PTAB

IPR2017-00742

Comcast Cable Communications LLC v. Rovi Guides Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Interactive Television Program Guide With Simultaneous Watch and Record Capabilities
  • Brief Description: The ’512 patent describes an interactive television program guide (IPG) system for use with multiple tuners. The system is designed to resolve tuner conflicts that arise when a user attempts to perform more simultaneous operations (e.g., watching and recording) than available tuners by providing an alert and an opportunity to cancel a pre-existing function to free up a tuner for the new request.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sano and Marsh - Claims 1-4, 8, 12-16, 20, and 24 are obvious over Sano in view of Marsh.

  • Prior Art Relied Upon: Sano (WO 97/46013) and Marsh (Patent 6,208,799).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sano disclosed the foundational multi-tuner IPG system capable of simultaneously recording multiple programs. Sano recognized that tuner conflicts could arise if the number of requested recordings exceeded the number of available tuners (e.g., three) and taught providing a warning or alarm to the user in such a scenario. However, Petitioner contended Sano did not explicitly teach allowing the user to cancel an existing function via the IPG to resolve the conflict. Marsh was argued to supply this missing element, as it described an IPG system that provides a "user-alert message" for recording conflicts and explicitly enabled the user to "manually and interactively reprogram or cancel the related VCR-record-timers" to resolve the conflict.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Marsh’s interactive conflict resolution feature with Sano’s multi-tuner system for predictable reasons. The combination would improve user convenience and control over programming content by automating a known method of conflict resolution (user-prompted cancellation) within a more advanced multi-tuner environment. This was presented as a combination of known elements to yield predictable results.
    • Expectation of Success: The combination involved applying a known interactive cancellation feature (from Marsh) to a known multi-tuner system (from Sano), a straightforward integration of software features that a POSITA would have expected to succeed.

Ground 2: Obviousness over Sano, Marsh, and LaJoie - Claims 5-7, 9-11, 17-19, and 21-23 are obvious over Sano in view of Marsh and further in view of LaJoie.

  • Prior Art Relied Upon: Sano (WO 97/46013), Marsh (Patent 6,208,799), and LaJoie (Patent 5,850,218).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Sano and Marsh combination from Ground 1. Petitioner argued that certain dependent claims required additional features, specifically "secondary tuner functions" like playing music channels, browsing the internet, or providing a picture-in-picture (PIP) signal, which were not explicitly taught by Sano or Marsh. Petitioner contended that LaJoie supplied these missing teachings. LaJoie described a "full service cable television" system with a set-top terminal that provided advanced services, explicitly including music programming, World Wide Web browsing, and Internet E-Mail, all selectable by a user.
    • Motivation to Combine: Petitioner argued that a POSITA, having already combined Sano and Marsh to create a base system for resolving recording conflicts, would be motivated to incorporate the advanced secondary functions from LaJoie. The motivation was to enhance the system's capabilities and maximize user access to additional, well-known forms of programming content (music, internet services) that were becoming common in advanced IPG systems at the time.
    • Expectation of Success: Integrating known secondary functions like those taught by LaJoie into the combined Sano/Marsh system was argued to be a predictable modification. A POSITA would have reasonably expected to successfully add these features to provide a more competitive and full-featured product.

4. Key Claim Construction Positions

  • "Secondary tuner function": Petitioner proposed this term should be construed to include any process other than standard television program viewing or recording that requires tuner allocation, such as collecting IPG data, internet browsing, or playing a music channel. This construction was important for mapping the teachings of LaJoie in Ground 2.
  • Non-limiting Preambles: Petitioner argued that the preambles of independent claims 1 and 13 (e.g., "A method for resolving a conflict...") were not limiting. It was asserted that the claim bodies described a structurally complete invention and the preambles merely stated an intended use, meaning the limitations within the preamble did not need to be separately met by the prior art.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention was that the ’512 patent was not entitled to its claimed 1998 priority date from the ’487 provisional application. Petitioner argued the provisional application, consisting of only a two-page specification with no drawings, failed to provide sufficient written description and enablement for the claimed invention, particularly regarding the functionality of the first and second tuners. Petitioner asserted the patent’s correct priority date should be June 11, 1999, the filing date of a later non-provisional application. This later priority date ensured that all asserted prior art references (Sano, Marsh, and LaJoie) were undisputedly available under 35 U.S.C. §102.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-24 of Patent 8,621,512 as unpatentable.