Rovi Guides, Inc.

Patent Trials and Appeals Board

May 27, 2020

IPR2019-00224 (P.T.A.B. May. 27, 2020)

Trials@uspto.gov Paper 46
571-272-7822 Date: May 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COMCAST CABLE COMMUNICATIONS, LLC,
Petitioner,

v.

ROVI GUIDES, INC.,
Patent Owner.
____________

IPR2019-00224
Patent 7,827,585 B2
____________

Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
KARL D. EASTHOM and BARBARA A. PARVIS,
Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Comcast Cable Communications, LLC, (“Petitioner”) filed a Petition
pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
claims 1–28 of U.S. Patent No. 7,827,585 B2 (Ex. 1001, “the ’585 Patent”).
Paper 2 (“Pet.”). Rovi Guides, Inc. (“Patent Owner”) filed a Preliminary
Response. Paper 8 (“Prelim. Resp.”). Patent Owner also filed a Statutory
Disclaimer disclaiming claims 5, 12, 19, and 26. Ex. 2002. Additionally,
Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 9)
and Patent Owner filed a Sur-Reply (Paper 11).
Upon consideration of the parties’ contentions and supporting
evidence, we instituted an inter partes review pursuant to 35 U.S.C. § 314,
as to claims 1–4, 6–11, 13–18, 20–25, 27, and 28 of the ’585 Patent. Paper
14 (“Inst. Dec.”). We did not institute on disclaimed claims 5, 12, 19, and
26. Ex. 2002.
After institution, Patent Owner filed a Patent Owner Response (Paper
23, “PO Resp.”); Petitioner filed a Reply (Paper 25, “Pet. Reply”); and
Patent Owner filed a Sur-Reply (Paper 36, “PO Sur-Reply”). A transcript of
the hearing held on March 4, 2020 has been entered into the record as Paper
44 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine that Petitioner has demonstrated
by a preponderance of evidence that claims 1–4, 6–11, 13–18, 20–25, 27,
and 28 of the ’585 Patent are unpatentable.
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II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies as the real parties-in-interest the following:
Comcast Corp.; Comcast Business Communications, LLC; Comcast Cable
Communications Management, LLC; Comcast Cable Communications,
LLC; Comcast Financial Agency Corp.; Comcast Holdings Corp.; Comcast
Shared Services, LLC; Comcast STB Software I, LLC; Comcast of Santa
Maria, LLC; and Comcast of Lompoc, LLC. Pet. 1. Patent Owner names as
the real parties-in-interest Rovi Guides, Inc. and Rovi Corp. Paper 3, 1.
B. Related Matters
As required by 37 C.F.R. § 42.8(b)(2), each party identifies a judicial
matter that would affect, or be affected by, a decision in this proceeding. In
particular, the parties inform us that the ’585 Patent is asserted in Rovi
Guides, Inc. v. Comcast Corp., No. 2-18-cv-00253 (C.D. Cal. filed Jan. 10,
2018), and Digital Video Receivers and Related Hardware and Software
Components, Inv. No. 337-TA-1103 (ITC filed Feb. 8, 2018) (“related ITC
proceeding”). Pet. 1; Paper 3, 1.
Additionally, Petitioner filed six petitions, each requesting inter partes
review of claims 1–28 of the ’585 Patent, including the instant Petition. We
exercised our discretion under 35 U.S.C. § 314 and denied institution of
inter partes review in the other five of those proceedings. See, e.g., Comcast
Cable Communications, LLC v. Rovi Guides, Inc., IPR2019-00225, Paper 14
(PTAB June 3, 2019) (Decision Denying Institution).
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C. The ’585 Patent
The ̓ 585 Patent is directed to interactive television program guide
systems. Ex. 1001, 1:16. Figure 2 of the ’585 Patent is reproduced below.

Figure 2 of the ’585 Patent, above, illustrates a schematic block diagram of
user television equipment 22. Id. 2:49–50. Television equipment 22
receives video and data from television distribution facility 16 (not shown)
at input 26. Id. at 3:30–31. During normal television viewing, a user tunes
set-top box 28 to a desired television channel. Id. 3:31–32. The signal for
that television channel is then provided at video output 30 and is received by
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optional secondary storage device 32. Id. at 3:32–40. Secondary storage
device 32 is a program storage device, such as a videocassette recorder or a
digital video disc (DVD) player with the ability to record DVD discs. Id. at
3:40–43. Remote control 40 is used to control set-top box 28, secondary
storage device 32, and television 36. Id. at 3:50–52.
D. Illustrative Claim
As indicated above, this trial involves Petitioner’s challenges to
claims 1–4, 6–11, 13–18, 20–25, 27, and 28 of the ’585 Patent. Pet. 1.
Claims 1, 8, 15, and 22 are independent claims. Claims 2–4, 6, 7, 9–11, 13,
14, 16–18, 20, 21, 23–25, 27 and 28 depend, directly or indirectly, from
claims 1, 8, 15, and 22, respectively. Independent claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for allowing a user to select storage options for
storing programs using an interactive television program guide
implemented on user television equipment, the method
comprising:
providing the user with an opportunity to select at least one
storage option for storing a program to be recorded, wherein
the at least one storage option relates to at least one storage
setting configured to control how programs are to be digitally
stored on a random access digital storage device;
in response to a user selection of the at least one storage option,
modifying the at least one storage setting;
displaying in the interactive television program guide at least one
program listing related to at least one program;
providing the user with an opportunity to select a program listing
from the at least one displayed program listing for recording
on the random access digital storage device; and
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recording the program on the random access digital storage
device based on the modification of the at least one storage
setting.
Ex. 1001, 18:46–67.
E. Evidence Relied Upon
Petitioner relies on the following references:
U.S. Patent No. 6,177,931 B1, filed July 21, 1998, issued January 23,
2001 (Ex. 1018, “Alexander”);
United Kingdom Patent Application Publication No. GB 2 298 544 A,
filed March 3, 1995, published September 4, 1996 (Ex. 1020, “Malik”);
U.S. Patent No. 5,887,115, filed November 16, 1994, issued March
23, 1999 (Ex. 1021, “Boyce”);
U.S. Patent No. 6,252,834 B1, filed January 5, 1998, issued June 26,
2001 (Ex. 1023, “Kumagai”); and
International Application Publication No. WO 92/22983, filed June 9,
1992, published December 23, 1992 (Ex. 1022, “Browne”).
Additionally, Petitioner relies on the Declaration of Mr. Anthony
Wechselberger (Ex. 1025) and the Second Declaration of Mr. Wechselberger
(Ex. 1050). Patent Owner relies on the Declaration of Mr. John Tinsman
(Ex. 2016).
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F. Grounds Asserted
Petitioner asserts the grounds of unpatentability below. Pet. 9.1
Claims Challenged 35 U.S.C.2 Reference(s)/Basis
1, 8, 15, 22 § 102(e) Alexander
1, 2, 7–9, 14–16, 21–23, 28 § 103(a) Alexander, Malik
1, 3, 4, 8, 10, 11, 15, 17, 18,
22, 24, 25
§ 103(a) Alexander, Boyce
1, 6, 8, 13, 15, 20, 22, 27 § 103(a) Alexander, Kumagai, Browne
1, 6, 8, 13, 15, 20, 22, 27 § 103(a) Alexander, Browne
1, 2, 7–9, 14–16, 21–23, 28 § 103(a) Alexander, Browne, Malik
1, 3, 4, 8, 10, 11, 15, 17, 18,
22, 24, 25
§ 103(a) Alexander, Browne,
Boyce

Table 1 of this Decision, above, summarizes the grounds in the instant
proceeding.

1 Disclaimed claims 5, 12, 19, and 26 have been omitted from the table.
2The ’585 Patent was filed August 4, 2005 and claims priority to a series of
continuation applications. Ex. 1001, at codes (22), (63). Petitioner asserts
“the earliest priority date” of the ’585 Patent is September 17, 1998. Pet. 12.
Because the challenged claims of the ’585 Patent have an effective filing
date before March 16, 2013, the 35 U.S.C. §§ 102 and 103 provisions of the
Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, §§ 3(b)–
3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011), do not apply and we apply
the pre-AIA versions of these statutes.
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III. DISCUSSION
A. Principles of Law Relating to Anticipation and Obviousness
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “To
anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).
A patent claim is unpatentable if the differences between the claimed
subject matter and the prior art are such that the subject matter, as a whole,
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.
35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
underlying factual determinations, including (1) the scope and content of the
prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations. See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). When evaluating a combination of
teachings, we also “determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
B. Level of Ordinary Skill
Relying on the testimony of Mr. Wechselberger, Petitioner contends
that a person having ordinary skill in the art would have had a bachelor’s
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degree in electrical engineering, computer engineering, computer science,
applied mathematics, or a similar discipline, as well as two or more years of
relevant industry or research experience, including in electronic content
delivery, electronic program guides, television video signal processing,
graphical user interfaces, cable or satellite television systems, set-top boxes,
multimedia systems, or digital storage devices. Pet. 19 (citing Ex. 1025
¶¶ 29–31). We adopted Petitioner’s definition for the purposes of
determining whether to institute an inter partes review. Inst. Dec. 10.
In its Patent Owner Response, relying on the testimony of Mr.
Tinsman, Patent Owner asserts a slightly different definition. In particular,
Patent Owner asserts that “[a] person of ordinary skill in the art would have
a bachelor’s degree in electrical engineering, computer engineering,
computer science, or applied mathematics as well as two or more years of
relevant industry experience, including in electronic content delivery,
electronic program guides, television video signal processing, graphical user
interfaces, cable or satellite television systems, set-top boxes, multimedia
systems, or data search techniques.” PO Resp. 9 (citing Ex. 2016 ¶ 38;
Ex. 2021, 57).
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(citation omitted). On the complete record now before us, we adopt
Petitioner’s definition because it is consistent with the problems and
solutions in the prior art of record. Petitioner’s definition also is consistent
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with the ’585 Patent Specification. For instance, we determine that
Petitioner’s definition more appropriately reflects that a person having
ordinary skill in the art would have had two or more years of relevant
industry or research experience, whereas Patent Owner’s definition omits
research experience. Also, Petitioner’s definition appropriately reflects the
relevance of experience in digital storage devices, which is more consistent
with the evidence of record in this case than Patent Owner’s definition
which omits experience in digital storage devices. We further find that the
prior art of record in the instant proceeding reflects the appropriate level of
ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the
art). Neither party identified how the result would differ based on the level
of ordinary skill in the art. Also, our conclusions do not turn on which
definition is selected.
C. Claim Construction
1. Overview
At the institution stage, we summarized the parties’ claim construction
contentions in Table 2 below.
Claim Term Petitioner’s Proposed
Construction
Patent Owner’s
Proposed Construction
“using an interactive
television program
guide” (claims 1 and 8)
The preambles of the
independent claims
should not be
considered to be
limiting. Pet. 16.
The preambles of
claims 1 and 8 are
limiting with respect to
“using an interactive
television program
guide.” Prelim. Resp.
13.
“random access digital
storage device” (claims
“A digital storage
device that can access
Petitioner’s
construction is not
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Claim Term Petitioner’s Proposed
Construction
Patent Owner’s
Proposed Construction
1, 8, 15, and 22) memory locations in a
non-sequential
manner.” Pet. 13.
disputed by Patent
Owner. Prelim. Resp.
12–26.
“wherein [the/said] at
least one storage option
relates to at least one
storage setting
configured to control
how [programs
are/the program is] to
be digitally stored”
(claims 1, 8, 15, and
22)3
“The BRI of ‘storage
setting’ includes those
settings related to the
storage options
identified in the
specification, figures,
and claims of the
patent: (1) language
tracks, (2) subtitles,
(3) video formats,
(4) parental control
features, and
(5) automatic erasure
of viewed programs.”
Pet. 14 (citing, e.g.,
Ex. 1001, 15:51-61;
FIG. 14).
“This phrase should be
construed to
define ‘the way or
manner in which the
program(s) will be
digitally stored.’”
Prelim. Resp. 18.
Table 2, above, is a summary of the parties’ claim construction
contentions at the institution stage.
Inst. Dec. 10–11.
At the institution stage, we analyzed only the “wherein” clause. Id. at
10–18. The disputes in this proceeding continue to be centered on the

