Comcast Cable Communications LLC v. Rovi Guides Inc

1. Case Identification

• Case #: IPR2019-01436
• 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 an interactive media guide system with a "relocate feature." This feature allows a user to pause on-demand media content on a first device, store the pause point information, and later resume playback on a second device from either the pause point or another point (e.g., the beginning).

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Lee (Patent 7,127,735) and Wang (Patent 6,501,902).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lee taught the core functionality of the independent claims: a video-on-demand (VOD) system where a user can pause a program on a first user terminal, store the program ID and position information (e.g., on a portable profile card), and use that information to resume playback on a second user terminal. Lee also disclosed presenting the user with options to resume from the interrupted point or to view a summary from the beginning. Petitioner argued that while Lee taught presenting these options, it did not explicitly teach their simultaneous display. Wang was introduced to remedy this, as it taught a multimedia player that could simultaneously display multiple user-selectable bookmarks (representing different pause points) as on-screen options for resuming playback.
  • Motivation to Combine: A POSITA would combine Lee’s VOD system with Wang’s user interface to improve user experience. The combination would allow a user to conveniently view and compare all playback options at once, rather than sequentially, which was a known method for enhancing usability.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. It involved modifying Lee’s known user interface with Wang's known UI functionality, which was a predictable software change that would yield the expected result of a more user-friendly VOD system.

Ground 2: Obviousness over Lee, Wang, and Sato - Claims 5 and 15 are obvious over Lee in view of Wang and Sato.

• Prior Art Relied Upon: Lee (Patent 7,127,735), Wang (Patent 6,501,902), and Sato (Japanese Application # H10-79930).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Lee and Wang combination to address claims 5 and 15, which require generating a "relocate option" on the first device. Petitioner contended that to the extent Lee and Wang did not teach this element, Sato did. Sato disclosed a media system that, when a user stopped viewing, queried the user "as to whether or not to register this video stop position information." Petitioner argued this query was equivalent to the claimed "relocate option," as selecting it confirmed the user's intent to save the pause information for later use.
  • Motivation to Combine: A POSITA would be motivated to add Sato's confirmation step to the Lee/Wang system to provide the advantage of explicitly confirming a user's desire to store the pause information. This would prevent accidental storage and provide a clear, user-initiated trigger for the relocate feature.
  • Expectation of Success: The combination was a straightforward integration of a confirmation query (Sato) into an existing VOD system (Lee/Wang), representing a known software design choice with predictable results.

Ground 3: Obviousness over Lee, Wang, and Chau - Claims 6-8 and 16-18 are obvious over Lee in view of Wang and Chau.

• Prior Art Relied Upon: Lee (Patent 7,127,735), Wang (Patent 6,501,902), and Chau (Patent 6,011,910).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring a "login option" (claims 6, 16), identifying the logged-in user (claims 7, 17), and retrieving stored position information associated with that user (claims 8, 18). While Lee described a subscriber-based system with user-specific data, Petitioner argued Chau explicitly taught a conventional login system. Chau described a network access server that sent a login prompt for a username and password to a client device to authenticate a user before granting access.
  • Motivation to Combine: A POSITA would be motivated to incorporate Chau's conventional login functionality into the Lee/Wang system to improve security. This would prevent unauthorized access to a user's personal content and saved pause points, a common and desirable feature in multi-user or subscriber-based systems.
  • Expectation of Success: Implementing a standard username/password authentication system as taught by Chau into the subscriber-based VOD system of Lee/Wang was a well-understood practice with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 4-6) based on the combinations of Grounds 1-3 further in view of Vanzini (Patent 7,036,738). This was presented as a contingency in case the Patent Owner argued Lee did not sufficiently teach the use of a portable profile card across two different terminals, as Vanzini explicitly taught a portable carrier for transporting user profiles between computers.

4. Key Claim Construction Positions

• "display": Petitioner proposed the construction "present visually and/or audibly."
• "user equipment": Petitioner proposed the construction "one or more devices at a user site."
• Petitioner noted these constructions were proposed in co-pending district court litigation and were provided for completeness, asserting they did not alter the unpatentability analysis.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d) (based on art previously considered during examination) by invoking the Becton Dickinson factors.
• Petitioner contended that although Lee and Wang were cited during the original prosecution of the ’069 patent, they were never substantively discussed or applied. Furthermore, Petitioner presented new arguments and evidence not before the examiner, including: (1) findings from a later reexamination of a related patent (’933 patent) where an examiner found Lee taught the core concept of pausing on one device and resuming on another, and (2) expert testimony providing a detailed analysis of the prior art combinations.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’069 patent as unpatentable under 35 U.S.C. §103.