Stingray Group Inc v. Hernandez MonDragon Edwin

1. Case Identification

• Case #: IPR2025-00349
• Patent #: 10,123,074
• Filed: December 20, 2024
• Petitioner(s): Stingray Group Inc. and Stingray Music USA, Inc.
• Patent Owner(s): Edwin A. Hernandez-Mondragon
• Challenged Claims: 1-21

2. Patent Overview

• Title: System and Method for Delivering Broadcast Media Channels
• Brief Description: The ’074 patent describes a system for obtaining media content from web pages, rendering the content in a browser, generating a temporal sequence of screen captures to capture dynamic content, and assembling the captures into a media stream for a content provider. The key inventive concept asserted during prosecution was the combination of rendering a web page and generating a temporal sequence of screen captures illustrating dynamic change.

3. Grounds for Unpatentability

Ground 1: Anticipation by Avellan - Claims 1-6, 8, 9, 12-15, 17, 18, and 20 are anticipated by Avellan.

• Prior Art Relied Upon: Avellan (Patent 8,954,600).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Avellan discloses every limitation of the independent claims (1, 12, 17) and several dependent claims. Avellan describes a communication system where a gateway server, using browser software, accesses and renders web pages from sources like the internet. For dynamic content such as videos or streaming feeds, Avellan’s gateway server “continuously captures images of the web page,” creating a temporal sequence that illustrates dynamic change over time. Petitioner asserted this directly teaches the key limitations added during prosecution to overcome prior art. Avellan further discloses assembling these captured images (with audio) into a compressed video format and broadcasting it to users, meeting the remaining limitations of the independent claims.
  • Key Aspects: This ground directly targets the features—rendering a webpage and creating a temporal sequence of screen captures—that the Patent Owner previously argued were the “important distinction” over the prior art during the original prosecution.

Ground 2: Obviousness over Avellan and Durante - Claim 5 is obvious over Avellan in view of Durante.

• Prior Art Relied Upon: Avellan (Patent 8,954,600) and Durante (Patent 8,819,043).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Avellan teaches the base method of claim 4 (obtaining screen captures from video playback on a webpage). Claim 5 adds combining the screen captures with metadata, including a song title, artist, and music genre. Durante explicitly discloses that metadata associated with a music video can include the song title and artist name.
  • Motivation to Combine: A POSITA would combine Durante's metadata with Avellan’s system, which already provided for themed music channels (e.g., "country music"), to provide viewers with descriptive information about the specific song and artist being played. This would enhance the user experience, a well-known design goal.
  • Expectation of Success: A POSITA would have a high expectation of success because Avellan’s system delivers content in a standard "video frame format," and the common MPEG standard, for example, includes provisions for embedding metadata like that described in Durante.

Ground 3: Obviousness over Avellan and Wannamaker - Claims 10, 11, and 21 are obvious over Avellan in view of Wannamaker.

• Prior Art Relied Upon: Avellan (Patent 8,954,600) and Wannamaker (Application # 2004/0031052).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Avellan provides the base system for creating and providing a media stream. Claim 10 adds streaming to an MPEG multiplexer; claim 11 adds using a virtual machine; and claim 21 adds inserting an MPEG packet with metadata. Wannamaker discloses a multimedia streamer that uses a special MPEG multiplexer card to stream video and audio. Wannamaker also teaches that its system is implemented on a "virtual machine (VM)" and that its MPEG stream can contain data packets with "additional information about the Web page's characteristics," such as hyperlink URLs and text.
  • Motivation to Combine: A POSITA would combine these technologies because they represent well-known, efficient, and scalable solutions for content delivery. Using an MPEG multiplexer is a standard way to combine audio and video for delivery. Virtual machines were known to provide flexibility, scalability, and reduced hardware costs. Including metadata in MPEG packets was a standard way to transmit interactive elements like the "selectable links" already disclosed in Avellan.
  • Expectation of Success: Success was expected because both Avellan and Wannamaker describe server-side systems that render web content and package it into a video format. Integrating Wannamaker's specific, well-known components (MPEG multiplexer, VM) into Avellan's functionally similar architecture would be a straightforward implementation for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Avellan with Suzuki (for querying format), Ma (for channel identifiers), Heikens (for broadcast IP addresses), Matthews (for HLS/RTSP streaming), Wilsher (for network failure fallback), and the general knowledge of a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) is not warranted. The petition relies on prior art, particularly Avellan, that was not considered during prosecution and which allegedly discloses the very elements the Patent Owner relied upon to secure the patent. Petitioner also stated that the related district court litigation is in an early stage, and they intend to file a motion to stay pending the outcome of the IPR, a practice the court has previously granted in similar circumstances.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of the ’074 patent as unpatentable under 35 U.S.C. §§ 102 and 103.