US 7840437

I'll search for this specific patent number and related litigation records.

Let me verify the claim structure and check for any 2026 appellate activity.

US Patent 7,840,437 — Analyst Summary

Important filtering note: Several search hits contained different identifiers that superficially resemble this number — e.g., US 10,436,437 B1 (Usher et al., assented 2019), EP 3 838 431 A1, and the Papst Licensing digital-camera family (US 6,470,399, which has its own unrelated "437" reference). Per the strict rule, I did not auto-correct or merge any of these into US 7,840,437. Everything below pertains only to US 7,840,437 B2.

Bibliographic data

Priority-date caveat: Google Patents lists a "prior art date" of 1997-06-12, and the E.D. Tex. claim-construction order in Customedia v. DISH states the '437 patent "bears an earliest priority date of June 12, 1997." However, RPX Insight states an estimated priority date of 06/11/1998, which conflicts. I could not fully reconcile this; the 1997-06-12 date is better supported by the continuation data quoted in the patent PDF itself and the district court order, but I flag the discrepancy rather than resolve it.

Abstract (as published)

"A system for handling data and transactions involving data through the use of a virtual transaction zone, which virtual transaction zone removes the dependency of such transaction on the delivery medium of the product. The invention may reside and operate on a variety of electronic devices such as televisions, VCRs, DVDs, personal computers, WebTV, any other known electronic recorder/player, or as a stand alone unit. The transaction zone also provides a mechanism for combining mediums, data feeds, and manipulation of those feeds. The transaction zone also provides a mechanism for controlling the content, delivery, and timing of delivery of the end consumer's product."

Independent claim overview

Claim 1 is the only independent claim — this is explicit in the PTAB Final Written Decision in CBM2017-00019 ("Claim 1, the only independent claim"), and patent owner briefing confirms claims 2–29 depend directly or indirectly from claim 1. So there is exactly one independent claim to summarize:

Claim 1 — "A system for the processing, recording, and playback of audio or video data, comprising:"

1. Receiver apparatus — receives audio/video data from at least one data feed.
2. Memory circuitry — includes a storage device built in to the system and not removable from the system (i.e., internal, non-removable storage, contrasted with portable media).
3. Processing circuitry — processes the data and stores the processed data in the built-in storage.
4. User interface — operatively connected to the processing circuitry for programming which processing functions are applied to received data.
5. Playback circuitry — reads data from the built-in storage and converts it to electronic signals for driving a playback apparatus.
6. Microprocessor with software programming — controls the processing and playback circuitry, and enables (a) recording of rented data, (b) enacting a "simulated return" of that rented data by deleting or scrambling the data from the built-in storage device or blocking further access to it, and (c) notifying a data supplier of the simulated return.

Plain-language reading: It is a combined receive/record/playback box (set-top style) with internal non-removable storage and a programmable user interface, where the microprocessor is specifically programmed to let a user "rent" a title and then perform a virtual return — erasing, scrambling, or locking the title instead of physically returning a tape or disc — and to report that virtual return back to the content/data supplier. The "virtual return" plus notification is the point that the PTAB and Federal Circuit focused on, and it is the element the parties litigated most heavily.

Representative dependent claims (for context, not independent):

• Claim 9 — records rented data onto a portable storage device and permits no more than a specified number of programs to be recorded onto it.
• Claim 10 — limits the portable storage device to one of several specific media (e.g., mini-disc, DVD, PDA).
• Claim 13 — extends the simulated return to require deleting/scrambling/blocking access on the portable storage device as well.
• Claims 17, 18, 27 — the "financial" claims (electronic payment to a credit/debit account; credit card/checking/ATM; Internet subscription service). These were disclaimed by the patent owner during the CBM, after the Board relied on them to find the patent CBM-eligible.

Litigation / PTAB history (relevant to your request)

• District court: Customedia Technologies, LLC v. DISH Network Corp. et al., E.D. Tex., No. 2:16-cv-00129 (JRG) (filed 2016-02-10); Markman order construed numerous '437 terms ("data supplier," "notifying a data supplier of said simulated return," "enacting a simulated return," etc.).
• PTAB CBM2017-00019 (DISH): instituted; Final Written Decision 2019-06-11 held claims 1, 9, 10, and 13–16 unpatentable (Board found the claims directed to the abstract idea of "delivering rented audio/video content to a user," and rejected the Ginter anticipation and Ginter+Stefik obviousness grounds on the "processing circuitry" limitation).
• Federal Circuit: Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020) (decided 2020-03-06; panel included Prost, Dyk, Moore), affirming the § 101 holdings. Related appeals: Nos. 18-2239, 18-2240, 18-2310, 19-1000, 19-1001, 19-1002, 19-1003, 19-1026, 19-1027, 19-1029. A Supreme Court petition (No. 20-135) was filed (appendix dated 2020-07-31).
• Other PTAB matters: CBM2017-00023 and CBM2017-00032 (sibling patents '090 and '029); IPR2017-00936 filed but not instituted on the merits.
• Google Patents lists two Federal Circuit links for this patent: 19-1026 and 19-1001.

On the "CAFC 2026 dockets" request

I could not confirm any 2026 Federal Circuit docket activity involving US 7,840,437. My search of the Federal Circuit's posted scheduled-cases list (July 2026 term) returned no entry for Customedia or this patent, and I found no 2026 appellate filing referencing 7,840,437. Related district-court activity appears to have wound down (e.g., a 2022 dismissal discussed in DISH/EchoStar SEC filings, and dismissal of a 2021 appeal for lack of jurisdiction). I do not have an authoritative, complete docket feed for 2026, so treat this as "no evidence found" rather than an affirmative confirmation of inactivity — a PACER/CAFC docket check would be needed to state it conclusively.

Sources: Google Patents (https://patents.google.com/patent/US7840437/en), the patent PDF (patentimages.storage.googleapis.com), RPX Insight (https://insight.rpxcorp.com/patent/[US7840437B2](/patent/US7840437B2)), PTAB CBM2017-00019 filings via Docket Alarm, E.D. Tex. Claim Construction Memorandum (2:16-cv-00129, Dkt. 56 via CourtListener), and the Federal Circuit opinion/FWD texts hosted at fedcircuitblog.com.

I'll research litigation involving US patent 7840437. Let me search multiple sources.

Let me search for additional cases, including more recent litigation and PTAB/CBMR proceedings.

Let me verify the specific PTAB proceedings and check for any other district court cases involving this patent.

Litigation Involving U.S. Patent No. 7,840,437

Patent: U.S. Patent No. 7,840,437 B2 — "System for Data Management and On-Demand Rental and Purchase of Digital Data Products"
Inventor: William Henry Lewis
Original Assignee: Individual (William Henry Lewis)
Current Assignee of record: Customedia Technologies LLC
Application No.: 10/933,875 | Filed: Sept. 3, 2004 | Granted: Nov. 23, 2010 | Priority: June 12, 1997
Status: Expired – Fee Related (adjusted expiration Mar. 7, 2022)

Bottom line: All litigation I identified involving the '437 patent arises from a single dispute — Customedia Technologies, L.L.C. v. DISH Network Corporation and DISH Network L.L.C. — plus the associated USPTO (PTAB) reviews and Federal Circuit/Supreme Court appeals. I found no other defendants ever sued on the '437 patent. The '437 patent's asserted claims were held unpatentable, and the patent ultimately issued cancellation certificates for the challenged claims. The patent is now expired.

1. District Court Litigation

Customedia Technologies, L.L.C. v. DISH Network Corporation and DISH Network L.L.C.

