DISH Network Corp v. Wistaria Trading Ltd

1. Case Identification

• Case #: IPR2019-01305
• Patent #: 9,934,408
• Filed: July 8, 2019
• Petitioner(s): DISH Network Corporation, DISH Network L.L.C., and DISH Network Service L.L.C.
• Patent Owner(s): Wistaria Trading Ltd.
• Challenged Claims: 1, 6, 8, and 17

2. Patent Overview

• Title: Secure personal content server
• Brief Description: The ’408 patent discloses a system for the secure distribution of digital content using a local content server (LCS). The LCS manages content based on embedded watermarks, storing authenticated content, denying storage to content with non-matching watermarks, and degrading the quality of unwatermarked content.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 6, 8, and 17 over Yeung in view of Levine and Rhoads

• Prior Art Relied Upon: Yeung (Patent 6,668,246), Levine (Patent 6,345,100), and Rhoads (Patent 6,311,214).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued the combination of these references discloses all limitations of the challenged claims. Yeung’s "client platform" was asserted to teach the core components of the claimed LCS, including a processor, non-transient storage unit, and communications port for handling secure, encrypted digital content within a defined domain. Yeung’s system provides a foundational architecture for secure content distribution.

  Levine was argued to supply the claimed functionality of determining authenticity. Levine discloses a watermark decoder with comparison logic to check if received content contains an expected watermark (the claimed "indicia indicating authenticity"), a non-equivalent watermark (the "indicia indicating lack of authenticity"), or no watermark at all. This logic directly maps to the processor’s required determinations.

  Rhoads was argued to provide the claimed conditional actions based on the authenticity determination. Rhoads teaches a media appliance that performs actions based on watermark detection: it can be designed to record (store) content only if it contains an authorizing watermark, refuse to record (not store) content that lacks the necessary watermark, and apply restrictive playback rules such as degrading content to a "lower quality." These permissive and restrictive functions map directly to the three mutually exclusive conditional steps recited in the independent claims. Petitioner argued that dependent claims 6 and 17, which add an "encrypted" limitation, are met by Yeung's disclosure of scrambling and encrypting content. Independent claim 8 was argued to be an obvious method claim analog of system claim 1, rendered obvious by the same combination of references.

  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to achieve a predictable result. A POSITA would integrate Levine's specific watermark authentication techniques into Yeung's foundational secure content system to gain improved security and per-transaction tracking, which were known goals in the field of digital rights management. A POSITA would be further motivated to incorporate Rhoads' conditional access rules (store, don't store, degrade) into the combined system because Rhoads provides an express rationale for doing so: to control content access and prevent unauthorized use. This addresses a well-understood problem with a finite number of known solutions, making the combination a matter of simple substitution of known elements.

  • Expectation of Success: A POSITA would have had a high expectation of success in making this combination. The integration involves applying known watermarking principles (Levine) and established access control rules (Rhoads) to a standard content distribution architecture (Yeung). This combination of familiar elements would predictably yield a more robust and granular security system without requiring undue experimentation.

4. Key Claim Construction Positions

• "local content server system (LCS)": Petitioner argued this means "a device or software application which can securely store a collection of value-added digital content," where "value-added" simply means digital content for which there is any market demand, not a structurally distinct type of content.
• "LCS identification code": Petitioner argued this term should be construed as "a code that identifies the LCS." This would encompass well-known identifiers such as a Media Access Control (MAC) address, which uniquely identifies a network-connected device like the client platform disclosed in Yeung.
• "LCS domain": Petitioner asserted this means "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]," consistent with the patent's explicit definitions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), which prevents challenges based on the same or substantially the same art or arguments previously presented to the Office. Petitioner asserted that although Yeung and Levine were cited during prosecution, they were part of a large information disclosure statement containing over 300 references and were never substantively analyzed by the Examiner, let alone in the proposed combination. Furthermore, the petition asserted that Rhoads is a new reference not previously considered and that the specific three-way combination, supported by new expert testimony, presents the art in a new light not previously before the Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 6, 8, and 17 of the ’408 patent as unpatentable.