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 Data Management
• Brief Description: The ’122 patent describes a digital video recorder (DVR) system for time-shifting video programs. The system addresses the issue of viewers skipping commercials by providing different playback modes, including one that forces viewing of certain content (e.g., ads) for a period of time before allowing features like commercial skipping.

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 discloses the core DVR system, which can receive a video stream, identify program segments and interstitials (commercials), and output a modified stream with interstitials removed. Miller teaches a system that concurrently processes multiple programs communicated via a single multiplexed signal to improve efficiency, a feature Petitioner contended would be an obvious modification to Casagrande's DVR. Russ discloses time-based restrictions on trick-play functionality (e.g., precluding commercial skipping for a specified period like two weeks). Petitioner asserted that combining these references teaches a DVR that processes multiplexed programs and enforces time-based rules for playback, mapping to the limitations of independent claims 1, 11, and 18.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Casagrande and Miller to improve the efficiency and reduce the cost of a DVR system by using a single tuner for multiple programs. A POSA would further incorporate Russ’s time-limited playback restrictions to create a commercially valuable system where content providers can ensure advertisements are viewed for an initial period, thus increasing their value, before allowing users to skip them.
  • Expectation of Success: Petitioner contended a POSA would have a reasonable expectation of success, as combining these known elements involved implementing established software and hardware techniques (multiplexing, time-based flags) into a standard DVR architecture to achieve the predictable result of a more efficient and commercially flexible system.

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 argued that Dow discloses all limitations of the challenged claims. Dow describes a DVR that enhances navigation of stored content by identifying program segments and commercials. It features a commercial-skip function that can be toggled between active ("second playback state") and inactive ("first playback state") modes. Critically, Petitioner asserted that Dow teaches the commercial skip function is always inactive during an initial period (e.g., less than two minutes) required for processing and buffering, which corresponds to the ’122 patent’s "first period of time." After this initial period, the user can enable commercial skipping, corresponding to the "second period of time." In the second playback state, Dow’s DVR presents the program segments (the claimed "first and third portions") sequentially while skipping the commercials (the "second portion").

Ground 3: Claims 1-20 are obvious over Dow in view of Russ and Miller.

• Prior Art Relied Upon: Dow (Patent 7,251,413), Russ (Application # 2006/0225105), and Miller (Application # 2009/0165057).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, arguing that to the extent Dow alone does not render the claims unpatentable, the combination with Russ and Miller does. Miller was cited for its explicit teaching of using a single tuner to receive a multiplexed signal containing multiple programs, which would have been an obvious way to improve the efficiency of Dow’s system. Russ was cited for its teaching of applying trick-play restrictions for a specified, and potentially longer, duration (e.g., two weeks), which a POSA would see as a more commercially advantageous implementation of the playback restrictions hinted at in Dow.
  • Motivation to Combine: A POSA would combine Dow with Miller to realize the known benefits of resource savings and improved efficiency in a satellite network. A POSA would have also been motivated to supplement Dow’s basic, buffering-related playback restriction with Russ's more flexible, time-based restriction to implement a system that deactivates commercial skipping for a commercially significant period, thereby increasing the value of advertisements.
  • Expectation of Success: Petitioner argued that implementing Miller's multiplexing and Russ's time-based software restrictions into Dow's DVR system would have been a straightforward integration of known technologies to achieve the predictable benefits of improved efficiency and enhanced content monetization.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) is not warranted. The primary prior art references (Casagrande, Dow, Russ) were not considered during the original prosecution of the ’122 patent, presenting new information to the Board.
• Regarding the Fintiv factors, Petitioner asserted that the co-pending district court litigation is in a very early stage. A motion to transfer venue was pending, no substantive orders had been issued, no Markman hearing was scheduled, and discovery was minimal. Petitioner contended that the scheduled trial date is not proximate and that the strong merits of the petition outweigh any potential inefficiencies of parallel proceedings, arguing that institution would promote judicial efficiency by narrowing issues for litigation.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 9,538,122 as unpatentable.