Comcast Cable Communications LLC v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2024-00323
• Patent #: 11,048,751
• Filed: December 27, 2023
• Petitioner(s): Comcast Cable Communications, LLC
• Patent Owner(s): Touchstream Technologies, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Play Control of Content on a Display Device
• Brief Description: The ’751 patent discloses a system for controlling media content on a display device (e.g., a television) using a separate computing device (e.g., a mobile phone). A remote server facilitates the connection, stores an association between the devices established via a synchronization code, and processes commands to control playback from a plurality of available media players.

3. Grounds for Unpatentability

Ground 1: Obviousness over Redford and Bartfeld - Claims 1-8 and 11-20 are obvious over Redford in view of Bartfeld.

• Prior Art Relied Upon: Redford (Patent 8,660,545) and Bartfeld (Application # 2006/0107299).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Redford disclosed the core architecture of the claimed invention, including a remote server system that mediates communication between a handheld control device and an internet-enabled television. Redford’s system allowed a user to select content on the handheld device for playback on the television, with the server managing device association and command transmission. However, Petitioner contended Redford’s device association method was less specific than claimed. Bartfeld was introduced to supply the limitation of obtaining a server-generated "synchronization code" on the display device, which is then provided to the control device to create a stored association on the remote server.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Redford with Bartfeld to improve the user experience and security of the device pairing process in Redford's system. Bartfeld taught a well-understood method for ensuring a user accurately and easily associates their specific control device with the intended display device (e.g., the living room TV vs. the basement TV), which Petitioner asserted was a known design goal for such systems.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as integrating Bartfeld’s server-generated code mechanism into Redford's server-based architecture would involve predictable software modifications to known systems.

Ground 2: Obviousness over Redford, Bartfeld, and Gonze - Claims 1-20 are obvious over Redford in view of Bartfeld and Gonze.

• Prior Art Relied Upon: Redford (Patent 8,660,545), Bartfeld (Application # 2006/0107299), and Gonze (Application # 2008/0235588).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Redford-Bartfeld combination and primarily introduces Gonze to teach the limitation of "selecting a first media player application from a plurality of media player applications based at least in part on the first format of the first message." While Redford disclosed using content from multiple providers (e.g., Netflix, YouTube), which implies different players, Petitioner argued Gonze explicitly taught a system where a playback device determines the appropriate media player to load from a plurality of installed players based on information in a playlist, such as a content file’s extension. Gonze further disclosed retrieving a needed media player if it was not already installed.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Gonze's teachings with the Redford-Bartfeld system to enhance its functionality and commercial appeal by enabling seamless playback of content from diverse providers. Because different providers often use proprietary media formats (e.g., RealMedia, QuickTime), a robust system would need the capability to select and load the correct corresponding media player. Gonze provided a known solution to this exact problem.
  • Expectation of Success (for §103 grounds): The combination would have been straightforward, as implementing logic to select a media player based on content type was a well-known technique for devices designed to present content from multiple sources.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and the Fintiv factors was not warranted. The petition asserted that the parallel district court case was in its early stages, with fact discovery not closing until June 2024 and a trial date set for late October 2024. Petitioner also noted that it challenges all 20 claims of the ’751 patent in the IPR, whereas only a subset are asserted in the litigation. Furthermore, Petitioner stipulated that it would not pursue any IPR ground in the district court if the IPR is instituted.
• Petitioner also contended that denial under §325(d) was inappropriate because the asserted prior art references (Redford, Bartfeld, and Gonze) were not considered by the examiner during the original prosecution of the ’751 patent.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’751 patent as unpatentable.