Comcast Cable Communications LLC v. Rovi Guides Inc

1. Case Identification

• Case #: IPR2019-01435
• Patent #: 8,973,069
• Filed: August 2, 2019
• Petitioner(s): Comcast Cable Communications, LLC
• Patent Owner(s): Rovi Guides, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Systems and Methods for Relocating Media
• Brief Description: The ’069 patent discloses a system that allows a user to pause on-demand media content on a first user device and subsequently resume playback on a second user device from the saved pause point or another selected point. The system stores the pause position information, often on a remote server, to enable this "relocation" feature.

3. Grounds for Unpatentability

Ground 1: Obviousness over Katz and Sato - Claims 1-5, 9-15, and 19-20 are obvious over Katz in view of Sato.

• Prior Art Relied Upon: Katz (Patent 7,103,906) and Sato (Japanese App. Pub. No. H10-79930).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Katz teaches the core functionality of the independent claims: a multi-device system where a user can stop viewing media on a first device, have a bookmark of the position stored on a server, and later resume playback on a second device from that bookmarked position. However, Katz does not explicitly teach the simultaneous display of multiple playback options on the second device. Petitioner asserted Sato remedies this by disclosing a system that, upon resuming a paused video, displays a menu with multiple options, such as resuming from the exact stop position (a first option) or selecting a different starting point, such as the beginning (a second option).
  • Motivation to Combine (for §103 grounds): Petitioner contended a person of ordinary skill in the art (POSA) would combine Katz and Sato to improve the user experience. Supplementing Katz’s bookmark-based system with Sato’s user interface for playback options would provide the user with greater playback control and flexibility in a predictable manner.
  • Expectation of Success (for §103 grounds): A POSA would have had a reasonable expectation of success in combining the systems, as it would involve a straightforward modification of the user interface software in Katz’s system to display the options taught by Sato when a bookmark is queried.

Ground 2: Obviousness over Katz, Sato, and Chau - Claims 6-8 and 16-18 are obvious over Katz in view of Sato and Chau.

• Prior Art Relied Upon: Katz (Patent 7,103,906), Sato (Japanese App. Pub. No. H10-79930), and Chau (Patent 6,011,910).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Katz and Sato from Ground 1 to address dependent claims requiring a login feature. Petitioner argued that the base combination teaches the core media relocation system. Chau was introduced to supply the limitation of generating a login option for the user. Chau was cited for its disclosure of a conventional network access system where a server sends a login prompt requiring a username and password before granting access.
  • Motivation to Combine (for §103 grounds): A POSA would be motivated to add Chau’s authentication process to the Katz/Sato system to improve security. This would protect a subscriber’s user profile data and bookmarks from unauthorized access, a common and desirable feature in multi-user systems.
  • Expectation of Success (for §103 grounds): The combination was argued to be a predictable integration of known elements. Implementing a standard software-based authentication module as taught by Chau into the Katz/Sato system would have been well within the skill of a POSA.

Ground 3: Obviousness over Katz and Hwang - Claims 1-4, 9-14, and 19-20 are obvious over Katz in view of Hwang.

• Prior Art Relied Upon: Katz (Patent 7,103,906) and Hwang (a 1997 conference proceeding titled "Video Browsing for Course-On-Demand in Distance Learning").

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative to Ground 1 for the primary claims. As before, Katz was asserted to teach the foundational pause-and-resume functionality across different devices. In place of Sato, Petitioner used Hwang to teach the simultaneous display of multiple playback options. Hwang discloses a client-server multimedia system with a user interface that includes distinct buttons such as a "CONTINUE" button to resume from a pause point (a first option) and a "RESET" button to start the video from the beginning (a second option).
  • Motivation to Combine (for §103 grounds): The motivation was similar to Ground 1: a POSA would supplement Katz’s system with Hwang’s well-understood interface to provide users with greater and more intuitive control over media playback. Displaying explicit "CONTINUE" and "RESET" buttons was a known method to enhance usability.
  • Expectation of Success (for §103 grounds): A POSA would have reasonably expected success in modifying Katz's system to incorporate Hwang's interface, as it was a simple software modification to implement a known user interface design that would predictably result in an enhanced user experience.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 5, 15, 6-8, and 16-18 based on combinations of Katz, Hwang, Sato, and Chau, which relied on similar combination rationales and design modification theories.

4. Key Claim Construction Positions

• Petitioner proposed constructions for two terms to clarify their meaning in the context of the patent:
  • "display": proposed as "present visually and/or audibly."
  • "user equipment": proposed as "one or more devices at a user site."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d), even though the primary prior art reference, Katz, was cited on the face of the ’069 patent. Petitioner contended that Katz was not substantively discussed or relied upon by the Examiner during prosecution. Furthermore, the petition relied on secondary references (Sato, Chau, and Hwang) that were not cited or considered during the original examination, presenting new arguments and evidence that warranted consideration.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 8,973,069 as unpatentable.