US 9538122

I'll search for authoritative information on this patent, including litigation/docket records.

Let me get details on the Federal Circuit appeal and appeal outcome.

Let me check for any 2026 developments in the consolidated appeal.

US Patent 9,538,122 — Analyst Summary

Verification note: I was able to match the identifier exactly. The results below are consistent across the full patent text (Google Patents), USPTO PTAB filings, and Federal Circuit dockets. I found no US patent numbered 9,538,122 other than the one described here, and I explicitly flag one nearby-but-different matter (ClearPlay v. DISH) that a loose search will surface and that does not involve this patent.

1. Bibliographic data

Uncertainty: The "adjusted expiration 2031-11-21" field alongside "Expired – Fee Related" is internally odd, and I do not have an authoritative USPTO fee-status record for the 7.5- and 11.5-year maintenance windows. Treat the current expiration/status as unconfirmed; the definitive source is USPTO Patent Center for application 14/543,753.

2. Abstract (verbatim)

"A system and method is provided for time shifting a video program. In one embodiment of the present invention, a receiver, which may be configured to function as both a receiver and a DVR, is configured to receive a video program having both primary and secondary portions. The receiving device is further configured to play both portions of the video program if the program is being watched (a) during a first period of time or (b) during a second period of time and a user desires to watch both portions, and to play only the primary portions if the program is being watched during the second period of time and the user desires to watch only the primary portions. By doing this, the user can avoid the secondary portions when those portions have a diminished value to the user, the content owner, the content provider and/or advertisers."

(The specification frames this as "auxiliary data" — advertisements, news tickers, "crawlers" — re-inserted at playback time so that time-shifted viewing is not stale, and as a countermeasure to commercial-skipping.)

3. Plain-language overview of the independent claims

There are three independent claims (1, 11, 18) across 20 total claims. All three encode the same core logic — what gets played depends on when playback starts and on the DVR's playback state — with claim 1 in apparatus form, claim 11 as a method, and claim 18 as a more detailed apparatus claim.

Claim 1 — DVR apparatus

• Tuner: receives multiple video programs that are transmitted at the same time on a single channel.
• Memory: stores those programs so the program can be replayed later.
• Controller: receives three user commands — (1) a state-change command (first command changes the DVR from a first to a second playback state), (2) a play command (second command), and (3) a record command (third command).
• Processor logic — the heart of the claim:
  • Play command during a first period of time → play the program in its entirety.
  • Play command during a second (later) period of time, DVR in first playback state → also play the program in its entirety.
  • Play command during the second period, DVR in second playback state → play only a portion: the first and third portions, skipping the second portion, with the third portion played immediately following the first.
• In short: a "skip the middle segment, splice the ends together" behavior that applies only to the later playback window and only under the user's selected state.

Claim 11 — Method

The method counterpart to claim 1, with the same ordering of steps: receive the simultaneous multi-program single-tuner transmission → receive the third command (record) → store → receive the second command (playback) → receive the first command (playback state) → provide the program. The conditional providing logic is identical: full program during the first period; full program during the second period if in the first state; first + third portions only (third immediately after first) during the second period if in the second state.

Claim 18 — DVR apparatus (program expressed as three portions)

Largely parallel to claim 1, but drafted with the program "consisting of first, second and third portions" as a claim premise, and with the tuner limitation expressed as receiving data on the one program transmitted together with data on the others (i.e., simultaneous carriage), rather than reciting "a single channel." Otherwise the three-branch playback logic (first period; second period/first state; second period/second state → first and third portions with third immediately following first) is the same.

Representative dependent claims adding substance:

• Claim 4/5: the program has primary and secondary content; the first and third portions consist of primary content, and the second portion consists of secondary content (claim 5 also requires storing start/end times of the second portion). Claim 9: the secondary content is an advertisement.
• Claim 6: the "first period of time" begins when the program is stored and available to view and ends within a predetermined time of less than one week — i.e., a freshness/recency window that gates the skip behavior.
• Claim 10: if the play command is received in the second period while in the second state, only the portion is retrieved; but the full program is retrieved if another play command comes later and the DVR has been switched to the first state.
• Claims 2, 3, 8, 12, 15, 16, 17, 19, 20: wireless/remote display transmission; a second tuner for simultaneously recording a user-selected program; decompression of the received data; storing the channel/time of recording; use of the other tuner when a conflicting recording is requested; tuning to a frequency provided by the content provider; and packetized data with packets linked (at least indirectly) to programs and to content-owner channels.

4. Litigation and administrative posture (as of this search)

• PTAB, IPR2023-00977 — DISH Network L.L.C. et al. v. Digital Broadcasting Solutions, LLC, involving the '122 patent. Filed May 26, 2023; instituted Dec. 11, 2023; Final Written Decision Dec. 9, 2024 holding all challenged claims (1–20) unpatentable as obvious under 35 U.S.C. § 103 (per Bloomberg Law and GreyB/IPVerse records). Patent Owner's Notice of Appeal to the CAFC filed Jan. 13, 2025.
• PTAB, IPR2023-00976 — a parallel DISH proceeding; per the PTAB record the Patent Owner identified it as a related proceeding, and EchoStar's disclosures refer to challenges to "the 710 patent and the 122 patent." I read this as directed to the parent US 8,929,710 B2, but I have not independently confirmed the '976 patent number from an authoritative source in this pass.
• District courts: E.D. Tex. 2:22-cv-00335 (Digital Broadcasting Solutions, LLC v. DISH Network L.L.C., § 271 action; the same case referenced in the PTAB petition) and D. Colo. 1:23-cv-02946. Per EchoStar/DISH SEC disclosures, the underlying case has been stayed since May 9, 2024 pending the PTAB proceedings and appeals.
• CAFC: No. 25-1365 (Digital Broadcasting Solutions, LLC v. DISH Network L.L.C.), filed Jan. 14, 2025, is the appeal of the '122 final written decision. It was consolidated on Feb. 10, 2025 into 25-1364 (lead) with 25-1365 (member) and 25-1430 (cross-appeal); briefing per EchoStar's 10-K was completed October 17, 2025 (EchoStar reported 38 of 39 challenged claims across the two patents were invalidated, with the cross-appeal addressing the single surviving claim).

Important negative finding / correction of a likely search artifact: A search for "CAFC 2026" + DISH + patent returns the May 26, 2026 Federal Circuit decision in ClearPlay, Inc. v. DISH Network L.L.C. (affirming JMOL of non-infringement and wiping out a $469M verdict). That case involves US 7,577,970 and US 6,898,799 — not 9,538,122 — and it is a different patent owner, different district court (D. Utah), and different technology dispute. It should not be attributed to this patent.

Uncertainty on the 2026 docket question specifically: I did not find an authoritative 2026 merits decision in the consolidated 25-1364/25-1365/25-1430 appeal. Sources last reflected a pending posture with briefing complete in October 2025. If a 2026 opinion or Rule 36 affirmance exists, it is not reflected in the materials I retrieved, and I will not assert an outcome I cannot ground. The docket of record should be checked on PACER for 25-1364.

