PTAB

CBM2018-00034

Comcast Cable Communications LLC v. Promptu Systems Corp

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System and Method of Voice Recognition Near a Wireline Node of a Network Supporting Cable Television and/or Video Delivery
  • Brief Description: The ’326 patent, a reissue of U.S. Patent No. 7,685,523, discloses a system and method for providing voice control in a cable television or video delivery network. The technology involves sending a spoken command from a user device over a network to a centralized speech recognition engine for processing, and then delivering information or content to another device in response to the recognized command.

3. Grounds for Unpatentability

Ground 1: Violation of Recapture Rule under §251 - All Challenged Claims (1-21) are Invalid

  • Prior Art Relied Upon: Prosecution history of the original ’523 patent, particularly arguments made to distinguish Houser (Patent 5,774,859).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the reissue claims are invalid under the recapture rule of 35 U.S.C. § 251. During the prosecution of the original ’523 patent, the applicant distinguished the prior art Houser patent by adding limitations requiring the processing of speech from "a multiplicity of user devices" via a "back channel." This was done to overcome a rejection, as Houser was characterized as only disclosing speech processing on a single user's local terminal. By making these arguments and amendments, the applicant surrendered claim scope covering single-user configurations.
    • Recapture Violation: The reissue claims of the ’326 patent are significantly broader than the original claims because they entirely remove the "multiplicity of user devices" and "partitioning a received back channel" limitations. Independent claim 1, for example, now only recites a single "first device" sending speech information. Petitioner contended that by removing the very limitations used to secure the original patent, the Patent Owner improperly recaptured subject matter that was intentionally surrendered. The petition argued that the new limitations added during reissue are unrelated to the surrendered subject matter and do not narrow the claims in a relevant aspect, thus failing the three-step recapture analysis.

Ground 2: Unpatentable Subject Matter under §101 - All Challenged Claims (1-21) are Directed to an Abstract Idea

  • Prior Art Relied Upon: Not applicable; based on legal precedent under Alice Corp.
  • Core Argument for this Ground:
    • Abstract Idea: Petitioner argued that the challenged claims are directed to the patent-ineligible abstract idea of "placing an order to have something delivered." The method of claim 1 was broken down into fundamental, long-standing commercial practices: (1) receiving a spoken request, (2) transferring the request to a location where it can be understood, and (3) delivering the requested information. These steps, Petitioner asserted, are analogous to ordering a product from a mail-order catalog via telephone.
    • No Inventive Concept: The petition contended the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recite the use of generic, conventional components—a "wireless device," a "network path," and a "speech recognition engine"—to automate the abstract process. The dependent claims were argued to add only conventional activities (e.g., billing for a "financial consequence") or routine implementation details (e.g., delivering "video information" to a television and set-top box) that fail to supply an inventive concept. The claims do not solve a technical problem or offer a technical improvement over prior art systems.

Ground 3: Indefiniteness under §112 - Claims 11 and 21 are Invalid

  • Prior Art Relied Upon: Not applicable.
  • Core Argument for this Ground:
    • Lack of Antecedent Basis: Petitioner argued that claims 11 and 21 are indefinite because they contain the phrase "said user device" without any antecedent basis. Neither claim 11 (dependent on claim 1) nor claim 21 (dependent on claim 12) recites "a user device." The base claims only introduce a "first device" and a "second device."
    • Resulting Ambiguity: This lack of a clear antecedent was argued to render the scope of the claims fatally ambiguous and unclear. A person of ordinary skill in the art would not be able to determine with reasonable certainty whether "said user device" is intended to refer to the "first device," the "second device," or some other unenumerated device. This failure to inform a skilled artisan about the scope of the invention renders claims 11 and 21 invalid for indefiniteness under §112.

4. Key Claim Construction Positions

  • "speech recognition engine" (claims 1 and 12): Petitioner proposed this term be construed broadly as "hardware and/or software used to identify spoken words." This construction is based on the specification's disclosure of both hardware and software implementations and supports the argument that the engine is a generic, conventional component for the purposes of the §101 analysis, rather than a specific, inventive technology.
  • "STB" (claims 6 and 16): Petitioner asserted this term means "set-top box" and refers broadly to consumer premises equipment for receiving and processing audiovisual signals. This construction is based on interchangeable use in the specification and is relevant to the argument that the claims simply apply abstract ideas to the known environment of cable television.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny review based on two pending IPR petitions (IPR2018-00342 and IPR2018-00343) filed by the same Petitioner against the same patent. The core reason provided was that the grounds for unpatentability asserted in this CBM petition—improper recapture under §251, unpatentable subject matter under §101, and indefiniteness under §112—are legally distinct from the prior-art-based obviousness grounds in the IPRs and are not permitted in an IPR proceeding.

6. Relief Requested

  • Petitioner requested the institution of a Covered Business Method review and the cancellation of claims 1-21 of the ’326 patent as unpatentable.