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 IPR2017-01065
`Patent 8,046,801 B2
`____________
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 35
`
`Entered: October 15, 2018
`
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`

`

`IPR2017-01065
`Patent 8,046,801 B2
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`
`I. INTRODUCTION
`Petitioner, Comcast Cable Communications, LLC (“Comcast”), filed a
`Petition for inter partes review of claims 1–54 of U.S. Patent No. 8,046,801
`B2 (Ex. 1001, “the ’801 patent”). Paper 2 (“Pet.”). Patent Owner, Rovi
`Guides, Inc. (“Rovi”), filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). 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 1–54 of the ’801 patent as unpatentable under
`35 U.S.C. § 103(a). Pursuant to § 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 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, IPR2017-01050, IPR2017-01066, and IPR2017-01143 was
`held on June 19, 2018, and a transcript of the hearing is included in the
`record. Paper 34 (“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
`proceedings,” in which the Office took the policy position that a decision
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`granting institution will institute on all of the challenged claims in the
`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 31. 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 1–54 of the ’801 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).
`
`A. Related Matters
`
`The ’801 patent is involved in the following district court cases:
`(1) Rovi Guides, Inc. v. Comcast Corp., No. 2:16-cv-00322 (E.D. Tex.),
`
`1 Available at https://www.uspto.gov/patentsapplication-process/patent-trial-
`and-appeal-board/trials/guidance-impactsas-aia-trial.
`3
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`which has been transferred to the U.S. District Court for the Southern
`District of New York and is now 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 ’801 patent has
`also 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 (Int’l Trade Comm’n). Pet. 2; Paper 3, 2.
`In addition to this Petition, Comcast filed two other petitions
`challenging the patentability of claims 1–54 of the ’801 patent (Cases
`IPR2017-001066 and IPR2017-01143), as well as petitions challenging
`related patents. Pet. 3; Paper 3, 2.
`
`B. The ’801 Patent
`
`The ’801 patent, titled “Interactive Television Program Guide with
`Remote Access,” issued October 25, 2011, from U.S. Patent Application
`No. 10/927,814, filed on August 26, 2004. Ex. 1001, at [54], [45], [21],
`[22]. The ’801 patent is a continuation of U.S. Patent Application No.
`09/354,344, filed on July 16, 1999. Id. at [63]. The ’801 patent also claims
`the benefit of U.S. Provisional Application No. 60/097,527, filed on August
`21, 1998, and U.S. Provisional Application No. 60/093,292, filed on July 17,
`1998. Id. at [60].
`The ’801 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 ’801 patent
`discloses that conventional interactive television program guide systems
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`typically are implemented on set-top boxes located in the home of a user
`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 ’801 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 ’801 patent, reproduced below, illustrates a schematic
`block diagram of the system described in the patent. Id. at 5:35–36, 7:15–
`16.
`
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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
`communications link 18. Id. at 7:16–19. 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 ’801 patent, reproduced below, illustrates one
`arrangement involving interactive television program guide equipment 17
`and remote program guide access device 24. Id. at 5:37–40, 7:40–43.
`
`
`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
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`7:44–53. 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 8:15–26.
`In at least one embodiment, the ’801 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 15:9–15. In one example, the remote access and local
`interactive television program guides may be two different guides that
`communicate 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
`program guide to provide program listing information to a user). In another
`example, the remote access and local interactive television program guides
`may be the same guide but compiled to run on two different platforms. Id. at
`15:15–18.
`The ’801 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. 1001, 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 ’801 patent makes
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`clear that “[a]ny suitable file transfer protocol based on any suitable protocol
`stack may be used.” Id. at 16:4–5.
`
`C. Challenged Claim
`
`Claims 1, 5, 10, 15, 19, 23, 28, 33, 37, 41, 46, and 51 are independent.
