`571.272.7822
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` Paper No. 43
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`Entered: September 19, 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 IPR2017-00951
`Patent 8,006,263 B2
`____________
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`ZECHER, 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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`I. INTRODUCTION
`Petitioner, Comcast Cable Communications, LLC (“Comcast”), filed a
`Petition requesting an inter partes review of claims 1–19 of U.S. Patent No.
`8,006,263 B2 (Ex. 1101, “the ’263 patent”). Paper 2 (“Pet.”). Patent
`Owner, Rovi Guides, Inc. (“Rovi”), filed a Preliminary Response. Paper 7.
`Taking into account the arguments presented in Rovi’s Preliminary
`Response, we determined that the information presented in the Petition
`established that there was a reasonable likelihood that Comcast would
`prevail in challenging claims 1–19 of the ’263 patent as unpatentable under
`35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this inter
`partes review on September 20, 2017, as to all of the challenged claims, but
`not all the grounds presented by Comcast in its Petition. Paper 12 (“Dec. on
`Inst.”).
`During the course of trial, Rovi filed a Patent Owner Response (Paper
`18, “PO Resp.”), and Comcast filed a Reply to the Patent Owner Response
`(Paper 31, “Pet. Reply”). A consolidated oral hearing with related Cases
`IPR2017-00950, IPR2017-00952, IPR2017-01048, IPR2017-01049,
`IPR2017-01050, IPR2017-01065, IPR2017-01066, and IPR2017-01143 was
`held on June 19, 2018, and a transcript of the hearing is included in the
`record. Paper 41 (“Tr.”).
`After all substantive briefing was complete, but before the
`consolidated oral hearing, the United States Supreme Court held that a
`decision to institute under 35 U.S.C. § 314 may not institute on less than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018). Following SAS, the U.S. Patent and Trademark Office
`(“Office”) issued “Guidance on the impact of SAS on AIA trial
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`proceedings,” in which the Office took the policy position that a decision
`granting institution will institute on all of the challenged claims in the
`petition and all the grounds presented in the petition.1 The U.S. Court of
`Appeals for the Federal Circuit has since endorsed this Office policy by
`explaining that “‘the petitioner’s petition, not the Director’s discretion, is
`supposed to guide the life of the litigation’ and ‘that the petitioner’s
`contentions, not the Director’s discretion define the scope of the litigation all
`the way from institution through to conclusion.’” Adidas AG v. Nike, Inc.,
`894, F.3d 1256, 1258 (Fed. Cir. 2018) (quoting SAS, 138 S. Ct. at 1356–
`1357). In accordance with SAS and Office policy, we issued an Order
`modifying our Decision on Institution entered on September 20, 2017, to
`include review of all challenged claims and all grounds presented by
`Comcast in its Petition. Paper 38. The parties, however, agreed to waive
`briefing on the grounds we declined to institute in the Decision on
`Institution. Id. The parties also agreed to waive consideration of these
`previously non-instituted grounds at the consolidated oral hearing. Id.
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1–19 of the ’263 patent. For the reasons discussed below, we hold
`that Comcast has demonstrated by a preponderance of the evidence that
`these claims are unpatentable under § 103(a).
`
`
`1 Available at https://www.uspto.gov/patentsapplication-process/patent-trial-
`and-appeal-board/trials/guidance-impactsas-aia-trial.
`3
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`A. Related Matters
`The ’263 patent is involved in the following district court cases:
`(1) Rovi Guides, Inc. v. Comcast Corp., No. 2:16-cv-00322 (E.D. Tex.),
`which has been transferred to the U.S. District Court for the Southern
`District of New York and is pending as Rovi Guides, Inc. v. Comcast Corp.,
`No. 1:16-cv-09826 (S.D.N.Y); and (2) Comcast Corp. v. Rovi Corp., No.
`1:16-cv-03852 (S.D.N.Y). Pet. 1–2; Paper 4, 2. The ’263 patent also has
`been asserted against Comcast in a proceeding before the U.S. International
`Trade Commission (“ITC”) styled In re Certain Digital Video Receivers
`and Hardware and Software Components Thereof, No. 337-TA-1001. Pet.
