`
`Paper: 32
`Entered: August 7, 2018
`
`Trials@uspto.gov
`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 IPR2017-00744
`Patent 8,621,512 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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`
`IPR2017-00744
`Patent 8,621,512 B2
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`
`I. INTRODUCTION
`
`A. Background
`Comcast Cable Communications, LLC (“Petitioner”) filed a Petition
`to institute inter partes review of claims 1–24 (“challenged claims”) of
`U.S. Patent No. 8,621,512 B2 (Ex. 1101, “the ’512 patent”) pursuant to 35
`U.S.C. §§ 311–319. Paper 2 (“Pet.”). Rovi Guides, Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We instituted this
`review as to all challenged claims. Paper 8 (“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 14 (“Resp.”). Petitioner filed a Reply. Paper 19
`(“Reply”). An oral hearing held on May 9, 2018. Paper 31 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that claims 1–24 of the ’512 patent are unpatentable.
`
`B. Additional Proceedings
`The parties inform us that the ’512 patent is the subject of the
`following lawsuits: Rovi Guides, Inc. v. Comcast Corporation, No. 1:16-cv-
`9826 (S.D.N.Y.) and Comcast Corporation v. Rovi Corporation, No. 1:16-
`cv-3852 (S.D.N.Y.). Pet. 1–2; Paper 6, 2 (Patent Owner’s Submission of
`Updated Mandatory Notice Information). The ’512 patent has been asserted
`in In the Matter of Certain Digital Video Receivers and Hardware and
`Software Components Thereof, Investigation No. 337-TA-1001 (U.S.
`International Trade Commission).1 Pet. 2; Paper 6, 2. The ’512 patent is
`
`
`1 The International Trade Commission (ITC) determined that claims 1, 10,
`13, and 22 of the ’512 patent were obvious. Ex. 1110, 2, 29–30. The ITC’s
`2
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`Patent 8,621,512 B2
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`also the subject of IPR2017-00742, which Final Decision we issue
`concurrently.
`
`C. The ’512 Patent
`The ’512 patent is titled, “Interactive Television Program Guide with
`Simultaneous Watch and Record Capabilities.” Ex. 1101, (54). The
`Abstract says: “[a]n interactive television program guide system is provided
`in which a user may use the program guide to watch one program while
`simultaneously recording another program without interrupting the recording
`or viewing process.” Id. at (57). Figure 2(b) is reproduced below:
`
`
`Figure 2(b) depicts a two tuner set-top box that provides one video output to
`the TV and the other video output to picture-in-picture (“PIP”)2 input or a
`
`
`decision has been appealed. See Tr. 4:17–19.
`2 Ex. 1101, 2:3.
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`3
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`VCR. Id. at 7:54–8:16. Figure 4(b), reproduced below, “shows an
`illustrative interactive television program guide viewer option for secondary
`function use (PIP cancellation) screen 410 which acts to alert the viewer to a
`conflict in tuner allocation and usage.” Id. at 10:25–28.
`
`
`Figure 4(b) depicts a “viewer option selection screen.” Id. at 2:60–63. The
`detailed description of Figure 4(b) states:
`If the user still desires to have the program recorded, the user will
`select “Yes.” The interactive television program guide will then
`redirect the use of the second tuner and initiate the record
`sequence. If the user desires to continue using the secondary
`function, the user will select “No.” The interactive television
`program guide will then cancel the record request and allow the
`user to continue using the second tuner for any of the available
`secondary functions.
`
`Id. at 10:37–45.
`As noted above, Petitioner challenges claims 1–24 (all issued claims)
`
`4
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`of the ’512 patent. There are two independent claims (1 and 13). Claim 1 is
`directed to a method, and claim 13 is directed to a system. Except for the
`introductory phrases referring to a method or system, the two sets of
`dependent claims (2–12 and 14–24) are nearly identical.3
`Claim 1 recites:
`1. A method for resolving a conflict when multiple
`operations are performed using multiple tuners controlled by an
`interactive television guide, the method comprising:
`
`
`receiving a request to perform a tuning operation;
`
`
`
`determining that neither a first tuner nor a second tuner are
`available to perform the requested tuning operation, wherein the
`first tuner and the second tuner are both capable of performing
`the tuner operation; and
`
`in response to the determination, displaying an alert that
`provides a user with an opportunity to direct the interactive
`television program guide to cancel a function of the second tuner
`to permit the second tuner to perform the requested tuner
`operation.
