PTAB

IPR2019-01436

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

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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 a system for pausing media content on a first user device and resuming playback from the pause point, or another point, on a second user device. The system uses an interactive media guide and can store pause point information in a user profile.

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 argued that Lee teaches the core functionality of the challenged claims. Specifically, Lee discloses a video-on-demand (VOD) system where a user can pause a program on a first user terminal, store the pause position information (program ID and position) on a server or portable profile card, and resume playback on a second user terminal from the interrupted position. This maps to the independent claim limitations of receiving a pause indication, storing position information, and receiving a resume indication from a second device. Petitioner contended that Wang remedies a deficiency in Lee by teaching the simultaneous display of multiple user-selectable playback options (bookmarks). Lee provides options to resume from the pause point or from the beginning (via a "digest" summary), but does not explicitly show them simultaneously. Wang discloses displaying a list of bookmarks with corresponding time parameters or sub-pictures, allowing a user to select any one to resume playback.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Wang's user interface, which presents multiple resume options simultaneously, with Lee's underlying pause-and-resume system. The motivation was to improve the user experience by conveniently presenting all playback options at once, which Petitioner asserted was a predictable and advantageous modification.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because combining a known user interface element (Wang's multi-bookmark display) with a known backend system (Lee's VOD architecture) was a straightforward software modification that would yield the predictable result of an enhanced, more user-friendly 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 App. Pub. No. H10-79930).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses dependent claims 5 and 15, which add the limitation of generating a "relocate option" for display on the first device. Petitioner argued that to the extent Lee and Wang do not explicitly teach this feature, Sato does. Sato discloses a media system that, upon a user stopping a video, queries the user "as to whether or not to register this video stop position information." Petitioner contended this query is the claimed "relocate option," as it confirms the user's intent to save the pause information for later relocation.
    • Motivation to Combine: A POSITA would be motivated to add Sato's confirmation query to the Lee/Wang system. This addition serves the practical purpose of confirming that a user desires to save the pause information, preventing the system from unnecessarily storing data for every pause. This was argued to be a common-sense improvement for system efficiency and usability.

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 addresses claims requiring a "login option." While Lee's system is for subscribers and stores user-specific data, Petitioner argued it does not explicitly disclose a conventional login process. Chau was introduced to teach this element, as it describes a network access system that sends a login prompt to a client device, requiring a username and password for authentication 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. Since Lee's system involves personal user profile data (pause points, viewing history), adding a password-based login as taught by Chau would be an obvious and necessary step to protect that data from unauthorized access.

  • Additional Grounds: Petitioner asserted alternative grounds 4-6, which are identical to grounds 1-3, respectively, but further add Vanzini (Patent 7,036,738). Vanzini was included to preemptively counter any argument that Lee fails to teach the use of a single portable profile card on two different user terminals, as Vanzini explicitly discloses a portable profile carrier for securely transporting user data between different computers.

4. Key Claim Construction Positions

  • Petitioner proposed constructions for two terms, noting they were for completeness and consistent with positions in co-pending litigation:
    • "display": "present visually and/or audibly."
    • "user equipment": "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 the Becton Dickinson factors, which apply when prior art was previously considered during examination.
  • Petitioner contended that although Lee and Wang were cited on the face of the ’069 patent, they were never substantively discussed or applied during prosecution. The arguments in the petition were entirely new.
  • Crucially, Petitioner pointed to a later reexamination of a related patent (’933 patent) where a different examiner found that Lee taught the core concept of pausing on one device and resuming on another. The claim in that case was only allowed after being amended to include limitations not present in the challenged ’069 patent claims, supporting Petitioner's view that Lee anticipates or renders obvious the core claims.

6. Relief Requested

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