`2; Paper 4, 2.
`In addition to this Petition, Comcast filed two other petitions
`challenging the patentability of claims 1–19 of the ’263 patent (Cases
`IPR2017-00950 and IPR2017-00952). Pet. 3; Paper 4, 2. Comcast also filed
`other petitions challenging the patentability of certain subsets of claims in
`several patents owned by Rovi. Pet. 3.
`B. The ’263 Patent
`The ’263 patent, titled “Interactive Television Program Guide with
`Remote Access,” issued August 23, 2011, from U.S. Patent Application
`No. 11/246,392, filed on October 7, 2005. Ex. 1101, [54], [45], [21], [22].
`The ’263 patent is a continuation of U.S. Patent Application No. 10/927,814,
`filed on August 26, 2004, which, in turn, is a continuation of U.S. Patent
`Application No. 09/354,344, filed on July 16, 1999. Id. at [63]. The ’263
`patent also claims the benefit of U.S. Provisional Application No.
`60/097,527, filed on August 21, 1998, and U.S. Provisional Application No.
`60/093,292, filed on July 17, 1998. Id. at [60].
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`The ’263 patent generally relates to interactive television program
`guide video systems and, in particular, to such systems that provide remote
`access to program guide functionality. Ex. 1101, 1:19–22. The ’263 patent
`discloses that conventional interactive television program guide systems
`typically are implemented on set-top boxes located in the home of a user
`and, as a result, do not permit the user to perform program guide functions
`without the user being physically located in the same room as these systems.
`Id. at 1:37–45. Stated differently, conventional interactive television
`program guide systems require the user to be present in the home to access
`important program guide features, such as program reminders, parental
`controls, and program recording. Id. at 2:19–22. The ’263 patent
`purportedly addresses this and other problems by providing an interactive
`television program guide system that allows a user to access certain features
`of the program guide remotely and establish settings for those features. Id.
`at 2:23–28.
`Figure 1 of the ’263 patent, reproduced below, illustrates a schematic
`block diagram of the system in accordance with the present invention.
`Ex. 1101, 3:45–46, 4:29–30.
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`As shown in Figure 1 reproduced above, system 10 includes main facility 12
`that provides interactive television program guide data from program guide
`data source 14 to interactive television program guide equipment 17 via
`communication link 18. Id. at 4:29–33. Interactive television program
`guide equipment 17 is connected to at least one remote program guide
`access device 24 via remote access link 19. Id. at 4:47–53.
`
`Figure 2a of the ’263 patent, reproduced below, illustrates one
`arrangement involving the interactive television program guide equipment
`17 and remote program guide access device 24 in accordance with the
`principles of the present invention. Ex. 1101, 3:47–50, 4:55–57.
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`As shown in Figure 2a reproduced above, interactive television program
`guide equipment 17 includes program guide distribution equipment 21
`located at television distribution facility 16, which distributes program guide
`data to user television equipment 22 via communications path 20. Id. at
`4:57–67. Remote program guide access device 24 receives the program
`guide data, as well as any additional data necessary to access various
`functions of the interactive program guide, from user television equipment
`22 via remote access link 19. Id. at 5:29–39.
`In at least one embodiment, the ’263 patent discloses that a remote
`access interactive television program guide implemented on remote program
`guide access device 24 communicates with a local interactive television
`program guide implemented on interactive television program guide
`equipment 17. Ex. 1101, 12:23–29. In one example, the remote access and
`local interactive television program guides may be two different guides that
`communicate with each other. Id. at 12:34–37; see also id. at 22:49–23:6
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`(disclosing steps involved with using the remote access interactive television
`program guide to provide program listing information to a user). In another
`example, the remote access and local interactive television program guides
`may be the same guide but compiled to run on two different platforms. Id. at
`12:29–32.
