On Monday, September 10th, the Patent Trial and Appeal Board (PTAB) issued a final decision in an inter partes review (IPR) proceeding petitioned by telecommunications conglomerate Comcast Corporation to challenge a patent held by electronic program guide developer Rovi Guides, a subsidiary of TiVo. The panel of administrative patent judges (APJs) in the case issued a mixed claim finding which nixed 20 of 24 challenged claims but upheld claims covering a buffering feature which Rovi is seeking to license with Comcast.
The patent-at-issue in this case is U.S. Patent No. 8768147, titled Systems and Methods for Interactive Program Guides With Personal Video Recording Features. Issued in July 2014, the recent PTAB decision invalidated claim 1 of this patent, but upheld claim 2 covers a method of buffering programs where a first program is buffered to a first buffer by tuning to a third channel, creating a second buffer for a third program on the third channel, determining that the third program is the first program and combining the second buffer with the first buffer. The resulting invention provides an improvement to personal video recording systems which enable the recording of television programs to a digital medium in a way that prevents users from missing live or pay-per-view content.
In the final written decision terminating the IPR on the ‘147 patent, the PTAB panel of APJs determined that claims of the patent were invalid on Section 103 grounds for obviousness in light of various combinations of the following prior art references:
- U.S Patent Application No. 20020057893, titled Digital Recording and Playback (“Wood”). Filed in May 2002, it claims an apparatus for storing video information including a means for receiving video information, a means for converting the received video information into digital video information, and a means for storing the digital video information.
- U.S. Patent No. 6847778, titled Multimedia Visual Progress Indication System (“Vallone”). Issued in January 2005, it covers a process for visually and interactively communicating the record or playback progress of audio or video program material to a user.
- U.S. Patent No. 6678463, titled System and Method for Incorporating Previously Broadcast Content into Program Recording (“Pierre”). Issued in January 2004, it covers a method in a television system for incorporating previously broadcast material into a recording, involving the automatic determination of whether there is sufficient space to store the program.
- U.S. Patent No. 6754696, titled Extended FIle System (“Kamath”). Issued in June 2004, it covers a method in a computer system of providing access to file system object data in a way that provides an extended file system, such as a virtual local drive, for a computer system client/user such as a pocket-sized personal computer or a set-top box.
- U.S. Patent Application No. 20010033343, titled Multi-Tuner DVR (“Yap”). Filed in April 2001, it claims a method of processing available content by receiving the available content using at least two tuners and performing at least one of a plurality of operations, such as selecting an event based on an actor or alerting a user to an attempt to record a duplicate program, on the available content.
Despite a largely adverse ruling from the PTAB on the validity of the ‘147 patent’s claims, Rovi Corporation did obtain affirmation of certain claims as valid, surviving a PTAB that has not been a particularly hospitable forum for patent owners.
Rovi issued the following statement regarding the ruling:
“Overall, we are extremely pleased by today’s decision that reinforces the strength of Rovi’s patent portfolio; this ruling is a benchmark that will be used in our ongoing litigation that has already forced Comcast to remove features from its product. This IPR decision shows the value to customers as it protects Rovi’s buffering feature – which allows viewers to watch two programs at once saving the spot where they left off. This favorable decision is another step in ensuring Comcast renew its long-standing license to fairly compensate Rovi for the use of our intellectual property, just as hundreds of other media and entertainment leaders do.”
This mixed claim finding is just the latest in a string of recent decisions coming out of the PTAB regarding the validity of Rovi patents challenged by Comcast. The PTAB recently upheld all challenged claims of U.S. Patent No. 9172987, titled Methods and Systems for Updating Functionality of a Set-Top Box Using Markup Language. However, the PTAB nixed all challenged claims of Rovi’s U.S. Patent No. 8713595, titled Interactive Program Guide Systems and Processes. The patents are part of an ongoing litigation campaign between Rovi and Comcast, which as of this February remained the only major U.S. pay-TV provider without a license to TiVo’s patent portfolio.
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