PTAB

IPR2019-01135

Charter Communications Inc v. Sprint Communications Co LP

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Video-On-Demand System
  • Brief Description: The ’907 patent discloses a video-on-demand (VOD) system that allows a user to control video content using a computer instead of a dedicated set-top box. The system provides for transferring video to a primary display (e.g., a television) using a first, higher bandwidth, or to a secondary display (e.g., the computer) using a second, lower bandwidth.

3. Grounds for Unpatentability

Ground 1: 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 taught a VOD system with the core claimed architecture. Sampsell disclosed an image display system with two displays: a primary television and a remote-control device with its own screen. A user could select content and choose to display it on either the television or the remote control. However, Petitioner contended that Sampsell did not explicitly disclose the claimed bandwidth differential. Yosuke was introduced to supply this missing element, as it taught a VOD system that transmitted video to a primary display over a high-bandwidth medium (e.g., coaxial cable) and to a secondary control display (a touch panel) over a lower-bandwidth network. The combination of Sampsell’s dual-display control system with Yosuke’s dual-bandwidth transmission allegedly rendered the independent claims obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references to improve the functionality of Sampsell’s system. Sampsell taught using multiple image sources, and a POSITA would have been motivated by market demand to replace one of these sources with a VOD server as taught by Yosuke. Both references addressed the same problem of overcoming the limitations of single-purpose set-top boxes, making the combination a natural and predictable integration of known technologies.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved implementing a known VOD content source and delivery method (Yosuke) into a known dual-display control system (Sampsell). The integration was predictable and would not have produced any unexpected results.

Ground 2: Claims 1-53 are obvious over Sampsell, Yosuke, and 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. Browne was added to provide further teaching for the "control screen signal" and "processing system" limitations. Browne disclosed a VOD system where a controller generated a "virtual control screen" that could be displayed on any monitor for a user to control playback. Petitioner argued that if the Board found the Sampsell/Yosuke combination deficient in teaching the generation and transfer of a control screen signal by a processing system, Browne explicitly disclosed this feature.
    • Motivation to Combine: A POSITA would combine Browne with Sampsell and Yosuke to provide greater flexibility and user control, which was a known design goal in the art. Browne’s virtual control screen represented a well-known alternative for controlling VOD systems. Integrating this known control method into the system of Sampsell and Yosuke was presented as an obvious design choice to enhance the system's features.

Ground 3: Claims 1-53 are obvious over Sampsell, Yosuke, and 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 built upon the Sampsell and Yosuke combination. Humpleman was added to provide alternative teachings for a browser-based control interface and the use of disparate bandwidths. Humpleman disclosed a home network system where a browser on one device could display a program guide (via HTML files) to control another device. It also taught that different network connections with different bandwidths (e.g., a high-bandwidth 1394 serial bus and a lower-bandwidth wireless link) could be used, directly mapping to the claimed bandwidth limitation.
    • Motivation to Combine: A POSITA would have been motivated to replace the control interface of Sampsell with the more modern, browser-based interface of Humpleman to provide more diverse and user-friendly control options. The use of web technologies for user interfaces was a known trend, making it an obvious choice to incorporate Humpleman’s teachings into the Sampsell/Yosuke system.

4. Key Claim Construction Positions

  • Petitioner argued that several key claim terms should be construed consistent with a claim construction order from a related district court case (Comcast Cable Commc'ns, LLC v. Sprint Commc'ns Co.). The central dispute involved whether the claims required the VOD system to operate without the use of a set-top box for remote control.
  • "A video-on-demand system" / "operating a video-on-demand system": Petitioner supported the Comcast court's construction requiring "operating a video-on-demand system without the use of a set-top box for remote control," arguing the ’907 patent specification disparaged prior art set-top boxes. Patent Owner had argued for the plain and ordinary meaning.
  • "viewer control signal": Similarly, Petitioner supported the construction requiring a signal "generated and processed without the involvement of a set-top box for remote control."
  • Petitioner asserted that the challenged claims were obvious under either its proposed constructions or the Patent Owner’s broader constructions.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-53 of the ’907 patent as unpatentable under 35 U.S.C. §103.