DCT

2:18-cv-00253

Rovi Guides Inc v. Comcast Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00253, C.D. Cal., 01/10/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California based on Defendant operating physical "Xfinity" stores, employing individuals, and directing infringing products into the stream of commerce within the district. Plaintiff also notes its own large office in the district and the residence of at least four non-employee inventors.
  • Core Dispute: Plaintiff alleges that Defendant’s Xfinity X1 platform, including its set-top boxes, remote controls, and associated software, infringes six patents related to interactive program guide (IPG) technologies, such as digital video recording (DVR) options, cross-device content viewing, and automated content discovery.
  • Technical Context: The technology resides in the field of interactive program guides for pay-television, which are critical software interfaces for content discovery, navigation, and recording in the highly competitive digital media market.
  • Key Procedural History: The complaint alleges a prior patent license agreement between the parties expired on March 31, 2016. Following the expiration, Plaintiff initiated litigation against Defendant at the International Trade Commission (ITC) on different patents, resulting in a finding of infringement and an exclusion order against certain of Defendant's set-top boxes. Plaintiff alleges it provided Defendant with notice of the currently asserted patents during unsuccessful license renewal negotiations prior to the original license's expiration.

Case Timeline

Date Event
1998-09-17 U.S. Patent No. 7,827,585 Priority Date
2000-10-11 U.S. Patent No. 9,294,799 Priority Date
2003-01-30 U.S. Patent No. 9,369,741 Priority Date
2003-03-18 U.S. Patent No. 9,621,956 Priority Date
2004 Comcast enters license agreement with Rovi forerunner Gemstar
2008-12-23 U.S. Patent No. 9,578,363 Priority Date
2010-11-02 U.S. Patent No. 7,827,585 Issued
2012 Comcast launches the X1 IPG Product
2014 Comcast introduces next generation of its X1 IPG Product
2014-09-23 Rovi allegedly provides Comcast with presentation and claim charts for the ’585 Patent
2015-03-30 U.S. Patent No. 9,668,014 Priority Date
2016-03-22 U.S. Patent No. 9,294,799 Issued
2016-03-31 Comcast’s license to Rovi’s patent portfolio expires
2016-04-01 Rovi sues Comcast in district court on other patents
2016-04-06 Rovi initiates ITC enforcement action against Comcast on other patents
2016-06-14 U.S. Patent No. 9,369,741 Issued
2016-12-06 ITC Commission issues opinion finding infringement by Comcast products
2017-02-21 U.S. Patent No. 9,578,363 Issued
2017-04-11 U.S. Patent No. 9,621,956 Issued
2017-05-30 U.S. Patent No. 9,668,014 Issued
2018-01-10 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,827,585, “Electronic Program Guide With Digital Storage,” issued November 2, 2010

The Invention Explained

  • Problem Addressed: The patent describes that prior to its invention, interactive program guides (IPGs) that used independent analog storage devices like VCRs offered limited functionality. Users could not access advanced features that would be possible if a digital storage device were directly integrated with the IPG (Compl. ¶106; ’585 Patent, col. 1:43-48).
  • The Patented Solution: The invention is an IPG system integrated with a digital storage device, such as a DVR. This integration allows a user to select not only what program to record from a guide, but also how to store it by selecting from various "storage options." These options, illustrated in an exemplary set-up screen, control how the program is digitally stored and can include settings for preferred language, video format (e.g., HDTV), parental controls, and whether to automatically erase the program after it is viewed (Compl. ¶¶102, 104; ’585 Patent, Fig. 14, col. 15:52-59). The complaint provides Figure 14 from the patent, which is an illustrative set-up screen showing distinct sections for "STORAGE OPTIONS" and "PLAYBACK OPTIONS" (Compl. ¶104, p. 36).
  • Technical Importance: This technology enhanced user control over DVR recordings beyond simple scheduling, facilitating more sophisticated management of a personal digital media library as digital storage became a central feature of television consumption (Compl. ¶106).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 8, 15, and 22 (Compl. ¶109).
  • Essential elements of independent claim 1 (a method) include:
    • Providing a user an opportunity to select at least one storage option related to a storage setting that controls how a program is digitally stored on a random access digital storage device.
    • Modifying the storage setting in response to a user's selection.
    • Displaying a program listing in the IPG and providing the user an opportunity to select it for recording.
    • Recording the program on the digital storage device based on the modified storage setting.
  • The complaint reserves the right to assert additional claims (Compl. ¶107).

