DISH Network LLC v. Digital Broadcasting Solutions LLC

1. Case Identification

• Case #: IPR2023-00977
• Patent #: 9,538,122
• 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: 1-20

2. Patent Overview

• Title: Digital Video Recorder with Time-Shifted Auxiliary Data
• Brief Description: The ’122 patent relates to a digital video recorder (DVR) system for time-shifting video programs. The technology focuses on managing playback states to either present a video program in its entirety, including auxiliary content like commercials, or to present only a portion of the program by skipping the auxiliary content.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Casagrande in view of Russ and Miller

• Prior Art Relied Upon: Casagrande (Patent 8,510,771), Russ (Application # 2006/0225105), and Miller (Application # 2009/0165057).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Casagrande disclosed the core elements of the challenged claims, including a DVR that stores a video program (an A/V stream) and can play it back in two states: one including commercials ("interstitials") and another with the commercials filtered out. Casagrande’s system identifies program segments and interstitials and allows for selective playback. To meet the claim limitation of receiving multiple programs on a single channel, Petitioner asserted Miller taught a system with a tuner capable of receiving a multiplexed signal containing multiple programs on a single carrier. To meet limitations related to time-based playback restrictions, Petitioner relied on Russ, which taught precluding "trick play" functionality (like skipping commercials) for a specified period (e.g., two weeks), after which the restriction expires.
  • Motivation to Combine: A POSITA would combine Casagrande and Russ to implement a time-based restriction on commercial skipping, a known method to increase the financial value of advertisement content for broadcasters. The combination would predictably result in a DVR that forces viewing of commercials for an initial period before allowing skipping. A POSITA would further incorporate Miller’s multiplexing technology with the Casagrande/Russ system to achieve the known benefits of improved efficiency and reduced hardware costs in a satellite network.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as all references operate in the same technical field of DVRs and satellite/cable content delivery. The proposed modifications would involve implementing known software and hardware techniques to achieve predictable results.

Ground 2: Claims 1, 3-5, 7-11, 13-16, and 18-19 are anticipated by Dow

• Prior Art Relied Upon: Dow (Patent 7,251,413).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Dow taught every element of the challenged independent and dependent claims. Dow disclosed a DVR with a "commercial skip function" that a user can toggle between active and inactive modes, corresponding directly to the claimed "second playback state" (skipping commercials) and "first playback state" (viewing commercials). Dow’s system comprised a processor and memory for storing video programs containing both program segments (first and third portions) and commercials (second portion). Dow also explicitly taught that the commercial skip feature is always inactive during an initial buffering period (e.g., less than two minutes), which Petitioner argued established the claimed "first period of time" (when the entire program is provided) and "second period of time" (when only a portion is provided). Dow further disclosed using multiple tuners for simultaneous processing, satisfying limitations in dependent claims.

• Additional Grounds: Petitioner asserted that claims 1-20 are also obvious over Dow in view of Russ and Miller. This ground argued that to the extent Dow does not disclose certain time-based trick-play restrictions or single-channel multiplexing, these features were rendered obvious by Russ and Miller for the same reasons articulated in Ground 1.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) was not warranted. The petition asserted that the prior art references and combinations (Casagrande, Dow, Russ, Miller) were not considered by the examiner during prosecution. Regarding the Fintiv factors, Petitioner contended that the co-pending district court case was in a very early stage, with a trial date far in the future (April 2024), no claim construction briefing yet, and minimal discovery conducted. Therefore, instituting the IPR would promote judicial efficiency by narrowing issues before the district court invests significant resources.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’122 patent as unpatentable.