PTAB

IPR2025-00407

Amazon.com v. NL Giken Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Moving Image Data Delivery System, Advertising Image Data Delivery System and Moving Image Enjoying System
  • Brief Description: The ’391 discloses a system for providing television programming to users, wherein users receive an incentive, such as electronic coupons, for viewing advertisements. These coupons can then be redeemed for access to programming, creating a system where advertisers fund content delivery.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ray and Nolan - Claims 1-2 and 9-15 are obvious over Ray in view of Nolan.

  • Prior Art Relied Upon: Ray (Application # 2007/0288951) and Nolan (Application # 2006/0053049).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ray discloses the core architecture of the ’391 patent. Ray teaches a system where a "moving image data delivery system" (Ray's content provider and broadcaster) provides TV programs to viewers, and an "advertising image data delivery system" (Ray's advertiser and incentive program host) provides commercials and issues credits to viewers for watching them. These credits ("electric data") can be redeemed for premium content. Petitioner asserted that Ray teaches the issuance of this electric data to the viewer's device without the moving image data delivery system acting as an intermediary and that the issuance of credits is decoupled from any payment to the content broadcaster.
    • Motivation to Combine: Petitioner contended that while Ray discloses the key components, it does not explicitly teach the payment flow where the advertising system compensates the moving image system in exchange for a report on credit redemptions. Nolan was introduced to supply this missing element. Nolan discloses a system where a "Facilitator" (analogous to Ray's incentive host) receives reports from and makes payments to a "Provider" (analogous to Ray's broadcaster) for services rendered. A POSITA would combine Nolan’s commercially-sensible payment-for-services model with Ray’s content-for-credits system to create a complete, functional business ecosystem where the broadcaster is compensated for the premium content it provides.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves integrating a known business model (payment based on service reports) into an existing and compatible technical framework for ad-supported media.

Ground 2: Obviousness over Ray, Nolan, and Cansler - Claims 13 and 14 are obvious over Ray, Nolan, and Cansler.

  • Prior Art Relied Upon: Ray (Application # 2007/0288951), Nolan (Application # 2006/0053049), and Cansler (Patent 8,561,113).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the system established by the combination of Ray and Nolan in Ground 1. Cansler was added to specifically address limitations in claims 13 and 14, which require that the commercial message be related to or an advertisement of a television program. Petitioner argued that Cansler explicitly discloses television commercials that advertise other television programs (e.g., an ad for an upcoming episode of MASH* or Alias).
    • Motivation to Combine: A POSITA would find it obvious and logical to incorporate the type of advertisement disclosed in Cansler into the broader ad-delivery framework taught by Ray and Nolan. Advertising for other television programs is a common, well-known practice in the industry, and Cansler confirms it was known in the art prior to the ’391 patent. The motivation would be to use a conventional and effective form of advertising content within the combined Ray/Nolan system to promote viewership of other programs.
    • Expectation of Success: Success would be expected, as this combination merely involves selecting a specific, known type of ad content for delivery through an already established system.

4. Key Claim Construction Positions

  • "controller" (claims 1-2, 7, 10-14): Petitioner argued this term is not a means-plus-function limitation and should be construed to mean any hardware and/or software that controls part of a system. This construction provides sufficient structure to a POSITA.
  • "a second controller adapted to receive an electric payment" (claims 1, 10): For the purposes of the petition, Petitioner adopted the Patent Owner's apparent construction from related litigation, which includes a processor/software that can access an account to receive the payment, while reserving the right to argue a different construction elsewhere.
  • "advertising image data delivery system" and "advertiser" (claim 10): Petitioner argued these terms in the preamble of claim 10 do not require distinct structures. Based on the specification, the "advertiser" can be considered a part of the overall "advertising image data delivery system."

5. Arguments Regarding Discretionary Denial

  • Petitioner presented substantial arguments that discretionary denial under Fintiv is not warranted. It argued that four of the six factors weigh against denial: the trial date in the parallel district court litigation (June 2026) is close to the Final Written Decision deadline (July 2026), ensuring the IPR concludes around the same time; there is significant issue overlap that the IPR can resolve efficiently; and other considerations, such as the patent never having been previously challenged, favor institution.
  • Petitioner argued one factor (no stay requested) is neutral and only one factor (same parties) weighs marginally in favor of denial. Petitioner also argued that the petition satisfies the "compelling merits" standard, further weighing against denial. Finally, Petitioner asserted that denial under §325(d) would be improper because the primary prior art references (Ray, Nolan, Cansler) are new and were not before the examiner during prosecution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2 and 9-15 of the ’391 patent as unpatentable.