`571.272.7822
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` Paper No. 42
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`Entered: September 19, 2018
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`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 IPR2017-00950
`Patent 8,006,263 B2
`____________
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
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`IPR2017-00950
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`I. INTRODUCTION
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`Petitioner, Comcast Cable Communications, LLC (“Comcast”), filed a
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`Petition requesting an inter partes review of claims 1–19 of U.S. Patent No.
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`8,006,263 B2 (Ex. 1001, “the ’263 Patent”). Paper 2 (“Pet.”). Patent
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`Owner, Rovi Guides, Inc. (“Rovi”), filed a Preliminary Response. Paper 7.
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`Taking into account the arguments presented in Rovi’s Preliminary
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`Response, we determined that the information presented in the Petition
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`established that there was a reasonable likelihood that Comcast would
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`prevail in challenging claims 1–19 of the ’263 Patent as unpatentable under
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`35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this inter
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`partes review on September 20, 2017, as to all of the challenged claims, but
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`not all the grounds presented by Comcast in its Petition. Paper 12 (“Dec. on
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`Inst.”).
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`During the course of trial, Rovi filed a Patent Owner Response (Paper
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`18, “PO Resp.”), and Comcast filed a Reply to the Patent Owner Response
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`(Paper 31, “Pet. Reply”). A consolidated oral hearing with related Cases
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`IPR2017-00951, IPR2017-00952, IPR2017-01048, IPR2017-01049,
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`IPR2017-01050, IPR2017-01065, IPR2017-01066, and IPR2017-01143 was
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`held on June 19, 2018, and a transcript of the hearing is included in the
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`record. Paper 41 (“Tr.”).
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`After all substantive briefing was complete, but before the
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`consolidated oral hearing, the United States Supreme Court held that a
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`decision to institute under 35 U.S.C. § 314 may not institute on less than all
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`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
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`1359–60 (2018). Following SAS, the U.S. Patent and Trademark Office
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`(“Office”) issued “Guidance on the impact of SAS on AIA trial
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`2
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`Patent 8,006,263 B2
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`proceedings,” in which the Office took the policy position that a decision
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`granting institution will institute on all of the challenged claims in the
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`petition and all the grounds presented in the petition.1 The U.S. Court of
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`Appeals for the Federal Circuit has since endorsed this Office policy by
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`explaining that “‘the petitioner’s petition, not the Director’s discretion, is
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`supposed to guide the life of the litigation’ and ‘that the petitioner’s
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`contentions, not the Director’s discretion, define the scope of the litigation
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`all the way from institution through to conclusion.’” Adidas AG v. Nike,
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`Inc., 894 F.3d 1256, 1258 (Fed. Cir. 2018) (quoting SAS, 138 S. Ct. at 1356–
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`1357). In accordance with SAS and Office policy, we issued an Order
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`modifying our Decision on Institution entered on September 20, 2017, to
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`include review of all challenged claims and all grounds presented by
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`Comcast in its Petition. Paper 38. The parties, however, agreed to waive
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`briefing on the grounds we declined to institute in the Decision on
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`Institution. Id. The parties also agreed to waive consideration of these
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`previously non-instituted grounds at the consolidated oral hearing. Id.
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`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
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`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
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`claims 1–19 of the ’263 Patent. For the reasons discussed below, we hold
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`that Comcast has demonstrated by a preponderance of the evidence that
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`these claims are unpatentable under § 103(a).
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`
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`
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`1 Available at https://www.uspto.gov/patentsapplication-process/patent-trial-
`and-appeal-board/trials/guidance-impactsas-aia-trial.
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`3
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`A. Related Matters
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`The ’263 Patent is involved in the following district court cases:
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`(1) Rovi Guides, Inc. v. Comcast Corp., No. 2:16-cv-00322 (E.D. Tex.),
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`which has been transferred to the U.S. District Court for the Southern
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`District of New York and is pending as Rovi Guides, Inc. v. Comcast Corp.,
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`No. 1:16-cv-09826 (S.D.N.Y); and (2) Comcast Corp. v. Rovi Corp., No.
