`
`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. 7,200,855
`Filing Date: May 24, 2001
`Issue Date: April 3, 2007
`Title: METHOD AND APPARATUS OF MULTIPLEXING A PLURALITY OF
`CHANNELS IN A MULTIMEDIA SYSTEM
`
`________________
`
`Inter Partes Review Nos.: IPR2020-00787, IPR2020-00788, IPR2020-00789
`________________
`
`
`PETITIONER’S RANKING OF PETITIONS AND EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`
`
`Pursuant to the July 2019 update to the America Invents Act (AIA) Trial
`
`Practice Guide published by the USPTO, Petitioner submits this notice of its ranking
`
`of its petitions for inter partes review of U.S. Patent No. 7,200,855 filed in IPR2020-
`
`00787, IPR2020-00788, and IPR2020-00789, and an explanation of the material
`
`differences between the petitions. See “TRIAL PRACTICE GUIDE UPDATE
`
`(July 2019)” at 26-28.
`
`Ordering of Petitions. Petitioner believes that its petitions are all meritorious
`
`and justified in light of the positions Patent Owner may take. At this stage, Petitioner
`
`requests that the Board consider the petitions in the following order:
`
`Rank
`
`Petition
`
`Primary Reference
`
`A
`
`B
`
`C
`
`IPR2020-00787 (Petition 1 of 3) Hicks (Ex. 1005)
`
`IPR2020-00788 (Petition 2 of 3) Rakib (Ex. 1105)
`
`IPR2020-00789 (Petition 3 of 3) Bigham (Ex. 1208)
`
`Below are some of the material differences between the petitions:
`
`(1) Differences between prior art in petitions: The prior art combinations of
`
`the three petitions teach the’855 Patent claims, but in different ways. For example:
`
`a) In general: The three petitions disclose different systems for multiplexing
`
`a plurality of channels in a multimedia system. The obviousness grounds across the
`
`petitions also provide different motivations to combine different references.
`
`1
`
`
`
`
`
`
` In Petition 1, Hicks teaches a Broadband Multimedia Gateway that receives
`
`audio/video channels from sources (cable TV, satellite dish, DVD), and
`
`multiplexes the channels over a network to a plurality of set-top boxes using
`
`different protocols and media. PCI (Ex. 1006) is combined for teaching an
`
`implementation of Hicks’s shared data bus that communicates data in frames.
`
` In Petition 2, Rakib discloses a gateway that delivers requested channels to client
`
`devices, and uses a Firewire bus to process channel requests and deliver content.
`
`Anderson (Ex. 1107) is combined for teaching details of Firewire. Crosby (Ex.
`
`1106) teaches a conventional satellite receiver for use in Rakib’s gateway.
`
` In Petition 3, Bigham (Ex. 1208) distributes multiplexed broadcast programming
`
`to a plurality of users using an Asynchronous Transfer Mode communication
`
`network. Blahut (Ex. 1209) is combined for its shared bus communication
`
`protocol (Time Division Multiplexing) where a plurality of user channel
`
`selections from different end devices are transmitted as individual bursts,
`
`assigned to a respective time slot, within a multiplexed frame.
`
`b) Monitoring shared bus at specific time intervals: The independent claims
`
`all recite variations of “monitoring a shared bus at specific time intervals, identifying
`
`[a data frame/packet] … to recapture … [the channel selection command/request].”
`
`The three petitions treat these variations in different ways because they each rely on
`
`prior art using different bus protocols.
`
`2
`
`
`
`
`
`
` Petition 1 relies on time intervals delineated by PCI bus clock and frame signals
`
`and cites PCI frames and IP packets for the claimed frames and packets.
`
` Petition 2 relies on time intervals derived (without a clock) from Firewire (IEEE
`
`1394) bus data and strobe signals and cites Ethernet frames and IP packets for the
`
`claimed frames and packets.
`
` Petition 3 relies on ATM network time intervals synchronized to downstream
`
`transmission of frames (e.g., an upstream frame is received two frame periods
`
`after a downstream frame is transmitted) and cites ATM upstream frames and
`
`bursts for the claimed frames and packets.
`
`c) Channel selection command/request types: Claims 1, 19, 38, and 54, recite
`
`that each channel selection command is one of several types, such as a “last,” “next,”
`
`“previous,” or “favorite” channel selection command, or a “selection from a user-
`
`defined list.” For this limitation, Petition 1 relies on Hicks and/or Usui (Ex.
