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`Case IPR2019-01015
`U.S. Patent 8,799,468
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`DISH NETWORK L.L.C.
`Petitioner,
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`v.
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`MULTIMEDIA CONTENT MANAGEMENT LLC
`Patent Owner.
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`
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`IPR NO.: 2019-01015
`ATTORNEY DOCKET NO.: 081841.0120
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`PETITIONER’S REQUEST FOR REHEARING
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`I.
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`Case IPR2019-01015
`U.S. Patent 8,799,468
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`INTRODUCTION
`The Board denied institution of all grounds based upon a misapprehension of
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`the argument set forth in the Petition. In particular, the Board incorrectly
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`characterized Ground 1 as requiring redundant authorization control by both (i)
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`Hoang ‘980’s bidirectional control system, in which the server determines whether
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`the client is authorized to receive the content in response to a content request, and
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`(ii) Hoang ‘980’s unidirectional control system, where the set top box itself
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`determines whether the client is authorized to receive content. Institution Decision
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`(“ID”) (Paper 11) at 10-11. However, Ground 1 set forth in the Petition did not
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`propose the use of redundant unidirectional and bidirectional control for the same
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`data request.
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`Ground 1 in the Petition set forth a theory of invalidity based solely on using
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`Hoang ‘980’s unidirectional control technique, where the set top box is trusted to
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`determine whether the user is authorized to access the requested content. Paper 2
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`(Pet.) at 27, 29-30. When authorizing a realtime video on demand request, the set
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`top box would first authorize the request, then “selectively transmit” a “demand” to
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`the server to initiate content transmission over a bidirectional communication link.
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`Id. at 27, 30, 40, 43. This Board’s misapprehension therefore lies in requiring the
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`content server to make a second redundant authorization check of the same request.
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`1
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`U.S. Patent 8,799,468
`Building off of Hoang ‘980’s suggestion that “even more features can be
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`provided… when a bi-directional communications link is available,” (Ex. 1008 at
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`¶. 0049), Ground 1 of the Petition proposed adding a bidirectional communication
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`link to Hoang ‘980 for the purpose of permitting the unidirectional control
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`technique disclosed therein to also access to “user-initiated VOD [(Video On
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`Demand)] programming.” Paper 2, (Pet.) at 18. As explained in the Petition, this
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`would improve Hoang ‘980 because, without the bidirectional link, Hoang ‘980’s
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`unidirectional control could “control access to linear programming, but not to
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`user-initiated VOD programming.” Id.1 By adding the bidirectional link, this
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`limitation would be overcome, allowing Hoang ‘980 to offer “user-initiated VOD
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`services,” where the user could “control when the programming is delivered from
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`the DOD server” rather than being restricted to “linear programming” with start
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`times determined by the system operator. Id. (emphasis in original).
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`Thus, rather than using two redundant access control techniques for the same
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`request, Ground 1 of the Petition relied on only one access control technique—the
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`unidirectional control technique of Hoang ‘980, to control two types of requests:
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`(1) requests for pre-scheduled linear programming (which would not require use of
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`the bidirectional communication link) and (2) requests for user-initiated realtime
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`on demand programming (which used the bidirectional communication link to
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`1 All emphasis supplied, unless noted.
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`2
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`U.S. Patent 8,799,468
`initiate realtime delivery of the requested content, after first authorizing that
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`request at the set top box). Paper 2, (Pet.) at 17-18, 40-43. Because institution
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`denial was based on a misapprehension of the argument set forth in the Petition,
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`rehearing is respectfully requested.
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`II. ARGUMENT
`A. Misapprehension of Petitioner’s Invalidity Theory Is a Proper
`Basis For Rehearing
`Granting rehearing of an institution denial is appropriate when that decision
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`was based on a misapprehension of Petitioner’s theory of invalidity. See Sony
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`Corp. v. Fujifilm Corp., IPR2017-00618, Paper 11 at *4-*5 (P.T.A.B., Dec. 18,
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`2017)(“We are persuaded that we misapprehended Petitioner’s [invalidity]
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`rationale…. Because we denied institution…based on this misapprehension, we
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`grant Petitioner’s Rehearing Request”). See also 37 C.F.R. § 42.71(d).
