Paper 35
`Trials@uspto.gov
`571-272-7822 Entered: August 27, 2018
`
`
`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 IPR2017-00866
`Patent 8,713,595 B2
`____________
`
`
`
`Before KARL D. EASTHOM, BARBARA A. BENOIT, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: August 27, 2018
`
`
`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 IPR2017-00866
`Patent 8,713,595 B2
`____________
`
`
`
`Before KARL D. EASTHOM, BARBARA A. BENOIT, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2017-00866
`Patent 8,713,595 B2
`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Comcast Cable Communications, LLC (“Petitioner”) challenges the
`patentability of claims 1–24 of U.S. Patent No. 8,713,595 B2 (Ex. 1001, “the
`’595 patent”), owned by Rovi Guides, Inc. (“Patent Owner”). We have
`jurisdiction under 35 U.S.C. § 6. This Final Written Decision is entered
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`discussed below, Petitioner has shown by a preponderance of the evidence
`that claims 1–24 of the ’595 patent are unpatentable.
`
`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1–24 of the
`’595 patent. Paper 2 (“Pet.”). Patent Owner filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”). On August 28, 2017, we instituted an inter partes
`review of claims 1–24 of the ’595 patent on the following grounds: (i)
`claims 1–6, 9–14, and 17–22 are unpatentable under 35 U.S.C. § 103(a)1 as
`obvious over Lett2 and Granger3; (ii) claims 7, 8, 15, 16, 23, and 24 of the
`’595 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Lett,
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’595 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
`2 U.S. Patent No. 5,592,551, filed Apr. 19, 1994, issued Jan. 7, 1997 (Ex.
`1008).
`3 U.S. Patent No. 5,483,277, filed Dec. 15, 1992, issued Jan. 9, 1996 (Ex.
`1009).
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`Granger, and Young ’1214; and (iii) claims 1–24 of the ’595 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Strubbe5 and Lett.
`Paper 10 (“Inst. Dec.”), 38–39.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 21, “PO Resp.”), to which Petitioner filed a Reply (Paper
`27, “Reply”). Petitioner relies on the Declaration of Dr. Vernon Thomas
`Rhyne, III (Ex. 1014) and the Second Declaration of Vernon Thomas Rhyne,
`Ph.D. (Ex. 1020). Patent Owner relies on the Declaration of Michael
`Shamos, Ph.D. (Ex. 2009).
`An oral hearing was held on June 6, 2018, and a transcript of the
`hearing has been entered into the record. Paper 34 (“Tr.”).
`
`B. Related Matters
`The parties identify the following pending matters, which may affect,
`or be affected by, a decision in this proceeding: (1) Rovi Guides, Inc. v.
`Comcast Corporation, 1:16-cv-09278 (S.D.N.Y.); and (2) Comcast
`Corporation v. Rovi Corporation, 1:16-cv-03852 (S.D.N.Y.). Pet. 1–2;
`Paper 4, 1; see 37 C.F.R. § 42.8(b)(2). Claims 1–24 of the ’595 patent also
`are at issue in IPR2017-00867, for which a final written decision is being
`issued concurrently with this Decision.
`
`C. The ’595 Patent
`The ’595 patent is titled “Interactive Program Guide Systems and
`Processes.” Ex. 1001, [54]. The ’595 patent is directed to an interactive
`program guide system that can automatically tune a television or program a
`
`
`4 U.S. Patent No. 4,706,121, issued Nov. 10, 1987 (Ex. 1010).
`5 U.S. Patent No. 5,047,867, issued Sept. 10, 1991 (Ex. 1012).
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`video cassette recorder (VCR) based on program selections made from
`program schedule information displayed on a video monitor. Id. at 1:18–23.
`The ’595 patent describes as background that “[o]ver the past several years,
`television viewers have grown accustomed to a scrolling television program
`guide”—such as the Prevue Channel—which, according to the ’595 patent,
`“is not an interactive program guide, and therefore, it lacks certain
`capabilities that viewers would find very useful.” Id. at 1:62–2:1, 2:16–19.
