PTAB

IPR2017-00454

DISH Network LLC v. Customedia Technologies LLC

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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 ’090 patent describes a system for the on-demand rental or purchase of digital media products. The system comprises a remote account-transaction server that communicates with a local user device (e.g., a set-top box) to deliver content and manage a dedicated "commercial zone" for storing and displaying personalized advertising.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-8, 17, and 23 by Hite

  • Prior Art Relied Upon: Hite (Patent 5,774,170).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hite discloses every element of the challenged claims. Hite describes a system for delivering targeted advertisements to consumers that corresponds directly to the system of the ’090 patent. Specifically, Hite’s "Advertisement Administration Facility" functions as the claimed "remote account transaction server." Hite’s "display site," which includes an "individually addressable digital recording device (RD)" or "Optional Video Storage Device," is the claimed "programmable local receiver unit" with an "individually controlled and reserved advertising data storage section." Petitioner asserted Hite’s system monitors and controls the ads sent to and stored at the display site, meeting the final limitation of independent claim 1. Petitioner further mapped Hite's teachings of user profiling and ad selection to the limitations of the dependent claims.

Ground 2: Claims 1-8, 17, and 23 are obvious over Hite in view of Hill

  • Prior Art Relied Upon: Hite (Patent 5,774,170) and Hill (Patent 4,607,346).
  • Core Argument for this Ground: This ground was presented as an alternative, arguing that if Hite alone does not disclose an "individually controlled and reserved advertising data storage section," the combination with Hill renders the claims obvious.
    • Prior Art Mapping: Hite teaches a targeted advertising system with local storage. Hill teaches a method for improving storage device performance by partitioning it into distinct sections (e.g., high-access and low-access) based on data access frequency. Hill discloses that space is "reserved" in a partition for data with matching access characteristics. Petitioner argued that applying Hill's partitioning method to Hite’s local storage device to create a reserved section specifically for frequently accessed advertising data would be a simple and predictable design choice.
    • Motivation to Combine: A POSITA would be motivated to combine Hill’s efficient storage partitioning with Hite’s targeted advertising system to improve performance and cost-effectiveness, a stated goal of Hite. Storing frequently accessed advertisement data in a high-access partition as taught by Hill would predictably decrease read/write times within the Hite system.
    • Expectation of Success: The combination involved applying a known data storage optimization technique (Hill) to a known data delivery system (Hite) to achieve the expected benefit of improved performance.

Ground 3: Claims 1-8, 17, and 23 are obvious over Hite in view of Picco

  • Prior Art Relied Upon: Hite (Patent 5,774,170) and Picco (Patent 6,029,045).

  • Core Argument for this Ground: This ground was presented as an alternative, arguing that if Hite alone does not disclose the storage section "being monitored and controlled by said remote account transaction server," the combination with Picco renders the claims obvious.

    • Prior Art Mapping: Hite teaches the targeted ad system. Picco discloses a system for inserting local advertising content into a data stream where a remote headend (scheduler) monitors and controls the local set-top box. The headend in Picco instructs the set-top box on what content to store based on user preferences and can request an "upload of statistics" from the set-top box, thereby monitoring its status and content.
    • Motivation to Combine: A POSITA would be motivated to incorporate Picco’s explicit remote monitoring and control functionalities into Hite’s advertising system. Both references share the goal of effective targeted advertising. Adding Picco's control and feedback mechanisms would predictably enhance Hite’s system by allowing the remote server to more effectively manage and verify the delivery of individualized ad content.
    • Expectation of Success: Success was expected because combining the remote server control logic of Picco with the ad delivery framework of Hite was a straightforward integration of known technologies to achieve improved system management.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) based on the combination of Hite, Hill, and Picco, arguing this combination taught all disputed limitations of the challenged claims.

4. Key Claim Construction Positions

  • "individually controlled and reserved advertising data storage section" (Claim 1): Petitioner argued this term should be construed as "an individually controlled data storage section set apart just for storing advertising data." This construction was based on statements made by the patent owner during prosecution to distinguish the claims from prior art. The patent owner asserted that the "reservation" was a structural limitation requiring that a portion of memory be configured to limit access to just advertising data, akin to a static allocation.
  • "customer specific advertising data" (Claims 3-5, 17, 23): Petitioner proposed this term means "promotional content...that is targeted for consumption by a specific customer or end user by a particular identifier or selection code." This construction emphasizes the targeting of ads to an individual, consistent with the patent's disclosure.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date: Petitioner contended that the challenged claims were entitled to a priority date no earlier than August 26, 1999. It was argued that the parent 1997 application provided no written description support for key claim limitations, as every disclosure of "advertising," "advertising data," and a "reserved...storage section" was first introduced in the 1999 continuation-in-part application. This contention was critical for establishing Hite, filed in 1994, as valid prior art.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-8, 17, and 23 of the ’090 patent as unpatentable.