`Claims 1, 5, 19, 23, 37, and 41 recite methods, and claims 10, 15, 28, 33, 46,
`and 51 recite systems. Claims 2–4 directly depend from independent claim
`1; claims 6–9 directly depend from independent claim 5; claims 11–14
`directly depend from independent claim 10; claims 16–18 directly depend
`from independent claim 15; claims 20–22 directly depend from independent
`claim 19; claims 24–27 directly depend from independent claim 23; claims
`29–32 depend directly from independent claim 28; claims 34–36 depend
`directly from independent claim 33; claims 38–40 depend directly from
`independent claim 37; claims 42–45 depend directly from independent claim
`41; claims 47–50 depend directly from independent claim 46; and claims
`52–54 depend directly from independent claim 51.
`Claim 1 is illustrative of the subject matter of the challenged claims:
`1. A method of enabling a user to perform recordings, the
`method comprising:
`generating, with a remote guide accessible by a user of a
`remote device, a display comprising a plurality of program
`listings for display on the remote device, wherein the display is
`generated by the remote guide based on program guide
`information received from a local guide implemented on user
`equipment via the Internet, wherein the user equipment is remote
`to the remote device, wherein the user equipment is located at a
`user site, and wherein the local guide generates a display of one
`or more program listings for display on a display device at the
`user site;
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`
`receiving, with the remote guide, a user selection of a
`program listing from the plurality of program listings, wherein
`the user selection identifies a program corresponding to the
`selected program listing for recording by the local guide;
`transmitting, with the remote guide, a communication to
`the local guide identifying the program corresponding to the
`selected program listing via the Internet;
`receiving the communication with the local guide; and
`responsive to the communication, scheduling, with the
`local guide, the program corresponding to the selected program
`listing for recording by the user equipment.
`Id. at 40:6–30.
`
`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. 32; Paper 31.
`
`References
`Humpleman2 and Killian3
`Kondo,4 Killian, and
`Kawamura5
`
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1–54
`1–54
`
`
`2 U.S. Patent No. 6,182,094 B1; issued Jan. 30, 2001 (Ex. 1006,
`“Humpleman”).
`3 U.S. Patent No. 6,163,316, issued Dec. 19, 2000 (Ex. 1008, “Killian”).
`4 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 April 15, 1997
`(Ex. 1013, “Kawamura”). Comcast has provided a certified translation of
`Kawamura from Japanese into English (Ex. 1014).
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`
`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review proceeding, claim terms of an unexpired
`patent are given their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`In the Decision on Institution, we determined that the only claim
`terms requiring construction are “guide” and “electronic program guide,”
`and only to the extent necessary to resolve whether the grounds asserted by
`Comcast properly accounted for both a “guide” and “electronic program
`guide.” Dec. on Inst. 9; 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 determined that the broadest reasonable
`interpretation of the claim terms “guide” and “electronic program guide” in
`the context of the challenged claims is “software operative at least in part to
`generate a display of television program listings,” and we agreed with
`Comcast that the terms “guide” and “electronic program guide” are not
`limited to interactive guides. Id. at 10–11. We further clarified that the
`claim terms “local guide” and “remote guide” are separately identifiable
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`elements, and are not construed properly as reading on the same guide. Id.
`at 11–12.
`We have reviewed the parties’ arguments and evidence as to the
`proper construction of “guide” as recited in the challenged claims, and we
`are not persuaded to change our preliminary construction to require that such
`guides be construed as “interactive” guides, as Rovi contends. We note,
`however, that at the oral hearing, Comcast contended that this distinction
`does not make a difference because it has shown interactive guides are
`taught by the references. Tr. 8:25–9:13. Thus, we discuss below the
`construction of “guide” and “electronic program guide,” but we also
`consider, in the context of Comcast’s challenges, whether Comcast has
`adequately supported its challenges if the recited guides were limited to
`interactive guides.