`For example, the ’595 patent states that, with such a guide, “the viewer
`cannot directly use the scrolling grid for tuning a television to a desired
`channel or programming a VCR.” Id. at 2:26–28. The ’595 patent notes that
`“[a]ttempts have been made to provide interactive program guides with such
`capabilities” and that one such system is described in Young ’121—one of
`the prior art references relied on in this proceeding. Id. at 2:29–32. The
`’595 patent states that a disadvantage of the system described in Young ’121
`is that, when user program selection criteria are activated such that only
`programs meeting the criteria are displayed in the grid, “the viewer is unable
`to select for viewing or recording any program that does not meet the
`selection criteria because such programs would not be listed.” Id. at 2:32–
`41. The ’595 patent adds that, with the Young ’121 system, to select an
`unlisted program (because it does not meet a viewer’s criteria), the viewer
`must either “deactivate the selection criteria” or provide different selection
`criteria to capture the program of interest. Id. at 2:42–45.
`The ’595 patent discloses that, “[i]n accordance with [the] invention,
`interactive program guide systems and related processes are provided which
`can automatically tune a television, or program a VCR, based on program
`selections made from program schedule information displayed on a
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`television or other suitable television monitor.” Id. at 4:10–14. The patent
`states that “[t]he interactive program guide is implemented preferably using
`a microprocessor-controlled set-top box that is coupled to the viewer’s
`television set.” Id. at 4:14–17.
`Figure 2 of the patent, below, illustrates the set-top box.
`
`
`Figure 2 above illustrates “a set-top box 70 suitable for implementing
`the interactive program guide of the present invention.” Id. at 7:15–17.
`According to the ’595 patent, television signals and program schedule
`information transmitted on cable network 68 are received by tuning circuitry
`72 of set-top box 70. Id. at 7:17–20. The ’595 patent discloses that tuning
`circuitry 72 processes the incoming signals in a conventional manner to
`extract the program schedule information (id. at 7:20–23) and “also tunes the
`set-top box 70 to a program channel selected by the viewer” (id. at 7:37–40).
`The ’595 patent discloses that when a user invokes the interactive program
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`guide, interactive program guide video signals are provided to genlock
`circuitry 82, “which synchronizes those signals to the television signals
`received from the tuning circuitry.” Id. at 7:52–61.
`The ’595 patent states that “[t]he interactive program guide can be
`used by the viewer to select programs of interest for display on the display
`84” (id. at 8:4–5) and “may also be used to program a [VCR] 88” (id. at 8:5–
`7). The patent discloses that “[t]he control unit 74 preferably exerts control
`over the VCR 88 through the use of an infrared transmitter 90[,] which
`communicates with an infrared receiver (not shown) of the VCR 88.” Id. at
`8:7–10.
`The ’595 patent also discloses the following regarding connections to
`the display and VCR:
`In FIG. 2, the display 84 and the VCR 88 are shown connected
`to the genlock circuitry 82. Other arrangements are possible. For
`example, the VCR can be connected to the genlock circuitry 82
`and the display 84 can be connected to the VCR. However, if
`the viewer wishes to record and view different programs at the
`same time, the VCR 88 can be connected directly to the cable
`network 68. The invention also contemplates the use of a set-top
`box (not shown) that includes two tuners—one each for the VCR
`88 and the display 84.
`Id. at 8:14–23 (emphasis added).
`According to the ’595 patent, in a Program Guide display mode,
`program schedule information is presented in a grid format, and the viewer
`can use navigation keys on a remote control to move a cursor to a desired
`program. Id. at 4:34–37. The patent explains that “[o]nce a program of
`interest has been located and highlighted by the cursor, the viewer can use
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`the remote control to cause the set-top box to tune to the selected
`program . . . or to schedule the program for later viewing or recording (if not
`yet being telecast).” Id. at 4:37–41.
`Figure 4 of the ’595 patent, below, illustrates a program guide screen.
`Id. at 10:7–9.
`
`
`
`Figure 4, above, illustrates a program guide screen that presents a
`premium channel line-up. Id. at 10:7–9. Program cell 127 is highlighted to
`indicate the location of a cursor in program grid 112. Id. at 10:24–25. The
`’595 patent discloses that a viewer can navigate program grid 112 by using
`the left, right, up, and down arrow keys on the remote control. Id. at 10:25–
`28. The ’595 patent explains that a viewer can use a Select key on the
`remote control to select a highlighted program. Id. at 11:18–19. According
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`to the patent, “[a]fter a program has been selected, the viewer can choose to
`tune to the selected program, record the selected program, or simply see
`more information about the selected program.” Id. at 11:19–22.
`Figure 10 of the ’595 patent, shown below, illustrates a program
`selection screen that appears when the viewer selects a program from screen
`100. Id. at 19:4–9.
