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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
GRACENOTE, INC.,
Plaintiff,
v.
FREE STREAM MEDIA CORP.,
d/b/a SAMBA TV
Defendant.

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C.A. No. 18-1608-RGA

DEFENDANT FREE STREAM MEDIA CORP.’S (d/b/a SAMBA TV)
OPENING BRIEF IN SUPPORT OF ITS MOTION TO
DISMISS FOR FAILURE TO STATE A CLAIM UNDER RULE 12(B)(6)

OF COUNSEL:
Karen L. Dunn
Eric J. Maurer
Patrick M. Lafferty
Amara Osisioma
BOIES SCHILLER FLEXNER LLP
1401 New York Ave., NW
Washington, DC 20005
(202) 237-2727
kdunn@bsfllp.com
emaurer@bsfllp.com
plafferty@bsfllp.com
aosisioma@bsfllp.com
Trevor P. Stutz
BOIES, SCHILLER FLEXNER LLP
725 S. Figueroa Street
Los Angeles, CA 90017
(213) 629-9040
tstutz@bsfllp.com
Dated: March 4, 2019

Kelly E. Farnan (#4395)
RICHARDS, LAYTON & FINGER, P.A.
One Rodney Square
920 N. King Street
Wilmington, DE 19801
(302) 651-7700
farnan@rlf.com
Attorneys for Defendant Free Stream Media
Corp., d/b/a Samba TV

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TABLE OF CONTENTS
NATURE AND STAGE OF THE PROCEEDING........................................................................ 1
INTRODUCTION .......................................................................................................................... 1
SUMMARY OF ARGUMENT ...................................................................................................... 2
STATEMENT OF FACTS ............................................................................................................. 4
I. ’114, ’831, and ’962 Patent Background ............................................................................ 4
II. ’030 Patent Background ...................................................................................................... 8
LEGAL STANDARDS .................................................................................................................. 9
ARGUMENT ................................................................................................................................ 10
I. Gracenote’s ’114, ’831, and ’962 Infringement Claims Should Be Dismissed with
Prejudice Because the Patents are Invalid under 35 U.S.C. § 101.................................... 10
A. Alice Step One: The Claims Are Directed to an Abstract Idea. ................................. 10
B. Alice Step Two: The Claims Do Not Involve “Significantly More” That Would
Render the Abstract Idea Patentable. .......................................................................... 15
C. The Claims Also Lack Any Inventive Ordered Combination. ................................... 17
II. Gracenote’s ’030 Infringement Claim Should Be Dismissed with Prejudice Because
Asserted Claim 1 Is Invalid under 35 U.S.C. § 101.......................................................... 18
CONCLUSION ............................................................................................................................. 20

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TABLE OF AUTHORITIES
Cases
Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266 (Fed. Cir. 2016) ....................... 9
Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) .................................................. passim
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016) .................................................... 10
Berkheimer v. HP Inc., 890 F.3d 1369 (Fed. Cir. 2018)............................................................... 10
Bilski v. Kappos, 561 U.S. 593 (2010).......................................................................................... 10
BSG Tech. LLC v. Buyseasons, Inc., 899 F. 3d 1281 (Fed. Cir. 2018) ................................... 14, 15
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed.
Cir. 2014) ...................................................................................................................... 12, 17, 18
Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) ............................ passim
In re TLI Communications LLC Patent Litigation, 823 F. 3d 607 (Fed. Cir. 2016)........... 9, 14, 18
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017) ................. passim
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) .................... 9, 13
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015) ........................... 9
IPA Techs., Inc. v. Amazon.com, Inc., 307 F. Supp.3d 356 (D. Del. 2018) .................................... 9
IPA Techs., Inc. v. Amazon.com, Inc., C.A. No. 16-1266-RGA, 2019 WL 259100 (D. Del.
Jan. 18, 2019) .............................................................................................................................. 9
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) ......................... 10
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................ 5
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017) .......................................... 11
Sound View Innovations, LLC v. Facebook, Inc., 204 F. Supp.3d 655 (D. Del. 2016) .................. 9
Twilio, Inc. v. Telesign Corp., 249 F. Supp. 3d 1123 (N.D. Cal. 2017) ....................................... 13
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).................................................. 10
Statutes
35 U.S.C. § 101 ....................................................................................................................... 1, 2, 3
ii

