Rovi Guides, Inc.Download PDFPatent Trials and Appeals BoardJul 21, 2020IPR2019-00555 (P.T.A.B. Jul. 21, 2020) Copy Citation Trials@uspto.gov Paper No. 37 571-272-7822 Date: July 21, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ COMCAST CABLE COMMUNICATIONS, LLC, Petitioner, v. ROVI GUIDES, INC., Patent Owner. ____________ IPR2019-00555 Patent 9,668,014 B2 ____________ Before KARL D. EASTHOM, LYNNE E. PETTIGREW, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a) IPR2019-00555 Patent 9,668,014 B2 2 I. INTRODUCTION Comcast Cable Communications, LLC, (“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 9,668,014 B2 (Ex. 1101, “the ’014 Patent”). Paper 2 (“Pet.”). Rovi Guides, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Upon consideration of the parties’ contentions and supporting evidence, we instituted an inter partes review pursuant to 35 U.S.C. § 314, as to the challenged claims of the ’014 Patent. Paper 11 (“Inst. Dec.”). After institution, Patent Owner filed a Patent Owner Response (Paper 15, “Resp.”); Petitioner filed a Reply (Paper 25, “Reply”); and Patent Owner filed a Sur-Reply (Paper 31, “Sur-Reply”). A transcript of the hearing held on May 1, 2020 has been entered into the record as Paper 36 (“Tr.”). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has demonstrated by a preponderance of evidence that claims 1–20 of the ’014 Patent are unpatentable. II. BACKGROUND A. Real Parties-in-Interest Petitioner identifies as the real parties-in-interest the following: Comcast Corp.; Comcast Business Communications, LLC; Comcast Cable Communications Management, LLC; Comcast Cable Communications, LLC; Comcast Financial Agency Corp.; Comcast Holdings Corp.; Comcast Shared Services, LLC; Comcast STB Software I, LLC; Comcast of Santa IPR2019-00555 Patent 9,668,014 B2 3 Maria, LLC; and Comcast of Lompoc, LLC. Pet. 1. Patent Owner names as the real parties-in-interest Rovi Guides, Inc. and Rovi Corp. Paper 3, 1. B. Related Matters As required by 37 C.F.R. § 42.8(b)(2), each party identifies a judicial matter that would affect, or be affected by, a decision in this proceeding. In particular, the parties inform us that the ’014 Patent is asserted in Rovi Guides, Inc. v. Comcast Corp., No. 2-18-cv-00253 (C. D. Cal. filed Jan. 10, 2018). Pet. 1; Paper 3, 1. The parties also inform us that the ’014 Patent was previously, but is no longer, asserted in Digital Video Receivers and Related Hardware and Software Components, Inv. No. 337-TA-1103 (ITC filed Feb. 8, 2018). Id. Additionally, Petitioner filed four petitions, including the instant Petition, each requesting inter partes review of claims 1–20 of the ’014 Patent. We exercised our discretion under 35 U.S.C. § 314 and denied institution of inter partes review in the other three of those proceedings. See, e.g., Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2019-00556, Paper 11 (PTAB July 24, 2019) (Decision Denying Institution). C. The ’014 Patent The ʼ014 Patent is directed to a media guidance application that identifies and stores portions of media assets based on user commands. Ex. 1101, 1:24–26. Figure 5 of the ’014 Patent is reproduced below. IPR2019-00555 Patent 9,668,014 B2 4 Figure 5 of the ’014 Patent, above, illustrates user device 500 on which the media guidance application has been implemented. Id. at 21:41–46. User device 500 has microphone 502 for receiving user input and a display. Id. at 21:50–56, 22:1–3. Command 504 is received by microphone 502. Id. at 21:57. Storage confirmation message 506 and media asset identifier confirmation message 508 are shown on the display of user device 500. Id. at 22:1–7, Fig. 5. IPR2019-00555 Patent 9,668,014 B2 5 D. Illustrative Claim Petitioner challenges claims 1–20 of the ’014 Patent. Pet. 1. Claims 1 and 11 are independent claims. Claims 2–10 and 12–20 depend, directly or indirectly, from claims 1 and 11, respectively. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for resolving a voice command for a media asset, where the voice command does not expressly name the media asset, the method comprising: receiving a voice command from a user, wherein the voice command comprises a media asset identifier corresponding to a media asset; accessing a database comprising a plurality of known media asset identifiers; comparing the media asset identifier with each known media asset identifier of the plurality of known media asset identifiers; determining, based on the comparing, whether the media asset identifier completely matches any known media asset identifier of the plurality of known media asset identifiers; based on determining that the media asset identifier does not completely match any known media asset identifier of the plurality of known media asset identifiers, calculating a degree of similarity between the media asset identifier and each known media asset identifier of the plurality of known media asset identifiers; determining that the degree of similarity for a respective known media asset identifier of the plurality of known media asset identifiers exceeds a threshold; based on determining that the degree of similarity for the respective known media asset identifier exceeds the threshold, selecting the respective known media asset identifier to be a suggested media asset identifier; and IPR2019-00555 Patent 9,668,014 B2 6 providing to the user an option to confirm that the suggested known media asset identifier corresponds to the media asset. Ex. 1101, 48:47–49:10. E. Evidence Relied Upon Petitioner relies on the following references: U.S. Patent No. 8,316,394 B2, filed December 10, 2009, issued November 20, 2012 (Ex. 1104, “Yates”); DANIEL JURAFSKY & JAMES H. MARTIN, SPEECH AND LANGUAGE PROCESSING, AN INTRODUCTION TO NATURAL LANGUAGE PROCESSING, COMPUTATIONAL LINGUISTICS, AND SPEECH RECOGNITION (Prentice-Hall, Inc. 2000) (Ex. 1107, “Jurafsky”); U.S. Patent Application Publication No. US 2008/0319990 A1, filed June 11, 2008, published December 25, 2008 (Ex. 1123, “Taranenko”); WALLACE WANG, BEGINNING PROGRAMMING FOR DUMMIES (John Wiley & Sons, Inc. 4th ed. 2007) (Ex. 1116, “Wang”); JÉRÔME EUZENAT & PAVEL SHVAIKO, ONTOLOGY MATCHING (Springer-Verlag 2007) (Ex. 1106, “Euzenat”); Affidavit of Mr. Wade Warren dated September 27, 2018 including a series of web pages (Ex. 1105, “Alberca”); and U.S. Patent Application Publication No. US 2010/0333137 A1, filed June 30, 2009, published December 30, 2010 (Ex. 1109, “Hamano”). Additionally, Petitioner relies on the Declaration of Dr. Edward A. Fox in support of the Petition (Ex. 1102) and the Declaration of Dr. Fox in support of Petitioner’s Reply (Ex. 1134). Patent Owner relies on the Declaration of Mr. John Tinsman in Support of Patent Owner’s Preliminary IPR2019-00555 Patent 9,668,014 B2 7 Response (Ex. 2001) and the Declaration of Mr. Tinsman in Support of Patent Owner’s Response (Ex. 2005). F. Grounds Asserted Petitioner asserts the grounds of unpatentability below. Pet. 13–14. Claim Challenged 35 U.S.C. § Reference(s)/Basis 1, 4, 6–8, 11, 14, 16–18 102 Yates 1, 4, 6–8, 11, 14, 16–18 103 Yates 1, 4, 6–8, 11, 14, 16–18 103 Yates, Jurafsky 2, 12 103 Yates, Taranenko, Wang 2, 12 103 Yates, Jurafsky, Taranenko, Wang 2, 12 103 Yates, Euzenat, Wang 2, 12 103 Yates, Jurafsky, Euzenat, Wang 2, 12 103 Yates, Alberca, Wang 2, 12 103 Yates, Jurafsky, Alberca, Wang 3, 13 103 Yates, Jurafsky, Wang 5, 9, 15, 19 103 Yates, Hamano 5, 9, 15, 19 103 Yates, Jurafsky, Hamano 10, 20 103 Yates, Wood 10, 20 103 Yates, Jurafsky, Wood Table 1 of this Decision, above, summarizes the grounds in the instant proceeding. IPR2019-00555 Patent 9,668,014 B2 8 Petitioner asserts that the earliest effective filing date of the ’014 Patent is March 30, 2015. Pet. 14. Petitioner further asserts the references qualify as prior art at least under 35 U.S.C. § 102(a)(1). Id. Patent Owner does not challenge Petitioner’s contentions in that regard. See generally Resp. We are persuaded by Petitioner’s unopposed showing. Because the challenged claims of the ’014 Patent have an effective filing date after March 16, 2013, the 35 U.S.C. §§ 102 and 103 provisions of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, §§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011), apply. The ’014 Patent’s filing date also is after the effective date set for the AIA’s changes to § 112. See AIA § 4(e). III. DISCUSSION A. Principles of Law Relating to Anticipation and Obviousness To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). A patent claim is unpatentable if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103. The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the IPR2019-00555 Patent 9,668,014 B2 9 prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When evaluating a combination of teachings, we also “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). B. Level of Ordinary Skill Petitioner contends, relying on the testimony of Dr. Fox, that a person having ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, applied mathematics, or a similar discipline, as well as two or more years of relevant industry or research experience, including in data search techniques or natural language processing. Pet. 12–13 (citing Ex. 1102 ¶ 46). We adopted Petitioner’s definition for the purposes of determining whether to institute an inter partes review. Inst. Dec. 11. In its Patent Owner Response, relying on the testimony of Mr. Tinsman, Patent Owner asserts that a person having ordinary skill in the art would have had the same education proposed by Petitioner, but Patent Owner asserts a slightly different definition with respect to experience. Resp. 18 (citing Ex. 2005 ¶¶ 27–29). In particular, Patent Owner asserts that the skilled artisan would have had at least two years of relevant industry experience in electronic content delivery, electronic program guides, television video signal processing, graphical user interfaces, cable or satellite IPR2019-00555 Patent 9,668,014 B2 10 television systems, set-top boxes, multimedia systems, or data search techniques. Id. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). On the complete record now before us, we adopt Petitioner’s definition because it is consistent with the problems and solutions in the prior art of record. Petitioner’s definition also is consistent with the ’014 Patent Specification. For instance, we determine that Petitioner’s definition more appropriately reflects that a person having ordinary skill in the art would have had two or more years of relevant industry or research experience, whereas Patent Owner’s definition omits research experience. Also, Petitioner’s definition appropriately reflects the relevance of experience in natural language processing, whereas Patent Owner’s definition omits that experience and includes, instead, experience in “television video signal processing, graphical user interfaces, cable or satellite television systems, set-top boxes, multimedia systems, or data search techniques” (Resp. 18; Ex. 2005 ¶¶ 27–29) without explaining how those various alternative fields pertain to a method or system “for resolving a voice command” recited in the independent claims. Ex. 1101, 48:47–49, 50:46–48. Mr. Tinsman’s testimony is the same as Patent Owner’s assertion and does not include further persuasive explanation. The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). IPR2019-00555 Patent 9,668,014 B2 11 Neither party identified how the result would differ based on the level of ordinary skill in the art. Also, our conclusions do not turn on which definition is selected. C. Claim Construction For cases like this one, where the petition for inter partes review was filed after November 13, 2018, we interpret claim terms in accordance with the standard used in federal district court in a civil action involving the validity or infringement of a patent. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The ’014 Patent provides definitions for the terms “media asset,” “command,” “media asset identifier,” and “device identifier” that are the same as those set forth in the Petition. Pet. 17–18 (citing Ex. 1101, 6:31–41, 20:36–49, 21:4–5, 21:23–27; Ex. 1102 ¶¶ 87–90). Patent Owner does not dispute Petitioner’s contentions regarding construction of those terms. Resp. 18–19. Based on the complete record now before us, we are persuaded by Petitioner regarding those definitions. IPR2019-00555 Patent 9,668,014 B2 12 Below we discuss the parties’ contentions regarding whether “communications circuitry” and “control circuitry” recited in claim 11 are means-plus-function terms. Pet. 18–20; Resp. 18–19. We also discuss the parties’ contentions regarding constructions set forth in the Decision to Institute for “provid[ing/e] to the user an option to confirm” recited in independent claims 1 and 11 (Resp. 21; Reply 2) and “provid[ing/e] to the user a prompt requesting confirmation,” recited in dependent claims 6 and 16 (Resp. 41; Reply 8–9). Additionally, we discuss the parties’ contentions regarding order of steps for “for each character position in the media asset identifier . . . increment[ing] the degree of similarity for the known media asset identifier by a unit” recited in claims 2 and 12. 1. “communications circuitry” and “control circuitry”—Claim 11 Petitioner contends that “communications circuitry” and “control circuitry” recited in claim 11 are means-plus-function terms. Pet. 18–20. Patent Owner disagrees. Resp. 18–10. Petitioner’s contentions that “communications circuitry” and “control circuitry” recited in claim 11 are means-plus-function terms are conclusory. See Pet. 18–20. Claims that include the language “means” or “means for” are presumed to invoke 35 U.S.C. § 112(f). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“[U]se of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.”).1 “[T]he failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112, ¶ 6 does not apply.” Id. The terms 1 The ’014 Patent’s filing date is after the effective date set for the AIA’s changes to § 112. AIA § 4(e). IPR2019-00555 Patent 9,668,014 B2 13 “communications circuitry” and “control circuitry” do not contain the language “means” or “means for.” Petitioner does not explain sufficiently why those terms should be construed as means-plus-function terms. Petitioner, however, has provided a construction of those terms under § 112(f) in compliance with 37 C.F.R. § 42.104(b)(3). Patent Owner asserts that it disagrees with Petitioner’s proposal because the claims themselves recite sufficient structure to perform the claimed functions. Resp. 18. Patent Owner, however, does not dispute our determination that Petitioner’s means-plus-function construction is narrower than Patent Owner’s proposed construction. Patent Owner also does not dispute the accuracy of Petitioner’s proposed construction in compliance with 37 C.F.R. § 42.104(b)(3), if the terms are construed under § 112(f). Id. at 18–19. In light of the issues based on the complete record now before us, we use Petitioner’s narrower means-plus-function construction for “communications circuitry” and “control circuitry” recited in claim 11. We need not make further determinations regarding the means-plus-function recitations to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 2. “provid[ing/e] to the user an option to confirm”—Claims 1 and 11 Regarding this term at the institution stage, we stated the following: IPR2019-00555 Patent 9,668,014 B2 14 At this preliminary stage in the proceeding, we are not persuaded by Patent Owner regarding its implied construction for “provid[ing/e] to the user an option to confirm.” Prelim. Resp. 17–19, 33–35 (citing, e.g., Ex. 2001 ¶¶ 59–61; Ex. 1101, 46:28–37, Fig. 5). “Option” means something that may be chosen, e.g., a choice or an alternative.