5. Sources

• Full patent text: https://patents.google.com/patent/US9538122/en
• USPTO PTAB petition/decision documents (app. 14/543,753; IPR2023-00977; maintenance-fee petition): https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1554098](/patent/1554098)/download-documents
• IPR2023-00977 case record (FWD Dec. 9, 2024; institution Dec. 11, 2023; all challenged claims unpatentable): https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2023-00977
• Docket Alarm record, DISH Network L.L.C. v. Digital Broadcasting Solutions, LLC, IPR2023-00977: https://www.docketalarm.com/search/PTAB/dockets/
• CAFC 25-1365 docket: https://dockets.justia.com/docket/circuit-courts/cafc/25-1365
• CAFC 25-1430 cross-appeal docket: https://dockets.justia.com/docket/circuit-courts/cafc/25-1430
• Bloomberg Law, PTAB obviousness ruling (Dec. 10, 2024): https://news.bloomberglaw.com/ip-law/case-patents-obviousness-p-t-a-b-28-42
• EchoStar/DISH SEC disclosure referencing the '710 and '122 patents, stay, and completed briefing: https://echostar.gcs-web.com/static-files/70f243b5-dad7-4be4-96fa-235981243db3
• ClearPlay v. DISH (distinct patents, not to be conflated): https://ipwatchdog.com/2026/05/26/federal-circuit-upholds-jmol-noninfringement-dish-clearplay-patent-dispute/

Bottom line: US 9,538,122 is a Fitzsimmons-originated, Digital-Broadcasting-Solutions-owned DVR patent (priority 2010-11-01, issued 2017-01-03) claiming time-shifted playback in which the user's playback state during a later viewing window determines whether the full program or only the first-and-third segments are played. Its significant current fact is that all 20 claims were held unpatentable in IPR2023-00977 on Dec. 9, 2024, and that ruling is on appeal in the consolidated CAFC appeal led by 25-1364, with no 2026 outcome confirmed in the sources I retrieved.

I'll research litigation involving US Patent 9538122. Let me search multiple sources.

Let me get details on the specific district court and Federal Circuit cases.

Let me find the outcome of the Colorado case and the Federal Circuit appeals.

Litigation Report — U.S. Patent No. 9,538,122 ("the '122 patent")

Patent: U.S. 9,538,122 B2 — "System and method for time shifting at least a portion of a program"
App. No.: 14/543,753 · Filed: Nov. 17, 2014 · Issued: Jan. 3, 2017 · Priority: Nov. 1, 2010
Inventor: Todd Fitzsimmons · Current assignee: Digital Broadcasting Solutions, LLC ("DBS") (assignment recorded Aug. 29, 2022, assignors Todd and Shannon Fitzsimmons)
Family: Continuation of Ser. No. 13/279,943 (issued as U.S. 8,929,710, "the '710 patent")

The '122 patent has been the subject of one consolidated district-court campaign and one instituted IPR, both against DISH, with related Federal Circuit appeals now pending. I found no other litigation involving this patent number.

1. District Court Litigation

1.1 Digital Broadcasting Solutions, LLC v. DISH Network L.L.C. et al. — E.D. Tex. (original filing)

Key developments:

• Nov. 8, 2022 — All claims against DISH Technologies L.L.C. voluntarily dismissed without prejudice (Dkt. 17); DISH Network L.L.C. remained the operative defendant.
• Nov. 11, 2022 — DISH moved to transfer venue to the District of Colorado under 28 U.S.C. § 1404(a) (Dkt. 20). Judge Gilstrap carried the motion and ordered limited venue discovery and supplemental briefing.
• June 21, 2023 — Judge Gilstrap granted DISH's motion to transfer to the District of Colorado (restricted order, Dkt. 48).
• Aug. 9, 2023 — Case terminated in E.D. Tex.; formally transferred in Nov. 7, 2023.

1.2 Digital Broadcasting Solutions, LLC v. DISH Network L.L.C. et al. — D. Colo. (transferred case)

Key developments:

• Nov. 10, 2023 — DISH moved to stay the case pending resolution of the instituted IPRs (Dkt. 68); DBS opposed (Dec. 1, 2023); DISH replied (Jan. 24, 2024).
• July 8, 2024 — Order (Dkt. 85) affirming and adopting Report and Recommendation (Dkt. 83) and administratively closing the case. DISH's public disclosures state the underlying case "has been stayed … pending resolution of the petitions before the United States Patent and Trademark Office and any related appeals."

Caveat: I could retrieve the docket text of the July 8, 2024 order but not the substantive text of the Report and Recommendation (Dkt. 83). Given the pending stay motion at Dkt. 75, the administrative closure is most consistent with a stay pending the PTAB proceedings and appeals, but I cannot confirm that characterization from the primary document. Treat it as a likely inference, not verified fact.

2. USPTO Post-Grant Proceedings (PTAB)

A companion petition, IPR2023-00976, was filed the same day against the related '710 patent and was likewise instituted on Dec. 11, 2023. (Note: IPR2023-00976 concerns the '710 patent, not the '122 patent — I flag this because the two proceedings are frequently conflated.)

3. Federal Circuit Appeals (pending)

Justia's Federal Circuit docket listing for these parties shows the following appeals, all arising from the DISH/DBS dispute:

Appeal 25-1365 is the appeal specifically associated with the '122 patent — Google Patents' litigation record for US 9,538,122 links this exact docket (https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/25-1365). It corresponds to DBS's Jan. 13, 2025 notice of appeal from the IPR2023-00977 Final Written Decision.

Caveat: The Justia docket listing does not, in the material I retrieved, state which PTAB decision or which patent underlies each of 25-1364 and 25-1430. Based on party alignment, 25-1364 and 25-1430 appear to be the cross-appeals arising from the companion '710 IPR (IPR2023-00976), but I cannot confirm that from the sources retrieved and do not assert it as fact. I also did not retrieve briefing, argument dates, or decisions in any of these three appeals.

Status of the appeals: No decision was found as of the sources retrieved. As of this report (April 26, 2026), the appeals appear to remain pending.

4. Related Family Litigation (context, not '122-specific)

Because the '710 and '122 patents were asserted together, the following family/litigation context is relevant:

• U.S. 8,929,710 (parent application 13/279,943) — asserted alongside the '122 patent in the same DISH suits; subject to IPR2023-00976.
• The Google Patents family record lists, for this family, a Texas Eastern District Court case (2:22-cv-00335), a Colorado District Court case (1:23-cv-02946), a Federal Circuit case (25-1365), and PTAB case IPR2023-00977 — all as noted above.
• The family is identified as having a "first worldwide family litigation filed" per Darts-IP, consistent with DBS being a non-practicing entity litigating this portfolio.

5. Summary Table — All Known Litigation

No other litigation involving U.S. 9,538,122 was found. In particular, I found no litigation against defendants other than DISH and no other district-court actions naming this patent.

6. Limitations on This Report

• I could not retrieve the substantive text of D. Colo. Dkt. 83 (Report and Recommendation); the precise basis for the administrative closure is therefore an inference.
• I could not confirm which patent/PTAB decision underlies Fed. Cir. 25-1364 and 25-1430; only 25-1365 is affirmatively linked to the '122 patent by Google Patents' litigation record.
• I did not retrieve briefing or decisions in any Federal Circuit appeal; those matters appear still pending.
• Patent status noted on the face of the record: "Expired – Fee Related" with adjusted expiration 2031-11-21, following a 2021 reinstatement of the patent after an unintentionally delayed 3.5-year maintenance fee (petition granted May 11, 2021). This is a fee/status matter, separate from the PTAB invalidity determination.

Sources: Google Patents US9538122B2 (https://patents.google.com/patent/US9538122/en); Unified Patents litigation/PTAB portal (IPR2023-00977; Fed. Cir. 25-1365; E.D. Tex. 2:22-cv-00335; D. Colo. 1:23-cv-02946); GreyB IPVerse case page IPR2023-00977 (https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2023-00977); CourtListener dockets 67995199 (D. Colo.) and gov.uscourts.cod.228933; Justia Dockets (2:2022cv00335; 1:2023cv02946; Fed. Cir. 25-1364/25-1365/25-1430); RPX Insight (codce-228933); Dish/EchoStar investor disclosures; PTAB petition papers and exhibits via ptacts.uspto.gov.

I'll start by researching the PTAB proceeding that appears in the patent's litigation record (IPR2023-00977), since the structured ODP block is empty but the full-text record shows a PTAB case.

Good — there's clearly a PTAB proceeding. Let me get the FWD details, the companion IPR, and the Federal Circuit appeal status.

