PTAB

IPR2019-01355

Comcast Cable Communications LLC v. Rovi Guides Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Program Guide With Digital Storage
  • Brief Description: The ’215 patent describes interactive television program guide systems that allow for the digital storage of programs. The invention centers on a method and system for transferring a user-selected program from a first digital storage device to a secondary storage device without transferring other programs stored on the first device.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5, 6, 8-13, 15, 16, and 18-20 are obvious over Mano in view of NT 4.

  • Prior Art Relied Upon: Mano (Application # 2002/0057892) and NT 4 ("How to Use Microsoft Windows NT 4 Workstation," a 1996 publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Mano and NT 4 taught all limitations of the challenged claims. Mano, which was not considered during prosecution, disclosed a system for recording television programs on a mass storage device (e.g., a hard drive) and transferring them to a secondary device (a VCR). Mano explicitly taught transferring a single selected program from the mass storage device, which stored multiple programs. The key limitation added during prosecution to achieve allowance was transferring a selected program "without transferring another program." Petitioner asserted that Mano taught this. The remaining limitation, performing the transfer "responsive to receiving a user selection of a program listing... using an interactive program guide," was allegedly not explicitly taught by Mano. However, NT 4, a well-known guide for a common operating system, taught a user interface for selecting individual files from a list for transfer from one storage location to another.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would have been motivated to combine the teachings of Mano and NT 4 to provide a functional user interface for Mano’s system. While Mano taught the capability to transfer selected programs, it did not detail the user interface for making that selection. A POSA seeking to implement Mano’s transfer feature would have naturally looked to conventional file management interfaces, such as that taught by NT 4, to provide a user-friendly way to select and initiate the transfer of recorded programs. Petitioner noted that the same examiner who allowed the ’215 patent later used NT 4 in a rejection of a related application to teach this exact functionality.
    • Expectation of Success: A POSA would have had a high expectation of success in this combination. Implementing a graphical user interface for file selection on a computer-based system, as taught by NT 4, was a well-understood and routine task in the predictable fields of computer and electrical engineering. Mano’s system was a conventional computer system, making it a suitable platform for implementing the known file-transfer techniques of NT 4.

Ground 2: Claims 4 and 14 are obvious over Mano in view of NT 4 and Asher.

  • Prior Art Relied Upon: Mano (Application # 2002/0057892), NT 4 ("How to Use Microsoft Windows NT 4 Workstation"), and Asher (Patent 5,327,160).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground incorporated the arguments for claims 1-3 and 11-13 from Ground 1. The additional limitations of dependent claims 4 and 14 required that user input be received via a "touch sensitive device." While Mano’s keyboard and mouse could be considered touch-sensitive, Petitioner argued that Asher explicitly disclosed a touch-sensitive remote control for controlling complex devices, including a computer.
    • Motivation to Combine: A POSA would have been motivated to add Asher's touch-sensitive device to the Mano/NT 4 system to provide a "simple, intuitive, and convenient" alternative to a keyboard and mouse for controlling the system. Asher provided an explicit motivation by teaching the benefits of its remote for controlling devices like those in Mano’s system. This was presented as a predictable combination of known prior art elements to yield a predictable result.
    • Expectation of Success: A POSA would have reasonably expected success because Asher taught that its remote could control a computer and could perform menu navigation and selection actions analogous to those in NT 4.

Ground 3: Claims 7 and 17 are obvious over Mano in view of NT 4 and Lawler.

  • Prior Art Relied Upon: Mano (Application # 2002/0057892), NT 4 ("How to Use Microsoft Windows NT 4 Workstation"), and Lawler (Patent 5,805,763).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground incorporated the arguments for claims 1 and 11 from Ground 1. The additional limitations of dependent claims 7 and 17 required displaying a plurality of program listings and recording a program in response to a user selecting one of the displayed listings. While Mano taught recording programs, it did not describe using an interactive program guide (IPG) to do so. Lawler taught an IPG with a grid-based display of program listings that a user could navigate to select and schedule programs for recording.
    • Motivation to Combine: A POSA would have been motivated to incorporate Lawler’s IPG into the Mano/NT 4 system to provide a well-known, quick, and easy method for users to identify and select programs for recording. The combination would improve the usability of Mano’s recording feature by replacing manual command entry with an intuitive graphical guide.
    • Expectation of Success: Success was expected because both Mano and Lawler employed similar approaches to recording, and modifying Mano’s computer system to implement an IPG for recording was within the routine skill of a POSA.

4. Key Claim Construction Positions

  • "interactive program guide": Petitioner argued this term should be construed as "an application that allows user navigation through and interaction with television program listings and causes display of program information on user television equipment based on user commands." This construction was asserted to be consistent with the specification and previous constructions in related litigation.
  • "without transferring another program": Petitioner argued this phrase, added during prosecution to overcome an anticipation rejection, simply meant "without transferring any other programs stored on a storage device." This construction was critical because Petitioner argued that Mano inherently taught transferring a single selected program from a storage device that contained multiple programs, thereby meeting this limitation.
  • "control circuitry configured to...": Petitioner contended this was not a means-plus-function term, as it denoted a class of circuitry understood by a POSA. Alternatively, if treated as means-plus-function, the corresponding structure in the specification was a set-top box, advanced television receiver, or personal computer television, which Petitioner argued was disclosed or equivalent in the prior art combination.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of Patent 8,448,215 as unpatentable.