U.S. Patent No. 9,294,799, “Systems And Methods For Providing Storage Of Data On Servers In An On-Demand Media Delivery System,” issued March 22, 2016

The Invention Explained

  • Problem Addressed: The patent notes that early video-on-demand and client-server TV guide systems were deficient in providing mobility, as they did not allow users to "relocate their video-on-demand service to different locations." A user could not seamlessly pause media on one device and resume it on another (Compl. ¶¶128-129; ’799 Patent, col. 1:36-38).
  • The Patented Solution: The invention discloses a "relocate" feature where a user watching on-demand media on a first device can pause playback. The system stores a "content location reference" (a pointer to the pause point) in a user-specific account on a remote server. When the user accesses the system from a second device, the server retrieves this reference and resumes media delivery from the saved point (Compl. ¶125; ’799 Patent, col. 11:21-33). The complaint includes Figure 1 of the patent, a schematic diagram illustrating the network topology of the on-demand media delivery system (Compl. ¶126, p. 43).
  • Technical Importance: This technology is foundational to the multi-screen, or "TV Everywhere," experience, allowing content consumption to be continuous across different devices and locations, which has become a key feature of modern media services (Compl. ¶¶129-130).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 10, and 28 (Compl. ¶133).
  • Essential elements of independent claim 1 (a system) include:
    • A first user equipment that, in response to a pause request, causes a position pointer to be stored in a user profile on a remote storage device.
    • A second user equipment that can access the profile, retrieve the pointer, and, after determining the media was previously accessed by the first equipment, simultaneously display a first option (e.g., resume) and a second option (e.g., restart).
    • The system then generates a request based on the user's selection of an option and receives the media content accordingly.
  • The complaint reserves the right to assert additional claims (Compl. ¶131).

U.S. Patent No. 9,369,741, “Interactive Television Systems With Digital Video Recording And Adjustable Reminders,” issued June 14, 2016

  • Technology Synopsis: The patent describes a system for transmitting video to a user and, if an archived copy of that same video exists on a server, displaying an option for the user to watch the archived copy. This allows a user who tunes into a linear broadcast late to restart the program from the beginning by accessing an on-demand version (Compl. ¶149; ’741 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 8, and 15 (Compl. ¶154).
  • Accused Features: Comcast's X1 system is accused of infringing by providing the ability to "view [a program] from the beginning after tuning to a channel" (Compl. ¶¶152, 156).

U.S. Patent No. 9,578,363, “Content Access,” issued February 21, 2017

  • Technology Synopsis: The patent covers a system that provides a user with a superior format of a video (e.g., high-definition) despite the user selecting an inferior format (e.g., standard-definition). The system makes this substitution based on an automatic determination of the client device's hardware and software capabilities and user preferences (Compl. ¶169; ’363 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 11 (Compl. ¶177).
  • Accused Features: The Comcast X1 system is accused of infringing by automatically accessing and delivering the high-definition version of a program when a user selects to view the program in a standard-definition format (Compl. ¶175).

U.S. Patent No. 9,621,956, “Systems and Methods For Providing A Transport Control Interface,” issued April 11, 2017

  • Technology Synopsis: The technology relates to a transport control interface (i.e., a progress bar) for video playback. The interface visually distinguishes a time segment of a program that has been recorded in response to a specific user command from a time segment that has been automatically buffered by the system (Compl. ¶¶193-194; ’956 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 11 (Compl. ¶200).
  • Accused Features: The Xfinity system is accused of infringing with its progress bar, which allegedly indicates the buffered portion of a program in green, and when the user presses the record button, "the Status Bar will turn red" to indicate the recorded portion (Compl. ¶¶198, 203).

