In recent weeks the Patent Trial and Appeal Board (PTAB) has issued a series of final written decisions terminating inter partes review (IPR) proceedings where Comcast Cable Communications petitioned patents owned by technology developer Rovi Guides. In each of the final written decisions the PTAB determined that Comcast proved the invalidity of all challenged claims. These latest skirmishes relate to an ongoing patent war between the two companies over Rovi patents on remote scheduling services. A little more than ten months ago Rovi had the upper hand, winning a favorable ruling from the U.S. International Trade Commission (ITC).
In December 2017, U.S. International Trade Commission issued a final determination finding a violation of section 337 in a matter dealing with infringement of patents owned by Rovi. As a result of the investigation the ITC issued a limited exclusion order prohibiting importation of certain digital video receivers and hardware and software components, and also issued cease and desist orders directed to Comcast. As a result of this ITC ruling Comcast was required to stop providing remote scheduling services to its subscribers.
At the ITC Rovi asserted infringement of U.S. Patent Nos. 8,006,263; 8,578,413; 8,046,801; 8,621,512; 8,768,147; 8,566,871; and 6,418,556. On May 26, 2017, the administrative law judge (the “ALJ”) issued the final initial determination, which found a violation of section 337 by Respondents in connection with the asserted claims of both the ’263 and ’413 patents. The final initial determination found no violation of section 337 in connection with the asserted claims of the ’556, ’801, ’871, and ’512 patents. The Commission affirmed the final initial determination that Comcast violated section 337 in connection with the asserted claims of the ’263 and ’413 patents. The Commission also affirmed the conclusion that Comcast’s customers directly infringe the ’263 and ’413 patents.
Fast forward to September 19, 2018. The PTAB issued three final written decisions on that day all relating to the ‘263 patent, and finding all of the challenged claims of the ‘263 patent invalid as being obvious pursuant to 35 U.S.C. § 103(a). See IPR2017-00959 paper #42; IPR2017-00951 paper #42; and IPR2017-00952 paper #41.
Then on Tuesday, October 16, 2018, the PTAB issued three more final written decisions relating to the ‘412 patent, and finding all of the challenged claims of the ‘413 patent invalid as being obvious pursuant to pursuant to 35 U.S.C. § 103(a). See IPR2017-01048 paper #36; IPR2017-01049 paper #36; and IPR2017-01050 paper #36.
Two other Rovi patents have also gone down to defeat at the hands of the PTAB in recent days. The ‘871 patent (see IPR2017-00943 paper#34 and IPR2017-00942 paper #38) and the ‘801 patent (see IPR2017-01065 paper #35, IPR2017-01066 paper #36, and IPR2017-01143 paper #35) had all claims invalidated as being obvious pursuant to 35 U.S.C. § 103(a) on Thursday, October 11, 2018, and Monday, October 15, 2018, respectively.
News reports following the PTAB’s decisions in these IPRs indicate that Comcast is planning to reinstate a remote digital video recording feature, which had been disabled as the result of a limited exclusion order issued by the ITC last December. But an appeal to the Federal Circuit is virtually certain, and any reinstatement prior to the case being resolved would almost certain result in emergency filings seeking relief based on conflicting rulings between the ITC and the USPTO.
Perhaps Rovi will take the opportunity to test the waters with the newly created Precedential Opinion Panel (POP), which is intended to bring uniformity between examination procedures and the PTAB at the USPTO. USPTO Director Andrei Iancu has promulgated new Standard Operating Procedures (SOPs), and new claim interpretations rules will soon be in effect at the PTAB. A patent litigator by training, Director Iancu seems very interested in the PTAB giving other tribunals that have previously considered validity matters due consideration, something the PTAB has rarely, if ever, done. With the creation of the POP, and new SOPs that give the Director the authority to make decisions of the PTAB precedential at his discretion, this string of Rovi cases could present a very interesting test case on whether the PTAB actually will provide deference to tribunals that have previously considered validity issues, or whether the PTAB with its lower threshold for invalidity will continue to be the court of last resort for infringers who have lost elsewhere.