`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner
`
`v.
`
`ROVI GUIDES, INC.
`Patent Owner
`
`
`Patent No. 7,996,864
`Filing Date: November 7, 2003
`Issue Date: August 9, 2011
`
`Title: METHOD AND APPARATUS FOR DISPLAYING TELEVISION
`PROGRAMS AND RELATED TEXT
`________________
`
`Inter Partes Review No.: IPR2017-00217
`
`________________
`
`
`REPLACEMENT PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
` Page
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1) ............ 1 
`  37 C.F.R. § 42.8(b)(1)&(2): Real Parties in Interest & Related
`Matters ........................................................................................................ 1 
`  37 C.F.R. § 42.8(b)(3)&(4): Lead & Back-Up Counsel and
`Service Information .................................................................................... 2 
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................... 2 
`  Payment of Fees ......................................................................................... 2 
`  Grounds for Standing ................................................................................. 2 
`III.  OVERVIEW OF THE ’864 PATENT ............................................................ 3 
`  Brief Description of the Alleged Invention ................................................ 3 
`  Prosecution History .................................................................................... 6 
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(b) AND STATEMENT OF RELIEF REQUESTED ....................... 8 
`  Claims for Which Review Is Requested and Grounds on Which
`Challenge Is Based ..................................................................................... 8 
`  How Claims Are to Be Construed and Level of Skill ................................ 9 
`1.  How the Claims Are to Be Construed ................................................... 9 
`2.  Level of Ordinary Skill ....................................................................... 10 
`  How the Claims Are Unpatentable ........................................................... 10 
`  Evidence Supporting the Challenge ......................................................... 10 
`SUMMARY OF ARGUMENT ..................................................................... 10 
`V. 
`VI.  THE CLAIMS ARE UNPATENTABLE ...................................................... 11 
`  This Petition Does Not Present Substantially
`the Same
`Arguments Presented During Prosecution ............................................... 12 
`  The Grounds Are Not Redundant ............................................................. 14 
`VII.  SPECIFIC GROUNDS FOR UNPATENTABILITY ................................... 14 
`  Claims 1-20 Would Have Been Obvious Over Rauch in View
`of Bennington ........................................................................................... 15 
`i
`
`IV. 
`
`
`
`

`

`
`
`
`
`1.  Independent Claim 1 ........................................................................... 16 
`i.  Rauch Teaches All But One Limitation of Claim 1 ...................... 17 
`
`ii.  The Rauch-Bennington Combination Teaches Independent
`
`Claim 1 .......................................................................................... 20 
`
`2.  Independent Claims 6, 10, 15, and 16 ................................................. 24 
`3.  Claims 2, 11, and 17 ............................................................................ 33 
`4.  Claims 3, 12, and 18 ............................................................................ 34 
`5.  Claims 4, 13, and 19 ............................................................................ 35 
`6.  Claims 5, 14, and 20 ............................................................................ 36 
`7.  Claim 7 ................................................................................................ 38 
`8.  Claim 8 ................................................................................................ 38 
`9.  Claim 9 ................................................................................................ 41 
`  Claims 1-20 Would Have Been Obvious Over Rauch in View
`of Florin .................................................................................................... 41 
`1.  Independent Claim 1 ........................................................................... 43 
`2.  Independent Claims 6, 10, 15, and 16 ................................................. 46 
`3.  Claims 2, 11, and 17 ............................................................................ 54 
`4.  Claims 3, 12, and 18 ............................................................................ 56 
`5.  Claims 4, 13, and 19 ............................................................................ 57 
`6.  Claims 5, 14, and 20 ............................................................................ 58 
`7.  Claim 7 ................................................................................................ 59 
`8.  Claim 8 ................................................................................................ 59 
`9.  Claim 9 ................................................................................................ 60 
`  Claims 1, 4-6, 9, 10, 13-16, 19, and 20 Would Have Been
`Obvious Over Young in View of Florin and Yoshino ............................. 61 
`1.  Young Teaches Most of Independent Claim 1 .................................... 62 
`2.  The Combination of Young, Florin, and Yoshino Teaches
`Independent Claim 1 ........................................................................... 65 
`
`ii
`
`

