PTAB

IPR2019-00231

Comcast Cable Communications LLC v. Rovi Guides Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Interactive Television Systems with Digital Video Recording and Adjustable Reminders
  • Brief Description: The ’741 patent describes an interactive television system that allows a user to control the playback of a broadcast program after it has begun. The system determines if an "archived copy" of the in-progress program is available and, if so, displays an on-screen notification, allowing the user to select it and restart the program from the beginning.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sie in view of Berberet - Claims 1, 3, 5-8, 10, 12-15, 17, 19-21, 23, and 25-26 are obvious over Sie in view of Berberet.

  • Prior Art Relied Upon: Sie (Application # 2002/0095510) and Berberet (WO 2001/056285A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sie discloses most limitations of the independent claims. Sie teaches an interactive television system where stored "club programs" corresponding to broadcast content are available on a server for users to restart. When a user tunes to a broadcast that is also a club program, the system displays a notification symbol, which the user can select to access and play the stored version. Petitioner asserted that Berberet is added to address a potentially narrow construction of "archived copy" requiring discrete, additional copies stored at a server. Berberet discloses a system that archives programs from a video buffer, allowing users to store individual copies in a head-end program archive, even after the program is deleted from a more broadly accessible buffer.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSA) would combine Sie and Berberet to improve a known system (Sie's club programs) with a known technique (Berberet's server-side archiving of individual copies). This combination would yield the predictable result of allowing users to control which programs are stored at a head-end for their personal use, enhancing the restart functionality that both references address.
    • Expectation of Success (for §103 grounds): A POSA would have a reasonable expectation of success because the combination involves applying a known server-side archiving technique to a similar restart system to gain known benefits, such as user-controlled archiving.

Ground 2: Obviousness over Sie in view of McElhatten - Claims 1, 3, 5-8, 10, 12-15, 17, 19-21, 23, and 25-26 are obvious over Sie in view of McElhatten.

  • Prior Art Relied Upon: Sie (Application # 2002/0095510) and McElhatten (Patent 7,073,189).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presents McElhatten as an alternative prior art reference for teaching server-side archiving. Like Sie, McElhatten allows a user to restart an in-progress program. McElhatten further teaches giving users the "opportunity to archive [a] reserved program" at a head-end, which permits user access for an extended period. Petitioner argued this archiving could be a "virtual copy" (e.g., storing a program ID in a user record) or an actual copy, satisfying the claim limitations for an "archived copy."
    • Motivation to Combine (for §103 grounds): A POSA would combine McElhatten's head-end reservation and download features into Sie's club program system. Sie expressly suggests that its system "could be refined" to store programs based on user preferences, and McElhatten provides an exemplary method for doing so via its reservation system. The combination would improve storage efficiency by allowing user reservations to influence which programs are stored server-side.
    • Expectation of Success (for §103 grounds): Success would be expected because both references relate to restarting in-progress programs, and the combination integrates known head-end reservation functionality into a system that already uses head-end storage to provide a predictable improvement in user control and storage efficiency.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on adding White (Patent 6,804,825) to teach automatic recording of missed favorite shows and Bonomi (Patent 6,769,127) to teach username/password authentication for accessing personal stored content. These were proposed as obvious additions to the primary Sie/Berberet and Sie/McElhatten combinations to improve their functionality with known techniques.

4. Key Claim Construction Positions

  • "Archived Copies / Archived Copy": This term was central to Petitioner's arguments. Petitioner argued the claims are unpatentable under two alternative constructions from a related ITC investigation.
    • The first, broader construction, advocated by the Patent Owner in the ITC case, is simply "stored copy" or "stored copies." Petitioner argued Sie's "club programs" directly meet this construction.
    • The second, narrower construction, adopted by the ITC, is "a real or virtual copy of a program retained by a system." Petitioner argued that even under this construction, the claims are obvious because combining Sie with Berberet or McElhatten teaches the creation of such discrete server-side copies.
  • Means-Plus-Function Terms (Claims 15-20): Petitioner addressed the means-plus-function limitations in independent claim 15 and its dependents. For each functional limitation, Petitioner identified corresponding structures in the prior art references (e.g., Sie's "program request database" as the "means for accessing a database," and Berberet's "Video Scrapbook" as part of the structure for maintaining a user list).

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of Patent 9,369,741 as unpatentable.