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NATURE AND STAGE OF THE PROCEEDING
Gracenote, owned by Nielsen—the audience-measurement monopolist—seeks to stifle
Samba’s innovative competitive technology with invalid patents. On October 17, 2018,
Gracenote filed a complaint accusing Samba of infringing nine claims in four patents: U.S.
Patent Nos. 9,066,114 (claims 1, 8, 10); 9,479,831 (claims 11, 24); 9,407,962 (claims 1, 8, 15);
and 8,171,030 (claim 1) (respectively, “’114” “’831,” “’962,” and “’030” patents). (D.I. 1 at ¶
30, 62, 84, 109.) This motion seeks dismissal with prejudice of Gracenote’s Complaint because
the asserted patents claim ineligible subject matter under 35 U.S.C. § 101.
INTRODUCTION
For centuries, families and friends have gathered for plays and concerts—and more
recently, for television and radio programming. Most silently observe. But others, often because
they are already familiar with the programming, offer commentary: about the director, the
actors, or the scenes. Some react to the content in order to enhance it: a lawyer presenting an
animation typically offers comments at preplanned moments; or a theater employee may need to
adjust lighting or curtains at the conclusion of certain scenes. The process of recognizing parts
of a video, song, or other content and reacting—either instantly or at a later time (e.g., during a
commercial break)—is not patentable. It is an abstract concept involving the three main stages
of memory: processing, storage, and retrieval. Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct.
2347, 2356 (2014) (a “method of organizing human activity” is not eligible for patenting).
Gracenote’s patents claim abstract concepts without contributing any new inventive
technology to achieve them. Instead, the claims merely use existing technologies—technologies
Gracenote does not even claim to have invented—as tools to carry out the concepts. The ’114,
’831, and ’962 patent claims use identifiers, called fingerprints, to recognize portions of audio or
video signals and trigger responsive actions at predetermined times during the playback, such as
1

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providing information about a scene at its conclusion. The patents, however, do not purport to
have invented fingerprints or even an improved fingerprinting technique. Using known
fingerprinting technology as a tool to perform the abstract concept of signal recognition and
reaction is patent-ineligible under 35 U.S.C. § 101. 1
Claim 1 of the ’030 patent is patent-ineligible for similar reasons. Though the ’030
patent is unrelated to the other three patents, it also uses fingerprints—in particular, video
fingerprints, which it calls “robust hashes.” Claim 1 is directed to creating and then storing
robust hashes in a database. “This type of activity, i.e., organizing and accessing records
through the creation of an index-searchable database, includes longstanding conduct that existed
well before the advent of computers and the Internet,” for example, “hardcopy-based
classification system[s]” that classify, “organize, and cross-reference” “books, magazines, or the
like” “by certain identifiable tags . . . .” Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1327 (Fed. Cir. 2017). The claim, therefore, is invalid.
SUMMARY OF ARGUMENT
1.

Under 35 U.S.C. § 101, abstract ideas are not patentable. Alice, 134 S. Ct. at

2354. The Supreme Court in Alice set forth a two-part “framework for distinguishing patents
that claim” “abstract ideas from those that claim patent-eligible applications of those concepts.”
Id. at 2355.
2.

The asserted claims of the ’114 and ’831 patents fail at step one of Alice because

they are directed to the abstract idea of recognizing portions of a multimedia signal and
1

See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1351-52, 1355 (Fed. Cir. 2016)
(finding that claims reciting an “interconnected electrical power grid” for receiving “data
streams” were directed to a patent-ineligible concept because their focus is on “collecting
information, analyzing it, and displaying certain results of the collection and analysis”);
Intellectual Ventures, 850 F.3d at 1328 (using a specific type of encoded data—well-known
“XML tags”—does not convert claims into a patent eligible invention).

2

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performing actions in response at a specified time (e.g., providing information about an actor
appearing on screen just after the actor appears on the screen or during a commercial break).
3.

The asserted claims of the’962 patent are directed to a subset of the abstract

recognition concept of the ’114 and ’831 patents, and thus also fail at step one of the Alice
framework. In order to recognize and react to portions of a movie or other multimedia content,
those portions must first be committed to memory. The ’962 patent is directed to storing the
portions of the multimedia signal, along with a corresponding responsive action, in a database.
4.

The claims of these three patents also fail at step two of Alice because they do not

recite any inventive concepts sufficient to ensure that the patents amount to significantly more
than the abstract concept. Instead, the claims use a known multimedia identifier (a “fingerprint”)
and generic computer components (e.g., a “processor” and a “database” comprising a two
column lookup table shown in Fig. 4) to perform the same steps that a human performs when
watching the same multimedia content. As a result, the asserted claims are invalid under 35
U.S.C. § 101, and the ’114, ’831, and ’962 Patents should be dismissed from Gracenote’s
Complaint with prejudice.
5.

Claim 1 of the ’030 patent also is invalid under 35 U.S.C. § 101. It is directed to

the abstract concept of creating identifying data (a robust hash from a video) and storing and
indexing the identifiers and other video information in a database. Intellectual Ventures, 850
F.3d at 1327. The claim requires that the hash be indexed in a particular type of database (in a
“leaf node”). But the patent does not purport to have invented robust hashes or the claimed
database structure. The patent’s use of these components as tools to implement the abstract
concept of classifying, storing, and indexing data does not transform the method claim into a
patent eligible process.

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STATEMENT OF FACTS
I.