3 We refer to this recitation as “the ‘wherein’ clause” herein.
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construction of that clause and, below, we discuss the parties’ contentions in
that regard following our Decision to Institute.4
In view of the issues we address below, we determine we need not
provide further express constructions for any other terms in this proceeding.
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 1695 (April 30, 2018)
(noting that “we need only construe terms ‘that are in controversy, and only
to the extent necessary to resolve the controversy’”) (citing Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
2. “wherein [the/said] at least one storage option relates to at least one
storage setting configured to control how [programs are/the program
is] to be digitally stored”
In this inter partes review, we construe claim terms according to their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b) (2018).5 The disputes between

4 Our analysis of the “wherein” clause is needed to evaluate the parties’
contentions only with respect to anticipation and dependent claims 6, 13, 20,
and 27 because Petitioner has shown obviousness of claims 1–4, 7–11, 14–
18, 21–25, and 28 even if the “wherein” clause is limited in the manner
proposed by Patent Owner. See infra §§ III.D.–III.F.
5 The claim construction standard to be employed in an inter partes review
has changed. See Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R.
§ 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
§ 42.100(b) (2019)). At the time of the filing of the Petition, however, the
Board employed the “broadest reasonable construction,” as set forth in 37
C.F.R. § 42.100(b) (2018).
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the parties’ center on two terms “how” and “programs/program” recited in
the “wherein” clause.
Petitioner contends “[t]he BRI of ‘storage setting’ includes those
settings related to the storage options identified in the specification, figures,
and claims of the patent: (1) language tracks, (2) subtitles, (3) video formats,
(4) parental control features, and (5) automatic erasure of viewed programs.”
Pet. 14 (citing, e.g., Ex. 1001, 15:51–61; FIG. 14). Although Petitioner also
contends the broadest reasonable interpretation would include “those
settings asserted by Patent Owner to infringe,” Petitioner contends “the prior
art shows at least those options and settings disclosed in the ’585 patent.”
Id. at 14–15.6
At the institution stage, we determined that even using Patent Owner’s
plain and ordinary meaning “Patent Owner’s proposal i.e., ‘the way or
manner in which the program(s) will be digitally stored’ unnecessarily
interjects ‘will’ into the aforementioned phrase.” Inst. Dec. 13. We also
determined that the intrinsic evidence including the ’585 Patent
Specification does not support Patent Owner’s interpretation. Id. at 13–18.
We, therefore, declined to limit “storage option” as Patent Owner proposed
and, instead, determined that the broadest reasonable construction
encompasses the exemplary storage options described in the ’585 Patent
Specification, such as “language tracks,” “video formats,” “parental control”
on storage, and automatic erasure of viewed programs. Id. at 17 (citing Ex.
1001, 15:51–61, Figs. 14, 16).

6 Petitioner also contends “[i]n the ITC, the ALJ declined to construe this
term as a means plus function element.” Id.
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We start with Patent Owner’s contentions regarding the term “how” in
the “wherein” clause. Referring to the Decision to Institute, Patent Owner
asserts “Patent Owner’s revised proposed construction differs from the
construction in the [Patent Owner Preliminary Response (POPR)] by
deleting ‘will.’” PO Resp. 19. Patent Owner contends in the context of the
’585 Patent “[t]he term ‘how’ is different from ‘what’ or ‘whether.’” Id. at
21 (citing Ex. 2016 ¶ 69). Patent Owner contends “[i]n the concurrent ITC
proceeding, the ALJ agreed with and articulated this distinction: “‘how’
storage options pertain only to the particulars of actually storing a program
on a digital device.” PO Resp. 21 (citing, e.g., Ex. 2021, 242 (emphasis
added)).
Patent Owner, more specifically, asserts “[t]he claimed storage
options in the ’585 patent are directed to a particular subset of options that
effect the manner in which—i.e., ‘how’—programs are actually stored (i.e.,
recorded) on the random access digital storage device.” Id. at 20 (citing Ex.
2016 ¶ 67) (emphases added). Relying on its Statutory Disclaimer filed after
the Petition, Patent Owner maintains that at least the parental control
function is not within the subset of storage options recited in the independent
claims. See, e.g., id. at 8–9. Patent Owner asserts “if the parental control
option is exercised upon storage, some programs would not be recorded and
the last step of independent claim 1, for example, would not be met” so
Patent Owner filed a statutory disclaimer to disclaim dependent claims 5, 12,
19, and 26 further limiting storage option to at least one parental control
criterion. Id.
Starting with the language of the claims, each of independent claims
1, 8, 15, and 22 recites “wherein [the/said] at least one storage option relates
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to at least one storage setting configured to control how [programs are/the
program is] to be digitally stored on a random access digital storage device.”
Ex. 1001, 18:53–56, 19:34–37, 20:6–9, 20:59–62. The dependent claims
recite further limitations regarding “at least one storage option.” For
example, each of dependent claims 6, 13, 20, and 27 recites “wherein the at
least one storage option is for automatically erasing [programs/the program]
from the digital storage device once the [programs are/program is] viewed
by the user.” Id. at 19:16–18, 19:58–60, 22:6–8 (emphasis added). The
claim language supports Petitioner’s position that storage options relate to
storage (and erasure of stored programs).
We turn to Patent Owner’s contention that its construction is required
by the last step in independent claim 1. PO Resp. 8, 23; PO Sur-Reply 6–7.
Contrary to Patent Owner’s contention, claim 1 recites “providing the user
with an opportunity to select a program listing,” and then in the last step
“recording the program,” which derives antecedent basis from the prior step
in which the user is provided the opportunity to select a program. Ex. 1001,
18:61–67. Both steps follow the “wherein” clause that recites “programs,”
prior to selection. The last step recited in claim 1 does not require that we
adopt Patent Owner’s proposal and Patent Owner does not contend that the
“wherein” clause has a different meaning in different claims. The language
of the independent and dependent claims is consistent with Petitioner’s
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contentions that the storage options relate to storage, including whether to
erase after viewing.7
Turning to the Specification, the portion of the ’585 Patent
Specification relied upon by both parties describes the following:
Storage option area 122 allows the user to select options
relating to storage. For example, the user can select the language
tracks or video formats for storing with a program. The user can
also set whether a parental control feature applies to the
recording of programs which do not meet certain parental
control criteria. The user may also choose whether the program
guide automatically erases entries from digital storage device 49
once the entries are viewed. When erased, an entry’s directory
information and additional components are also removed from
digital storage device 49.
Id. at 15:51–61 (emphasis added). Another portion of the ’585 Patent
Specification relied upon describes “[i]f language, video format,
enforcement of parental control, and auto-erase storage options are provided
(FIG. 15), the program guide stores the programs and associated program
data on digital storage device 49 according to how the storage options are
defined.” Id. at 16:31–35.8 According to the ’585 Patent Specification,
parental control is a storage option.

