Sony Corporation v. ARRIS ENTERPRISES LLC

1. Case Identification

• Case #: IPR2017-01963
• Patent #: 7,752,564
• Filed: September 29, 2017
• Petitioner(s): Sony Corporation
• Patent Owner(s): ARRIS Enterprises, LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Navigating Options Within a User Interface
• Brief Description: The ’564 patent discloses systems and methods for navigating selectable options (e.g., television programs, applications, media files) using a graphical user interface (GUI). The invention features a two-axis navigation system where a first set of "filter cards" is displayed along a first axis, and upon user selection of a filter card in a focus area, a second set of "content cards" corresponding to that filter is displayed along a perpendicular second axis.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bernhardson and Robarts - Claims 1, 3-9, 11-19, and 21 are obvious over Bernhardson in view of Robarts.

• Prior Art Relied Upon: Bernhardson (Patent 6,976,228) and Robarts (U.K. Patent Publication No. 2,325,537).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bernhardson teaches the core GUI structure of the ’564 patent, including a two-axis system with horizontal and vertical scroll bars that intersect at a focus region. Selecting an element (filter) on the horizontal axis populates the vertical axis with related content elements. Petitioner contended Robarts supplies the missing filtering functionalities, disclosing an electronic program guide (EPG) that uses queries to filter program information. These queries function as filters based on various criteria, including predefined categories (e.g., "comedies"), user-defined parameters (e.g., favorite channels), and implicit criteria based on viewing habits. Robarts also discloses applying these filters to different option types, such as television programs, games, and websites.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would have been motivated to combine the references. Both Bernhardson and Robarts address the same problem: the inefficiency of navigating a large number of channels and options in conventional television systems. A POSITA would have sought to implement the advanced and flexible filtering techniques of Robarts within the intuitive two-axis GUI of Bernhardson to create a more efficient, user-friendly, and powerful navigation system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the known filtering concepts of Robarts with the GUI structure of Bernhardson, as it involved applying known software techniques to improve a known interface, a predictable combination of prior art elements.

Ground 2: Obviousness over Tornqvist and Robarts - Claims 1, 3-9, 11-19, and 21 are obvious over Tornqvist in view of Robarts.

• Prior Art Relied Upon: Tornqvist (WO 00/65429) and Robarts (U.K. Patent Publication No. 2,325,537).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Bernhardson. Petitioner argued that Tornqvist discloses a "scrollable cross point navigation" system with a fundamentally similar two-axis GUI. Tornqvist teaches organizing user-selectable options into hierarchical levels, with object fields on one axis (e.g., a vertical bar) and corresponding sub-object fields on a perpendicular axis, which are displayed when an object is selected in a focus area. This structure provides the foundational GUI claimed in the ’564 patent. As in Ground 1, Robarts was cited for its disclosure of various filtering techniques (by genre, user-defined, implicit) applicable to multiple option types.
  • Motivation to Combine: The motivation was similar to Ground 1. Both Tornqvist and Robarts aim to solve the problem of tedious content browsing on devices like interactive televisions. A POSITA would combine Robarts' filtering methods with Tornqvist's cross-point navigation GUI to enhance content selection, allowing a user to more effectively filter and access desired options.

Ground 3: Obviousness over Bernhardson, Robarts, and Schein - Claim 2 is obvious over Bernhardson and Robarts in view of Schein.

• Prior Art Relied Upon: Bernhardson (Patent 6,976,228), Robarts (U.K. Patent Publication No. 2,325,537), and Schein (Patent 6,151,059).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to specifically address the limitations of claim 2, which adds functionality for progressively scrolling cards in response to a single, continuous user action (e.g., press-and-hold). Petitioner asserted that while Bernhardson and Robarts provide the base system, Schein teaches this exact "click-and-hold" scrolling operation. Schein describes an EPG where holding a button on a remote causes the program grid to scroll continuously and accelerate over time, stopping only when the button is released.
  • Motivation to Combine: Petitioner argued that "click-and-hold" was a well-known and conventional UI operation for rapid scrolling through long lists. A POSITA implementing the Bernhardson/Robarts system would have been motivated to incorporate Schein's conventional scrolling feature to improve the user experience, making navigation faster and more intuitive than repeated button presses.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Youman (Patent 5,629,733) for its teaching of downloading filters over a network to address claims 10 and 20. Other grounds were permutations of the primary combinations presented above.

4. Key Technical Contentions (Beyond Claim Construction)

• Disclosure of "Plurality of Option Types" in Bernhardson: A central contention was that Bernhardson, contrary to the Patent Owner's arguments during prosecution, does in fact disclose cards representing different "option types." Petitioner argued that Bernhardson's GUI is not limited to a single type of content (e.g., TV channels) but explicitly shows elements for games and internet websites in its figures (e.g., Fig. 4C). This assertion was critical to arguing that the primary reference met a key limitation that the Examiner previously found to be missing.

5. Arguments Regarding Discretionary Denial

• Petitioner preemptively argued against discretionary denial under 35 U.S.C. §325(d). While acknowledging that the Examiner considered Bernhardson during prosecution, Petitioner contended that the grounds in the petition were not the same or substantially the same as what was previously considered. The petition relied on new combinations of prior art, specifically the addition of Robarts, which Petitioner argued expressly discloses the key filtering limitations and different option types that were at issue during prosecution. Therefore, the new combination presented a new question of patentability for the Board to consider.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of the ’564 patent as unpatentable under 35 U.S.C. §103.