Google LLC v. Sandpiper CDN LLC

1. Case Identification

• Case Number: IPR2025-00846
• Patent #: 8,595,778
• Filed: May 7, 2025
• Petitioner(s): GOOGLE LLC
• Patent Owner(s): SANDPIPER CDN, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Authorizing Delivery of a Video Stream to an End User
• Brief Description: The ’778 patent discloses computer-implemented systems and methods for authorizing the delivery of video content over a network. The core of the invention involves receiving a request from an end user, querying a subscription database associated with a content publisher to verify authorization, and then either initiating delivery or notifying the user of non-authorization.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Fransdonk - Claims 1, 4-12, and 14-20 are anticipated under 35 U.S.C. §102 or, alternatively, obvious under 35 U.S.C. §103 over Fransdonk.

• Prior Art Relied Upon: Application # 2003/0165241 to Fransdonk (“Fransdonk”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fransdonk discloses all elements of the challenged claims. Fransdonk teaches a system to distribute content via a network in a geographically controlled manner by authenticating access requests. Its system uses a "conditional access (CA) server" (analogous to the ’778 patent's subscription database) and a "CA agent" to verify a user's access criteria, including subscription and geographic information. Petitioner asserted that Fransdonk's CA agent receives a user request, queries the CA server to retrieve access criteria (a reply), processes this information to determine authorization, and then either releases the content (initiates delivery) or blocks access and provides a notification (e.g., an error message with a URL to subscribe). This process was argued to meet the limitations of independent claims 1, 15, and 16.
  • Motivation to Combine (for §103 ground): For the single-reference obviousness ground, Petitioner contended that a showing of motivation to combine or expectation of success is not required. It argued that a person of ordinary skill in the art (POSITA) would have understood Fransdonk's disclosures and found it obvious to apply its teachings to arrive at the claimed invention.
  • Key Aspects: Petitioner emphasized that Fransdonk's teachings on managing subscriptions, checking geographic criteria, and handling both authorized and unauthorized requests directly map onto the core functionality claimed in the ’778 patent.

Ground 2: Obviousness over Fransdonk and Norris - Claims 2, 3, and 13 are obvious over Fransdonk in view of Norris.

• Prior Art Relied Upon: Fransdonk (Application # 2003/0165241), Patent 6,718,328 to Norris (“Norris”).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring the use of "metadata," specifically a "token and a cookie," for authentication. Petitioner argued that while Fransdonk provides the base system, Norris explicitly teaches a method for controlling content access using tokens and cookies to authenticate a user's request. Norris describes generating a token or cookie at a publisher's site, which is then presented to a content server for validation.
  • Motivation to Combine: A POSITA would combine Norris’s specific token/cookie authentication technique with Fransdonk’s broader content delivery framework. The motivation was to add a known, flexible layer of security to Fransdonk's system, allowing content publishers to define specific authentication components (e.g., IP address, password) within a token, thereby achieving the flexible security contemplated by Fransdonk.
  • Expectation of Success: Both references operate in the same field of authenticating access to digital content. Petitioner asserted that implementing Norris's well-understood token-based authentication into Fransdonk's system would have been a straightforward and predictable modification for a POSITA.

Ground 3: Obviousness over Fransdonk and Carle - Claims 4-8 are obvious over Fransdonk in view of Carle.

• Prior Art Relied Upon: Fransdonk (Application # 2003/0165241), Application # 2007/0198839 to Carle et al. (“Carle”).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted claims related to "proximity parameters" (i.e., geographic location) and restricting content based on "black out rules" with time and geographic restrictions. Petitioner argued that Carle teaches a system for programmatic content substitution in video streams based on geographic information to enforce blackout windows for specific events. Carle describes how an operator (content publisher) can define blackout rules and how the system compares a user's location against these rules to restrict content.
  • Motivation to Combine: A POSITA would have been motivated to integrate Carle's specific, cost-effective methods for implementing time-based and geographic blackouts into Fransdonk's general content distribution system. This combination would enhance Fransdonk's system by adding a more granular and explicit mechanism for handling the common commercial need for live event blackouts, a known challenge in the art.
  • Expectation of Success: Since both references address geographic content control, a POSITA would have reasonably expected success in applying Carle’s specific blackout implementation to Fransdonk’s more general system to achieve a predictable improvement in functionality.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Application # 2009/0019469 to Foti to teach subscriber whitelists/blacklists for managing per-subscriber access, but relied on similar design modification theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is inappropriate because the prior art references cited (Fransdonk, Norris, Carle, Foti) were not before the examiner during prosecution and are not cumulative of the art of record.
• Petitioner also argued against discretionary denial under §314(a) based on Fintiv factors. The core argument was that the parallel district court litigation would not be an inefficient use of resources. This is because the district court found the ’778 patent claims ineligible under §101—a ground the Board cannot review in an inter partes review (IPR)—and the patent is not currently asserted in the amended complaint. Therefore, Petitioner contended there is no overlap in the issues, the court case is effectively stayed with respect to the ’778 patent, and institution would serve the public interest by reviewing patentability on different statutory grounds.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of Patent 8,595,778 as unpatentable.