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

Docket IPR2019-00224, Patent Trial and Appeal Board (Nov. 10, 2018)
Barbara Parvis, Kalyan Deshpande, Kara Szpondowski, Karl Easthom, Kevin Cherry, Lynne Pettigrew, Scott Bain, Sheila McShane, William Fink, presiding
Case TypeInter Partes Review
Patent7827585
Patent Owner Rovi Guides, Inc.
Petitioner Comcast Cable Communications, LLC
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51 Other fed circuit mandate: Dismissal and mandate

Document IPR2019-00224, No. 51 Other fed circuit mandate - Dismissal and mandate (P.T.A.B. Aug. 4, 2022)
United States Court of Appeals for the Federal Circuit
ANDREW HIRSHFELD, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019- 00224.
Upon consideration of the parties’ joint motion to vol- untarily dismiss this appeal pursuant to Federal Rule of Appellate Procedure 42(b),
ROVI GUIDES, INC. v. HIRSHFELD (1) The motion is granted to the extent that the appeal is withdrawn.
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50 Order on Motion: Order on Motion

Document IPR2019-00224, No. 50 Order on Motion - Order on Motion (P.T.A.B. Nov. 10, 2021)
1 As set forth in more detail in the Appendix, certain proceedings involve a different Patent Owner, but Rovi Guides, Inc. is a real party-in-interest.
On September 2, 2021, Patent Owner filed a Request for Rehearing by the Director in each proceeding.
Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” The Board already has proceeded to a final written decision in each of these cases.
The United States Court of Appeals for the Federal Circuit issued orders in the appeals of each of the above-referenced cases, remanding the cases to the Office “for the limited purpose of allowing the parties to seek further action by the Director.” See, e.g., Rovi Guides, Inc. v. Hirshfeld, No. 2020-2111, ECF No. 50, at 2 (Aug. 3, 2021).
It is ORDERED that Patent Owner’s request for authorization to file a motion to terminate, vacate, and keep the Settlement Agreement confidential the above-listed proceedings is denied.
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49 Order Other: Order Denying Request for Director Review

Document IPR2019-00224, No. 49 Order Other - Order Denying Request for Director Review (P.T.A.B. Oct. 29, 2021)
Before ANDREW HIRSHFELD, Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The Office has received a request for Director review of the Final Written Decision in each of the above-captioned cases.
The request was referred to Mr. Hirshfeld, Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
It is ORDERED that the request for Director review in each case is denied; and FURTHER ORDERED that the Patent Trial and Appeal Board’s Final Written Decision in each case is the final decision of the agency.
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46 Final Decision: Judgment Final Written Decision Determining All Challenged Claims Unpatentable

Document IPR2019-00224, No. 46 Final Decision - Judgment Final Written Decision Determining All Challenged Claims Unpatentable (P.T.A.B. May. 27, 2020)
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 36 IPR2019-00224 Patent 7,827,585 B2 operations – recording multiple ...
44 IPR2019-00224 Patent 7,827,585 B2 Relying on the testimony of Mr. Tinsman, Patent Owner argues “none of Browne’s three program erasure options as shown above in reproduced FIG.
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44 Hearing Transcript: Hearing Transcript

Document IPR2019-00224, No. 44 Hearing Transcript - Hearing Transcript (P.T.A.B. Mar. 30, 2020)
None of that's in 10 Case IPR2019-00224 Patent 7,827,585 B2 the patent.
None of this is supported by the specification, in fact the specification contradicts this.
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43 Decision Denying Request for Rehearing Patent Owner: Order Denying Patent Owners Requests on Rehearing

Document IPR2019-00224, No. 43 Decision Denying Request for Rehearing Patent Owner - Order Denying Patent Owners Requests on Rehearing (P.T.A.B. Mar. 25, 2020)
In each proceeding, Patent Owner further filed a Petition Under 37 C.F.R. § 1.181(a)(3) Invoking the Supervisory Authority of the Director.
In its Requests for Rehearing, Patent Owner argues as follows: (1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req.
6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15).
LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues.
that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req.
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39 Notice: Decision on Petition

Document IPR2019-00224, No. 39 Notice - Decision on Petition (P.T.A.B. Feb. 18, 2020)
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