Another one bites the dust - Rovi v Virgin

As several posters of comments over the last couple of days have noticed, there has been a bit of a flood of patent-related news and a corresponding spike of blogposts.  So this moggy is enormously grateful to his EIP colleague Matthew Jones, for preparing a report of this case, which came out at the same time as the Actavis v Lilly decision. Over to Matt:

Another day, another defeat for Rovi in the High Court, this time at the hands of Mr Justice Mann in Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors [2014] EWHC 1559 (Pat) (15 May 2014) [see here].  This follows relatively hot on the heels of Rovi’s prior defeat in Starsight Telecast Inc & Anor v Virgin Media Ltd & Ors [2014] EWHC 828 (Pat) (26 March 2014)) [see here, and PatLit's commentary here].

This case involved validity and infringement (although infringement turned out to be a moot point) of one of Rovi’s less technically complex patents – so uncomplicated apparently that the Judge decided it was not necessary to include the complete patent number in the judgment, so let’s just call it “the Patent”.

Red button, red button, red button......

The Patent relates to behind-the-scenes jiggery-pokery that goes on when viewers use the “red button” feature on their TVs.  More specifically, it relates to two “signals”: an “identification signal”, which is responsible for bringing about an indication symbol on a TV screen and (in some claims) controlling its duration; and an “information signal”, which is responsible for displaying the message which is intended to appear if the viewer responds to the prompt of the first signal (for example by pressing the aforementioned and now ubiquitous red button).

The clever bit in the Patent can be described in different ways; unfortunately, it was described in one way in the Patent and in a slightly different way by Rovi’s expert witness, the soon-to-be-much-maligned Mr Johnson (who, because he will be mentioned so often, will from this point onwards be called “Mr J”).   The Patent described the invention as using the two signals to (in the words of the Judge) “facilitate the provision of information in the information signal and reduce the amount of storage that would otherwise have to be used in order to make the information in the information signal appear at the right time”.  Mr J, on the other hand, seemed to be saying that the invention lay in enabling the broadcaster to send out information without the need to respond to a request from the viewer; rather, the broadcaster can send the information to the viewer’s apparatus and the viewer can access it (or not) by (for example) pressing his red button (or not), all of which means that the broadcaster can use slower data channels and is not deluged with requests from viewers.

The alleged infringement was one of Virgin’s set top boxes (STBs) – infringement per se was something of a non-point, because Virgin had already conceded that their STB would infringe if the relevant claims of the patent were valid (which, of course, is a rather weighty “if”)…

Somewhat rarely for a patent case, consideration of validity did not involve any issues of sufficiency, added matter, priority or excluded (unpatentable) subject matter, nor did it involve any interesting squeezes against infringement: the only matters to be considered were plain vanilla anticipation and obviousness.  Therefore, the expert evidence was always going to be king in this case.  That’s where the fun begins (and, to a large extent, ends)…

I'll have you know I'm an expert...

Choose your expert in haste and repent at leisure

Rovi’s expert was the aforementioned Mr J.  According to the Judge, Mr J had a leaning towards developing interfaces between applications and their users, but “did not have an in depth understanding of all the technologies behind products he was developing (not surprisingly)”.  The Judge did say that Mr J was doing his best to help the court within the limitations of his experience.  However, his evidence was adversely affected by two things:

- The Judge’s first criticism was that Mr J did not seem to have done much research to acquaint or remind himself of certain matters that would have been relevant to the skilled team;

- His second criticism was described as “a little more troubling”: according to the Judge, Mr J displayed “a tendency to hold on to a view or position because it suited his client's case (or at least did not damage it) rather than being prepared to accept a position I consider he might otherwise have agreed with. He was trying to hold a position rather than consider the matter objectively as an expert.”

Now, anyone who knows anything about patent judges will know that they love experts who give their evidence in a moderate and balanced fashion and are willing to concede points where it is reasonable to do so – see for example Mr Justice Arnold’s comments about Professor Hunter in GUK v Yeda.  They will also know that judges tend to take an ever-so-slightly dimmer view of experts who seem to be obstructive and/or who seem to be peddling a case on behalf of the party instructing them – see for example Pumfrey J (as he then was) commenting on Professor Eisenstein in RIM v Inpro.  So, without knowing anything at all about the other side’s expert, or about the prior art, or about anything else for that matter, and knowing that this case is going to sink or swim on the expert evidence, one might guess at this stage which way things are going to go…

Virgin’s expert was one Mr Turner.  Mr Turner’s evidence was criticised because he was shown the patent before being shown the prior art, but this criticism was brushed aside by the Judge on the basis that the expert needed some context against which to consider the prior art.  This doesn’t quite seem to accord with what other judges have said on the topic - see for example Arnold J’s comments in para 242 of the previous Rovi case linked above.  Perhaps it is time for further guidance from the Courts on when showing an expert the patent before the prior art will be held against an alleged infringer and when it won’t.  However, back to the present case…

The issues surrounding the skilled team, common general knowledge and obviousness, while riveting from a technical standpoint, where perhaps less so in light of what has been said about the experts already.  In fact, one can skip through most of the rest of the judgment with just a few choice quotes (with bonus points for spotting the recurring theme):

On the skilled team:
“I prefer Mr Turner’s evidence, and Virgin’s analysis, on the point.” (para 37)

On obviousness over the first piece of prior art:
“I prefer the case of Virgin and the evidence of Mr Turner.” (para 57)
“I prefer Mr Turner’s evidence about this.” (para 58)
“I prefer the evidence of Mr Turner.” (para 77)
“I accept that what Mr Turner was describing was obvious,…” (para 85)

To state what in itself should now be obvious, Virgin won, and Rovi’s patent was held invalid for lack of inventive step over the first piece of prior art.  Later on in the judgment, other of Virgin’s obviousness (and anticipation) arguments in relation to other pieces of prior art end up failing, but the fact remains they already succeeded in revoking every claim that they needed to revoke on the basis of the first piece of prior art.

What does “suitable for” mean?

One mildly interesting (although inconsequential) construction point did raise its head at the end of the judgment.  Virgin were trying to argue that the words “suitable for” in the claims encompass cases where hardware is merely capable of being programmed to do something; Rovi said that was a bridge too far, and that hardware alone would not be “suitable for” carrying out a given function in the absence of appropriate software.

The Judge favoured Rovi on this point (although by this time nothing turned on it). He cited Floyd J in Qualcom v Nokia , who said that “If the apparatus has to undergo physical modification before it can be used, then prima facie it is not suitable for use and does not infringe”.  The Judge in this case concluded that programming a computer to do something “is the equivalent of the  physical modification of Floyd J’s example”.  A perhaps more pertinent point is that, had Virgin’s argument been right, it would effectively have meant that any computer is “suitable for” doing anything that it could, in theory, be programmed (by a suitably clever programmer) to do, which in turn would mean that just about every computer-implemented invention under the sun would be anticipated and infringed.  That would indeed be “a very striking result”.