DISH Network LLC v. Digital Broadcasting Solutions LLC

1. Case Identification

• Case #: IPR2023-00976
• Patent #: 8,929,710
• Filed: May 26, 2023
• Petitioner(s): DISH Network L.L.C. and DISH Technologies L.L.C.
• Patent Owner(s): Digital Broadcasting Solutions, LLC
• Challenged Claims: 1-19

2. Patent Overview

• Title: Time-Shifted Data with Auxiliary Data
• Brief Description: The ’710 patent describes a digital video recorder (DVR) system that manages time-shifted video content containing primary content (e.g., a show) and secondary content (e.g., commercials). The system can be configured to enforce playback of the entire video stream for a first period of time after transmission but allows playback of a modified stream with the secondary content removed during a subsequent, second period of time.

3. Grounds for Unpatentability

Ground 1: Obviousness over Casagrande and Russ - Claims 1-19

• 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 disclosed the core DVR functionality required by the independent claims. Casagrande taught a system that receives a video stream with primary content ("segments") and secondary content ("interstitials," such as commercials). Its DVR could process this stream to create a second, modified stream where the interstitials are filtered out, effectively skipping commercials. Petitioner asserted that Casagrande’s full stream corresponds to the claimed "first playback state" and its filtered stream corresponds to the "second playback state." However, Casagrande's restrictions on skipping were not explicitly time-based. Russ, addressing similar DVR technology, explicitly taught restricting "trick play" functionality (like skipping commercials) for a "specified length of time, such as two weeks," after which the functionality is restored.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Russ’s time-based restriction with Casagrande's interstitial filtering system. The motivation was to achieve the predictable result of increasing the value of advertisements by ensuring they could not be skipped for a finite period after broadcast, a known commercial objective in the art.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved implementing known time-based software rules into a known DVR filtering system, requiring only routine software and user-interface modifications.

Ground 2: Anticipation by Dow - Claims 1-5, 7-13, and 16-19

• Prior Art Relied Upon: Dow (Patent 7,251,413).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Dow disclosed every element of the challenged claims. Dow described a DVR with a "commercial skip" function that a user could toggle between active and inactive modes. Petitioner mapped Dow’s "inactive" mode—where the user must watch the entire program with commercials—to the claimed "first playback state." Dow taught that this mode is automatically engaged during a "first period of time," such as during delayed viewing where there is insufficient time to buffer and process commercial markers. Dow's "active" commercial skip mode—where the DVR plays only the primary program content—was mapped to the claimed "second playback state," which becomes available in a "second period of time" after the initial restriction. Dow's system therefore provided for playing the video in its entirety during a first period and playing only a portion (without commercials) during a second, later period.

Ground 3: Obviousness over Dow and Russ - Claims 1-19

• 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 Ground 2. To the extent the Patent Trial and Appeal Board (PTAB) might find that Dow’s time-based restrictions were not sufficiently explicit, Petitioner argued that Russ cured any deficiency. Dow provided the foundational DVR with selectable commercial-skipping functionality. Russ explicitly disclosed applying a time-based restriction (e.g., "two weeks") to such trick-play functions.
  • Motivation to Combine: A POSITA would have found it obvious to implement the explicit, commercially-driven, time-based restrictions from Russ into Dow's DVR system. This combination would allow a content provider to reliably enforce an initial ad-viewing window, a finite and well-understood solution to the problem of ad-skipping that Dow and Russ both addressed.
  • Expectation of Success: The combination was argued to be a predictable integration of known features (time-based locks and commercial skipping) in a common technological field (DVRs), with a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was unwarranted because the primary references (Casagrande, Dow, and Russ) were not previously considered by the examiner during prosecution. The petition also presented new analysis from a technical expert.
• Petitioner further contended that discretionary denial under Fintiv was inappropriate. The co-pending district court litigation was in a very early stage, with no claim construction, minimal discovery limited to venue, and a trial date that was not imminent. Petitioner asserted that its diligence in filing, the early stage of the parallel case, and the strong merits of the petition weighed heavily in favor of institution to promote judicial efficiency.

5. Relief Requested

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