Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: December 3, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CHARTER COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`SPRINT COMMUNICATIONS COMPANY,
`Patent Owner.
`____________
`
`IPR2019-01138
`Patent 6,754,907 B1
`____________
`
`
`
`Before WILLIAM V. SAINDON, BRIAN J. McNAMARA, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: December 3, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CHARTER COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`SPRINT COMMUNICATIONS COMPANY,
`Patent Owner.
`____________
`
`IPR2019-01138
`Patent 6,754,907 B1
`____________
`
`
`
`Before WILLIAM V. SAINDON, BRIAN J. McNAMARA, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`
`I.
`INTRODUCTION
`Charter Communications, Inc. (“Petitioner”) filed a petition
`requesting inter partes review of claims 1–25 of U.S. Patent No. 6,754,907
`B1 (Ex. 1001, “the ’4907 patent”). Paper 2 (“Pet.”). Sprint
`Communications Company (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary 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 also 37 C.F.R.
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Taking
`into account the arguments presented in the Petition and Preliminary
`Response, we conclude that the information presented in the Petition does
`not establish a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim. Accordingly, we do not institute an
`inter partes review.
`
`A. Related Matters
`Petitioner challenges the ’4907 patent in IPR2019-01136 and
`IPR2019-01140, which are decided at the same time as this proceeding.
`Petitioner challenges a related patent, U.S. Patent No. 6,757,907 (“the
`’7907 patent”) in IPR2019-01135, IPR2019-01137, and IPR2019-01139.
`According to the parties, the ’4907 patent is involved in Sprint
`Communications Company L.P. v. Charter Communications, Inc., 1:18-cv-
`02033-RGA and Sprint Communications Company L.P. v. Cequel
`
`2
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`Communications, LLC (d/b/a Suddenlink Communications), et al., 1:18-cv-
`01919-RGA, both in the U.S. District Court for the District of Delaware.
`Pet. 74–75; Paper 4, 1 (Patent Owner’s Mandatory Notice).
`
`B. Real Parties In Interest
`The parties do not present any dispute over real parties in interest.
`Petitioner asserts that Charter Communications, Inc.; Charter
`Communications Holdings, LLC; Spectrum Management Holding
`Company, LLC; Charter Communications Operating, LLC; and Time
`Warner Cable, LLC are the real parties in interest. Pet. 66.
`Patent Owner asserts Sprint Communications Company L.P. is the
`real party in interest and that Sprint Corporation may be a real party in
`interest. Paper 4, 1.
`
`C. The ’4907 Patent
`The ’4907 patent is directed to a video-on-demand system having a
`remote control feature. Ex. 1001, code (54). The patent describes how the
`remote control feature can be implemented through a personal computer
`using a web browser, which eliminates the need for a special set-top box. Id.
`at 1:35–43. Figure 1 of the ’4907 patent is reproduced below:
`
`3
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`
`Figure 1 of the ’4907 patent depicts an embodiment of the claimed
`video on demand system. Ex. 1001, 1:61–63. According to the ’4907
`patent, first communication interface 101 is coupled to first communication
`system 111, which can be “optical fiber systems, wire or cable systems, and
`wireless link systems.” Id. at 2:27–29. These are in turn connected to first
`display 121, which can be a television. Id. at 2:31–32. The second
`communication interface 102 is coupled to second communication system
`112, which can be the “Internet or World Wide Web.” Id. at 2:29–31.
`These are in turn connected to second display 122, which can be a personal
`computer with a browser. Id. at 2:32–33.
`Processing system 103 handles communications within the system.
`First, processing system 103 transfers a control screen signal to second
`communication interface 102. Id. at 2:38–46. The control screen can be a
`webpage that includes, e.g., a control menu (play, stop, pause, rewind, fast-
`
`4
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`forward) and a video content selection menu. Id. at 1:50–55. When the user
`enters a selection from the control screen, a video control signal is sent back
`to processing system 103 via second communication system 112 and second
`interface 102. Id. at 2:47–53. In response to the video control signal,
`processing system 103 then directs video content to the first or second
`display, depending on which display the video control signal selected to
`receive the video content. Id. at 2:54–67.
