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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`COMCAST CABLE COMMUNICATIONS, LLC.
`Petitioner
`
`v.
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`ROVI GUIDES, INC.
`Patent Owner
`_______________
`
`Patent No. 8,621,512
`Filing Date: October 24, 2011
`Issue Date: December 31, 2013
`
`Title: INTERACTIVE TELEVISION PROGRAM GUIDE WITH
`SIMULTANEOUS WATCH AND RECORD CAPABILITIES
`________________
`
`Inter Partes Review No.: Unassigned
`________________
`
`
`DECLARATION OF VERNON THOMAS RHYNE, PH.D., P.E., R.P.A.
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`1
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`Comcast, Exhibit-1009
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`I, Vernon Thomas Rhyne, declare that I have personal knowledge of the
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`facts set forth in this declaration and, if called to testify as a witness, could and
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`would do so competently.
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`I.
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`INTRODUCTION
`1.
`I have been retained by Petitioner Comcast Cable Communications,
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`LLC, (“Petitioner”) to assess U.S. Patent No. 8,621,512 (“Ellis” hereafter) titled
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`“Interactive Television Program Guide with Simultaneous Watch and Record
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`Capabilities.”
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`2.
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`3.
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`I reside in Austin, Texas.
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`I have also been asked to provide my opinions regarding non-
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`interactive Electronic Program Guide Systems (“EPGs”) and Interactive Program
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`Guide Systems (“IPGs”) and the resolution of programming content conflicts as
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`related to Ellis, including providing an overview of the prosecution history of Ellis,
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`the disclosure of Ellis, the broadest reasonable interpretation of terms in the claims
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`of Ellis, and what constitutes a person of ordinary skill in the art with respect to
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`Ellis. Specifically,
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`this Declaration provides my opinions regarding
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`the
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`obviousness of Ellis over various combinations of the prior art. I am being
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`compensated for my time at a rate of $695 USD per hour, plus actual expenses. My
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`compensation is not dependent in any way upon the outcome of Petitioner’s IPR
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`petition.
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`2
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`II.
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`PROFESSIONAL BACKGROUND AND QUALIFICATIONS
` Education and Certifications
`I received an undergraduate degree in Electrical Engineering from
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`4.
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`Mississippi State University in 1962. I received a Master’s degree in Electrical
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`Engineering from the University of Virginia in 1964. I received a Doctorate in
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`Electrical Engineering from the Georgia Institute of Technology in 1967.
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`5.
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`I am a registered professional engineer (“PE”) in Texas, No. 28,728,
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`and a registered patent agent, No. 45,041.
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` Career Synopsis
`I am a retired Professor of Electrical/Computer Engineering at Texas
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`6.
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`A&M University and a part-time engineering consultant. From 1967 to 1983 I was
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`a Professor of Electrical Engineering at Texas A&M University. From 1983
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`to 1995 I was employed at the Microelectronics and Computer Technology
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`Corporation (MCC) in Austin TX. There, I was responsible for MCC’s R&D
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`programs in neural network applications, data mining, software interface
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`standardization, and other advanced software development projects. From 1995
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`to 1997, I was employed at Motorola, Inc. in Austin, TX. I was the Manager of
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`Strategic Programs, Strategic Asset Group, Semiconductor Products Sector.
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`3
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` Career Milestones
`The following is a list of some of my awards and honors: IEEE
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`7.
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`Fellow (1990) for my “contributions to computer engineering and the computer
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`engineering profession;” IEEE Millennium Award (2000); Golden Core Award,
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`IEEE Computer Society (1996); and Fellow of the Accreditation Board for
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`Engineering and Technology (1992). I am also a member of the following
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`honorary societies: Upsilon Pi Epsilon (Computer Science), Eta Kappa Nu
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`(Electrical Engineering), Tau Beta Pi (Engineering), Phi Kappa Phi (Scholarship),
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`and Sigma Xi (Research). I have been a member of the Institute of Electrical and
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`Electronics Engineers since 1963, rising to the level of Life Member as of 2003.
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` Detailed Research Activity
`During my engineering career I have participated in a number of
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`8.
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`research programs which were directly related to the subject matter of the patent at
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`issue in this IPR.
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`9.