’114, ’831, and ’962 Patent Background
The ’114, ’831, and ’962 patents—which are related to one another and share a common

specification—purport to be directed to the “current trend” of creating “interactive” “television
viewing and/or music listening” experiences by providing information to the viewer during or
after the playback of parts of the content. (D.I. 1-1, Ex. A, ’114 patent at 1:22-32.) 2 For
example, “at the appearance of an actor in a movie, some biographic data of the actor may be
made available.” (Id. at 1:46-48.) One known way of accomplishing this interactivity was to
include marks—such as watermarks—in the signal. (Id. at 1:63-2:34.) Detection of the marks
during playback triggered responsive actions (e.g., a mark inserted in the scene where an actor
first appears triggers biographic data). (Id.)
Instead of using watermarks to trigger the responsive actions, the patents use another
known technique: “fingerprints,” “also known as ‘(robust) hashes’.” (’114 patent at 3:20.) A
fingerprint, which results from audio or video signal processing, is a representation of audio or
video content that can be used to recognize future playbacks of the content. 3 Processing signals
to produce an identifier is not new; indeed, when a person watches a movie, they watch,
process/encode, and store the encoded information in their minds.
Fingerprinting is not new either. The patents reference “known” fingerprint algorithms
and fingerprint prior art. (Id. at 2, 4:53-60.) One of those prior art publications discloses that
2

The ’114, ’831, and ’962 patents share a common specification. Therefore, although all
citations are to the ’114 patent, the cited passages also appear in the ’831 and ’962 patents.
3
The patents state that a “fingerprint of a multimedia object/content/signal is a representation of
perceptual features of the object/content/signal part in question. Such fingerprints are sometimes
also known as ‘(robust) hashes’. More specifically, a fingerprint of a piece of audio or video is
an identifier which is computed over that piece of audio or video and which does not change
even if the content involved is subsequently transcoded, filtered or otherwise modified.” (‘114
Patent at 3:17-24.)

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fingerprints can be used as an alternative to watermarks to identify audio or video content in
order to “trigger” a “number of different responses” corresponding to the content. (Ex. A,
Abstract and ¶¶ [0008], [0009], [0027].) Another discloses that the fingerprints can be used to
identify short clips within a movie. (Ex. B at 121, 123.) 4
That is how the patents use fingerprints. As illustrated below, reference fingerprints 102
are taken of the multimedia signal 101 (’114 patent, Fig. 1b); those reference fingerprints 102
(FP1, FP2, etc.) are indexed in memory and correlated to some corresponding action (A1, A2,
etc.), (’114 patent, Fig. 4); then if that signal 101 is played again, fingerprints 104 are extracted
and matched to the stored fingerprints, which triggers a corresponding reaction (e.g., providing
biographical information). (Id. at 3:64-4:30, 5:43-6:24, 7:51-57.)

Creation of reference fingerprints 102 that
can be matched with fingerprints 104

Storage of Fingerprints 102 in a table

The asserted claims are directed to these encoding, storage, retrieval, and reaction
features. For purposes of this motion, claim 11 of the ‘831 patent is representative of most, if not

4

In deciding a Rule 12(b)(6) motion, a court may take judicial notice of the patents’ prosecution
histories, which are public records. Sound View Innovations, LLC v. Facebook, Inc., 204 F.
Supp.3d 655, 658-59 (D. Del. 2016). Exhibits A and B are prior art cited during the examination
of the applications leading to the ’114 patent (’114 patent at p. 2) and are therefore part of its
prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc).

5

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all, of the asserted claims: 5
11. A method comprising:
playing back multimedia content on a multimedia play back
device, including providing at least some of the multimedia content
on a display associated with the multimedia playback device;
during the playback of the multimedia content by the multimedia
playback device, repeatedly deriving, by the multimedia playback
device, fingerprints from respective segments of the multimedia
content;
comparing the derived fingerprints to reference fingerprints
representing features of the multimedia content, each reference
fingerprint associated with one or more actions;
determining that one of the derived fingerprints matches one of the
reference fingerprints; and
in response to the determining that the one of the derived
fingerprints matches the one of the reference fingerprints, causing
execution of an action associated with the one of the reference
fingerprints, the action being associated with a time point
indicating when, in the multimedia content, the action is to be
performed.
This claim uses fingerprints as tools to perform the abstract concept of recognizing and
reacting to portions of the content at a specified time. Similar to how a person determines she
has already viewed scenes from a movie, the claim recites that the multimedia signal is processed
(into fingerprints) and then compared to previously processed signals (“reference fingerprints”)
to determine if there is a match (steps [2]-[4]). If there is a match, the claim requires some
unspecified action to take place at a specified time.
Claims 1, 8, and 10 of the ‘114 patent are similar. Like claim 11 of the ’831 patent, claim
1 of the ’114 patent uses fingerprints to recognize multimedia content, and if there is a match the
claim requires some unspecified action to take place at a specified time, which this claim refers
5

Claim 11 is representative of at least asserted claims 1, 8, and 10 of the ’114 patent. It also is
representative of claim 24 of the ’831 patent and claims 1, 8, and 15 of the ’962 patent. In the
alternative, claim 24 of the ’831 patent can be treated as representative for claims 1, 8, and 15 of
the ’962 patent.