[2] . . . At this preliminary stage, Patent Owner identifies as support only a single figure in the ’014 Patent, i.e., Figure 5, along with supporting textual description that message 508 may be a displayed visual message or a played audio message. Prelim. Resp. 18–19 (citing Ex. 1101, 46:28–37, Fig. 5). The ’014 Patent also describes “a selectable option provided in a display screen” as including “a menu option,” “a listings option,” “an icon,” “a hyperlink,” and “a dedicated button . . . on a remote control.” Ex. 1101, 7:58– 63. At this preliminary stage, we are not persuaded that “an option to confirm” is limited to confirmation message 508, to the exclusion of these other exemplary selectable options described in the ’014 Patent. Accordingly, based on the record at this juncture, we are not persuaded to limit “option to confirm” to confirmation message 508 as Patent Owner implicitly proposes. Instead, we apply the ordinary and customary meaning, namely “option” is a selectable choice and includes exemplary selectable options described in the ’014 Patent, as well as message 508. Id. at 7:58–63, 46:28–37. Inst. Dec. 13–14. We turn to the parties’ responsive contentions. Patent Owner does not dispute the ordinary and customary meaning of “option” set forth in the Decision to Institute. See, e.g., Resp. 21; Sur-Reply 3. Relying on the testimony of Mr. Tinsman, however, Patent Owner asserts with respect to “the ordinary and customary meaning of ‘confirmation’ in the art” that a person having ordinary skill in the art would have understood that “the 2 See, e.g., Merriam-Webster.com, https://www.merriam- webster.com/dictionary/option (last visited June 30, 2019) (providing a dictionary definition of “option”). IPR2019-00555 Patent 9,668,014 B2 15 confirmation provides the user the ability to proceed or not.” Resp. 23–24 (citing, e.g., Ex. 2005 ¶¶ 78–79; Ex. 2009; Ex. 2014; Ex. 2015) (emphasis added). Mr. Tinsman testifies “it is well-known and would have been well- known by a POSA that a confirmation is binary (e.g., ‘yes’ or ‘no’; ‘okay’ or ‘cancel’).” Ex. 2005 ¶ 78 (citing Ex. 2009; Ex. 2014; Ex. 2015) (emphasis added). Mr. Tinsman further testifies “[f]or example, in the JavaScript programming language implemented by Web browsers, a ‘confirm’ method exists that only allows the user to proceed with or cancel an operation based on information presented to the user.” Id. ¶ 79 (citing Ex. 2009, 348–50, 1005; Ex. 2014, 2; Ex. 2015, 1–2; Ex. 2016, 2) (emphasis added). In its Reply, Petitioner also does not dispute the ordinary and customary meaning of “option” set forth in the Decision to Institute. See, e.g., Reply 2. Petitioner asserts that “the ordinary and customary meaning of ‘confirm’ from that same dictionary” is “‘to give approval to: RATIFY.’” Id. (citing Ex. 1136). Petitioner asserts that Patent Owner relies on one example relating to the JavaScript programming language, which is not limiting. Id. at 3. Petitioner also asserts that other evidence submitted by Patent Owner shows that a “confirmation” can be presented another way such that the user has more than a binary choice. Id. (citing Ex. 1134 ¶ 9). In its Sur-Reply, Patent Owner asserts that the selectable options in the Patent, e.g., “a menu option,” “a listings option,” “an icon,” “a hyperlink,” and “a dedicated button . . . on a remote control” (Ex. 1101, 7:58–63) are not the “option to confirm.” Sur-Reply 3–4. Patent Owner IPR2019-00555 Patent 9,668,014 B2 16 also asserts that Petitioner “isolat[es] its arguments to only the words ‘option’ and ‘confirm.’” Id. at 4. We agree with Petitioner. Starting with the language of the claim, in addition to not disputing the ordinary and customary meaning of “option” (Resp. 21), Patent Owner does not dispute Petitioner’s ordinary and customary meaning of “confirm.” Tr. 35:1–4. We discern nothing in the language of the claims or the plain or ordinary meanings that limits the claims as Patent Owner proposes. Turning to the Specification of the ’014 Patent, relying on the testimony of Mr. Tinsman, Patent Owner points to a portion of the ’014 Patent relating to Figure 5. Resp. 22–24 (citing Ex. 1101, 46:28–37, Fig. 5; Ex. 2005 ¶¶ 76–78). Regarding that same portion in the ’014 Patent, Mr. Tinsman testifies that “in each of the examples the user clicks ‘Yes’ in response to a binary question: ‘is this what you mean?’” The ’014 Patent, however, does not use the word “binary” in connection with confirmation message 508. Ex. 1101, 46:28–37, Fig. 5. Indeed, the ’014 Patent Specification describes only “generat[ing] for display media asset identifier confirmation message 508” or “[i]n another example, the media guidance application may play an audio message . . . asking the user for confirmation.” Ex. 1101, 46:28–37; see also id. at 22:5–11 (describing “alternatively or additionally” presenting audio or tactile confirmation). Figure 5 illustrates confirmation message 508 and two buttons identified as “Yes” and “No,” but does not describe the illustration as limiting. Id. at Fig. 5. The disclosures in the ’014 Patent Specification support Petitioner’s position. For instance, the ’014 Patent Specification describes confirmation IPR2019-00555 Patent 9,668,014 B2 17 message 508 as “optional.” Id. at 22:5–7, 24:4–6. The ’014 Patent Specification describes an embodiment, in which “the media guidance application may include in optional media asset identifier confirmation message 508 a preview of the media asset or portion of the media asset.” Id. at 24:8–11. With respect to previewing, the ’014 Patent Specification describes that the application “may allow the user to view and/or preview” (id. at 9:2–3 (emphasis added)) and “video clip previews” are described in connection with a user interface including “selectable options 202” (id. at 10:59–11:2 (emphasis added)). The ’014 Patent Specification also describes “a selectable option provided in a display screen” as including “a menu option,” “a listings option,” “an icon,” “a hyperlink,” and “a dedicated button . . . on a remote control.” Ex. 1101, 7:58–63. The ’014 Patent further describes that “[t]he processes discussed above are intended to be illustrative and not limiting” and “[o]ne skilled in the art would appreciate that the steps of the processes discussed herein may be omitted, modified, combined, and/or rearranged, and any additional steps may be performed without departing from the scope of the invention.” Id. at 48:27–32. We discern nothing in the ’014 Patent Specification that limits “providing to the user an option to confirm that the suggested known media asset identifier correspond to the media asset” in the manner proposed by Patent Owner. The intrinsic record is clear. Nevertheless, Patent Owner’s extrinsic evidence also does not require limiting “providing to the user an option to confirm that the suggested known media asset identifier correspond to the media asset” in the manner proposed by Patent Owner. We agree with Petitioner that Patent Owner’s extrinsic evidence shows that a “confirmation” can be presented another way such that the user has more IPR2019-00555 Patent 9,668,014 B2 18 than a binary choice. Reply 3 (citing Ex. 1134 ¶ 9). In particular, Patent Owner’s extrinsic evidence describes “a choice dialog,” which has “the effect of being a confirmation . . . if the user does not desire any of the offered outcomes.” Ex. 2015, 2 (emphases added). Patent Owner also makes arguments on the basis that “providing to the user an option to confirm” requires that the user exercise an option. Resp. 22, 25–31 (citing, e.g., Ex. 1101, 22:5–7, 22:35–37, 22:50–56, Fig. 5; Ex. 2005 ¶¶ 80–90); Sur-Reply 4. For instance, Mr. Tinsman testifies “[a] confirmation also provides clarification or feedback to the system presenting the confirmation, allowing the system to modify and improve retrieval techniques.” Ex. 2005 ¶ 80. Petitioner responds that Patent Owner’s proposal improperly reads limitations into the claim. Reply 2–3. In particular, Petitioner responds “the user is free to confirm the wrong choice in the ’014 patent” and the system “does not check for errors.” Id. at 3–4 (citing Ex. 1132, 220:11–16, 231:6– 232:23, 235:20–25, 246:15–247:22; Ex. 1134 ¶ 10). We agree with Petitioner that Patent Owner’s proposal improperly reads limitations into the claims. Indeed, Patent Owner’s counsel acknowledges that the claims do not recite confirming, just providing the option to confirm. Tr. 27:3–26. Turning to the language of the claim, the recitation “provid[ing/e] to the user an option to confirm that the suggested known media asset identifier correspond to the media asset” is found in only independent claims 1 and 11 and it appears as the last limitation recited in those claims. Ex. 1101, 48:47–49:10, 50:46–51:14. The claims do not recite receiving the user’s selection of an option or any subsequent steps. Id. We IPR2019-00555 Patent 9,668,014 B2 19 discern nothing in the language of the claims that recites or requires improving retrieval techniques such as providing feedback to the system. Id. Now turning to the Specification of the ’014 Patent, the portions of the ’014 Patent relied upon in Patent Owner’s contentions and Mr. Tinsman’s testimony (see, e.g., Resp. 22, 25–31; Ex. 2005 ¶¶ 80–90; Sur-Reply 3–4) describe that “optional media asset identifier confirmation message 508” may be displayed “as shown in FIG. 5.” Ex. 1101, 22:5–7, 22:35–37, 22:50–56; see also id. at 46:30–37 (describing only that “the media guidance application may . . . generate for display media asset identifier confirmation message 508” (emphasis added)). Figure 5, which illustrates “Yes” and “No,” is a simple illustration of a display that lacks description of technical details, such as processing performed by the software. Id. at Fig. 5. Neither Patent Owner’s contentions nor Mr. Tinsman’s testimony point us to disclosure in the ’014 Patent Specification that supports limiting “provid[ing/e] to the user an option to confirm that the suggested known media asset identifier correspond to the media asset” such that it requires subsequent steps including providing feedback to the system to improve retrieval techniques. The intrinsic record is clear. Nevertheless, Patent Owner’s extrinsic evidence also does not require limiting “providing to the user an option to confirm that the suggested known media asset identifier correspond to the media asset” in the manner proposed by Patent Owner. Resp. 22, 25–31 (citing Ex. 2014, 3; Ex. 2015, 2; Ex. 2005 ¶¶ 80–90). Patent Owner’s extrinsic evidence describes that a system may operate differently and that rather than seeking confirmation, “[a]n effective confirmation is essentially trying to talk the user out of proceeding.” Ex. 2014, 3; Ex. 2015, 2. That IPR2019-00555 Patent 9,668,014 B2 20 evidence does not demonstrate that a person having ordinary skill in the art would have understood “provid[ing/e] to the user an option to confirm that the suggested known media asset identifier correspond to the media asset” to include the requirements proposed by Patent Owner. Relative to the intrinsic record, we give little to no weight to Mr. Tinsman’s testimony (see, e.g., Ex. 2005 ¶¶ 73–91) because his testimony does not take into account the claim language and the ’014 Patent Specification, which do not recite, describe, or require the proposed limitations, and Mr. Tinsman’s testimony is based on a mischaracterization of the extrinsic evidence. Accordingly, based on the complete record now before us, we maintain our determination at the institution stage to apply the ordinary and customary meaning, namely “option” is a selectable choice and includes exemplary selectable options described in the ’014 Patent, as well as message 508. Ex. 1101, 7:58–63, 22:5–7, 22:45–56, 46:28–37, Fig. 5. We further determine that “provid[ing/e] to the user an option to confirm” recited in claims 1 and 11 (id. at 49:8–10, 51:12–14) may encompass more than a binary choice, consistent with the selectable options described in the ’014 Patent (see, e.g., id. at 7:58–63, 22:5–7, 22:45–56, 46:28–37, Fig. 5) and does not require performance of subsequent steps. We need not make further determinations to resolve the disputes between the parties. See Nidec, 868 F.3d at 1017. 3. “provid[ing/e] to the user a prompt requesting confirmation”— Claims 6 and 16 Regarding this term, at the institution stage, we stated the following: Similarly, even using Patent Owner’s asserted ordinary and customary meaning, at this preliminary stage in the IPR2019-00555 Patent 9,668,014 B2 21 proceeding, we are not persuaded to adopt Patent Owner’s implied construction for “provid[ing/e] to the user a prompt requesting confirmation” recited in claims 6 and 16. “Prompt” means “[a] symbol or message displayed by a computer system requesting input from the user of the system.” Ex. 2004, 878 (cited at Prelim. Resp. 35). Patent Owner points to message 508 as well as description in the ’014 Patent of purchasing a media asset. Prelim. Resp. 33–35 (citing, e.g., Ex. 1101, 24:4–7, 25:11–18, 25:18–23, 25:62–65, 31:52–61, 32:58–63, Fig. 5). We are not persuaded that “prompt” is restricted to the format of message 508 in the ’014 Specification and we are not persuaded that a user must purchase a media assert to confirm. Instead, we apply Patent Owner’s ordinary and customary meaning, namely “prompt” is a symbol or message requesting input from the user. Inst. Dec. 14. We turn to the parties’ responsive contentions. Relying on the testimony of Mr. Tinsman, Patent Owner asserts the following: Mr. Tinsman explains that a “prompt,” as used in media and electronic systems, typically refers to a modal element requiring action from the user before proceeding. Id., ¶113. JavaScript, for example, includes a “prompt” method that “displays [a] specified message in a modal dialog box that also contains a text input field and OK and Cancel buttons and blocks until the user clicks one of the buttons.” Id.; EX2009, 1006; see also EX2009, 348–50. This general understanding of prompt is consistent with the examples provided in the ’014 patent, in which the user is prompted for a response before the system proceeds forward. EX2005, ¶113; EX1101, 46:28–37. Resp. 41. Mr. Tinsman’s testimony is the same as Petitioner’s assertion set forth above. Ex. 2005 ¶ 113. Petitioner responds as follows: Patent Owner’s position remains inconsistent with the ordinary and customary meaning of “prompt.” ID at 14. “Prompt,” as the Board determined based on Patent Owner’s own IPR2019-00555 Patent 9,668,014 B2 22 evidence, means “a symbol or message requesting input from a user.” ID at 14; see Ex. 2004 at 4. It remains undisputed that a “prompt” is a “symbol or message.” POR 38; Ex. 2004 at 4. Reply 9. Starting with the language of the claim, the recitation “provid[ing/e] to the user a prompt requesting confirmation that the suggested media asset identifier corresponds to the media asset” is recited in claims 6 and 16. Ex. 1101, 50:3–9, 52:13–21. Claims 6 and 16 do not recite JavaScript’s method. Id. We discern nothing in the language of the claims that recites or requires limiting the prompt in the manner proposed by Patent Owner. Turning to the Specification of the ’014 Patent, the portion of the ’014 Patent relied upon in Patent Owner’s contentions and Mr. Tinsman’s testimony (Resp. 41 (citing Ex. 1101, 46:28–37)) was discussed with respect to independent claims 1 and 11. See supra § III.C.2. The ’014 Patent Specification does not include any further limiting disclosure with respect to “provid[ing/e] to the user a prompt requesting confirmation that the suggested media asset identifier corresponds to the media asset.” See, e.g., Ex. 1101, 22:5–7, 22:35–37, 22:50–56, 24:64–6, 24:8–11, 46:28–37, Fig. 5. For the reasons given with respect to independent claims 1 and 11 (see supra § III.C.2), the ’014 Patent Specification also does not support limiting “requesting confirmation” to a binary request, such as “OK” and “Cancel” proposed by Patent Owner. Resp. 41. Dr. Fox’s deposition testimony (see, e.g., Ex. 2011, 110:18–21) is consistent with his declaration testimony (see, e.g., Ex. 1102 ¶¶ 246–249, 286; Ex. 1134 ¶¶ 27–33) and supports Petitioner’s positions. Patent Owner mischaracterizes Dr. Fox’s deposition testimony. Resp. 40; Sur-Reply 11. Dr. Fox testifies that the “option to confirm” comprises the prompt recited in IPR2019-00555 Patent 9,668,014 B2 23 claim 6. Ex. 1134 ¶ 34; see also Ex. 2011, 108:5–8 (testifying “the preamble says ‘comprises’”), 110:1–13 (testifying “that method wherein is comprised of the following things” including “show[ing] the user something” and “alert[ing] the user that they should do something”). Consistent with Dr. Fox’s testimony, the ’014 Patent describes “display screens that may be used to provide media guidance data” (showing the user something) and further that provide “a selectable option” (alerting the user that they should do something). Ex. 1101, 7:58–63; see also id. at Fig. 5 (displaying “Star Wars Episode 1: The Phantom Menace” (showing the user something) and “is this what you mean?” and “Yes” and “No” (alerting the user that they should do something)). The intrinsic record is clear. Nevertheless, Patent Owner’s extrinsic evidence also does not support limiting claims 6 and 16 in the manner proposed by Patent Owner. For instance, JavaScript’s prompt command “displays a message” and “waits for the user to enter a string,” such as the user’s name. Ex. 2009, 348; see also id. at 1006 (“The prompt ( ) method displays the specified message in a modal box that also contains a text input field and OK and Cancel buttons”) (emphasis added). That evidence does not demonstrate that a person having ordinary skill in the art would have understood “provid[ing/e] to the user a prompt requesting confirmation” to include the requirements proposed by Patent Owner. We give little to no weight to Mr. Tinsman’s testimony (see, e.g., Ex. 2005 ¶ 113) because his testimony does not take into account the claim language and the ’014 Patent Specification, which do not recite or require the proposed limitations. Additionally, Mr. Tinsman’s testimony mischaracterizes Petitioner’s proposal and contentions, which would not IPR2019-00555 Patent 9,668,014 B2 24 result in “provid[ing/e] to the user a prompt requesting confirmation” broadly encompassing displaying any option. Accordingly, based on the complete record now before us, we maintain our determination at the institution stage to apply the ordinary and customary meaning, namely “prompt” is a symbol or message requesting input from the user. We further determine that “provid[ing/e] to the user a prompt requesting confirmation” recited in claims 6 and 16 (Ex. 1101, 50:3– 9, 52:13–21) may encompass more than a binary choice. We need not make further determinations to resolve the disputes between the parties. See Nidec, 868 F.3d at 1017. 