DISH Network Corp v. Wistaria Trading Ltd

1. Case Identification

• Case #: IPR2019-01303
• Patent #: 8,739,295
• Filed: July 5, 2019
• Petitioner(s): DISH Network Corporation, DISH Network L.L.C., Dish Network Service L.L.C.
• Patent Owner(s): Wistaria Trading Ltd.
• Challenged Claims: 1, 13, 19, 20, and 23

2. Patent Overview

• Title: Secure personal content server
• Brief Description: The ’295 patent describes a system for the secure distribution and management of digital media content. The system uses a local content server (LCS) that enforces rules for content transfer, authenticates content using features like watermarks, and can provide unsecured content at a degraded quality level.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yeung - Claims 1, 13, 19, 20, and 23 are obvious over Yeung.

• Prior Art Relied Upon: Yeung (Patent 6,668,246).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yeung, which discloses a three-tier architecture for secure content distribution, teaches every limitation of the challenged claims. Yeung’s “client platform” was asserted to be the claimed “local content server (LCS),” as it is a device that securely stores and manages access to digital content. Petitioner contended that Yeung’s use of a unique CPU_ID for each client platform meets the limitation of a unique identifier that defines a first “LCS domain,” as it distinguishes one platform from another and is used to control content access. Further, Yeung’s content protection mechanisms (e.g., descrambling, watermark extraction) were mapped to the claimed “plurality of rules and procedures” imposed by an “LCS domain processor.” Petitioner asserted Yeung’s disclosure of providing lesser-quality or full-quality content based on successful key generation corresponds to the claimed determination of a “quality level” (unsecure, secure, legacy).
  • Key Aspects: Petitioner argued that even if Yeung does not explicitly disclose a “programmable address module,” implementing a standard MAC address on Yeung’s network-capable client platform would have been an obvious design choice for a POSITA to ensure unique identification for network communication.

Ground 2: Obviousness over Yeung, Downs, and Lee - Claims 1, 13, and 19 are obvious over Yeung in view of Downs and Lee.

• Prior Art Relied Upon: Yeung (Patent 6,668,246), Downs (Patent 6,226,618), and Lee (Patent 6,950,941).
• Core Argument for this Ground: This ground was presented as an alternative, arguing that to the extent Yeung is found deficient, Downs and Lee supply the missing elements.
  • Prior Art Mapping: Petitioner argued that Downs remedies any alleged deficiency in Yeung regarding a transaction-specific unique ID. Downs teaches embedding a unique “Transaction ID” in a watermark to identify each specific content transaction, which directly maps to the claim limitation of a "Unique ID that is created for a particular transaction." Petitioner further argued that Lee remedies any alleged deficiency in Yeung’s disclosure of rules for transferring content. Lee explicitly teaches a system with a "Transfer Control Status field" that manages the download and upload of digital content between a local module and an external portable device, satisfying the limitation of "rules and procedures for content being transferred between said LCS and devices outside said LCS."
  • Motivation to Combine: A POSITA would combine Downs with Yeung to improve the traceability of digital content and establish a more robust audit trail, a known objective in the field of digital rights management. A POSITA would combine Lee with Yeung because both solve the same problem of secure content distribution. Adding Lee's established content portability features to Yeung’s system would have been a predictable modification to enhance commercial desirability by allowing use with portable players.
  • Expectation of Success: Petitioner asserted a high expectation of success. Combining Downs was straightforward because Yeung’s system already supported embedding data into watermarks. Combining Lee was also predictable because it involved integrating known portability solutions into a similar content protection framework.

4. Key Claim Construction Positions

• "local content server system (LCS)": Petitioner argued this term should be construed as “a device or software application which can securely store a collection of value-added digital content, where value-added digital content is digital content for which there is any demand.” This construction was critical for mapping the term to Yeung’s “client platform,” which securely stores and manages valuable digital content.
• "LCS domain": Petitioner argued this term should mean “a secure medium or area where digital content can be stored, with an accompanying rule system for transfer of digital content in and out of the secure medium or area.” This construction was central to arguing that Yeung’s CPU_ID and associated content protection mechanisms define a logical, secure domain as claimed.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the prior art and arguments presented were not the same or substantially the same as those before the Examiner. Although Yeung and Lee were cited in an Information Disclosure Statement, they were part of a list of over 315 references and were never substantively evaluated or used as a basis for rejection during prosecution. The petition also relied on new expert testimony not previously available to the USPTO.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 13, 19, 20, and 23 of the ’295 patent as unpatentable.