Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 36
`
`Entered: October 16, 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 IPR2017-01049
`Patent 8,578,413 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
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 36
`
`Entered: October 16, 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 IPR2017-01049
`Patent 8,578,413 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
`
`
`
`
`
`
`
`
`IPR2017-01049
`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. 1101, “the ’413 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 1–18 of the ’413 Patent as unpatentable under
`35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this inter
`partes review on October 18, 2017, as to all of the challenged claims, but not
`all the grounds presented by Comcast in its Petition. Paper 9 (“Dec. on
`Inst.”).
`During the course of trial, Rovi filed a Patent Owner Response (Paper
`15, “PO Resp.”), and Comcast filed a Reply to the Patent Owner Response
`(Paper 26, “Pet. Reply”). A consolidated oral hearing with related Cases
`IPR2017-00950, IPR2017-00951, IPR2017-00952, IPR2017-01048,
`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 35 (“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 October 18, 2017, to
`include review of all challenged claims and all grounds presented by
`Comcast in its Petition. Paper 32. 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 1–18 of the ’413 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/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`3
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`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 (“ITC”) styled In re Certain Digital Video Receivers and
`Hardware and Software Components Thereof, No. 337-TA-1001. Pet. 2;
`Paper 3, 2.
`In addition to this Petition, Comcast filed two other petitions
`challenging the patentability of claims 1–18 of the ’413 Patent (Cases
`IPR2017-01048 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. 1101, [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.
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`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].
`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. 1101, 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
`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. 1101, 7:15–39.
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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 7:15–22. 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 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. 1101, 8:16–34.
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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 8:21–26.
`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
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`(disclosing steps involved with using the remote access interactive television
`guide to provide program listing information to a user).
`The ’413 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, 15:60–64. For example, if remote access link 19 is an
`Internet link, program guide functionality may be accessed using Hypertext
`Transfer Protocol. Id. at 15:64–66. 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 15:66–16:4. The ’413 Patent makes
`clear that “[a]ny suitable file transfer protocol based on any suitable protocol
`stack may be used.” Id. at 16:4–5.
`
`
`C. Illustrative Claim
`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:
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`
`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
`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
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`using the local interactive television program guide
`equipment.
`Ex. 1101, 40:6–48.
`
`
`D. 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. 40; Paper 32.
`
`References
`Sato2 and Humpleman3
`Sato, Humpleman, and Lawler4
`Woo, 5 Mizuno, 6 and Rzeszewski7
`Woo, Mizuno, Rzeszewski, and
`Lawler
`
`Challenged Claims
`Basis
`§ 103(a) 1, 3–10, and 12–18
`§ 103(a) 2 and 11
`§ 103(a) 1, 3–10, and 12–18
`§ 103(a) 2 and 11
`
`
`
`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
`
`
`2 U.S. Patent No. 6,408,435 B1; issued June 18, 2002 (Ex. 1115, “Sato”).
`3 U.S. Patent No. 6,182,094 B1; issued Jan. 30, 2001 (Ex. 1106,
`“Humpleman”).
`4 U.S. Patent No. 5,805,763, issued Sept. 8, 1998 (Ex. 1109, “Lawler”).
`5 U.S. Patent No. 5,485,219, issued Jan. 16, 1996 (Ex. 1116, “Woo”).
`6 PCT Int’l Pub. No. WO 97/18636, published May 22, 1997 (Ex. 1117,
`“Mizuno”).
`7 U.S. Patent No. 5,699,125, issued Dec. 16, 1997 (Ex. 1118, “Rzeszewski”).
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`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. 9 (citing 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)). 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.
`In its Patent Owner Response, Rovi generally agrees with our initial
`determination that the only claim terms requiring construction are
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`“local/remote access interactive television program guides.” PO Resp. 8–9.
`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 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 distinct guides, and the findings of the ITC in related
`proceedings. Id. at 9–10 (citing Ex. 2101, 193, 198, 409).