7 Patent Owner’s attorney argument that “[t]he verb ‘are to be stored’
indicates a definite future action, not a conditional action” is conclusory and
not supported by the intrinsic record. PO Resp. 22–23 (citing
Ex. 2016 ¶ 72). Mr. Tinsman’s testimony does not include support for that
argument and, instead, his testimony pertains to “how” and the last step
recited in claim 1. Ex. 2016 ¶ 72 (citing Ex. 1001, 18:51–56, 18:65–67).
8 The ’585 Patent Specification describes the “associated program data” as
different than the “program” and “storage options.” Id. at 9:14–20.
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Patent Owner relies on portions of the ’585 Patent Specification
pertaining to only two options, i.e., language and video format options, but
not the auto-erase option (which has not been disclaimed). PO Resp. 23–25
(citing Ex. 1001, 9:27–29, 15:53–54; Ex. 2016 ¶¶ 74–78); see also Ex. 2016
¶¶ 73–78 (testifying regarding the language and video format options).
Those portions of the ’585 Patent Specification describe that “[t]he program
guide will either store all of the supplied video formats and language, or
store only the variant that matches the current profile preferences” (id. at
9:27–29) and “the user can select the language tracks or video formats for
storing with a program” (id. at 15:53–54).
With respect to the auto-erase option recited in dependent claims 6,
13, 20, and 27 at issue in this proceeding, relying on Mr. Tinsman, Patent
Owner asserts “[t]he ‘way or manner in which’ a program is stored can also
change the ‘other data’ component of a broadcasted program.” PO Resp.
26–27 (citing Ex. 2016 ¶¶ 79–82). Patent Owner, more specifically, asserts
that “the ‘other data’ takes the form of modifiable fields or settings that are
stored as part of the program, and that are then modified upon recording
based on the storage option and related storage setting.” Id. at 26 (citing
Ex. 1001, 4:38–43, 16:28–36; Ex. 2016 ¶ 80).
Contrary to Patent Owner’s arguments and Mr. Tinsman’s testimony,
the portions of the ’585 Patent Specification relied upon by Patent Owner do
not describe modifiable fields or settings in association with the auto-erase
option that set forth a particular broadcasted program. Instead, the first of
the portions of the ’585 Patent Specification relied upon by Patent Owner
describes associated data from television distribution facility 16, such as the
title, date, time, channel, and duration of the program, as well as “cast
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members, parental control ratings, program categories, episode information,
recorded languages and video formats.” Ex. 1001, 4:38–43, 9:13–21. The
second portion of the ’585 Patent Specification relied upon by Patent Owner
describes “the program guide stores the programs and associated program
data on digital storage device 49” in accordance with “language, video
format, enforcement of parental control, and auto-erase storage options,” if
provided. Id. at 16:28–36. Patent Owner acknowledges that it relies on the
knowledge of the skilled artisan to implement details necessary to limit the
claims. See, e.g., Tr. 53:16–17. Contrary to Patent Owner’s proposal, we
maintain our determination that the auto erase option generally pertains to
“entries,” not data associated and stored with a particular entry. Inst. Dec.
14–15 (citing Ex. 1001, 15:52–61, Fig. 14).
We turn to Patent Owners’ contention regarding the ITC investigation
and, in particular, Patent Owner’s contention that “[i]n the concurrent ITC
proceeding, the ALJ agreed with and articulated this distinction: “‘how’
storage options pertain only to the particulars of actually storing a program
on a digital device.” PO Resp. 21 (citing, e.g., Ex. 2021, 144, 174, 242, 243
(emphasis added)). The portions of the ITC investigation discussed by
Patent Owner pertain to the prosecution history of the ’585 Patent, but not
the ’585 Patent Specification. See, e.g., Ex. 2021, 144 (stating that “based
on the prosecution history of the ’585 patent, mere specification of the
program to record and store, without more, does not satisfy the ‘setting
configured to control how programs are to be digitally stored’ limitation
required by the claims” (emphasis added)).
In response to the same argument at the instituted stage, we said the
following:
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Additionally, Patent Owner’s contentions regarding
arguments made during prosecution are misplaced because the
remarks are broader than Patent Owner’s proposed construction.
Prelim. Resp. 24 (citing Ex. 1010, 11). In particular, during
prosecution, Applicant argued “the modified device would not
disclose the provision of a storage option that relates to a storage
setting configured to control storage of programs on a random
access digital storage device.” Ex. 1010, 11. Contrary to Patent
Owner’s characterization here, these prosecution history
arguments attempted to distinguish the prior art based on the type
of storage employed See id. (Patent Owner also argued “the
digital recording mode disclosed in Young, would enable a user
to control the recording speed at which programs are stored on
digital video tape or other sequential access storage device. The
amended independent claims require the digital storage device to
be a random access digital storage device.”).
Inst. Dec. 16. In other words, Patent Owner’s arguments relying on the
amendment adding the “wherein” clause and remarks filed therewith are
based on a mischaracterization of the remarks, which attempt to distinguish
the prior art based on the type of storage employed.
Patent Owner also maintains its position that its proposal is supported
by Patent Owner’s statutory disclaimer filed after the Petition. PO Resp. 8–
9, 27–28. At institution, we said:
As to the statutory disclaimer, we are not persuaded this
should affect claim construction. The instant proceeding is
distinguishable from the precedential decision in Facebook in
which the panel concluded that the statutorily disclaimed claims
should be treated as though they never existed for purposes of
determining CBM patent review eligibility. Facebook slip op. at
3–4, 11. Patent Owner’s reliance on Vectra is misplaced because
that decision recognized that the public is entitled to rely on the
entire prosecution history. Vectra, 162 F.3d at 1384 (“The public
is entitled to rely upon the public record of a patent in
determining the scope of the patent’s claims.”). Here, Patent
Owner’s recent disclaimer of dependent claims 5, 12, 19, and 26,
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which issued to further limit independent claims 1, 8, 15, and 22
by reciting storage settings that defined “whether” programs
were to be recorded (Prelim. Resp. 25), “cannot be squared with
. . . . the prosecution history,” according to Patent Owner (PO
Sur-Reply 2–3). On the contrary, claims 5, 12, 19, and 26 are
part of the prosecution history and serve to inform the breadth of
claims 1, 8, 15, and 22. Accordingly, based on the record at this
juncture, we decline to limit “storage option” as Patent Owner
proposes. Instead, at this preliminary stage in the proceeding, we
determine that the broadest reasonable construction encompasses
the exemplary storage options described in the ’585 Patent
Specification, such as “language tracks,” “video formats,”
“parental control” on storage, and automatic erasure of viewed
programs. Ex. 1001, 15:51–61, Figs. 14, 16.
Inst. Dec. 16–17.
Regarding the amendment adding the “wherein” clause and remarks
filed therewith, in its Patent Owner Response, Patent Owner does not dispute
Petitioner’s proposed construction for “random access digital storage
device.” See generally PO Resp. Patent Owner also does not supplement its
arguments made prior to institution regarding the prosecution history. Id. at
8–9, 27. Based on the complete record now before us, after considering the
arguments and evidence of both parties, as well as the determinations in the
ITC investigation, we maintain our determinations at the institution stage,
reproduced above. Inst. Dec. 16–17.
We turn to Patent Owner’s contentions regarding the term
“programs/program” in the “wherein” clause. Patent Owner asserts that the
term “program” should be construed to mean “video, audio, and other data
corresponding to a single program listing in a program guide.” PO Resp. 11
(citing Ex. 2016 ¶ 52). As an initial matter, Patent Owner does not explain
why a “program” must include video and audio and what is meant by “other
data.” Id. at 10–19. Upon consideration of the arguments in the Patent
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Owner Response, Patent Owner’s inclusion of “single” is to limit “program”
to no more than one episode. Id. at 12 (asserting that a construction “of the
term ‘program’ to include more than one episode” is not consistent with the
understanding of that term by a person having ordinary skill in the art), 16
(asserting that the ’585 Patent Specification figures “do not suggest that a
single episode and a ‘program’ are somehow different”).
Patent Owner relies on the ’585 Patent Specification, but upon
consideration of those portions identified by Patent Owner, we do not agree
it supports limiting “program” in the manner argued by Patent Owner. PO
Resp. 13–19 (citing, e.g., Ex. 1001, 4:37–41, 5:29–32, 6:2–3, 7:24–26, 7:62–
66, 8:51–55, 9:3–40, 16:8–17, 16:44–46, 16:59–62, Figs. 5A, 6, 7b, 15, 16);
PO Sur-Reply 2–6 (citing, e.g., Ex. 1001, 6:37–42, 6:56–60, 6:44–48, Figs.
5A, 5B, 6, 7A, 7B, 17). For instance, the ’585 Patent Specification’s
description of associated program data does not limit the term “program” to
a single episode. Ex. 1001, 9:13–21 (describing associated program data as
including “the date and time the program was recorded, the channel the
program was recorded on, the time duration of the program, the program
title and description, cast members, parental control ratings, program
categories, episode information, recorded languages and video formats”).
Additionally, the ’585 Patent Specification’s description of transmitting
video and audio does not limit “program” to a single episode. Ex. 1001,
4:37–41 (describing that “program listings, programming and program data
associated with the programming (hereinafter ‘associated program data’)
from television distribution facility 16 (FIG. 1) are received by control
circuitry 42 of user television equipment 22”), 9:3–10 (describing that “[t]he
program and associated program data may even be stored in non-contiguous
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space on the storage medium”), 16:8–10 (describing that “the programs and
associated program data are stored on digital storage device 49 using the
program guide”). Furthermore, the ’585 Patent Specification’s description
of user interfaces and steps performed by a user also does not limit the term
“program” to a single episode, for example, because they illustrate or pertain
to daily programming schedules showing what is broadcast during particular
timeslots, but do not limit the term “program” or indicate it has the same
meaning as “episode.” See, e.g., id. at 7:24–26, 7:62–66, 8:51–55, 9:3–40,
16:8–17, 16:44–46, 16:59–62, Figs. 5a, 5b, 6, 7a, 7b, 15, 16, 17).
The intrinsic record is clear. Nevertheless, Patent Owner’s extrinsic
evidence including digital television standards describes technical details
regarding transmission and does not require limiting “program” to a single
episode. See, e.g., Ex. 2016 ¶¶ 61–64; Ex. 2009, 1, 4, 8, 18, 19. We have
considered Patent Owner’s arguments and evidence and conclude that
although the term “program” encompasses a single episode, based on the
disclosure in the ’585 Patent Specification, the broadest reasonable
interpretation of “program” is not limited such that “program” cannot
include more than one episode and the term “program” is not synonymous
with “episode.”
Based on the complete record now before us, we decline to limit
“storage option” as Patent Owner proposes. Instead, we maintain our
determinations in the Decision to Institute. Inst. Dec. 17–18. In particular,
we determine that the broadest reasonable construction encompasses the
exemplary storage options described in the ’585 Patent Specification, such
as “language tracks,” “video formats,” “parental control” on storage, and
automatic erasure of viewed programs. Ex. 1001, 15:51–61, Figs. 14, 16.
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We also determine that the ’585 Patent Specification describes an episode of
a program such that the two terms are not synonymous and the term
“program” may include more than one episode. We need not make further
determinations to resolve a dispute in this proceeding. We, however, note
that although we do not limit “storage option” as Patent Owner proposes, for
completeness, we consider Patent Owner’s narrower construction of “storage
option” when addressing Petitioner’s obviousness challenges below.
D. Unpatentability— Independent Claims 1, 8, 15, and 22
Petitioner contends each of claims 1, 8, 15, and 22 of the ’585 Patent
is unpatentable, under 35 U.S.C. § 102(e), as anticipated by Alexander.
Pet. 9, 33–55. Petitioner also contends each of claims 1, 8, 15, and 22 of the
’585 Patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over the
following prior art combinations: (1) Alexander and Malik; (2) Alexander
and Boyce; (3) Alexander, Kumagai, and Browne; (4) Alexander and
Browne; (5) Alexander, Browne, and Malik; (6) Alexander, Browne, and
Boyce. Id. at 9, 56–74. Patent Owner opposes. See generally PO Resp. In
our discussion below, we first provide a brief overview of the prior art, and
then we address the parties’ contentions in turn.
1. Overview of Alexander
Alexander is directed to an electronic program guide (EPG).
Ex. 1018, 1:53–54, 2:3–4. An EPG is shown in Figure 1 of Alexander,
which is reproduced below.
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Figure 1 of Alexander, above, illustrates television screen display 10 having
Picture in Picture (PIP) window 12, Panel Ad Windows 14 and 16, action
key bar 18, navigation bar 20, information box 24, and Grid Guide 22. Id. at
3:1–13.
Display 10 is generated by a conventional television receiver. Id. at
3:3–4. A real time television program is displayed in PIP window 12. Id. at
3:57–58. Advertising messages are displayed in Panel Ad Windows 14 and
16. Id. at 3:1–2. Titles and channels are displayed in Grid Guide 22. Id. at
3:30. Remote controller 26 is used for activating the functions of display 10.
Id. at 3:21–23.
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2. Overview of Malik
Malik is directed to a television system that records programs with a
multiplicity of language tracks. Ex. 1020, 1.9 Malik’s system also records
textual messages in different languages, messages such as textual dubbing,
scores, results, tables, program headers, and footers. Id. at 2. A user
chooses the language of interest from a menu displayed on the display unit.
Id. at 5.
3. Overview of Boyce
Boyce is directed to digital video tape recorders (VTRs) that record
high definition television (HDTV) and standard definition television
(SDTV). Ex. 1021, 1:19–21. Figure 9 of Boyce is reproduced below.

9 The citations herein are to the page numbers in the original document, so
page 1 is the first page of text, not the cover page. See generally id.
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Figure 9 of Boyce, above, illustrates VTR recording circuit 900 for
recording SDTV and HDTV signals. Id. at 39:48–51. VTR recording
circuit 900 includes VTR mode control circuit 920, which receives user
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commands to instruct the VTR to operate in either HDTV or SDTV mode.
Id. at 40:26–31.
4. Overview of Browne
Browne is directed to a large capacity, multi-source video cassette
recorder (VCR) player. Ex. 1022, 1. Browne’s VCR player 100 is
controlled by controller 105, accessed by a user from control screens. Id. at
18:1–6. An exemplary control screen is shown in Figure 3 of Browne,
which is reproduced below. Id. at 18:29–31.

Figure 3 of Browne, above, illustrates setup page screen 300, which allows
the user control options including selection of program erasure section 301.
Id. at 18:31–33.
Program erasure section 301 allows a user to set how stored programs
will be saved in storage section 104 in VCR 100. Id. at 18:33–19:2.
Programs stored in storage section 104 are erased when storage capacity is
reached in a first-in/first-out (FIFO) mode, if selection of FIFO option 301a
is made. Id. at 19:6–9. In the FIFO mode, if additional storage is required,
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then the oldest available program in storage section 104 is erased and a new
program is stored in this storage space. Id. at 19:9–12. If the locking option
described is selected, and if the oldest stored program is locked, the next
oldest unlocked program is preferably overwritten when recording occurs.
Id. at 19:12–15. Thus, the FIFO mode causes the oldest stored program, or
oldest stored unlocked program, to be automatically erased when the storage
capacity of storage section 104 is reached. Id. at 19:15–18. Alternatively,
by selecting previously viewed option 301b, only programs which have been
viewed will be automatically erased. Id. at 19:19–22. The erasure of the
stored viewed programs is performed on a FIFO basis. Id. at 19:22–24.
5. Overview of Kumagai
Kumagai is directed to an optical disc device. Ex. 1023, 1:7–9.
Kumagai describes a rewritable optical disc (DVD-RW). Id. at 7:64–67.
6. Claim 1
Petitioner contends that claim 1 is anticipated by Alexander (Pet. 33–
46) and obvious over Alexander in combination with other art summarized
above (id. at 56–74). In its obviousness contentions, Petitioner relies on
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Alexander for most recitations in claim 1, except “at least one storage
option.” Id.10
The dispute between the parties centers on
providing the user with an opportunity to select at least one
storage option for storing a program to be recorded, wherein the
at least one storage option relates to at least one storage setting
configured to control how programs are to be digitally stored on
a random access digital storage device
(Ex. 1001, 18:51–56, referred to herein as “element 1[b]”), discussed above
in Section III.C.2 with respect to claim construction. PO Resp. 36–50, 53–
55. Also, with respect to element 1[b], Patent Owner contends that a person
having ordinary skill in the art would not and could not have combined
Alexander and Boyce because they are technically incompatible. Id. at 50–

