PTAB

IPR2019-01135

Charter Communications, Inc. v. Sprint Communications Company L.P.

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1. Case Identification

2. Patent Overview

  • Title: Video-on-Demand System Controlled by a Computer
  • Brief Description: The ’907 patent describes a video-on-demand (VOD) system that uses a computer, instead of a dedicated set-top box, to remotely control video content. The invention allows a user to receive control screens on the computer, select content, and direct the VOD system to transmit the video to either a first display (like a television) using a high bandwidth connection or to the computer itself using a second, lower bandwidth connection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sampsell and Yosuke - Claims 1-53 are obvious over Sampsell in view of Yosuke.

  • Prior Art Relied Upon: Sampsell (Patent 6,496,122) and Yosuke (European Patent Application EP 0 872 987 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sampsell disclosed the core of the claimed system: a VOD system with a remote control device (a computer with a display) that can select content from various sources and choose to display it on a primary television screen or on the remote control's own screen. However, Sampsell did not explicitly teach using different bandwidths for the two display paths. Yosuke was asserted to remedy this by teaching a VOD system that explicitly uses a high-bandwidth medium (e.g., coaxial cable) for a primary video display and a lower-bandwidth network connection for a secondary client/control display. The combination of Sampsell’s dual-display control architecture with Yosuke’s differentiated bandwidth approach allegedly rendered the claims of the ’907 patent obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references to improve the functionality of Sampsell’s system. Sampsell itself suggested modifying its system to access additional image sources, and a VOD server like Yosuke’s was a well-known source. A POSA would have recognized that combining Sampsell’s interactive remote control with Yosuke’s VOD server and its efficient, differentiated bandwidth for different displays was a natural fit to address market demand for more flexible and capable VOD systems.
    • Expectation of Success: The combination was presented as predictable. Integrating a known VOD server and bandwidth management technique (Yosuke) into a known dual-display control system (Sampsell) involved applying known principles to achieve a predictable result without unexpected outcomes.

Ground 2: Obviousness over Sampsell, Yosuke, and Browne - Claims 1-53 are obvious over Sampsell and Yosuke in view of Browne.

  • Prior Art Relied Upon: Sampsell (Patent 6,496,122), Yosuke (European Patent Application EP 0 872 987 A2), and Browne (WO 92/22983).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Sampsell and Yosuke. Petitioner asserted that to the extent the primary combination was considered deficient, Browne provided the missing elements. Browne taught a VOD system where a controller generates a "virtual control screen" and transfers it to a display for user interaction, allowing the user to select video sources and control playback. Petitioner argued this directly taught the limitations related to generating and transferring a "control screen signal" by a "processing system," providing an alternative or supplemental teaching to that found in Sampsell.
    • Motivation to Combine: A POSA seeking to enhance the user interface of the combined Sampsell/Yosuke system would have been motivated to incorporate the well-known virtual control screen concept from Browne. Browne’s stated goal was to provide "greater flexibility and control," which aligned with the objective of creating a more advanced VOD system. Adding Browne’s control screen functionality was argued to be a simple and obvious design choice.
    • Expectation of Success: Combining these references would have been straightforward, as it involved adding a known user interface element (Browne's virtual control screen) to the underlying VOD architecture established by Sampsell and Yosuke.

Ground 3: Obviousness over Sampsell, Yosuke, and Humpleman - Claims 1-53 are obvious over Sampsell and Yosuke in view of Humpleman.

  • Prior Art Relied Upon: Sampsell (Patent 6,496,122), Yosuke (European Patent Application EP 0 872 987 A2), and Humpleman (Patent 6,182,094).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground also used Sampsell and Yosuke as a base. Humpleman was added to provide further teachings, particularly regarding the use of different bandwidths and browser-based control within a home network. Humpleman disclosed a home network that could use different bus types with different bandwidth capabilities (e.g., a high-bandwidth 1394 serial bus and a lower-bandwidth wireless link). It further taught using browser-based HTML files to generate a "human interface" for controlling network devices. This was mapped to the ’907 patent’s limitations of different bandwidths and a control screen comprising a web page.
    • Motivation to Combine: A POSA would combine Humpleman to implement a more robust and modern network architecture for the Sampsell/Yosuke system. Replacing Sampsell's control menus with Humpleman’s more diverse, browser-based control scheme would have been a trivial and obvious choice to allow for more flexible control of video content. Humpleman’s aim of generating a program guide for a home network environment provided a clear motivation to integrate its teachings.
    • Expectation of Success: The combination was argued to be predictable, as it involved integrating a known network control method (Humpleman's browser-based guide) into the VOD system of Sampsell and Yosuke.

4. Key Claim Construction Positions

  • Petitioner argued that several key claim terms were central to the invalidity analysis, referencing constructions from a prior district court litigation involving the ’907 patent.
  • “A video-on-demand system” / “operating a video-on-demand system”: The central dispute was whether these terms require a system that operates without the use of a set-top box for remote control. Petitioner supported the court’s stricter construction that the patent disclaimed set-top boxes for remote control but argued that the prior art rendered the claims invalid under either that construction or the Patent Owner's broader "plain and ordinary meaning" proposal.
  • “viewer control signal”: Similarly, Petitioner supported a construction requiring the signal to be "generated and processed without the involvement of a set-top box for remote control."
  • “transfer . . . video signals”: Petitioner supported a construction requiring the transfer to be "in response to the viewer control signal," arguing the prior art met this limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-53 of Patent 6,757,907 as unpatentable under 35 U.S.C. §103.