`The ’263 patent discloses transferring program guide information and
`settings between remote program guide access device 24 and interactive
`television program guide equipment 17 using any suitable application layer
`protocol. Ex. 1101, 13:7–11. For example, if remote access link 19 is an
`Internet link, program guide functionality may be accessed using Hypertext
`Transfer Protocol. Id. at 13:11–13. Remote program guide access device 24
`and interactive television program guide equipment 17 also may transfer
`program guide information as files using either File Transfer Protocol or
`Trivial File Transfer Protocol running over a Transmission Control
`Protocol/Internet Protocol stack. Id. at 13:13–18. The ’263 patent makes
`clear that “[a]ny suitable file transfer protocol based on any suitable protocol
`stack may be used.” Id. at 13:18–19.
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 5, 8, 11, 14, and 17 are
`
`independent. Independent claims 1, 8, and 14 are each directed to a system
`for selecting television programs over a remote access link that includes an
`Internet communications path for recording, whereas independent claims 5,
`11, and 17 are each directed to a method for performing the same. Claims
`2–4 directly depend from independent claim 1; claims 6 and 7 directly
`depend from independent claim 5; claims 9 and 10 directly depend from
`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
`claims 18 and 19 directly depend from independent claim 17. Independent
`claim 1 is illustrative of the challenged claims and is reproduced below:
`1.
`A system for selecting television programs over a
`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
`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:
`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;
`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
`
`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;
`wherein the local interactive television program guide
`receives the communication and records the television program
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`corresponding to the selected program listing responsive to the
`communication using the local interactive television program
`guide equipment.
`Ex. 1101, 28:27–63.
`
`Lawler
`
`Allport
`
`D. Prior Art Relied Upon
`Comcast relies upon the following prior art references:
`Inventor2
`Patent or
`Relevant Dates
`Publication No.
`Humpleman U.S. Patent No.
`6,182,094 B1
`U.S. Patent No.
`5,805,763
`U.S. Patent No.
`6,104,334
`U.S. Patent No.
`6,408,435 B1
`U.S. Patent No.
`5,485,219
`PCT Int’l Pub. No.
`WO 97/18636
`Rzeszewski U.S. Patent No.
`5,699,125
`
`Exhibit No.
`
`1106
`
`1109
`
`1110
`
`1115
`
`1116
`
`1117
`
`1118
`
`Sato
`
`Woo
`
`Mizuno
`
`issued Jan. 30, 2001,
`filed June 24, 1998
`issued Sept. 8, 1998,
`filed May 5, 1995
`issued Aug. 15, 2000,
`filed Dec. 31, 1997
`issued June 18, 2002,
`filed April 29, 1997
`issued Jan. 16, 1996,
`filed Apr. 18, 1994
`published May 22, 1997,
`filed Nov. 13, 1996
`issued Dec. 16, 1997,
`filed Mar. 31, 1995
`
`E. Instituted Grounds of Unpatentability
`We instituted a trial based on the asserted grounds of unpatentability
`
`(“grounds”) set forth in the table below. Dec. on Inst. 43; Paper 38.
`
`
`2 For clarity and ease of reference, we only list the first named inventor.
`
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`
`References
`Sato and Humpleman
`
`Sato, Humpleman, and Lawler
`Sato, Humpleman, and Allport
`Woo, Mizuno, and Rzeszewski
`
`Woo, Mizuno, Rzeszewski, and
`Lawler
`Woo, Mizuno, Rzeszewski, and
`Allport
`
`Basis
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`Challenged Claim(s)
`1, 2, 5, 6, 8, 9, 11, 12, 14,
`15, 17, and 18
`3, 7, 10, 13, 16, and 19
`4
`1, 2, 5, 6, 8, 9, 11, 12, 14,
`15, 17, and 18
`3, 7, 10, 13, 16, and 19
`
`§ 103(a)
`
`4
`
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review proceeding, claim terms of an unexpired
`patent are given their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms are generally given 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).
`In the Decision on Institution, we determined that the only claim
`terms requiring construction are “local/remote access interactive television
`program guides,” and only to the extent necessary to resolve whether the
`grounds asserted by Comcast properly accounted for both a “local
`interactive television program guide” and a “remote access interactive
`television program guide.” Dec. on Inst. 10 (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
`those claim terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy)). Upon reviewing the
`parties’ preliminary arguments and evidence, we adopted Comcast’s
`proposed construction that an “interactive television program guide” is
`“control software operative at least in part to generate a display of television
`program listings and allow a user to navigate through the listings, make
`selections, and control functions of the software.” Id. at 13. We further
`clarified that the claim terms “local interactive television program guide”
`and “remote access interactive television program guide” are separately
`identifiable elements, and are not construed properly as reading on the same
`interactive television program guide. Id. at 13–14.
