Hulu LLC v. Piranha Media Distribution LLC

1. Case Identification

• Case #: IPR2024-01252
• Patent #: 11,463,768
• Filed: August 22, 2024
• Petitioner(s): Hulu, LLC
• Patent Owner(s): Piranha Media Distribution, LLC
• Challenged Claims: 1-3, 5-12, 14-21, 23-25, 27-29, 31-33

2. Patent Overview

• Title: Adaptive Advertisement Insertion in Digital Media Systems
• Brief Description: The ’768 patent relates to systems for distributing digital media content. Its purportedly inventive concept is to adaptively select and re-sequence advertisements for display in response to user playback controls, such as skipping a previously scheduled advertisement.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-12, 14-21, 23-25, 27-29, and 31-33 are obvious over Wu in view of Doherty.

• Prior Art Relied Upon: Wu (Patent 7,877,766) and Doherty (Application # 2003/0200128).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wu taught a digital media playback system that responds to a user skipping an advertisement by displaying a "sub-advertisement" to prevent complete avoidance of advertising. While Wu provided this basic framework, Petitioner asserted it lacked a specific mechanism for dynamically rescheduling the replacement ad. Doherty allegedly supplied this missing element by teaching a sophisticated scheduling system for displaying information, including advertisements. Doherty’s system used a "scheduler" (the claimed "intersplicer") that, in response to user input, would clear an existing ad schedule and create a new one. This new schedule would be sent to an "output compiler" (the claimed "advertisement rotator") for presentation. Petitioner contended that combining Wu's base system with Doherty's dynamic, priority-based scheduling teaches all limitations of the independent claims, including changing a predetermined ad insertion point to an adapted one in response to user input. The dependent claims were allegedly met by further teachings in the combination, such as Doherty's use of priority profiles based on time and other factors.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Doherty's advanced scheduling technique with Wu's system to improve its functionality. Wu's disclosure of inserting a replacement ad was open-ended regarding the timing, inviting a known and flexible solution like that taught by Doherty. A POSITA would be motivated to use Doherty's priority-based scheduling to implement a more intelligent ad placement method in Wu's system, thereby yielding predictable results and enhancing the user experience by, for example, allowing a delayed presentation of the replacement ad.
  • Expectation of Success: A POSITA would have a high expectation of success in making this combination. Petitioner argued that integrating known software modules for content scheduling and ad retrieval was a routine and conventional practice at the time. Applying Doherty’s priority-based scheduling logic to Wu's system involved well-understood software principles.

4. Key Claim Construction Positions

• "intersplicer": Petitioner proposed this term should be construed as "software that selects advertising content and controls insertion and conveyance of advertising content in media content." Petitioner argued this construction is consistent with the specification's description of the intersplicer's function. This proposal was contrasted with the Patent Owner's construction from a parallel district court litigation, which Petitioner contended improperly imported unsupported limitations from the specification, such as requiring the intersplicer to be "digital rights management software" or to "allow for free, unlimited viewing."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Against denial under the Fintiv factors, Petitioner asserted that the petition's merits are compelling and that the parallel district court case is in its early stages, with discovery incomplete and no trial date set. Against denial under 35 U.S.C. §325(d), Petitioner argued that the primary prior art references, Wu and Doherty, were not cited or considered during the original prosecution of the ’768 patent, and therefore present new questions of patentability for the Board to consider.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-3, 5-12, 14-21, 23-25, 27-29, and 31-33 of the ’768 patent as unpatentable.