PTAB

IPR2019-01138

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

Title: Video-on-Demand System Controlled by a Computer
Brief Description: The ’907 patent describes a video-on-demand (VOD) system that replaces a traditional set-top box with a general-purpose computer for remote control. The system uses two communication networks (e.g., a cable network and the Internet) to allow a user to select content on the computer and have it displayed on either a television connected to the first network or the computer connected to the second network.

Prior Art Relied Upon: Ellis (Patent 7,913,278).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Ellis discloses every limitation of the challenged claims. The interactive television program guide system in Ellis was asserted to be the claimed "video-on-demand system." Ellis's architecture, comprising a "television distribution facility" communicating with "user television equipment" (the first system) and also with a "remote program guide access device" via a "remote access link" (the second system), allegedly maps directly to the claimed dual-communication system. Petitioner contended that Ellis shows control signals sent from the remote device (e.g., a computer) over the second system to the distribution facility, which in response routes video content to either the user's television (first system) or back to the remote device (second system), thus meeting the core functionality of independent claims 1, 10, and 19.
- Key Aspects: Petitioner contended that Ellis explicitly teaches using a personal computer or similar device for remote control as an alternative to a set-top box, directly corresponding to the ’907 patent's purported invention and satisfying even a narrow claim construction that excludes set-top boxes.

Prior Art Relied Upon: Ellis (Patent 7,913,278) and Browne (WO 92/22983).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Ellis provides the foundational VOD system with its dual-communication architecture. To the extent Ellis was deemed insufficient in its disclosure of specific control screen features, Browne was asserted to supply them. Browne teaches a VOD system where a controller generates a "virtual control screen" with playback menus (e.g., play, stop, rewind, fast-forward) that can be displayed on any user monitor. Petitioner argued that incorporating Browne's explicit menu and control features into Ellis’s remote access device screen would be an obvious improvement, thereby completing the mapping for dependent claims requiring such features.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ellis and Browne because they address the same problem in the same field (VOD systems moving beyond set-top boxes). It would have been a simple and obvious design choice to implement the specific control screen features taught by Browne within the broader, flexible remote access system of Ellis to improve user control, a well-known goal in the art.
- Expectation of Success: The combination was predictable, as it involved integrating known control features into a known system type, and would have yielded no unexpected results.

Prior Art Relied Upon: Ellis (Patent 7,913,278) and Humpleman (Patent 6,182,094).
Core Argument for this Ground:
- Prior Art Mapping: This ground again used Ellis as the primary system and supplemented it with Humpleman. Humpleman teaches a home network where a device uses a web browser and HTML files to control other multimedia devices. This "human interface" of HTML pages serves as the "control screen signal." Humpleman's "control application" on the remote device acts as the "second communication interface," receiving user commands and communicating with a session manager (the "processing system") to control content. Petitioner asserted that implementing Humpleman's browser-based control method on Ellis's remote access device would have been an obvious way to create the claimed system.
- Motivation to Combine: A POSITA would be motivated to integrate Humpleman's HTML-based control interface with Ellis's system to provide a flexible, network-based control solution, which was a known trend. Both references aim to use general-purpose computers and network protocols to enhance media control, making their combination logical for improving the user interface.
- Expectation of Success: The combination was presented as a predictable integration of a web-based control method with a remote-access VOD system, with a high expectation of success.

"video-on-demand system" / "operating a video-on-demand system" (claims 1, 10, 19): Petitioner argued this term should be construed as "operating a video-on-demand system without the use of a set-top box for remote control," based on the ’907 patent's disparagement of prior art set-top boxes. Petitioner asserted its invalidity arguments hold even under the Patent Owner's broader construction.
"video control signal" (claims 1, 10, 19): Similarly, Petitioner contended this signal must be "generated and processed without the involvement of a set-top box for remote control." This construction was argued to be critical to defining the patent's scope over the prior art but not dispositive of invalidity, as the cited art allegedly meets this narrower construction.
"transfer [the] video content signals" (claims 1, 10, 19): Petitioner supported the construction that this transfer must occur "in response to the video control signal," aligning with the patent's description of a cause-and-effect relationship between user commands and content delivery.

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