Acting Director Cancels Institution with Invalid Claims in District Court Ruling

On August 22, 2024, Hulu filed two petitions asking for a review of a patent owned by Piranha Media Distribution. This patent is all about inserting ads into digital media content. Hulu thought the claims in the patent were obvious, and they wanted the US Patent Office to check it out.

The court in California sided with Hulu, saying the claims in the patent weren’t valid. But Piranha didn’t agree, so they took the case to the Federal Circuit to appeal.

Hulu and Piranha disagreed about whether it was okay for Hulu to file two separate petitions on the same claims. Hulu said they needed to do it because there were a lot of claims, and the two petitions were different. Piranha said it’s rare for the Patent Office to look at two petitions about the same claims. In the end, the Patent Office thought that Hulu’s two petitions made sense because they focused on different parts of the patent.

Piranha also argued that a different group, Unified Patents, who also counts Hulu as a member, filed a request to review the same patent. But the Patent Office said that didn’t matter because Hulu and Unified aren’t super close.

Piranha brought up some factors from a past case involving Apple and wanted the Patent Office to dismiss Hulu’s requests because of those factors. But the Patent Office looked at those factors and decided not to dismiss the requests. They said that the claims in the patent could still get reviewed by the courts and that both sides hadn’t spent too much time and money on the case yet.

The Patent Owner then asked the Director to review the decision. The Director agreed and said there was no need to start a new review process because the claims in the patent were already declared invalid by the court. If the court’s decision changes later on, Hulu can bring up the same points. The Director said it was all about making things efficient in the patent system.

So, the bottom line is that when it comes to patents, it’s important to think about the best ways to use the legal system’s time and resources.