Paper 32
`Trials@uspto.gov
`571-272-7822 Entered: September 7, 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 IPR2017-00939
`Patent 9,172,987 B2
`____________
`
`
`
`Before KARL D. EASTHOM, BARBARA A. BENOIT, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`BENOIT, 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: September 7, 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 IPR2017-00939
`Patent 9,172,987 B2
`____________
`
`
`
`Before KARL D. EASTHOM, BARBARA A. BENOIT, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2017-00939
`Patent 9,172,987 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 1–16 (“the challenged claims”) of U.S. Patent
`No. 9,172,987 B2 (Ex. 1001, “the ’987 patent,” “the challenged patent,” or
`“Lemmons”), 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 reasons discussed
`herein, Petitioner has shown by a preponderance of the evidence that
`claims 1–16 of the ’987 patent are unpatentable.
`
`A. Procedural History
`Petitioner filed two petitions requesting for inter partes review of the
`challenged claims of the ’987 patent. IPR2017-00939 Paper 2 (“Pet.”);
`IPR2017-00941, Paper 2. Patent Owner filed a Preliminary Response in this
`proceeding. Paper 7. On September 11, 2017, after considering the
`information presented in the Petition and the Preliminary Response, we
`instituted an inter partes review of the challenged claims on all grounds
`asserted by Petitioner. Paper 11 (“Institution Decision” or “Dec.”). After
`institution, Patent Owner filed a Patent Owner Response, Paper 18 (“PO
`Resp.”), and Petitioner filed a Reply to the Patent Owner Response, Paper 21
`(“Reply”). A consolidated hearing for this proceeding and certain issues of
`IPR2017-00941 was held on June 6, 2018. A transcript of the consolidated
`hearing has been entered into the record.1 Paper 31 (“Tr.”).
`
`1 Patent Owner objects to two of Petitioner’s demonstrative slides as
`impermissibly presenting new arguments. Paper 30. We have not relied on
`the objected-to slides in this decision and dismiss those objections as moot.
`2
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`IPR2017-00939
`Patent 9,172,987 B2
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`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 Corp., 1:16-cv-09278 (S.D.N.Y.) (“the -09278 S.D.N.Y. action”)
`and (2) Comcast Corp. v. Rovi Corp., 1:16-cv-03852 (S.D.N.Y.). Pet. 2;
`Paper 5, 1; see 37 C.F.R. § 42.8(b)(2). Claims 1–16 of the ’987 patent also
`are at issue in IPR2017-00941, which was filed the same day as the Petition
`in this proceeding (March 1, 2017). Paper 4 (Notice of Filing Date
`Accorded); IPR2017-00941 Paper 4 (Notice of Filing Date Accorded to
`IPR2017-00941). An inter partes review was instituted in that proceeding
`as well. This Decision is issued concurrently with a Final Written Decision
`in IPR2017-00941. The parties also identify a pending application that
`claims, among others, the benefit of the filing date of the application
`resulting in the challenged patent. Pet. 2; Paper 5, 2–3.
`
`C. The ’987 Patent
`The ’987 patent is titled “Methods and Systems for Updating
`Functionality of a Set-top Box Using Markup Language.” Ex. 1001, [54].
`The patent describes techniques that relate to “interactive television program
`guide systems which provide for the flexible modification of program guide
`user screen layouts and program guide functionality.” Id. at 1:22–25.
`
`1. The Written Description
`The ’987 patent describes as background that cable, satellite, and
`broadcast television systems provide viewers with a large number of
`television channels and that electronic television program guides allow
`television program information to be displayed on a user’s television. Id. at
`1:26–33 (Background of the Invention). Such guides allow a viewer to
`
`3
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`IPR2017-00939
`Patent 9,172,987 B2
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`navigate through television program listings using a remote control. Id. at
`1:34–35 (Background of the Invention). One problem with such program
`guides is that “user screens (e.g., screens containing program listings) and
`program guide functionality” cannot be changed “without downloading an
`entire new program guide application.” Id. at 1:40–44 (Background of the
`Invention).
