throbber

`
`Paper: 40
`Entered: May 14, 2018
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`ROVI GUIDES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00217
`Patent 7,996,864 B2
`_______________
`
`
`Before JENNIFER S. BISK, BARBARA A. BENOIT, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
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`

`

`IPR2017-00217
`Patent 7,996,864 B2
`
`
`I. INTRODUCTION
`
`A. Background
`In response to a Petition1 (Paper 16, “Pet.”) filed by Comcast Cable
`Communications, LLC. (“Petitioner”), an inter partes review of claims 1–20
`(“challenged claims”) of U.S. Patent No. 7,996,864 B2 (Ex. 1001,
`“the ’864 patent”) was instituted pursuant to 35 U.S.C. §§ 311–319. Paper
`18 (“Dec.”), 22. Rovi Guides, Inc. (“Patent Owner”) filed a Response.
`Paper 28 (“Resp.”). Petitioner filed a Reply. Paper 32 (“Reply”). An oral
`hearing was held on February 7, 2018, and a copy of the transcript was
`entered into the record. Paper 39 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1, 3–6, 9, 10,
`12–16, and 18–20 are unpatentable. Petitioner, however, has not shown by a
`preponderance of the evidence that claims 2, 7, 8, 11, and 17 are
`unpatentable.
`B. Additional Proceedings
`Petitioner informs us that the ’864 patent is the subject of the
`following lawsuits: Rovi Guides, Inc. v. Comcast Corporation, No. 1:16-cv-
`9278 (S.D.N.Y.) and Comcast Corporation v. Rovi Corporation, No. 16-cv-
`
`
`1 The original Petition (Paper 1) in this proceeding was filed on November 8,
`2016. As authorized by the Board (Paper 15), Petitioner filed a Replacement
`Petition (Paper 16) on March 27, 2017. Unless otherwise indicated, all
`references and cites to the “Petition” or “Pet.” in this Decision are to the
`Replacement Petition (Paper 16).
`
`2
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`IPR2017-00217
`Patent 7,996,864 B2
`
`3852 (S.D.N.Y.). Pet. 1; Paper 9, 2 (Patent Owner’s Submission of Updated
`Mandatory Notice Information).
`C. The ’864 Patent
`The ’864 patent is titled “Method and Apparatus for Displaying
`Television Programs and Related Text.” Ex. 1001, [54]. The ’864 patent
`relates to “display of program related information such as television program
`listings from a program schedule data base” along with display of a program
`in a picture-in-picture (PIP) window. Id. at [57] (Abstract). “In a preferred
`embodiment, the invention displays information about television program
`schedules and content in a tripartite electronic television program guide.
`One screen format is a time specific program guide (TISPG)” in which “the
`moving images of a currently broadcast television program are displayed in
`real time in a PIP window.” Id. at 4:1–9. The ’864 patent issued from U.S.
`Patent Application No. 10/704,318, filed November 7, 2003, but claims
`priority through various applications to U.S. Patent Application No.
`08/298,997, filed August 31, 1994. Id. at [21], [22], [63], 1:5–21.
`As noted above, Petitioner challenges claims 1–20 (all issued claims),
`of which claims 1, 6, 10, 15, and 16 are independent.2 The challenged
`claims relate to methods of displaying an electronic program guide in an
`interactive television system (claims 1–15) and interactive entertainment
`systems (claims 16–20). Independent claims 1 and 16 are reproduced
`below:
`
`
`2 At oral argument, the parties agreed that claim 1 is representative of the
`independent claims. Tr. 5, 48.
`
`3
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`IPR2017-00217
`Patent 7,996,864 B2
`
`
`1. A method for displaying an electronic program guide in an
`interactive television system having a tuner and a screen, the
`method comprising:
`simultaneously displaying a plurality of television program
`listings in a first area of the screen, a currently broadcast
`television program received by the tuner in a second,
`nonoverlapping area of the screen and a detailed program
`description of the currently broadcast television program
`displayed in the second area of the screen in a third
`nonoverlapping area of the screen; and
`switching the detailed program description displayed in the
`third area of the screen in response to a user input without
`changing the currently broadcast television program
`displayed in the second area of the screen.
