PTAB

IPR2019-00304

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 relates to an on-demand media delivery system with a "relocation" feature that allows a user to pause media content on a first device and resume playback on a second, different device by accessing a stored pause point.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hanson and Bieselin - Claims 1-6, 8-15, 17-24, and 26-28 are obvious over Hanson in view of Bieselin.

  • Prior Art Relied Upon: Hanson (Patent 5,922,045) and Bieselin (Patent 5,668,863).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hanson taught the core system claimed in the ’799 patent. Hanson described an audio-based system where a user could pause content (creating a "bookmark") on a first device (e.g., telephone) and resume playback on a second device (e.g., PC or another phone). This system stored the bookmark in a remote "personal profile database" associated with the user. Petitioner contended that Bieselin, an audio conferencing system, supplied teachings that Hanson arguably lacked, such as the ability to create and select from multiple bookmarks within a single media file and a more robust login procedure using a user ID and password.
    • Motivation to Combine: A POSITA would combine Hanson and Bieselin to improve the functionality and user experience of Hanson’s system. Incorporating Bieselin’s multiple bookmarks would offer users greater playback flexibility, which aligned with Hanson’s stated goal of allowing a user to proceed through content at their own pace. Adding Bieselin’s conventional login system would provide enhanced security over Hanson's simpler PIN-based access.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Integrating known techniques like multiple bookmarks and conventional logins into an existing media playback system were routine modifications that would yield the predictable result of a more flexible and secure system.

Ground 2: Obviousness over Hanson, Bieselin, and Noble - Claims 7, 16, and 25 are obvious over Hanson and Bieselin in view of Noble.

  • Prior Art Relied Upon: Hanson (Patent 5,922,045), Bieselin (Patent 5,668,863), and Noble (Patent 6,622,148).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Hanson-Bieselin combination to address dependent claims 7, 16, and 25, which added search functionality. While arguing Bieselin disclosed basic search capabilities, Petitioner introduced Noble to explicitly teach the claimed methods of searching. Noble described a video-on-demand system where a user could search for media content by entering a text string (e.g., title) or by selecting a program type (e.g., genre) and receive corresponding search results.
    • Motivation to Combine: A POSITA would be motivated to add Noble’s well-known text and genre-based search functionality to the Hanson-Bieselin system to improve usability. This addition would make it easier for users to locate and access specific content within the system’s database, a common and desirable feature for any media delivery platform.
    • Expectation of Success: Success would be expected, as combining a standard search interface with a media playback system was a conventional and predictable integration of known elements to improve a known system.

Ground 3: Obviousness over Hanson, Bieselin, and Vallone - Claims 1-6, 8-15, 17-24, and 26-28 are obvious over Hanson and Bieselin further in view of Vallone.

  • Prior Art Relied Upon: Hanson (Patent 5,922,045), Bieselin (Patent 5,668,863), and Vallone (Patent 6,847,778).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative argument for the same claims as Ground 1, specifically targeting the limitation requiring options to be "simultaneously displayed." Petitioner contended that while Hanson's audio menu met this limitation, a patent owner might argue otherwise. Vallone was introduced to foreclose this argument by teaching a system with a graphical "trick play bar" that visually and simultaneously displayed multiple user-selectable bookmarks for a media program. Vallone explicitly stated its bookmarking features could be applied to audio applications like MP3s.
    • Motivation to Combine: A POSITA would be motivated to supplement Hanson’s PC-based user interface with a graphical display like Vallone’s trick play bar. This would enhance the user's interactive control over playback, a natural and obvious improvement over a purely audio-based menu. The combination would provide a more intuitive and efficient user experience.
    • Expectation of Success: The combination was a straightforward application of a known GUI element (Vallone's trick play bar) to a known system (Hanson's PC interface) to achieve the predictable result of enhanced user control.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 7, 16, and 25 based on the combination of Hanson, Bieselin, Vallone, and Noble, incorporating Vallone's teachings on simultaneous display into the search-focused grounds.

4. Key Claim Construction Positions

  • "display[ed]": Petitioner argued for a construction of "presented visually and/or audibly." This construction was critical to their primary assertion that the audio-based system of Hanson could meet the claim limitations requiring options to be displayed, as Hanson presented its options via an audio menu.
  • "storage device remote from the first user equipment": Proposed as a storage device located outside the user equipment, explicitly including both network memory and portable storage devices. This broad construction was important for ensuring the remote "personal profile database" in Hanson met the limitation.
  • "first user equipment configured to: ... [access, retrieve, and determine]": Petitioner argued this phrase should be construed to encompass indirect action, where the user equipment causes the action to be performed by another component, such as a remote server. This was essential for mapping Hanson, where a central server, queried by the user equipment, performed many of the data access and determination steps.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-28 of the ’799 patent as unpatentable.