`The challenged patent indicates that “it would be desirable if a
`markup language could be used to provide for the downloading display
`characteristics of user screens and program guide functionality as plug-ins
`anytime, without modifying the code of the application.” Id. at 1:45–49.
`Accordingly, “an object of the present invention [is] to provide an
`interactive television program guide that arranges program guide display
`elements using a markup language.” Id. at 1:50–52. The patent also
`identifies another object of the invention as “to provide an interactive
`television program guide that may be updated by downloading markup
`language documents without user intervention.” Id. at 1:56–59. To address
`these issues, the ’987 patent describes “provid[ing] an interactive program
`guide system that has program guide display screen look and functionality
`assigned updated [sic] using markup language documents.” Id. at 1:63–67.
`Figure 1 of the ’987 patent, below, illustrates a system that distributes
`program guide data to a program guide on user television equipment. Id. at
`4:8–12; see id. at 3:14–15 (indicating the system illustrated in Figure 1 is “in
`accordance with the present invention”).
`
`4
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`IPR2017-00939
`Patent 9,172,987 B2
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`
`As illustrated in Figure 1 above, system 10 shows “[m]ain facility 12
`provid[ing] data from program guide data source 14 to television distribution
`facility 16 via communications link 18.” Id. at 3:15–17. Television
`distribution facility 16, for example, may be a cable system headend, a
`broadcast distribution facility, or a satellite television distribution facility.
`Id. at 3:26–29. Television distribution facility 16 receives and further
`distributes to user television equipment 22 television program listings,
`additional data (such as weather information, “associated Internet web
`links,” and computer software), and markup language documents “for
`updating the display screen layouts and functionality of a program guide
`without user intervention.” Id. at 3:30–41. Examples of markup language
`documents are “Hypertext Markup Language (HTML), Dynamic HyperText
`
`5
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`IPR2017-00939
`Patent 9,172,987 B2
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`Markup Language (DHTML), or Extensible Markup Language (XML)
`documents.” Id. at 3:37–39. As the patent explains, “[t]he program guide is
`programmed to interpret the markup language documents and generate the
`display screens and provide program guide functionality according to the
`documents.” Id. at 3:47–51.
`Figure 2 of the challenged patent, below, depicts an illustrative
`arrangement for user television equipment 22 (shown in Figure 1). Id. at
`4:24–25.
`
`
`As illustrated in Figure 2 above, user television equipment 22 receives
`video and data from television distribution facility 16 (shown in Figure 1) as
`input 26. Id. at 4:24–27. “During normal television viewing, the user tunes
`set-top box 28 to a desired television channel. The signal for that television
`
`6
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`IPR2017-00939
`Patent 9,172,987 B2
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`channel is then provided [sic: as] video output 30.” Id. at 4:27–30. “During
`normal television viewing, the video signals provided to television 36
`correspond to the desired channel to which the user has tuned with set-top
`box 28.” Id. at 5:23–25.
`User television equipment includes optional equipment with which a
`user can record programs—(i) optional secondary storage device 32 that
`“may be, for example, a videocassette recorder or a DVD player with the
`ability to record” and (ii) optional digital storage device 31. Id. at 4:35–45,
`4:60–61, 5:3–12. “Television 36 receives video signals from secondary
`storage device 32 via communications path 38. The video signals on
`communications path 38 [i] may either be generated by secondary storage
`device 32 when playing back a prerecorded storage medium (e.g., a
`videocassette or a recordable digital video disc), [or] by digital storage
`device 31 when playing back a prerecorded digital medium, [ii] may be
`passed through from set-top box 28, [iii] may be provided directly to
`television 36 from set-top box 28 if secondary storage device 32 is not
`included in user television equipment 22, or [iv] may be received directly by
`television 36.” Id. at 5:13–23.