`
`
`
`
`
`Claim 13 recites:
`
`13. A system for resolving a conflict when multiple
`operations are performed using multiple tuners controlled by an
`interactive television program guide, the system comprising:
`
`
`a first tuner;
`
`
`3 The parties treat the method and systems claims as essentially equivalent.
`However, we note the patentability of an apparatus claim “depends on the
`claimed structure, not the use or purpose of that structure.” Catalina
`Marketing Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
`2002).
`
`5
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`
` second tuner; and
`
` a
`
`
`an interactive television program guide implemented on
`the system, wherein the interactive program guide is operative
`to:
`
`
`receive a request to perform a tuning operation;
`
`
`
` determine that neither the first tuner nor the second
`tuner is available to perform the requested tuner
`operation, wherein the first tuner and the second tuner
`are both capable of performing the tuning operation;
`and
`
`
`
`
`in response to the determination, display an alert that
`provides a user with an opportunity to direct the
`interactive television program guide to cancel a
`function of the second tuner to permit the second tuner
`to perform the requested tuning operation.
`
`D. The Asserted Grounds of Unpatentability
`We instituted inter partes review on all asserted grounds, as follows:
`
`References
`Nagano4 and Alexander5
`Nagano and Chun6
`Inst. Dec. 25.
`
`Basis
`§ 103
`§ 103
`
`Claims Challenged
`1–24
`1–24
`
`Petitioner asserts that Nagano and Alexander are prior art under pre-
`AIA 35 U.S.C. § 102(e) and Chun is prior art under pre-AIA 35 U.S.C.
`§ 102(b). Pet. 14, 18, 19. The ’512 patent claims priority to the filing date
`
`
`4 US Patent No. 6,240,240 B1, filed Oct. 18, 1996 (Ex. 1104).
`5 US Patent No. 6,177,931 B1, filed July 21, 1998 (Ex. 1105).
`6 US Patent No. 5,506,628, issued Apr. 9, 1996 (Ex. 1106).
`6
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`of U.S. Provisional Application No. 60/089,487, filed June 16, 1998 (“the
`’487 provisional”). Ex. 1101, (60), 1:8–18. Petitioner argues that, whether
`or not the ’512 patent is entitled to the filing date of the ’487 provisional, all
`the cited references still qualify as prior art. Pet. 13 (“Even if Ellis [the ’512
`patent] were entitled to an earlier priority date, every reference relied on
`herein would remain prior art under 35 U.S.C. §§102 (b) and/or (e).”).
`Patent Owner does not dispute the prior art status of any of the cited art.7
`See Resp. 4 n.2 (“[T]he priority date does not affect any asserted reference”).
`The earliest priority date claimed for the ’512 patent is June 16, 1998.
`Ex. 1101, (60), 1:8–18. Nagano was filed on October 18, 1996. Ex. 1104,
`(22). Alexander claims priority to a number of provisional patent
`applications filed from December 16, 1996 through January 20, 1998. Ex.
`1105, (60), 1:10–34. Chun was issued on April 9, 1996. Ex. 1106, (45).
`Accordingly, the cited references qualify as prior art under 35 U.S.C. § 102.
`
`II. ANALYSIS
`
`A. Principles of Law
`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
`
`
`7 Petitioner states the ’487 provisional contained “a scant two-page
`specification and no drawings” and asserts that it “did not include sufficient
`disclosure to support and enable the claims” of the ’512 patent and the ’512
`patent should only be entitled to a priority date of June 11, 1999. Pet. 12–
`13. Patent Owner states “[t]he disclosures of U.S. Provisional Application
`No. 60/089,487 (Ex. 1102) fully support that the inventors had possession of
`the ’512 claimed inventions by June 16, 1998, the filing date of the
`provisional application.” Resp. 4 n.2.
