Last Week at the PTAB: Comcast Successful on Multiple Petitions, Unified Patents Sees Mixed Results

Last week, the Patent Trial and Appeal Board (PTAB) issued 31 decisions related to petitions for inter partes review (IPR) proceedings, instituting 14 IPRs and denying the other 17. Although Comcast saw a total of 11 IPR petitions denied institution, it succeeded on another six petitions, successfully initiating challenges of all four patents for which it sought review. Ten of the IPR petitions were part of the telecom giant’s ongoing legal battle with Rovi Guides. Unified Patents saw two of its IPR petitions denied, but the PTAB instituted two others. Another two IPRs, filed by a trio of major tech giants, were also instituted after the patent owner opted against responding to the asserted grounds for invalidity.

Comcast Cable Communications, LLC v. Rovi Guides, Inc.

On July 1, two panels of PTAB administrative patent judges (APJs) issued decisions on a total of 10 IPR petitions filed by Comcast to challenge two patents owned by Rovi, both of which are involved in district court litigation and a Section 337 investigation at the U.S. International Trade Commission (ITC) between the parties. The PTAB denied eight IPRs but instituted one proceeding for either patent.

In IPR2019-00281 , Comcast is challenging all 20 claims of U.S. Patent No. 9621956, Systems and Methods for Providing a Transport Control Interface. Comcast’s Section 103(a) obviousness challenge in this proceeding is primarily based upon the combination of U.S. Patent Application No. 20030067886, System and Method for Recording Broadcasting Programs (“Son”) and a 2001 IEEE publication describing a personal video recorder for digital TV (“Jung”). Other prior art references asserted include U.S. Patent No. 5371551, Time Delayed Digital Video System Using Concurrent Recording and Playback (“Logan”) and U.S. Patent Application No. 20030142956, Signal Record/Playback Apparatus and Method Featuring Independent Recording and Playback Processing (“Tomita”). The PTAB determined that initial automatic buffering of a program as taught by Jung or Logan and the clipping function taught by Son met limitations of claims challenged by Comcast.

In IPR2019-00299 , Comcast is challenging 20 claims of U.S. Patent No. 9294799, Systems and Methods for Providing Storage of Data in an On-Demand Media Delivery System. Comcast’s Section 103(a) challenge in this IPR primarily relies upon U.S. Patent No. 7127735, Video-on-Demand System and Video Viewing Assisting Method (“Lee”) and U.S. Patent No. 6501902, Method for Browsing and Replaying a Selected Picture By a Multimedia Player (“Wang”). Other prior art asserted in this proceeding include U.S. Patent No. 6956833, Method, System and Devices for Wireless Data Storage on a Server and Data Retrieval (“Yukie”) and U.S. Patent No. 7036738, PCMCIA-Compliant Smart Card Secured Memory Assembly for Porting User Profiles and Documents. The PTAB was persuaded that the multiple bookmarks in Wang, the pause feature of Lee and the multiple device server accessing system of Yukie met limitations of claims challenged by Comcast.

Comcast Cable Communications, LLC v. Veveo, Inc.

On July 5, the PTAB decided a series of seven IPR petitions filed by Comcast to challenge claims of two patents owned by Veveo that are involved in multiple district court proceedings as well as a Section 337 investigation at the ITC. The PTAB instituted four of these trials. Two of the IPRs challenge claims of U.S. Patent No. 7779011, Method and System for Dynamically Processing Ambiguous, Reduced Text Search Queries and Highlighting Results Thereof. In IPR2019-00237, Comcast’s Section 103 challenge mainly relies on the combination of U.S. Patent Application No. 20070027848, Smart Search for Accessing Options (“Howard”), U.S. Patent No. 6011554, Reduced Keyboard Disambiguating System (“King”) and U.S. Patent No. 6370518, Method and Apparatus for Displaying a Record From a Structured Database With Minimum Keystrokes (“Payne”). The PTAB was persuaded that modifying the system of Howard to replace its box highlighting with the bold-text highlighting of Payne for better visual feedback would have been obvious to one skilled in the art.

In IPR2019-00239, all 24 claims of the ‘011 patent are challenged on Section 103(a) obviousness based on two combinations of prior art: U.S. Patent Application No. 20040133564, Methods and System for Search Indexing (“Gross”) and U.S. Patent No. 6529903, Methods and Apparatus for Using a Modified Index to Provide Search Results in Response to an Ambiguous Search Query (“Smith”); and Gross, Smith and U.S. Patent No. 7885963, Free Text and Attribute Searching of Electronic Program Guide (EPG) Data (“Sanders”). The PTAB was persuaded that the highlighting of search results in Gross combined with Smith’s overloaded keyboard for input met limitations of claim 1 of the ‘011 patent.

