fuboTV Media Inc v. DISH Technologies LLC

1. Case Identification

• Case #: IPR2024-00901
• Patent #: 11,677,798
• Filed: May 13, 2024
• Petitioner(s): fuboTV Media Inc.
• Patent Owner(s): DISH Technologies L.L.C.
• Challenged Claims: 1-9, 11-19, and 21-24

2. Patent Overview

• Title: Apparatus, System, and Method For Multi-Bitrate Content Streaming
• Brief Description: The ’798 patent discloses systems and methods for adaptive-rate streaming of digital content. The technology involves encoding content into multiple streams at different bit rates, segmenting each stream into "streamlets," and allowing a client device to request and switch between streamlets from different streams based on network conditions to ensure smooth playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ogdon and Allen - Claims 1-9, 11-19, and 21-24 are obvious over Ogdon in view of Allen.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137) and Allen (International Publication No. WO 2002/075482).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ogdon taught a system for adaptive-rate streaming of a video presentation over the Internet, where content is divided into sequential segments and a client node requests appropriate quality versions based on network characteristics. However, Ogdon disclosed different versions (e.g., full animation vs. graphic slides) without specifying at least three distinct bit rate streams. Petitioner asserted that Allen remedied this by teaching that multi-bitrate streaming was well-known, including encoding video at three quality levels: low (56 kbps), medium (300 kbps), and high (600 kbps). The combination of Ogdon's adaptive client-pull system with Allen's explicit disclosure of three bit rate streams, one of which meets the 600 kbps limitation, allegedly rendered independent claims 1, 11, and 22 obvious.
  • Motivation to Combine: A POSITA would combine Allen’s teaching of three distinct quality levels with Ogdon’s adaptive streaming system to improve its functionality. This would enable Ogdon's system to serve client nodes with a wider variety of network bandwidths, a stated goal of Ogdon.
  • Expectation of Success: Petitioner contended that a POSITA would have an expectation of success because both references are in the field of client-server based streaming, and encoding content at an additional, known quality level was a simple and straightforward modification.

Ground 2: Obviousness over Ogdon, Allen, and SMIL 2.0 - Claims 1-9, 11-19, and 21-24 are obvious over Ogdon in view of Allen and SMIL 2.0.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137), Allen (WO 2002/075482), and SMIL 2.0 (W3C standard).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the arguments from Ground 1 and introduced SMIL 2.0 to address specific limitations that may be viewed as not fully taught by the primary combination. Petitioner argued that SMIL 2.0 explicitly taught creating corresponding media segments with equal playback durations (e.g., using a dur="5s" attribute within a <switch> element). This reinforced the argument that the "first streamlet" in each of the different bit rate streams would have the same duration and cover the same temporal portion, as required by claims 1, 11, and 22. Furthermore, Petitioner argued that SMIL 2.0's use of the <seq> element to generate a playlist of entire content files taught the "virtual timeline" limitation of claim 8.
  • Motivation to Combine: A POSITA would be motivated to incorporate SMIL 2.0's teachings into the Ogdon/Allen system to ensure that alternative segments had the exact same duration. This would create a perfect replacement when switching between quality levels, guaranteeing a seamless presentation for the user.
  • Expectation of Success: The combination was asserted to be predictable because all references relate to client-server streaming, and ensuring corresponding segments have equal duration is a straightforward modification to improve performance.

Ground 3: Obviousness over Ogdon, Allen, and Shteyn - Claim 16 is obvious over Ogdon in view of Allen and Shteyn.

• Prior Art Relied Upon: Ogdon (Patent 6,161,137), Allen (WO 2002/075482), and Shteyn (Patent 7,529,806).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Ogdon/Allen combination to specifically address claim 16, which requires that a plurality of streamlets are "separate files stored by the at least one server." To the extent Ogdon was found not to teach this, Petitioner argued Shteyn explicitly did. Shteyn disclosed partitioning a content file into a sequence of segments at the server side, where each segment is stored as a separate file and can be individually requested by a client.
  • Motivation to Combine: A POSITA would modify the Ogdon/Allen system to store each segment as a separate file as taught by Shteyn. This would simplify the streaming architecture by allowing clients to request individual, successive files rather than using more complex byte-range requests for portions of a single large file.
  • Expectation of Success: Petitioner argued a POSITA would expect success because both Ogdon and Shteyn describe similar client-server streaming systems, making the modification of storing segments as separate files a straightforward and predictable design choice.

4. Key Claim Construction Positions

• Petitioner submitted that most claim terms did not require construction but proposed a construction for "virtual timeline" (recited in claim 8) as "a playlist of entire content files." This construction was based on the ’798 patent’s description of a virtual timeline as a file defining a playlist for a user to view a sequence of shows, similar to a broadcast schedule.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. It asserted that Fintiv factors do not apply as no trial is scheduled in the parallel district court litigation. It further argued that denial under §325(d) is unwarranted because the asserted prior art (Ogdon, Allen, SMIL 2.0, and Shteyn) is new, noncumulative, and was not previously presented to or considered by the USPTO during prosecution. Petitioner also noted that this petition presents identical grounds to a previously filed petition by a third party (Aylo, IPR2024-00043) in which the Board has already instituted review, and that Petitioner seeks joinder with that proceeding.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9, 11-19, and 21-24 of the ’798 patent as unpatentable.