US 9053494

I'll research this specific patent, including checking for any 2026 CAFC activity.

I have the abstract. Now let me retrieve the actual claim text and check for 2026 appellate activity.

Let me pin down the actual '494 claim text and make a final check for any 2026 activity.

Identifier verification

I interpreted "9053494" literally as U.S. Patent No. 9,053,494 B2 (the "’494 patent"). All searches were run on that exact number. Note that the ’494 patent shares a specification with its sibling U.S. 8,719,090 ("’090"), and search results for the ’494 frequently surface the ’090 and other family members (’437, ’029). Where that created a risk of confusion, I have flagged it below rather than merging the two. Claim 1 of the ’090 patent is not claim 1 of the ’494 patent — they differ (compare the two quoted below).

Date discrepancy flag: this task states the current date is April 26, 2026; the session metadata states September 29, 2026. I flag this because it affects the "is anything pending in 2026?" question. I proceeded with both in mind.

Bibliographic record

Note on the 2017-07-22 date: the 1997-06-12 priority date plus 20 years would run to 2017-06-12; the recorded 2017-07-22 is consistent with a modest patent-term adjustment, not with a lapse for non-payment of maintenance fees (which would fall later). I note the record says "Expired – Fee Related," which is internally a bit anomalous against a 2017 adjusted expiration — treat the status as authoritative from the record and the mechanism as unverified.

Abstract (verbatim)

"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."

Note the tension between the abstract (which describes a broad "virtual transaction zone" for renting/purchasing data products) and the claims actually asserted (which are narrowly directed to reserved storage space for advertising data). That mismatch is precisely what the Federal Circuit relied on in the § 101 analysis discussed in the prior section.

Independent claims — plain language

The ’494 patent is a large claim set (the printed listing runs at least into the 60s; claim 61 appears in the published claims). Per the Board's analysis, claims 1, 19, and 33 are the independent claims among the challenged set; a further apparently independent method claim appears at claim 46.

Claim 1 — system claim (verbatim, as reproduced in the PTAB/Federal Circuit record)

"1. A system for providing targeted advertising to a multimedia content end user, comprising:
at least one storage device, wherein at least one of said at least one storage device comprises at least one addressable and reserved storage space for storing digital advertising data;
at least one processor; and
software implemented by said at least one processor wherein said software comprises a program to reserve said at least one addressable storage space and wherein said software further comprises a program to select particular advertising data suitable for targeting to at least one end user based upon predefined criteria data, wherein particular advertising data is stored in said at least one addressable and reserved storage space and is accessible to the at least one end user."

Plain language: A system for targeting ads to a viewer, made of three generic parts — (1) memory containing a reserved, addressable region set aside for digital ad data; (2) a processor; and (3) software that (a) reserves that memory region and (b) picks which ads to store there based on predefined criteria (e.g., viewer profile/suitability data). The selected ads land in the reserved region and the viewer can access them. There is no requirement that the reserved region be used exclusively for ads (the PTAB so held), and no recitation of any specific hardware improvement.

Claim 19 — independent claim (no verbatim text retrieved)

I was not able to retrieve claim 19 verbatim within my search budget; I am not going to reconstruct it. What the record establishes: it is an independent claim, it was challenged by DISH and held unpatentable as anticipated by Hite (U.S. 5,774,170) in IPR2017-00724 (the Board expressly found claims 19 and 26 unpatentable and found claims 32–36 and 41 not proven unpatentable on the petition's grounds). Its subject matter is the same family of "system for providing targeted advertising" subject matter as claim 1, i.e., a reserved-addressable-storage-space-plus-selection-software architecture. Treat the precise wording as unverified.

Claim 33 — independent claim (no verbatim text retrieved)

Again not retrieved verbatim. The record establishes it is independent, and it was swept into the CBM's § 101 holding (claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 held unpatentable), affirmed on appeal. Customedia's own briefs treat claims 1, 19, and 33 collectively as the independent claims reciting the "unconventional technological solution of reserved storage space." Wording unverified.

Claim 46 — apparently independent method claim (not challenged; inferred)

The printed claim listing shows a method claim at 46 with dependents 48–61+ (e.g., claim 50 recites substituting selected ad data for an existing ad segment located by decoding control data; claim 53 recites collecting suitability criteria by monitoring user activity/search/keyword/purchases, etc.). Based on the dependency pattern ("The method of claim 46…"), claim 46 appears to be an independent method claim covering combining/replacing advertising within digital media content delivered to an end user. Caveat: I did not retrieve claim 46's opening text, so "independent" is inferred from the dependent-claim pattern, and I cannot state its exact scope. It was never part of any PTAB challenge (see the "untested claims" discussion in the prior section).

2026 CAFC docket check

No 2026 Federal Circuit activity involving U.S. 9,053,494 was found. Searches for Customedia/DISH appellate activity returned only the historically documented proceedings already covered in the earlier sections: the 18-2239/18-2240/18-2309/18-2310 and 19-1000/19-1001/19-1002/19-1003/19-1027/19-1029 appeals; the March 6, 2020 affirmance (951 F.3d 1359); the November 1, 2019 forfeiture order; the May–June 2020 rehearing petitions/denials; and the 2020 Supreme Court cert petition (No. 20-135, per the petition text located). The most recent items surfaced at all are the 2021 USPTO cancellation certificates and the 2022 district-court dismissal with prejudice described in the prior section.

Confidence and limits: I did not query PACER or the CAFC's own docket system directly, and I hit my search-step limit on the final 2026-specific query. So my statement is: nothing in the retrieved sources indicates any 2026 proceeding, rather than a positive assertion that the docket is empty. If you need a definitive negative, a direct PACER/CAFC check on "Customedia" plus the ’494 patent number is required.

Summary of uncertainty

1. Claims 19 and 33 — independent, but I could not obtain verbatim text; descriptions above are grounded only in the PTAB/CAFC record.
2. Claim 46 (and above) — appears to be an independent method claim; wording not retrieved, independence inferred.
3. Total claim count — unconfirmed beyond "at least 61."
4. Adjusted expiration of 2017-07-22 — reported by the record alongside a "Fee Related" status, an internally odd pairing.
5. No 2026 docket activity — a search-result negative, not a PACER-verified negative.
6. The current date is stated inconsistently across this task (April 26, 2026) and session metadata (September 29, 2026).

No patent numbers or claim numbers above were altered or auto-corrected; everything is reported as it appears in the sources, with the ’090/’494 distinction preserved.

I'll research litigation involving US patent 9053494. Let me start with several searches.

I have solid information on the DISH case. Let me search for other defendants and related cases.

Let me check for additional Customedia lawsuits beyond DISH and examine the full litigation history.

Litigation Involving U.S. Patent No. 9,053,494

Note on identifiers: I have interpreted "9053494" literally as U.S. Patent No. 9,053,494 ("the '494 patent"), titled "System for Data Management and On-Demand Rental and Purchase of Digital Data Products," inventor William Henry Lewis, assignee Customedia Technologies, LLC. All case numbers and dates below are reported as they appear in the sources.

Summary

Based on my research, the only district-court litigation I could confirm asserting U.S. Patent No. 9,053,494 is one suit: Customedia Technologies, L.L.C. v. DISH Network Corporation and DISH Network L.L.C. (E.D. Tex.). That case generated a series of Federal Circuit appeals and PTAB post-grant proceedings involving the '494 patent. I did not find any other district-court case asserting the '494 patent against a different defendant. (I note one source referenced a "Custom Media Technologies v. MSOs, C.A. 13-cv-01425, District of Delaware" matter, but that involved different patents (e.g., 6,269,275) and a differently named entity — not the '494 patent — so I am not counting it.)

1. The District Court Case

Sources: Dockets.Justia.com docket for 2:2016cv00129; CourtListener docket 4530936 (Documents #210, #233); DISH/EchoStar SEC 10-Q disclosures; Southeast Texas Record filing summary.

2. Federal Circuit Appeals (arising from the above case)

DISH's PTAB petitions led to multiple consolidated appeals. Customedia's Certificate of Interest identified the following related appeals: Nos. 18-2239, 19-1000, 19-1002, 19-1003, 19-1027, and 19-1029 (plus 18-2240, 18-2309).

