DISH Network LLC v. Broadband iTV Inc

1. Case Identification

• Case #: IPR2020-01267
• Patent #: 10,028,026
• Filed: July 10, 2020
• Petitioner(s): DISH Network L.L.C.
• Patent Owner(s): Broadband iTV, Inc.
• Challenged Claims: 1-16

2. Patent Overview

• Title: System For Addressing On-Demand TV Program Content On TV Services Platform Of A Digital TV Services Provider
• Brief Description: The ’026 patent discloses a system for improving video-on-demand (VOD) services. The invention is directed to a template-based, hierarchical electronic program guide (EPG) that organizes content for subscribers and a web-based system allowing content providers to upload video and associated metadata for distribution.

3. Grounds for Unpatentability

Ground 1: Claims 1-16 are obvious over Gonder in view of Son and/or Kelts.

• Prior Art Relied Upon: Gonder (Patent 8,434,118), Son (Patent 7,159,233), and Kelts (Application # 2001/0030667).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Gonder, Son, and Kelts renders all challenged claims obvious under 35 U.S.C. §103. Gonder was presented as the primary reference, disclosing the core of the claimed invention: a VOD system featuring a hierarchical EPG constructed from provider-supplied metadata. Petitioner asserted Gonder teaches a layered display (background, template, content), drill-down navigation, and the use of different templates for different hierarchical levels—the very features added during prosecution to overcome rejections. To address the web-based upload limitation of claim 1, Petitioner relied on Son, which teaches a system allowing content providers to upload video and metadata over the Internet to a central server. For dependent claims reciting specific user devices and bookmarking functionality, Petitioner cited Kelts. Kelts discloses implementing a hierarchical media interface on various web-enabled devices (e.g., PCs, PDAs, game consoles, phones) and teaches a "favorites" feature for bookmarking content, corresponding to the limitations of claims 11-16.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to combine the references. A POSITA would begin with Gonder’s comprehensive VOD system and integrate Son’s web-based upload method to create a more efficient, scalable, and open platform for content ingestion, leveraging existing Internet infrastructure to attract a wider range of content providers. A POSITA would then be motivated to apply the teachings of Kelts to the combined Gonder/Son system to expand its availability to the growing market of diverse, Internet-connected consumer devices, thereby broadening the potential user base. The addition of Kelts’s bookmarking feature was argued to be an obvious design choice to improve user convenience, especially for navigating the large content libraries that Gonder's system was designed to handle.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success in combining the teachings. The references all relate to the same technological field of VOD systems and describe compatible and complementary aspects of an end-to-end service (content ingestion, EPG generation, and client-side implementation). Petitioner argued that no technological barriers would have prevented the integration of a known web-based upload system (Son) and multi-device support (Kelts) with a VOD platform like Gonder’s.

4. Key Claim Construction Positions

• Petitioner proposed that the claim term "Web-based content management system" be construed to mean "a system accessible over the Internet, including the Web, for managing content." This construction, which was consistent with a district court's construction of a similar term in a related patent, was central to Petitioner's argument that the HTTP server-based upload system taught by Son satisfied this limitation of claim 1.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner argued that the challenged claims were not entitled to the 2004 priority date of the earliest-filed application in the patent's family. The contention was that the claim limitation "Internet-connected digital device" lacked written description support until it was introduced in a continuation-in-part application filed on March 12, 2007. This later priority date was asserted to be the correct one, making references like Son and Kelts available as prior art against the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a), addressing the Fintiv factors. It asserted that the parallel district court proceeding was in its early stages, with no trial date set and a trial highly unlikely to occur before the Board's Final Written Decision (FWD). Petitioner cited the district court’s heavy patent caseload and ongoing pandemic-related delays as factors making a timely trial improbable. Furthermore, Petitioner contended that the invalidity grounds were based on prior art and arguments that were not substantively considered by the USPTO during prosecution or by the Patent Trial and Appeal Board in any prior proceedings involving related patents, weighing in favor of institution.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’026 patent as unpatentable.