• Plaintiff: Customedia Technologies, L.L.C.
• Defendants: DISH Network Corporation; DISH Network L.L.C.
• Jurisdiction/Court: U.S. District Court for the Eastern District of Texas, Marshall Division (Judge Rodney Gilstrap)
• Case No.: 2:16-cv-00129 (full docket No. 2:16-cv-00129-JRG)
• Filed: February 10, 2016
• Asserted patents: U.S. Patent Nos. 8,719,090 ('090); 9,053,494 ('494); 7,840,437 ('437); and 8,955,029 ('029) — all titled "System for Data Management and On-Demand Rental and Purchase of Digital Data Products." Infringement was alleged in connection with DISH's addressable advertising services, the DISH Anywhere feature, and Pay-Per-View/video-on-demand offerings.
• '437-specific issues: For the '437 patent, Customedia initially asserted claims 1, 9, 10, and 13–16, accusing various DISH DVRs (e.g., Hopper, Hopper with Sling, Joey, Super Joey, ViP-series DVRs). DISH filed motions for summary judgment of noninfringement and invalidity of the '437 patent.
• Procedural history / outcome:
  • The court initially declined to stay; on August 8–9, 2017, after the PTAB instituted review on all DISH petitions, the court granted DISH's renewed motion to stay pending the USPTO proceedings.
  • Following institution, no asserted claim survived the PTAB or the Federal Circuit.
  • Final outcome: On August 10, 2022, Judge Gilstrap entered an Order and Final Judgment dismissing the case with prejudice in DISH's favor (Dkt. No. 210). The court ordered that "Plaintiff shall recover nothing from Defendants" and that DISH is the prevailing party entitled to recover costs. DISH thereafter moved to have the case declared "exceptional" and to recover attorney's fees. The risk of liability was reported as concluded.
  • Current status: Concluded — dismissed with prejudice in favor of DISH (Aug. 10, 2022).

Sources: CourtListener docket 4530936; CourtListener Judgment & Order, Doc. 210; Unified Patents litigation portal 2:16-cv-00129; Baker Botts experience page.

2. PTAB Proceedings Specific to the '437 Patent

CBM2017-00019 — DISH Network Corp. and DISH Network L.L.C. v. Customedia Technologies, L.L.C. (Covered Business Method Review)

• Parties: Petitioner — DISH Network Corporation and DISH Network L.L.C.; Patent Owner — Customedia Technologies, L.L.C.
• Patent: U.S. 7,840,437
• Filed: December 5, 2016
• Instituted: June 12, 2017 (the PTAB's institution decision references the related IPR2017-00936 and the co-pending E.D. Tex. action, Case No. 2:16-CV-00129)
• Challenged claims: 1, 9, 10, and 13–16 (invalidity under 35 U.S.C. § 101 as abstract ideas; also anticipation/obviousness over Ginter and Ginter in view of Stefik)
• Final Written Decision: July 25, 2018 — the Board held all challenged claims unpatentable/cancelled. The proceeding was terminated the same day.
• Note: Customedia disclaimed dependent claims 17, 18, and 27 during the proceeding, removing the claims the Board had identified as reciting express financial activity.

Sources: Docket Alarm — CBM2017-00019; PTAB Decision Granting Institution, CBM2017-00019 (June 12, 2017); Finnegan case summary.

IPR2017-00936 — DISH v. Customedia (Inter Partes Review of the '437 patent)

• Parties: DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.
• Patent: U.S. 7,840,437
• Status: Not instituted on the merits (per the Google Patents litigation listing, the petition was filed but review was not instituted). The '437 invalidity fight proceeded via CBM2017-00019.

Source: Google Patents — US7840437B2 (lists IPR2017-00936 as "Not Instituted – Merits").

3. Federal Circuit Appeals

Customedia Technologies, LLC v. DISH Network Corp. (appeal of the '437 CBM)

• Court: U.S. Court of Appeals for the Federal Circuit
• Case No.: 2019-1001 (appeal from PTAB No. CBM2017-00019 — the '437 patent). Google Patents also lists CAFC case 19-1026 in connection with the '437 patent.
• Briefing/oral argument: Oral argument held November 6, 2019
• Decision: November 8, 2019 — the Federal Circuit summarily affirmed the PTAB's invalidity holding for the '437 patent. (Reported as 796 F. App'x 746 (Fed. Cir. 2019).)
• Rehearing: Customedia petitioned for rehearing/rehearing en banc on January 7, 2020 (raising Appointments Clause/constitutionality of the APJs); denied March 5, 2020.

Sources: EchoStar investor filing (437 appeal history); Customedia en banc petition, Case 18-2240; CAFC order, 19-1001 (Nov. 1, 2019).

Related companion appeals (same dispute, different patents)

Customedia's opening brief identifies a single cluster of appeals: Nos. 18-2239, 19-1000, 19-1002, 19-1003, 19-1027, and 19-1029 (covering the '090, '494, and related CBM/PTAB decisions). The '437 patent itself corresponds to CBM2017-00019, i.e., appeal 19-1001 (and Google Patents' citation of 19-1026).

Source: CAFC case 18-2240 petition (statement of related cases).

4. Supreme Court

• Customedia filed a petition for a writ of certiorari (July 31, 2020); denied October 13, 2020.
• A petition for rehearing on that denial (Nov. 6, 2020) was rejected November 17, 2020.

Source: EchoStar/DISH SEC filings describing '437 appeal history.

5. Post-Appeal USPTO Action (Cancellation of Claims)

• June 16, 2021: The USPTO issued a certificate cancelling the challenged claims of the '437 patent (and, on July 9, 2021, certificates cancelling claims of the '090 and '494 patents).
• Customedia petitioned the USPTO to withdraw the cancellation certificate; denied November 22, 2021 as to the '437 patent (and June 14, 2022 as to the '090/'494 patents).
• This led directly to the August 10, 2022 district-court dismissal-with-prejudice.

Source: DISH Network 10-Q (Sept. 30, 2022).

Summary Table

Caveats and Notes

• Single dispute: Every '437-related case I located stems from the DISH Network dispute. I found no separate infringement suits against other defendants involving the '437 patent. If you need certainty on this, the definitive check is PACER (the E.D. Tex. docket 2:16-cv-00129) and the Unified Patents litigation portal; I could not run a complete PACER/Darts-IP family query directly.
• Naming variation: Some listings title the dispute "Dish Network Corp. et al. v. Customedia Technologies LLC" (the Baker Botts entry) — this reflects the appellate/PTAB captioning of the same underlying E.D. Tex. case, not a separate lawsuit.
• Case-number precision: The '437 patent's Federal Circuit appeal is consistently tied to CBM2017-00019; sources cite 19-1001 for that appeal, while the Google Patents record also lists 19-1026. I have not been able to independently confirm which of 19-1001 vs. 19-1026 is the sole '437 appeal versus a companion, so I flag both rather than auto-correcting.
• Family litigation: Google Patents flags "First worldwide family litigation" via Darts-IP (family 27010422), but the accessible records center on the U.S. DISH dispute. I cannot confirm any non-U.S. counterpart litigation from the available sources.
• The patent is recorded as Expired – Fee Related with an adjusted expiration of March 7, 2022, so no further infringement actions on the '437 patent are possible.

I'll research this. Note up front: the structured block says "no PTAB activity," but the patent's own Google Patents litigation section lists two PTAB cases — CBM2017-00019 and IPR2017-00936. Let me verify and dig into each.

CBM2017-00019 was DISH Network v. Customedia (not Unified — Google Patents' "Petitioner:" line was mislabeled data-source attribution). Let me get outcomes, the FWD, the IPR, and the appeals.

Good — substantial detail. Now let me pin down the IPR2017-00936 institution outcome, the appellate dockets, and the certificate of cancellation.

Proceedings overview

Correction to the structured block first. The "PTAB proceedings on file" block says the USPTO ODP API returns no AIA trial proceedings for US 7840437. That is wrong or incomplete — the patent's own Google Patents litigation section (the authoritative full text I was given) lists two PTAB cases: CBM2017-00019 (Final Written Decision) and IPR2017-00936 (Not Instituted – Merits). Both are real and both concern the '437 patent. So the count is 2, not 0.

Breakdown: 2 total — 1 with claims invalidated (affirmed on appeal), 1 with institution denied; 0 active, 0 settled, 0 claims sustained. Bottom line for a defendant: this patent is dead weight. Claims 1, 9, 10 and 13–16 were held unpatentable, the Federal Circuit affirmed, the USPTO issued a cancellation certificate, and the patent's structured status shows it expired 2022-03-07. If a demand letter cites claim 1 (the sole independent claim), it cites a claim that no longer exists.

One metadata note: the Google Patents block's "Petitioner: 'Unified Patents PTAB Data'" string is the data-source attribution for the litigation dataset, not the petitioner. There is no evidence of a Unified Patents filing here — the petitioner on both proceedings was DISH Network.

CBM2017-00019 — DISH Network Corporation and DISH Network L.L.C. v. Customedia Technologies, L.L.C.

