DISH Network LLC v. Broadband iTV Inc

1. Case Identification

• Case #: IPR2020-01332
• Patent #: 10,506,269
• Filed: July 24, 2020
• Petitioner(s): DISH Network L.L.C.
• Patent Owner(s): Broadband iTV, Inc.
• Challenged Claims: 1-17

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 ’269 patent describes a video-on-demand (VOD) system that allows content providers to upload video content via a web-based content management system. The system presents this content to subscribers through a hierarchical, template-based electronic program guide (EPG) on an interactive mobile application.

3. Grounds for Unpatentability

Ground 1: Claims 1-17 are obvious over Perez in view of Kelts.

• Prior Art Relied Upon: Perez (Application # 2006/0026655) and Kelts (Application # 2001/0030667).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Perez, a publication from the same inventor as the ’269 patent, disclosed nearly all limitations of the challenged claims. Perez taught a VOD system where users upload content via a web-based management system, with metadata used to generate a hierarchical, "templatized" EPG for display on a subscriber's set-top box. The EPG menus in Perez were generated in layers (background, template, content), identical to the method described in the ’269 patent. However, Perez did not disclose providing the VOD content and EPG to an "interactive mobile application." Petitioner asserted that Kelts supplied this missing element. Kelts taught a system for providing hierarchical menus of multimedia content, including VOD, to a wide variety of internet-enabled devices, specifically including mobile devices like wireless telephones and handheld computers, via an interactive web-based application. By combining the teachings, a Person of Ordinary Skill in the Art (POSITA) would arrive at Perez’s VOD system delivered via an interactive mobile application as taught by Kelts.
  • Motivation to Combine: Petitioner contended a POSITA would combine Perez and Kelts to expand the customer reach and functionality of Perez's VOD system. By the ’269 patent’s 2007 effective filing date, the proliferation of mobile devices was well-known. A POSITA would have been highly motivated to adapt Perez’s system for these devices to broaden the consumer base, a goal explicitly stated in Perez. Furthermore, Perez contemplated future integration with web-based services (e.g., email, e-commerce), and using Kelts's web-based platform would facilitate this integration. The similar server-client architectures of both systems would make the combination straightforward and predictable.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Perez and Kelts operate in the same technological field (VOD systems) and describe compatible, complementary technologies. Both references taught methods for providing hierarchical menus of media content. Since Perez’s system was primarily software-based, a POSITA would recognize that migrating its EPG generation functionality to the web-based mobile distribution platform described by Kelts was a routine design choice with predictable results.

4. Key Claim Construction Positions

• "Web-based content management system": Petitioner proposed construing this term to mean "a system accessible over the Internet, including the Web, for managing content." This construction, adopted from a district court ruling on a related patent, was argued to be consistent with the ’269 patent’s disclosure of users uploading content "via a web browser."
• "Internet Protocol TV (IPTV) system": Appearing in claim 13, Petitioner proposed construing this term to mean "a system that provides digital television services over closed, proprietary broadband connections employing TCP/IP data transport protocol," drawing the definition directly from the patent’s specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The parallel district court litigation involving the ’269 patent was in its early stages, with no trial date set and significant delays expected that would push any trial well beyond the projected Final Written Decision (FWD) date of the inter partes review (IPR). Petitioner asserted it filed its petition promptly, only seven months after being served with the complaint. Crucially, no claim construction had occurred, and no meaningful discovery had taken place in the district court case. Petitioner also argued that the prior art and arguments presented in the petition were substantially different from those considered during prosecution and in prior proceedings involving related patents, meaning the Board had not previously considered the patentability of the claims on these grounds.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-17 of the ’269 patent as unpatentable.