Gemstar TV Guide International Inv & Others v Virgin Media Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mann |
| Judgment Date | 26 November 2009 |
| Neutral Citation | [2009] EWHC 3068 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC08CO0200 |
| Date | 26 November 2009 |
[2009] EWHC 3068 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Mann
Case No: HC08CO0200
MR. C. BIRSS Q.C. and MR. D. CAMPBELL (instructed by Bird & Bird LLP) for the Claimants.
MR. J. MELLOR Q.C. and MR. A. LYKIARDOPOULOS (instructed by Messrs. Simmons & Simmons) for the Defendants.
Hearing dates: 11th, 12th, 15th, 16th, 17th, 18th, 19th, 23rd, 24th, 29th, 30th June 2009 1st and 2nd July 2009
Mr Justice Mann:
Introduction
This is a patent action in which the claimants sue the defendants in respect of alleged infringements of the former's patents, and the defendants, while denying infringement, also seek the revocation of the patents. There are three patents in suit. They are vested variously in the claimants, who are a holding company and two of its subsidiaries. It is unnecessary to distinguish between them for the purposes of this action and I can treat them as one and call them “Gemstar”. They are companies whose business involves, or includes, the provision of electronic programming material whose nature I shall describe in due course. The defendants are companies in the Virgin group whose business involves the broadcasting of television programmes and the collection of subscriptions from subscribers to those broadcasting services. Again, it is unnecessary to distinguish between them and I can call them “Virgin”.
The overall field and nature of the patents—electronic programme guides—“EPGs”
At the heart of these three patents is the concept of an EPG—an electronic programming guide. In the past 30 years or so the number of television broadcasting stations (including cable and satellite stations) has increased enormously in many countries (and in particular in the US). Each broadcaster wishes the consumer to know what programmes are being or are to be broadcast. Until the advent of electronic means of broadcasting this information was disseminated principally in paper form, of which the best known English publication was (and is) the Radio Times. The listing information took various forms. It could be lists of programmes (with supporting information about those programmes) listed by broadcasting channel, and by time within each channel, in the form of an elaborate chronological list. That form will be familiar to anyone who has used the Radio Times or the independent television equivalent, the TV Times. It could be a listing by start times, with each programme starting at a given time appearing by that start time, and then by channel within the start time. Or it could be by way of a grid, with start times on one axis and the channel on the other, with each cell representing the particular programme being broadcast in the cell (and bearing the name of that programme). In that last form the cells would be of irregular length, because not all TV shows are of the same duration. The left and right hand borders of the cell represent the start and finish times when read against the time axis. Each of those methods of listing has its benefits, and a choice between them will depend on the preferences of the information providers and/or the subscribers to the lists. Sometimes one sees both formats in one publication—I was shown US guides which had both a grid (which enables more of an overview) and start time listings (which allows for a little more detail for each programme). Written listings also contain some notes about the programmes in question, sometimes by the actual listing, and sometimes separately on the page.
The increase in the number of channels means that the size of the listings has increased, making their survey, and choice from them, more difficult. One answer to this problem is to provide lists electronically to the subscriber of the TV service so that it can be viewed on the screen. The information can be transmitted by various means, but now the most common is over the air by one or more service providers. By calling up the relevant list, and looking up the relevant day, time and channel, the viewer can see what programme is being broadcast at the relevant time. Background information about that programme (type, cast list and so on) can also be broadcast and accessed. The guides thus produced are called EPGs – electronic programme guides. For the purposes of this action I can distinguish between two sorts of EPGs—those which merely provide information to the consumer, and those which go further and provide that information and at the same time use software and hardware links to control the television, typically switching to the relevant programme directly from the EPG screen. In a typical case the EPG is controlled by a handheld selector, which controls a selecting highlight on the screen, and a programme would be “selected” by highlighting it and pressing a selection button, at which point an operation is carried out in relation to that programme – for example providing more information about it, or switching the TV receiver to receive it. Two of the patents in suit represent the former category (information only); the third has elements of the second (information plus switching) as well.
The first patent (the “662” or “Single Channel” patent) is of the first variety. It involves the broadcast of EPG information and its essential inventive step involves the formats in which that information is displayed. It first displays programme listings in grid form, showing a number of programmes for a number of channels for various periods of time in the manner referred to above. That of itself is said to be new so far as EPGs were concerned, though it is not said to be inventive for the purposes of the patent. It is possible to move a cursor so as to highlight a particular cell (and therefore a particular programme), and if that cell is selected the display switches to single channel mode. In this mode the screen shows a list of the programmes appearing on the selected programme's channel (and no others) at and around the selected time. So the focus has been shifted from a survey of various channels to just the one. The user can scroll up and down that list, and if a particular programme is “selected” then the screen toggles back to the multi-channel mixed mode. Thus this patent switches from larger scale grid to single channel; hence the name given to it for the purposes of this action.
There is one further alleged inventive feature of this patent. When a programme is selected in either mode and that programme is selected by another button on a controller, the programme's information (cast list etc) is retrieved in a separate box or window superimposed on part (but not the whole) of the listing display. The programme's listing can still be seen above or below the box which has just appeared.
The second patent (the “049” or “Favorites patent”) deals with perceived problems arising out of the sheer number of channels that would appear on an EPG which sought to list all programmes available to a subscriber. It enables the user to filter out channels which he or she would not wish to be informed about, leaving him/her with “favourites”. This is done by scrolling down a displayed list and pressing a button to “mark” those which the viewer wishes to have listed for the future. By selecting (electronically, on a controller) to view just the favourites, the non-favourites are filtered out of the view, and the list is more manageable.
The first two patents date from 1990, and in this action were called the 1990 patents. The third patent (the “066” or “Transfer patent”) dates from 1998 and addresses a different problem. It provides for the recording of programmes on to a digital medium, together with EPG information about that programme which is stored on the same medium. The user is then enabled to use that recorded EPG information to select the programme in question (if he wishes to do so) for re-recording the programme on to a second storage medium. Inventiveness is not claimed for the process of secondary recording itself. What is said to be new is selecting the programmes for secondary recording by means of the EPG information stored with them, so that that information controls the secondary recording process (in terms of the identification of the programme material to be re-recorded).
The nature of this action
This action takes a familiar form. The claim is an infringement action brought against Virgin. Virgin provides its subscribers with a set-top box which enables them to receive and record its programmes. It broadcasts programme information and the box displays it on the television as an EPG. A feature of the EPG is that it enables the viewer to switch from a grid display to a single channel display in a manner which is said to infringe. It also enables the user to display programme information in a manner which is said to infringe the other element of the Single Channel patent. Favourite channels are said to be arrived at in a manner which is said to infringe the Favourite Channels patent, and it has a mechanism for secondary recording which is said to infringe the transfer patent. Virgin disputes the infringement and claims variously that the patents should be revoked as covering non-patentable subject matter, wanting novelty and as being obvious over certain prior art.
When I come to deal with them, I shall deal first with the two aspects of the Single Channel patent, then turn to the Favourites patent, and finally deal with the transfer patent.
Witnesses
I received evidence from the following witnesses.
Dr Mark Maybury
Dr Maybury is currently the Executive Director of the...
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