PTAB

IPR2020-00808

Comcast Cable Communications LLC v. Rovi Guides Inc

Key Events

Petition

petition

Title: Electronic Program Guide With Digital Storage Directory
Brief Description: The ’564 patent relates to a system that uses an interactive television program guide (IPG) to store television programs and associated data on a digital storage device. The system also maintains a directory of the stored data, providing users with access to program information.

Prior Art Relied Upon: Shintani (Patent 5,751,371) and Yoshinobu (Patent 5,686,954).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Shintani disclosed the core system of independent claim 1: a television system that records programs and associated data (e.g., channel, start time) onto a digital storage device (a minidisk) and maintains a directory of that data. However, Shintani lacked a modern IPG for program selection. Yoshinobu remedied this deficiency by teaching a conventional IPG with a grid of television program listings that users could navigate with a remote control to select programs for recording.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Yoshinobu's user-friendly IPG with Shintani's recording and directory system to provide a more convenient and efficient interface for selecting programs to record. Petitioner contended this was a simple combination of known prior art elements according to known methods to yield predictable results.
- Expectation of Success: A POSITA would have expected success in applying Yoshinobu's teachings to Shintani. The integration involved modifying Shintani's existing menu generation unit to produce an IPG like Yoshinobu's, a task Petitioner asserted was well within the skill set of a POSITA at the time.

Prior Art Relied Upon: Shintani (Patent 5,751,371), Yoshinobu (Patent 5,686,954), and Yuen ’718 (Canadian Application # CA 2536718).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the Shintani/Yoshinobu combination by adding Yuen ’718 to teach limitations absent in the primary combination. Specifically, claims 3 and 14 require displaying a "full entry information screen" upon user selection, and claims 9 and 23 require maintaining a "global media library" for programs stored across multiple removable media. Yuen ’718 taught an IPG system that listed recorded programs and, when a listing was selected, displayed additional associated program data. Yuen ’718 also taught a tape index guide system that created a program directory (a global library) to help a viewer locate programs across their entire tape library.
- Motivation to Combine: A POSITA would combine Yuen ’718's features to improve the user experience of the base system. Displaying detailed information on-demand conserves screen space while providing necessary detail, and creating a global library is a logical and desirable enhancement for users managing multiple removable minidisks.

Prior Art Relied Upon: Shintani (Patent 5,751,371), Yoshinobu (Patent 5,686,954), Blumenau (Patent 5,664,216), and Browne (WO 92/22983).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claims requiring means for editing digitally stored programs and their associated data. The base Shintani/Yoshinobu combination lacked editing functionality. Petitioner asserted that Blumenau taught a video editing system with an "effects configuration window" (an edit screen) for modifying video clips. To address editing associated data, Petitioner cited Browne, which taught a system allowing users to edit data fields such as titles and program notes associated with recordings.
- Motivation to Combine: A POSITA would combine the editing functions of Blumenau (for video) and Browne (for data) with the Shintani/Yoshinobu recording system to give users more control over their recorded content. This modification would predictably result in a more versatile and desirable product.
Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground C (adding Browne for user-defined fields) and Ground E (adding Tsukamoto to provide an on-screen indication when a selected program is on a storage medium that is not currently loaded).

"interactive television program guide": Petitioner noted that both parties in a related ITC investigation agreed on the construction: "an application that generates a display of television program listings on user television equipment and that allows users to navigate through and interact with television program listings based on user commands." Petitioner adopted this construction for the IPR.
Means-Plus-Function Limitations: The petition dedicated significant analysis to numerous means-plus-function terms. For each, Petitioner proposed a primary construction identifying the corresponding structure as the general circuitry disclosed in the specification (e.g., "Circuitry of a set-top box, an advanced television receiver, a personal computer"). Crucially, Petitioner also preemptively addressed two alternative, narrower constructions for each term that Patent Owner had previously asserted in litigation, arguing that the prior art met even these more limiting constructions.

Petitioner argued that discretionary denial would be inappropriate. The petition asserted that its grounds were not redundant to the art considered during prosecution, emphasizing that the primary reference, Shintani, was never applied by the examiner. Furthermore, Petitioner stated that this petition was one of three concurrently filed against the ’564 patent, and argued that the grounds in each were distinct and non-redundant, as they were based on different primary combinations of prior art (Browne/Young, Domon/Noguchi, and Shintani/Yoshinobu).

Petitioner requests institution of inter partes review and cancellation of claims 1-24 of Patent 8,001,564 as unpatentable.