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`I have extensive experience with computer technology, including
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`design and teaching experience with a variety of computer systems, microcomputer
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`systems, and microcontrollers. I have participated in the design of several
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`computer systems and microprocessors, and I have designed systems which made
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`use of those devices as controllers. I am familiar with a variety of computer
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`architectures, and I am an experienced programmer in a variety of programming
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`4
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`languages as well as assembly-level language on a number of different computers
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`and microprocessors.
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`10.
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`I have conducted research on topics such as CAD systems, neural
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`network applications, data mining, software interface standardization, and other
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`advanced software development projects. I have written papers and given lectures
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`related to topics such as electronic design, digital systems design, communications
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`concepts, graphic symbols for logic devices, etc., and have supervised Masters-
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`level and Ph.D.-level engineering students, as well as postdoctoral associates. I
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`have served as a consultant to several companies and law firms regarding
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`intellectual property litigation from 1978 to the present. I have served as a Member
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`of the Panel on Assessment, Electrical and Electronics Engineering Laboratory,
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`U.S. National Institute for Standards and Technology, and as the Chair for nine
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`U.S. engineering program accreditation teams, including accreditation teams for
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`the University of California at Berkeley and the University of Illinois.
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`11. My detailed employment background, professional experience, and
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`list of technical papers and books are contained in my CV, attached as
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`Appendix A.
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`12. Prior to reviewing Ellis, I was well familiar with the type of subject
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`matter described and claimed in it. Ellis relates to an interactive television program
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`guide which allows a user to view program listings, to navigate through the
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`5
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`program listings, and to select a program to view or record from that listing. Ex.
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`1001, Abstract. In that regard, I have over ten years of experience with television
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`transmission systems, including the early use of the blanking interval for
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`transmitting data such as program descriptions, closed captions, parental-control
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`information as part of the broadcast television signal, IPGs and EPGs. I also have
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`had hands-on experience with a variety of set-top boxes including Scientific-
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`Atlanta’s Explorer® 2000 and 3000 and the 8600X set-top boxes (including
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`visiting the Scientific-Atlanta R&D facilities to meet with their engineers), the
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`Pioneer BD-V3000 set-top box, and the Cisco 8742HDC. I have also studied other
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`manufacturers’ set-top boxes and satellite receivers in the course of my consulting
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`practice. I have owned or rented several other set-top boxes in my home, and have
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`owned a Tivo digital video recorder since its introduction in 1999. I am also
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`familiar with the AT&T U-verse system for delivery of television programming
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`and electronic program guide.
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`13.
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`I retired from full-time work as of 1997. In addition to the work
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`described above and in my CV (see Appendix A), I have worked part-time as a
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`consulting engineer for the past forty years doing computer systems design,
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`application-specific system design, and expert witness work in intellectual property
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`litigation.
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`6
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`14.
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`I believe that my extensive academic and industrial experience well
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`qualify me as an expert in the fields of communications, control, and advanced
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`software applications of relevance to this Declaration, and particularly in IPGs, and
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`the manner in which conflicts between viewing and recording programs can be
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`resolved in a set-top box. I am knowledgeable of the relevant skill set that would
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`have been possessed by a hypothetical person of ordinary skill in the art at the time
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`of the invention of Ellis in 1999.
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`III. MATERIALS REVIEWED
`15. The analysis that I provide in this Declaration is based on my
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`education and experience in the fields of electrical and computer engineering, as
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`well as the documents I have considered, including Ellis (Ex. 1001), which claims
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`priority to Provisional Application No. 60/089,487 (“the ’487 Provisional” and
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`“Ex. 1002” herein) which was filed on June 16, 1998. I have also reviewed the file
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`wrapper for Ellis (Ex. 1003).
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`16.
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`I have also reviewed various relevant publications from the time of
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`the alleged invention of Ellis. These publications are listed below:
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`Description
`Exhibit
`1001 U.S. Patent No. 8,621,512 (“Ellis”)
`1002 U.S. Prov. App. No. 60/089,487 (“the ’487 Provisional”)
`1003 Prosecution History of U.S. Patent No. 8,621,512
`1004 Not used
`1005 Not used
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`7
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`Description
`Exhibit
`1006 Certified Translation of WO/1997/046013 (“Sano”)1
`1007 U.S. Patent No. 6,208,799 (“Marsh”)
`1008 U.S. Patent No. 5,850,218 (“LaJoie”)
`1009 Not used
`1010 Modern Cable Television Technology (cover, chapters 1, 18, and 19)
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`IV. UNDERSTANDING OF APPLICABLE LEGAL STANDARDS
`17. The following subsections provide my understanding of the legal
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`principles that I have relied upon in forming my opinions as set forth herein.
