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. 8
`
`Entered: October 18, 2017
`
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`____________
`
`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. 8
`
`Entered: October 18, 2017
`
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`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.”). Institution of an inter partes review is authorized by statute when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a); see 37 C.F.R. § 42.108. Having considered the Petition and
`Preliminary Response, we conclude that the information presented in the
`Petition establishes that there is a reasonable likelihood that Comcast would
`prevail in challenging claims 1–54 of the ’801 patent as unpatentable under
`35 U.S.C. § 103(a). Pursuant to § 314, we hereby institute an inter partes
`review as to these claims of the ’801 patent.
`
`A. Related Matters
`
`According to the parties, the ’801 patent has been asserted in 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 now pending as Rovi Guides, Inc. v. Comcast Corp., No. 1:16-
`cv-09826 (S.D.N.Y.). Pet. 1–2; Paper 3, 2. The parties also assert that the
`’801 patent has been asserted in 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. The parties also state that the
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`’801 patent is at issue in Comcast Corp. v. Rovi Corp., No. 1:16-cv-03852
`(S.D.N.Y.). 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, as well as
`petitions challenging related patents. Pet. 3; Paper 4, 2.
`
`B. The ’801 Patent
`
`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
`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.
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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 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
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`interactive television program guides may be two different guides that
`communicate with each other. Id. at 15:20–23.
`Figure 5 of the ’801 patent, reproduced below, shows an illustrative
`arrangement for remote program guide access device 24. Id. at 5:47–49,
`12:30–31.
`
`
`As shown in Figure 5 reproduced above, remote program guide access
`device 24 may include user interface 52 and processing circuitry 54. Id. at
`12:37–39. Remote program guide access device 24 also may include
`communications device 58 for supporting communications between the
`device and interactive television program guide equipment 17 over remote
`access link 19. Id. at 12:51–62.
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`C. Challenged Claims
`
`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. Comcast contends independent claims 5, 10, 15, 19,
`23, 28, 33, 37, 41, 46, and 51 recite substantially similar limitations to claim
`1 and therefore stand or fall together with claim 1. Pet. 8–10, 58–77.
`Comcast further contends claims 7, 12, 16, 20, 25, 30, 34, 38, 43, 48, and 52
`stand or fall together with claim 2; claims 8, 13, 17, 21, 26, 31, 35, 39, 44,
`49, and 53 stand or fall together with claim 3; claims 9, 14, 18, 22, 27, 32,
`36, 40, 45, 50, and 54 stand or fall together with claim 4; and claims 11, 24,
`29, 42, and 47 stand or fall together with claim 6. Id. at 10–11, 58–77. At
`this stage of the proceeding, Rovi does not dispute Comcast’s grouping of
`claims. Prelim. Resp. 38, 50.
`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;
`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;
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`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. Asserted Grounds of Unpatentability
`
`Comcast asserts that claims 1–54 of the ’801 patent are unpatentable
`based on the following grounds:
`
`References
`Humpleman1 and Killian2
`Kondo,3 Killian, and
`Kawamura4
`
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1–54
`1–54
`
`
`1 U.S. Patent No. 6,182,094 B1; issued Jan. 30, 2001 (Ex. 1006,
`“Humpleman”).
`2 U.S. Patent No. 6,163,316, issued Dec. 19, 2000 (Ex. 1008, “Killian”).
`3 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).
`4 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, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning, as understood by a
`person of ordinary skill in the art, in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Comcast proposes constructions for several claim limitations.
`Pet. 13–17. For purposes of this decision, we determine that we need only
`consider the construction of “guide” and “electronic program guide” to
`resolve the issues before us at this stage of the proceeding. To the extent it
`is necessary for us to construe any other claim language, we do so below in
`the context of analyzing whether the information presented shows a
`reasonable likelihood that Comcast would prevail in establishing the
`unpatentability of the challenged claims.
`Comcast contends that the claim terms “guide” and “electronic
`program guide” are not limited to interactive program guides. Id. at 13–14.
