Rovi/Comcast Battle Grows Deeper and Spotify Takes Swing at S.I.S.V.E.L. Patent at PTAB

Last week, the Patent Trial and Appeal Board (PTAB) issued 39 decisions on inter partes review (IPR) proceedings, instituting 24 IPRs and denying 15. The PTAB instituted one of four IPR petitions filed by Comcast to challenge a single patent owned by Rovi, adding a new chapter to the legal battle between those two parties over unlicensed television technologies. Spotify also saw the institution of one of three IPR petitions challenging user profile and playlist recommendation patents owned by S.I.S.V.E.L.

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

The ongoing patent battle between pay-TV provider Comcast and TV technology developer Rovi, a subsidiary of TiVo Corporation continued at the PTAB when, on July 24, a panel of administrative patent judges (APJs) denied institution to three IPR petitions challenging Rovi’s U.S. Patent No. 9668014, Systems and Methods for Identifying and Storing a Portion of a Media Asset (see Fig. 5). However, the same APJ panel instituted a fourth IPR petition challenging the same patent, putting all 20 claims of the ‘014 patent up for review under Section 102 novelty and Section 103 obviousness challenges.

The ‘014 patent, which is directed to a media guidance application that identifies and stores portions of media assets based on user commands, was one of six patents asserted by Rovi against Comcast in a lawsuit alleging claims of patent infringement filed January 2018 in the Central District of California. The suit is one of several filed in U.S. district court by Rovi since 2016, when Comcast stopped paying licensing fees to TiVo. Rovi’s January 2018 complaint notes that Comcast had paid $250 million for a fixed-term license to Rovi’s patent portfolio but became the only pay-TV provider in the U.S. to not renew its license in the 2015-16 timeframe. Comcast agreed to license Rovi’s portfolio in 2005, when the portfolio was allegedly less than half its current size and before it covered innovations such as video-on-demand and whole-home DVR technology. This allegation would seem to conflict with Comcast’s own public comments in response to the January 2018 lawsuit regarding what it found to be Rovi’s “increasingly obsolete patent portfolio.” The IPR petitions also identified a proceeding filed February 2018 at the U.S. International Trade Commission (ITC) involving the ‘014 patent, although that patent was no longer asserted in that proceeding.

Rovi had alleged that Comcast’s Xfinity X1 television platform infringes on claims of the ‘014 patent through its method of resolving a voice command for a media asset when the command doesn’t expressly name the media asset. Such methods were allegedly employed by the X1 system through either the X1 voice remote or the Xfinity TV remote app. The technology covered by the ‘014 patent was developed by Rovi to address issues posed by the growing availability of new channels and on-demand video libraries. Traditional remotes, which don’t have QWERTY-style keyboards, were cumbersome for inputting search commands that might return no results if the search terms weren’t accurate. The inventors of the ‘014 patent addressed the problem by combining voice-command technology, a robust media identifier database and a similarity metric analysis to enable quick searches of vast media catalogues even when search terms are inaccurate.

In IPR2019-00555, which was instituted, Comcast challenged all claims of the ‘014 patent on Section 102 and 103 grounds relying primarily on the prior art reference U.S. Patent No. 8316394, Interactive Media Guidance Application With Intelligent Navigation and Display Features (“Yates”). Claims 1, 4, 6-8, 11, 14 and 16-18 of the ‘014 patent are challenged as being both anticipated and rendered obvious by Yates alone. Those same claims are also challenged by Yates in various prior art combinations including a textbook from the year 2000 on natural language processing and speech recognition (“Jurafsky”). The PTAB was persuaded that a person of ordinary skill in the art would have been motivated to combine the interactive media guidance application in Yates with Jurafsky’s sampling and quantization for digitizing soundwaves for speech recognition. In denying the other three IPRs, the PTAB noted that the ‘555 IPR includes two alternative grounds of obviousness for each challenged claim of the ‘014 patent and a third anticipation ground for all of the independent claims.

In all, Comcast has filed 67 petitions for IPR review that have reached the institution decision phase. The PTAB has instituted 33 of these IPR petitions and denied 34 of them. Rovi and TiVo have continued to bring infringement allegations against Comcast, filing another lawsuit in Central California as recently as this April. In June, the ITC determined in a Section 337 proceeding that Comcast had infringed claims of another Rovi patent which could result in an exclusion order preventing Comcast from highlighting text in search results through its Xfinity service.

Spotify USA Inc. v. S.I.S.V.E.L. Societa Italiana Per Lo Sviluppo Dell’elettronica S.P.A.

