Starsight Telecast Inc. and Another v Virgin Media Ltd and Others
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 26 March 2014 |
| Neutral Citation | [2014] EWHC 828 (Pat) |
| Docket Number | Case No: HC11C04556 |
| Court | Chancery Division (Patents Court) |
| Date | 26 March 2014 |
[2014] EWHC 828 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
The Hon Mr Justice Arnold
Case No: HC11C04556
Daniel Alexander QC, James Abrahams and Isabel Jamal (instructed by Powell Gilbert LLP) for the Claimants
James Mellor QC and James Whyte (instructed by Marks & Clerk Solicitors LLP) for the Defendants
Hearing dates: 26, 28 February, 3–6, 10–11 March 2014
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Contents
| Topic | Paragraphs |
| Introduction | 1–4 |
| The course of the trial | 5–21 |
| Product and process descriptions: the law | 6–10 |
| Rovi's Statement of Case | 11–12 |
| Virgin's Product and Process Descriptions | 13–21 |
| The law | 22–36 |
| The skilled team | 23 |
| Common general knowledge | 24 |
| Construction | 25 |
| Added matter | 26 |
| Excluded subject matter | 27–30 |
| Novelty | 31 |
| Obviousness | 32–35 |
| Extension of protection | 36 |
| Technical background | 37–97 |
| Terrestrial, cable and satellite television | 38–43 |
| Digital television services | 44 |
| Television signal standards | 45–46 |
| Vertical Blanking Interval | 47 |
| Cable STCs | 48–50 |
| Satellite IRDs | 51–52 |
| STBs generally | 53 |
| CA systems | 54–59 |
| Satellite transponders, feedhorns and LNBs | 60–62 |
| Carrier signals | 63 |
| Modulation techniques | 64–65 |
| Combining delivery of television by terrestrial broadcast, cable and satellite | 66–69 |
| Programme guides | 70–80 |
| Paper guides | 70–72 |
| EPGs | 73 |
| Passive EPGs | 74–75 |
| Interactive EPGs | 76–80 |
| Parental controls | 81–95 |
| The need for parental controls | 81–84 |
| Channel locks | 85–88 |
| Rating systems | 89–90 |
| CA and parental control | 91–93 |
| The move from CA-managed to STB-managed parental control | 94 |
| V-chip | 95 |
| DOCSIS | 96 |
| Internet protocol television | 97 |
| 234 | 98–217 |
| The specification | 104–118 |
| The claims | 119–121 |
| Granted claims | 120 |
| EPO claims | 121 |
| The witnesses | 122–132 |
| The skilled team | 133 |
| Common general knowledge | 134–142 |
| Construction | 143–157 |
| Inventive concept | 144 |
| The proper approach to construction | 145 |
| Granted claims | 146–151 |
| Program schedule information | 146 |
| Restricted program schedule information is capable of being viewed when | 147–149 |
| Claim 4 | 150 |
| Claim 11 | 151 |
| EPO claims | 152–157 |
| A record for each program containing a field | 152 |
| User command | 153 |
| Is displayed when | 154 |
| The sequence of steps | 155 |
| Claim 2 | 156 |
| Claim 5 | 157 |
| Added matter | 158–170 |
| Granted claim 1 | 162–163 |
| Combination of granted claims 1, 2 and 4 | 164–169 |
| EPO claim 1 | 170 |
| Obviousness | 171–200 |
| Bestler | 172–192 |
| The Davis Demonstration | 193–196 |
| Uniden 4800 | 197–200 |
| Excluded subject matter | 201–205 |
| Infringement | 206–217 |
| Hide Adult Channels and Hide Adult Listings | 207–211 |
| Alternative Adult Listings Display | 212 |
| Granted claims | 213–215 |
| Hide Adult Channels and Hide Adult Listings | 213–214 |
| Alternative Adult Listing Display | 215 |
| EPO claims | 216–217 |
| Hide Adult Channels and Hide Adult Listings | 216 |
| Alternative Adult Listing Display | 217 |
| 1856 | 218–312 |
| The specification | 220–232 |
| The claims | 233 |
| The witnesses | 234–243 |
| The skilled team | 244 |
| Common general knowledge | 245–248 |
| Construction | 249–268 |
| Sources, source devices and transmission schemes | 250–257 |
| Individually delivering | 258 |
| Telecast | 259–262 |
| Source identifiers | 263–264 |
| Sequence of steps | 265–266 |
| Emitter | 267–268 |
| Added matter | 269–272 |
| Telecast | 271 |
| Coupling automatically | 272 |
| Extension of protection | 273 |
| Novelty | 274–276 |
| Obviousness | 277–294 |
| Uniden 4800 | 278 |
| Young | 279–294 |
| Infringement | 294–314 |
| Claim 1 | 305–313 |
| Sources and source devices | 306 |
| Transmission schemes | 307 |
| Data representing television program information Telecast from said sources | 308–309 |
| Source identifiers | 310–312 |
| Sequence of steps | 313 |
| Claim 12 | 314 |
| Summary of conclusions | 315–316 |
| 234 | 315 |
| 1856 | 316 |
Introduction
The Claimants are members of the Rovi group of companies and therefore I will follow the parties' practice of referring to them collectively as "Rovi". The First and Second Defendants are members of the Virgin Media group. The Third Defendant provides hardware and software for one type of set-top box ("STB") supplied by Virgin Media to their customers, and therefore I will follow the parties' practice of referring to all three Defendants collectively as "Virgin". This is the third in a sequence of actions between the same parties concerning television electronic programme guides ("EPGs") to come before this Court.