`16. An interactive entertainment system comprising:
`a microprocessor coupled to a tuner:
`the microprocessor configured to:
`format a screen comprising a simultaneous display of a
`plurality of television program listings in a first area of the
`screen, a currently broadcast television program received
`by the tuner in a second nonoverlapping area of the screen
`and a detailed program description of the currently
`broadcast television program displayed in the second area
`of the screen in a third nonoverlapping area of the screen;
`and
`switch the detailed program description displayed in the third
`area of the screen in response to a user input without
`changing the currently broadcast television program
`displayed in the second area of the screen.
`Id. at 22:15–28; 24:14–28.
`Figure 1 of the ’864 patent, reproduced below, illustrates one
`embodiment of an interactive television entertainment system:
`
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`IPR2017-00217
`Patent 7,996,864 B2
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`
`
`Figure 1 depicts “a television receiver that has an electronic television
`program guide.” Id. at 3:1–2. Figure 2 is reproduced below.
`
`
`Figure 2 depicts a television screen. Id. at 3:4–5. A PIP window 42 is
`displayed in the upper left-hand corner of the screen. Id. at 5:11–12. In
`addition, “a program description area 44 in the upper right-hand corner of
`the screen adjacent to the PIP window 42, and a program schedule area 46
`below areas 42 and 44” are shown. Id. at 5:14–17. Figure 3 is reproduced
`below.
`
`5
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`IPR2017-00217
`Patent 7,996,864 B2
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`
`
`Figure 3 also depicts a television screen. Id. at 3:4–5. The detailed
`description of Figure 3 states:
`In FIG. 3 another version of the TISPG [time specific program
`guide] screen format displays in area 46 program listings being
`broadcast at a future time, i.e., 8:00 p.m. In the following
`description, this format is sometimes called the “NEXT” guide.
`The viewer can select the future time of the program listings to
`be displayed at intervals such as one-half hour. The selected
`future time, i.e., 8:00 p.m., for the program listings displayed in
`area 46 is shown in a sub-area 43a of area 43. A brief program
`description of the program listing highlighted in area 46 by
`cursor 48 is displayed in area 44. The current program being
`broadcast remains displayed in PIP window 42, and a banner 49,
`which identifies the current program, by channel name, channel
`number, and program title is displayed between PIP window 42
`and area 46 on a background having a different color or shade
`than cursor 48.
`Id. at 5:42–56.
`
`6
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`

`IPR2017-00217
`Patent 7,996,864 B2
`
`
`D. The Instituted Grounds of Unpatentability
`We instituted trial on the following grounds (Dec. 22):
`References
`Basis
`Claims Challenged
`Rauch3 and Bennington4
`§ 103 1–20
`Rauch and Florin5
`§ 103 1–20
`Young, 6 Florin, and
`§ 103 1, 4–6, 9, 10, 13–16, 19, and 20
`Yoshino7
`Young, Florin, Yoshino, and
`Cherrick8
`
`§ 103 2, 3, 7, 8, 11, 12, 17, and 18
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`The ’864 patent has expired. See Pet. 9; Resp. 9. We construe
`expired patents in accordance with Phillips v. AWH Corp., 415 F.3d 1303,
`1312–1314 (Fed. Cir. 2005). See In re Rambus, 694 F.3d 42, 46 (Fed. Cir.
`2012). According to Phillips, a claim term is given its “ordinary and
`customary meaning” which “is the meaning that the term would have to a
`person of ordinary skill in the art in question at the time of the invention, i.e.,
`as of the filing date of the patent application.” Phillips, 415 F.3d at 1313
`(citations omitted).
`Petitioner asserts, “[f]or this proceeding, the only term needing
`construction is ‘substantially all of a currently broadcast television program’
`
`
`3 US Patent No. 5,731,844, filed Aug. 13, 1996, as continuation of US Patent
`Application No. 08/241,743, filed May 12, 1994 (Ex. 1002).
`4 US Patent No. 6,418,556 B1, filed Sep. 9, 1993 (Ex. 1003).
`5 US Patent No. 5,583,560, filed June 22, 1993 (Ex. 1004).
