Charter Communications Inc v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2024-01231
• Patent #: 8,356,251
• Filed: August 9, 2024
• Petitioner(s): Charter Communications, Inc.
• 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 for controlling video playback on a display device (e.g., a television) using a separate personal computing device (e.g., a mobile phone). The system facilitates a connection by assigning a synchronization code to the display device, which is used to associate the two devices via the server, which then translates user commands for playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Danciu, Mahajan, and Calvert - Claims 1-26 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: Petitioner asserted that Danciu discloses the core system architecture claimed: a remote computing device controlling a display device through a central server system, using a unique identifier or QR code as a "synchronization code" for pairing the devices. To meet the claim limitation of converting universal commands into device-specific code, Petitioner relied on Mahajan, which teaches a client-server system that translates generic commands (e.g., "play," "pause") into platform-specific programming code using look-up tables. To address the limitation of loading one of a "plurality of different media players," Petitioner cited Calvert, which teaches a system that analyzes a requested content's format and selects the appropriate media player (e.g., RealPlayer, QuickTime) for playback.
  • Motivation to Combine: A POSITA would combine Danciu and Mahajan to solve the common technical problem of command incompatibility between the disparate applications likely running on Danciu's remote control (a phone) and its controlled device (a television). A POSITA would be further motivated to incorporate Calvert's teachings to expand the system's functionality by supporting multiple media players and content formats (such as YouTube, Hulu, and Netflix, as suggested by Danciu), thereby providing more playback options to users.
  • Expectation of Success: A POSITA would have an expectation of success because the combination involves applying known techniques (command translation from Mahajan and media player selection from Calvert) to a known system architecture (Danciu) to achieve the predictable improvements of interoperability and expanded media support.

Ground 2: Obviousness over Aldrey and Mahajan - 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 argued that Aldrey provides an alternative base system where a remote end terminal controls a set-top box (STB) or television via a media service provider network (the "server system"). Aldrey's user profile and device registration system—using identifiers like a serial number or MAC address—was alleged to teach the claimed "synchronization code" and the server-side storage of the device association. As in the first ground, Mahajan was asserted to supply the explicit teaching of translating universal playback commands into specific programming code suitable for the target display device.
  • Motivation to Combine: The motivation was analogous to the first ground. A POSITA seeking to implement Aldrey's remote control system would be motivated to use Mahajan's known command translation solution to address the predictable challenge of command incompatibility between the software on the remote end terminal and the television or STB.
  • Expectation of Success: Success would be expected, as the combination merely integrates a known software solution for interoperability (Mahajan) into a conventional remote-control architecture (Aldrey) to achieve a predictable result.

4. Key Claim Construction Positions

• Petitioner contended that most claim terms should be given their plain and ordinary meaning.
• Crucially, Petitioner noted that in related district court litigation, the term "media player" was construed as "software for playing media," not a hardware device. Petitioner argued that the asserted prior art references disclose software-based media players consistent with this construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court trial is scheduled for a date that does not conflict with the timeline for a Final Written Decision (FWD) in the inter partes review (IPR). Petitioner also noted that these grounds challenge all claims of the patent, whereas fewer claims are asserted in the litigation, and that the petition relies on different prior art than what was considered in a previously filed IPR by another party.
• Petitioner also contended that denial under 35 U.S.C. §325(d) is unwarranted because none of the asserted prior art references (Danciu, Mahajan, Calvert, Aldrey) were before the examiner during the original prosecution of the ’251 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of Patent 8,356,251 as unpatentable.