10 Petitioner asserts that Alexander is prior art under § 102(e) and claims
priority to provisional application No. 60/055,761 filed August 14, 1997
(herein “the Alexander ’761 provisional”). Pet. 20. Petitioner provides a
detailed analysis to show how the Alexander ’761 provisional provides
written description support for claims 1 and 28 of Alexander. See Pet. 21–
29 (citing Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d
1375, 1381 (Fed. Cir. 2015); Ex. 1025 ¶¶ 56–59; Ex. 1019, 2:16–23; 3:14–
25; 4:13–17; 5:8–11; 5:30; 7:23–24; 9:6–7; 9:10–19; 9:23–27; 16:25–32;
17:23–18:9; 18:30–33; Ex. 1028, 26 Fig. 1; 6:22–35; 7:29–8:1.). Petitioner
also provides detailed explanations including element-by-element analysis
showing that the ’176 provisional supports the disclosures in Alexander that
Petitioner relies on. Pet. 33–46. Petitioner’s showing is not disputed by
Patent Owner, and we agree with Petitioner’s arguments and evidence
regarding the ’761 provisional. Accordingly, we determine that Petitioner
shows by a preponderance of evidence that the Alexander ’761 provisional
provides written description support for at least claims 1 and 28 of
Alexander as a priority document under Dynamic Drinkware and for the
portions of Alexander that Petitioner relies upon regarding the challenged
claims.
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53. Patent Owner also contends that a person having ordinary skill in the art
would not have modified Alexander to substitute its DVD (Digital Versatile
Disc), which is persistent storage, with Browne’s RAM (Random Access
Memory), which is volatile memory. Id. at 57–59. Petitioner’s contentions
regarding other elements recited in claim 1 are unopposed.
a) Element 1[a]: “[a] method for allowing a user to select storage
options for storing programs using an interactive television program
guide implemented on user television equipment, the method
comprising”
Petitioner points to Alexander’s EPG illustrated, for example, in
Figure 1, reproduced and discussed above in the overview of Alexander in
Section III.D.1. Pet. 33 (citing, e.g., Ex. 1018, 3:1–7, 3:25–32, 5:20–53,
7:57–8:3, Fig. 1; Ex. 1025 ¶¶ 70–79). Petitioner also points to Alexander’s
disclosures regarding selecting a desired recording frequency and whether to
filter reruns, as well as Alexander’s parental control feature. Id. at 33–36
(citing, e.g., Ex. 1018, 11:13–16; 11:29–43; 11:45–49, 25:39–49; Ex.
1025 ¶¶ 58–59, 73–75, 78).
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Mr. Wechselberger (see, e.g.,
Ex. 1025 ¶¶ 70–79) because Petitioner’s contentions and Mr.
Wechselberger’s testimony are consistent with the evidence of record. For
instance, a user interfaces with Alexander’s EPG using remote control 26 to
highlight, for example, windows 12, 14, or 16 or the titles and channels in
Grid Guide 22. Ex. 1018, 3:28–31.
Patent Owner’s arguments regarding storage options are discussed
below in Section III.D.6.b. For the reasons given, we determine that
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Petitioner’s arguments and evidence show that Alexander describes the
preamble. Because Petitioner has shown that the recitation in the preamble
is satisfied by Alexander, we need not determined whether the preamble is
limiting.
b) Element 1[b]: “providing the user with an opportunity to select at
least one storage option for storing a program to be recorded,
wherein the at least one storage option relates to at least one storage
setting configured to control how programs are to be digitally stored
on a random access digital storage device”
Petitioner asserts that element 1[b] is disclosed by Alexander. Pet.
36–40. Petitioner’s alternative contentions of obviousness relate to “at least
one storage option” and “random access digital storage device” recited in
element 1[b]. Pet. 56–73. Patent Owner does not dispute Petitioner’s
showing that Alexander discloses the “random access digital storage device”
recited in claim 1. PO Resp. 56. Patent Owner’s arguments disputing
Petitioner’s showing for “at least one storage option” are discussed below.
(1) Anticipation by Alexander
We start with the “at least one storage option” recited in element 1[b].
Petitioner points to Alexander’s recording frequency and rerun filter options,
as well as Alexander’s parental control function and provides Mr.
Wechselberger’s testimony as support. Pet. 34–38 (citing, e.g., Ex. 1018,
11:8–16, 11:29–43, 11:45–49, 12:10–23, 17:11–36, 21:55–67, 23:63–24:7,
25:35–49, Fig. 1; Ex. 1025 ¶¶ 73–75, 78, 80–93). Mr. Wechselberger
testifies, for example, “it is my opinion that Alexander’s recording
frequency option and rerun filter option—which are selected with
Alexander’s IPG and which control whether multiple episodes of a program
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are recorded and whether reruns are filtered—meets the claimed ‘storage
options.’” Ex. 1025 ¶ 75.
Patent Owner’s arguments disputing Petitioner’s showing (see, e.g.,
PO Resp. 36–45; PO Sur-Reply 8–10) are premised on Patent Owner’s
proposed claim construction of “storage option,” which we do not adopt for
the reasons given above. See supra § III.C.2. In particular, we determine
that the broadest reasonable construction of “storage option” encompasses
the exemplary storage options described in the ’585 Patent Specification,
such as “language tracks,” “video formats,” “parental control” on storage,
and automatic erasure of viewed programs. Ex. 1001, 15:51–61, Figs. 14,
16. Also, as discussed above with respect to claim construction, we
determine the broadest reasonable interpretation of “program” is not limited
such that “program” cannot include more than one episode and the term
“program” is not synonymous with “episode.” See supra § III.C.2.
After considering the arguments and evidence of both parties, we
agree with Petitioner’s contentions, and we credit and give significant
weight to the testimony of Mr. Wechselberger (see, e.g., Ex. 1025 ¶¶ 73–75,
78, 80–93) over that of Mr. Tinsman as both Petitioner’s contentions and
Mr. Wechselberger’s testimony are consistent with the evidence of record
and the broadest reasonable interpretation of “storage option.” For instance,
Alexander describes an option for storing a single or multiple episodes of
programs. In particular, Alexander’s recording “‘regularly’ option” results
in “recording a particular program” regularly. Ex. 1018, 11:10–11
(emphasis added). Alexander describes alternatively that the viewer can
select “a record frequency of once, daily or weekly.” Id. at 25:40–41; see
also id. at 11:48–49 (describing selection of “Once, Daily, Weekly, or
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Regularly as a record-scheduling option”). Furthermore, “when the viewer
selects the ‘Regularly’ record option, the viewer is also given the option of
filtering reruns” (id. at 11:35–37) and, if the viewer has selected the rerun
filter option for that program title and the EPG determines “the episode is a
rerun, then the EPG will not record the episode” (id. at 11:39–43).
Patent Owner also argues that Alexander’s record frequency does not
impact the storage of data corresponding to a single program. PO Resp. 39–
40. Patent Owner asserts that Mr. Wechselberger testifies that Alexander is
“silent on whether the recording frequency options affects [the program’s]
components.” Id. at 40 (citing Ex. 2011, 76:15–20). However, Patent
Owner does not explain what “affects components” entails. Under the
broadest reasonable interpretation of the “wherein” clause, a storage option
need not require components of a program to be altered.
Patent Owner also argues that selection of Alexander’s rerun filter
option results in a program not being stored. PO Resp. 41–42. Patent
Owner’s arguments regarding Alexander’s record frequency option and
rerun filter option (id.), however, do not take into consideration Alexander’s
description of the operation of those options together. Ex. 1018, 11:35–43
(“[W]hen the viewer selects the ‘Regularly’ record option, the viewer is also
given the option of filtering reruns[, and] . . . [i]f the episode is a rerun, and
if the viewer has selected the rerun filter option for that program title, then
the EPG will not record the episode.”). Patent Owner’s asserted deficiencies
of Alexander also are premised on Patent Owner’s proposed construction of
“storage options” excluding some exemplary storage options disclosed in the
’585 Patent, which we decline to adopt.
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Also, Alexander describes that “[i]n the Parental Control Function, the
Parent selects the channels and programs that can be visible in the Grid
Guide for a particular viewer and selects channels and/or programs that are
to be blocked from viewing.” Ex. 1018, 17:27–30. Patent Owner argues the
parental control function pertains to only displaying programs on
Alexander’s EPG. PO Resp. 43. Upon selection by the parent of
Alexander’s parental control function, however, child viewers are blocked
from viewing marked programs and, therefore, cannot record those
programs. Id.
Patent Owner argues contrary to the disclosures in Alexander that the
marked program would be displayed anyway (see, e.g., PO Resp. 44;
Ex. 2016 ¶¶ 107–108), but Patent Owner’s arguments are based on
circumventing Alexander’s system using an Internet connection. Also, Mr.
Tinsman’s testimony (Ex. 2016 ¶¶ 107–109) that the circumvention would
have allowed a child viewer to record a marked program is not supported by
the disclosures of Alexander or the evidence of record. For instance,
Alexander describes that the recording features not accessed via the Grid
“operate in the same way as if recording a show from the Grid.” Ex. 1018,
24:6–7. We agree with Petitioner that Alexander’s parental control function
is an additional example of Alexander’s disclosure of a “storage option”
within the scope of claim 1.
We turn to whether Alexander discloses a “random access digital
storage device.” Relying on the testimony of Mr. Wechselberger, Petitioner
points to Alexander’s DVD. Pet. 38–40 (citing, e.g., Ex. 1018, 11:13–15;
12:7–21, 12:22–23; Ex. 1025 ¶¶ 88–91). Patent Owner does not dispute
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Petitioner’s showing that Alexander discloses the “random access digital
storage device” recited in claim 1. PO Resp. 56.
We agree with Petitioner’s contentions and we credit and give
significant weight to the testimony of Mr. Wechselberger (see, e.g., Ex.
1025 ¶¶ 88–91) that Alexander discloses a “random access digital storage
device” because Petitioner’s contentions and Mr. Wechselberger’s testimony
are consistent with the evidence of record. For instance, Alexander
describes,
[t]he viewer can instruct the EPG to record programs on
recordable Digital Video Discs (DVD’s). Because of the
extended storage capacity of DVD’s, the viewer can instruct the
EPG to record and index an extended period of programming.
For instance, the viewer can instruct the EPG to record and index,
e.g., 4 hours of CNN news broadcasts certain number. When the
viewer is ready to view the DVD recording, the EPG displays the
DVD index on screen. The viewer can then select to view either
the entire DVD, or only those portions of the recording in which
the viewer is interested.
Ex. 1018, 12:11–21. Alexander also describes creating “program-level
indexing of recorded programs.” Id. at 1018, 12:22–23.
For the reasons given, after consideration of the arguments and
evidence of both parties based on the complete record now before us, we
determine that Petitioner’s arguments and evidence show that Alexander
describes element 1[b]. We determine that Patent Owner’s arguments and
evidence do not undermine Petitioner’s showing.
(2) Overview of Obviousness Grounds
For completeness, we now consider Petitioner’s alternative
contentions and Patent Owner’s narrower construction requiring both that
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“at least one storage option” is limited to “particular subset of options that
effect the manner in which—i.e., ‘how’—programs are actually stored (i.e.,
recorded) on the random access digital storage device” (PO Resp. 20) and
that term “program” is limited to a single episode (id. at 11–12). Petitioner’s
alternative contentions regarding “storage option” are provided if that term
is construed more narrowly.
In particular, Petitioner points to alternative teachings for “storage
options” as follows: (1) Malik’s “recording programs having ‘a multiplicity
of language tracks’ which include ‘sound tracks’ and ‘text messages in
different languages’” (Pet. 57 (citing, e.g., Ex. 1020, 1 ¶ 6, 2 ¶¶ 1, 5));
(2) Boyce’s HDTV and SDTV video format options (id. at 62–63 (citing,
e.g., Ex. 1021, 1:17–21, 3:32–33, 4:14–21, 40:26–31)); and (3) Browne’s
program erasure options (id. at 67–68 (citing, e.g., Ex. 1022, 19 ¶¶ 2–3, Fig.
3)). Petitioner relies on the testimony of Mr. Wechselberger regarding
reasons one having ordinary skill in the art would have had to make the
proposed modifications to Alexander to allow a user to select the alternative
storage options using an IPG in the secondary references. Pet. 58–60, 63–
65, 68–72 (citing, e.g., Ex. 1025 ¶¶ 137–142, 150–157, 163–179).
(3) Obviousness over Alexander and Malik
We turn to the parties’ contentions regarding Malik’s language tracks.
Relying on the testimony of Mr. Tinsman, Patent Owner contends, contrary
to Petitioner’s contentions, Malik describes how the language selected by the
user affects playback, but not recording of a program. PO Resp. 46–47, 49
(citing, e.g., Ex. 2016 ¶¶ 112–113, 115, 118); PO Sur-Reply 11–13 (“But
importantly, none of these embodiments alter Malik’s stated order of
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operations – recording multiple tracks first and selecting a single program to
be used second.”). Patent Owner also contends, contrary to Petitioner’s
contentions and the declaration and deposition testimony of Mr.
Wechselberger, Malik does not disclose transmitting only a single language
track with the program, or selecting a single language for recording. PO
Resp. 47–48 (citing, e.g., Ex. 2016 ¶ 116; Ex. 2011, 86:15–87:12; Ex. 1020,
3); PO Sur-Reply 11 (“Malik teaches transmission and recording of multiple
language tracks with a program”). Patent Owner asserts, therefore,
“Petitioner’s proposed combination of Alexander and Malik is deficient”
because “[n]either reference describes the claimed storage option . . . and
combining their disclosures does not cure that fact.” Id. at 49.
Patent Owner’s contentions and Mr. Tinsman’s testimony do not take
into account, however, that Mr. Wechselberger testifies a person having
ordinary skill in the art would have recognized Malik’s “multi-lingual
operation” as a technical improvement and would have combined Malik’s
“choice of the language” with Alexander’s EPG resulting in a recording
system in which the viewer uses the EPG to select both a program and sound
or text track for recording. Ex. 1025 ¶¶ 137–138 (citing, e.g., Ex. 1020,
1 ¶¶ 1, 6). The parties do not dispute that Alexander’s EPG allows a user to
select a program for recording. See, e.g., Ex. 1018, 7:57–8:3, Figs. 1, 3.
Petitioner’s proposed modification is to incorporate Malik’s language
selection into Alexander’s recording system. Pet. 58 (“It would have been
obvious to modify Alexander’s recording system to also allow a user to
select, using an IPG, a sound track in a desired language or text track in a
