PTAB sides with Comcast in TiVo IPR
The US Patent Trial and Appeal Board (PTAB) last week delivered a blow to entertainment group TiVo Corporation in its ongoing patent dispute with telecoms company Comcast Corporation.
In a final written decision delivered (pdf) on Friday, September 7, the PTAB said that Comcast had shown claims 1 to 16 of a TiVo patent to be unpatentable “by a preponderance of the evidence”.
Comcast had petitioned the PTAB for an inter partes review (IPR) of patent number 9,172,987 B2, called “Methods and systems for updating functionality of a set-top box using mark-up language”.
The patent, which describes techniques related to interactive TV guide systems (such as screen layout and functionality), is owned by Rovi Guides.
Rovi acquired TiVo in 2016, and the resulting entity became known as TiVo.
Both Comcast and TiVo offer entertainment services through TV set-top boxes.
In the IPR, Comcast challenged the patentability of claims 1 to 16 of the ‘987 patent.
Comcast argued that the patent was obvious in light of multiple earlier-registered patents, including one filed in 1998 (number 6,201,538), which covers the layout of graphics and information in a TV environment.
According to Comcast, the earlier-registered patents would have taught or suggested the limitations required by the first 16 claims of the ‘987 patent, and a person skilled in the art would have combined the teachings of these patents.
TiVo opposed the allegations of obviousness, and the PTAB said that both parties provided expert declaration testimony in support of their positions.
The PTAB agreed with Comcast’s “well-reasoned” testimony, which was “rooted in the teachings” of the prior art. The board noted that the telecoms company offered specific citations to elements of the earlier-registered patents to prove its position.
As Comcast had argued, the PTAB found that someone with ordinary skill in the art would have had the motivation to combine the teachings proposed by Comcast and they would have had a reasonable expectation of success in doing so.
The board concluded that the earlier-registered patents teach things related to set-top box graphics and displays which are then “recited” in claims 1 to 16 of the ‘987 patent, rendering them unpatentable.
A spokesperson for Comcast said the company is pleased that the PTAB found the patent to be invalid, and it is looking forward to hearing the board's decisions in Comcast's challenges against other patents owned by TiVo.
This is the latest development in the ongoing battle between Comcast and TiVo.
At the start of the year, TiVo filed lawsuits against Comcast in multiple US states. The entertainment group alleged that Comcast had infringed a number of patents related to interactive programme guides, digital storage, transport control interface, and content access.
In April 2016, Rovi (as it was known then) brought an enforcement action against Comcast at the US International Trade Commission (ITC). The ITC found in November 2017 that Comcast’s set-top box infringed two of the patents in question.
In March, in a separate matter, the ITC said it would investigate Comcast based on TiVo’s allegations of patent infringement.
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