Hulu, LLC et al. v. Piranha Media Distribution, LLC

Petition

Petition summary

Invalidity analysis

Prosecution analysis

Examiner search

## 1. Case Identification
- Case Number: [IPR2025-00081](https://ai-lab.exparte.com/case/ptab/IPR2025-00081)
- Patent #: [10,986,403](https://ai-lab.exparte.com/patent/10986403)
- Filed: November 1, 2024
- Petitioner(s): [HULU, LLC](https://ai-lab.exparte.com/party/hulu-llc)
- Patent Owner(s): [PIRANHA MEDIA DISTRIBUTION, LLC](https://ai-lab.exparte.com/party/piranha-media-distribution-llc)
- Challenged Claims: 1, 2, 4-11, 13-15, 17-19, and 21-23

## 2. Patent Overview
- Title: Adaptive Content Insertion and Management
- Brief Description: The [’403](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1001) patent describes systems and methods for adaptively managing the presentation of advertising content within a digital media stream. The purported inventive concept is to adaptively select and re-sequence advertisements in response to user playback controls, such as skipping or fast-forwarding, to ensure ads are viewed.

## 3. Grounds for Unpatentability

#### Ground 1: Obviousness over Wu and Doherty - Claims 1, 2, 4-11, 13-15, 17-19, 21-23 are obvious over Wu in view of Doherty.
- **Prior Art Relied Upon:** Patent [7,877,766](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) (“[Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)”) and Application # [2003/0200128](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) (“[Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005)”).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) taught the foundation of the claimed invention: a digital media playback system that counters ad-skipping by displaying a non-skippable "sub-advertisement" when a user fast-forwards or skips an original ad. [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)’s system included a user interface for controlling playback and software for inserting ads at predefined intervals. However, Petitioner contended that [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) did not explicitly disclose an "intersplicer" that *dynamically reschedules* ads based on user input. To supply this missing element, Petitioner turned to [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005). [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) taught a scheduler (an "intersplicer") that creates and continuously reschedules a playlist of advertisements and other content in response to user interrupts. [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005)’s scheduler used priority-based rules to determine which ad to show next, considering various conditions. Petitioner asserted that combining [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)'s ad-skipping countermeasure system with [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005)'s dynamic, priority-based ad scheduling mechanism rendered the independent claims obvious. The combination taught a system that responds to a user skipping an ad ([Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)) by dynamically rescheduling a replacement ad based on priority rules ([Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005)), thereby adaptively modifying the ad's presentation position.
    - **Motivation to Combine (for §103 grounds):** A person of ordinary skill in the art (POSITA) would combine [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) and [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) to improve [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)’s system. [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) invited a more sophisticated technique for selecting and timing its sub-advertisements, and [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) provided a known, suitable solution for dynamic, priority-based scheduling. Both references operated in the same field of media display and addressed the common problem of presenting ads within media content, making the combination a predictable application of a known technique to a known system.
    - **Expectation of Success (for §103 grounds):** A POSITA would have a reasonable expectation of success, as the combination involved applying known software scheduling techniques ([Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005)) to a known media playback system ([Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)) to achieve the predictable result of improved ad management.

#### Ground 2: Obviousness over Wu, Doherty, and Crow - Claims 2 and 15 are obvious over Wu and Doherty in view of Crow.
- **Prior Art Relied Upon:** [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) (’[766](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) patent), [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) (’[128](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) application), and Patent [6,262,724](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1006) (“[Crow](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1006)”).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground built upon Ground 1 to address dependent claims 2 and 15, which added limitations for a graphical user interface (GUI) with a "time bar" that a user can drag to navigate the media content. To the extent [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) and [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) did not explicitly disclose a draggable time bar, Petitioner argued [Crow](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1006) supplied this teaching. [Crow](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1006) disclosed a GUI for media processing that explicitly included a time bar, allowing a user to skip to a specific point in the media by dragging a marker.
    - **Motivation to Combine (for §103 grounds):** A POSITA would combine [Crow](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1006) with the [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)/[Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) system to provide an intuitive and conventional method for user navigation. Since the base system of [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) already allowed for skip/fast-forward actions, implementing this functionality with a standard draggable time bar, as taught by [Crow](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1006), would have been an obvious and common design choice to improve user experience.

#### Ground 3: Obviousness over Wu, Doherty, and Kocher - Claim 13 is obvious over Wu and Doherty in view of Kocher.
- **Prior Art Relied Upon:** [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) (’[766](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) patent), [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) (’[128](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) application), and Application # [2002/0141582](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1007) (“[Kocher](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1007)”).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground addressed dependent claim 13, which added a "media file decryptor" configured to decrypt media content and limit access to non-volatile memory after decryption. Petitioner argued that the base combination of [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004) and [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005), which involved distributing copyrighted content, would have obviously been improved by adding security. [Kocher](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1007) taught a media player system designed specifically for secure content distribution, which included a "bulk decryption module" to decrypt content during playback and methods for using secure, non-volatile storage that is locked by default to protect data like viewing histories.
    - **Motivation to Combine (for §103 grounds):** A POSITA would be motivated to incorporate [Kocher](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1007)'s teachings into the [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)/[Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005) system to protect copyrighted content from piracy, a well-known problem. Applying conventional digital rights management (DRM) and decryption functionalities, as taught by [Kocher](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1007), to a media distribution system like [Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004)'s was a common and necessary practice in the art.

## 4. Key Claim Construction Positions
- **"intersplicer":** Petitioner argued this term should be construed as "software that selects advertising content and controls insertion and conveyance of advertising content in media content." This construction was based on the claim language and specification. Petitioner argued that the Patent Owner's proposed construction from a parallel district court case—which added limitations such as "digital rights management software," "enforces the conveyance of advertisements," and allows for "free, unlimited viewing"—was improper as it imported limitations from the specification into the claims. The petition contended that the "intersplicer" is just one component (Fig. 5B) and that other modules, like the "real-time player," handle DRM functions.

## 6. Arguments Regarding Discretionary Denial
- **Fintiv:** Petitioner argued against discretionary denial under *Fintiv* because the parallel district court case had already been dismissed with prejudice, with an appeal pending.
- **§325(d) / Advanced Bionics:** Petitioner asserted that denial under §325(d) was unwarranted because none of the primary prior art references ([Wu](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1004), [Doherty](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1005), [Crow](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1006), [Kocher](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1007)) were cited or relied upon by the examiner during the original prosecution of the [’403](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1001) patent. Therefore, the petition raised new questions of patentability that the Patent Office had not previously considered.

## 7. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 4-11, 13-15, 17-19, and 21-23 of the [’403](https://ai-lab.exparte.com/case/ptab/IPR2025-00081/doc/1001) patent as unpatentable.

Hulu targets adaptive ad insertion patent: Wu & Doherty prior art cited for obviousness against 19 claims covering dynamic ad re-sequencing.

IPR2025-00081

Hulu, LLC v. Piranha Media Distribution, LLC