`571.272.7822
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` Paper No. 36
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`Filed: October 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`ROVI GUIDES, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2017-01050
`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
`
`
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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. 1201, “the ’413 Patent”). Paper 2 (“Pet.”). Patent
`Owner, Rovi Guides, Inc. (“Rovi”), filed a Preliminary Response. Paper 6.
`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 and all
`the grounds presented the Petition. Paper 8 (“Dec. on Inst.”).
`During the course of trial, Rovi filed a Patent Owner Response (Paper
`14, “PO Resp.”), and Comcast filed a Reply to the Patent Owner Response
`(Paper 25, “Pet. Reply”). A consolidated oral hearing with related Cases
`IPR2017-00950, IPR2017-00951, IPR2017-00952, IPR2017-01048,
`IPR2017-01049, 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.”).
`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).
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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 IPR2017-01049). 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. 1201, [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. 1201, 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. 1201, 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. 1201, 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. Ex. 1201, 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. 1201, 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 claim 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. 1201, 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. 35.
`References
`Basis
`Challenged Claims
`Blake1,2 and Killian 3
`§ 103(a) 1, 3–10, and 12–18
`Blake, Killian, and Lawler4
`§ 103(a) 2 and 11
`
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, 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
`
`
`1 PCT Int’l Pub. No. WO 98/10589; filed Sept. 2, 1997, published Mar. 12,
`1998 (Ex. 1222, “Blake”).
`2 Blake incorporates by reference U.S. Patent No. 4,706,121 (Ex. 1223,
`“Young”).
`3 U.S. Patent No. 6,163,316; issued Dec. 19, 2000 (Ex. 1208, “Killian”).
`4 U.S. Patent No. 5,805,763, issued Sept. 8, 1998 (Ex. 1209, “Lawler”).
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`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
`“local/remote access interactive television program guides.” PO Resp. 9.
`Rovi, however, proposes that the proper constructions for these claims terms
`are the following: (1) “local interactive television program guide” is a
`“guide that allows navigation through television program listings and causes
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`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 10. 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 10–11 (citing Ex. 2201, 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, each of Comcast’s asserted
`grounds fails under Rovi’s broader constructions “that do[] not unnecessarily
`restrict the guides to ‘control software’ that ‘controls functions of the
`software.’” PO Resp. 11. Rovi asserts that, because each of Comcast’s
`asserted grounds fails under broader constructions for these claim terms, we
`need not determine whether the asserted prior art satisfies Comcast’s
`proposed constructions. Id. 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
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`(i.e., navigable and selectable); and (2) they both agree that the claims
`require two separate guides, as properly construed. Id. at 11–14. 5
`In its Reply, Comcast counters with the following: (1) its arguments
`apply the broadest reasonable interpretation standard; (2) it relies on Rovi’s
`arguments from the related ITC proceeding regarding the proper scope and
`meaning of the claim terms “local/remote access interactive television
`program guides” as evidence of the broadest reasonable interpretation of
`these claims terms in this proceeding; and (3) it disagrees with Rovi’s
`proposed constructions both in this proceeding and in the ITC proceeding.
`Pet. Reply 1 n.1.
`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. 10. On the other hand, Rovi argues that
`both our constructions and the ITC’s constructions “are consistent with
`
`
`5 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 9, 3 (cautioning Rovi that “any arguments for patentability not raised
`in the response will be deemed waived”).
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`respect to the relevant aspects (e.g., navigation and selection)” of a
`local/remote access interactive television program guide. Id. at 11. 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. 2211 ¶ 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
`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. 1201, 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
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`of discussing the implementation of a remote access interactive television
`program guide, the specification discloses that such a guide works in
`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
`“[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
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`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. 1201, 12:20–23 (“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
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`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
`remote access link’),” but readily admits that “these additions merely restate
`the language of the broader claim limitation[s].” PO Resp. 14 (citing Ex.
`2201, 193, 198, 409). It is well settled that the U.S. Court of Appeals for 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
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`implemented, wherein the local interactive television program guide
`equipment includes user television equipment.”6
`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. 1202 ¶ 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. 1245, 56; Ex. 1246, 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. 1252 ¶ 15. To support this testimony, he directs us to the
`different arrangements of software and hardware in the ’413 Patent. Id.
`(citing Ex. 1201, 7:16–19, 33–35, 43–47, 9:36–38, 10:41–48, Figs. 1, 2a–
`2d).
`
`Dr. Shamos’s Declaration in the ITC proceeding serves as further
`evidence as to what element or elements constitute a “guide.” Although we
`
`
`6 During oral argument, in response to a question regarding the ITC’s
`construction of the “local interactive television program guide” being on
`user television equipment and its construction that the “remote access
`television program guide” uses a remote access link, counsel for Rovi stated
`that “I don’t think where [the guides are] implemented is meaningful
`because that’s recited in the claim separately.” Tr. 66:22–67:24.
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`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. 1254 ¶ 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 “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. 1201, 1:34–35 (“Interactive television program
`guides are typically implemented on set-top boxes . . . .”). The
`aforementioned testimony, however, is consistent with our finding that the
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`“guide” may constitute more than just a single software application.
`In summary, upon weighing all the evidence bearing on the
`construction of the claim term “interactive television program guide,” we
`maintain that the broadest reasonable interpretation of this claim term 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 also maintain 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. Obviousness Over the Combined Teachings of Blake 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 Blake and
`Killian. Pet. 21–59. 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. 1202 ¶¶ 94–212. In its Patent Owner Response, Rovi
`presents a number of arguments as to why the combined teachings of Blake
`and Killian do not render the limitations of independent claims 1 and 10
`obvious. PO Resp. 20–41. Rovi relies upon the Declaration of Dr. Shamos
`to support its positions. Ex. 2211 ¶¶ 97–99, 161–191.
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`We begin our analysis with the principles of law that generally apply
`
`to a ground based on obviousness, followed by an assessment of the level of
`skill in the art, followed by brief overviews of Blake and Killian, and then
`we address the parties’ contentions with respect to the claims at issue in this
`asserted ground.
`
`1. 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
`the art; 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 this asserted ground based on obviousness with the
`principles identified above in mind.
`2. Level of Skill in the Art
`There is evidence in the record before us that enables us to determine
`the knowledge level of a person of ordinary skill in the art. Relying on the
`testimony of its declarant, Dr. Tjaden, Comcast asserts that a person of
`ordinary skill in the art as of July 17, 1998, which is the earliest priority date
`on the face of the ’413 Patent, would be an individual who possesses the
`following:
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`a bachelor’s degree in computer science, electrical engineering,
`computer engineering, or a similar discipline, and two years of
`experience with interactive program guides, set-top boxes,
`mobile computer devices, and techniques for delivering content
`or program guides over communication