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`1:16-cv-03852 (S.D.N.Y). Pet. 1–2; Paper 4, 2. The ’263 Patent also has
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`been asserted against Comcast in a proceeding before the U.S. International
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`Trade Commission (“ITC”) styled In re Certain Digital Video Receivers and
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`Hardware and Software Components Thereof, No. 337-TA-1001. Pet. 2;
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`Paper 4, 2.
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`In addition to this Petition, Comcast filed two other petitions
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`challenging the patentability of claims 1–19 of the ’263 Patent (Cases
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`IPR2017-00951 and IPR2017-00952). Pet. 3; Paper 4, 2. Comcast also filed
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`other petitions challenging the patentability of certain subsets of claims in
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`several patents owned by Rovi. Pet. 3.
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`
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`B. The ’263 Patent
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`The ’263 Patent, titled “Interactive Television Program Guide with
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`Remote Access,” issued August 23, 2011, from U.S. Patent Application
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`No. 11/246,392, filed on October 7, 2005. Ex. 1001, [54], [45], [21], [22].
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`The ’263 Patent is a continuation of U.S. Patent Application No. 10/927,814,
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`filed on August 26, 2004, which, in turn, is a continuation of U.S. Patent
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`Application No. 09/354,344, filed on July 16, 1999. Id. at [63]. The ’263
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`patent also claims the benefit of U.S. Provisional Application No.
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`4
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`60/097,527, filed on August 21, 1998, and U.S. Provisional Application No.
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`60/093,292, filed on July 17, 1998. Id. at [60].
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`The ’263 Patent generally relates to interactive television program
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`guide video systems and, in particular, to such systems that provide remote
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`access to program guide functionality. Ex. 1001, 1:19–22. The ’263 Patent
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`discloses that conventional interactive television program guide systems
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`typically are implemented on set-top boxes located in the home of a user
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`and, as a result, do not permit the user to perform program guide functions
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`without the user being physically located in the same room as these systems.
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`Id. at 1:37–45. Stated differently, conventional interactive television
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`program guide systems require the user to be present in the home to access
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`important program guide features, such as program reminders, parental
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`controls, and program recording. Id. at 2:19–22. The ’263 Patent
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`purportedly addresses this and other problems by providing an interactive
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`television program guide system that allows a user to access certain features
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`of the program guide remotely and establish settings for those features. Id.
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`at 2:23–28.
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`Figure 1 of the ’263 Patent, reproduced below, illustrates a schematic
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`block diagram of the system in accordance with the present invention.
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`Ex. 1001, 3:45–46, 4:29–30.
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`5
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`As shown in Figure 1 reproduced above, system 10 includes main facility 12
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`that provides interactive television program guide data from program guide
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`data source 14 to interactive television program guide equipment 17 via
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`communication link 18. Id. at 4:29–33. Interactive television program
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`guide equipment 17 is connected to at least one remote program guide
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`access device 24 via remote access link 19. Id. at 4:47–53.
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`
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`Figure 2a of the ’263 Patent, reproduced below, illustrates one
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`arrangement involving the interactive television program guide equipment
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`17 and remote program guide access device 24 in accordance with the
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`principles of the present invention. Ex. 1001, 3:47–50, 4:55–57.
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`6
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`As shown in Figure 2a reproduced above, interactive television program
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`guide equipment 17 includes program guide distribution equipment 21
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`located at television distribution facility 16, which distributes program guide
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`data to user television equipment 22 via communications path 20. Id. at
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`4:57–67. Remote program guide access device 24 receives the program
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`guide data, as well as any additional data necessary to access various
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`functions of the interactive program guide, from user television equipment
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`22 via remote access link 19. Id. at 5:29–39.
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`In at least one embodiment, the ’263 Patent discloses that a remote
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`access interactive television program guide implemented on remote program
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`guide access device 24 communicates with a local interactive television
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`program guide implemented on interactive television program guide
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`equipment 17. Ex. 1001, 12:23–29. In one example, the remote access and
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`local interactive television program guides may be two different guides that
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`communicate with each other. Id. at 12:34–37; see also id. at 22:49–23:6
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`7
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`(disclosing steps involved with using the remote access interactive television
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`guide to provide program listing information to a user).