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to as a “trigger time point.” (’114 patent at 8:9-12.). The claim calls the fingerprints that are
matched to previously-derived fingerprints “trigger fingerprints.” (Id.) Claim 10 of the ‘114
patent is identical to claim 1, except it is directed to a “non-transitory machine readable storage
medium” and it is not a method claim. Claim 8 is nearly identical, except it claims a system
rather than a method and also adds a “fingerprint detector,” which appears to refer to a general
purpose computer “that derives a fingerprint steam or segments thereof and determines if there
are any matches with fingerprints stored in the database . . . .” (’114 patent at 7:33-37.)
In order to recognize and react to portions of a previously-viewed movie or other
multimedia content—as occurs in claim 11 of the ’831 patent—those portions must first be
processed and committed to memory. This is true irrespective of whether a fingerprint or the
human mind is used to identify the content. In addition to using fingerprints as tools to recognize
and react to portions of multimedia content (like claim 11 of the ’831 patent), claim 24 of the
’831 patent explicitly recites that the “reference fingerprints” used for the matching must first be
created and associated with the corresponding reaction. The asserted claims of the ’962 patent
are directed to this initial step of creating and storing reference fingerprints—and storing them in
a database for later use. 6
Although claim 11 of the ’831 patent does not explicitly recite the creation and storage of
the reference fingerprints it uses to recognize content, it still is representative of the ’962 patent
claims that do require this step because that creation and storage is a necessary and implied
requirement for claim 11. But even if not, then claim 24 of the ’831 patent—which does
explicitly recite the creation and storage of reference fingerprints and the corresponding

6

Claims 1, 8, and 15 are almost identical. Claim 1 is a method claim; claims 8 and 15 are
directed to a system and non-transitory machine-readable medium, respectively.

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actions—is representative of the ’962 patent claims. 7
II.

’030 Patent Background
Though the ’030 patent is unrelated to the other three patents in suit, it also is directed at

identifiers for multimedia, which it refers to as “robust hashes.” (’030 patent at 15:32.) The sole
claim asserted by Gracenote, claim 1, is a method claim directed to storing robust hashes and
other data associated with a video in a database with “leaf nodes”:
1. A method of organization of a multi-dimensional video
database using a robust hash of a multi-dimensional vector
signature as a traversal index, the method comprising:
generation of a robust hash value as a traversal index from multiple
parameters extracted from a region of interest in a frame of a video
sequence; and
storing data associated with the video sequence at a leaf node
addressed by the robust hash value, wherein the leaf node is a
member of a plurality of leaf nodes in a multi-dimensional video
database.
The claim includes a mere two steps: one involving the generation of the “robust hash
value”; and one involving the storage of the hash value and other video data in “leaf nodes” in a
database. As to the first step, like the other three patents in suit, the ’030 does not purport to
have invented “robust hash” identifiers for videos. Indeed, the ’030 patent application’s filing
date is June 18, 2008—several years after the filing of the original application that led to the
issuance of the other three patents. Those patents explain that “fingerprints” are “also known as
‘(robust) hashes’.” (’114 patent at 3:20.) Though the first step includes language in addition to
“robust hash” (e.g., “multiple parameters”), Gracenote alleges that those features of the “hash”
arise whenever a “video fingerprint” is generated to match content: “because video fingerprints
are based on multiple parameters extracted from a region of interest in a frame of a video
7

Gracenote does not accuse Samba of infringing the remaining claims in those patents; but
claims 8 and 24 of the ’831 patent are representative of the remaining claims.

8

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sequence, the Infringing Product generates a robust hash value from multiple parameters
extracted from a region of interest in a frame of a video sequence.” (D.I. 1 at ¶ 111.)
As to the second step, the patent does not purport to have invented the storage of
information in leaf nodes in a database. (’030 patent at col. 5:14-16 (referring to a “typical video
database” as including “leaf nodes.”).
LEGAL STANDARDS
Because this Court is familiar with and has issued several opinions summarizing the
standards for ruling on a Rule 12(b)(6) based patent ineligibility grounds, we do not provide an
extensive legal summary. See IPA Techs., Inc. v. Amazon.com, Inc., C.A. No. 16-1266-RGA,
2019 WL 259100, at **4-5 (D. Del. Jan. 18, 2019); IPA Techs., Inc. v. Amazon.com, Inc., 307 F.
Supp.3d 356, 360-62 (D. Del. 2018); Sound View Innovations, LLC v. Facebook, Inc., 204 F.
Supp.3d 655, 658-60 (D. Del. 2016). Instead, we focus on key principles relevant to patent
eligibility, which is “a question of law suitable for resolution on a motion to dismiss.” IPA, 2019
WL 259100, at *4.
The Supreme Court set forth a two-step framework to distinguish patents claiming
“abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S.
Ct. at 2355. First, the Court determines whether the claims are directed to a patent-ineligible
concept, such as an abstract idea. Id. A patent can be directed to an abstract idea even its claims
include tangible features and are limited to a particular field or application. 8

8

See, e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1329 (Fed. Cir. 2016)
(claims directed to virus screening); In re TLI Commc’n s LLC Patent Litig., 823 F.3d 607 (Fed.
Cir. 2016) (claims directed to collecting and storing information about a digital image and
transmitting to a server where the information can be accessed by a user); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (avoiding data loss); Affinity Labs
of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (delivering userselected media content to portable devices).