desired language, as taught by Malik, when selecting a program to record, as
in Alexander”); Ex. 1025 ¶ 137 (“In my opinion, a POSA [person of
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ordinary skill in the art] would have found it obvious to modify Alexander’s
recording system to also allow a user to select a sound track in one or more
desired languages or a text track in one or more desired languages, as taught
by Malik, when selecting programs to record.”).
After considering the arguments and evidence of both parties, we
agree with Petitioner’s contentions regarding the proposed modification of
Alexander to select both a program and sound or text track for recording,
and we credit and give significant weight to the supporting testimony of Mr.
Wechselberger over that of Mr. Tinsman because Petitioner’s contentions
and Mr. Wechselberger’s testimony are consistent with the evidence of
record including the evidence cited therein. For instance, Malik describes
“an improved television transmission, reception and recording means
incorporating multi-lingual operation” in which “the choice of the language
is open for selection” by the viewer. Ex. 1020, 1 ¶¶ 1, 6 (emphases added).
Malik describes bringing “up a menu” and the user interacting “to select the
language of interest.” Id. at 5, ¶ 1. Based on the complete record now
before us, we determine Patent Owner’s arguments are based on Malik
alone, rather than the proposed combination of teachings set forth by
Petitioner. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”)
For the reasons given, after consideration of the arguments and
evidence of both parties based on the complete record now before us, we
determine that Petitioner’s arguments and evidence show that the
combination of Alexander and Malik teaches element 1[b] under the
broadest reasonable interpretation and even under Patent Owner’s narrower
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construction (see supra § III.D.6.b(2)). We also determine that Petitioner
has offered articulated reasoning with a rational underpinning as to why one
of ordinary skill in the art would have modified and combined the teachings
of the asserted art in the manner proposed by Petitioner and that Petitioner
has demonstrated that such person would have had a reasonable expectation
of success. See Ex. 1025 ¶¶ 137–138. We further determine that Patent
Owner’s arguments and evidence do not undermine Petitioner’s showing.
(4) Obviousness over Alexander and Boyce
We turn to Petitioner’s contentions that element 1[b] is taught by
Alexander modified to allow users to use an IPG to select one of Boyce’s
HDTV and SDTV video format options. Pet. 62–63 (citing, e.g., Ex. 1021,
1:17–21, 3:32–33, 4:14–21, 40:26–31). Petitioner relies on the testimony of
Mr. Wechselberger regarding reasons one having ordinary skill in the art
would have had to make the proposed modifications to Alexander. Pet. 58–
60, 63–65, 68–72 (citing, e.g., Ex. 1025 ¶¶ 137–142, 150–157, 163–179).
Patent Owner does not dispute Petitioner’s showing that Boyce
teaches the “storage option” recited in claim 1. We determine that Petitioner
has shown that Boyce’s disclosures teach the “wherein” clause even using
Patent Owner’s narrower construction. For instance, consistent with
Petitioner’s contentions, Boyce describes “VTR mode control circuit 920
receives user commands” instructing “the VTR to operate in either a HDTV
recording mode or a SDTV recording mode of operation.” Ex. 1021, 40:26–
31. Boyce also describes “it is highly desirable that a VTR be capable of
recording both HDTV signals as well as SDTV signals.” Id. at 4:14–15.
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The parties’ dispute centers of reasoning to combine. In that regard,
Mr. Wechselberger testifies a person having ordinary skill in the art would
have combined the teachings to modify Alexander’s EPG and digital
recording system to include Boyce’s selection of either an SDTV or HDTV
digital recording mode because Boyce’s selection is an improvement that
gives the user the format choice of which trade-off to make, i.e., image
quality or storage requirements. Ex. 1025 ¶¶ 151–155.
Relying on the testimony of Mr. Tinsman, Patent Owner contends “[a]
POSA would have known that digital video discs (DVDs) used by
Alexander only support SDTV format recording but do not support HDTV
format recording.” PO Resp. 51 (citing Ex. 2006, 30–31; Ex. 2016 ¶¶ 123–
125). Mr. Tinsman testifies that the maximum image resolution for video
recorded due to compression schemes used by DVDs at the time of the ’585
Patent was too low for HDTV. Ex. 2016 ¶¶ 123–128 (citing, e.g., Ex. 1018,
4:11–17; Ex. 1021, 4:2–6; Ex. 2004, 3; Ex. 2006, 25, 30–31, 36–37; Ex.
2007, 24; Ex. 2018, 8; Ex. 2020, 1). Mr. Tinsman testifies because of those
DVD limitations that a person having ordinary skill in the art would not have
recognized that DVDs would have been suitable for recording programs in
both SDTV and HDTV formats. Id.
Relying on the testimony of Mr. Wechselberger, Petitioner responds
that a person having ordinary skill in the art would not have understood high
definition television to require the resolution or bit rate argued by Patent
Owner. Pet. Reply 18–19 (citing, e.g., Ex. 1050 ¶¶ 55–62). Petitioner also
asserts that a compression scheme used by DVDs at the time of the ’585
Patent was suitable for recording HDTV. Id. at 19–22 (citing, e.g., Ex.
1050 ¶¶ 63–69, 71–72, 83–91). Mr. Wechselberger testifies that a person
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having ordinary skill in the art would have known of DVD technology that
would have been able to successfully record HDTV to a DVD.
Ex. 1050 ¶¶ 89–90 (citing, e.g., Ex. 1047, 378; Ex. 1048, code (62), 11:35–
40, 12:35–46).
Patent Owner contends that Mr. Wechselberger’s deposition and
declaration testimony, as well as other evidence submitted by Petitioner,
shows that commercial DVD technology did not support HDTV resolutions.
PO Sur-Reply 13–24 (citing, e.g., Ex. 1050 ¶¶ 39, 58, 62, 66, 80, 150–151;
Ex. 2026, 38:18–23, 49:12–50:17, 52:14–53:8, 64:25–72:11, 83:14–21,
85:11–16, 94:4–95:6, 98:4–14; Ex. 1044, 150–51, 180–82; Ex. 1046, 137,
313; Ex. 1048). Patent Owner also contends that Petitioner “provided
certain self-selected portions of a book” describing DVD technology, but
“other portions of that book” do not support Petitioner’s assertions. Id.
(citing, e.g., Ex. 2027, 154, 193, 257–258, 282, 305). Patent Owner also
asserts that Petitioner introduced a new theory in its Reply. Id. at 24.
Even assuming that Patent Owner’s contention and Mr. Tinsman’s
testimony are correct that commercial DVD technology did not support
HDTV resolutions, we agree with Petitioner’s assertion and Mr.
Wechselberger’s testimony that a person having ordinary skill in the art
would have had a reason to modify Alexander’s EPG and digital recording
system to include Boyce’s selection of either an SDTV or HDTV digital
recording mode and would have had a reasonable expectation of success.
Pet. 62–66; Ex. 1025 ¶¶ 151–155; Pet. Reply 18–19; Ex. 1050 ¶¶ 55–69, 71–
72, 83–91. Boyce describes the MPEG data rate and further that, therefore,
“there is a need for a method and apparatus for implementing a digital video
tape recorder capable of recording and reproducing SDTV video signals.”
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Ex. 1021, 4:2–12. In other words, the benefit of providing an option to
record SDTV, rather than always recording HDTV, is due to recording
technology limitations. We credit and give significant weight to Mr.
Wechselberger’s testimony over the testimony of Mr. Tinsman that a person
having ordinary skill in the art would have known of DVD technology that
would have been able to successfully record HDTV to a DVD because Mr.
Wechselberger’s testimony is consistent with the evidence of record. See,
e.g., Ex. 1047, 378 (“DVD offers a practical way for delivery of wide-screen
HDTV movies.”); Ex. 1048, 11:35–40 (describing with respect to recording
disk 724 that a HDTV signal can be recorded), 12:35–46 (describing
recording an HDTV signal on a DVD). Furthermore, Boyce describes that
its teachings are not limited to the particular HDTV and SDTV technology
and apply to other types of fixed and variable rate digital data bit streams.
Ex. 1021, 40:42–48.
Mr. Wechselberger further testifies that consumer appliance markets
for DVD applications were constrained for commercial reasons. Ex.
1050 ¶ 51. Mr. Wechselberger also testifies that “there is no teaching or
suggestion in Alexander or Boyce that would have led a POSA to assume or
conclude the constraints of commercial DVD appliances designed for
consumer markets should apply to the DVD appliance that would have
resulted from the Alexander-Boyce combination.” Ex. 1050 ¶ 52. We note
that simply because “a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination because of some technological
incompatibility.” In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983).
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We further agree with Petitioner that claim 1 does not require a
resolution or a bit rate or provide a narrow definition of HDTV. Pet. Reply
18; Ex. 1050 ¶¶ 56, 62. Although not necessary for our determination, we
also agree with Petitioner’s assertion and Mr. Wechselberger’s testimony
that the ’585 Patent identifies that the MPEG-2 standard is suitable for
storing data, including data of various video formats, on digital storage
device 31, which includes a DVD player capable of handling recordable
DVD discs. Ex. 1001, 3:53–56, 4:4–10.
We do not agree with Patent Owner (PO Resp. 24) that Petitioner
presents a new theory of unpatentability. Petitioner’s Reply and Mr.
Wechselberger’s reply testimony simply provide further details and evidence
to support the accuracy of assertions in the Petition and Mr. Wechselberger’s
testimony in his initial Declaration (Ex. 1025) regarding reasoning to
combine Alexander and Boyce. Petitioner’s Reply and Mr. Wechselberger’s
reply testimony do no more than fairly and directly respond to Patent
Owner’s Response and Mr. Tinsman’s testimony. See 37 C.F.R. § 42.23(b);
see also Apple Inc. v. Andrea Electronics Corp., 949 F.3d 697, 706 (Fed.
Cir. 2020) (explaining Apple’s reply arguments “are not the types of
arguments that we have previously found to raise a ‘new theory of
unpatentability’” and “any ambiguity as to whether Apple raised a new
argument on reply is eliminated when we consider whether Apple’s reply
arguments are responsive to arguments raised in Andrea’s Patent Owner
Response”); Belden Inc., v. Berk-Tek LLC, 805 F.3d 1064, 1078−80 (Fed.
Cir. 2015) (holding that the Board may rely on new evidence submitted with
a reply because the evidence was legitimately responsive to patent owner’s
arguments and not needed for a prima facie case of obviousness).
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For the reasons given, after consideration of the arguments and
evidence of both parties based on the complete record now before us, we
determine that Petitioner’s arguments and evidence show that the
combination of Alexander and Boyce teaches element 1[b] under the
broadest reasonable interpretation and even under Patent Owner’s narrower
construction (see supra § III.D.6.b(2)). We also determine that Petitioner
has offered articulated reasoning with a rational underpinning as to why one
of ordinary skill in the art would have modified and combined the teachings
of the asserted art in the manner proposed by Petitioner and that Petitioner
has demonstrated that such person would have had a reasonable expectation
of success. We further determine that Patent Owner’s arguments and
evidence do not undermine Petitioner’s showing.
(5) Obviousness over Alexander, Kumagai, and Browne
We turn to Petitioner’s contentions that element 1[b] is taught by
Alexander modified to incorporate Browne’s program erasure options. Pet.
67–68 (citing, e.g., Ex. 1022, 19 ¶¶ 2–3, Fig. 3). Petitioner relies on the
testimony of Mr. Wechselberger regarding reasons one having ordinary skill
in the art would have had to make the proposed modifications to Alexander.
Pet. 68–72 (citing, e.g., Ex. 1025 ¶¶ 163–170). For instance, Mr.
Wechselberger testifies a person having ordinary skill in the art would have
combined the teachings to present Browne’s option to automatically erase
previously viewed programs using Alexander’s EPG and recording system
to reduce attention needed from the viewer to manage the storage capacity.
1025 ¶¶ 165–166.
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Relying on the testimony of Mr. Tinsman, Patent Owner argues “none
of Browne’s three program erasure options as shown above in reproduced
FIG. 3 of Browne is the claimed storage options.” PO Resp. 54–55 (citing
Ex. 2016 ¶¶ 133–134). Mr. Tinsman testifies “Browne’s program erasure
options merely determine whether to erase programs that have already been
stored.” Ex. 2016 ¶ 133.
Patent Owner’s contentions and Mr. Tinsman’s testimony are
premised on Patent Owner’s proposed claim construction. Although we
agree with Patent Owner to the extent that Browne’s auto erase option does
not satisfy Patent Owner’s construction, we did not adopt that construction.
See supra § III.C.2.
Using the broadest reasonable interpretation, we agree with
Petitioner’s contentions and credit and give significant weight to Mr.
Wechselberger’s testimony over Mr. Tinsman’s testimony because
Petitioner’s contentions and Mr. Wechselberger’s testimony are supported
by the evidence of record under the broadest reasonable interpretation of the
“wherein” clause. For instance, consistent with Petitioner’s contentions and
Mr. Wechselberger’s testimony, Browne describes “[b]y selecting
previously viewed option 301b, only programs which have been viewed will
be automatically erased.” Ex. 1022, 19 ¶ 3; see also id. at Fig. 3 (“ERASE
OLDEST VIEWED PROGRAMS”). Browne further describes that
“automatic erasure” in a large capacity recorder player “greatly reduces the
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need for constant user attention and provides multiple viewing options.”
Id. at 2 ¶ 2.11
Additionally, Petitioner points to Alexander’s recording system
modified to use Kumagai’s rewritable recording medium. Pet. 65–69
(citing, e.g., Ex. 1025 ¶¶ 159–170). Mr. Wechselberger testifies a person
having ordinary skill in the art would have “found it desirable to include
comparable overwriting capabilities in recording systems that use optical
disc-based storage media (e.g., DVDs)” and, therefore, would have used
Kumagai’s rewritable DVD in Alexander’s recording system.
Ex. 1025 ¶ 162.
We agree with Petitioner’s assertion and we credit and give significant
weight to Mr. Wechselberger’s testimony because Petitioner’s assertion and
Mr. Wechselberger’s testimony are consistent with the evidence of record.
For instance, Kumagai describes a detection system “used for
recording/reproducing an optical disc DVD-RW (Rewritable) which is a
rewritable recording medium, now being researched, pursuant to the DVD
standard.” Ex. 1023, 7:64–67.
For the reasons given, after consideration of the arguments and
evidence of both parties based on the complete record now before us, we
determine that Petitioner’s arguments and evidence show that the
combination of Alexander, Kumagai, and Browne teaches element 1[b]
under the broadest reasonable interpretation. We also determine that