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`The ’263 Patent discloses transferring program guide information and
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`settings between remote program guide access device 24 and interactive
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`television program guide equipment 17 using any suitable application layer
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`protocol. Ex. 1001, 13:7–11. For example, if remote access link 19 is an
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`Internet link, program guide functionality may be accessed using Hypertext
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`Transfer Protocol. Id. at 13:11–13. Remote program guide access device 24
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`and interactive television program guide equipment 17 also may transfer
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`program guide information as files using either File Transfer Protocol or
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`Trivial File Transfer Protocol running over a Transmission Control
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`Protocol/Internet Protocol stack. Id. at 13:13–18. The ’263 Patent makes
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`clear that “[a]ny suitable file transfer protocol based on any suitable protocol
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`stack may be used.” Id. at 13:18–19.
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`
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`C. Illustrative Claim
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`
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`Of the challenged claims, claims 1, 5, 8, 11, 14, and 17 are
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`independent. Independent claims 1, 8, and 14 are each directed to a system
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`for selecting television programs over a remote access link that includes an
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`Internet communications path for recording, whereas independent claims 5,
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`11, and 17 are each directed to a method for performing the same. Claims
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`2–4 directly depend from independent claim 1; claims 6 and 7 directly
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`depend from independent claim 5; claims 9 and 10 directly depend from
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`independent claim 8; claims 12 and 13 directly depend from independent
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`claim 11; claims 15 and 16 directly depend from independent claim 14; and
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`8
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`claims 18 and 19 directly depend from independent claim 17. Independent
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`claim 1 is illustrative of the challenged claims and is reproduced below:
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`A system for selecting television programs over a
`1.
`remote access link comprising an Internet communications path
`for recording, comprising:
`
`a local interactive television program guide equipment on
`which a
`local
`interactive
`television program guide
`is
`implemented, wherein the local interactive television program
`guide equipment includes user television equipment located
`within a user’s home and the local interactive television program
`guide generates a display of one or more program listings for
`display on a display device at the user’s home; and
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`a remote program guide access device located outside of
`the user’s home on which a remote access interactive television
`program guide is implemented, wherein the remote program
`guide access device is a mobile device, and wherein the remote
`access interactive television program guide:
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`generates a display of a plurality of program listings for
`display on the remote program guide access device, wherein the
`display of the plurality of program listings is generated based on
`a user profile stored at a location remote from the remote
`program guide access device;
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`receives a selection of a program listing of the plurality of
`program listings in the display, wherein the selection identifies a
`television program corresponding to the selected program listing
`for recording by the local interactive television program guide;
`and
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`transmits a communication identifying the television
`program corresponding to the selected program listing from the
`remote access interactive television program guide to the local
`interactive
`television program guide over
`the
`Internet
`communications path;
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`wherein the local interactive television program guide
`receives the communication and records the television program
`corresponding to the selected program listing responsive to the
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`communication using the local interactive television program
`guide equipment.
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`Ex. 1001, 28:27–63.
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`
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`D. Instituted Grounds of Unpatentability
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`We instituted a trial based on the asserted grounds of unpatentability
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`(“grounds”) set forth in the table below. Dec. on Inst. 36; Paper 38.
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`References
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`Basis
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`Challenged Claim(s)
`
`Humpleman2 and Killian3
`
`§ 103(a) 1, 2, 4–6, 8, 9, 11, 12, 14,
`15, 17, and 18
`Humpleman, Killian, and Lawler4 § 103(a) 3, 7, 10, 13, 16, and 19
`
`Kondo,5 Killian, and Kawamura6 § 103(a) 1, 2, 4–6, 8, 9, 11, 12, 14,
`15, 17, and 18
`§ 103(a) 3, 7, 10, 13, 16, and 19
`
`Kondo, Killian, and Kawamura,
`and Lawler
`
`
`
`
`
`
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`2 U.S. Patent No. 6,182,094 B1; issued Jan. 30, 2001 (Ex. 1006,
`“Humpleman”).