`

`
`
`i.  Young in View of Florin Teaches Claim 1, Except for Non-
`
`Overlapping Areas ........................................................................ 65 
`
`ii.  Yoshino Teaches Non-Overlapping Areas ................................... 69 
`
`3.  Independent Claims 6, 10, 15, and 16 ................................................. 72 
`4.  Claims 4, 13, and 19 ............................................................................ 80 
`5.  Claims 5, 14, and 20 ............................................................................ 83 
`6.  Claim 9 ................................................................................................ 86 
`7.  Claims 2, 3, 7, 8, 11, 12, 17, and 18 Would Have Been Obvious
`Over Young in View of Florin, Yoshino, and Cherrick ...................... 87 
`i.  Claims 2, 11, and 17 ...................................................................... 88 
`
`ii.  Claims 3, 12, and 18 ...................................................................... 91 
`
`iii.  Claim 7 .......................................................................................... 92 
`
`iv.  Claim 8 .......................................................................................... 93 
`
`VIII.  CONCLUSION .............................................................................................. 94 
`
`
`
`iii
`
`
`
`
`
`

`

`
`
`EXHIBITS
`
`U.S. Patent No. 5,731,844 to Rauch et al. (“Rauch”)
`
`U.S. Patent No. 6,418,556
`
`to Bennington et al.
`
`Exhibit 1001: U.S. Patent No. 7,996,864 to Yuen et al. (“the ’864 Patent”)
`
`Exhibit 1002:
`
`Exhibit 1003:
`(“Bennington”)
`
`Exhibit 1004:
`
`Exhibit 1005:
`
`U.S. Patent No. 5,583,560 to Florin et al. (“Florin”)
`
`International Publication No. WO 92/04801 to Young et al.
`(“Young”)
`
`U.S. Patent No. 4,991,012 to Yoshino (“Yoshino”)
`
`U.S. Patent No. 5,528,304 to Cherrick et al. (“Cherrick”)
`
`Reply to Office Action filed February 24, 2010 in U.S.
`Application No. 11/064,219 (a continuation of the ’864
`Patent)
`
`Declaration of Anthony J. Wechselberger
`
`Originally filed specification of the ’864 Patent
`
`Amendment filed February 28, 2011
`
`Notice of Allowance dated March 16, 2011
`
`Non-final Office Action dated September 25, 2007
`
`Amendment filed February 25, 2008
`
`Final Office Action dated September 22, 2008
`
`RCE and Amendment filed February 23, 2009
`
`Non-final Office Action dated March 17, 2009
`iv
`
`
`Exhibit 1006:
`
`Exhibit 1007:
`
`Exhibit 1008:
`
`
`Exhibit 1009:
`
`Exhibit 1010:
`
`Exhibit 1011:
`
`Exhibit 1012:
`
`Exhibit 1013:
`
`Exhibit 1014:
`
`Exhibit 1015:
`
`Exhibit 1016:
`
`Exhibit 1017:
`
`
`
`

`

`
`
`
`Exhibit 1018:
`
`Exhibit 1019:
`
`Exhibit 1020:
`
`Exhibit 1021:
`
`Exhibit 1022:
`
`
`Exhibit 1023:
`
`
`Exhibit 1024:
`
`Exhibit 1025:
`
`
`Exhibit 1026:
`
`
`Exhibit 1027:
`
`
`Exhibit 1028:
`
`
`
`
`
`Amendment filed June 4, 2009
`
`Non-final Office Action dated September 17, 2009
`
`Response to Non-Final Office Action filed March 17, 2010
`
`Final Office Action dated June 22, 2010
`
`Notice of Appeal and Pre-Appeal Brief Request for Review
`filed December 22, 2010
`
`Notice of Panel Decision from Pre-Appeal Brief Review
`dated February 3, 2011
`
`RCE and IDS filed March 30, 2011
`
`Notice of Allowance dated May 19, 2011, including a list of
`references cited by applicant and considered by examiner
`
`Originally filed application for U.S. Patent Application No.
`08/298,997, filed on August 31, 1994
`
`Originally filed application for U.S. Patent Application No.
`08/312,863, filed on September 27, 1994
`
`U.S. Patent Application No. 08/241,743 to Rauch et al.
`(“Rauch’s parent”), filed on May 12, 1994
`
`
`
`
`v
`
`