U.S. Patent No. 9,668,014, “Systems And Methods For Identifying And Storing A Portion Of A Media Asset,” issued May 30, 2017

  • Technology Synopsis: The patent describes a system for resolving voice commands that do not expressly or accurately name a media asset. The system determines if an identifier from a voice command matches a known media asset identifier and, if not, calculates a "degree of similarity" to find and suggest a potential match for the user to confirm (Compl. ¶216; ’014 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 11 (Compl. ¶224).
  • Accused Features: The Comcast X1 system, when used with an X1 voice remote or the Xfinity TV remote app, is accused of practicing the claimed method for resolving voice commands that do not expressly name the media asset (Compl. ¶222).

III. The Accused Instrumentality

  • Product Identification: The accused products are Comcast's Xfinity X1 platform offerings, which include numerous models of digital video receivers and set-top boxes (e.g., from ARRIS, Pace, Samsung), the associated Interactive Program Guide (IPG) software, the X1 remote control (including the voice remote), and related mobile applications such as the "Xfinity TV Remote App" and "Xfinity Stream App" (Compl. ¶¶22-24).
  • Functionality and Market Context: The complaint characterizes the X1 platform as a "cloud-enabled video platform that transformed the TV into an interactive, integrated entertainment experience" (Compl. ¶56). Its key functionalities allegedly include advanced search, DVR scheduling with modified start/stop times, personalized recommendations, and multi-screen viewing that allows users to start content on one device and resume on another (Compl. ¶¶38, 63, 136). Comcast is alleged to have marketed the X1 platform as a primary means to "differentiate themselves in a highly competitive marketplace" (Compl. ¶60).

IV. Analysis of Infringement Allegations

  • 7,827,585 Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
providing the user with an opportunity to select at least one storage option for storing a program to be recorded, wherein the at least one storage option relates to at least one storage setting configured to control how programs are to be digitally stored... Comcast users are able to "change the record options" through the Xfinity TV App, the Xfinity Stream Portal website, and remote controls. These options allegedly include determining whether to store only new episodes, only HD versions, or extending the start and stop time of a recording. ¶38, ¶40, ¶107, ¶112 col. 2:25-28
in response to a user selection of the at least one storage option, modifying the at least one storage setting; The Xfinity system modifies how a program is recorded based on the user's selection of the aforementioned record options. ¶38, ¶107 col. 16:26-30
recording the program on the random access digital storage device based on the modification of the at least one storage setting. The Accused Products (e.g., X1 DVRs) record television programs onto a digital storage device in accordance with the user-selected storage options. ¶102, ¶107 col. 16:40-42

  • Identified Points of Contention (’585 Patent):

    • Scope Questions: A central question may be whether extending the start or stop time of a recording (Compl. ¶112) qualifies as a "storage setting which controls how the program is to be digitally stored," as required by the claim. An argument could be made that this controls what content is stored (i.e., its temporal boundaries) rather than how it is stored (e.g., its format, language, or post-viewing retention policy, as exemplified in the patent's Fig. 14).
    • Technical Questions: The complaint alleges various ways to set recording options but does not provide specific evidence, such as screenshots, of the user interface that presents these "storage options." The analysis will question how closely the accused user interface for setting a recording aligns with the "Set-up screen" (Fig. 14) described as a key aspect of the invention in the patent specification.

  • 9,294,799 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a first user equipment configured to: receive a request to pause access to a media content; cause to be stored, in a data structure of a profile of a user in a storage device remote... a position... that corresponds to a pause point; The Xfinity system allows a user to "[b]egin a recorded show on your TV" (the first user equipment) and pause it, which stores the user's position in Comcast's cloud platform (the remote storage device). ¶56, ¶136 col. 11:21-26
a second user equipment configured to: ...determine... that the media content was previously accessed by the first user equipment; based on the receiving... cause to be simultaneously displayed a first option and a second option; The user can then "resume watching it on another TV" or a mobile device (the second user equipment). The complaint's allegations imply the system determines the content was previously watched and provides a resume function. ¶136 col. 11:59-61
when it is determined that the first option is selected...: generate a request including a position identifier..., transmit the request, and receive... the media content; The user selects the option to resume viewing on the second device, causing the system to retrieve the stored position pointer and resume playback from that point. ¶125, ¶136 col. 12:20-29
  • Identified Points of Contention (’799 Patent):
    • Scope Questions: Claim 1 requires the second user equipment to "simultaneously display[] a first option and a second option" after determining the content was previously paused. The complaint alleges a general capability to "resume watching" (Compl. ¶136) but does not specifically allege facts showing that the accused system presents two distinct, simultaneous options (e.g., "Resume from paused point" and "Restart from beginning"). The analysis will question whether the accused functionality meets this specific claim limitation.
    • Technical Questions: The patent describes a client-server architecture with a "remote server network" that stores the user profile and pause pointer ('799 Patent, Fig. 1). The infringement analysis will depend on evidence showing how Comcast's "cloud-enabled" X1 platform technically implements the storage and retrieval of a user-specific "content location reference" and whether this architecture maps onto the elements recited in the claim.

