Aylo Freesites Ltd v. DISH Technologies LLC

1. Case Identification

• Case #: IPR2024-00048
• Patent #: 8,868,772
• Filed: October 13, 2023
• Petitioner(s): Aylo Freesites Ltd
• Patent Owner(s): DISH Technologies L.L.C.
• Challenged Claims: 1, 3-8, and 10-21

2. Patent Overview

• Title: Apparatus, System, and Method for Adaptive-Rate Shifting of Streaming Content
• Brief Description: The ’772 patent discloses a method for adaptive bitrate streaming where a client-side media player requests sequential video files from servers. The video is stored in multiple copies at different quality levels, and the media player automatically shifts between these copies based on network performance factors to ensure continuous playback.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-8, and 10-21 are obvious over Ogdon.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ogdon discloses all limitations of the challenged claims. Ogdon teaches a "client-request" system for distributing a video presentation over the internet from webservers to client nodes. The presentation is divided into multiple files ("segments" or "elements"), with different versions available at varying quality levels (e.g., full vs. limited animation) corresponding to different bitrates. Ogdon’s client software automatically and successively requests these segments and dynamically switches between versions based on calculated network characteristics, such as available bandwidth, to ensure timely playback. The segments across different versions correspond in playback time, effectively teaching the claimed time indexes.
  • Motivation to Combine: While this is a single-reference ground, Petitioner argued that to the extent Ogdon does not explicitly teach using a plurality of TCP connections, a person of ordinary skill in the art (POSITA) would have been motivated to modify Ogdon’s system to do so. The motivation would be to increase reliability (providing a backup if one connection fails), improve efficiency through parallel downloading, and ensure a sufficient data buffer for continuous playback, especially when accessing content from different servers.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in implementing multiple TCP connections, as the TCP protocol was well-known to support this functionality and its use was a common method for improving streaming performance.

Ground 2: Claims 1, 3-8, and 10-21 are obvious over Ogdon in view of Shteyn and Chou.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137), Shteyn (Patent 7,529,806), and Chou (Patent 6,637,031).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner incorporated its arguments from Ground 1 and asserted that to the extent Ogdon is found deficient, Shteyn and Chou supply the missing elements. Shteyn was cited for its clear teaching of partitioning a content file into a sequence of segments, with multiple alternative files stored for each segment at different bitrates (disclosed as different lengths and bandwidth requirements). Shteyn’s client application automatically selects the appropriate segment version to download based on changing network conditions. Chou was cited for its express teachings on minimizing start-up delay by initially transmitting a low-resolution, low-bitrate stream to begin playback quickly, and then upshifting to a higher-quality stream once the client buffer is sufficiently full. Chou also explicitly identifies network jitter as a key factor to monitor for sustaining a stream.
  • Motivation to Combine: A POSITA would combine these references to improve upon Ogdon's system. Shteyn’s teachings would be used to refine Ogdon’s file structure, confirming the common practice of storing discrete, alternative-quality files for each video segment. A POSITA would be motivated to incorporate Chou’s method for reducing start-up delay—a problem Chou described as "particularly annoying" for users—by starting with a low-quality stream. The combination would result in a more robust and user-friendly adaptive streaming system that starts faster and more reliably adapts to network fluctuations like jitter.
  • Expectation of Success: A POSITA would have had a high expectation of success because all three references address the same field of adaptive streaming media over a network. Combining their respective solutions for file segmentation, quality switching, and start-up delay management would have been a straightforward integration of known techniques to solve well-understood problems in the art.

4. Key Claim Construction Positions

• Petitioner asserted that no specific claim constructions were necessary for institution.
• However, Petitioner acknowledged constructions from a related International Trade Commission (ITC) investigation for family members of the ’772 patent, including:
  • "repeatedly generating a factor" was construed as "generating a factor more than once."
  • "successive determinations" was construed according to its plain and ordinary meaning.
• Petitioner maintained that the challenged claims are unpatentable even under these constructions from the ITC.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors is unwarranted. The co-pending district court litigations are in their earliest stages, with no trial date set, no significant discovery conducted, and no claim construction orders issued. Petitioner also stipulated that it would not pursue any invalidity grounds in the district court that were raised or could have been reasonably raised in the IPR.
• Petitioner further argued that denial under §325(d) is inappropriate because the primary references asserted in the petition—Ogdon, Shteyn, and Chou—are new. None of these references were cited or considered during the original prosecution of the ’772 patent, meaning the U.S. Patent and Trademark Office has not previously considered these specific invalidity arguments.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-8, and 10-21 of the ’772 patent as unpatentable.