Hulu LLC v. Piranha Media Distribution LLC

1. Case Identification

• Case #: IPR2025-00082
• 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: Adaptive Selection and Sequencing of Advertisements
• Brief Description: The ’403 patent discloses systems and methods for adaptively selecting and re-sequencing advertisements within digital media content in response to user playback controls, such as skipping or fast-forwarding. The purported invention aims to ensure advertisement exposure in exchange for access to free media content.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4-11, 13-15, 17-19, and 21-23 are obvious over Eldering-I in view of Eldering-II.

• Prior Art Relied Upon: Eldering-I (Application # 2002/0083439) and Eldering-II (Application # 2003/0149975).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Eldering-I teaches a system for targeted advertising that dynamically reschedules ads in real-time based on changes in "viewing parameters" such as channel selection, viewer identity, or program type. Its "ad scheduler" functions as the claimed "intersplicer," controlling the insertion and sequencing of ads into a media stream. Eldering-II teaches a video-on-demand (VOD) system that addresses user attempts to fast-forward or skip ads by either disabling those navigation controls or displaying an alternative advertisement. The combination of Eldering-I's dynamic ad rescheduling with Eldering-II's user input-based triggers (skipping, fast-forwarding) and ad-enforcement mechanisms allegedly discloses all limitations of the independent claims. For example, a user's skip/fast-forward input (from Eldering-II) is a type of change in viewing parameter that would trigger the ad rescheduling taught by Eldering-I.
  • Motivation to Combine: A POSITA would combine these references to enhance the ad system of Eldering-I. Eldering-I already rescheduled ads based on user actions like changing channels; it would have been a natural and obvious step to extend this functionality to respond to other common user inputs like skipping or fast-forwarding, as taught by Eldering-II. This would improve the effectiveness of targeted advertising—the stated goal of Eldering-I—by ensuring ads are appropriately displayed even when users attempt to bypass them. The references share a common inventor and field of endeavor, further supporting the motivation to combine.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves applying known user navigation inputs (from Eldering-II) as triggers for an existing rescheduling system (from Eldering-I). This amounts to a simple substitution of one known trigger (channel change) for another (skip input) to achieve a predictable result.

Ground 2: Claims 2 and 15 are obvious over Eldering-I, Eldering-II, and Crow.

• Prior Art Relied Upon: Eldering-I (Application # 2002/0083439), Eldering-II (Application # 2003/0149975), and Crow (Patent 6,262,724).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1. Petitioner argued that to the extent the primary combination does not explicitly teach a "time bar" for user navigation as required by dependent claims 2 and 15, Crow supplies this missing element. Crow discloses a graphical user interface for media processing that explicitly includes a time bar, which a user can drag to skip to a specific point in the media content.
  • Motivation to Combine: A POSITA implementing the skip and fast-forward functionalities of Eldering-II would have been motivated to use a time bar as disclosed in Crow because it was a conventional, intuitive, and efficient method for users to perform such navigation. A graphical time bar was one of a very limited number of standard interface designs for this purpose.
  • Expectation of Success: The integration of a standard UI element like a time bar into the media player system of Eldering-I and Eldering-II was a well-understood task with a high expectation of success.

Ground 3: Claim 13 is obvious over Eldering-I, Eldering-II, and Kocher.

• Prior Art Relied Upon: Eldering-I (Application # 2002/0083439), Eldering-II (Application # 2003/0149975), and Kocher (Application # 2002/0141582).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that if the primary combination of Eldering-I and Eldering-II is found not to teach the "media file decryptor" limitations of claim 13, Kocher remedies the deficiency. Kocher discloses a secure media player with a "bulk decryption module" that retrieves and decrypts content during playback. Kocher also teaches using secure, non-volatile storage and limiting access to memory after decryption to prevent unauthorized use, mapping to the claim's requirement to "limit access to a non-volatile memory following the decryption."
  • Motivation to Combine: A POSITA would have been motivated to add the decryption and secure memory access features of Kocher to the Eldering-I/-II system to protect copyrighted media content from piracy. Since Eldering-I taught recording and playing back copyrighted content, implementing such digital rights management (DRM) functionalities was a conventional and obvious step to secure the content, a common practice in the 2002 timeframe.
  • Expectation of Success: Integrating known DRM and decryption techniques into a media playback system was a routine task for a POSITA, who would have had a high expectation of success in doing so.

4. Key Claim Construction Positions

• "intersplicer": Petitioner argued that a POSITA would understand this term to mean "software that selects advertising content and controls insertion and conveyance of advertising content in media content." This construction is based on the claim language and specification. Petitioner contended that Patent Owner’s proposed construction from related litigation—which imports limitations such as "digital rights management software" and allowing "free, unlimited viewing"—is improper because it reads unsupported functional and business-model limitations into the claims.

5. Arguments Regarding Discretionary Denial

• Fintiv: Petitioner argued that discretionary denial under Fintiv is not warranted because the parallel district court case has been dismissed with prejudice. Although an appeal is pending, Petitioner asserted that the advanced state of the IPR relative to any potential remand favors institution.
• 35 U.S.C. §325(d): Petitioner contended that denial is unwarranted because none of the asserted prior art references (Eldering-I, Eldering-II, Crow, and Kocher) were cited or relied upon during the original prosecution of the ’403 patent. Therefore, the petition raises new arguments and art that the Examiner has not previously considered.

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 of the ’403 patent as unpatentable.