`
`7
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`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 on the basis of 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 of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Claim Construction
`The parties agree that the claims of the ’512 patent should be given
`the “broadest reasonable construction in light of the specification of the
`patent in which it appears.” Pet. 5; Resp. 11–12. See also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–2145 (2016); 37 C.F.R.
`§42.100(b). “Under a broadest reasonable interpretation, words of the claim
`must be given their plain meaning, unless such meaning is inconsistent with
`the specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016). Only those terms which are in
`controversy need 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., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner contends that each claim limitation in the ’512 patent
`should be given its plain and ordinary meaning with the exception of
`“secondary tuner function” and that the preambles of independent claims 1
`
`
`8 Neither party presents any objective evidence of nonobviousness
`(secondary considerations) for us to consider.
`
`8
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`and 13 are not limiting. Pet. 5. Patent Owner contends: (1) construction of
`“secondary tuner function” is unnecessary (id. at 23); (2) determination of
`whether the preambles of independent claims 1 and 13 are limiting is
`unnecessary (id. at 23–24); (3) “[t]he claimed step of ‘determining that
`neither a first tuner nor a second tuner are available to perform the requested
`tuning operation’ [“the ‘determining’ limitation”] should be given its plain
`and ordinary meaning, in accordance with which the step of ‘determining
`. . .’ happens at the time of the requested tuning operation (i.e., at the time
`when a tuner is needed to perform the operation)” (Resp. 12); and (4) “the
`term ‘cancel a function’ should be construed to mean ‘stop a function
`utilizing a signal tuned to by a tuner’ (id. at 18). The dispute between the
`parties in this case primarily relates to the construction of the “determining”
`limitation and “cancel a function” and whether the cited art teaches those
`limitations.
`
`“secondary tuner function”
`With regard to “secondary tuner function” as recited in dependent
`claims 4–7 and 16–19, Petitioner argues:
`“Secondary tuner function” should be construed to include a
`process other than television program viewing or recording that
`requires allocation of the first or second tuner, for example, to
`collect interactive program guide data, enable internet browsing,
`to play a music channel, or to provide a picture-in-picture signal.
`Ex.-1101, Fig. 3(c); Ex.-1107, ¶99.
`
`Pet. 5–6 (emphasis added). Petitioner provides no persuasive reasoning or
`argument in support of this construction. Id. Patent Owner contends there
`is no dispute relating to this term and that construction is unnecessary. Resp.
`23. In its analysis, Petitioner relies on Alexander and Chun as teaching the
`
`9
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`secondary tuner function of PIP. See, e.g., Pet. 36, 63. And Patent Owner
`does not disagree, stating, “there is no dispute that providing a picture-in-
`picture [PIP] signal is a ‘secondary tuner function.’” Id. at 23. Accordingly,
`there is no dispute relating to the meaning of “secondary tuner function” that
`we need to resolve. Consequently, we do not explicitly construe this term.
`preambles of claims 1 and 13
`Petitioner argues the preambles of independent claims 1 and 13 are
`not limiting because “the claim body describes a structurally complete
`invention such that deletion of the preamble phrase does not affect the
`structure or steps of the claimed invention” and the preambles are merely
`statements of intended use. Pet. 6. In response, Patent Owner argues,
`“[o]nce again, Petitioner does not explain why this affects application of any
`cited references.” Resp. 23–24. Whether or not the preambles here are
`limiting, Petitioner provides argument and detailed citations showing that
`the elements of the preambles of claims 1 and 13 are taught by the cited art.
`Pet. 22–23. Patent Owner does not dispute this showing. For the reasons
`discussed below in the context of Petitioner’s obviousness contentions, we
`find that the asserted prior art discloses all elements recited in the preambles.
`We, therefore, need not determine whether the preambles of the independent
`claims are limiting.
