Google LLC v. Sandpiper CDN LLC

1. Case Identification

• Case #: IPR2025-00952
• Patent #: 8,719,886
• Filed: May 7, 2025
• Petitioner(s): Google LLC
• Patent Owner(s): Sandpiper CDN, LLC
• Challenged Claims: 1-19

2. Patent Overview

• Title: Delivery of Video Content
• Brief Description: The ’886 patent discloses computer-implemented methods and systems for delivering video content over a network. The technology involves detecting a "trigger signal" within a video stream and processing that signal to determine whether to modify the stream, for example, by inserting an advertisement or "blacking out" content for certain users.

3. Grounds for Unpatentability

Ground 1: Claims 1-19 are obvious over Acharya in view of Carle

• Prior Art Relied Upon: Acharya (Application # 2008/0313669) and Carle (Application # 2007/0198839).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Acharya taught a system for inserting targeted advertisements into a media stream. Acharya’s system used a detection server to find "ad cues" (e.g., SCTE-35 signals) in the stream, which provided timing information to an ad server for inserting new content. Carle was argued to disclose a similar system for substituting content during blackout periods based on geographic restrictions, also using SCTE-35 signaling. Petitioner contended that the combination of Acharya’s ad insertion framework with Carle’s use of geographic parameters and blackout rules met the limitations of independent claims 1, 14, and 15, which require receiving a video stream, detecting a trigger signal, processing it, and modifying delivery based on querying a data repository. Dependent claims were allegedly met by specific disclosures in the combination, such as Carle's teaching of geo-filtering and Acharya's teaching of ad insertion events.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Acharya and Carle because both described analogous systems for modifying video content in an IPTV environment using the same SCTE-35 signaling standard. Petitioner asserted a POSITA would be motivated to incorporate Carle’s teachings on geo-based blackouts into Acharya’s targeted advertising system to enhance its functionality, enabling targeted content delivery during blackout periods.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because the combination involved applying Carle's known techniques for blackout management to Acharya's similar system, using familiar elements like SCTE-35 signaling to produce the predictable result of an enhanced, geographically-aware content modification system.

Ground 2: Claims 2, 14, and 16 are obvious over Acharya and Carle in view of Schein

• Prior Art Relied Upon: Acharya (Application # 2008/0313669), Carle (Application # 2007/0198839), and Schein (Application # 2003/0005445).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Acharya and Carle to address claims requiring an Electronic Programming Guide (EPG). Petitioner asserted that Carle already disclosed obtaining "program guide data" from an "EPG server." Schein was added to provide further, well-known details about EPG systems, including that they provide a schedule of content available at different times and can be personalized based on geography, thereby satisfying the EPG limitations of claims 2, 14(c), and 16(a).
  • Motivation to Combine: A POSITA, working with the Acharya/Carle system that already contemplated using an EPG, would be motivated to incorporate the conventional EPG implementation details taught by Schein. This would simply involve using a known type of EPG to implement the programming guide functionality already present in the primary combination.
  • Expectation of Success: Success would be expected, as this combination amounted to implementing a feature of the Acharya/Carle system (the EPG) using known, standard techniques for EPGs as detailed in Schein.

Ground 3: Claim 9 is obvious over Acharya and Carle in further view of Fransdonk

• Prior Art Relied Upon: Acharya (Application # 2008/0313669), Carle (Application # 2007/0198839), and Fransdonk (Application # 2003/0165241).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 9, which requires using a client's Internet Protocol (IP) address as a "proximity parameter" to determine a geographic region. While the base combination of Acharya and Carle taught using geographic parameters (like ZIP codes from Carle), Petitioner argued Fransdonk explicitly taught using a requester's IP address to map the user to a geographic location for controlling content access.
  • Motivation to Combine: A POSITA would be motivated to use the IP address-based geolocation method from Fransdonk to improve the existing geographic targeting capabilities of the Acharya/Carle system. This would be a simple substitution of one known method of geolocation (ZIP codes) with another well-known and often more precise method (IP addresses) to achieve the same goal.
  • Expectation of Success: Petitioner asserted a high expectation of success because it involved applying a known technique (IP address geolocation) to a known system (Acharya/Carle) to achieve the predictable result of geographically targeted content delivery, as taught by the references.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), stating that none of the asserted prior art references were before the Patent Office during the original prosecution and are not cumulative of the art that was considered.
• Petitioner also argued against discretionary denial under Fintiv. It contended that in parallel district court litigation, the court had already found the ’886 patent claims ineligible under 35 U.S.C. §101. As the Patent Owner had not asserted the patent in its amended complaint, any potential trial involving the patent would occur long after a Final Written Decision in the IPR. Petitioner asserted this eliminated concerns of duplicative efforts, as the issues are distinct (§103 obviousness vs. §101 eligibility) and the trial timeline is not imminent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 8,719,886 as unpatentable.