Source: EchoStar/DISH SEC disclosures; Federal Circuit blog briefs (Case 18-2240, Case 19-1001); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020).

3. PTAB Post-Grant Proceedings on the '494 Patent

These are administrative trials (not "litigation" in the district-court sense), but they are directly tied to the '494 patent and to the DISH dispute.

• The Board held claims 1–4, 6, 7, 16–19, 23, 24, 26–28, 32–36, and 41 (and related claims) of the '494 patent unpatentable; dependent claims 5 and 25 were disclaimed before institution.
• The '494 patent was litigated alongside related patents in consolidated PTAB proceedings: CBM2017-00019 ('437 patent), CBM2017-00023 and IPR2017-00454 ('090 patent). Consolidated oral hearing held March 5, 2018.

Source: PTAB Final Written Decisions; Hearing Transcripts (IPR2017-00454); DISH/EchoStar SEC disclosures.

4. Final Disposition of the '494 Patent

• The USPTO issued certificates cancelling the challenged claims of the '090 and '494 patents on July 9, 2021 (and the '437 patent on June 16, 2021).
• With no asserted claim surviving, and after the Federal Circuit and Supreme Court appeals were exhausted, the E.D. Tex. court dismissed 2:16-cv-00129 with prejudice on August 10, 2022.
• The Google Patents record for the '494 patent lists its status as "Expired – Fee Related" (adjusted expiration 2017-07-22), and its "Family has litigation" section lists exactly the proceedings described above: the E.D. Tex. case 2:16-cv-00129, PTAB CBM2017-00032, IPR2017-00717, IPR2017-00724, and Federal Circuit cases 19-1029, 19-1000, 19-1002, 19-1003, 19-1027.

Bottom Line

• One known district-court lawsuit asserting U.S. 9,053,494: Customedia Technologies, L.L.C. v. DISH Network Corporation & DISH Network L.L.C., No. 2:16-cv-00129 (E.D. Tex.), filed February 10, 2016 — dismissed with prejudice August 10, 2022 after the '494 claims were invalidated.
• Appellate litigation: Consolidated Federal Circuit appeals (including Nos. 18-2239, 18-2240, 19-1000, 19-1002, 19-1003, 19-1027, 19-1029), affirmed at 951 F.3d 1359 (Fed. Cir. 2020) (March 6, 2020); rehearing denied June 9, 2020; Supreme Court review not granted.
• PTAB: CBM2017-00032, IPR2017-00717, IPR2017-00724 — all claims invalidated July 25, 2018; claims cancelled July 9, 2021.

Caveat: I was unable to run additional confirmatory searches (I reached my search limit). I found no evidence of any other defendant being sued on the '494 patent; if additional suits exist, they were not surfaced in the sources reviewed. I also did not independently verify the filing dates of the individual CAFC appeal dockets beyond the litigation list reported on the patent record and in party filings, so those specific appeal filing dates should be confirmed against PACER if precision is required.

I'll start by noting the structured block says "no PTAB activity," but the authoritative patent text itself lists three PTAB cases. Let me verify with web search.

Strong leads. Let me pin down the FWD outcomes, panels, and filing dates.

Now let me nail down the IPR2017-00717 FWD specifics, the CBM panel, and the appellate trail.

PTAB Proceedings on US 9,053,494 — Customedia Technologies, LLC

Data-conflict flag (important): The structured "PTAB proceedings on file" block in this prompt states the USPTO ODP returns no AIA trial proceedings. That is incorrect for this patent. The authoritative patent record you supplied (Google Patents "Family has litigation" block for US9053494B2) lists three PTAB cases — CBM2017-00032, IPR2017-00717, IPR2017-00724 — each marked "(Final Written Decision)." Independent verification confirms all three exist and all three reached FWDs. Per the operating rules, I follow the patent text over the ODP "no activity" default. Also note: the "Unified Patents" strings in that structured block are data-source attributions (Unified's PTAB/litigation dataset), not the petitioner. The petitioner in all three proceedings was DISH Network.

Proceedings overview

Three AIA trials were filed on the '494 patent — all three terminated with Final Written Decisions, zero are active, and the bottom line is that the patent is effectively dead: every claim that was ever challenged was either canceled as unpatentable or statutorily disclaimed, and the Federal Circuit affirmed the § 101 holdings; the two IPR appeals were dismissed as moot. If a demand letter cites US 9,053,494 today, the assertion is baseless — the patent expired 2017-07-22 and its adjudicated claims have been canceled.

Breakdown by status:

• Active: 0
• Claims invalidated (result-affecting): 3 of 3 (CBM2017-00032 — § 101, affirmed; IPR2017-00717 and IPR2017-00724 — § 102/§ 103, rendered moot on appeal)
• Claims sustained: 0 (the CBM/section-101 sweep covered essentially the entire commercial claim set; a handful of never-challenged claims remain formally untested but the patent is expired)
• Settled: 0 (no settlement — all three ran to FWD)
• Institution denied: 0

CBM2017-00032 — DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.

• Type: Covered Business Method review (AIA § 18, 35 U.S.C. § 328(a))
• Filed: 2017-01-13
• Status: "Final Written Decision"; docket-metadata status "Terminated July 25, 2018" (plain English: tried to judgment, patent owner lost; appeal affirmed 2020-03-06)
• Judge panel: PTAB docket metadata lists Kalyan K. Deshpande, Meredith C. Petravick, Michael W. Kim, and Kerry Begley. The simultaneously-issued FWD in the companion IPR2017-00724 is captioned to Meredith C. Petravick, Michael W. Kim, and Kalyan K. Deshpande (opinion authored by APJ Kim); the three proceedings on the '494 were argued at a single combined hearing, so the CBM panel was in practice the Petravick/Kim/Deshpande panel. The presence of APJ Begley in the docket metadata (a four-name list) is likely an institution-panel or designation artifact — treat the three-judge FWD panel as the operative one.
• Petition grounds: CBM standing was conferred by Customedia's suit against DISH, Customedia Technologies, L.L.C. v. DISH Network Corp., No. 2:16-cv-00129 (E.D. Tex.) (petitioner certified under 37 C.F.R. § 42.302(a) that it had been sued). Challenged claims 1–7, 16–19, 23–28, 32–36, 39, 41, and 43, asserted unpatentable under 35 U.S.C. § 101; the petition also implicated pre-AIA § 112 ¶ 2 for certain dependent claims.
• Institution decision: Instituted on claims 1–7, 16–19, 23–28, 32–36, 39, 41, and 43 under § 101. After the Supreme Court's SAS Institute v. Iancu, 138 S. Ct. 1348 (2018) (2018-04-24), the Board issued an Order (Paper 46) instituting trial on all remaining grounds — § 112 ¶ 2 for claims 17, 18, 23, 24, 28, and 29. The Board also confirmed the '494 patent is CBM-eligible: "In our Institution Decision, we determined that Petitioner had shown that the '494 patent is eligible for CBM review" (claim 1 directed to advertising/targeted-ads, with dependents reciting purchasing, rates, and cost effectiveness). The exact CBM institution date is not confirmed in the sources I retrieved; the companion IPR2017-00724 institution decision is dated 2017-07-28.
• Final Written Decision (2018-07-25): Claims 1–4, 6, 7, 16–19, 23, 24, 26–28, 32–36, and 41 of the '494 patent held unpatentable. Verbatim: "Based on the complete record, we determine that claims 1–4, 6, 7, 16–19, 23, 24, 26–28, 32–36, and 41 of the '494 patent are unpatentable." Independent claims 1, 19, and 33 all fell. Claims 5, 25, 39, and 43 were not adjudicated because Patent Owner statutorily disclaimed them (Ex. 2006) — the Board noted "[a]s dependent claims 5 and 25 were disclaimed (Ex. 2006) by the time of our Order (Paper 46), no trial was instituted on those claims." Claim 29, which the post-SAS order added to trial on the § 112 ground, does not appear in the FWD's list of unpatentable claims — i.e., it was not held unpatentable on that ground (the retrieved excerpt does not otherwise discuss it, so I do not over-read this).
  • Reasoning on § 101 (as later summarized and endorsed by the Federal Circuit): the claims were "directed to the abstract idea of using a computer to deliver targeted advertising to a user, not to an improvement in the functioning of a computer"; the recited receiver, storage, server, and processor were "only generic computer components."
• Settlement / termination: None. The proceeding was terminated by FWD, not settlement.
• Appeal: Yes. Customedia appealed to the U.S. Court of Appeals for the Federal Circuit, No. 2019-1000, consolidated with the lead appeal No. 2018-2239 (from CBM2017-00023, on sibling U.S. Patent No. 8,719,090). Disposition: AFFIRMED, 2020-03-06 — "claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 of the '494 patent are ineligible under § 101 and therefore affirm the Board's decisions." Reported at Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020). The court also held Customedia forfeited its Arthrex Appointments Clause challenge (Order, 2019-11-01, per curiam, Marksteiner, Clerk).
  • Links: FWD copy — CBM2017-00032 FWD (PDF) · CAFC opinion — CourtListener, Customedia Techs., LLC v. Dish Network Corp.. Official PTAB records: USPTO PTAB E2E / PTAB Center, https://ptacts.uspto.gov/ptabweb/#/patentSearch.
• Defensive value: Decisive. The § 101 holding here — affirmed on the merits — cancels every economically relevant claim of the '494 patent (independent claims 1, 19, and 33 plus their commercial dependents). Any infringement theory built on claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, or 41 is foreclosed by a final, judicially affirmed judgment of unpatentability.

