PTAB

IPR2021-01419

Hulu LLC v. DivX CF Investors LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multimedia Distribution System for Multimedia Files with Interleaved Media Chunks of Varying Types
  • Brief Description: The ’443 patent discloses a system for distributing multimedia files, such as video, that are structured with interleaved data chunks. The system allows for partial encryption of encoded video frames to provide Digital Rights Management (DRM) while enabling streaming playback to begin before a file is fully downloaded.

3. Grounds for Unpatentability

Ground 1: Obviousness over Notoya/Matsui and Candelore-I/-II - Claims 1-2, 4, 7-8, 10, and 13-16 are obvious over Notoya and Matsui in view of Candelore-I and Candelore-II.

  • Prior Art Relied Upon: Notoya (WO 03/092285), Matsui (WO 03/101114), Candelore-I (Application # 2003/0133570), and Candelore-II (Application # 2004/0049694).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references taught all limitations of the challenged claims. Notoya and Matsui disclosed fragmented MP4 file structures suitable for streaming, where media data chunks (mdat) are interleaved with header/metadata chunks (moof). This structure allows playback to begin before a file is fully downloaded. Candelore-I and Candelore-II taught methods for partially encrypting encoded video frames (e.g., using a "star pattern") to protect against piracy, a well-known problem. Candelore-II further taught using "encryption pointers" containing offset and byte-count values to locate the encrypted portions within a video file. Petitioner contended that placing these encryption pointers (DRM chunks) into the moof headers of the Notoya/Matsui file structure would render the claimed system obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to solve the known problem of piracy in streaming media. It would have been a predictable and desirable improvement to add the known partial encryption techniques of Candelore to the known streaming-friendly file formats of Notoya and Matsui to protect copyrighted content. All references operate in the same field of MPEG-based video distribution, making their combination straightforward.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved applying a known security solution to a standard file format to achieve the predictable result of a secure, streamable video file. The compatibility of the MPEG-based technologies taught in all references would have ensured the combination was technically feasible.

Ground 2: Obviousness over Notoya/Matsui, Candelore-I/-II, and Mowry - Claims 4, 10, and 16 are obvious over Notoya and Matsui in combination with Candelore-I, Candelore-II, and Mowry.

  • Prior Art Relied Upon: Notoya (WO 03/092285), Matsui (WO 03/101114), Candelore-I (Application # 2003/0133570), Candelore-II (Application # 2004/0049694), and Mowry (Application # 2004/0253942).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination in Ground 1 and adds the teachings of Mowry to address claim limitations requiring a reference to a decryption key. Petitioner argued that Mowry taught using a Uniform Resource Identifier (URI) located in a DRM package header to map to a Content Encryption Key (CEK). This CEK is used to decrypt the content and can be obtained from a separate rights-issuing server. Adding Mowry’s teaching of a key reference to the DRM chunk (the moof header in the primary combination) would satisfy the limitations of claims 4, 10, and 16. This addition also allegedly renders obvious the limitation of requesting content from a first server and a decryption key from a second server.
    • Motivation to Combine: A POSITA would have been motivated to add Mowry's key referencing system to the primary combination to create a more robust and flexible DRM system. The separation of content delivery and key management was a known practice. Incorporating a URI as a reference to a decryption key was a logical and known method for enabling a client device to identify and request the correct key, particularly when different keys might be used for different content or time periods.
    • Expectation of Success: A POSITA would have expected success in this combination because it represented a simple modification—adding a key reference to a DRM header. All references were directed to methods of protecting and distributing multimedia files over a network, ensuring their compatibility. The proposed combination would predictably yield a secure streaming system with flexible key management.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. It stipulated that if the inter partes review (IPR) was instituted, it would not advance the same invalidity grounds in the co-pending district court litigation, thereby avoiding duplicative efforts. Petitioner further contended that the district court case was in its earliest stages, with no significant investment of resources by the court or parties and an uncertain trial date, weighing against denial. Finally, Petitioner asserted that the strong merits of the petition warranted institution.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-2, 4, 7-8, 10, and 13-16 of Patent 10,257,443 as unpatentable under 35 U.S.C. §103.