`
`D. Challenged Claims
`All claims in the ’4907 patent are challenged. Claims 1, 10, and 19
`are independent. Independent claim 1 is reproduced below with added
`emphasis:
`1. A video-on-demand system comprising:
`a first communication interface configured to transfer video
`content signals to a first communication system;
`a second communication interface configured to transfer the
`video content signals to a second communication system,
`transfer a control screen signal to the second communication
`system, and receive a video control signal from the second
`communication system; and
`a processing system configured to transfer the control screen
`signal to the second communication interface, receive the
`video control signal from
`the second communication
`interface, implement a viewer-control selection indicated by
`the video control signal, and transfer the video content signals
`to
`the
`first communication
`interface
`if
`the
`first
`communication interface is indicated by the video control
`signal received from the second communication interface or
`transfer
`the video content
`signals
`to
`the
`second
`communication interface if the second communication
`interface is indicated by the video control signal.
`
`
`
`5
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`Independent claim 10 is also reproduced below:
`10. A method of operating a video-on-demand system, the
`method comprising:
`transferring a control screen signal to a second communication
`system;
`receiving a video control signal from the second communication
`system;
`implementing a viewer control selection indicated by the video
`control signal; and
`transferring video content signals to a first communication
`interface if the first communication interface is indicated by
`the video control
`signal
`received
`from a
`second
`communication interface or transferring the video content
`signals to the second communication interface if the second
`communication interface is indicated by the video control
`signal.
`
`
`Independent claim 19 is directed to a “product comprising a
`processor-readable storage medium storing processor-executable instructions
`for performing a method for operating a video-on-demand system,” with the
`recited method steps similar to those of claim 10.
`
`E. Prior Art and Asserted Grounds
`Petitioner asserts the following grounds:
`Claims
`Challenged 35 U.S.C. §
`1–25
`102
`1–25
`103
`1–25
`103
`
`
`Ellis1
`Ellis, Browne2
`Ellis, Humpleman3
`
`Reference(s)
`
`
`1 US 7,913,278 B2, iss. Mar. 22, 2011 (Ex. 1008).
`2 WO 92/22983, pub. Dec. 23, 1992 (Ex. 1007).
`3 US 6,182,094 B1, iss. Jan. 30, 2001 (Ex. 1009).
`
`6
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`II. PATENTABILITY ANALYSIS
`
`A. Claim Construction
`We construe the claims “using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b), including construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`§ 42.100(b). Under this standard, words of a claim are generally given their
`ordinary and customary meaning. See Phillips v. AWH Corp., 415 F.3d
`1303, 1312 (Fed. Cir. 2005) (en banc) (“the words of a claim are generally
`given their ordinary and customary meaning”) (citations and internal quote
`marks omitted). “[T]he ordinary and customary meaning of a claim term is
`the meaning that the term would have to a person of ordinary skill in the art
`in question at the time of the invention.” Id. at 1313. Importantly, the
`person of ordinary skill in the art is deemed to read the claim term not only
`in the context of the particular claim in which the disputed term appears, but
`in the context of the entire patent, including the specification. Id.
`Reviewing the positions of Petitioner and Patent Owner, we determine
`that the following claim constructions are required for us to render this
`Decision.
`
` “video-on-demand”
`(all claims)
`The term “video-on-demand” appears in the preamble of each
`independent claim. Petitioner proposes that the claim be given its plain and
`ordinary meaning. Pet. 10. In the alternative, Petitioner proposes either
`“operating a system that provides video-on-demand” or “operating a video-
`
`7
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`on-demand system without the use of a set-top box for remote control of the
`video-on-demand system.” Id.4 Petitioner asserts that the differences
`between these constructions does not impact the outcome of this proceeding.
`Id. at 11.
`Patent Owner asserts that the claim terms should be given their
`ordinary meaning, and does not propose any claim construction. Prelim.
`Resp. 19.
`Reviewing the record before us, for the reasons that follow, we
`determine that “video-on-demand” in the preamble is limiting because it
`provides necessary context for the structure recited in the claims.
`As a general rule, preamble language is not treated as limiting. Allen
`Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
`Nonetheless, the preamble may be construed as limiting “if it recites
`essential structure or steps, or if it is ‘necessary to give life, meaning, and
`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble is not
`
`
`4 This latter claim construction is the district court’s claim construction in
`the underlying litigation. Pet. 10; Ex. 1010 (Claim Construction Order from
`Comcast Cable Commc’ns, LLC v. Sprint Commc’ns Co., LP, Case No.
`2:12-cv-859-JD, Dkt. 162 (Aug. 15, 2014, E.D. Pa)). The district court
`construed this claim term, and many others, to preclude involvement of a
`set-top box, based on the ’4907 patent’s discussion of such devices. Ex.
