the same database. Petitioner asserted that adding Brunk’s database indexing method to Murphy’s system renders the claims obvious. Dependent claims were argued to be obvious as they recite additional conventional actions (e.g., displaying information, executing control commands) or timing relationships (e.g., triggering an action at the beginning or end of a media segment) that were also disclosed or suggested by Murphy's teachings on recording control and buffering.
    • Motivation to Combine: A POSITA would combine Murphy and Brunk to improve Murphy's system with a known and advantageous database technique. The primary motivations were to conveniently store and flexibly update fingerprints and their corresponding actions in a single database, which simplifies the system design. Furthermore, storing actions directly with their fingerprint index, as taught by Brunk, would reduce processing time by allowing a single lookup to retrieve both the match confirmation and the corresponding action. This combination was presented as a predictable integration of known elements to achieve a more efficient and streamlined system.
    • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success because the combination involved applying a conventional database organization technique (Brunk) to a known content recognition system (Murphy). Both references operate in the same technical field, address similar problems, and are readily compatible, making their integration a matter of routine engineering with predictable results.

4. Key Claim Construction Positions

  • "Multimedia": Petitioner argued this term, present in all independent claims, should be construed to mean "audio and/or visual media." This construction was based on the ’962 patent’s specification, which describes a multimedia signal as comprising "video and/or audio information/content" and explicitly refers to "audio clips" as a type of "multimedia content." Petitioner noted this usage is consistent with the prior art, including Brunk.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’962 patent as unpatentable.