PTAB

IPR2019-00226

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

Title: Electronic Program Guide With Digital Storage
Brief Description: The ’585 patent describes an interactive television program guide (IPG) system that integrates digital storage capabilities. The system purports to improve upon prior analog devices (like VCRs) by allowing a user to select programs for recording from a guide, choose specific storage options (e.g., parental controls), and store the programs on a random access digital storage device.

Prior Art Relied Upon: Vogel (Patent 5,253,066) and Daniels (Application # 2002/0032907).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Vogel taught an IPG system that allows a user to select programs for recording from a menu and to enable/disable parental control classifications (a type of storage option). However, Vogel used a sequential-access VCR for storage. Daniels taught that using random access digital storage devices (e.g., hard drives, DRAM) for recording video was well-known and provided significant advantages over linear tape. The combination of Vogel’s IPG and parental control features with Daniels’ random access digital storage allegedly rendered the independent claims obvious.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to replace the outdated VCR in Vogel’s system with the random access digital storage taught by Daniels. This modification was presented as a simple substitution of one known element for another to obtain the predictable benefits described in Daniels, such as faster searching, retrieval of recordings, and simultaneous record/playback.
- Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success because combining a known IPG with a known random access digital storage device involved using well-understood technologies for their intended purposes.

Prior Art Relied Upon: Vogel (Patent 5,253,066), Daniels (Application # 2002/0032907), and Malik (U.K. Application # GB 2,298,544).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds upon the Vogel-Daniels combination by adding Malik to teach additional storage options required by various dependent claims. Petitioner contended that Malik disclosed a system for recording television programs with multiple language tracks (both sound and "textual messages" for dubbing/subtitles), which a user could select via an on-screen menu. This teaching supplied the "language track" and "language of subtitles" limitations not explicitly found in Vogel or Daniels.
- Motivation to Combine: A POSITA would have been motivated to add Malik's language-selection features to the Vogel-Daniels system to provide more options and enhance user experience, particularly in multi-lingual regions. Petitioner argued that Vogel itself states its disclosed functions are examples and that "other options can be provided," creating an express invitation to add features like those in Malik.
- Expectation of Success: Success was expected because Malik taught its language track technology could be applied to existing broadcast systems, and Vogel’s IPG provided a suitable on-screen display for presenting and selecting such options.

Prior Art Relied Upon: Vogel (Patent 5,253,066), Daniels (Application # 2002/0032907), and Boyce (Patent 5,887,115).
Core Argument for this Ground:
- Prior Art Mapping: This ground introduces Boyce to the Vogel-Daniels combination to teach the storage option of selecting a video format. Petitioner asserted that Boyce disclosed a digital recording system capable of recording in both high definition television (HDTV) and standard definition television (SDTV) formats, allowing a user to select the desired recording mode. This directly maps to the dependent claims requiring selection of a video format (e.g., HDTV, normal television).
- Motivation to Combine: A POSITA would have been motivated to integrate Boyce's selectable recording formats to allow users to manage the trade-off between video quality and storage space, a known issue for digital recorders. Adding this feature to the Vogel-Daniels system would be a predictable improvement, allowing users to store more content at a lower quality or less content at a higher quality.
- Expectation of Success: A POSITA would have expected success in this combination, as Boyce teaches that format selection is based on a simple user command, and Vogel’s IPG provides a suitable interface for such a command.

Prior Art Relied Upon: Vogel (Patent 5,253,066), Daniels (Application # 2002/0032907), and Browne (WO 92/22983).
Core Argument for this Ground:
- Prior Art Mapping: This ground uses Browne to add the storage option of automatically erasing viewed programs. Petitioner pointed to Browne’s disclosure of a setup screen with an option to "ERASE OLDEST VIEWED PROGRAMS." This feature addresses the dependent claims that recite automatically erasing programs from the storage device after they are viewed.
- Motivation to Combine: Browne expressly taught that automatic erasure options "greatly reduce[] the need for constant user attention" to manage limited storage capacity. A POSITA would have been motivated to add this feature to the Vogel-Daniels system for the explicit purpose of improving usability and automating storage management on the random access digital device.
- Expectation of Success: Success would have been expected because implementing an automatic erasure rule is a known technique for storage management, and Vogel’s IPG provides a logical interface for presenting such a setup option to the user.

"random access digital storage device": Petitioner noted that for the purposes of the IPR, it applied the construction from a concurrent ITC litigation: "a digital storage device that can access memory locations in a non-sequential manner." Petitioner argued that this construction was appropriate under the broadest reasonable interpretation (BRI) standard and that the combined prior art clearly disclosed devices (e.g., hard drives, DRAM) meeting this definition.
"storage setting configured to control how programs are to be digitally stored": Petitioner argued that under BRI, this term should be construed broadly to encompass the various "options relating to storage" disclosed in the ’585 patent specification (e.g., language tracks, video formats, parental controls, auto-erase). The petition emphasized that the prior art references directly teach these specific types of settings, making this construction central to its obviousness arguments. Petitioner also argued against any construction that would improperly import limitations regarding the order of operations (e.g., "global" vs. "local" settings), noting the specification disavows any specific order.

Petitioner requested that the Board institute an inter partes review of claims 1-28 of the ’585 patent and find them unpatentable and canceled.