PTAB

CBM2017-00032

DISH Network LLC v. Customedia Technology LLC

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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 ’494 patent describes a system for managing and distributing digital information to facilitate electronic commerce, specifically for providing targeted advertising to end users. The system involves a local receiver unit with storage that communicates with a remote server to select and store advertising data based on user criteria.

3. Grounds for Unpatentability

Ground 1: Patent-Ineligible Subject Matter - Claims 1-7, 16-19, 23-28, 32-36, 39, 41, and 43 are unpatentable under 35 U.S.C. §101

  • Prior Art Relied Upon: Hite (Patent 5,774,170) and Hill (Patent 4,607,346). Note: These references were used to demonstrate that the claimed elements were conventional and lacked an inventive concept, not for a §102/§103 analysis.
  • Core Argument for this Ground: Petitioner argued that the challenged claims failed the two-step test for patent eligibility established in Alice Corp. v. CLS Bank Int’l.
    • Step 1 (Abstract Idea): The independent claims (1, 19, and 33) and all dependent claims are directed to the abstract idea of delivering targeted advertising to a user. Petitioner asserted that targeted advertising was a well-known, fundamental business practice long before the patent’s alleged invention date, as evidenced by prior art like Hite, which describes delivering specific commercials to viewers based on their needs and wants. The claims merely recite the storing, selecting, and presenting of advertising data, which is the core of this abstract concept.
    • Step 2 (Inventive Concept): The claims do not add an inventive concept sufficient to transform the abstract idea into a patent-eligible application. Petitioner contended that the claims merely recite generic, conventional computer components to implement the idea. The limitations—such as "at least one storage device," "at least one processor," and "software"—were well-known and routine elements. The patent’s own specification and the disclosures in Hite allegedly confirmed that these hardware components were conventional at the time. The functional language of the claims described only the desired outcome of targeted advertising, not a specific, technical solution to a technical problem. Therefore, the claims amounted to an impermissible attempt to monopolize an abstract idea using a generic computer implementation.

Ground 2: Indefiniteness - Claims 5, 17, 18, 23-25, 28, and 39 are indefinite under 35 U.S.C. §112

  • Prior Art Relied Upon: Not applicable for this ground.
  • Core Argument for this Ground: Petitioner argued that several dependent claims were indefinite because they improperly mixed statutory classes of invention by reciting method steps within an apparatus claim. This ambiguity would prevent a person of ordinary skill in the art from understanding the scope of the claimed apparatus.
    • Prior Art Mapping: Claim 1 is an apparatus claim for a "system." However, dependent claim 5 recites a method of collecting data ("wherein the suitability criteria data is collected by at least one method selected from the group consisting of monitoring..."). Similarly, claim 17 (depending from apparatus claim 16) recites a method step of combining and managing data.
    • Key Aspects: This mixing of claim types makes it unclear whether infringement occurs upon the sale of the apparatus itself or only when an end-user performs the recited method steps. This renders the boundaries of the claim indeterminate, failing the particularity requirement of §112.

4. Key Claim Construction Positions

  • "addressable and reserved storage space[s] for storing digital advertising data" (Claims 1, 19, 33): 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 patent’s specification describing programmable "sections" and "partitions" for advertising, as well as statements made during prosecution of the parent ’090 patent. The proposed construction emphasizes a structural limitation, requiring a physically or logically distinct area, rather than a mere allocation of memory, which was critical to distinguishing the claims from prior art during prosecution.
  • "particular advertising data for targeting to at least one end user" (Claims 1, 3, 6-7, etc.): Petitioner proposed this term be construed as "promotional content consisting of at least two media types that is targeted for consumption by a specific customer or end user by a particular identifier or selection code." This construction was argued to be consistent with the specification’s description of targeting individuals who may share a single receiver but have separate storage "sections" or "data boxes."

5. Key Technical Contentions (Beyond Claim Construction)

  • Contested Priority Date: A central contention was that the ’494 patent was not entitled to its claimed priority date from a 1997 application. Petitioner argued that all challenged claims included limitations related to "advertising data" and "reserved storage space" for such data, which were not disclosed until a 1999 continuation-in-part (CIP) application. As a result, the effective filing date for the challenged claims was no earlier than August 26, 1999. This later priority date was crucial because it firmly established Hite (issued June 30, 1998) as prior art available for the §101 analysis to show the claimed concepts were conventional.

6. Relief Requested

  • Petitioner requested that a covered business method review of the ’494 patent be instituted and that challenged claims 1-7, 16-19, 23-28, 32-36, 39, 41, and 43 be canceled as unpatentable.