Hulu Challenges DivX Streaming Video Patent in IPR Petition

Last Friday, Hulu LLC, alongside real party in interest The Walt Disney Company, filed the petition with the Patent Trial and Appeal Board (PTAB) alleging that ten claims of U.S. Patent No. 10,257,443 are unpatentable as obvious. The streaming platform seeks review of claims directed to streaming videos, particularly those permitting remote viewers to begin watching a video on their device before the video file has been fully downloaded, while simultaneously protecting the video file from piracy.

The filing explains that DivX LLC is the owner of the ’443 patent, entitled “Multimedia Distribution System for Multimedia Files with Interleaved Media Chunks of Varying Types,” and that its field of endeavor is “encrypting, encoding, decoding, and decrypting video multimedia files.” The petition states that DivX asserted the patent against Hulu in a Central District of California lawsuit and that it asserted a related patent against Hulu and Netflix in two infringement suits filed in the same district. Hulu notes that it and Netflix filed an IPR petition as to the related patent last year.

In substance, the 95-page PTAB submission argues that ’443 patent’s claimed solution was wholly obvious and well-recognized by skilled artisans at the time it was developed. Hulu notes that in May 2018, the U.S. Patent Office rejected the applicant’s then-pending ’443 claims as obvious, but later permitted them after discourse and amendment.

As for the technology, Hulu asserts that before the ’443 patent was issued, “it was conventional to store a video file on a remote server, segment the file into pieces for streaming to a local playback device, and commence playback on the streaming device before the entire file had been downloaded.” In addition, other techniques such as the use of the MP4 file formats and certain file compression methods to implement such streaming media systems were also allegedly well-known and used. Hulu also claims that video files were commonly protected against piracy using “Digital Rights Management” techniques, such as partial encryption of specific video frames. 

In turn, the petitioner asserts that the ’443 patent “claims nothing more than obvious combinations of these well-known techniques,” and thus requests that the PTAB institute IPR and cancel the challenged claims. The petitioner also asks for an expedited Notice of Filing Date Accorded, given the related litigation concerning the ’443 patent.

Hulu is represented by WilmerHale LLP.