`
`3 U.S. Patent No. 6,163,316, issued Dec. 19, 2000 (Ex. 1008, “Killian”).
`
`4 U.S. Patent No. 5,805,763, issued Sept. 8, 1998 (Ex. 1009, “Lawler”).
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`5 Japanese Pat. App. Pub. No. H10-155131, published June 9, 1998
`(Ex. 1011, “Kondo”). Comcast has provided a certified translation of Kondo
`from Japanese into English (Ex. 1012).
`
`6 Japanese Pat. App. Pub. No. H9-102827, published Apr. 15, 1997
`(Ex. 1013, “Kawamura”). Comcast has provided a certified translation of
`Kawamura from Japanese into English (Ex. 1014).
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`10
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms of an unexpired patent are given
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`their broadest reasonable interpretation in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
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`reasonable interpretation standard, and absent any special definitions, claim
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`terms are generally given their ordinary and customary meaning, as would
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`be understood by one of ordinary skill in the art, in the context of the entire
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007).
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`In the Decision on Institution, we determined that the only claim
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`terms requiring construction are “local/remote access interactive television
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`program guides,” and only to the extent necessary to resolve whether the
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`grounds asserted by Comcast properly accounted for both a “local
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`interactive television program guide” and a “remote access interactive
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`television program guide.” Dec. on Inst. 9 (citing Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only
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`those claim terms that are in controversy need to be construed, and only to
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`the extent necessary to resolve the controversy)). Upon reviewing the
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`parties’ preliminary arguments and evidence, we adopted Comcast’s
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`proposed construction that an “interactive television program guide” is
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`“control software operative at least in part to generate a display of television
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`program listings and allow a user to navigate through the listings, make
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`selections, and control functions of the software.” Id. at 13. We further
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`clarified that the claim terms “local interactive television program guide”
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`and “remote access interactive television program guide” are separately
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`11
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`identifiable elements, and are not construed properly as reading on the same
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`interactive television program guide. Id.
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`In its Patent Owner Response, Rovi generally agrees with our initial
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`determination that the only claim terms requiring construction are
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`“local/remote access interactive television program guides.” PO Resp. 10.
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`Rovi, however, proposes that the proper constructions for these claims terms
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`are the following: (1) “local interactive television program guide” is a
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`“guide that allows navigation through television program listings and causes
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`display of program information on user television equipment”; and (2)
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`“remote access interactive television program guide” is a “guide allowing
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`navigation through television program listings using a remote access link.”
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`Id. at 10–11. According to Rovi, its proposed constructions for the claim
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`terms “local/remote access interactive television program guides” are
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`consistent with the intrinsic evidence, our preliminary finding that these
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`guides must be distinct guides, and the findings of the ITC in related
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`proceedings. Id. at 11 (citing Ex. 1050, 185, 190).
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`Rovi further contends that, any difference between our constructions
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`and the ITC’s constructions of the claim terms “local/remote access
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`interactive television program guides” is not relevant to the grounds at issue
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`in this proceeding because, according to Rovi, each of Comcast’s asserted
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`grounds fail under Rovi’s broader constructions “that do[] not unnecessarily
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`restrict the guides to ‘control software’ that ‘controls functions of the
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`software.’” PO Resp. 11. Rovi asserts that, because it is proposing broader
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`constructions for these claim terms, we need not determine whether the
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`asserted prior art satisfies Comcast’s proposed constructions. Id. at 11–12.
