Gemstar- Tvguide International Inc & Ors v Virgin Media Ltd & Anor

Gemstar (as I call all the claimants) sued Virgin (as I call all the defendants) for infringement of three EP UK patents, Nos. 0969662, 1377049 (“Favourites”) and 1613066 (“Transfer”). Virgin denied infringement and counterclaimed for revocation. The trial judge, Mann J, held that all three patents were invalid. Gemstar originally appealed in respect of all three patents but in the end confined their appeal to the Favourites and Transfer Patents.

The Judge found the Transfer Patent lacked novelty over a prior published patent application of Toshiba (10-03905) published on April 10^th just before the priority date of the Transfer Patent, namely 17^th September 1998. It was agreed to hear the argument about anticipation first and only proceed to hear other points in the appeal if we had not formed a clear view that he was right. In the event we did, with the result that we heard no argument about any other points.

The Judge found the Favourites Patent lacked novelty over prior art called SuperGuide. His finding of anticipation turned on his construction of claim 1. Before us it was agreed that unless the Judge was wrong on construction, the appeal would fail. So again it was agreed that we should hear just the arguments about construction first and only proceed to hear other arguments if we had not formed the clear view he was right. Again in the event we did.

The parties were told of our decisions. These are my reasons for them.

Mann J described this in a manner uncriticised by either side so I borrow with gratitude:

At the heart of these three patents is the concept of an EPG - an electronic programming guide. In the past 30 years or so the number of television broadcasting stations (including cable and satellite stations) has increased enormously in many countries (and in particular in the US). Each broadcaster wishes the consumer to know what programmes are being or are to be broadcast. Until the advent of electronic means of broadcasting this information was disseminated principally in paper form, of which the best known English publication was (and is) the Radio Times. The listing information took various forms. It could be lists of programmes (with supporting information about those programmes) listed by broadcasting channel, and by time within each channel, in the form of an elaborate chronological list. That form will be familiar to anyone who has used the Radio Times or the independent television equivalent, the TV Times. It could be a listing by start times, with each programme starting at a given time appearing by that start time, and then by channel within the start time. Or it could be by way of a grid, with start times on one axis and the channel on the other, with each cell representing the particular programme being broadcast in the cell (and bearing the name of that programme). In that last form the cells would be of irregular length, because not all TV shows are of the same duration. The left and right hand borders of the cell represent the start and finish times when read against the time axis. Each of those methods of listing has its benefits, and a choice between them will depend on the preferences of the information providers and/or the subscribers to the lists. Sometimes one sees both formats in one publication - I was shown US guides which had both a grid (which enables more of an overview) and start time listings (which allows for a little more detail for each programme). Written listings also contain some notes about the programmes in question, sometimes by the actual listing, and sometimes separately on the page.

The increase in the number of channels means that the size of the listings has increased, making their survey, and choice from them, more difficult. One answer to this problem is to provide lists electronically to the subscriber of the TV service so that it can be viewed on the screen. The information can be transmitted by various means, but now the most common is over the air by one or more service providers. By calling up the relevant list, and looking up the relevant day, time and channel, the viewer can see what programme is being broadcast at the relevant time. Background information about that programme (type, cast list and so on) can also be broadcast and accessed. The guides thus produced are called EPGs – electronic programme guides. For the purposes of this action I can distinguish between two sorts of EPGs - those which merely provide information to the consumer, and those which go further and provide that information and at the same time use software and hardware links to control the television, typically switching to the relevant programme directly from the EPG screen. In a typical case the EPG is controlled by a handheld selector, which controls a selecting highlight on the screen, and a programme would be “selected” by highlighting it and pressing a selection button, at which point an operation is carried out in relation to that programme – for example providing more information about it, or switching the TV receiver to receive it. Two of the patents in suit represent the former category (information only); the third has elements of the second (information plus switching) as well.

There was no dispute as to the principles applicable to anticipation. In summary:

If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will

To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented…A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee, ibid.

One has to consider how they [i.e. cited items of prior art] would be understood on their date of publication .. by the notional person skilled in the art. There is no reason why such a person, just as in the case of a real person, must find a meaning. In real life there are documents which have no clear meaning, documents so obscure that one throws up one’s hands saying “I have no idea what this author was really trying to say.” The notional skilled reader can do likewise, and if he or she does, the document is not novelty-destroying. It is not “clear and unambiguous,” per Jacob LJ in EMGS v. Schlumberger [2010] EWCA Civ 819 at [163] – [165].

EPO Board of Appeal cases are to the same effect, e.g. T0793/93.

There was no dispute about what this teaches or as to the meaning of claim 1, upon which it was agreed anticipation turned. I can therefore go directly to it breaking it down into elements

using an interactive television program guide implemented on user television equipment to cause a first display in a display screen of at least one program listing related to at least one program;

using the interactive television program guide to enable a user to select a program listing from the at least one displayed program listing;

using the interactive television program guide to cause the program related to selected program listing to be recorded on a digital storage device;

using the interactive television program guide to cause a second display in the display screen that includes at least one recorded program listing for at least one program recorded on the digital storage device, wherein the at least one recorded program listing includes a recorded program listing for the program recorded on the digital storage device;

using the interactive television program guide to enable the user to select the recorded program listing to transfer the recorded program from the digital storage device to a secondary storage device; and

using the interactive television program guide to transfer the recorded program from the digital storage device to a secondary storage device.

The “heart of the invention” as Mr Alexander QC put it for Gemstar lies in element [E]. The transfer of recorded programs is done without any further user input. In other words, the user can set up a transfer request for any number of programs and super-programs and the system will execute that request without the user needing to stop playback, select another program, start playback of the new program, etc. (c) Toshiba

The key question is whether [162] of Toshiba discloses this idea clearly and unmistakeably. Gemstar contends that it does not: that either it discloses a different idea or that it is simply without clear meaning at all – a case of the skilled man throwing his hands up.

