PTAB

IPR2023-01241

PeloTon Interactive Inc v. NEC Corp

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1. Case Identification

2. Patent Overview

  • Title: Content Delivery System, Content Delivery Method, Server System, and User Equipment
  • Brief Description: The ’427 patent discloses a video-on-demand (VoD) content delivery system. The system delivers main content (e.g., a movie) along with selected sub-content (e.g., advertisements) to user equipment, where the sub-content is selected based on user information.

3. Grounds for Unpatentability

Ground 1: Claims 10, 12, 21, and 33 are obvious over Ueda, SIP Standard, and SDP Standard.

  • Prior Art Relied Upon: Ueda (Application # 2009/0094321), SIP Standard (RFC 3261), and SDP Standard (RFC 4566).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ueda taught the core content delivery system, including a server that provides main content, sub-content (advertisements), and a playlist to user equipment based on user preferences. However, Ueda did not explicitly use standard internet protocols for session management. The SIP Standard was argued to supply the claimed "connection control servers" through its disclosure of proxy servers that establish and manage media sessions between endpoints using logical addresses. The SDP Standard, used in conjunction with SIP, was alleged to provide a standard method for describing the multimedia session, including necessary bandwidth information.
    • Motivation to Combine: Petitioner contended a POSITA would combine these references to improve Ueda’s system by implementing a well-known, standardized protocol (SIP) for establishing connections and managing sessions over the internet. Using SIP and SDP would be a predictable way to provide intermediating resources for media sessions, standardize interactions, and improve security through SIP's authentication features.
    • Expectation of Success: Petitioner asserted success was expected because SIP and SDP were established, technically competent Internet standards designed for the exact purpose of initiating and describing multimedia sessions.

Ground 2: Claims 10, 12, 21, and 33 are obvious over Ueda, SIP Standard, and Bechtolsheim.

  • Prior Art Relied Upon: Ueda (Application # 2009/0094321), SIP Standard (RFC 3261), and Bechtolsheim (Application # 2009/0100496).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground maintained the core teachings of Ueda (content delivery system) and SIP Standard (connection control) from Ground 1. Bechtolsheim was introduced to teach the limitation of executing a process to guarantee bandwidth at the same time as transmitting playlist information. Bechtolsheim was alleged to disclose a stream system that determines bandwidth requirements for content segments and executes a bandwidth guarantee process concurrently with preparing a playlist (metadata file) for those segments.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Bechtolsheim's teachings to maintain video quality and efficiently manage network resources in the Ueda/SIP system. Bechtolsheim itself was said to motivate this combination by teaching that failing to manage bandwidth can lead to poor quality video.
    • Expectation of Success: The combination was presented as the application of a known technique (concurrent bandwidth reservation and playlist generation) to a known system (a SIP-based VoD system) to achieve a predictable improvement in performance.

Ground 3 & 4: Claims 11, 13, 19, and 23 are obvious over Ueda, SIP Standard, Cohee, and either SDP Standard or Bechtolsheim.

  • Prior Art Relied Upon: Ueda (Application # 2009/0094321), SIP Standard (RFC 3261), Cohee (Application # 2010/0010884), and either SDP Standard (RFC 4566) or Bechtolsheim (Application # 2009/0100496).
  • Core Argument for this Ground:
    • Prior Art Mapping: These grounds built upon the combinations in Grounds 1 and 2 to address limitations in dependent claims. Cohee was introduced to teach a user equipment transmitting a viewing request for media clips that are referenced in a received playlist. Cohee allegedly disclosed a viewer client computer that requests specific media files from a server based on a playlist, with the playlist containing references to separately stored media clips.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to combine Cohee with the base Ueda/SIP system to add flexibility, allowing media clips (e.g., advertisements) to be stored remotely and requested on-demand rather than pre-stored locally. This was argued to reduce local storage requirements on user equipment and enhance content provider control.
    • Expectation of Success: Integrating this known method of requesting playlist-referenced content into a standard VoD system was asserted to be a straightforward design choice with a high expectation of success.

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, such as SIP INVITE messages containing user identifiers like "alice@atlanta.com."
  • “process for guaranteeing a communication bandwidth”: Petitioner argued this phrase should cover the standard process performed by SIP servers using SIP messages as described in the ’427 patent’s only embodiment. The petition contended the patent did not elaborate on a specific process, implying reliance on conventional methods known to a POSITA.
  • “at a same time…transmit[ting] the play-list information”: Petitioner proposed this term should, at a minimum, cover the embodiment where playlist information is transmitted within a standard SIP "OK" message upon completion of a bandwidth guarantee process. This timing was argued to be a standard feature of SIP-based systems.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d), stating that the petition relied on prior art and arguments not previously presented to or considered by the USPTO during prosecution.
  • Regarding potential denial under Fintiv, Petitioner contended that the parallel district court case was in its early stages, with claim construction briefing not yet begun and trial not scheduled until March 2025. Petitioner also stated its intent to file a Sotera stipulation, promising not to pursue the same invalidity grounds in district court if an inter partes review (IPR) is instituted.

6. Relief Requested

  • Petitioner requests the institution of an IPR and the cancellation of claims 10-13, 19, 21, 23, and 33 of the ’427 patent as unpatentable.