`In its Patent Owner Response, Rovi generally agrees with our initial
`determination that the only claim terms requiring construction are
`“local/remote access interactive television program guides.” PO Resp. 8.
`Rovi, however, proposes that the proper constructions for these claim terms
`are the following: (1) “local interactive television program guide” is a
`“guide that allows navigation through television program listings and causes
`display of program information on user television equipment”; and (2)
`“remote access interactive television program guide” is a “guide allowing
`navigation through television program listings using a remote access link.”
`Id. at 8–9. According to Rovi, its proposed constructions for the claim terms
`“local/remote access interactive television program guides” are consistent
`with the intrinsic evidence, our preliminary finding that these guides must be
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`distinct guides, and the findings of the ITC in related proceedings. Id. at 9
`(citing Ex. 1150, 185, 190).
`Rovi further contends that any difference between our constructions
`and the ITC’s constructions of the claim terms “local/remote access
`interactive television program guides” is not relevant to the grounds at issue
`in this proceeding because, according to Rovi, each of Comcast’s asserted
`grounds fail under Rovi’s broader constructions “that do[] not unnecessarily
`restrict the guides to ‘control software’ that ‘controls functions of the
`software.’” PO Resp. 9. Rovi asserts that, because each of Comcast’s
`asserted grounds fail under broader constructions for these claim terms, we
`need not determine whether the asserted prior art satisfies Comcast’s
`proposed constructions. Id. at 9–10. Rovi then proceeds to explain how our
`preliminary constructions and the ITC’s constructions are consistent in
`certain respects because (1) they both require the guides to be interactive
`(i.e., navigable and selectable); and (2) they both agree that the claims
`require two separate guides, as properly construed. Id. at 10–12.3
`In its Reply, Comcast contends that Rovi’s proposed constructions of
`the claim terms “local/remote access interactive television program guides”
`improperly seeks to limit the broadest reasonable interpretation of the claim
`term “interactive television program guide” to a single software component
`
`
`3 For the first time at the oral hearing, 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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`that generates listings, thereby excluding other software components that
`assist in providing guide functionality. Pet. Reply 4 (citing PO Resp. 30–34;
`Ex. 2108 ¶¶ 136, 137, 146–150). According to Comcast, this inclusion finds
`no basis in the plain language of the claims and the specification of the ’263
`patent. Id. (citing Ex. 1152 ¶¶ 10–14).
`Comcast also contends that Rovi’s arguments directed to the claim
`term “interactive television program guide” contradicts the construction
`Rovi offered in the related ITC proceeding. Pet. Reply 4. In the related ITC
`proceeding, Comcast argues that Rovi expanded the scope of the claim term
`“local interactive television program guide” to capture all software
`components related to any local guide functionality, including recording. Id.
`(citing Ex. 1150, 180–91, 214–27; Ex. 1154 ¶¶ 158–160, 169, 170, 371,
`376). Comcast argues that Rovi’s expert in the ITC proceeding, Dr. Michael
`Shamos, who also is Rovi’s expert in this proceeding, provided supporting
`testimony that the claim term “local interactive television program guide”
`could be an “extensive collection of hardware and software.” Id. at 5
`(emphasis omitted) (quoting Ex. 1154 ¶ 169). In this proceeding, however,
`Comcast argues that Rovi and Dr. Shamos appear to take the erroneous
`position that the claim term “local interactive television program guide” is a
`single software application. Id. at 5–6 (compare PO Resp. 32 and Ex. 2108
`¶ 149, with Ex. 1154 ¶¶ 169, 371). According to Comcast, we should hold
`Rovi to the same broad construction of the claim term “local interactive
`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.
`Id. at 6.
