Paper 70
`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 IPR2017-00941
`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 IPR2017-00941
`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
`
`
`
`
`
`
`
`
`
`IPR2017-00941
`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. 1101, “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 not 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. IPR2017-00941, Paper 2 (“Pet.”);
`IPR2017-00939, Paper 2. Patent Owner filed a Preliminary Response in this
`proceeding. Paper 7.
`On September 11, 2017, we instituted an inter partes review on
`challenged claims 1–3, 8–10, and 16 on the following asserted grounds:
`(i) claims 1–3, 8–10, and 16 of the ’987 patent on the ground of obviousness
`over Kamada1 and Pedrizetti2 and (ii) claims 1–3, 8–10, and 16 of the ’987
`patent on the ground of obviousness over Kamada and Wang.3 Paper 11
`(“Dec.”), 39. After institution, Patent Owner filed a Patent Owner Response
`(Paper 18; “PO Resp.”), to which Petitioner filed a Reply (Paper 23,
`“Reply”). On June 6, 2018, a consolidated hearing for IPR2017-00939 and
`
`
`1 U.S. Patent No. 6,772,394 B1 (Ex. 1108).
`2 U.S. Patent No. 6,151,708 (Ex. 1111).
`3 U.S. Patent No. 6,675,385 B1 (Ex. 1109).
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`this proceeding for issues related to the grounds instituted on
`September 11, 2017.4 Paper 54 (“Tr.”).
`On May 2, 2018,5 we issued an order modifying our Institution
`Decision to include two additional grounds, consistent with Guidance on the
`Implication of SAS on AIA Trial Proceedings.6 Paper 32, 2–3; see SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348 (2018). Specifically, we modified our
`Institution Decision to include the asserted grounds that (i) the subject matter
`of claims 1–5, 7–13, 15, and 16 would have been obvious over Gerba7 and
`Straub8 and (ii) the subject matter of claims 6 and 14 would have been
`obvious over Gerba, Straub, and Davis.9
`On May 24, 2018, we issued an order modifying our institution
`decision to include (i) Petitioner’s challenge that the subject matter of
`dependent claim 11 would have been obvious over Kamada and Pedrizetti
`(Pet. 31–32) and (ii) Petitioner’s challenge that the subject matter of
`dependent claims 5–7, 11, and 13–15 would have been obvious over
`Kamada and Wang (Pet. 40–52). Paper 38.
`Patent Owner filed a Supplemental Patent Owner Response (Paper 61;
`“Supp. PO Resp.”), to which Petitioner filed a Supplemental Reply
`
`4 Patent Owner objects to two of Petitioner’s demonstrative slides as
`impermissibly presenting new arguments. Paper 44. We have not relied on
`the objected-to slides filed in advance of the June 6, 2018 hearing in this
`decision and dismiss those objections as moot.
`5 Paper 32, as reflected by PTAB E2E filing date, was entered on May 2,
`2018. The date of May 5, 2018 on the paper itself is an error.
`6 Available on line at https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`7 U.S. Patent No. 6,445,398 B1 (Ex. 1104).
`8 U.S. Patent No. 5,905,492 (Ex. 1103).
`9 U.S. Patent No. 5,822,123 (Ex. 1102).
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`(Paper 55, “Supp. Reply”). In addition, Patent Owner filed a Motion to
`Exclude (Paper 60, “Mot.”), to which Petitioner filed an Opposition
`(Paper 63, “Opp.”). In turn, Patent Owner filed a Reply to Patent Owner’s
`opposition. In addition, Patent Owner filed observations on supplemental
`cross-examination (Paper 59), to which Petitioner filed a response
`(Paper 65). An oral argument for these challenges was held on
`August 23, 2018. Paper 69 (“Supp. 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 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 IPR2017-00939, which was filed the same day as the Petition
`in this proceeding (March 1, 2017). Paper 4 (Notice of Filing Date
`Accorded); IPR2017-00939 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 IPR2017-00939. 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. 1101, [54].
`The patent describes techniques that relate to “interactive television program
`
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`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
`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
`
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`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”).
`
`
`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
`
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`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
`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.
`
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`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
`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
`
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`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
`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.
`
`
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`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.
`
`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. 1101, 10:60–11:9.
`
`10
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`D. Instituted Grounds of Unpatentability
`We instituted inter partes review on whether the challenged claims
`were unpatentable under 35 U.S.C. § 10310 on the following particular
`grounds:
`
`References
`Kamada and Pedrizetti
`Kamada and Wang
`Gerba and Straub
`Gerba, Straub, and Davis
`Dec. 39; Papers 32, 38.
`
`Challenged Claims
`1–3, 8–11, and 16
`1–3, 5–11, and 12–16
`1–5, 7–13, 15, and 16
`6 and 14
`
`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.
