PTAB

IPR2017-00638

DISH Network LLC v. Customedia Technologies LLC

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Key Events
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 ’029 patent describes a system for renting or purchasing on-demand digital data products. The system uses a digital set-top box to receive and store limited-use data, which can then be transferred to a portable playback device, with features for managing a "virtual return" of the rented content.

3. Grounds for Unpatentability

Ground 1: Anticipation by Ginter - Claims 1-4, 6-9, 12-15, 19-22, 25-28, and 30-32 are anticipated under 35 U.S.C. §102 by Ginter.

  • Prior Art Relied Upon: Ginter (International Publication No. WO 96/27155).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ginter discloses every element of the challenged claims. Ginter teaches a "virtual distribution environment" (VDE) for secure electronic rights protection, which functions as the claimed system. Its "electronic appliances," which can be portable, serve as the claimed set-top boxes and playback devices. Ginter’s use of permission records ("PERCs") to control access to content based on predefined conditions (e.g., time limits) was alleged to teach the "limited-use" and "rental" data limitations. The system’s ability to transfer content and associated permissions between appliances, including portable ones, and report usage back to a central authority was argued to meet the limitations regarding data transfer and monitoring a "virtual return."

Ground 2: Obviousness over Ginter in view of Stefik - Claims 1-4, 6-9, 12-15, 19-22, 25-28, and 30-32 are obvious over Ginter in view of Stefik.

  • Prior Art Relied Upon: Ginter (WO 96/27155) and Stefik (Patent 5,634,012).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that to the extent Ginter might not explicitly disclose certain details of managing time-based rental transactions, Stefik supplies the missing elements. Stefik teaches a system for controlling the distribution and use of digital works using "repositories" that manage attached usage rights and fees. Stefik explicitly describes a "loan" transaction where a digital work is transferred to a user's repository for a predetermined period, after which it is automatically returned (i.e., deactivated and erased). This process, including options for early return to reduce a metered fee and notifying a central server, was argued to render the "virtual return" features of the ’029 patent obvious.
    • Motivation to Combine: A POSITA would combine Stefik’s robust digital rights management (DRM) system with Ginter’s VDE to enhance control and management of digital content. Ginter itself acknowledges the need for DRM to protect rights holders. Incorporating Stefik’s detailed time-period restrictions and loan transaction model into Ginter's architecture would have been a predictable way to improve Ginter's system by providing greater flexibility and more granular control for both data providers and users.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the systems. Both references operate in the same field of digital content distribution and are directed toward solving the same problem. Integrating Stefik's software-based DRM rules into Ginter's electronic appliance hardware would have been a straightforward implementation yielding predictable results.

4. Key Claim Construction Positions

  • "performing a virtual return...": Petitioner argued this term should be construed as "making said [limited-use / rented data] inaccessible on the portable playback device and making the processing circuitry aware that the portable playback device no longer has access." This construction was central to mapping Ginter’s permission-based access denial and Stefik’s automatic deactivation of loaned content to the claim language.
  • "limited-use digital data": Petitioner asserted this term is used interchangeably with "rental" in the specification and should be construed as "rental digital data." This construction was important for applying prior art that described time-limited access or loan transactions (like in Stefik) to the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6-9, 12-15, 19-22, 25-28, and 30-32 of the ’029 patent as unpatentable.