Roku Inc v. Anonymous Media Research Holdings LLC

1. Case Identification

• Case #: IPR2024-01055
• Patent #: 8,756,622
• Filed: July 17, 2024
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Anonymous Media Research Holdings LLC
• Challenged Claims: 1-13

2. Patent Overview

• Title: Media Measurement Using Exogenous Data
• Brief Description: The ’622 patent discloses a media measurement system that identifies media content by analyzing a sequence of captured audio samples. The system generates a "play stream" of content identifiers and uses the sequential order of at least two different identifiers to establish a "channel identification," such as the name of an album or broadcast station.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wang777 and Wang060 - Claims 1, 5-6, 9-10, and 13 are obvious over Wang777 in view of Wang060.

• Prior Art Relied Upon: Wang777 (Application # 2007/0143777) and Wang060 (Application # 2002/0083060).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang777 taught a method for identifying a broadcast source (channel) from an audio sample by identifying the content and comparing its timestamp with timestamps of samples from known broadcast stations. To the extent Wang777 did not explicitly disclose organizing sequential identification results into a "play stream," Petitioner asserted that Wang060 supplied this element. Wang060 taught creating a log file or list of music played from a sound stream, which corresponds to the claimed play stream.
  • Motivation to Combine: A POSITA would combine these references for several reasons. Wang777 explicitly incorporated Wang060 by reference and described using its audio recognition techniques. Both references were in the same field of identifying audio content and its source, making the combination a predictable application of a known logging technique (Wang060) to a known source identification system (Wang777).
  • Expectation of Success: The combination would have been a predictable integration of a known logging method into a monitoring system to report identification results.

Ground 2: Obviousness over Wang777, Wang060, Herley682, and Seet - Claims 2-4, 7-8, and 11-12 are obvious over Wang777, Wang060, Herley682, and the Data Imputation References (Seet).

• Prior Art Relied Upon: Wang777, Wang060, Herley682 (Application # 2004/0260682), and Seet (Application # 2005/0193016).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 by adding references that address how to handle missing or incorrect data in the play stream, a process the ’622 patent called "scrubbing." Petitioner asserted that Herley682 taught storing fingerprints from unmatched samples as "unknown objects" for later manual identification, corresponding to the "none" entries in the ’622 patent's raw play stream. Seet further taught automating the correction of such missing data by inferring an identification for an unmatched sample based on the "temporal consistency" of surrounding, correctly matched samples. This data imputation method allegedly rendered the claimed concept of "converting a raw play stream to a format usable for searching" obvious.
  • Motivation to Combine: A POSITA would have been motivated to improve the reliability of the system in Ground 1. Herley682 provided a known method for handling identification failures. Seet provided an express motivation to automate and improve the accuracy of media identification systems by using its data imputation techniques to correct for missing data, which was a known problem. Automating a manual process (from Herley682) using a known technique (from Seet) would have been a predictable improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success as all references related to identifying media content from broadcast signals, and combining them involved applying known data correction techniques to a known identification system.

Ground 3: Obviousness over Pitman, Schrempp, and Wells - Claims 1-13 are obvious over Pitman in view of Schrempp and Wells.

• Prior Art Relied Upon: Pitman (Application # 2002/0116195), Schrempp (Application # 2003/0018709), and Wells (Application # 2003/0086341).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pitman disclosed the foundational system of capturing audio, generating a fingerprint, and matching it against a database to identify content like a song or album (a "channel"). Schrempp supplemented Pitman by teaching the generation of a "playlist" from content identified over a period of time, mapping to the claimed "play stream." Wells provided the final key element by teaching that a song is only reliably identified if a number of consecutive fingerprints match the same song, reducing the likelihood of errors. This use of multiple consecutive identifiers allegedly rendered obvious the ’622 patent's limitation of using a "sequential order of at least two different" identifiers to identify a channel.
  • Motivation to Combine: A POSA would combine Pitman and Schrempp to format Pitman's single-identification results into a more useful playlist, a well-known format. A POSA would have been further motivated to incorporate Wells's multi-fingerprint verification method into the Pitman-Schrempp system to improve accuracy and reduce mismatches, a known problem in the field. This would ensure that an identified channel (e.g., an album) was correct by verifying that multiple sequential songs matched that album.
  • Expectation of Success: Combining these references involved integrating known techniques for improving accuracy into a conventional content identification system, leading to the predictable result of a more robust identification method.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued the ’622 patent was not entitled to its claimed provisional priority date of May 27, 2004. Petitioner asserted that the provisional application (’836 application) failed to provide adequate written description support under §112 for the key limitation of using a "sequential order of at least two different obtained content identifiers...to identify a channel." As a result, Petitioner contended the patent’s effective priority date was its non-provisional filing date of May 26, 2005, making references like Wang777 and Seet valid prior art.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that it would stipulate not to pursue the same grounds, or any grounds that could have reasonably been raised in the inter partes review (IPR), in the parallel district court litigation if the IPR is instituted.
• §325(d): Petitioner contended that denial under §325(d) was inappropriate because the Examiner did not consider the specific prior art combinations presented in the petition. While Wang777 and Wang060 were cited individually during prosecution, they were not combined. Furthermore, key references central to the petition's arguments, including Herley682, Seet, Pitman, Schrempp, and Wells, were never before the Examiner.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-13 of the ’622 patent as unpatentable.