9

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Second, the court must decide whether the claims add an “inventive concept”
transforming the claims into a patent-eligible application—“an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [concept] itself.’” Alice, 134 S. Ct. at 2355 (citation omitted). Unless
these additional elements add something significant to the abstract idea, the claim is ineligible.
Id. Implementing an abstract idea using well-known computer components or functions, limiting
the idea to a particular technological environment, or adding other token steps, is insufficient.
Id. at 2357-59; see also, e.g., Bilski v. Kappos, 561 U.S. 593, 610-11 (2010); Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). “In a situation where the specification admits
the additional claim elements are well-understood, routine, and conventional, it will be difficult,
if not impossible, for a patentee to show a genuine dispute.” Berkheimer v. HP Inc., 890 F.3d
1369, 1371 (Fed. Cir. 2018) (Moore, J.) (denial of rehearing en banc).
ARGUMENT
I.

Gracenote’s ’114, ’831, and ’962 Infringement Claims Should Be Dismissed
with Prejudice Because the Patents are Invalid under 35 U.S.C. § 101.
A.

Alice Step One: The Claims Are Directed to an Abstract Idea.

Step one examines the claim to determine whether its “character as a whole” or “focus” is
an abstract idea. Elec. Power Group, 830 F.3d at 1353. The inquiry examines whether the
claims are directed to “‘a specific means or method that improves the relevant technology’ or are
‘directed to a result or effect that itself is the abstract idea and merely invoke generic processes
and machinery.’” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (quoting
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)).
Here, four asserted claims focus on the abstract idea of recognizing portions of a
multimedia signal and performing actions in response at a specified time (e.g., communicating

10

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the names of the songs or actors in a scene, either during or after the scene). (See ’831 patent,
claim 11; ’114 patent, claims 1, 8, and 10.) Three asserted claims are directed to a subset of this
abstract concept: storing those portions of the multimedia signal and actions. (See ’962 patent,
claims 1, 8, and 15.) 9 And one claim combines the two. (See ’831 patent, claim 24).
All claims use known generic techniques to carry out the idea:
•

Processing and Storage: Just as when a person sees or hears audio or video, the
patents process the signals and store them as well as corresponding actions to take at
a particular time. When done by a computer, the processing results in identifiers,
called fingerprints.

•

Recognition: Portions of incoming signals are matched to what is in memory.

•

Reaction: If there is a match, some action is taken at a specified time.

(See ’831 patent, claims 11 and 24.) The patents do not purport to have created a new
technology for processing, recognizing, storing, or reacting to audio or video. They admit that
fingerprints are “known,” and cite to prior art that uses fingerprints to identify content and
trigger reactions in response to a match. (’114 patent at 2, 4:53-60; Ex. A, at Abstract, ¶¶
[0008], [0009], [0027]; Ex. B at 121, 123.) 10 And they characterize the fingerprints as
“algorithms.” Elec. Power, 830 F.3d at 1354 (“we have treated analyzing information . . . by
mathematical algorithms, without more, as essentially mental processes within the abstract-idea
category”); see also RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017)
9

See Statement of Facts section for a more detailed description of the claims. Claim 11 of the
‘831 patent is representative of most, if not all, of the claims—at a minimum, asserted claims 1,
8, and 10 of the ’114 patent. Although claim 11 does not explicitly recite the creation and
storage of the reference fingerprints it uses to recognize content, it still is representative of the
’962 patent claims that do require this step because that creation and storage is a necessary and
implied requirement for claim 11. But even if not, then claim 24 of the ’831 patent—which does
explicitly recite the creation and storage of reference fingerprints and the corresponding
actions—is representative of the ’962 patent claims.
10
The precise construction of “fingerprint” is not material to this motion because the patents
admit that the fingerprinting described in the motion was known. The ’114 patent describes
features of a fingerprint at column 3, lines 17-24.

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(claims “directed to the abstract idea of encoding and decoding image data” are ineligible).
As to the storage and matching of the fingerprints, and the triggering of
reactions in response to a match, the patent specifications disclose an ordinary
lookup table. (’114 patent at 7:5-17, Fig. 4 (reproduced below and to the
right).) And the claims do not even specify that a generic lookup table even
needs to be used.
The Federal Circuit has repeatedly found similar claims invalid. In
Electric Power, the claims focused on “collecting,” “analyzing,” and “displaying certain results
of the collection and analysis.” Elec. Power, 830 F.3d at 1353. They also were directed to a
narrow field: “real time” detection of events on “an interconnected electric power grid . . . .” Id.
at 1351. The incoming “data streams” included “time stamped synchronized phasor
measurements.” Id. Limiting the collecting, processing, and reacting steps to a particular
environment (power grid) using particular “time-stamped” data streams did not convert the
patent’s abstract concept into a non-abstract concept. Id. at 1353-54.
In Content Extraction, the claims related to extracting processed (digitized) data from
paper documents, using that processed data to recognize portions of the paper documents, and
storing that information in memory. Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1345 (Fed. Cir. 2014). The Federal Circuit found the claims directed
to the abstract idea of “1) collecting data, 2) recognizing certain data within the collected data
set, and 3) storing that recognized data in a memory” to be abstract because “humans have
always performed these functions.” Id. at 1347. Here, the asserted claims are similarly directed
to recognizing certain data within a collected data set (i.e. “reference” fingerprints are derived to

