Aylo Freesites Ltd v. DISH Technologies LLC

1. Case Identification

• Case #: IPR2024-00519
• Patent #: 8,868,772
• Filed: January 30, 2024
• Petitioner(s): Aylo Freesites Ltd
• Patent Owner(s): DISH Technologies L.L.C.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Apparatus, System, and Method for Adaptive-Rate Shifting of Streaming Content
• Brief Description: The ’772 patent relates to adaptive-rate shifting of streaming content. The technology involves a server storing sets of video files encoded at different bit rates and a client device that repeatedly generates a network performance factor to determine the highest quality stream sustainable for continuous playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Leaning - Claims 1-21 are obvious over Leaning

• Prior Art Relied Upon: Leaning (International Publication No. WO 2002049343).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Leaning, which was not considered during prosecution, discloses all limitations of the challenged claims. Leaning teaches a method for delivering video over the internet by partitioning the content into a sequence of "sub-files." It discloses storing two or more versions of the content at different compression rates and enabling a client-side "player program" to automatically switch between these versions. The player program makes successive determinations based on network performance factors, such as the "measured rate" (actual data rate received) and "Buffer Low Percentage," to select the highest sustainable quality level for the next sub-file request. Leaning's system uses standard web servers and HTTP over TCP connections. Petitioner asserted Leaning teaches storing multiple copies as distinct sets of files, with corresponding sub-files across different bit rates representing the same playback portion and aligned via sequential numbering, thus functioning as a "time index."
  • Motivation to Combine (for §103 grounds): Not applicable (single reference).
  • Expectation of Success (for §103 grounds): Not applicable (single reference).
  • Key Aspects: Petitioner contended that to the extent Leaning’s sequential file numbering is not an explicit "time index," a POSITA would find it obvious to use a time-based naming convention (e.g., "00-04.bin") for the sub-files. This would be a predictable modification to improve file management, as Leaning already contemplated that any naming convention could be used.

Ground 2: Obviousness over Leaning in view of Gamble - Claims 2 and 9 are obvious over Leaning and Gamble

• Prior Art Relied Upon: Leaning (International Publication No. WO 2002049343) and Gamble (Application # 2004/0093420).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims 2 and 9, which add the limitation of requesting "sub-parts" of files over different TCP connections and reassembling them. Petitioner argued that Leaning provides the foundational adaptive streaming system over TCP connections. Gamble was introduced to teach the specific improvement of using multiple parallel TCP connections to request and receive different sub-parts of a single file simultaneously, which are then reassembled at the client.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Leaning's adaptive streaming system with Gamble's parallel data transfer technique for two primary reasons: to improve reliability by allowing data retrieval to continue if one connection fails, and to increase throughput by taking advantage of available bandwidth to overcome the bottleneck of a single TCP connection.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the TCP protocol inherently supports multiple connections, and using parallel connections to retrieve parts of a single file was a well-known and conventional method for improving performance in network applications.

4. Key Claim Construction Positions

• Petitioner submitted that for the purpose of institution, no special claim constructions are necessary. However, Petitioner acknowledged certain constructions adopted in a related International Trade Commission (ITC) investigation for terms like "repeatedly generating a factor." Petitioner argued that all challenged claims are unpatentable even under the ITC's constructions.

5. Arguments Regarding Discretionary Denial

• Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigations are in their earliest stages with no trial date scheduled. Further, Petitioner stipulated that if the IPR is instituted, it will not pursue any invalidity grounds in district court that were raised or could have been reasonably raised in the IPR.
• General Plastic / §325(d) Factors: Petitioner argued that denial is unwarranted because this petition is based on Leaning, a strong primary reference that was not substantively considered by the USPTO during the original prosecution of the ’772 patent. Petitioner asserted that it was diligent in filing the petition shortly after discovering the Leaning reference and that Leaning is materially different from the prior art previously considered by the Examiner and the art cited in a separate, prior IPR filed by Petitioner ("Ogdon-based IPR").

6. Relief Requested

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