`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, all 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. 10–11. Rovi asserts that, because 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 11. 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
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`selectable); and (2) they both agree that the claims require two separate
`guides, as properly construed. Id. at 11–13. 8
`In its Reply, Comcast contends that Rovi’s proposed constructions of
`the claim terms “local/remote access interactive television program guides”
`improperly seek to limit the broadest reasonable interpretation of the claim
`term “interactive television program guide” to a single software component
`that generates listings, thereby excluding other software components that
`assist in providing guide functionality. Pet. Reply 4 (citing PO Resp. 30–34;
`Ex. 2011 ¶¶ 134–135, 144–148). According to Comcast, this exclusion
`finds no basis in the plain language of the claims and the specification of the
`’413 Patent. Id. at 4–5 (citing Ex. 1152 ¶¶ 10–14).
`Comcast also contends that Rovi’s arguments directed to the claim
`term “interactive television program guide” contradict the construction Rovi
`offered in the related ITC proceeding. Pet. Reply 5. Comcast argues that
`Rovi expanded the scope of the claim term “local interactive television
`program guide” in the related ITC proceeding, to capture all software
`components related to any local guide functionality, including recording. Id.
`(citing Ex. 2101, 188–199, 222–236; 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
`
`
`8 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 10, 3 (cautioning Rovi that “any arguments for patentability not raised
`in the response will be deemed waived”).
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`testimony that the claim term “local interactive television program guide”
`could be an “extensive collection of hardware and software.” Id. (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. 2111 ¶ 147,
`with Ex. 1154 ¶¶ 169, 376, 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
`others from practicing 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. 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 9–10. 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. at 10–11 (emphasis added); see
`also Ex. 2111 ¶ 25 (Rovi’s declarant, Dr. Shamos, testifies that, “regardless
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`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 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 ’413 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, 1:28–33.
`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 1:34–42. 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 2:64–3:4. The specification goes on to disclose that
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`“[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]
`through favorites (e.g., favorite channels, program categories, services,
`etc.).” Id. at 3:5–15.
`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 the plain language of independent claims 1 and
`10 indicates 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
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`terms as separately identifiable elements capable of communicating with
`each other. See, e.g., Ex. 1101, 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 . . . herein.”), 23:4–7 (“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 15:15–18
`(“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.
`9 (emphasis added). Rovi, however, does not actually identify what element
`or elements specifically constitute the “guide.”
`Second, Rovi states that its proposed constructions indicate “where
`the specific guide resides (i.e., on ‘user television equipment’ or over ‘a
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`IPR2017-01049
`Patent 8,578,413 B2
`
`remote access link’),” but readily admits that “these additions merely restate
`the language of the broader claim limitation[s].” PO Resp. 13–14 (emphasis
`omitted) (citing Ex. 2101, 193, 198, 409). It is well settled that the Federal
`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 claim 10—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 is located within the user’s home and
`includes user television equipment.”9
`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
`
`
`9 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.
`18
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`
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`IPR2017-01049
`Patent 8,578,413 B2
`
`device outside the user’s home.” Ex. 1102 ¶ 36. 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 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 ’413 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 ’413 Patent. Id. ¶¶ 16–18 (citing Ex. 1101,
`7:15–19, 33–35, 40–47, 9:36–44, 10:15–16, 29–34, 41–48, 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 constitute a “guide.” In the ITC
`proceeding, Dr. Shamos testified that the claim term “local interactive
`television program guide” could be an “extensive collection of hardware and
`software.” Ex. 1154 ¶ 169. He also testified “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
`
`19
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`IPR2017-01049
`Patent 8,578,413 B2
`
`in the ITC proceeding is consistent with Dr. Tjaden’s testimony in this
`proceeding because, like Dr. Tjaden, Dr. Shamos does not limit a “guide” to
`a single software application, but rather contemplates that the “guide” may
`constitute different arrangements of software and hardware.
`We note that the aforementioned testimony from Dr. Tjaden and Dr.
`Shamos suggests that the “guide” may include both software and hardware.
`Rovi likewise argues that its proposed construction is broader than
`Comcast’s because it “does not unnecessarily restrict the guides to ‘control
`software.’” PO Resp. 11. We do not find support in the intrinsic record that
`the “guide” may include hardware. Rather, the ’413 Patent separately refers
`to the interactive television program guide and the hardware on which it is
`implemented. See, e.g., Ex. 1101, 1:34–35 (“Interactive television program
`guides are typically implemented on set-top boxes . . . .”). The
`aforementioned testimony, however, is consistent with our conclusion that
`t
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