PTAB

IPR2019-00225

Comcast Cable Communications LLC v. Rovi Guides Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Program Guide with Digital Storage
  • Brief Description: The ’585 patent describes an interactive television program guide (IPG) system that uses digital storage. The system purports to improve on prior analog storage devices (like VCRs) by allowing a user to select a program for recording from the IPG, choose a storage option, and store the program on a random access digital storage device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Young and Logan - Claims 1, 8, 15, and 22 are obvious over Young in view of Logan.

  • Prior Art Relied Upon: Young (Patent 5,479,268) and Logan (Patent 5,371,551).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Young taught a method for recording television programs using an IPG that allowed users to select programs and choose a storage option (e.g., recording speed like SP or EP) for recording onto a non-random access videotape. The examiner allowed the ’585 patent claims over similar art because the prior art failed to teach a storage setting configured to control digital storage on a random access device. Petitioner asserted that Logan, which was not considered during prosecution, supplied these missing elements. Logan disclosed a digital video recording system using random access memory (RAM buffer and disk memory) and taught varying the amount of compression as a storage option to trade off recording quality for duration. The combination of replacing Young’s VCR with Logan’s random access digital storage and replacing Young’s recording speed option with Logan’s variable compression option allegedly met all limitations of the independent claims.
    • Motivation to Combine: Petitioner contended that Logan provided an explicit motivation to replace the VCR technology in Young. Logan taught that its use of random access memory permitted "immediately accessed and viewed" programming, avoiding the "time consuming fast-forward and fast-reverse tape motion required in conventional video cassette recorders." A person of ordinary skill in the art (POSITA) would combine Logan’s superior storage technology with Young’s IPG system to achieve the predictable benefit of faster, non-linear access to recorded content.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved substituting one known storage element (VCR tape) for another known, superior element (random access digital storage) to obtain predictable results. Logan explicitly identified its technology as a suitable replacement for VCRs, making its application to a VCR-based system like Young's straightforward.

Ground 2: Obviousness over Young, Logan, and Malik - Claims 1-2, 7-9, 14-16, 21-23, and 28 are obvious over Young in view of Logan and Malik.

  • Prior Art Relied Upon: Young (Patent 5,479,268), Logan (Patent 5,371,551), and Malik (U.K. Patent Application No. GB 2,298,544).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground incorporated the arguments from Ground 1 and added Malik to teach storage options related to language tracks and subtitles, as required by various dependent claims. Petitioner asserted that Malik disclosed a system for recording television programs with a "multiplicity of language tracks," including sound tracks and "multi-lingual textual messages" (subtitles). Malik taught that a user could select a desired language track from an on-screen menu, and the selected track would be recorded with the program. This teaching allegedly satisfied the limitations of the dependent claims requiring the selection of language tracks or subtitles.
    • Motivation to Combine: A POSITA would combine Malik’s teachings with the base Young/Logan system to add the desirable feature of multi-lingual support, thereby expanding the system's marketability. Malik recognized the need for providing television programs in multiple languages, particularly in multi-lingual regions, and proposed its system as an improvement for "multi-lingual operation." This provided a strong rationale for integrating such a feature into the established IPG and digital recording framework of the primary combination.
    • Expectation of Success: Petitioner argued a POSITA would expect success in this combination. Malik taught that its techniques could be implemented transparently on existing television and recording systems. Furthermore, Malik’s use of an on-screen menu to select language options was compatible with the IPG interface disclosed in Young, and its disclosure of recording onto optical or magnetic disks was compatible with the random access storage taught by Logan.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the core Young/Logan combination supplemented with other references to meet further dependent claim limitations. These included combinations with Boyce (Patent 5,887,115) for selecting video formats (HDTV/SDTV), Vogel (Patent 5,253,066) for setting parental controls to prevent recording, and Browne (WO 92/22983) for automatically erasing viewed programs.

4. Key Claim Construction Positions

  • "random access digital storage device": This term was added during prosecution to overcome prior art. For the IPR, Petitioner adopted the construction from a concurrent ITC litigation: "A digital storage device that can access memory locations in a non-sequential manner." Petitioner argued the prior art met this construction as well as the alternative constructions previously proposed by both parties in the ITC case.
  • "storage setting configured to control how programs are to be digitally stored": This phrase was also added by amendment and does not appear in the specification. Petitioner argued that under the broadest reasonable interpretation, the term should encompass all "options relating to storage" identified in the specification (e.g., language tracks, video formats, parental controls) as well as additional options asserted by the Patent Owner in litigation (e.g., recording duration, start/end times).

5. Relief Requested

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