Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 9
`
`Entered: October 18, 2017
`
`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 IPR2017-01048
`Patent 8,578,413 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 9
`
`Entered: October 18, 2017
`
`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 IPR2017-01048
`Patent 8,578,413 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01048
`Patent 8,578,413 B2
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`
`I. INTRODUCTION
`
`Petitioner, Comcast Cable Communications, LLC (“Comcast”), filed a
`Petition requesting an inter partes review of claims 1–18 of U.S. Patent No.
`8,578,413 B2 (Ex. 1001, “the ’413 Patent”). Paper 2 (“Pet.”). Patent
`Owner, Rovi Guides, Inc. (“Rovi”), filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Taking into account the arguments
`presented in Rovi’s Preliminary Response, we conclude that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Comcast would prevail in challenging claims 1–18 of the ’413 Patent as
`unpatentable under 35 U.S.C. § 103(a). Pursuant to § 314, we hereby
`institute an inter partes review as to these claims of the ’413 Patent.
`
`A. Related Matters
`
`The ’413 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 3, 2. The ’413 Patent also has
`been asserted against Comcast in a proceeding before the U.S. International
`Trade Commission styled In re Certain Digital Video Receivers and
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`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 1–18 of the ’413 Patent (Cases
`IPR2017-01049 and IPR2017-01050). Pet. 3; Paper 3, 2. Comcast also filed
`other petitions challenging the patentability of certain subsets of claims in
`several patents owned by Rovi. Pet. 3.
`
`B. The ’413 Patent
`
`The ’413 Patent, titled “Interactive Television Program Guide with
`Remote Access,” issued November 5, 2013, from U.S. Patent Application
`No. 13/275,565, filed on October 18, 2011. Ex. 1001, at [54], [45], [21],
`[22]. The ’413 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 ’413 Patent also claims the benefit of U.S. Provisional Application No.
`60/097,527, filed August 21, 1998, and U.S. Provisional Application No.
`60/093,292, filed on July 17, 1998. Id. at [60].
`The ’413 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. 1001, 1:16–19. The ’413 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 1:34–42. Stated differently, conventional interactive television
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`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 2:16–19. The ’413 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 2:20–25.
`Figure 1 of the ’413 Patent, reproduced below, illustrates a schematic
`block diagram of the system in accordance with the present invention.
`Ex. 1001, 7:15–39.
`
`
`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 7:15–22. Interactive television program
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`guide equipment 17 is connected to at least one remote program guide
`access device 24 via remote access link 19. Id. at 7:33–35.
`
`Figure 2a of the ’413 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. 1001, 8:16–34.
`
`
`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 8:21–26.
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`
`In at least one embodiment, the ’413 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. Id. at 15:9–18. In one example, the remote access and local
`interactive television program guides may be two different guides that
`communication with each other. Id. at 15:20–23; see also id. at 25:35–59
`(disclosing steps involved with using the remote access interactive television
`guide to provide program listing information to a user).
`
`C. Challenged Claims
`
`Claims 1 and 10 are independent. Independent claim 1 is directed to a
`
`system for selecting television programs over a remote access link that
`includes an Internet communications path for recording, whereas
`independent 10 is directed to a method for performing the same. Claims 2–9
`depend from independent claim 1, and claims 11–18 depend from
`independent claim 10. Independent claim 1 is illustrative of the challenged
`claims and is reproduced below:
`1.
`A system for selecting a television program over a
`remote access link comprising an Internet communications path
`for recording, the system 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 generates a display of one or more
`television program listings for display on a display device
`at a user's home, wherein the local interactive television
`program guide equipment is located within the user's home
`and includes user television equipment, wherein a mobile
`device communicates with the local interactive television
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`
`program guide equipment, wherein the mobile device, on
`which a remote access interactive television program
`guide is implemented, is located outside of the user's
`home, and wherein the mobile device:
`generates a display of the remote access interactive television
`program guide, the remote access interactive television
`program guide comprising a plurality of television
`program listings for display on the mobile device, wherein
`the display of the remote access interactive television
`program guide is generated based on a user profile stored
`at a location remote from the mobile device;
`receives a user selection of the television program for
`recording by the local interactive television program
`guide, wherein the user selects the television program by
`selecting a television program listing from the plurality of
`television program listings displayed, by the remote access
`interactive television program guide, on the mobile
`device; and
`transmits, to the local interactive television program guide
`over the Internet communications path, a communication
`identifying
`the
`television program
`for
`recording
`corresponding to the television program listing selected by
`the user with the remote access interactive television
`program guide,
`wherein the local interactive television program guide
`receives the communication and, responsive to the
`communication,
`records
`the
`television
`program
`corresponding to the selected television program listing
`using the local interactive television program guide
`equipment.