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`In response, Rovi contends that these terms are limited to “interactive
`interfaces” (i.e., interactive guides). Prelim. Resp. 14–16. In particular,
`Rovi notes that independent claim 1 requires the remote guide be capable of
`“receiving . . . a user selection of a program listing” and “transmitting . . . a
`communication to the local guide” and the local guide be capable of
`“receiving the communication” and “scheduling . . . the program
`corresponding to the selected program listing.” Id. at 14. Rovi further
`contends that this construction is consistent with the specification. Id. at 15.
`At this stage of the proceeding, we agree with Comcast that the terms
`“guide” and “electronic program guide” are not limited to interactive guides.
`In arguing that the recited “guide” and “electronic program guide” are
`limited to interactive guides, Rovi relies on the functions of the “remote
`guide” and “local guide” recited in claim 1. Prelim. Resp. 14. Rovi also
`points to portions of the specification of the ’801 patent discussing
`interactive guides. Id. at 14–15. As Comcast points out, however, the ’801
`patent describes both “interactive television program guides” and “on-line
`program guides.” Pet. 14 (citing Ex. 1002 ¶ 32). Comcast’s expert Dr.
`Tjaden notes that “‘online program guides’ are described that ‘allow users to
`view program listings using a web-browser,’ but ‘do not allow the user to set
`in-home reminders for programming, to adjust parental control settings, or to
`select programs for recording on the user’s videocassette recorder.’”
`Ex. 1002 ¶ 32 (quoting Ex. 1001, 1:43–50).
`Rovi points out that claim 1 requires the recited guides to have certain
`interactive features (e.g., receiving a user selection of a program listing).
`Prelim. Resp. 14. We agree, but determine at this stage of the proceeding
`that such recitations do not counsel in favor of importing other unrecited
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`interactive features into the claims. 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. For example, a particular
`embodiment appearing in the written description may not be read into a
`claim when the claim language is broader than the embodiment.”). Thus, at
`this stage of the proceeding, we determine that a “guide” as recited in the
`challenged claims is “software operative at least in part to generate a display
`of television program listings,” and we do not read any requirements for
`interactivity into those terms beyond those recited in the claims.
`We, however, take this opportunity to clarify that, based on the plain
`language of independent claim 1, the claim terms “local guide” and “remote
`guide” are separately identifiable elements. See Becton, Dickinson & Co. v.
`Typco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a
`claim lists elements separately, ‘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 separate 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 . . . therein”), 23:4–7 (“The remote [] guide
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`may . . . send audio, graphical, and text messages to the local [] guide for
`playing or displaying by user television equipment 22”).
`In summary, we determine 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 do not read any requirements
`for interactivity into those terms beyond those recited in the claims. We
`further clarify 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. 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;5 and (4) when in evidence, objective indicia of non-obviousness
`
`
`5 Relying upon the testimony of Dr. Tjaden, Comcast offers an assessment
`as to the level of skill in the art as of July 17, 1998, which is the earliest
`effective filing date on the face of the ’801 patent. Pet. 13 (citing Ex. 1002
`¶¶ 27–29). To the extent necessary, and for purposes of this Decision, we
`accept the assessment offered by Comcast as it is consistent with the ’801
`patent and the asserted prior art.
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`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). We analyze the asserted grounds based on obviousness with the
`principles identified above in mind.
`
`C. Asserted Obviousness over Humpleman and Killian
`
`Comcast contends that claims 1–54 of the ’801 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Humpleman and
`Killian. Pet. 19–38. Comcast explains how this proffered combination
`teaches or suggests the subject matter of each challenged claim, and
`provides reasoning as to why one of ordinary skill in the art would have
`been prompted to modify or combine the references’ respective teachings.
`Id. Comcast also relies upon the Declaration of Dr. Tjaden to support its
`positions. Ex. 1002 ¶¶ 93–173. At this stage of the proceeding, we are
`persuaded by Comcast’s explanations and supporting evidence.
`We begin our analysis with brief overviews of Humpleman and
`Killian, and then we address the parties’ contentions with respect to the
`claims at issue in this asserted ground.