`User television equipment 22, shown in Figure 2, also includes remote
`control 40 that may be used to control set-top box 28, secondary storage
`device 32, and television 36. Id. at 4:47–48. The patent indicates that
`program guide functionality “may be integrated into an advanced television
`receiver, personal computer television (PC/TV), or any other suitable
`arrangement.” Id. at 5:40–52.
` “When a user indicates a desire to view television programming
`information (e.g., by using a ‘guide’ key on remote control 40), the program
`
`7
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`IPR2017-00939
`Patent 9,172,987 B2
`
`guide generates an appropriate program guide display screen, such as a
`program listings screen, for display on monitor 45.” Id. at 5:66–6:3. “The
`program listings screen may be overlaid over a program being viewed by the
`user or overlaid over a portion of the program in a ‘browse’ mode.” Id.
`at 6:7–10.
`Figure 10 of the patent, below, “illustrates steps involved in assigning
`and selecting program guide functionality” based on markup language
`documents. Id. at 10:36–37.
`
`
`Figure 10 depicts four general steps: supply markup language
`documents (step 500), interpret the markup language documents (step 510),
`select program guide functionality (step 520), and perform program guide
`functions (step 530). Id. at 10:46–53.
`
`8
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`IPR2017-00939
`Patent 9,172,987 B2
`
`2. Illustrative Claim
`Among the challenged claims (claims 1–16), claims 1 and 9 are
`independent. Claim 1 is illustrative of the subject matter of the challenged
`claims and reads as follows:
`1. A method comprising:
`generating for display, with a set-top box, a display item
`having a first program function, wherein the first program
`function is based on a non-markup language, and the first
`program function is preprogrammed on the set-top box;
`receiving, with the set-top box, a markup language
`document, from a remote source;
`interpreting the markup language document, with the set-
`top box, to determine that the markup language document assigns
`a second program function to the display item;
`updating the set-top box based on the markup language
`document such that the display item has the second program
`function; and
`generating for display, with the set-top box, the display
`item having the second program function.
`Ex. 1001, 10:60–11:9.
`
`D. Instituted Grounds of Unpatentability
`We instituted inter partes review on whether the challenged claims
`were unpatentable under 35 U.S.C. § 1032 on the following particular
`grounds:
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of § 103 in this decision.
`9
`
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`IPR2017-00939
`Patent 9,172,987 B2
`
`References
`Wugofski3 and Ladd4
`Wugofski, Ladd, and Davis5
`Wugofski and Straub6
`Wugofski, Straub, and Davis
`Dec. 39–40.
`
`Challenged Claims
`1–3, 7–11, 15, 16
`4–7, 12–15
`1–3, 7–11, 15, 16
`4–7, 12–15
`
`II. DISCUSSION
`
`A. Principles of Law Concerning Demonstrating Unpatentability
`To prevail in challenging Patent Owner’s 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,
`
`
`3 U.S. Patent No. 6,201,538 B1, filed Jan. 5, 1998, issued Mar. 13, 2001
`(Ex. 1002, “Wugofski”).
`4 Eric Ladd and Jim O’Donnell. Using HTML 3.2. Java 1.1 and CGI
`(Platinum Edition). Que Corporation. 1996. (Ex. 1003 (selected pages),
`“Ladd”).
`5 U.S. Patent No. 5,822,123, filed June 24, 1996, issued Oct. 13, 1998
`(Ex. 1004, “Davis”).
`6 U.S. Patent No. 5,905,492, filed Dec. 6, 1996, issued May 18, 1999
`(Ex. 1005, “Straub”).
`
`10
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`IPR2017-00939
`Patent 9,172,987 B2
`
`1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
`review). Furthermore, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Petitioner asserts that certain claims of the challenged patents are
`unpatentable under 35 U.S.C. § 103(a) as obvious over various combinations
`of references. 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 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). Consideration of the Graham factors “helps inform
`the ultimate obviousness determination.” Apple v. Samsung Elecs. Co., 839
`F.3d 1034, 1048 (Fed. Cir. 2016) (en banc).