`1010, 28–33; see also Ex. 1001, 1:30–32 (“Unfortunately, the set-top box is
`a special component. . . .”), 1:35–43 (“The invention solves the above
`problems with a video-on-demand system that allows the viewer to use a
`portable computer,” which “eliminates the cost of a special television set-top
`box.”). We do not weigh in on this issue because it is not necessary for us to
`render this Decision.
`
`8
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`regarded as limiting “when the claim body describes a structurally complete
`invention such that deletion of the preamble phrase does not affect the
`structure or steps of the claimed invention.” Catalina, 289 F.3d at 809. The
`preamble has no separate limiting effect if, for example, “the preamble
`merely gives a descriptive name to the set of limitations in the body of the
`claim that completely set forth the invention.” IMS Tech., Inc. v. Haas
`Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000). The question
`whether we should “treat a preamble as a limitation is a determination
`‘resolved only on review of the entire . . . patent to gain an understanding of
`what the inventors actually invented and intended to encompass by the
`claim.’” Catalina Mktg., 289 F.3d at 808 (quoting Corning Glass Works v.
`Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)).
`Each of the independent claims recites in its preamble that it is, or is a
`method for operating, a “video-on-demand system.” In the body of the
`claims, each claim recites a control screen signal sent to a device, followed
`by a video control signal received from the device. The video control signal
`dictates which device receives the video content signals. Accordingly, each
`of the independent claims recites a system that is selecting video content
`based on a choice. The dependent claims provide further information as to
`the nature of the video control signal. For example, dependent claims 2–4
`provide details directed to how a user can control the video content—by
`playing, pausing, or stopping the video content. Dependent claim 5 specifies
`that the control screen includes a video content selection. Other dependent
`claims recite similar functionality. The dependent claims make clear that the
`video control selection indicated by the video control signal of the
`independent claims is effecting the video-on-demand service. However,
`
`9
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`with respect to the independent claims, without knowing that the system was
`a video-on-demand system, it may be possible to interpret that term as
`directed to, e.g., a channel change signal. The preambles are not merely a
`“descriptive name to the set of limitations in the body of the claim” because
`knowing that the claims are directed to a “video-on-demand” service
`breathes “life [and] meaning” into the claims by establishing that the video
`control signal is a particular type of signal used to provide the video-on-
`demand services. IMS Tech., 206 F.3d at 1434; Catalina, 289 F.3d at 808.
`That is, the claims are not “structurally complete” without understanding
`that the control signal is a control signal of a video-on-demand service.
`Catalina, 289 F.3d at 809.
`The specification of the ’4907 patent further clarifies what is meant by
`a video-on-demand system, and that such a system is different from non-
`video-on-demand systems. First, the patent provides a detailed description
`of what a video-on-demand system is. Ex. 1001, 1:12–32. This way of
`viewing video content is different from typical television viewing because
`playing the video is immediate, controllable, and only in response to a user
`request to view that particular content. Id. at 1:17–23 (instructing that, with
`video-on-demand, the video is played “[i]n response to the [user’s] request,”
`and allows the user “to immediately view the selected video content”), 1:27–
`30 (the user “may also view a video control menu on the television to play,
`stop, pause, rewind, and fast forward the video content on the television”).
`Understanding this distinction is critical to understanding how the preambles
`shape the claim.
`In conclusion, having reviewed the claims and the specification of the
`’4907 patent, we determine that the phrase “video-on-demand” in the
`
`10
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`preambles is necessary to give life and meaning to the claims. Pitney
`Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)
`(“[I]f the claim preamble is ‘necessary to give life, meaning, and vitality’ to
`the claim, then the claim preamble should be construed as if in the balance
`of the claim.”). The difference between watching television and watching a
`video on demand is a difference in kind, rendering a video-on-demand
`system different from a non-video-on-demand system. While a person
`watching television can change channels and thus in some sense selects
`video content, such video content is being distributed regardless of whether
`the user selects it. Video-on-demand, by contrast, is distributed on demand,
`i.e., when the user specifically selects it. Because of that nature, the user
`also has control over the playback of the video content, such as pausing and
`stopping. Although the dependent claims more clearly demonstrate the on-
`demand nature of the video content (e.g., with the menu and control
`buttons), only the preamble in the independent claims provides the clue as to
`this context.5 Thus, the preamble serves to provide the framework necessary
`to understand the body of the claims, and is limiting.