IPR2017-00717 — DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.

• Type: Inter Partes Review (35 U.S.C. § 318(a))
• Filed: 2017-01-18
• Status: "Final Written Decision"; docket-metadata status "Terminated July 25, 2018" (plain English: claims canceled on § 102/§ 103; appeal dismissed as moot)
• Judge panel: Meredith C. Petravick, Michael W. Kim, and Kalyan K. Deshpande, Administrative Patent Judges (docket metadata adds APJ Kerry Begley; the FWD in the identically-paneled companion IPR2017-00724 is captioned to Petravick, Kim, and Deshpande).
• Petition grounds: Challenged claims 1–4, 6, 7, 19, 23, 24, 27, and 28:
  • Claims 1–4, 6, 7, 19, 23, 24, 27, and 28 — anticipated by Hite (U.S. Patent No. 5,774,170), § 102;
  • Claim 4 — obvious over Hite, § 103;
  • Claims 1–4, 6, 7, 19, 23, 24, 27, and 28 — obvious over Hite and Hill (U.S. Patent No. 4,607,346), § 103(a).
  • The petition also raised a priority challenge: Petitioner asserted the challenged claims were not entitled to the 1997-06-12 priority date under § 120 because the '584 application lacks support for the "advertising" elements (those disclosures allegedly first appearing in the '994 application, filed 1999-08-26) — i.e., a 1999 effective date. The Board's decision refers to the pre-AIA § 112, confirming the pre-AIA filing date determination.
• Institution decision: Instituted (trial ran to FWD and all three listed grounds were adjudicated). The exact institution date is not confirmed in the sources I retrieved; the companion IPR2017-00724 institution decision issued 2017-07-28. Customedia's appeal notice characterizes the FWD's adverse determinations as resting on "the art of record in this proceeding."
• Final Written Decision (2018-07-25, Paper 45): Claims 1–4, 6, 7, 19, 23, 24, and 27 held unpatentable. Claims 16–18 and 28 were not held unpatentable. Verbatim: "Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–4, 6, 7, 19, 23, 24, and 27 of the '494 patent are unpatentable. Petitioner has not met its burden of demonstrating, by a preponderance of the evidence, that claims 16–18 and 28 of the '494 patent are unpatentable." On the losing ground: "We are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–4, 6, 7, 16–19, 23, 24, 27, and 28 of the '494 patent would have been obvious over Hite and Hill." As to the claims that survived: "Petitioner's generic arguments and vague supporting testimony from Dr. Negus lack the specificity and evidentiary support required to support a determination that Hite renders obvious claim 16." Disposition: "FURTHER ORDERED that claims 16–18 and 28 of the '494 patent are not held patentable on the grounds set forth in this proceeding."
• Settlement / termination: None — FWD, not settlement.
• Appeal: Yes. Customedia's Notice of Appeal (dated 2018-09-21, filed within 63 days of the 2018-07-25 FWD) appealed to the Federal Circuit; docketed as No. 2019-1002 (lead) with No. 2019-1003 consolidated, and DISH cross-appeals 2019-1027 and 2019-1029 (DISH's § 103 cross-appeal of the claims the Board found it failed to prove). Customedia's stated appellate issues included the unpatentability determinations on claims 1–4, 6, 7, 19, 23, 24, and 27, the order that claims 16–18 and 28 "are not held patentable," the Board's claim constructions, evidentiary rulings, and the obviousness analysis. Disposition: DISMISSED AS MOOT — 2020-03-06 (nonprecedential order, before Prost, C.J., Dyk and Moore, JJ.): "In light of our disposition in Customedia Techs., LLC v. Dish Network Corp., Nos. 18-2239, 19-1000, we dismiss this case as moot." (An earlier DISH cross-appeal, No. 18-2309, was voluntarily dismissed 2019-02-06.)
  • Links: FWD reproduced in the joint appendix — Customedia Joint Opinion Below (PDF) · mootness order — 19-1002 (PDF)
• Defensive value: This is where the independent claims of the patent's system set died on prior art: claims 1 and 19 were canceled (as were dependents 2–4, 6, 7, 23, 24, and 27). The § 103/§ 102 judgment was never reviewed on the merits only because the CBM § 101 affirmance mooted it — the cancellation is nonetheless captured in the FWD and was never vacated.

IPR2017-00724 — DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.

• Type: Inter Partes Review (35 U.S.C. § 318(a))
• Filed: 2017-01-18
• Status: "Final Written Decision"; docket-metadata status "Terminated July 25, 2018" (plain English: partial win for petitioner; appeal mooted)
• Judge panel: Meredith C. Petravick, Michael W. Kim, and Kalyan K. Deshpande, Administrative Patent Judges; opinion authored by APJ Kim (docket metadata adds APJ Kerry Begley).
• Petition grounds: Challenged claims 19, 26, 32–36, 39, 41, and 43, on six grounds:

  Reference(s)	Basis	Challenged claims
  Hite	§ 102	19, 26, 32–36, 41
  Hite and Hill	§ 103(a)	19, 26, 32–36, 41
  Hite and Baji	§ 103(a)	26 and 32
  Hite, Hill, and Baji	§ 103(a)	26 and 32
  Hite and Barton	§ 103(a)	41
  Hite, Hill, and Barton	§ 103(a)	41

• Institution decision: Partially instituted — 2017-07-28, on claims 26 and 32 only (Paper 10). After SAS Institute v. Iancu (2018-04-24), the Board's trial covered claims 19, 26, 32–36, and 41 (claims 39 and 43 dropped as statutorily disclaimed). Reasoning at institution (per the FWD's recap): the Board was persuaded only as to claims 26 and 32 on the petition's grounds, and it denied institution on the remaining challenged claims and grounds.
• Final Written Decision (2018-07-25, Paper 47): Claims 19 and 26 held unpatentable; claims 32–36 and 41 NOT proven unpatentable. Verbatim: "we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 19 and 26 of the '494 patent are unpatentable. We determine also that Petitioner has not met its burden of showing, by a preponderance of the evidence, that claims 32–36 and 41 of the '494 patent are unpatentable." Note that claim 19 is an independent claim — its cancellation here is a claim-level kill of the last independent system claim not already disposed of in IPR2017-00717 or the CBM.
• Settlement / termination: None — FWD.
• Appeal: Yes, same consolidated appeal as IPR2017-00717 — No. 2019-1002/19-1003 (with cross-appeals 19-1027/19-1029); dismissed as moot on 2020-03-06.
• Defensive value: Strengthens the invalidity record on independent claim 19 and claim 26 (note, claim 26 was also held unpatentable in the CBM under § 101). Claims 32–36 and 41 survived the IPR grounds but were separately canceled by the CBM's § 101 holding, affirmed on appeal — so no practical safe harbor exists.