• Type: Covered Business Method review (AIA § 18; 35 U.S.C. §§ 324, 326)
• Filed: 2016-12-05
• Status: "Final Written Decision" / "Terminated July 25, 2018" (docket aggregation) — gloss: tried to a Final Written Decision; claims held unpatentable; FWD affirmed on appeal; challenged claims cancelled by certificate on 2021-06-16
• Judge panel: Meredith C. Petravick, Michael W. Kim, Kalyan K. Deshpande. The institution decision was authored by APJ Kim with a concurring opinion by APJ Petravick; the FWD is attributed to APJ Petravick. (Docket aggregation also lists APJ Kerry Begley in the case's judge set.)
• Petition grounds: Challenged claims 1, 9, 10, and 13–16 of the '437 patent under 35 U.S.C. §§ 101 and 103. Claim 1 is the only independent claim ("Claim 1, the only independent claim, is illustrative of the challenged claims" — FWD).
• Institution decision: Partially instituted, 2017-06-12 (Paper 11). The Board found it "more likely than not" that at least one challenged claim was unpatentable but instituted "on less than all grounds challenged. We institute on the § 101 based ground only." CBM standing was predicated on DISH having been sued (E.D. Tex. No. 2:16-cv-00129); it rejected Patent Owner's argument that the patent fell outside § 18(d)(1). Post-SAS (Supreme Court, 2018-04-24), the Board modified institution on 2018-05-16 (Paper 50) to add the non-instituted grounds; Petitioner filed a reply on newly instituted grounds 2018-06-15 (Paper 55), and the Board extended the one-year pendency for good cause on 2018-06-01 (Papers 52–53; 35 U.S.C. § 326(a)(11)).
• Final Written Decision: 2018-07-25 (Paper 56). Verdict: "Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1, 9, 10, and 13–16 of the '437 patent are unpatentable." Patent Owner's notice of appeal characterizes the merits ruling as § 101 ("the Board's determination that claims 1, 9, 10, and 13-16 are unpatentable under 35 U.S.C. § 101"). I could not verify whether the FWD also reached the reinstated § 103 ground — the parties' own notice of appeal and the published reporting frame the disposition as § 101, so treat the § 103 ground as unconfirmed.
• Related procedural fight worth knowing: The CBM-eligibility finding rested on claims 17, 18 and 27 (financial-activity element). After institution, Customedia statutorily disclaimed claims 17, 18, and 27, then argued the Board lost authority to issue a final decision. The Board proceeded; the refusal to dismiss was a raised appellate issue.
• Settlement / termination: No settlement. The proceeding ran to FWD.
• Appeal: Yes. Notice of Appeal 2018-09-21 (Paper 59) → Fed. Cir. No. 2019-1001 (Petitioner also filed a cross-appeal notice 2018-10-01). On 2019-11-01 the court issued a published order, Customedia Techs., LLC v. Dish Network Corp., 941 F.3d 1174 (Fed. Cir. 2019), denying Customedia's Arthrex motion to vacate and remand because the Appointments Clause challenge was forfeited (not raised in the opening brief). Per DISH's SEC disclosures, the court heard argument 2019-11-06 and summarily affirmed invalidity on 2019-11-08 (Rule 36). Rehearing/rehearing en banc petitioned 2020-01-07, denied 2020-03-05; cert petitioned 2020-07-31, denied 2020-10-13; cert rehearing filed 2020-11-06, rejected 2020-11-17. USPTO issued the certificate cancelling the challenged claims of the '437 patent on 2021-06-16; a Customedia petition to withdraw the certificate was denied 2021-11-22. District court then dismissed the Texas action with prejudice on 2022-08-10.
• Defensive value: Claims 1, 9, 10 and 13–16 are cancelled, and the § 101 holding is a final, affirmed judgment. Customedia is issue-precluded from relitigating the eligibility of those claims (full and fair opportunity to litigate, through en banc and cert). Any infringement theory built on claim 1 is now baseless — and with claim 1 gone, every dependent claim in the patent (which by definition incorporates claim 1's limitations) is worthless as an assertion vehicle.

Links: FWD reproduced in the CAFC appendix at http://fedcircuitblog.com/wp-content/uploads/2019/11/OpBelowCusto.pdf · institution decision https://www.docketalarm.com/cases/PTAB/CBM2017-00019/Covered_Business_Method_Patent_Review_of_U.S._Pat._7840437/docs/06-12-2017-Board/Decision_Granting_Institution-11-Trial_Instituted_Document.pdf · notice of appeal https://www.docketalarm.com/cases/PTAB/CBM2017-00019/Covered_Business_Method_Patent_Review_of_U.S._Pat._7840437/09-21-2018-Patent_Owner/Notice_of_Appeal-59-Notice_of_Appeal/ · Arthrex order https://g.casetext.com/case/customedia-techs-llc-v-dish-network-corp · DISH 10-Q narrative (certificate dates, appeal history) https://www.sec.gov/Archives/edgar/data/[1001082](/patent/1001082)/000155837022015893/dish-20220930x10q.htm

IPR2017-00936 — DISH Network L.L.C. v. Customedia Technologies, LLC

• Type: Inter Partes Review
• Filed: 2017-02-16
• Status: "Institution Denied" (docket aggregation). The Board's own FWD in CBM2017-00019 (2018-07-25) likewise describes it as "IPR2017-00936 (institution denied)."
• Judge panel: Kalyan K. Deshpande, Meredith C. Petravick, Michael W. Kim (same panel as the '437 CBM).
• Petition grounds: Petition for IPR of claims 1, 9, 10, and 13–16 of the '437 patent — the same claim set DISH attacked in the parallel CBM, but on § 102/§ 103 art rather than § 101 (the exhibit list shows Ex. 1002 — Ginter, WO 96/27155, and Ex. 1003 — Stefik, U.S. 5,634,012, with an Ex. 1004 Wechselberger declaration). I could not verify the precise statutory mapping of each reference to each claim; do not treat the ground-by-ground detail as confirmed.
• Institution decision: Denied. Docketing corroborates: the Patent Owner preliminary response was filed 2017-06-21, a Board decision issued 2017-08-24, DISH requested a refund of the post-institution fee on 2018-01-10, and the refund notice issued 2018-01-17 — a sequence consistent only with no trial. Flag for verification on PTAB E2E: the aggregator labels that 2017-08-24 document "Trial Instituted Document," which conflicts with both the Board's own "institution denied" characterization in CBM2017-00019 and the fee refund. The document title is almost certainly a docket-labeling artifact.
• Final Written Decision: None — never instituted, so no claim was adjudicated and no claim was cancelled in this proceeding.
• Settlement / termination: N/A. (Note: DISH did dismiss its petitions on the sibling '029 patent by agreement on 2017-12-20, with the parties dismissing those claims on 2018-01-09 — that settlement does not concern the '437 patent.)
• Appeal: None available on the merits (a denial of institution is not appealable; 35 U.S.C. § 314(d)).
• Defensive value: No estoppel attaches — § 315(e)(2) estoppel requires a final written decision, and this petition died at the institution stage. That matters if you want to run your own § 102/§ 103 IPR on the surviving claims: DISH's art (Ginter, Stefik) is not estoppel-infected, and you are a different party. In practice, though, there is nothing left to attack.

Links: docket summary https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/IPR2017-00936/DISH_Network_L.L.C._v._Customedia_Technologies_LLC/ · document list (petition, POPR, refund) https://services.patexia.com/lawsuits/DISH-Network-LLC-v-Customedia-Technologies-LLC-id-74157/documents/

Strategic summary

Claim status. The '437 patent has one independent claim — claim 1 — and it is cancelled. Along with it, claims 9, 10, and 13–16 were held unpatentable under § 101, affirmed by the Federal Circuit, and cancelled by USPTO certificate on 2021-06-16. Claims 17, 18, and 27 were statutorily disclaimed by Customedia during the CBM. What remains formally on the patent are the never-challenged dependent claims (2–8, 11, 12, and whatever sits above 27 outside the disclaimed set) — but every one of them depends from cancelled claim 1. There is no live independent claim, no claim was sustained as patentable in any PTAB proceeding, and the patent's structured status shows it expired 2022-03-07. Note the limitation on my certainty here: I could not independently confirm the '437 patent's total claim count or the full text of the cancellation certificate; those should be pulled from the USPTO Patent Center certificate for the record copy.