`
`
`
`5 For example, claim 1 of the ’4907 patent states that the video content is
`sent to a particular device based on “a view-control selection indicated by
`the video control signal.” This is broadly recited in claim 1 to encompass
`the controls relevant to video-on-demand (claims 2 and 4: play, pause, stop,
`etc.; claim 5: content selection menu). But we do not read the breadth of
`the independent to include mere channel selection. Limiting claim 1 to a
`video-on-demand system provides meaningful context.
`
`11
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`
` “control screen signal”
`“video content signal”
`(all claims)
`A “control screen signal” is recited in each independent claim. This
`signal is sent by the processing system to the second communication system.
`A “video content signal” is also recited in each independent claim. This
`signal is sent by the processing system to either the first or second
`communication interface, depending on the selection indicated by the video
`control signal.
`Petitioner asserts that both terms should be given their plain and
`ordinary meaning. Pet. 11, 12. Alternatively, Petitioner asserts “video
`control signal” should be construed as “a signal relating to the control of a
`video” or “a video control signal generated and processed without the
`involvement of a set-top box for remote control of the video-on-demand
`system.” Id. at 11. Petitioner alternatively asserts that “video content
`signal” should be construed as “sending video content signals” or “in
`response to the video control signal transferring video content signals.” Id.
`at 12. The latter alternative construction for both terms is the district court’s
`construction in the underlying litigation. Id. at 11, 12–13; see also supra
`note 4. Petitioner asserts that the differences between these constructions do
`not impact the outcome of this proceeding. See id. at 11–13.
`Patent Owner asserts that all claim terms should be given their
`ordinary meaning, and does not propose any claim constructions. Prelim.
`Resp. 19.
`Reviewing the position of the parties, we determine that it is necessary
`for purposes of this Decision to construe these claim terms. Specifically, for
`
`12
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`the reasons that follow, we determine that a “control screen signal” is
`separate and distinct from a “video content signal.”
`First, the independent claims have separate steps for transferring the
`control screen and video content signals. Likewise, the ’4907 patent’s
`specification is replete with instances describing the control screen as
`something other than video content. See, e.g., Ex. 1001, 3:21–37 (noting the
`distinction drawn between the control screen and the menu it provides to
`allow the viewer to watch video content); 1:15–17 (describing various video
`content types), 1:48–55 (noting that the “video-on-demand system
`implements a viewer control selection indicated by the video control signal”)
`(emphasis added). As another example, the ’4907 patent describes the
`control screen as a webpage displaying a menu. Id. at 1:50–55, 2:45–46.
`The control screen is claimed and described as separate from video
`content. Several dependent claims shed further light on the control screen
`signal (e.g., claim 2: play and stop controls are provided by the control
`screen signal) that are consistent with the specification’s separate treatment
`of controls and content. Reviewing the claims and specification, we
`determine that a “control screen signal” provides the user with controls that
`allow the user to control video content (e.g., by choosing which content to
`play or to control the playback of the content), whereas the “video content
`signals” are the actual media (movies, television shows, etc.) that are viewed
`by the user and controlled by the control signals.6
`
`
`
`6 This construction is consistent with and informed by our construction of
`“video-on-demand” above.
`
`13
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`
` Other Claim Terms
`“[W]e need only construe terms ‘that are in controversy, and only to
`the extent necessary to resolve the controversy.’” Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999)). We have construed the above terms only to the extent
`necessary to render our Decision, and we have determined that no further
`terms require construction.
`
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`held a bachelor’s degree in electrical engineering, computer science, or a
`related field with at least five years of experience or research in interactive
`systems applicable to digital television, including VOD for cable and
`Internet delivery.” Pet. 9.
`Patent Owner does not offer a competing definition. Prelim. Resp. 22.
`For purposes of this Decision, we find Petitioner’s proposed level of
`ordinary skill reasonable based upon a review of the prior art references and
`the ’4907 patent. We base this finding on the understanding that the prior art
`reference and challenged patent laid before us were written to an audience
`having an ordinary level of skill in the art. See, e.g., W.L. Gore & Assoc.,
`Inc. v. Garlock, Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983) (“Patents . . . are
`written to enable those skilled in the art to practice the invention.”). A
`person having Petitioner’s proposed level of skill, having significant
`technical expertise in the relevant field, appears to be a reasonable
`description of the skill level required to make and use the devices disclosed
`in those documents.
