Court of Appeal dismisses Rovi's claim construction attempt in battle with Virgin

Identification or information signals
go unnoticed by the AmeriKat

"Interactive special events video signal navigation system".  If those collection of words don't get you excited, then you probably have not been following the Rovi v Virgin Media litigation.  Yesterday, the Court of Appeal handed down its decision in Rovi Guides Inc v Virgin Media Ltd & Others [2015] EWCA Civ 1214 dismissing Rovi's appeal.  The litigation which started back in 2012, focuses on Rovi's patent - European Patent (UK) No 0, 862,833 - which relates to interactive video communications and viewer-controlled selection of programming information.

Rovi's invention allows the television viewer to keep up to date of events/programs in real time which are currently available or will be (instead of scrolling or manually navigating to the information).  The way the system does this is by using two signals - an identification signal and an information signal.  The former signals that information is available.  The identification signal may also include data that identifies an icon or text which is then displayed on the screen and alerts the view to the availability of information contained in the information signal.  If the user presses the relevant button, the information signal is processed and the information is displayed on the screen. 

Last year, Mr Justice Mann held that Rovi's patent was invalid for obviousness over Florin, an Apple PCT application published on 5 January 1995.   Rovi successfully obtained permission to appeal on some its grounds, all of which were abandoned by the time it got to appeal.  Rovi therefore sought permission to appeal from the Court of Appeal on one additional ground  - whether the judge was wrong to find lack of inventive step in respect of claim 3 (and corresponding process claim 28).  Claim 3 is a product claim dependent on claim 2.  Although the Court of Appeal granted permission to appeal on this ground, after 15 pages the appeal was eventually dismissed.  "Close, yet so far away...." chimes Merpel. 

The issue that preoccupied the Court of Appeal was one of claim construction.   The construction at issue was of the critical additional feature set out in item (ii) of feature C of Claim 3 below (underlined):

"Claim 3 

A 

A system according to claim 2, wherein said first identification signal comprises: 

B 

i. data indicating the availability of said first information signal; 

C 

ii. (a) data defining an icon or textual matter alerting a viewer to the availability of information or (b) data enabling access to such an icon or textual matter as may be already stored on said computer; and 

D 

iii. data defining said preselected times and said predetermined time increments. "

Mr Justice Mann held that this integer was to be construed as meaning that data in the identification signal must trigger or invoke the icon, but that there was no requirement for a specific pointer or address field be in the signal to identify where the relevant icon could be found.  It was enough if the signal itself, or some data in the signal, called for a icon to be put up on the screen.  This was supported by Virgin's expert witness.  On appeal Rovi's counsel argued that the integers of claim 3 required a pointer to tell the set top box where to find the appropriate icon in its memory.  Claim 3 therefore added more than Claim 2 and was therefore not obvious over Florin and the common general knowledge.  However, the Court of Appeal agreed with Mann J's construction.  Following this construction, the skilled team implementing Florin would arrive at a system in Claim 3 and it was therefore obvious.    

Writing the leading judgment, Lord Justice Floyd highlighted two legal points on the construction of patent claims.  First, it cannot be assumed that it was the patentee's intention that optional features described in the specification have been translated into requirements of the claim (Nokia v IPCom [2009] EWHC 3482).  Second, that the inventor's purpose is not the be-all and end-all - one still must be concerned with the meaning of the language used (Virgin Atlantic v Premium [2009] EWCA Civ 1062). 

Because the focused of Rovi's appeal was squarely on a dependent claim, the Court highlighted that the

 "...frequently deployed canon of construction is that dependent claims would normally be expected to add technical subject matter to what is claimed in the claims from which they depend. Patent attorneys would not normally be expected to go to the trouble (and sometimes expense) of adding extra claims if they were no narrower than those which precede them. However, the judge’s construction did not mean that claim 3 had the same scope as claim 2. It is now common ground that feature C(iii) was not implicit in claim 2. Feature C(i) on the other hand was implicit. In these particular circumstances I can see no reason at all why the skilled person should assume that either option in feature C(ii) was intended to add something to claim 2. In truth claim 3 sets out to list explicitly the contents of the identification signal. That is not something which is attempted in claim 2. I would not attach weight to the fact that, on the judge’s construction, feature C(ii)(b) did not itself add anything of substance to claim 2.

Whilst admiring its sophistication, I am not persuaded by Mr Meade’s “mis-match” submission about options (a) and (b) in feature C(ii). I do not accept that anything is to be drawn from the fact that option (a) of feature C(ii) requires extra data capacity, and therefore something different from claim 2. I think it is unrealistic to suppose that the skilled reader would reason that, because option (a) adds something to claim 2, then he should assume that option (b) is also seeking to do that as well. I accept Mr Mellor’s submission that the skilled person is more likely to assume that the patentee is seeking to cover, in explicit language, all ways he can think of arriving at a prompt on the screen."

The patentee’s purpose is of course a powerful guide to the construction of patent claims. One must, however, be careful to match up any purpose one derives from a reading of the specification with the claim or claim feature under discussion. This is not always straightforward. The purpose on which Mr Meade relies arises out of the description of content-specific icons in paragraph [12] of the specification. The skilled person would, so the argument runs, infer that the patentee had chosen the language of feature C(ii)(b) specifically in order to limit this claim to an arrangement capable of providing this functionality. I see no reason why the skilled person should follow this line of reasoning at all. Rather I consider that the skilled person would infer that the patentee had chosen entirely general language which was capable of encompassing such an arrangement, but was not limited to it.

It is true that the judge said that the point about multiple icons appeared to have fallen away. Given that claim 3 was not high on the agenda of issues at all until a very late stage in the trial, I am not surprised that he had gained that impression. Certainly, paragraph [12] of the specification does not seem to have featured strongly in the submissions or evidence until then. Moreover, it is possible that what the judge meant was that it was not contended by Rovi that claim 3 was limited to a system with multiple icons. Mr Meade accepted before us, and I believe before the judge, that a system with a pointer to the address of a unique icon would still be within claim 3. But I have reached a very firm conclusion that paragraph [12] does not help Rovi or save claim 3 from a finding of obviousness. So, if the judge indeed misspoke, it makes no difference to the outcome.

I do not think, therefore, that the judge overlooked or misunderstood Rovi’s arguments about the construction of claim 3. He considered and rejected them, and in my judgment he was right to do so. "

The AmeriKat has not had time to fully digest the decision, but wonders how much the "last minute" nature of Rovi's inventiveness argument on Claim 3 had actually played in the judge's mind.  Although he dealt with the point on the record, had the feature really been that inventive one may have expected the patentee to have dealt with it a little earlier than on day 6 of the trial.   Indeed, the judge observed that it was not always clear throughout the case where the dispute about the feature lay.  The Court of Appeal, at paragraph 45 (the penultimate paragraph above), plainly had sympathy for the judge on this point.