Estoppel landscape. DISH and its privies are estopped under § 325(e)(2) from raising in district court any ground raised or reasonably could have been raised in CBM2017-00019 — a moot point, since DISH won and the Texas case was dismissed with prejudice on 2022-08-10. For a new defendant, DISH's estoppel does not bind you, and you inherit no liability from it. Your real leverage is not statutory estoppel but issue preclusion against Customedia: the affirmed § 101 invalidity judgment for claims 1, 9, 10 and 13–16, after full appellate review (panel, rehearing en banc, cert), is binding on the patent owner in any subsequent assertion. Also note the procedural ceiling on new challenges: CBM review sunset on 2020-09-16 (no new CBM petitions), and § 101 is not an available IPR ground — an IPR reaches only § 102/§ 103 on patents and printed publications. So there is no clean PTAB path left for the eligibility issue for a third party; you'd rely on the prior judgment plus your own district-court § 101 attack on any untested dependent claim.

Pattern signals. A single petitioner — DISH Network and its affiliate — pursued this patent twice over: a CBM for the § 101 kill and a parallel IPR for the art-based kill (the same dual-track play it ran across the whole Customedia family: '090, '494, '029). No defensive aggregator appears in the chain; the "Unified Patents" string on the Google Patents page is dataset attribution, not a filer. The patent owner appealed aggressively and lost at every turn, including an Arthrex appointments-clause motion that the Federal Circuit deemed forfeited (Customedia, 941 F.3d 1174), a Rule 36 summary affirmance, a denied en banc rehearing, and a denied cert petition. That is a patent owner with no remaining appellate options on this patent.

Recommended next steps

• If you are a defendant and the demand cites claim 1, 9, 10, or 13–16: those claims are cancelled. The dispositive documents are the 2018-07-25 Final Written Decision (Paper 56) — "claims 1, 9, 10, and 13–16 of the '437 patent are unpatentable" — and the 2021-06-16 certificate of cancellation. The controlling affirmance record is the Fed. Cir. order at 941 F.3d 1174 (2019-11-01) plus the Rule 36 judgment (2019-11-08). Put the patent owner on notice under Rule 11 / 35 U.S.C. § 285; the same panel of courts has already shown appetite for that (DISH moved for an exceptional-case fee award after the Texas dismissal). Quoted disposition: "Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1, 9, 10, and 13–16 of the '437 patent are unpatentable."
• Run an issue-preclusion analysis for any dependent claim still nominally recited. Because claim 1 is the only independent claim and it is cancelled, a theory on claim 2 or claim 11 requires proving all limitations of claim 1 — which the Board held unpatentable and which no longer exists. Move to dismiss or for summary judgment rather than filing your own IPR.
• Confirm the record on PTAB E2E before you rely on any of it. Specifically verify: (i) the true character of the 2017-08-24 document in IPR2017-00936 (docket-label anomaly vs. actual denial); (ii) whether the '437 FWD reached the reinstated § 103 ground in addition to § 101; (iii) the issued cancellation certificate's exact claim list. I flagged each of these as unverified rather than guessing.
• No active proceedings and no live trial milestones. Neither proceeding is pending, so there is no institution-deadline, oral-hearing, or one-year FWD date to track. There is also no PTAB activity on file with the ODP ingest — but that is an ODP indexing gap, not a signal of an untested patent; the absence of PTAB activity is emphatically not the story here. The story is that the patent was taken apart in a CBM, the invalidity was affirmed through cert, the claims were cancelled, and the patent then expired.

Unverified items I am explicitly not asserting: the grounds mapping in IPR2017-00936; the '437 patent's total claim count; the significance of Fed. Cir. docket 19-1026 (which appears on the Google Patents family page alongside 19-1001 but which I could not tie to the '437 CBM — the '437 appeal I can document is 2019-1001); and whether the FWD also rested on § 103.

I'll research the assignment record for US 7,840,437 across the sources available.

Found a key reel/frame reference (033031/0452). Let me dig into the assignment record details and the correspondent of record.

Let me pin down the correspondent and any additional recorded assignments (security agreements, etc.).

Assignment & Ownership Analysis — US 7,840,437 B2

Data-access caveat first. I could not open the USPTO Assignment Center / assignment.uspto.gov result set directly in this session (no live document API access; search results returned indexed/derivative pages rather than the raw assignment record viewer). Everything below is reconstructed from (a) the patent's own front-matter continuation data, (b) the family's USPTO file histories as quoted in PTAB exhibits, (c) Google Patents' legal-events block, and (d) the E.D. Tex. complaint in Customedia v. DISH, No. 2:16-cv-00129. Where I could not recover a reel/frame or the correspondent field, I say so rather than guess. The reel/frame value below (033031/0452) is the only assignment reel/frame I could document for this chain, and it comes from a sibling application's file history, not from the '437 record itself — treat it as strongly indicative but not '437-specific.

Inventors

Unusual-pattern check: the classic "inventors depart the assignee within 12 months" fire-sale tell does not apply — there was no corporate assignee at filing. The patent issued (2010-11-23) to the inventor personally, and the later assignment ran from the inventor to a litigation vehicle. There is no evidence of an operating-company employer, no employment-agreement assignment on the record at issue, and no co-inventors. The relevant ownership fact is the opposite of a fire-sale: the individual inventor held the patent for ~4–6 years post-issuance before conveying it.

Original assignee

Original assignee on the issued patent: none — the patent issued to the inventor individually (William Henry Lewis). Google Patents' assignee field records the original assignee as "Individual."

• Product embodying the claims? No evidence of any commercialized product. The specification describes a hypothetical "VPR/DMS" set-top / data-management appliance (and Figure 1–7 hardware), but I found no product literature, no sales, no SEC revenue disclosure, and no manufacturing entity — only the hypothetical deployment example in the spec. The claims were never asserted against an actual competing product line of the patentee; the only assertion was against DISH (a third party).
• Primary line of business: as an individual patent owner, none. The later owner, Customedia Technologies, LLC, is a licensing/litigation entity — its only demonstrated activity in the record is filing suit and defending PTAB proceedings.
• Current status: the patent itself is Expired – Fee Related (adjusted expiration 2022-03-07), and the PTAB-challenged claims (1, 9, 10, 13–16) were cancelled by USPTO certificate on 2021-06-16 (per EcoStar/DISH SEC disclosure). The litigation was dismissed with prejudice on 2022-08-10 after USPTO denied Customedia's petition to withdraw the cancellation certificates. So the asset is both expired and, as to the litigated claims, cancelled.

Assignment timeline

Given the caveat above, here is the recorded/conveyance chain as best recoverable:

• Execution date: not recovered / recorded 2014 (approximate — see date caveat) — Reel 033031 / Frame 0452 (documented for the Lewis→Customedia conveyance in the sibling '494 application file history; see caveat)

  • Conveyance: Assignment
  • Assignor: William Henry Lewis (individual)
  • Assignee: Customedia Technologies, LLC (a Texas limited liability company)
  • Correspondent: Not recovered. I could not retrieve the correspondent-of-record field for this recording. For context only (this is prosecution/litigation counsel, not verified as the assignment correspondent): prosecution was handled with filer David R. Owens and a recurring attorney docket number 081841.0110 across the family; PTAB/litigation counsel included Reed & Scardino LLP (Steven Tepera / Daniel Scardino), Kasha Law LLC (John & Kelly Kasha), and The Mort Law Firm (Raymond W. Mort III). I am not asserting any of these is the assignment correspondent.
  • Context: Transfer-to-asserter — conveyance of the entire family from the individual inventor to a licensing-only LLC that then became the plaintiff in Customedia v. DISH.

• Google Patents legal-events entry: 2016-05-05 — "Assigned to CUSTOMEDIA TECHNOLOGIES, LLC … Assignors: LEWIS, WILLIAM HENRY" (reassignment). This is a separate indexed data point and conflicts in date with the reel-033031 reference cited in the '494 file history (which was referenced in a document executed 2014-09-21). Possible explanations: (i) two separate recordings (an earlier family-wide assignment plus a later confirmatory/'437-specific recording), or (ii) the file-history chain-of-title statement was updated and cites a later reel. I could not reconcile these, so I flag rather than resolve. Reel 033031/0452 is not confirmed by me to be the '437-specific record; it is the record cited for the sibling '494 application.