`We note that Patent Owner did not put forth evidence of objective
`indicia of nonobviousness. Thus, the question of obviousness here involves
`three factual determinations: (1) the scope and content of prior art;
`(2) differences between prior art and claims; and (3) the level of ordinary
`skill in the art.
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the pertinent art at the
`time of the invention, various factors may be considered, including the
`
`11
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`IPR2017-00939
`Patent 9,172,987 B2
`
`“types of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovation are made; the sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and
`citation omitted). 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.”).
`In our Institution Decision, after noting that Patent Owner did not
`propose in its Preliminary Response an alternative level of ordinary skill, we
`adopted Petitioner’s proposed level of ordinary skill in the art based on the
`testimony of Petitioner’s Declarant, Andrew B. Lippman, Ph.D. Dec. 11–
`12. Post-institution, neither party further addresses the proper level of
`ordinary skill in the art. See PO Resp., Reply. Both parties, however, did
`agree that there was no dispute regarding the level of ordinary skill in the art.
`Tr. 31:2–18, 68:15–19.
`For purposes of this Decision, we continue to apply the level of
`ordinary skill in the art, as proposed by Petitioner through its Declarant, and
`find that one of ordinary skill in the art would have had
`at least a bachelor’s degree in electrical engineering, computer
`engineering, computer science, or a similar discipline, and at
`least two years of experience or familiarity with computer user
`interfaces, such as [interactive program guides] and [electronic
`program guides]7 on [set-top boxes], or would have had
`equivalent experience either in industry or research, such as
`
`7 Pet. 18 (indicating “IPGs” refers to interactive program guides and “EPGs”
`refers to electronic program guides).
`
`12
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`IPR2017-00939
`Patent 9,172,987 B2
`
`designing, developing, evaluating, testing, or implementing the
`aforementioned technologies.
`Dec. 11–12 (quoting 1006 ¶ 19). We find this level of ordinary skill to be
`consistent with the level of ordinary skill in the art at the time of the
`invention as reflected in the prior art.
`
`C. Claim Construction
`Petitioner contends, in its Petition, that the challenged patent will
`expire January 8, 2019, which is after the deadline of issuing a final written
`decision in this proceeding. Pet. 12. Petitioner, therefore, contends that the
`broadest reasonable construction, in light of the specification, should be
`applied to claim terms in this proceeding. Id. (citing 37 C.F.R. § 42.100(b)).
`Petitioner’s contentions are based on “the earliest non-provisional priority
`date (January 8, 1999)” claimed by the challenged patent. Id. n.1; but see
`Ex. 1001, 1:8–16 (claiming the benefit of the filing date (July 7, 1998) of a
`provisional application).8
`Patent Owner has not asserted that the challenged patent would expire
`within eighteen months after the Petition was filed in this proceeding. See
`PO Resp. 8–9 (discussing claim construction standard to be applied). In our
`Institution Decision, we noted that Patent Owner had not filed, during the
`permitted time period, a motion under 37 C.F.R. § 42.100(b) requesting that
`a district court-type claim construction be applied to the challenged patent.
`Dec. 13. We further indicated that Patent Owner, in its Preliminary
`Response, acknowledged that a claim in an unexpired patent shall be given
`
`
`8 In IPR2017-00941, Petitioner contends that the claims of the ’987 patent
`are not supported by the provisional application. IPR2017-00941, Paper 2
`(“Petition”) 19–20.
`
`13
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`IPR2017-00939
`Patent 9,172,987 B2
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`its broadest reasonable construction in light of the specification of the patent
`in which it appears. Id. (citing Prelim. Resp. 9–10). On this basis, we
`concluded that Patent Owner accepted, for purposes of determining whether
`to institute, of using the broadest reasonable construction. Id. Similarly,
`Patent Owner, in its Patent Owner’s Response, proposes use of the broadest
`reasonable construction and does not contest its applicability to this
`proceeding. PO Resp. 8–9.