`As an initial matter, it is not clear to us whether Rovi actually disputes
`our preliminary construction of the claim term “interactive television
`program guide.” On the one hand, Rovi asserts that the ITC’s constructions
`of local interactive television program guide (i.e., a “guide that allows
`navigation through television program listings and causes display of
`program information on user television equipment”) and remote access
`interactive television program guide (i.e., a “guide allowing navigation
`through television program listings using a remote access link”) are the
`proper constructions. PO Resp. 8–9. On the other hand, Rovi argues that
`both our constructions and the ITC’s constructions “are consistent with
`respect to the relevant aspects (e.g., navigation and selection)” of a
`local/remote access interactive television program guide. Id. at 9. Rovi
`further contends that “[a]ny differences between the Board’s and the ITC’s
`constructions are not relevant to [Comcast’s] failures of proof regarding the
`asserted prior art and [g]rounds at issue in the proceeding.” Id. (emphasis
`added); see also Ex. 2108 ¶ 25 (Rovi’s declarant, Dr. Shamos, testifies that,
`“regardless of which constructions the Board applies, my opinions remain
`the same. The asserted prior art references here fail to disclose the claim
`limitations . . . under either construction.”). These arguments make it
`difficult to ascertain what Rovi actually views as the proper scope and
`meaning of the claim terms “local/remote access interactive television
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`program guides.” Nevertheless, we are charged in this proceeding with
`determining the broadest reasonable interpretation of these claim terms.
`Beginning with the intrinsic record, neither party argues, nor could we
`find, an explicit definition for the claim term “interactive television program
`guide” in the specification of the ’263 patent. The specification, however, is
`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
`categories,” and “allow the user to navigate through [the] television program
`listings” and make a selection “using a remote control.” Ex. 1101, 1:31–36.
`For a conventional interactive television program guide, the user must
`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
`recording or to perform other guide functions. Id. at 1:37–45. In the context
`of discussing the implementation of a remote access interactive television
`program guide, the specification discloses that such a guide works in
`conjunction with a remote device to “provide users with the opportunity to
`remotely access features of the interactive television program guide on the
`interactive television program guide equipment and to remotely set program
`guide settings.” Id. at 2:41–46. The specification goes on to disclose that
`“[a]ny suitable interactive television program guide function or setting may
`be accessed,” including, but not limited to, “remotely select[ing]
`programming for recordings” and “remotely set[ting] and navigat[ing]
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`through favorites (e.g., favorite channels, program categories, services,
`etc.).” Id. at 2:47–56.
`Although the aforementioned disclosures provide guidance as to the
`functionality of an “interactive television program guide” (i.e., navigable,
`selectable, and capable of controlling certain functions or settings), neither
`party directs us to, nor can we find, a disclosure in the specification that
`specifically identifies what element or elements constitute a “guide.” Given
`the lack of disclosure in this regard, we decline to limit the “guide” to a
`single software application. Rather, these disclosures support Comcast’s
`proposed construction that an “interactive television program guide” is
`“control software operative at least in part to generate a display of television
`program listings and allow a user to navigate through the listings, make
`selections, and control functions of the software.”
`We further clarify that, based on the plain language of independent
`claims 1, 5, 8, 11, 14, and 17, they indicate that the claim terms “local
`interactive television program guide” and “remote access interactive
`television program guide” are separately identifiable elements. See Becton,
`Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed.
`Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication
`of the claim language’ is that those elements are ‘distinct component[s]’ of
`the patented invention.” (alteration in original) (quoting Gaus v. Conair
`Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))). Our determination in this
`regard is supported by the specification, which includes various
`embodiments that treat these claim terms as separately identifiable elements
`capable of communicating with each other. See, e.g., Ex. 1101, 12:34–37
`(“In still another suitable approach, the [local interactive television program
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`guide and remote access interactive television program guide] may be
`different guides that communicate in a manner or manners discussed . . .
`herein.”), 20:18–23 (“The remote access [interactive television] program
`guide may . . . send audio, graphical, and text messages to the local
`interactive [television] program guide for playing or display by user
`television equipment 22.”). The specification also explains that the “local
`interactive television program guide” and “remote access interactive
`television program guide” may be the same guide, in which case they are
`separately identifiable elements in that each guide is compiled to run on a
`different platform. See id. at 12:29–32 (“The remote access and local guide
`may, for example, be the same guide but compiled to run on two different
`platforms and to communicate in a manner or manners discussed herein.”).