No other recorded assignments found: no security agreement, no merger, no change-of-name, no release, no second-generation LLC hop, and no defensive-aggregator transfer surfaced in any source I could reach. A Rule 26.1 corporate-disclosure filing in the Federal Circuit appeal identifies "Texas Customedia LLC" as a parent holding 10%+ of Customedia Technologies, LLC — that is a corporate-parent disclosure, not a recorded patent assignment, and I list it as an entity-relationship note only.

If the Assignment Center shows no additional records beyond the Lewis→Customedia link, that is the finding: the chain is a single upstream assignment from an individual inventor to one LLC, with no downstream hops.

Timeline diagram

timeline
    title Ownership of US 7840437
    1997 : Priority application filed
    2004 : Application 10 933 875 filed
    2010 : Patent 7 840 437 issued to William Henry Lewis
    2014 : Assigned to Customedia Technologies LLC
    2016 : Customedia sues DISH in EDTX
         : DISH files CBM2017-00019
    2018 : PTAB holds claims 1 9 10 and 13 to 16 unpatentable
    2020 : Federal Circuit affirms invalidity
    2021 : USPTO cancels challenged claims
    2022 : Patent expires fee related

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT (with one prong absent).
The patent moved from an individual inventor to Customedia Technologies, LLC, a single-purpose licensing LLC that had no product and produced no revenue in the record; its only activity is assertion and PTAB defense. The "IP/Holdings/Licensing" naming prong is absent (the name is "Technologies, LLC"), and there was no operating assignee to transfer from — the upstream holder was the individual inventor. The transfer-to-a-non-practicing-vehicle substance is present; the classic "operating company → shell" shape is not. Evidence: Reel 033031/0452 (as documented in the sibling '494 file history) and the Google Patents reassignment entry recorded 2016-05-05.

2. Known asserter in the chain — PRESENT (via the catch-all prong).
Customedia Technologies, LLC does not appear on the enumerated legacy lists (Acacia, Marathon, IV, Wi-LAN, Mosaid/Conversant, etc.), but it is surfaced by Unified Patents as the patent owner in Customedia Technologies LLC v. Dish Network LLC, E.D. Tex. 2:16-cv-00129, and as the patent owner in CBM2017-00019 and IPR2017-00936. Unified Patents' litigation portal carries the case under its tracked-NPE dataset. That satisfies the instruction's "any entity surfaced by Unified Patents or RPX as a high-frequency plaintiff" prong, though I note the entity's litigation footprint here is essentially a single defendant family.

3. Repeat correspondent across the chain — NOT PRESENT (insufficient data).
There is only one recorded link in the chain, so recurrence cannot be established. I also could not recover the correspondent-of-record for that single recording, so I cannot compare it against NPE assertion lists. Flagging explicitly: this signal is unassessable, not cleared — the assignment correspondent field should be pulled directly from Assignment Center to test it. The recurring docket number 081841.0110 (Baker Botts for DISH; also shown on Customedia-side filings) and the recurring prosecution filer David R. Owens are prosecution/litigation artifacts, not assignment-correspondent evidence.

4. Cascading transfers — NOT PRESENT.
No chained LLC-to-LLC conveyances; no sequence of transfers within 24 months. The chain is a single hop.

5. Pre-litigation transfer — UNCLEAR (date-dependent).
The first infringement suit was filed 2016-02-10 (Customedia v. DISH, 2:16-cv-00129). If the operative assignment was executed/recorded around 2014 (consistent with the '494 chain-of-title referencing Reel 033031/0452 in a Sept-2014 filing), the transfer is ~18 months pre-suit — outside the 6-month window. If instead the operative '437 recording is the 2016-05-05 event, it would be ~3 months post-filing, which is anomalous rather than a pre-suit setup. I cannot pin the execution date, so I decline to score this signal. Either way the practical point stands: the LLC was in place to serve as plaintiff or was papered around the suit.

6. Bankruptcy fire-sale — NOT PRESENT.
No bankruptcy, no §363 sale, no distressed transfer. The provenance is an individual inventor.

7. Privateering — NOT PRESENT.
No operating company transferred the patent to the NPE to assert on the operating company's behalf; there is no sponsoring operating company in this chain at all.

8. Defensive aggregator — NOT PRESENT.
The chain terminates at Customedia Technologies, LLC. It does not end at RPX, AST, LOT, Unified Patents, or OIN. The inverse formulation applies: this patent was neutralized not by acquisition but by PTAB invalidation + expiry (claims cancelled 2021-06-16; patent expired 2022-03-07).

Verdict

NPE — high confidence.

Two signals are present and mutually reinforcing: (i) the asserted claims were conveyed from the individual inventor to a single-purpose, non-practicing LLC (documented as Reel 033031/0452 in the family file history, with the Google Patents reassignment event recorded 2016-05-05), and (ii) that LLC, Customedia Technologies, LLC, is a plaintiff tracked by Unified Patents and asserted the patent against DISH in E.D. Tex. 2:16-cv-00129 (filed 2016-02-10), a defendant that is a competitor of no product the patentee ever made. No operating-company products, no downstream assignments, and no defensive-aggregator terminus exist in the recovered record; the chain was instead terminated by PTAB cancellation (2021-06-16) and fee-related expiry (2022-03-07). The one gap is the assignment correspondent-of-record, which I could not retrieve and which should be checked directly.

Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent 7,840,437), and the legacy interface https://assignment.uspto.gov/patent/index.html — pull the reel/frame AND the correspondent field for the Lewis→Customedia recording to close the two open items (exact execution date; correspondent identity).

I'll search for US 7,840,437's cited prior art references, prioritizing authoritative sources.

Let me pull the actual citation lists from patent databases.

Scope, method, and limitations (read first)

What I was able to do this session: I queried the web (including pages that mirror the USPTO record — Google Patents, Justia Patents, FreePatentsOnline) for US 7,840,437 B2 and its citation lists. I hit my tool-step ceiling before I could complete an element-by-element pull of every front-page reference, so the citation list below is partial and explicitly flagged as such. I did not obtain a direct read of the USPTO PatentCenter/Patent Full-Text (PatFT) "References Cited" field, and I did not retrieve the full text/abstracts of most cited references.

Per the strict rule: every identifier below is reproduced literally. Where I could not verify a title, assignee, or disclosure, I say so rather than fill the gap. Where my training data conflicts with retrieved results, the retrieved results govern.

Metadata flag (contradiction): the task header states the current date is April 26, 2026, while the patent record I fetched is timestamped 2026-09-29. I note this rather than reconcile it. Also, my prior section already flagged that Google Patents/docket sources give a 1997-06-12 priority date while RPX Insight gave 06/11/1998; that unresolved split is material to the § 102 analysis below, so I carry it forward rather than resolve it.

Identity confirmation (no auto-correction): US 7,840,437 B2, "System for data management and on-demand rental and purchase of digital data products," App. No. 10/933,875, filed 2004-09-03, issued 2010-11-23, inventor William Henry Lewis, assignee Customedia Technologies, LLC, 29 claims (claim 1 the sole independent claim), status "Expired – Fee Related," adjusted expiration 2022-03-07. I found no search hit suggesting this number is any other patent; the superficially similar IDs I had previously excluded (e.g., US 10,436,437 B1) remain excluded.

1. References cited — what I could retrieve

The only substantive "Referenced Cited" listing I retrieved is Justia's, which showed this set (URL: https://patents.justia.com/patent/[7840437](/patent/7840437)):

Two caveats you must not skip:

• This list is implausibly short for a 2010-issued, 29-claim patent in this art, and it appears truncated. Treat it as a floor, not the complete "References Cited."
• Entry #5 (US 2005/0198677 A1, Lewis) is the same application's own publication, published after the 2004 filing date. It cannot be § 102 prior art against the '437 and is almost certainly an artifact of how the listing was compiled. I flag it rather than treat it as art.

I found no foreign patent documents in the retrieved list, although the '437 prosecution almost certainly cited some.

2. The controlling structural point for any § 102 mapping

Before mapping references to claims, note the constraint established in my earlier section and in the PTAB record: claim 1 is the only independent claim, and claims 2–29 depend directly or indirectly from it.

Consequence: every one of the 29 claims contains all of claim 1's elements. Claim 1 requires, in substance:

1. receiver apparatus for A/V data from ≥1 data feed;
2. built-in, non-removable memory/storage;
3. processing circuitry that stores processed data in that storage;
4. a user interface for programming processing functions;
5. playback circuitry driving a playback apparatus; and
6. a microprocessor with software programming enabling (a) recording of rented data, (b) "enacting a simulated return" by deleting/scrambling the data or blocking access, and (c) notifying the data supplier of the simulated return.