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identify portions of multimedia signals). 11
“Another helpful tool used by courts in the abstract idea inquiry is consideration of
whether the claims have an analogy to the brick-and-mortar world, such that they cover a
‘fundamental ... practice long prevalent in our system....’” Twilio, Inc. v. Telesign Corp., 249 F.
Supp. 3d 1123, 1138 (N.D. Cal. 2017) (quoting Alice, 134 S. Ct. at 2356 and citing other cases);
see also Symantec Corp., 838 F.3d at 1317 (comparing ineligible email software program to a
“brick-and-mortar” post office). The claims here do nothing more than use fingerprints and
multimedia equipment as tools to perform the same concepts and tasks performed at theaters
around the world for centuries:
Claim 11 of the ’831 Patent
11. A method comprising:
playing back multimedia content on a multimedia
play back device, including providing at least some
of the multimedia content on a display associated
with the multimedia playback device
during the playback of the multimedia content by the
multimedia playback device, repeatedly deriving, by
the multimedia playback device, fingerprints from
respective segments of the multimedia content;
comparing the derived fingerprints to reference
fingerprints representing features of the multimedia
content, each reference fingerprint associated with
one or more actions;
determining that one of the derived fingerprints
matches one of the reference fingerprints; and
in response to the determining that the one of the
derived fingerprints matches the one of the reference
fingerprints, causing execution of an action
associated with the one of the reference fingerprints,
the action being associated with a time point
indicating when, in the multimedia content, the
11

Theater
Shakespeare’s “Romeo and Juliet” is
being performed at a local theater.

A crew member responsible for raising
and lowering the curtain watches the
performance; the crew member’s mind
processes and stores the information.
The crew member has been given
instructions to lower the curtain at the
end of certain acts and scenes, including
at the end of the scene when Juliet dies.
Because the crew member has been to
dress rehearsals and live performances,
she recognizes the portions of the play
that trigger the lowering of the curtain.
When Juliet dies in the play, the crew
member recognizes the scene and lowers

See also In re TLI, 823 F.3d at 611 (Fed. Cir. 2016) (classifying image data and storing it
based on its classification is abstract under Alice step one); Intellectual Ventures, 850 F.3d at
1327 (use of a specific type of processed data—XML tags—to build a searchable database an
abstract and patent ineligible concept).

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action is to be performed.

the curtain.

Claim 24 of the ’831 patent is similar to claim 11, but it makes explicit what is implicit in
claim 11: in order to match fingerprints, a reference fingerprint must be created. Again, these
added limitations do nothing more than use known generic computing tools to perform the same
concepts and tasks performed at theaters around the world for centuries:
Claim 24 of the ’831 Patent
Theater
24. A method comprising:
generating, by a processor, a
A crew member for a production of “Romeo and Juliet” is
plurality of reference fingerprints instructed to lower the curtain at the end of certain acts and
from respective segments of
scenes, including at the end of the scene when Juliet dies.
multimedia content, each of the
reference fingerprints being
The crew member reads the script, attends rehearsals, and
associated with a corresponding
attends live performances of the play. As a result, the crew
action;
member’s mind processes and stores the performance,
including the portions of the play where she must lower the
storing, by the processor, the
plurality of reference fingerprints curtain. She associates those portions of the play with the
and the associations in a memory; instruction to lower the curtain.
[Remaining limitations are not reproduced here
because they are substantially similar to claim 11.]
Finally, the claims’ inclusion of a few generic tangible components (e.g., “playback
device,” “processor,” “database”) and focus on multimedia signals does not transform them into
patentable subject matter. The Federal Circuit has “consistently held . . . that claims are not
saved from abstraction merely because they recite components more specific than a generic
computer.” BSG Tech. LLC v. Buyseasons, Inc., 899 F. 3d 1281, 1286 (Fed. Cir. 2018); see also
In re TLI Communications LLC Patent Litigation, 823 F. 3d 607, 611 (Fed. Cir. 2016) (inclusion
of “tangible components” that “merely provide a generic environment in which to carry out the
abstract idea” do not save claims). Similarly, an “abstract idea does not become nonabstract by
limiting the invention to a particular field of use or technological environment, such as the
Internet.” Intellectual Ventures, 850 F.3d at 1330.

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B.

Alice Step Two: The Claims Do Not Involve “Significantly More”
That Would Render the Abstract Idea Patentable.

