PTAB

IPR2021-00265

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 ’360 patent describes a method for streaming media where an apparatus receives signaling from a client device to stream video content. In response, the apparatus transmits one or more files (e.g., a "play script") containing a URL and instructions that direct the client to stream media segments from resources within a content distribution network (CDN).

3. Grounds for Unpatentability

Ground 1: Claims 15-19, 21, 24, and 27 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 argued that Eyal taught the core elements of independent claim 15. Eyal described a system that receives a request for media from a user, generates a "play-list" containing URLs for media segments located on distributed network sites (a CDN), and sends the play-list to the user. The play-list includes metadata and instructions for sequencing media playback, including inserting advertisements between primary content segments. Petitioner contended Eyal failed to explicitly teach generating a unique identifier for a viewing session that functions as a reservation. Wiser, however, disclosed this missing element by teaching a system that generates a "media voucher" containing a unique "voucher ID" to track a reservation for a media stream. This was necessary to manage the limited number of active streams available from delivery servers.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Wiser's reservation and voucher ID system with Eyal's play-list system to solve the well-known problem of managing finite delivery server resources (e.g., bandwidth and concurrent streams). Because Eyal’s play-list already included various metadata, a POSITA would find it a simple and logical step to add Wiser's unique voucher ID to the play-list to ensure quality of service.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because both references operated in the same field of media distribution over a network. Integrating a unique reservation identifier (from Wiser) into a metadata-rich playlist (from Eyal) was presented as a predictable design choice with clear benefits.

Ground 2: Claims 15-16, 19, 21, and 27 are obvious over Madison in view of Wiser.

  • Prior Art Relied Upon: Madison (Application # 2004/0083273) and Wiser (Patent 6,385,596).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Madison, like Eyal, taught the fundamental system of claim 15. Madison disclosed a method for delivering streaming media where a user request triggers a server to dynamically generate a "playlist redirector file" (e.g., an ASX file). This file contained a list of URLs pointing to stream files on various media servers in a distributed network. Madison also taught including ad insertion points within the playlist. As with the Eyal-based ground, Petitioner argued that Madison did not explicitly teach generating a unique identifier for a session reservation. Wiser was again relied upon to supply this limitation via its teaching of a "media voucher" with a unique "voucher ID" for tracking a delivery reservation.
    • Motivation to Combine: The motivation was identical to Ground 1. A POSITA would combine Wiser's reservation management technique with Madison's playlist generation system to address the known problem of finite server capacity. The combination would improve the reliability and quality of the media streaming service described in Madison.
    • Expectation of Success: The expectation of success was high, as Madison's playlist redirector file (an ASX file) was known to be a flexible format capable of containing extensive metadata and instructions. A POSITA would have found it straightforward to incorporate Wiser's voucher ID into such a file to implement a reservation system.

4. Key Claim Construction Positions

  • "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 based on the specification’s description of a reservation as a feature that enables the system to reserve resources like switches or processors.
  • "reservation identification": Proposed as "a designator uniquely identifying a reservation." Petitioner argued this flows from the construction of "reservation" and is supported by the specification’s requirement that the identifier be unique to authenticate the request.
  • "content distribution network": Proposed as "a distributed network of servers." Petitioner contended this construction is consistent with the patent's provisional application and contemporaneous dictionary definitions, as the term was first added late in prosecution without specific definition in the ’360 patent itself.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that the co-pending district court litigation was at a very early stage. Key factors cited included that no Markman hearing had been scheduled, fact discovery had not begun, and the court had invested very limited resources. Petitioner further stipulated that if the IPR were instituted, it would not pursue invalidity arguments in the district court based on Eyal or Madison, thus eliminating overlap and conserving judicial resources. Petitioner also noted that more claims were being challenged in the IPR (eight) than were asserted in the district court case (five), meaning the IPR would resolve a broader dispute.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 15-19, 21, 24, and 27 of the ’360 patent as unpatentable.