`

`
`
`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1)
`
`37 C.F.R. § 42.8(b)(1)&(2): Real Parties in Interest & Related
`Matters
`The real parties-in-interest are: (i) Comcast Corporation, (ii) Comcast
`
`Business Communications, LLC,
`
`(iii) Comcast Cable Communications
`
`Management, LLC, (iv) Comcast Cable Communications, LLC, (v) Comcast
`
`Financial Agency Corporation, (vi) Comcast Holdings Corporation, (vii) Comcast
`
`of Houston, LLC, (viii) Comcast Shared Services, LLC, and (ix) Comcast STB
`
`Software I, LLC. These entities are referenced below as “Comcast entity __” or as
`
`“Comcast entities __,” where “__” is one of or more of (i) through (ix).
`
`The ’864 Patent has been asserted against Comcast entities (i) - (iv) and (vi)
`
`- (viii), as well as other defendants, in Rovi Guides, Inc., et al. v. Comcast
`
`Corporation, et al., U.S. District Court for the Eastern District of Texas, Case No.
`
`2:16-cv-00321 (“EDTX litigation”). The earliest date of service on any of the
`
`Comcast entities named in the EDTX litigation was April 8, 2016.
`
`The ’864 Patent is at issue in Comcast Corporation, et al. v. Rovi
`
`Corporation, et al., U.S. District Court for the Southern District of New York,
`
`Case No. 16-cv-3852 (“SDNY litigation”). The SDNY litigation was brought by
`
`Comcast entities (i) - (iv) and (vi) - (ix). The SDNY litigation does not challenge
`
`the validity of a claim of the ’864 Patent.
`
`1
`
`
`
`

`

`
`
`
`
`37 C.F.R. § 42.8(b)(3)&(4): Lead & Back-Up Counsel and Service
`Information
`Petitioner designates counsel listed below and consents to electronic service.
`
`A power of attorney for counsel is being filed herewith.
`
`Lead Counsel
`Additional Back-Up Counsel
`Craig W. Kronenthal (Reg. No.
`Frederic M. Meeker (Reg. No. 35,282)
`58,541)
`fmeeker@bannerwitcoff.com
`ckronenthal@bannerwitcoff.com
`
`Back-Up Counsel
`
`Scott M. Kelly (Reg. No. 65,121)
`Bradley C. Wright (Reg. No. 38,061)
`skelly@bannerwitcoff.com
`bwright@bannerwitcoff.com
`
`
`Banner and Witcoff, LTD
`Banner and Witcoff, LTD
`1100 13th Street, NW, Suite 1200
`1100 13th Street, NW, Suite 1200
`Washington, DC 20005
`Washington, DC 20005
`Tel: (202) 824-3000
`Tel: (202) 824-3000
`Fax: (202) 824-3001
`Fax: (202) 824-3001
`II. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`
`Payment of Fees
`The undersigned authorizes the charge of any required fees to Deposit
`
`Account No. 19-0733.
`
` Grounds for Standing
`Petitioner certifies that the ’864 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`
`
`2
`
`

