Aylo Freesites Ltd v. DISH Technologies LLC

1. Case Identification

• Case #: IPR2024-00147
• Patent #: 10,757,156
• Filed: November 7, 2023
• Petitioner(s): Aylo Freesites Ltd
• Patent Owner(s): DISH Technologies L.L.C.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Apparatus, System, and Method for Adaptive-Rate Shifting of Streaming Content
• Brief Description: The ’156 patent describes a system for adaptive bitrate streaming where a server stores multiple copies of a video, encoded at different bitrates, as sets of sequential "streamlets." A client device repeatedly generates a network performance "factor" to dynamically select and request streamlets from the highest quality copy determined to be sustainable for continuous playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ogdon - Claims 1-17 are obvious over Ogdon.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Ogdon teaches all limitations of the challenged claims. Ogdon discloses a client-server system for distributing video presentations over the Internet where a client adaptively switches between different quality versions (e.g., "full-animation" vs. "graphic slides") of the content. This content is divided into sequential "segments" (the claimed "streamlets") stored on webservers. Petitioner asserted that Ogdon's client adaptively selects the quality of the next segment based on network transmission characteristics, such as available bandwidth, which constitutes the claimed "factor." The client's process of repeatedly determining network conditions to select the next segment from the highest quality available version in a client-request model meets the core limitations of the challenged claims.
  • Motivation to Combine: While this is a single-reference ground, Petitioner argued that to the extent Ogdon does not explicitly teach using HTTP GET requests, a POSITA would be motivated to use this standard protocol. GET requests represented a finite, predictable, and universally known solution for implementing Ogdon's "client-request" technology for fetching files from a webserver.
  • Expectation of Success: A POSITA would have a high expectation of success in using standard HTTP GET requests because it is a reliable and ubiquitous protocol for data retrieval over the Internet, ensuring compatibility and functionality.

Ground 2: Obviousness over Ogdon and Ala-Honkola - Claims 1-17 are obvious over Ogdon in view of Ala-Honkola.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137) and Ala-Honkola (Application # 2003/0055995).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that to the extent Ogdon's teachings are considered incomplete, Ala-Honkola explicitly supplies the missing elements. Ala-Honkola teaches an adaptive streaming system where a client uses HTTP GET requests over multiple TCP connections to fetch video data. Crucially, Ala-Honkola discloses using "timing marks" embedded in the media streams that correlate to specific byte locations. This allows a client to request a specific portion of a different quality stream corresponding to the current playback time, directly teaching the limitation of requesting streamlets "according to the playback times."
  • Motivation to Combine: A POSITA would combine Ala-Honkola's explicit use of HTTP GET requests and timing-based requests with Ogdon's adaptive streaming framework. This combination would create a more robust and precise system, a well-understood goal in the art. Using timing marks as taught by Ala-Honkola would allow for a seamless viewing experience when switching quality levels, directly addressing a known problem that Ogdon's system also sought to solve.
  • Expectation of Success: The combination would be predictable and successful because both references operate in the same field of adaptive client-server streaming and address the common goal of adjusting stream quality based on network conditions.

Ground 3: Obviousness over Ogdon and Shteyn - Claims 4 and 7 are obvious over Ogdon in view of Shteyn.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137) and Shteyn (Patent 7,529,806).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses specific limitations in claims 4 and 7 requiring that each streamlet is a "separate file" and that HTTP GET requests identify that separate file. Petitioner argued that if Ogdon is found not to teach this specific file structure, Shteyn explicitly does. Shteyn discloses partitioning a content file into a sequence of segments where the server stores "multiple alternative files corresponding to a given segment," each encoded at a different bitrate.
  • Motivation to Combine: A POSITA would be motivated to implement Ogdon's system using Shteyn's separate file architecture as a simple and known design choice. Storing each segment as an individual file simplifies client requests (requiring only a standard GET request for a specific filename) and was a well-known alternative to storing an entire video as a single file and requesting specific byte ranges.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as this combination merely involves selecting one of two known, equivalent, and predictable methods for segmenting and storing video files for adaptive streaming.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Ogdon and Ala-Honkola with Chou (Patent 6,637,031) to teach initially requesting low-quality streamlets for faster startup (claims 10 and 12), and with SMIL 2.0 to explicitly teach upshifting and downshifting based on defined bitrate thresholds (claims 8 and 14).

4. Key Claim Construction Positions

• Petitioner submitted that no specific claim constructions were necessary for institution.
• However, Petitioner acknowledged constructions from a related ITC Investigation, including construing "streamlet" as "any sized portion of the content file" and interpreting "factor relating to the performance of the network" according to its plain meaning.
• Petitioner contended that all challenged claims are unpatentable even under the ITC's constructions, while reserving the right to challenge those constructions in other proceedings.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the co-pending district court litigation is in its earliest stages, with no trial date or significant milestones set. Petitioner also stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court action.
• Petitioner also argued against denial under §325(d), stating that the core prior art references relied upon in the petition (Ogdon, Shteyn, Chou, and SMIL 2.0) were never presented to or considered by the USPTO during the original prosecution of the ’156 patent.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-17 of Patent 10,757,156 as unpatentable.