The PTAB also decided a trio of institution decisions related to a district court proceeding between streaming music service Spotify and Italian intellectual property management firm S.I.S.V.E.L. The lawsuit, which was filed January 2018 in the District of Delaware, alleged that Spotify infringed on the patents through various user playlist and personalized recommendation technologies.

On July 23, 2019, the PTAB denied institution of IPR2019-00520, filed to challenge four claims of S.I.S.V.E.L.’s U.S. Patent No. 7734680, Method and Apparatus for Realizing Personalized Information From Multiple Information Sources. The patent is directed to a meta-browser presenting personalized collections information as different media collections in a unified browser space. In the lawsuit, S.I.S.V.E.L. alleged that Spotify infringed this patent by allowing users to create custom radio stations which allow users to provide feedback on presented tracks and populating virtual libraries with media collections in accordance with a user profile. In the IPR, Spotify alleged that the challenged claims were invalid on Section 103(a) obviousness grounds over either U.S. Patent No. 5758257, System and Method for Scheduling Broadcast of and Access to Video Programs and Other Data Using Customer Profiles (“Herz”) and WO Patent Application 1997016796, System for Customized Electronic Identification of Desirable Objects (“Herz ‘796”). In denying the IPR, the PTAB found that Spotify didn’t identify how the Internet connection filter in Herz suggested claimed physical features like controller or filter. The PTAB also found that Herz ‘796 didn’t teach the filter element as well. As noted below, however, Unified Patents was successful last week in getting an IPR instituted on the ‘680 patent.

On July 26, the PTAB also denied institution of IPR2019-00522 challenging U.S. Patent No. 8490123, Method and Device for Generating a User Profile on the Basis of Playlists. The patent is directed to technology for automated generation of a reliable user profile containing information about the user’s preferences with respect to different playlist aspects. Spotify allegedly infringed this patent by providing content streaming services that utilize a recommendation engine and profile generators that analyze playlist aspect such as frequency of occurrence and relation between content items. Spotify challenged claims 1-3, 5-13, 15, 17 and 18 of the ‘123 patent on Section 103 grounds based on the combination of U.S. Patent No. 7783722, Personalized Audio System and Method (“Rosenberg”) and WO Patent Application No. 2001084353, Relationship Discovery Engine (“Dunning”). In denying this IPR, the PTAB determined that Spotify didn’t demonstrate that the playlists associated with the conventional broadcast channels in Rosenberg are associated with a different user as required by the ‘123 patent’s claims. Further, Spotify didn’t establish that it would have been obvious to incorporate the plurality of playlists taught by Dunning into Rosenberg’s playlist analysis for updating profiles and recommending items.

However, the PTAB did institute IPR2019-00521, filed by Spotify to challenge all 22 claims of S.I.S.V.E.L.’s U.S. Patent No. 7035863, Method, System and Program Product for Populating a User Profile Based on Existing User Profiles. Spotify allegedly infringed upon this patent through its streaming service by providing users the ability to designate a variety of base characteristics by selecting content that represents the users interests. Spotify’s Section 103 obviousness challenge in this IPR was based on Herz, admitted prior art within the ‘863 patent specification and U.S. Patent No. 7139739, Method, System, and Computer Program Product for Representing Object Relationships in a Multidimensional Space (“Agrafiotis”). In instituting the IPR, the PTAB determined that Herz taught all limitations of claim 1 of the ‘863 patent including designating base characteristics for a new user profile and populating the new user profile with defined characteristics from the existing user profiles.

Other IPRs Instituted Week Ending Friday, July 26

IPR2019-00134: 3Shape A/S v. Align Technology, Inc. – U.S. Patent No. 9299192, Methods and Systems for Creating and Interacting With Three Dimensional Virtual Models

IPR2019-00251: Apple Inc. v. Uniloc 2017 LLC – U.S. Patent No. 6993049, Communication System

IPR2019-00408: Cardiovascular Systems, Inc. v. Shockwave Medical, Inc. – U.S. Patent No. 9642673, Shock Wave Balloon Catheter With Multiple Shock Wave Sources

IPR2019-00453: Unified Patents Inc. v. Uniloc 2017 LLC – U.S. Patent No. 7020252, Group Audio Message Board

IPR2019-00471: Unified Patents Inc. v. S.I.S.V.E.L. Societa Italiana Per Lo Sviluppo Dell’elettronica S.P.A. – U.S. Patent No. 7734680, Method and Apparatus for Realizing Personal Information From Multiple Information Sources 

IPR2019-00497: American National Manufacturing Inc. v. Sleep Number Corporation – U.S. Patent No. 8769747, System and Method for Improved Pressure Adjustment