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`Rovi then proceeds to explain how our preliminary constructions and the
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`12
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`ITC’s constructions are consistent in certain respects because (1) they both
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`require the guides to be interactive (i.e., navigable and selectable); and (2)
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`they both agree that the claims require two separate guides, as properly
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`construed. Id. at 12–14.7
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`In its Reply, Comcast contends that Rovi’s proposed constructions of
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`the claim terms “local/remote access interactive television program guides”
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`improperly seeks to limit the broadest reasonable interpretation of the claim
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`term “interactive television program guide” to a single software component
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`that generates listings, thereby excluding other software components that
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`assist in providing guide functionality. Pet. Reply 4 (citing PO Resp. 23–24,
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`32, 34–35; Ex. 2008 ¶ 116). According to Comcast, this inclusion finds no
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`basis in the plain language of the claims and the specification of the ’263
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`patent. Id.
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`Comcast also contends that Rovi’s arguments directed to the claim
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`term “interactive television program guide” contradicts the construction
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`Rovi offered in the related ITC proceeding. Pet. Reply 4. In the related ITC
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`proceeding, Comcast argues that Rovi expanded the scope of the claim term
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`“local interactive television program guide” to capture all software
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`components related to any local guide functionality, including recording. Id.
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`(citing Ex. 1050, 180–91, 214–27; Ex. 1054 ¶¶ 158–160, 169, 170, 371,
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`
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`7 At the oral hearing for the first time, Rovi argued that “remote access
`interactive television program guide” requires “dedicated code at the remote
`device.” See, e.g., Tr. 58:3–7, 60:19–61:14, 66:14–21. We agree with
`Comcast (id. at 96:3–10) that this is a new argument that was not presented
`and developed in Rovi’s briefs and, therefore, we do not consider it. See
`Paper 13, 3 (cautioning Rovi that “any arguments for patentability not raised
`in the response will be deemed waived”).
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`13
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`376). Comcast argues that Rovi’s expert in the ITC proceeding, Dr. Michael
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`Shamos, who also is Rovi’s expert in this proceeding, provided supporting
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`testimony that the claim term “local interactive television program guide”
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`could be an “extensive collection of hardware and software.” Id. at 4–5
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`(emphasis omitted) (quoting Ex. 1054 ¶ 169). In this proceeding, however,
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`Comcast argues that Rovi and Dr. Shamos appear to take the erroneous
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`position that the claim term “local interactive television program guide” is a
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`single software application. Id. at 5 (compare PO Resp. 34 and Ex. 2108
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`¶ 116, with Ex. 1054 ¶¶ 169, 371). According to Comcast, we should hold
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`Rovi to the same broad construction of the claim term “local interactive
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`television program guide” in this proceeding that it wielded to exclude
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`others from practicing the claimed invention in the related ITC proceeding.
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`Id. at 6.
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`As an initial matter, it is not clear to us whether Rovi actually disputes
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`our preliminary construction of the claim term “interactive television
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`program guide.” On the one hand, Rovi asserts that the ITC’s constructions
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`of local interactive television program guide (i.e., a “guide that allows
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`navigation through television program listings and causes display of
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`program information on user television equipment”) and remote access
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`interactive television program guide (i.e., a “guide allowing navigation
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`through television program listings using a remote access link”) are the
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`proper constructions. PO Resp. 10–11. On the other hand, Rovi argues that
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`both our constructions and the ITC’s constructions “are consistent with
`
`respect to the relevant aspects (e.g., navigation and selection)” of a
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`local/remote access interactive television guide. Id. at 11. Rovi further
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`contends that “[a]ny differences between the Board’s and the ITC’s
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`constructions are not relevant to [Comcast’s] failures of proof regarding the
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`asserted prior art and [g]rounds at issue in this proceeding.” Id. (emphasis
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`added); see also Ex. 2008 ¶ 25 (Rovi’s declarant, Dr. Shamos, testifies that,
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`“regardless of which constructions the Board applies, my opinions remain
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`the same. The asserted prior art references here fail to disclose the claim
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`limitations . . . under either construction.”) These arguments make it
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`difficult to ascertain what Rovi actually views as to the proper scope and
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`meaning of claim terms “local/remote access interactive television program
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`guides.” Nevertheless, we are charged in this proceeding with determining
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`the broadest reasonable interpretation of these claim terms.