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`Person Having Ordinary Skill in the Art
`It is my understanding that an assessment of the claims of Ellis must
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`18.
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`be undertaken from the perspective of what would have been known or understood
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`by a person having ordinary skill in the art, upon reading Ellis on its relevant filing
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`date and in light of the specification and file history of that Patent. I refer to such a
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`person as a “PHOSITA” herein.
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`19. For the relevant priority date for Ellis, I have used June 11, 1999,
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`based on the filing date of its Patent Application No, 09/329,850, now abandoned.
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`Ex. 1001, 1:8-18.
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`20.
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`In determining the appropriate level of ordinary skill in the art, I have
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`considered the following factors: (a) the types of problems encountered by those
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`1 Exhibit 1006 is a recent translation of the Japanese version of the Sano reference
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`that was commissioned by Comcast.
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`8
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`working in the field and prior art solutions thereto; (b) the sophistication of the
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`technology in question, and the rapidity with which innovations occur in the
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`field; and (c) the educational level of active workers in the field as of 1999.
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`21.
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`I have been asked to provide my opinion as to the state of the art in
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`the field of IPGs, television video signal processing and recording, graphical user
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`interfaces, and related computer software around 1999, including the knowledge to
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`be expected of a PHOSITA, the manner in which a PHOSITA would have
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`understood the claims of Ellis, the manner in which a PHOSITA would have
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`understood the prior art, or what a PHOSITA would have been led to do based on
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`the prior art. Similarly, when discussing the disclosures of the prior art and/or the
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`claims of Ellis, I address those topics as they would have been viewed by a
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`PHOSITA in the 1999 timeframe.
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`22. Based on my consideration of the factors listed in ¶ 20 above, in my
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`opinion a person of ordinary skill in the art related to Ellis in the 1999 timeframe
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`would have had at least a bachelor’s degree in computer science, electrical
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`engineering, computer engineering, or a similar discipline, and two to three years’
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`experience or familiarity with EPGs, television video signal processing, graphical
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`user interfaces, and associated computer software, or would have had equivalent
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`experience either in industry or research, such as designing, developing,
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`evaluating, testing, or implementing the aforementioned technologies.
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`9
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`23.
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`I also understand that U.S. law provides categories of information that
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`constitute prior art that may be used to anticipate or render obvious patent claims.
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`To be prior art to a particular patent claim under the relevant law, I understand that
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`in general a reference must have been made, known, used, published, or patented,
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`or be the subject of a patent application by another, before the priority date of the
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`patent, and in this matter, must satisfy one of the standards of pre-AIA 35
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`U.S.C. § 102. I also understand that a PHOSITA is presumed to have full
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`knowledge of the relevant prior art.
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` Obviousness
`I also understand that a proper analysis of whether an invention is
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`24.
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`invalidated for obviousness includes a review of the scope and content of the prior
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`art, the differences between the patent claims and the prior art, and the level of skill
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`in the pertinent art at the time of the invention.
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`25.
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`I also understand that in determining obviousness I should take into
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`account the knowledge, experience, and creativity of a person of ordinary skill in
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`the art at the time of the alleged invention, and whether such a skilled artisan
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`would have found the challenged claims to be a “predictable use of prior-art
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`elements according to their established functions,” as described by the U.S.
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`Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007), and
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`therefore obvious in view of the prior art.
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`10
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`26.
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`I also understand that a claim may be invalidated for obviousness if
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`there is a teaching or suggestion to combine prior art references in a manner that
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`yields the claimed invention. I understand that a showing of obviousness requires
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`some articulated reasoning with a rational underpinning to support the combination
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`of the references. I understand that in consideration of this issue it is important to
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`identify whether a reason existed at the time of the invention that would have led a
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`person of ordinary skill in the pertinent art to combine elements of the references
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`in a way that yields the claimed invention.
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`27.