In this action, Rovi claim that Virgin have infringed two patents belonging to Rovi ("the Patents"):
i) European Patent (UK) No. 1 763 234 entitled "Improved electronic television program schedule guide system and method" ("234"). The priority date is 20 May 1994.
ii) European Patent (UK) No. 0 821 856 entitled "Merging multi-source information in a television system" ("1856"). The priority date is 17 April 1995.
There are two classes of allegedly infringing device:
i) the TiVo STB; and
ii) the VHD and V+HD STBs, which are identical in respect of the functionality in issue, and accordingly I will refer to both as "VHD".
The TiVo STB is alleged to infringe both 234 and 1856, while the VHD STBs are only alleged to infringe 234. Virgin deny infringement and counterclaim for revocation of the Patents on multiple grounds. There is no challenge to either of the priority dates, however.
The course of the trial
The trial did not go according to plan. When the trial started on 26 February 2014, it was planned that, following oral opening submissions, I would hear Virgin's witness Mark Jackman cross-examined in relation to Virgin's Product and Process Description for 234 for about an hour, then I would hear the evidence of the expert witnesses in relation to 234 for about a day each, then I would hear the evidence of the expert witnesses in relation to 1856 for about a day each, and then the parties would prepare and deliver closing submissions. On this basis, it was envisaged that the trial would finish on 7 March 2014. In the event, Mr Jackman was cross-examined for over half a day. At the conclusion of his evidence, counsel for Rovi requested that Virgin provide certain further information. It was subsequently agreed that the court would not sit on 27 February 2014. When the trial was resumed on 28 February 2014, I heard the evidence of the expert witnesses in relation to 1856, followed by the evidence of the expert witnesses in relation to 234. This enabled the factual position in relation to infringement of 234 to be clarified as described below before those experts gave evidence. The trial finished on 11 March 2014. In my view it is clear that Virgin were mainly responsible for this state of affairs, although Rovi contributed to it. In order to explain why, I must first set out the law in relation to the preparation of product and process descriptions in patent cases.
Product and process descriptions: the law
CPR rule 63.9 provides that Part 31 is modified to the extent set out in Practice Direction 63. Practice Direction 63 paragraph 6.1 provides, so far as relevant, as follows:
"Standard disclosure does not require the disclosure of documents that relate to –
(1) the infringement of a patent by a product or process where –
(a) not less than 21 days before the date for service of a list of documents the defendant notifies the claimant and any other party of the defendant's intention to serve–
(i) full particulars of the product or process alleged to infringe; and
(ii) any necessary drawings or other illustrations; and
(b) on or before the date for service the defendant serves on the claimant and any other party the documents referred to in paragraph 6.1(1)(a);
…"
As Pumfrey J observed in relation to a predecessor of this rule in Consafe Engineering (UK) Ltd v Emtunga UK Ltd [1999] RPC 154 at [23] (emphasis added):
"A product description is normally prepared by the defendant to the allegation of infringement so as to take advantage of the provisions of RSC Ord. 104 rule 11 and avoid giving discovery. The purpose of this provision is to avoid, if possible, obliging the defendant to give extensive discovery much of which, experience has shown, is rarely if ever referred to. If this object is to be achieved, it is essential that parties and their advisers appreciate that the rule requires 'full particulars of the product or process alleged to infringe' to be given. In this context, 'full particulars' means particulars sufficient to enable all issues of infringement to be resolved. The description must be complete in all relevant areas. A description of the product either in general terms or including tendentious assertions is not acceptable."
In Taylor v Ishida (Europe) Ltd [2000] FSR 224 Pumfrey J said at 225 (emphasis added):
"The criticism to which I subjected the product description, in my judgment, is severe. I wish to repeat that the function of a product description is in all respects equivalent to that of disclosure. The duties of all parties, both the professionals and of the parties themselves, in relation to a product...
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