`

`
`
`challenging claims 1-20 on the grounds identified in this Petition.1
`
`III. OVERVIEW OF THE ’864 PATENT
` Brief Description of the Alleged Invention
`The ’864 Patent relates “to a method and apparatus for simultaneously
`
`displaying video programs and related text on a television screen.” Exhibit-1001,
`
`1:25-28.2 The ’864 Patent acknowledges “the prevalence of television program
`
`guides” and the prior existence of electronic program guides. Exhibit-1001, 1:48-
`
`55.
`
`The ’864 Patent describes an electronic television program guide with three
`
`screen formats: (1) a time specific guide, (2) a channel specific guide, and (3) a
`
`theme specific guide. Exhibit-1001, 4:1-7. Each format includes a picture-in-
`
`picture (PIP) window for displaying a currently broadcast television program.
`
`Exhibit-1001, 4:7-9.
`
`
`
`1 This Petition is being filed within one year of service on any entity named in the
`
`EDTX litigation.
`
`2 The notation N:XX-YY refers to column (or page) number N, and lines XX to
`
`YY of a reference.
`
`
`
`3
`
`

`

`
`
`Fig. 2 (annotated below) shows a version of the time-specific format (called
`
`“NOW” guide) that displays program listings of television programs being
`
`broadcast at the current time. Exhibit-1001, 5:30-34.
`
`Second Area
`
`Third Area
`
`First Area
`
`
`
`This guide includes PIP window 42 (upper-left), program description area 44
`
`(upper-right), and program schedule area 46 (bottom). Exhibit-1001, 5:9-17.
`
`Window 42 displays the current television program highlighted by cursor 48 in
`
`program schedule area 46, while program description area 44 displays a program
`
`description of the highlighted program. Exhibit-1001, 5:37-41. As the cursor
`
`moves through the program listings in program schedule area 46 (claimed “first
`
`area”), the currently-displayed television program in PIP window 42 (claimed
`
`“second area”) changes to correspond to the highlighted program, and the program
`
`
`
`4
`
`

`

`
`
`description in program description area 44 (claimed “third area”) also changes to
`
`show a description of the highlighted program.
`
`
`
`Fig. 3 (annotated below) depicts another version of the time-specific format
`
`(called “NEXT” guide) that displays program listings being broadcast at a future
`
`time, i.e., 8:00 p.m. Exhibit-1001, 5:42-44.
`
`Second Area
`
`Third Area
`
`First Area
`
`
`
`In this version, when the user selects a future program in program schedule area 46
`
`(claimed “first area”), a program description of the program highlighted by cursor
`
`48 in program schedule area 46 is displayed in program description area 44
`
`(claimed “third area”), but the currently-broadcast program remains displayed in
`
`PIP window 42 (claimed “second area”). Exhibit-1001, 5:45-52. In other words,
`
`the program description in the upper-right area changes as the user moves through
`
`
`
`5
`
`

`

`
`
`the program listings, without switching the currently-watched program in the
`
`upper-left area. This version corresponds to the independent claims of the ’864
`
`Patent.3
`
`
`Prosecution History
`The ’864 Patent was filed with six independent claims, only one of which
`
`included the limitation – switching a detailed program description in a third area
`
`without changing a current television program in a second area – that led to
`
`allowance. Exhibit-1010, pp.44-51. After the applicant and PTO went back and
`
`forth, Exhibits-1013-1018, the PTO issued an office action, Exhibit-1019,
`
`including § 103 rejections based on a combination of Rauch4 and Marshall, a
`
`combination of Rauch, Marshall, and Florin,5 and a combination of Rauch and
`
`Florin. The examiner asserted that claim 1, except for the “without changing”
`
`limitation, was taught by Rauch. Exhibit-1019, p.4. For this missing limitation,
`
`the examiner relied on Marshall. Exhibit-1019, p.4. Notably, the examiner did not
`
`
`3 The claims are not entitled to the priority dates of August 31, 1994 and
`
`September 27, 1994. Exhibit-1009, ¶31; Exhibit-1026; Exhibit-1027.
`
`4 U.S. Patent No. 5,731,844 (Exhibit-1002), also relied upon in this Petition.
`
`5 U.S. Patent No. 5,583,560 (Exhibit-1004), also relied upon in this Petition.
`
`
`
`6
`
`

