PTAB

IPR2022-01042

fuboTV Media Inc v. SITO Mobile R&D IP LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Routing Media
  • Brief Description: The ’088 patent discloses a distributed media streaming management method. The system responds to a request for media by transmitting identification of the media, an indication for an advertisement to be streamed, identification of a resource to facilitate streaming, and information on how the media and ad should be presented.

3. Grounds for Unpatentability

Ground 1: Claims 36-38, 44, 45, and 49-51 are obvious over Eyal in view of AAAF

  • Prior Art Relied Upon: Eyal (Patent 6,389,467) and AAAF ("All About ASX Files," a Microsoft Corp. publication from 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Eyal taught the core elements of independent claim 36, including a server system that receives a request for media from a user device and responds by transmitting a "play-list" containing URLs and metadata for the requested media. Eyal also disclosed inserting "streaming media commercials" into these playlists. Petitioner asserted that AAAF, which describes Microsoft's ASX file format, supplemented Eyal by teaching the use of a specific playlist format (ASX files) that explicitly provided for inserting advertisements and other clips into a media stream using event tags (e.g., a "Time-Out" event). The combination allegedly met limitations such as transmitting an "indication" for an ad to be streamed (the ASX event tag) and "information" on how media should be presented (metadata and sequence instructions in the playlist). Petitioner contended that various dependent claims were also rendered obvious, as Eyal taught generating playlists based on attributes like the type of media player (claim 37) and using creation rules for inserting commercials (claim 38), while the combination taught providing media format and sequence information (claim 44) and including URLs for ads (claim 45).
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Eyal and AAAF for two primary reasons. First, since Eyal explicitly suggested using Microsoft Windows Media Player, a POSITA would have been motivated to use Microsoft's corresponding ASX playlist format (taught by AAAF) to ensure compatibility and functionality. Second, a POSITA would have been motivated to incorporate AAAF’s more detailed methods for ad insertion to improve the advertising features taught conceptually in Eyal, a well-known and desirable goal in streaming systems.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because ASX files use XML, a common and standardized format for data exchange, making their integration into a system like Eyal's straightforward.

Ground 2: Claim 43 is obvious over Eyal in view of AAAF and Tenereillo

  • Prior Art Relied Upon: Eyal (Patent 6,389,467), AAAF ("All About ASX Files," a Microsoft Corp. publication from 1999), and Tenereillo (Patent 7,099,915).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Eyal and AAAF combination to address the additional limitations of claim 43, which required the identification of "one or more routing processors to identify one or more media servers." Petitioner argued that while Eyal/AAAF taught identifying resources (media servers), they did not explicitly disclose a "routing processor." Tenereillo allegedly supplied this missing element by teaching a server load balancing system that used a "local director" to receive an initial request and redirect the client to one of several "real servers" based on load balancing algorithms. Petitioner contended that Tenereillo's "local director" functioned as the claimed "routing processor" by selecting an optimal media server to stream content.
    • Motivation to Combine: Petitioner argued a POSITA would have been motivated to integrate Tenereillo's load balancing into the Eyal/AAAF streaming framework. At the time of the invention, managing finite server resources like bandwidth was a known challenge. A POSITA would have sought to improve the reliability and quality of service of the streaming system by using known load balancing techniques, such as those taught by Tenereillo, to route requests to the servers best equipped to handle them.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination because implementing load balancing for web and media servers was a well-understood practice, and the required modifications could be achieved with standard programming and network protocols.

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Substantially Same Art/Arguments: Petitioner argued denial under §325(d) was improper because the key prior art and arguments were not previously before the examiner. Although Eyal was cited in an Information Disclosure Statement, the examiner noted it was "impractical" to thoroughly review the large number of cited references, indicating no substantive consideration occurred. Furthermore, AAAF and Tenereillo were never presented to the examiner, making the proposed combinations entirely new.
  • §314(a) - Fintiv Factors: Petitioner argued that discretionary denial under Fintiv was unwarranted. The parallel district court cases were stayed shortly after filing, and there was no scheduled trial date. As a result, there had been minimal investment by the court and parties, with no discovery or claim construction. Petitioner also asserted that the strong merits of the petition, evidenced by the Patent Trial and Appeal Board's invalidation of claims in seven related patents from the same family, weighed heavily in favor of institution to promote efficiency and avoid duplicative efforts.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 36, 37, 38, 43, 44, 45, 49, 50, and 51 of the ’088 patent as unpatentable.