Let me confirm the claim-level disposition for the '122 FWD and current appeal status.

PTAB proceedings on US 9,538,122 — analyst report

⚠️ Data-integrity flag before anything else. The structured "PTAB proceedings on file" block (USPTO ODP) returns no AIA trial proceedings for this patent. That is wrong / stale. There is at least one fully litigated IPR on the '122 patent, and it reached a Final Written Decision and is now on appeal. The Google Patents litigation banner on this patent also lists the PTAB case but attributes the data source to "Unified Patents PTAB Data" — that is the data vendor's license, not the filer. The petitioner is DISH Network L.L.C. / DISH Technologies L.L.C., not Unified Patents. Do not treat this as a defensive-aggregator case.

Proceedings overview

One AIA trial proceeding on the '122 patent — IPR2023-00977 — which was instituted in full, tried, and resulted in a Final Written Decision holding all challenged claims (1–20) unpatentable, and is now pending on appeal at the Federal Circuit. Status: claims invalidated at the Board (not yet canceled by certificate because the appeal is live); 0 settled, 0 institution denials, 0 claims sustained on this patent.

Bottom line for a defendant: this is not a hardened patent. A neutral tribunal has already held every challenged claim obvious over a three-reference combination. Any assertion letter built on claims 1–20 today is skating on an adjudicated-invalidity record — but because the appeal is pending and no § 318(b) certificate has issued, the claims are technically still enforceable, and the patent owner will argue reversal. Treat the FWD as your primary defense exhibit, not as a guarantee.

IPR2023-00977 — DISH Network L.L.C. et al. v. Digital Broadcasting Solutions, LLC

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)
• Filed / accorded filing date: petition filed 2023-05-26; PTAB accorded the filing date 2023-05-26 (accordance paper 2023-06-16). Institution deadline was 2023-12-18.
• Status (verbatim from structured data): "Final Written Decision - Appealed" — gloss: trial completed, all challenged claims held unpatentable, patent owner has appealed; the file is administratively terminated at the PTAB pending the Federal Circuit.
• Judge panel: Administrative Patent Judges S. T. John Courtenay III (author of the FWD), Sheila F. McShane, John D. Hamann.
• Real parties in interest: DISH Network L.L.C. and DISH Technologies L.L.C. Patent Owner: Digital Broadcasting Solutions, LLC (assignee of inventor Todd Fitzsimmons). Petitioner counsel: Eliot D. Williams et al. (Baker Botts). Patent Owner counsel: John Wittenzellner / Mark McCarthy (Williams Simons & Landis PC). Petitioner expert: Dr. Kevin Jeffay; Patent Owner expert: Dr. Immanuel Freedman.
• Petition grounds: challenge to claims 1–20 (i.e., every claim; independent claims 1, 11, 18). Principal ground (Ground 1) — § 103 obviousness over the collective teachings of Casagrande (U.S. Patent No. 8,510,771), Russ (U.S. Pub. No. 2006/0225105 A1), and Miller; a secondary reference, Dow (U.S. Patent No. 7,251,413), was also in the mix for certain "primary/secondary content" dependent claims. Essentially the same art set was run against the sibling '710 patent in IPR2023-00976.
• Institution decision: Instituted (granted) on 2023-12-11 — the Board granted on the challenged claims rather than partially denying. The panel rejected Patent Owner's proposed narrowing constructions, which were the heart of the PO case: PO sought to construe "first period of time" as beginning only after transmission of the entire video program, and "first command" as a command that sets playback state but does not initiate playback. The Board declined to import those limitations, treating the terms by their ordinary meaning in light of the specification (noting the spec expressly says "time-shifted data" includes merely pausing live TV for a few seconds).
• Final Written Decision: issued 2024-12-09 (Paper 23). Disposition caption: "Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a)." The panel found Petitioner proved by a preponderance that claims 1–20 are unpatentable as obvious over Casagrande, Russ and Miller. Representative reasoning from the FWD:
  • On the core skipping logic (limitation 1[d]): "we find support for Dr. Jeffay's testimony that, in the view of one of ordinary skill in the art, Casagrande in combination with Russ teaches that after the expiry of the first period of time there is a second period of time in which commercials may be skipped." (Russ precludes trick-play only for a specified window — the Board mapped that window to the claimed "first period of time," and the post-expiry window to the "second period of time.")
  • On the "third portion immediately following the first portion" limitation, the Board credited Petitioner's reading of Casagrande Fig. 8, where removal of an interstitial results in "the second segment 806 [third portion] is outputted immediately following the first segment 802 [first portion]."
  • On the dependent "primary/secondary content" claims (e.g., claims 4–5, 13): "the multiple segments of video frames in Casagrande correspond to the 'primary content' or 'time-shifted' data … the interstitials of Casagrande correspond to the 'secondary content' or 'auxiliary data.'"
  • The Board also noted "Patent Owner presents no evidence of objective indicia of nonobviousness." Patent Owner's expert (Dr. Freedman) was found not to add anything beyond the attorney argument on the dependent claims.
  • Caveat (stated honestly): I was able to retrieve the Board's claim-by-claim analysis for the independent claims and for dependents 2, 3, 4, 5, 6, 10, 13, but not a line-by-line recitation of all twenty. I am relying on the FWD's own judgment caption ("All Challenged Claims Unpatentable") for the proposition that every one of claims 1–20 fell. I am not claiming any claim was held patentable — the caption indicates none was.
• Settlement / termination: None. This was a merits loss, not a settlement. (The file contains only routine procedural stipulations to modify the schedule, e.g., 2024-02-26.)
• Appeal: Yes. Patent Owner filed its Notice of Appeal on 2025-01-13 (Federal Circuit No. 25-1365, docketed 2025-01-14), appealing the Board's determination that the challenged claims are unpatentable, the Board's evidentiary/claim-construction findings, and the institution decision. By orders of 2025-01-30 and 2025-02-10 the Federal Circuit consolidated the appeals: 25-1364 (lead — the '710 patent FWD appeal), 25-1365 (member — this '122 appeal), and 25-1430 (DISH's cross-appeal). All filings go in the lead case. As of the research date the Federal Circuit has not issued a merits decision — the appeal is pending. Issues on appeal center on the Board's claim constructions of "first period of time" and "first command," the sufficiency of the motivation-to-combine findings, and the treatment of Patent Owner's expert testimony.
• Defensive value: High. This FWD is the single most useful document a defendant can put in front of a court or a plaintiff — an Article III-style tribunal already found all twenty claims unpatentable as obvious, and the reasoning (Casagrande + Russ + Miller) is directly reusable in a § 282 defense or a new IPR by a different party. The main risk is timing: if the Federal Circuit reverses, the claims revive intact, so don't treat the FWD as res judicata against the patent owner until the mandate issues and a § 318(b) certificate cancels the claims.

Related proceeding (sibling patent, same family, same parties) — context only

IPR2023-00976 — DISH Network L.L.C. et al. v. Digital Broadcasting Solutions, LLC

• Type: Inter Partes Review.
• Patent: U.S. 8,929,710 (the parent of the '122 patent — same specification, same family ID 45996876; the '122 patent is a continuation of the '710). This is not a proceeding on the '122 patent, but it is the same Petitioner, same Patent Owner, same counsel, same expert witnesses, same prior-art cluster, and the two appeals are consolidated.
• Filed: 2023-05-26 (accorded 2023-06-16); instituted 2023-12-11; FWD 2024-12-09.
• Panel: Sheila F. McShane (author), S. T. John Courtenay III, John D. Hamann.
• Outcome: The '710 patent FWD held claims 1–16, 18, and 19 unpatentable (per Patent Owner's own Notice of Appeal, which recites "the Board's determination that claims 1-16, 18, and 19 are unpatentable"). Notably, claim 17 of the '710 patent is not listed as held unpatentable in that notice — a claim-level distinction that matters for the '710 patent but does not carry over to the '122 patent, where all claims 1–20 were held unpatentable.
• Appeal: Federal Circuit 25-1364 (lead consolidated appeal), notice of appeal also filed 2025-01-13; 25-1430 is DISH's cross-appeal. Pending.
• Defensive value: Confirms a two-patent, two-IPR, coordinated validity attack that succeeded at the Board in both cases on the same ground family. If you are facing the '710 and/or '122 patents, this is a matched pair of FWDs, not two independent events.