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`B.
`The Board Misapprehended Petitioner’s Invalidity Theory
`The Board misapprehended the theory of invalidity set forth in Ground 1 of
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`the petition. The Board interpreted the Petition as requiring use of both Hoang
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`‘980’s unidirectional control technique (where authorization is performed by the
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`client set top box) and its bidirectional control technique (where authorization is
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`performed by the server) to process a single content request. ID (Paper 11) at 16-
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`17.
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`U.S. Patent 8,799,468
`In particular, the Board characterized Hoang ‘980’s bidirectional system as
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`involving the server receiving all content requests, determining whether the client
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`is authorized to receive the requested program, and if so, “transmit[ting] the
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`requested data to the client.” Id. at 10-11. The Board distinguished this approach
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`from Hoang ‘980’s unidirectional system, which was characterized as a system
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`where “the determination of whether the client may access a particular service is
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`performed at the client, not at the server.” Id. at 11. The Institution Decision
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`repeatedly mischaracterized the Petition as involving not the addition of a limited-
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`use bi-directional communication link, but instead the addition of bidirectional
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`control to Hoang ‘980’s unidirectional control system. For instance, the ID states:
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`1. “Petitioner’s proposed combination would use both unidirectional
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`access control and bidirectional access control for the same data request.” Paper
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`11, (ID) at 16.
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`2. “Petitioner has not sufficiently explained why an ordinarily skilled
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`artisan would have been motivated to use both the prior art access control using
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`bidirectional communication and the improved access control using unidirectional
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`communications at the same time.” Paper 11, (ID) at 16.
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`3. “Petitioner has failed to establish why an ordinarily skilled artisan
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`would have used both access control paradigms for the same data request.” Paper
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`11, (ID) at 17.
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`U.S. Patent 8,799,468
`4. “Petitioner’s inference that this system would then also utilize
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`account control using the resource-intensive bidirectional communications is
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`speculative and not sufficiently supported by the evidence of record.” Paper 11,
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`(ID) at 16.
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`5. “Petitioner does not explain persuasively why an ordinarily skilled
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`artisan would have continued to use unidirectional communications to provide
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`access control for a data request when using bidirectional communications
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`already provides access control for the same data request.” Paper 11, (ID) at 17.
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`The Board’s analysis could only be based on a misapprehension of
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`Petitioner’s argument. Ground 1 of the petition exclusively relied upon Hoang
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`980’s unidirectional control technique, where the client performs authorization
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`based on information previously received via the unidirectional path. The petition
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`proposed adding a bidirectional communication link in order to permit Hoang
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`980’s unidirectional control system to “provide realtime access to on-demand
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`material.” Paper 2 (Pet.) at 18, 29. Ground 1 did not rely on that bidirectional link
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`to perform “account control” or “access control” that had already been performed.
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`As explained in the Petition, adding a bidirectional link was desirable
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`because it would permit the modified unidirectional control system “to control
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`access to user-initiated VOD programming,” which was “the Holy Grail.” Id.
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`Using that link, the user could “control when the programming is delivered from
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`U.S. Patent 8,799,468
`the DOD server.” Id. (emphasis in original). Without the upstream, bi-directional
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`link, Hoang ‘980’s system would be limited to controlling “access to linear
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`programming, but not to user-initiated VOD programming.” Id. Thus, as the
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`Petition summarized, an ordinary skilled artisan “would be motivated to provide a
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`bi-directional communications link to implement a VOD service.” Id. at 19.
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`Petitioner did not argue that an ordinarily skilled artisan would be motivated to
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`provide a redundant authorization scheme.
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`Ground 1 of the Petition solely relies on Hoang ‘980’s unidirectional access
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`control technique. For example, the Petition explained that, in the proposed
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`modified system, “the central controlling server 502” would still “generate[]
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`subscription data packets.” Paper 2 (Pet.) at 23. These packets are described as
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`“controlling what DOD services are available.” Id. Using this approach, the
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`“DOD service provider can control exactly what DOD services each client may
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`access.” Id. at 26. The EPG program and subscription data packets received over
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`Hoang ‘980’s unidirectional control system are used by the set top box to
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`“determine whether to transmit (access) or not transmit (display a refusal message)
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`a content request to the service provider network” over the added bi-directional
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`communications link. Id. at 30. In other words, as explained in the Petition,
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`proposed Ground 1 uses Hoang 980’s unidirectional control technique whereby
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`instructions received at the set top box are used to control whether the customer is
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`U.S. Patent 8,799,468
`authorized to access requested content. Id. at 30, 40-43. This corresponds to the
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`Board’s description of Hoang 980’s unidirectional control technique, wherein “the
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`determination of whether the client may access a particular service is performed at
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`the client, not at the server.” ID (Paper 11) at 11.
