PTAB

IPR2015-01756

DISH Network Corp v. TQ Beta LLC

Key Events

Petition

petition

Title: Method and Apparatus for Time and Space Domain Shifting of Broadcast Signals
Brief Description: The ’456 patent is directed to a method and apparatus for time- and place-shifting broadcast signals, such as television, over a world-wide network. The technology allows a user to receive and view a broadcast signal even when they are located outside of the original broadcast area.

Prior Art Relied Upon: Compton Thesis (“Internet CNN NEWSROOM: The Design of a Digital Video News Magazine,” May 1995).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the Compton Thesis, a publicly available 1995 master's thesis, disclosed every limitation of the challenged claims. The thesis described a system for receiving the "CNN NEWSROOM" educational television program broadcast, encoding it into MPEG format, transmitting the encoded files over the Internet, and storing them on geographically dispersed caching servers. The system allowed end-users (schools) to access, download, decode, and reproduce the video content at a later, user-determined time, which could be up to six months after the original broadcast. Petitioner asserted this process directly mapped to the method steps of independent claim 11 (receiving, encoding, transmitting, decoding, and reproducing after a user-defined delay) and the corresponding means-plus-function elements of apparatus claim 16.

Prior Art Relied Upon: Compton Thesis (as above) and Shteyn (Patent 6,611,654).
Core Argument for this Ground:
- Prior Art Mapping: This ground was presented as an alternative in the event the Board found Compton Thesis did not sufficiently teach receiving a broadcast signal from a specific local geographic location. Petitioner contended Shteyn explicitly remedied this by disclosing a system enabling a subscriber to select a specific broadcast program for recording within its local broadcast region and then place-shifting (streaming) it to a remote location for later playback. The addition of Shteyn’s local recording capability to the Compton Thesis’s robust Internet distribution architecture rendered the claims obvious.
- Motivation to Combine: A POSITA would combine Compton Thesis and Shteyn as both references address the same problem of time- and place-shifting television content over a network. Petitioner argued it would have been a predictable and logical step to use the local broadcast capture system taught by Shteyn as the content source for the Internet distribution system described in the Compton Thesis to serve users wanting to access their local content remotely.

Prior Art Relied Upon: Compton Thesis, Shteyn (as above), and Rowe (Patent 6,792,615).
Core Argument for this Ground:
- Prior Art Mapping: This ground was presented as a further alternative in case the Board determined the Compton Thesis was deficient in its teachings of encoding and decoding signals suitable for network transmission. Petitioner introduced Rowe for its explicit disclosure of a distribution system using standardized MPEG-2 compression and TCP/IP protocols to transmit digital media over the Internet. Rowe described remote nodes that receive this broadcast, decrypt and decode the signal, and store it for scheduled playback, thereby teaching the specific encoding and decoding limitations.
- Motivation to Combine: A POSITA seeking to implement the system of Compton and Shteyn would combine it with Rowe to employ a well-known, standardized method (MPEG-2 over TCP/IP) for video compression and transmission. This would be an obvious design choice to ensure reliable and compatible delivery of video over the Internet. All three references are from the same field of inquiry—Internet video distribution—and aim to solve the same problem of providing users with greater control over the time and place of media consumption.
Additional Grounds: Petitioner asserted an additional ground that claims 11, 13-16 are obvious over the Compton Thesis alone, presented as an alternative to the anticipation argument in Ground 1.

For the purposes of the IPR, Petitioner proposed adopting the claim constructions advanced by the Patent Owner in a related district court litigation to streamline the proceeding.
"delay between first time frame and second time frame..." (Claims 11 and 16): Petitioner accepted Patent Owner's implicit construction of this term as "an extra delay defined by the consumer," which could be introduced at any point between the signal being received and the consumer triggering its encoding or playback.
Means-Plus-Function Terms (Claim 16): Petitioner agreed to adopt the Patent Owner's proposed structures corresponding to the functions recited in the various "means for..." limitations of claim 16, including construing "means for receiving" as a network coupling system, "means for decoding" as a media player with an MPEG-compatible decoder, and "means for storing" as a storage device like a hard disk drive or VCR.

Petitioner requested the institution of an inter partes review and the cancellation of claims 11, 13-16 of the ’456 patent as unpatentable.