PTAB

IPR2015-01791

DISH Network Corp v. TQ Beta LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Time and Space Domain Shifting of Broadcast Signals
  • Brief Description: The ’456 patent describes a method for "place-shifting" and "time-shifting" broadcast content. The system allows a user to receive a broadcast signal (e.g., television) at a first geographic location, transmit it over a world-wide network like the Internet, and reproduce it at a second, remote geographic location at a later, user-determined time.

3. Grounds for Unpatentability

Ground 1: Anticipation by Monteiro - Claims 11, 13-16 are anticipated by Monteiro.

  • Prior Art Relied Upon: Monteiro (Patent 5,778,187).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Monteiro, which discloses a system for distributing audio/visual communications like radio or television over the Internet, teaches every limitation of the challenged claims. Monteiro’s "Network Control Center" receives broadcast feeds, which can be delivered live or played back later. This system inherently performs the claimed steps of receiving a signal, encoding it for network transmission, transmitting it, receiving it at a user’s location, and decoding it. Petitioner asserted that Monteiro’s disclosure of storing broadcasts on a hard disk at a "Delay Recording Workstation" or on a user's local computer for playback "at a later time" meets the critical "delay" limitation of the claims.
    • Key Aspects: This ground asserted that Monteiro's system allows for multiple types of user-controlled delay, such as pausing a live stream or initiating playback of a stored program via PLAY commands, which satisfies the claim requirement for a user-determined delay greater than mere network latency.

Ground 2: Obviousness over Monteiro and Compton Thesis - Claims 11, 13-16 are obvious over Monteiro in view of Compton Thesis.

  • Prior Art Relied Upon: Monteiro (Patent 5,778,187) and Compton Thesis (“Internet CNN NEWSROOM: The Design of a Digital Video News Magazine” (May 1995)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Presented as an alternative, this ground argued that to the extent Monteiro is found deficient in its disclosure of specific encoding or decoding processes, Compton Thesis supplies the missing details. Compton Thesis described a system for distributing the "CNN NEWSROOM" television program over the Internet, explicitly teaching the use of MPEG encoding hardware to create digital video files suitable for network transmission. It further disclosed using MPEG decoding hardware on client computers for playback.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Monteiro's network architecture with Compton Thesis's specific video processing techniques. Both references were in the same field of Internet media distribution and addressed the same problem of making broadcast content available for remote, time-shifted viewing. A POSITA would have found it obvious to apply the well-known MPEG encoding/decoding methods from Compton Thesis to the audio/video streams in Monteiro’s system to ensure efficient and compatible distribution.
    • Expectation of Success: The combination was argued to be a predictable application of known technologies. Combining Compton Thesis's standard MPEG video processing with Monteiro's content delivery network would have yielded the predictable result of an effective time and place-shifting system with a high expectation of success.

Ground 3: Obviousness over Monteiro, Compton Thesis, and Shteyn - Claims 11, 13-16 are obvious over Monteiro in view of Compton Thesis and Shteyn.

  • Prior Art Relied Upon: Monteiro (Patent 5,778,187), Compton Thesis, and Shteyn (Patent 6,611,654).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as a further alternative, specifically addressing the limitation of receiving a signal broadcast in a "first geographic location." If the Board were to find that Monteiro and Compton Thesis did not sufficiently teach receiving a local broadcast signal (as opposed to a national satellite feed), Shteyn was introduced to cure this alleged deficiency. Shteyn explicitly disclosed a system for recording a program from a local TV tuner in a specific "broadcast region" and streaming it over the Internet to a client in a different geographic location.
    • Motivation to Combine: A POSITA seeking to build the system of Monteiro/Compton Thesis would be motivated to incorporate Shteyn’s teachings to add the capability of place-shifting local broadcast content, which was a known desire of consumers. The integration was presented as an obvious design choice, as Shteyn solved the precise problem of capturing local content for remote access, a feature directly applicable to the broader systems of the primary references. The combination yielded the predictable result of enabling the Monteiro/Compton Thesis system to handle local-channel broadcasts.

4. Key Claim Construction Positions

  • "delay between first time frame and second time frame..." (the "delay term"): This term was central to the petition. Petitioner noted that the Patent Owner, in district court litigation, construed the term to mean "an extra delay defined by the consumer." Petitioner argued that for the IPR, the Board should either adopt the Patent Owner's construction (under which the prior art still anticipates/renders obvious the claims) or construe it as "wherein the decoded signal is stored for playback at a later time as desired by a user," based on arguments made during the patent's prosecution history to overcome rejections. Under either construction, Petitioner contended the claims were unpatentable.
  • "first geographic location" / "second geographic location": Petitioner noted the Patent Owner’s implicit litigation construction of "first geographic location" as "the place where the broadcast is first received" and "second geographic location" as "a different geographic location." Petitioner argued the Board should adopt these constructions for the IPR, asserting the prior art met these limitations.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 11, 13, 14, 15, and 16 of the ’456 patent as unpatentable.