`
`
`10 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.
`11
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`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). 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.
`
`12
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`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
`“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. 13–
`14. 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
`
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`program guides]11 on [set-top boxes], or would have had
`equivalent experience either in industry or research, such as
`designing, developing, evaluating, testing, or implementing the
`aforementioned technologies.
`Dec. 11–12 (quoting 1105 ¶ 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
`1. Claim Construction Standard
`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. 11. 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)).
`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. 14–15. We further indicated that Patent Owner, in its Preliminary
`Response, acknowledged that a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. Id. (citing Prelim. Resp. 7–8). On this basis, we
`concluded that Patent Owner accepted, for purposes of determining whether
`
`11 Pet. 17 (indicating “IPGs” refers to interactive program guides and
`“EPGs” refers to electronic program guides).
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`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. 7–8.
`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
`reasonably reflect the plain language and disclosure will not pass muster.”
`(internal quotation marks and citation omitted)).
`
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`2. Claim Terms
`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 contests
`Petitioner’s proposed construction for “having/has a/the first/second
`program function” and contends that no express constructions are necessary
`for other terms. PO Resp. 8–17 (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 for purposes of
`determining whether to institute an inter partes review, we did not agree that
`the claimed “program function” was limited to a function of a program
`guide, noting the claim language of “program function” and the removal of
`claim references to program guide functionality during examination of the
`application that issues as the challenged patent. Dec. 16–18. For purposes
`of this decision, however, we need not expressly construe any claim terms.
`
`D. Asserted Obviousness over Kamada and Other References
`Petitioner asserts that claims 1–3, 8–11, and 16 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Kamada and Pedrizetti (Pet. 21–31) and
`claims 1–3, 5–11, and 13–16 as obvious over Kamada and Wang (Pet. 31–
`53). Petitioner asserts the references are prior art to all the challenged
`claims, which Patent Owner does not dispute. See, e.g., Pet. 21 (asserting
`
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`Kamada is prior art), 22 (asserting Pedrizetti is prior art), 33 (asserting Wang
`is prior art 29–30), 53–54 (asserting Gerba is prior art), 56 (asserting Straub
`is prior art), 75 (asserting Davis is prior art); see generally PO Resp.
`Relying in part on the declaration testimony of Dr. Lippman,
`Petitioner asserts how the references purportedly teach or suggest the claim
`limitations and provides purported reasoning for combining the teaching of
`the references. Pet. 21–53 (citing Ex. 1105). Patent Owner opposes, relying
`in part on declaration testimony of Dr. Von Herzen. PO Resp. 24–40 (citing
`Ex. 2107).
`We have reviewed Petitioner’s and Patent Owner’s arguments and
`evidence of record. For the reasons that follow, we determine that Petitioner
`has not shown by a preponderance of the evidence that the subject matter of
`claims 1–3, 8–11, and 16 would have been obvious over Kamada and
`Pedrizetti or that the subject matter of claims 1–3, 5–11, and 13–16 would
`have been obvious over Kamada and Wang.
`
`1. Summary of Prior Art Disclosures
`We make the following findings of fact concerning the disclosures of
`the prior art references asserted by Petitioner.
`
`a. Summary of Kamada
`Kamada is a U.S. patent titled “Internet Television Device Capable of
`Selecting Hot Spots by the Use Operation Buttons.” Ex. 1108, [54].
`Kamada generally relates to “an Internet television device”—a television set
`with the capability of connecting to the Internet. Id. at 1:8–10. Kamada
`discloses techniques for correlating operation buttons of a remote controller
`of an Internet television device with selectable items on a home-page of the
`Internet. Id. at 1:8–14. Kamada’s correlation of operation buttons of the
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`remote controller with selectable items (called “hot spots”) on an Internet
`home-page allows a user to select an item on a web page using the remote
`controller of the Internet television device. Id.
`Kamada’s techniques are intended to address the problem of Internet
`access requiring a personal computer, “at least a minimum of computer-
`related knowledge,” and a keyboard. Id. at 1:16–23, 49–57. Additionally,
`Kamada techniques are intended to be “capable of assigning operation
`buttons to hot spots respectively in an HTML document on a display
`screen.” Id. at 1:62–65.
`Figure 6 of Kamada, below, illustrates an Internet television device.
`Id. at 3:4–6.
`
`
`As illustrated in Figure 6 above, “external Internet unit 1 is provided
`on a common TV set 5.” Id. at 3:36–37. Internet unit 1 “includes a modular
`jack 7 which accepts a telephone line 2” and “is connected with the TV set 5
`via video and audio lines.” Id. at 3:38–42. Internet unit 1 also includes “IR
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`light receiver 32 . . . for receiving a signal sent from a light emitter of a
`separate remote controller 30.” Id. at 3:44–46.