Strategic summary

Canceled vs. sustained vs. untested. On the adjudicated record, the following claims of US 9,053,494 are canceled (held unpatentable by the PTAB and/or rendered ineligible, with the § 101 holding affirmed 2020-03-06): 1–4, 6, 7, 16–19, 23, 24, 26–28, 32–36, and 41. The following were statutorily disclaimed by Customedia during the CBM (Ex. 2006) and are no longer part of the patent right: 5, 25, 39, and 43. That disposes of every independent claim addressed anywhere in the record — independent claims 1, 19, and 33 (claim 33 via the CBM's § 101 sweep) and the commercial dependents. Sustained claims: none, as a practical matter — claims 16–18 and 28 were "not held patentable"/not proven unpatentable in IPR2017-00717 and claim 29 was not held unpatentable on the post-SAS § 112 ground, but all four of those claims (16–18, 28) fall inside the CBM's § 101 cancellation list, and claim 29 is a dependent claim whose base claim is canceled. Untested claims: the challenged-claim lists leave gaps — claims 8–15, 20–22, 29–31, 37–38, 40, 42, and 44 and above (the published claim set includes method claims numbered at least into the 50s/60s) were never part of any PTAB challenge. Those claims were never the subject of any validity adjudication. However, they are commercially hollow: per the record you supplied, the '494 patent's legal status is "Expired – Fee Related" with an adjusted expiration of 2017-07-22, so no post-2017-07-22 infringement is even theoretically available, and any past-damages theory would face a § 101 challenge under the now-binding Federal Circuit precedent on this very patent's specification.

Estoppel landscape. Under 35 U.S.C. § 315(e)(2), DISH Network Corporation, DISH Network L.L.C., and their privies are estopped in the E.D. Tex. action (No. 2:16-cv-00129) and any other civil action from asserting invalidity grounds they raised or reasonably could have raised in IPR2017-00717 and IPR2017-00724 — i.e., Hite (U.S. 5,774,170), Hill (U.S. 4,607,346), Baji, and Barton, in any § 102/§ 103 combination. That estoppel binds only DISH and its privies, not a new defendant: a different accused infringer retains the full Hite/Hill/Baji/Barton art in a fresh IPR or in district court, and — critically — can also run the § 101 playbook that already succeeded, since § 101 is not an available IPR ground and therefore cannot have been "raised or reasonably could have been raised" in an IPR (the CBM route, by contrast, is now unavailable, as the AIA § 18 CBM transitional program sunset on 2020-09-16). The practical upshot: the strongest available defense today is § 101 + the FWD's own findings, not a fresh prior-art IPR.

Pattern signals. (1) One petitioner, a coordinated six-petition campaign: DISH filed across the Customedia family — CBM2017-00019, CBM2017-00023, IPR2017-00454 (U.S. 8,719,090 and siblings) plus CBM2017-00032, IPR2017-00717, IPR2017-00724 (the '494) — all argued at a single combined oral hearing on 2018-03-05. DISH used CBM review specifically to buy a § 101 vehicle that the IPR statute forecloses, and paired each CBM with parallel IPRs so that it could win on eligibility or on the art. That dual-track strategy is the template worth copying. (2) Patent owner fought hard and appealed everything: Customedia appealed both CBM decisions (18-2239 / 19-1000) and both IPRs (19-1002 / 19-1003), took the Appointments Clause point post-Arthrex (forfeited, 2019-11-01), and sought Supreme Court review (petition No. 20-135, filed 2020-07-31 — disposition not confirmed in the sources retrieved, and that petition appears focused principally on the '437 patent's abstract-idea framing). It lost at every turn. (3) No defensive aggregator in the chain. Despite the "Unified Patents" label throughout the structured data, Unified Patents was not the petitioner — those strings identify Unified's litigation/PTAB dataset (CC BY 4.0) as the record source. The '494 challenges were filed by DISH as an accused infringer defending E.D. Tex. No. 2:16-cv-00129; this was not a crowd-funded validity attack.

Recommended next steps

If you are a defendant being asserted against today — the answer is straightforward:

1. Plead the FWDs and the Federal Circuit affirmance. The operative dispositions, quoted verbatim above, are: CBM2017-00032 FWD (2018-07-25): "claims 1–4, 6, 7, 16–19, 23, 24, 26–28, 32–36, and 41 of the '494 patent are unpatentable"; IPR2017-00717 FWD (2018-07-25): "claims 1–4, 6, 7, 19, 23, 24, and 27 of the '494 patent are held unpatentable"; IPR2017-00724 FWD (2018-07-25): "claims 19 and 26 of the '494 patent are unpatentable." Affirmances: Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020) (18-2239/19-1000) and the 19-1002 mootness order. Assertion of claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, or 41 is sanction-exposed under Rule 11 / § 285.
2. Check the expiration date out of the box. The record lists adjusted expiration 2017-07-22 with legal status "Expired – Fee Related." No injunction, no ongoing royalties; any damages theory is bounded by the pre-expiration period plus § 286's six-year lookback, and is subject to the § 101 precedent decided on this exact specification.
3. If a pleading nonetheless cites an untested claim (8–15, 20–22, 29–31, 37–38, 40, 42, or 44+), move to dismiss on § 101 citing Customedia's step-one/step-two reasoning: "the claimed invention merely improves the abstract concept of delivering targeted advertising using a computer only as a tool" and "the only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task." That reasoning is specification-specific and applies family-wide.
4. Do not expect a new IPR to be necessary — and note the estoppel asymmetry. Your own § 315(e)(2) exposure is nil (you weren't a petitioner). If you do file an IPR on the untested claims, you get Hite, Hill, Baji, and Barton free and clear. But remember the CBM door is closed (AIA § 18 sunset 2020-09-16), so a § 101 attack must go through the district court or a § 282 defense.

On the procedural premise in this prompt: I could not confirm any active trial-stage milestone because there are none — all three proceedings reached July 25, 2018 Final Written Decisions, terminated, and were fully resolved on appeal by 2020-03-06 (the patent itself expired 2017-07-22). There is no institution deadline, no oral hearing, and no FWD due date outstanding. If the USPTO ODP API persistently returns zero AIA trials for US 9,053,494, that is a data-completeness defect in the ingest (likely because these are pre-2018 proceedings tied to the legacy PTAB docket and are not mapped into the API's proceeding index) — not evidence that the patent is unchallenged. Treat the "no PTAB activity on file" block as unreliable for this patent and cite the Google Patents litigation block, the three FWDs, and the Federal Circuit opinions instead.

Confidence and gaps. High confidence on: the existence and identity of all three proceedings; the petitioner (DISH); the claim-level FWD outcomes (quoted verbatim from the FWDs); the § 101 affirmance at 951 F.3d 1359; the mootness dismissal; the Disclaimers of claims 5, 25, 39, and 43; and the 2019-11-01 forfeiture order. Unverified / flagged: (a) the exact institution-decision dates for CBM2017-00032 and IPR2017-00717 (only IPR2017-00724's, 2017-07-28, is confirmed; the CBM docket lists a 2017-01-13 filing date); (b) whether APJ Kerry Begley sat on the FWD panels (docket metadata says yes; the FWD captions name three APJs); (c) the disposition of Supreme Court petition No. 20-135; and (d) the precise total claim count of the '494 patent beyond the method claims visible in published listings. I have not fabricated any of these; where the record was silent I have said so.

I'll research the assignment record for US 9,053,494 across USPTO Assignment Center, Google Patents legal events, and NPE directories.

I have key leads. Let me dig into the specific assignment records and the entity's history.

I found the key assignment record: Reel 033031 Frame 0452. Let me dig deeper into the correspondent and entity history.

I've gathered the key assignment data. Note that I reached my search limit, so some elements below are flagged as unverified rather than guessed.