`
`the “determining” limitation
`Claim 1 recites, “determining that neither a first tuner nor a second
`tuner are available to perform the requested tuning operation” and claim 13
`recites, “determine that neither the first tuner nor the second tuner is
`available to perform the requested tuner operation.” Ex. 1101, 18:39–42,
`
`10
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`19:50–53 (“the ‘determining’ limitation”).9 The parties agree that the
`“determining” limitation should be given its plain and ordinary meaning.
`Pet. 5; Resp. 12. However, as noted previously, Patent Owner contends the
`plain and ordinary meaning should be construed “in accordance with which
`the step of ‘determining . . .’ happens at the time of the requested tuning
`operation (i.e., at the time when a tuner is needed to perform the
`operation).” Resp. 12 (citing Ex. 2108 (Balakrishnan Decl.) ¶ 48). Patent
`Owner argues, “[t]he claim language refers to determining availability at the
`time of the requested tuning operation (e.g., not at the earlier time when the
`requested operation was scheduled).” Id. In other words, Patent Owner
`contends that the determination must be made at the time the requested
`tuning operation is to be performed. See, e.g., Resp. 15 (characterizing “the
`invention as determining tuning availability at the time of the requested
`tuning operation, and not merely checking in advance for scheduling
`conflicts.”); id. at 16 (indicating “that the invention does not merely check
`for conflicts among future scheduled recordings, but rather determines that
`the two tuners are not available at the time they are needed for a tuning
`operation” (citing Ex. 1103, 89–90)). Patent Owner contends that the claims
`do not encompass making the determination when scheduling the requested
`tuning operation, which Patent Owner characterizes as “checking in advance
`for scheduling conflicts.” See, e.g., Resp. 15, 16.
`In construing the claims, first and foremost, we rely on the language
`of the claims. Neither claim 1 nor claim 13 (or any other claim) contains
`
`
`9 Pursuant to a Certificate of Correction issued September 1, 2015, the
`phrase “are available to perform” was changed to “is available to perform”
`in claim 13 (but not in claim 1). Ex. 1101, 31.
`
`11
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`any language indicating that the “determining” limitation is performed at the
`time of the requested tuning operation (i.e., at the time when a tuner is
`needed to perform the operation) and not at the earlier time when the
`requested operation was scheduled.
`Patent Owner argues its claim interpretation is required because
`“[c]laims 1 and 13 recite ‘determining’ that neither tuner ‘is/are available’ in
`the present tense, in contrast to the future tense of ‘will be available.’” Resp.
`12. We do not agree that the use of present tense, rather than future tense,
`supports construing the claims so that the determination must be made at the
`time of the requested tuning operation and “not at the earlier time when the
`requested operation was scheduled.” Id. The natural reading of the present
`tense in claims 1 and 13 is simply that the recited determination is made at
`the time of “receiving a request to perform a tuning operation.” The only
`other timing-related implication of the language of claims 1 and 13 is that
`subsequent to “in response to” the recited determination, a user may be
`alerted to the determination results so that the user may resolve any conflict.
`See Ex. 1101, 18:35–47 (claim 1), 19:41–59 (claim 13).
`Patent Owner also argues that the language of the dependent claims
`supports its proposed construction. Resp. 12–13 (“Dependent claims 4-5
`and 16-17 also recite examples of tuning operations and functions that are
`real-time (not future scheduled) activities, such as ‘viewing television
`programming,’ ‘providing a picture-in-picture signal,’ ‘collecting program
`guide data,’ ‘browsing the Internet,’ and ‘playing a music channel.”)
`(emphasis added). Dependent claims are, by definition, more narrow than
`the independent claims from which they depend. Thus, the mere fact that
`certain dependent claims recite real-time tuning operations and functions
`
`12
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`does not logically require that the independent claims from which they
`depend are restricted to real-time operations. Patent Owner provides no
`explanation or authority to the contrary. Moreover, Dr. Balakrishnan’s
`testimony, which is conclusory and contains no more reasoning than Patent
`Owner’s brief, does not persuade us otherwise. Ex. 2108 ¶¶ 49–50.
