PTAB

IPR2019-01136

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

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1. Case Identification

2. Patent Overview

  • Title: Video-on-Demand System Using a Computer for Remote Control
  • Brief Description: The ’907 patent discloses a video-on-demand (VOD) system that allows a user to control video content using a general-purpose computer instead of a dedicated set-top box. The system uses two separate communication networks: one for delivering video to a primary display like a television, and a second (e.g., the Internet) for transmitting control signals from the user's computer.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-25 - Claims 1-25 are anticipated by Sampsell under 35 U.S.C. §102.

  • Prior Art Relied Upon: Sampsell (Patent 6,496,122).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sampsell teaches every element of the challenged claims. Sampsell discloses an image display system with a video remote control (VRC) that functions as a computer to control and display video from multiple sources (e.g., cable TV, computer TV signals) on two different displays: a television and the VRC's own screen. Petitioner mapped Sampsell's components to the claim limitations, asserting that Sampsell's hard-wired connection to a television is the "first communication system," while its wireless RF connection to the VRC is the "second communication system." Sampsell's image processor was mapped to the claimed "processing system," which receives control signals from the VRC and, in response, routes selected video content to the appropriate display, thus anticipating the limitations of independent claims 1, 10, and 19.
    • Key Aspects: Petitioner contended Sampsell anticipates the claims regardless of whether the Patent Owner's or a district court's construction of "video-on-demand system" is used, as Sampsell's system does not use a set-top box for remote control.

Ground 2: Obviousness of Claims 1-25 - Claims 1-25 are obvious over Sampsell in view of Yosuke under 35 U.S.C. §103.

  • 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 teaches a dual-display control system, and Yosuke teaches a conventional VOD server system where content is provided to clients in response to instructions from a touch panel. To the extent Sampsell's "image sources" are not considered a full VOD system, Yosuke supplies this element. A person of ordinary skill in the art (POSITA) would have found it obvious to use the VOD server from Yosuke as one of the "image sources" in Sampsell's more flexible, dual-display control architecture.
    • Motivation to Combine: A POSITA would combine Sampsell and Yosuke to satisfy market demand for more diverse content sources and improved remote control features. Both references are in the same field of endeavor (interactive video systems), address the same problem (limitations of single-purpose set-top boxes), and use similar techniques (computer-based control). The combination was presented as a predictable integration of known technologies.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining Yosuke's VOD source with Sampsell's control system was a simple substitution of one known type of video source for another, presenting no technical hurdles or unexpected results.

Ground 3: Obviousness of Claims 1-25 - Claims 1-25 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 builds on the combination of Sampsell and Yosuke. Petitioner asserted that Browne provides additional teachings for a VOD system controller that generates a virtual control screen for display on any monitor, allowing a user to control playback and select content. If any control screen or menu features were deemed missing from the Sampsell/Yosuke combination, Browne was alleged to explicitly teach them. Specifically, Browne's virtual control screen, which lists available programs and is transferred over a data bus, was mapped to the claimed "control screen signal" and its transmission.
    • Motivation to Combine: The motivation to add Browne's teachings to the Sampsell/Yosuke system was to provide greater user flexibility and more diverse control options, a well-established trend in the art. A POSITA would have been motivated to incorporate Browne's more advanced control screen features into the underlying system of Sampsell/Yosuke to enhance its functionality in a predictable way.
    • Expectation of Success: The combination would have yielded no unexpected results, as it involved integrating a known type of user interface (from Browne) with a known type of VOD system (Sampsell/Yosuke), which was a common practice for improving media systems.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Sampsell and Yosuke with Humpleman (Patent 6,182,094) and Sampsell with Ellis (Patent 7,913,278), relying on similar design modification theories to supply specific features related to network program guides and remote access functionality.

4. Key Claim Construction Positions

  • "video-on-demand system": Petitioner highlighted a dispute from a prior district court litigation (Comcast order) over this term. The Patent Owner argued for its plain and ordinary meaning, while the Comcast court construed it as "operating a video-on-demand system without the use of a set-top box for remote control." Petitioner supported the narrower Comcast construction, arguing the ’907 patent specification disparages set-top boxes. However, Petitioner maintained that all asserted prior art invalidates the claims under either construction.
  • "video control signal": Similar to the above, Petitioner noted the Comcast court construed this term to require generation and processing "without the involvement of a set-top box." Petitioner argued the prior art met this limitation.
  • "transfer [the] video content signals": The dispute centered on whether the transfer must be in response to the video control signal. Petitioner supported the Comcast court's construction requiring this responsive link, arguing the prior art, particularly Sampsell, explicitly discloses it.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-25 of Patent 6,754,907 as unpatentable under 35 U.S.C. §§ 102 and 103.