DISH Network LLC v. Customedia Technology LLC

1. Case Identification

• Case #: IPR2017-00724
• Patent #: 9,053,494
• Filed: January 18, 2017
• Petitioner(s): DISH Network Corporation and DISH Network L.L.C.
• Patent Owner(s): Customedia Technologies L.L.C.
• Challenged Claims: 19, 26, 32, 33-36, 39, 41, and 43

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 managing and delivering on-demand digital media, such as movies and television programs. The system includes a remote server and a local user device (e.g., a set-top box) that can receive, store, and play content, with a stated object of leasing storage space on the user's device to personalize and target advertising based on user preferences.

3. Grounds for Unpatentability

Ground 1: Anticipation by Hite - Claims 19, 26, 32, 33-36, 39, 41, and 43 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 element of the challenged claims. Hite describes a system for delivering targeted advertisements to consumers by using an "individually addressable digital recording device (RD)" at a consumer's "display site." This system uses Commercial Identifier (CID) codes to select and store specific commercials based on consumer profiles and preferences, which Petitioner contended meets the limitations of receiving multimedia data with "particular advertising data for targeting" based on "predefined criteria." Petitioner asserted that Hite's RD, which is used to store targeted commercials, inherently functions as the claimed "addressable and reserved storage space," and its "Commercial Processor" performs the claimed processing and presentation functions.
  • Key Aspects: This ground asserted that Hite, a single reference, teaches a complete, self-contained targeted advertising system that renders all challenged claims invalid under 35 U.S.C. §102.

Ground 2: Obviousness over Hite and Hill - Claims 19, 26, 32, 33-36, 39, 41, and 43 are obvious over Hite in view of Hill.

• Prior Art Relied Upon: Hite (Patent 5,774,170), Hill (Patent 4,607,346).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, positing that if the Board finds Hite alone does not explicitly disclose an "addressable and reserved storage space," then Hill supplies this teaching. Hill discloses a method for partitioning a storage device (e.g., a hard disk drive) into a plurality of distinct, addressable "virtual devices," such as high-access and low-access partitions, to match the storage characteristics to the performance required for the data. This partitioning, Petitioner argued, explicitly teaches reserving specific storage spaces for particular data types.
  • Motivation to Combine: A POSITA would combine Hill's well-known storage partitioning technique with Hite's targeted advertising system to improve performance. Storing frequently accessed advertising data on a high-access partition as taught by Hill would increase storage efficiency and decrease access times, addressing a known need for effective data management in such systems.
  • Expectation of Success: The combination would predictably result in a more efficient and responsive targeted advertising system, a desirable and expected outcome.

Ground 3: Obviousness over Hite and Baji - Claims 26 and 32 are obvious over Hite in view of Baji.

• Prior Art Relied Upon: Hite (Patent 5,774,170), Baji (Patent 5,027,400).

• Core Argument for this Ground:

  • Prior Art Mapping: As an alternative for a subset of claims, this ground argued that if Hite is found not to teach the "dynamically merge" limitation of claim 26 or the "digital video recorder" (DVR) limitation of claim 32, Baji provides these elements. Baji discloses a subscriber system with a "mixer" that reads video from a commercial buffer and a program buffer to create a composite signal for display, thereby teaching the dynamic merging of pre-stored advertising with program content. Baji also explicitly discloses a "video recorder" for recording programs and commercials.
  • Motivation to Combine: A POSITA implementing Hite's targeted advertising system would look to conventional techniques for ad insertion, such as those in Baji. Using Baji's local mixing and merging approach would be a known way to insert locally stored advertisements into a program stream, avoiding delays associated with real-time downloading and meeting user expectations for seamless playback.
  • Expectation of Success: The integration was presented as a straightforward application of known ad insertion technology to Hite's system, yielding a predictable result.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Hite, Hill, and Baji for claims 26 and 32, and combining Hite with Barton (Patent 6,233,389) and Hite with Hill and Barton for claim 41, primarily to supply teachings related to storing and time-shifting media on a user device.

4. Key Claim Construction Positions

• Petitioner argued that the term "addressable and reserved storage space(s) for storing [the particular/digital] advertising data" (claims 19, 33) should be construed as an "individually controlled data storage section set apart just for storing advertising data."
• This proposed construction was based on the prosecution history of a related patent, where the applicant distinguished prior art by emphasizing that this language requires a structural limitation where a storage section is structurally set aside exclusively for advertising data, not merely allocated in memory.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner dedicated significant argument to establishing that the challenged claims of the ’494 patent are entitled to a priority date no earlier than August 26, 1999. It was argued that all limitations related to "advertising data," "addressable and reserved storage space," and targeting advertisements were first introduced in a 1999 continuation-in-part (CIP) application and were not supported by the 1997 parent application.
• This later priority date was critical for establishing that the cited prior art, including Hite (issued 1998), qualifies as prior art under §102.

6. Relief Requested

• Petitioner requests the institution of an inter partes review (IPR) and the cancellation of claims 19, 26, 32, 33-36, 39, 41, and 43 of the ’494 patent as unpatentable.