`Patent Owner also argues that the Specification of the ’512 patent
`supports its proposed construction. Resp. 13–15. First, Patent Owner points
`to language in the ’512 patent using present tense, including, “allocat[ing]
`whichever tuner is not currently busy for recording a selected program when
`that program is about to begin.” Id. at 13 (quoting Ex. 1101, 7:54–58, 2:1–
`10, 8:21–23, 10:28–38, 10:49–54). However, Patent Owner concedes that
`these are all examples. Id. Other than asserting that “[t]o a POSITA, these
`examples indicate that the invention determines availability at the time when
`the operation requiring a tuner is to be performed,” Patent Owner does not
`explain why these examples should limit the claim scope. Id. Second,
`Patent Owner asserts that the ’512 patent “consistently ties the
`‘determining…’ step to the time when the program for the requested tuning
`operation is about to begin.” Id. at 14–15 (quoting Ex. 1101, 1:65–2:10,
`7:28–30, 8:33–36, 10:18–22, 10:49–54). Again, Patent Owner does not
`explain why these examples limit the scope of the claim. Id. Dr.
`Balakrishnan’s testimony is equally conclusory, quoting the same portions
`of the ’512 patent and concluding, without explanation or evidentiary
`support, that “[t]his indicates to a person of ordinary skill in the art that the
`invention checks for tuner availability when the program is about to begin,
`not when the user schedules the recording.” Ex. 2108, ¶¶ 51–52.
`
`13
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`Similarly, Patent Owner points to the flowchart in Figure 3(b) as
`supporting its construction. Resp. 13–14. Figure 3(b) of the ’512 patent is
`reproduced below.
`
`
`Figure 3(b) depicts “a flow chart that illustrates steps involved in using an
`interactive television program guide system that includes a set-top box that
`has two tuners and switching circuitry of the type shown in FIG. 2(b) in
`accordance with the present invention.” Ex. 1101, 2:49–53.
`
`14
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`Patent Owner asserts that “the left branch of Figure 3(b) shows at step
`310 that the program guide ‘processes request to use other tuner’ and
`determines that both tuners are in use,” and, “[i]n response to this
`determination, the program guide displays an alert.” Resp. 13. According to
`Patent Owner, “[t]his demonstrates that the ‘determining’ step—which
`includes processing a request to use the other tuner to record—happens at
`the time when the requested tuning operation (record) conflicts with the
`currently performed functions of the tuners. . . .” Id. at 14.
`We do not agree with Patent Owner’s conclusion regarding the
`implications of Figure 3(b). Instead, Figure 3(b) simply shows that
`sometime after receiving a request to use the other tuner, it processes that
`request (step 310) and then displays an alert (step 312). Ex. 1101, Fig. 3b,
`9:6–20. Nothing in Figure 3(b) or its corresponding description limits the
`timing of the determining step to occur at the time the requested tuning
`operation is to be performed. Again, Dr. Balakrishnan’s testimony does not
`add support or explanation to Petitioner’s argument. See Ex. 2108 ¶ 54.
`Patent Owner also cites an argument made during prosecution of the
`’512 patent as supporting its claim interpretation. Resp. 15–17; see id. at 16
`(citing Ex. 1103 (file history of ’512 patent), 89–90). As explained in our
`Institution Decision, this evidence establishes that the Examiner rejected
`patentee’s argument as to the scope and interpretation of the “determining”
`limitation being limited to “tuner” conflicts (as opposed to “timer”
`conflicts). See Inst. Dec. 15–16 (citing Ex. 1103, 35, 50–51, 59) (indicating
`the file history). The Examiner maintained the rejection after this argument
`was made and did not allow the application until further and different
`arguments were submitted. At oral argument, Patent Owner’s counsel
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`clarified that Patent Owner points to the file history only to show its
`interpretation has been consistent. Tr. 49:21–24 (“[W]e are not arguing for
`prosecution history disclaimer here. We are simply saying that what the
`applicant said during prosecution is consistent with the way you read the
`claims and the specification.”), 51:5–6 (Patent Owner’s counsel confirming
`that is not arguing that the Examiner agreed with Patent Owner’s proposed
`construction).