`Thus, we interpret claim terms in the challenged patent according to
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`broadest reasonable construction standard in inter partes review).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In addition, the broadest reasonable
`construction of a claim term cannot be so broad that the construction is
`unreasonable under general claim construction principles. Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other
`grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
`banc) (“A construction that is unreasonably broad and which does not
`
`14
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`IPR2017-00939
`Patent 9,172,987 B2
`
`reasonably reflect the plain language and disclosure will not pass muster.”
`(internal quotation marks and citation omitted)).
`Petitioner proposes constructions for “set-top box”; “markup
`language” and “non-markup language”; “display item”; “having/has a/the
`first/second program function”; “preprogrammed on the set-top box”; and
`“updating/update the set-top box.” Pet. 12–17. Patent Owner does not
`directly challenge Petitioner’s proposed constructions and contends that no
`express constructions are necessary. PO Resp. 99 (citing Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (quoting “only
`those terms need to be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”)); see also Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs. in the context of an inter partes review).
`In the Institution Decision, we determined that no claim term required
`express construction to determine whether to institute an inter partes review.
`Dec. 14–15. To the extent it is necessary for us to construe any claim terms
`in this decision, we do so below in the context of analyzing whether the prior
`art renders the claims unpatentable.
`
`D. Weight Given to Expert Testimony
`Petitioner contends that the testimony concerning how one of ordinary
`skill in the art would have understood the references and whether one of
`ordinary skill in the art would have found the claimed invention obvious,
`
`
`9 Patent Owner contends, however, that IPR2017-00941 requires
`construction of the term “[having/has] [a/the] [first/second] program
`function” and proposes a construction for that term in its Patent Owner
`Response in IPR2017-00941. PO Resp. 9 n.4.
`15
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`which was provided by Patent Owner’s expert, Brian Von Herzen, Ph.D.,
`should be given little weight.10 Reply 26; see id. at 24–26. Petitioner
`contends that Dr. Von Herzen does not have set-top box industry experience,
`never designed or worked on the development of a set-top box, and never
`designed or worked on interfaces for set-top boxes. Reply 25 (citing
`Ex. 2007 ¶¶ 3–11; Ex. 1027, 9:2–4, 10:2–5). Petitioner also unfavorably
`contrasts Dr. Von Herzen’s experience with the experience of Petitioner’s
`expert, Dr. Lippman. Reply 25 (citing Ex. 1006 ¶¶ 5–11; Ex. 1026 ¶¶ 1–
`1111).
`Dr. Von Herzen’s curriculum vitae does not mention specific
`experience regarding set-top boxes, nor does he testify that he has
`experience directly with set-top boxes. See Ex. 2007 ¶¶ 3–11; Ex. 2007, 60–
`65 (Exhibit 1); Ex. 1027, 8:8–11:14. Dr. Von Herzen, however, testifies that
`he has “developed electronics for video and audio devices” and has
`“designed and developed video and audio hardware for input and output of
`video and audio communications” similar to “the processing that occurs on a
`set-top box.” Ex. 1027, 8:19–21, 8:25–9:11. In addition, some of Dr. Von
`Herzen’s work included developing user interfaces for “audio/video
`devices” that were similar to program guides for a set-top box. Ex. 1027,
`10:2–11:14. Moreover, he testified that he was “familiar with the
`
`
`10 We note in passing that Patent Owner did not request a sur-reply or other
`opportunity to respond to Petitioner’s arguments regarding Dr. Von
`Herzen’s lack of experience with set-top boxes.
`11 Although Petitioner cites to Dr. Lippman’s Reply Declaration (i.e.,
`Ex. 1026 ¶¶ 1–11), the cited portions do not include information about
`Dr. Lippman’s professional background or experience.