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`I also understand that various objective or “real world” factors may be
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`indicative of non-obviousness. I understand that such factors include:
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`(A) The commercial success of the claimed invention;
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`(B) The existence of a long-felt, unresolved need for a solution to the
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`problem solved by the claimed invention;
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`(C) Failed attempts to solve the problem solved by the claimed invention;
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`(D) Copying of the claimed invention;
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`(E) Unexpected results of the claimed invention;
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`(F) Praise for the claimed invention by others in the relevant field; and
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`(G) Willingness of others to accept a license under the patent because of the
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`merits of the claimed invention.
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`11
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` Use of the Broadest Reasonable Interpretation
`I also understand that, in an inter partes review proceeding, the patent
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`28.
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`claims at issue are given their broadest reasonable interpretation in light of the
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`specification of the patent, unless otherwise noted. I also understand that claim
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`terms which are not expressly defined in the patent are to be given their plain and
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`ordinary meaning as would be understood by one of ordinary skill in the art in
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`view of the patent specification, other intrinsic evidence, and extrinsic evidence.
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`As explained below, I have followed these directions in forming the opinions set
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`forth in this Declaration.
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`V. THE STATE OF THE ART RELATIVE TO ELLIS
` The Prior Art of Program Guides
`29. Ellis discloses and claims a conflict resolution system providing an
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`IPG which a user can use to select a television program to watch while also
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`selecting another program that can be recorded at the same time. Ex. 1001,
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`Abstract; Claim 13. The Ellis Abstract also explains that such a system can be
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`implemented by a set-top box with a single tuner or a set-top box having multiple
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`tuners. The Ellis system allegedly determines that if a conflict exists for a
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`recording, viewing, or other function, the system alerts the user and provides the
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`user with the opportunity to cancel the conflict with the IPG. Ex. 1001, Claim 1.
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`12
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`30. Of note here, however, is the fact that of the 1999 filing date of Ellis,
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`there were a number of IPG-based systems which supported the simultaneous
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`watching and recording of television programs, with a number of companies and
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`individuals developing and publicizing approaches to creating such systems as a
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`way for a television viewer to identify programs of interest for either (or both)
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`viewing and recording. A significant contributor to these developments was the
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`transition by many television viewers from broadcast television received with the
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`then-familiar TV antennas, to the delivery of television programming and other
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`services through coaxial cables, which were brought to the users’ homes. Whereas
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`over-the-air delivery of television programming was limited to a small number of
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`channels in most markets, the transition to cable delivery provided an opportunity
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`to deliver many more channels of general and special-interest programming.
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`31. As of the early-to-middle 1990s, cable television systems and their
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`larger number of available channels were proliferating across the U.S. For
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`example, a seminal book in the field—Modern Cable Television Technology by
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`Walt Ciciora, James Farmer, and David Large2—on page 4 (Ex. 1010 at 3) notes
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`that around this time:
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`2 Morgan Kaufmann Publishers, Inc., San Francisco, CA, 1999. (Ex. 1010).
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`13
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`… cable television service is enjoyed by nearly 65 million U.S.
`households. This is a market penetration of nearly 67%. Cable service
`is available to 96.7 % of U.S. television households.
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`32. To inform users about the various television programs that were
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`available from their cable service, early cable systems provided a dedicated
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`channel showing a scrolling display of the names of those programs, a brief
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`description of the program and what time the programs were going to be aired.
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`Those data slowly displayed on a rolling basis, and the user could not increase the
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`speed of the display. Those displays were the original EPGs; they were not
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`interactive. An example of such a non-interactive EPG is shown below:
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`33. A more modern form of the EPG is the interactive [electronic]
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`program guide (the “IPG,” though often loosely referred to as an EPG). An IPG
`14
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`allows television viewers to navigate scheduling menus interactively, selecting and
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`discovering programming by time, title, channel or genre by using an input device
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`such as a television remote control. The interactive menus are generated entirely
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`within local receiving or display equipment using raw scheduling data sent by
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`individual broadcast stations or centralized scheduling information providers.
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`Today, a typical IPG provides user selectable information covering a span of one
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`or two weeks.
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`34. On pages 9 and 10 (Ex. 1010 at 4-5), Modern Cable Television
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`Technology also explains that with cable television, one of the major parts of that
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`system is “the terminal equipment (set top terminals and consumer electronics
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`hardware).” Ex. 1010 at 4-5. Given those terminals (also called “set-top boxes” or
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`“STBs”), Modern Cable Television Technology goes on to explain that most set-
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`top boxes available in the mid to late 1990s provided an on-screen display which
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`allowed the user to select channels to watch and/or record through the use of an
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`EPG. Ex. 1010 at 7.
