Rovi Solutions Corporation v. Virgin Media Limited, Patents Court (Chancery Division), High Court of Justice, London, UK, 15 May 20014, Case No. [2014] EWHC 1559 (Pat)
Mr Justice Mann of the Patents Court found for the defendant, Virgin Media, against Rovi in an action for infringement under EP (UK) 0 862 833.
Rovi contended that Virgin Media infringed its patent relating to set top boxes (STBs) which generate a prompt on the screen inviting input from the viewer, and if that input is made then a further message is conveyed, or something else happens in the STB by way of the execution of computer code. The core of the alleged invention related to the existence of two signals which achieved the required result. The first signal, referred to as the “identification signal” was responsible for bringing about the display of an indication symbol or prompt on the screen. The second signal (the “information signal”) was responsible for displaying a message which was intended to appear if the user responded to the prompt (by pressing the relevant button on the remote control of the TV or STB), or for running computer code contained in the information signal or triggering a program already resident in the STB.
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Virgin Media had accepted that if any claim of the patent was valid it would be infringed. However, they contended that the patent was invalid on the grounds of anticipation and/or obviousness in the light of three pieces of prior art.
The patent was ruled invalid, lacking inventive step over an earlier published PCT patent application. The decision largely turned on the assessment of expert evidence as to the common general knowledge of the skilled person at the relevant priority date (20 November 1995) with the judge consistently favouring the evidence provided by Virgin Media’s expert over the evidence provided by Rovi’s expert.
In the course of the judgement, the judge had to rule between two competing interpretations of the word “for” appearing in the apparatus claims. Virgin Media argued that in the context of a patent claim “for” means “suitable for” and therefore did not imply any requirement for an apparatus to be configured in a particular way. This broad interpretation was rejected by the judge, with the judge noting that such an interpretation would render a large number of computer-based patents invalid if in the context of apparatus claims for such inventions “for” did not require an apparatus to be configured in a particular way so that a computer would reproduce specific patented activities.
Read the decision (in English) here.
Head note: Nicholas Fox