`
`1. Overview of Humpleman
`
`Humpleman generally relates to the field of networks and, in
`particular, to home networks that have multi-media devices connected
`thereto. Ex. 1006, 1:16–18. One objective of Humpleman’s invention is to
`provide a method for controlling a plurality of devices connected to a home
`network, where at least one of these devices is a multi-media device, and for
`generating a program guide from the information provided by the multi-
`media device on a second device connected to the home network. Id. at
`2:23–28. The generated program guide may be a Hypertext Markup
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`Language (HTML) page that allows for selection of a specific program for
`recording on local equipment. Id. at 20:31–51. That HTML version is
`generated by a digital satellite services interface device (“DSS”) that also
`displays a conventional electronic program guide. Id. at 22:21–59.
`Humpleman claims priority to and incorporates by reference (id. at
`1:7–13) a provisional patent application (60/059,499; Ex. 1007), and
`provides further insight into the software structures disclosed. An annotated
`version of figure 13 of that provisional patent application is reproduced
`below:
`
`
`The annotated version of the figure illustrates portions that Comcast argues
`correspond to different claimed portions, with the local guide software and
`its data in purple, remote guide files in orange, control software for local
`recording equipment in blue, and remote guide equipment in red. Pet. 22.
`The provisional application also makes clear that a message is sent to the
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`DSS control application by the remote device over the Internet based on a
`selection by the user in the HTML program guide, instructing it to control
`hardware to record the selected program. Ex. 1007, 2–3.
`According to Humpleman, a user may customize the programming
`information that is displayed by the program guide. Id. at 22:41–43. For
`instance, if a user prefers not to display the schedule for a particular channel
`because it contains inappropriate content, the user may request that the
`channel be removed from the program guide. Id. at 22:43–46. In addition,
`according to Humpleman, a user can remotely control devices connected to
`the home network. Id. at 20:42–47. “For example, if a user is required to
`work late and is therefore unable to watch the Monday night football game,
`the user can program a DVCR connected to their home network via the
`Internet, in order to record the particular event.” Id. at 20:47–51.
`
`2. Overview of Killian
`
`Killian discloses an electronic programming guide (“EPG”) that
`operates on a JAVA-based computing platform associated with a television
`and a video recorder. Ex. 1108, at [57], 3:6–12, Fig. 1. A collection of
`application programming interfaces (“APIs”) allow the platform to support
`JAVA applets or applications that provide interactive television
`programming. Id. at 3:18–27. In one embodiment, the platform supports an
`EPG JAVA applet or application “that allows viewers to more intelligently
`select, schedule, and record viewing opportunities according to viewer
`profiles” and other information received via the Internet. Id. at 3:27–33.
`The EPG can use other platform components to cause the video recorder to
`record programs. Id. at 15:5–18.
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`3. Independent claims
`
`In its Petition, Comcast contends that a person of ordinary skill in the
`art would have found it obvious to include interactive selection and control
`features in the guide software in Humpleman’s local and remote guides, with
`some of those associated functionalities already admitted as known in the
`’801 patent. Pet. 22 (citing Ex. 1001, 1:33–42). Comcast also argues that
`such functionalities are disclosed in Killian, and those aspects would have
`been implemented in Humpleman’s system for several reasons. Id. at 22–
`25.
`
`Comcast argues first that Humpleman expressly teaches that its home
`control system is interoperable with conventional hardware, and that a DSS
`loaded with Killian’s guide could and would be utilized in Humpleman’s
`system, because Humpleman was designed to be layered on top of existing
`hardware and software installations. Id. at 23–24 (citing Ex. 1002 ¶ 103).
`Second, Comcast argues that Killian expressly teaches that the EPG modules
`implementing the recording control APIs could be integral to the functioning
`of external devices other than the receiver, which would have provided
`greater utility to Humpleman’s network of remote devices. Id. at 24 (citing
`Ex. 1008, 15:53–16:7; Ex. 1002 ¶ 104). Lastly, Comcast argues that
`combining Killian with Humpleman would be nothing more than using
`known techniques to improve similar devices and a simple substitution of
`one known, closely-related element for another that produces predictable
`results. Id. at 24–25 (citing Ex. 1002 ¶¶ 105–106).
