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`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. 7,386,871
`Filing Date: November 26, 2002
`Issue Date: June 10, 2008
`Title: PROGRAM GUIDE SYSTEM WITH REAL-TIME DATA SOURCES
`________________
`
`
`Inter Partes Review Nos.: IPR2020-00796, IPR2020-00797, IPR2020-00798,
`IPR2020-00799, IPR2020-00812
`________________
`
`
`
`PETITIONER’S RANKING AND EXPLANATION OF MATERIAL
`DIFFERENCES BETWEEN CONCURRENTLY FILED PETITIONS
`
`
`
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`
`
`
`
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`
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`Pursuant to the Consolidated Trial Practice Guide (Nov. 2019) at 59-60,
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`Petitioner submits this notice of its ranking and explanation of the material
`
`differences between its petitions for inter partes review of U.S. Pat. No. 7,386,871
`
`(the “’871 Patent”), filed concurrently in IPR2020-00796, IPR2020-00797,
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`IPR2020-00798, IPR2020-00799, and IPR2020-00812. Separately, in each petition,
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`Petitioner addresses the Becton Dickinson factors that the Board has identified as
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`relevant to the Board’s discretion to deny institution under 35 U.S.C. § 325(d). See
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`id. at 62-63.
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`I.
`
`Ordering of the Petitions
`Petitioner believes that its petitions are all meritorious and justified in light of
`
`the positions Patent Owner may take. Petitioner requests that the Board consider the
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`petitions in the following order of A, B (B1 and B2), and C (C1 and C2):
`
`Rank
`A
`
`Petition
`IPR2020-00798 (Pet. 3
`of 5); Claims 1-56
`B1 IPR2020-00796 (Pet. 1
`of 5); Claims 1, 3-15,
`19-22, 34-35, 37-49, and
`53-56
`IPR2020-00797 (Pet. 2
`of 5); Claims 2, 16-18,
`23-33, 36, and 50-52
`
`B2
`
`Prior Art
`Base Reference: Knee
`Secondary Refs.: LaJoie, Brichta, Lett
`Base Reference: Schein
`Secondary Refs.: Stautner, Deis, Kwoh,
`Coleman
`
`Base Reference: Schein
`Secondary Refs.: Stautner, Hendricks,
`Deis
`
`C1
`
`C2
`
`IPR2020-00799 (Pet. 4
`of 5); Claims 1-22 and
`34-56
`IPR2020-00812 (Pet. 5
`
`Base Reference: Stautner
`Secondary Refs.: Deis, Lawler, Knee,
`LaJoie
`Base Reference: Stautner
`
`1
`
`
`
`
`
`
`II.
`
`of 5); Claims 23-33
`
`Secondary Refs.: Lett, Lawler, Knee
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`Succinct Explanation of Material Differences Between the Petitions
`While petition 3 relies on some prior art, Knee and LaJoie, considered during
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`prosecution and reexamination of the ’871 Patent, it critically includes highly
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`material non-cumulative non-cited additional prior art, Brichta and Lett. Brichta
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`provides key teachings perceived by the USPTO to be missing from Knee and LaJoie
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`that led to the confirmation of claims in the reexamination. The scenario presented
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`is much like that in Oticon Medical AB et al. v. Cochlear Limited, IPR2019-00975,
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`Paper 15 at 18-20 (PTAB Oct. 16, 2019) (precedential) (although the base and
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`secondary references were distinguished during prosecution, the same base reference
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`in combination with a new reference (Choi) was deemed material and non-
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`cumulative thereby warranting trial institution; failure to consider the new reference
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`was error counseling against a discretionary denial of institution).
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`While Petitioner is filing four other petitions concurrently, these petitions
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`constitute two pairs of petitions B(1 and 2) and C(4 and 5). Each petition pair
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`represents a claim-wise split of what would have been filed as single petition, but
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`for the large number of claims (56) and limitations of those claims.