11 Browne’s auto erase option causes already-stored programs to be erased,
like that in the ’585 Patent Specification, which describes “[t]he user may
also choose whether the program guide automatically erases entries from
digital storage device 49 once the entries are viewed.” Ex. 1001, 15:57–59.
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Petitioner has offered articulated reasoning with a rational underpinning as
to why one of ordinary skill in the art would have modified and combined
the teachings of the asserted art in the manner proposed by Petitioner and
that Petitioner has demonstrated that such person would have had a
reasonable expectation of success. We further determine that Patent
Owner’s arguments and evidence do not undermine Petitioner’s showing.
(6) Remaining Obviousness Grounds—Alexander and Browne;
Alexander, Browne, and Malik; and Alexander, Browne, and Boyce
The grounds of obviousness over Alexander and Browne; Alexander,
Browne, and Malik; and Alexander, Browne, and Boyce are presented by
Petitioner to provide alternatives to Alexander’s indexed DVD for “random
access digital storage device.” Pet. 70–74. Patent Owner does not dispute
Petitioner’s showing that Alexander discloses “random access digital storage
device.” PO Resp. 56.
We note with respect to our determination that claim 1 is obvious over
Alexander, Kumagai, and Browne that Petitioner points to Browne’s
program erasure options for element 1[b]. Pet. 67–68. In its contentions
regarding obviousness over Alexander and Browne, however, other than
modifying Alexander’s indexed DVD with respect to “random access digital
storage device,” Petitioner points to its contentions that claim 1 is
anticipated by Alexander. Pet. 72.
Because Patent Owner does not dispute Petitioner’s showing
regarding “random access digital storage device” and the grounds of
anticipation and obviousness previously discussed (see supra
§§ III.D.6.b.(1)–(5)) are dispositive to all challenged claims, we need not
reach the grounds of obviousness over Alexander and Browne; Alexander,
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Browne, and Malik; and Alexander, Browne, and Boyce. See SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a
final written decision addressing all of the claims it has challenged”).
(7) Element 1[b]
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Alexander alone describes element 1[b]. We also
determine Petitioner has shown how Alexander in combination with the
asserted art teaches element 1[b]. Furthermore, we determine that Petitioner
has offered articulated reasoning with a rational underpinning as to why one
of ordinary skill in the art would have modified and combined the teachings
of the asserted art in the manner recited in claim 1. We also determine that
Petitioner has demonstrated that such person would have had a reasonable
expectation of success. We determine Patent Owner’s arguments and
evidence do not undermine Petitioner’s showing.
c) Element 1[c] “in response to a user selection of the at least one
storage option, modifying the at least one storage setting”
Petitioner points to Alexander’s adjustment of storage in accordance
with the storage option selected. See, e.g., Pet. 40–42 (citing, e.g., Ex. 1018,
2:42–44, 9:61–62, 25:35–49, Fig. 6; Ex. 1025 ¶¶ 94–104). Patent Owner
does not dispute this showing. We agree with Petitioner’s contentions
because they are consistent with the evidence of record. For instance,
Alexander describes
[a] show associated with an ad is recorded by pressing the Right
Action button while the ad is highlighted. The user may select a
record frequency of once, daily or weekly. From an ad, the user
presses the Right Action button (the Green button labeled
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“Record”) to place the show in the Record Schedule. In the event
that the show is currently on, pressing the Right Action button
while highlighting an ad allows recording of the show in
progress. The show title is also placed in the Record Schedule
until the show ends in the event the user wishes to modify the
record frequency to daily or weekly.
Ex. 1018, 25:35–49. Disclosures relating to other storage options are
discussed above with respect to element 1[b]. See supra § III.D.6.(b).
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Alexander describes element 1[c].
d) Element 1[d]: “displaying in the interactive television program guide
at least one program listing related to at least one program”
Petitioner points to Alexander’s display of program listings using Grid
Guide 22 and, alternatively, using panel ads. Pet. 43 (citing, e.g., Ex. 1018,
4:28–33; 4:52–56, 25:35–49, Figs. 1, 10A–B). Patent Owner does not
dispute this evidence. We agree with Petitioner’s contentions because they
are consistent with the evidence of record. For instance, Alexander
describes
[i]n grid guide 22 the viewer moves cursor 36 to highlight one of
the nine tiles in which channel and title are displayed by pressing
arrow keys 28 and 30. The viewer can view program listings
scheduled at future times by pressing keys 32 or 34 to move
horizontally about the Grid.
Ex. 1018, 4:52–56.
Alexander also describes displaying an ad for a future telecast
program in window 14, which the viewer can record by pressing the green
right action button. Ex. 1018, 4:28–33. Alexander further includes Figure 1,
which is a graphic representation of a sample screen display of the EPG and
Figures 10A and 10B, which are graphic representations of sample on screen
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EPG displays depicting the presentation of additional information
concerning the subject matter of a highlighted Panel Ad Window. Id. at
Figs. 1, 10A, 10B.
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Alexander describes element 1[d].
e) Element 1[e]: “providing the user with an opportunity to select a
program listing from the at least one displayed program listing for
recording on the random access digital storage device”
Petitioner contends Alexander describes selecting a program from the
grid guide or from an ad and using a “Record” button or remote to record.
Pet. 44–45 (citing, e.g., Ex. 1018, 4:29–33, 4:45–47, 4:52–54, 7:58–8:3,
21:55–67, 23:63–24:7, 25:35–49, Figs. 1–2). Patent Owner does not dispute
this evidence. We agree with Petitioner’s contentions because they are
consistent with the evidence of record. For instance, Alexander describes
[i]n the Record Selection Function, also referred to as the
Recording Function, the viewer instructs the EPG what programs
to add to the Record List, which is the list of programs and related
programming schedule information, for programs that the viewer
want to have recorded. As is further described below, the viewer
can identify the frequency/regularity with which the viewer
wants to record each program listed in the Record List.
The viewer can enter the Recording Function in a number
of ways. The viewer can press the “Record” key, if there is one,
on the viewer’s remote control device. Alternatively, the viewer
can “press” a “Record” action button on the EPG display.
Ex. 1018, 7:58–8:3; see also id. at 4:45–47, Fig. 1 (“Remote controller 26
has corresponding keys 48 and 50, respectively, to activate the functions
represented by blocks 44 [‘WATCH’] and 46 [‘RECORD’]”).
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Also supportive of Petitioner’s contentions, Alexander describes a
viewer recording a program displayed in window 14 by pressing the green
right action button. Ex. 1018, 4:28–33; see also id. at 21:55–67 (describing
recording by pressing “the Green button, labeled ‘Record’”). Alexander
further describes
[i]n one embodiment, if a Channel ad has show
information associated with it, the show may be recorded by
highlighting the ad and pressing the Right Action button (the
Green button, labeled Record). If the show is already being
delivered in the television signal, recording begins immediately
and the show is placed in the Record/Watch Schedule for the
duration of the show. If the show is on in the future, the show is
added to the Record/Watch Schedule for recording. Shows
added to the Record/Watch Schedule may be set to be recorded:
once, daily, or weekly. The Record feature and related Action
button labels operate in the same way as if recording a show from
the Grid.
Id. at 23:63–24:7.
For the reasons given, we determine that Petitioner’s unopposed
arguments and evidence show that Alexander describes element 1[e].
f) Element 1[f]: “recording the program on the random access digital
storage device based on the modification of the at least one storage
setting”
Petitioner contends Alexander describes that the selected program is
recorded based on the storage option, e.g., selected recording frequency.
Pet. 46 (citing, e.g., Ex. 1018, 7:62–65, 11:13–16, 11:48–49, 12:10–29; Ex.
1025 ¶¶ 116–122). Patent Owner does not dispute this evidence. We agree
with Petitioner’s contentions because they are consistent with the evidence
of record.
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For instance, Alexander describes
[t]he viewer can instruct the EPG to record programs on
recordable Digital Video Discs (DVD’s). Because of the
extended storage capacity of DVD’s, the viewer can instruct the
EPG to record and index an extended period of programming.
For instance, the viewer can instruct the EPG to record and index,
e.g., 4 hours of CNN news broadcasts certain number. When the
viewer is ready to view the DVD recording, the EPG displays the
DVD index on screen. The viewer can then select to view either
the entire DVD, or only those portions of the recording in which
the viewer is interested.
In one embodiment, program-level indexing of recorded
programs is created. In another embodiment, intra-program
indexing is created by using information transmitted in the VBI
[vertical blanking interval] of the video transmitted.
Ex. 1018, 12:10–25.
Alexander also describes, for example, that “[v]iewer selection of the
‘regularly’ option instructs the VCR control system to record the particular
title on the selected channel at the selected time slot any day of the week that
the program is telecast.” Id. at 11:13–16. Recording in response to other
options is discussed above with respect to element 1[b]. See supra
§ III.D.6.(b).
Patent Owner’s arguments relating to element 1[b] refer to this
recitation. See generally PO Resp. For the reasons given, we determine
Patent Owner’s arguments do not undermine Petitioner’s showing. See
supra § III.D.6.b.(2). For instance, Patent Owner’s arguments are premised
on its claim construction, which we do not adopt. See supra § III.C.2.
For the reasons given, we determine that Petitioner’s arguments and
evidence show that Alexander describes element 1[f].
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g) Conclusion—Claim 1
In summary, upon consideration of the contentions and evidence
presented by both parties in the complete record now before us, we
determine that Petitioner has shown that all recitations in claim 1 are
described by Alexander and taught by Alexander and the asserted prior art.
Also, we determine that Petitioner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have modified
and combined the teachings of the asserted art in the manner recited in claim
1. We also determine that Petitioner has demonstrated that such person
would have had a reasonable expectation of success.
We have considered all Patent Owner’s arguments and evidence. We
determine that Patent Owner’s arguments and evidence do not undermine
Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claim 1 of the ’585 Patent is unpatentable, under 35
U.S.C. § 102(e), as anticipated by Alexander. We also determine that
Petitioner has demonstrated by a preponderance of the evidence that claim 1
of the ’585 Patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over
the following prior art combinations: (1) Alexander and Malik;
(2) Alexander and Boyce; and (3) Alexander, Kumagai, and Browne.
Because Patent Owner does not dispute Petitioner’s showing that Alexander
discloses “random access digital storage device” (PO Resp. 56), we need not
reach the grounds of obviousness over Alexander and Browne; Alexander,
Browne, and Malik; and Alexander, Browne, and Boyce.
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7. Claims 8, 15, and 22
Independent claims 8, 15, and 22 of the ’585 Patent are similar to
independent claim 1. Petitioner’s showing for anticipation with respect to
each of claims 8, 15, and 22 is similar to its showing with respect to claim 1
and, indeed, Petitioner relies on the same disclosures and teachings as
discussed above in Section III.D.6 with respect to claim 1. Pet. 47–55.
Petitioner’s alternative grounds based on obviousness are the same for all
independent claims, and are discussed above in Section III.D.6 in our
analysis pertaining to claim 1. Id.
Petitioner accounts sufficiently for all differences in the claims. For
instance, regarding “displaying in a display screen” recited in claim 8 and “a
display screen” recited in claims 15 and 22, Petitioner points to Alexander’s
disclosure of an “on-screen EPG display.” Pet. 47–48, 50, 53 (citing, e.g.,
Ex. 1018, 2:32–33, 4:54–55, Fig. 3). Petitioner’s contentions are supported
by Alexander’s disclosures including, for example, Figure 3 and Alexander’s
related description that Figure 3 illustrates “a graphic representation of a
sample on screen EPG display depicting the EPG’s on-screen Grid Guide in
the programming scrolling mode.” Ex. 1018, 2:32–33 (emphasis added).
Regarding “an interactive television program guide implemented at
least partially on circuitry” recited in claim 15, Petitioner points to
Alexander’s “EPG system hardware” including a “circuit board” and
“module for creating an on-screen display.” Pet. 50 (citing, e.g., Ex. 1018,
5:46–47, 5:21, 5:27–28). Petitioner’s contentions are supported by, for
example, Alexander’s description of “hardware” including “a circuit board”
(Ex. 1018, 5:21) with “a module for creating an on-screen display” (id. at
5:27–28) and further that “[a]nother feature-of one embodiment of the EPG
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system hardware is that display list hardware is capable of both video input
and output on the same DMA [direct memory access] hardware.” Id. at
5:46–47.
For independent claims 8, 15, and 22, Patent Owner relies on the same
arguments discussed above in Section III.D.6 with respect to claim 1. See
generally PO Resp. For the reasons discussed above in Section III.D.6 with
respect to claim 1, upon consideration of the contentions and evidence
presented by both parties in the complete record now before us, we
determine that Petitioner has shown that all recitations in claims 8, 15, and
22 of the ’585 Patent are described by Alexander and taught by Alexander
and the asserted prior art. Also, we determine that Petitioner has articulated
reasoning with a rational underpinning as to why one of ordinary skill in the
art would have modified and combined the teachings of the asserted art in
the manner recited in those claims. We also determine that Petitioner has
demonstrated that such person would have had a reasonable expectation of
success.
We have considered all Patent Owner’s arguments and evidence. We
determine that Patent Owner’s arguments and evidence as to claim 1 do not
undermine Petitioner’s showing as to claims 8, 15, and 22.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 8, 15, and 22 of the ’585 Patent are unpatentable, under
35 U.S.C. § 102(e), as anticipated by Alexander. We also determine that
Petitioner has demonstrated by a preponderance of the evidence that claims
8, 15, and 22 of the ’585 Patent are unpatentable, under 35 U.S.C. § 103(a),
as obvious over the following prior art combinations: (1) Alexander and
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Malik; (2) Alexander and Boyce; and (3) Alexander, Kumagai, and Browne.
Because Patent Owner does not dispute Petitioner’s showing that Alexander
discloses “random access digital storage device” (PO Resp. 56), we need not
reach the grounds of obviousness over Alexander and Browne; Alexander,
Browne, and Malik; and Alexander, Browne, and Boyce. See SAS, 138 S.
Ct. at 1359 (holding a petitioner “is entitled to a final written decision
addressing all of the claims it has challenged”).
E. Obviousness—Claims 2, 7, 9, 14, 16, 21, 23, and 28
Petitioner contends each of dependent claims 2, 7, 9, 14, 16, 21, 23,
and 28 of the ’585 Patent is unpatentable, under 35 U.S.C. § 103(a), as
obvious over (1) Alexander and Malik; and (2) Alexander, Browne, and
Malik. Pet. 9, 56–61, 72–73. Each of claims 2, 7, 9, 14, 16, 21, 23, and 28
depend directly from one of independent claims 1, 8, 15, and 22. Patent
Owner does not dispute separately for those dependent claims Petitioner’s
showing that Alexander discloses “random access digital storage device.”
PO Resp. 56–57. Therefore, as we discussed with respect to independent
claims 1, 8, 15, and 22 (see supra §§ III.D.6, III.D.7), we need not decide
Petitioner’s alternative contentions that any dependent claims would have
been obvious over Alexander, Browne, and Malik.
We turn to Petitioner’s contentions that dependent claims 2, 7, 9, 14,
16, 21, 23, and 28 would have been obvious over Alexander and Malik.
Each of claims 2, 9, 16, and 23 recites “wherein the at least one storage
option is for selecting at least one language track for storing with [programs
when a program/the program when the program] is recorded.” Ex. 1001,
19:1–3, 19:44–46, 20:21–23, 21:4–6. Each of claims 7, 14, 21, and 28
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recites “wherein the at least one storage option is for selecting at least one
language of subtitles for storing with [programs when the programs are/the
program when the program is] recorded.” Ex. 1001, 19:18-20, 19:61–63,
20:39–41, 22:9–11.
For the further recitations of claims 2, 7, 9, 14, 16, 21, 23, and 28,
Petitioner points to Malik’s “recording programs having ‘a multiplicity of
language tracks’ which include ‘sound tracks’ and ‘text messages in
different languages.’” Pet 56–61 (citing, e.g., Ex. 1020, 1 ¶¶ 1–8, 2 ¶¶ 1, 5–
9, 3 ¶ 1, 7, 5 ¶ 1, 6 ¶ 4; Ex. 1025 ¶¶ 133–146). Petitioner relies on the
testimony of Mr. Wechselberger regarding reasoning to combine. Id.
Patent Owner does not argue separately Petitioner’s contentions for
claims 2, 7, 9, 14, 16, 21, 23, and 28. We discuss Patent Owner’s
contentions in full with respect to the independent claims. See supra
§§ III.D.6, III.D.7. We agree with Petitioner’s contentions and we credit and
give significant weight to Mr. Wechselberger’s testimony because
Petitioner’s contentions and Mr. Wechselberger’s testimony (see, e.g., Ex.
1025 ¶¶ 133–146) are consistent with the teachings of Alexander and Malik.
For instance, Malik describes “a multiplicity of language tracks” and that its
“technique employed here can also be used to transmit, receive, record
textual messages in different languages, messages such as textual dubbing,
scores, results, tables, program headers, footers and the like.” Ex. 1020,
1 ¶ 6, 2 ¶ 1; see also id. at 3, ¶ 1 (describing “[a]n embodiment of a
television reception system with the capability to pick a different language
track for sounding with the current frames”), 3, ¶ 7 (describing that “[t]he
video recorder would record such programs in similar fashion, the number of
sound, text tracks recordable will depend on size of the tape and the quality
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of the read/write head”). In addition to the teachings highlighted here, our
reasoning provided with respect to the independent claims applies, in
particular with respect to Patent Owner’s contentions regarding those claims.
See supra §§ III.D.6, III.D.7.
Based on the complete record now before us, we determine that
Petitioner has shown that the further recitations in claims 2, 7, 9, 14, 16, 21,
23, and 28 are taught by the asserted art. Also, we determine that Petitioner
has offered articulated reasoning with a rational underpinning as to why one
of ordinary skill in the art would have modified and combined the teachings
of the asserted art in the manner recited in those claims. Pet. 58–60 (citing,
e.g., Ex. 1025 ¶¶ 137–142); see also supra § III.D.6.b.(3) (discussing and
adopting as persuasive Petitioner’s contentions regarding why a person
having ordinary skill in the art would have modified Alexander’s recording
system to also allow a user to select, using an IPG, a sound track in a desired
language or a text track in a desired language, as taught by Malik).
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 2, 7, 9, 14, 16, 21, 23, and 28 of the ’585 Patent are
unpatentable, under 35 U.S.C. § 103(a), as obvious over Alexander and
Malik.
F. Obviousness—Dependent Claims 3, 4, 10, 11, 17, 18, 24, and 25
Petitioner contends each of claims 3, 4, 10, 11, 17, 18, 24, and 25 of
the ’585 Patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over
(1) Alexander and Boyce; and (2) Alexander, Browne, and Boyce. Pet. 9,
62–65, 73–74. Each of claims, 3, 4, 10, 11, 17, 18, 24, and 25 depends,
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directly or indirectly, from one of independent claims 1, 8, 15, and 22.12
Patent Owner does not dispute separately for those dependent claims
Petitioner’s showing that Alexander discloses “random access digital storage
device.” PO Resp. 57–58. Like we discussed with respect to independent
claims 1, 8, 15, and 22 (see supra §§ III.D.6, III.D.7), therefore, we need not
decide Petitioner’s alternative contentions that any dependent claims would
have been obvious over Alexander, Browne, and Boyce.
We turn to Petitioner’s contentions that dependent claims 3, 4, 10, 11,
17, 18, 24, and 25 would have been obvious over Alexander and Boyce.
Each of claims 3, 10, 17, and 24 recites “wherein the at least one storage
option is for selecting at least one video format for [recording
programs/recording].” Ex. 1001, 19:4–6, 19:47–48, 20:24–26, 21:9–10.
Claims 4, 11, 18, and 25 depend, directly, on claims 3, 10, 17, and 24,
respectively and each of claims 4, 11, 18, and 25 recites “wherein the at least
one video format comprises at least one of high definition television, normal
television and digital format.” Ex. 1001, 19:7–9, 19:49–51, 20:27–29,
21:10–12.
For the further recitations in claims 3, 4, 10, 11, 17, 18, 24, and 25,
Petitioner points to Boyce’s HDTV and SDTV video format options. Pet.
62–65 (citing, e.g., Ex. 1021, 1:17–21, 2:11–21, 3:32–33, 3:36-38, 4:14–21,
4:52–54, 40:26–32, 41:33–35; Ex. 1025 ¶¶ 148–157)). Petitioner relies on
the testimony of Mr. Wechselberger regarding reasoning to combing the