Because Gracenote’s patent claims are directed to abstract concepts, the Court must
“determine whether [they] contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357 (citation omitted).
Neither “generic” computer technology, nor “‘well-understood, routine, conventional’” or
“purely functional” elements can supply the required inventive concept. Id. at 2358-60 (citation
omitted). The abstract “concept to which [the claimed invention] is directed” also “cannot
supply the inventive concept . . . .” BSG, 899 F.3d at 1290. “It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed cannot supply the
inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” Id.
Nothing in the claims transforms their abstract concept—recognizing portions of a
multimedia signal and performing actions in response at a specified time—into patentable
subject matter. For example, the asserted claims collectively recite a mere five tangible
components: a “multimedia playback device” (‘831 patent, claim 11; see also ‘114 patent,
claims 1, 8, and 10 (“playback device”); a “fingerprint detector” (‘114 patent, claim 8); a
processor (‘114 patent, claims 1 and 8; ’962 patent, claims 1, 8, and 15); “memory” (‘831 patent,
claim 24); and a database (‘114 patent, claims 1, 8 and 10; ‘962 patent, claims 1, 8 and 15). The
patents describe these general purpose machines in functional terms.
Specifically, Figure 3 shows a generic “schematic block diagram” of a “playback
device,” and the corresponding description is in functional terms of receiving multi-media
content (‘114 patent at 7:29-33), deriving/computing a fingerprint (id. at 7:33-34), determining if
there any matches in the database (id. at 7:34-37); and performing the associated action. (Id. at
7:37-40.) The claims merely require that it “play[] back multimedia content” and derive
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“fingerprints from respective segments of the multimedia content,” (‘831 patent, claim 11), or
“perform[] a reference action that corresponds to the reference fingerprint.” (‘114 patent, claims
1, 8, 10) Nothing in the claims describes how the playback device performs any of these steps
in a new or unconventional way. Similarly, the “fingerprint detector” is identified as part of the
playback device. (Id. at 7:21-22.) It is also described functionally: it “derives a fingerprint
steam or segments thereof and determines if there are any matches with fingerprints stored in the
database as explained in connection with FIG. 1b. If a match is found then a representation of the
associated action(s) is also retrieved.” (Id. at 7:33-38.) In the claims, it is merely “configured to
determine a plurality of trigger fingerprints from content being played back on a playback
device.” (‘114 patent, claim 8.) Neither the playback device nor the fingerprint detector is
sufficiently inventive. See In re TLI, 823 F.3d at 614 (“telephone unit” and “server” not
transformative because the components “simply provide[] the environment in which the abstract
idea of classifying and storing digital images in an organized manner is carried out”). Such
references to generic and existing multimedia identification technology cannot supply an
inventive concept. Apple, Inc., 842 F.3d at 1245 (finding claims that “refer[red] to the use of . . .
voice capture technologies without providing how these elements were to be technologically
implemented” were non-inventive).
The “processor” in the claims perform basic computer tasks, such as “determining,”
“deriving,” “accessing,” identifying,” and “performing” (‘114 patent, claims 1 and 8; ’962
patent, claims 1, 8, and 15). Stating that a processor performs the functional steps that comprise
an abstract idea is insufficient. Elec. Power Grp., 830 F.3d at 1355 (computers, networks, and
display components not inventive).
The database is a routine conventional database. It is shown in Figure 4 as a simple

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lookup table. (Id. at 3:46-47, 7:8-10 (“As shown in FIG.4, the database (203) comprises
fingerprints ‘FP1’, ‘FP2’, ‘FF3’, ‘FP4’, ‘FF5’, etc. and respective associated actions ‘A1’, ‘A3’,
‘A4’, ‘A2’, ‘A1’, etc.”).) In the claims, the database merely holds data and stores a relationship
between two things (a reference fingerprint and an action), is accessed to update records and
“obtain[]matches.” (‘114 patent, claims 1, 8 and 10; ‘962 patent, claims 1, 8 and 15). These are
no more than the “performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction, 776 F.3d at 1347–48 (citation omitted).
Finally, deriving fingerprints for multimedia signals is routine and conventional process.
(Id. at 3:19-20; 4:53-60.) The patent does not purport to provide—or more importantly, claim—
an improvement to the conventional approaches, and instead references other patents for further
description of those algorithms. (Id. at 6:29-42.) As noted above, the claim does not provide
any detail about how the fingerprints are derived or how they are matched in the database.
The fingerprints also do not change or alter the recited database. The claims here are
similar to those in Intellectual Ventures, where the Federal Circuit “fail[ed] to see how the
patentee’s use of a well-known tag, i.e., XML tag—to form an index—sufficiently transforms
the claims into a patent eligible invention.” 850 F.3d at 1328. The court reasoned that, “[w]hile
limiting the index to XML tags certainly narrows the scope of the claims, in this instance, it is
simply akin to limiting an abstract idea to one field of use or adding token post solution
components that do not convert the otherwise ineligible concept into an inventive concept.” Id. at
1328-29. Just as limiting the index to the use of XML tags was insufficient, so too is the limiting
of the identifier to fingerprints of the multimedia signal insufficient to transform the claims here
into an inventive concept.
C.

The Claims Also Lack Any Inventive Ordered Combination.

