Microsoft files patent for DVR ad replacement technology

[morac]

Microsoft has filed for a patent for a system to replace ads recorded on a DVR with new ads when the program is played back at a later date. I'm not sure if TiVo was planning to do this or not, but assuming the patent is granted, it looks like now they'll have to license this technology from Microsoft.

http://arstechnica.com/news.ars/post/20061211-8398.html

[HDTiVo]

Good thing they got the IBM IP payment behind them. ;)

[Justin Thyme]

This patent describes a technique that has been discussed in detail in the TivoCommunity forum. I recall going into at least on one occaision if not many. Because the idea has been discussed publically prior to the filing, the general idea is not protectable, only their particular implementation of the idea can be protected.

[JimSpence]

Wouldn't the original advertiser by upset about this?

[pkscout]

This patent describes a technique that has been discussed in detail in the TivoCommunity forum. I recall going into at least on one occaision if not many. Because the idea has been discussed publically prior to the filing, the general idea is not protectable, only their particular implementation of the idea can be protected.

You'd best not assume the copyright office will know that. Is there some method of commenting on a patent proposal? If so we should probably give them a link. Even at that, if MS can show that they came up with the idea before that discussion they will probably still get the patent. Hell, as broken as our copyright system is, they'll probably get the patent if if they got the idea from the TCF discussion.

[pkscout]

Wouldn't the original advertiser by upset about this?

Currently advertisers are arguing that DVR users shouldn't count in viewership (http://www.tivocommunity.com/tivo-vb/showthread.php?t=331110) so that they can get lower rates from the media companies. So they can't really get mad if someone replaces an ad they never paid for anyway.

[SullyND]

Wasn't there talk of TiVo doing this with Comcast when their deal was first announced?

Edit:

Yep. TiVo to Insert New Ads into Recordings (http://www.betanews.com/article/TiVo_to_Insert_New_Ads_into_Recordings/1112740020) 11/5/2005.

[Einselen]

Wasn't there talk of TiVo doing this with Comcast when their deal was first announced?

Edit:

Yep. TiVo to Insert New Ads into Recordings (http://www.betanews.com/article/TiVo_to_Insert_New_Ads_into_Recordings/1112740020) 11/5/2005.

Sadly Microsoft will probably get the patent and make millions off of it. Why? Because that is the way the business has been running since the first day.

[mattack]

This patent describes a technique that has been discussed in detail in the TivoCommunity forum. I recall going into at least on one occaision if not many. Because the idea has been discussed publically prior to the filing, the general idea is not protectable, only their particular implementation of the idea can be protected.

Was it described more than a year before their filing? Wouldn't that count as prior art (even if not actually implemented)?

[samo]

This patent describes a technique that has been discussed in detail in the TivoCommunity forum. I recall going into at least on one occaision if not many. Because the idea has been discussed publically prior to the filing, the general idea is not protectable, only their particular implementation of the idea can be protected.
Of course general idea is not protectable. You can not patent general ideas. Only actual implementation is patentable.

[Justin Thyme]

Of course general idea is not protectable. You can not patent general ideas. Only actual implementation is patentable.
The trick is to write the patent so generally that it covers practically any implementaion. The implementation idea patented is extremely general:

using a DVR
identify gaps that are commercials
on subsequent viewings replace the gaps with new advertising material which may be based on the user's unique demographics.

This idea was discussed publically on this forum prior to July 2005 when this patent was filed.

The patent is also very strange because it does not discuss any prior art concerning DVRs and advertisement technology. You miss one mention of relevant prior art and the patent is kablooey.

Yet another odd thing is that the inventor is from Menlo park, CA, not Washington state where Microsoft is based. So it's probably not an employee but someone they bought it from. That would explain why it is so weakly prepared. I wouldn't be surprized if MS bought this curious patent for peanuts from this guy, just in case it might have some future value.

[morac]

This idea was discussed publically on this forum prior to July 2005 when this patent was filed.

I'm not very familiar with patent law (and based on prior granted patents neither is the patent office), but in order for something to be considered prior art, doesn't an implementation of what is being patented have to actually exist. Is an idea considered prior art?

Any way from the patent:
A targeted advertisement system, comprising: a digital video recorder (DVR) configured to record media content and maintain the recorded media content for on-demand viewing, the DVR further configured to provide a first data stream of the recorded media content for viewing when requested; an advertisement data store configured to maintain advertisements; an advertisement manager configured to: designate one or more advertisement regions in the recorded media content as the media content is being recorded, an advertisement region including a first boundary and a second boundary to designate the advertisement region in the recorded media content; monitor the first data stream of recorded media content when rendered for viewing; and detect that a playback position of the first data stream has crossed at least one of the first boundary or the second boundary of the advertisement region, and initiate that an advertisement obtained from the advertisement data store be provided as a second data stream to render the advertisement for viewing.

Basically the patent describes a pool of ads, not unlikely those normally stored on the TiVo from the TeleWorld broadcast and when playing back a show, this pool is tapped to replace existing ads in the show. There are also 20 other ideas that build upon this including replacing ads while fast forwarding and rewinding and the like.

I'm not sure how else one could implement ad replacement and not violate the pending patent other than to actually replace the ads while the show is actually recording instead of on playback (which doesn't really seem feasible).

In order for something to be patentable it can't be "obvious", though what exactly that means to the patent office isn't clear, especially when things like clicking a mouse can be patented. Until the Supreme Court decides what "obvious" means (http://www.foxnews.com/story/0,2933,232376,00.html), this patent could be accepted.

