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 IPR2017-01066
`Patent 8,046,801 B2
`____________
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 9
`
`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 IPR2017-01066
`Patent 8,046,801 B2
`____________
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 9
`
`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
`
`
`
`
`
`IPR2017-01066
`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. 1101, “the ’801 patent”). Paper 2 (“Pet.”). Patent Owner, Rovi
`Guides, Inc. (“Rovi”), filed a Preliminary Response. Paper 7 (“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 3, 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. 1101, 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. 8–11, 56–76.
`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, 56–76. At
`this stage of the proceeding, Rovi does not dispute Comcast’s grouping of
`claims. Prelim. Resp. 28, 39–40.
`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.
`
`Ex. 1101, 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
`Sato1 and Humpleman2
`Woo3 and Mizuno4
`
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1–54
`1–54
`
`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);
`
`1 U.S. Patent No. 6,408,435 B1; issued June 18, 2002 (Ex. 1115, “Sato”).
`2 U.S. Patent No. 6,182,094 B1; issued Jan. 30, 2001 (Ex. 1106,
`“Humpleman”).
`3 U.S. Patent No. 5,485,219; issued Jan. 16, 1996 (Ex. 1116, “Woo”).
`4 PCT Int’l Pub. No. WO 97/18636; published May 22, 1997 (Ex. 1117,
`“Mizuno”).
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`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 14. In
`response, Rovi contends that these terms are limited to “interactive
`interfaces” (i.e., interactive guides). Prelim. Resp. 8–11. 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
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`corresponding to the selected program listing.” Id. at 8. Rovi further
`contends that this construction is consistent with the specification. Id. at 8–
`9. 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. 8. Rovi also
`points to portions of the specification of the ’801 patent discussing
`interactive guides. Id. at 8–9. As Comcast points out, however, the ’801
`patent describes both “interactive television program guides” and “on-line
`program guides.” Pet. 14 (citing Ex. 1102 ¶ 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.
`1102 ¶ 32 (quoting Ex. 1101, 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. 8. We agree, but determine at this stage of the proceeding that
`such recitations do not counsel in favor of importing other unrecited
`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
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`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 Gp., 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. 1101, 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.”).
`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
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`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
`(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 Sato and Humpleman
`
`Comcast contends that claims 1–54 of the ’801 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Sato and
`Humpleman. Pet. 19–37. Comcast explains how this proffered combination
`teaches or suggests the subject matter of each challenged claim, and
`
`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. 1102
`¶¶ 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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`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. 1102 ¶¶ 94–158. At this stage of the proceeding, we are
`persuaded by Comcast’s explanations and supporting evidence.
`We begin our analysis with brief overviews of Sato and Humpleman,
`and then we address the parties’ contentions with respect to the claims at
`issue in this asserted ground.
`
`1. Overview of Sato
`
`Sato generally relates to a remote controller suitable for use in
`operating audio/visual devices and, in particular, one that is suitable for use
`in a system for transmitting broadcast program reservation tables through a
`computer network. Ex. 1115, 1:7–12. Figure 1, reproduced below,
`illustrates a block diagram of the network system used in Sato. Id. at 2:61–
`62, 3:49–51.
`
`
`The network system illustrated in Figure 1 reproduced above includes
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`surface wave television (“TV”) broadcasting station 1, satellite TV
`broadcasting station 2, and frequency modulation (“FM”) radio broadcasting
`station 3 that broadcasts TV programs and/or FM radio programs to
`audio/visual equipment 5. Id. at 3:51–4:1. Audio/video equipment 5
`includes, among other things, video tape recorder/player 11 and TV receiver
`14, each of which is capable of being controlled remotely by infrared
`signals. Id. at 4:1–9. The network system further includes personal
`computer 21 connected to Internet 6. Id. at 4:46–47. Personal computer 21
`sends commands to interface box 25, which, in turn, uses infrared signals to
`communicate desired modes of operation to VTR 11 and TV receiver 14. Id.
`at 4:52–59.
`Figure 17, reproduced below, illustrates one embodiment in
`accordance with the present invention. Ex. 1115, 3:44–45, 9:29–30.
`
`
`The embodiment illustrated in Figure 17 reproduced above includes TV
`receiver 101 that is capable of being set to a desired mode of operation using
`infrared signals from interface box 104 connected to personal computer 105.
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`Id. at 9:30–36. This embodiment further includes external portable
`computer 107, which connects to personal computer 105 through Internet
`106 to control TV receiver 101. Id. at 9:51–54. For instance, external
`portable computer 107 generates hypertext commands for setting TV
`receiver 101 to a desired mode operation. Id. at 9:56–59. The hypertext
`commands are sent from external portable computer 107 to personal
`computer 105 through Internet 106. Id. at 9:56–61. When interface box 104
`receives the hypertext commands, it issues an infrared signal corresponding
`to the command contained in the hypertext and, subsequently, sets TV
`receiver 101 to the desired mode of operation. Id. at 9:61–65.
`
`2. 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. 1106, 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. 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.