`
`
`
`As illustrated in Figure 10 above, program selection screen 500
`includes program title window 502, description window 504, video clip
`window 506, and menu window 508. Id. at 19:16–18. The ’595 patent
`discloses that the “Add to Scheduled Viewing List” is used to add an entry
`for the selected program into a scheduled viewing list. Id. at 19:45–47.
`According to the ’595 patent, “[w]hen the current time approaches or
`matches the telecast time for a program listed in the scheduled viewing list,
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`the display 84 (FIG. 2) displays a prompt . . . notifying the viewer that a
`program of interest is about to start.” Id. at 19:47–50.
`The ’595 patent also discloses that the menu choice “Add to
`Recording List” is used to add an entry for the selected program into a
`recording list. Id. at 19:55–56. According to the ’595 patent, “[w]hen the
`current time approaches or matches the telecast time for a program listed in
`the Recording List, the control unit 74 (FIG. 2) causes the tuning circuitry 72
`(FIG. 2) to tune to the appropriate channel.” Id. at 19:56–60. The ’595
`patent adds: “Through the IR transmitter 90 (FIG. 2), the control unit 74
`(FIG. 2) also causes the VCR 88 (FIG. 2) to begin recording at the
`appropriate time.” Id. at 19:60–64.
`
`D. Illustrative Claim
`Among the challenged claims (claims 1–24), claims 1, 9, and 17 are
`independent. Claim 1 is illustrative of the subject matter of the challenged
`claims and reads as follows:
`1. A method for controlling a first tuner and a second
`tuner with an interactive television program guide, said method
`comprising:
`receiving television programs and program schedule
`information;
`storing the program schedule information in a memory;
`causing a display device to display a program guide
`display with said interactive television program guide;
`receiving a user selection to record, with a video recorder,
`a first television program indicated on said program guide
`display with said interactive television program guide;
`receiving a user selection to view a second television
`program indicated on said program guide display with said
`interactive television program guide; and
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`directing an output of said first tuner of said first television
`program selected to be recorded to said video recorder and an
`output of said second tuner of said second television program
`selected to be viewed to said display device with said interactive
`television program guide, such that said first television program
`selected to be recorded is recorded by said video recorder at the
`same time that said second television program selected to be
`viewed is displayed by said display device, and wherein a set-top
`box includes two tuners, one each for said video recorder and
`said display device, said two tuners comprising said first tuner
`and said second tuner.
`Id. at 30:56–31:15 (emphases added to disputed limitations).
`
`II. DISCUSSION
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s patent claims, Petitioner
`must demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “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 never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`A 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 of the invention to a
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`person having ordinary skill in the art. 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. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“A determination of whether a patent claim is invalid as obvious under § 103
`requires consideration of all four Graham factors, and it is error to reach a
`conclusion of obviousness until all those factors are considered.” Apple Inc.
`v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc)
`(citations omitted). “This requirement is in recognition of the fact that each
`of the Graham factors helps inform the ultimate obviousness determination.”
`Id.
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`U.S. at 17. “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art at the time of the invention. In re GPAC,
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in
`determining the level of ordinary skill in the art include, but are not limited
`to, the types of problems encountered in the art, the sophistication of the
`technology, and educational level of active workers in the field. Id. In a
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`given case, one or more factors may predominate. Id. Generally, it is easier
`to establish obviousness under a higher level of ordinary skill in the art.
`Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir.
`2011) (“A less sophisticated level of skill generally favors a determination of
`nonobviousness . . . while a higher level of skill favors the reverse.”).
`Petitioner asserts that the field of the invention of the ’595 patent is
`television set-top boxes and interactive program guides. Pet. 11 (citing Ex.
`1001, 1:18–20). Petitioner, relying on the testimony of its declarant, Dr.
`Rhyne, asserts that one of ordinary skill in the art would have had “a
`bachelor’s degree in electrical engineering, computer engineering, or
`computer science, and at least two to three years of experience or familiarity
`with interactive television program guides, television video signal
`processing, graphical user interfaces, and associated computer software.”
`Pet. 11 (citing Ex. 1014 ¶ 25). Petitioner asserts that, alternatively, “a
`person of ordinary skill in this field could have equivalent experience either
`in industry or research, such as designing, developing, evaluating, testing, or
`implementing the techniques listed above.” Id. at 11–12 (citing Ex. 1014
`¶ 25).