`16
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`architecture and processing required for the user interface topics at issue in
`this” inter partes review. Ex. 2007 ¶ 11.
`After reviewing Dr. Von Herzen’s experience (Ex. 2007 ¶¶ 3–11;
`Ex. 2007, 60–65 (Exhibit 1); Ex. 1027, 8:8–11:14), we find sufficient
`experience with technology related to set-top boxes. Accordingly, we
`determine that the scientific, technical and other specialized knowledge and
`experience of Dr. Von Herzen can help us as the trier of fact to understand,
`particularly, how one of ordinary skill in the art would have understood the
`references and determine reasons why one of ordinary skill in the art would
`have or would not have combined the references in the manner proposed by
`Petitioner. See Federal Rules of Evidence, Rule 702.
`Moreover, we weigh the particular testimony regarding each
`particular issue on which Dr. Von Herzen or Dr. Lippman opines based on
`the factual corroboration, articulated reasoning, and disclosure of underlying
`facts or data provided by the expert. See In re Acad. of Sci. Tech Ctr., 367
`F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
`declarations and conclude that the lack of factual corroboration warrants
`discounting the opinions expressed in the declarations.”); see also 37 C.F.R.
`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”); cf. In
`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
`(Petitioner’s burden of proving obviousness cannot be satisfied by mere
`conclusory statements).
`
`E. Disclosures of the Prior Art References
`We make the following findings of fact concerning the disclosures of
`the prior art references asserted by Petitioner.
`
`17
`
`
`
`IPR2017-00939
`Patent 9,172,987 B2
`
`1. Wugofski
`Wugofski is a U.S. patent titled “Controlling the Layout of Graphics
`in a Television Environment.” Ex. 1002, [54]. Wugofski discloses
`controlling the layout of graphic overlays in a “television convergence
`environment” of a computer. Id. at Abstract, 1:16–18, 3:42–53. According
`to Wugofski, a television convergence environment of a computer is “known
`in the art” to provide “capability beyond ordinary [personal computer12]
`operation,” and may include “television capability . . . as part of [a]
`convergence environment.” Id. at 3:43–53.
`Wugofski’s techniques are intended to address the problem of set-top
`box manufacturers providing set-top box functions that display information
`without regard to covering up information displayed by a television
`broadcaster. Id. at 1:31–55. Wugofski describes the particular problem that
`displaying an electronic program guide provided by a set-top box
`manufacturer is “very likely to . . . cover up” a television broadcaster’s logo
`or call letters “if displayed at the same time a user is operating the electronic
`program guide.” Id. at 1:41–47. To address this problem, Wugofski
`describes using “hypertext markup language (HTML) . . . to layout graphical
`user interface components and manage behaviors of displayed graphics in
`the television environment.” Id. at 2:43–46; see id. at 7:18–21.
`Figure 1 of Wugofski, below, illustrates a computer that provides a
`convergence environment having television capability. Id. at 3:38–46.
`
`
`12 Ex. 1002, 2:32–33 (indicating “PC” refers to “a personal computer”).
`18
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`IPR2017-00939
`Patent 9,172,987 B2
`
`
`As illustrated in Figure 1 above, computer 110 “is operatively coupled
`to monitor 112, pointing device 114, and keyboard 116.” Id. at 3:40–43.
`Wugofski discloses that computer 110 includes “a TV tuner and/or cable
`decoder” that provides “a television viewing capability.” Id. at 4:6–7.
`“Computer 110 also has at least one hypertext-markup-language (HTML)
`operating environment,” which may be an Internet browser, “such as
`Netscape Navigator or Microsoft Internet Explorer.” Id. at 4:47–54.
`Wugofski illustrates, in Figures 3A–3C and 4A–4B (among others),
`example HTML pseudocode that controls the layout of graphics for display
`in a television environment and associated displays. Id. at 7:18–21.
`Figures 3A, 3B, and 3C of Wugofski are set forth below.
