Charter Communications Inc v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2024-01232
• Patent #: 11,048,751
• Filed: August 9, 2024
• Petitioner(s): Charter Communications, Inc.
• 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 computer-implemented methods for controlling media playback. The system uses a computing device (e.g., a phone) to control video content on a separate display device by transmitting messages to a server, which translates commands for the appropriate media player on the display device and facilitates the connection using a synchronization code.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Danciu in view of Mahajan, optionally combined with 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 discloses the core architecture of the claimed invention: a remote control device (a phone) communicating with a controlled device (an internet-connected TV) through a network server. Danciu taught pairing these devices using a unique identifier, such as a QR code, which functions as the claimed "synchronization code" to establish and store an association on the server. While Danciu disclosed sending commands, Petitioner contended it lacked specific details on command translation between different platforms. To remedy this, Petitioner combined Danciu with Mahajan, which explicitly taught a client-server system that translates generic commands into platform-specific media playback commands understood by a client’s media player. For the limitation of selecting a media player from a plurality of options, Petitioner further relied on Calvert. Calvert disclosed a system that aggregates content from multiple sources and, based on the content's format, selects the appropriate media player (e.g., RealPlayer, QuickTime) for playback on a device.
  • Motivation to Combine: A POSITA would combine Danciu with Mahajan to solve the common problem of command incompatibility between disparate devices (like a phone and a TV from different manufacturers). Applying Mahajan’s known command translation technique to Danciu’s remote control system was argued to be a predictable solution. A POSITA would be further motivated to incorporate Calvert's teachings to expand the system's capabilities to support multiple media formats and players (e.g., YouTube, Netflix, Hulu, as mentioned in Danciu), thereby providing more content options to users.
  • Expectation of Success: Petitioner asserted a high expectation of success because combining the references involved applying a known technique (Mahajan’s command translation) to improve a similar system (Danciu's remote control architecture) and adding a known feature (Calvert's multi-player support) to achieve predictable results.

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 argued that Aldrey disclosed a system for integrating television with other computing devices, such as using a remote application on an "end terminal" (e.g., a phone) to control a set-top box (STB) via a media service provider (server). Aldrey taught that a user can register devices by entering information like a serial number (the "synchronization code") to create an association stored in a user profile repository on the server. The end terminal then sends commands to the STB based on this stored association. As with the Danciu combination, Petitioner asserted that Aldrey did not explicitly teach translating commands between the potentially different platforms of the end terminal and the STB. Mahajan was therefore combined to supply this missing element, teaching the translation of commands into a format understood by the client device's media platform.
  • Motivation to Combine: A POSITA would combine Aldrey and Mahajan for reasons similar to the primary ground. To ensure interoperability between Aldrey's end terminal and STB, which would likely use different applications, a POSITA would have been motivated to implement the known command conversion techniques taught by Mahajan. This combination represented applying a known technique to a known system to achieve the predictable result of seamless cross-platform control.
  • Expectation of Success: Petitioner argued a POSITA would have expected success in this combination, as Mahajan's teachings were directed to the exact technical context of Aldrey's system—a distributed computing environment where remote command and control was desired.

4. Key Claim Construction Positions

• Petitioner contended that, for the purposes of the IPR, all claim terms should be given their plain and ordinary meaning, consistent with the positions taken by the Patent Owner and adopted by the court in related district court litigation.
• Petitioner noted that in a related IPR, the parties agreed that the term "media player" refers to software and not a hardware device, a position Petitioner maintains in this petition.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors, asserting that the Board had already instituted a nearly identical petition (IPR2024-00324) filed by a co-defendant, demonstrating the merits of the challenge. The petition also sought joinder with that instituted IPR.
• Petitioner further argued that denial under §325(d) would be inappropriate because the primary references relied upon (Danciu, Aldrey, and Calvert) were not considered during the original prosecution of the ’751 patent. While Mahajan was cited, it was only as a secondary reference against different claim limitations than those challenged in this petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’751 patent as unpatentable under 35 U.S.C. §103.