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`As the Petition explains, when the requested content involves a “realtime
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`access to on-demand material,” the set top box first would “determine whether to
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`transmit … a content request to the service provider network.” Id. at 29-30. This
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`would occur in accordance with the unidirectional control technique of Hoang ‘980
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`shown and described with respect to Figure 11. Id. at 39-40, citing Hoang’980 Fig.
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`11 (“the STB makes a determination as to whether or not to attempt to access
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`content based on whether the STB has a sufficient subscription level for the
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`content.”). The Petition goes on to note that an ordinarily skilled artisan “would
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`implement the ‘demand that server provide requested client specific data’ of Hoang
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`‘980’s bi-directional system as part of the step of ‘access selected DOD service’ at
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`step 706 in Fig. 11.” Paper 2 (Pet.) at 42-43. As is seen in Figure 11, step 706
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`(where the proposed modified system would “demand” that the server provide
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`requested content over the bi-directional communications link), occurs after the set
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`top box has already verified that the STB subscription level received using Hoang
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`‘980’s unidirectional control system, is “sufficient” to permit access to the content:
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`U.S. Patent 8,799,468
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`Hoang ‘980 Fig 11, as reproduced at Paper 2 (Pet.) at 40. In other words, any
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`“account control” or “access control” applicable to the realtime video on demand
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`requests in Ground 1 occurs solely via Hoang ‘980’s unidirectional control
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`techniques, wherein the set top box determines, using data previously received via
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`the unidirectional data stream from the server whether access is authorized or not.
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`As the Petition summarized “the check at step 704 determines whether the [set top
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`box] STB subscription level is sufficient before accessing a DOD service that
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`U.S. Patent 8,799,468
`requires a content request … be transmitted from the STB back to the central
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`controlling server.” Paper 2 (Pet.) at 43.
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`Nowhere in Ground 1 did Petitioner argue that Hoang’s bi-directional link
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`would provide redundant control over access to the requested content. Instead,
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`only after the unidirectional control technique is applied does the modified system
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`“demand” that the server send the requested content. Id. at 42-43. No other
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`authorization checks are described in Ground 1 of the petition. Accordingly, the
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`reasoning upon which institution was denied could only be based on a
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`misapprehension of the invalidity theory proposed in the Petition.
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`C.
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`Institution Is Appropriate Because There Is A Reasonable
`Likelihood That Petitioner Will Prevail
`Under the invalidity theory set forth in the Petition, Institution is appropriate.
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`The Petition set forth in detail the rationale for adding a bi-directional
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`communications link to Hoang ‘980’s unidirectional control system, including an
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`express suggestion and motivation in Hoang ‘980. For example, the Petition stated
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`that:
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`The preferred embodiment in Hoang ’980 may be implemented in
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`systems with uni-directional or bi-directional communication links
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`between the server and the STBs. Ex. 1008, ¶ [0049]. If the
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`system of Hoang ’980’s preferred embodiment is implemented
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`with a uni-directional communications link between the DOD
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`U.S. Patent 8,799,468
`server 450 and the universal STB 600, then the user would be
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`limited to viewing programming no sooner than the time that it is
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`sent from the DOD server 450 to the universal STB 600. That is,
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`the user could not control when the programming is delivered
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`from the DOD server 560 to the universal STB 600 because there
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`is no communications link that allows the user to specify that they
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`want to view the programming. Without this flexibility, the
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`universal STB 600 would control access to linear programming,
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`but not to user-initiated VOD programming. Ex. 1006, ¶ 109.