`
`1012/1212), Petition 2 relies on Crosby (Ex. 1106), and Petition 3 relies on Usui.
`
`The prior art relied upon in the three respective petitions, therefore, is not
`
`cumulative or substantially similar. Even if Patent Owner argues that some aspects
`
`of the prior art are similar, “it is axiomatic that references used to examine the
`
`patentability of and the references presented in a Petition challenging the same patent
`
`will have some similarities.” IPR2019-00239, Paper 15 at 11.
`
`3
`
`
`
`
`
`
`(2) Differences from art applied by examiner during prosecution: The
`
`examiner applied a combination of U.S. Patent No. 6,493,873 to Williams and U.S.
`
`Publication No. 2004/0172658 (“Rakib ʼ658”) during examination. Rakib (Ex.
`
`1105), asserted in Petition 2, is a continuation-in-part of Rakib ʼ658’s parent. The
`
`applicant argued that the particular configuration in Rakib ʼ658 asserted by the
`
`examiner did not monitor packets on a shared bus to identify a packet containing at
`
`least a portion of a channel selection command. In Petition 2, a different
`
`configuration (with different shared bus) in Rakib is relied on, and Anderson is
`
`added to provide details of how that configuration in Rakib monitors the shared bus.
`
` (4) New prior art: All prior art references (primary and secondary) relied
`
`upon in Petitions 1 and 3 were never cited or considered during prosecution. Petition
`
`2 also relies only on references that were not cited or considered during prosecution,
`
`however Rakib is a continuation-in-part of Rakib ’658’s parent that the examiner
`
`asserted during prosecution.
`
`(3) Priority date: Each of the Petitions 1-3 rely on at least one base reference
`
`(Hicks in Petition 1; Rakib in Petition 2; Blahut in Petition 3) that qualifies as prior
`
`art under at least one of §§ 102(a) or 102(e), meaning that Patent Owner could
`
`attempt to antedate them. Moreover, Petitions 1 and 2 rely on non-patent literature
`
`documents (PCI and Anderson), which Patent Owner could try to disqualify as prior
`
`art.
`
`4
`
`
`
`
`
`
`A summary of differences between the petitions is provided below.
`
`Pet. Primary
`Ref(s)
`Hicks
`
`PCI
`
`1
`
`2
`
`3
`
`Prior Art
`Basis
`§ 102(e)
`§ 102(a)
`§ 102(b)
`§ 102(e)
`
`Earliest Date
`
`2000-12-28
`2001-04-17
`1999-02
`1999-08-10
`
`Cited/Applied
`Diligence
`In
`Required to
`Prosecution
`Antedate
`About 5 months Not Cited
`Under 1 month
`NA
`Over 21 months
`
`Not Cited
`
`About 11 months
`
`Not Cited (but
`related to
`applied
`reference)
`NA
`Not Cited
`NA
`Not Cited
`Over 14 months Not Cited
`
`Rakib
`
`§ 102(e)
`
`2000-06-23
`
`Anderson § 102(b)
`§ 102(b)
`Bigham
`§ 102(e)
`Blahut
`
`1999
`1997-10-14
`2000-02-29
`
`In view of the material differences shown above, the Board should consider
`
`all three petitions and not exercise its discretion to deny institution in an IPR
`
`potentially impacting recording systems used by millions of consumers.
`
`
`Dated: April 24, 2020
`
`By: /Frederic M. Meeker/
`
`Frederic M. Meeker
`Reg. No. 35,282
`Customer No. 71867
`Banner & Witcoff, Ltd.
`1100 13th Street, NW
`Suite 1200
`Washington, DC 20005
`(202) 824-3000
`(202) 824-3001
`fmeeker@bannerwitcoff.com
`
`5
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.105, I hereby certify that I caused a true and correct
`
`copy of the PETITIONER’S PETITION RANKING AND EXPLANATION OF
`
`MATERIAL DIFFERENCES BETWEEN PETITIONS to be served via FedEx
`
`Priority Overnight on April 24, 2020, on the following:
`
`HALEY GUILIANO LLP
`75 BROAD STREET
`SUITE 1000
`NEW YORK, NY 10004
`
`
`An electronic courtesy copy is concurrently being e-mailed to the following:
`
`
`By: /Frederic M. Meeker/
`
`Frederic M. Meeker
`Reg. No. 35,282
`
`6
`
`
`jasone-PTAB@sternekessler.com
`PTAB@sternekessler.com
`
`
`
`
`
`
`Dated: April 24, 2020
`
`
`
`
`
`
`
`
`
`
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