4. “for each character position in the media asset identifier . . . increment[ing] the degree of similarity for the known media asset identifier by a unit”—Claims 2 and 12 At the institution stage, we provided analysis using Patent Owner’s ordinary and customary meaning of “unit,” i.e., “a determinate quantity (as of length of time, heat, or value) adopted as a standard of measurement.” Inst. Dec. 41 n.5 (citing Prelim. Resp. 15, 41–42; Ex. 2001 ¶ 105; Ex. 2004, 1369). Based on the issues before us at that stage, we did not make further determinations. Id. at 11–15. In the Patent Owner Response, Patent Owner asserts the following: In other words, in this example [Ex. 1101, 44:51–61], the similarity metric is incremented by 1 each time a matching character is found. See EX2005, ¶¶119-124. After all characters of the “media asset identifier” have been compared, the similarity metric would have a value of 11. Id. The claimed “incrementing” updates the similarity metric (i.e., by adding a unit to the current value of the similarity metric) “for each character position in the media asset identifier.” Id. IPR2019-00555 Patent 9,668,014 B2 25 Resp. 44; see also id. at 50–51 (asserting that the “order of operations” of the prior art does not meet the claim requirements). Patent Owner asserts a person having ordinary skill in the art would have understood that the ordinary and customary meaning of “unit” is “a standard measure used to express amounts.” Id. at 59–60 (citing Ex. 2012, 951; Ex. 2003, 6; Ex. 2013, 1894; Ex. 1101, 44:64–65; Ex. 2005 ¶¶ 154–157). In the Reply, Petitioner responds “claims 2 and 12 do not require a specific order of operations and such construction contradicts the ’014 patent disclosure.” Reply 15. Petitioner, more specifically, asserts the following: Moreover, claims 2 and 12 were not originally filed claims. Ex. 1112 at 121, 125. And, contrary to Patent Owner’s position, the ’014 patent’s specification states that all characters are matched first and then the degree of similarity is calculated: The media guidance application determines the matching characters, and “may then set the similarity metric . . . to be” equal to the number or percentage of matching characters. Ex. 1101 at 44:54–61 (emphasis added). In other words, the degree of similarity (the “similarity metric”) is incremented (“set”) for each matching character after the total number of matching characters has been determined. Ex. 1101 at 44:51–65; Ex. 1134, ¶ 37. Id. at 15–16. Regarding “unit,” Petitioner asserts when “the same unit value is used for each character match in a given comparison,” then “it is a ‘standard of measurement’ (Ex. 2003 at 6) and a ‘precisely specified quantity in terms of which the magnitudes of other quantities of the same kind can be stated’ (Ex. 2013 at 1894).” Reply 18 (citing Ex. 2003, 6; Ex. 2012; Ex. 2013, 1894; Ex. 1134 ¶ 39). Petitioner also asserts that “the claims do not require the ‘unit’ to be the same from comparison to comparison.” Id. (citing Ex. 1134 ¶ 39). IPR2019-00555 Patent 9,668,014 B2 26 In its Sur-Reply, Patent Owner asserts “[w]hether or not the recited ‘incrementing’ is performed after each comparison or after all comparisons is not necessary to determine.” Sur-Reply 13. Patent Owner, however, also asserts “what is required by claims 2 and 12 is adding a value to the ‘degree of similarity’ for each matching character position. This is fundamentally a different operation than simply assigning a value to the “degree of similarity” at the end of a process.” Id.; see also id. at 14 (“Mr. Tinsman explained that ‘assignment of the final result after all other calculations have been performed’ is not the same as ‘incrementing the degree of similarity’”). Patent Owner acknowledges “[t]he ’014 patent specification is not explicit regarding whether the ‘similarity metric’ is incremented for every matching character, or whether it is assigned a final result without being incremented during the process.” Id. at 15. Patent Owner, however, also asserts that the claims recite a “specific process” and Petitioner’s reliance on the ’014 Patent Specification is insufficient. Id. Upon consideration of the parties’ contentions and evidence, we agree with Petitioner. Starting with the claim language, claim 2 is reproduced below. 2. The method of claim 1, wherein calculating the degree of similarity between the media asset identifier and each known media asset identifier comprises: for each known media asset identifier: initializing the degree of similarity for the known media asset identifier to a default value; for each character position in the media asset identifier: determining whether a character at the character position in the media asset identifier matches a character at the character position in the known media asset identifier; and IPR2019-00555 Patent 9,668,014 B2 27 based on determining that the character at the character position in the media asset identifier matches the character at the character position in the known media asset identifier, incrementing the degree of similarity for the known media asset identifier by a unit. Ex. 1101, 49:11–28 (emphasis added). Claim 12 includes similar recitations. Id. at 51:15–32. The recitations relied upon by Patent Owner (Resp. 43; Sur-Reply 13– 14) are emphasized above. Contrary to Patent Owner’s assertion that “[w]hether or not the recited ‘incrementing’ is performed after each comparison or after all comparisons is not necessary to determine” (Sur- Reply 13), the recitation relied upon by Patent Owner (Resp. 44; Sur-Reply 13–15), i.e., “incrementing the degree of similarity” is performed “based on” the matching or comparing. Ex. 1101, 49:11–28, 51:15–32. Patent Owner’s claim construction proposal, therefore, hinges on whether incrementing must be performed after each comparison or whether incrementing may be performed after all comparisons. We agree with Petitioner that each of claims 2 and 12 encompasses matching all characters first and then calculating the degree of similarity. In other words, claims 2 and 12 encompass both incrementing after each comparison or after all comparisons. Contrary to Patent Owner’s assertion that claims 2 and 12 recite a “specific process” (Sur-Reply 15), claims 2 and 12 do not recite specifically whether incrementing occurs after each comparison or after all comparisons. Patent Owner’s assertion that the “similarity metric is incremented by 1 each time a matching character is found” (Resp. 44, 50–51) does not identify any recitation in the claims that prohibits matching all characters first and then calculating the degree of IPR2019-00555 Patent 9,668,014 B2 28 similarity. We discern no recitation that limits the claims in the manner proposed by Patent Owner. Patent Owner acknowledges “[t]he ’014 patent specification is not explicit regarding whether the ‘similarity metric’ is incremented for every matching character, or whether it is assigned a final result without being incremented during the process.” Sur-Reply 15. Consistent with Petitioner’s contentions, the ’014 Patent Specification describes that “the media guidance application may determine, using control circuitry 304, that the received media asset identifier [ ] matches the first 11 non-blank characters of the known media asset identifiers” and “[t]he media guidance application may then set the similarity metric for both comparisons to be 11.” Ex. 1101, 44:54–61. We give little to no weight to Mr. Tinsman’s testimony (see, e.g., Ex. 2005 ¶ 118–124, 131–132) because his testimony does not take into account the claim language and the ’014 Patent Specification, which do not recite or require the proposed limitations. Additionally, Mr. Tinsman’s testimony mischaracterizes the claim language. With respect to the remaining disputes between the parties, starting with the language of claims 2 and 12, we agree with Petitioner (Reply 14– 19) that claims 2 and 12 encompass a similarity metric expressed as a number or percentage and do not require that “unit” be the same from comparison to comparison. Turning to the ’014 Patent Specification, consistent with Petitioner’s contentions (Reply 14–19), the ’014 Patent discloses “the similarity metric may be the number or percentage of characters that match between the two media asset identifiers.” Ex. 1101, 44:52–54 (emphasis added). We give little to no weight to Mr. Tinsman’s testimony (see, e.g., Ex. 2005 ¶¶ 154–157) because his testimony does not IPR2019-00555 Patent 9,668,014 B2 29 take into account the claim language and the ’014 Patent Specification, which do not recite or require the proposed limitations. Additionally, Mr. Tinsman’s testimony mischaracterizes the claim language and the ’014 Patent Specification. Accordingly, we determine that for each character position in the media asset identifier: determin[ing/e] whether a character at the character position in the media asset identifier matches a character at the character position in the known media asset identifier; and based on determining that the character at the character position in the media asset identifier matches the character at the character position in the known media asset identifier, increment[ing] the degree of similarity for the known media asset identifier by a unit. (Ex. 1101, 49:11–28 (emphasis added)) recited in claims 2 and 12 encompasses matching all characters first and then calculating the degree of similarity and the similarity metric may be expressed as a number or percentage. The term “incrementing” does not explicitly refer back to “each character position” or otherwise require “incrementing” each time a match occurs; rather, “incrementing” refers back to “based on determining that the character at the character position in the media asset identifier matches the character at the character position in the known media asset identifier.” This “based on determining” clause contemplates “determining” based on matching one or more characters in line with capturing a generic embodiment of the Specification as discussed above. We also determine that the claims do not require “unit” to be the same from comparison to comparison. No further determinations are needed to resolve the disputes between the parties. See Nidec, 868 F.3d at 1017. IPR2019-00555 Patent 9,668,014 B2 30 D. Unpatentability—Claims 1, 4, 6–8, 11, 14, and 16–18 Petitioner contends each of claims 1, 4, 6–8, 11, 14, and 16–18 of the ’014 Patent is unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. Pet. 13, 20. Petitioner also contends each of claims 1, 4, 6–8, 11, 14, and 16–18 of the ’014 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates; and (2) the combination of Yates and Jurafsky. Id. at 13.3 Patent Owner opposes. See generally Resp. In our discussion below, we first provide a brief overview of the prior art, and then we address the parties’ contentions in turn. 1. Overview of Yates Yates is directed to an interactive media guidance application. Ex. 1104, 1:7–8. Figure 1 of Yates is reproduced below. 3 Petitioner asserts that Yates and Jurafsky are prior art at least under 35 U.S.C. § 102(a)(1). Pet. 14. IPR2019-00555 Patent 9,668,014 B2 31 Figure 1 of Yates, above, illustrates interactive media guidance system 100. Id. at 5:62–63. Interactive media guidance system 100 includes programming sources 102 and distribution facility 104 that are connected by communications path 106, which is used to provide media such as television programming and digital music from programming sources 102 to distribution facility 104. Id. IPR2019-00555 Patent 9,668,014 B2 32 at 6:6–10. Distribution facility 104 is connected to user equipment devices 108, 110, and 112, located, for example, in the homes of users to provide media, which is sent over communications paths 114, 116, and 118. Id. at 6:36–38, 6:47–51. Guidance data from data source 120 may be provided to user equipment 108, 110, and 112 by a guidance application client residing on user equipment 108, 110, and 112 initiating sessions with server 140 within distribution facility 104. Id. at 8:22–27, Fig. 1. Service provider 142 has sales representatives, order fulfillment facilities, account maintenance facilities, and other equipment for supporting interactive features. Id. at 10:39–47. User equipment 108, 110, and 112 may access service provider 142 via distribution facility 104 and communications path 144 or via communications network 126 and communications path 146. Id. 2. Overview of Jurafsky Jurafsky describes speech and language processing. Ex. 1107, 26. For example, Jurafsky describes sampling and quantization for digitizing soundwaves for speech recognition. Id. at 282–288. 3. Independent Claim 1—Anticipation Petitioner contends that claim 1 is unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. Pet. 13, 20–28. The dispute between the parties centers on whether Yates describes “providing to the user an option to confirm that the suggested known media asset identifier corresponds to the media asset” recited in claim 1. See, e.g., Resp. 9–10, 20–30; Pet. 13, 20–28. IPR2019-00555 Patent 9,668,014 B2 33 a) “[a] method for resolving a voice command for a media asset, where the voice command does not expressly name the media asset, the method comprising”4 Petitioner takes the position “[t]o the extent the preamble is limiting, Yates discloses this feature.” Pet. 20. Relying on the testimony of Dr. Fox, Petitioner points to Yates’s interactive media guidance application for receiving a user preference and related teachings. Pet. 20–23 (citing, e.g., Ex. 1104, 2:19–28, 15:4–9, 16:18–23, 18:17–21, 24:50–57, 25:27–27:12, Figs. 10, 14, 16; Ex. 1102 ¶¶ 212–219). Dr. Fox testifies “[t]he voice command in Yates discloses the claimed ‘voice command for a media asset.’” Ex. 1102 ¶ 217 (citing, e.g., Ex. 1104, 24:53–57, 26:38–63). Relying on the testimony of Dr. Fox, Petitioner also provides an overview showing where each element recited in claim 1 is taught in Yates Figure 16, for example. Id. at 22 (citing Ex. 1102 ¶¶ 215–216). 4 Petitioner refers to as element 1[a]. Pet. 20. For the reasons given, we determine that Petitioner shows that Yates describes element 1[a]. We, therefore, need not determine whether the preamble is limiting for purposes of this Decision. IPR2019-00555 Patent 9,668,014 B2 34 Figure 16 of Yates, above, illustrates details of processing a comparison of the user preference with available assets and stored content, with Petitioner’s annotations of red, green, blue, pink, and purple to highlight steps 1602, 1604, 1608, 1612, and 1614, respectively. Pet. 22; Ex. 1102 ¶ 215. Petitioner’s annotations include identifying the entirety of Figure 16 with the annotation “ELEMENT 1[a].” Id. Patent Owner does not provide contentions responding to or disputing Petitioner’s contentions regarding element 1[a]. See generally Resp.; Sur- Reply. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For instance, Yates describes “[a]ny function or the display of any page or information may also be initiated by issuing any other suitable command to the interactive media IPR2019-00555 Patent 9,668,014 B2 35 guidance application, such as a computer command or a voice command when using a system capable of voice recognition.” Ex. 1104, 24:53–57; see also id. at 15:4–9 (describing that “any other suitable user input interface may be used to operate user equipment (e.g., a mouse, trackball, keypad, keyboard, touch screen, voice recognition system, etc.)”), 16:18–23 (“[P]ersonal computer unit 502 may be controlled by the user using keyboard 504 and/or other suitable user input device such as a trackball, mouse, touch pad, touch screen, voice recognition system, or a remote control.”), 18:17–21 (“A user may control the control circuitry 602 using user input interface 614. User input interface 614 may be any suitable user interface, such as a mouse, trackball, keypad, keyboard, touch screen, touch pad, voice recognition interface, or a remote control.”). Also consistent with Petitioner’s contentions and Dr. Fox’s testimony (see, e.g., Ex. 1102 ¶¶ 218– 219) that Yates describes a voice command that “does not expressly name the media asset,” Yates further describes process flow 1600 “for displaying on a mosaic page an asset of high relevance for a user,” which includes “at step 1604, if it is determined that no exact match exists between the user preference and an asset or stored content, then it is checked at step 1608, if at least a partial (fuzzy) match exists.” Ex. 1104, 26:38–63. Figure 16 sets forth details of a comparison performed in step 1408 of Figure 14. Id. at 25:44–58 (describing that “[t]he user preference can then be compared with certain identifiers or other information . . . at step 1408. Details of the comparison process will be described below with reference to FIG. 16”). For the reasons given, we determine that Petitioner’s unopposed arguments and evidence show that Yates discloses element 1[a]. IPR2019-00555 Patent 9,668,014 B2 36 b) “receiving a voice command from a user, wherein the voice command comprises a media asset identifier corresponding to a media asset,”5 Petitioner asserts Yates discloses this limitation because Yates describes receiving a voice command comprising “a ‘user preference’ search string” and Petitioner cites to Dr. Fox’s testimony as support. Pet. 22–24 (citing, e.g., Ex. 1104, 2:19–28, 2:54–64, 24:50–57, 25:27–27:12, 28:34–35, Figs. 10, 14–16; Ex. 1102 ¶¶ 215, 220–221). Patent Owner does not provide contentions responding to or disputing Petitioner’s contentions regarding element 1[b]. See generally Resp.; Sur-Reply. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (Ex. 1102 ¶¶ 215, 220–221) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. As an initial matter, as discussed with respect to element 1[a], Yates describes that any function or the display of any page or information may be initiated by issuing a voice command. See supra § III.D.3.a. Yates also describes “[s]mart features,” which “are designed to allow the system to intelligently fill in the cells on the mosaic page with the most relevant content for a user” learned from, for example, “[u]ser-supplied terms.” Ex. 1104, 2:16–27. Yates describes that “the user can enter or select from a list of keywords, search strings, or the like.” Id. at 2:21–22. With respect to Figures 14 and 16 discussed with respect to element 1[a], Yates describes “a user preference,” which may be based on “user input.” Id. at 25:42–43. 5 Petitioner refers to this recitation as Element 1[b]. Pet. 23. IPR2019-00555 Patent 9,668,014 B2 37 For the reasons given, we determine that Petitioner’s unopposed arguments and evidence show that Yates discloses element 1[b]. c) “accessing a database comprising a plurality of known media asset identifiers,”6 Petitioner asserts that Yates discloses this element because Yates describes accessing data source 120. Pet. 22, 24 (citing, e.g., Ex. 1104, 7:53–64, 8:22–27, 8:54–64, 17:47–51, 25:27–62, 25:63–27:12, Figs. 14–16; Ex. 1102 ¶¶ 215, 222–224). Dr. Fox testifies that Yates describes user equipment accessing data source 120 containing identifiers for television program-related information. Ex. 1102 ¶ 224. Patent Owner does not provide contentions responding to or disputing Petitioner’s contentions regarding element 1[c]. See generally Resp.; Sur- Reply. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (Ex. 1102 ¶¶ 215, 222–224) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For instance, Yates describes that “[t]he user may use control circuitry 602 to send and receive commands, requests, and other suitable data using input/output 604,” and “[i]nput/output 604 may also be used to receive data from data source 120 for other interactive television applications.” Ex. 1104, 17:47–51; see also id. at 8:22–24 (“In some television-centric embodiments, guidance data from data source 120 may be provided to user equipment using a client-server approach.”). 6 Petitioner refers to this recitation as Element 1[c]. Pet. 24. IPR2019-00555 Patent 9,668,014 B2 38 For the reasons given, we determine that Petitioner’s unopposed arguments and evidence show that Yates discloses element 1[c]. d) “comparing the media asset identifier with each known media asset identifier of the plurality of known media asset identifiers”7 Petitioner asserts that Yates discloses this element because Yates describes comparing the user preference with identifiers stored in data source 120 and Petitioner cites to Dr. Fox’s testimony as support. Pet. 22, 25 (citing, e.g., Ex. 1104, 2:58–61, 21:63–22:5, 25:44–50, 26:38–27:12, Figs. 14–16; Ex. 1102 ¶¶ 215, 225–226). Patent Owner does not provide contentions responding to or disputing Petitioner’s contentions regarding element 1[d]. See generally Resp.; Sur-Reply. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (Ex. 1102 ¶¶ 215, 225–226) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For instance, Yates describes the user preference, i.e., the “list of keywords, search strings, or the like” (Ex. 1104, 2:22) is compared with “certain identifiers or other information, such as titles, names of performers or actors, venues, etc., in the interactive media guidance application (supplied, for example, by data source 120–FIG. 1), at step 1408.” Id. at 25:45–48. Also, consistent with Petitioner’s annotations to Figure 16 (Pet 22; Ex. 1102 ¶ 215), reproduced in the discussion of element 1[a] (see supra § III.D.3.a), identifying step 1602 with respect to “ELEMENTS 1[b]–1[d],” Yates describes step 1602 as “[c]ompare user preference with available assets and stored content.” Ex. 1104, Fig. 16. 7 Petitioner refers to this recitation as Element 1[d]. Pet. 25. IPR2019-00555 Patent 9,668,014 B2 39 Yates further describes “[a]t step 1602, the smart feature compares the user preference with available assets and/or stored content.” Ex. 1104, 26:40–42. For the reasons given, we determine that Petitioner’s unopposed arguments and evidence show that Yates discloses element 1[d]. e) determining, based on the comparing, whether the media asset identifier completely matches any known media asset identifier of the plurality of known media asset identifiers;8 Petitioner asserts that Yates discloses element 1[e] because Yates describes based on the comparison (see supra § III.D.3.d) determining whether there is an exact match and Petitioner cites to Dr. Fox’s testimony as support. Pet. 22, 25 (citing, e.g., Ex. 1104, 25:27–27:12, Figs. 14–16; Ex. 1102 ¶¶ 215, 227). Petitioner’s annotated Figure 16 (see supra § III.D.3.a) includes identification of step 1604, i.e., “Match?” for “ELEMENT 1[e].” Ex. 1102 ¶ 215 (citing Ex. 1104, Fig. 16); Pet. 22. Patent Owner does not provide contentions responding to or disputing Petitioner’s contentions regarding element 1[e]. See generally Resp.; Sur- Reply. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (Ex. 1102 ¶¶ 215, 227) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For instance, Yates describes “at step 1604, if it is determined that no exact match exists between the user preference and an asset or stored content, then it is checked, at step 1608, if at least a partial (fuzzy) match exists.” Ex. 1104, 26:58–61. 8 Petitioner refers to this recitation as Element 1[e]. Pet. 25. IPR2019-00555 Patent 9,668,014 B2 40 For the reasons given, we determine that Petitioner’s unopposed arguments and evidence show that Yates discloses element 1[e]. f) Elements 1[f] and 1[g] Recitations that Petitioner refers to as elements 1[f] and 1[g], respectively, (Pet. 26) are set forth below. based on determining that the media asset identifier does not completely match any known media asset identifier of the plurality of known media asset identifiers, calculating a degree of similarity between the media asset identifier and each known media asset identifier of the plurality of known media asset identifiers; determining that the degree of similarity for a respective known media asset identifier of the plurality of known media asset identifiers exceeds a threshold; Ex. 1101, 48:58–49:3. Petitioner asserts that Yates discloses elements 1[f] and 1[g] because Yates describes determining if a fuzzy match exists by calculating a relevance score and comparing that score to a threshold. Pet. 22, 26–27 (citing Ex. 1104, 2:21–28, 25:27–27:12, 28:36–48, Figs. 14–16; Ex. 1102 ¶¶ 215, 227–229). Referring to Petitioner’s annotated Figure 16 (see supra § III.D.3.a), step 1608 is identified for “ELEMENTS 1[f]–1[g].” Pet. 22; Ex. 1102 ¶ 215. Patent Owner does not provide contentions responding to or disputing Petitioner’s contentions regarding elements 1[f] and 1[g]. See generally Resp.; Sur-Reply. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (Ex. 1102 ¶¶ 215, 227–229) because IPR2019-00555 Patent 9,668,014 B2 41 Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For instance, Yates describes the following: [c]onversely, at step 1604, if it is determined that no exact match exists between the user preference and an asset or stored content, then it is checked, at step 1608, if at least a partial (fuzzy) match exists. The degree or fuzziness of a match can be computed using a suitable scoring function, for example, a cost function or relevance score. A suitable threshold value can be preset, whereby the match is considered reliable, if the score of the match exceeds the preset threshold value. Ex. 1104, 26:58–66. Also, step 1608 (i.e., “Fuzzy Match?”) follows a determination that “NO” match results from the comparison. Ex. 1104, Fig. 16. For the reasons given, we determine that Petitioner’s unopposed arguments and evidence show that Yates describes elements 1[f] and 1[g]. g) Elements 1[h] and 1[i] Recitations that Petitioner refers to as elements 1[h] and 1[i] (Pet. 27– 28), respectively, are set forth below. based on determining that the degree of similarity for the respective known media asset identifier exceeds the threshold, selecting the respective known media asset identifier to be a suggested media asset identifier; and providing to the user an option to confirm that the suggested known media asset identifier corresponds to the media asset. Ex. 1101, 49:4–10. Petitioner asserts that Yates discloses elements 1[h] and 1[i] because Yates describes displaying identifiers having a relevance score greater than a preset threshold for selection by a user. Pet. 27–28 (citing, e.g., Ex. 1104, 1:67–2:4, 2:17–28, 2:41–45, 5:52–59, 20:5–38, 21:3–34, 25:27–27:12, IPR2019-00555 Patent 9,668,014 B2 42 28:42–46, 29:64–67, Figs. 8–16; Ex. 1102 ¶¶ 215, 230–239). Referring to Petitioner’s annotated Figure 16, steps 1612 and 1614 are identified with respect to elements 1[h] and 1[i], respectively. Pet. 22; Ex. 1102 ¶ 215. Patent Owner disputes that Yates describes “providing to the user an option to confirm that the suggested known media asset identifier corresponds to the media asset” recited in claim 1. Resp. 20–31; Sur-Reply 2–10; Ex. 2005 ¶¶ 73–91. Patent Owner acknowledges the following: (1) Yates describes “selectable options” (Resp. 22), (2) “Yates’s Figure 15 provides an example list of potentially matching entries resulting from a search” (id. at 26), and (3) Yates describes a mosaic page that presents “the user a list of options in the form of cells” (id. at 28). Patent Owner, however, asserts that Yates’s options are “different than a confirmation that allows a user to proceed with an operation or not.” Resp. 27 (citing Ex. 2005 ¶ 84) (emphasis added); see also id. at 20–25 (asserting that Yates’s disclosure is different than claim 1 and the ’014 Patent because “a list of options does not direct a user to confirm whether or not to proceed”) (emphasis added). Patent Owner, in its Sur-Reply, argues claim 1 is limited to only the example illustrated in Figure 5 and only the textual disclosure in the ’014 Patent that also is shown in that illustration. See, e.g., Sur-Reply 4, 6–10 (citing Ex. 2005 ¶¶ 76–78). Mr. Tinsman’s testimony is based on claim 1 being limited to “a confirmation [that] is binary (e.g., ‘yes’ or ‘no’; ‘okay’ or ‘cancel’).” Ex. 2005 ¶ 78; see also id. ¶ 84 (testifying that Yates’s list of search results is “different than a confirmation that allows a user to proceed with an operation or not”). Patent Owner’s contentions and Mr. Tinsman’s testimony (Resp. 20–31; Sur-Reply 2–10; Ex. 2005 ¶¶ 73– IPR2019-00555 Patent 9,668,014 B2 43 91) are premised on Patent Owner’s narrow claim construction proposals that we decline to adopt for the reasons given in Section III.C.2. As discussed in Section III.C.2, we maintain our determination at the institution stage to apply the ordinary and customary meaning, namely “option” is a selectable choice and includes exemplary selectable options described in the ’014 Patent, as well as message 508. Ex. 1101, 7:58–63, 7:58–63, 22:5–7, 22:45–56, 46:28–37, Fig. 5. Patent Owner does not dispute our determination regarding “option.” See, e.g., Resp. 21. We further determine that “provid[ing/e] to the user an option to confirm” recited in claims 1 and 11 (id. at 49:8–10, 51:12–14) may encompass more than a binary choice, consistent with the selectable options described in the ’014 Patent (id. at 7:58–63, 22:5–7, 22:45–56, 46:28–37, Fig. 5) and does not require performance of subsequent steps that are neither recited nor required in the claims. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (see, e.g., Ex. 1102 ¶¶ 215, 230–239) over the testimony of Mr. Tinsman (Ex. 2005 ¶¶ 73–91) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For instance, Yates describes after determining a match exists that can be considered reliable (but is not exact) (see supra §§ III.D.3.a–f), displaying options to the user that the user can select from. Contrary to Patent Owner’s assertion that Yates does not describe search results (Sur-Reply 6), Yates describes the user preference, i.e., the “list of keywords, search strings, or the like” (Ex. 1104, 2:22) is compared with “certain identifiers or other information, such as titles, names of performers or actors, venues, etc., in the interactive media guidance application (supplied, for example, by data IPR2019-00555 Patent 9,668,014 B2 44 source 120–FIG. 1), at step 1408.” Id. at 25:45–48, Figs. 14–16; see also supra §§ III.D.3.a–f (explaining that Petitioner has shown that the other recitations of claim 1 are met and noting that Patent Owner does not dispute Petitioner’s showing). Referring again to annotated Figure 16 (see supra § III.D.3.a; Pet. 22; Ex. 1102 ¶ 215), Yates describes that Step 1612 is “[d]isplay list if more than one match” and step 1614 is “[u]ser input to select/modify preferences.” Ex. 1104, Fig. 16 (emphases added). In other words, Yates describes expressly giving the user an option to select the user’s preference. Id. Yates also describes the following: [I]f the score of the match at step 1608 exceeds the threshold value, possibly with more than one entry providing a match, then a list with options may be displayed to the user, at step 1612. The user can select potentially matching entries from that list, or the user can modify the preference, step 1614. Id. at 27:5–11. Yates additionally describes “[w]indow 1550 shows an exemplary search window that may be accessed from the smart feature, for example, by pressing a SEARCH button on the remote control 400.” Id. at 26:23–25. Window 1550 is shown in Figure 15 of Yates, which is reproduced below. IPR2019-00555 Patent 9,668,014 B2 45 Figure 15 of Yates, above, illustrates screen shot 1500, displaying two scheduled sports events—Monday Night Football 1510 and Duke University Basketball 1512, and screen shot 1550, showing a user preference in a separate search window. Ex. 1104, 25:63–26:3. Contrary to Patent Owner’s contentions and Mr. Tinsman’s testimony (see, e.g., Resp. 22, 26–31; Ex. 2005 ¶¶ 82–91), Yates describes giving the user an option to confirm whether the selected media asset corresponds to the media asset associated with a user’s voice command. For example, Yates illustrates screen shot 1550, which depicts an exemplary user IPR2019-00555 Patent 9,668,014 B2 46 preference, i.e., “MOVIE SWEPT” in a “SEARCH” field and matches, i.e., “SWEPT AWAY” and “SWEPT FROM THE SEA.” Ex. 1104, Fig. 15. Yates describes displaying “options” and states that “[t]he user can select potentially matching entries” from those options. Id. at 27:5–11 (emphasis added); see also id. at Fig. 16 (step 1614 “User input to select/modify preferences”). Yates includes additional description supportive of Petitioner’s assertion. For instance, process