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`Schein, asserted as the primary reference in the petition pair B(1 and 2), was
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`neither cited during prosecution of the ’871 Patent nor in the reexamination. Schein
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`represents vastly different disclosure from Knee evidencing (alone or in combination
`2
`
`
`
`
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`with other prior art) the unpatentability of the ’871 Patent claims in significantly
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`different ways. As one example, while Knee very clearly discloses the real-time
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`data called for by the claims, reliance is placed in petition 3 on LaJoie and Brichta
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`in combination with Knee to meet the claims’ requirements for database storage of
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`that real-time data together with program listings data. On the other hand, in
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`petitions pair B(1 and 2), Schein alone is cited as teaching both of these elements
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`(with Stautner asserted in combination with Schein in alternative obviousness
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`grounds). Schein has more extensive disclosure concerning database storage of
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`guide data (including real-time data).
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`Stautner, asserted as the primary reference in petition pair C(4 and 5), also
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`represents vastly different disclosure evidencing (alone or in combination with other
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`prior art) the unpatentability of the ’871 Patent claims in significantly different ways.
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`For example, in petition pair C(4 and 5), Stautner alone is cited as teaching the real-
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`time data and database storage aspects for which reliance is placed, in petition 3, on
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`LaJoie and Brichta in combination with Knee. As compared with Schein, Stautner’s
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`noncumulative disclosures are more explicit concerning the real-time nature of the
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`data that may be received and displayed by the guide, as well as integration of the
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`guide and its (single) database.
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`3
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`
`
`
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`III. Reasons the Board Should Exercise its Discretion to Institute Additional
`Petitions
`The ’871 Patent is asserted against Petitioner in litigation (as specified in the
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`petitions’ Mandatory Notices). That action has not been limited to particular
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`asserted claims. This has necessitated that Petitioner challenge all 56 claims. Thus,
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`neither of split petitions B(1 and 2) can be favored over the other, and neither of split
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`petitions C(4 and 5) can be favored over the other. The petitions are split because
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`of the large number of claims and should be instituted so that Petitioner may have
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`the opportunity to challenge all of the claims of the ’871 Patent on the related
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`grounds set forth in a respective split petition pair.
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`With its petition 3, Petitioner was able to present its challenge to all 56 claims
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`in a single petition. This was possible due to the very limited nature of the
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`differences between the claims and Knee, and given the existing prosecution and
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`reexamination record in this regard. This presents an opportunity for administrative
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`efficiency in the Board’s review—a significant consideration in Petitioner ranking
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`this petition first for the Board’s consideration.
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`Given the nature of petition 3 with its assertion of new prior art in combination
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`with prior art considered during prosecution and reexamination of the ’871 Patent,
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`fairness and reasonableness dictate that Petitioner also be afforded the opportunity
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`to challenge by IPR the patent on the very different grounds asserted in petition pair
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`B(1 and 2) and C(4 and 5), that rely primarily on noncumulative prior art (including
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`4
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`
`
`
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`new art—but only a single primary reference per petition) that was not a focus in
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`either the ’871 Patent prosecution or reexamination. Knee (primary reference of
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`petition 3) has overlapping inventorship with the ’871 Patent, and the ’871 Patent
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`purports to present an improvement over Knee. Schein, on the other hand, represents
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`highly material noncumulative prior art which, by all indications, was developed
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`independently of the ’871 Patent.
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`In view of the foregoing, the Board should consider all five concurrently filed
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`petitions and not exercise its discretion to deny institution of any one of them in view
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`of the others. At a minimum, petition 3, along with one of the split petition pairs
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`B(1 and 2) or C(4 and 5), should be instituted.
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`
`
`Dated: April 22, 2020
`
`By: /Frederic M. Meeker/
`
`Frederic M. Meeker
`Reg. No. 35,282
`Banner & Witcoff, Ltd.
`1100 13th Street, NW
`Suite 1200
` Washington, DC 20005
`
`5
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`
`
`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.105, I hereby certify that I caused a true and correct
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`copy of
`
`the PETITIONER’S RANKING AND EXPLANATION OF
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`MATERIAL DIFFERENCES BETWEEN PETITIONS to be served via FedEx
`
`Priority Overnight on April 22, 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:
`
`
`jasone-PTAB@sternekessler.com
`PTAB@sternekessler.com
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`
`
`
`
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`Dated: April 22, 2020
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`
`
`
`
`
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`
`
`By: /Frederic M. Meeker/
`
`Frederic M. Meeker
`Reg. No. 35,282
`
`6
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