Nor do the claims recite any inventive combination of steps or components. The recited
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functional steps are inherent in the basic concept of recognizing a portion of a multimedia signal
and performing an associated action. The portion of the multimedia signal must first be
identified, then an action must be associated with it, and finally when the device is played back,
the portion that is playing must be identified and compared to the portion that was previously
stored and associated with the action. These steps are conventional both individually and as an
ordered combination. And the concept of generic processors and databases being used to perform
those functions is inherent in any computer or network configuration. There is nothing specific
about the arrangement of these generic components in the claims. The Gracenote patents do not
claim any inventive ordered combination. Content Extraction, 776 F.3d at 1348 (finding that
“well understood, routine, and conventional activities commonly used in industry” do not
provide an “inventive concept”). Gracenote’s patent claims fail step two of the Alice test.
II.

Gracenote’s ’030 Infringement Claim Should Be Dismissed with Prejudice
Because Asserted Claim 1 Is Invalid under 35 U.S.C. § 101.
Claim 1 is directed to the abstract concept of creating identifying data (a robust hash from

a video) and storing and indexing the identifiers and other video information in a database.
Irrespective of whether the claims are limited to a certain field or type of data, the Federal Circuit
has consistently found these types of claims to be abstract and patent ineligible. 12
The claim also does not add an inventive concept sufficient to transform the claimed
abstract idea into patentable subject matter. It includes only two steps:
1. Creating identifying data: by generating “a robust hash value as a traversal index
12

See Intellectual Ventures, 850 F.3d at 1327 (claims directed to use of XML tags to create and
index and use the index to search for and retrieve data); In re TLI, 823 F.3d at 611 (claims
directed to classifying and storing digital images in an organized manner); see also Elec. Power,
830 F.3d at 1353 (claims directed to collecting, analyzing, and displaying results from real time
collection of data streams containing “time stamped” measurements for “interconnected power
grid[s]”); Content Extraction, 776 F.3d at 1347 (claims directed to data collection, recognition,
and storage of digitized paper documents).

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from multiple parameters extracted from a region of interest in a frame of a video
sequence;” and
2. Storing and indexing: by “storing data associated with the video sequence at a
leaf node addressed by the robust hash value, wherein the leaf node is a member
of a plurality of leaf nodes in a multi-dimensional video database.”
(’030 patent, claim 1.)
The patent does not purport to have invented either robust hashes or a database with leaf
nodes. Indeed, it was filed in 2008—years after the 2004 filing date of the application that led to
the other three patents in suit. (See ’114 patent, cover page, under “Related U.S. Application
Data.”) Those patents disclose “fingerprints,” which are “also known as ‘(robust) hashes’.”
(’114 patent at 3:20.) And those robust hashes are used to index associated information and
actions—such as the presentation of information about the video, (’114
patent, at 3:64-67)—as illustrated in Figure 4 of the patents. Though the
first step includes language in addition to “robust hash” (e.g., “multiple
parameters”), Gracenote alleges in its Complaint that those features of the
“hash” arise whenever a “video fingerprint” is generated to match
content: “because video fingerprints are based on multiple parameters extracted from a region of
interest in a frame of a video sequence, the Infringing Product generates a robust hash value from
multiple parameters extracted from a region of interest in a frame of a video sequence.” (D.I. 1
at ¶ 111.) In short, nowhere in Gracenote’s complaint or its patent does it contend that the
claimed “robust hashes” are anything but well-known. The use of known robust hashes to index
data does not transform the claims into a patent-eligible invention. Intellectual Ventures, 850
F.3d at 1328 (“we fail to see how the patentee's use of a well-known tag, i.e., XML tag—to form
an index—sufficiently transforms the claims into a patent eligible invention.”).
As to the second step of the claim, the patent admits that a video database with leaf nodes
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was known, stating that “typical video database is indexed as a hierarchy and the nodes of
interest are traversed from top root to the leaf nodes.” (’030 patent at 5:14-16.) That database
organization combined with the use of known robust hashes stored in the leaf nodes also does not
convert the claims from abstract to patent-eligible. In Intellectual Ventures, the patentee argued
that its particular database structure, which used a particular type of tag (XML tags) to navigate
the index, “improves how computer databases function.” 850 F.3d at 1327. The Federal Circuit
nevertheless found that “the recitation of an index employing XML tags to navigate a
computerized database is simply not enough to transform the patent-ineligible abstract idea here
into a patent eligible invention.” Id. at 1328.
Claim 1 fails both steps of the Alice test and are invalid.
CONCLUSION
For the reasons set forth herein, Samba respectfully requests that the Court dismiss
Gracenote’s Complaint with prejudice.

OF COUNSEL:
Karen L. Dunn
Eric J. Maurer
Patrick M. Lafferty
Amara Osisioma
BOIES SCHILLER FLEXNER LLP
1401 New York Ave., NW
Washington, DC 20005
(202) 237-2727

/s/ Kelly E. Farnan
Kelly E. Farnan (#4395)
RICHARDS, LAYTON & FINGER, P.A.
One Rodney Square
920 N. King Street
Wilmington, DE 19801
(302) 651-7700
farnan@rlf.com
Attorneys for Defendant Free Stream Media
Corp., d/b/a Samba TV

Trevor P. Stutz
BOIES, SCHILLER FLEXNER LLP
725 S. Figueroa Street
Los Angeles, CA 90017
(213) 629-9040
Dated: March 4, 2019

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