PTAB

IPR2013-00330

OpenTV Inc v. Cisco Systems Inc

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Residential Entertainment System for Secure Content Distribution
  • Brief Description: The ’592 patent discloses a system for managing and distributing digital content within a subscriber's premises. A central communications device, or server, receives service instances (e.g., video programs) from a headend, stores the content, and transmits it over a local area network to one or more remote client devices after verifying the client is entitled to receive the requested content.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-2, 6-8, 12-13, and 17-20 by Payton

  • Prior Art Relied Upon: Payton (Patent 5,790,935).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Payton discloses every element of the challenged claims. Payton describes a local video server at a subscriber's premises that receives and stores digital content from a central distribution server (a headend). This local server then delivers the content to multiple client playback devices over a local network in response to subscriber requests. The entitlement limitation was met by Payton’s teaching of encrypting content to ensure it "cannot be accessed without first being paid for," thereby requiring a determination that the user has authority to access it. The "accessible" limitation of claim 6 was met by Payton's disclosure that the local server first polls its local storage to see if an item is available before requesting it from the central server if it is not.
    • Key Aspects: Payton's system was presented as a complete blueprint for the method claimed in the ’592 patent, including the core concepts of local storage, entitlement checks via payment/encryption, and local network distribution.

Ground 2: Anticipation of Claims 1-4, 6-10, 12-15, and 17-20 by Hicks

  • Prior Art Relied Upon: Hicks (Patent 7,698,723).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Hicks independently anticipates the claims by teaching a home entertainment system centered on a "broadband media gateway" (BMG). The BMG functions as the claimed "communications device," receiving multimedia content from various sources (e.g., CATV headend), storing it on a mass storage device, and transmitting it to multiple remote "information appliances" over an in-home network. Hicks explicitly addresses the "entitled" limitation by disclosing the use of conditional access (CA) systems and encryption/copy protection protocols like DTCP (Digital Transmission Content Protection) to ensure that only authorized devices can access content. Hicks meets the "accessible" limitation by distinguishing between retrieving content from local storage and accessing content not stored locally by tuning to a live broadcast, which inherently requires determining the content's location.

Ground 3: Obviousness of Claims 3-5, 9-11, and 14-16 over Hicks and Safadi

  • Prior Art Relied Upon: Hicks (Patent 7,698,723) and Safadi (Application # 2002/0146237).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims related to determining and applying specific encryption schemes. While Hicks provides the foundational system with general CA and DTCP capabilities, Safadi was cited for its detailed teachings on secure content transfer from a Personal Versatile Recorder (PVR). Safadi discloses using standard protocols (e.g., SSL) and determining the appropriate encryption scheme based on the client device type. It also teaches communicating with a headend to check a device against a revocation list before authorizing content transfer.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Safadi’s specific security techniques with Hicks's BMG system. Both references focus on secure content distribution and disclose using the DTCP standard, making their combination logical and predictable for enhancing the security framework already present in Hicks.
    • Expectation of Success: Combining Safadi’s known methods for device-specific encryption and authorization with the Hicks system would have predictably resulted in a more robust and secure content distribution network, which was a known goal in the art.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 2, 8, and 13 are obvious over Hicks and Egli for teaching on-the-fly media reformatting based on client device type, and that claim 6 is obvious over Hicks and Putterman for teaching the claimed sequence of entitlement and accessibility checks.

4. Key Claim Construction Positions

  • "Communications Device": Petitioner argued this term, added during prosecution and not present in the specification, should be construed as "a terminal for distributing service instances in a local network." This construction was based on the specification's description of the Digital Subscriber Communication Terminal (DSCT), tying the amended claim term back to the original disclosure.
  • "Entitled to receive": Petitioner proposed construing this term as "has authority to access." This interpretation was argued to be consistent with the specification and necessary to map the prior art's teachings of conditional access, encryption, and payment-based systems onto the claim language.
  • "Accessible": Petitioner proposed construing this term as "available without having to send a request for the content to the headend." This construction was critical to the invalidity arguments for claim 6, as it framed the inquiry as a check of local availability, a feature explicitly disclosed in both the Payton and Hicks references.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’592 patent as unpatentable.