Strategic summary

Claim status on the '122 patent. Every claim that was tested was lost at the Board. Independent claims 1, 11, and 18 and their dependents 2–10, 12–17, 19–20 were all held unpatentable under § 103 on 2024-12-09. No claim of the '122 patent was sustained. No claim of the '122 patent was left untested — the petition challenged all 20. Because the FWD was appealed on 2025-01-13 and the appeal is still pending, the USPTO has not yet issued a § 318(b) certificate canceling the claims; legally they remain in force, but their validity has been adjudicated against the patent owner by the PTAB. (The sibling '710 patent presents a narrower picture: claims 1–16, 18 and 19 were held unpatentable, and claim 17 appears to have survived the FWD — a live, untested-in-the-appeal claim-level question, but on a different patent.)

Estoppel landscape. Under § 315(e)(2), DISH Network L.L.C., DISH Technologies L.L.C. and their privies are estopped in the district court from raising any ground they raised or reasonably could have raised in IPR2023-00977 — which, given that the petition ran Casagrande/Russ/Miller against all twenty claims, is a broad estoppel. That estoppel does not automatically bind a different defendant. If you are a new defendant being asserted on the '122 patent, you are free to raise the same Casagrande/Russ/Miller combination (and the FWD gives you the Board's own findings to adopt), or to file your own IPR — subject to the § 315(b) one-year bar running from service of a complaint on you, and to the discretionary § 325(d) risk of the Board declining to reconsider the same art. Practical read: the strongest move is a § 282 invalidity defense that walks in the FWD, not a re-run IPR.

Pattern signals. (1) The same petitioner, DISH, filed two IPRs on the same day (2023-05-26) against the two patents in this family and won both — a coordinated, well-funded, commercially motivated challenge (DISH is the accused infringer in the underlying DBS v. DISH litigation), not a defensive aggregator filing. There is no Unified Patents (or similar) IPR in the chain; the "Unified Patents" string in the patent record is only data attribution. (2) The patent owner is litigating aggressively: DBS chose to appeal rather than accept the FWDs, and the appeals are consolidated (25-1364/25-1365/25-1430), meaning DBS is fighting both patents plus a DISH cross-appeal. (3) The underlying district court action — Digital Broadcasting Solutions, LLC v. DISH Network L.L.C., originally E.D. Tex. 2:22-cv-00335, transferred to D. Colo. 1:23-cv-02946 on 2023-06-21 — has been stayed since 2024-05-09 pending resolution of the IPRs and any related appeals (per EchoStar/DISH SEC filings). So the whole dispute is now bottlenecked at the Federal Circuit.

Recommended next steps

1. Pull and attach the FWD. The controlling document is IPR2023-00977, Paper 23 (2024-12-09), "Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a)." Available via PTAB E2E/P-TACTS (the Board's copy of the decision: https://ptacts.uspto.gov/ptacts/public-informations/petitions/1554098/download-documents?artifactId=x6WNRrFyCUcwMU83I439Slzx5UouK-pfNP1M8LsWVm2QmsHsCwzh0VI) and summarized at https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2023-00977. Quote the disposition: all challenged claims (1–20) unpatentable.
2. Track the appeal. Docket 25-1365 (member) in the consolidated lead 25-1364, with cross-appeal 25-1430 — see https://dockets.justia.com/docket/circuit-courts/cafc/25-1365, https://dockets.justia.com/docket/circuit-courts/cafc/25-1430, and the CAFC's own docket. Watch for the briefing schedule, oral argument, and the mandate. If the Federal Circuit affirms, expect a § 318(b) certificate canceling claims 1–20 — at which point the patent is a dead letter for the '122 claims. If it reverses or remands, the claims revive and the defense calculus shifts back to claim construction.
3. No live PTAB milestones to calendar. The PTAB trial is over (institution 2023-12-11; FWD 2024-12-09 — within the statutory 1-year deadline from institution). There is no pending institution deadline, oral hearing, or FWD due date at the Board. The next real milestone is the Federal Circuit disposition.
4. If you are a defendant on the '122 patent right now: build the defense on the FWD under § 282, note the § 315(e)(2) estoppel that constrains DISH but not you, and calendar the Federal Circuit mandate. If a demand letter cites claims 1–20, the response is short: every one of those claims has been adjudged unpatentable by the PTAB as obvious over Casagrande, Russ and Miller, and that decision is on appeal. Do not, however, tell a court or an adversary that the claims are canceled — the certificate has not issued.

Confidence notes. High confidence on: proceeding number, parties, filing date, institution date, FWD date and "all challenged claims unpatentable" disposition, panel composition, primary ground, and the consolidated appeal numbers (25-1364/25-1365/25-1430) and its pending status. Medium confidence on the full reference-by-reference mapping of every dependent claim (I confirmed the FWD's analysis for the independent claims and dependents 2–6, 10, 13 only) and on whether any secondary ground beyond Casagrande/Russ/Miller was instituted — I could not retrieve the complete ground table. I did not find any PTAB proceeding on the '122 patent other than IPR2023-00977, and I did not find a Federal Circuit merits decision.

I'll start by gathering evidence from the assignment record, litigation dockets, and NPE directories.

Ownership & Assignment Reconstruction — US 9,538,122 B2

Scope note up front: I was able to confirm the fact and date of the post-issuance assignment from the Google Patents legal-events feed (which mirrors the USPTO assignment dataset) and from the PTAB/district-court record. I was NOT able to retrieve the reel/frame number, the recorded correspondent block, or a second assignment record from the Assignment Center itself within this session. I flag every place where a reel/frame is missing rather than guessing one. Do not treat any reel/frame below as verified.

Inventors

• Todd E. Fitzsimmons (also "Todd Eric Fitzsimmons"), sole named inventor. Address of record at filing: Gardena, CA.
  • Employer at time of filing: self-employed — he is the named attorney/agent of record on his own patent ("Attorney, Agent, or Firm — Fitzsimmons IP Law," see US9538122 face). He filed as a small entity, signed the fee transmittal himself ("/todd fitzsimmons/"), and the application lists (71) Applicant: Todd Fitzsimmons, Gardena, CA (US).
  • Credentials: B.S. Electrical Engineering, Univ. of Washington (1994); J.D., Loyola Law School (2000); California Bar No. 209745; USPTO Reg. No. 44,683. Principal of Fitzsimmons IP Law, P.C. (CA entity C4248779, registered 2019-02-26, registered agent Todd Eric Fitzsimmons, P.O. Box 199, Gardena, CA 90248).
  • Unusual pattern — inventor and prosecutor are the same person. The patent was self-drafted and self-prosecuted, and the inventor is also the assignor, the asserting party's founder, and the patent owner's counsel in the resulting litigation. This is not the classic "inventors depart the original assignee within 12 months" tell, because there was never a corporate assignee — the inventor held the rights personally from the outset.
• Note on the second assignor: the 2022-08-29 assignment lists Shannon Fitzsimmons as a co-assignor. She is not a named inventor. Her presence suggests she held a separate ownership interest (e.g., a community-property or prior personal assignment) in the patent — that interest was conveyed to the LLC at the same time. Treat as a factual observation, not an inference about her role.

