PTAB

CBM2017-00023

DISH Network LLC v. Customedia Technology LLC

Key Events

Petition

petition

Title: System for Data Management and On-Demand Rental and Purchase of Digital Data Products
Brief Description: The ’090 patent describes a data delivery system for managing and distributing digital information to facilitate electronic commerce. The system uses a remote transaction server and a local receiver unit to automatically deliver multimedia products, including targeted advertising, to an end user's storage device.

Core Argument: Petitioner argued that the challenged claims are directed to the abstract idea of delivering targeted advertising, a fundamental and long-standing business practice. The claims merely recited the use of generic and conventional computer components—such as a remote server, a local receiver, and a data storage section—to implement this abstract idea. Petitioner contended that these elements, whether viewed individually or as an ordered combination, did not provide an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application. The specification itself allegedly conceded that the claimed hardware components were well-known at the time of the invention, and their application to targeted advertising was a predictable use of existing technology that did not improve the functioning of the computer itself.

Prior Art Relied Upon: Hite (Patent 5,774,170).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Hite disclosed every element of the challenged claims. Hite described an electronic system for delivering targeted advertisements to consumers, which constituted the claimed "data delivery system." Hite's combination of an "Advertisement Administration Facility" and "Advertisement Transmission Facility" was argued to be the claimed "remote account transaction server." Hite's "individually addressable digital recording device" at the consumer's "display site" (e.g., a set-top box) was mapped to the "programmable local receiver unit" with an "individually controlled and reserved advertising data storage section." Petitioner argued Hite taught monitoring and control by the remote server and the delivery and storage of targeted ad data.
- Key Aspects: The argument focused on mapping Hite's functional components for creating and delivering targeted commercial data to the structural elements recited in the ’090 patent claims.

Prior Art Relied Upon: Hite (Patent 5,774,170) and Hill (Patent 4,607,346).
Core Argument for this Ground:
- Prior Art Mapping: This ground was presented as an alternative, asserting that even if Hite did not explicitly disclose a "reserved advertising data storage section adapted specifically" for storing ads, the combination with Hill rendered the claims obvious. Hite provided the framework for a targeted advertising system. Hill taught a method for improving storage device performance by partitioning it into distinct sections (e.g., high-access and low-access partitions) and allocating data based on access frequency.
- Motivation to Combine: A POSITA would have been motivated to combine Hill's storage partitioning method with Hite's targeted advertising system to improve performance. Applying Hill's teaching to Hite's system would involve creating a dedicated, high-access partition for frequently accessed advertising data, thereby increasing storage efficiency and reducing read/write times.
- Expectation of Success: This combination was argued to be a predictable application of known storage optimization techniques to a known data delivery system, yielding the expected result of improved performance.
Additional Grounds: Petitioner also asserted that claim 7 is indefinite under 35 U.S.C. §112 for improperly including method steps (an advertiser "places" an order) within an apparatus claim.

"individually controlled and reserved advertising data storage section adapted specifically for storing the specifically identified advertising data" (Claim 1): Petitioner proposed this term be construed as an "individually controlled data storage section set apart just for storing advertising data." This construction was based on the Applicant's own statements during prosecution, where it argued that the claim required a storage section that was structurally set aside and limited to storing only advertising data to distinguish over prior art that disclosed general mass storage. This narrow construction was central to Petitioner's arguments that the prior art either met this limitation (anticipation) or that adding such a known partitioning technique would have been obvious (obviousness).
"customer specific advertising data" (Claims 3-5, 17, and 23): Petitioner argued this term meant "promotional content...that is targeted for consumption by a specific customer or end user by a particular identifier or selection code." This construction emphasized the targeted nature of the advertising, which Petitioner contended was a well-known concept and the core of the abstract idea for its §101 challenge.

Petitioner requested institution of a Covered Business Method review and cancellation of claims 1-8, 17, and 23 of the ’090 patent as unpatentable.