`In its Patent Owner Response, Rovi contends that “the proper
`construction for ‘guide’ should be an interactive program guide as claimed
`in related patents, Nos. 8,006,263 (the ‘’263 patent’) and 8,578,413 (the
`‘’413 patent’).” PO Resp. 10. Rovi does not appear to otherwise dispute our
`preliminary construction in the Decision on Institution.6
`As to interactivity, Rovi contends such a construction is consistent
`with the intrinsic evidence, including the language of independent claim 1
`
`
`6 For the first time at the oral hearing, Rovi argued that “remote 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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`(“requiring that the guide be capable of receiving a user selection,
`transmitting a communication, and scheduling a program for recording”), the
`’801 patent’s title (“Interactive Television Program Guide with Remote
`Access”), and the specification’s references to “interactive” guides that
`“allow navigation through program listings and cause display of program
`listings.” Id. at 10–11.
`As we discussed in our Decision on Institution, we are not persuaded
`that reading “interactive” into the claims is consistent with the intrinsic
`evidence. First and foremost, we start with the language of the claims. See
`In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“the name of the
`game is the claim”). The term “interactive” does not appear in the claims of
`the ’801 patent. Instead, those claims use the terms “remote guide,” “local
`guide,” and “electronic program guide.” While we agree with Rovi that
`certain interactive features are recited in the claims, we need not construe
`“remote guide,” “local guide,” and “electronic program guide” to take those
`recitations into account because they are already recited in the claims
`themselves. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed.
`Cir. 2016) (“Construing a claim term to include features of that term already
`recited in the claims would make those expressly recited features
`redundant.”). In addition, we determine that recitations of some interactive
`features in the claims do not counsel in favor of reading in other unrecited
`aspects of interactivity.
`Rovi also relies on the ’801 patent specification. PO Resp. 10–11.
`Specifically, Rovi points to the title (“Interactive Television Program Guide
`with Remote Access”) and descriptions of “interactive” guides in the
`specification. Id. (citing Ex. 1001, at [57], 1:16–19, 1:28–30, 2:20–22,
`
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`2:26–29, 2:57–66, 3:16–22, 4:1–5, 4:8–10, 6:1–4, 7:19–22, 7:40–41, 9:49–
`52, 15:11–15, 16:62–17:2, 23:13–15, Figs. 2a–2d, 12–23). Rovi further
`contends that in reaching our preliminary construction, we considered only
`the specification’s description of “on-line guides” in the Background of the
`Invention section without fully addressing “the Fig[ure] 6c disclosure of an
`‘on-line program guide’ with the interactive features of the invention.” Id. at
`11–12 (citing Ex. 1001, 14:48–66); see also id. at 12 (citing Ex. 2006 ¶¶ 23–
`29).
`
`We agree that the specification describes “interactive” guides. Rovi,
`however, does not explain why any of these descriptions is limiting
`(including the description of Figure 6c which is referred to as “another
`illustrative arrangement,” Ex. 1001, 14:48), particularly in light of the claim
`drafter’s choice to omit the term “interactive” from the ’801 patent’s claims.
`We agree with Comcast that, “[b]y seeking to construe the plain term ‘guide’
`to mean ‘interactive television program guide,’ Patent Owner improperly
`seeks to import limitations from the specification into the claims.” Pet.
`Reply 5 (citing Dec. on Inst. 10–11); see SuperGuide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim.”).
`Rovi also supports its proposed “interactive” limitation with
`(1) agreed constructions in the International Trade Commission (“ITC”) and
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`the ITC’s order (PO Resp. 11 (citing Ex. 2001, 187–1887), 13–15), and (2)
`filings in related cases before the Board involving the ’263 patent (id. at 12–
`14). Regarding the parties’ arguments and the Board’s findings in related
`cases (e.g., Case IPR2017-00950), Rovi acknowledges the claims in those
`cases recite an “interactive television program guide.” PO Resp. 13. In
`contrast, the claims here omit the term “interactive.”
