PTAB

CBM2017-00031

DISH Network LLC v. Customedia Technologies LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Data Management and On-Demand Rental and Purchase of Digital Data Products
  • Brief Description: The ’029 patent describes a system, such as a digital set-top box, for receiving, storing, and playing back limited-use or rented digital data. A key feature is the ability to perform a "virtual return" of the content by blocking access after a rental period expires and notifying the content provider.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. § 101 - Claims 1-4, 6-9, 12-15, 19-22, 25-28, 30-32, 35-39, 41, 46-48, 53-54, 58, 61, 63-65, 68, 70, 72-76, 78-80, and 82-84 are unpatentable for claiming patent-ineligible subject matter.

  • Prior Art Relied Upon: This ground does not rely on specific prior art documents but argues that the claims are directed to an abstract idea implemented using only generic, well-known, and conventional computer components.
  • Core Argument for this Ground: Petitioner argued that the challenged claims fail the two-step framework for patent eligibility established in Alice Corp. v. CLS Bank Int'l.
    • Abstract Idea (Alice Step 1): The petition asserted that the independent claims (1, 35, and 68) are directed to the abstract idea of delivering rented media content to a user and managing its use and return. This concept, analogous to the long-standing business practice of brick-and-mortar video rental stores, is a fundamental commercial activity that has simply been implemented on the Internet and generic computer hardware. The claims merely computerize the process of renting content for a limited time, tracking its use, and ensuring its "return" to avoid late fees.
    • Lack of Inventive Concept (Alice Step 2): Petitioner contended that the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims recite a collection of generic and conventional computer components performing their ordinary functions. The petition analyzed each element of the independent claims—such as "circuitry for receiving," "memory circuitry," "playback circuitry," "processing circuitry," and a "user interface"—arguing that the patent's own specification admits these were all well-known in the art at the time of the invention. The combination of these elements allegedly adds nothing more than the routine application of existing technology to implement the abstract rental concept, failing to solve a technical problem or improve the functioning of the computer itself.

Ground 2: Indefiniteness under 35 U.S.C. § 112 - Claims 1, 35, and 68 are indefinite.

  • Prior Art Relied Upon: Not applicable.
  • Core Argument for this Ground: Petitioner argued that independent claims 1, 35, and 68 are indefinite because they engage in purely functional claiming.
    • Functional Claiming: The petition asserted that the term "processing circuitry comprising software to control..." is a nonce term that does not connote sufficiently definite structure to a person of ordinary skill in the art. As such, it should be treated as a means-plus-function limitation under § 112, ¶ 6 (pre-AIA). The claims recite functions—such as controlling memory, controlling playback, and enacting a virtual return—without reciting the structure that performs these functions.
    • Lack of Corresponding Structure: The petition contended that even if construed under § 112, ¶ 6, the claims are indefinite because the specification fails to disclose adequate corresponding structure. The only structure linked to the claimed functions is a generic "microprocessor" or general-purpose computer. Petitioner argued that for computer-implemented functional claims, the specification must disclose an algorithm for performing the claimed function, which the ’029 patent allegedly fails to do. The specification merely recites the functions again without providing details on how to program a processor to achieve them, rendering the claims indefinite.

4. Key Claim Construction Positions

  • "performing a virtual return..." (Claim 1): Petitioner argued this term should be construed as "making said [limited-use / rented data] inaccessible on the portable playback device and making the processing circuitry aware that the portable playback device no longer has access." This construction was based on the specification's equation of "returning" data with erasing, scrambling, or blocking it after a rental period expires to enforce business rules like late fees.
  • "processing circuitry comprising software..." (Claims 1, 35, 68): Petitioner asserted that this term is a functional limitation subject to § 112, ¶ 6 because "processing circuitry" is a generic nonce term that does not provide sufficient structure. The term is defined only by the functions it performs. Petitioner argued the claims are therefore indefinite because the specification fails to disclose the required corresponding algorithm.
  • "limited-use digital data" (Claim 1, et al.): Petitioner argued this term should be construed as "rental digital data," based on the specification's interchangeable use of the terms "rental" and "limited use."

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method review and cancellation of claims 1-4, 6-9, 12-15, 19-22, 25-28, 30-32, 35-39, 41, 46-48, 53-54, 58, 61, 63-65, 68, 70, 72-76, 78-80, and 82-84 of the ’029 patent as unpatentable.