`6 WO 92/04801, published Mar. 19, 1992 (Ex. 1005).
`7 US Patent No. 4,991,012, issued Feb. 5, 1991 (Ex. 1006).
`8 US Patent No. 5,528,304, filed July 22, 1994 (Ex. 1007).
`7
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`IPR2017-00217
`Patent 7,996,864 B2
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`in claims 6, 10, and 15.” Pet. 9. However, Patent Owner does not dispute
`this limitation is taught or suggested by the cited art. See generally Resp.
`Therefore, we determine that this limitation does not require express
`construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (only those terms that are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy); see
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes
`review).
`Patent Owner argues that the term “detailed program description”
`should be expressly construed “as a description of the program providing
`more information than an associated program listing.” Resp. 9–10. This
`term is recited in each of the independent claims of the ’864 patent. Ex.
`1001, 22:15–24:52. In litigation between the parties, the District Court
`concluded, “[b]ecause [this] term is simple to understand, the court affords
`the term its plain and ordinary meaning.” Ex. 2013, 37. We agree. This
`term is simple and easy to understand without further interpretation or
`construction. Moreover, there is no controversy in this proceeding that
`necessitates construction of this term. Therefore, we determine that this
`limitation does not require express construction.
`Patent Owner discusses the term “marking” as used in claims 7–9, but
`does not offer any express construction for this term. Resp. 10–12.
`Specifically, Patent Owner argues that, “in the ’864 patent, when a program
`is ‘marked,’ it remains marked even when the cursor is moved to another
`program, unless the user takes further action to affirmatively remove the
`marking.” Id. at 12. Patent Owner proposes this interpretation of “marking”
`
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`
`in order to distinguish the term from “highlighting” as used by Petitioner.
`Id. at 10 (“Petitioner offers no construction for marking but apparently
`interprets ‘marking’ to be ‘highlighting.’”). In reply, Petitioner argues,
`“‘marking’ should be given its ordinary meaning, which includes the
`‘highlighting’ described in the ’864 patent.” Reply 1 (citing Ex. 1001, 5:19–
`22, 6:48–52; Ex. 1031, ¶¶ 8–10).
`In the Specification, the ’864 patent uses the term “highlighting” to
`describe a type of “marking. Claims 7–9 recite marking program listings in
`the first area of the display and displaying the marked program in the second
`area of the screen (claim 7); maintaining the currently displayed program in
`the second area of the screen (claim 8); and displaying the detailed program
`description for the marked program in the third area of the screen (claim 9).
`Ex. 1001, 22:65–23:15. The Specification describes the same action using
`the term “highlighting.” See Ex. 1001, 5:19–22 (“The viewer can move a
`cursor 48 vertically to highlight one of the program listings displayed in the
`area 46 [the first area]. The highlighted background of cursor 48 and the
`background of program description area 44 [the third area] are the same
`color or shade.”), 5:49–51 (“A brief program description of the program
`listing highlighted in area 46 [the first area] by cursor 48 is displayed in area
`44 [the third area].”), 6:48–52 (“As the viewer moves cursor 48 vertically
`from program listing to program listing, the current television program
`displayed in window 42 [the second area] and the program description
`displayed in area 44 [the third area] automatically change accordingly to
`match the highlighted program in area 46 [the first area].”).
`Patent Owner cites column 11, line 47, through column 12, line 17, of
`the ’864 patent in support of its argument that “marking” means something
`
`9
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`IPR2017-00217
`Patent 7,996,864 B2
`
`more than just “highlighting” or “selecting.” Resp. 11. The cited passage
`relates to a process for “temporary selective elimination of program listings
`by viewer command.” Ex. 1001, 11:48–49. When this process is used,
`program listings are prevented from being marked (or highlighted) as recited
`in claims 7–9. See id. at 11:67–12:6 (“When the viewer moves the cursor to
`the unwanted program and presses the DELETE button, the microprocessor
`is configured to display the unwanted program in the half gray scale, to
`prevent the cursor from highlighting the unwanted program, and to block
`the tuner from being set to the channel that carries the unwanted program.”)