Original assignee

• None of record — "Individual." The issued patent names the individual inventor as applicant, and Google Patents records the original assignee as "Individual." There was no operating company in the chain at issuance.
• Products embodying the claims: none, ever. Fitzsimmons is (and was) a patent attorney, not a DVR manufacturer; the entity he later formed, Digital Broadcasting Solutions, LLC, has been characterized by opposing counsel and is described in the record as a non-practicing entity. The listed accused products (DISH Hopper, Hopper 2, Hopper 3, Hopper with Sling, Hopper Duo) are DISH's, not the patent owner's.
• Primary line of business of the original holder: legal services (IP prosecution/licensing) via Fitzsimmons IP Law, P.C.
• Current status: the individual inventor is active (law firm active per California entity records). The patent itself is now effectively dead commercially — all challenged claims were held unpatentable on 2024-12-09, and the patent is on appeal (CAFC 25-1365). Google Patents also shows the '122 as "Expired – Fee Related," which is consistent with the earlier lapse described below.
• Prosecution/ownership wrinkle worth noting: the 3.5-year maintenance fee was not timely paid; Fitzsimmons filed a petition under 37 C.F.R. 1.378(b) and the USPTO granted it on 2021-05-11, reinstating the patent. The patent had lapsed and was revived months before the assertion vehicle was formed.

Assignment timeline

Only one post-issuance conveyance appeared in the sources I could reach. I could not pull a reel/frame, so it is stated as unverified.

• 2022-08-29 (executed/recorded — dates appear identical) — Reel not retrieved (Assignment Center reel/frame not returned in this session)
  • Conveyance: Assignment (recorded as "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)")
  • Assignor: Todd Fitzsimmons and Shannon Fitzsimmons (individuals)
  • Assignee: Digital Broadcasting Solutions, LLC (Texas LLC; formed 2022-06-27, i.e. ~9 weeks before the assignment)
  • Correspondent: not retrieved from the Assignment Center. Contextual evidence: the patent's own attorney of record is Fitzsimmons IP Law, P.O. Box 199, Gardena, CA 90248, and that exact address is the Patent Owner's address of record for DBS in IPR2023-00977. That strongly suggests the recording was self-filed, but I am not asserting a correspondent name as a recorded fact.
  • Context: transfer-to-asserter. The inventor moved the patent from personal ownership into his own single-purpose LLC the same day the infringement complaint was filed. This is an assertion-enablement transfer, not an acquisition, reorg, securitization, or fire-sale.
• No other assignments of record were surfaced. No security agreement, no release, no merger, no change of name, no downstream transfer to any third party, and no transfer to a defensive aggregator. The chain terminates at Digital Broadcasting Solutions, LLC.

If the Assignment Center returns additional records when you re-run it: I could not confirm that it does not; the single-record picture above is based on the Google Patents legal-events feed plus the litigation record. Please re-verify by patent number at https://assignment.uspto.gov/patent/index.html (search 9538122) and confirm/total the reel/frame list before relying on this section.

Timeline diagram

timeline
    title Ownership of US 9538122
    2010 : Provisional filed by Fitzsimmons
    2011 : Parent application filed
    2014 : Continuation application filed
    2017 : Patent issued to Fitzsimmons
    2021 : Patent reinstated after late fee
    2022 : DBS LLC formed in Texas
         : Assignment to DBS LLC
         : Infringement suit filed vs DISH
    2023 : DISH files IPR
    2024 : All challenged claims unpatentable
    2025 : Patent owner appeals to CAFC

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
The patent moved from the individual inventor into Digital Broadcasting Solutions, LLC. Concrete evidence (not naming alone): DBS was formed 2022-06-27, nine weeks before the assignment; it is a Texas LLC with a single employee located in California; its Austin, TX "office" is, per the district court's order on DISH's transfer motion, the office of its registered agent and a mail-forwarding service that "does not bear DBS signage and does not house any DBS employees"; and its documents live at "Mr. Fitzsimmons's law office…in Gardena, California." Support: Digital Broadcasting Solutions, LLC v. DISH Network L.L.C., No. 2:22-cv-00335-JRG (E.D. Tex.), venue/transfer briefing. Note the nuance that the assignor was an individual, not an operating company — so this is an inventor-owned assertion vehicle rather than a classic operating-company-to-shell spinout, but every element of the shell test (no products, registered-agent address, single-purpose LLC) is met.

2. Known asserter in the chain — UNCLEAR / WEAK.
Neither Digital Broadcasting Solutions, LLC nor Todd Fitzsimmons matches the enumerated NPE lists (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). DBS is a two-patent-family, single-defendant litigant (the '710 and '122 against DISH), not a high-frequency repeat plaintiff. The relevant public signal is different: the patent is tracked in the Unified Patents portal and was the subject of a Unified-style IPR filed 2023-05-26 (IPR2023-00977) — CHALLENGED-BY an aggregator, not owned by one. Call this unclear: not on a named list, but squarely within the small-entity asserters that Unified Patents targets.

3. Repeat correspondent across the chain — PRESENT (and this is the strongest tell).
Todd E. Fitzsimmons, Reg. No. 44,683, Fitzsimmons IP Law, P.C., P.O. Box 199, Gardena, CA 90248 is simultaneously: (a) the sole inventor; (b) the prosecuting attorney of record on US 9,538,122; (c) one of the two assignors; (d) founder/owner of the assignee LLC; and (e) the patent owner's counsel in the IPRs (certificate of service signature, IPR2023-00977). He recurs across NPE assertions beyond his own patent — the same firm/address is Patent Owner's counsel for SpaceTime3D, Inc. in multiple IPRs, e.g. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) v. SpaceTime3D, Inc., IPR2023-00579, and Apple Inc. v. SpaceTime3D, Inc., IPR2023-00242 (both signed "Todd E. Fitzsimmons, Reg. No. 44,683, Fitzsimmons IP Law, P.C., P.O. Box 199, Gardena, CA 90248, Attorney for Patent Owner"). The shell changes; the lawyer is the constant. ⚠️ Because this is a recurrence across at least two NPE patent-owner representations at the same address, it qualifies as a finding rather than a single appearance.

4. Cascading transfers — NOT PRESENT.
One conveyance only. No chained LLCs, no serial re-assignments, no <24-month daisy chain, no shared-correspondent cascade. The chain is a single hop.

5. Pre-litigation transfer — PRESENT.
The assignment to DBS and the filing of the complaint both bear 2022-08-29; the complaint is Digital Broadcasting Solutions, LLC v. DISH Network L.L.C., Case No. 2:22-cv-00335-JRG (E.D. Tex.), filed 2022-08-29. The transfer occurred on, not before, the day of suit — the chain was arranged at the moment of assertion to establish a clean standing record in the plaintiff entity. That is squarely within the 6-month window (indeed, within the same day).

6. Bankruptcy fire-sale — NOT PRESENT.
No bankruptcy of any assignor or assignee appears anywhere in the record. The '122's lapse-and-revival event (3.5-year maintenance fee petition granted 2021-05-11) reflects a small-entity fee lapse, not insolvency. No Chapter 7/11 sale, no Kodak/Nortel-style auction.

7. Privateering — NOT PRESENT.
There is no operating company transferring a portfolio to an NPE to assert on its behalf against competitors. The asserting entity was formed by the inventor himself; there is no corporate benefactor, no SEC disclosure of a privateering arrangement, and no competing manufacturer behind the chain.

8. Defensive aggregator — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. It terminates at Digital Broadcasting Solutions, LLC, an asserting entity — and DISH (via Unified-style IPR) is adverse to it, not a recipient of it.

Verdict

NPE — high confidence.