The PTAB also instituted two IPRs filed by Comcast to challenge all 11 claims of U.S. Patent No. 7937394, same title as the ‘011 patent. In IPR2019-00290, Comcast’s Section 103 challenge mainly relies on the combination of Howard, King and Payne. Those prior art references were asserted alone or combined with either Sanders, Gross, U.S. Patent No. 6501956, Providing Blended Interface for Wireless Information Services (“Weeren”) or U.S. Patent Application No. 20050278741, Query-Based Electronic Program Guide (“Robarts”). In this IPR, the PTAB was similarly persuaded by the arguments regarding highlighting modifications found in Payne in combination with Howard’s system. In IPR2019-00292, Comcast asserts Gross and Smith alone or in combination with either Sanders or Weeren. The PTAB was similarly persuaded on the claim limitations taught by the combination of Gross and Smith as discussed in the IPR for the ‘011 patent where that prior art was asserted.

Unified Patents Inc. v. Vindolor, LLC

Last week, the PTAB issued decisions on four IPR petitions filed by Unified Patents, instituting two and denying two. One of the IPRs denied institution was IPR2017-00478, which challenged both claims of Vindolor’s U.S. Patent No. 6213391, Portable System for Personal Identification Based Upon Distinctive Characteristics of the User. The patent is directed at a system of identifying a person based on biometric characteristics and it is involved in 11 district court proceedings.

Unified’s IPR included Section 102 novelty and Section 103 obviousness challenges of both claims based on U.S. Patent 5280527, Biometric Token for Authorizing Access to a Host System (“Gullman”). Unified made another Section 103 challenge of both patent claims based on the combination of U.S. Patent No. 5623552, Self-Authenticating Identification Card With Fingerprint Identification (“Lane”) and U.S. Patent No. 5457747, Anti-Fraud Verification System Using a Data Card (“Drexler”). In nixing the challenges under Gullman, the PTAB agreed with Vindolor that the security token taught by Gullman doesn’t meet the access code limitation in the ‘391 patent. Regarding the other challenge, Unified failed to persuade the PTAB that the authenticator in Lane doesn’t generate a two-dimensional binary image of a fingerprint.

Google, Dell and Samsung v. Cypress Lake Software, Inc.

On July 2, the PTAB instituted two IPRs filed by tech giants Google, Dell and Samsung, both of which challenge claims of Cypress’ U.S. Patent No. 9817558, Methods, Systems, and Computer Program Products for Coordinating Playing of Media Streams. The patent is involved in 10 district court proceedings and it is directed at solutions for interference created when multiple media streams are allowed to be presented on the same device. In total, all but three claims of the ‘558 patent are involved in the IPRs.

Both IPRs challenge the ‘558 patent’s validity on Section 103(a) grounds based on the combination of U.S. Patent Application No. 20100138780, Methods and Systems for Using External Display Devices With a Mobile Computing Device (“Marano”) and U.S. Patent Application No. 20090228897, Bidirectional Control of Media Players (“Murray”). In IPR2019-00390, the PTAB was persuaded by petitioners’ argument that it would have been obvious to combine Murray, which teaches coordinating among media players to avoid interference, with Marano’s system of software outputs from one computer being presented on a number of possible devices. Cypress didn’t file a preliminary response and didn’t identify any petitioner flaws in its claim construction brief. The other IPR petition fared similarly based on the same arguments.

Other Decisions

IPRs Instituted Week Ending Friday, July 5

IPR2019-00378: ASM IP Holding B.V. v. Kokusai Electric Corp. – U.S. Patent No. 8409988, Method of Manufacturing Semiconductor Device and Substrate Processing Apparatus

IPR2019-00379: Bowtech, Inc. v. MCP IP, LLC – U.S. Patent No. 8443791, Dual Feed-Out Archery Cam

IPR2019-00380: Bowtech, Inc. v. MCP IP, LLC – U.S. Patent No. 7946281, Balanced Pulley Assembly for Compound Archery Bows, and Bows Incorporating That Assembly

IPR2019-00386: Bowtech, Inc. v. MCP IP, LLC – U.S. Patent No. 8919333, same title as the ‘281 patent

IPR2019-00476: Unified Patents Inc. v. Clean Energy Management Solutions, LLC – U.S. Patent No. 8035479, Mesh Network Door Lock 

IPR2019-00495: Unified Patents Inc. v. SpeakWare, Inc. – U.S. Patent No. 6397186, Hands-Free, Voice-Operated Remote Control Transmitter

IPRs Denied Week Ending Friday, July 5

IPR2019-00258: Apple Inc. v. Uniloc 2017 LLC – U.S. Patent No. 7093298, Apparatus and Method for Security Object Enhancement and Management

IPR2019-00389: ZTE (USA), Inc. v. AGIS Software Development LLC – U.S. Patent No. 9467838, Method to Provide Ad Hoc and Password Protected Digital and Voice Networks

IPR2019-00459: CSL Behring GmbH v. Shire ViroPharma Incorporated – U.S. Patent No. 10080788, C1-INH Compositions and Methods for the Prevention and Treatment of Disorders Associated With C1 Esterase Inhibitor Deficiency

IPR2019-00479: Unified Patents Inc. v. Flectere LLC – U.S. Patent No. 6415284, Intelligent Forms for Improved Automated Workflow Processing