Not every patent dispute is decided by a jury. A growing share of the fight over whether a patent is valid now happens at the Patent Trial and Appeal Board (PTAB) inside the U.S. Patent and Trademark Office, through a proceeding called inter partes review (IPR). In IPR2017-00941, Comcast Cable Communications, LLC challenged the validity of Rovi's U.S. Patent 9,172,987, and Barr Group was retained by the patent owner, Rovi, to help defend it. Rovi, formerly Macrovision and later part of TiVo, built a large portfolio around interactive program guides and set-top box software, the technology that shapes how viewers browse, search, and record television. The '987 patent covers methods for updating the functionality of a set-top box using markup language.
Why an IPR is different
An inter partes review is not a trial before a lay jury. In an IPR, a petitioner asks the Board to cancel claims of an issued patent, almost always on the grounds that the claimed invention was anticipated by, or obvious over, earlier prior art. The patent owner defends the patent and its claims. The case is decided by a panel of administrative patent judges who are themselves technically trained, so the technology can be argued at full depth rather than simplified for a general audience. The schedule is compressed by statute, typically reaching a final written decision within a year of institution, and the record is built primarily through written expert declarations and the cross-examination of those experts by deposition. For an expert, that means the writing has to stand on its own and survive adversarial questioning, often without the live-testimony theater of a courtroom. This is a distinct discipline from the patent infringement trials that Barr Group experts also support, and it rewards experts who are comfortable engaging judges on the merits of the prior art.
The technology and the validity fight
The '987 patent sits in the world of interactive program guides and recorded-media features, the on-screen systems and underlying software that let a viewer navigate listings, schedule recordings, and manage stored content. Technology of this kind is easy to describe at a glance and surprisingly intricate underneath, which is exactly why validity fights turn on close reading. The petitioner's challenge, as is typical in IPR practice, pointed to earlier references and argued that the claimed combination was either already disclosed or would have been an obvious step for a skilled engineer. Defending the patent required meeting that argument on its own technical ground: explaining what the claims actually require, how the field understood the technology at the relevant time, and where the petitioner's prior-art story broke down. The dispute was won or lost in the details of the references, the claim language, and what a person of ordinary skill would and would not have found obvious.
Barr Group's declaration work for the patent owner
Barr Group served on behalf of the patent owner, Rovi. Michael Barr provided an expert declaration in support of Rovi's Patent Owner Response, addressing the technology at issue and rebutting the petitioner's invalidity arguments. As is standard in IPR practice, an expert who submits a declaration is then subject to cross-examination by deposition, and the declaration is written to hold up under exactly that scrutiny. The work drew on deep experience with embedded and consumer software of the kind at the heart of the patent, translating that experience into a clear, defensible technical record for the Board. The substance of the analysis and any conclusions remain confidential to the proceeding and the client. For a fuller picture of how Barr Group experts prepare expert reports and testimony, including declarations and deposition, see our litigation services.
Outcome
Rovi prevailed. In its final written decision, the Board held that the petitioner had failed to prove any challenged claim unpatentable, and all of the challenged claims of the '987 patent survived. In a notable part of the ruling, the Board excluded the petitioner's central prior-art evidence, a webpage the petitioner had offered as proof of the content of a much earlier publication, for lack of authentication, which undercut the obviousness case. Barr Group's declaration and supporting analysis were part of the technical foundation for that defense, built on direct engagement with the prior art and the claim language rather than on generalities. The result reflects Barr Group's ability to help patent owners prevail in the judge-driven environment of a PTAB proceeding, where the case is won on the strength of the written technical record.
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