Comcast Cable Communications LLC v. Rovi Guides Inc

1. Case Identification

• Case #: IPR2020-00809
• Patent #: 8,156,528
• Filed: April 22, 2020
• Petitioner(s): Comcast Cable Communications, LLC
• Patent Owner(s): Rovi Guides, Inc.
• Challenged Claims: 1-36

2. Patent Overview

• Title: Personal Video Recorder Systems and Methods
• Brief Description: The ’528 patent relates to personal video recorder (PVR) systems that include user television equipment with an interactive television program guide (IPG). The system architecture comprises two coupled devices—a “PVR device” and a “PVR-compliant device”—each having its own distinctly implemented IPG with the same functions for controlling the PVR.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1-5, 8, 11-17, 19, 20, 23, 24, and 26-36 are anticipated by Ellis 4709.

• Prior Art Relied Upon: Ellis 4709 (International Publication No. WO 00/04709).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Ellis 4709 discloses every limitation of the challenged claims. Specifically, Ellis 4709 describes an interactive television system with a set-top box (the claimed "PVR device") and a "remote program guide access device" (the claimed "PVR-compliant device"). Petitioner asserted that Ellis 4709's set-top box has a local guide and recording functionality, while the remote device has a remote guide that allows a user to schedule recordings on the set-top box. Critically, Petitioner contended that Ellis 4709 explicitly teaches that the local and remote guides are "the same guide but compiled to run on two different platforms," thus meeting the claim limitations of having the "same functions" and being "distinctly implemented." Arguments for dependent claims followed from this core mapping.

Ground 2: Obviousness - Claims 6, 7, 9-11, 18, 21, 22, 28, and 33 are obvious over Ellis 4709 in view of Ellis 4707.

• Prior Art Relied Upon: Ellis 4709 (WO 00/04709) and Ellis 4707 (WO 00/04707).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground primarily addressed dependent claims requiring the "PVR-compliant device" to be implemented in a set-top box. Petitioner contended that while Ellis 4709 teaches the remote device could be a PC or other computer, Ellis 4707 teaches a system with multiple set-top boxes, where one device lacking recording capability can instruct another set-top box with recording capability to perform the recording. The combination was argued to teach all claimed features, including integrating both devices into a single enclosed set-top box unit.
  • Motivation to Combine: A POSITA would combine the teachings to implement the remote device of Ellis 4709 as a set-top box, as taught by Ellis 4707, to provide recording functionality from another room in a home entertainment system. This would be a simple substitution of one known element (a PC) for another known element (a set-top box) to perform a predictable function.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as both references describe similar home entertainment systems, and using a set-top box to invoke remote recording was a known technique that would yield predictable results.

Ground 3: Obviousness - Claims 17-36 are obvious over Ellis 4709 in view of Lea.

• Prior Art Relied Upon: Ellis 4709 (WO 00/04709) and Lea (Patent 6,349,352).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring a "plurality of application programming interfaces (APIs)," including vendor-specific and vendor-independent APIs. Petitioner argued that to the extent Ellis 4709 does not explicitly teach using multiple APIs, Lea discloses an entertainment system where devices automatically configure themselves to work together. Lea's system uses a generic API initially and then generates more comprehensive, device-specific APIs, thus teaching a plurality of both vendor-independent and vendor-specific APIs.
  • Motivation to Combine: A POSITA would combine Lea's automatic configuration techniques with the Ellis 4709 system to improve interoperability between devices, especially those from different manufacturers. This would enhance the system by allowing components to be upgraded or replaced without reconfiguring the entire system.
  • Expectation of Success: A POSITA would expect success because it would involve applying a known technique (Lea's use of multiple APIs for automatic coordination) for its intended purpose in a similar, known system (Ellis 4709) to achieve a predictable improvement in interoperability.

• Additional Grounds: Petitioner asserted additional obviousness challenges over Ellis 4709 in view of Wood (Application # 2002/0057893) to teach the "automatic recording of programs that users are watching in real-time." Further grounds combined these primary references, such as Ellis 4709 with Ellis 4707 and Wood, and Ellis 4709 with Lea and Wood, relying on similar motivations.

4. Key Claim Construction Positions

• Petitioner argued that certain constructions adopted in a co-pending ITC investigation were improper and should not be adopted by the Board.
• "personal video recorder device": Petitioner disputed the Patent Owner's proposed construction requiring "automatic recording of programs that users are watching in real-time." Petitioner contended this limitation was improperly imported from the specification's description of prior art commercial PVRs and was not required by the claims.
• "PVR extensions": The ITC adopted a construction of "hardware, software, or both that enables integration of personal video recorder functionality with an interactive program guide." Petitioner argued its unpatentability contentions were met even under this construction, as Ellis 4709's remote guide integrates with the local device's recording functionality.
• Petitioner maintained that the challenged claims are unpatentable under its own proposed constructions, the Patent Owner’s proposed constructions, and the constructions adopted by the ITC.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d) and the Becton Dickinson factors. The core argument was that the primary prior art references relied upon in the petition—Ellis 4709, Ellis 4707, Lea, and Wood—were not cited or substantively considered by the Examiner during the original prosecution of the ’528 patent. Therefore, the arguments and evidence presented in the petition are not cumulative to the art previously considered by the USPTO.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-36 of Patent 8,156,528 as unpatentable.