`
`Patent Owner does not challenge Petitioner’s proposed definition for
`the level of ordinary skill in the art. See generally PO Resp. Patent Owner’s
`declarant, Dr. Shamos, opines that one of ordinary skill in the art would have
`had “a bachelor’s degree in electrical engineering, computer engineering, or
`computer science, and two to three years of experience relating to electronic
`content delivery, such as experience with design or technical analysis of
`cable or satellite television systems, set-top boxes, multimedia systems or
`electronic program guides, or any equivalent knowledge, training, and/or
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`experience.” Ex. 2009 ¶ 16. Dr. Shamos also states that his proposed
`definition “differs only slightly from Dr. Rhyne’s, and [he does] not consider
`the differences to be material.” Id. ¶ 13.
`We do not ascertain a meaningful difference between the declarant’s
`proposals and the parties do not argue that any issue in the case turns on
`such a difference. We determine that the level of ordinary skill proposed by
`Dr. Rhyne is consistent with the challenged patent and the asserted prior art
`and we therefore adopt that level for the purposes of the analysis below.
`
`C. Claim Construction
`Patent Owner filed a motion under 37 C.F.R. § 42.100(b) requesting
`that a district court-type claim construction be applied to the ’595 patent,
`which the Patent Owner certifies will expire within 18 months of the filing
`of the Petition. Paper 6. Petitioner similarly asserts that the ’595 patent will
`expire within that timeframe and states that “Petitioner assumes that Patent
`Owner will file for Phillips claim construction.” Pet. 10.
`We granted Patent Owner’s request (Inst. Dec. 9–10) and apply a
`district court-type approach to claim construction. Under this approach,
`claim terms “are generally given their ordinary and customary meaning” as
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
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`Petitioner proposes constructions for “interactive television program
`guide” and “set-top box.” Pet. 10–11. Patent Owner does not propose any
`express constructions of claim terms. PO Resp. 11. Patent Owner notes that
`it argues in IPR2017-00867—which involves the same challenged patent
`claims at issue in this proceeding—that Petitioner’s proposed construction of
`“interactive television program guide” “is improperly broad and contrary to
`the intrinsic evidence.” PO Resp. 11. Patent Owner adds that, “for purposes
`of the present proceeding and the specific references at issue herein,
`resolution of this dispute is unnecessary.” Id.
`We determine that no claim terms require express construction in
`order to determine the patentability issues raised in this inter partes review.
`
`D. Asserted Obviousness over Lett and Granger
`Petitioner contends that claims 1–6, 9–14, and 17–22 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Lett and Granger. Pet. 9, 24–44.
`Relying in part on the testimony of Dr. Rhyne, Petitioner explains how the
`references teach or suggest the claim limitations and provides reasoning for
`combining the teachings of the references. Id. at 24–44.
`We have reviewed Petitioner’s and Patent Owner’s arguments and
`evidence of record. For the reasons that follow, we determine that Petitioner
`has shown by a preponderance of the evidence that claims 1–6, 9–14, and
`17–22 are unpatentable under 35 U.S.C. § 103(a) as obvious over Lett and
`Granger.
`
`Summary of Lett
`1.
`Lett is a U.S. patent titled “Method and Apparatus for Providing
`Interactive Electronic Programming Guide.” Ex. 1008, [54]. Lett discloses
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`an electronic programming guide in which a user can select, directly from
`the guide, programs for watching or recording. Id. at Abstract, 1:25–30.
`Figure 2 of Lett, below, illustrates a subscription television system
`that includes an electronic programming guide data provider and a
`subscriber terminal. Id. at 4:27–33.
`
`
`
`As illustrated in Figure 2 above, the subscription television system
`includes electronic programming guide data provider 16, central control
`center 10, headend 12, and subscriber terminal 14 and associated equipment
`(VCR 18 and television 20). Id. Lett discloses that “[a]t the subscriber
`location, subscriber terminal 14 is connected to the subscriber’s video
`equipment, including, for example, a VCR 18 and television 20.” Id. at
`7:14–16. Lett states that “[m]ultiple subscriber terminals 14 may be located
`at a premises with several television receivers 20.” Id. at 7:16–18.
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`Figure 3 of Lett is shown below.
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`
`
`Figure 3 above illustrates “a detailed block diagram of one of the
`subscriber terminals.” Id. at 7:19–21. Lett discloses that “up/down
`converter or tuner 100” receives the television signal from the signal
`distribution system. Id. at 7:21–23. Lett adds that “[m]ore than one tuner
`may be provided (not shown) to provide, for example, picture-in-picture
`services or watch/record modes.” Id. at 7:27–29.