`We decline to adopt Rovi’s proposed constructions of the claim terms
`“local/remote access interactive television program guides” for two reasons.
`First, we are unable to determine how Rovi’s proposed constructions add
`any clarity to the scope and meaning of an “interactive television program
`guide.” That is, we view each of Rovi’s proposed constructions as circular
`and unhelpful because they define each of the guides as a “guide [that
`allows/allowing] navigation through television program listings.” PO Resp.
`8–9 (emphasis added). Rovi, however, does not actually identify what
`element or elements specifically constitutes the “guide.”
`Second, Rovi states that its proposed constructions indicate “where
`the specific guide resides (i.e., on ‘user television equipment’ or over ‘a
`remote access link’),” but readily admits that “these additions merely restate
`the language of the broader claim limitation[s].” PO Resp. 12 (emphasis
`omitted) (citing Ex. 1150, 185, 190). It is well settled that the Federal
`
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`IPR2017-00951
`Patent 8,006,263 B2
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`Circuit disfavors any claim interpretation that renders a claim term or phrase
`superfluous. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed.
`Cir. 2016) (“The Board was correct to not include in its construction of
`‘menu’ features of menus that are expressly recited in the claims. . . .
`Construing a claim term to include features of that term already recited in
`the claims would make those expressly recited features redundant.”). If we
`were to adopt the language in Rovi’s proposed constructions pertaining to
`where each guide resides, it would render superfluous the language that is
`already explicitly recited in independent claim 1, and similarly recited in
`independent claims 5, 8, 11, 14, and 17—namely, “over a remote access
`link” and “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.”4
`Turning now to the extrinsic evidence, in Dr. Tjaden’s Declaration
`accompanying the Petition, he testifies that “the local [interactive television
`program] guide may be implemented at least in part on a server or other
`device outside the user’s home.” Ex. 1102 ¶ 35. To support this testimony,
`he directs us to Rovi’s interpretation of the claim term “local interactive
`television program guide” in the related ITC proceeding. Id. (citing
`
`
`4 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.
`19
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`IPR2017-00951
`Patent 8,006,263 B2
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`Ex. 1145, 56; Ex. 1146, 43). In Dr. Tjaden’s Declaration accompanying the
`Reply, he elaborates further on his initial position by testifying that “a
`[person of ordinary skill in the art] looking at the ’263 Patent would have
`understood that many different arrangements of the software and hardware
`components comprising an interactive television program guide are possible
`and acceptable in [the] prior art used to show obviousness.” Ex. 1152 ¶ 11.
`To support this testimony, he directs us to the different arrangements of
`software and hardware in the ’263 patent. Id. (citing Ex. 1101, 4:30–33,
`4:47–49, 4:57–61, 6:48–50, 7:53–60, Figs. 1, 2a–2d).
`Comcast also directs us to Dr. Shamos’s Declaration in the ITC
`proceeding as further evidence as to what element or elements constitute a
`“guide.” Although we recognize that the broadest reasonable interpretation
`standard governs in this proceeding, whereas the district court claim
`construction standard governs in an ITC proceeding, Dr. Shamos’s
`testimony in the ITC proceeding is relevant here because it sheds some light
`on what element or elements he believes constitutes a “guide.” In the ITC
`proceeding, Dr. Shamos testifies that the claim term “local interactive
`television program guide” could be an “extensive collection of hardware and
`software.” Ex. 1154 ¶ 169. He also testifies “that the ‘local [interactive
`television program] guide’ [should not be construed as] a single software
`application that must reside on a device in the user’s home,” and “[n]othing
`in the claims exclude a ‘recording application’ from being part of the local
`[interactive television program] guide.” Id. ¶ 371. Dr. Shamos’s testimony
`in the ITC proceeding is consistent with Dr. Tjaden’s testimony in this
`proceeding because, like Dr. Tjaden, Dr. Shamos does not limit a