flow 1400 illustrated with respect to Figure 14 discussed with respect to each element recited in claim 1 (see supra § III.D.3.a–f) is “for selecting a smart feature in a mosaic cell that has a media source associated with it, for example, smart feature 862 in cell 810 of mosaic page 800.” Ex. 1104, 25:27–30. Yates describes in more detail interactive features with respect to Figures 8 and 10 illustrating display screens divided into a “mosaic” or user selectable cells (id. at 20:9–10, 23:12–15) that allow a user to navigate and select features such as recording a video broadcast currently showing, ordering merchandise associated with the current program, playing a 30-second preview, or viewing bonus features including alternative endings and commentaries. Id. at 20:30–38, 21:3–34, 25:50–55, Figs. 8, 10. Yates additionally describes displaying “in the user selected first cell, a video asset having the greatest score indicative of relevance to the user.” Id. at 28:45–46; see also id. at 25:50–55 (describing displaying “the asset with the greatest relevance”). Relying on the testimony of Mr. Tinsman, Patent Owner argues that “Yates is unable to confirm from a user’s selection whether the search results are accurate.” Resp. 26 (Ex. 2005 ¶ 82). Yates, however, describes a system in which the user has an option to confirm that a suggested identifier IPR2019-00555 Patent 9,668,014 B2 47 corresponds to the media asset. Ex. 1104, 20:30–38, 21:3–34, 25:50–55, 27:5–11, 28:45–46, Figs. 8, 10, 14–16. Patent Owner’s argument is premised on functionalities not stated in the claims, in particular, that the user exercise the claimed option and then the system performs further processing on that selection by the user to determine the accuracy of the search results. As discussed with respect to claim construction (see supra § III.C.2), the last step in claim 1 is “providing the user an option to confirm that the suggested known media asset identifier corresponds to the media asset.” The subsequent processing that Patent Owner requires is not recited in claim 1. Although not necessary for our determinations herein, we agree with Petitioner’s Reply and we credit and give significant weight to Dr. Fox’s Reply Declaration because Petitioner’s contentions and the testimony in Dr. Fox’s Reply Declaration (see, e.g., Ex. 1134 ¶¶ 6–22) are consistent with the evidence of record, including the evidence cited therein and Yates’s disclosures discussed above. Additionally, Petitioner’s Reply and Dr. Fox’s Reply Declaration do no more than fairly and directly respond to Patent Owner’s Response and Mr. Tinsman’s testimony. See 37 C.F.R. § 42.23(b) (2018); see also Belden Inc., v. Berk-Tek LLC, 805 F.3d 1064, 1078−80 (Fed. Cir. 2015) (holding that the Board may rely on new evidence submitted with a reply because the evidence was legitimately responsive to patent owner’s arguments and not needed for a prima facie case of obviousness). For the reasons given, we determine that Petitioner’s arguments and evidence show that Yates describes elements 1[h] and 1[i]. We further IPR2019-00555 Patent 9,668,014 B2 48 determine that Patent Owner’s arguments and evidence do not undermine Petitioner’s showing. h) Conclusion—Claim 1 Anticipated by Yates In summary, upon consideration of the contentions and evidence presented by both parties in the complete record now before us, we determine that Petitioner has shown that Yates discloses the subject matter of claim 1. Accordingly, based on the complete record now before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 1 of the ’014 Patent is unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. 4. Independent Claim 1—Obviousness Petitioner also contends that claim 1 of the ’014 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over Yates alone and over the combination of Yates and Jurafsky. Pet. 13, 42–47. Petitioner points to Jurafsky’s teaching of voice recognition for element 1[b]. Pet. 43–45 (citing, e.g., Ex. 1107, 170, 262–296; Ex. 1102 ¶¶ 123–129, 291–293). Additionally, Petitioner points to Jurafsky’s teaching of calculating a degree of similarity for element 1[f]. Pet. 45–47 (citing, e.g., Ex. 1107, 323–324; Ex. 1102 ¶¶ 130–134, 294–296). For the reasons given in the Petition and above (see supra § IIID.3.a– g), we determine Petitioner has shown how Yates alone or in combination with Jurafsky teaches elements 1[b] and 1[f]. Furthermore, we are persuaded that Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner proposed by IPR2019-00555 Patent 9,668,014 B2 49 Petitioner and has shown that the skilled artisan would have had a reasonable expectation of success. See, e.g., Pet. 43–47 (citing, e.g., Ex. 1102 ¶¶ 123–134, 291–296). For example, we agree on this record that a skilled artisan would have combined Yates with Jurafsky as set forth in the Petition because Jurafsky describes that its probabilistic models are useful in solving ambiguity problems and assist in machine learning. Ex. 1107, 31. Patent Owner does not argue separately Petitioner’s obviousness contentions. See generally Resp. Accordingly, upon consideration of the contentions and evidence presented by both parties in the complete record now before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 1 is unpatentable, under 35 U.S.C. § 103, as obvious over Yates alone and the combination of Yates and Jurafsky. 5. Independent Claim 11 Independent claim 11 of the ’014 Patent is similar to independent claim 1. Petitioner’s showing for anticipation with respect claim 11 is similar to its showing with respect to claim 1 and, indeed, Petitioner relies on many of the same teachings discussed with respect to claim 1. Compare Pet. 28–33, 47–48, with id. at 20–28, 42–47. Petitioner accounts for all differences between claims 1 and 11. For instance, regarding “communications circuitry” recited in claim 11, which we treat as a means-plus-function term for the reasons discussed above in Section III.C.1, Petitioner contends as follows: Yates describes voice recognition interface circuitry, infrared (IR) communications circuitry, a cable modem, an integrated services digital network (ISDN) modem, a digital subscriber line IPR2019-00555 Patent 9,668,014 B2 50 (DSL) modem, a telephone modem, a wireless modem, or a satellite receiver user equipment, such as in a mobile phone, personal computer, set-top box, or recording device, which (as recited in 11[d]) are used to receive a voice command from a user. Pet. 29–30 (citing, e.g., Ex. 1104, 4:48–52, 6:41–46, 12:8–11, 12:64–13:11, 13:23–30, 14:7–9, 14:34–48, 15:4–9, 16:16–23, 16:29–34, 17:37–51, 18:17– 21, Figs. 1–6; Ex. 1102 ¶¶ 265–266). Dr. Fox testifies that Yates’s “communications circuitry is substantially identical to the communications circuitry described in the ’014 patent.” Ex. 1102 ¶ 267. Indeed, Dr. Fox’s declaration testimony includes a side-by-side comparison of the communications circuitry in the ’014 Patent and Yates’s communications circuitry, as well as further explanation and discussion. Id. ¶¶ 268–270. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (see, e.g., Ex. 1102 ¶¶ 265–270) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For example, Yates describes “media guidance applications may be provided as on-line applications (i.e., provided on a web-site), or as stand-alone applications or clients on hand-held computers, personal digital assistants (PDAs) or cellular telephones.” Ex. 1104, 4:48– 52. Yates also describes “handheld video players, gaming platforms” (id. at 6:43–44), “[s]et-top box 204” (id. at 12:8–11), and “[r]ecording device 206” (id. at 13:23), such as “a digital video recorder (DVR)” (id. at 13:61–63) that may have IR circuitry to communicate with a remote control and a modem to communicate with the Internet or other network (id. at 14:34–48). We turn to “control circuitry” recited in claim 11, which we treat as a means-plus-function term for the reasons discussed above in Section III.C.1. Petitioner points to Yates’s control circuitry 602 and contends it “is identical IPR2019-00555 Patent 9,668,014 B2 51 to the corresponding structure described in the ’014 patent that performs the functions in steps 11[d]–11[k] (supra §§ VI.A.1.ii-ix)” and “even if not identical,” “Yates’s control circuitry is at least equivalent.” Pet. 32–33 (citing, e.g., Ex. 1102 ¶¶ 271–276). We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (see, e.g., Ex. 1102 ¶¶ 271–276) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record including the evidence cited therein. For instance, relying on the testimony of Dr. Fox, Petitioner provides side-by-side annotated versions of Figure 3 of the ’014 Patent and Figure 6 of Yates showing how these figures are the same. Pet. 32; Ex. 1102 ¶ 275. Figure 3 of the ’014 Patent, above, illustrates user equipment device 300 having control circuitry 304 (Ex. 1101, 11:24–35) annotated by Petitioner with yellow highlighting, and Figure 6 of Yates, above, illustrates user equipment 108, 110, and 112 each having control circuitry 602 (Ex. 1104, 17:33–36) also annotated by Petitioner with yellow highlighting. More specifically, Petitioner highlights (1) control circuitry 304 having processing IPR2019-00555 Patent 9,668,014 B2 52 circuitry 305 and storage 308 shown in Figure 3 of the ’014 Patent; and (2) control circuitry 602 having processing circuitry 606 and storage 608 shown in Figure 6 of Yates, and Petitioner asserts those structures are identical. Pet. 32; Ex. 1102 ¶ 275. Additionally, in the portions of the ’014 Patent identified by Petitioner, the ’014 Patent describes processing performed by control circuitry 304, i.e., the algorithm to carry out the function. Pet 19 (citing Ex. 1101, 4:38–55, 6:50–60, 11:26–13:38, 14:35–64, 15:38–16:29, 21:41– 66, 34:1–3, 35:56–58, 43:27–46:48, Figs. 3–7; Ex. 1102 ¶¶ 92–94, 96). Relying on the testimony of Dr. Fox, Petitioner points to Yates’s description of corresponding processing performed by control circuitry 602 illustrated in Figure 6. Id. at 32–33 (citing, e.g., Ex. 1102 ¶¶ 271–276). For independent claim 11, Patent Owner relies on the same arguments discussed above in Section III.D.3 with respect to claim 1. See generally Resp. Based on the complete record now before us, we determine that Petitioner has shown that Yates describes each element of claim 11. Petitioner’s alternative grounds based on obviousness are similar to those discussed above in Section III.D.4 in our analysis pertaining to claim 1. Regarding claim 11 and obviousness, Petitioner also contends that Jurafsky’s structure of a microphone and voice recognition system is at least equivalent to the corresponding structure for “communications circuitry” recited in claim 11. We determine Petitioner has shown how Yates, alone or in combination with Jurafsky, teaches each element of claim 11. Also, we are persuaded that Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner proposed by IPR2019-00555 Patent 9,668,014 B2 53 Petitioner and has shown that the skilled artisan would have had a reasonable expectation of success. See, e.g., Pet. 43–48 (citing, e.g., Ex. 1102 ¶¶ 123–134, 291–296). Accordingly, upon consideration of the contentions and evidence presented by both parties in the complete record now before us, we determine Petitioner has demonstrated by a preponderance of the evidence that claim 11 of the ’014 Patent is unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. We also determine that Petitioner has demonstrated by a preponderance of the evidence that claim 11 is unpatentable, under 35 U.S.C. § 103, as obvious over Yates alone and the combination of Yates and Jurafsky. 6. Claims 4 and 14 Each of claims 4 and 14 recites the following: The [method of claim 1/system of claim 11], [wherein/wherein the control circuitry is configured, when] selecting the respective known media asset identifier to be the suggested media asset identifier [comprises/, to]: add[ing] each known media asset identifier having a degree of similarity that exceeds the threshold to a subset of known media asset identifiers; determin[ing/e] that the respective known media asset identifier has a higher degree of similarity than the degree of similarity of each other known media asset identifier of the subset; and based on determining that the respective known media asset identifier has a higher degree of similarity than the degree of similarity of each other known media asset identifier of the subset, select[ing] the respective known media asset identifier to be the suggested media asset identifier. Ex. 1101, 49:42–57, 51:47–62. IPR2019-00555 Patent 9,668,014 B2 54 For the further recitations of claims 4 and 14, relying on the testimony of Dr. Fox, Petitioner points to Yates’s description of control circuitry 602 generating a list of identifiers that exceed a threshold and then displaying the asset with the greatest relevance. Pet. 33–35 (citing, e.g., Ex. 1104, at code (57), 2:25–28, 2:41–45, 5:52–54, 25:44–55, 27:5–12, 28:29–47, Figs. 14, 16; Ex. 1102 ¶¶ 240–245, 285). Dr. Fox testifies “[a]fter the comparison in step 1408 determinates approximate matches, as implemented by the process in Fig. 16 (which would include those exceeding the threshold), the asset with the greatest relevance is displayed in a cell to the user.” Ex. 1102 ¶ 244 (citing, e.g., Ex. 1104 at code (57), 2:25–28, 2:41–45, 5:52–54, 25:44–55, 27:5–12, 28:28–46, Figs. 14, 16). Patent Owner contends that Yates operates differently because Yates displays a list with more than one entry and Yates’s description of presenting the media asset with the highest relevance is not associated with the search function relied upon by Petitioner. Resp. 31–36 (citing, e.g., Ex. 2005 ¶¶ 95–103); see also Sur-Reply 25 (“Comcast continues to conflate Yates’s search function with Yates’s recommendation algorithm”). Mr. Tinsman testifies “Figure 15 of Yates is the only example of a user- initiated search.” Ex. 2005 ¶ 96 (emphasis added). Mr. Tinsman further testifies “Figure 14 only shows that Yates’s process makes the most relevant media asset available to the user.” Id. ¶ 100. We agree with Petitioner’s assertion and we credit and give significant weight to Dr. Fox’s testimony (see, e.g., Ex. 1102 ¶¶ 240–245, 285) over the testimony of Mr. Tinsman (Ex. 2005 ¶¶ 95–103) because Petitioner’s assertion and Dr. Fox’s testimony are consistent with the evidence of record. For instance, consistent with Dr. Fox’s testimony that “[a]fter the IPR2019-00555 Patent 9,668,014 B2 55 comparison in step 1408 determines approximate matches, as implemented by the process in Fig. 16 (which would include those exceeding the threshold), the asset with the greatest relevance is displayed in a cell to the user” (Ex. 1102 ¶ 244), Yates describes the following: The user preference can then be compared with certain identifiers or other information, such as titles, names of performers or actors, venues, etc., in the interactive media guidance application (supplied, for example, by data source 120-FIG. 1), at step 1408. Details of the comparison process will be described below with reference to FIG. 16. Ex. 1104, 25:44–50 (emphases added). Mr. Tinsman’s testimony that “Figure 14 only shows that Yates’s process makes the most relevant media asset available to the user” (Ex. 2005 ¶ 100) does not take into account Yates’s full disclosure and mischaracterizes Yates because Yates describes expressly that the details of the comparison at step 1408 of Figure 14 are described further with respect to Figure 16. Ex. 1104, 25:44–50. Also contrary to Mr. Tinsman’s testimony that “Figure 15 of Yates is the only example of a user-initiated search” (Ex. 2005 ¶ 96), Yates describes with respect to Figures 14 and 16 that the user preference compared with identifiers in data source 120 and described at step 1408 and with respect to Figure 16 (Ex. 1104, 25:44–50) is based, for example, on user input. Ex. 1104, 25:41–43. Further disclosures of user-initiated searching are discussed with respect to elements 1[a] through 1[d] above, which are unopposed by Patent Owner. See supra §§ III.D.3.a–d. IPR2019-00555 Patent 9,668,014 B2 56 Yates’s disclosures support Petitioner’s contentions and Dr. Fox’s testimony. For instance, Yates describes with respect to Figure 14, after processing step 1408, which is described in detail with respect to Figure 16 (Ex. 1104, 25:44–50) “[i]f the user preference matches or at least approximately matches the identifier or the other information, as determined by a computed high relevance score, at step 1410, the asset with the greatest relevance is made available or displayed in a cell to the user, at step 1414.” Id. at 25:50–55. Yates also describes the following: for each of a plurality of video assets matching the user specified criterion, determining, in a processor, a score indicative of relevance of the respective video asset to the user by comparing historic or expressed user preferences with data associated with the respective video asset; filtering the plurality of video assets to remove video assets having scores below a predetermined threshold value; selecting from the filtered plurality of video assets, for display in the user selected first cell, a video asset having the greatest score indicative of relevance to the user; and displaying the selected video asset in the user selected first cell on the user equipment device. Ex. 1104, 28:36–48 (emphases added). Although not necessary for our determinations herein, we agree with Petitioner’s Reply and we credit and give significant weight to Dr. Fox’s Reply Declaration because Petitioner’s contentions and the testimony in Dr. Fox’s Reply Declaration (see, e.g., Ex. 1134 ¶¶ 23–26) are consistent with the evidence of record, including the evidence cited therein and Yates’s disclosures discussed above. Patent Owner’s Sur-Reply (see, e.g., Sur- Reply 25–26) does not refute persuasively Petitioner’s arguments, Dr. Fox’s testimony, including his reply testimony, or Yates’s disclosures of IPR2019-00555 Patent 9,668,014 B2 57 displaying the asset with the greatest relevance. See, e.g., Ex. 1104, 25:44– 50, 28:36–48. Accordingly, upon consideration of the contentions and evidence presented by both parties in the complete record now before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claims 4 and 14 of the ’014 Patent are unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. We also determine that Petitioner has demonstrated by a preponderance of the evidence that claims 4 and 14 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates alone; and (2) the combination of Yates and Jurafsky. 