`

`
`
`rely on Florin for this. In fact, the examiner erroneously relied on Florin for
`
`teaching the opposite; i.e., for teaching a PIP window with the current television
`
`program corresponding to the program highlighted in the listings. Exhibit-1019,
`
`p.8.
`
`The applicant filed a response, Exhibit-1020, but the PTO maintained the
`
`rejections. Exhibit-1021.
`
`The applicant filed a pre-appeal brief request, Exhibit-1022, arguing that
`
`Rauch and Marshall did not disclose switching the detailed program description
`
`without changing the currently broadcast program. Exhibit-1022, pp.4-6. The
`
`applicant admitted, however, that “[w]hen a program list is obtained in Florin, the
`
`currently viewed program 250 is highlighted in the program list, and remains in the
`
`display as a user highlights other listings.” Exhibit-1022, p.7 (emphasis added).
`
`The PTO reopened prosecution, Exhibit-1023, but before the examiner
`
`acted, the applicant filed an amendment thanking the examiner for a telephone call
`
`and stating that the claims were believed to be patentable. Exhibit-1011, p.10.
`
`This amendment canceled the only claims (8 and 30) that were rejected under the
`
`Rauch-Florin combination, and added the “without changing the video program
`
`displayed in the second area of the screen” to claim 29 (issued claim 15). The PTO
`
`issued a notice of allowance, Exhibit-1012, which cited the “without changing”
`
`
`
`7
`
`

`

`
`
`limitation in each of the independent claims as the reason for allowance. Exhibit-
`
`1012, p.6.
`
`Fourteen days after the notice of allowance was mailed, the applicant filed
`
`an RCE and an IDS citing more than one thousand documents. Exhibit-1024.
`
`Two days later, the examiner indicated that he considered all but eight. Exhibit-
`
`1025, p.15-52. The examiner issued another notice of allowance, again identifying
`
`the “without changing” limitation as the reason for allowance. Exhibit-1025, p.6.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B) AND STATEMENT OF RELIEF REQUESTED
` Claims for Which Review Is Requested and Grounds on Which
`Challenge Is Based
`References
`
`Claims Challenged
`
`Basis
`
`Rauch (Exhibit-1002), Bennington (Exhibit-
`1003)
`Rauch (Exhibit-1002), Florin (Exhibit-1004) § 103(a)
`
`§ 103(a)
`
`1-20
`
`1-20
`
`Young (Exhibit-1005), Florin (Exhibit-
`1004), Yoshino (Exhibit-1006)
`Young (Exhibit-1005), Florin (Exhibit-
`1004), Yoshino (Exhibit-1006), Cherrick
`(Exhibit-1007)
`
`
`§ 103(a)
`
`§ 103(a)
`
`1, 4-6, 9-10, 13-16,
`19-20
`2-3, 7-8, 11-12, 17-18
`
`
`
`8
`
`

`

`
`
` How Claims Are to Be Construed and Level of Skill
`1. How the Claims Are to Be Construed
`The ’864 Patent will expire on March 10, 20176, within 18 months from the
`
`filing of this Petition. Petitioner assumes that Patent Owner will file a motion
`
`under § 42.20 for district court-type claim construction under Phillips v. AWH
`
`Corp. If granted, each claim of the ’864 Patent shall be given its “ordinary
`
`meaning” – the meaning it would have had to a person of ordinary skill in the art at
`
`the time of the claimed invention in view of the intrinsic record.
`
`For this proceeding, the only term needing construction is “substantially all
`
`of a currently broadcast television program” in claims 6, 10, and 15. During
`
`prosecution of a continuation application of the ’864 Patent, this term was
`
`expressly defined as “most of the essential information of the television program”
`
`including the center part of its image. Exhibit-1008, p.8-9.
`
`
`
`6 Calculated by adding 20 years and PTA of 922 days (the PTA according to
`
`Patentee’s PTA petition filed October 29, 2013) to the earliest priority date
`
`(August 31, 1994).
`
`
`
`9
`
`