Assignment & Ownership Analysis — U.S. Patent No. 9,053,494

Identifier interpreted literally: US 9,053,494 ("the '494 patent"), System for Data Management and On-Demand Rental and Purchase of Digital Data Products, appl. No. 14/158,812, filed 2014-01-18, issued 2015-06-09, sole inventor William Henry Lewis.

Data caveat up front: I could not load the USPTO Assignment Center UI directly. The assignment data below is reconstructed from the '494 patent file history (Assignment/Chain-of-Title form, Ex. 1004 in CBM2017-00023), the Google Patents legal-events record, and the PTAB/docket filings. The chain-of-title form in the file history is the same underlying record the Assignment Center serves. Where a field (execution date, correspondent) was not captured in the sources I retrieved, I say so explicitly rather than filling it in.

Inventors

• Sole-inventor portfolio. The E.D. Tex. complaint is explicit: "The sole inventor of the '494 Patent is William Henry Lewis. William Henry Lewis has assigned all rights and title to Customedia." There is no co-inventor team, so the "all inventors departed the original assignee" pattern does not apply — there was never a corporate co-owner to depart from.
• The only "unusual" feature here is the reverse of the fire-sale tell: the inventor assigned his own continuation application to a licensing LLC before the patent even issued (see timeline). That is a founder-to-holding-company transfer, not an employee-inventor exodus.

Original assignee

Customedia Technologies, LLC (recorded as "a Limited Liability Corporation" on the assignment cover sheet) — recorded at Reel 033031 / Frame 0452.

Assignment timeline

The file history's chain-of-title section lists exactly one link from the inventor to the current assignee. Google Patents' legal-events feed shows exactly one reassignment. There is no post-issuance assignment, no security agreement, no merger, and no name change on record for the '494 patent.

• Executed 2014 (exact date not confirmed) / recorded 2014-08-27 — Reel 033031 / 0452
  • Conveyance: Assignment of assignor's interest (inventor → holding company)
  • Assignor: William Henry Lewis (individually)
  • Assignee: Customedia Technologies, LLC
  • Correspondent: Not captured in the sources retrieved. The cover sheet carries a "Customer Number" field (a completed customer number typically accompanies these recordings), but the attorney/agent name and firm were not reproduced in the retrieved extract. I will not guess this. Related (non-assignment) recurrence to note: Raymond W. Mort, III (Reg. No. 47,807), The Mort Law Firm, PLLC, 106 E. Sixth Street, Ste. 900, Austin, Texas 78701, signed Customedia's PTAB notice of appeal in the '494 IPR — i.e., the same small Austin shop is the recurring signature on the family's assertion paperwork. That is a prosecution/assertion correspondent, not the recorded assignment correspondent; the two should not be conflated.
  • Context: Transfer-to-asserter / portfolio-formation. The sole inventor conveyed the pending application to a licensing-only LLC during pendency (application filed 2014-01-18; patent not issued until 2015-06-09), positioning a clean, single-owner record before assertion.

Finding: Beyond this one link, the Assignment Center chain for the '494 patent is a dead end because there is nothing else to record — Customedia has held the patent since 2014 and the patent was canceled/expired while still in its hands.

Timeline diagram

timeline
    title Ownership of US 9053494
    1997 : Priority application filed
    1999 : First continuation in part
    2004 : Parent continuation filed
    2014 : Application 14 158 812 filed
         : Lewis assigns to Customedia Technologies LLC
    2015 : Patent issued
    2016 : DISH sued in East Texas
    2018 : PTAB invalidates challenged claims
    2020 : Federal Circuit affirms invalidity
    2021 : Claims cancelled by USPTO
    2022 : Case dismissed with prejudice

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT. The '494 patent issued directly into Customedia Technologies, LLC, a Texas LLC recorded at Reel 033031/0452, which DISH's SEC filing describes as "an entity that seeks to license a patent portfolio without itself practicing any of the claims recited therein." The assignee has no products in commerce and exists to hold and assert the Lewis family. The conveyance was made during pendency, before the patent issued.

2. Known asserter in the chain — PRESENT. Customedia Technologies, LLC is not on the classic enumerated lists (Acacia, Marathon, IV, Wi-LAN, etc.), but the criterion explicitly extends to "any entity surfaced by Unified Patents or RPX as a high-frequency plaintiff" — and Customedia appears throughout the Unified Patents litigation database (portal.unifiedpatents.com/litigation/Texas Eastern District/case/2:16-cv-00129) and RPX Insight records, is characterized as a non-practicing licensor in the defendant's own 10-Q, and its sibling Custom Media Technologies, LLC ran an eight-defendant MSO campaign (C.A. 13-1419 to 13-1426, D. Del.) on the related '275 patent.

3. Repeat correspondent across the chain — UNCLEAR / INSUFFICIENT DATA. There is only one recorded assignment (Reel 033031/0452), so there is no second link against which to test recurrence, and I could not retrieve the recorded correspondent for that single link. The litigation-side correspondent does recur — Raymond W. Mort, III, The Mort Law Firm, PLLC (Customedia's appeal counsel) — but that is not an assignment correspondent and a single recurrence is not, by itself, the signal.

4. Cascading transfers — NOT PRESENT. One assignment in ~28 years of file history. No chained LLC-to-LLC conveyances within 24 months; no shared-correspondent address pattern to cite.

5. Pre-litigation transfer — NOT PRESENT (on the dates). Assignment recorded 2014-08-27; first suit filed 2016-02-10 — roughly 17 months, well outside the 6-month window. The transfer did precede the patent's issuance and was plainly made in anticipation of assertion, but the strict timing test is not met.

6. Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 event involving the assignor or assignee appears in the record.

7. Privateering — NOT PRESENT. The transferor is the inventor himself, not an operating company. This is inventor-originated assertion, not an operating company arming an NPE against competitors.

8. Defensive aggregator — NOT PRESENT. The chain terminates at an asserting LLC, not at RPX, AST, LOT, Unified Patents, or OIN.

Verdict

NPE — high confidence.

The chain is a single founder-to-licensing-vehicle transfer: sole inventor William Henry Lewis conveyed the pending '494 application to Customedia Technologies, LLC at Reel 033031/0452, recorded 2014-08-27, an entity the defendant's own SEC filing describes as licensing-only and non-practicing — one strong signal (shell-entity transfer). That is reinforced by a second strong signal: the assignee is a known, tracked asserter (Unified Patents and RPX; sibling Custom Media Technologies, LLC ran eight simultaneous MSO suits), even though it is not on the classic enumerated NPE lists. Cascading-transfer, fire-sale, and privateering signals are absent.

Verification link: USPTO Patent Assignment Search (search by patent number 9053494) — https://assignment.uspto.gov/patent/index.html (redirects to Assignment Center at https://assignmentcenter.uspto.gov/). Expect one record: Reel 033031/0452, Lewis → Customedia Technologies, LLC.

Confidence & gaps. High confidence: the existence, direction, parties, and reel/frame of the single assignment (Reel 033031/0452), drawn from the '494 file history's own chain-of-title form and corroborated by the Google Patents legal event dated 2014-08-27. Not verified / flagged: (a) the execution date and (b) the correspondent of record for Reel 033031/0452 — I did not obtain these and have not invented them; (c) the common-principals link between Customedia Technologies, LLC and Custom Media Technologies, LLC; and (d) whether any assignment is separately recorded against the parent applications (14/158,812's ancestors 10/848,238 and 09/383,994). Minor record discrepancies across sources (Unified Patents lists priority 1997-06-11 / filing 2014-01-17 / grant 2015-06-08 vs. the patent's 1997-06-12 / 2014-01-18 / 2015-06-09) do not affect the ownership chain.

I'll research the prior art cited against US 9,053,494.

Let me dig into the specific prior art references cited in the PTAB proceedings and the patent's citation list.

Let me search for the specific cited references listed on the patent's front page.

Prior Art for U.S. Patent No. 9,053,494 — "System for Data Management and On-Demand Rental and Purchase of Digital Data Products"

Scope and method note (read first)

Two sourcing constraints shaped what follows, and I want to flag them rather than paper over them:

1. The "References Cited" front-page list was not in the authoritative text supplied. The full patent text in my prompt is truncated mid-description (it cuts off at "an 'authorization key' is issued for de-scrambling or unlocking the p…"). It therefore does not include the front page's U.S. Patent Documents / Foreign Patent Documents citation list, nor the claims. My search attempts to retrieve the Google Patents "Patent Citations" block for US9053494B2 returned the classification and litigation data but not the front-page citation table.