7. Claims 6 and 16 Claims 6 and 16 depend, directly, on claims 1 and 11, respectively and each of claims 6 and 16 is reproduced below. The [method of claim 1/system of claim 11], [wherein/wherein the control circuitry is further configured, when] providing to the user the option to confirm that the suggested media asset identifier corresponds to the media asset [comprises/, to]: provid[ing/e] to the user a prompt requesting confirmation that the suggested media asset identifier corresponds to the media asset; and includ[ing/e] in the prompt a preview of the media asset. Ex. 1101, 50:3–9, 52:13–21. For the further recitations of claims 6 and 16, Petitioner points to Yates’s description regarding interactive features described with respect to Figures 8 and 10. Pet. 35–37 (citing, e.g., Ex. 1104, 20:30–38, 21:3–34, 25:50–55, Figs. 8, 10). For example, relying on the testimony of Dr. Fox, IPR2019-00555 Patent 9,668,014 B2 58 Petitioner provides annotations to Figure 10 of Yates, reproduced below. Id. at 36–37 (citing, e.g., Ex. 1102 ¶¶ 246–249, 286). Figure 10 of Yates, above, illustrates mosaic page 1000 including cell 1006, highlighted in yellow, one-touch recording 1054, highlighted in red, and “[:30]” highlighted in green. Ex. 1104, 23:12–16, Fig. 10 (including Petitioner’s annotations on page 37 of the Petition). Relying on the testimony of Mr. Tinsman, Patent Owner contends that Petitioner’s showing is deficient “for two reasons: (1) none of the options displayed on Yates’s mosaic page ‘request[ ] confirmation that the suggested media asset identifier corresponds to the media asset’; and (2) none of the options displayed on Yates’s mosaic page is a ‘prompt.’” Resp. 36–41 (citing, e.g., Ex. 2005 ¶¶ 108–114); Sur-Reply 10–12. Patent Owner’s contentions and Mr. Tinsman’s testimony (Ex. 2005 ¶¶ 108–114) are IPR2019-00555 Patent 9,668,014 B2 59 premised on Patent Owner’s narrow proposed construction, which we decline to adopt for the reasons given with respect to claim construction. See supra § III.C.3. As discussed in Section III.C.3, we apply the ordinary and customary meaning, namely “prompt” is a symbol or message requesting input from the user. We further determine that “provid[ing/e] to the user a prompt requesting confirmation” recited in claims 6 and 16 (Ex. 1101, 50:3–9, 52:13–21) may encompass more than a binary choice. We agree with Petitioner’s contentions and we credit and give significant weight to the testimony of Dr. Fox (see, e.g., Ex. 1102 ¶¶ 246– 249, 286) over the testimony of Mr. Tinsman (Ex. 2005 ¶¶ 108–114) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record.9 For instance, Yates describes that the display screens shown in Figures 8 and 10 are divided into user selectable cells (Ex. 1104, 20:9–10, 23:12–15) that allow a user to navigate and select “interactive” features such as recording a video broadcast currently showing, ordering merchandise associated with the current program, playing a 30- second preview, or viewing bonus features including alternative endings and commentaries. Id. at 20:30–38, 21:3–34, 25:50–55, Figs. 8, 10. Yates describes, more specifically, that “activation of the button 854” records the video broadcast currently showing in the corresponding cell (id. at 20:30–38 9 Dr. Fox’s deposition testimony (see, e.g., Ex. 2011, 110:18–21) is consistent with his declaration testimony (see, e.g., Ex. 1102 ¶¶ 246–249, 286) and supports Petitioner’s positions. As discussed above (see supra § III.C.2), Patent Owner mischaracterizes Dr. Fox’s deposition testimony. Resp. 40; Sur-Reply 11. IPR2019-00555 Patent 9,668,014 B2 60 (emphasis added)) and “[p]ressing the OK button 412 of remote control 400 on the [:30] symbol 856 may present to the user a 30 second preview.” Id. at 21:12–16 (emphases added). Yates describes mosaic page 1000 shown in Figure 10 as accessed by activating the button “More News” 926. Id. at 23:12–14. Yates describes that Figure 10 shows cell 1006 selected as the active cell with live audio 1052 and one-touch recording 1054 enabled. Id. at 23:14–16. Additionally, Petitioner’s contentions and Dr. Fox’s testimony (Ex. 1102 ¶¶ 246–249, 286) are supported by Yates’s disclosure of personalizing mosaics of cells. For instance, Yates describes that Figure 14 illustrates “process flow 1400 for selecting a smart feature in a mosaic cell” and that “[t]he cell may be associated with a user preference,” which is based, for example, “on user input.” Id. at 25:27–44. The “user preference can then be compared with certain identifiers” that are “supplied, for example, by data source 120—Fig. 1[ ], at step 1408” and “[d]etails of the comparison process” are described “with reference to FIG. 16.” Id. at 25:44–50. Although not necessary for our determinations herein, we agree with Petitioner’s Reply (Reply 8–11) and we credit and give significant weight to Dr. Fox’s Reply Declaration because Petitioner’s contentions and the testimony in Dr. Fox’s Reply Declaration (see, e.g., Ex. 1134 ¶¶ 27–33) are consistent with the evidence of record, including the evidence cited therein. Additionally, Petitioner’s Reply and Dr. Fox’s Reply Declaration do no more than fairly and directly respond to Patent Owner’s Response and Mr. Tinsman’s testimony. See 37 C.F.R. § 42.23(b); see also Belden, 805 F.3d at 1078−80 (holding that the Board may rely on new evidence submitted IPR2019-00555 Patent 9,668,014 B2 61 with a reply because the evidence was legitimately responsive to patent owner’s arguments and not needed for a prima facie case of obviousness). Accordingly, upon consideration of the contentions and evidence presented by both parties in the complete record now before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claims 6 and 16 of the ’014 Patent are unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. We also determine that Petitioner has demonstrated by a preponderance of the evidence that claims 6 and 16 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates alone; and (2) the combination of Yates and Jurafsky. 8. Claims 7 and 17 Claims 7 and 17 depend, directly, on claims 1 and 11, respectively and each of claims 7 and 17 further recites “identify[ing] a source of the media asset; access[ing] the media asset from the source; and caus[ing/e] the media asset to be stored.” Ex. 1101, 50:10–13, 52:22–26. For the first two recitations in claims 7 and 17, relying on the testimony of Dr. Fox, Petitioner points to Yates’s teachings relating to its data source 120, control circuitry 602, and interactive media guidance application. Pet. 38–39 (citing, e.g., Ex. 1104, 2:54–56, 3:9–18, 6:4–21, 7:56–8:64, 9:51–58, 12:12–18, 14:10– 19, 17:39–47, 17:62–18:6, 18:50–60, 25:27–30, 25:35–39, 25:44–59, 25:63– 26:25, 27:46–67, 28:49–51, Figs. 14–15; Ex. 1102 ¶¶ 251–255, 287). For the remaining recitation in claims 7 and 17, Petitioner points to control circuitry 602 recording to a hard disk drive or a separate recording device. Id. at 39 (citing, e.g., Ex. 1104, 11:3–8, 12:23–27, 12:41–51, 13:12–17, IPR2019-00555 Patent 9,668,014 B2 62 16:52–58, 20:30–41, 22:62–23:2, 23:12–16, 26:49–57; Ex. 1102 ¶¶ 256, 288). Patent Owner does not argue separately claims 7 and 17. Resp. 41– 42. We agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (Ex. 1102 ¶¶ 251–256, 287, 288) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art cited therein. For instance, consistent with Petitioner’s contentions and Dr. Fox’s testimony, Yates describes searching content sources (see supra § III.D.3; Ex. 1104, 25:35–39, 25:44–59) and presenting results. See, e.g., Ex. 1104, 18:50–56, 25:63–26:25, Fig. 15. Yates also describes recording content to a hard disk drive or a separate recording device. See, e.g., id. at 13:12–17, 23:12–16. Accordingly, upon consideration of the contentions and evidence in the complete record before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claims 7 and 17 of the ’014 Patent are unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. We also determine that Petitioner has demonstrated by a preponderance of the evidence that claims 7 and 17 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates alone; and (2) the combination of Yates and Jurafsky. 9. Claims 8 and 18 Claims 8 and 18 depend, directly, on claims 7 and 17, respectively and each of claims 8 and 18 is reproduced below. IPR2019-00555 Patent 9,668,014 B2 63 The [method of claim 1/system of claim 11], wherein [the control circuitry, when] causing the media asset to be stored [comprises/is configured to]: search[ing] schedule data for a scheduled broadcast of the media asset from the source; determin[ing/e], based on the schedule data, at least one of a date, start time, and run time for the scheduled broadcast of the media asset from the source; and based on the determined at least one of the date, start time, and run time, causing the media asset to be stored. Ex. 1101, 50:14–22, 52:27–36. For the further recitations of claims 8 and 18, Petitioner points to Yates’s description of its control circuitry 602 searching and displaying scheduled broadcast times, as well as Yates’s description of a user programming user equipment to record the asset. Pet. 39–42 (citing, e.g., Ex. 1104, 4:54–58, 5:54–59, 6:49–57, 7:57–64, 8:8–21, 21:63–22:24, 25:63– 26:13, 26:49–57, 28:52–67, Fig. 15; Ex. 1102 ¶¶ 257–262, 289). Patent Owner does not argue separately Petitioner’s contentions for claims 8 and 18. Resp. 41–42. We agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (Ex. 1102 ¶¶ 257–262, 289) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art cited therein. For instance, consistent with Petitioner’s contentions and Dr. Fox’s testimony, Yates’s screen shot 1500 shown in Figure 15 displays two scheduled sports events including the scheduled date and time of the event and the source or channel of the broadcast. Ex. 1104, 25:63–26:6; see also id. at 7:57–64 (describing that “[d]ata source 120 in system 100 may include a program listings database that is used to provide the user with television program- IPR2019-00555 Patent 9,668,014 B2 64 related information”), 8:8–21 (describing providing program schedule data to user equipment), 21:63–22:24 (“The smart feature will attempt to match the user’s historic or expressed interest with the information about the asset or event and either display the asset in the corresponding cell automatically, when a match is found, or inform the user of a time or date when the asset will be available”). Yates further describes users programming user equipment 108 to record the asset. See, e.g., id. at 4:54–58, 26:55–57. Accordingly, upon consideration of the contentions and evidence in the complete record before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claims 8 and 18 of the ’014 Patent are unpatentable, under 35 U.S.C. § 102, as anticipated by Yates. We also determine that Petitioner has demonstrated by a preponderance of the evidence that claims 8 and 18 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates alone; and (2) the combination of Yates and Jurafsky. E. Obviousness—Claims 2, 3, 12, and 13 Petitioner contends each of claims 2 and 12 of the ’014 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates, Taranenko, and Wang; (2) Yates, Jurafsky, Taranenko, and Wang; (3) Yates, Euzenat, and Wang; (4) Yates, Jurafsky, Euzenat, and Wang; (5) Yates, Alberca, and Wang; and (6) Yates, Jurafsky, Alberca, and Wang. Pet. 13. Petitioner contends that each of claims 3 and 13 of the ’014 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over Yates, Jurafsky, and Wang. Id. at 14. In our discussion below, we first provide a brief overview of the prior art, and then we address the parties’ contentions in turn. IPR2019-00555 Patent 9,668,014 B2 65 1. Overview of Taranenko Taranenko is directed to geographical information systems involving geographic names. Ex. 1123 ¶ 3. Taranenko indicates that data storage and retrieval in such systems may require knowledge of the exact place name spelling. Id. ¶ 6. Taranenko describes searching for similar feature names and expressing the degree of similarity as a percentage, with 100 percent indicating exact matches. Id. ¶¶ 11–12. Figure 14 of Taranenko is reproduced below. IPR2019-00555 Patent 9,668,014 B2 66 Figure 14 of Taranenko, above, illustrates how proximity values are calculated for two names, designated as a first name and a second name, each consisting of a normalized string of characters. Id. ¶ 74. Processing of Figure 14 begins in step 141 with determining whether the first character in the first name is equal to the first character in the second name. Id. ¶ 74, Fig. 14. If yes, processing proceeds to step 142 and a proximity value of 100 percent is assigned for this character. Id. Then processing proceeds to step 146 to check all characters. Id. If the determination in step 141 is no, processing proceeds to step 143 with determining whether the next character from the first name equals either the preceding or following character from the second name. Id. ¶ 75, Fig. 14. If yes, processing proceeds to step 144 and a proximity value of 90 percent is assigned for this character. Id. Then processing proceeds to step 146 to check all characters. Id. If no, processing proceeds to step 145 and a proximity value of 0 percent is assigned for this character. Id. at Fig. 14. Then processing proceeds to step 146 to check all characters. Id. ¶ 75, Fig. 14. In step 146, a determination is made as to whether all characters are checked. Id. at Fig. 14. If no, processing returns to step 141. Id. If yes, processing proceeds to step 147. Id. In step 147, an average proximity is calculated by summing the proximity values for all characters in the name string and dividing the length of the longest string. Id. ¶ 76. 2. Overview of Wang Wang is a book describing computer programming with respect to certain programming languages including BASIC and C++. Ex. 1116, 12– IPR2019-00555 Patent 9,668,014 B2 67 13. Wang describes subprograms (id. at 29–30) and using functions (id. at 42–49). 3. Overview of Euzenat Euzenat is a book describing ontology matching to find relations between entities expressed in different ontologies. Ex. 1106, 9. Euzenat describes an algorithm for providing a percentage of characters that match between two strings. Id. at 10–13. 4. Overview of Alberca Alberca is a series of web pages including a description of calculating a Hamming similarity for sequences. Ex. 1105, 11–12. 