`Lett states that “control processor 128 operates by running a control
`program which preferably is partially stored in a read-only memory internal
`to the processor and partially stored in [a nonvolatile memory], such as Flash
`EPROM memory 134.” Id. at 9:43–46. Lett discloses that “microprocessor
`128 includes additional capacity for other auxiliary device communications
`and control through a data port 140.” Id. at 9:59–61. For example,
`according to Lett, “the data port may accommodate an IR blaster for VCR
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`control via an on-screen menu, an additional subscriber terminal for dual
`tuner operation, or connection to a digital video subscriber terminal.” Id. at
`9:61–65.
`Figure 4A of Lett, below, shows a screen of the electronic
`programming guide. Id. at 11:8–10.
`
`
`The electronic programming guide shown in Figure 4A above
`identifies date and time slots, channels, and the name of a television program
`associated with each time slot and channel. Id. at 11:20–26. Lett discloses
`that a remote control has UP, DOWN, LEFT, and RIGHT keys to move the
`cursor around the electronic programming guide. Id. at 11:42–45. Lett
`discloses that when the cursor is over a feature on a particular channel the
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`user would like to see, the user can actuate a SELECT switch to tune to the
`selected channel. Id. at 12:19–21. Alternatively, according to Lett, “the
`‘SELECT’ switch may drop the user into a menu that allows him to either
`watch the program or record it.” Id. at 12:21–23. Lett discloses that “[i]f
`the watch option is chosen, the channel is tuned,” and that “[i]f the record
`option is chosen, the terminal will program VCR 18 [shown in Figure 2] to
`record the program.” Id. at 12:23–27.
`
`Summary of Granger
`2.
`Granger is a U.S. patent titled “Simplified Set-top Converter for
`Broadband Switched Network.” Ex. 1009, [54]. Granger discloses a set-top
`converter that allows recording and watching any selected channel
`simultaneously. Id. at 5:21–23, 5:35–38. Granger states that, in a
`conventional cable television system, “the recording of one channel while
`another one is watched is not possible if both are scrambled.” Id. at 3:45–
`49. Granger explains that because there is no descrambling function in a
`VCR, it cannot be directly used to record, except with non-scrambled
`channels. Id. at 3:21–25. Granger adds that “[i]f a subscriber wished to
`record one scrambled channel while watching another scrambled channel, a
`second set-up converter is needed[,] leading to a rather complicated
`connection and an excessive cost.” Id. at 3:58–61.
`Figure 4 of Granger, shown below, illustrates a set-top converter
`“having two tuners so as to enable recording and viewing of two channels
`simultaneously.” Id. at 5:1–4.
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`As illustrated in Figure 4 above, the set-top converter includes two
`tuners—tuner 102 and tuner 104. See id. at 5:1–4, 5:35–39. Granger
`discloses that the above embodiment provides “dual selection capability.”
`Id. at 5:21–23.
`Granger also discloses another embodiment in which “one of six fixed
`frequency channels delivered to all subscribers’ premises [is] dedicated, if
`desired, to a VCR so as to permit use with a set-top converter without any
`tuner.” Id. at Figs. 5A, 5B, 5:5–9.
`
`3. Analysis
`a. Reason to combine
`Petitioner provides persuasive evidence for why a skilled artisan
`would have combined the teachings of Lett and Granger in the manner
`claimed (as recited in claims 1–6, 9–14, and 17–22). Pet. 24–29. Lett
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`discloses an interactive program guide for controlling a terminal with a
`single tuner and expressly discloses that the terminal may have two tuners
`for watching and recording programs. Ex. 1008, 2:64–3:2, 7:19–29, 11:8–
`52, 12:19–27. Granger discloses a set-top converter having two tuners for
`simultaneously viewing and recording two different channels. Ex. 1009,
`Fig. 4, 3:1–2, 4:30–33, 7:27–29, 9:1–4. To supplement the teachings of
`Lett, one of ordinary skill in the art would have turned to the teachings of
`Granger—which discloses, in block diagram form, a set-top converter (a
`single terminal) having multiple tuners that output to a television and VCR,
`respectively—to implement Lett’s two-tuner terminal that provides
`simultaneous watch and record modes. Ex. 1014 ¶¶ 164, 167–177; Ex.
