PTAB

IPR2015-00499

DISH Network LLC v. Dragon Intellectual Property LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Simultaneous Recording and Playback Apparatus
  • Brief Description: The ’444 patent discloses a recording and playback apparatus that allows a user to pause a live broadcast program. The apparatus uses a memory unit with a structure enabling substantially simultaneous reading and writing, which permits the recording of a live program to continue while a previously recorded portion of the same program is played back.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 5, 6, 8, and 14 by Truog

  • Prior Art Relied Upon: Truog (“The Television Pause Function,” a 1989 M.I.T. thesis).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Truog, a thesis describing a "television pause function," disclosed every element of the challenged independent and dependent claims. Truog taught a system using three interconnected VCRs and control circuitry to allow a viewer to pause a live television program and later resume viewing from the point of interruption without missing content, thereby achieving simultaneous recording and playback. Petitioner contended that Truog’s single "pause" button, which initiated recording upon a first press and initiated playback upon a second press, met the "record key" and "playback key" limitations. Truog’s use of VCRs with removable magnetic tapes was argued to meet the limitations for a memory unit (claim 1), a removable storage medium (claim 5), and a magnetic disk memory (claim 6), while its fast-forward capability met the "key means" for user control of playback rate (claim 8).

Ground 2: Obviousness of Claims 1, 5-10, and 14 over Truog in view of Yifrach

  • Prior Art Relied Upon: Truog (1989 M.I.T. thesis) and Yifrach (Patent 5,126,982).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was asserted as an alternative in the event the Board determined Truog alone did not disclose every limitation, particularly the memory structure or keyboard. While Truog provided the foundational concept of pausing live television, Yifrach disclosed a radio receiver with a "freeze" function that used solid-state random access memory (RAM) and separate "Freeze" (record) and "Playback" buttons. Petitioner argued that Truog taught the core system, and Yifrach supplied the specific implementation of a solid-state memory and a two-button user interface.
    • Motivation to Combine: A POSITA would combine the references to improve the performance and reliability of Truog's mechanical VCR-based system by incorporating Yifrach's more advanced solid-state RAM. Petitioner noted that Truog itself anticipated a future shift to less expensive digital disk storage, providing a motivation within the primary reference. Furthermore, using separate record and playback buttons as taught by Yifrach was a well-known user interface design choice to provide more explicit control.
    • Expectation of Success: The combination involved substituting known components (RAM for tape, separate buttons for a single button) to achieve the predictable result of a more efficient time-shifting device.

Ground 3: Obviousness of Claims 1, 7-10, and 14 over Goldwasser in view of Yifrach

  • Prior Art Relied Upon: Goldwasser (Patent 5,241,428) and Yifrach (Patent 5,126,982).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Goldwasser taught the core functionality of the challenged claims by disclosing a video recorder with a random-access memory that allowed for simultaneous recording and playback. This system permitted a user to pause and resume watching a program without interrupting the ongoing recording. Petitioner relied on Yifrach to explicitly teach a user interface with separate "Freeze" (record) and "Playback" keys, arguing this was an obvious way to implement the "user control panel" disclosed in Goldwasser.
    • Motivation to Combine: A POSITA would be motivated to combine Goldwasser's sophisticated recording and playback system with Yifrach's clear and functional user interface. Implementing Goldwasser's control panel with the distinct record and playback keys from Yifrach was presented as a simple and obvious design choice to improve usability. Both references addressed the same problem of time-delayed playback of broadcast signals.
    • Expectation of Success: Integrating a known user interface (Yifrach) with a known recording system (Goldwasser) was a straightforward task for a POSITA and would have yielded the predictable result of an operable and user-friendly device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Vogel (PCT Publication WO 90/15507) to teach a remote control for dependent claims 2-4 and 13, and Ulmer (PCT Publication WO 89/12896) to teach a frame-by-frame playback feature for claim 10.

4. Key Claim Construction Positions

  • "said storage medium having structure which enables substantially random access" (Claims 1, 14): Petitioner argued for a functional construction: "a memory structure that permits the medium to be accessed for information retrieval from one location while substantially simultaneously permitting access for storage at another location." This construction focused on the capability of simultaneous read/write operations, which was central to distinguishing the invention from prior art linear-access media like simple VCRs.
  • "a keyboard having a record key and a playback key" (Claims 1, 14): Petitioner argued that under the broadest reasonable interpretation, this limitation could be met by a single key that performs both the record and playback functions upon successive actuations. This construction was critical to the anticipation argument against Truog, which disclosed a single "pause" button for both functions.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-10, 13, and 14 of Patent 5,930,444 as unpatentable.