`Ex. 1001, 40:6–48.
`
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`
`D. Asserted Grounds of Unpatentability
`Comcast challenges claims 1–18 of the ’413 Patent based on the
`
`asserted grounds of unpatentability (“grounds”) set forth in the table below.
`Pet. 10–12, 20–73.
`Challenged Claim(s)
`Basis
`References
`§ 103(a) 1, 3–10, and 12–18
`Humpleman1 and Killian2
`Humpleman, Killian, and Lawler3 § 103(a) 2 and 11
`Kondo,4 Killian, and Kawamura5 § 103(a) 1, 3–10, and 12–18
`Kondo, Killian, and Kawamura,
`§ 103(a) 2 and 11
`and Lawler
`
`
`
`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);
`
`
`1 U.S. Patent No. 6,182,094 B1; issued Jan. 30, 2001 (Ex. 1006,
`“Humpleman”).
`2 U.S. Patent No. 6,163,316, issued Dec. 19, 2000 (Ex. 1008, “Killian”).
`3 U.S. Patent No. 5,805,763, issued Sept. 8, 1998 (Ex. 1009, “Lawler”).
`4 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).
`5 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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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim construction standard to be applied in an inter partes review
`proceeding). 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 its Petition, Comcast proposes constructions for the following claim
`terms: (1) “local/remote access interactive television program guides” (all
`challenged claims); (2) “mobile device” (all challenged claims); (3) “user
`television equipment” (all challenged claims); and (4) “user profile” (all
`challenged claims). Pet. 13–16. In response, Rovi contends that Comcast
`improperly construes the following claim terms: (1) “local/remote access
`interactive television program guides”; and (2) “mobile device.” Prelim.
`Resp. 14–17. For purposes of this Decision, we determine that the only
`claim terms requiring construction are “local/remote access interactive
`television program guides,” and only to the extent necessary to resolve the
`issues discussed below—namely, whether the grounds asserted by Comcast
`properly account for both a “local interactive television program guide” and
`a “remote access interactive television program guide.” See, e.g., Vivid
`Techs., Inc. v. Am. 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).
`In its Petition, Comcast contends that the claim term “interactive
`television program guide” is not defined in the ’413 Patent. Pet. 13.
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`Relying on the specification of the ’413 Patent, as well as the supporting
`testimony of its declarant, Dr. Gary Tjaden, Comcast argues that a person of
`ordinary skill in the art would have understood that this claim term refers to
`“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 13–14 (citing
`Ex. 1001, 1:28–35; Ex. 1002 ¶¶ 32–35).
`Comcast then proceeds to differentiate between a “local interactive
`television program guide” and a “remote access interactive television
`program guide.” Pet. 14–15. Comcast argues that a person of ordinary skill
`in the art would have understood a “‘local interactive television program
`guide’ to refer to an [interactive television program guide] that generates a
`display of television program listings for use at the user premises.” Id. at 14
`(citing Ex. 1002 ¶ 36). According to Comcast, the “local interactive
`television program guide” may be implemented, in part, on a server or other
`device outside the user’s home. Id. at 14–15. In contrast, Comcast argues
`that a person of ordinary skill in the art would have understood a “‘remote
`[access] interactive television program guide’ to refer to an [interactive
`television program guide] that generates a display of television program
`listings for use on a remote access device, such as a mobile device.” Id. at
`15 (citing Ex. 1002 ¶ 37).
`In response, Rovi merely reiterates Comcast’s construction of the
`claim term “interactive television program guide.” Prelim. Resp. 14. Rovi,
`however, contends that, to the extent the claim terms “local interactive
`television program guide” and “remote access interactive television program
`guides” require further construction, these claim terms refer to “an
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`[interactive television program guide] that causes display of program
`information on user television equipment, and an [interactive television
`program guide] allowing navigation through television program listings
`using a remote access link[, respectively].” Id. at 15 (citing Ex. 1001, 4:8–
`39, 11:63–12:7, 14:41–47, 15:9–32, 16:20–33, 25:52–59, Figs. 12–23).