`
`14
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`
`C. The Ellis Anticipation Ground
`Petitioner asserts that all claims of the ’4907 patent are anticipated by
`Ellis. Pet. 15–40. We first provide a brief overview of Ellis, then review the
`parties’ positions, and then turn to our analysis of the ground.
`
` Ellis
`Ellis is directed to a remote interactive television program guide. Ex.
`1008, 1:19–21. Television program guides allow a user to view a list of
`television programming, instead of having to consult printed program
`guides. Id. at 1:23–36. In Ellis, however, the program guide is available on
`the television as well as from a remote location. Id. at 2:19–28, 32–46.
`Figure 2b of Ellis, reproduced below, shows an illustrative arrangement for
`the interactive television program guide equipment and remote program
`access device:
`
`15
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`
`Figure 2b of Ellis shows that both the user television equipment 22
`and remote program guide access device 24 receive the program guide from
`interactive television distribution facility 16. Program guide distribution
`equipment 21 distributes the program guide data. Id. at 5:1–12. The
`program guide data is sent to user television equipment 22 over
`communication path 20, i.e., television channels. Id. at 5:9–12. The
`program guide data is sent to remote program guide access device 24 over
`remote access link 19 via communication device 27. Id. at 6:37–47.
`Remote program guide access device 24 connects via remote access link to
`communications device 27 of television distribution facilities 16. Id. at Fig.
`
`16
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`2b.
`
`Remote program guide access device 24 allows the user to interact
`with the television program guide, as well as “to access various functions of
`the interactive program guide (e.g., reminder information, parental control
`settings, favorite channel settings, user profiles, etc.).” Id. at 5:37–39
`(describing the interactive guide), 5:55–57 (describing the other functions);
`see also id. at 12:4–55 (describing an embodiment where remote device 24
`is a PC). The user using remote program guide access device 24 may also
`be able to order pay-per-view programs, remotely view video and audio that
`is being distributed to the local television program guide or that has been
`stored on user television equipment 22, as well as the opportunity to control
`television equipment 22 remotely. Id. at 18:59–19:19, 20:10–16.
`
` Petitioner’s Ground
`As to independent claim 1, Petitioner asserts that Ellis is a video-on-
`demand system because it transmits video data from multiple sources, and
`allows a user to order pay-per-view content. Pet. 15–16. Petitioner asserts
`that program guide distribution equipment 21 is the first communication
`interface, that the television signals are the video content signals, and that
`communication path 20 is the first communication system. Id. at 18–20.
`Petitioner asserts that program guide distribution equipment 21 and
`communication device 27 are collectively the second communication
`interface, that remote access link 19 is the second communication system,
`and that the program guide information is the control screen signal. Id. at
`21–27. Lastly, Petitioner asserts that television distribution facility 16 is the
`processing system. Id. at 27–30. Petitioner asserts that independent claims
`
`17
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`10 and 19 are unpatentable for the same or similar reasons as claim 1. Id. at
`37, 38–40.
`Patent Owner argues that Ellis does not anticipate the claimed subject
`matter. Prelim. Resp. 22–31. One argument is that Ellis’s program guide
`data is not a control screen signal. Prelim. Resp. 29–31. Patent Owner
`bases this argument on the premise that the display program guide
`information in Ellis is “not information that defines a control screen for a
`video-on-demand system.” Id. at 30.
`
` Analysis of the Ellis Anticipation Ground
`Patent Owner’s argument that Ellis does not describe a control screen
`signal for a video-on-demand system is persuasive because we agree that
`Ellis is not a video-on-demand system. As we explained in our claim
`construction section, a video-on-demand system is a specific type of video
`system that allows a user to select video content from a library, start
`watching the selected content at the time of the user’s choosing, and control
`playback of the video content. The claimed control screen signal facilitates
`control of that system.
`There is no indication in the record before us that Ellis provides
`anything other than standard television. The program guide merely displays
`what content is going to be displayed at a given time. See Ex. 1008, 1:23–
`36. There is no indication in the record before us that the content in Ellis is
`able to be played on demand, i.e., at the time of the user chooses, and
`controlled by the user while that content is played. Thus, we do not find
`Ellis to disclose the claimed control screen signal, which is a control screen
`signal for a video-on-demand system. We acknowledge that Ellis allows
`ordering of pay-per-view programs (id. at 18:26–41) or stored programs (id.
