PTAB

IPR2019-00304

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

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1. Case Identification

  • Case #: IPR2019-00304
  • Patent #: 9,294,799
  • Filed: November 12, 2018
  • Petitioner(s): Comcast Cable Communications, LLC
  • Patent Owner(s): Rovi Guides, Inc.
  • Challenged Claims: 1-28

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. This feature allows a user to pause media playback on a first device, store the pause point, and later resume playback from that point on a second device.

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 discloses the core system of the challenged claims: an audio-based system where a user can pause content on one device (e.g., telephone), have a "bookmark" (pause point) stored in a remote user profile, and later resume playback from that bookmark or from the beginning on a second device (e.g., a PC). Hanson allegedly teaches most limitations, including storing the pause point in a remote data structure and providing options to resume or restart. Petitioner asserted Bieselin, another audio bookmarking system, teaches the missing elements, specifically the ability to create multiple bookmarks within a single media file and a more robust user ID/password login system.
    • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Hanson and Bieselin to improve Hanson's system. Bieselin explicitly teaches that multiple bookmarks enhance usability by allowing a user to skip to various points. A POSA would have been motivated to add Bieselin's multiple bookmark feature to Hanson's single-bookmark system to provide more flexible playback options, a predictable improvement consistent with Hanson's goal of letting a user proceed "at the user's own pace." Similarly, a POSA would incorporate Bieselin's user ID and password login to improve the security of Hanson's PIN-based access.
    • Expectation of Success: A POSA would have had a high expectation of success, as combining known techniques (multiple bookmarks, user ID/password login) from one audio system (Bieselin) into a similar audio system (Hanson) involves applying known methods to achieve predictable results and known benefits.

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 builds on the Hanson and Bieselin combination to address dependent claims 7, 16, and 25, which require receiving search results based on a text string or program type. While the base combination provides the pause/resume functionality, Petitioner argued that Noble teaches the specific search functionality. Noble describes a video-on-demand system where a user can search for media content by entering text (e.g., title) or selecting a genre, which was a well-known method for content discovery.
    • Motivation to Combine: A POSA would have been motivated to add Noble's text-based and genre-based search capabilities to the Hanson/Bieselin system to improve user experience. Providing a search function is a logical and common improvement for any system with a content database, allowing users to more easily find specific media they wish to access. The combination would predictably result in a system where users could not only pause and resume content across devices but also search for that content in a conventional manner.
    • Expectation of Success: The integration was argued to be a straightforward application of a known technique (content searching) to an existing system (Hanson/Bieselin's media playback system) to yield the predictable benefit of improved content discovery.

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 presents an alternative argument for the "simultaneously displayed" limitation of the independent claims. Petitioner argued that while Hanson's audio menu of options constitutes a simultaneous display, a patent owner might argue it does not. To counter this, Petitioner introduced Vallone, which discloses a visual "trick play bar" for media playback (applicable to audio or video) that visually and simultaneously displays multiple bookmark indicators. A user can see all pause points on the timeline at once and select one.
    • Motivation to Combine: A POSA would have been motivated to supplement the user interface of the Hanson/Bieselin system, particularly on a PC, with a graphical user interface (GUI) like the one in Vallone. This would enhance the user's playback control by providing a visual, interactive way to select from multiple resume points, which is a more powerful and user-friendly method than a simple audio menu. This modification would be a natural evolution of Hanson's system to provide greater interactivity.
    • Expectation of Success: A POSA would expect success in adding a known GUI element (a trick play bar) to a media playback system to yield the predictable result of an enhanced, visually-interactive user experience.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 7, 16, and 25 based on the combination of Hanson, Bieselin, Vallone, and Noble, incorporating the teachings of all references as described in the grounds above.

4. Key Claim Construction Positions

  • "storage device remote from the first user equipment": Petitioner argued this term should be construed as a storage device located outside of the first user equipment, including both network memory (a remote server) and portable storage devices (e.g., smart cards). This construction is important because Hanson's primary embodiment uses a remote server, but the patent's own language supports a broader interpretation.
  • "display[ed]": Petitioner asserted this should be construed as "presented visually and/or audibly," consistent with an agreement in a related ITC investigation and the ’799 patent’s disclosure of on-demand audio content. This construction is critical to mapping Hanson's audio-based menu to the "display" limitation.
  • "determine... that the media content was previously accessed...": Petitioner argued for a broad construction encompassing the act of determining whether a pause point associated with media content exists in a data structure. If a pause point exists, the content was by definition "previously accessed." This allows Hanson's system, which detects the existence of a bookmark, to meet this limitation.
  • "first user equipment configured to: [access, retrieve, and determine]": Petitioner proposed that these actions can be performed "directly or indirectly (i.e., via another device and/or network)." This is crucial because in Hanson, the user equipment (e.g., telephone) sends signals to a remote service controller, which then performs the access, retrieval, and determination steps on the user's behalf.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that this petition, one of five filed concurrently, is not redundant and should not be denied on such grounds. It was asserted that each petition relies on different primary references and applies different art in distinct ways to demonstrate the unpatentability of the challenged claims. This petition, for example, is unique in its reliance on Hanson's audio-based system and its specific approach to resuming content on a different type of device (e.g., telephone to PC).

6. Relief Requested

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