[drew2k]

Wasn't there a news story this past year about a truck stop chain that ran into legal problems for doing the very same thing - replacing "original embedded' advertisements (commercials) with advertisement of their own choosing? The truck stop chain had TV's in their rest stops, and replaced the commercials with their own ads or commercials that they sold to other advertisers. I believe the chain was ordered to cease this practice because even though they left the non-ad content untouched, they were altering the original content, which included commercials, by replacing the original ads. Does this ring a bell for anyone?

[drew2k]

I'm not very familiar with patent law (and based on prior granted patents neither is the patent office), but in order for something to be considered prior art, doesn't an implementation of what is being patented have to actually exist. Is an idea considered prior art?

Any way from the patent:

Basically the patent describes a pool of ads, not unlikely those normally stored on the TiVo from the TeleWorld broadcast and when playing back a show, this pool is tapped to replace existing ads in the show. There are also 20 other ideas that build upon this including replacing ads while fast forwarding and rewinding and the like.

I'm not sure how else one could implement ad replacement and not violate the pending patent other than to actually replace the ads while the show is actually recording instead of on playback (which doesn't really seem feasible).What I found more interesting was the simple fact that Microsoft wants to know the boundaries for where commercial blocks start and end ... How much of a leap is it for Microsoft to then write software to skip over that block entirely? Maybe sell that as a premium feature for those who want their commercials edited out automatically?

[Justin Thyme]

I'm not very familiar with patent law (and based on prior granted patents neither is the patent office), but in order for something to be considered prior art, doesn't an implementation of what is being patented have to actually exist.
No implementation is necessary. In patent law, prior art is any written description made public that is sufficient for a worker skilled in the art to implement the mechanism. [more info in wikipedia (http://en.wikipedia.org/wiki/Prior_art)]

I could tell any of my former developers to replace commercials with new ones based on user profile and that would be all that I would have to say. Caching commercials locally is "obvious" to anyone skilled in the art, etc.

So really, as far as I am concerned, any of the babble on the forums last year about how the Tivo renewable commercial feature would work is prior art. (MSNBC april 2005 article on Tivo insertion of new advertisements into old content (http://www.msnbc.msn.com/id/7399004/))

It wouldn't surprize me if Tivo did not file more specific defensible patents on ad insertion long before they started babbling publically about it.

[TexasAg]

(1) You can patent ideas. You are not limited to your actual implementation. As long as a claimed invention is novel (new), not obvious, and useful, you can get a patent. For example, I could patent the following (if I invented it and no prior art existed):

A method for rendering a recorded television show, which includes: identifying a commercial in the recorded television show; and replacing the commercial with a different commercial.

This claim would cover any implementation/device/system that uses this method. It is not limited to only the implementation that I made.

(2) You do not need to actually implement an idea or build a prototype to file a patent application. You could come up with an idea today and file a patent application tomorrow without ever building a prototype. It would not affect the validity of your patent application at all. There are some benefits in certain situations, though (see below).

(3) A patent application does not need to discuss any "prior art" at all. The only requirement is that the inventors and any patent attorneys or others who are involved in writing a patent application or prosecuting a patent application must disclose to the Patent Office all relevant prior art that they are actually aware of (prosecuting = dealing with the Patent & Trademark Office such as by responding to rejections). A patent will not be invalid simply because there was prior art that was not discussed in the background of the patent application. A patent would be held unenforceable due to inequitable conduct if the inventors or patent attorneys knew of some important prior art and failed to disclose it to the Patent Office.

(4) This particular patent application was never owned by anyone other than Microsoft. The inventor assigned his rights to Microsoft on the day the application was filed.

(5) Anything said on this board before June 6, 2005 is "prior art" for all it would teach or suggest to some ordinary person in this field. However, US law has a provision for "swearing behind" prior art. This means that if Microsoft can show it conceived of its idea and reduced it to practice (such as built a prototype) before the discussions on this board, Microsoft can get around the discussions on this board.

(6) This is a very "crowded" field. People have been filing patent applications for replacing commercials for years. I think Microsoft will have a very hard time getting the broadest claims through the Patent Office. Even if they did, Microsoft would still be open to attack later in court or in the Patent Office.

[bmgoodman]

How awesome is this? A patent to replace parts of a broadcast that I'm not going to watch with cooler, newer parts that I'm also not going to watch. Brilliant! :D

[ping]

It wouldn't surprize me if Tivo did not file more specific defensible patents on ad insertion long before they started babbling publically about it.

Like this perhaps?
http://www.delphion.com/details?pn=US25076359A1

This one only plays the replacement content (possibly audio) if you fast-forward through it.

(For some reason TiVo is not the assignee, but James Barton is an inventor)

[TexasAg]

Like this perhaps?
http://www.delphion.com/details?pn=US25076359A1

This one only plays the replacement content (possibly audio) if you fast-forward through it.

(For some reason TiVo is not the assignee, but James Barton is an inventor)

Notice how this application claims priority to a provisional patent application filed on October 2, 2003. Like I said, this is a very crowded field, and Microsoft will have much difficulty getting a patent on the broadest concepts in the application.

[Justin Thyme]

The only requirement is that the inventors and any patent attorneys or others who are involved in writing a patent application or prosecuting a patent application must disclose to the Patent Office all relevant prior art that they are actually aware of (prosecuting = dealing with the Patent & Trademark Office such as by responding to rejections).
Oh. When I did mine, I recall the lawyers asking me for all the background stuff I knew about and told me it was super important to state it. I thought it went in the text of the patent. Wrong.

Thanks for the points.