PTAB

IPR2019-01422

Comcast Cable Communications LLC v. Rovi Guides Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Client-Server Based Interactive Guide with Server Recording
  • Brief Description: The ’948 patent describes a system where users can request the recording of television programs via user equipment. A central server receives these requests, directs tuners to the selected programs, and records them for subsequent distribution to the users. The core of the invention as claimed involves simultaneously recording multiple programs from different channels in response to requests from multiple users.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ang, Kurioka, and Artigalas - Claims 1-26 are obvious over Ang in view of Kurioka, and further in view of Artigalas.

  • Prior Art Relied Upon: Ang ("Deployment of VCR services on a computer network," a 1998 journal article), Kurioka ("Television Home Server For Integrated Services," a 1998 journal article), and Artigalas (Patent 6,091,883).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references taught every limitation of the challenged claims. Independent claims generally require receiving separate record requests from first and second user equipment, directing first and second tuners to tune to the respective programs, and simultaneously recording at least a portion of both programs on a server.
      • Ang taught a networked VCR server system where multiple users on a campus network could submit requests to record programs. Ang recognized its system's limitation of recording only one channel at a time but expressly stated that it "can be easily expanded to support multiple channel recording by having additional VCR servers each dedicated to a particular channel."
      • Kurioka remedied Ang's deficiency by teaching a server system capable of "simultaneous recording and playback of several programs" to address shortcomings in conventional VCRs. Kurioka provided the solution for handling the time-overlapping record requests that would inevitably occur in Ang's multi-user system.
      • Artigalas provided the explicit technical implementation for the simultaneous recording taught by Kurioka. It disclosed a recording device that uses "one or more analog and/or digital 'tuners', in order to provide several channels of programs in parallel," which are then fed to a recording means. This directly taught the use of multiple tuners to record multiple programs at once.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to solve a known problem with a predictable solution. A POSITA implementing Ang's multi-user network recording system would immediately recognize that overlapping requests would require simultaneous recording. It would have been obvious to look to solutions like Kurioka, which explicitly taught simultaneous recording. To implement this, a POSITA would then naturally turn to a known technique like that in Artigalas, which taught using multiple tuners to record multiple broadcast channels concurrently. The combination was presented as a straightforward application of known technologies to improve a system and yield predictable results.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success. Combining Ang's networked system with Kurioka's known simultaneous recording functionality and implementing it with Artigalas's well-understood multiple-tuner architecture involved applying known principles for their intended purposes and would predictably result in a system that could service overlapping recording requests from multiple users.
  • Additional Grounds: Petitioner noted that this petition was one of three concurrently filed petitions challenging the ’948 patent. The other petitions asserted different obviousness challenges based on combinations including Browne/Granger/Girard and Lawler/Sasaki/Artigalas.

4. Key Claim Construction Positions

  • "User Equipment": Petitioner argued this term should be construed simply as "one or more devices at a user site," consistent with the patent's specification. Petitioner contended that Patent Owner's proposed construction in co-pending litigation improperly imported limitations not present in the claims, such as "generating for display an interactive television program guide."
  • "Control Circuitry": Petitioner argued this term has a plain and ordinary meaning of "circuitry that controls" and is not a means-plus-function term. Petitioner asserted that a POSITA would understand the term denotes sufficient structure (e.g., a processor) to perform the claimed functions.
  • "remote server": Petitioner argued for the plain meaning of "a server not at the user site." Petitioner asserted that Patent Owner's construction improperly imported limitations from the specification related to program guides, which are not recited in the relevant claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate because the co-pending district court litigation against Comcast ("Rovi Litigation") was at a very early stage. At the time of filing, no claim construction rulings had been issued, and the trial was not scheduled to begin until February 2021. Petitioner asserted that instituting the IPR would therefore be an efficient use of Board resources and would not present issues of tactical advantage or unfairness to the Patent Owner.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of Patent 9,118,948 as unpatentable under 35 U.S.C. §103.