5. Claims 2 and 12 Claims 2 and 12 depend, directly, on claims 1 and 11, respectively and each of claims 2 and 12 recites the following: The [method of claim 1/system of claim 11], wherein [the control circuitry is configured, when] calculating the degree of similarity between the media asset identifier and each known media asset identifier [comprises/,to]: for each known media asset identifier: initializ[ing/e] the degree of similarity for the known media asset identifier to a default value; for each character position in the media asset identifier: determin[ing/e] whether a character at the character position in the media asset identifier matches a character at the character position in the known media asset identifier; and based on determining that the character at the character position in the media asset identifier matches the character at the character position in the known media IPR2019-00555 Patent 9,668,014 B2 68 asset identifier, increment[ing] the degree of similarity for the known media asset identifier by a unit. Ex. 1101, 49:11–28, 51:15–32. For the further recitations of claims 2 and 12, Petitioner points to the teachings summarized above in Taranenko, Euzenat, and Alberca, as well as Wang. Pet. 49–56 (citing, e.g., Ex. 1123 ¶¶ 12, 50–51, 65, 74–76, Fig. 14; Ex. 1105, 9–12; Ex. 1106, 9–13; Ex. 1116, 12–13, 23, 29–30, 42–49; Ex. 1102 ¶¶ 143–148, 151–164, 298–313). Petitioner also has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner recited in claims 2 and 12 and provides Dr. Fox’s testimony as support. Id. (citing, e.g., Ex. 1102 ¶¶ 143–148, 151–164, 298– 313). Dr. Fox, for example, testifies “[a] POSA would have been motivated to combine Yates with Taranenko” because “Taranenko’s algorithm would increase the accuracy of Yates’s similarity scoring because Taranenko evaluates matching character and relative position matches and weights the result accordingly.” Ex. 1102 ¶¶ 151–152 (citing, e.g., Ex. 1123 ¶¶ 50–51, 74–76, Fig. 14). Dr. Fox also testifies “a POSA concerned with improving the precision and accuracy of Yates’s relevance score, would have been motivated to use the Hamming Similarity algorithms as taught in Alberca and Euzenat, since the algorithms not only consider the number of characters (and thus words) that match between two strings, but also considers the order of the characters (and words) in the string.” Id. ¶ 157 (citing, e.g., Ex. 1105, 9; Ex. 1106, 13; Ex. 1104, 2:19–27, 12:52–54, 14:21–23, 16:48– 51, 17:52–58, 26:58–66, 29:16–18). IPR2019-00555 Patent 9,668,014 B2 69 Patent Owner asserts that Alberca, Euzenat, and Taranenko are deficient because they do not teach incrementing the degree of similarity and each of Alberca, Euzenat, and Taranenko assign a variable value to each matching character, rather than “a unit.” Resp. 42–63; Ex. 2005 ¶¶ 118– 164; Sur-Reply 12–20. Mr. Tinsman testifies that in contrast to claims 2 and 12, in Alberca, Euzenat, and Taranenko, “values are calculated before any value is assigned to the alleged ‘degree of similarity.’” Ex. 2005 ¶¶ 118– 124, 131–133 (emphasis added); see also id. ¶ 136 (in Alberca “[t]he Hamming similarity metric is the final result of the process”), ¶ 141 (Petitioner’s “application of Euzenat has the same deficiencies as Alberca”), ¶ 146 (“Taranenko’s final average proximity value is not incremented”). Mr. Tinsman’s testimony also is based on Patent Owner’s proposal that “unit” must be the same from comparison to comparison. Id. ¶¶ 154–164. Patent Owner’s contentions and Mr. Tinsman’s testimony regarding the deficiencies of Alberca, Euzenat, and Taranenko are premised on Patent Owner’s proposed construction, which we decline to adopt. See supra § III.C.4. For the reasons given above (id.), we determine that for each character position in the media asset identifier: determin[ing/e] whether a character at the character position in the media asset identifier matches a character at the character position in the known media asset identifier; and based on determining that the character at the character position in the media asset identifier matches the character at the character position in the known media asset identifier, increment[ing] the degree of similarity for the known media asset identifier by a unit. (Ex. 1101, 49:11–28 (emphasis added)) recited in claims 2 and 12 encompasses matching all characters first and then calculating the degree of similarity and the similarity metric may be expressed as a number or IPR2019-00555 Patent 9,668,014 B2 70 percentage. We also determine that the claims do not require “unit” to be the same from comparison to comparison. Upon consideration of the contentions and evidence of both parties provided with respect to claim construction and the further recitations of claims 2 and 12, therefore, we agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (see, e.g., Ex. 1102 ¶¶ 143– 148, 151–164, 298–313; Ex. 1134 ¶¶ 36–46) over the testimony of Mr. Tinsman (see, e.g., Ex. 2005 ¶¶ 118–171) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art cited therein. For instance, Taranenko teaches calculating a proximity value (degree of similarity) for all characters in a string by assigning a proximity value for each character based on one or more comparisons and then calculating the average proximity value for the string. Ex. 1123, Fig. 14; see also id. at ¶ 12 (Taranenko describes “quantif[ying] the degree of similarity” (emphasis added)), ¶¶ 50– 51 (describing “an example of a comparison and weighting of characters for two short words, KHAN and KAHN” and that “[t]he degree of similarity is simply calculated as (100+90+90+ 100)/4=95%” (emphases added)), ¶¶ 74– 76 (describing that Figure 14 “illustrates how the proximity values are calculated for any two names” and that “[e]ach character in the first name is IPR2019-00555 Patent 9,668,014 B2 71 compared to the corresponding character in the second name, character by character” (emphasis added)).10 Also consistent with Petitioner’s contentions and Dr. Fox’s testimony, Euzenat and Alberca teach using the Hamming similarity for string of characters in the alphabet. Ex. 1105, 9–12; Ex. 1106, 9–13. For instance, Euzenat describes “comparing two strings” using “the Hamming distance which counts the number of positions in which the two strings differ.” Ex. 1106, 13 (emphasis added).11 Alberca, more specifically, describes that “the Hamming similarity is a function . . . that measures the number of positions for which the corresponding symbols are equals, divided by the length of the big[g]est sequence.” Ex. 1105, 9. Patent Owner’s assertions relating to Dr. Fox’s deposition testimony mischaracterize that testimony and are based on Patent Owner’s overly narrow claim construction, which we did not adopt. See supra § III.C.4. Dr. Fox’s deposition testimony (see, e.g., Ex. 2011, 146:6–21, 166:7–18, 10 Mr. Tinsman testifies that “Taranenko relies on a proximity function that includes characters other than characters in corresponding positions in its calculation.” Ex. 2005 ¶¶ 142–143. Claims 2 and 12 depend from claims 1 and 11, respectively, which recite “comprising.” Claims 2 and 12, therefore, do not preclude further weighting. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”). 11 Dr. Fox testifies “[a] POSA would have recognized that converting Euzenat’s Hamming distance to a Hamming Similarity” would have been “beneficial to reduce the amount of calculations (thus speeding up the algorithm and using less processing power), i.e., by only considering the minimum number of characters and eliminating a step of subtracting the Hamming distance from 1.” Ex. 1102 ¶ 147. IPR2019-00555 Patent 9,668,014 B2 72 168:11–18, 187:18–188:15) is consistent with his declaration testimony (see, e.g., Ex. 1102 ¶¶ 143–148, 151–164, 298–313) and supports Petitioner’s positions. For instance, Dr. Fox testifies that the disclosures in the prior art are not limited in the manner asserted by Patent Owner. See, e.g., Ex. 2011, 164:5–166:18. Patent Owner also asserts that a person having ordinary skill in the art would not have used the techniques of Alberca, Euzenat, or Taranenko in the Yates-Jurafsky system. Resp. 63–67 (citing, e.g., Ex. 2005 ¶¶ 118, 168– 171); Sur-Reply 20–23. Mr. Tinsman testifies the techniques of Alberca, Euzenat, and Taranenko would have provided “impractical scoring results” for “sufficiently long character strings.” Ex. 2005 ¶¶ 168–169. Mr. Tinsman testifies, for example, “Star Trek” would be rated higher than “Star Wars Episode 1: The Phantom Menace” for a user entry of “Star Wars.” Id. As to whether one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner recited, we agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (see, e.g., Ex. 1102 ¶¶ 143–148, 151–164, 298–313; Ex. 1134 ¶¶ 43–46) over the testimony of Mr. Tinsman (see, e.g., Ex. 2005 ¶¶ 118– 171) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art cited therein. Indeed, Patent Owner does not dispute that the techniques of Alberca, Euzenat, or Taranenko appropriately return a higher similarity score in other circumstances, such as rating “Star Wars Episode 1: The Phantom Menace” higher than “The Princess Bride.” Sur-Reply 21. As our reviewing court explains, the existence of better alternatives “does not mean IPR2019-00555 Patent 9,668,014 B2 73 that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Patent Owner’s argument that Petitioner’s assertion is conclusory (Resp. 63–67; Ex. 2005 ¶¶ 118, 168–171; Sur-Reply 20–23) does not take into account Petitioner’s contentions and Dr. Fox’s detailed testimony explaining why a person having ordinary skill in the art would have made the proposed combinations and had a reasonable expectation of success. See, e.g., Ex. 1102 ¶¶ 143–148, 151–164, 298–313; Ex. 1134 ¶¶ 43–46; Pet. 49–56. Patent Owner’s argument and Mr. Tinsman’s testimony that Alberca, Euzenat, and Taranenko introduce complexity (Resp. 63–67; Ex. 2005 ¶¶ 118, 168–171; Sur-Reply 20–23) mischaracterizes the references, which describe techniques that a person having ordinary skill in the art would have implemented as a software routine using known software development techniques on Yates’s control circuitry. See, e.g., Ex. 1123, code 57 (describing “[a] computer-based software tool for performing intelligent searches for geographic names data utilizing a fuzzy-logic search as well as linguistic principles and allowing the user to select various search criteria is disclosed”), ¶ 9 “[t]he invention provides a computer-based software tool”). Indeed, Yates describes checking the degree or fuzziness of a match. Ex. 1104, 26:58–65 (describing checking “if at least a partial (fuzzy) match exists” and that “[t]he degree or fuzziness of a match can be computed using a suitable scoring function”). Also, on this record, Petitioner has demonstrated that modifying Yates to include the technique in Alberca, Euzenat, or Taranenko would not have been “uniquely challenging or difficult for one of ordinary skill in the art” at IPR2019-00555 Patent 9,668,014 B2 74 the time of the invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). We determine that Petitioner has shown that the skilled artisan would have had a reasonable expectation of success. Although not necessary for our determinations herein, we agree with Petitioner’s Reply (Reply 14–21) and we credit and give significant weight to Dr. Fox’s Reply Declaration because Petitioner’s contentions and the testimony in Dr. Fox’s Reply Declaration (see, e.g., Ex. 1134 ¶¶ 34–46) are consistent with the evidence of record, including the evidence cited therein. Additionally, Petitioner’s Reply and Dr. Fox’s Reply Declaration do no more than fairly and directly respond to Patent Owner’s Response and Mr. Tinsman’s testimony. See 37 C.F.R. § 42.23(b); see also Belden, 805 F.3d at 1078−80 (holding that the Board may rely on new evidence submitted with a reply because the evidence was legitimately responsive to patent owner’s arguments and not needed for a prima facie case of obviousness). In summary, upon consideration of the contentions and evidence presented by both parties in the complete record now before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 2 and 12 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates, Taranenko, and Wang; (2) Yates, Jurafsky, Taranenko, and Wang; (3) Yates, Euzenat, and Wang; (4) Yates, Jurafsky, Euzenat, and Wang; (5) Yates, Alberca, and Wang; and (6) Yates, Jurafsky, Alberca, and Wang. IPR2019-00555 Patent 9,668,014 B2 75 6. Claims 3 and 13 Claims 3 and 13 depend, directly, on claims 1 and 11, respectively, and each of claims 3 and 13 recites the following: The [method of claim 1/system of claim 11], wherein [the control circuitry is configured, when] calculating the degree of similarity between the media asset identifier and each known media asset identifier [comprises/, to]: for each known media asset identifier: initializ[ing/e] the degree of similarity for the known media asset identifier to a default value; for each word in the media asset identifier: determin[ing/e] whether the known media asset identifier contains the word; and based on determining that the known media asset identifier contains the word, increment[ing] the degree of similarity for the known media asset identifier by a unit. Ex. 1101, 49:29–41, 51:33–46. For the further recitations of claims 3 and 13, Petitioner points to Jurafsky’s vector-space model and Wang’s description of initializing to a default value. Pet. 57–59 (citing, e.g., Ex. 1107, 323–324; Ex. 1116, 12–13, 23, 29–30, 42–49; Ex. 1102 ¶¶ 168–172, 314–322). Petitioner also has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner recited in claims 3 and 13 and provides Dr. Fox’s testimony as support. Id. (citing, e.g., Ex. 1102 ¶¶ 168–172, 314– 322). Patent Owner asserts Jurafsky does not perform its analysis “for each word in the media asset identifier.” Resp. 67–68 (citing, e.g., Ex. 2005 ¶¶ 174–176); Sur-Reply 23–24. Mr. Tinsman testifies using Jurafsky, “[i]f a IPR2019-00555 Patent 9,668,014 B2 76 user searched for ‘Chitty Chitty Bang Bang’ using the search term ‘Chitty Chitty Bang Bang,’ Jurafsky would only identify two shared terms.” Ex. 2005 ¶ 175. Patent Owner’s argument and Mr. Tinsman’s testimony are based on a requirement that each instance of a word be matched, which is not recited in claims 3 and 13. Patent Owner’s assertion that in certain circumstances, Jurafsky’s algorithm does not provide accurate results (Sur- Reply 23–24) does not undermine Petitioner’s reasoning to combine and does not mean that Jurafsky’s algorithm is deficient with respect to teaching the recitations in claims 3 and 13. In re Mouttet, 686 F.3d at 1334 (explaining that the existence of better alternatives “does not mean that an inferior combination is inapt for obviousness purposes”). Accordingly, we agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (see, e.g., Ex. 1102 ¶¶ 168– 172, 314–322; Ex. 1134 ¶¶ 47–51) over the testimony of Mr. Tinsman (see, e.g., Ex. 2005 ¶¶ 174–176) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art cited therein. For instance, Jurafsky describes “vector space model of information retrieval” and that “a simple way to determine the relevance of a document to a query is to determine the number of terms they have in common.” Ex. 1107, 323–324. Petitioner has shown that the further recitations of claims 3 and 13 are taught by the asserted art. See, e.g., Pet. 57–59 (citing, e.g., Ex. 1107, 323– 324; Ex. 1116, 12–13, 23, 29–30, 42–49; Ex. 1102 ¶¶ 168–172, 314–322). Petitioner also has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner recited in claims 3 and 13 and IPR2019-00555 Patent 9,668,014 B2 77 has shown that the skilled artisan would have had a reasonable expectation of success. Although not necessary for our determinations herein, we agree with Petitioner’s Reply (Reply 21–23) and we credit and give significant weight to Dr. Fox’s Reply Declaration because Petitioner’s contentions and the testimony in Dr. Fox’s Reply Declaration (see, e.g., Ex. 1134 ¶¶ 47–51) are consistent with the evidence of record, including the evidence cited therein. Additionally, Petitioner’s Reply and Dr. Fox’s Reply Declaration do no more than fairly and directly respond to Patent Owner’s Response and Mr. Tinsman’s testimony. See 37 C.F.R. § 42.23(b); see also Belden, 805 F.3d at 1078−80 (holding that the Board may rely on new evidence submitted with a reply because the evidence was legitimately responsive to patent owner’s arguments and not needed for a prima facie case of obviousness). In summary, upon consideration of the contentions and evidence presented by both parties in the complete record now before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 3 and 13 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over Yates, Jurafsky, and Wang. F. Obviousness—Claims 5, 9, 15, and 19 Petitioner contends each of claims 5, 9, 15, and 19 of the ’014 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates and Hamano; and (2) Yates, Jurafsky, and Hamano. Pet. 14. In our discussion below, we first provide a brief overview of the prior art, and then we address the parties’ contentions in turn. IPR2019-00555 Patent 9,668,014 B2 78 1. Overview of Hamano Hamano is directed to a media system that provides media content scheduling. Ex. 1109 ¶ 1. Hamano describes a media planner application using user profiles to schedule content consumption or recommend media events to one or more users. Id. ¶ 81. Hamano describes selecting the best recommendations from search results based on user preferences stored in the user profile. Id. ¶¶ 112–113. Hamano describes an example of a user- supplied preference as preferring “hockey” over “basketball.” Id. ¶ 116. Hamano also describes that the user profile may contain a sub-profile including information about devices available to a user. Id. ¶ 97. The user may select the device from which the event is to be presented or to which the media event is to be delivered. Id. ¶ 120. For instance, Hamano describes delivering recorded media on a portable device prior to the scheduled timeslot, which involves determining the device to which the media is to be delivered. Id. ¶¶ 135–136. 