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`Hoang ’980 discloses “that all aspects of the present invention
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`can be implemented within the bi-directional communication
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`paradigm, the only difference being that even more features
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`can be provided to the digital broadcast and DOD user when
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`a bi-directional communication link is available.” Ex.
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`1008, ¶ [0049]. . . . A POSA would have understood that
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`user-initiated VOD services using a bi-directional
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`communication link are desirable because it takes “the
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`dominant set-top application, which is watching television,
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`and transform[s] it by putting control into the customers’
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`hands.” Id. POSAs recognized that “the idea of providing
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`U.S. Patent 8,799,468
`access to a movie library is very appealing ... and customer
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`response has been enthusiastic.” Id. at 0227. VOD services
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`“emulate[] the current video rental business, so it is easy to
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`justify from an economic point of view.” Id. Specifically,
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`POSAs recognized that “[s]uccessful on-demand services add
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`value in some way for the ... cable operator, and
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`customer. Added value can come from a number of sources:
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`... video-on-demand has demonstrated significantly higher buy
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`rates than impulse pay-per-view in a number of trials ...
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`Availability of on-demand services enhances the customer’s
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`perception of the overall cable service.” Id. at 0226. Thus,
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`there are many reasons a POSA would be motivated to
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`provide a bi-directional communications link to implement a
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`VOD service. Ex. 1006, ¶¶ 109-110.
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`Paper 2, (Pet.)at 18-19.
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`Moreover, the reasoning set forth in the Institution Decision works in favor
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`of Petitioner’s Ground 1, not against it. The Institution Decision faulted the
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`Petition for reliance on “resource-intensive” bidirectional communications
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`techniques. (ID) at 15. But Petitioner’s Ground 1 selectively restricts the use of the
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`bidirectional communications link to only authorized realtime content requests. As
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`U.S. Patent 8,799,468
`explained above, the proposed modification to Hoang ‘980 would utilize the
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`unidirectional control techniques of Hoang ‘980 to first determine whether such a
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`content request was authorized before utilizing the bidirectional communications
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`link. Paper 2 (Pet.) at 22-23, 30, 39, 43 (“The transmission of content requests in
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`the bi-directional systems … is selective because the check at step 704 determines
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`whether the STB subscription level is sufficient before accessing a DOD service
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`that requires a content request to be transmitted from the STB back to the
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`controlling server.”). Accordingly, the reasoning of the Institution Decision
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`actually supports institution, as Ground 1 minimizes use of the bidirectional
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`communications link, employing it only as necessary to implement the added
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`feature of realtime access to on-demand material, and only when access to such
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`material was previously authorized using Hoang ‘980’s unidirectional techniques.
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`III. CONCLUSION
`Because the Board’s reasoning was based on a misapprehension as to the
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`theory of invalidity asserted in Ground 1of the Petition, rehearing is respectfully
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`requested. Moreover, because the arguments and evidence set forth in the Petition
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`establish a reasonable likelihood that Petitioner will prevail in its invalidity
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`challenge, the Board should promptly institute this proceeding.
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`12
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`Date: December 13, 2019
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`Case IPR2019-01015
`U.S. Patent 8,799,468
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`
`/Eliot D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7511
`
`Ali Dhanani (Reg. No. 66,233)
`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
`
`Attorneys for Petitioner, DISH Network
`L.L.C.
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`13
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`Case IPR2019-01015
`U.S. Patent 8,799,468
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 13, 2019, I caused a true and correct copy
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`of the foregoing Petitioner’s Request for Rehearing to be served via electronic
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`mail on the following counsel of record for Patent Owner at the email addresses
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`listed below.
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`Lead Counsel
`Benjamin R. Johnson
`Reg. No. 64,483
`Toler Law Group, PC 8500 Bluffstone
`Cove Suite A201 Austin, TX 78759
`bjohnson@tlgiplaw.com
`Tel. 512-327-5515
`Fax 512-327-5575
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`
`
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`Back-up Counsel
`Jeffrey G. Toler
`Reg. No. 38,342 Toler Law Group, PC
`8500 Bluffstone Cove Suite A201
`Austin, TX 78759
`jtoler@tlgiplaw.com
`Tel. 512-327-5515
`Fax 512-327-5575
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`Date: December 13, 2019
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`/Eliot D. Williams /
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`14
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