Comcast Cable Communications LLC v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2024-00322
• Patent #: 8,356,251
• Filed: December 27, 2023
• Petitioner(s): Comcast Cable Communications, LLC
• Patent Owner(s): Touchstream Technologies, Inc.
• Challenged Claims: 1-26

2. Patent Overview

• Title: Play Control of Content on a Display Device
• Brief Description: The ’251 patent describes a server-based system that facilitates a connection between a personal computing device (e.g., a mobile phone) and a separate display device (e.g., a television). The system allows a user to control video playback on the display device by sending commands from the computing device, which are received and converted by the server before being sent to the display device for execution by various media players.

3. Grounds for Unpatentability

Ground 1: Claims 1-26 are obvious over Danciu in view of Mahajan

• Prior Art Relied Upon: Danciu (Patent 9,490,998) and Mahajan (Application # 2009/0248802).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Danciu disclosed the core architecture of the ’251 patent, including a remote control device (personal computing device), a controlled device (display device), and an intermediary server system. Danciu taught establishing a connection between the devices by scanning a QR code (a synchronization code) and storing an association on the server. Petitioner asserted that while Danciu taught sending control commands through the server, Mahajan provided the missing element of translating these commands. Mahajan disclosed a client-server system that translated specific media playback commands into universal commands for transmission, which were then re-translated by the client device into platform-specific commands for execution.
  • Motivation to Combine: A POSITA would combine Mahajan’s known command translation technique with Danciu’s remote-control system to solve the common problem of interoperability between disparate devices. Since Danciu’s remote control (e.g., a mobile phone) and controlled device (e.g., a set-top box) would likely use different applications, a POSITA would have been motivated to implement Mahajan's translation method to ensure commands from one device could be understood and executed by the other.
  • Expectation of Success: A POSITA would have had a high expectation of success because combining Mahajan’s command translation system with Danciu's similar architecture was merely applying a known solution to a known problem to achieve predictable results.

Ground 2: Claims 1-26 are obvious over Danciu and Mahajan in view of Calvert

• Prior Art Relied Upon: Danciu (Patent 9,490,998), Mahajan (Application # 2009/0248802), and Calvert (Application # 2004/0078812).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that to the extent the Danciu-Mahajan combination was found deficient in teaching the limitation of "identifying a particular media player," Calvert supplied the missing disclosure. Calvert described a content aggregation system where a playback device receives content from multiple media services. The system analyzed metadata in messages from a content aggregator to determine the format of the incoming media and automatically selected the appropriate media player (e.g., RealPlayer, QuickTime) for playback from a plurality of available players.
  • Motivation to Combine: A POSITA would combine Calvert’s teachings with the Danciu-Mahajan framework to enhance its functionality. The motivation was to provide users with more content options by supporting multiple media players and selecting the correct one based on content format, which was a routine practice for handling diverse streaming media. Danciu itself contemplated the use of various content services like YouTube and Netflix, reinforcing the motivation to support multiple player types as taught by Calvert.
  • Expectation of Success: Success would be expected as integrating a method for selecting media players based on content format (Calvert) into a server-based media control system (Danciu-Mahajan) was a straightforward implementation of known techniques.

Ground 3: Claims 1-26 are obvious over Aldrey in view of Mahajan

• Prior Art Relied Upon: Aldrey (Application # 2009/0172757) and Mahajan (Application # 2009/0248802).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative to the Danciu-based grounds, arguing Aldrey taught the foundational system. Aldrey disclosed a system for remotely controlling a set-top box (STB) or television (display device) from an end terminal (personal computing device) via a media service provider's network (server system). Aldrey taught registering devices using unique identifiers (synchronization codes) like serial numbers, storing the association in a user profile repository on the server, and transmitting control commands. As in other grounds, Mahajan was relied upon for its teaching of translating commands between different device platforms to ensure compatibility.
  • Motivation to Combine: The motivation to combine Aldrey and Mahajan was identical to that for combining Danciu and Mahajan. A POSITA would have recognized the need for command translation in Aldrey's system to allow a remote end terminal (like a mobile phone) to control an STB, as the devices would foreseeably run different software. Applying Mahajan’s known technique would have been an obvious way to improve Aldrey’s system to yield the predictable result of interoperability.
  • Expectation of Success: A POSITA would have expected success because the combination involved applying a known command translation technique (Mahajan) to a similar, known remote-control architecture (Aldrey) to address a common technical challenge.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition asserted that the scheduled trial date in the parallel district court litigation is October 28, 2024, which is likely after the statutory deadline for a Final Written Decision (FWD) in the IPR.
• The petition noted that discovery in the co-pending litigation was in its early stages and that the petitioner was stipulating not to pursue in district court any invalidity ground that is instituted in the IPR.
• Petitioner also argued that the current petition presented compelling challenges based on entirely different prior art than that considered in a previously filed IPR petition against the ’251 patent by a different party (Google), weighing against denial under §325(d).

5. Relief Requested

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