`
`18
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`at 25:63–26:14), but we have no evidence that suggests pay-per-view
`content has playback control, and we do not have evidence that playing
`locally recorded or stored video would have been understood to be video-on-
`demand.
`Reviewing the Petition, we determine that the Petitioner has not
`sufficiently explained how Ellis describes the control screen signal of a
`video-on-demand system required by all of the claims.
`
`D. The Ellis-Browne Ground
`Petitioner asserts that all claims of the ’4907 patent are unpatentable
`in view of Ellis and Browne. Pet. 40–53. We will begin with a brief
`overview of Browne and the positions of the parties before turning to our
`analysis.
`
` Overview of Browne
`Browne describes an audio/video recorder system that has a plurality
`of transmission input signals that can be stored, reconfigured, and output to
`various devices. Ex. 1007, code (57). Figure 1 of Browne, reproduced
`below, provides a schematic drawing of the system:
`
`19
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`
`
`
`Figure 1 of Browne shows various inputs 101 connected to various
`signal processing elements (demodulators 113, A/D converters 102,
`compressors 109), storage 104c, mixer and effects components 108, and then
`various signal processing elements (D/A converters 110, modulators 111) to
`send a signal to outputs 112. Controller and interface 105 and 105a control
`the routing and processing of signals. Ex. 1007, 13.
`
` The Parties’ Positions
`Petitioner’s proposed combination is to “implement[] the video-on-
`demand system and remote control device of Ellis with the control screen
`and video control menus of Browne on the remote control of Ellis.” Pet. 40;
`id. at 43 (asserting that a person of ordinary skill in the art “would have been
`motivated to combine Browne’s generation and transfer of a control screen
`with the control screen framework already disclosed in Ellis”); see also id. at
`40–45 (setting out Petitioner’s rationale for combination).
`
`20
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`With respect to the limitation requiring transferring a control screen
`signal to the second communication system, Petitioner directs our attention
`to certain features of Browne. Pet. 49–50. In particular, Petitioner asserts
`that the high-speed data bus (no item number) is the second communication
`system, controller 105 is the second communication interface, and the virtual
`control screen provided by the controller is the control screen signal. Id. at
`50. According to Petitioner, the control screen may have a list of programs
`stored for selection and viewing. Id. Petitioner also asserts that digital cross
`point 107 is the claimed processing system. Id. at 51.
`Patent Owner argues that Petitioner has not explained why a person of
`ordinary skill in the art would have combined the teachings of Browne in
`Ellis to arrive at the claimed invention. Prelim. Resp. 37–41. For example,
`Patent Owner argues that “Petitioner does not show (or attempt to show)
`why or how Browne’s teachings relating to [the asserted] components . . .
`would have been combined with Ellis,” and characterizes Petitioner’s
`rationale as “generic and insufficient.” Id. at 38–39.
`
` Analysis for the Ellis-Browne Ground
`We agree with Patent Owner that Petitioner has failed to adequately
`explain why a person of ordinary skill in the art would have combined the
`control menu features from Browne into the system of Ellis. Reviewing the
`Petition, it is not clear to us what would be the specific combination of
`features envisioned by Petitioner to have been obvious. We understand that
`a proposed combination is not a physical extraction of a component
`described in one reference and then grafting it onto another component
`described in another reference. In re Mouttet, 686 F.3d 1322, 1332 (Fed.
`Cir. 2012) (“[i]t is well-established that a determination of obviousness
`
`21
`
`
`
`IPR2019-01138
`Patent 6,754,907 B1
`based on teachings from multiple references does not require an actual,
`physical substitution of elements”); see also In re Etter, 756 F.2d 852, 859
`(Fed. Cir. 1985) (en banc) (“[T]he criterion [is] not whether the references
`could be physically combined but whether the claimed inventions are
`rendered obvious by the teachings of the prior art as a whole.”). That said,
`the proposed combination must result in something having all of the claimed
`features arranged as claimed. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d
`1352, 1360 (Fed. Cir. 2011) (“obviousness requires [a] showing that a
`person of ordinary skill . . . would have selected and combined those prior
`art elements . . . to yield the claimed invention) (emphasis added); see also
`Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265, 1273 (Fed. Cir. 2018)
`(“The question is not whether the various references separately taught [the
`claimed] components . . ., but whether the prior art suggested the selection
`and combination achieved.”) (emphasis ad
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