`
`3. Claim 1
`
`In its Petition, Comcast contends that Sato’s program guide system
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`accounts for most of the limitations recited in independent claim 1. Pet. 26–
`35. Comcast contends that if the “local guide” is limited to software located
`within the user premises, a person of ordinary skill in the art would have
`found such limitation obvious “in view of Humpleman’s remote display of
`locally customized HTML program guides.” Pet. 30–31 (citing Ex. 1102
`¶¶ 124–131). Comcast further relies on Humpleman as teaching generation
`of a remote guide based on program guide information from the local guide,
`such as the EPG data or the user preference information stored at the digital
`satellite services interface device (“DSS”) in Humpleman, and display of
`that remote guide on an external device. Id. at 31–32.
`Comcast argues that it would have been obvious to one of ordinary
`skill in the art to incorporate Humpleman’s generation of local customized
`program guides into Sato’s program guide system for at least the following
`three reasons: (1) it would have been nothing more than using known
`techniques (i.e., Humpleman’s remote display of local customized program
`guide pages) to improve a similar device (i.e., Sato’s program guide system)
`in the same way; (2) it would have been a simple substitution of
`Humpleman’s generation of local customized program guides for Sato’s web
`pages to produce the predictable result of preventing the display of
`disfavored channels or content; and (3) using Humpleman’s generation of
`local customized program guides to improve Sato’s program guide system—
`specifically, its web pages—would provide a complete picture of the content
`available on the user’s local television receiver. Id. at 24–25 (citing
`Ex. 1102 ¶¶ 104–107); see also id. at 32–33 (arguing the same).
`In its Preliminary Response, Rovi presents a number of arguments
`that can be grouped as follows: (1) whether Comcast has demonstrated that
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`Sato and Humpleman, either alone or in combination, account for all the
`limitations recited in independent claim 1; and (2) whether Comcast has
`demonstrated that a person of ordinary skill in the art would have combined
`the teachings of Sato and Humpleman. Prelim. Resp. 11–32. We address
`these groupings of arguments in turn.
`a. Limitations
`Rovi contends that claim 1 requires two interactive television program
`guides—namely, “a local guide” and “a remote guide”—in communication
`with each other. Prelim. Resp. 11–12. Rovi argues that Comcast fails to
`identify any explicit disclosures in Sato that account for the claimed “local
`and remote guides.” Id. at 13. Rather, Rovi argues that Comcast simply
`identifies Sato’s browsers without explaining how these browsers satisfy its
`proposed construction of “interactive television program guide.” Id. at 13.
`In particular, Rovi asserts that neither Comcast nor its declarant, Dr. Tjaden,
`explains adequately how Sato’s browsers amount to control software, much
`less how these browsers navigate through program listings. Id. at 13–15
`(citing Pet. 22; Ex. 1102 ¶ 98).
`On the current record, we are not persuaded by Rovi’s argument with
`respect to Sato’s browsers. In its Petition, Comcast argues that Sato
`discloses methods for controlling VTR 11 and TV receiver 14 that involve
`using program guide web pages displayed on personal computer 21 to
`schedule recordings. Pet. 20–21 (Ex. 1115, 5:18–25, 5:45–54, Fig. 2;
`Ex. 1102 ¶ 96). Comcast further argues that, because Sato’s external
`portable computer 107 is capable of controlling the same home devices, a
`person of ordinary skill in the art would have understood that external
`portable computer 107 presents a program guide web page that allows the
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`remote user to select a program for recording because this is how Sato’s
`program guide system receives selections of programs. Id. at 21–22 (citing
`Ex. 1115, 5:18–25, 9:51–65, Fig. 17; Ex. 1102 ¶ 98); see also id. at 27–28
`(arguing the same). Comcast then proceeds to explain how each of Sato’s
`browsers that operate on personal computer 105 and external portable
`computer 107 satisfy its proposed construction of “guide” because these
`browsers display and execute hypertext markup language (“HTML”) code
`that generates a display of program listings, and allows a user to navigate
`through the listings, make selections, and schedule a recording on local
`equipment. Id. at 22 (citing Ex. 1115, 5:8–25; Ex. 1102 ¶ 98).
`In our claim construction section above, we adopted Comcast’s
`proposed construction of a “guide” as “control software operative at least in
`part to generate a display of television program listings,” and we did not
`read any requirements for interactivity into those terms beyond those recited
`in the claims. See supra Section II.A. In light of the arguments noted
`above, we are persuaded that Sato’s browsers operating on personal
`computer 105 and external portable computer 107 comport with this
`construction. We also are persuaded that Comcast has presented sufficient
`evidence that would support a finding that Sato’s browsers operating on
`personal computer 105 and external portable computer 107, when displaying
`program guide web pages, amount to the “local and remote guides,”
`respectively.
