PTAB

IPR2025-00072

Roku Inc v. VideoLabs Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Providing Access to Digital Content for Use on Wireless Communication Devices
  • Brief Description: The ’790 patent describes a server-based system for providing digital content to a variety of wireless devices. The system stores multiple "implementations" of a single content item, where each implementation is tailored to the specific capabilities of a device, and uses a product catalog to manage and deliver the appropriate content version to a user.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Content Delivery System - Claims 1-4 and 8-11 are obvious over Chatani.

  • Prior Art Relied Upon: Chatani (Patent 7,363,384).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chatani taught all limitations of the independent claims. Chatani described a system for optimizing content delivery based on a user device’s hardware and communication capabilities. It disclosed a server maintaining multiple "service levels" for a single content item (e.g., text-only, standard video, high-resolution video), which directly corresponds to the ’790 patent’s claimed "plurality of different implementations." Chatani further taught determining device capabilities and then presenting a list of available content, which mapped to the ’790 patent’s concept of a "product catalog." Critically, Chatani disclosed that its system automatically selected the highest available service level for the user, thereby presenting a single item for selection regardless of the multiple underlying versions available, which Petitioner asserted met the limitation of providing a "single description" for each item of digital content.
    • Motivation to Combine (for §103 grounds): While asserted as a primary reference, Petitioner argued that to the extent Chatani was viewed as not explicitly disclosing every element in an anticipatory manner, a person of ordinary skill in the art (POSITA) would find it obvious to implement the claimed system. For example, a POSITA would find it obvious to present a single description for an item to avoid cluttering the user interface on a small wireless device screen, a predictable design choice to improve user experience.
    • Key Aspects: Petitioner emphasized that the core concept of the ’790 patent—serving different versions of content based on device capabilities—was well-known, and Chatani provided a clear blueprint for such a system, rendering the independent claims and their direct dependents obvious.

Ground 2: Obviousness over Chatani in view of Mulligan - Claims 5-7 and 12-14 are obvious over Chatani in view of Mulligan.

  • Prior Art Relied Upon: Chatani (Patent 7,363,384) and Mulligan (Application # 2003/0084177).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed the dependent claims reciting "provisioning models." Petitioner asserted Chatani provided the foundational system for selecting and transferring content based on device capabilities. Mulligan, which described a mobile client provisioning web service, supplied the missing details for the provisioning steps. Mulligan taught a system that associated applications with different "data objects" and delivery methods to accommodate different terminal types and capabilities (e.g., WAP capabilities). Petitioner argued these teachings directly mapped to the claimed concepts of associating content with a plurality of "provisioning models," selecting a model based on device capabilities, packaging the item according to the model, and provisioning the item to the device.
    • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine Chatani and Mulligan because they addressed complementary aspects of the same problem: delivering functional content to diverse mobile devices. While Chatani taught selecting the right content version, it was less detailed on the post-selection steps needed to ensure the content worked correctly on the device. Mulligan explicitly addressed this by teaching methods to provision devices with the correct settings and protocols. A POSITA would combine Mulligan’s provisioning methods with Chatani’s content selection system to create a more robust, end-to-end content delivery platform, ensuring that content was not only delivered but was also properly configured for use.
    • Expectation of Success: A POSITA would have a high expectation of success because Mulligan’s teachings involved known standards and protocols (e.g., WAP, SyncML). Integrating these known provisioning techniques into Chatani’s system to handle the final delivery and configuration stage would be a straightforward application of known solutions to achieve a predictable and improved result.

4. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, emphasizing that the parallel district court litigation against Roku is currently stayed. Petitioner asserted that the trial date is uncertain but would likely occur more than a year after a final written decision (FWD) in this IPR. Furthermore, the court has not issued any substantive orders, and an FWD would simplify issues for trial.
  • §325(d): Petitioner argued that denial under §325(d) was unwarranted because the primary references, Chatani and Mulligan, were not considered by the USPTO during prosecution or a subsequent reexamination of the ’790 patent. Petitioner also addressed a prior IPR filed by Netflix that resulted in an FWD finding the same claims unpatentable. Petitioner contended that the Netflix IPR should not bar institution because it relied on different prior art (Mehta and Schlapfer) and different arguments, the FWD is not yet final as it is on appeal, and Roku is a different party with no significant relationship to Netflix.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of Patent 7,233,790 as unpatentable.