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`35. That book also noted that EPGs were being built into television
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`systems and STBs, and that some of the STBs also provided IR LEDs which could
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`be used to control a separate video recorded. Ex. 1010 at 7. Relatedly, I note that
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`an IPG can include an on-screen display that presents the user the channels and
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`15
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`programs for viewing or recording, and the screen is responsive to user input. Ex.
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`1001, 6:65-67 – 7:1-16; Fig. 4(a).
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`36. Further, Chapter 19 of Modern Cable Television Technology describes
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`a number of different ways of connecting the coaxial cable supplying television
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`programming to a home with TVs, VCRs, and STBs based on a 1987 report from
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`the National Cable & Television Association’s3 Engineering Committee. One
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`approach described in § 19.3.1 of Modern Cable Television Technology allows the
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`user to “watch one unscrambled channel while recording a different unscrambled
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`channel.” Ex. 1010 at 9. An alternate approach described in § 19.3.3 of Modern
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`Cable Television Technology uses two STBs, each with its own tuner, to supply
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`programming to a VCR and a television set which allows a user to “watch any
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`authorized scrambled or unscrambled program” and to “record any (other or the
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`same) authorized scrambled or unscrambled program.” Ex. 1010 at 11.
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`37. The original function of STBs, also referred to as “converter boxes” in
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`the early 1990s,4 was simply to select one of the many incoming channels so that it
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`could be watched on a TV set. The incoming channel was tuned to and then
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`3 Currently known as the Internet & Television Association.
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`4 See the Cable Television Consumer Protection and Competition Act of 1992,
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`Public Law 102-383-OCT. 5, 1992.
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`converted to a specific channel (often channel 3 or 4) for output to the associated
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`television set or recorder, those end devices being tuned to receive programming
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`on that fixed channel. This basic capability was soon enhanced, however, to allow
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`the STB to be controlled using a hand-held infrared controller. Later, more
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`sophisticated STBs were introduced by companies like Scientific-Atlanta and
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`Cisco. Those STBs contained enough memory and graphics resources to allow
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`them to accept downloaded features providing enhanced capabilities including an
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`on-screen display, volume control, virtual text channels, a sleep timer, parental
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`locks, reminder messages, and multi-lingual displays.5
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`38. As STB capabilities expanded, EPGs such as those described in the
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`Modern Cable Television Technology became a common feature of those in-home
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`devices. As an example, as early as 1997, Sano (Ex. 1006, discussed in detail
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`below) described a multi-tuner system that uses an IPG that provides a listing of
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`available programs and allows a user to select a program for viewing or recording
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`from the IPG. Ex. 1006, 11:29-34. I note that Sano specifically describes the
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`program guide as an “EPG,” but in my opinion a PHOSITA would have
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`understood that the “EPG” of Sano is, in fact, an interactive electronic program
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`5 See http://blogs.cisco.com/sp/a_brief_history_of_set-top_box_innovation (last
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`accessed on October 26, 2016).
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`guide since it provides an on-screen display that presents programming
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`information to the user and is also interactively responsive to user inputs. I thus
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`refer to the EPG of Sano as an IPG throughout this Declaration. Similarly, Marsh
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`(also discussed below) describes an IPG received and stored by the STB. Ex. 1007,
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`1:20-24; 3:30-35. Additional system capabilities disclosed by LaJoie (Ex. 1008,
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`discussed below), for example, included “music service.” Ex. 1008; 5:39-40.
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`39. By 1997, therefore, in my opinion a PHOSITA would have known
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`many of the features of the purported invention claimed by Ellis to be well known
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`in the prior art.
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` Overview Of Ellis
`40. As I noted above, Ellis relates to a conflict resolution system using an
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`interactive program guide that allow a user to view program listings, to navigate
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`through the program listings, to select a program to view or record, and to resolve
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`any conflicts which may arise when they make a selection. Ex. 1001, Abstract;
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`Claim 13. Ellis also discloses that the IPG can be implemented on a receiver with
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`multiple tuners or on a VCR and television using an RF bypass switch. Ex. 1001,
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`1:42-47; 1:57-2:9; Fig. 12. Ellis explains that while providing “a full-featured
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`interactive program guide, it is typically necessary to use several different screens,
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`each screen being associated with one or more features of the system.” Ex. 1001,
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`18
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`3:19-22; 5:49-51; FIGS. 3-10 (depicting “sample screen displays which illustrate
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`the operation of the interactive program guide of the present invention”).