`Regarding the ITC proceedings, we observe that the agreed
`constructions (“local guide” and “remote guide”) to which Rovi cites are for
`the ’263 patent, not the ’801 patent. Ex. 2001, 186. We further observe that
`the ’263 patent’s claims use “the local guide” to refer back to “a local
`interactive television program guide” and do not appear to use the term
`“remote guide.” See Ex. 2008, claim 14. In its Patent Owner Response,
`Rovi does not specifically address how agreed constructions as to the ’263
`patent relate to the constructions of those terms in the ’801 patent. See PO
`Resp. 11. Patent Owner also points to “the ITC’s findings on related terms.”
`Id. (citing Ex. 2001, 292). From the ITC’s discussion of the term “recording
`by the local guide,” however, it does not appear that the ITC was directly
`presented with the issue of whether the “local guide,” as recited in the ’801
`patent claims, must be interactive. See Ex. 2001, 289–292 (noting that the
`parties’ arguments were commingled with other disputed phrases and
`focused on proposed causal and geographic limitations).
`We emphasize that the issue here is not whether the “guide” and
`“electronic program guide” include any interactive features; in the Decision
`
`
`7 We refer to the page numbers added by Comcast in the lower right corner
`of Exhibit 2001.
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`on Institution, we agreed with Rovi that the challenged claims recite certain
`interactive features (Dec. on Inst. 10). Instead, the issue is whether we
`should read “interactive” into the construction of “guide” and “electronic
`program guide,” such that those terms include additional unrecited
`interactive functionality. For the reasons discussed above, we conclude that
`we should not, and thus, we do not read any requirements for interactivity
`into those terms beyond those recited in the claims.
`Other than its arguments regarding whether the claimed “guide[s]”
`must be interactive, Rovi agrees with the Board’s preliminary determination
`that the claims require two separate guides. PO Resp. 15–16. Rovi also
`acknowledges that stating where the specific guide resides is unnecessary in
`construing these terms because such “additions merely restate the language
`of the broader claim limitation.” Id. at 16. We agree. See Apple, Inc., 842
`F.3d at 1237 (“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.”).8
`Beyond our discussion of interactivity above, 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
`
`
`8 During oral argument, in response to a question regarding the ITC’s
`construction of the “local guide” being on user television equipment and its
`construction that the “remote 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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`disclosure in this regard, we decline to limit the “guide” to a single software
`application.
`We further clarify that the plain language of independent claims 1, 5,
`10, 15, 19, 23, 28, 33, 37, 41, 46, and 51 indicates that the claim terms “local
`guide” and “remote 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 guide and remote guide] may
`be different guides that communicate in a manner or manners discussed . . .
`herein.”), 23:4–7 (“The remote [] guide may . . . send audio, graphical, and
`text messages to the local [] guide for playing or displaying by user
`television equipment 22.”). The specification also explains that the local and
`remote guides 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.”).
`Turning to the extrinsic evidence, in Dr. Tjaden’s Declaration
`accompanying the Petition, he testifies that “the local guide may be
`implemented at least in part on a server or other device outside the user’s
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`home.” Ex. 1002 ¶ 36. 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 ’801 Patent would have
`understood that many different arrangements of the software and hardware
`components comprising a guide are possible and acceptable in [the] prior art
`used to show obviousness.” Ex. 1052 ¶ 15. To support this testimony, he
`directs us to the different arrangements of software and hardware in the ’801
`patent. Id. ¶¶ 16–19 (citing Ex. 1001, 7:15–19, 7:33–35, 7:40–47, 9:36–44,
`10:15–16, 10:29–34, 10:41–48).
`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.” See Pet. Reply 7–8 (citing Ex. 1054). Although we recognize that
`the broadest reasonable interpretation standard governs in this proceeding,
`whereas the district court claim construction standard governs in an ITC
`proceeding, Dr. Shamos’s testimony in the ITC proceeding is relevant here
`because it sheds some light on what element or elements he believes
`constitutes a “guide.” In the ITC proceeding, Dr. Shamos testifies that the
`local guide could be an “extensive collection of hardware and software.”
