Peloton Interactive Inc v. Nec Corp

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition Analysis

## 1. Case Identification
- Case #: [IPR2023-01240](https://ai-lab.exparte.com/case/ptab/IPR2023-01240)
- Patent #: [9,769,427](https://ai-lab.exparte.com/patent/9769427)
- Filed: July 27, 2023
- Petitioner(s): [Peloton Interactive, Inc](https://ai-lab.exparte.com/party/peloton-interactive-inc).
- Patent Owner(s): [NEC Corporation](https://ai-lab.exparte.com/party/nec-corp)
- Challenged Claims: 1-9, 14-18, 20, 22, 32, 34-36

## 2. Patent Overview
- Title: Video-on-Demand System with Dynamic Content Insertion
- Brief Description: The [’427 patent](https://ai-lab.exparte.com/case/ptab/IPR2023-01240/doc/1001) discloses a content delivery system for transmitting video-on-demand (VoD) content to user equipment. The system uses connection control servers to establish a connection and guarantee bandwidth, while an application server selects and inserts sub-content (e.g., advertisements) into a main content stream based on user-specific attributes, delivering both along with a playlist.

## 3. Grounds for Unpatentability

#### Ground 1: Obviousness over Ueda, SIP Standard, and SDP Standard - Claims 1, 4-9, 14, 16, 18, 20, 22, 32, and 34-36 are obvious over Ueda in view of the SIP Standard and SDP Standard.
- **Prior Art Relied Upon:** [Ueda](https://ai-lab.exparte.com/case/ptab/IPR2023-01240/doc/1003) (Application # 2009/0094321), [SIP Standard](https://ai-lab.exparte.com/case/ptab/IPR2023-01240/doc/1004) (RFC 3261), and [SDP Standard](https://ai-lab.exparte.com/case/ptab/IPR2023-01240/doc/1005) (RFC 4566).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that Ueda taught the core system, including an application server that delivers main content (movies) and sub-content (commercials) with a playlist to user equipment based on user information. The SIP Standard was argued to supply the claimed "connection control servers" as well-known proxy servers that establish and manage media sessions. The SDP Standard allegedly provided the standard protocol for describing session details, such as bandwidth, within the SIP messages used to establish the connection.
    - **Motivation to Combine:** A POSITA would combine Ueda's content system with the ubiquitous IETF protocols SIP Standard and SDP Standard to implement a robust, predictable, and standardized method for establishing media sessions, locating servers, and conveying session metadata over the Internet.
    - **Expectation of Success:** Petitioner asserted that combining these standard internet protocols with a content delivery system was a well-understood and predictable implementation choice with a high expectation of success.

#### Ground 2: Obviousness over Ueda, SIP Standard, and Bechtolsheim - Claims 1, 4-9, 14, 16, 18, 20, 22, 32, and 34-36 are obvious over Ueda in view of the SIP Standard and Bechtolsheim.
- **Prior Art Relied Upon:** Ueda (Application # 2009/0094321), SIP Standard (RFC 3261), and [Bechtolsheim](https://ai-lab.exparte.com/case/ptab/IPR2023-01240/doc/1006) (Application # 2009/0100496).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground leveraged Ueda and the SIP Standard as in Ground 1 but substituted Bechtolsheim for the SDP Standard to explicitly teach executing a bandwidth guarantee process "at a same time" as transmitting a playlist. Petitioner alleged Bechtolsheim disclosed a stream system that determines bandwidth requirements for content segments and executes a process to guarantee that bandwidth concurrently with assembling a content playlist.
    - **Motivation to Combine:** A POSITA would have been motivated to incorporate Bechtolsheim's teachings to improve the quality of service of the Ueda/SIP system by maintaining video quality and avoiding bandwidth over-subscription, a motivation explicitly taught by Bechtolsheim itself.
    - **Expectation of Success:** Integrating a known bandwidth management technique like that in Bechtolsheim into a SIP-based content delivery system was presented as a predictable design choice for improving system performance.

#### Ground 3 & 4: Obviousness over Ueda, Core Standards, and Cohee - Claims 2, 3, 15, and 17 are obvious over Ueda and the SIP Standard, in view of either SDP Standard or Bechtolsheim, and further in view of Cohee.
- **Prior Art Relied Upon:** Ueda (Application # 2009/0094321), SIP Standard (RFC 3261), SDP Standard (RFC 4566), Bechtolsheim (Application # 2009/0100496), and [Cohee](https://ai-lab.exparte.com/case/ptab/IPR2023-01240/doc/1007) (Application # 2010/0010884).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** These grounds built upon the combinations in the preceding grounds, adding Cohee to address limitations in dependent claims 2, 3, 15, and 17. Petitioner argued Cohee taught a user equipment transmitting a content viewing request to a remote ad server, with the request containing identification information for media clips. This was mapped to the claim language requiring the user equipment to transmit main and sub-content viewing requests to the application server.
    - **Motivation to Combine:** A POSITA would combine Cohee's remote request methodology with Ueda's system to make it possible for media clips to reside at any remote server location. This would advantageously reduce local storage requirements on the user device and mitigate privacy risks associated with local content storage.

## 4. Key Claim Construction Positions
- **"equipment specification information":** Petitioner proposed this term be construed as "an identifier for identifying the user equipment." This construction was based on examples in the ’427 patent specification (e.g., "alice@atlanta.com") that function as identifiers in standard SIP INVITE messages.
- **"process for guaranteeing a communication bandwidth...":** Petitioner argued this phrase should cover the process described in the patent's sole embodiment, where a connection control system executes a standard bandwidth guarantee process via SIP messages. Petitioner contended the patent's lack of specific detail implies reliance on conventional SIP server functions known to a POSITA.
- **"at a same time...transmit[ting] the play-list information...":** Petitioner argued this term should be construed to mean transmitting the playlist information together with the process of establishing the connection to ensure the playlist is delivered immediately upon connection. This construction was based on the Patent Owner's own characterization of the invention during prosecution to distinguish it from prior art.

## 5. Arguments Regarding Discretionary Denial
- Petitioner argued that discretionary denial of institution would be inappropriate.
- **Under §325(d):** Denial was argued to be improper because the petition relied on prior art references and arguments that were not previously presented to or considered by the Office during prosecution.
- **Under *Fintiv*:** Petitioner asserted the *Fintiv* factors strongly favored institution. The parallel district court case was in its early stages, with claim construction briefing not yet begun and a trial date set far in the future (March 31, 2025). To further mitigate concerns about inefficiency and issue overlap, Petitioner stated its intent to file a *Sotera* stipulation, agreeing not to pursue in district court any grounds raised or that reasonably could have been raised in the IPR.

## 6. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 14-18, 20, 22, 32, and 34-36 of Patent 9,769,427 as unpatentable under 35 U.S.C. §103.

Peloton targets video-on-demand patent: Ueda & SIP standards cited for 20 claims as obvious over dynamic ad insertion & session controls.