PTAB

IPR2019-01137

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

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1. Case Identification

2. Patent Overview

  • Title: Video-On-Demand System
  • Brief Description: The ’7907 patent discloses a video-on-demand (VOD) system that uses a general-purpose computer to remotely control video content, intended to replace a traditional single-purpose set-top box. The system allows a user to select and view content on either a primary display like a television, using a high-bandwidth connection, or on the computer's own display, using a lower-bandwidth connection.

3. Grounds for Unpatentability

Ground 1: Claims 1-53 are obvious over Ellis in view of Yosuke.

  • Prior Art Relied Upon: Ellis (Patent 7,913,278) and Yosuke (European Patent Application EP 0 872 987 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ellis teaches the foundational concept of an interactive television program guide system where a remote access device (e.g., a computer) replaces an immobile set-top box for controlling and viewing content on either a television or the remote device itself. This directly addresses the same problem identified in the ’7907 patent. Yosuke was asserted to supply the specific teaching of a VOD system that uses different bandwidths for different displays—a higher bandwidth for a primary video display and a lower bandwidth for a secondary display/control panel. The combination of Ellis’s remote access architecture and Yosuke’s dual-bandwidth transmission scheme allegedly renders the independent claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ellis's remote access system with Yosuke's VOD features and dual-bandwidth transmission to enhance functionality and user flexibility, which was a known market demand. Petitioner contended that since both references are in the same field (VOD systems), address the same problem (limitations of set-top boxes), and use similar techniques (computer-based control), the combination was a 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 feature (dual bandwidth from Yosuke) into a known remote access architecture (from Ellis). The integration was portrayed as a simple addition of complementary features that would operate as expected without interference.

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

  • Prior Art Relied Upon: Ellis (Patent 7,913,278), 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 Ellis and Yosuke combination by introducing Browne to supply teachings for specific features in the dependent claims. Petitioner asserted that Browne teaches a VOD system featuring a "virtual control screen" with standard playback controls such as play, pause, rewind, and fast forward. The argument was that Browne provides an explicit disclosure for the video display control menu limitations found in claims like claim 12.
    • Motivation to Combine: A POSITA, seeking to build a feature-rich VOD system based on Ellis and Yosuke, would have been motivated to incorporate the well-known playback control functionalities taught by Browne. Adding such standard controls was argued to be a trivial and obvious step to improve the user experience and would have been a natural addition to the remote control interface.

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

  • Prior Art Relied Upon: Ellis (Patent 7,913,278), Yosuke (European Patent Application EP 0 872 987 A2), and Humpleman (Patent 6,182,094).
  • Core Argument for this Ground:
    • Prior Art Mapping: This argument also used the Ellis/Yosuke combination as a base and added Humpleman to teach other claimed features. Humpleman was cited for its disclosure of a home network system where a browser-based device can display a program guide and control other devices using a graphical user interface (GUI) with hyperlinks. Humpleman was also used to teach video preview functionality, such as a picture-in-a-picture display, which allegedly maps to the "video preview selection" limitations in claims like claim 7.
    • Motivation to Combine: Petitioner argued a POSITA would have been motivated to replace the control interface of the Ellis system with the more modern and flexible browser-based interface disclosed in Humpleman. This would allow for more diverse control over content and displays and was a predictable design choice for VOD systems of that era. Incorporating Humpleman’s video preview feature was presented as another obvious enhancement.

4. Key Claim Construction Positions

  • Petitioner dedicated a significant portion of its argument to claim construction, referencing a claim construction order from a related district court case (Comcast v. Sprint).
  • For the key term "a video-on-demand system," Petitioner argued the claims are obvious regardless of whether the Board adopts the Patent Owner's proposed "plain and ordinary meaning" or the district court's construction, which required "operating a video-on-demand system without the use of a set-top box for remote control."
  • Petitioner explicitly supported the district court's construction, noting that the ’7907 patent specification disparages the use of set-top boxes for remote control. This position was central to the argument that prior art teaching computer-based remote control (like Ellis) was directly analogous and not distinguished by the absence of a set-top box.

5. Relief Requested

  • Petitioner requested 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.