Starsight Telecast Inc and United Video Properties Inc v Virgin Media Limited, Virgin Media Payments Limited and Tivo Inc, Patents Court, 26 March 2014, [2014] EWHC 828 (Pat), Arnold J
The Opposition Division had held that the patent as granted contained added subject matter and upheld the patent in amended form, but that decision was suspended as both sides had appealed. Therefore, Arnold J considered the patent in both the form as granted and as amended.
Arnold J concluded, in summary: (i) the granted 234 patent was invalid for added matter and obviousness, but if it were valid one type of STB would have infringed; (ii) the amended 234 patent was invalid for obviousness, but even if it were valid the STBs would not have infringed; and (iii) the other patent was invalid for anticipation and obviousness, but if it were valid the STBs would not have infringed. He noted that if this decision was appealed, consideration should be given to asking the Technical Board of Appeal to expedite the EPO appeal proceedings and also to ensuring that this appeal would not be heard until after the Board’s decision and reasons were available.
Points of interest in Arnold J’s judgment include the issue of added matter, and his comments on product and process descriptions (PPDs), primers and the parties’ expert witnesses.
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On added matter, Arnold J referred to Lord Justice Kitchin’s comprehensive review (in Nokia v IPCom [2012] EWCA Civ 567) of decisions of the English courts and the EPO Boards of Appeal, but added the Board of Appeal’s comments in T 219/09 Zaltron/Stick (unreported) on “intermediate generalisation”: “According to established case law it will, for example, normally not be allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. a specific embodiment in the description,……Such an amendment results in an intermediate generalization, in that it further limits the claimed subject-matter, but is nevertheless directed at in an undisclosed combination of features broader than that of its originally disclosed context,….It is justified only in the absence of any clearly recognizable functional or structural relationship among the features of the specific combination,…, and if the extracted feature is thus not inextricably linked with those features,..”
Arnold J held that Claim 1 of granted patent 237 was invalid for added matter, being a “blatant intermediate generalisation”; it was directed to a method of restricting access to program schedule information based on parental control options per se (regardless, for example, of whether the restriction concerned individual programmes or entire channels) and no such invention was disclosed in the application as filed. Arnold J also held that granted claim 4 (as dependent on claims 2 and 1) was an intermediate generalisation; it generalised the invention in a way that omitted important parts of the method disclosed, thereby telling the skilled team for the first time that those parts were inessential.
Arnold J criticised Virgin for not having provided proper PPDs at the outset of the action or at least well before trial. In the UK, if the defendant provides “full particulars of the product or process alleged to infringe” a patent, there is no requirement for standard disclosure of documents relating to the infringement. Arnold J referred to case law which stressed the duty to provide “full particulars”, i.e. sufficient to enable all issues of infringement to be resolved (Consafe v Emtunga [1999] RPC 154, Taylor v Ishida [2000] FSR 224). He added that the PPD must contain information of at least the level of specificity of the claims and often more detail is required, and that, in general, a defendant cannot seek to use a lack of clarity of the claimant’s case on infringement as an excuse for not providing a proper PPD – in this case, Virgin could have applied for an order requiring Rovi to serve a statement of case on infringement, or applied for directions.
Arnold J also recorded his disappointment that the parties had not provided a primer to the court on the agreed technical background to the case. Regarding the parties’ expert witnesses for the 234 patent, Arnold J made it clear he preferred the evidence of Virgin’s expert to that of Rovi’s expert; amongst other reasons, Rovi’s expert had an unusual background and, being a lone inventor at the priority date, was not representative of a member of the skilled team to whom 234 was addressed. Arnold J was more positive about Rovi’s expert witness for the other patent but did not consider he was entirely representative of the skilled addressee. Virgin’s experts did not escape criticism, however. They had read the patent before the prior art and had therefore exposed themselves to the dangers of hindsight.
Read the judgment (in English) here.
Head note: Rowena Stent
