PTAB

IPR2017-00717

DISH Network LLC v. Customedia Technology LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System for Data Management and On-Demand Rental and Purchase of Digital Data Products
  • Brief Description: The ’494 patent describes a system for the on-demand delivery of digital data products, such as movies or television programs, to an end user. The system uses a local data management unit (e.g., a set-top box) with non-movable storage to receive and store content, including personalized advertising targeted to user preferences.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1-7, 16-19, 23-25, and 27-28 are anticipated 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 limitation of the challenged claims. Hite describes an electronic system for delivering targeted advertisements to individual television viewers. The system includes an "individually addressable digital recording device (RD)" at the consumer's "display site," which functions as the claimed "storage device." Petitioner asserted this RD is inherently "addressable" due to its unique address and "reserved" because its sole disclosed purpose is storing advertising-related data, such as commercials and Commercial Identifier (CID) codes. Hite’s "Commercial Processor" performs the functions of the claimed processor, using software to analyze incoming CIDs, compare them to stored user-profile CIDs, and substitute targeted ads for default ads. The selection of ads based on CID codes, which correspond to viewer demographics or interests, was alleged to meet the "predefined criteria data" limitation.
    • Key Aspects: Petitioner contended that Hite’s entire system is designed for targeted advertising, mapping directly onto the preamble and core elements of the challenged claims. The argument for the "reserved storage space" relies on an inherent function, asserting that since Hite’s RD is only described for storing ad data, it is necessarily "set apart" for that purpose.

Ground 2: Obviousness - Claims 1-7, 16-19, 23-25, and 27-28 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 in case the Board found Hite alone did not sufficiently disclose an "addressable and reserved storage space."

    • Prior Art Mapping: Hite was argued to teach all claim elements except for the specific "reserved" nature of the storage space. Hill was introduced to teach this missing element. Hill describes a method for partitioning a single physical storage device (e.g., a hard disk) into multiple logical partitions with different access characteristics, such as a "high access partition." Each partition is defined to the system processor as a unique, addressable device and is reserved for data with matching access-density characteristics. Petitioner argued that combining Hill’s partitioning method with Hite’s system would render the claims obvious.
    • Motivation to Combine: A POSITA would combine Hite and Hill to improve the efficiency of Hite's targeted advertising system. Since targeted ads and their associated data would be accessed frequently, a POSITA would be motivated to use Hill’s teaching to create a dedicated, high-access partition specifically for this advertising data. This would predictably increase storage and retrieval performance and reduce system bottlenecks, directly addressing the cost-effectiveness goals mentioned in Hite.
    • Expectation of Success: A POSITA would have had a high expectation of success, as partitioning storage for specific data types was a well-understood technique for improving computer system performance. Applying Hill's method to Hite’s system would yield the predictable result of a more efficient ad delivery platform.

  • Additional Grounds: Petitioner asserted alternative obviousness challenges against claims 4, 16, and 18 over Hite alone. These grounds argued that, to the extent Hite did not explicitly disclose certain features (e.g., using a "keyword" for ad selection, associating multiple receivers with one user, or using a "portable" device), incorporating such features would have been obvious modifications based on common knowledge and predictable design choices for a POSITA.

4. Key Claim Construction Positions

  • Petitioner dedicated significant argument to the construction of "addressable and reserved storage space for storing ... advertising data" (claims 1 and 19).
    • Petitioner proposed the construction: "an individually controlled data storage section set apart just for storing advertising data."
    • This position was based on statements made by the patent applicant during prosecution of a related patent to overcome prior art. The applicant emphasized that this limitation requires a structural reservation, where a storage section is configured to limit access to just advertising data, distinguishing it from mere memory allocation. This construction was central to Petitioner's alternative obviousness ground, which used the Hill reference to explicitly teach such structural partitioning.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-7, 16-19, 23-25, and 27-28 of the ’494 patent as unpatentable.