Therefore a reference that discloses only the receive/record/playback hardware (items 1–5) cannot anticipate any claim of the '437. Neither can a reference that discloses only rental billing or only deletion-on-expiry. Anticipation requires all six, including the "simulated return + notification" pair. This is exactly the limitation the Board and the Federal Circuit focused on, and it is the reason the apparatus-art references above are weak § 102 candidates.

3. § 102 assessment of each retrieved reference

US 5,721,827 — Logan et al., Feb. 24, 1998

• § 102(e) (pre-AIA) candidate only. Its issue date (Feb. 1998) is after the claimed 1997-06-12 priority date, so it is not § 102(a)/(b) art against claims entitled to that date. It could serve as § 102(e) art only if its own filing date precedes the claims' effective filing date — plausible for a Logan-family application filed 1995–96, but I did not verify its filing date.
• Claim mapping: at best it may disclose items 1–5 (networked delivery, reception, storage, playback, UI). No evidence retrieved that it discloses rented-data recording + simulated return + supplier notification. Cannot anticipate claim 1 or any dependent claim as the record stands.
• Best use: § 103 background on networked information delivery.

US 5,903,704 — Owashi et al., May 11, 1999

• § 102(e)-type timing at best; issued after the 1997 priority date. Same caveat as above.
• Claim mapping: if (as its number/date pattern suggests) it is a recording/reproducing apparatus, it may map to items 1–5 but not the rental/simulated-return/notification programming. No anticipation of claim 1–29.
• Best use: § 103 evidence of the state of recording-and-playback apparatus.

US 5,926,206 — Mihara et al., Jul. 20, 1999

• Same timing posture: issued after the 1997 priority date; § 102(e) only, and only if its filing date predates the claims' effective filing date (unverified).
• Claim mapping: likely items 1–5 only. No anticipation.
• Best use: § 103.

US 6,728,760 — Fairchild et al., Apr. 27, 2004

• Timing is the weakest of the four. Filed almost certainly in the late 1990s–2000s and issued 2004. If the claims are entitled to 1997-06-12 (or even 1998-06-11), this reference is post-dated for every purpose and is not prior art. It becomes § 102(e) art only if the priority chain is broken (e.g., claims needing new matter introduced in the 1999-08-26 CIP or the 2004-09-03 continuation).
• Claim mapping: a network/digital-content distribution system might reach items 1–5 and possibly usage restrictions, but there is no retrieved evidence of "notifying a data supplier of said simulated return." No anticipation.
• Best use: none unless priority breaks; then § 103.

US 2005/0198677 A1 — Lewis (applicant's own publication)

• Not prior art. Same disclosure, same inventor, published after filing. Excluded.

Business Wire NPL (Eastman Kodak Picture Network), Dec. 29, 1997

• Timing: published after 1997-06-12 but before the later chain filings. Under pre-AIA § 102(b) it is art only if measured from a filing date more than one year after 1997-12-29 (i.e., essentially the 2004 date, if the claims rely on it); under § 102(a) it is art only if the invention date is later. Applicability is entirely priority-date-dependent.
• Claim mapping: a networked digital-image delivery/printing service is remote from the six claim-1 elements — no built-in non-removable storage, no rented-data simulated return, no supplier notification. No anticipation.

Bottom line on the retrieved citations: none of the references I could retrieve is a credible § 102 anticipation of claim 1 (or, derivatively, any claim), because none discloses the combination of (i) rented-data recording on built-in non-removable storage with (ii) a simulated return by deletion/scrambling/access-blocking and (iii) notification of the data supplier. Their realistic role is § 103 background, and even that is priority-date-sensitive.

4. The actually material prior art: the record the Board and courts used

The face-of-patent citations are not where this patent's validity was decided. Two categories dominate:

(A) The inventor's own admitted prior art — the DivX system.
The '437's own background section describes, as prior art, a disc-based rental scheme in which a player reads an individualized serial number, allows playback "for a set length of time," and whose "on-board modem calls the Divx network on a regular schedule for billing purposes." This is an admission in the specification of: limited-duration rental of digital content, machine-controlled playback windows, and automatic network reporting. It is the closest thing in the document to art against the "rented data / set period / reporting" concept, and it is a § 102/§ 103 admission the patentee cannot argue around as to its own disclosure.

(B) The CBM2017-00019 art: Ginter et al. and Stefik et al.
As recorded in my earlier section (from the PTAB Final Written Decision and petition record), the petitioner relied on Ginter et al. (anticipation) and Ginter + Stefik et al. (obviousness). The Board rejected both the Ginter anticipation ground and the Ginter+Stefik obviousness ground on the "processing circuitry" limitation, and instead held claims 1, 9, 10, and 13–16 unpatentable on § 101 (abstract idea of "delivering rented audio/video content"), with claims 17, 18, 27 disclaimed by the patentee.

Verification flag: I could not verify the specific patent numbers of the Ginter and Stefik references in this session, so I am not asserting them here. For orientation only, both are large well-known families — Ginter et al. cable-television delivery patents (Discovery Communications lineage) and Stefik et al. "digital works" / usage-rights patents (Xerox/ContentGuard lineage), the latter being conceptually on point for usage rights, metering, and expiration of digital content. Confirm the exact numbers from the CBM2017-00019 Institution Decision and Final Written Decision rather than from this summary.

Note the § 102 relevance of Stefik-type art specifically: usage-rights systems with expiration/enforcement of a right are the closest art to the "simulated return" element. That is why the Board's rejection of those grounds turned on a different element ("processing circuitry") rather than on the simulated return — a detail worth preserving.

5. Forward citations (not prior art to the '437 — context only)

Search hits confirm the '437 is itself cited by later documents, including US 10,278,041 B2 ("System and method for remote asset management") and US 2012/0310781 (a Capital One product-rollup publication), and it appears in a litigation exhibit listing references cited in the '585 patent (RPX Insight document). These are post-issuance citations and cannot be § 102 art against the '437.

6. What I could not do, and how to close the gap

Because I exhausted my search steps, the following remain unverified and should be pulled directly to complete the requested mapping:

1. USPTO PatentCenter / Patent Full-Text (PatFT) for App. No. 10/933,875 — the complete "References Cited," including foreign documents and the examiner's field of search. (PatentCenter: https://patentcenter.uspto.gov/ ; Google Patents mirror: https://patents.google.com/patent/US7840437/en)
2. Filing dates of US 5,721,827, US 5,903,704, US 5,926,206, and US 6,728,760 — required to resolve § 102(e) status, which flips entirely on whether the claims get 1997-06-12, 1998-06-11, 1999-08-26, or 2004-09-03.
3. The CBM2017-00019 Institution Decision and Final Written Decision — to capture the exact Ginter/Stefik reference numbers and the Board's element-by-element findings.
4. The E.D. Tex. claim-construction order in 2:16-cv-00129 — for the construed scope of "enacting a simulated return," "notifying a data supplier," and "processing circuitry," which govern how any § 102 mapping must be drawn.

Recommendation: do not rely on the retrieved citation list as complete, and do not characterize any of the four retrieved patent citations as anticipating any claim of US 7,840,437. On the present record, the art that actually mattered to this patent is the applicant-admitted DivX scheme and the Ginter/Stefik references raised in CBM2017-00019, with § 101/§ 103 — not § 102 — carrying the day.

I'll ground this analysis in the actual prior-art record for this patent before reasoning about § 103.

Good — I've recovered the actual prior-art record from the CBM. Let me pull details on each reference and the Board's/Court's reasoning.

Obviousness Analysis — U.S. Patent 7,840,437 B2 under 35 U.S.C. § 103

Building on the prior section. I do not repeat the bibliographic data, claim listing, or litigation history already generated. Two cross-references I rely on: the sole independent claim is claim 1, and the "virtual return"+"notify the data supplier" pair is the point the patent owner and the tribunals focused on.

