Comcast Cable Communications LLC v. Rovi Guides Inc

1. Case Identification

• Case #: IPR2019-01433
• Patent #: 8,272,019
• Filed: August 5, 2019
• Petitioner(s): Comcast Cable Communications, LLC
• Patent Owner(s): Rovi Guides, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Client-Server Based Interactive Television Program Guide System with Remote Server Recording
• Brief Description: The ’019 patent relates to interactive television program guide systems that allow users to manage recorded programs on a remote media server. The system enables users to send requests from a program guide on their local equipment to delete programs stored on the remote server.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 11-13 are obvious over Horigami in view of Strubbe

• Prior Art Relied Upon: Horigami (Japanese Unexamined Patent Application Publication No. H8-56352) and Strubbe (Patent 5,047,867).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Horigami taught a client-server system for managing video programs on a remote, networked server. This included providing a list of recorded programs to a user's monitor and functionality for deleting a video file from the server via a command from the user's equipment. However, Horigami did not explicitly disclose initiating the deletion command from a program guide. Petitioner asserted that Strubbe supplied this missing element by teaching a TV-VCR system with an on-screen program guide that explicitly allowed a user to select a recorded program and mark it for erasure. The combination of Horigami's remote server architecture and Strubbe's program guide interface was argued to render independent claim 1 obvious. Dependent claims 2-3 and system claims 11-13 were allegedly obvious for similar reasons.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Strubbe's user-friendly program guide interface with Horigami's networked server system to improve the usability of managing remotely stored recordings. Adding a familiar program guide interface to make deletion more convenient was presented as a simple and predictable improvement.
  • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success because program guides and file management commands were well-understood technologies. Integrating Strubbe's known interface for deletion into Horigami's server system would involve predictable software modifications.

Ground 2: Claims 5-8 and 15-18 are obvious over Horigami in view of Dunn

• Prior Art Relied Upon: Horigami (Japanese Unexamined Patent Application Publication No. H8-56352) and Dunn (Patent 5,861,906).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted independent claim 5, which involves managing programs for multiple users. Petitioner asserted that Horigami taught a system that could receive recording requests for the same program from multiple users and create corresponding entries. Dunn was argued to teach a more sophisticated multi-user management system where deleting a program from one user's personalized list (i.e., deleting the first user's "entry") does not delete the underlying program file from the server if a second user's list still references it. Dunn's program guide interface provided the mechanism for initiating this entry-only deletion.
  • Motivation to Combine: A POSITA would be motivated to integrate Dunn's robust entry-deletion logic into Horigami's shared recording environment. This combination would solve the problem of one user prematurely deleting a shared program that other users still wished to access, thereby creating a more efficient and user-friendly shared media system.
  • Expectation of Success: Petitioner argued the combination was predictable. Both Horigami and Dunn taught networked video systems with user lists. Applying Dunn's join-table database logic to Horigami's system to manage multi-user deletion requests was presented as a straightforward implementation for a POSITA.

Ground 3: Claims 4 and 14 are obvious over Horigami, Strubbe, and Forecast

• Prior Art Relied Upon: Horigami, Strubbe, and Forecast (Patent 6,230,200).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Horigami and Strubbe by adding Forecast to teach the limitations of claims 4 and 14: determining whether more than one user has requested a copy of a program before deletion. While Horigami taught that multiple users could request a program, Forecast explicitly taught a conflict-resolution mechanism for a video server. Forecast's server would prevent the deletion of a file requested by one client if it was concurrently being streamed to another client, thus inherently determining if more than one user had "requested" the program.
  • Motivation to Combine: A POSITA would add Forecast's conflict management features to the Horigami/Strubbe system to prevent the premature deletion of a popular program being accessed by multiple users. This provides a more robust way to manage shared programs while still providing deletion features.
  • Expectation of Success: The combination was asserted to be predictable, as all references dealt with software-driven video servers. Porting the conflict resolution logic from Forecast to the combined Horigami/Strubbe system would require no more than ordinary skill.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 9, 10, 19, and 20 based on combinations that included Gordon (Patent 5,920,700). Gordon was used to teach automatically deleting programs that have not been accessed within a predetermined period of time, a common memory management technique.

4. Key Claim Construction Positions

• "program guide": Petitioner argued this term should be construed as an "application that causes display of program information on user television equipment." This construction avoids importing the term "interactive" from the specification and is broad enough to encompass the simpler, list-based guides of the prior art.
• "remote media server" / "remote server": Petitioner proposed construing these terms to mean a "server not at the user site." This construction was based on the patent's implicit contrast between a "remote" server at a distribution facility and a "local" server in a user's home.
• "processing circuitry": Petitioner argued this term should be understood as a structural term referring to a processor or similar hardware and not be treated as a means-plus-function limitation under §112, ¶ 6.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution should not be denied because the grounds presented are not cumulative to those considered during prosecution. The Examiner's rejections were based on the Lawler reference, which did not teach using a program guide for deletion. This petition's grounds are based on a different primary reference, Horigami, combined with other art to teach the program guide limitation. Petitioner also noted that this petition challenges claims 1-20, whereas co-pending litigation involves a narrower set of claims.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of Patent 8,272,019 as unpatentable.