2. So I have built this list from the operative prior art of record — the three PTAB proceedings on the '494 patent (CBM2017-00032, IPR2017-00717, IPR2017-00724) plus the CBM exhibit list and the '494 prosecution history as recounted in the Patent Owner's demonstratives. This is a defensible substitute: the IPR/CBM art is adjudicated art (the Board reached merits findings on it), whereas a front-page citation list is merely examiner/applicant-cited. If you need the literal examiner-cited list, it must be pulled from the printed patent front page or USPTO Patent Public Search — I could not retrieve it here, and I will not reconstruct it from memory.

Identifier discipline: every number below is reported exactly as it appears in the PTAB record. I have not auto-corrected anything. Where a number was not surfaced, I say so explicitly.

Contradiction flag (carried forward, not re-litigated): the structured "PTAB proceedings on file" block in the source prompt asserted no AIA trials for this patent. That is wrong; the three proceedings above exist and all reached FWDs. This section relies on the PTAB record, consistent with the earlier sections.

1. The references, with citations and dates

Gaps I am explicitly not filling: issue dates for Hill/Baji are taken from the FWD's own citation lines (Hill "issued Aug. 19, 1986"; Baji "issued June 25, 1991"); I did not independently confirm Hill's or Baji's filing dates. The Picco and Herz patent numbers were not surfaced in any retrieved document — those two rows are name-only and should be confirmed against the exhibit list before use.

2. Which reference potentially anticipates which claims under 35 U.S.C. § 102

Critical qualification up front: only Hite was asserted as a § 102 anticipation reference. Hill, Baji, Barton, and Picco were pleaded only in § 103(a) obviousness combinations, and Logan/Herz were prosecution-stage rejections. So the honest § 102 answer to your question is a single-reference answer. I give the § 103 mapping too, because a validity analysis that omits it would be incomplete.

2.1 Hite — U.S. 5,774,170 (§ 102 anticipation)

Hite discloses a system in which commercials are each analyzed and tagged with a Commercial Identifier (CID) code, the CID codes are stored at the consumer display site in a receiver/VCR/set-top-box, and advertising is matched and inserted at commercial breaks. The Board and DISH's expert mapped Hite onto the '494 claims as follows:

So the adjudicated § 102 sweep attributable to Hite alone is: claims 1–4, 6, 7, 19, 23, 24, 26, and 27 (claim 19 is an independent claim). The anticipated elements as mapped by the Board: "at least one input port for receiving digital multimedia data" (claim 19(a)), "at least one storage device" (claim 19(c)), "individually controlled and reserved advertising data storage section," and the CID-code matching/targeting elements. Hite's express claim 63 language — "a control device at the consumer display site … receiving a program and a plurality of advertisements," with "a storage device for storing the plurality of advertisements" and "a comparator for comparing a code appended to each advertisement and a code stored in the control device" — is the passage that carried the anticipation case.

The point that survived: Customedia's winning non-anticipation argument was the "exclusivity requirement" — that the '494 claims require a storage section reserved just for advertising data, and Hite's "Optional Video Storage Device" merely permits storage of non-advertising data in the same area. The Board accepted this for claims 16–18 and 28. That is the single most important § 102 nuance on this patent: Hite anticipates the independent claims under the Board's construction, but not every dependent claim.

2.2 The § 103 combinations (not anticipation)

Hill is cited for its teaching of partitioned direct-access storage — i.e., dedicating a defined region of a storage device to a data type. That is precisely the teaching DISH needed to supply the "reserved advertising storage section" element Hite lacks. The Board found the motivation to combine absent, and the Federal Circuit never reached it (the § 101 affirmance mooted the IPRs).

Picco plays the same role in the sibling '090 CBM (Ground 3: claims 1–8, 17, 23 obvious over Hite + Picco), and the Patent Owner's demonstratives characterize Picco as a "don't care where — store anything anywhere" system, i.e., affirmatively teaching against reservation. Barton (the TiVo time-warping patent) is cited only for buffer/storage-management functionality relevant to claim 41.

3. Priority-date caveat that governs all of the above

Whether these references even qualify as § 102 prior art depends on the '494 patent's effective filing date, and that was contested:

• The '494 patent claims priority as a continuation of Application No. 10/848,238 (now U.S. 8,719,090, filed 2004-05-18), itself a continuation of Application No. 09/383,994 (filed 1999-08-26), which is a continuation-in-part of Application No. 08/873,584 (filed 1997-06-12, the listed priority date).
• DISH argued the challenged claims are not entitled to the 1997 date under § 120, because "[e]ach and every disclosure of 'advertising' and any variation thereof was added in [the '994 application]" — giving a 1999-08-26 effective date.

This matters concretely: Barton (filed 1998-07-30) qualifies as § 102(e)/§ 103 prior art only if the effective date is 1999, not 1997. Hite (1994), Hill (1986), and Baji (1991) qualify either way. The PTAB footnote confirms the '494 patent has a pre-AIA effective filing date, so pre-AIA §§ 102/103 govern.

4. Bottom line

• If the question is strictly § 102: exactly one reference was asserted to anticipate, and it partially succeeded — Hite, U.S. 5,774,170 (filed 1994-12-13; issued 1998-06-30), which the Board held anticipated claims 1–4, 6, 7, 19, 23, 24, 26, and 27. No other reference on the '494 record carried a § 102 ground.
• If the question is "what is the most relevant prior art full stop": Hite is the reference that defeats the independent claims; Hill, U.S. 4,607,346 is the reference custom-built to supply the missing "reserved/partitioned storage" element, and it failed on motivation to combine. That failure — not a lack of art — is why the '494 claims were ultimately killed by § 101, not by § 102/§ 103.
• Practical consequence, building on the earlier PTAB section: because the § 101 holding was affirmed (Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020)) and the IPR appeals were dismissed as moot, the Hite/Hill/Baji/Barton § 102/§ 103 findings were never reviewed on the merits and were never vacated — they stand in the FWDs as the Board's findings, even though the claim cancellations rest on § 101.
• Estoppel note (carried forward): DISH and its privies are estopped under 35 U.S.C. § 315(e)(2) as to Hite, Hill, Baji, and Barton. A new defendant inherits that art free and clear.

Confidence and unresolved items. High confidence on: Hite's identity/dates/§ 102 scope and the verbatim FWD claim outcomes; Hill's identity/citation line and § 103 role; Baji's and Barton's identities and § 103 roles; the priority contest. Unverified, and flagged rather than guessed: (a) the patent's own front-page "References Cited" list — not retrieved, and not reconstructable from the text supplied; (b) the Picco and Herz patent numbers; (c) Hill's and Baji's exact filing dates. Confirm (a)–(c) against the printed patent front page and the CBM2017-00032 exhibit list before relying on them in any filing.

I'll ground this obviousness analysis in the actual claim language and the prior-art references of record. Let me pull the primary sources.

Let me get the independent claim language (claims 19 and 33) and the key secondary references.

Obviousness of U.S. Patent No. 9,053,494 under 35 U.S.C. § 103

Note on the "Prior Art section of this page." The Google Patents record for US9053494B2 (the authoritative text supplied) contains only a machine-extracted prior-art stub: prior-art keywords — "data," "end user," "advertising data," "particular advertising," "monitoring" — and a prior-art date of 1997-06-12. It does not list cited references. I therefore build this § 103 analysis on the actual prior art of record in the adjudicated proceedings on this patent (the IPR/CBM petitions and Final Written Decisions), which is the operative obviousness record. Where the page stub is thin, I say so rather than invent art.

