Case: 20-1994 Document: 74 Page: 1 Filed: 04/19/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ROVI GUIDES, INC.,
Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2020-1994
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00231.
______________________
Decided: April 19, 2022
______________________
MICHAEL E. JOFFRE, Sterne Kessler Goldstein & Fox,
PLLC, Washington, DC, argued for appellant. Also repre-
sented by KRISTINA CAGGIANO KELLY, JASON DANIEL
EISENBERG, WILLIAM MILLIKEN, RYAN CHARLES
RICHARDSON.
MONICA BARNES LATEEF, Office of the Solicitor, United
Case: 20-1994 Document: 74 Page: 2 Filed: 04/19/2022
2 ROVI GUIDES, INC. v. VIDAL
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by PETER J. AYERS,
KAKOLI CAPRIHAN, THOMAS W. KRAUSE, FARHEENA
YASMEEN RASHEED.
______________________
Before MOORE, Chief Judge, TARANTO and HUGHES,
Circuit Judges.
MOORE, Chief Judge.
Rovi appeals from an inter partes review final written
decision. See Comcast Cable Commc’ns, LLC v. Rovi
Guides, Inc., No. IPR2019-00231,
2020 WL 2305288,
(P.T.A.B. May 8, 2020) (Board Decision). In that decision,
the Patent Trial and Appeal Board held that all claims of
U.S. Patent No. 9,369,741 would have been obvious over
Sie 1 alone or in combination with other references. For the
following reasons, we reverse.
I
Rovi owns the ’741 patent, which relates to an interac-
tive television system that supports network-based or local
personal video recorder functions. Interactive television
systems can, for example, allow users to record or playback
broadcast television programs by pressing buttons on their
remote controls. And the ’741 patent purports to claim an
advance in those systems. For purposes of this appeal, the
parties treat claim 1 as representative:
A system comprising:
storage circuity for storing archived copies
of videos;
control circuitry configured to:
1 U.S. Patent Publication No. 2002/0095510 A1.
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ROVI GUIDES, INC. v. VIDAL 3
transmit a video to a plurality of
user equipment, wherein the trans-
mitting begins at a start time and
ends at an end time;
access a database to determine
whether an archived copy corre-
sponding to the video is available to
a user after the start time;
based on determining that the ar-
chived copy is available to the user
after the start time, cause an indi-
cation corresponding to the ar-
chived copy to be displayed
simultaneously with the video after
a specified time after the start time
but before the end time, wherein
the specified time was configured
prior to the start time;
receive a user response to the indi-
cation that is displayed; and
based on the received user re-
sponse, retrieve, from the storage
circuitry the archived copy.
(emphasis on available-to-a-user limitation).
After Rovi filed an International Trade Commission
complaint against Comcast, Comcast petitioned for inter
partes review. Comcast argued claim 1 would have been
obvious over Sie alone or in combination with other refer-
ences. For the available-to-a-user limitation, however,
Comcast relied exclusively on the teachings in Sie. J.A.
233–35. Specifically, Comcast argued that Sie’s system de-
termines whether a broadcast program is a club program,
i.e., is stored in a database, and if so, it sends all viewers a
club notification symbol. J.A. 232–35.
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4 ROVI GUIDES, INC. v. VIDAL
Rovi, in its patent owner response, challenged Com-
cast’s reading of claim 1. It drew a distinction between a
determination of “general availability”—that an archived
copy is available to some users—and a determination of
present “availability . . . to a specific user.” J.A. 494 (em-
phasis added). Only the latter determination, in Rovi’s
view, meets the available-to-a-user requirement of claim 1.
See J.A. 491. And Rovi noted the sequence of steps in the
claim language: the determination of availability to the
user must occur before an indication is sent to that user.
Id.
Based on these claim construction points, Rovi argued
that Sie does not teach the available-to-a-user limitation.
See J.A. 499. It explained how Sie’s club-program determi-
nation is merely a determination of general availability; a
broadcast program need only be available for some users,
rather than available to a specific user, to qualify as a club
program. J.A. 491. Rovi acknowledged Sie does teach a
determination of availability to a specific user: checking
whether users are club members. But it argued that deter-
mination occurs after any notification is sent, failing to
teach the sequence of steps recited in claim 1. In a footnote,
Rovi explained how this holds true even in Sie’s promo-
tional and complimentary access embodiments, i.e., when
Sie provides club-member benefits to non-club members.
J.A. 493 n.5.
The Board agreed with Comcast, finding Sie teaches
the available-to-a-user limitation. It first held that this
limitation does not require prepayment; that is, the claim
does not require users to pay for access to archived pro-
grams before a club notification is sent. Board Decision at
*5. The Board, therefore, rejected Rovi’s arguments about
the available-to-a-user limitation, which it viewed as con-
tingent on a prepayment requirement. See, e.g., id. at *15.