IPR2019-00500: American National Manufacturing Inc. v. Sleep Number Corporation – U.S. Patent No. 9737154, same title as the ‘747 patent

IPR2019-00509: Unified Patents Inc. v. Health Watch, LLC – U.S. Patent No. 8460197, Monitoring Device With a Pedometer 

IPR2019-00510: Apple Inc. v. Uniloc 2017 LLC – U.S. Patent No. 6868079, Radio Communication System With Request Re-Transmission Until Acknowledged 

IPR2019-00511: U.D. Electronic Corporation v. Pulse Electronics, Inc. – U.S. Patent No. 6773302, Advanced Microelectronic Connector Assembly and Method of Manufacturing

IPR2019-00513: Unified Patents Inc. v. Portal Communications, LLC – U.S. Patent No. 7376645, Multimodal Natural Language Query System and Architecture for Processing Voice and Proximity-Based Queries

IPR2019-00517: Välinge Innovation AB v. Innovations4Flooring Holding N.V. – U.S. Patent No. 10053868, Floor Panel and Floor Covering Consisting of a Plurality of Such Floor Panels 

IPR2019-00531: Smartmatic USA Corporation v. Election Systems & Software, LLC – U.S. Patent No. 8096471, Ballot Marking Device Having Attached Ballot Box 

IPR2019-00554: Moderna Therapeutics, Inc. v. Arbutus Biopharma Corporation – U.S. Patent No. 8058069, Liquid Formulations for Nucleic Acid Delivery 

IPR2019-00561: Trend Micro Incorporated v. CUPP Computing AS – U.S. Patent No. 8365272, System and Method for Providing Network and Computer Firewall Protection With Dynamic Address Isolation to a Device 

IPR2019-00641: Trend Micro Incorporated v. CUPP Computing AS – U.S. Patent No. 9756079, same title as the ‘272 patent

IPR2019-00577: Associated British Foods PLC v. Cornell Research Foundation, Inc. – U.S. Patent No. 8993300, Overexpression of Phytase Gene in Yeast Systems 

IPR2019-00578: Associated British Foods PLC v. Cornell Research Foundation, Inc. – U.S. Patent No. 8455232, same title as the ‘300 patent

IPR2019-00579: Associated British Foods PLC v. Cornell Research Foundation, Inc. – U.S. Patent No. 7829318, same title as the ‘300 patent

IPR2019-00580: Associated British Foods PLC v. Cornell Research Foundation, Inc. – U.S. Patent No. 7312063, same title as the ‘300 patent

IPR2019-00581: Associated British Foods PLC v. Cornell Research Foundation, Inc. – U.S. Patent No. 7026150, same title as the ‘300 patent

IPR2019-00582: Associated British Foods PLC v. Cornell Research Foundation, Inc. – U.S. Patent No. 6451572, same title as the ‘300 patent

IPRs Denied Week Ending Friday, July 26 

IPR2019-00355, IPR2019-00356 and IPR2019-00357: Apple Inc. v. UUSI LLC d/b/a Nartron – U.S. Patent No. 5796183, Capacitive Response Electronic Switching Circuit

IPR2019-00426: Xerox Corporation v. Midwest Athletics and Sports Alliance LLC – U.S. Patent No. 7720425, Method and Apparatus for Printing Using a Tandem Electrostatographic Printer 

IPR2019-00427: Xerox Corporation v. Midwest Athletics and Sports Alliance LLC – U.S. Patent No. 8005415, same title as the ‘425 patent

IPR2019-00470: Unified Patents v. SynchView Technologies, LLC – U.S. Patent No. 6788882, Systems and Methods for Storing a Plurality of Video Streams on Re-Writable Random-Access Media and Time-And Channel- Based Retrieval Thereof 

IPR2019-00508: U.D. Electronic Corporation v. Pulse Electronics, Inc. – U.S. Patent No. 7959473, Universal Connector Assembly and Method of Manufacturing

IPR2019-00530: Man Wah Holdings Limited v. Raffel Systems, LLC – U.S. Patent No. D643252, Cup Holder

IPR2019-00565 and IPR2019-00566: Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc. – U.S. Patent No. 9695468, Methods for Droplet-Based Sample Preparation

Top Petitioners Week Ending Friday, July 26

Universal Imaging Industries, LLC – 10 petitions

NOF Corporation – 6 petitions

Microsoft Corporation – 3 petitions

Top Patent Owners Week Ending Friday, July 26

Lexmark International, Inc. – 10 petitions

Nektar Therapeutics – 4 petitions

Science Applications International Corporation – 3 petitions