`Our conclusion that the file history does not support Patent Owner’s
`proposed construction is in accordance with the ITC’s findings. As in this
`proceeding, before the ITC, Patent Owner argued there is a distinction
`between tuner and timer conflicts that supports its interpretation of the
`“determining” limitation, but the ITC rejected Patent Owner’s argument. In
`the Commission Opinion, the ITC stated:
`[D]uring prosecution of the application resulting in the ’512
`patent, the Examiner rejected this purported distinction. While
`the applicant attempted to draw this distinction while arguing
`past a reference during prosecution (and as acknowledged by
`Respondents’ expert), the examiner did not accept it as a basis to
`distinguish the ’512 patent over the prior art. The applicant had
`to rely on amendments and arguments requiring the use of two
`tuners to distinguish over the prior art.
`
`Ex. 1110, 31 (citations omitted). We agree with the ITC’s reasoning.
` Considering the language of the claims, the Specification, and the
`file history, we find no support for adding the Patent Owner’s proposed
`limitation to the scope of the claims of the ’512 patent. The “determining”
`limitation contains common words, which are easily understood, none of
`which link the determining limitation to the time when the requested tuner
`operation is to be performed or preclude determining scheduling conflicts
`
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`for when the tuner later is to perform the requested operation. We conclude,
`based on the plain and ordinary meaning of the words recited and giving the
`broadest reasonable interpretation in view of the Specification to the
`“determining” limitation, that the claims should not be construed to contain
`any limitation on the timing of the determination other than it occurs after
`the request to perform a tuning operation and before the alert is displayed.
`See Ex. 1101, 18:35–47 (claim 1), 19:41–59 (claim 13).
`
`“cancel a function”
`Patent Owner argues that the phrase “cancel a function” as used in
`independent claims 1 and 13 should be construed to mean “stop a function
`utilizing a signal tuned to by a tuner.” Resp. 18. This is the construction
`adopted by the ITC and the parties agree that this is the correct
`construction.10 Ex. 2106 (ITC Initial Determination), 444 (“Thus, the
`administrative law judge construes the phrase “cancel a function” to mean
`“stop a function utilizing a signal tuned to by the second tuner to be
`performed.”); Resp. 16 (citing Ex. 2106, 444); Tr. 14:23–15:2, 18:1–24
`(Petitioner’s counsel indicating that the ITC’s construction is the same as the
`broadest reasonable construction), 52:1–4 (Patent Owner’s counsel
`indicating proposed construction is the same as the ITC’s construction). We
`agree that the proposed construction is consistent with the plain language of
`the claims and the claim context in which “cancel a function” occurs—“to
`direct the interactive television program guide to cancel a function of the
`second tuner and permit the second tuner to perform the requested tuning
`
`10 Neither party proposed a construction of “cancel a function” prior to
`institution of this trial (see Pet. 5–7; Prelim. Resp. 9–14), and we did not
`construe “cancel a function” in the Institution Decision. Inst. Dec. 7–10.
`
`17
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`operation.” The proposed construction also is consistent with the
`Specification that describes sending a command to the VCR to stop
`recording when the user cancels the record request. Ex. 1101, 9:66–10:5;
`see Resp. 19 (citing Ex. 1101, 9:66–10:5).
`Accordingly, we construe the phrase “cancel a function” as used in
`independent claims 1 and 13 to mean “stop a function utilizing a signal
`tuned to by a tuner.”
`Although the parties agree to this construction, the parties dispute
`whether this construction “covers future timer conflicts” (as Petitioner
`contends the broadest reasonable construction must do) or whether the
`construction requires that only a function that is underway may be cancelled
`(as Patent Owner contends). Resp. 18–19; Reply 5 (Petitioner asserting that
`“the construction under BRI must be broad enough to cover future timer
`conflicts.”); see Resp. 18–23 (arguing scope of claim construction).