`
`19
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`
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`IPR2017-00939
`Patent 9,172,987 B2
`
`
`As illustrated in Figures 3A–3C, “a graphics layout language, such as
`HTML” (shown in Figure 3C) is defined by a television broadcaster “to
`control the layout of the overlays in relation to the [television video] image
`presented on screen 1” (shown in Figures 3A–3B). Id. at 5:56–61.
`“Examples of overlays include a channel banner, which displays the current
`channel which is being tuned to, and a favorites list, which displays a list of
`favorite channels.” Id. at 5:49–52.
`More particularly, Figures 3A–3C illustrate “HTML-pseudocode 4
`used to control the display of the XYZ logo 2 when displayed on screen 1.”
`Id. at 5:62–63. “When the user tunes the XYZ channel, XYZ logo 2 appears
`
`20
`
`
`
`IPR2017-00939
`Patent 9,172,987 B2
`
`for several seconds in FIG. 3(a) before disappearing 3 in FIG. 3(b). This
`behavior is defined by HTML-pseudocode 4, as illustrated in FIG. 3(c).” Id.
`at 5:64–67.
`Wugofski further discloses, as shown in the HTML-pseudocode in
`Figure 3C, that
`HTML-pseudocode 4 illustrates TV object 5 that contains
`several attributes: object 6 and two behaviors 7, 8 for object 6.
`First behavior 7 states that if the user selects the ‘display
`button’ on pointing device 114 [shown in Figure 1 discussed
`above], the ‘XYZBanner’ HTML document is displayed.
`Second behavior 8 states that if the user selects the ‘menu
`button’ on pointing device 114, the ‘XYZMenu’ HTML
`document is displayed.
`Id. at 6:1–7.
`Wugofski indicates that “[s]econd object 9 [in the HTML-pseudocode
`shown in Figure 3C] describes the XYZLogo that appears temporarily when
`the channel is selected. First parameter 11 describes the rate at which logo 2
`spins. Second parameter 12 describes how long logo 2 is displayed before
`disappearing.” Id. at 6:8–12.
`Wugofski presents another example depicted in Figures 4A and 4B.
`Figures 4A and 4B of Wugofski are set forth below.
`
`21
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`IPR2017-00939
`Patent 9,172,987 B2
`
`
`As illustrated in Figures 4A and 4B, HTML-pseudocode 16 (shown in
`Figure 4B) displays a channel banner 15 that partially covers television
`video shown on the screen illustrated in Figure 4A. Id. at 6:13–16.
`Wugofski explains that “[i]f the user selects the ‘display button’ on pointing
`device 114, the screen illustrated in FIG. 4(a) appears. FIG. 4(b) illustrates
`
`22
`
`
`
`IPR2017-00939
`Patent 9,172,987 B2
`
`HTML-pseudocode 16 providing channel banner 15 that partially covers
`television video 14.” Id.
`More particularly, Wugofski indicates the following:
`The sample HTML-pseudocode 16 in FIG. 4(b) describes a
`screen that includes TV object 17 and banner object 21. TV
`object 17 displays XYZ channel video 18 at full screen and has
`two behaviors. First behavior 19 states that if the user selects the
`‘display button’ on pointing device 114, the ‘XYZChannel’
`HTML document is redisplayed, thus hiding banner 15. Second
`behavior 20 states that if the user selects the ‘menu button’ on
`pointing device 114, the ‘XYZMenu’ HTML document is
`displayed.
`Id. at 6:27–35.
`According to Wugofski,
`[s]econd object 21 describes XYZ Banner object 22 that appears
`temporarily at the top of the screen. First parameter 23 identifies
`the current program, which may be stored in an electronic
`program guide (EPG) database. Second parameter 24 [in
`Figure 4B] describes how long banner 15 is displayed before
`transitioning back to the channel.
`Id. at 6:36–42.
`Wugofski indicates that “the broadcaster can define . . . how
`banner 15 is to b
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