`Rovi then argues that we should decline to adopt Comcast’s proposed
`construction for the claim terms “local interactive television program guide”
`and “remote access interactive television program guides” because they are
`vague and confusing, as well as not based on the intrinsic record. Id. at 14–
`15.
`
`As an initial matter, we agree with Comcast that the specification of
`the ’413 Patent does not disclose an explicit definition for the claim term
`“interactive television program guide.” We also agree with Comcast that, at
`this stage in the proceeding, an “interactive television program guide”
`should be construed as “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.” This
`construction is supported by the specification of the ’413 Patent, particularly
`its disclosure of conventional interactive television program guides that
`display “various groups of television program 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. 1001, 1:28–33.
`We do not understand Rovi to dispute Comcast’s proposed
`construction of the claim term “interactive television program guide.” See
`Prelim. Resp. 14. Instead, Rovi merely proposes alternative constructions
`
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`for the claim terms “local interactive television program guide” and “remote
`access interactive television program guides” that differ from the
`constructions proposed by Comcast insofar as (1) where the “local
`interactive television program guide” is displayed—be it at the user premises
`or on user television equipment; and (2) whether the “remote access
`interactive television program guide” generates program listings for use on a
`remote device or allows navigation of program listings using a remote access
`link. For purposes of this Decision, we need not assess the differences
`between the alternative constructions proposed by the parties in order to
`determine whether Comcast’s asserted grounds of patentability satisfy the
`“reasonable likelihood” threshold standard for institution of trial.
`We, however, take this opportunity to clarify that, based on the plain
`language of independent claims 1 and 10, 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. 1001, 15:20–23 (
`“In still another suitable approach, the [local interactive television program
`guide and remote access interactive television program guide] may be
`different guides that communicate in a manner or manners discussed . . .
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`therein”); 23:4–9 (“The remote access [interactive television] program guide
`may . . . send audio, graphical, and text messages to the local interactive
`[television] program guide for playing or displaying by user television
`equipment 22”).
`In summary, we determine that the broadest reasonable interpretation
`of the claim term “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 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.
`
`B. Principles of Law
`
`A claim is unpatentable under § 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 the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`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 skill in
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`the art;6 and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). We analyze the asserted grounds based on obviousness with the
`principles identified above in mind.
`
`C. Obviousness Over the Combined Teachings of Humpleman and Killian
`
`Comcast contends that claims 1, 3–10, and 12–18 of the ’413 Patent
`
`are unpatentable under § 103(a) over the combined teachings of Humpleman
`and Killian. Pet. 20–47. Comcast explains how this proffered combination
`teaches or suggests the subject matter of each challenged claim, and
`provides reasoning as to why one of ordinary skill in the art would have
`been prompted to modify or combine the references’ respective teachings.
`Id. Comcast also relies upon the Declaration of Dr. Tjaden to support its
`positions. Ex. 1002 ¶¶ 95–192. At this stage of the proceeding, we are
`persuaded by Comcast’s explanations and supporting evidence.
`
`We begin our analysis with brief overviews of Humpleman and
`Killian, and then we address the parties’ contentions with respect to the
`claims at issue in this asserted ground.
`
`1. Humpleman Overview
`
`Humpleman generally relates to the field of networks and, in
`
`
`6 Relying upon the testimony of Dr. Tjaden, Comcast offers an assessment
`as to the level of skill in the art as of July 17, 1998, which is the earliest
`effective filing date on the face of the ’413 Patent. Pet. 12–13 (citing
`Ex. 1002 ¶¶ 27–29). To the extent necessary, and for purposes of this
`Decision, we accept the assessment offered by Comcast as it is consistent
`with the ’413 Patent and the asserted prior art.
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`particular, to home networks that have multi-media devices connected
`thereto. Ex. 1006, 1:16–18. One objective of Humpleman’s invention is to
`provide a method for controlling a plurality of devices connected to a home
`network, where at least one of these devices is a multi-media device, and for
`generating a program guide from the information provided by the multi-
`media device on a second device connected to the home network. Id. at
`2:23–28. The generated program guide may be a Hypertext Markup
`Language (“HTML”) page that allows for selection of a specific program for
`recording on local equipment. Id. at 20:31–51. That HTML version is
`generated by a digital satellite services interface device (“DSS”) that also
`displays a conventional electronic program guide. Id. at 22:21–59.
