Comcast Cable Communications LLC v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2024-00324
• 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 relates to a system for controlling media playback on a display device using a separate computing device. The system uses a remote server to establish and store an association between the devices via a synchronization code and to translate playback commands from the computing device into a format understood by the specific media player on the display device.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Danciu in view of Mahajan, and further 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: Petitioner argued that Danciu taught the core architecture of the claimed invention, including a remote control device (e.g., a mobile phone) paired with a controlled display device through a network server. Danciu’s use of a unique identifier, such as a QR code, to establish a session between devices allegedly taught the claimed "synchronization code," and its server storing session information taught the "stored association." Petitioner contended that Danciu did not explicitly disclose translating commands between different formats. To supply this element, Petitioner combined Mahajan, which taught a client-server system that translates generic commands into platform-specific media playback commands. For claim limitations requiring selection from a "plurality of media player applications," Petitioner further combined Calvert. Calvert was argued to disclose a system where a playback device analyzes content to determine its format and selects the appropriate player application (e.g., RealPlayer, QuickTime, Microsoft Media Player) from multiple available players, and can download a new player if needed.
  • Motivation to Combine: A POSITA would combine Danciu with Mahajan because Danciu's remote control and controlled display device would predictably use different applications, creating an obvious need for command translation to ensure interoperability, a known solution taught by Mahajan. A POSITA would be further motivated to incorporate Calvert's teachings to improve the Danciu/Mahajan system by supporting various content formats and providing users with more playback options, which was a routine and predictable improvement for such systems.
  • Expectation of Success: Petitioner asserted that combining these references involved applying known techniques (command translation, multi-player support) to a known type of system (remote media control) to achieve the predictable result of enhanced compatibility and functionality.

Ground 2: Claims 1-20 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 ground as an alternative combination where Aldrey provided the base system. Aldrey taught a system where a remote application on an end terminal (e.g., a mobile device) controls a set-top box (STB) via a media service provider network. Petitioner asserted that Aldrey's disclosure of registering devices by entering information (e.g., serial number, MAC address) that is stored in a user profile repository on a server satisfied the limitations of obtaining a "synchronization code" and the server storing an "association." As with the Danciu-based ground, Petitioner argued Aldrey did not explicitly teach the command translation between different formats. Mahajan was again combined to teach its system of translating commands from a generic format to a device-specific format to be executed by the client device (the STB in this combination).
  • Motivation to Combine: The motivation to combine Aldrey and Mahajan was argued to be the same as in the primary ground: to solve the obvious problem of command incompatibility between two disparate devices (Aldrey's end terminal and STB). A POSITA would have looked to known techniques, such as those taught by Mahajan, to enable communication and control between the devices.
  • Expectation of Success: Petitioner argued a POSITA would have had the necessary skill and knowledge to implement Mahajan's known command translation architecture into Aldrey's remote control system with a high expectation of success, as it was a straightforward application of a known solution to a common problem.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. It asserted that the parallel district court trial is not scheduled until late October 2024, with fact discovery still ongoing, and that Petitioner stipulated not to pursue in the district court any ground on which the IPR is instituted.
• Petitioner also argued against denial under §325(d), contending the petition raises new issues by relying on prior art not considered during prosecution (Danciu, Aldrey, and Calvert) and presenting arguments substantially different from those previously before the patent examiner.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 11,048,751 as unpatentable.