Conflict check against the previously generated sections. I re-verified and they hold: the IPR2017-00717/00724 FWDs are captioned "Before MEREDITH C. PETRAVICK, MICHAEL W. KIM, and KALYAN K. DESHPANDE"; the CBM swept claims 1–4, 6, 7, 16–19, 23, 24, 26–28, 32–36, 41 under § 101; and the § 103/§ 102 holdings were rendered moot (not vacated) by the 2020-03-06 Federal Circuit disposition. One clarification the prior sections did not surface: the "Claim 4 is valid / no motivation to combine Hite and Hill" argument in Customedia's rehearing petition concerns claim 4 of the '090 patent (IPR2017-00454), not the '494 patent — on the '494, claim 4 was held unpatentable over Hite. Do not import that '090 holding into a '494 analysis.

1. Legal framework and the two dispositive threshold issues

Under Graham v. John Deere, § 103 requires (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill, and (4) objective indicia. Under KSR Int'l v. Teleflex, a claim is obvious where the prior-art elements are combined "according to known methods" to yield "predictable results," or where the combination is "a simple substitution of one known element for another" or "a use of a known technique to improve similar devices in the same way." A motivation to combine may be found in the references themselves, the knowledge of a POSITA, or the nature of the problem to be solved — and it must be coupled with a reasonable expectation of success.

Two threshold issues drive nearly everything below:

(a) The "reserved storage space" construction. The single most important term is the claim 1/19/33 limitation "addressable and reserved storage space for storing [digital/particular] advertising data." Patent Owner staked its non-obviousness case (and its § 101 case) on an "Exclusivity Requirement" — that the reserved space must be set aside just for, and only for, advertising data. DISH's briefs and the Board rejected that gloss. The Board's CBM holding was categorical:

"The claims do not require the storage space to store data other than advertising data." (CBM2017-00032 FWD)

and, on the prior-art side:

"[W]e agree with Petitioner that Hite's OVS Device 456 is set apart just for advertising data, and, therefore, the OVS is reserved." (IPR2017-00724 FWD)

Once the Exclusivity Requirement is off the table, the distance between the claims and Hite collapses.

(b) The effective filing date. The '494 patent issued 2015-06-09 from an application filed 2014-01-18, claiming priority to 1997-06-12. Petitioner asserted the advertising-focused claims are not entitled to the 1997 date (no § 112 support in the earlier '584 application for the "advertising" elements), giving them a 1999-08-26 effective date (the '994 application). This matters for prior-art status of post-1997 references (see Barton, § 6 below). It does not matter for Hite (1994/1998), Hill (1986), or Baji (1991), all of which are prior art under either date.

2. Level of ordinary skill in the art

The petition contained a "Level of Ordinary Skill in the Art" section that I could not retrieve verbatim; the FWDs also do not restate it. Based on the claim subject matter and the art (interactive television, video-on-demand, set-top-box storage, and targeted advertising), a POSITA at the relevant time would typically be a person with a bachelor's degree in electrical engineering, computer science, or an equivalent field, plus about two to three years of experience in interactive/broadcast television, digital video recording, or addressable advertising systems (or a master's with less experience). The '494 patent's specification is broadly written and treats the underlying components — receivers, hard drives, processors, MPEG encoders — as off-the-shelf, which tends to fix the POSITA level on the lower end. Flag: this is a reconstruction, not a quoted stipulation; confirm against IPR2017-00717 Paper 1, § V.A.

3. The prior art of record

3.1 Hite — what it discloses (mapped element-by-element)

Hite is the near-complete anticipatory reference. The Board's findings and the record establish:

• Targeting by predefined criteria. "Each commercial is analyzed as to its nature and focus and a Commercial Identifier (CID) code is appended"; a "suitable process … target[s] prospective viewers … using database search and list selection procedures," producing "a set of appropriate CID codes for the prospective viewers," which are "transmitted to the viewing device and stored." (Ex. 1009, 3:43–44, 3:65–4:2.) The Board found these CID codes are "predefined criteria data": "CID codes are assigned to viewers based on demographic information … we are persuaded that CID codes are sufficiently related to customer profiles and demographics to correspond properly to the recited 'predefined criteria data.'" Advertisers believe that placing their commercials in specific programs will ensure that they reach the right kind of viewers (usually based on crude demographic assumptions…) (Ex. 1009, 1:28–32).
• Addressable and reserved storage at the display site. Hite's Optional Video Storage Device (OVS) 456 stores commercials selected at the display site; the Board: "the OVS is set apart just for advertising data, and, therefore, the OVS is reserved."
• Processor that reserves the space and presents the ads. "Hite's processor controls what is stored on the OVS"; commercial processor 438 "is 'programmed' to analyze CID codes to select commercials with codes that match the codes stored for a viewer," and "cause[s] commercial signals to be stored" in OVS 456 (Ex. 1009, 6:10–18, 8:18–27, 14:28–32, 14:41–46, Fig. 5).
• Storage device / delivery platform. The display-site device may be a "television receiver, VCR, display device set-top-box or modular decoder" (Ex. 1009, 6:60–7:3), and Hite expressly contemplates "supplementary electronics built into set-top boxes, consumer electronics products, personal computers, plug-in modules…" (14:59–65).
• Upstream monitoring / feedback. Registration codes and certification codes are "communicated back upstream to the signal origination site," optionally with a time/date stamp — i.e., monitoring of playback and delivery (Ex. 1009, 4:62–5:16). This maps to the claim 53/56 "monitoring" Markush groups (the page's prior-art keyword "monitoring" tracks exactly this disclosure).
• Merging / substitution. Hite discloses combining program and targeted commercials at "connection 428" under processor control "at appropriate commercial breaks" (14:33–46), and a VOD-commercials embodiment (7:52–54).

3.2 Hill — partitioned direct-access storage

Hill discloses a DASD partitioned into a "high access" partition and a "low access" partition, where the high-access partition is "separately defined" as a unique device, and data may be moved between partitions when access requirements change (Ex. 1010, 4:20–35, 8:60–9:12, Figs. 3–4). It is a general-purpose storage-architecture teaching.

3.3 Baji — multimedia bidirectional broadcast

Baji discloses a multimedia bidirectional broadcast system with a subscriber terminal having multiple storage sections for different media, and upstream/downstream interaction — the natural source for the "more than one storage section or partition" and "central control unit … manages delivery" limitations (claims 26, 32, 33/35/36).

3.4 Barton — time-warping / dynamic merge

Barton discloses receiving a television signal, encoding it to an MPEG stream, storing it on the end-user device, and playing it back (time-shifting), and merging commercials into the program stream so that the merged content is stored at the end-user receiver (Ex. 1026, 2:4–33). This is the natural source for claim 41's "dynamically merged … merged digital media content … stored in a storage space in a corresponding one of the end user receiver devices."

4. The combinations and the motivation to combine

Ground 1 — Hite alone (anticipation; subsumed in obviousness)

Claims 1–4, 6, 7, 19, 23, 24, 27 were held unpatentable. Anticipation is the "epitome of obviousness"; a single reference that discloses every limitation needs no motivation-to-combine showing. The Board mapped each element of independent claims 1 and 19 to Hite. Claim 1's elements ("at least one storage device… at least one addressable and reserved storage space for storing digital advertising data; at least one processor; software… to reserve… and… to select particular advertising data… based upon predefined criteria data") read directly on Hite's OVS 456 + commercial processor 438 + CID-matching software.

Ground 2 — Hite + Hill

Purpose: to supply/fortify the "addressable and reserved storage space" (partitioned, separately-defined) limitation via Hill's high-access partition.

Motivation (Petitioner + Dr. Negus): advertising data is accessed frequently — "reading stored advertisement data during each preemptable time slot" (Negus ¶278, citing Ex. 1009, 7:24–28, 46–51). A high-access partition therefore improves storage efficiency and directly serves Hite's stated object of giving "advertisers … less waste and greater cost effectiveness." Hite itself says storage "can be of any form which is economical at the time of construction" (Ex. 1009, 12:6–11), inviting the substitution. Same field (video distribution/addressable advertising); predictable result; classic known-technique-to-improve-similar-device rationale.

