Roku Inc v. Anonymous Media Research Holdings LLC

1. Case Identification

• Case #: IPR2024-01058
• Patent #: 10,719,849
• Filed: July 17, 2024
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Anonymous Media Research Holdings LLC
• Challenged Claims: 1-13

2. Patent Overview

• Title: Media Measurement Using Exogenous Data
• Brief Description: The ’849 patent discloses a media measurement system that identifies media content by analyzing a sequence of captured data samples. The system generates a "play stream" of content identifiers and uses the sequential order of these identifiers to determine a corresponding "channel," such as a broadcast station or media album.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wang777 and Wang060 - Claims 1, 5-6, 9-10, and 13 are obvious over Wang777 in view of Wang060.

• Prior Art Relied Upon: Wang777 (Application # 2007/0143777) and Wang060 (Application # 2002/0083060).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang777 taught a method for identifying a broadcast source by matching media samples, timestamping them, and comparing them to samples from known broadcast stations. While Wang777 focused on audio, the combination with Wang060 (which Wang777 explicitly incorporated by reference) extended this method to video samples. Wang060 disclosed generating a candidate list or log file of identified content, which Petitioner equated to the claimed "play stream." The combination taught generating content identifiers for a sequence of samples and using that sequence to identify the source channel.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references because Wang777 explicitly incorporated Wang060 by reference and described using its techniques. Both references addressed the same problem of identifying media content and its source, making the combination a predictable application of known technologies to improve a system.
  • Expectation of Success: A POSA would have a high expectation of success, as the combination involved incorporating the well-known content identification and logging process of Wang060 into the broadcast monitoring system of Wang777 to achieve predictable results.

Ground 2: Obviousness over Wang777, Wang060, Herley682, and Seet - Claims 2-4, 7-8, and 11-12 are obvious over Wang777 and Wang060 in view of Herley682 and Seet.

• Prior Art Relied Upon: Wang777 (Application # 2007/0143777), Wang060 (Application # 2002/0083060), Herley682 (Application # 2004/0260682), and Seet (Application # 2005/0193016).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the base combination of Wang777 and Wang060 to address dependent claims related to processing a "raw play stream." Petitioner asserted that situations would arise where content could not be identified, resulting in missing or incorrect data in the play stream. Herley682 taught a system that handled unmatched fingerprints by storing them as "unknown objects" for later manual identification. Seet provided an automated improvement by teaching a method to "infer" the identity of an unmatched sample by analyzing the temporal consistency of surrounding, correctly identified samples. This combination disclosed the claimed step of "converting a raw play stream" by scrubbing it for missing or incorrect data.
  • Motivation to Combine: A POSA would be motivated to add Herley682 and Seet to the base combination to handle the known problem of incomplete or incorrect content identification. A POSA would further combine Seet's automated inference technique with Herley682's system to improve efficiency and data reliability by automating a manual correction process.
  • Expectation of Success: The combination was a predictable application of known data imputation and correction techniques (from Seet) to a known media identification system (Wang777/Wang060/Herley682) to improve its accuracy.

Ground 3: Obviousness over Pitman, Schrempp, and Wells - Claims 1-13 are obvious over Pitman in view of Schrempp and Wells.

• Prior Art Relied Upon: Pitman (Application # 2002/0116195), Schrempp (Application # 2003/0018709), and Wells (Application # 2003/0086341).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pitman disclosed a system for identifying audio content (including audio from video like a DVD) and related products, such as an album or movie, which corresponds to the claimed "channel." Schrempp was added for its teaching of generating a "playlist" (equated with the claimed "play stream") by recording content identifications over time. However, Pitman and Schrempp did not explicitly teach using a sequence of multiple identifiers to confirm the channel identity. Wells supplied this missing element by teaching that content is identified only if a number of consecutive fingerprints match the same content, reducing the likelihood of a mismatch.
  • Motivation to Combine: A POSA would combine Pitman and Schrempp to provide identification results in a well-known playlist format. A POSA would then incorporate the teachings of Wells to improve the reliability of the system. Using multiple consecutive content items to identify a broader source (like an album or movie) would be an obvious way to resolve ambiguity when a single song appears on multiple albums, thereby improving the system's accuracy.
  • Expectation of Success: The combination involved applying a known technique for improving identification accuracy (from Wells) to a known content identification system (Pitman/Schrempp), which would have yielded predictable results.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner dedicated a substantial argument that the ’849 patent was not entitled to its May 27, 2004 provisional priority date. Petitioner contended the provisional application lacked adequate written description support under 35 U.S.C. §112 for the key limitation of using a "sequential order of at least two different obtained content identifiers... to identify a channel." This argument, if successful, establishes a later effective filing date of May 26, 2005 for the patent, confirming the prior art status of references like Wang777 and Seet.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued that discretionary denial under Fintiv was inappropriate because, concurrent with the petition, it filed a stipulation agreeing not to pursue the same grounds or any grounds that could have been reasonably raised in the IPR in the parallel district court litigation if the IPR is instituted.
• §325(d): Petitioner argued that denial under §325(d) was inappropriate because the Examiner did not consider the asserted combinations during prosecution. While Wang777 and Wang060 were cited individually, they were not combined as argued in the petition. Furthermore, key references central to the challenges, including Herley682, Seet, Pitman, Schrempp, and Wells, were never before the Examiner, constituting a material error in the original examination.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-13 of the ’849 patent as unpatentable.