`

`
`
`2.
`Level of Ordinary Skill
`As stated in the ’864 Patent, the alleged invention relates to the field of
`
`television. Exhibit-1001, 1:25. A person of ordinary skill in this field would have
`
`had at least a bachelor’s degree in computer science, electrical engineering,
`
`computer engineering, or a similar discipline, and at least two to three years of
`
`experience or familiarity with electronic program guides, television video signal
`
`processing, graphical user interfaces, and associated microprocessor/computer
`
`software. Exhibit-1009, ¶28.
`
` How the Claims Are Unpatentable
`A detailed explanation of how claims 1-20 of the ’864 Patent are
`
`unpatentable under 35 U.S.C. § 103 appears below.
`
` Evidence Supporting the Challenge
`The evidence supporting Petitioner’s challenge is identified in the list of
`
`Exhibits above, including the Declaration of Anthony Wechselberger (Exhibit-
`
`1009).
`
`V.
`
`SUMMARY OF ARGUMENT
`The application that became the ’864 Patent sought to claim a method for
`
`simultaneously displaying a plurality of television program listings, a currently
`
`broadcast television program, and a detailed program description in three
`
`nonoverlapping areas of a screen. Exhibit-1010, p.44 (claim 1). After much back
`10
`
`
`
`

`

`
`
`and forth, a call took place between the examiner and applicant, Exhibit-1011,
`
`p.10, and the application was then allowed. The examiner identified the step of
`
`switching the detailed program description in the third area in response to a user
`
`input without changing the currently broadcast television program in the second
`
`area as the reason for allowance. Exhibit-1012, pp.7-8.
`
`The patent purportedly covers the basic idea of splitting up a display screen
`
`into three areas: a first area showing program listings; a second area showing a
`
`currently-broadcast video; and a third area showing a detailed program description,
`
`wherein the user can move through the program listings without changing the
`
`currently-broadcast video. It would have been obvious to a person of ordinary skill
`
`in the art (“POSA”) to combine the references to arrive at the claims.
`
`At least three different prior art combinations demonstrate the obviousness
`
`of the claims. Each combination illustrates a different way one would have arrived
`
`at the claims.
`
`VI. THE CLAIMS ARE UNPATENTABLE
`A petition for inter partes review must demonstrate “a reasonable likelihood
`
`that the petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). This Petition meets this threshold.
`
`
`
`11
`
`

`

`
`
`As demonstrated by a preponderance of the evidence, including the Declaration of
`
`Anthony Wechselberger, the prior art renders claims 1-20 obvious.
`
` This Petition Does Not Present Substantially the Same Arguments
`Presented During Prosecution
`Although all references relied on in this Petition are cited on the patent, none
`
`of the arguments herein were presented to or considered by the PTO.
`
`Regarding the Rauch-Bennington combination presented herein, Bennington
`
`was never applied during prosecution. Bennington differs from each reference the
`
`examiner combined with Rauch during prosecution. Regarding the Rauch-Florin
`
`combination presented below, this Petition presents the combination in a new light,
`
`different from that considered by the examiner. The examiner did not rely on
`
`Florin for the “without changing” limitation. Moreover, there is no evidence that
`
`the examiner considered modifying Rauch in view of Florin as described herein
`
`and illustrated in the following diagram (showing obvious modification to step 614
`
`of Rauch’s Fig. 6). Infra, VII.B.1.
`
`
`
`12
`
`

`

`
`
`MODIFIED
`
`STEP
`
`Continue displaying
`the program which
`the user was last
`viewing
`
`
`
`Regarding the Young-Florin-Yoshino combination, Young was never
`
`mentioned by the examiner. Although Yoshino was briefly mentioned in the
`
`second notice of allowance (Exhibit-1025, 7-8), Yoshino was never applied.
`13
`
`
`
`