`In its Preliminary Response, Rovi presents a number of arguments
`that can be grouped as follows: (1) whether Comcast can properly rely on
`the disclosure of Humpleman’s provisional application in the instant
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`obviousness ground of unpatentability; (2) whether Comcast has
`demonstrated that Humpleman and Killian, either alone or in combination,
`account for all the limitations recited in independent claim 1; and (3)
`whether Comcast has demonstrated that a person of ordinary skill in the art
`would have combined the teachings of Humpleman and Killian. Prelim.
`Resp. 7–13, 17–23, 28–42. We address these groupings of arguments in
`turn.
`
`a. Humpleman’s Provisional Application
`Rovi contends that, for the ground based on Humpleman and Killian,
`the Humpleman provisional is not prior art. Rovi argues that Comcast has
`failed to identify the Humpleman provisional in its identification of the
`patents and printed publications relied upon for each ground, under
`§ 42.104(b)(2), and that the provisional application cannot be relied upon as
`valid prior art under 35 U.S.C. § 102(e). Prelim. Resp. 7–12. Although
`Rovi is correct about the requirements placed on art applied in a petition, we
`are not persuaded that Comcast has relied upon or asserted the Humpleman
`provisional absent the Humpleman issued patent. Comcast does not assert
`the former without asserting the latter.
`Rovi also contends that the Humpleman provisional is not properly
`incorporated by reference into Humpleman. Prelim. Resp. 12–13. Rovi
`argues that Humpleman does not identify with particularity the specific
`material in the provisional applications asserted to be incorporated by
`reference or clearly indicate where that material is found in the incorporated
`applications, as required to incorporate material by reference. Id. (citing
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed.
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`Cir. 2000); Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378–79
`(Fed. Cir. 2007)). We do not agree.
`The relevant section of Humpleman is reproduced below:
`This patent application claims priority from provisional patent
`application Ser. No. 60/050,762, filed on Jun. 25, 1997, entitled
`Home Network, Browser Based, Command and Control and
`provisional patent application Ser. No. 60/059,499, filed on Sep.
`22, 1997, entitled Improved Home Network, Browser Based,
`Command and Control, which are incorporated herein by
`reference.
`Ex. 1006, 1:7–13 (emphasis added). From this notification, we find the
`patentee in Humpleman incorporated the entireties of both provisional
`applications by reference. If the intent was to incorporate only one
`provisional or just part of one provisional, then we would agree that
`sufficient particularity has not been supplied. However, the normal
`interpretation of such an incorporation is all of the referenced provisional
`disclosures are incorporated. Similarly, there is no need to stipulate where
`particular material to be incorporated is found when that particular material
`is all.
`As such, we are not persuaded, as a matter of law, that Humpleman
`
`did not incorporate both provisional applications into its disclosure. Thus,
`we are persuaded that the Humpleman provisional can be relied upon for its
`disclosure, having been properly incorporated by reference according to 37
`C.F.R. § 1.57(c) into Humpleman.
`Limitations
`b.
`Rovi contends that each independent claim requires two guides—
`namely, “a local guide” and “a remote guide”—in communication with each
`other. Prelim. Resp. 17–18. Rovi argues that Comcast fails to identify any
`
`18
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`IPR2017-01065
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`explicit disclosures in Humpleman that its “local guide” and “remote guide”
`are interactive. Id. at 18–19. Rather, Rovi argues that the guides are
`disclosed as versions of a conventional EPG, and thus not interactive. Id. at
`19. Rovi further asserts that Comcast fails to contend the alleged “local
`guide” in Humpleman is interactive and there is no evidence in the Petition
`that “the ‘conventional EPG’ implemented at the DSS device” is interactive.
`Id. at 19–20 (citing Pet. 14). Additionally, Rovi asserts that nowhere does
`Humpleman disclose navigation through program listings. Id. at 20. We do
`not agree.
`As discussed above, we determine the recited guides need only be
`interactive to the extent such features are recited in the challenged claims.
`In addition, Comcast contends that to the extent that any recited “guide” is
`construed to require “interactive selection and control features generally
`associated with interactive television program guides,” a person of ordinary
`skill in the art “would have found it obvious to use well-known IPG
`techniques to implement Humpleman’s remote recording aspects and local
`EPG.” Pet. 28–29 (citing Ex. 1002 ¶¶ 116, 130). In support, Comcast cites
`Killian as teaching interactive guide software that displays program
`schedules, controls the recording of selected programs, and allows a user to
`navigate through program listings. Id. at 29 (citing Ex. 1008, 3:20–33, 4:7–
`13, 7:8–16, 7:49–61, 8:5–35, 13:12–21, 15:53–16:7, Fig. 5; Ex. 1002 ¶ 117).
