Comcast Cable Communications LLC v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2024-00326
• Patent #: 11,086,934
• 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 ’934 patent discloses systems and methods for controlling media playback on a display device (e.g., a television) using a separate computing device (e.g., a mobile phone). A server facilitates the connection by associating the two devices, often via a unique synchronization code, and translates commands from the computing device into a format understood by the selected media player on the display device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Danciu and Mahajan - Claims 1-20 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 taught the core system architecture of the ’934 patent. Danciu disclosed a system where a remote control device (e.g., a cell phone) controls content playback on a separate controlled device (e.g., a set-top box or STB) through a network server. The devices are paired using a unique identifier, such as a QR code displayed by the controlled device and scanned by the remote. However, Petitioner contended Danciu did not explicitly detail the translation of commands between disparate media applications. Mahajan was argued to supply this missing element, as it disclosed a client-server system that translates generic media commands (e.g., play, pause) into platform-specific commands understood by the client’s media platform, using an API and an abstraction module. The combination of Danciu’s system with Mahajan’s command translation method allegedly rendered the claimed invention obvious.
  • Motivation to Combine: A POSITA would combine Mahajan's command translation technique with Danciu's remote control system to solve the known problem of interoperability between different devices and applications. Since Danciu’s remote control (a phone) and controlled device (an STB) would likely use different applications, a POSITA would have looked to known solutions like Mahajan’s to ensure commands from one device could be executed on the other.
  • Expectation of Success: A POSITA would have reasonably expected success in applying Mahajan's known command translation method to Danciu's system, as it was a predictable implementation to improve a known type of system.

Ground 2: Obviousness over Danciu, Mahajan, and Calvert - Claims 1-20 are obvious over Danciu in view of Mahajan and 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 was presented as an alternative to Ground 1. Petitioner argued that if the combination of Danciu and Mahajan was found not to teach selecting a specific media player based on the content itself, Calvert remedied this deficiency. Calvert disclosed a content aggregation system where a playback device analyzes a received media service to determine its format (e.g., RealMedia, QuickTime, Windows Media) and then selects the appropriate player application for playback. The addition of Calvert’s teaching to the Danciu/Mahajan framework explicitly taught selecting a media player from a plurality of options based on the content’s format.
  • Motivation to Combine: A POSITA would be motivated to incorporate Calvert’s teachings to enhance the Danciu/Mahajan system by supporting multiple media players and formats. This would provide users with more content options, a common goal in media system design at the time.
  • Expectation of Success: The combination was a predictable integration of known features, and a POSITA would have expected success in adding support for multiple media players based on content format to the base system.

Ground 3: Obviousness over Aldrey - Claims 1-2 and 5-7 are obvious over Aldrey.

• Prior Art Relied Upon: Aldrey (Application # 2009/0172757).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Aldrey, by itself, rendered certain claims obvious. Aldrey disclosed a system for integrating television with computing devices, allowing a user at an end terminal (e.g., a phone) to remotely access and control one or more STBs. Aldrey taught that a user could register devices using unique identifiers (e.g., a MAC address) and that a remote application on the end terminal could send control commands to the STB to configure it or select on-demand content. These commands would implicitly reference the content and the appropriate application (e.g., VOD player) needed to play it, thereby teaching the core limitations of receiving commands based on a unique identifier and selecting a media application to play referenced content.

• Additional Grounds: Petitioner asserted that claims 3-4 and 8-20 are obvious over Aldrey in view of Mahajan, arguing that Mahajan’s command translation teachings could be predictably combined with Aldrey’s remote control system.

4. Key Claim Construction Positions

• Petitioner stated that for the purposes of the IPR, all claim terms should be given their plain and ordinary meaning.
• It was noted that based on a related proceeding (IPR2022-00795), the parties agreed that the term “media player” refers to software and not to a hardware device, a position Petitioner adopted for this petition.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court trial is scheduled for October 28, 2024, which is after the statutory deadline for a Final Written Decision (FWD) in this IPR. Furthermore, discovery in the litigation was in its early stages, the petition challenges all 20 claims while the litigation asserts only claims 17-20, and Petitioner stipulated it would not pursue in court any invalidity ground raised or that could have been reasonably raised in this IPR.
• §325(d): Petitioner contended that denial under §325(d) would be improper because the primary references, Danciu and Aldrey, were not considered during the original prosecution. Although Mahajan was cited by the examiner, it was used for a different purpose and in a different combination than asserted in the petition.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’934 patent as unpatentable.