PTAB

IPR2019-01422

Comcast Cable Communications, LLC v. Rovi Guides, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Client-Server Based Interactive Guide with Server Recording
  • Brief Description: The ’948 patent (also referred to as Ellis) relates to a client-server system for recording media programs. The disclosed technology involves a server that receives separate record requests from different user equipment, and in response, directs a plurality of tuners to simultaneously record the requested programs on a remote storage device for later distribution.

3. Grounds for Unpatentability

Ground 1: Claims 1-26 are obvious over Ang in view of Kurioka '98 and further in view of Artigalas.

  • Prior Art Relied Upon: Ang ("Deployment of VCR Services on a Computer Network," Journal of Network and Computer Applications (Jan. 1998)), Kurioka '98 ("Television Home Server For Integrated Services," IEEE Transactions on Consumer Electronics (Nov. 1998)), and Artigalas (Patent 6,091,883).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of these three references teaches every limitation of the challenged claims. Ang was argued to disclose a networked VCR system where users submit recording requests from client terminals to a remote server over a campus network. However, Ang acknowledged a key limitation: its system could only record one program at a time, while also suggesting that the system could be "easily expanded to support multiple channel recording." Kurioka was presented as a direct solution to this limitation, as it discloses a server system with the specific capability for "simultaneous recording" of multiple programs. To implement the simultaneous recording taught by Kurioka, Petitioner argued a person of ordinary skill in the art (POSITA) would have turned to a reference like Artigalas, which explicitly teaches using "one or more analog and/or digital 'tuners'" to receive and record "several channels of programs in parallel." Petitioner contended that combining these teachings renders all independent claims (1, 11, 21, 23, 25, 26) obvious.
    • Motivation to Combine: Petitioner argued a POSITA, when faced with Ang’s single-channel recording limitation in a multi-user environment, would foresee the problem of time-overlapping record requests. The motivation to solve this predictable problem would lead the POSITA to incorporate Kurioka’s known solution for simultaneous recording. To enable this functionality, the POSITA would be further motivated to implement Artigalas's well-known use of multiple tuners, a straightforward method for parallel channel processing. The combination was described as a simple substitution of known elements (simultaneous recording and multiple tuners) to improve a known system (Ang's networked recorder) and achieve predictable results.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success because the combination involved applying known techniques to solve a known and predictable problem. The integration of simultaneous recording and multiple tuners into a networked VCR system was a predictable improvement, not an inventive leap.

4. Key Claim Construction Positions

Petitioner dedicated significant argument to establishing claim constructions that differ from those advanced by the Patent Owner in co-pending litigation.

  • "remote server": Petitioner proposed the construction "a server not at the user site." It argued that Patent Owner's construction improperly imported limitations from the specification, such as requiring the server to handle requests "generated by the program guide," a feature not recited in the challenged claims.
  • "control circuitry": Petitioner contended this term is not a means-plus-function term under §112, para. 6, as it denotes a sufficiently definite structure to a POSITA (i.e., circuitry that controls). Alternatively, if the Board were to treat it as a means-plus-function term, Petitioner identified corresponding structure in the ’948 patent's specification, including a "processor," "caching circuitry," "digitizing circuitry," and "decoders."
  • "user equipment": Petitioner proposed "one or more devices at a user site," arguing that Patent Owner’s construction improperly imported limitations such as the capability of "generating for display an interactive television program guide."

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Entitlement: A central technical argument was that the ’948 patent is not entitled to its claimed July 14, 1998 priority date from its provisional application. Petitioner argued the two-page provisional application failed to provide adequate written description to support key claim limitations, particularly the "simultaneously recording" language that was added during prosecution to overcome prior art. Petitioner asserted the correct priority date is the filing date of the non-provisional application (June 11, 1999), which would make the Ang (Jan. 1998) and Kurioka (Nov. 1998) publications undisputed §102 prior art.

6. Arguments Regarding Discretionary Denial

Petitioner argued that discretionary denial under §314(a), in view of the co-pending Rovi Guides, Inc. v. Comcast Corporation litigation, would be inappropriate.

  • The core argument was that the district court litigation was in its earliest stages, with trial not scheduled until February 2021 and no significant events, such as claim construction rulings, having occurred. Petitioner contended that the IPR would be a more efficient use of resources and that the invalidity grounds presented were substantially different from the art considered during original prosecution, thus presenting non-redundant arguments that the Board should consider.

7. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 1-26 of Patent 9,118,948 as unpatentable.