`

`
`
`Lastly, Cherrick, which is relied on herein for some dependent claims, was never
`
`applied during prosecution.
`
`
`The Grounds Are Not Redundant
`The Rauch-Bennington combination is entirely different from the Rauch-
`
`Florin combination. Rauch-Bennington involves modifying Rauch’s change
`
`selection routine to add steps 604 and 606 to employ two separate modes
`
`(including a BROWSE mode as taught by Bennington), whereas the Rauch-Florin
`
`combination involves substituting Rauch’s step 614 with a step taught by Florin.
`
`The Young-Florin-Yoshino combination presents a third way of arriving at the
`
`claims completely different from the grounds based on Rauch. Young does not
`
`teach a PIP window in a second, nonoverlapping area as taught by Rauch.
`
`However, Young is stronger than Rauch for switching a program description in a
`
`third area without changing the currently tuned-to channel 56. Exhibit-1005, 13:5-
`
`7, 13:28-14:5.
`
`VII. SPECIFIC GROUNDS FOR UNPATENTABILITY
`Claims 1-20 of the ’864 Patent are unpatentable for the reasons discussed
`
`below.
`
`
`
`14
`
`

`

`
`
` Claims 1-20 Would Have Been Obvious Over Rauch in View of
`Bennington
`Rauch (Exhibit-1002) is a file wrapper continuation of an application filed
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`May 12, 1994, and prior art under pre-AIA 35 U.S.C. § 102(e).7 Rauch discloses a
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`program guide having three nonoverlapping areas including a schedule layout 200
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`(i.e., program listings area), a text display window 230, and a picture-in-graphics
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`display window 240. Exhibit-1002, Fig. 2; Exhibit-1025, p.6-7. As recognized by
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`the PTO, Rauch teaches all elements of the claims, but it changes the text display
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`window 230 and picture-in-graphics window 240 together. Exhibit-1002, 11:23-
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`44; Exhibit-1019, p.3-4. A more detailed explanation of Rauch appears in Exhibit-
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`1009, ¶¶37-42.
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`7 As a FWC, Rauch is entitled to priority to Rauch’s parent (Exhibit-1028).
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`Rauch’s parent supports Rauch’s claim 1:
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`Rauch’s Claim 1
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`preamble
`(a)
`(b)
`(c)
`(d)
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`Rauch’s parent Claim 1 and:
`3:5-19
`15:18-16:19, 3:11-14, 13:30-35
`9:31-10:13
`20:1-10
`20:24-21:11, 13:3-18, Fig. 2
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`15
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`Bennington (Exhibit-1003) was filed September 9, 1993, and thus is prior art
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`under pre-AIA 35 U.S.C. § 102(e). Bennington recognizes the need for a flexible
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`program schedule system that allows a user to view broadcast programs on a
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`portion of the screen while simultaneously viewing program schedule information
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`for other channels on the screen, without changing the channel. Exhibit-1003, 3:4-
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`9, 3:34-37. Bennington teaches multiple modes for displaying program schedule
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`information. Like Rauch, Bennington teaches a mode (“FLIP”) in which an
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`overlay containing a program description for a currently tuned TV program
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`changes as a user changes the TV program. Exhibit-1003, 10:6-34, 11:10-15.
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`Bennington, however, also teaches a BROWSE mode in which a user can continue
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`to view a TV program while scanning information for other programs. Exhibit-
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`1003, 9:7-10, 11:29-55. A more detailed explanation of Bennington appears in
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`Exhibit-1009, ¶¶43-49.
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`1.
`Independent Claim 1
`Independent claim 1 recites:
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`1. [1a] A method for displaying an electronic program
`guide in an interactive television system having a tuner
`and a screen, the method comprising:
`[1b] simultaneously displaying a plurality of
`television program listings in a first area of the screen, a
`currently broadcast television program received by the
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`tuner in a second, nonoverlapping area of the screen and
`a detailed program description of the currently broadcast
`television program displayed in the second area of the
`screen in a third nonoverlapping area of the screen; and
`[1c] switching the detailed program description
`displayed in the third area of the screen in response to a
`user input without changing the currently broadcast
`television program displayed in the second area of the
`screen.
`i. Rauch Teaches All But One Limitation of Claim 1
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`Rauch teaches all of claim 1, except for the “switching the detailed program
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`description . . . without changing the currently broadcast television program” in
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`[1c].8 Instead, Rauch changes both the detailed program description in window
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`230 and the television program in window 240 when a user scrolls through
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`schedule 200. Exhibit-1002, 2:31-39, 7:55-8:2.
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`As to [1a], Rauch teaches “[a] method for displaying an electronic program
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`guide in an interactive television system having a tuner and a screen.” Exhibit-
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`1002, 4:30-34, 5:47-52, 4:5-11, Figs. 1 (computer system including tuner 115 and
