Google LLC v. Sandpiper CDN LLC

1. Case Identification

• Case #: 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: Delivery of Video Content
• Brief Description: The ’778 patent discloses computer-implemented methods and systems for authorizing the delivery of video content over a network. The system verifies an end user’s request by querying a subscription database associated with a content publisher to determine if the user has permission to view the requested video stream.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-12, and 14-20 are anticipated by or obvious over Fransdonk

• Prior Art Relied Upon: Fransdonk (Application # 2003/0165241).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Fransdonk discloses all limitations of the challenged claims. Fransdonk teaches a content distribution system that authorizes content delivery based on access criteria. Its "conditional access server 36," which manages subscriptions for content providers, is analogous to the claimed "subscription database." Its "conditional access agent 28" performs the claimed steps of receiving a request, querying the server to retrieve access criteria (a reply), and processing that reply to determine if the user is authorized, for example, based on subscription status or geographic location. If authorized, the system initiates delivery; if not, it can block access and send a notification, such as an error message or an order request to subscribe.
  • Key Aspects: Petitioner contended that Fransdonk is analogous art in the same field of endeavor—authenticating access to digital content—and that its teachings on managing subscriptions and geographic access criteria directly map to the core limitations of the independent claims. For the obviousness ground (1B), Petitioner argued no motivation to combine or expectation of success is required for a single-reference challenge.

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

• Prior Art Relied Upon: Fransdonk (Application # 2003/0165241) and Norris (Patent 6,718,328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Fransdonk teaches the base method of claim 1, while Norris supplies the missing elements of claims 2, 3, and 13: receiving metadata such as a token or cookie to authenticate a user. Norris discloses a system for controlling content access using tokens and cookies to verify and authenticate user requests. The token can encode information identifying the content publisher and authorized user, thereby teaching the processing of metadata to identify the publisher and determine if the user's publisher matches the content's publisher.
  • Motivation to Combine: A POSITA would combine Norris’s token/cookie authentication with Fransdonk’s content delivery system to add a known layer of flexible security. Norris’s methods would provide the precise kind of flexible, per-publisher access control that Fransdonk’s system was designed to facilitate, addressing shared goals of preventing content piracy.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in integrating Norris’s well-understood authentication techniques into Fransdonk’s broader system, as both operate in the same field and address similar problems.

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

• Prior Art Relied Upon: Fransdonk (Application # 2003/0165241) and Carle (Application # 2007/0198839).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that while Fransdonk teaches using geographic information generally, Carle provides explicit teachings on using geographic "proximity parameters" to enforce "black out" rules based on time and location, as required by claims 4-8. Carle discloses a system that defines "black out" windows for specific geographic regions (e.g., for live sporting events) and restricts content for users within those regions. It further teaches terminating an already-initiated stream if it enters a blackout period.
  • Motivation to Combine: A POSITA would supplement Fransdonk’s general geographic authentication with Carle’s specific blackout functionalities. Carle’s teachings on program-based time and geographic restrictions were well-known components in streaming systems and would provide a cost-effective, scalable solution to enhance the access control capabilities of Fransdonk’s system for live-streaming events.
  • Expectation of Success: Integrating Carle’s specific blackout logic into Fransdonk’s database tables for access criteria would be a straightforward application of a known technique to enhance a similar system.

Ground 4: Claims 9-12 are obvious over Fransdonk in view of Foti

• Prior Art Relied Upon: Fransdonk (Application # 2003/0165241) and Foti (Application # 2009/0019469).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Foti teaches the specific implementation of a "subscriber verification table" by disclosing the use of subscriber "whitelists" and "blacklists." These lists explicitly store entries indicating whether a user is an authorized subscriber of particular content, thus teaching the limitations of detecting subscriber status and storing an entry indicating authorization (or lack thereof) as required by claims 9 and 10.
  • Motivation to Combine: A POSITA would integrate Foti’s efficient whitelist/blacklist method into Fransdonk’s system to improve the querying and processing of subscription information on a per-subscriber basis. This combination would provide a more detailed and scalable way to manage the subscriber authentication services that Fransdonk already disclosed at a higher level.
  • Expectation of Success: Combining Foti’s subscription-level authentication details with Fransdonk’s general framework would have been predictable, as both references describe systems for authenticating streaming content and seek to achieve cost-effective content distribution.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 13 based on the combination of Fransdonk, Foti, and Norris, relying on similar theories that Foti and Norris provide specific, known techniques to implement the authentication and verification functions taught more generally by Fransdonk.

4. Arguments Regarding Discretionary Denial

• §325(d) Factors: Petitioner argued against denial, stating that the prior art references relied upon (Fransdonk, Norris, Carle, Foti) were never considered by the Examiner during prosecution. The petition therefore raises new issues that have not been previously evaluated by the Office.
• §314(a) Fintiv Factors: Petitioner argued that the Fintiv factors weigh strongly in favor of institution. The co-pending district court litigation will not address the same issues, as the court found the ’778 patent claims ineligible under §101, a ground the Board cannot consider in an IPR. This §101 judgment has the same practical effect as a stay, eliminating concerns of duplicative efforts or inconsistent results between the forums.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’778 patent as unpatentable.