PTAB

IPR2025-00050

Amazon.com Inc v. NL Giken Inc

Key Events

Petition

petition

Title: Receiving Apparatus and Method
Brief Description: The ’592 patent describes a television receiving apparatus capable of receiving digital moving image content from two different providers. A first provider delivers content according to a predetermined schedule (e.g., a broadcast), while a second provider delivers the same content independently (e.g., via internet download), allowing a user who tunes in mid-program to watch it from the beginning.

Prior Art Relied Upon: Walker (Application # 2005/0160465).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Walker discloses an interactive television system that meets all limitations of the challenged claims. When a user watching a scheduled broadcast program (from a first provider) initiates a playback function like "pause," Walker’s system seamlessly switches to a streaming version of the same program from a remote server (a second provider) that is independent of the broadcast schedule. Walker's user equipment includes an I/O interface that transmits the current channel information to the remote server to locate and retrieve the correct stream, and memory within the user equipment (a "TV set computer") stores the streamed data to enable playback.
- Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner asserted that Walker discloses all claim elements, and any minor differences would have been obvious design choices to a POSITA. For instance, it would have been obvious to configure the system to obtain channel information from the tuner at the time of selection to ensure the correct stream is fetched.
- Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as implementing the claimed functionality would involve applying known techniques for broadcast and streaming television systems as disclosed in Walker.

Prior Art Relied Upon: Chang (Application # 2002/0194619).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended Chang discloses a set-top box (STB) system that allows a user to receive content from multiple providers. A first provider (media server) delivers scheduled broadcast programming. A second provider (ISP host) delivers user-designated program segments for download, independent of the broadcast schedule. Crucially, Chang’s STB uses "identification information" (e.g., a Packet ID or PID) from the tuner's data stream at the time of selection to locate and request the correct program download from the second provider via an I/O interface (modem). The downloaded program is then stored in the STB's memory (disc drive).
- Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner argued that Chang discloses all limitations. Any implementation details not explicitly detailed in Chang, such as selecting a program mid-broadcast, would have been obvious extensions of the disclosed system to a POSITA.
- Expectation of Success (for §103 grounds): A POSITA would expect success in implementing the claimed system based on Chang's detailed disclosure of using program-specific identifiers from a tuner to facilitate on-demand downloading of broadcast content.

Prior Art Relied Upon: Walker (Application # 2005/0160465) and Chang (Application # 2002/0194619).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that while Walker alone renders the claims obvious, the combination with Chang provides an explicit disclosure for locating an integral program using specific information from the tuner. Walker teaches transmitting general channel information to a remote server. Chang teaches the more specific and robust method of using identification information, such as a PID, received by the tuner as part of the program data signal to identify the content for download.
- Motivation to Combine (for §103 grounds): A POSITA would combine Walker's interactive streaming system with Chang's content identification method to improve the system's accuracy. Using a specific PID from the tuner (as taught by Chang) to identify the program is more direct and less error-prone than relying on just the channel number (as in Walker) to determine which program to stream from the remote server.
- Expectation of Success (for §103 grounds): The combination would predictably result in a more reliable system, as it integrates known techniques for program delivery and program identification within the same technical field, presenting no technical hurdles.

"TV set computer" (claims 1, 6): Petitioner argued this term should be construed to include processing systems located outside the physical form factor of a television set, such as an external set-top box, streaming stick, or USB dongle. This construction is supported by the patent owner's infringement contentions against products like the Amazon Fire TV Stick.
"I/O interface locating the integral program in accordance with information from the tuner" (claims 1, 6): Petitioner argued this means the I/O interface uses information that originates from the tuner (e.g., channel number or a program identifier like a PID) at the time of selection to identify the program to be retrieved from the second provider.

Petitioner argued against discretionary denial under Fintiv, asserting that the factors weigh in favor of institution. Key arguments included:
- The scheduled trial date in the parallel district court litigation (June 2026) is after the deadline for a Final Written Decision (May 2026).
- There is not a complete overlap of issues, as the patent owner has not asserted all challenged claims (specifically 4, 9, and 13) in the district court case.
- The ’592 patent has never been challenged in a post-issuance proceeding, and the prior art relied upon (Walker and Chang) was not considered during prosecution, underscoring the value of the Board's review.

Petitioner requests institution of IPR and cancellation of claims 1-13 of the ’592 patent as unpatentable.