`Rovi further contends that, even assuming arguendo that Sato teaches
`the claimed “local and remote guides,” Comcast does not provide evidence
`to support a finding that Sato’s purported guides communicate with each
`other, as is required by the independent claims. Prelim. Resp. 15–17. Rovi
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`argues that, at best, Comcast identifies communications between Sato’s
`browser on external portable computer 107 and its personal computer 105
`connected to interface box 104, but fails to provide any evidence suggesting
`that the browser operating on external portable computer 107 communicates
`with the browser operating on personal computer 105. Id. at 16–17 (citing
`Pet. 28, 34). Rovi also frames Comcast’s reliance on the supporting
`testimony of Dr. Tjaden regarding how Sato’s personal computer 105
`necessarily includes control software, such as a browser, as one of inherency
`in an obviousness analysis that lacks support, and asserts that his testimony
`in this regard is insufficient as a matter of law. Id. at 17 (citing Ex. 1102
`¶ 142).
`On the current record, we are not persuaded by Rovi’s argument that
`Sato’s browsers operating on personal computer 105 and external portable
`computer 107 do not communicate with each other. In its Petition, Comcast
`argues that, when the user selects a program to be recorded using the
`program guide web page displayed on Sato’s external portable computer
`107, this computer sends hypertext commands to personal computer 105 via
`Internet 106. Pet. 34 (citing Ex. 1115, 9:51–65). According to Comcast, in
`the case of scheduling a recording, the commands include a representation of
`a “G code” associated with the selected program. Id. (citing Ex. 1115, 6:10–
`17). Comcast further argues that control software on Sato’s personal
`computer 105, which includes the browser operating thereon, receives the
`hypertext commands from external portable computer 107 and issues
`appropriate commands to local hardware. Id. at 34–35 (citing Ex. 1115,
`9:56–65; Ex. 1102 ¶¶ 141, 142). In the case of a recording command,
`Comcast asserts that interface box 104 outputs an infrared signal instructing
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`the VTR corresponding with TV receiver 101 to record the program at the
`indicated time. Id. at 35 (citing Ex. 1115, 5:18–25); see also Ex. 1115,
`Fig. 1 (operating in the same manner). Based on these disclosures in Sato,
`we are persuaded that Comcast has presented sufficient evidence that would
`support a finding that Sato’s browsers operating on personal computer 105
`and external portable computer 107 communicate with each other in the
`manner required by the independent claims.
`We also find the supporting testimony of Dr. Tjaden on this particular
`issue persuasive. Although Dr. Tjaden testifies that “[t]he local PC
`[otherwise known as personal computer 105] would necessarily include
`control software that operates to access and display the program guide
`pages, such as a browser” (Ex. 1102 ¶ 142 (emphasis added)), he provides
`sufficient support for this testimony at this stage in the proceeding. In
`particular, Dr. Tjaden directs us to Sato’s disclosure of personal computer
`105 receiving hypertext commands (from external portable computer 107).
`Id. (citing Ex. 1115, 9:51–65). As evidenced by reading Sato, as a whole, a
`hypertext command is a key underlying concept of a web page displayed by
`a browser. See, e.g., Ex. 1115, 5:30–31 (“[T]he [world wide web] page
`shown in FIG. 2 contains a description in [the] form of a hypertext as shown
`in FIG. 3.”), Figs. 2, 3 (illustrating web pages with hypertext commands).
`Rovi also contends that Humpleman does not disclose the claimed
`“local and remote guides,” much less two interactive television program
`guides that communicate with each other. Prelim. Resp. 18–19. We are not
`persuaded by this argument because Comcast’s asserted ground based on the
`combined teachings of Sato and Humpleman does not rely upon Humpleman
`to teach the claimed “local and remote guides.” Rather, as we explain
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`above, Comcast turns to Sato’s disclosure of the browsers operating on
`personal computer 105 and external portable computer 107, each of which
`displays program guide web pages, to teach these particular claimed
`features. See Pet. 20–23, 26–29; Ex. 1102 ¶¶ 97, 98, 141, 142.
`Lastly, Rovi contends that the combined teachings of Sato and
`Humpleman fail to account for all the limitations of independent claims 1, 5,
`10, 15, 19, 23, 28, 33, 37, 41, 46, and 51. Prelim. Resp. 21–27. Rovi’s
`arguments in this regard, once again, are predicated on the following
`notions: (1) Sato’s browsers operating on personal computer 105 and
`external portable computer 107 are not “interactive program guides”; (2)
`Sato does not disclose a remote guide implemented on a remote device or
`selecting a program for recording on an external computer; (3) the
`aforementioned browsers in Sato fail to communicate with each other; and
`(4) Humpleman does not cure these deficiencies. Id. For the same reasons
`we explain above, these arguments are not persuasive at this stage of the
`proceeding.
`
`b. Rationale to Combine
`Turning to Rovi’s arguments as to whether Comcast has demonstrated
`that a person of ordinary skill in the art would have combined the teachings
`of Sato and Humpleman, Rovi contends that Comcast merely relies on
`disparate portions of each reference without explaining how or why these
`disparate portions would be combined in a workable manner. Prelim. Resp.
`28. In particular, Rovi asserts that Comcast fails to explain how one of
`ordinary skill in the art would have combined Sato’s program guide system
`with Humpleman’s customized program guides. Id. at 29–31. Rovi further
`asserts that, absent improper hindsight reconstruction, one of ordinary skill
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`in the art would not have been motivated to combine the teachings of Sato
`and Humpleman in the manner proposed by Comcast. Id. at 31
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