`(emphasis added). This language describes a specific process which is
`unlike the method recited in claims 7–9 and does not support reading into
`the term “marking” in claims 7–9 the requirement that a marked program
`remain marked until affirmatively removed. Therefore, we do not adopt
`Patent Owner’s construction of “marking,” which Patent Owner contends
`distinguishes this term from “highlighting.”
`For purposes of this decision, we determine that no other claim terms
`require express construction.
`B. Legal Principles Governing Obviousness
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`
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`IPR2017-00217
`Patent 7,996,864 B2
`
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Consideration of the
`Graham factors “helps inform the ultimate obviousness determination.”
`Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016)
`(en banc), cert. denied, 138 S. Ct. 420 (2017).
`Pursuant to 35 U.S.C. §316(e), the Petitioner has “the burden of
`proving a proposition of unpatentability by a preponderance of the
`evidence.” “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
` C. The Prior Art Status of the Cited Art
`The earliest priority date claimed9 for the ’864 patent is August 31,
`1994. Ex. 1001, [63], 1:8–21. Petitioner asserts that Rauch, Bennington,
`Florin, and Cherrick are prior art under 35 U.S.C. § 102(e) and Young and
`Yoshino are prior art under 35 U.S.C. § 102(b). Pet. 15, 16, 41, 61, 87.
`Patent Owner does not challenge the prior art status of any of the cited
`
`
`9 Petitioner alleges, “the claims are not entitled to the priority dates of
`August 31, 1994 and September 27, 1994” (Pet. 6 n. 3). We need not
`address this issue as all the cited art is entitled to priority dates earlier than
`August 31, 1994.
`
`11
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`IPR2017-00217
`Patent 7,996,864 B2
`
`references in its Response. See generally Resp.10
`In its Preliminary Response, Patent Owner argued that Petitioner
`failed to establish Rauch was prior art under § 102(e) in the original Petition
`(Paper 1). Paper 10, 6–8. Petitioner addressed Patent Owner’s contentions
`by filing, with authorization of the Board (Paper 15), the Replacement
`Petition (Paper 16), a Reply (Paper 17), Exhibit 28 (Rauch’s parent patent
`application), and Exhibit 29 (comparison between Rauch and Rauch’s
`parent). The Board authorized (Paper 15) Patent Owner to file a supplement
`to its Preliminary Response in order to respond to the Replacement Petition
`(Paper 16). Patent Owner did not do so. Petitioner has shown that the
`disclosures of Rauch’s parent and Rauch are identical in substance (see
`Exhibit 29 and Paper 17 (Reply), 4–6) and that at least claim 1 of Rauch is
`fully supported by Rauch’s parent (see Pet. 15 fn. 7 and Paper 17, 6–10).
`This satisfies Petitioner’s initial burden of production and shifts that burden
`to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378–80. Patent
`Owner has failed to make any showing or submit any evidence to the
`contrary. Rauch claims priority to an application filed on May 12, 1994,
`(Ex. 1002, [63]) and Petitioner has shown that Rauch is entitled to this
`priority date (Pet. 15). Based on this record, Petitioner has established that
`Rauch is prior art under 35 U.S.C. § 102(e).
`Bennington issued on an application filed on September 9, 1993. Ex.
`1003, [22]. Florin issued on an application filed on June 22, 1993. Ex.
`
`
`10 The Scheduling Order “cautioned that any arguments for patentability not
`raised in the response will be deemed waived.” Paper 19, 6. Patent Owner
`has waived any arguments not raised in its Response. See In re NuVasive,
`842 F. 3d 1376, 1380–1381 (Fed. Cir. 2016).
`
`12
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`1004, [22]. Young was published on March 19, 1992. Ex. 1005, [43].
`Yoshino issued on February 5, 1991. Ex. 1006, [45]. Cherrick issued on an
`application filed on July 22, 1994. Ex. 1007, [22]. The cited references are
`prior art.
`D. Level of Ordinary Skill in the Art
`Petitioner contends:
`A person of ordinary skill in this field would have had at
`least a bachelor’s degree in computer science, electrical
`engineering, computer engineering, or a similar discipline, and
`at least two to three years of experience or familiarity with
`electronic program guides, television video signal processing,
`graphical
`user
`interfaces,
`and
`associated
`microprocessor/computer software.
