Starsight Telecast Inc. and Another v Virgin Media Ltd and Others

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeThe Hon Mr Justice Arnold,Mr Justice Arnold
Judgment Date26 March 2014
Neutral Citation[2014] EWHC 828 (Pat)
Date26 March 2014
Docket NumberCase No: HC11C04556

[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

Before:

The Hon Mr Justice Arnold

Case No: HC11C04556

Between:
(1) Starsight Telecast Inc
(2) United Video Properties Inc
Claimants
and
(1) Virgin Media Limited
(2) Virgin Media Payments Limited
(3) Tivo Inc
Defendants

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.

The Hon Mr Justice Arnold Mr Justice Arnold

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

1

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.

2

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.

3

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".

4

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

5

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

6

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);

…"

7

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."

8

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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