Promptu Systems Corporation v Sky UK Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Meade |
| Judgment Date | 19 July 2021 |
| Neutral Citation | [2021] EWHC 2021 (Pat) |
| Docket Number | Case No: HP-2020-000013 |
| Court | Chancery Division (Patents Court) |
[2021] EWHC 2021 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Mr Justice Meade
Case No: HP-2020-000013
Hugo Cuddigan QC and David Ivison (instructed by Powell Gilbert LLP) for the Claimant
Lindsay Lane QC and Maxwell Keay (instructed by Gowling WLG (UK) LLP) for the Defendants
Hearing dates: 11 and 14–16 June 2021
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| Introduction | 4 |
| The issues | 4 |
| The witnesses | 5 |
| Agreed common general knowledge | 6 |
| TV systems at the priority date | 6 |
| Over the air (“OTA”) TV systems | 7 |
| Satellite TV systems | 7 |
| Cable TV systems | 7 |
| Components and infrastructure used in networks and TV systems | 8 |
| The TV, the STB and the remote control | 8 |
| The Cable TV system headend | 9 |
| Network infrastructures | 9 |
| Internet systems | 11 |
| Access to the Internet via Telco networks | 11 |
| Upstream data via cable networks | 12 |
| Communication and data transfer | 13 |
| Analogue and digital signals | 13 |
| Modulation | 13 |
| Packetization | 13 |
| “Layers” in networks and software | 14 |
| Multiplexing | 15 |
| Aloha transmission protocol | 16 |
| TCP/IP Protocol and UDP | 16 |
| User interfaces – EPGs | 17 |
| Basic operation | 17 |
| EPGs for Video on Demand “VoD” | 17 |
| Automatic speech recognition (“ASR”) | 17 |
| Components and infrastructure used in ASR systems | 18 |
| Disputed common general knowledge | 19 |
| Other technical background | 20 |
| The Patent | 21 |
| Claims in issue | 23 |
| Promptu's concession | 24 |
| Issues of Claim interpretation | 26 |
| Applicable legal principles | 26 |
| The interpretation issues | 28 |
| The network issue | 28 |
| The initial connection issue | 31 |
| Infringement | 31 |
| Infringement Facts | 31 |
| Claim meaning | 32 |
| Territoriality | 32 |
| Validity | 33 |
| Added matter | 34 |
| Legal principles | 34 |
| The allegations | 36 |
| Assessment | 37 |
| Obviousness over Houser | 38 |
| Legal standard | 38 |
| Teaching of Houser | 38 |
| Pozzoli question 1 | 40 |
| Pozzoli questions 2 and 3 | 41 |
| Pozzoli question 4 | 42 |
| Threshold v. press to speak | 44 |
| Sending an alert | 45 |
| Conclusions | 48 |
INTRODUCTION
In this action the Claimant (“Promptu”) alleges that the Defendants (together, “Sky”) have infringed European Patent (UK) No. 1,290,889 (“the Patent”), whose priority date is 8 June 2000 (“the Priority Date”). Sky denies infringement, alleges the Patent is invalid, and counterclaims for revocation. The alleged infringement relates to Sky's Sky Q subscription television service.
As indicated, I am going to refer to all the Defendants as “Sky” since there is no reason to distinguish between them, but I should mention that the claim against the Fourth Defendant was dropped at the start of the trial.
The trial was conducted in court, with limited in-person attendance owing to the pandemic. All the oral evidence was live; a feed was allowed for persons approved by me who could not fit into the courtroom. I am grateful for the IT support provided as arranged by the parties.
Hugo Cuddigan QC appeared for Promptu with David Ivison and Lindsay Lane QC appeared for Sky with Maxwell Keay.
Promptu applied to amend the Patent. This went through a number of stages. Shortly before trial, Promptu said that it did not oppose a finding that all the claims of the Patent as proposed to be amended, apart from proposed amended claim 13, were invalid over the prior art.
Following this, Sky dropped two out of three of its prior art citations. The result of this was that the only prior art attack I had to decide was obviousness over the citation referred to as Houser (as defined below). The meaning and consequences of this concession by Promptu became a matter of debate, as I explain below.
The application to amend down to proposed amended claim 13 was unconditional.