Three strong signals converge on the same entity and the same 2022 dates: (i) a shell/single-purpose assertion vehicle — Digital Broadcasting Solutions, LLC, a Texas LLC formed 2022-06-27, one California employee, Austin address being its registered agent's mail-forwarding office (transfer-motion record, 2:22-cv-00335-JRG); (ii) a pre-litigation transfer on the day of suit — assignment to DBS and complaint filing both dated 2022-08-29; and (iii) a repeat correspondent/principal — Todd E. Fitzsimmons, Reg. No. 44,683, Fitzsimmons IP Law, P.C., P.O. Box 199, Gardena, CA 90248, who is inventor, prosecutor, assignor, LLC founder, and patent-owner counsel here and the same counsel for SpaceTime3D, Inc. in IPR2023-00579 and IPR2023-00242. The entity has never shipped a product embodying the claims, and the asserted claims were held unpatentable on 2024-12-09 (IPR2023-00977), now on appeal at CAFC 25-1365 — a typical end-state for a thinly capitalized assertion vehicle.

Caveats on this verdict: (a) I could not verify the assignment reel/frame or the recorded correspondent, so signal #3 rests on attorney-of-record and litigation signatures rather than the assignment instrument itself; (b) DBS does not appear on the enumerated public NPE lists, so this is an "inventor-owned NPE" characterization built from entity facts, not from a directory listing.

Verify at: https://assignment.uspto.gov/patent/index.html (search patent number 9538122) and cross-check the PTAB docket at https://portal.unifiedpatents.com/ptab/case/IPR2023-00977.

I'll research this directly from USPTO and other authoritative sources. Let me run several searches.

Let me dig into the specific prior-art references and the IPR grounds.

I've reached the tool-step limit, so I'll synthesize now from what I retrieved plus the authoritative full patent text supplied in the prompt. Where I could not independently verify a reference, I say so explicitly.

Prior-Art Analysis — US 9,538,122 B2

0. Database hit confirmation (no similar-number contamination)

The search resolved US 9,538,122 B2 exactly, tied to application 14/543,753, "System and Method for Time Shifting at Least a Portion of a Program," inventor Todd Fitzsimmons, issued 2017-01-03. I did not return or conflate any other US patent numbered 9,538,122.

Two false hits I deliberately excluded (flagging them because they look like the number):

• ISBN "0 9538122 2 7" — "The Wey Navigations," a book (Surrey Industrial History Group). Not a patent.
• US 8,124,988 (referenced in an unrelated Chinese investor-forum post). A transposition of the digits of 9,538,122; unrelated subject matter.

Per the operating rules I am treating the number literally and not auto-correcting anything.

1. Critical framing before the list: § 102 vs § 103 on this record

Two things must be stated plainly, because they shape the whole answer:

1. The references on the face of the '122 patent are "References Cited," not sustained § 102 rejections. The claims issued over them. I found no evidence that any single one of the 53 cited references was used to reject, much less anticipate, claims 1, 11, or 18 during prosecution of 14/543,753. So the per-reference "which claims it potentially anticipates under § 102" column below is my analytical relevance assessment, not a record of an examiner's anticipation rejection.

2. The strongest known art against the '122 patent was applied under § 103 (obviousness), not § 102. In IPR2023-00977 (DISH Network L.L.C. et al. v. Digital Broadcasting Solutions, LLC), the Board's Final Written Decision of Dec. 9, 2024 held all 20 challenged claims unpatentable — as obvious, using combinations. The Board did not rest on anticipation. That is the key substantive fact for this patent and it means the honest answer to "what anticipates?" is: no single reference is established to anticipate; the claims fell to obviousness combinations.

I flag one internal tension with the previously generated summary: it listed the '122 IPR art as "Dow, Casagrande, Russ, Miller." My search is consistent and adds Gratton (US 2009/0238536) as a further exhibit, and shows Miller (US 2009/0165057) and Casagrande (US 8,510,771) as the references specifically mapped to claim 1[a] (tuner) and 1[b] (memory). It also surfaced petition text mapping claim 18/19 to "Dow in combination with Russ," but that text repeatedly says "'710 Patent," so I read it as belonging to the parallel '710 proceeding (IPR2023-00976), not to this '122 IPR. Treat the claim-18/19 Dow+Russ mapping as unconfirmed for the '122.

2. The prior art that actually decided this patent (IPR2023-00977, § 103)

These are the references that matter most, because they are the ones the Board credited in invalidating all 20 claims.

Also surfaced (invalidity contentions, less central): US 8,489,990; US 7,612,898; US 6,448,986; US 2007/0136692; US 2006/0274086. I could not map these to specific claims with confidence.

3. Examiner-cited references on the face of the '122 patent — citation, dates, description, potential § 102 bearing

This table covers the U.S. patent documents cited in the "References Cited" section, in the order/data given in the authoritative full text. Dates shown as filing year / publication-issue date. The § 102 column is my assessment of potential anticipatory relevance to the '122 claims (1–20), not a record of any rejection.

A. The references most relevant to the independent claims (1, 11, 18)

B. Directv / Dish "secondary-content and advertising" family (bulk of the citations)

These are largely § 103-type references (they teach ad selection/insertion in recorded streams), with weaker standalone § 102 force.

Note on the "Patent Citations (53)" vs "Citations (44)" discrepancy in the source: the Google Patents page shows two overlapping counts (44 examiner/third-party "Citations" and 53 in "Patent Citations"). I did not resolve the 9-reference delta, so the list above may omit a small number of front-page entries. I will not invent them.

4. Direct answer to "what anticipates under § 102?"

Applying a strict single-reference standard to independent claims 1, 11, and 18 — which each require all of: (a) multiple programs carried simultaneously on a single channel into one tuner; (b) storage for later playback; (c) a playback-state command distinct from the play command; and (d) playback-window-dependent selection between full playback and first+third-portions-only playback —

No examined reference is known to disclose every element in a single document. The closest single-reference candidates are:

1. US 5,724,472 (Abecassis) — best § 102 case for the "skip the middle, seamlessly join the ends" behavior of the selection element (d), but it does not supply element (a) single-channel simultaneous multi-program, nor the specific playback-state trigger.
2. US 6,408,128 (Abecassis) — best § 102 case for playing supplemental content with a video segment, but again lacks the single-channel/simultaneous reception and state-gated skip logic.
3. US 8,155,498 (Dow '498) — best § 102 case for commercial-position data enabling skipping of a defined second portion (supports dependent claims 5, 13), but the record applies Dow in combination (with Russ), i.e., § 103, not § 102.
4. US 6,360,053 (Wood/ReplayTV) — best § 102 case for the DVR navigation/playback-state vocabulary, but not for the timing-window selection.

For the dependent claims, single-reference § 102 potential is more realistic, e.g.:

• Claim 9 / 20 (advertisement): US 7,634,785 (Smith, "DVR-based targeted advertising") or US 8,571,934 (Rosenberg, "Advertisements in a television recordation system").
• Claim 5 (store start/end times of the second portion): US 8,155,498 / US 7,251,413 (Dow family).
• Claims 8 / 15 / 20 (compression, packetization, packet-to-channel linking): US 7,376,159 (Stanger) and US 5,175,631 (Juri/Matsushita).
• Claims 2 / 12 (wireless/remote display): peripheral — US 2011/0221964 (Harris).

But the decisive, documented outcome remains: all 20 claims unpatentable for § 103 obviousness in IPR2023-00977 (FWD Dec. 9, 2024), on appeal — not § 102 anticipation by any of these references.

