Hulu LLC v. SITO Mobile R&D IP LLC

1. Case Identification

• Patent #: 9,026,673
• Filed: October 30, 2020
• Petitioner(s): Hulu, LLC
• Patent Owner(s): SITO Mobile R&D IP, LLC and SITO Mobile, Ltd.
• Challenged Claims: 1-3, 5-6, 19-21, 23, 26-27, 30-31, and 33

2. Patent Overview

• Title: System and Method for Routing Media
• Brief Description: The ’673 patent discloses a system for managing and administering media streaming. The core of the invention involves a computing device that, upon receiving a media request from a user's communication device, generates and transmits a “play script” containing instructions and information to enable the user device to obtain the requested media and other media, such as advertisements.
• Key Aspects: Petitioner argued that the ’673 patent is not entitled to its claimed priority date before January 18, 2002. This assertion was based on the argument that earlier applications in the priority chain failed to provide adequate written description support for the five-part “play script” limitation, which was added during prosecution to achieve allowance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Eyal and Wiser - Claims 1-3, 5-6, 19-21, 23, 26-27, 30-31, and 33 are obvious over Eyal in view of Wiser.

• Prior Art Relied Upon: Eyal (Patent 6,389,467) and Wiser (Patent 6,385,596).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Eyal taught a media streaming system where a server generates a "play-list" containing URLs for requested media and advertisements, which it sends to a user device. This play-list was argued to be analogous to the claimed "play script." Eyal’s play-list included identifications of requested media and other media (ads), URLs to media resources, and instructions (e.g., playback sequence, protocols) for the client device. However, Eyal did not explicitly disclose a "reservation identification." Wiser was argued to supply this missing element, as it taught a secure media distribution system that used a unique "voucher ID" to manage and track reservations for media delivery from servers with limited bandwidth and a finite number of active streams.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Wiser's reservation management technique with Eyal's play-list system. The motivation was to address the well-known and predictable problem of managing finite server resources in a streaming media environment. Incorporating a reservation identifier, like Wiser’s voucher ID, into Eyal’s play-list would be a known solution to ensure quality of service.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because adding a reservation identifier to Eyal's play-list, which already contained various forms of metadata, would have been a simple and straightforward modification.

Ground 2: Obviousness over Madison and Holtz - Claims 1-3 and 6 are obvious over Madison in view of Holtz.

• Prior Art Relied Upon: Madison (Application # 2004/0015703) and Holtz (Patent 6,760,916).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Madison disclosed a ticket-based system for controlling access to streaming media. In Madison, a web server and playlist server work together to generate a "redirector file" (e.g., an ASX file) that functions as the claimed "play script." This file contained URLs identifying media servers, a "ticket ID" for authenticating the stream (argued to be a "reservation identification"), and could include other media like advertisements. To the extent Madison’s disclosure of including advertisements was considered basic, Holtz was argued to teach more advanced techniques for creating customized media programs. Holtz described an advertising administration system that automatically sequenced customized advertisements with requested media segments based on user specifications or content subject matter.
  • Motivation to Combine: A POSITA would be motivated to incorporate Holtz's sophisticated, targeted advertising system into Madison's access-controlled streaming framework. The primary motivation was commercial: to improve the system's ability to generate revenue by delivering more effective, customized advertisements, a known objective in the art.
  • Expectation of Success: The combination would have been predictable and successful. Both Madison and Holtz described systems using contemporaneous technologies like ASX files and addressed the common field of media distribution over the internet. Integrating Holtz's rule-based ad selection into Madison’s file generation process was presented as a combination of known techniques to achieve an expected improvement.

4. Key Claim Construction Positions

• "Play script": Petitioner proposed this term be construed as “a list customized for the communication device containing one or more media references and instructions executable by the communication device.” This construction was argued to be supported by the claims requiring generation based on device attributes and the specification’s description of an “executable play script.”
• "Reservation": Petitioner proposed this term be construed as “a set of instructions uniquely identifying the communication device and the play script, and reserving system resources for streaming the requested media.” This construction was central to mapping the "voucher ID" from Wiser and the "ticket ID" from Madison to the claimed "reservation identification."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) based on Fintiv factors.
• The key arguments were that the IPR was filed early in a parallel district court proceeding (approximately four months after commencement), before significant resources had been invested by the court or the parties. Petitioner also stipulated that, if the IPR was instituted, it would not pursue invalidity grounds in the district court based on the primary references (Eyal or Madison), thereby minimizing any potential for inefficiency or overlap. Furthermore, the petition challenged a broader set of claims than were asserted in the parallel litigation.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 5-6, 19-21, 23, 26-27, 30-31, and 33 of Patent 9,026,673 as unpatentable under 35 U.S.C. §103.