2. Claims 5 and 15 Claims 5 and 15 depend, directly, on claims 1 and 11, respectively and each of claims 5 and 15 is reproduced below. The [method of claim 1/system of claim 11], wherein [the control circuitry is further configured to] select[ing] the respective known media asset identifier to be the suggested media asset identifier [is further based on/by]: determining a characteristic of a media asset corresponding to the respective known media asset identifier; accessing a user profile of the user; determining that the user profile comprises a preference of the user for media assets with the characteristic; and IPR2019-00555 Patent 9,668,014 B2 79 based on determining that the user profile comprises the preference of the user for media assets with the characteristic, selecting the respective known media asset identifier to be the suggested known media asset identifier. Ex. 1101, 49:58–50:2, 52:1–12. For the further recitations of claims 5 and 15, Petitioner points to Hamano’s description of selecting the best recommendations from search results based on user preferences, such as preferring “hockey” over “basketball,” which are stored in the user profile. Pet. 60–62 (citing, e.g., Ex. 1109 ¶¶ 81, 112–113, 116). Petitioner also has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner recited in claims 5 and 15 and provides Dr. Fox’s testimony as support. Id. at 62–63 (citing, e.g., Ex. 1102 ¶¶ 186–194, 329–333, 344, 348). Dr. Fox testifies that Hamano’s feature of “recommending content based on user preferences in a user profile” would have been recognized as “advantageous” (Ex. 1102 ¶ 187) and would have been an improvement “making [Yates’s] recommendations even more likely to be relevant, and therefore, more useful to the particular user” (id. ¶ 189). Patent Owner does not argue separately Petitioner’s contentions for claims 5 and 15. Resp. 68–69. We agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (Ex. 1102 ¶¶ 186–194, 329–333, 344, 348) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art cited therein. For instance, Hamano describes that “[u]ser profiles may be used by the media planner application to schedule content consumption (e.g. IPR2019-00555 Patent 9,668,014 B2 80 viewing, recording, listening, etc.) and/or recommend media events to one or more users” and “[u]ser profiles may contain different types of information or sub-profiles, oriented to a particular aspect of user preferences or activities.” Ex. 1109 ¶ 81. Hamano also describes “if one or more suitable content recommendations are found, one or more best recommendation(s) may be selected for presentation (step 1628).” Id. ¶ 113. Additionally, Hamano describes that “[t]he selection may be performed by comparing recommended content parameters to user profile and preference information, assigning weight scores to each piece of content, and selecting one or more of the highest-scoring pieces of content.” Id. Hamano sets forth an example “[i]f the user has indicated in the past that the user prefers watching hockey over basketball, then the hockey game may be designated as the default content.” Id. ¶ 116. Accordingly, upon consideration of the complete record before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 5 and 15 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates and Hamano; and (2) Yates, Jurafsky, and Hamano. 3. Claims 9 and 19 Each of claims 9 and 19 is reproduced below. The [method of claim 7/system of claim 17], wherein [the control circuitry is configured, when] causing the media asset to be stored [comprises, to]: detect[ing] a device identifier in the voice command; access[ing] a user profile of the user, wherein the user profile comprises at least one association between at least one device identifier and at least one device; IPR2019-00555 Patent 9,668,014 B2 81 find[ing] the device identifier in the user profile; determin[ing/e] a device with which the device identifier is associated in the user profile; and caus[ing/e] the media asset to be stored [on the device/to the storage circuitry, wherein the device comprises the storage circuitry]. Ex. 1101, 50:23–32, 52:37–47. For the further recitations of claims 9 and 19, Petitioner points to Hamano’s description of using user profiles to record content on a device. Pet. 64–70 (citing, e.g., Ex. 1109 ¶¶ 50, 51, 55, 57, 68–69, 71–73, 77, 84, 90, 97–104, 110–117, 120–122, 126, 128, 132–137, Figs. 4, 11–18). Also, Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner recited in claims 9 and 19 and provides Dr. Fox’s testimony as support. Id. (citing, e.g., Ex. 1102 ¶¶ 190– 194, 334–343, 345–347, 349). Dr. Fox, for example, testifies as follows: combining Hamano’s known technique of scheduling content on a device would benefit the user and thus improve Yates’s recording of the media asset by not wasting resources delivering content to a device that is not accessible to the user or at times when the user typical[ly] does not use the device, by delivering only content that is compatible for playback by the device to which it is delivered, and by ensuring delivery of content to a device by preloading content on a device at times the device is connected to a network. Ex. 1102 ¶ 190. Dr. Fox also testifies that a person having ordinary skill in the art “would have further recognized that using the above-discussed device selection techniques described in Hamano would have addressed challenges of a user having multiple devices connected to the Yates system.” Id. ¶ 191. IPR2019-00555 Patent 9,668,014 B2 82 Patent Owner does not argue separately Petitioner’s contentions for claims 9 and 19. Resp. 68–69. We agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (Ex. 1102 ¶¶ 190–194, 334–343, 345–347, 349) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art cited therein. For instance, Hamano describes “[a] user profile may also contain one or more accessibility preferences sub-profiles. This sub-profile may include information about the devices that may be available to a user at a particular time [and] the connectivity available to the user at a particular time.” Ex. 1109 ¶ 97. Hamano also describes “when the user schedules a particular media event, the user may select the device from which the event is to presented or to which the media event is to be delivered” and “[i]f the user does not select a presentation device for a particular media event, or when the media event is automatically scheduled, an appropriate presentation device for the media event may be automatically selected, based on user profile elements such as device availability and connectivity.” Id. ¶ 120. For instance, Hamano describes delivering recorded media on a portable device prior to the scheduled timeslot, which involves determining the device to which the media is to be delivered. Id. ¶ 135 (describing “if a recorded media event is scheduled to be presented on a portable device at some point in the future, the media event may need to be transferred to or preloaded on the portable device some time before presentation, possibly due to lack of connectivity at the scheduled presentation timeslot”), ¶ 136 (describing “[w]hen media does need to be delivered, in step 1806, the device to which the media is to be delivered is determined”). IPR2019-00555 Patent 9,668,014 B2 83 Accordingly, upon consideration of the contentions and evidence in the complete record before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 9 and 19 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates and Hamano; and (2) Yates, Jurafsky, and Hamano. G. Obviousness—Claims 10 and 20 Petitioner contends each of claims 10 and 20 of the ’014 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates and Wood; and (2) Yates, Jurafsky, and Wood. Pet. 14. In our discussion below, we first provide a brief overview of the prior art, and then we address the parties’ contentions in turn. 1. Overview of Wood Wood is directed to video data recorders that use channel guide data and user entered selection criteria. Ex. 1110, 1:58–62. Figure 2 of Wood is reproduced below. IPR2019-00555 Patent 9,668,014 B2 84 Figure 2 of Wood, above, illustrates a method of recording programming including, among other things, step 201 in which processor 101 monitors criteria database 104 and the channel guide to determine when programming is available that meets predetermined user selectable criteria. Id. at 4:8–13. If no current programming meets the preselected criteria (branch 202), IPR2019-00555 Patent 9,668,014 B2 85 processor 101 continues to monitor for programming meeting the criteria. Id. at 4:16–18. When (branch 203) programming is available that meets the criteria, in step 205 a determination is made whether multiple programs simultaneously meet the criteria. Id. at 4:19–24. If in step 205 a determination is made that multiple programs simultaneously meet the criteria (branch 206), the system determines the highest priority programming based on user provided priority information and processing proceeds to step 208. Id. at 4:26–30, Fig. 2. If only one program meets the criteria (branch 207), then processing proceeds to step 208 and a determination is made whether the disk has room for recording the show. Id. at 4:31–35. If the disk has room (branch 211), in step 215 the show is recorded. Id. 4:35–36. If the disk does not have room (branch 209), in step 212 a determination is made whether a show may be selected for removal, for example, if a show already stored has a lower priority than the show to be recorded. Id. at 4:36–40. 2. Claims 10 and 20 Each of claims 10 and 20 recites the following: The [method of claim 7/system of claim 17], wherein [the control circuitry is configured, when] causing the media asset to be stored [comprises/, to]: determin[ing/e] whether there is sufficient space on a device for the media asset to be stored; based on determining that there is insufficient space on the device for the media asset to be stored, provid[ing/e] to the user an option to select a media asset to delete from the [device/storage circuitry]; IPR2019-00555 Patent 9,668,014 B2 86 receiv[ing/e] a selection from the user of a second media asset to delete from the [device/storage circuitry]; caus[ing/e] the second media asset to be deleted from the [device/storage circuitry]; and caus[ing/e] the media asset to be stored [on the device/to the storage circuitry]. Ex. 1101, 50:33–45, 52:48–61. For the further recitations of claims 10 and 20, Petitioner points to Wood’s teachings relating to determining whether the disk has room for recording the show, as well as Wood’s teachings for personal channels for recording shows to facilitate playback. Pet. 70–76 (citing, e.g., Ex. 1110, 1:7–10, 1:53–63, 2:35–55, 3:22–26, 4:1–5:65, 7:1–62, Fig. 2; Ex. 1102 ¶¶ 203–208, 352–358). Also, Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have modified and combined the teachings of the asserted art in the manner recited in claims 10 and 20 and provides Dr. Fox’s testimony as support. Id. at 70–76 (citing, e.g., Ex. 1102 ¶¶ 203–208, 350–358). Dr. Fox, for example, testifies that “Wood provides additional capability that a POSA would find beneficial for improving the usefulness of the Yates system.” Ex. 1102 ¶ 205. Dr. Fox, more specifically, testifies “a solution” for integrating “channel guides with the record and playback capabilities of video data recorders” and managing storage space for recording shows. Id. ¶ 206 (citing, e.g., Ex. 1101, 1:53–63, 4:8–50, 5:59– 65, 7:1–62, Fig. 2). Dr. Fox also testifies “[b]ased on the benefits discussed above for managing storage space, a POSA would have been motivated to incorporate the personal channel functionality of Wood (including the IPR2019-00555 Patent 9,668,014 B2 87 recording, deleting, and freeing-up of storage space) into the Yates system.” Id. ¶ 207. Patent Owner does not argue separately Petitioner’s contentions for claims 10 and 20. Resp. 68–69. We agree with Petitioner, and we credit and give significant weight to the testimony of Dr. Fox (Ex. 1102 ¶¶ 203–208, 350–358) because Petitioner’s contentions and Dr. Fox’s testimony are consistent with the evidence of record, including the teachings of the asserted prior art discussed above. For instance, Wood describes determining “whether there is room on the disk for recording the show, block 208” (Ex. 1110, 4:29-35, Fig. 2 (block 208)), if not, determining “whether there are shows which may be selected for removal, block 212” (id. at 4:36-39, Fig. 2 (blocks 209, 212)). When there is room on the disk, the show is recorded. Id. at 4:35-36, Fig. 2 (block 215). Wood also describes an embodiment that “provides for ‘personal channels’ into which selected programming may be stored.” Id. at 4:41–43. Personal channels are “logical organizations of recorded shows” (id. at 7:4– 5), which “may be displayed, similar to other channels in the user interface” (id. at 7:27–28). Wood describes “[w]hen the user stores criteria information to select shows for recording, the user may also specify a person channel to store the show in.” Id. at 7:10–14. Wood also describes “in certain embodiments, the system allocates disk space for the personal channel when the personal channel is created,” but “[i]f there is not sufficient room on the disk to allocate space when the personal channel is created, the user is given an opportunity to delete other previously recorded or previously allocated disk space.” Id. at 7:46–56. IPR2019-00555 Patent 9,668,014 B2 88 Accordingly, upon consideration of the contentions and evidence in the complete record before us, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 10 and 20 of the ’014 Patent are unpatentable, under 35 U.S.C. § 103, as obvious over (1) Yates and Wood; and (2) Yates, Jurafsky, and Wood. IV. CONCLUSION12 Petitioner challenges claims 1–20 of the ’014 Patent. Pet. 1. Claims 35 U.S.C. § Reference(s)/Basis Claims Shown Unpatent- able Claims Not Shown Unpatent- able 1, 4, 6–8, 11, 14, 16–18 102 Yates 1, 4, 6–8, 11, 14, 16– 18 1, 4, 6–8, 11, 14, 16–18 103 Yates 1, 4, 6–8, 11, 14, 16– 18 1, 4, 6–8, 11, 14, 16–18 103 Yates, Jurafsky 1, 4, 6–8, 11, 14, 16– 18 12 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). IPR2019-00555 Patent 9,668,014 B2 89 Claims 35 U.S.C. § Reference(s)/Basis Claims Shown Unpatent- able Claims Not Shown Unpatent- able 2, 12 103 Yates, Taranenko, Wang 2, 12 2, 12 103 Yates, Jurafsky, Taranenko, Wang 2, 12 2, 12 103 Yates, Euzenat, Wang 2, 12 2, 12 103 Yates, Jurafsky, Euzenat, Wang 2, 12 2, 12 103 Yates, Alberca, Wang 2, 12 2, 12 103 Yates, Jurafsky, Alberca, Wang 2, 12 3, 13 103 Yates, Jurafsky, Wang 3, 13 5, 9, 15, 19 103 Yates, Hamano 5, 9, 15, 19 5, 9, 15, 19 103 Yates, Jurafsky, Hamano 5, 9, 15, 19 10, 20 103 Yates, Wood 10, 20 10, 20 103 Yates, Jurafsky, Wood 10, 20 Overall Outcome 1–20 Table 2 of this Decision, above, summarizes the outcome for each challenged claim and ground in the instant proceeding. IPR2019-00555 Patent 9,668,014 B2 90 V. ORDER In consideration of the foregoing, it is hereby ORDERED that claims 1–20 of the ’014 Patent have been proven to be unpatentable; and FURTHER ORDERED that because this is a Final Written Decision, parties to the proceeding seeking judicial review of the Decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. IPR2019-00555 Patent 9,668,014 B2 91 For PETITIONER: Frederic Meeker Bradley Wright Michael Cuviello Jordan Bodner Chris McKee Blair Silver Tom Pratt Eric Zelepugas Azuka Dike BANNER WITCOFF Fmeeker@bannerwitcoff.com bwright@bannerwitcoff.com mcuviello@bannerwitcoff.com jbodner@bannerwitcoff.com cmckee@bannerwitcoff.com bsilver@bannerwitcoff.com tpratt@bannerwitcoff.com ezelepugas@bannerwitcoff.com adike@bannerwitcoff.com For PATENT OWNER: Jason Eisenberg Christian Camarce Tyler Dutton STERNE KESSLER GOLDSTEIN AND FOX PLLC jasone-ptab@sternekessler.com ccamarce-ptab@sternekessler.com tdutton-ptab@sternekessler.com Copy with citationCopy as parenthetical citation