5. Confidence and open items

• High confidence: the bibliographic identity of the patent; the IPR2023-00977 outcome (all 20 claims unpatentable; FWD 2024-12-09; appealed as CAFC 2025-1365); the presence of Dow '413, Casagrande '771, Russ 2006/0225105, Miller 2009/0165057, and Gratton 2009/0238536 in the '122 record.
• Not independently verified this pass (do not rely without checking): exact titles/assignees/filing dates for Miller 2009/0165057 and Casagrande 8,510,771; the precise claim-by-claim obviousness mapping of the claim 18/19 Dow+Russ text (which reads as belonging to the '710 proceeding); the membership of the five invalidity-contention references (US 8,489,990; 7,612,898; 6,448,986; US 2007/0136692; US 2006/0274086); and the 8,779,940 vs 8,779,941 bibliographic discrepancy.
• Least reliable element of this answer, stated frankly: the per-reference "§ 102 claim-number" assignments. They are my structured reading of each reference's subject matter against the '122 claim set; they are not quotations of examiner or PTAB § 102 findings, because none exist for these references. The definitive per-claim mapping is in the IPR2023-00977 Final Written Decision, which should be pulled from PTAB E2E for any decision-grade use.

I'll ground this analysis in the actual prior-art record — both the references cited on the patent page and the references the PTAB applied in IPR2023-00977.

The IPR record gives me the actual ground set. Let me pull the final written decision's limitation-by-limitation mapping and confirm secondary reference content.

Obviousness Analysis — US 9,538,122 B2 under 35 U.S.C. § 103

Scope note. This section builds on the previously generated summary and does not repeat its bibliographic, abstract, or claim-overview content. It uses (a) the Prior Art section of the US9538122 Google Patents page (Citations (44); "Family Cites Families (1)"; the expanded "Patent Citations (53)" listing) and (b) the art actually applied in IPR2023-00977, which the record now lets me state precisely rather than infer.

0. Flags and corrections before the analysis

1. Date contradiction. The task header states the current date is April 26, 2026, the system date is 2026-10-01, and the prior section cites a ClearPlay, Inc. v. DISH Network L.L.C. Federal Circuit decision dated May 26, 2026. Those cannot all be true. I flag it rather than silently reconcile it; nothing in this § 103 analysis depends on which date is correct, except that I still cannot confirm any 2026 merits ruling in the consolidated CAFC appeal 25-1364 (lead) / 25-1365 (member) / 25-1430 (cross-appeal).
2. Prior-section uncertainty now resolved. The earlier section said the target of IPR2023-00977 was unconfirmed. It is confirmed: IPR2023-00977 is directed to US 9,538,122 (application 14/543,753), and the parallel IPR2023-00976 is directed to US 8,929,710 (claims 1–19). Both were filed May 26, 2023. (IPR2023-00977 docket; D. Colo. 1:23-cv-02946, ECF 68)
3. A precise, narrow correction to the prior section's "negative finding." The prior section correctly said ClearPlay v. DISH involves US 7,577,970 and US 6,898,799, not the '122. I add one nuance so the correction isn't over-read: US 6,898,799 B1 ("Multimedia content navigation and playback," ClearPlay, Inc.) is cited on the face of the '122. So the ClearPlay litigation is unrelated, but a ClearPlay patent is formally part of the '122's prior-art section. Keeping those two facts separate matters for the § 103 record.
4. Governing law. Because the '122's effective filing date is November 1, 2010, pre-AIA § 102/§ 103 govern. The petitioner itself framed Casagrande as "prior art under at least 35 U.S.C. § 102(e)." IPR unpatentability must be shown by a preponderance of the evidence, 35 U.S.C. § 316(e).

1. Person of ordinary skill in the art (POSITA)

A POSITA here is someone with a bachelor's degree in electrical engineering, computer engineering, or computer science and roughly 2–4 years of experience in digital television receiver/DVR design — i.e., someone fluent in MPEG-2 transport-stream packetization, tuner/demodulator control, hard-disk-based trick play (pause/rewind/fast-forward), and program-boundary/ad-insertion metadata. Critically, such a person would know that "channel" and "frequency" are used interchangeably in this art — a construction point the petitioner used against the patent owner, and one the '122 specification itself supports.

2. The operative prior-art set (from the IPR2023-00977 ground set)

The petitioner asserted three grounds against claims 1–20:

References, identified literally as retrieved:

The Board's Final Written Decision (Dec. 9, 2024; panel S.T. John Courtenay III (author), Sheila F. McShane, John D. Hamann) determined all challenged claims unpatentable, and the excerpted opinion text is grounded in Ground 1. (PTAB documents; Bloomberg Law, Dec. 10, 2024)

3. Element-by-element § 103 mapping of claim 1

Because claims 11 and 18 recite the same logic (method and apparatus forms respectively), the same mapping carries through all three independents — as the Board expressly found: "we find Petitioner has shown that the collective teachings and suggestions of Casagrande, Russ, and Miller render independent claim 11 obvious under Ground 1."

The technical heart of the § 103 case: the '122 does not claim a new DVR capability. It claims an existing conditional-skip capability (Casagrande) gated by an existing time limit (Russ), on an existing multi-program tuner (Miller). That is a textbook KSR aggregation of known elements performing their known functions with a predictable result. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416–17 (2006).

4. Motivation to combine — articulated rationales (MPEP § 2143)

(A) Same field of endeavor / reasonably pertinent art. Casagrande, Russ, Miller, and Dow are all directed to DVR playback, commercial-boundary handling, and secondary/advertising content in recorded television. The '122's stated field is "the storage and play back of time-shifted data." No cross-discipline leap is required.

(B) Combination of known elements according to known methods, predictable result (MPEP 2143(A)). Casagrande already knows what to skip and how to splice (segment boundaries → immediate output of the following segment). Russ already knows when skipping should be unavailable (a tag that precludes trick play "for only a specified length of time, such as two weeks," then becomes inactive/replaceable). Adding a clock to a filter is not an inventive act; the combined result — a skip that is disabled, then enabled — is exactly the result each reference independently predicts.

(C) Known technique applied to a known device ready for improvement (MPEP 2143(C)–(D)). Casagrande's enable/disable of ad-skipping is content-provider-controlled (the patent owner's own characterization). Russ's technique converts that into a time-controlled enable/disable. The improvement — giving subscribers back DVR functionality after a window while preserving the advertiser's short-term protection — is the kind of improvement a POSITA would apply, and Russ itself teaches the benefit.

(D) Design incentive / market force (MPEP 2143(F)). The motivation is supplied inside the '122 itself. Its Background concedes that time-shifting "allows the user to skip commercials, or paid advertisements, which can decrease the value of the program to the content owner, the content provider and advertisers." A § 103 rationale drawn from the reference's own acknowledged problem is not hindsight; it is the classic "known problem, known solution" analysis.

(E) Reasonable expectation of success. Both Casagrande's filtering logic and Russ's trick-play preclusion are software-level features in the same class of device (hard-disk DVR). There is no incompatibility, no redesign of hardware, and no requirement of a new physical architecture. The Board expressly found "a rationale to combine Casagrande and Russ with a reasonable expectation of success."

(F) No teaching away. Casagrande's statement that users may sometimes prefer to watch commercials is not a teaching away; it is affirmative support for the claim's two-state structure (first state = watch with commercials; second state = watch without).

⚠️ One rationale I deliberately exclude

The litigation record contains a tempting but legally unusable motivation: the DBS district-court filing notes that "DISH later learned that it would need to delay access to particular broadcast content after DISH was challenged by the four U.S. networks in May 2012." Because the '122's effective filing date is November 1, 2010, the May 2012 AutoHop litigation and any post-2012 redesign cannot supply a motivation to combine at the time of invention. Relying on it would invite a hindsight objection and risk a Kahn/NuVasive "conclusory rationale" reversal. The § 103 case must stand on the pre-2010 record (Russ 2006, Dow 2002–2007, Casagrande 2007–2009, Miller 2009), and it does.

5. Grounds 2 and 3 — the Dow branch

Ground 2 (§ 102). Claims 1, 3–5, 7–11, 13–16, 18–19 were asserted as anticipated by Dow (US 7,251,413). Note the deliberate carve-out: claims 2, 6, 12, 17, 20 were not in the anticipation ground — plausible because the wireless-transmission (2, 12), the "less than one week" window (6), the second-tuner conflict handling (17), and the packet-linking (20) limitations are not squarely met by Dow alone. That is a drafting concession worth noting.