One contradiction to flag up front. The prior section states that the PTAB "rejected the Ginter anticipation and Ginter+Stefik obviousness grounds on the 'processing circuitry' limitation." The text I recovered (reproduced in the Supreme Court appendix for No. 20‑135) reads as a Decision on Institution, not the Final Written Decision: it concludes "we determine that Petitioner has not demonstrated that it is more likely than not that Petitioner would prevail in showing that at least one of claims 1, 9, 10, and 13‑16 is unpatentable on this ground," and then "We, thus, institute a covered business method patent review of claims 1, 9, 10, and 13‑16 of the '437 patent, but only on the ground of unpatentability based on 35 U.S.C. § 101." So the § 103 ground appears to have been denied institution, and the FWD appears to have reached only § 101. I flag this because it materially affects how much weight the § 103 rejection carries: it is a non-institution ruling on a petition record, not a merits adjudication after full trial. I could not retrieve the FWD itself in this session to confirm the prior section's characterization.

I also could not independently verify the prior section's quoted abstract-idea phrasing. I have not reproduced it.

1. Legal framework and the critical date

Section 103 asks whether the claimed subject matter as a whole would have been obvious to a person of ordinary skill at the effective filing date, considering (i) scope and content of the prior art, (ii) differences between the prior art and the claims, (iii) the level of ordinary skill, and (iv) objective evidence of non-obviousness. Graham v. John Deere, 383 U.S. 1 (1966). Under KSR Int'l v. Teleflex, 550 U.S. 398 (2007), a combination is obvious where it flows from "design incentives and other market forces," where the improvement is "the predictable use of prior art elements according to their established functions," or where the reference teaches that a known technique is "obvious to try."

Critical date problem (this matters a great deal). The prior section flagged an unresolved conflict: Google Patents/E.D. Tex. say 1997‑06‑12; RPX Insight says ~1998‑06‑11. For § 103 the difference is usually immaterial here, because the four principal references all predate both dates (see table below). What is material is something the prior section noted only in passing: the '437 is a CIP chain (08/873,584 → 09/383,994 → 10/126,829 → 10/933,875), and the CBM petitioner introduced Ex. 1011, a "red-line view showing changes between disclosure filed in 08/873,584 and disclosure filed in 09/383,994." That exhibit exists precisely to litigate whether the "simulated return" and related limitations are entitled to the 1997 date or only to a 1999/2002/2004 date. If the operative claim limitations are only entitled to the 1999 or later date, the prior-art universe expands dramatically (the Divx commercial system, and the 1999–2002 personal video recorder art). I treat this as an open question and run the analysis against the earliest (most defendant-unfavorable) date, since a ground that works against the earliest date works a fortiori against any later one.

Level of ordinary skill. The Board has adopted petitioner-proposed skill levels in related matters; I did not retrieve a Customedia-specific finding. A defensible articulation for this patent: a bachelor's degree in electrical engineering or computer science (or equivalent), plus 2–3 years' experience in consumer electronics, digital signal processing, or pay‑TV/content distribution. The field is not esoteric; the references below are all analogous art (content distribution, rights management, consumer A/V recording), and Ginter and Stefik are cross-cited family-level art in the same ecosystem — Stefik's own background section discusses PCT WO 93/01550 (Griswold) and the VPR Systems kiosk, i.e., the same art neighborhood.

2. The prior-art record actually available on this patent

Two points worth stressing, because they are unusually helpful and are undersold in typical § 103 write-ups of this patent:

• Stefik expressly teaches non-removable storage for protected content. Its Security Class table (Table 2) states for Level 3: *"No works would be stored on removable storage."* That is a direct, express teaching of the "storage device built in to the system and not removable from the system" limitation in claim 1 — and it is the very opposite of Divx's removable-disc model that the '437 criticizes.
• Stefik also expressly teaches the automatic-return/no-late-fee model, which the '437 specification lists as a benefit of the invention ("auto return (no late fees)"). Stefik: "Works are automatically returned after a predetermined time period"; in Case 1, the requester "deactivates its copies and removes the contents from its memory"; in Case 2, "The requester automatically deactivates its copies of the digital work. It terminates all current uses and erases the digital work copies from memory."

3. Ground A (primary): Stefik in view of Ginter

3.1 Element-by-element mapping to claim 1

3.2 Motivation to combine (the why)

This is where the ground is strongest, and it is worth being explicit because the Board's institution ruling turned on a mapping defect, not on a lack of motivation:

1. Same field, same problem, same era. Both references address "how do you distribute digital works and get paid without losing control." Stefik's own background criticizes prior art (Griswold, PCT WO 93/01550) for requiring a continuous network connection ("This creates a dependency on the communication facility"), and Stefik's architecture is built to work with removable/embed-able repositories and offline periods. Ginter's VDE is the complementary architecture (secure hardware processing environment + usage rights). A PHOSITA designing a rental system in 1996–97 would consult both; they are the two canonical EPR/RM architectures of the period.
2. Ginter supplies exactly what Stefik's repository abstraction lacks for claim 1: a consumer appliance with a non-removable, protected store and a broadcast front end. Stefik's repository is described at a level of abstraction that begs the question "what device?" Ginter answers it with consumer electronics. This is the classic KSR "predictable use of prior art elements according to their established functions."
3. Stefik supplies exactly what Ginter's architecture needs to satisfy claim 1(b)–(c) with particularity: a concrete loan/expiry/deactivation/erasure mechanism and a concrete fee-reporting channel (credit server → billing clearinghouse). Ginter's reporting is architectural; Stefik's is transactional.
4. Commercial/design incentive. The '437's own specification frames the market problem: Divx locks content to one player and forces account transfers; consumers need format- and platform-independent rental. Stefik+Ginter delivers precisely that — network-mediated rights rather than player-locked media — so the motivation is in the art and in the commercial landscape, not hindsight.

3.3 The defect that sank the petition, and how a better-articulated ground cures it

The institution decision found that the petitioner mapped both "processing circuitry" and "microprocessor" to the same structure, processing means 1200 of Stefik, and separately found that Stefik's ASIC chip is not a "microprocessor." The Board's reasoning: the claim recites both elements as performing functions, so reading them out via a single mapping is impermissible; and mapping both to processor element 1201 would be "deficient for the reasons set forth above concerning processing means 1200."

Two observations that a careful § 103 presentation should make:

• The '437's own disclosure confirms a two-processor architecture, which is how a PHOSITA would have understood the claim. In the '437's FIG. 2 embodiment, microprocessor 12 controls processing means 13 — the microprocessor and the processing circuitry are recited as distinct structures performing distinct roles (system control vs. signal processing). That construction is fatal to the "one structure, two elements" attack, because it shows the two claim elements were understood as separate hardware blocks in a conventional consumer A/V appliance.
• Ginter, not Stefik, should carry the "microprocessor" limitation. Ginter's VDE contemplates a secure processing unit operating alongside a general-purpose processor in the appliance (plus protected storage) — i.e., precisely the two-distinct-processor arrangement the claim requires, and precisely what the Board said Stefik could not supply. Re-anchoring the "microprocessor having software programming to control the operation of the processing circuitry and playback circuitry" element to Ginter, and using Stefik only for the loan/simulated-return/notification elements, removes the double-mapping defect entirely. That is a drafting fix, not a substantive hole in the art.

4. Ground B: Stefik in view of Owashi (receiver + built-in recorder)

Motivation. Owashi's stated object is a receiving unit that selectively records received analog or digital signals, with exchangeability and a deliberate anti-misplay/anti-piracy design (preventing a digitally recorded cassette from being misinterpreted by an analog VCR). Stefik's object is to control and bill for digital copies and prevent uncompensated duplication. Combining them yields a broadcast recorder whose recordings are governed by Stefik's rights/reporting machinery.

Why a PHOSITA would combine them. (i) Both address the same marketplace: broadcast A/V distribution into the home. (ii) Owashi supplies the analog/digital receiving and digitizing front end that the "receiver apparatus" element requires; Stefik supplies the rental/loan layer. (iii) The anti-piracy objective in Owashi and the copy-control objective in Stefik are "two known techniques for the same purpose," which KSR treats as a strong motivation. (iv) Neither reference teaches away.

Weakness. Owashi's "recording medium" is a tape/cassette with rotary heads; it does not, on the abstract I retrieved, describe a built-in, non-removable store or a simulated return. So Owashi alone cannot meet the central limitations — it is a supporting reference for the receiver/recorder hardware, not a substitute for Stefik/Ginter. CBM Ex. 1013 was evidently proffered in that supporting role.

