PTAB

IPR2019-00299

Comcast Cable Communications LLC v. Rovi Guides Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Systems and Methods for Providing Storage of Data on Servers in an On-Demand Media Delivery System
  • Brief Description: The ’799 patent describes an on-demand media delivery system with a "relocation feature" that allows a user to pause media content on a first user device and resume playback on a second user device by accessing stored pause-point data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lee and Wang - Claims 1-4 and 6 are obvious over Lee in view of Wang.

  • Prior Art Relied Upon: Lee (Patent 7,127,735) and Wang (Patent 6,501,902). Petitioner also presented Vanzini (Patent 7,036,738) as an alternative to ensure multiple user devices could access a portable profile card.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lee taught the core functionality of the challenged claims: a video-on-demand (VOD) system where a user can pause a program on one terminal, store the pause position and program ID on a portable "profile card," and then use that card on a different terminal to resume playback. This portable card constituted the claimed "storage device remote from the first user equipment." Petitioner asserted that Lee failed to explicitly teach the simultaneous display of multiple playback options. Wang was introduced to supply this missing element, as it disclosed a multimedia player that could set multiple bookmarks and simultaneously display them as a list or as selectable sub-pictures, allowing a user to choose a resume point.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Lee’s pause/resume system with Wang’s user interface for displaying multiple bookmarks to enhance user experience. The combination would predictably allow a user to conveniently view and select from multiple playback options (e.g., from the pause point, from the beginning, or from other bookmarks) on a single screen.
    • Expectation of Success: A POSA would have a reasonable expectation of success in integrating Wang's known user interface for displaying multiple playback options into Lee's system, as it was a straightforward application of conventional UI design to improve functionality.

Ground 2: Obviousness over Lee, Wang, and Bonomi - Claims 5 and 9 are obvious over Lee in view of Wang and Bonomi.

  • Prior Art Relied Upon: Lee (Patent 7,127,735), Wang (Patent 6,501,902), and Bonomi (Patent 6,769,127).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Lee/Wang combination by adding user authentication and account association features. While the Lee/Wang combination taught the pause/resume functionality with multiple playback options, Petitioner argued it lacked the specific limitations of claim 5 (e.g., generating a login option, receiving password information, and authorizing access). Bonomi was cited for disclosing a conventional authentication process, requiring a username and password to access a subscriber's centrally stored media library and bookmarks, thereby teaching the claimed login and authorization steps. For claim 9, Bonomi taught associating pause-point data with a specific user account.
    • Motivation to Combine: A POSA would combine Bonomi’s authentication system with the Lee/Wang combination to improve security. This would prevent unauthorized users from accessing another user's private viewing history and bookmarks, which was a known and desirable feature for multi-user systems.
    • Expectation of Success: Adding a standard login function to a media system was a well-understood practice, and a POSA would have predictably succeeded in implementing Bonomi's authentication to protect the user profile data in the Lee/Wang system.

Ground 3: Obviousness over Lee, Wang, and Yukie - Claims 8, 10-13, 15, 17, 19-22, 24, 26, and 28 are obvious over Lee in view of Wang and Yukie.

  • Prior Art Relied Upon: Lee (Patent 7,127,735), Wang (Patent 6,501,902), and Yukie (Patent 6,956,833).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed limitations related to automatic system configuration and network-based remote storage. Petitioner argued that the Lee/Wang combination did not teach automatically configuring the user interface upon user identification. Yukie was introduced to teach a system for storing user profiles on a remote network server, which could then be used to automatically configure end-user devices and transmit data to them. This addressed the limitation in claim 8 of "automatically configuring the first user equipment to generate for display the first option and the second option" in response to user input. For claims like 10 and 19, which required storage remote from the pausing device, Yukie’s network server provided a stronger basis than Lee’s portable card, especially under a narrower construction.
    • Motivation to Combine: A POSA would combine Yukie’s network-based profile storage with the Lee/Wang system to improve convenience and create a more seamless user experience. This would eliminate the need to physically transfer a profile card between devices and would allow a user’s playback options to be accessible and automatically configured on any compatible device connected to the network.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Bonomi and Yukie to address claims requiring both authentication and network storage, and combinations including Noble (Patent 6,622,148) to address claims requiring text-based or genre-based search functionality.

4. Key Claim Construction Positions

  • "storage device remote from the first user equipment": Petitioner argued for a broad construction where the device is simply located outside the user equipment. This construction encompassed both network memory and portable storage devices, such as the "profile card" disclosed in Lee.
  • "first user equipment configured to: ... [access, retrieve, and determine]": Petitioner contended this phrase should be construed to include both direct and indirect actions (i.e., via a server or network). This construction was based on the patent owner's expert testimony in a related ITC investigation and was critical for mapping the claims onto prior art systems where a central server performs these functions on behalf of the user equipment.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-28 of Patent 9,294,799 as unpatentable.