V. Key Claim Terms for Construction

  • U.S. Patent No. 7,827,585

    • The Term: "storage setting"
    • Context and Importance: The viability of the infringement claim depends on whether the accused recording modifications (e.g., changing start/stop times) fall within the definition of a "storage setting." This term is central to distinguishing the invention from merely scheduling a recording. Practitioners may focus on this term because the complaint's primary examples of infringement relate to temporal adjustments, whereas the patent's specification emphasizes qualitative file attributes.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Claim 1 broadly recites a "storage setting configured to control how programs are to be digitally stored," which could be argued to encompass any parameter affecting the final stored digital file (’585 Patent, col. 19:34-36).
      • Evidence for a Narrower Interpretation: The patent's detailed description and Figure 14 explicitly exemplify "storage options" as "LANGUAGES," "VIDEO FORMAT," "ENFORCE PARENTAL CONTROL," and "AUTO-ERASE VIEWED ENTRIES" ('585 Patent, Fig. 14; col. 15:52-59). This may support an interpretation that limits "storage setting" to parameters affecting the attributes or post-recording lifecycle of the file, not just its temporal scope.

  • U.S. Patent No. 9,294,799

    • The Term: "simultaneously displayed a first option and a second option"
    • Context and Importance: This claim element requires a specific user interface action on the second device. A core dispute may arise over whether the accused Xfinity system actually presents two distinct, concurrent choices (e.g., resume vs. restart) or if it offers a more streamlined, default "resume" function that does not meet this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term could be construed broadly to cover any user interface where both a "resume" and a "restart" capability are available to the user at the same time, even if not presented as a discrete, binary choice in a single prompt.
      • Evidence for a Narrower Interpretation: Figure 7B of the patent depicts a specific user prompt: "YOU HAVE PREVIOUSLY CHOSEN RELOCATE, CONTINUE MEDIA WHERE YOU LEFT OFF?" with "CONTINUE" and "CANCEL" buttons ('799 Patent, Fig. 7B). This suggests the invention contemplates a specific, explicit choice being presented to the user, which would support a narrower construction requiring a distinct user-facing prompt with at least two options.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement for all asserted patents. The basis for this allegation is that Defendant provides the Accused Products along with instructions—via websites, user manuals, and marketing materials—that allegedly encourage and direct subscribers to use the products in an infringing manner (e.g., Compl. ¶¶79, 112, 136, 156, 180).
  • Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It claims Defendant was aware of its infringement because of a long-standing prior licensing relationship and because Plaintiff provided "presentations and claim charts" for at least the ’585 Patent to Defendant on September 23, 2014, more than a year before the prior license expired (Compl. ¶¶110-111). The complaint further alleges Defendant's conduct has continued despite an adverse ITC ruling on other Rovi patents (Compl. ¶96).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term "storage setting," which the ’585 Patent exemplifies with qualitative file attributes like video format and language, be construed to cover the temporal recording adjustments (e.g., modifying start/stop times) that form a basis of the complaint's infringement allegations?
  • A key evidentiary question will be one of functional operation: does the accused Xfinity platform, when facilitating cross-device viewing, perform the specific, multi-step process required by Claim 1 of the ’799 Patent, particularly the requirement to "simultaneously display a first option and a second option" on the second device, or does the complaint's general allegation of a "resume" feature conceal a fundamental mismatch in technical operation?
  • Given the complaint’s detailed allegations of a prior licensing history and specific pre-suit notice with claim charts, a central dispute will likely concern willfulness: what was Defendant's state of mind regarding the asserted patents after the license expired, and does the evidence support a finding of deliberate or reckless disregard of Plaintiff's patent rights?