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`Beginning with the intrinsic record, neither party argues, nor could we
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`find, an explicit definition for the claim term “interactive television program
`
`guide” in the specification of the ’263 Patent. The specification, however, is
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`replete with descriptions of conventional, local, or remote interactive
`
`television program guides. For instance, the specification discloses that
`
`conventional interactive television program guides display “various groups
`
`of television program [guide] listings . . . in predefined or user-defined
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`categories,” and “allow the user to navigate through [the] television program
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`listings” and make a selection “using a remote control.” Ex. 1001, 1:31–36.
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`For a conventional interactive television program guide, the user must
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`physically be located in the same room as the set-top box on which the
`
`interactive television program guide is implemented to select programs for
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`recording or to perform other guide functions. Id. at 1:37–45. In the context
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`of discussing the implementation of a remote access interactive television
`
`program guide, the specification discloses that such a guide works in
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`conjunction with a remote device to “provide users with the opportunity to
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`remotely access features of the interactive television program guide on the
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`interactive television program guide equipment and to remotely set program
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`guide settings.” Id. at 2:41–46. The specification goes on to disclose that
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`“[a]ny suitable interactive television program guide function or setting may
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`be accessed,” including, but not limited to, “remotely select[ing]
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`programming for recordings” and “remotely set[ting] and navigat[ing]
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`through favorites (e.g., favorite channels, program categories, services,
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`etc.).” Id. at 2:47–56.
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`Although the aforementioned disclosures provide guidance as to the
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`functionality of an “interactive television program guide” (i.e., navigable,
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`selectable, and capable of controlling certain functions or settings), neither
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`party directs us to, nor can we find, a disclosure in the specification that
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`specifically identifies what element or elements constitute a “guide.” Given
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`the lack of disclosure in this regard, we decline to limit the “guide” to a
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`single software application. Rather, these disclosures support Comcast’s
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`proposed construction that an “interactive television program guide” is
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`“control software operative at least in part to generate a display of television
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`program listings and allow a user to navigate through the listings, make
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`selections, and control functions of the software.”
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`We further clarify that, based on the plain language of independent
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`claims 1, 5, 8, 11, 14, and 17, they indicate that the claim terms “local
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`interactive television program guide” and “remote access interactive
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`television program guide” are separately identifiable elements. See Becton,
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`Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed.
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`Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication
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`of the claim language’ is that those elements are ‘distinct component[s]’ of
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`the patented invention.” (alteration in original) (quoting Gaus v. Conair
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`Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))). Our determination in this
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`regard is supported by the specification, which includes various
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`embodiments that treat these claim terms as separately identifiable elements
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`capable of communicating with each other. See, e.g., Ex. 1001, 12:34–37
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`(“In still another suitable approach, the [local interactive television program
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`guide and remote access interactive television program guide] may be
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`different guides that communicate in a manner or manners discussed . . .
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`herein.”), 20:18–23 (“The remote access [interactive television] program
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`guide may . . . send audio, graphical, and text messages to the local
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`interactive [television] program guide for playing or display by user
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`television equipment 22.”).
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`We decline to adopt Rovi’s proposed constructions of the claim terms
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`“local/remote access interactive television program guides” for two reasons.
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`First, we are unable to determine how Rovi’s proposed constructions add
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`any clarity to the scope and meaning of an “interactive television program
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`guide.” That is, we view each of Rovi’s proposed constructions as circular
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`and unhelpful because they define each of the guides as a “guide [that
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`allows/allowing] navigation through television program listings.” PO Resp.
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`10–11 (emphasis added). Rovi, however, does not actually identify what
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`element or elements specifically constitute the “guide.”
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`Second, Rovi states that its proposed constructions indicate “where
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`the specific guide resides (i.e., on ‘user television equipment’ or over ‘a
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`remote access link’),” id. at 14 (emphasis omitted), but readily admits that
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`“these additions merely restate the language of the broader claim
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`limitation[s].” Id. (citing Ex. 1050, 185, 190). It is well settled that the U.S.
