PTAB

IPR2024-00321

Comcast Cable Communications LLC v. Touchstream Technologies Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Play Control of Content on a Display Device
  • Brief Description: The ’251 patent describes a server-based system for controlling the presentation of video content. The system facilitates a connection between a personal computing device (e.g., a smartphone), which acts as a controller, and a separate display device (e.g., a television), enabling the server to translate commands from the controller to control media playback on the display.

3. Grounds for Unpatentability

Ground 1: Obviousness over Redford and Gonze - Claims 1-2, 5, 7-11, 16, and 18-21 are obvious over Redford in view of Gonze.

  • Prior Art Relied Upon: Redford (Patent 8,660,545) and Gonze (Application # 2008/0235588).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Redford disclosed a server system that receives commands from a handheld device to control video playback on a separate, internet-enabled television. Redford’s system involved associating the handheld device with the television and sending playback commands (e.g., "WatchNow," pause, rewind) through the server. However, Petitioner contended Redford did not explicitly teach a display device that loads different media players. Gonze allegedly supplied this missing element by disclosing a system where a playback device determines the appropriate media player to load for a given piece of content based on information in a playlist (e.g., file extension), and can obtain a player over the internet if not already installed.
    • Motivation to Combine: A POSITA would combine Gonze’s teaching of loading various media players with Redford’s server-based control system. The motivation was to improve Redford's system to better support content from different providers (e.g., Netflix, YouTube), which often require proprietary media players or formats. This combination was presented as a predictable solution to enhance functionality and user experience.
    • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as integrating support for multiple media players into a server-based streaming system was a known technique requiring only minor software modifications.

Ground 2: Obviousness over Redford, Gonze, and Bartfeld - Claims 1-2, 5, 7-11, 16, and 18-26 are obvious over the combination of Redford and Gonze in view of Bartfeld.

  • Prior Art Relied Upon: Redford (Patent 8,660,545), Gonze (Application # 2008/0235588), and Bartfeld (Application # 2006/0107299).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Redford/Gonze combination by adding Bartfeld to address claim limitations related to assigning and using a synchronization code. Petitioner argued that while Redford disclosed using registration information (e.g., TV-name, IP address) to link devices, Bartfeld explicitly taught a server that assigns a synchronization code (e.g., a random number), transmits it for display on a television, and then uses that code, entered by a user on a separate device, to create the association between the two.
    • Motivation to Combine: A POSITA would be motivated to incorporate Bartfeld’s user-assisted pairing mechanism into the Redford/Gonze system to provide a more reliable and user-friendly method for associating a controller with a specific display, particularly in environments with multiple potential displays. This addressed the practical need to ensure a user could easily and accurately pair their devices.

Ground 3: Obviousness over Prior Combinations and Chilvers - Claims 2-4 and 12-15 are obvious over the combinations of Redford, Gonze, and Bartfeld in view of Chilvers.

  • Prior Art Relied Upon: Redford (Patent 8,660,545), Gonze (Application # 2008/0235588), Bartfeld (Application # 2006/0107299), and Chilvers (Patent 8,327,403).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner introduced Chilvers to address limitations concerning the server's conversion of commands. Chilvers disclosed a system where a server receives a generic command from a user device and uses equipment identification information to consult a lookup table. This table cross-references the generic command to a specific command format compatible with the target equipment's API. Chilvers thereby taught checking the identity of the media player/device and converting a universal command into a device-specific programming code using a lookup table.
    • Motivation to Combine: A POSITA would combine Chilvers’ command translation logic with the previously combined art to ensure that universal playback commands from the handheld device were properly converted into the specific formats required by the diverse media players taught by Gonze. This was a necessary step to ensure interoperability and proper system operation across different platforms.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the primary combinations in view of Malik (Application # 2007/0155506) to teach the use of the system for interactive video games (claims 6 and 17).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. Key reasons cited were that the trial in the parallel district court litigation was scheduled more than a year after the expected Final Written Decision (FWD), discovery in that case was in its early stages, and the petition challenged all 26 patent claims whereas the litigation asserted only a subset. Petitioner also argued against denial under §325(d), stating that the grounds relied on new prior art and arguments not previously considered by the USPTO or in a prior IPR filed by a different party (Google).

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-26 of the ’251 patent as unpatentable.