`Rovi does not appear to dispute that Killian discloses an interactive program
`guide, with selection of programs from listings and response by a receiver to
`such a selection. As such, we are persuaded that the combination of
`Humpleman and Killian at least discloses the subject elements of claim 1,
`i.e., the recited “guides,” although we address the propriety of the
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`19
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`IPR2017-01065
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`combination below. As well, Humpleman makes clear that the HTML files
`are updated based on the DSS electronic program guide (Ex. 1007, 10),
`distinguishing the HTML guide from the DSS guide. The presence of the
`latter guide at least suggests that the DSS has a guide that can be interactive,
`in view of the disclosure of Killian.
`Rovi also argues that there is no evidence in the Petition that the
`“local guide” and “remote guide” in Humpleman are in communication with
`each other. Prelim. Resp. 21. Rovi acknowledges that the Petition relies
`solely “on Humpleman Provisional,” that Rovi asserts is not properly prior
`art or properly incorporated by reference, such that Humpleman cannot teach
`or suggest communication between the guides. Id. We note that Rovi does
`not appear to dispute that the Humpleman provisional discloses such
`communication, and we determine it does. See Ex. 1007, 2–3. Because we
`find no error in the incorporation of the Humpleman provisional into
`Humpleman, as discussed above, we are not persuaded that Humpleman
`fails to disclose communication between guides.
`Rovi also argues that Killian does not disclose two guides. Prelim.
`Resp. 21–23. However, because the ground of unpatentability does not rely
`on Killian to teach or suggest the presence of two guides, relying instead on
`Humpleman, we are not persuaded that any lack of disclosure of the same in
`Killian is detrimental.
`Rovi contends that Comcast is not clear what constitutes the “local
`guide” in Humpleman, i.e., the “conventional EPG,” from Humpleman, or
`the “DSS control application,” from the Humpleman provisional. Prelim.
`Resp. 28–30. We do not agree. We are persuaded that Comcast’s analysis is
`clear that the DSS control application from the Humpleman provisional is
`
`20
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`IPR2017-01065
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`equivalent to the local guide, and analogous to the “EPG,” from
`Humpleman, without ambiguity. See Pet. 20–23. We acknowledge that
`given the differences in the levels of detail found in the Humpleman
`provisional and Humpleman, certain correspondences must be made.
`Rovi also argues that the Petition is unclear what portions of Killian
`are being incorporated into the system of Humpleman. Prelim. Resp. 30–31.
`We disagree. The Petition is clear that a person of ordinary skill in the art
`“would have implemented Humpleman’s remote guide and local guide using
`the IPG features of Killian to provide users with conventional television
`control functionality.” Pet. 29.
`Rovi also contends that the Petition fails to show the combination of
`Humpleman and Killian teaches a remote guide implemented on a remote
`device. Prelim. Resp. 31. In particular, Rovi contends although the Petition
`alleges the remote guide is “an HTML version of that guide for use by other
`devices on the network” and is separate from the local DSS guide, there is
`insufficient support for these allegations. Id. at 31–32. Rovi contends that it
`is unclear where the alleged remote guide in Humpleman is implemented
`and that Comcast’s allegations on this point are ambiguous. Id. at 32–34.
`We do not agree. Humpleman makes clear that the HTML program guide
`can be displayed and updated like the EPGs. Ex. 1006, 22:53–59. And
`although the HTML program guide is not directly mentioned in the portion
`of Humpleman discussing programming a DVCR connected to a home
`network via the Internet (id. at 20:42–51), we are persuaded that the
`provision of the HTML program guide would have been an obvious means
`to provide the disclosed control. Such an obvious variation also makes clear
`that the HTML program guide would be implemented at a remote device.
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`See Pet. 26–27.
`Rovi further contends that the Petition fails to disclose a remote guide
`receiving a user selection of a program
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