12 Claims 3, 10, 17, and 24 depend, directly, on claims 1, 8, 15, and 22,
respectively and claims 4, 11, 18, and 25 depend, directly, on claims 3, 10,
17, and 24, respectively.
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teachings of Alexander and Boyce to give the user the format choice of
which trade-off to make i.e., image quality or storage requirements. Id.
Patent Owner does not argue separately Petitioner’s contentions for
claims 3, 4, 10, 11, 17, 18, 24, and 25. We discuss Patent Owner’s
contentions in full with respect to the independent claims. See supra
§§ III.D.6, III.D.7. We agree with Petitioner’s contentions and we credit and
give significant weight to Mr. Wechselberger’s testimony because
Petitioner’s contentions and Mr. Wechselberger’s testimony (see, e.g.,
Ex. 1025 ¶¶ 148–157) are consistent with the teachings of Alexander and
Boyce. For instance, Boyce describes “VTR mode control circuit 920
receives user commands” instructing “the VTR to operate in either a HDTV
recording mode or a SDTV recording mode of operation.” Ex. 1021, 40:26–
31. Boyce describes “it is highly desirable that a VTR be capable of
recording both HDTV signals as well as SDTV signals.” Id. at 4:14–15.
Based on the complete record now before us, we determine that
Petitioner has shown that the further recitations in claims 3, 4, 10, 11, 17, 18,
24, and 25 are taught by the asserted art. Also, we determine that Petitioner
has offered articulated reasoning with a rational underpinning as to why one
of ordinary skill in the art would have modified and combined the teachings
of the asserted art in the manner recited in those claims. Pet. 63–65 (citing,
e.g., Ex. 1025 ¶¶ 150–157); see also supra § III.D.6.b.(4) (discussing
Petitioner’s contentions regarding why one having ordinary skill in the art
would have modified Alexander to allow users to use an IPG to select a
storage option to instruct the recording device to operate in either an HDTV
or SDTV recording mode as taught by Boyce).
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Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 3, 4, 10, 11, 17, 18, 24, and 25 of the ’585 Patent are
unpatentable, under 35 U.S.C. § 103(a), as obvious over Alexander and
Boyce.
G. Obviousness—Dependent Claims 6, 13, 20, and 27
Petitioner contends each of claims 6, 13, 20, and 27 of the ’585 Patent
is unpatentable, under 35 U.S.C. § 103(a), as obvious over (1) Alexander,
Kumagai, and Browne; and (2) Alexander and Browne. Pet. 9, 65–72.
Petitioner presents the ground of Alexander and Browne as an alternative
“[t]o any extent that Alexander’s indexed DVD is alleged not to meet the
proper construction of ‘random access digital storage device.’” Id. at 70.
Claims 6, 13, 20, and 27 depend, directly, on claims 1, 8, 15, and 22,
respectively. Patent Owner does not dispute separately for dependent claims
6, 13, 20, and 27 Petitioner’s showing that Alexander discloses “random
access digital storage device.” PO Resp. 56–57. Like we discussed with
respect to independent claims 1, 8, 15, and 22 (see supra §§ III.D.6, III.D.7),
therefore, we need not decide Petitioner’s alternative contentions that
dependent claims would have been obvious over Alexander and Browne.
Each of claims 6, 13, 20, and 27 recites “wherein the at least one
storage option is for automatically erasing programs from the digital storage
device once the [programs are viewed by the user/program is viewed by the
user].” Ex. 1001, 19:15–17, 19:58–60, 20:36–38, 22:6–8. Petitioner
contends that the combination of Kumagai’s rewritable recording medium,
Browne’s option to automatically erase previously viewed programs, and
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Alexander’s recording system teaches the further recitations in claims 6, 13,
20, and 27. Pet. 65–69 (citing, e.g., 1022, 19 ¶¶ 2–3, Fig. 3;
Ex. 1025 ¶¶ 159–170). Petitioner relies on the testimony of Mr.
Wechselberger, including that discussed above in Section III.D.6 with
respect to claim 1 regarding reasons one having ordinary skill in the art
would have had to make the proposed modifications to Alexander. Id. at
66–69 (citing, e.g., Ex. 1025 ¶¶ 159–170).
Patent Owner does not argue separately Petitioner’s contentions for
claims 6, 13, 20, and 27. PO Resp. 53–55. We discuss Patent Owner’s
contentions in full with respect to the independent claims. See supra
§§ III.D.6, III.D.7. We agree with Petitioner’s contentions and we credit and
give significant weight to Mr. Wechselberger’s testimony because
Petitioner’s contentions and Mr. Wechselberger’s testimony are consistent
with the teachings of Alexander and Browne. For instance, Browne
describes
Programs may be stored in storage section 104 and erased
when storage capacity is reached in a first-in/first-out (FIFO)
mode, if selection of FIFO option 301a is made from program
erasure section 301. . .
Alternatively, program erasure may be selected by
choosing erasure section 301. By selecting previously viewed
option 301b, only programs which have been viewed will be
automatically erased. The erasure of the stored viewed programs
will preferably be performed on a FIFO basis. Thus, having
selected this option, unviewed programs are automatically saved.
Ex. 1022, 19 ¶¶ 2, 3 (emphasis added). Browne teaches automatically
erasing programs from the digital storage device after the programs are
viewed by the user.
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Upon consideration of the contentions and evidence presented by both
parties in the complete record now before us, we determine that Petitioner
has shown that the further recitations in claims 6, 13, 20, and 27 are taught
by the asserted art. Also, we determine that Petitioner has articulated
reasoning with a rational underpinning as to why one of ordinary skill in the
art would have modified and combined the teachings of the asserted art in
the manner recited in those claims. Pet. 68–72 (citing, e.g., Ex.
1025 ¶¶ 163–179); see also supra § III.D.6.b.(5) (discussing why it would
have been obvious to a person having ordinary skill in the art to modify
Alexander’s recording system to allow a user to use an IPG to select a
storage option that automatically erases previously viewed programs, as
taught by Browne, from Kumagai’s DVD-RW). We also determine that
Petitioner has demonstrated that such person would have had a reasonable
expectation of success. Id.
We have considered all Patent Owner’s arguments and evidence. We
determine that Patent Owner’s arguments and evidence do not undermine
Petitioner’s showing.
Accordingly, based on the complete record now before us, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that dependent claims 6, 13, 20, and 27 of the ’585 Patent are
unpatentable, under 35 U.S.C. § 103(a), as obvious over Alexander,
Kumagai, and Browne.
IV. CONCLUSION
Petitioner challenged claims 1–28 of the ’585 Patent. Pet. 1. Patent
Owner filed a statutory disclaimer on March 4, 2019, to disclaim claims 5,
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12, 19, and 26. PO Resp. 8–9; Ex. 2002. The outcome for the challenged
claims remaining in this proceeding is set forth in Table 3 of this Decision
below.13 In summary:
Claims
Challenged 35 U.S.C.
Reference(s)/
Basis
Claims
Shown
Unpatent-
able
Claims Not
shown
Unpatent-
able
1, 8, 15, 22 § 102(e) Alexander 1, 8, 15, 22
1, 2, 7–9, 14–
16, 21–23, 28
§ 103(a) Alexander,
Malik
1, 2, 7–9,
14–16, 21–
23, 28