`Ex. 1054 ¶ 169. He also testifies “that the ‘local 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 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.
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`We note that the aforementioned testimony from Dr. Tjaden and Dr.
`Shamos suggests that the “guide” may include both software and hardware.
`We do not find support in the intrinsic record that the “guide” may include
`hardware. Rather, the ’801 patent separately refers to the guide and the
`hardware on which it is implemented. See, e.g., Ex. 1001, 1:34–35
`(“Interactive television program guides are typically implemented on set-top
`boxes . . . .”). The aforementioned testimony, however, is consistent with
`our conclusion that the “guide” may constitute more than just a single
`software application.
`In summary, upon weighing all the evidence bearing on the
`construction of the claim terms “guide” and “electronic program guide,” we
`maintain that the broadest reasonable interpretation of these claim terms is
`“software operative at least in part to generate a display of television
`program listings,”9 and we do not read any requirements for interactivity
`
`
`9 In the Decision on Institution, we did not include “control” in our
`preliminary construction. Comcast also omitted that term from its proposed
`construction in this case. Pet. 14. We observe, however, that “control”
`appears in the construction of related terms in Cases IPR2017-00950,
`IPR2017-00951, and IPR2017-00952 adopted by the Board. E.g., Case
`IPR2017-00950, Paper 42, at 20 (PTAB Sept. 19, 2018). The challenged
`patent at issue in those cases (i.e., the ’263 patent) issued from a
`continuation of the application that issued as the ’801 patent (in other words,
`they share a common specification). Ex. 1001, at [21]; Ex. 2008, at [63].
`The parties addressed the recited guides being “control software”
`extensively at the oral hearing. See, e.g., Tr. 18:4–11, 20:20–21:4, 27:3–9,
`30:24–25, 31:24–33:14, 81:23–82:11, 82:23–83:6. Because neither party
`addresses the omission of “control” in this proceeding, we find it
`unnecessary to add it to our construction, but note that doing so would not
`affect our analysis of the unpatentability grounds discussed below.
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`into those terms beyond those recited in the claims We also maintain that
`the claim terms “local guide” and “remote guide” are separately identifiable
`elements, and are not construed properly as reading on the same guide.
`B. Prior Art Status of Humpleman Provisional
`Rovi contends that Humpleman Provisional (U.S. Provisional Patent
`Application No. 60/059,499; Ex. 1007) is not prior art and cannot be used to
`teach or suggest elements of the challenged claims. PO Resp. 47–50. Rovi
`argues that 1) Humpleman Provisional is neither a patent nor an application
`published under 35 U.S.C. § 122(b), and that a provisional application can
`only qualify as prior art under 35 U.S.C. § 102(e) when the critical
`disclosures are also present in the corresponding patent; and 2) that
`Humpleman Provisional cannot be relied upon because it has not been
`properly incorporated by reference into Humpleman. Id.
`With respect to the first argument, although Rovi is correct about the
`requirements that determine whether something is valid prior art, standing
`alone, we are not persuaded that Comcast has relied upon or asserted
`Humpleman Provisional absent the Humpleman issued patent in the Petition.
`Comcast does not assert the former without asserting the latter, at least in
`terms of the grounds of unpatentability proffered in the Petition. Although
`Rovi is correct that Comcast has stated that “Humpleman Provisional is prior
`art both as part of Humpleman and on its own” (Pet. 18), Rovi has not
`pointed to any other occurrence where Comcast has asserted Humpleman
`Provisional without also asserting Humpleman. As such, Rovi’s argument is
`without basis because Comcast has not asserted Humpleman Provisional on
`its own, apart from its incorporation by reference into Humpleman,
`discussed below.
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`Rovi also contends that Humpleman Provisional is not properly
`incorporated by reference into Humpleman. PO Resp. 49–50. 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, 1282 (Fed. Cir. 2000)).
`We do