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`television 130), 2 (screen display), and 4-6 (method); Exhibit-1009, ¶81.
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`8 The examiner made this same assertion. Exhibit-1019, p.4.
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`17
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`As to [1b], Rauch teaches “simultaneously displaying a plurality of
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`television program listings in a first area of the screen, a currently broadcast
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`television program received by the tuner in a second, nonoverlapping area of the
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`screen and a detailed program description of the currently broadcast television
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`program displayed in the second area of the screen in a third nonoverlapping area
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`of the screen.” Exhibit-1002, 2:20-35, 3:7-19, 5:47-56, 7:1-43, 17:63-66, Fig. 2
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`(annotated below).
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`Rauch teaches simultaneously displaying the plurality of grid entries 212
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`containing the names of television programs (“television program listings”) in
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`schedule 200 (“first area”) of the screen, a currently tuned television program
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`(“currently broadcast television program”) received by tuner 115 in window 240
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`(“second, nonoverlapping area”), and a text string (“detailed program description”)
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`describing the currently selected program in window 230 (“third, nonoverlapping
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`area”). Exhibit-1009, ¶¶82-83.
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`18
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`Third Area
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`First Area
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`Second Area
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`The ’864 Patent does not define “detailed description of the currently
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`broadcast television program.” If the Patent Owner erroneously argues that it must
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`include certain specific information (e.g., start time and duration), such
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`information is already stored in Rauch’s program table 300 (Fig. 3), and it would
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`have been a mere design choice to include such information in window 230.
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`Exhibit-1009, ¶82.
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`As to [1c], Rauch teaches “switching the detailed program description
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`displayed in the third area of the screen in response to a user input.” Exhibit-1002,
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`2:31-39, 7:55-8:2, 11:2-10, 11:23-34. Exhibit-1009, ¶83. But, Rauch apparently
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`does not teach the “without changing” limitation.
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`19
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`ii. The Rauch-Bennington Combination Teaches Independent
`Claim 1
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`Bennington teaches a BROWSE mode in which program schedule
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`information in a graphical overlay 111 switches in response to a user input without
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`changing the currently-tuned television program. Exhibit-1003, 11:29-61. It
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`would have been obvious to a POSA to modify Rauch to continue switching the
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`text string (“detailed program description”) in window 230 (“third area”) in
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`response to the user scrolling through schedule 200 (“user input”), without
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`changing the reduced-size television program (“currently broadcast television
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`program”) in window 240 (“second area”). Exhibit-1009, ¶84. Thus, Rauch in
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`view of Bennington teaches “switching the detailed program description displayed
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`in the third area of the screen in response to a user input without changing the
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`currently broadcast television program displayed in the second area of the screen,”
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`as recited in [1c].
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`A POSA would have been motivated to modify Rauch to allow a user to
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`“simultaneously scan program schedule information for all channels while
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`continuously viewing at least one selected program on the television receiver” as
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`taught by Bennington. Exhibit-1003, 11:58-61. Bennington explains the
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`beneficial result of allowing a user
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`to view a broadcast program and
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`simultaneously interactively view program schedule information for other
`20
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`programs without changing the currently-tuned channel. Exhibit-1003, 3:4-9,
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`3:34-37. This result gives users flexibility and accommodates different user
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`preferences. A POSA would have recognized that this beneficial result would have
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`been achieved by modifying Rauch. Bennington itself recognized and address