`
`Pet. 10. Petitioner’s proposed level of ordinary skill in the art is supported
`by the Wechselberger Declaration (Ex. 1009 ¶ 28). Patent Owner does not
`address level of ordinary skill in the art. See generally Resp.
`On this record and based on our review of the ’864 patent, the types of
`problems and solutions described in the ’864 patent and cited prior art, and
`the testimony of Petitioner’s declarant, we adopt Petitioner’s definition of a
`person of ordinary skill in the art at the time of the claimed invention.
`E. Asserted Obviousness in View of Rauch and Bennington
`Petitioner argues that claims 1–20 would have been obvious in view
`of Rauch and Bennington. Pet. 15–41.
`1. Overview of Rauch
`“Television Scheduling System for Displaying a Grid Representing
`Scheduled Layout and Selecting a Programming Parameter for Display or
`Recording” and describes, “concurrent display of a television schedule with
`a graphic description and a textual description of the television program
`
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`currently selected by the user from the displayed television schedule.” Ex.
`1002, [54], [57] (Abstract). Figure 1 of Rauch is reproduced below.
`
`
`Figure 1 of Rauch depicts a computer system, which “includes a computer
`100 which is connected to a cable source 110, a tuner 115, an input device
`120, a television 130 and a video recorder 140.” Id. at 4:32–34. Figure 2 of
`Rauch is reproduced below.
`
`
`
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`Figure 2 of Rauch depicts a screen display “which is displayed by the
`television 130 under control of the selection program 152 when the user
`requests a schedule.” Id. at 5:47–49. In Figure 2, the screen display
`includes a schedule layout 200, a text display window 230, and a picture-in-
`graphics display window 230. Id. at 7:24–28. “The text display window
`230 displays, concurrently with the schedule layout 200, a text string which
`describes the currently selected program from the grid 210.” Id. at 7:30–33.
`“The picture-in-graphics display window 240 contains a graphic
`representation of the television program currently selected from the grid 210.
`When the currently selected program is actually being broadcast . . . a
`reduced-size display of the selected program [is displayed] in the picture-in-
`graphics display window 240.” Id. at 7:36–43.
`2. Overview of Bennington
`“Electronic Television Program Guide Schedule System and Method.”
`Ex. 1003, [54]. In the “Background of the Invention,” Bennington states,
`“there is a particular need for a flexible program schedule system that allows
`a user to view selected broadcast programs on a portion of the screen of the
`television receiver while simultaneously viewing program schedule
`information for other channels and/or services on another portion of the
`screen.” Id. at 3:4–9.
`3. Analysis of Obviousness Over Rauch and Bennington
`Independent Claims 1, 6, 10, 15, and 16
`As noted above, the parties agree that claim 1 is representative of all
`the independent claims. Tr. 5, 48. Patent Owner argues all the independent
`claims as a group and does not argue that the differences in the independent
`claims are material for purposes of determining patentability. See generally
`
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`Resp. All the independent claims of the ’864 patent contain commensurate
`limitations and will be treated as a group for purposes of our analysis.
`Accordingly, we treat claim 1 as representative of the commensurate
`limitations of the independent claims. We also analyze any additional
`limitations recited by independent claims.
`Claim 1 recites, “switching the detailed program description displayed
`in the third area of the screen in response to a user input without changing
`the currently broadcast television program displayed in the second area of
`the screen.” Ex. 1001, 22:25–28 (emphasis added). Petitioner states, “[i]n
`Rauch-Bennington, Rauch is relied on for all limitations of the independent
`claims, except the ‘without changing’” limitation. Reply 3. With regard to
`the “without changing” limitation, Petitioner contends, “[a] POSA looking at
`Bennington’s teachings (Exhibit-1003, 3:44-9, 3:34-37) would have found it
`obvious to modify Rauch’s window 240 to continue displaying the currently
`broadcast program that was tuned-to upon entering the guide/schedule 200.”
`Id. at 4 (citing Ex. 1009 ¶¶ 84–85). Patent Owner does not dispute that the
`combination of Rauch and Bennington teaches all the elements and
`limitations of the independent claims. See generally Resp. As discussed
`below, we agree that Rauch and Bennington teach all the elements of the
`challenged independent claims.