`1009, Fig. 4, 5:1–4. An ordinarily skilled artisan would have recognized
`that modifying Lett’s single-tuner terminal to include two tuners as
`expressly contemplated by Lett and taught by Granger would have improved
`the teachings of Lett by enabling a user to simultaneously watch and record
`two different channels. Ex. 1014 ¶ 164; Ex. 1008, 7:27–29; Ex. 1009, Fig.
`4, 5:1–4.
`A person having ordinary skill in the art would have recognized that
`claims 1–6, 9–14, and 17–22 recite subject matter which is nothing more
`than the predictable results of applying Granger’s teachings of a multi-tuner
`set-top converter to Lett’s terminal. Ex. 1014 ¶¶ 164–166. As Dr. Rhyne
`testifies, an ordinarily skilled artisan would have modified Lett’s one-tuner
`terminal to include a second tuner that receives the RF input (see Figure 3 of
`Lett) and supplies a second RF input to a VCR. Id. ¶¶ 171–174. In addition,
`the ordinarily skilled artisan would have configured the second tuner to
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`receive control signals from the multifunction control circuit (104 in Figure
`3) via the terminal’s tuning control (102). Id. ¶¶ 175–176.
`With regard to the claimed subject matter, we note that the challenged
`patent provides little detail regarding the two-tuner embodiment. Figure 2 of
`the ’595 patent illustrates tuning circuitry 72 connected to genlock circuitry
`82, which in turn is connected to VCR 88 and display 84. Ex. 1001, Fig. 2,
`7:43–51. The ’595 patent states, in the context of describing Figure 2, that
`“[t]he invention also contemplates the use of a set-top box (not shown) that
`includes two tuners—one each for the VCR 88 and the display 84.” Id. at
`8:20–23. The ’595 patent does not provide any other description of this two-
`tuner embodiment. For example, the ’595 patent does not describe any
`changes that need to be made to the system—aside from the addition of
`another tuner—“if the viewer wishes to record and view different programs
`at the same time” using two tuners. See id. at Fig. 2, 8:14–22.
`b. Independent claim 1
`i. Limitations of claim 1
`The combination of Lett and Granger teaches a method for controlling
`a first tuner and a second tuner with an interactive television program guide,
`as required by claim 1. Lett discloses a method for controlling a first tuner
`with an interactive television program guide. Ex. 1008, Fig. 4A, 11:8–41.
`Figure 4A of Lett shows a guide that lists television programs. Id. Lett
`discloses that a user can “select programs for watching or recording directly
`from the electronic program guide.” Id. at 3:1–2. Lett discloses that a user
`navigates the guide by moving a cursor around the program listings. Id. at
`11:42–64. Lett also discloses that the user can position the cursor over a
`desired program and select to either watch or record that program. Id. at
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`12:19–27. Lett also discloses that selecting to record a program causes the
`terminal to program a VCR to record the program and tunes to the
`appropriate channel at the appropriate time. Id. at 12:24–27, 14:62–67.
`Specifically, Lett discloses the following:
`When the cursor is over a feature the user would like to see, then
`a “SELECT” switch is actuated and that channel is tuned.
`Alternatively, the “SELECT” switch may drop the user into a
`menu that allows him to either watch the program or record it. If
`the record option is chosen, the terminal will program VCR 18
`to record the program, or at least program itself to turn on and
`tune the proper channel when the program is available.
`Id. at 12:19–27.
`Lett further discloses having a second tuner that likewise can be
`controlled with an interactive television program guide. Lett describes
`Figure 3, which depicts a subscriber terminal, as including “up/down
`converter or tuner 100.” Id. at 7:19–23. In referencing that figure, Lett
`states that “[m]ore than one tuner may be provided (not shown) to provide,
`for example, picture-in-picture services or watch/record modes.” Id. at
`7:27–29. Lett thus discloses a terminal having two tuners, one for a watch
`mode and another for a record mode. Id.; Ex. 1014 ¶¶ 117–121. We find
`that the disclosures in Lett support the following testimony of Dr. Rhyne,
`which we adopt: (i) a person of ordinary skill in the art would have
`understood that the interactive television program guide used to control the
`single-tuner terminal of Lett would have been used to control the two-tuner
`terminal of Lett during the watch/record mode, and (ii) the “watch/record”
`mode disclosed in Lett refers to a mode in which a subscriber views a first
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`television program received via a first tuner of the terminal while
`simultaneously recording a second television program received via a second
`tuner of the terminal. Ex. 1014 ¶¶ 118–121.
`Moreover, the combination of Lett and Granger tea
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