`Humpleman claims priority to and incorporates by reference (id. at.
`1:7–13) a provisional patent application (60/059,499; Ex. 1007), and
`provides further insight into the software structures disclosed. An annotated
`version of figure 13 of that provisional patent application is reproduced
`below:
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`The annotated version of the figure illustrates portions that Comcast argues
`correspond to different claimed portions, with the local guide software and
`its data in purple, remote guide files in orange, control software for local
`recording equipment in blue, and referencing remote guide equipment in red.
`Pet. 22. The provisional application also makes clear that a message is sent
`to the DSS control application by the remote device over the Internet based
`on a selection by the user in the HTML program guide, instructing it to
`control hardware to record the selected program. Ex. 1007, 2–3.
`According to Humpleman, a user may customize the programming
`information that is displayed by the program guide. Ex. 1006, 22:41–43.
`For instance, if a user prefers not to display the schedule for a particular
`channel because it contains inappropriate content, the user may request that
`the channel be removed from the program guide. Id. at 22:43–46. In
`addition, according to Humpleman, a user can remotely control devices
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`connected to the home network. Id. at 20:42–47. “For example, if a user is
`required to work late and is therefore unable to watch the Monday night
`football game, the user can program a [digital video cassette recorder
`(“DVCR”)] connected to their home network via the Internet, in order to
`record the particular event.” Id. at 20:47–51.
`
`2. Killian Overview
`
`Killian discloses an electronic programming guide (“EPG”) that
`operates on a JAVA-based computing platform associated with a television
`and a video recorder. Ex. 1008, Abstract, 3:6–12, Fig. 1. A collection of
`application programming interfaces (“APIs”) allow the platform to support
`JAVA applets or applications that provide interactive television
`programming. Id. at 3:18–27. In one embodiment, the platform supports an
`EPG JAVA applet or application “that allows viewers to more intelligently
`select, schedule, and record viewing opportunities according to viewer
`profiles” and other information received via the Internet. Id. at 3:27–33.
`The EPG can use other platform components to cause the video recorder to
`record programs. Id. at 15:5–18.
`Claims 1 and 107
`3.
`In its Petition, Comcast contends that the person of ordinary skill in
`the art would have found it obvious to include interactive selection and
`control features in Humpleman’s guide software on the DSS, with some of
`
`
`7 Comcast contends that independent claims 1 and 10 stand or fall together.
`Pet. 9–10. Rovi does not dispute Comcast’s assertion in this regard. Accord
`Prelim. Resp. 17–56 (treating independent claims 1 and 10 as standing or
`falling together).
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`those associated functionalities already disclosed in the ’413 Patent. Pet.
`22–23 (citing Ex. 1001, 1:24–33). Comcast also argues that such
`functionalities are disclosed in Killian, and those aspects would have been
`implemented in Humpleman’s system for several reasons. Id. at 22–25.
`First, Comcast argues that Humpleman expressly teaches that its home
`control system is interoperable with conventional hardware, and that a DSS
`loaded with Killian’s guide could and would be utilized in Humpleman’s
`system, because Humpleman was designed to be layered on top of existing
`hardware and software installations. Id. at 24 (citing Ex. 1002, ¶ 103).
`Second, Comcast argues that Killian expressly teaches that the EPG modules
`implementing the recording control APIs could be integral to the functioning
`of external devices other than the receiver, which would have provided
`greater utility to Humpleman’s network of remote devices. Id. at 24 (citing
`Ex. 1008, 15:53–16:7; Ex. 1002, ¶ 104). Lastly, Comcast argues that
`combining the teachings of Killian with those of Humpleman would be
`nothing more than using known techniques to improve similar devices and a
`simple substitution of one known, closely-related element for another that
`produces predictable results. Id. at 24–25 (citing Ex. 1002, ¶¶ 105–106).
`In its Preliminary Response, Rovi presents a number of arguments
`that can be grouped as follows: (1) whether Comcast can properly rely on
`the disclosure of Humpleman’s provisional application in the instant
`obviousness ground of unpatentability; (2) whether Comcast has
`demonstrated that Humpleman and Killian, either alone or in combination,
`account for all the limitations recited in independent claims 1 and 10; and (3)
`whether Comcast has demonstrated that a person of ordinary skill in the art
`would have combined the teachings of Humpleman and Killian. Prelim.
