In a significant defeat for patent assertion entities operating in the streaming media space, the Court of Appeals for the Federal Circuit closed case No. 22-1926 on April 5, 2024, affirming that multiple claims of SITO Mobile’s media routing patents are unpatentable. The proceeding, which spanned 652 days from its June 23, 2022 filing, concluded with a Final Written Decision ordering that claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 of U.S. Patent No. 9,135,636 are unpatentable — delivering a decisive outcome in this media routing patent litigation between SITO Mobile R&D IP, LLC and streaming giant Hulu, LLC.

For patent attorneys, IP professionals, and R&D teams navigating the crowded landscape of streaming technology patents, this case offers critical lessons about patent validity challenges, PTAB inter partes review strategy, and the durability of software-adjacent patents covering media delivery systems. The outcome reinforces an increasingly hostile judicial environment for broadly asserted media routing patents in the Federal Circuit.

Aperçu du dossier

Les parties

Les brevets en cause

Five U.S. patents were involved in the broader dispute. These patents collectively cover systems and methods for routing media — technology broadly applicable to streaming content delivery, targeted media distribution, and interactive media platforms. The Federal Circuit’s Final Written Decision specifically addressed claims of the ‘636 patent.

• • U.S. Patent No. 9,135,636 (Application No. 13/842,478) — primary subject of the Final Written Decision
• • U.S. Patent No. 8,825,887 (Application No. 13/841,015)
• • U.S. Patent No. 9,026,673 (Application No. 13/841,126)
• • U.S. Patent No. 9,135,635 (Application No. 13/842,143)
• • U.S. Patent No. 9,591,360 (Application No. 15/268,255)

Représentation juridique

Plaintiff SITO Mobile was represented by Daignault Iyer LLP and Carmichael IP PLLC, with attorneys Ronald M. Daignault, Chandran Iyer, James Carmichael, Jason Scott Charkow, Stephen Terry Schreiner, Kevin Sprenger, Minghui Yang, and Richard Juang.

Defendant Hulu was represented by O’Melveny & Myers LLP, with attorneys Amy Liang, Bradley M. Berg, Brett Johnston Williamson, Cameron William Westin, and Nathaniel Legum.

Chronologie du litige et historique de la procédure

The appeal (Case No. 22-1926) was filed on June 23, 2022, in the District of Columbia before the Court of Appeals for the Federal Circuit — the exclusive appellate venue for U.S. patent matters. The case closed April 5, 2024, after 652 days, reflecting the typical duration of Federal Circuit patent appeals involving PTAB review proceedings.

The procedural posture is notably important: the verdict language referencing a Final Written Decision and the compliance requirements under 37 C.F.R. § 90.2 confirms that this case arose from a Patent Trial and Appeal Board (PTAB) inter partes review (IPR) proceeding. The Federal Circuit’s review of a PTAB invalidity determination — rather than a district court infringement trial — defines both the legal standard applied and the strategic significance of the outcome.

The verdict cause is classified as Patentability / Invalidity and Cancellation, confirming that Hulu successfully challenged the patent’s validity through PTAB rather than defending on non-infringement grounds at the district court level. The basis of termination is recorded as Unpatentable.

📌 Suggested Image: Litigation timeline infographic showing IPR filing → PTAB Final Written Decision → Federal Circuit appeal → closure (June 2022–April 2024)

Le verdict et l'analyse juridique

Résultat

The Federal Circuit issued a Final Written Decision ordering that claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 of U.S. Patent No. 9,135,636 are unpatentable. No damages award is recorded, consistent with an IPR/validity proceeding rather than an infringement trial. Specific claim-by-claim damages figures were not applicable given the procedural posture.

Analyse des causes du verdict

The core legal basis is invalidity through unpatentability — the highest-stakes outcome in patent cancellation proceedings. When the Federal Circuit affirms a PTAB finding of unpatentability, the invalidated claims are permanently cancelled, extinguishing enforcement rights against all parties, not just the petitioner.

The verdict cause categorized as Invalidity/Cancellation Action indicates that Hulu’s legal team successfully established, by a preponderance of the evidence, that the asserted claims of the ‘636 patent lacked patentability — most commonly on grounds of anticipation (35 U.S.C. § 102) or obviousness (35 U.S.C. § 103) based on prior art. The specific prior art references and expert testimony relied upon were not disclosed in the available case data, but the breadth of invalidated claims — eleven in total — suggests a systematic challenge to the patent’s core independent and dependent claims.

The procedural turning point was Hulu’s decision to pursue IPR rather than contest infringement solely at the district court level — a strategy that proved decisive. By invalidating the patent at PTAB and sustaining that finding through Federal Circuit appeal, Hulu eliminated SITO’s enforcement leverage entirely.

Signification juridique

This decision carries meaningful precedential weight for several reasons:

1. Breadth of cancellation: Eleven claims cancelled across both independent and dependent claim families signals the Federal Circuit’s willingness to affirm broad invalidity findings in media routing technology patents.
2. IPR as a complete defense: The case exemplifies the “PTAB-first” defense strategy, where accused infringers neutralize patent threats through validity challenges before or in parallel with district court litigation.
3. Streaming media patent scrutiny: Federal Circuit decisions consistently applying rigorous patentability standards to software-adjacent media delivery patents create a more predictable — and challenging — landscape for patent assertion in this space.