Ground 3 (§ 103). Claims 1–20 were asserted obvious over Dow in view of Russ and Miller — same architecture as Ground 1, substituting Dow for Casagrande as the boundary-identification/filtering reference. Both Dow references (US 7,251,413 and US 8,155,498) are on the face of the '122, which is why the patent owner pressed a § 325(d) discretionary-denial argument (repackaging art the Examiner saw). The Board nonetheless instituted on Dec. 11, 2023, and the petition's own framing — "nothing more than showing that it was within the level of skill in the art" — is the correct § 325(d) posture.

6. Dependent claims — independent § 103 bases

7. Alternative § 103 combinations drawn from the '122's own Prior Art section

The IPR ground set is the operative, adjudicated case. But the task directs me to the page's Prior Art section, and it contains several combinations that independently render the claims obvious. These are my analysis, not PTAB findings, and I note where I am inferring beyond the literal reference titles.

Combination α — stale-advertising replacement.
US 7,634,785 B2 (Microsoft, "DVR-based targeted advertising") + US 8,782,691 B1 (DirecTV, "Time shifted targeted advertisements based upon user profiles") + Casagrande '771.
Motivation: The '122 Background states the problem as information "selected based on when the program is being broadcasted, and not on when the program is being viewed." These two references are directed at exactly that problem (DVR-based and time-shifted targeted advertising). Where the motivation comes from the reference's own field and the art identifies the identical problem, hindsight is not implicated. Add Casagrande for the boundary/splice mechanics and the claim-1 logic is complete.

Combination β — content maps + filtering + supplementary replay.
US 5,724,472 A (Abecassis, "Content map for seamlessly skipping a retrieval of a segment of a video") + US 6,408,128 B1 (Abecassis, "Replaying with supplementary information a segment of a video") + US 6,181,364 B1 (United Video Properties, "System for filtering content from videos") or US 6,889,383 B1 / US 6,898,799 B1 (ClearPlay).
Motivation: US 5,724,472 supplies "seamlessly skipping" — i.e., the "third portion provided immediately following the first portion" limitation — which is the claim element most likely to be argued as non-obvious. US 6,181,364 and the ClearPlay patents supply the primary/secondary content filtering; US 6,408,128 supplies substituting supplementary information at playback. Each pair is a known technique applied to a known device, with predictable results.

Combination γ — audio/data replacement in recorded streams.
US 2009/0238536 A1 (Dish Network, "Method and apparatus for replacement of audio data in recorded audio/video stream" — "Gratton") + US 8,131,140 B2 + US 8,155,498 B2.
Motivation: This is substantively the Dow-family branch of Ground 3, but sourced from the face of the '122 — reinforcing that the Examiner-considered art overlapped heavily with the IPR art (the basis for the unsuccessful § 325(d) argument).

Combination δ — fast-forward-time advertising.
US 9,066,131 B1 (DirecTV, "Advertising spots for fast-forward play") + US 8,752,115 B2 (DirecTV, "System and method for aggregating commercial navigation information").
Motivation: Both address the specific behavior the '122 claims around — what content the viewer sees when manipulating a recorded stream, and how commercial navigation is controlled. Directly probative of claims 4, 9, and 14.

Combination ε — multi-program single-channel carriage.
US 9,154,721 B2 + Miller US 2009/0165057 A1.
Motivation: The claim 1[a] "plurality of video programs … transmitted at the same time on a single channel" limitation. Because the '122 equates "channel" and "frequency," this limitation collapses into routine multiplexed delivery, and both references confirm the practice.

8. Rebuttal posture and where the case is actually vulnerable

Because the Board already held all 20 claims unpatentable, the useful analysis is why the patent owner lost and where the appeal (CAFC 25-1365) has the best traction:

1. The "playback state" vs. "stream selection" gap. This is the patent owner's strongest argument, preserved in its sur-reply: Casagrande "does nothing more than allow the user to select to play one of two audio/visual streams," whereas the claim requires "a single video program" whose portions are determined by "a selected playback state of the DVR — a state that is selected via a 'first command.'" If the Federal Circuit reads "playback state" as something other than a stream-selection toggle, the mapping of element 1[c] (and hence the two-state branches of 1[d]) becomes contestable. The Board treated stream selection as sufficient; that is a claim-construction question reviewed de novo, with the underlying factual findings reviewed for substantial evidence.

2. The "commercial-dependent, not time-dependent" argument on Russ. The patent owner argued Russ's preclusion attaches to a tag, not to a time of playback. The Board rejected it, holding that "in combination, it is the time of restriction expiry, and the status of the playback state, that determines whether a commercial can be skipped." This is a genuine, non-frivolous dispute about whether the combination—rather than Russ individually—teaches the "first/second period" pair. Note the Board's care in distinguishing "attacking Casagrande individually" from attacking "the combination." That framing is likely to be central on appeal.

3. No objective indicia were established. The prior section contains no evidence of commercial success, long-felt need, failure of others, or unexpected results with a nexus to the claimed subject matter. Absent that, the Graham secondary-considerations factor is neutral, and the primary evidence above controls. (Contrast the Unified PTAB excerpt in the search results, where objective indicia weighed against institution — no analogous record exists for the '122.)

4. § 112 exposure is untested. The specification is permissive to the point of dissolving the claim's asserted distinctions: "depending on how the receiving device is programmed, it can treat all time-shifted data as 'time-shifted data,' or it can treat data that is shifted by a predetermined period of time (e.g., an hour, a day, a week, etc.)." A specification that treats the "first period" as essentially unbounded gives the patent owner little room to argue that Russ's two-week window is outside the claim, and it undercuts any "criticality" argument for claim 6.

5. Estoppel consequences. A final written decision that all challenged claims are unpatentable, once appeal rights are exhausted, triggers 35 U.S.C. § 315(e)(2) estoppel for DISH in the stayed E.D. Tex. action (2:22-cv-00335), and the D. Colo. action (1:23-cv-02946) is likewise stayed pending the appeals.

9. Conclusion

Claims 1, 11, and 18 are obvious over the combination of Casagrande (US 8,510,771) + Russ (US 2006/0225105 A1) + Miller (US 2009/0165057 A1) under § 103. Each claimed element is disclosed: Miller for the single-channel multi-program tuner; Casagrande for storage, the user-selectable output state, and — decisively — for filtering an interstitial so the following segment is output immediately following the preceding segment (Fig. 8, boundaries 808/810); and Russ for the time-gated enable/disable of trick play that creates the claimed first-then-second period ordering. The combination is a predictable aggregation of known DVR functions, motivated by the same advertising-value problem the '122's own Background concedes was known, with a reasonable expectation of success and no teaching away.

Claims 2–10, 12–17, and 19–20 are obvious for the additional reasons tabulated in § 6, most notably claim 6, where Russ's express "two weeks" makes the "less than one week" window an obvious optimization of a result-effective variable under In re Aller/In re Woodruff.

Claims 1, 3–5, 7–11, 13–16, and 18–19 were separately asserted as anticipated by Dow (US 7,251,413), and all claims 1–20 as obvious over Dow + Russ + Miller — the same architecture with Dow substituted for Casagrande.

Worth repeating as the headline: this is not a close prima facie case on the merits. The PTAB has already so held as to every claim (Final Written Decision, Dec. 9, 2024), and the § 103 analysis above is, in substance, an independent reconstruction of that result using both the adjudicated art and the '122's own prior-art section. The open question is not whether the claims are obvious on this record, but whether the Federal Circuit accepts the Board's characterization of Casagrande's stream selection as the claimed "playback state" — which is where I would look for reversal.