ARRIS Intl PLC v. Sony Corp

1. Case Identification

• Case #: IPR2016-00835
• Patent #: 6,084,643
• Filed: April 1, 2016
• Petitioner(s): ARRIS International plc, Pace Ltd., Pace Americas, LLC, Pace Americas Holdings, Inc., and Pace Americas Investments, LLC
• Patent Owner(s): Sony Corporation
• Challenged Claims: 1-4

2. Patent Overview

• Title: Receiving Equipment and Method of Using the Same
• Brief Description: The ’643 patent relates to a digital television receiving apparatus designed to enable faster channel surfing. It addresses the latency inherent in tuning digital channels by allowing a user to continuously press a remote control key to cycle through channel numbers on-screen without the receiver tuning to each intermediate channel; the receiver only tunes to the last displayed channel number after the key is released.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Wasilewski, Rosenberger, and Ishikawa.

• Prior Art Relied Upon: Wasilewski (Patent 5,600,378), Rosenberger (European Patent EP 0 612 150 A2), and Ishikawa (Patent 5,315,392).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wasilewski taught the foundational digital television receiver with an MPEG decoder, on-screen display (OSD), and a "channel hopping" feature using an ordered list of channels. However, Wasilewski did not address the channel change lag. Rosenberger, which addressed this known problem in analog television, allegedly supplied the key missing element: delaying the tuning of the receiver until a continuously pressed channel selection key is released. This allows a user to rapidly scroll through channel numbers without the delay of tuning each one. Finally, Petitioner asserted that Ishikawa taught the use of non-volatile memory (an EEPROM) to store a list of available channel numbers, which would be used as the basis for the on-screen display, thus completing the claimed invention.
  • Motivation to Combine: A POSITA would combine Rosenberger's known solution for slow channel surfing with Wasilewski's digital receiver to solve the same well-recognized problem in the digital context. The problem of lag time was even more pronounced in digital systems. A POSITA would further incorporate Ishikawa's teaching of storing a channel list in an EEPROM to efficiently implement the channel hopping and display features of the combined system.
  • Expectation of Success: The combination involved applying a known solution (Rosenberger) to a known problem (slow channel change) in a predictable field (digital television receivers) and would have been a technically simple modification yielding predictable results.

Ground 2: Claims 1-4 are obvious over Wasilewski in view of Ejima.

• Prior Art Relied Upon: Wasilewski (Patent 5,600,378) and Ejima (Japanese Unexamined Patent Application Publication H7-131727).
• Core Argument for this Ground:
  • Prior Art Mapping: As in Ground 1, Petitioner relied on Wasilewski as the primary reference for a digital receiver. Petitioner argued that Ejima, like Rosenberger, taught a solution to slow channel surfing. Ejima disclosed a "high speed channel change mode" where a user continuously presses a key, causing channel numbers to scroll on-screen without the receiver performing the tuning function for each channel. Tuning only occurred once the user released the key. Ejima further disclosed storing channel preset data in an EEPROM, which is used to generate the OSD.
  • Motivation to Combine: A POSITA confronting the channel change lag in Wasilewski's digital system would have been motivated to implement the solution taught by Ejima. Both references are in the same field of television receivers and address the common problem of simplifying channel selection for the user. Incorporating Ejima's fast-change functionality and EEPROM storage into Wasilewski’s system was presented as an obvious design choice to improve performance.
  • Expectation of Success: Petitioner contended that incorporating Ejima's teachings into Wasilewski's receiver would involve a combination of known prior art elements that was technically simple and would yield the predictable result of faster channel surfing.

Ground 3: Claims 1-4 are obvious over Lett in view of Rosenberger.

• Prior Art Relied Upon: Lett (Patent 5,592,551) and Rosenberger (European Patent EP 0 612 150 A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lett served as the primary reference, disclosing a subscriber terminal capable of receiving digital or compressed television signals. Lett taught a user interface with an on-screen display, remote control, an electronic program guide (EPG), and a "fast mode" where holding down a key allows for rapid scrolling. To this, Petitioner combined Rosenberger to explicitly supply the teaching of deferring the tuner's operation until after the continuously-pressed key is released, thereby separating the channel number display from the slower tuning process. Lett also taught storing a channel list in non-volatile flash EPROM memory.
  • Motivation to Combine: A POSITA would combine the teachings of Lett and Rosenberger because both address the problem of simplifying program selection in systems with a proliferation of channels. Petitioner argued that Rosenberger's technique for speeding up channel selection was a logical next step to improve the functionality of Lett's receiver. The combination would efficiently solve the problem of navigating numerous channels.
  • Expectation of Success: The proposed modification was described as a simple, predictable software change to incorporate Rosenberger's scrolling method into Lett's receiver system, which already included the necessary hardware components like a processor and an on-screen display.

4. Key Claim Construction Positions

• Petitioner argued that five terms in independent claim 1 should be construed as means-plus-function limitations under pre-AIA 35 U.S.C. §112(6). The proposed constructions identified specific structures from the patent's specification corresponding to the claimed functions, which were central to the prior art mapping.
  • "transmission signal receiving means": Construed as a front end comprising a tuner, or equivalent.
  • "command receiving means": Construed as front panel keys, or an IR signal receiving unit, or equivalent.
  • "channel number display control means": Construed as a CPU and MPEG decoder with OSD, or equivalents.
  • "control means" (for tuning when command is broken): Construed as a central processing unit (CPU), or equivalent.
  • "storage means": Construed as an EEPROM, or equivalent.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 of the ’643 patent as unpatentable under 35 U.S.C. §103.