Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 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.
`____________
`
`IPR2019-01140
`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 No. 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.
`____________
`
`IPR2019-01140
`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
`
`
`
`
`
`
`
`IPR2019-01140
`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
`IPR2019-01138, 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
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`IPR2019-01140
`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. 76.
`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:
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`IPR2019-01140
`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-
`
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`IPR2019-01140
`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.
`
`
`
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`IPR2019-01140
`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
`
`
`Humpleman1
`Humpleman, Yosuke2
`Humpleman, Ellis3
`
`Reference(s)
`
`
`1 US 6,182,094 B1, iss. Jan. 30, 2001 (Ex. 1009).
`2 EP 0872987 A2, pub. Mar. 31, 1996 (Ex. 1006).
`3 US 7,913,278 B2, iss. Mar. 22, 2011 (Ex. 1008).
`
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`IPR2019-01140
`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-
`
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`IPR2019-01140
`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. 16.
`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.
`
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`IPR2019-01140
`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,
`
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`IPR2019-01140
`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
`
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`IPR2019-01140
`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
`
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`IPR2019-01140
`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. 16.
`Reviewing the position of the parties, we determine that it is necessary
`for purposes of this Decision to construe these claim terms. Specifically, for
`
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`IPR2019-01140
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`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.
`
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`
` “first communication system”
`“second communication system”
`(independent claim 1)
`Neither party offers a construction of these terms. We construe the
`first and second communication systems to be separate systems. That is, the
`same structure cannot be both the first and second communication system at
`the same time. First, the purpose of claim 1 is to receive a video control
`signal and direct video content signals to the chosen communication system
`(by way of their respective interfaces). It would make little sense to have a
`choice of systems if the systems were the same. Similarly, one would not
`need two interfaces if the systems were the same.
`Indeed, reading the specification of the ’4907 patent, it is clear that the
`inventors envisioned the two communication systems to be different. For
`example, the ’4907 patent explains that the second communication system
`“uses less bandwidth to transfer video than the first communication system.”
`Ex. 1001, 2:24–26. In addition, the ’4907 patent explains that the first
`communication system is existing cable infrastructure: “optical fiber
`systems, wire or cable systems, and wireless link systems.” Id. at 2:27–29.
`On the other hand, the second communication system is the Internet. Id. at
`2:29–31. Furthermore, requiring the first and second communication
`systems to be different makes sense in the context of the invention being to
`eliminate a set-top box by using a computer in lieu of a set-top box.
`Reviewing the claims in view of the specification, we determine that
`the first communication system and the second communication system are
`separate and distinct, and could not be satisfied by the same structure in the
`prior art.
`
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`
` 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. 16.
`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.
`
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`C. The Humpleman Anticipation Ground
`Petitioner asserts that all claims of the ’4907 patent are anticipated by
`Humpleman. Pet. 16–52. We first provide a brief overview of Humpleman,
`then review the parties’ positions, and then turn to our analysis of the
`ground.
`
` Overview of Humpleman
`Humpleman is directed to a system for generating a program guide for
`a home network. Ex. 1009, Abstract. In this system, Internet technology is
`used to control and command home devices connected to a home network,
`where each home device contains an interface (e.g., an HTML page) for
`commanding and controlling the device. Id. at 4:4–20, 6:48–64. The digital
`television or a personal computer provides a display that allows a user to
`view another HTML interface. Id. at 5:55–67. This latter interface is the
`session manager, which is hosted on a session server, which in turn is a
`device that contains a session manager, a display unit, various HTML files,
`and a browser. Id. at 14:5–19, 18:45–58. The session manager displays the
`various devices available for control. Id. at 14:15–19. If the user chooses to
`control a device, the session manager sends the command and control
`information to the interface of the appropriate device(s). Id. at 14:19–39.
`
` Parties’ Contentions
`Petitioner asserts that Humpleman discloses a video-on-demand
`system because it plays multimedia material, e.g., from a DVD on a home
`network. Pet. 19–21. Petitioner asserts that a control application associated
`with the first device is the first communication interface, and that the home
`network is the first communication system. Id. at 21–25. Petitioner asserts
`
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`that the control application associated with a second device is the second
`communication interface, and that the home network or Internet proxy 1104
`is the second communication system. Id. at 25–34. Petitioner asserts that a
`session page is the control screen signal (i.e., the page displayed by the
`session manager). Id. at 28–30. Petitioner lastly asserts that the session
`manager is the claimed processing system. Id. at 34–37.
`Patent Owner argues that Humpleman does not disclose the
`communication interface transferring a control screen signal to the
`communication system. Prelim. Resp. 20–22. Patent Owner also argues that
`the alleged processing system does not transfer the control screen to the
`second communication system. Id. at 22–27.