`
`18
`
`
`
`IPR2017-01048
`Patent 8,578,413 B2
`
`Resp. 7–13, 17–23, 29–40. We address these groupings of arguments in
`turn.
`
`a. Humpleman’s Provisional Application
`Rovi contends that, with respect to grounds that rely, in part, on the
`teachings of Humpleman, the Humpleman provisional is not prior art. Rovi
`argues that Comcast has failed to identify the Humpleman provisional in its
`identification of the patents and printed publications relied upon for each
`ground, under 37 C.F.R. § 42.104(b)(2), and that the provisional application
`cannot be relied upon as valid prior art under 35 U.S.C. § 102(e). Prelim.
`Resp. 7–12. Although Rovi is correct about the requirements placed on art
`applied in a petition, we are not persuaded that Comcast has relied upon or
`asserted the Humpleman provisional absent the Humpleman issued patent.
`Comcast does not assert the former without asserting the latter.
`Rovi also contends that the Humpleman provisional is not properly
`incorporated by reference into Humpleman. Id. at 13–14. Rovi argues that
`Humpleman does not identify with particularity the specific material in the
`provisional applications asserted to be incorporated by reference or clearly
`indicate where that material is found in the incorporated applications, as
`required to incorporate material by reference. Id. (citing Advanced Display
`Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000); Zenon
`Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378–79 (Fed. Cir. 2007)).
`We do not agree.
`
`19
`
`
`
`IPR2017-01048
`Patent 8,578,413 B2
`
`
`The relevant section of Humpleman is reproduced below:
`This patent application claims priority from provisional patent
`application Ser. No. 60/050,762, filed on Jun. 25, 1997, entitled
`Home Network, Browser Based, Command and Control and
`provisional patent application Ser. No. 60/059,499, filed on Sep.
`22, 1997, entitled Improved Home Network, Browser Based,
`Command and Control, which are incorporated herein by
`reference.
`Ex. 1006, 1:7–13 (emphasis added). From this notification, we find the
`patentee in Humpleman incorporated the entireties of both provisional
`applications by reference. If the intent was to incorporate only one
`provisional or just part of one provisional, then we would agree that
`sufficient particularity has not been supplied. However, the normal
`interpretation of such an incorporation by reference clause is that all of the
`referenced provisional disclosures are incorporated. Similarly, there is no
`need to stipulate where particular material to be incorporated is found when
`that particular material is all.
`
`As such, we are not persuaded, as a matter of law, that Humpleman
`did not incorporate both provisional applications into its disclosure. Thus,
`we are persuaded that the Humpleman provisional can be relied upon for its
`disclosure, having been properly incorporated by reference according to 37
`C.F.R. § 1.57(c) into Humpleman.
`Limitations
`b.
`Rovi contends that each independent claim requires two interactive
`television program guides—namely, “a local interactive television program
`guide” and “a remote access interactive television program guide”—in
`communication with each other. Prelim. Resp. 17–19. Rovi argues that
`Comcast fails to identify any explicit disclosures in Humpleman that its
`
`20
`
`
`
`IPR2017-01048
`Patent 8,578,413 B2
`
`“local guide” and “remote guide” are interactive. Id. at 19. Rather, Rovi
`argues that the guides are disclosed as versions of a conventional EPG, and,
`thus, not interactive. Id. As well, Rovi asserts that, although Humpleman’s
`remote guide is asserted to allow users to navigate program listings, there is
`no evidence in the Petition that “the ‘conventional EPG’ implemented at the
`DSS device” is interactive or that the HTML guide is not simply used by all
`devices, including the DSS. Id. at 20, 33–35 (citing Pet. 13–14, 20–23).
`Additionally, Rovi asserts that nowhere does Humpleman disclose
`navigation through program listings. Id. at 20–21. We do not agree.
`Comcast has acknowledged that “Humpleman may not expressly
`disclose interactive selection and control features associated with its local
`and remote guides.” Pet. 22. It is for that reason that Comcast also cites
`Killian, such that any apparent deficiency in Humpleman can be cured.
`Rovi does not appear to dispute that Killian discloses an interactive program
`guide, with selection of programs from listings and response by a receiver to
`such a selection. As such, we are persuaded that the combination of
`Humpleman and Killian at least discloses the subject elements of claim 1,
`i.e., interactive program guides, although we address the propriety of the
`combination below. As well, Humpleman makes clear that the HTML files
`are updated based
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