PTAB

IPR2021-00308

Hulu LLC v. SITO Mobile R&D IP LLC

Key Events

Petition

petition

Title: System and Method for Routing Media
Brief Description: The ’887 patent relates to a distributed system for managing and streaming media content. The technology involves a computing device that receives a media request and, in response, generates and transmits a communication (e.g., a playlist) containing instructions for streaming, based on device capabilities and user characteristics, while also incorporating rules for sharing revenue.

Prior Art Relied Upon: Eyal (Patent 6,389,467) and Angles (Patent 6,385,592).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Eyal taught the foundational streaming system where a server receives a media request and responds with a "play-list" containing URLs and metadata, which constitutes the claimed list of instructions sent to a user's device. Angles supplied the missing elements related to revenue, teaching a detailed system for tracking customized advertisement views and generating settlement records to implement revenue sharing rules among content providers and other parties.
- Motivation to Combine: A POSITA would combine Angles's sophisticated ad-tracking and revenue-sharing mechanisms with Eyal's streaming framework. The combination would improve upon Eyal’s rudimentary targeted advertising capabilities to create a more commercially viable system, a common goal in the art.
- Expectation of Success: Both references described systems built on conventional computers with modular server architectures. Petitioner contended that integrating Angles's tracking and accounting functions into Eyal's back-end database and server modules was a predictable task for a POSITA.

Prior Art Relied Upon: Eyal (Patent 6,389,467), Angles (Patent 6,385,592), and Chang (Patent 6,715,126).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds on the combination of Eyal and Angles. Petitioner asserted that Chang taught the additional limitations of claim 105 by disclosing a method for including specific streaming-parameter metadata—such as frame rate, bit rate, and sequence—within a communication sent to a viewer. This metadata allows for better control over the streaming presentation.
- Motivation to Combine: A POSITA would be motivated to incorporate Chang’s teachings into the Eyal/Angles system to address the well-known technical problem of maintaining playback quality over variable-bandwidth networks. Adding bit rate and frame rate rules would prevent buffering and optimize the user experience, a clear benefit.
- Expectation of Success: The proposed modification involved adding known types of metadata fields to the existing playlist and database structure of the primary combination, which was a straightforward and predictable implementation.

Prior Art Relied Upon: Madison (Application # 2004/0083273) and Wolfe (Patent 5,931,901).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Madison disclosed the core system of receiving a user request and dynamically generating a "playlist redirector file" (e.g., an ASX file) containing a list of URLs and instructions for the user's media player. Wolfe taught a system for bundling media with advertisements that were "tailored to the individual" based on detailed subscriber profiles and performing the associated back-end billing, royalty calculation, and revenue sharing.
- Motivation to Combine: A POSITA would combine Wolfe's advanced user-profile-based ad targeting and accounting system with Madison's content delivery architecture. This would improve upon Madison's rudimentary "ad tag" feature and provide a robust commercial framework to underwrite the cost of media delivery, a recognized industry goal.
- Expectation of Success: The combination represented the application of established advertising technology (from Wolfe) to a standard content delivery system (from Madison). Petitioner argued this integration was a predictable implementation of known techniques to achieve a known benefit.

"settlement record": Petitioner proposed this term be construed as a "billable event record to be used for revenue settlement purposes." This construction was argued to be critical for mapping prior art that describes billing and accounting systems, as it ties the "record" directly to revenue-generating events like advertisement views, rather than mere operational logs.

Priority Date Challenge: Petitioner argued the ’887 patent is not entitled to its claimed priority date of January 19, 2001. The petition contended that the earlier priority applications failed to provide adequate written description for the key limitation requiring "instructions as to how the... media is to be streamed," disclosing only lists of URLs. If successful, this argument would establish a later priority date of January 18, 2002, making references like Madison available as prior art.

Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation was in its infancy, with minimal resources expended by the court or parties. Key factors cited included that no Markman hearing had occurred and significant discovery had not begun. Crucially, Petitioner stipulated that if the IPR were instituted, it would not pursue invalidity in the district court based on the primary references asserted in the petition (Eyal or Madison), thus eliminating concerns of duplicative efforts and conserving judicial resources.

Petitioner requested institution of an inter partes review and cancellation of claims 39-40, 45, 47, 52, 68, 98-101, 103, 105, 111, and 115-117 of the ’887 patent as unpatentable.