Google LLC v. Advanced Coding Technologies LLC

1. Case Identification

• Case #: IPR2025-01277
• Patent #: 8,230,101
• Filed: July 11, 2025
• Petitioner(s): Google LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Server Device for Media, Method for Controlling Server for Media, and Program
• Brief Description: The ’101 patent describes a media server device that manages digital content stored across both an internal storage device and a separate network storage device. The system provides a unified list of all content to a network player, regardless of its location, and includes functionality for transferring content to network storage to free up internal space, including a method for handling content that cannot be recovered if a network failure occurs during transfer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sloss and Lamkin - Claims 1-3, 5, and 7 are obvious over Sloss in view of Lamkin.

• Prior Art Relied Upon: Sloss (WO 2001/076192) and Lamkin (Application # 2006/0161635).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sloss teaches the core architecture of a media server system. Sloss discloses a multi-tiered network with data centers (the claimed "internal storage") that stream-deliver content to users and can automatically distribute content to intermediate Points of Presence (POPs), which act as network caches (the claimed "network storage device"). Critically, Sloss teaches that non-cacheable content is not transferred to the caches, satisfying the limitation of not transferring content that cannot be recovered after a network failure. While Sloss discloses the system, Lamkin provides the user interface features. Lamkin teaches managing content across a network by providing a user interface that lists content available from various local and network devices and organizes this content in a hierarchical tree structure.
  • Motivation to Combine: A POSITA would combine Lamkin’s user-friendly content management and listing features with Sloss’s network distribution architecture to improve usability. Sloss lacks a detailed user interface for managing distributed content, and Lamkin provides a known, beneficial solution for presenting a unified view of content stored across different locations, which was a recognized need for consumers managing media on multiple devices.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining a known user interface method (Lamkin) with a known network architecture (Sloss) involves applying predictable technologies to improve system management without altering the fundamental operation of either.

Ground 2: Obviousness over Sloss, Lamkin, and Chamberlain - Claims 6, 8, 9, 11, and 12 are obvious over Sloss and Lamkin in view of Chamberlain.

• Prior Art Relied Upon: Sloss (WO 2001/076192), Lamkin (Application # 2006/0161635), and Chamberlain (Application # 2002/0026563).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Sloss/Lamkin combination and adds Chamberlain to address the unique limitation in independent claims 6 and 12: transferring unrecoverable content "after obtaining permission from a user." The Sloss system automatically prevents the transfer of non-cacheable (unrecoverable) content. Chamberlain teaches a caching system where such an automatic policy can be manually overridden by a user. This override functionality directly corresponds to obtaining user permission to perform an action the system would otherwise prevent.
  • Motivation to Combine: A POSITA would be motivated to add Chamberlain’s user-override feature to the Sloss/Lamkin system to provide greater flexibility and user control. It would be a simple and obvious improvement to allow a user to force a transfer of non-cacheable content if they wished, overriding the default protective behavior of the Sloss system.
  • Expectation of Success: The combination would be straightforward, as implementing a user override for an automated system was a well-known programming technique.

Ground 3: Obviousness over Roden, Van Hoff, Ito, and Rathbone - Claims 1-4 and 7 are obvious over Roden, Van Hoff, Ito, and Rathbone.

• Prior Art Relied Upon: Roden (Application # 2006/0101489), Van Hoff (Patent 7,895,633), Ito (WO 2006/073040), and Rathbone (a 2004 publication).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted this combination provides an alternative system based on DVR technology. Roden teaches a recording device (e.g., a TiVo) that stores content internally but also offloads content to a network storage device when local storage is full, providing a unified library view to the user. Van Hoff teaches streaming content from a DVR to a network player (e.g., a PC). Ito discloses a backup process where, if a network failure occurs, the transfer to the backup device is aborted, satisfying the "cannot be recovered" limitation. Finally, Rathbone describes the well-known hierarchical folder ("tree structure") interface used by TiVo devices, which Roden explicitly references as an example.
  • Motivation to Combine: A POSITA would combine these references because they all address aspects of the same commercial ecosystem (TiVo/DVRs). It would be obvious to implement Roden’s storage management with Ito’s network failure handling, Van Hoff’s network streaming capabilities, and the standard TiVo tree-structure interface taught by Rathbone to create a robust, commercially relevant media management system.
  • Expectation of Success: Success was expected as the combination involves integrating known features of a specific, well-understood class of devices (DVRs) to enhance their functionality in a predictable manner.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on variations of the primary combinations, such as adding Rou (an IEEE paper teaching file upload/download) to the Sloss/Lamkin combination for claim 4, and adding Harris (a patent on retrying failed operations) to the Roden combination for claims 6, 8-10, and 12.

4. Key Claim Construction Positions

• "transfer": Petitioner argued this term could mean either "copying/caching" or "moving" data from one location to another. Petitioner contended that the challenged claims are obvious under either construction.
• Means-Plus-Function Terms: Petitioner argued that terms ending in "unit" (e.g., "transfer control unit," "search unit") are means-plus-function terms under §112, ¶6, because "unit" is a nonce word lacking sufficient structural connotation. For the purposes of the IPR, Petitioner identified the corresponding structure for these functions as a general-purpose computer as described in the specification.

5. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued denial is not warranted because, although Lamkin was cited in an IDS during prosecution, it was never substantively discussed or applied in a rejection by the Examiner. Therefore, the Office never considered the specific obviousness combinations presented in the petition, and the petition demonstrates a material error in the initial examination.
• §314(a) (Fintiv): Petitioner argued denial is inappropriate because the parallel district court litigation is at a very early stage. The trial is scheduled for March 2026, well after the statutory deadline for a Final Written Decision in the IPR. Furthermore, the IPR addresses all challenged claims (1-12), whereas the litigation involves a subset, suggesting the IPR will simplify issues for trial.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of the ’101 patent as unpatentable.