5. Ground C: Stefik (or Ginter) in view of Logan — relevant mainly to the dependent content-filtering and reporting claims

Motivation. Logan expressly compiles a usage log and returns it to the host "for billing" and to adaptively modify subscriber preferences — that is a "notify the data supplier" function on the receiving side. Logan's marking signals can "skip or delete commercial sequences, violent scenes, deleting time-outs in sport shows, or editing of shows to show only highlights," and can include "blocking signals." That maps squarely onto the '437's content filter/editor, User Suitability Criteria, and per-user Data Box concepts, and onto claim 1's "blocking further access" language. Combining Logan with Stefik/Ginter is motivated by the shared objective of personalized, rights-controlled delivery of A/V content to a subscriber playback unit.

This ground is more useful against the specification's distinguishing features (the automatic discretionary content filter/editor) than against claim 1 itself, because claim 1 is drafted broadly and does not require content editing.

6. Ground D: Admitted prior art (Divx and the VPR-type kiosk) in view of Stefik

The '437 specification recites Divx in detail as background — restrictively encoded disc, player reading an individualized serial number, presenting "renting or purchasing" options, a timed viewing period that begins on first play, and an on‑board modem that "calls the Divx network on a regular schedule for billing purposes." It separately recites the VPR Systems cartridge system in which "the copy of the book is erased from the user's cartridge after a certain check-out time has expired."

Taken together, the admitted prior art supplies (a) rental with a defined expiration, (b) notification to the supplier for billing, and (c) automatic erasure at expiration — i.e., three of the four functional pillars of the "simulated return." The specification's own stated problem is that Divx ties the content to a single player and a proprietary physical format. Stefik answers exactly that: it moves control from the media to the repository and expressly teaches storage on non-removable media (Security Level 3).

Because this art is admitted in the specification, it is prior art under § 301 and as an applicant admission independent of § 102(b) — a ground the petitioner did not have to search for. Motivation to combine is essentially stated in the specification itself: to separate the distribution medium from the storage medium.

Caveat. Divx's commercial availability is the subject of the priority-date fight (Divx launched circa 1998). If the operative limitations get only a 1999+ date, this ground is clean; if they get 1997, the Divx-as-prior-art component must rely on the specification's own admission plus the pre-1997 Divx disclosures, which I have not independently verified. The Stefik half of the combination is unaffected either way.

7. Dependent claims

• Claim 9 (portable storage device; no more than a specified number of programs recorded). Stefik's Copy‑Count: "(Copies: positive-integer | 0 | unlimited)" — "a condition which defines the number of 'copies' of a work subject to the right… The Copy-Count for a right is decremented each time that a right is exercised. When the Copy-Count equals zero, the right can no longer be exercised." That is a literal teaching of a hard cap on the number of recorded copies. Ginter adds portable media handled within the protected processing environment.
• Claim 10 (portable device = one of several specific media). Stefik Security Class 2 expressly contemplates "removable storage" ("stored files are minimally encrypted, including ones on removable storage"); Ginter discloses portable storage media and portable protected processing environments. The enumerated media are conventional and their substitution is a predictable design choice (KSR).
• Claim 13 (simulated return extended to the portable device). Stefik's Delete transaction and its "requester deactivates its copies and removes the contents from its memory" operate on copies, including copies made to other repositories — which is the portable-copy case. Stefik's Transfer transaction also erases the work from the server once the copy count reaches zero.
• Claims 14–16, 17, 18, 27. Claims 17, 18, and 27 are the financial claims (electronic payment to credit/debit account; credit card/checking/ATM; Internet subscription service). Stefik's credit server is essentially dispositive: it "stores the fee transactions and periodically communicate[s] via a network with billing clearinghouse," and "in another embodiment, the credit server acts as a 'debit card' where transactions occur in 'real-time' against a user account." Logan's usage-log-for-billing is corroborative. However, these claims were disclaimed by the patent owner during the CBM — so they are no longer enforceable and a § 103 challenge to them is academic. I note this because a § 103 analysis that "wins" on claims 17/18/27 wins nothing.

8. Secondary considerations

I found no evidence of secondary considerations in the record — no nexus evidence, no commercial-success evidence, no copying evidence, and no unexpected-results evidence. The Federal Circuit decision at 951 F.3d 1359 (2020) addressed § 101, not § 103, so it supplies no non-obviousness findings. I therefore cannot identify any objective evidence that would rebut the prima facie case. (I have deliberately not repeated a "no secondary considerations" quotation that appears in one of my search results — that passage comes from an unrelated PTAB proceeding, IPR2021‑00274, concerning robotic material-handling vehicles, and has nothing to do with this patent. Attributing it here would be an error.)

9. Bottom line

My assessment: Claim 1 is, on the merits, highly vulnerable to a well-drafted Stefik+Ginter § 103 ground. The prior section correctly identifies the simulated-return-plus-notification element as the heart of the claim — and Stefik teaches that element with unusual directness (automatic deactivation and erasure at loan expiry, plus End-Charge confirmation to a credit server and billing clearinghouse). The reason the claim survived at the PTAB was not that the art was missing; it was that the petitioner over-loaded a single Stefik structure with two distinct claim elements, and the Board (and patent owner) exploited that. A ground that (i) maps "processing circuitry" to Stefik's repository processing means, and (ii) maps "microprocessor" to a separate general-purpose processor as disclosed in Ginter — a separation the '437's own FIG. 2 implies — has no such defect.

Two honest qualifications: I cannot state an outcome with confidence, because the § 103 ground was never tried on the merits, and because the effective filing date for the "simulated return" limitations is genuinely unresolved (the Ex. 1011 red-line exhibit shows this was contested). If a court were to hold those limitations entitled only to a 1999 or later date, the obviousness case strengthens considerably.

Sources

• Google Patents, US 7,840,437 B2 — https://patents.google.com/patent/US7840437/en (full text supplied in the user message; treated as authoritative)
• CBM2017‑00019 exhibit list (Ex. 1002 Ginter WO 96/27155; Ex. 1003 US 5,634,012 Stefik; Ex. 1011 red-line of 08/873,584 vs. 09/383,994; Ex. 1012 US 5,721,827 Logan; Ex. 1013 US 5,903,704 Owashi; Ex. 1014 '994 file history) — https://services.patexia.com/lawsuits/DISH-Network-LLC-et-al-v-Customedia-Technology-LLC-id-72780/documents/sort_by/created/sort_dir/asc
• Board text (institution analysis; rejection of the § 103 ground on the processing-circuity/microprocessor and ASIC issues) — https://www.supremecourt.gov/DocketPDF/20/20-135/[149122](/patent/149122)/20200731111444724_Appendix%20-%20Customedia%20Techs.%20LLC%20v.%20Dish%20Network%20Corp.%20et%20al.pdf
• US 5,634,012 (Stefik) full text incl. Loan/Return/Delete transactions, Copy-Count, Security Class table — https://uspto.report/patent/grant/[5634012](/patent/5634012) and https://www.everypatent.com/comp/pat5634012.html
• EP 0 715 243 A1 / US 5,634,012 abstract — https://worldwide.espacenet.com/publicationDetails/biblio?CC=US&NR=[5634012A](/patent/5634012A)
• US 5,903,704 (Owashi) bibliographic and abstract — https://worldwide.espacenet.com/publicationDetails/biblio?CC=US&NR=[5903704A](/patent/5903704A) ; related divisional US 6,363,210 — https://patentimages.storage.googleapis.com/90/93/55/5c585cf0dd96e0/US6363210.pdf
• US 5,721,827 (Logan) claim-chart quotations (usage log for billing; marking signals to skip/delete/block) — https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1462804](/patent/1462804)/download-documents and https://www.docketalarm.com/cases/PTAB/IPR2017-00454/...
• US 2005/0198677 A1 "Cited By" listing confirming US 5,721,827 as a cited reference on this family — https://patents.google.com/patent/US20050198677
• Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020) — https://cases.justia.com/static/pdf-js/web/?file=/federal/appellate-courts/cafc/19-1001/19-1001-2019-11-01.pdf
• CBM2017‑00019 docket metadata (lists a 2018‑07‑25 termination date, which conflicts with the 2019‑06‑11 FWD date in the prior section — I could not reconcile this) — https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/CBM2017-00019/DISH_Network_L.L.C._v._Customedia_Technology_LLC/