PTAB

IPR2019-00470

Unified Patents LLC v. SyncHView Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Digital Video Recording System
  • Brief Description: The ’882 patent discloses a digital video recorder (DVR) system and method for concurrently recording multiple television broadcast programs onto a mass storage unit. The system stores the programs together with time information, enabling a user to "surf" synchronized, pre-recorded channels in a manner that imitates real-time channel surfing.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-9, 12, 13, 16, 19-24, 27, 28, and 31 are obvious over Girard in view of Cooper.

  • Prior Art Relied Upon: Girard (Patent 5,751,282) and Cooper (Patent 6,901,209).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Girard and Cooper discloses all limitations of the challenged claims. Girard was asserted to teach an interactive television system with a centralized head-end server that acts as a mass data storage unit, concurrently and continuously storing multiple television programs with associated time information from an SQL database. This system allows a user to "surf" past programs using a set-top box with an electronic program guide (EPG), fulfilling the core functions of the independent claims. Cooper was asserted to supplement Girard by teaching a local DVR apparatus that records multiple programs, providing a basis for local storage if required by the claims, and disclosing a "least recent overwrite" feature, which corresponds to the first-in-first-out (FIFO) storage recited in dependent claim 2.
    • Motivation to Combine: A POSITA would combine Girard's remote, server-side storage with Cooper's local storage to offer users the convenience of immediate, offline access to selected programs. A POSITA would also incorporate Cooper's "least recent overwrite" feature into Girard's system as a logical and obvious method for managing the finite storage capacity of Girard’s "sufficient reserve" of programs by automatically deleting the oldest content first.
    • Expectation of Success: A POSITA would have a high expectation of success because combining remote and local storage architectures was a routine design choice, and implementing a FIFO buffer to manage storage was a well-known and predictable technique in digital video systems.

Ground 2: Claims 10, 12, 25, and 27 are obvious over Girard, Cooper, and Sasaki.

  • Prior Art Relied Upon: Girard (Patent 5,751,282), Cooper (Patent 6,901,209), and Sasaki (Patent 6,226,447).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Girard/Cooper combination by introducing Sasaki to teach the limitations of digital compression (claims 10 and 25) and an alternative archiving function (claims 12 and 27). Petitioner argued Sasaki discloses an MPEG encoder for compressing video signals before storage to achieve memory economy. Sasaki also teaches adding an "overwrite prohibition" flag to retrieved video signals, effectively creating an archive function to prevent the deletion of desired programs.
    • Motivation to Combine: A POSITA would incorporate Sasaki's video compression into the Girard/Cooper system for the obvious and desirable benefit of increasing storage capacity. Similarly, adding Sasaki's overwrite prohibition feature would allow a user to preserve favorite programs indefinitely, balancing memory economy with user interest as a predictable improvement over the base system.
    • Expectation of Success: Success was expected because MPEG compression was a well-known technique for digital video, and adding a flag to prevent overwriting was a simple and predictable software modification.

Ground 3: Claims 17-18 and 32-33 are obvious over Girard, Cooper, and Logan.

  • Prior Art Relied Upon: Girard (Patent 5,751,282), Cooper (Patent 6,901,209), and Logan (Patent 5,371,551).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground introduced Logan to the Girard/Cooper combination to teach limitations related to skipping content by commercial time units to achieve "catch-up viewing" (claims 17, 18, 32, 33). Petitioner asserted that Logan teaches a system that allows a viewer to skip unwanted segments of a broadcast, such as "annoying advertisements," by navigating a "mosaic of reduced-size images" representing the program at spaced time intervals. This maps directly to the limitation of selectively moving by a "commercial time unit."
    • Motivation to Combine: A POSITA would combine Logan's specific time-based skipping functionality with Girard's more general fast-forwarding capability. The motivation was to provide the highly desirable and predictable purpose of allowing users to efficiently skip unwanted content like commercials.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because implementing Logan's feature would be a straightforward enhancement of the known fast-forwarding and catch-up viewing concepts already present in Girard and Cooper, requiring only the incorporation of known programming techniques.

4. Key Claim Construction Positions

  • Petitioner proposed an express construction for the term "concurrently and continuously receives and digitally stores" (and its variations) as recited in claims 1 and 19.
  • The proposed construction was: "simultaneously digitally storing more than one television broadcast program, without interruption over at least a finite period of time."
  • This construction was central to the Petitioner's argument that prior art like Girard, which simultaneously records all available channels to a server, meets this limitation. Petitioner argued the patent's specification and prosecution history supported equating "concurrently" with "simultaneously" and defined "continuously" as allowing for minor interruptions as long as recording occurs over a finite period.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner contended that the "mass data storage unit" of claim 1 does not require program data and time information to be stored on the same physical device.
  • It was argued that Girard's architecture, which uses a "continuous media server" for video streams and a separate but communicatively coupled "SQL database" for time information, satisfies the limitation because the two components operate together as a logical unit at the head-end server.
  • Petitioner further argued that even if a single physical device were required, it would have been obvious to a POSITA to integrate Girard's separate server functions onto a single piece of hardware, as this was a well-known practice and a matter of routine design choice.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5-10, 12, 13, 16-25, 27, 28, and 31-33 of Patent 6,788,882 as unpatentable under 35 U.S.C. §103.