PTAB

IPR2017-00639

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 discloses a system, such as a digital set-top box, for receiving, storing, and managing rented or purchased digital data. The system allows for the transfer of limited-use content to a portable playback device and facilitates a "virtual return" of the rented data by deleting, scrambling, or otherwise blocking access to it on the device.

3. Grounds for Unpatentability

Ground 1: All challenged claims are anticipated by Ginter under 35 U.S.C. §102.

  • Prior Art Relied Upon: Ginter (Patent 5,910,987)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ginter disclosed every element of the challenged claims. Ginter’s "virtual distribution environment" (VDE) was described as an end-to-end system for secure content distribution using "electronic appliances" (e.g., set-top boxes, portable devices) that receive, store, and process digital data. Petitioner contended that Ginter's use of permission records ("PERCs") to govern content usage, including time-based restrictions that prevent further usage after a rental expires, directly taught the claimed system for handling "rented digital data." Furthermore, Ginter’s disclosure of "move" transactions to transfer content between appliances, including portable ones, and its system for blocking access to content based on PERC rules, constituted a disclosure of transferring data to a portable device and performing a "virtual return." Ginter also taught monitoring usage and reporting it back to a central clearinghouse, meeting the limitations related to communicating with a data supplier.

Ground 2: All challenged claims are obvious over Ginter in view of Stefik under 35 U.S.C. §103.

  • Prior Art Relied Upon: Ginter (Patent 5,910,987), Stefik (Patent 5,634,012)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Ginter was found not to explicitly disclose certain details of the rental and return process, Stefik supplied these teachings. Stefik described a robust digital rights management (DRM) system using "repositories" to control the distribution and use of digital works. Stefik explicitly taught "loan" transactions, where a digital work is transferred to a user's repository with attached usage rights that define a loan period. Petitioner asserted that Stefik’s system taught an automatic "virtual return" by deactivating and erasing the work upon expiration of the loan period. Stefik also disclosed features like metered fees and the option for an early return to reduce fees, providing specific commercial implementations of the rental model claimed in the ’029 patent.
    • Motivation to Combine: A POSITA would have been motivated to integrate Stefik's sophisticated DRM functionalities into Ginter's comprehensive VDE architecture. Ginter established the need for controlling digital content distribution, and Stefik provided a detailed, predictable, and flexible method for implementing those controls. Combining the two would improve Ginter’s system by adding more granular control over usage rights, rental periods, and return mechanisms, thereby increasing flexibility for both data providers and consumers. Petitioner noted that both references were in the same field of inquiry—secure digital media distribution—and aimed to solve the same fundamental problems.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The integration would involve applying Stefik's well-defined software-based DRM rules to Ginter's disclosed hardware and system architecture, a predictable task for one of ordinary skill. The combination would have predictably resulted in an enhanced, secure content distribution system with the claimed features.

4. Key Claim Construction Positions

  • "performing a virtual return...": Petitioner argued for a broad construction of this term to mean "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."
  • Rationale: This construction was based on the specification's examples, which included erasing, scrambling, or blocking access to data. Petitioner argued this broad interpretation was necessary to encompass the various methods of disabling access taught in the prior art, such as Ginter's use of expiring permission keys and Stefik's automatic deletion of loaned content after a specified time period. This construction was central to mapping the prior art to the claims.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 35-39, 41, 46-48, 53-54, 58, 61, 63-65, 68, 70, 72-76, 78-80, and 82-84 of Patent 8,955,029 as unpatentable.