PTAB

IPR2021-00304

Hulu LLC v. SITO Mobile R&D IP LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Management and Administration of Media Streaming
  • Brief Description: The ’637 patent describes a method for streaming video and targeted advertisements by generating a file for a user device. This file identifies resources on a content distribution network (CDN) and an advertising server to enable streaming of both video segments and ads from those sources.

3. Grounds for Unpatentability

Ground 1: Obviousness over McCanne and AAAF - Claims 1-4 and 9 are obvious over McCanne in view of AAAF.

  • Prior Art Relied Upon: McCanne (Patent 6,785,704) and AAAF (Microsoft Corp., "All About ASX Files," 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McCanne teaches a CDN that uses geographically distributed edge servers to efficiently stream content to clients, improving response time by serving content from nearby servers. AAAF, a Microsoft publication, teaches using ASX playlist files to stream media content and advertisements in succession. Petitioner contended the combination discloses the core elements of claim 1: transmitting a file (AAAF’s ASX playlist) containing identifications (URLs) of CDN resources (McCanne’s edge servers) and an advertising server, where the selection of those resources is dependent on geographic location (as taught by McCanne) to facilitate streaming.
    • Motivation to Combine: McCanne suggests compatibility with Microsoft Netshow (the predecessor to Windows Media Player). A POSITA would combine McCanne’s CDN with the teachings of AAAF because ASX is the standard playlist file format for Windows Media Player. This combination would predictably achieve the known benefits of playlists, such as sequential streaming with minimal buffering, and would allow for the insertion of advertisements to monetize the service.
    • Expectation of Success: A POSITA would have an expectation of success because both references are in the same field and are technologically compatible. Applying a well-known playlist technique (AAAF) to a known CDN architecture (McCanne) to manage content and ad delivery was a predictable implementation.

Ground 2: Obviousness over McCanne, AAAF, and Wolfe - Claims 7 and 8 are obvious over McCanne in view of AAAF and Wolfe.

  • Prior Art Relied Upon: McCanne (Patent 6,785,704), AAAF (Microsoft Corp., "All About ASX Files," 1999), and Wolfe (Patent 5,931,901).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the McCanne/AAAF combination for the base features of claim 1. Petitioner argued that Wolfe supplies the limitations of dependent claims 7 and 8. For claim 7, Wolfe teaches a system that tracks advertising airtime for billing advertisers and calculating royalty payments to content owners, which constitutes generating a "settlement for sharing...revenue." For claim 8, Wolfe teaches using content owner rules specifying age, geographic, and time restrictions to target advertisements, using a subscriber profile database to match users with appropriate ads.
    • Motivation to Combine: A POSITA implementing the streaming system of McCanne and AAAF would be motivated to incorporate Wolfe's teachings to create a financially viable advertising model. Wolfe explains that targeted advertising helps underwrite the cost of providing content. Adding Wolfe’s revenue-sharing and content-restriction functionalities were known business methods for improving advertising effectiveness and monetizing a streaming service.

Ground 3: Obviousness over Madison and Wolfe - Claims 1-4 and 7-10 are obvious over Madison in view of Wolfe.

  • Prior Art Relied Upon: Madison (Application # US 2004/0083273) and Wolfe (Patent 5,931,901).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Madison teaches a geographically distributed system for delivering streaming media. Madison's system generates a playlist redirector file (e.g., an ASX file) containing a list of URLs that point to media segments on various streaming servers, speeding delivery by using servers located in the end-user's geography. While Madison includes "ad tags" as placeholders for advertisements, Petitioner argued that Wolfe provides the necessary details for a complete advertising system, including targeting ads based on user profiles (age, location), generating settlements for revenue sharing, and applying content restrictions.
    • Motivation to Combine: A POSITA would combine Madison’s technical framework with Wolfe’s advertising business logic to create a complete, monetizable service. Madison provides the mechanism for inserting ad URLs into a playlist, and Wolfe provides the method for selecting which ads to insert and how to bill for them. The motivation was to improve a known system (Madison) with known techniques (Wolfe) to achieve the predictable result of a functional, targeted advertising platform.
    • Expectation of Success: A POSITA would expect success because the combination required no significant technical modification. It involved applying Wolfe's advertising and billing methods to Madison's streaming architecture, which already contemplated the inclusion of ads.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 10 based on McCanne, AAAF, and Goldszmidt (Patent 6,195,680), which teaches client-based monitoring of service levels and dynamic switching to alternate servers for fault tolerance.

4. Key Claim Construction Positions

  • "content distribution network": Petitioner proposed the construction "a distributed network of servers." This construction is based on the patent’s provisional application and contemporaneous dictionary definitions. It is broad enough to ensure that the server networks described in prior art like McCanne and Madison fall within the scope of the claims.
  • "settlement": Petitioner proposed the construction "a billable event record to be used for revenue settlement purposes." This construction is based on the patent specification and claim 7, linking the term to the creation of records for tracking ad revenue. This aligns with the teachings of prior art like Wolfe, which describes tracking ad plays for billing and royalty payments.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: Petitioner argued the ’637 patent is not entitled to its claimed 2001 priority date and should instead be afforded a priority date no earlier than 2016. The argument is that key claim terms, including "content distribution network" and "advertising server," lack written description support in the original 2001 priority applications. These terms were allegedly added in later continuation applications, constituting new matter. This contention is critical, as a later priority date validates the use of the McCanne, Wolfe, and Madison references as prior art.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The arguments centered on the early stage of a parallel district court proceeding, noting that the court had invested very limited resources, with trial more than a year away and claim construction not yet underway. To further promote efficiency and avoid overlap, Petitioner stipulated that if the IPR were instituted, it would not pursue the same invalidity grounds against the challenged claims in the district court.

7. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-4 and 7-10 of the ’637 patent as unpatentable.