Altice USA Inc v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2024-01262
• Patent #: 8,356,251
• Filed: August 16, 2024
• Petitioner(s): Altice USA, Inc.
• Patent Owner(s): Touchstream Technologies, Inc.
• Challenged Claims: 1-26

2. Patent Overview

• Title: Play Control of Content on a Display Device
• Brief Description: The ’251 patent describes a server-based system for controlling video content on a display device (e.g., a television) using a separate personal computing device (e.g., a mobile phone). The system facilitates a connection between the devices, often using a synchronization code, allowing the computing device to act as a remote control that sends commands through the server, which then converts them into specific commands for the media player on the display device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Danciu, Mahajan, and Calvert - Claims 1-26 are obvious over Danciu in view of Mahajan and Calvert.

• Prior Art Relied Upon: Danciu (Patent 9,490,998), Mahajan (Application # 2009/0248802), and Calvert (Application # 2004/0078812).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Danciu taught the core client-server architecture for controlling a display device (a "controlled device") with a remote computing device. Danciu disclosed pairing the devices using a unique identifier or QR code (the claimed "synchronization code"), sending control messages from the remote to the server, and relaying them to the controlled device. However, Petitioner contended Danciu did not explicitly detail command translation or selection from multiple media players. To address this, Mahajan was introduced to teach a client-server system that translates universal playback commands (e.g., "play," "pause") into platform-specific commands using an API and look-up tables. Further, Calvert was added to teach a system where a playback device, upon receiving content information, determines the required media format and selects the appropriate player from a plurality of available players (e.g., RealPlayer, QuickTime), downloading a new one if necessary.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Danciu's remote control system with Mahajan's known command translation techniques to improve interoperability between disparate devices (like a mobile phone remote and a set-top box), which would likely use different applications. A POSITA would have been further motivated to incorporate Calvert's teachings to support multiple media players (e.g., YouTube, Netflix, Hulu, as suggested by Danciu) and provide users with more content options, a common goal in streaming media systems.
  • Expectation of Success: Success was expected because combining these elements involved applying known techniques (command translation, media player selection) to improve a known type of system (remote media control) to yield predictable results.

Ground 2: Obviousness over Aldrey and Mahajan - Claims 1-26 are obvious over Aldrey in view of Mahajan.

• Prior Art Relied Upon: Aldrey (Application # 2009/0172757) and Mahajan (Application # 2009/0248802).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Aldrey, like Danciu, disclosed a base system for remotely controlling a display device (a set-top box or television) from an end terminal (a personal computing device) through a media service provider's network. Aldrey taught registering devices using unique identifiers like serial numbers or MAC addresses (the "synchronization code") to establish an association and allow the end terminal to send control commands. As with the Danciu-based ground, Petitioner argued that Mahajan supplies the missing element of translating universal commands into device-specific programming code. Mahajan’s system, which uses an API and mapping tables to convert generic commands for use by a specific client media platform, was argued to be directly applicable to Aldrey's architecture.
  • Motivation to Combine: A POSITA would combine Mahajan’s command translation system with Aldrey's remote-control framework for the same reasons as with Danciu: to solve the predictable problem of command incompatibility between a remote terminal (like a mobile phone) and a display device (like a television) which use different software. Applying Mahajan's known technique to Aldrey's similar system was presented as a straightforward implementation to improve functionality.
  • Expectation of Success: A POSITA would have expected success in applying Mahajan's teachings to the similar Aldrey system, as the improvements were directed to a common computing environment and involved well-understood software integration principles.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 1-26 based on the combination of Danciu and Mahajan alone, but relied on similar arguments for the combination.

4. Arguments Regarding Discretionary Denial

• §314(a) / Fintiv: Petitioner argued against discretionary denial under Fintiv, stating that: (1) it has filed a motion to stay the parallel district court litigation pending the IPR; (2) no trial date has been set in the litigation, and the Markman hearing is not scheduled until February 2025; (3) the petition challenges all 26 claims, whereas the litigation asserts only a subset (claims 1-2, 5, and 7-9), demonstrating the IPR's greater efficiency; and (4) Petitioner stipulated that it would not pursue the same invalidity grounds in district court if the IPR is instituted.
• §325(d): Petitioner argued against denial under §325(d), noting that none of the cited prior art references (Danciu, Mahajan, Calvert, Aldrey) were considered by the examiner during the original prosecution of the ’251 patent. Therefore, the petition raised new arguments based on new art, which would not be cumulative.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of Patent 8,356,251 as unpatentable under 35 U.S.C. §103.