`The preamble11 of claim 1 recites, “[a] method for displaying an
`electronic program guide in an interactive television system having a tuner
`
`
`11 “Generally, the preamble does not limit the claims.” Allen Eng’g Corp. v.
`Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (citation omitted).
`We need not decide this issue for purposes of this decision, however,
`because we find that Petitioner has shown that Rauch teaches all the
`elements recited in the preamble of claim 1 as set forth in the Petition. See
`16
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`and a screen.” Ex. 1001, 22:15–17. Rauch teaches a method of displaying
`an electronic program guide. Ex. 1002, Figs. 4–6, 4:6–11.12 Rauch teaches
`an interactive system including a tuner, a television, and a screen. Id. at
`Figs. 1 and 2, 4:30–34, 5:47–52.
` The first step of claim 1 is:
`simultaneously displaying a plurality of television program
`listings in a first area of the screen, a currently broadcast
`television program received by the tuner in a second,
`nonoverlapping area of the screen and a detailed program
`description of the currently broadcast television program
`displayed in the second area of the screen in a third
`nonoverlapping area of the screen.
`
`
`Ex. 1001, 22:18–24. Petitioner cites Rauch as teaching all the elements of
`this step. Pet. 18 (citing Ex. 1002, Fig. 2, 2:20–35, 3:7–19, 5:47–56, 7:1–43,
`17:63–66). Petitioner provides an annotated version of Figure 2 of Rauch,
`which is reproduced below.
`
`
`Pet. 17 (citing Ex. 1002, 4:30–34, 5:47–52, 4:5–11, Fig. 1 (computer system
`including tuner 115 and television 130, Fig. 2 (depicting screen display),
`Figs. 4–6); Ex. 1009 ¶ 81).
`12 In comparing the claimed invention and the cited references, we rely on
`only those portions of the cited references which were cited in the Petition
`and to which the Patent Owner had an opportunity to respond. See In re
`NuVasive, 841 F.3d 966, 972 (Fed. Cir. 2016).
`
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`
`
`Pet. 19. Figure 2 of Rauch depicts a television screen formatted in
`accordance with an electronic television program guide. Ex. 1002, 3:1–5.
`The Petition states:
`Rauch teaches simultaneously displaying the plurality of
`grid entries 212 containing the names of television programs
`(“television program listings”) in schedule 200 (“first area”) of
`the screen, a currently tuned television program (“currently
`broadcast television program”) received by tuner 115 in window
`240 (“second, nonoverlapping area”), and a text string (“detailed
`program description”) describing the currently selected program
`in window 230 (“third, nonoverlapping area”).
`
`Pet. 18 (citing Ex. 1002, Fig. 2, 2:20–35, 3:7–19, 5:47–56, 7:1–43, 17:63–
`66; Ex. 1009 ¶¶ 82–83). Based on the descriptions in Rauch, we agree with
`Petitioner’s analysis, relying on Mr. Wechselberger’s declaration testimony,
`that Rauch’s grid entries 212 containing the names of television programs in
`schedule 200 would have conveyed the recited “television program listings,”
`Rauch’s currently tuned television program received by tuner 115 would
`have conveyed the recited “currently broadcast television program,” and
`Rauch’s text string would have conveyed the recited “detailed program
`
`18
`
`

`

`IPR2017-00217
`Patent 7,996,864 B2
`
`description.” Accordingly, we find Rauch teaches all the elements of the
`first step of claim 1.
`The second step of claim 1 is, “switching the detailed program
`description displayed in the third area of the screen in response to a user
`input without changing the currently broadcast television program displayed
`in the second area of the screen.” Ex. 1001, 22:25–28. Petitioner relies on
`Rauch as teaching, “switching the detailed program description displayed in
`the third area of the screen in response to a user input.” Pet. 19 (citing Ex.
`1002, 2:31–39, 7:55–8:2, 11:2–10, 11:23–34). We agree with this
`contention. Specifically, at column 2, lines 31–35, Rauch states, “[e]ach
`time a program name is selected by the user, the graphic description and the
`textual description of the television program represented by the selected
`program name are displayed concurrently with the schedule layout in a
`separate location of the screen display.” Rauch contains similar teachings in
`the additional passages cited by Petitioner.
