PTAB

IPR2019-01423

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 discloses a client-server system for managing television program recordings. The system allows multiple users to submit recording requests from their respective user equipment to a remote server, which uses a plurality of tuners to simultaneously record different programs in response to the requests.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lawler and Sasaki - Claims 1-4, 6, 11-14, 16, and 21-26 are obvious over Lawler in view of Sasaki.

  • Prior Art Relied Upon: Lawler (Patent 5,805,763) and Sasaki (European Patent No. 0762756).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lawler discloses a networked system where multiple users at different viewer stations can request to record programs at a central head end (server). However, the patent examiner allowed the ’948 patent claims by concluding Lawler did not teach the "simultaneously recording" of multiple programs. Petitioner asserted that Sasaki, which was not applied during prosecution, explicitly remedies this deficiency by teaching a video recording apparatus with multiple tuners capable of simultaneously receiving and recording multiple program signals.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would be motivated to improve Lawler’s multi-user recording system to handle the predictable problem of overlapping recording requests from different users. A POSITA would combine Lawler's networked architecture with Sasaki’s multi-tuner, simultaneous recording capability as an obvious solution to improve system capacity and prevent recording conflicts, representing a simple substitution of a known, superior component to yield predictable results.
    • Expectation of Success: Combining these known elements would predictably result in a system capable of simultaneously recording multiple programs for multiple users. This was a straightforward application of known techniques to achieve a known goal with a high expectation of success.

Ground 2: Obviousness over Lawler, Sasaki, and Artigalas - Claims 5, 7-10, 15, and 17-20 are obvious over Lawler and Sasaki in further view of Artigalas.

  • Prior Art Relied Upon: Lawler (Patent 5,805,763), Sasaki (European Patent No. 0762756), and Artigalas (Patent 6,091,883).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built on the Lawler/Sasaki combination to address dependent claims reciting user control functions. Petitioner contended these features, such as deleting a recorded program (claims 5 and 15) and playback controls like pause, stop, fast-forward, and rewind (claims 7-10 and 17-20), were well-known. Artigalas was cited as explicitly disclosing a user interface with an extensive set of controls for managing recorded content, including an 'erase' option and functions for 'fast forward', 'rewind', 'pause', and 'stop'.
    • Motivation to Combine: A POSITA, having created the simultaneous recording system of Lawler and Sasaki, would be motivated to improve its user interface by incorporating the well-understood and desirable control features taught by Artigalas. This would enhance the user experience by providing comprehensive control over recorded programs, a goal consistent with the stated aims of both Lawler and Sasaki to improve the recording process.
    • Expectation of Success: Integrating standard playback and file management controls into a video recording system was a common practice with a high expectation of success, representing a predictable improvement.

4. Key Claim Construction Positions

  • "Remote Server": Petitioner proposed the plain and ordinary meaning of "a server not at the user site." Petitioner argued that Patent Owner's proposed construction in related litigation improperly imported limitations from the specification, such as requiring the server to respond to "requests generated by the program guide," a phrase not present in the challenged claims.
  • "Control Circuitry": Petitioner argued this term has a sufficiently definite meaning to a POSITA and should not be treated as a means-plus-function term under 35 U.S.C. §112, paragraph 6. Alternatively, if treated as such, Petitioner contended the ’948 patent specification discloses corresponding structure, including processors, memory, and associated circuitry for performing the claimed functions.
  • "User Directory": Petitioner proposed the construction "list that is specific to a user," arguing this is consistent with the specification's description that "each user directory ... may include an identifier for each program that has been recorded for the user and a pointer to the storage device."
  • "Tuner": Petitioner proposed "an electronic circuit used to selectively receive RF signals in a desired frequency channel," arguing this construction is consistent with the specification's disclosure of tuners for selecting programming provided by distribution equipment.

5. Arguments Regarding Discretionary Denial

  • The petition argued against discretionary denial of institution for the following reasons:
  • Non-Redundancy: Petitioner asserted that the grounds presented were not redundant of arguments made during prosecution. The primary combination of Lawler and Sasaki was never considered by the examiner, and Sasaki specifically teaches the "simultaneous recording" limitation that was key to the allowance of the claims over Lawler alone.
  • Co-pending Litigation (Fintiv Factors): Petitioner argued that the co-pending district court litigation was at a very early stage. At the time of filing, no claim construction rulings had been issued and a trial was not scheduled for more than a year, meaning an IPR would resolve patentability issues far in advance of trial and would conserve judicial and party resources.

6. Relief Requested

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