In the alternative, it relied on Sie’s promotional and com-
plementary embodiments because those embodiments do
not require payment at all. Id. Ultimately, the Board held
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ROVI GUIDES, INC. v. VIDAL 5
claim 1 would have been obvious over Sie. Rovi appeals.
Andrew Hirshfeld, who is preforming the duties of the Di-
rector of the U.S. Patent and Trademark Office, intervened
in defense of the Board’s decision. We have jurisdiction un-
der
28 U.S.C. § 1295(a)(4).
II
Rovi argues that substantial evidence does not support
the Board’s finding that Sie teaches the available-to-a-user
limitation. In part, this argument is based on Rovi’s un-
derstanding of the scope of that limitation. We, therefore,
start with claim construction. Then, we turn to whether a
reasonable fact finder could find that Sie teaches the avail-
able-to-a-user limitation in light of our construction.
A
We review the Board’s claim constructions, which do
not rely on extrinsic evidence, de novo. See Bradium Techs.
LLC v. Iancu,
923 F.3d 1032, 1042 (Fed. Cir. 2019). For
this inter partes review appeal, 2 we give claim terms their
broadest reasonable interpretation in light of the specifica-
tion. See
37 C.F.R. § 42.100(b) (2018).
The available-to-a-user limitation requires the claimed
system be configured to check whether an archived pro-
gram is available to a specific user. A broader construction,
which would only require the system be configured to check
whether an archived program exists, would render the “to
the user” language meaningless. See Merck & Co. v. Teva
Pharms. USA, Inc.,
395 F.3d 1364, 1372 (Fed. Cir. 2005)
(“A claim construction that gives meaning to all the terms
of the claim is preferred over one that does not do so.”). If
the phrase “to the user” were stricken, claim 1 would still
2 Because Comcast filed its petition before November
13, 2018, the broadest reasonable interpretation standard
applies. See
37 C.F.R. § 42.100(b).
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6 ROVI GUIDES, INC. v. VIDAL
require a system configured to check whether an archived
copy exists. That requirement follows from the “determine
whether an archived copy corresponding to [a] video is
available” limitation. So the “to a user” phrase in claim 1,
presumably, must add something more. Indeed, the sys-
tem must not only check whether an archived copy exists;
it must ensure the specific user has access to that copy.
Also, claim 1 recites a system configured to perform an
availability check before displaying an indication corre-
sponding to the archived copy. That system first deter-
mines whether an archived copy is available to a user, and
then, “based on” that determination, the system displays
an indication. Thus, the availability determination must
occur before the indication is displayed. Otherwise, the dis-
play step would not be “based on” the availability check.
B
These two points require reversal of the Board’s obvi-
ousness holding. Obviousness is a question of law with un-
derlying fact findings, including the scope and content of
the prior art. See Bradium Techs., 923 F.3d at 1042. We
review the Board’s factual findings for substantial evidence
and the Board's legal conclusion on obviousness de novo.
Id.
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ROVI GUIDES, INC. v. VIDAL 7
No reasonable fact finder could find that Sie’s club no-
tification system 3 teaches the available-to-a-user limita-
tion. Sie’s system checks for availability to a specific user
only after the club notification is displayed. Figure 7 de-
picts the order of steps performed in Sie:
3 Because Comcast’s petition relied only on this sys-
tem to teach the available-to-a-user limitation, J.A. 233–
35, we need not consider other portions of Sie. See SAS
Inst., Inc. v. Iancu,
138 S. Ct. 1348, 1357 (2018) (“[T]he pe-
titioner’s contentions . . . define the scope of the litigation
all the way from institution through to conclusion.”).
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8 ROVI GUIDES, INC. v. VIDAL
Step 760, illustrated as element A, represents Sie’s notifi-
cation service. Sie ¶ 78; see also Sie at Fig. 7A (detailing
that service). That step occurs, if at all, before the system
determines whether subscription playback is authorized
for a user (step 744), whether to provide a user with pro-
motional access (step 748), and whether to provide a user
with free access (step 752). Put simply, the notification ser-
vice precedes any determination of availability to a specific
user. But the claim language requires the indication (i.e.,
the notification) to be based on a determination of availa-
bility to a specific user. Thus, no reasonable finder of fact
could find Sie teaches the available-to-a-user limitation.
And the Board erred in holding claim 1 would have been
obvious based on a finding to the contrary.
III
For the foregoing reasons, we reverse. We need not,
therefore, consider Rovi’s arguments based on Comcast’s
admissions or the Administrative Procedure Act.
REVERSED
COSTS
Costs to Rovi.
