PTAB

IPR2017-00936

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 ’437 patent describes a system, such as a digital set-top box, for renting or purchasing digital data for on-demand delivery. The system features a built-in, non-removable storage device and the capability to perform a "simulated return" of rented content by deleting, scrambling, or blocking access to the data, and subsequently notifying the data supplier of the return.

3. Grounds for Unpatentability

Ground 1: Claims 1, 9, 10, and 13-16 are anticipated by Ginter under 35 U.S.C. §102.

  • Prior Art Relied Upon: Ginter (International Publication No. WO 96/27155).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ginter discloses a "virtual distribution environment" (VDE) with "electronic appliances" that perform all functions claimed in the ’437 patent. Ginter’s appliance receives data feeds, includes non-removable "secondary storage" within a secure enclosure, and uses CPUs for processing and playback. Critically, Petitioner asserted Ginter teaches a "simulated return" through the use of "permission records" (PERCs), which are configured to automatically block access to rented data after a predefined condition, such as the expiration of a rental period. The limitation of "notifying a data supplier" was allegedly met by Ginter’s disclosure that an appliance can be required to provide notice to a content provider that a modification or deletion of content has occurred. Petitioner further mapped Ginter's teachings of portable appliances and usage budgets to the limitations of the dependent claims.
    • Key Aspects: The core of the anticipation argument rested on interpreting Ginter's PERC-based access control as inherently disclosing the "simulated return" and the system's reporting capabilities as meeting the "notifying a data supplier" limitation.

Ground 2: Claims 1, 9, 10, and 13-16 are obvious over Ginter in view of Stefik under 35 U.S.C. §103.

  • Prior Art Relied Upon: Ginter (WO 96/27155) and Stefik (Patent 5,634,012).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Ginter is found not to explicitly teach every detail of the claimed digital rights management (DRM) functionality, Stefik provides the missing elements. Stefik discloses a system of "repositories" for controlling the use and distribution of digital works. Specifically, Stefik teaches a "loan" transaction where a digital work is temporarily transferred to a user's repository and is automatically returned after a predetermined time. This return process involves deactivating all copies and erasing the work from the user's repository memory, which Petitioner mapped to the "simulated return" limitation. Stefik also explicitly teaches that upon return (either user-initiated or automatic), the server (data supplier) is updated, which directly corresponds to the "notifying a data supplier" limitation.
    • Motivation to Combine: A POSITA would combine Ginter and Stefik because both references address the same problem: secure distribution and management of digital media. Ginter provides a high-level architecture for a VDE and expressly contemplates the need for DRM. Stefik provides a detailed, robust, and well-defined DRM scheme with specific transaction types like "loan" and "return." A POSITA would look to a reference like Stefik to implement the specific DRM controls suggested by Ginter to improve the system's efficiency, flexibility, and security.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. Integrating Stefik’s established DRM transaction protocols into Ginter’s VDE architecture would be a predictable implementation of known technologies to achieve the desired control over digital content rentals.

4. Key Claim Construction Positions

Petitioner proposed constructions for several key terms in claim 1, arguing they should be given their broadest reasonable interpretation.

  • "enacting a simulated return of said rented data [by deleting or scrambling said data...or blocking further access to said data]": Petitioner argued this phrase should be construed as "making said rented data inaccessible to the user of the storage device."
  • "notifying a data supplier of said simulated return": This was construed as "communicating the simulated return of the rented data to the data product supplier," which could include entities like movie studios or distributors.
  • "a storage device built in to the system and which is not removable from the system": Based on the prosecution history, Petitioner asserted this should be construed as "a storage device that is not removable from the system without rendering it inoperable."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 9, 10, and 13-16 of the ’437 patent as unpatentable.