PTAB

IPR2021-00219

Hulu LLC v. SITO Mobile R&D IP LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Routing Media
  • Brief Description: The ’635 patent describes a distributed media routing system that, in response to a user request for media, generates and transmits a "play script" to the user's communication device. This play script contains the necessary information and instructions to enable the device to stream both the requested media and an advertising clip.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7, 11-13, 17-18, 20, and 22 are obvious over Eyal in view of All About ASX Files.

  • Prior Art Relied Upon: Eyal (Patent 6,389,467) and All About ASX Files (a 1999 Microsoft technical article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Eyal taught the core method of the ’635 patent, describing a server that receives a media request and returns a "play-list" containing URLs, metadata, and instructions for streaming media from various network locations. Eyal also explicitly disclosed inserting links to advertising commercials within this play-list. Petitioner contended that All About ASX Files provided a well-known, concrete implementation of such a play-list. It described the ASX file format, a text-based playlist that instructs a media player on where to retrieve media files (via URLs), the order of playback, and how to insert advertisements into the stream, thus teaching all elements of the claimed "play script."
    • Motivation to Combine: A POSITA would combine the teachings of Eyal and All About ASX Files to implement Eyal’s conceptual streaming system using a standardized, widely-used playlist format. Eyal itself suggested compatibility with Microsoft Windows Media Player, and ASX was the native playlist format for that player. This combination would predictably improve system compatibility and provide a known method for implementing Eyal's advertising features.
    • Expectation of Success: A POSITA would have a high expectation of success, as combining a well-documented, XML-based playlist format (ASX) with a general media streaming architecture (Eyal) was a straightforward implementation of known technologies to achieve a predictable result.

Ground 2: Claims 1-3, 7, 11, 13, and 18 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 asserted that Madison disclosed a ticket-based system for controlling access to streaming media where a playlist server generates and transmits an ASX redirector file (the "play script") to an end-user. This file contained URLs pointing to media servers (a separate resource) and, as Madison noted, could include non-secure files like advertisements. While Madison mentioned including advertisements, Holtz supplied the missing details on advertisement selection and targeting. Holtz taught a system that enhances media with targeted advertisements selected based on criteria such as target audience and program content.
    • Motivation to Combine: A POSITA would combine Holtz’s sophisticated advertising selection and targeting methods with Madison's streaming architecture. This combination would improve upon Madison’s system, which acknowledged but did not detail advertising, by adding a known method for generating revenue through effective, targeted advertising. The motivation was to create a more commercially viable streaming system.
    • Expectation of Success: The combination involved applying known ad-targeting techniques to a standard media streaming architecture. A POSITA would have a high expectation of success in achieving the predictable result of a system capable of delivering targeted ads within a media stream, thereby increasing ad effectiveness and revenue.

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 central to the argument, as Petitioner asserted that prior art playlists, such as ASX files, met all elements of this definition. The proposed construction emphasized that the script must be more than a simple list of links; it must contain executable instructions for the user's device, a feature Petitioner argued was inherent in prior art playlist formats.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention of the petition was that the ’635 patent was not entitled to its claimed priority date earlier than January 18, 2002. Petitioner argued that the earlier applications in the priority chain failed to provide adequate written description for the crucial "instructions" element of the "play script." Specifically, the earlier applications allegedly described only a "play list" of URLs without the claimed "instructions for use by the communication device together with the at least one URL to cause" streaming. This argument was critical for establishing that the asserted prior art references, including Eyal and Madison, predated the patent's effective filing date.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that the Board should institute review. The core arguments were:
    • The parallel district court litigation was in a very early stage, with the petition filed less than six months after the complaint, discovery not yet started, and the trial date more than a year away.
    • Petitioner submitted a stipulation that, if IPR is instituted, it would not pursue invalidity in the district court based on the primary references of Eyal or Madison.
    • The IPR challenges more claims (14) than were asserted in the district court case (7), meaning the parallel proceeding would not resolve the patentability of most challenged claims.
    • Petitioner acted diligently by filing the petition shortly after being sued, and denial would effectively nullify its right to IPR.

7. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7, 11-13, 17-18, 20, and 22 of the ’635 patent as unpatentable.