`
` Analysis of the Humpleman Anticipation Ground
`Each of the independent claims requires transfer of a control screen
`signal to the second communication system. In terms of how Petitioner has
`mapped the claims onto Humpleman, this would be the page displayed by
`the session manager transferred by the home network or the Internet proxy.
`As we explained in our claim construction section above, the first and
`second communication systems must be different communication systems.
`Therefore, Petitioner must rely on the Internet proxy to be the second
`communication system because Petitioner has already relied on the home
`network to be the first communication system. Pet. 21. Petitioner does not
`direct us to, nor do we see, any disclosure of Humpleman that the video
`content signals can be sent through the Internet proxy, as would be required
`by Petitioner’s mapping of independent claim 1.
`Independent claim 1 specifically requires the transfer to be from the
`processing system to the communication interface, and then from the
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`IPR2019-01140
`Patent 6,754,907 B1
`communication interface to the communication system. But Humpleman
`does not disclose the page displayed by the session manager to be
`transferred from the session manager to the control application of the device,
`and then by the control application of the device to the network. The control
`application in Humpleman is not described in great detail, and while it
`“handles the communication between the session manager of the respective
`home network and the home device,” it is not clear that it has anything to do
`with transferring a session page. See Ex. 1009, 19:34–65. Petitioner’s
`explanation does not bridge the gap. See Pet. 25–27. Accordingly, we are
`not persuaded that the control application is the communication interface.
`Furthermore, reviewing the Petition, we determine that the Petitioner
`has not sufficiently explained how Humpleman describes the video-on-
`demand system required by all of the claims. Humpleman describes playing
`a DVD, but viewing DVDs is not video on demand. As we have construed
`the term, a video-on-demand system allows a user to select from a library of
`content, and a DVD is merely the user playing a video in a video player.
`Although DVDs allow control, such as pausing, we do not understand
`playing a DVD to be the type of selecting from a video content library
`required by video-on-demand systems. Petitioner provides no persuasive
`explanation to the contrary.
`For the above reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood of success for this ground.
`
`D. The Humpleman-Yosuke Ground
`Petitioner asserts that all claims of the ’4907 patent are unpatentable
`in view of Humpleman and Yosuke. Pet. 52–62. Petitioner asserts that
`Humpleman discloses the limitations of the claims and only relies on
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`IPR2019-01140
`Patent 6,754,907 B1
`Yosuke for the “video-on-demand system” limitation in the preambles. Pet.
`57–58, 61, 62. Accordingly, Petitioner’s ground does not address the
`deficiencies of Humpleman we have identified above. We determine that
`Petitioner has not demonstrated a reasonable likelihood of success for this
`ground.
`
`E. The Humpleman-Ellis Ground
`Petitioner asserts that all claims of the ’4907 patent are unpatentable
`in view of Humpleman and Ellis. Pet. 63–75. Petitioner asserts that
`Humpleman discloses the limitations of the claims and only relies on Ellis
`for the “video-on-demand system” limitation in the preambles. Pet. 68–71,
`74, 75. In addition, Ellis does not appear to be a video-on-demand system,7
`so even if Petitioner had adequately addressed each limitation of the body of
`the claims, Ellis could not supply the missing video-on-demand system.
`Accordingly, Petitioner’s ground does not address the deficiencies of
`Humpleman we have identified above. We determine that Petitioner has not
`demonstrated a reasonable likelihood of success for this ground.
`
`
`7 Ellis is directed to a remote interactive television program guide. Ex.
`1008, 19–21. The program guide merely displays what content is going to
`be displayed at a given time. See id. at 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. We acknowledge that Ellis allows ordering of pay-per-view
`programs (id. at 18:26–41) or stored programs (id. 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.
`
`19
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`IPR2019-01140
`Patent 6,754,907 B1
`
`III. ORDER
`We determine that Petitioner has not demonstrated a reasonable
`likelihood that it would succeed in demonstrating that one or more claims of
`the ’4907 patent would have been unpatentable under any of the grounds
`asserted in its Petition.
`In view of the foregoing, it is hereby:
`ORDERED that the Petition is denied and that we do not institute an
`inter partes review of the ’4907 patent.
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`IPR2019-01140
`Patent 6,754,907 B1
`For Petitioner:
`
`Deepa Acharya
`Jim Glass
`Patrick Stafford
`Cameron Clawson
`QUINN, EMANUEL, URQUHART & SULLIVAN LLP
`Deepaacharya@quinnemanuel.com
`jimglass@quinnemanuel.com
`patrickstaffordQquinnemanuel.com
`Cameron.clawson@quinnemanuel.com
`
`For Patent Owner:
`
`Sharon Israel
`Kyle Friesen
`Christine Guastello
`Ryan Dykal
`Ryan Schletzbaum
`SHOOK HARDY AND BACON LLP
`sisrael@shb.com
`kfriesen@shb.com
`cguastello@shb.com
`rdykal@shb.com
`rschletzbaum@shb.com
`
`
`
`
`21
`
`
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