1, 3, 4, 8, 10,
11, 15, 17, 18,
22, 24, 25
§ 103(a)
Alexander,
Boyce
1, 3, 4, 8, 10,
11, 15, 17,
18, 22, 24,
25

1, 6, 8, 13, 15,
20, 22, 27
§ 103(a) Alexander,
Kumagai,
Browne
1, 6, 8, 13,
15, 20, 22,
27

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claims
Challenged 35 U.S.C.
Reference(s)/
Basis
Claims
Shown
Unpatent-
able
Claims Not
shown
Unpatent-
able
1, 6, 8, 13, 15,
20, 22, 27
§ 103(a)14 Alexander,
Browne

1, 2, 7–9, 14–
16, 21–23, 28
§ 103(a) Alexander,
Browne,
Malik

1, 3, 4, 8, 10,
11, 15, 17, 18,
22, 24, 25
§ 103(a) Alexander,
Browne,
Boyce

Overall
Outcome
1–4, 6–11,
13–18, 20–
25, 27, 28

Table 3 of this Decision, above, summarizes the outcome for
each challenged claim and ground in the instant proceeding.

14 The grounds of obviousness over Alexander and Browne; Alexander,
Browne, and Malik; and Alexander, Browne, and Boyce are presented by
Petitioner to provide alternative teachings to Alexander’s indexed DVD for
“random access digital storage device.” Pet. 70–74. Patent Owner does not
dispute Petitioner’s showing in that regard. PO Resp. 56. We, therefore,
need not reach these alternative grounds. See supra §§ III.D.6, III.D.7.
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V. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–4, 6–11, 13–18, 20–25, 27, and 28 of the
’585 Patent have been proven to be unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Frederic M. Meeker
Bradley C. Wright
Charles L. Miller
Brian J. Emfinger
Blair A. Silver
BANNER AND WITCOFF, LTD.
fmeeker@bannerwitcoff.com
bwright@bannerwitcoff.com
cmiller@bannerwitcoff.com
bemfinger@bannerwitcoff.com
bsilver@bannerwitcoff.com

PATENT OWNER:

Jason D. Eisenberg
Jon E. Wright
Wenchong Shu
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jasone-PTAB@sternekessler.com
jwright-PTAB@sternekessler.com
wshu-PTAB@sternekessler.com