PTAB

IPR2019-00225

Comcast Cable Communications, LLC v. Rovi Guides, Inc.

Log In

1. Case Identification

  • Case #: IPR2019-00225
  • 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 integrated with digital storage. The system purports to improve upon prior analog VCR-based systems by allowing users to select programs for recording and choose from advanced storage options (e.g., language tracks, video formats) that are managed 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 '268 disclosed all elements of the independent claims except for the use of a random access digital storage device. Young taught an IPG system for selecting programs to record, but it used sequential-access VCR tapes. Logan explicitly taught replacing slow, time-consuming VCRs with a random access digital storage system (a combination of RAM buffer and disk memory) to permit immediate access to recorded programs. Petitioner asserted that implementing Young's IPG with Logan's random access storage would render the independent claims obvious.
    • Motivation to Combine: Logan provided the explicit motivation to replace a VCR with random access memory to overcome the "time consuming fast-forward and fast-reverse tape motion" required by conventional VCRs like those used in Young. Furthermore, Young taught selecting recording speeds (SP/EP) to trade off quality for recording time, while Logan taught varying digital compression to achieve the same trade-off (longer programs at reduced quality). A person of ordinary skill in the art (POSITA) would have been motivated to substitute Logan's digital compression control for Young's recording speed control to gain the benefits of random access digital storage.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining an existing IPG with a known random access digital video recorder was a simple substitution of one known storage element (VCR tape) for another (hard disk/RAM) to achieve the predictable result of faster access to recorded content.

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. Application Publication No. GB 2,298,544).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Young/Logan combination to address dependent claims requiring the selection of language tracks or subtitles (claims 2, 7, 9, 14, 16, 21, 23, 28). Petitioner asserted that Malik taught a recording system that could record programs with a "multiplicity of language tracks," including sound and text tracks in different languages, which a user could select via an on-screen menu.
    • Motivation to Combine: A POSITA would combine Malik's teachings with the Young/Logan system to provide the known and desirable feature of multi-lingual support. Malik identified the advantage of its system as giving the viewer a "choice of language," a clear benefit that would motivate its inclusion in the base Young/Logan recorder to expand the programming a viewer could consume in their native language.
    • Expectation of Success: Success was expected because Malik taught that its techniques were transparent and could be implemented with "existing tv [and] recording systems in the normal way."

Ground 3: Obviousness over Young, Logan, and Boyce - Claims 3-4, 10-11, 17-18, 24, and 25 are obvious over Young in view of Logan and Boyce.

  • Prior Art Relied Upon: Young (Patent 5,479,268), Logan (Patent 5,371,551), and Boyce (Patent 5,887,115).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground adds Boyce to the Young/Logan combination to address dependent claims requiring the selection of a video format, such as high-definition (HDTV) or normal-definition (SDTV) television (claims 3, 4, 10, 11, etc.). Boyce disclosed a digital recording system that allowed a user to instruct the device to record in either an HDTV or SDTV mode.
    • Motivation to Combine: Boyce recognized the known trade-offs between image quality and storage requirements, which extend to digital recording of HDTV and SDTV signals. A POSA would have been motivated to incorporate Boyce’s selectable recording modes into the Young/Logan system to provide users with the desirable choice of recording fewer, higher-quality programs or more, lower-quality programs, a well-understood design trade-off.
    • Expectation of Success: A POSA would expect success, as Boyce taught that the recording modes could be selected by a user command, and the Young/Logan IPG would be a suitable interface for presenting these options.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the Young/Logan combination in view of Vogel (Patent 5,253,066) for claims reciting parental controls, and in view of Browne (WO 92/22983) for claims reciting the automatic erasure of viewed programs.

4. Key Claim Construction Positions

  • "random access digital storage device": 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 this term was added during prosecution to disclaim sequential-access devices and that Logan's combination of RAM and disk memory squarely meets this construction.
  • "storage setting configured to control how programs are to be digitally stored": Petitioner argued that under the broadest reasonable interpretation, this term encompasses the storage options disclosed in the patent (e.g., language tracks, video formats, parental controls) as well as those asserted by the Patent Owner in litigation. The petition contended that the term was added by amendment and does not appear in the specification, which only refers to "options relating to storage."
  • Preambles and Order of Limitations Not Limiting: Petitioner argued that the preambles of the independent claims should not be limiting. For example, the preamble of claim 1 recites selecting plural "storage options," while the body only requires selecting "at least one storage option." Petitioner also contended that the order of steps in the method claims is not limiting, as the specification states the illustrated steps "may be performed in any order."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate because the grounds presented are not redundant to those considered during prosecution. Specifically, Logan was not considered by the examiner, yet it supplied the key teaching of a random access digital storage system that the examiner previously found missing. Petitioner also argued the grounds were not redundant of other concurrently filed petitions, as this petition (2 of 6) relies on a distinct prior art combination (Young/Logan) with a different implementation of storage options (compression value) and random access storage (RAM buffer/disk memory).

6. Relief Requested

  • Petitioner requests that the Board institute an inter partes review and cancel claims 1-28 of the ’585 patent as unpatentable.