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`41. Ellis also discloses that IPGs are typically implemented on STBs
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`(Ex. 1001, 1:26-27), and that having a set-top box provide an IPG allows users to
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`view a listing of viewable television programs, and in some cases, to select a
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`program to be recorded. Ex. 1001, 1:27-30. Given those capabilities, Ellis
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`identifies as a “significant disadvantage” the alleged fact that the available IPGs
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`are provided by STBs that contain only one tuner, although STBs containing two
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`tuners have been proposed. Ex. 1001, 1:35-38. Given a one-tuner STB, therefore,
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`Ellis opines that if the user has assigned that tuner to a program being recorded, the
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`user will be unable to watch a second program while that recording is taking place.
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`Ex. 1001, 1:38-41. Accordingly, Ellis proposes to provide a “more sophisticated
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`program guide” that operates with a multi-tuner STB Ex. 1001, 1:42-43.
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`42. To implement a conflict-free IPG system, Ellis discloses an STB
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`having more than one tuner and states that the “arrangement of FIG. 2(b) allows
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`the interactive television program guide to allocate whichever tuner is not currently
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`busy for recording a selected program when that program is about to begin.”
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`Ex. 1001, 7:55-58; Fig. 2(b).
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`43. Having such a system, Ellis also discloses that even when a program
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`is being recorded by using one tuner, a user can still use the IPG to select a
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`19
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`different program for viewing. In so doing, the IPG system uses one tuner to
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`provide that second program to a television set. Ex. 1001, 8:19-21. Ellis also
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`discloses a system that includes multiple tuners that are capable of various
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`“secondary tuner functions” such as allowing the user to view a program, to record
`
`a program, or to utilize picture-in-picture (“PIP”) functions. Ex. 1001, 1:55-2:5.
`
`Further, with regard to possible conflicts, Ellis discloses with respect to the
`
`flowchart of Figure 3(b) that a user may choose to cancel a tuner function currently
`
`in progress to switch the tuner to a different requested function, or the user may
`
`cancel the requested function, thereby continuing the current tuner function. Ex.
`
`1001, Fig. 3(b). I also note that in the alternate embodiment shown in Fig. 12 of
`
`Ex. 1001, the end user may perform these functions by using a set-top box
`
`connected to a VCR, a television, and an RF bypass switch. As I explain below,
`
`however, the use of IPG systems to resolve such tuner conflicts was well known in
`
`the prior art as of 1999.
`
` The Priority Date and Prosecution History of Ellis
`I have reviewed the prosecution file history for Ellis. U.S. Application
`
`44.
`
`No. 13/280,215 was filed on October 24, 2011 (Ex. 1003). That application was
`
`the fifth of a series of applications claiming priority to the ’487 Provisional
`
`(Ex. 1002). However, based on my study of it, it is my opinion that Ellis is not
`
`entitled to the filing date of the ’487 Provisional. I base that opinion on my
`
`
`
`20
`
`
`
`
`
`understanding that in order to properly support a later-filed application, a
`
`provisional application must contain a written description of the claimed invention
`
`such that a PHOSITA would believe that, as of the priority date sought, the
`
`applicant was in possession of the invention that is later claimed, and that such a
`
`written description must actually or inherently disclose each and every element of
`
`the later-allowed claims. Clearly, that requirement is also not satisfied by the ’487
`
`Provisional.
`
`45. For example, the ’487 Provisional consisted of only a two-page write-
`
`up that lacked any drawings or flowcharts. Further, the ’487 Provisional did not
`
`provide any implementation details, did not provide a complete written description
`
`of the various features set forth in the later-filed application for Ellis, and did not
`
`provide an enabling disclosure that would allow a PHOSITA to practice any of the
`
`alleged inventions set forth in those later claims. Ex. 1002 at 5 and 6. More
`
`specifically, the brief discussion found in the two-page ’487 Provisional fails to
`
`disclose those skilled in the art how to make and use the full scope of the later-
`
`allowed Ellis claims without undue experimentation, and lacking that disclosure,
`
`those claims fail to bear a reasonable correlation to the limited disclosure found in
`
`that Provisional.
