Starsight Telecast, Inc. (a company incorporated in the State of California, USA) and Another (Claimants in claim HC11 C04556) v Rovi Solutions, Corporation (a company incorporated in the State of Delaware, USA) and Another (Claimants in claim HC12 D01783) Virgin Media Ltd and Others (Defendants to both claims)
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Mann |
| Judgment Date | 20 May 2014 |
| Neutral Citation | [2014] EWHC 1793 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC11 C04556 |
| Date | 20 May 2014 |
[2014] EWHC 1793 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. Justice Mann
Case No: HC11 C04556
HC12 D01783
and
Mr. James Abrahams (instructed by Powell Gilbert LLP) appeared for the Claimants.
Mr. James Mellor Q.C. (instructed by Marks & Clerk LLP) appeared for the Defendants.
Introduction
Before me are in substance, although not quite in form, first, an application for the adjournment of a trial in relation to the patent in suit in this case, that application being made by the claimant; and second, an application in unusual form by the defendant, requiring the claimants to make an application to amend its patent in circumstances to which I will come.
The patent in suit is a European patent which I will call for short, and in traditional fashion, the 372 patent, after the last three digits of its number. The patent relates to technology which resides in TV set top boxes and which is said to allow focused advertising, or focused programme direction, by virtue of an ascertainment of the demographic of the watchers. I need say nothing about the substance of the patent because nothing in this application turns on it.
There is a litigation background to this whole case, which is relied on to a certain extent by the defendants, whom I will call Virgin. The claimant, whom I will call Rovi, has a number of patents relating to the television field, which it is pressing or has been pressing against Virgin, Virgin being the well known media group of companies. It has so far asserted 11 patents and, on the count of Mr. Mellor QC, who appears for Virgin today, it has so far lost in relation to all those which have come to trial, either here or in Europe, that is to say, 7 out of the 11.
The trial, in relation to the patent in suit, which is set for 23rd June of this year, would try not only the 372 patent but also another patent, as to which absolutely no question arises today. Accordingly, the trial in question is currently going to deal with the next two patents.
A history of the conduct of the patent litigation which has been brought to an end and other patent litigation which is still outstanding is said to demonstrate, and indeed does demonstrate, a tendency on the part of Rovi to make late applications for amendments to their patents. It is a proposed amendment to its patent which lies at the heart of the applications today. As a result of an application for an amendment at least one of those trials has had to go off for at least a year. I have merely a chronology with some remarks made by Mr. Mellor's instructing solicitor by way of a gloss on certain aspects of the history to go on, and I must be careful about drawing excessive adverse inferences from a relatively bold chronology such as that which has been put before me. But it is certainly right to observe that there is a tendency to late amendment on the part of Rovi in the history of this litigation. That apparent tendency requires the present situation to be treated with particular care.
The history of the present action so far as material is as follows. The claim form was issued on 2nd May 2012. It was a claim which, in the usual way of patent litigation, claims infringement of a patent and it was in due course met by a defence and counterclaim seeking revocation of the patent on what I will call the usual bases. Nothing turns on the detail of the pleading.
In due course a PPD was prepared and served by Virgin, but it was said by Rovi to be completely inadequate. As a result of that complaint a further PPD was prepared by Virgin in relation to the allegedly infringing product, and the result of serving that was that, two days after service, Rovi indicated that it was abandoning its infringement claim. Technically, Rovi claims to have had a residual infringement claim in relation to some beta products, but it has recognised that in substance it no longer has an infringing claim in relation to any of Virgin's distributed STBs, or at least those which are the subject of this action.
Having indicated within two days that it was abandoning the infringement (on 23rd March 2014) Rovi formally discontinued the infringement claim shortly thereafter. Accordingly, this action is now about revocation only.
Some of the heat has been taken out of the revocation claim, but only some of it, by an assurance, which I think is the best word, which has been tendered by Rovi, that it does not claim and will not claim that any of Virgin's current products infringe the patent. That form of assurance, or something like that, was proffered yesterday. A wider form of assurance was proffered early today, the width being extended to include Virgin's future products.
The merits of accepting such an assurance are currently being considered by Virgin. Had it not been for the fact that instructions need to be taken from Denver, which is seven hours behind our time, on the further form of reassurance (which has some attraction to Virgin), then it might have been the case that the entire heat would have been taken out of the action, to the extent that there would have been scope for settling the whole action. However, that has not happened and, for at least timing reasons if not other reasons, had not happened by the time the application was called on. In the circumstances I considered it right to proceed with the application, although I acknowledge it may be that the trial of this particular patent will go off for entirely different reasons.
Experts' reports were due in this litigation on 14th May. Virgin seek an extension to 23rd May, with a commensurate extension for reply reports to 9th June. That application and that timetable is not controversial as such. However, on 9th May, something happened which generated the present applications. On that date, and without complying with its notice obligations under the Patents Practice Direction, paragraph 11.1, Rovi made an application to the EPO in the form of what is described as a central amendment application (that is to say, an application made under Article 105a of the European Patent Convention) for an amendment of the patent in suit. For reasons that will appear, that has the potential effect of rendering unclear what form of patent should be argued about at the forthcoming trial. Because that presents problems of that nature, Virgin decided to get in first and made an application intended to resolve the position and the difficulties that the parties might otherwise find themselves in. It sought an order in terms which I will read.
"The claimants shall by 4 p.m. on the day following the date hereof (a) make (and serve upon the Defendants) an application under section 75 of the Patents Act 1977 and in accordance with CPR rule 63.10 to amend the Patent as set out in the annex hereto; and, (b), serve upon the Defendants a notice stating which claims of the Patent (both as granted and as proposed to be amended) the Claimants will assert at trial to be independently valid…"
The annex set out the terms of the amended claims which Rovi hoped to achieve via its central amendment application. That application for an order to compel Rovi to change the shape of its patent was met by a counter-application, not formalised in a notice but nonetheless advanced before me, that the trial in relation to the present patent, that is to say the 372 patent, should be adjourned until the result of the amendment application has been ascertained.
The legislative background
The legislative background, and in particular Article 105a, can be seen from the judgment of the Court of Appeal in Samsung Electronics Company Limited and Apple UK Limited [2014] EWCA Civ 250. In that case, patents were held invalid and were revoked by the trial judge. There was then an appeal to the Court of Appeal but in the intervening period the patentee made a central amendment application. The Court of Appeal were faced with the question of what to do with the appeal in the light of that. It came to a conclusion which I will deal with shortly.
In the course of his judgment, Kitchin LJ set out the scheme of Article 105a and made references to the English jurisdiction to amend patents under the 1977 Act. He did so in paragraphs 19 to 29 of his judgment and I shall not read them elaborately into in judgment. Nor shall I read in the provisions of Article 105a and the supporting rules; they can be seen from there or from other sources. It is against that legislative background that the present applications come to be made. In short, the question is what should I be doing with the trial, bearing in mind the outstanding application? The application being one which is dealt with largely administratively and without formal opposition type proceedings, and in...
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