Hulu LLC v. Piranha Media Distribution LLC

1. Case Identification

• Case #: IPR2025-00081
• Patent #: 10,986,403
• Filed: November 1, 2024
• Petitioner(s): Hulu, LLC
• Patent Owner(s): Piranha Media Distribution, LLC
• Challenged Claims: 1-2, 4-11, 13-15, 17-19, and 21-23

2. Patent Overview

• Title: Distribution of Media Content with Adaptive Advertising
• Brief Description: The ’403 patent relates to systems and methods for distributing digital media content with inserted advertisements. The purported invention involves adaptively selecting and re-sequencing advertisements in response to user playback controls, such as skipping or fast-forwarding, to ensure ad exposure.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wu and Doherty - Claims 1-2, 4-11, 13-15, 17-19, and 21-23 are obvious over Wu in view of Doherty.

• Prior Art Relied Upon: Wu (Patent 7,877,766) and Doherty (Application # 2003/0200128).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wu taught a digital recording and playback system that receives a media stream with advertisements and controls playback based on user inputs like skip and fast forward. To prevent users from entirely skipping ads, Wu’s system displayed a non-skippable "sub-advertisement" in response to such user input. Petitioner asserted that while Wu provided the foundational media player system, it did not explicitly disclose the claimed "intersplicer" that adaptively re-sequences ads. Doherty allegedly supplied this missing element by teaching a "scheduler" that selects, schedules, and dynamically re-schedules advertisements in response to user interrupts. Doherty’s scheduler used priority-based rules to determine which ad to show next, effectively modifying the presentation position of advertising content in response to user input.
  • Motivation to Combine: A POSITA would combine Doherty's scheduler with Wu's system to improve Wu's rudimentary ad-replacement function with a more sophisticated, priority-based scheduling mechanism. This combination represented applying a known technique (Doherty’s dynamic scheduling) to a known device (Wu’s media player) to yield predictable results, such as improving ad targeting and balancing user experience with advertiser interests.
  • Expectation of Success: A POSITA would have had a high expectation of success because software solutions for selecting and scheduling media were well-known, and the combination involved known software techniques applied to a similar and compatible system.

Ground 2: Obviousness over Wu, Doherty, and Crow - Claims 2 and 15 are obvious over Wu in view of Doherty and Crow.

• Prior Art Relied Upon: Wu (Patent 7,877,766), Doherty (Application # 2003/0200128), and Crow (Patent 6,262,724).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Wu and Doherty combination from Ground 1 to address the additional limitations of dependent claims 2 and 15, which required a graphical user interface with a "time bar" for controlling playback. Petitioner argued that, to the extent the base combination did not explicitly disclose this feature, Crow taught a graphical user interface for media processing that included a draggable time bar, allowing a user to skip to a specific point in the media presentation.
  • Motivation to Combine: A POSITA would combine Crow’s time bar with the Wu/Doherty system because it was a customary, intuitive, and efficient method for implementing the user navigation functions (e.g., skip, fast-forward) already present in Wu. Adding a time bar was a standard design choice for improving the user experience of such systems.

Ground 3: Obviousness over Wu, Doherty, and Kocher - Claim 13 is obvious over Wu in view of Doherty and Kocher.

• Prior Art Relied Upon: Wu (Patent 7,877,766), Doherty (Application # 2003/0200128), and Kocher (Application # 2002/0141582).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claim 13, which added a "media file decryptor" configured to decrypt content during play and limit access to non-volatile memory after decryption. Petitioner asserted that the Wu/Doherty combination provided the base system for ad-supported media playback, and Kocher supplied the claimed digital rights management (DRM) functionality. Kocher explicitly taught a media player with a "bulk decryption module" that decrypted protected content and used secure, non-volatile storage for maintaining state between playings, with access to the memory being locked by default.
  • Motivation to Combine: A POSITA would combine Kocher’s DRM teachings with the Wu/Doherty system to protect the copyrighted content being transmitted and stored, which was a conventional and commonplace practice at the time. Implementing DRM was an obvious and necessary step for any system, like Wu's, that recorded and played back copyrighted media content.

4. Key Claim Construction Positions

• "intersplicer": Petitioner contended this term should be construed as "software that selects advertising content and controls insertion and conveyance of advertising content in media content." Petitioner argued that the Patent Owner’s proposed construction from district court litigation—which included limitations such as "digital rights management software," "free, unlimited viewing," and a "general licensing process"—was improper. Petitioner asserted this construction imported limitations from the specification that were not present in the claims, pointing to figures in the ’403 patent that depicted the "intersplicer" and a separate "real-time player" as distinct components, with the latter handling DRM functionalities.

5. Arguments Regarding Discretionary Denial

• Fintiv: Petitioner argued discretionary denial was not warranted because the parallel district court case was dismissed with prejudice and was pending appeal, minimizing concerns of duplicative efforts or inconsistent results.
• §325(d): Petitioner argued denial under 35 U.S.C. §325(d) was unwarranted because none of the primary prior art references asserted in the petition (Wu, Doherty, Crow, and Kocher) were cited or substantively considered during the original prosecution of the ’403 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4-11, 13-15, 17-19, and 21-23 as unpatentable.