`When Kamada’s Internet television device is powered on, the device
`activates a startup program that causes display of an initial menu screen. Id.
`at 7:21–27. Kamada illustrates, in Figure 9, an example of an initial menu
`screen. Figure 9 is set forth below.
`
`
`
`
`As illustrated in Figure 9, initial menu screen 5 includes cursor 19
`initially located on hot spot “1. DIALING.” Id. at 7:25–30. If the user
`presses the select button of the remote controller, the dialing program is
`activated, which establishes a connection between the Internet telephone
`device and the Internet provider. Id. at 7:29–48; see id. at 3:14–15 (“FIG. 9
`shows an example of an initial menu screen of the Internet television device
`of the invention.”). The user may use the remote controller to select other
`hot spots. Id. at 7:49–58. One such example is the hot spot “2.
`NAVIGATOR” (shown in Figure 9), which causes a navigator program to
`be activated so that “an initial home-page screen” appears on the display. Id.
`The initial home-page screen, for example, may include hot spots for “ART
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`MUSEUM,” “TRAFFIC,” and “HOTEL” that may be selected using the
`remote controller. Id. at 7:59–8:16 (also describing using a remote
`controller to select the hot spot HOTEL to display hotel information on
`another home-page).
`Kamada uses “a button assignment table” to correlate hot spots with
`remote control buttons. Id. at 6:37–59. Information that associates hot spots
`to remote controller buttons “is preset in an HTML document as button
`assignment definition information.” Id. at 6:37–40. A button-assigning
`program decodes the button assignment definition information in the HTML
`in the home-page and “dynamically creates a button assignment table.” Id.
`at 6:54–57. According to Kamada, this allows “the matching relationship
`between the hot spots and the associated operation buttons [to] change
`home-page by home-page.” Id. at 6:57–59.
`
`b. Summary of Pedrizetti
` Pedrizetti is a U.S. patent that describes techniques for updating a
`computer from a server computer. Ex. 1111, Abstract. Pedrizetti describes
`an example in which “the upgrade process has been incorporated into an
`upgrade ‘wizard,’” which, in turn, has been “incorporated into a browser for
`easier viewing by a user.” Id. at 8:52–57. Pedrizetti further notes that the
`browser incorporating the wizard “may be integrated with the operating
`system.” Id. at 8:57–58. Pedrizetti explains that the particular operating
`system used by the computer being upgraded may be Microsoft Windows,
`among others, and notes that “Microsoft Internet Explorer 4 (IE4)” may be
`used to implement its techniques. Id. at 9:31–38, 10:3–10. Pedrizetti further
`indicates that “[t]his technology may be seamlessly integrated into the client
`operating system so that the client automatically receives updates without
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`running additional programs or taking other action beyond confirming
`updates as appropriate.” Id. at 10:10–14.
`
`c. Summary of Wang
`Wang is a U.S. patent titled “HTML Electronic Program Guide for an
`MPEG Digital TV System” and “relates to the transmission of electronic
`program guide data in hypertext markup language (HTML) in an MPEG
`digital television system.” Ex. 1109, [54], 1:7–10. Wang describes
`downloading television program guide information from a source of
`television program data to “the headend of the TV broadcast system.” Id. at
`Abstract. The downloaded electronic program guide information “is
`translated into HTML Web pages” and transmitted to set-top boxes. Id.
`The set-top box “includes a general-purpose web browser responsive to
`viewer commands to select and display selected web pages.” Wang
`indicates that the general-purpose browser may be “any one of a number of
`popular Web browsers like Microsoft Internet Explorer or Netscape
`Navigator.” Id. at 3:51–55; see id. 3:46–55 (indicating Figure 1 depicts set-
`top box 24 including World Wide Web browser program 32); Fig. 1.
`
`2. Petitioner’s Contentions Regarding Independent Claims 1 and 9
`Independent claim 1 of the ’987 patent is directed to a five-step
`method involving a set-top box, whereas independent claim 9 is directed a
`system comprising a set- top box with control circuitry configured to
`perform the same five steps recited by independent claim 1. Compare
`Ex. 1101, 10:60–11:9 (claim 1), with id. at 11:44–12:15 (claim 9); see also
`Pet. 24–31 (arguing claims 1 and 9 together).
`The steps recited in the independent claims require generating for
`display a display item having a preprogrammed function based on a non-
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`markup language, receiving from a remote source a markup language
`document that assigns to the display item a second program function, and
`generating for display the display item having the second program function.
`The recited steps also include interpreting the markup language document to
`determine that the markup language document assigns a second program
`function to the display item and updating the set-top box based on the
`markup language document such that the display item has the second
`program function.
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