Caveat — this is where the pair is weakest: the Board found the Hite+Hill combination did not establish the "reserved/exclusive" limitation, and (in the '090 IPR) found no motivation to combine as to that limitation. On the '494, Hite+Hill likewise failed for claims 16–18 and 28. The reason is doctrinal: Hill places no restrictions on the type of data in either partition and even discloses moving data between partitions (Ex. 1010, 8:60–9:12). If your construction imports exclusivity, Hill undercuts the very limitation it is offered to supply. Do not rely on Hite+Hill standing alone for the "reserved" limitation — rely on Hite itself for that, and use Hill only for partitioning as a storage-management technique.

Ground 3/4 — Hite + Baji and Hite + Hill + Baji

Purpose: claims 26 and 32 ("more than one storage section or partition" / multiple addressable-and-reserved spaces and central-control-unit delivery). Motivation: Baji is the same field (bidirectional broadcast to subscriber terminals) and teaches partitioning a subscriber terminal's storage by media type — a known technique for managing heterogeneous data at a receiver, with a predictable result (orderly allocation and faster access). Combined with Hite's CID-based ad selection and central control, the ordered combination is the routine application of a known storage-management technique to a known advertising system.

Ground 5/6 — Hite + Barton and Hite + Hill + Barton

Purpose: claim 41 ("particular advertising data … dynamically merged with digital media content to create merged digital media content … stored in a storage space in a corresponding one of the end user receiver devices for presentation … during playback"). Motivation (Negus ¶932): both references are in the same field of art (video content distribution) and "directed to the efficient delivery of audio video content"; Barton's local storage addresses Hite's own identified need ("less waste and greater cost effectiveness"); and the combination "yields the completely predictable and desirable result of providing a local storage space for audio video content on an end user device so that the desired content may be pre-delivered … prior to presentation." That is a textbook KSR rationale (same field + problem-solution + predictable result).

⚠️ Prior-art-status caveat for Barton. Barton's own filing date is decisive. If the '494's advertising claims are entitled to the 1997-06-12 priority date, Barton must have been filed before that date to qualify under § 102(e)/§ 103. I could not verify Barton's filing date from the retrieved sources, and its use appears premised on Petitioner's position that the advertising claims carry only a 1999 effective date. Confirm Barton's § 102(e) date before relying on this ground. (Hill and Baji have no such problem — 1986 and 1991.)

Companion-ground cross-check — Hite + Picco (from the sibling '090 IPR)

Picco (Ex. 1012) discloses a set-top box with a hard drive storing broadcast programming and advertising together. It was used as the local-storage / reserved-space secondary reference in the '090 IPR. Its weakness is identical to Hill's: Customedia characterized Picco as a "'don't care where – store anything anywhere' type of system" that "stores broadcast television programming and advertising data together … without any reserved storage section." For the '494, Picco is best used for its local-storage and time-shift teachings, not for exclusivity.

Summary mapping table

5. Why a POSITA would reach the claimed subject matter (the affirmative case)

1. Same field, common problem. Every reference addresses the same problem: getting more relevant advertising to a viewer at lower waste. KSR permits combination where "the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious."
2. The claims recite generic components. The Board found the "storage device and space; processor; and software are generic components present in computers and many other electronic devices," and that "reservation of storage space, as well as selection, storage, and accessibility of advertising data … are basic functions." A claim built from off-the-shelf parts invites the "predictable variation" / "design choice" rationales.
3. Hite supplies the entire inventive thrust. Even setting aside secondary references, Hite's CID→stored-code matching, OVS-456 reserved storage, and processor-controlled storage of selected commercials reach all of claim 1's limitations on the Board's construction.
4. Objective indicia are absent/weak. The record contains no evidence of unexpected results, skepticism, industry praise, long-felt but unmet need, or copying. Patent Owner's "improved speed and efficiency / prevent system inoperability" argument was made to defend § 101 eligibility, not to rebut § 103 — and it is precisely the kind of "inherent … improved speed or efficiency" the Federal Circuit held insufficient. It is not a Graham factor showing, and it cannot rescue § 103 without a nexus to the claimed combination.

6. The counterarguments a challenger must anticipate

A. "Exclusivity Requirement" / teaching away. Patent Owner will argue (i) "reserved" means exclusively set apart for advertising data, and (ii) Hite teaches away by disparaging demographic targeting ("demographic targeting is highly wasteful," Ex. 1009, 1:28–32). Responses:

• The Board rejected the exclusivity gloss twice ("the claims do not require the storage space to store data other than advertising data"), and the prosecution history supports this — Applicant removed the word "only" from the claim (district-court briefing), which undercuts re-importing it.
• The teaching-away point attacks anticipation, not obviousness, and even as a § 103 argument it misreads Hite: the passage disparages crude demographics, not targeted advertising per se; Hite's entire premise is targeted advertising, and the claims' "predefined criteria data" is broader than demographics.

B. Claims that survived the art. Claims 16–18 and 28 (over Hite; Board found Negus's motivation "generic" and "vague," with no "particular changes" or "reasonable expectation of success") and claims 32–36 and 41 (IPR2017-00724 "not proven"). If a challenger needs these, it must supply specific modifications and a reasonable-expectation-of-success showing — e.g., for claim 16, how a POSITA would configure Hite's central control to recognize a viewer ID shared across two display sites and deliver the same targeted ad to the second device ("follow the viewer"). Bare conclusions will fail.

C. Prior-art status. Confirm Barton's § 102(e) date against the '494's effective filing date (§ 3.4). Hite, Hill, and Baji are safe under either the 1997 or 1999 date.

7. The § 101/§ 103 interplay (why the art holdings are now academic)

The Federal Circuit affirmed the CBM's § 101 holding on the claims — "claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 of the '494 patent are ineligible under § 101" — Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020), and declined to reach the § 102 findings. The § 103/§ 102 dispositions (IPR2017-00717, IPR2017-00724) were dismissed as moot, not vacated (19-1002 order, 2020-03-06). So today:

• The claim sets most vulnerable to § 103 (1–4, 6, 7, 19, 23, 24, 26, 27) are already dead under § 101 — judicially affirmed.
• The claims that escaped § 103 (16–18, 28, 32–36, 41) were swept up by the § 101 holding.
• The only claims never adjudicated (8–15, 20–22, 29–31, 37–38, 40, 42, 44+) were never the subject of a § 103 challenge either — and the patent is "Expired – Fee Related," adjusted expiration 2017-07-22.

Practical upshot for a § 103 theory today: a fresh IPR is procedurally available on the untested claims and gets the challenged party *Hite, Hill, Baji, and Barton free of the 315(e)(2) estoppel that binds only DISH — but the CBM door is closed (AIA § 18 sunset 2020-09-16), so the strongest attack remains the § 101/FWD record, not a new art-based IPR. Note the estoppel asymmetry: § 101 was never available in the IPRs, so DISH's IPR estoppel cannot reach it.

8. Bottom line

1. Primary finding (high confidence, Board-verified): Claims 1–4, 6, 7, 19, 23, 24, and 27 are obvious/anticipated over Hite (U.S. 5,774,170) alone (predefined-criteria targeting via CID codes; reserved OVS-456 advertising storage; processor that reserves and presents).
2. Secondary combinations and motivations (record-verified): Hite + Hill (partitioned high-access storage for frequently accessed ad data; KSR known-technique rationale), Hite + Baji (multi-section subscriber storage → claims 26, 32), Hite + Barton (same-field local store-and-merge → claim 41), Hite + Picco (set-top local ad storage).
3. Weak links to flag: Hill and Picco do not teach exclusive reservation and are poor vehicles for the "reserved" limitation; Barton's § 102(e) date is unverified and its use depends on a 1999 effective date; and the Board found claims 16–18, 28, 32–36, and 41 not proven for insufficiently specific motivation/expectation-of-success evidence.
4. Net: even the untested claims are not worth asserting against — the patent expired 2017-07-22, its independent claims were cancelled/ineligible, and the Federal Circuit affirmed the § 101 holding on this specification.

Gaps / unverified items (stated rather than fabricated): the exact specification of the POSITA (¶V.A of IPR2017-00717 Paper 1, not retrieved); Barton's filing date; and the verbatim full text of independent claims 33 and 46 (I have claim 1 from the RPX record, claim 19's elements from the Negus declaration, and method claims 46–61 from Justia, but not the complete claim 33 preamble).