PTAB

IPR2024-01253

Hulu LLC v. Piranha Media Distribution LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Distribution of Audio, Video, and Print Media Content
  • Brief Description: The ’768 patent relates to a digital media system that adaptively selects and re-sequences advertisements in response to user playback controls. The system’s “intersplicer” modifies advertisement insertion points based on user inputs like skipping or fast-forwarding to ensure relevant ads are displayed.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Eldering-I (Application # 2002/0083439) and Eldering-II (Application # 2003/0149975).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Eldering-I disclosed the core of the claimed system, including an "ad scheduler" (the claimed intersplicer) that dynamically selects and reschedules advertisements in real-time based on changing "viewing parameters" such as viewer identity, program type, or channel selection. While Eldering-I focused on these specific parameters, Eldering-II taught a system that responds to user playback inputs (e.g., skipping, fast-forwarding) by presenting an alternative advertisement. Petitioner asserted the combination renders the claims obvious because Eldering-I’s system would be modified to treat the user playback inputs of Eldering-II as just another type of "viewing parameter" that triggers the rescheduling of advertisements. For dependent claims, Petitioner argued Eldering-II’s teaching of replacing a skipped ad with an alternative ad meets limitations requiring the new ad to be different, and Eldering-I's use of a "hybrid orthogonal-linked sponsorship model" meets limitations directed to an adaptive preference rule.
    • Motivation to Combine: A POSITA would combine the references to enhance the functionality of Eldering-I's system and improve the user experience. User inputs like skipping or fast-forwarding inherently change the viewing context (e.g., the current program, the characteristics of the next available ad slot), which are the exact types of parameters Eldering-I was designed to accommodate. A POSITA would therefore be motivated to adapt Eldering-I's dynamic scheduling to respond to these user-initiated changes. Petitioner further noted that both references share the same first-named inventor and that Eldering-II expressly incorporates Eldering-I by reference, indicating the technologies were intended to be used together.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. Both Eldering-I and Eldering-II are directed to the same technical field and devices (e.g., set-top boxes, PVRs). Implementing the known user control functionalities from Eldering-II into Eldering-I's system would involve a simple substitution of one known input trigger (e.g., a channel change) for another (e.g., a skip command) to achieve the predictable result of a rescheduled ad queue.
    • Key Aspects: Petitioner contended this combination provides the specific teachings that the PTAB found lacking in a different reference (Knepper) during the prosecution of the parent of the ’768 patent.

4. Key Claim Construction Positions

  • Term: "intersplicer"
  • Petitioner proposed that a POSITA would understand "intersplicer" to mean "software that selects advertising content and controls insertion and conveyance of advertising content in media content." Petitioner argued this construction is consistent with the patent’s claims and specification, which describe the intersplicer’s functions as selecting ads and controlling their insertion. Petitioner contended that the Patent Owner’s construction proposed in co-pending litigation—which includes limitations such as "digital rights management software" and functionality to "allow for free, unlimited viewing"—is improper because it imports limitations from the specification that are not recited in the claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate.
  • Against denial under Fintiv, Petitioner asserted that the petition presents compelling merits and that the parallel district court case is in its earliest stages, with no trial date set and no expert discovery initiated. Petitioner also noted that the presiding judge in the district court case routinely grants stays pending the outcome of post-grant proceedings.
  • Against denial under 35 U.S.C. §325(d), Petitioner argued that the primary prior art references, Eldering-I and Eldering-II, were never cited by the examiner nor submitted by the applicant during the prosecution of the ’768 patent.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-12, 14-21, 23-25, 27-29, and 31-33 of Patent 11,463,768 as unpatentable.