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`Court of Appeals for the Federal Circuit disfavors any claim interpretation
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`that renders a claim term or phrase superfluous. See Apple, Inc. v.
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`Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“The Board was
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`correct to not include in its construction of ‘menu’ features of menus that are
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`expressly recited in the claims. . . . Construing a claim term to include
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`features of that term already recited in the claims would make those
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`expressly recited features redundant.”). If we were to adopt the language in
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`Rovi’s proposed constructions pertaining to where each guide resides, it
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`would render superfluous the language that is already explicitly recited in
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`independent claim 1, and similarly recited in independent claims 5, 8, 11, 14,
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`and 17—namely, “over a remote access link” and “a local interactive
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`television program guide equipment on which a local interactive television
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`program guide is implemented, wherein the local interactive television
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`program guide equipment includes user television equipment.”8
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`Turning now to the extrinsic evidence, in Dr. Tjaden’s Declaration
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`accompanying the Petition, he testifies that “the local [interactive television
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`program] guide may be implemented at least in part on a server or other
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`device outside the user’s home.” Ex. 1002 ¶ 35. To support this testimony,
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`he directs us to Rovi’s interpretation of the claim term “local interactive
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`television program guide” in the related ITC proceeding. Id. (citing
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`8 During oral argument, in response to a question regarding the ITC’s
`construction of the “local interactive television program guide” being on
`user television equipment and its construction that the “remote access
`television program guide” uses a remote access link, counsel for Rovi stated
`that “I don’t think where [the guides are] implemented is meaningful
`because that’s recited in the claim separately.” Tr. 66:22–67:24.
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`Ex. 1045, 56; Ex. 1046, 43). In Dr. Tjaden’s Declaration accompanying the
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`Reply, he elaborates further on his initial position by testifying that “a
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`[person of ordinary skill in the art] looking at the ’263 Patent would have
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`understood that many different arrangements of the software and hardware
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`components comprising an interactive television program guide are possible
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`and acceptable in [the] prior art used to show obviousness.” Ex. 1052 ¶ 15.
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`To support this testimony, he directs us to the different arrangements of
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`software and hardware in the ’263 patent. Id. ¶¶ 16–18 (citing Ex. 1001,
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`4:30–33, 4:47–49, 4:57–61, 6:48–50, 7:53–60, Figs. 1, 2a–2d).
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`Dr. Shamos’s Declaration in the ITC proceeding serves as further
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`evidence as to what element or elements constitute a “guide.” Although we
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`recognize that the broadest reasonable interpretation standard governs in this
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`proceeding, whereas the district court claim construction standard governs in
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`an ITC proceeding, Dr. Shamos’s testimony in the ITC proceeding is
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`relevant here because it sheds some light on what element or elements he
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`believes constitutes a “guide.” In the ITC proceeding, Dr. Shamos testifies
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`that the claim term “local interactive television program guide” could be an
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`“extensive collection of hardware and software.” Ex. 1054 ¶ 169. He also
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`testifies “that the ‘local [interactive television program] guide’ [should not
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`be construed as] a single software application that must reside on a device in
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`the user’s home,” and “[n]othing in the claims excludes a ‘recording
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`application’ from being part of the local [interactive television program]
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`guide.” Id. ¶ 371. Dr. Shamos’s testimony in the ITC proceeding is
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`consistent with Dr. Tjaden’s testimony in this proceeding because, like Dr.
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`Tjaden, Dr. Shamos does not limit a “guide” to a single software application,
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`but rather contemplates that the “guide” may constitute different
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`arrangements of software and hardware.
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`We note that the aforementioned testimony from Dr. Tjaden and Dr.
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`Shamos suggest that the “guide” may include both software and hardware.
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`Rovi likewise argues that its proposed construction is broader than
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`Comcast’s because “it does not unnecessarily restrict the guides to ‘control
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`software.’” PO Resp. 11. We do not find support in the intrinsic record that
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`the “guide” may include hardware. Rather, the ’263 Patent separately refers
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`to the interactive television program guide and the hardware on which it is
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`implemented. Se