Comcast Cable Communications LLC v. Rovi Guides Inc

1. Case Identification

• Case #: IPR2019-00224
• Patent #: 7,827,585
• Filed: November 10, 2018
• Petitioner(s): Comcast Cable Communications, LLC
• Patent Owner(s): Rovi Guides, Inc.
• Challenged Claims: 1-28

2. Patent Overview

• Title: Electronic Program Guide With Digital Storage
• Brief Description: The ’585 patent describes an interactive television program guide (IPG) system that allows a user to select a program for recording from a program listing, choose storage options for how the program is stored, and record the program to a random access digital storage device. The system purports to improve upon prior analog VCRs by associating advanced features with a digital storage device.

3. Grounds for Unpatentability

Ground A: Anticipation of Claims 1, 5, 8, 12, 15, 19, 22, and 26 by Alexander

• Prior Art Relied Upon: Alexander (Patent 6,177,931)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Alexander, which is §102(e) prior art, discloses every limitation of the challenged independent and dependent claims. Alexander teaches an IPG that allows a user to navigate program listings, select programs for recording, and choose storage options. Specifically, Alexander discloses selecting a recording frequency (e.g., once, daily, weekly), a rerun filter, and parental controls that block certain programs from being recorded. Petitioner contended these all qualify as the claimed "storage option" with a corresponding "storage setting." Alexander further teaches recording selected programs to a recordable Digital Video Disc (DVD) and creating an index for the recorded content, which Petitioner asserted constitutes the claimed "random access digital storage device" as it allows non-sequential access to programs.

Ground B: Obviousness over Alexander in view of Malik

• Claims Challenged: Claims 1-2, 5, 7-9, 12, 14-16, 19, 21-23, 26, and 28 are obvious over Alexander in view of Malik.
• Prior Art Relied Upon: Alexander (Patent 6,177,931), Malik (U.K. Application # GB 2,298,544)
• Core Argument for this Ground:
  • Prior Art Mapping: Alexander provides the base IPG recording system. To the extent Alexander is found not to disclose a plurality of storage options, Malik supplies the missing elements. Malik teaches a television recording system that supports a "multiplicity of language tracks," including different audio tracks and multi-lingual textual messages (i.e., subtitles), which a user can select for recording via an on-screen menu. This directly teaches the storage options recited in dependent claims 2, 7, 9, 14, 16, 21, 23, and 28.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Malik's multi-lingual features with Alexander's advanced IPG to provide the same benefits—allowing viewers to select programs in their native language—within a more sophisticated recording environment. Malik itself proposed an "improved television transmission, reception and recording means incorporating multi-lingual operation," motivating its application to a modern recording system like Alexander's.
  • Expectation of Success: A POSITA would have had a high expectation of success. Malik taught that its techniques could be implemented transparently on existing recording systems. Alexander's IPG provides a suitable on-screen display for presenting the language and subtitle options disclosed by Malik.

Ground D: Obviousness over Alexander in view of Kumagai and Browne

• Claims Challenged: Claims 1, 5-6, 8, 12-13, 15, 19-20, and 26-27 are obvious over Alexander in view of Kumagai and Browne.

• Prior Art Relied Upon: Alexander (Patent 6,177,931), Kumagai (Patent 6,252,834), Browne (WO 92/22983)

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses the "automatic erasure" feature recited in dependent claims 6, 13, 20, and 27. Alexander's system records to a DVD but does not disclose that the DVD is rewritable or that programs can be auto-erased. Kumagai teaches a rewritable DVD (DVD-RW), a known type of recording medium. Browne teaches a system with a setup screen that provides an option to automatically erase the oldest viewed programs to manage storage, addressing the finite capacity of storage media.
  • Motivation to Combine: A POSITA would have been motivated to substitute Alexander's standard DVD with Kumagai's rewritable DVD-RW, as this was a simple substitution of one known recording medium for another to add erasability. Further, Browne's automatic erasure feature addresses the well-known problem of managing limited storage space. A POSITA would have been motivated to incorporate this feature into the Alexander/Kumagai system to "greatly reduce[] the need for constant user attention" in managing recorded content.
  • Expectation of Success: The combination involved applying known techniques to achieve predictable results. Using a DVD-RW (Kumagai) in Alexander's system is a simple substitution. Adding an auto-erase option (Browne) via an on-screen menu, like the IPG in Alexander, was a known method for implementing user-selectable features.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations substituting Alexander's indexed DVD with Browne's disclosure of RAM as the random access storage device. Other grounds combined Alexander with Boyce (Patent 5,887,115) to teach selecting a video format (e.g., HDTV/SDTV) as a storage option.

4. Key Claim Construction Positions

• "random access digital storage device": Petitioner applied the construction from a related ITC proceeding: "A digital storage device that can access memory locations in a non-sequential manner." Petitioner argued that Alexander's disclosure of recording to an indexed DVD meets this construction, as the index allows for direct, non-sequential retrieval of stored programs.
• "storage setting configured to control how programs are to be digitally stored": Petitioner argued for a broad interpretation that encompasses any user-selectable option affecting how a program is stored. This includes options explicitly disclosed in the ’585 patent's specification (e.g., parental controls, video formats) and options asserted by the Patent Owner in concurrent litigation (e.g., recording frequency, rerun filters, start/end time offsets).
• Order of Limitations Not Limiting: Petitioner argued that the order of steps recited in the method claims is not limiting. The ’585 patent specification states that the steps for operating the program guide "are illustrative and may be performed in any order." Therefore, any argument relying on a specific sequence, such as selecting a storage option before selecting a program, is improper.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-28 of the ’585 patent as unpatentable.