PTAB

IPR2023-00976

DISH NeTwork LLC v. Digital BRoadcastIng Solutions LLC

Title: Time-Shifting DVR with Conditional Content Skipping
Brief Description: The ’710 patent describes a digital video recorder (DVR) that manages time-shifted playback of video programs containing primary content (e.g., a show) and secondary content (e.g., commercials). The system can enforce different playback rules based on a "first" and "second" period of time, allowing it to either force a user to view commercials or permit skipping them, allegedly to preserve the value of advertisements for a certain duration after broadcast.

Prior Art Relied Upon: Casagrande (Patent 8,510,771) and Russ (Application # 2006/0225105).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Casagrande teaches the core DVR system, including identifying and filtering "interstitials" (commercials) from a video stream to create a commercial-free version for playback. Casagrande also discloses imposing playback restrictions to prevent users from skipping content. Russ was asserted to teach the specific implementation of time-based restrictions, disclosing that "trick play" functionality could be precluded for a "specified length of time, such as two weeks," after which the restriction would expire.
- Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Russ's time-based restriction with Casagrande's commercial-filtering DVR to achieve the predictable result of increasing advertising revenue. A POSA would have been motivated to apply a temporary, expiring lock on commercial skipping to ensure that recent, high-value advertisements are viewed, while still providing the user with skipping functionality later, as taught by Russ.
- Expectation of Success: The combination would entail simple software and user interface modifications to implement a known time-based lock on an existing feature, which was well within the skill of a POSA.

Prior Art Relied Upon: Dow (Patent 7,251,413).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Dow anticipates every limitation of the challenged claims. Dow discloses a DVR with a "commercial skip function" that a user can toggle between active and inactive states (the claimed "first" and "second" playback states). Crucially, Dow teaches that the commercial skip function is "always inactive" during certain periods, such as in a delayed view mode with insufficient time to buffer and process commercial-identifying events (a "first period of time"). During this period, the user is forced to watch the entire program. A user can later enable the commercial skip function (a "second period of time" after the first) to view the program with commercials removed, thus providing only a portion of the original video program.

Prior Art Relied Upon: Dow (Patent 7,251,413) and Russ (Application # 2006/0225105).
Core Argument for this Ground:
- Prior Art Mapping: This ground was presented as an alternative to the anticipation argument. Petitioner asserted Dow teaches the foundational DVR system with a togglable commercial skip function. To the extent Dow's reason for disabling skipping (insufficient buffer time) is considered different from the claimed time-based restriction, Russ supplies the missing element. Russ explicitly teaches restricting trick play for a finite period (e.g., "two weeks") to control viewing of commercials.
- Motivation to Combine: A POSA would have been motivated to implement Russ’s explicit, time-limited commercial viewing restriction in Dow's DVR system. This would allow a content provider to enforce ad-viewing for a predetermined initial release window, a known method for maximizing ad revenue, which is a more predictable and commercially useful implementation than Dow's buffer-dependent restriction.
- Expectation of Success: Combining a known time-based lock on trick-play from Russ with the commercial-skipping functionality in Dow's DVR would be a straightforward and predictable modification for a POSA.

Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is unwarranted because the primary references (Casagrande, Dow, and Russ) were not considered by the PTO during prosecution.
Petitioner also argued that discretionary denial under §314(a), based on the Fintiv factors, is inappropriate. The parallel district court litigation was argued to be in a very early stage, with venue discovery having just concluded and no trial date set that is proximate to the Final Written Decision (FWD) deadline. Petitioner asserted its diligence in filing the petition early in the litigation, the minimal overlap of issues at this stage, and the strong merits of the petition all weigh heavily in favor of institution.

Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-19 of the ’710 patent as unpatentable.