`The recited “canceling a function” occurs in the context of responding
`to the determination that no tuner is available to perform the requested
`function. Because of that context, Patent Owner’s argument here is in
`concert with its position regarding the construction of the determining
`limitation. According to Patent Owner, the determination must be made at
`the time the requested tuning operation is to be performed and if the
`determination is made that neither tuner is available to perform the requested
`tuner function, it logically follows that a tuner must be stopped from
`performing an ongoing function in order to perform the requested tuner
`operation.
`We, however, do not agree that the determining step is so limited.
`Similarly, we do not agree with Patent Owner that “cancel a function” does
`
`18
`
`
`
`IPR2017-00744
`Patent 8,621,512 B2
`
`not include functions scheduled for future times. We credit the deposition
`testimony of Patent Owner’s expert, Dr. Balakrishnan, who indicates the
`challenged patent contemplates conflicts in future scheduled recordings.11
`With this understanding of the ’512 patent, the plain meaning of “canceling
`a function” encompasses canceling future scheduled recordings.
`Accordingly, we determine that “cancel a function” encompasses
`canceling future scheduled recordings.
`C. Level of Skill in the Art
`With regard to the level of ordinary skill in the art, the Petition states:
`A person having ordinary skill in the art at the time of the alleged
`invention 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
`(“EPGs”), television video signal processing, graphical user
`interfaces, and associated computer software. Ex.-1107, ¶¶ 20-
`22. Alternatively, a person of ordinary skill could have
`equivalent experience either in industry or research, such as
`designing, developing, evaluating, testing, or implementing the
`aforementioned technologies. Ex.-1107, ¶22.
`
`Pet. 7. The Patent Owner’s Response states:
`[A] person of ordinary skill in the art at the time of the invention
`would have had a bachelor’s degree in electrical or computer
`engineering or computer science, or equivalent experience, and
`two
`to four years of experience relating
`to computer
`
`11 “Q. The patent contemplates though that you may have recordings that
`would occur in the future?
` A. Sure.
` Q. And the patent contemplates that you may have conflicts in future
`scheduled recordings?
` A. I think there is a description of that, yes.”
`Ex. 1111, 104:5–13.
`
`19
`
`
`
`IPR2017-00744
`Patent 8,621,512 B2
`
`
`Internet
`including
`interfaces,
`and user
`programming
`programming or any equivalent knowledge, training and/or
`experience in the field of services for providing video content or
`associated content or features (e.g., interactive program guides
`on screen menus advertising searching), or any hardware or
`software related to the provision such services. Additional
`graduate education could substitute for professional experience,
`or significant experience could substitute for formal education.
`Ex. 2108 ¶¶ 16-18, 1-13.
`
`
`Resp. 11. Although there are differences in these assertions regarding the
`level of ordinary skill in the art, the parties agree that “there aren’t any
`significant differences that affect the analysis one way or the other” and that
`the minor differences do not impact the result in this proceeding. Tr. 32:9–
`17, 33:1–4. We find both proposals to be reasonable and agree that the
`minor differences do not affect our analysis.
`
`D. Obviousness in View of Nagano and Alexander
`Petitioner argues that claims 1–24 of the ’512 patent would have been
`obvious in view of Nagano and Alexander. Pet. 22–49.
`
`1. Overview of Nagano
`Nagano is titled, “Apparatus and Method for Controlling The
`Recording of Television Programs.” Ex. 1104, (54). The Abstract states:
`An apparatus and a method for controlling the recording of
`television programs are disclosed. The apparatus displays
`electronic program guide information superposed on a television
`signal. The apparatus allows a plurality of desired programs to
`be reserved for recording based on the electronic program guide
`information. If any of the reserved programs overlap, the
`apparatus allows the starting time and/or end time of any of the
`overlapped programs to be changed.
`
`
`20
`
`
`
`IPR2017-00744
`Patent 8,621,512 B2
`
`Id. at (57). Figures 17B and 17E are reproduce
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