THE ISSUES
The issues were:
i) Some modest issues over common general knowledge (“CGK”);
ii) Two issues of claim construction;
iii) Infringement. There was no issue of fact about how the Sky Q system worked, but there were issues about whether:
a) The operation of the system satisfied the requirements of the claim (which is a method claim) on its proper interpretation;
b) Even if it did, whether it was taken outside infringement by virtue of the fact that some of the elements of the claim take place outside the UK;
iv) Obviousness over United States Patent No, 5,774,859 (“Houser”);
v) Added matter. There were two points. One arose from granted claim 1 and the other from the proposed amendment to claim 1. So formally the second was an objection to amendment rather than an allegation that the Patent was invalid as it stood, but since the application to amend was unconditional it would have had the effect, if made out, that the Patent would be revoked. I have therefore dealt with both points together under the heading of validity, which is also convenient because much the same considerations apply to both.
THE WITNESSES
The parties each called one expert to give oral evidence. No oral evidence was required on the PPD because it was not disputed and other witness statements about the Fourth Defendant became irrelevant when the claim against it was dropped.
Promptu's expert was Dr David Greaves, a Senior Lecturer in Computing Science at Cambridge University, who had practical experience in various ways, including in particular as network architect for the Cambridge Interactive Television Trial (“CITV”) in 1993/4.
Sky's expert was Dr David Robinson who has a PhD from Imperial College and extensive practical experience.
Each side criticised the other's expert, not in terms of their independence or honesty, but in terms of their experience and how they corresponded to the notional skilled person. So it was said of Dr Greaves that he had too little experience and that it was from some time before the priority date, and of Dr Robinson that he had too much experience, and was inventive.
I did not find these criticisms helpful and they missed the mark. The relevant question is not how closely an expert corresponds in fact to the notional skilled addressee but whether they are able to put themselves in the position of the notional skilled addressee and assist the Court accordingly. I thought both experts were well able to do that. In any event, I thought that Dr Greaves' work on CITV was very pertinent, with his more general experience being relevant and continuing up to and after the priority date, while Dr Robinson, although no doubt personally inventive, was able to put himself in the position of an uninventive and ordinary worker. It was suggested that he lost sight of this when, for example, he agreed that the notional skilled addressee was a “decent” engineer who could solve problems. Neither of these is inconsistent with a lack of inventive capacity. Notional skilled addressees can solve at least routine problems, but not where it involves invention. They are also “decent” at their jobs, in the sense of diligent and careful.
Promptu also criticised the way in which Dr Robinson was instructed. It alleged that the necessary “sequential unmasking” was not done, and that Dr Robinson was directed by Sky's solicitors to the key part of Houser.
There was some modest force in this in relation to proposed amended claim 1, where one of the steps from Houser to the alleged invention involved focus on a particular part of Houser. However, as to this:
i) It is sometimes necessary for purely practical reasons to ask a witness to look at a particular part of a prior art citation, otherwise if they are asked to give all their thoughts about many different passages the task is too big and too diffuse. If it presents a risk of hindsight the Court may have to take it into account, but it is not necessarily fatal or even serious, especially if, as in this case, the witness acknowledges the pointer and gives evidence about why that part of the prior art would be of interest (which as it turned out was common ground at trial). A similar issue arises when experts are given, as they often have to be, guidance about what aspects of CGK to explain.
ii) Once it was conceded that proposed amended claim 1 was obvious, the point lost any real force. I return to this below.
Once the first round of expert evidence was in, and the experts knew the claims in issue, sequential unmasking ceased to be relevant. However, Promptu nonetheless submitted that Dr Robinson's second and third reports exhibited hindsight because he was then looking, with knowledge of the proposed amended claims, for arguments in relation to minimising latency (relevant to proposed amended claim 13). I did feel that Dr Robinson overreached in his third report, in particular in relation to a document from DAVIC, and I have taken this into account, but it was a minor factor given the extent of agreement over CGK, and allowance must be made for the facts that sequential unmasking becomes impossible after a point, and that where a patentee maintains (too) many dependent claims, it is inevitable that not all can be covered in the fullest depth in a first report.
AGREED COMMON GENERAL KNOWLEDGE
There was extensive agreement about the...
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