DISH Network LLC v. Contemporary Display LLC

1. Case Identification

• Case #: IPR2019-01168
• Patent #: 6,492,997
• Filed: June 10, 2019
• Petitioner(s): DISH Network LLC
• Patent Owner(s): Contemporary Display LLC
• Challenged Claims: 1-43

2. Patent Overview

• Title: Interactive Multi-Window Video Display
• Brief Description: The ’997 patent discloses an interactive multi-window video display, described as a multi-screen browser tool, that allows a viewer to scan a block of channels simultaneously. The system presents a plurality of reduced-size video windows, which can be still images or full-motion video, within an "overlay grid" for user navigation and selection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Niijima - Claims 1-9, 12, 16, and 30-36 are obvious over Niijima.

• Prior Art Relied Upon: Niijima (5,926,230).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Niijima, which was not considered during prosecution, discloses an electronic program guide system that renders all limitations of the challenged claims obvious. Niijima’s system transmits a "multi-screen" signal from a broadcasting station to a receiver, which displays a grid of reduced-size, full-motion video screens for program selection. Petitioner asserted that Niijima’s receiver performs the functions of the claimed "receiver," including receiving a multi-window real-time video signal. The signal includes Electronic Program Guide (EPG) data containing information on the number and position of reduced screens, which Petitioner contended is the claimed "cell quantity data value." Petitioner further argued that Niijima’s receiver generates a virtual grid to correlate a cursor’s location with a selected screen, and a POSITA would have been motivated to make this grid visible to delineate program choices, thereby teaching the claimed "overlay grid." Niijima’s system presents these video screens within the grid and allows user selection via a remote control, mapping to the claimed "presentation means" and "selection means."
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation focused on inherent design choices. Petitioner argued that making Niijima's logical grid visible as a graphical overlay was a simple design choice to improve user experience, a common practice in program guides at the time.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in implementing a visible graphical grid, as it was a well-known and straightforward feature in user interface design for program guides.

Ground 2: Obviousness over Niijima and Devaney - Claims 10, 11, 13-15, 17-29, and 37-43 are obvious over Niijima in view of Devaney.

• Prior Art Relied Upon: Niijima (5,926,230) and Devaney (6,357,045).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Niijima by adding Devaney to address claim limitations related to organizing content by programming category. While Niijima taught arranging reduced-size videos into categories at the broadcasting station, Petitioner asserted that Devaney explicitly disclosed generating multiple, distinct category-based preview channels (e.g., a "news channel surfing channel," "sports channel surfing channel"). The combination, therefore, taught a system where different multi-window displays are each associated with a specific programming category, and the reduced-size videos within each display belong to that category or to different categories, as recited in independent claims 17, 29, and 37.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Niijima’s multi-screen guide with Devaney’s category-based channel surfing feature to enhance usability. As the number of channels grew, a POSITA would be motivated to separate programs by category onto distinct preview screens, as taught by Devaney, to allow a viewer to more easily navigate the large number of programming choices available in a system like Niijima’s.
  • Expectation of Success (for §103 grounds): The combination involved applying a known organizational technique (Devaney's categories) to a known program guide structure (Niijima's multi-screen display), which would have been a predictable implementation for a POSITA.

Ground 3: Obviousness over Matthews and Schein - Claims 30, 32-36 are obvious over Matthews in view of Schein.

• Prior Art Relied Upon: Matthews (5,815,145) and Schein (6,002,394).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Matthews disclosed an interactive television system with a video program guide displaying multiple programming "tiles," some containing multi-frame video segments, which constituted the claimed "multi-window video display." Matthews’ interactive controller received programming, generated the guide display, and allowed user selection. However, Petitioner noted that Matthews did not explicitly teach selecting channels "in accordance with a category." Schein was introduced to supply this limitation, as it explicitly disclosed a scheduling interface with the "powerful feature" of grouping shows by theme or category. The combination of Matthews' interactive guide with Schein's category-based selection met the limitations of claim 30.
  • Motivation to Combine (for §103 grounds): A POSITA would integrate Schein’s category-based selection into Matthews’ guide to provide a more efficient channel selection technique. This would permit a viewer to narrow viewing options to a specific type of program (e.g., comedies, sports), thereby improving the user experience of the Matthews guide.
  • Expectation of Success (for §103 grounds): Integrating a theme-based filtering method from Schein into the customizable program guide of Matthews would have been a straightforward and predictable improvement for a POSITA.

4. Key Claim Construction Positions

• "Overlay Grid": Petitioner proposed that this term be construed as "a graphical pattern of horizontal and vertical lines, forming cells, displayed over the multi-window display." This construction was central to Petitioner's argument that a visible grid structure, even if only implicitly suggested in the prior art, would be an obvious implementation to delineate selectable items for a user.
• Means-plus-function terms: Petitioner asserted that numerous terms were means-plus-function limitations under 35 U.S.C. § 112, ¶ 6. For terms like "presentation means" and "selection means," Petitioner identified the corresponding structure in the ’997 patent specification as an off-the-shelf set-top box processor programmed to perform the claimed function, along with associated hardware like graphics components, tuners, and remote-control inputs.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-43 of the ’997 patent as unpatentable.