`Petitioner relies on Bennington as teaching, “a BROWSE mode in
`which program schedule information in a graphical overlay 111 switches in
`response to a user input without changing the currently-tuned television
`program.” Pet. 20 (citing Ex. 1003, 11:29–61). Patent Owner acknowledges
`that “[i]n the BROWSE mode, Bennington provides the user with access to
`program schedule information presented in a graphic overlay 111 while
`viewing the previously selected channel in full screen.” Resp. 18 (citing Ex.
`1003, Fig. 11, 11:29–43). We find the combination of the cited art set forth
`by Petitioner teaches all the elements of the second step of claim 1.
`Moreover, based on our review of the cited evidence, we find the
`combination of Rauch and Bennington teaches all the limitations of claim 1.
`
`19
`
`

`

`IPR2017-00217
`Patent 7,996,864 B2
`
`
`With regard to the motivation to combine Rauch and Bennington, the
`Petition states:
`A POSA would have been motivated to modify Rauch to
`allow a user to “simultaneously scan program schedule
`information for all channels while continuously viewing at least
`one selected program on the television receiver” as taught by
`Bennington. Exhibit-1003, 11:58-61. Bennington explains the
`beneficial result of allowing a user to view a broadcast program
`and simultaneously
`interactively view program schedule
`information for other programs without changing the currently
`tuned channel. Exhibit-1003, 3:4-9, 3:34-37. This result gives
`users flexibility and accommodates different user preferences. A
`POSA would have recognized that this beneficial result would
`have achieved by modifying Rauch.
` Bennington itself
`recognized and addressed the same problem that the ’864 patent
`aimed to solve – providing a user with the ability to scan
`program schedule information while viewing the previously
`selected TV program. Exhibit-1009, ¶85. Compare Exhibit-
`1003, 3:4-9, 3:34-37, 11:29-33 with Exhibit-1001, 2:37-39.
`
`Pet. 20–21. We agree with Petitioner that Bennington itself provides a
`motivation to combine the relevant teachings of Rauch and Bennington in
`the manner set forth in the claims of the ’864 patent. As noted by Petitioner,
`and with support of Mr. Wechselberger’s declaration testimony, Bennington
`provides explicit teachings, which would motivate a person of ordinary skill
`to combine the teachings of the references in order to allow a TV viewer to
`scan program schedule information while continuing to view a television
`program, which the viewer was already watching. Pet. 20–21 (citing
`Ex. 1009 ¶ 85). For example, Bennington states, “[i]t is accordingly an
`object of the present invention to provide a system that will allow the user to
`view a broadcast program while, at the same time, interactively viewing
`program schedule information for other programs.” Ex. 1003, 3:34–37.
`
`20
`
`

`

`IPR2017-00217
`Patent 7,996,864 B2
`
`Bennington also states, “there is a particular need for a flexible program
`schedule system that allows a user to view selected broadcast programs on a
`portion of the screen of the television receiver while simultaneously viewing
`program schedule information for other channels and/or services on another
`portion of the screen.” Ex. 1003, 3:4–9. Petitioner has presented sufficient
`evidence to show that “[a] POSA would have had the skills and knowledge
`to carry out this combination and would have known how to modify Rauch’s
`change selection routine (Fig. 6) so the contents of the picture-in-graphics
`display window 240 would not change.” Pet. 21 (citing Ex. 1009
`(Wechselberger Decl.) ¶¶ 86–87).
`Patent Owner argues that the Petitioner’s expert (Mr. Wechselberger)
`“contradicted his own opinion regarding to motivation to combine Rauch
`and Bennington.” Resp. 4. The Wechselberger Declaration states,
`“Bennington acknowledged the beneficial result of allowing a user to view a
`broadcast program and simultaneously interact with program schedule
`information for other programs.” Ex. 1009 ¶ 85 (citing Ex. 1003
`(Bennington), 3:4–9, 3:34–37) (emphasis added). The passages from
`Bennington cited in support of this statement in the Wechselberger
`Dec

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