`
`46. Due to the shortcomings discussed above, it is my opinion that Ellis is
`
`not entitled to the priority date of the ’487 Provisional, but rather only the date of
`
`
`
`21
`
`
`
`
`
`the later-filed non-provisional U.S. Patent Application No. 09/329,850 (“the ’850
`
`Application”), now abandoned (June 11, 1999). Ellis is a continuation of the ’850
`
`Application. Ex. 1001, 1:8-18.
`
`VI. SUMMARY OF THE PRIOR ART
` The Combinations of Prior Art Addressed Herein
`I understand that the Petitioner is requesting an inter partes review of
`
`47.
`
`claims 1-24 of Ellis under the two grounds set forth in the following table.
`
`Ground
`
`1
`
`2
`
`
`
`Claims of Ellis
`1-4, 8, 12-16, 20, and
`24
`5-7, 9-11, 17-19, and
`21-23
`
`Basis for Unpatentability
`Obviousness under 35 U.S.C. 103(a) over
`Sano in view of Marsh.
`Obviousness under 35 U.S.C. 103(a) over
`Sano in view of Marsh and further in view of
`LaJoie.
`
`
`The Sano Patent
`48. The Sano Publication (Ex. 1006) is directed toward a system with a
`
`plurality of tuner portions which thereby has the capability to record multiple
`
`programs at the same time. Ex. 1006, 8:36; 12:32-34. More specifically, Sano
`
`discloses a system that includes three tuners for receiving TV broadcast
`
`information and output channel information for viewing or recording. Ex. 1006,
`
`5:45-6:8; Figs. 4 and 5. Notably, Sano discloses that those tuners include a
`
`secondary function of collecting the data defining the IPG that is “transmitted
`
`together with the picture information.” Ex. 1006, 11:30-32.
`
`
`
`22
`
`
`
`
`
`49. Sano also discloses that a user can use an IPG displayed on the
`
`television viewer to select a program to be recorded by use of a cursor, where the
`
`IPG displays a weekly program schedule by channel or by category. Ex.
`
`1006, 11:32-34. Accordingly, Sano’s system has the ability to record up to three
`
`channels of programming at the same time.
`
`50. A PHOSITA would therefore understand that when seeking use of the
`
`Sano system to record multiple programs at the same time, a conflict can arise if
`
`the user seeks to view or record an additional program at a time when all of the
`
`tuners are already in use. Such a conflict can also be created is the user wants to
`
`schedule a new recording of a program that is broadcast at the same time as the
`
`previously scheduled recordings. To handle such conflicts, Sano discloses that a
`
`“warning” is displayed when “it is impossible to record all of the channels that
`
`have been set,” thereby allowing the user an opportunity to resolve the conflict. Ex.
`
`1006, 12:33-37. Sano discloses that such a warning can be a beep tone or a
`
`warning display. Ex. 1006, 12:35-36.
`
` The Marsh Patent
`51. Marsh (Ex. 1007) discloses a system and method that includes an IPG,
`
`a VCR, a cable television system, and a STB that provides a user the ability to
`
`update conflicting recording timers automatically or by providing a user-alert
`
`message that allows user to resolve the conflict. Ex. 1007, Abstract. Marsh’s
`
`
`
`23
`
`
`
`
`
`system also discloses that the system’s VCR recording functions are automatically
`
`adjusted in a manner to accommodate the occurrence of a program-delay event or a
`
`program-cancel event by the TV cable system. Ex. 1007, Abstract. In that
`
`circumstance, a PHOSITA would understand that when Marsh’s system updates
`
`scheduled program times, the possibility arises for conflict with other scheduled
`
`recordings.
`
`52. When such a recording conflict happens, Marsh provides the user
`
`alert-message. Ex. 1007, Fig. 8. That message allows the user to interactively
`
`resolve the time-slot conflict as they wish. Ex. 1007, 12:5-9. Figs. 3 and 8 of
`
`Marsh are copied below, with the identification of a conflict and the corresponding
`
`user alert message step highlighted in yellow in Fig. 3.
`
`53. As an example, if a user is watching a program and a conflict arises
`
`due to the scheduled recording of a different program, Marsh discloses that a
`
`“user-alert m
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