Before I come to the document itself I must say a word about the disputes over translation. For there have been several translations. A lot of expense and time was wasted because of this. I do not go into the detail. In principle, whenever a party relies on a document in a foreign language, the translation should be sorted out at an early stage. Ideally the party relying on the translation should send it to the other(s) with an express request for agreement within a reasonable time. If the document is quite long the key passages relied on should be identified so that the other side can concentrate on these. If the translation is agreed, well and good. But if not, the Court at the case management stage should normally insist upon agreement or early resolution of the translation dispute, if necessary by a hearing for that purpose.

In the end, but only at trial, a translation was settled upon. It is that which must be construed – through of course the eyes of the skilled man. But, and this is an important but, the question of construction is one for the court, not for expert witnesses. Their job is to give the court the necessary understanding of the technology. Whilst it does not matter much if they opine in their witness statements on the meaning of the document, it is really their reasons which matter. It is worth bearing this particularly in mind when it comes to cross-examination – for otherwise the cross-examination can descend into pointless discussion about the meaning. In the present case, for instance, each side may have been somewhat guilty of that, and there has been reliance by both sides on the opinions as to meaning of the experts. I do not intend to go down that path, focussing instead on Toshiba itself.

It is important to understand its structure, for the meaning of the key passage must be understood in context. Mr Mellor QC for Virgin provided a helpful breakdown:

Of particular importance is that [162] must be read in the context of “editing” – the heading of the passage from [149-164].

The whole of that section is concerned with editing of programmes already recorded. Thus [149] reads:

Figure 5 is as follows:

Figure 6 is as follows:

[153] again is clearly concerned only with editing already recorded programmes:

Similarly [155] and [156] are concerned with already recorded programmes:

[158] is again about editing information about a recorded programme:

[159] brings in idea of using a second memory disk:

[160] goes on to say that one of the advantages of a second disk are that you can put all the programmes of a genre (e.g. East Enders) onto a single disk.

[161] then describes the case where there is editing and recording on the same disk:

It is in that context that the skilled reader would come to [162]. It says:

Virgin says the meaning of this is fairly plain. It is saying that if you are using a second disk, as contemplated in [160], where you have edited the programme information (as contemplated in [158]) you transfer the results of editing along with the already recorded programme together with appropriate address information to another disk. The latter is what, in context playback data for video and the like must mean. Nothing else would make sense to the skilled man: the edited index information must accompany the recorded programme along with address information so it can be found. You are simply making another disk like that shown in fig. 5. The technical teaching is clear and unmistakeable. If that is right, feature [E] is disclosed and there is anticipation.

I accept this argument and reject Gemstar’s counter-arguments, which I must now explain. Gemstar says that if [162] were talking about the recorded programme it would have said so – the patentee uses recorded programmes when he means that in many other places (e.g. [153]) and would have done so in [162] if he had meant it there. Instead he uses the phrase playback data for video and the like. That must have a different meaning – or none at all à la Schlumberger.

I am not convinced by this. First it is the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge (per Lord Diplock in Catnic v Hill & Smith [1982] RPC 183) and must give way to purposive construction. Secondly and in any event what must be transferred to a second disk is not only the edited programme information and the recorded programme but also information about the address of that recorded program. Playback data is apt to cover both.

Gemstar’s suggested meaning is set out in Mr Alexander’s skeleton argument at [57]:

I am unable to accept that. It makes no technical sense, and it means that [161] (the single disk case) and [162] (the two-disc case) are talking about different things. And it does not fit with [163] which covers both cases. It reads:

So, like Mann J, I conclude that anticipation has been established.

Claim 1 reads:

The Judge held that on his construction of the claim, it lacked novelty over some prior art called SuperGuide. Gemstar contends the Judge was wrong on construction. If he was right, it is accepted that SuperGuide anticipates.

The Judge summarised the rival contentions at [155]:

The claim must of course be construed in context. The Judge described its aims accurately:

The dispute is essentially this: from what list does the user select programmes to be “favourites”? A list of the programmes his or her equipment can actually receive, or a list of programmes sent to the users’ equipment whether or not the user can actually receive the programmes?

The answer is obviously the latter once one reads the specification and its drawings. I do not think it is necessary to go to much.

I start with fig 20. This is said to be “a diagrammatic representation of a channel customization screen display of the user interface for the system and process of the invention.” [69] says:

Figure 20 itself shows a screen headed Channel Customization. Channels 2 to 37 are identified in three columns by number. For instance Channel 2 is KTVU-2. On the left is a column headed “My”. The user can select which channels are “My”, i.e. favourites.

The important thing for present purposes is the source of the channels listed on the screen. [69] makes this absolutely clear – it is provided by a “schedule update.” Schedule updates are the channel listing information sent to the user’s machine by the operator of the listing system. The list sent does not depend on whether the user can actually receive any particular channel. That is fairly apparent from [69] alone, but [77] makes it explicit:

Once one appreciates therefore that the selection of My channels is from a list of programmes sent to the user’s machine and is wholly independent of whether the user’s apparatus will in fact receive them, it is evident that “channels available for viewing” in the claim must mean the list sent to the apparatus. These are described in [69] as available at the subscriber’s .. system. That is what is meant by available for viewing by the user in claim 1.

Were that not so, then the claim would not cover what is specifically described. It would also cover that which is not described (i.e. how to get a list of only those channels which the user’s apparatus can receive). It would also produce the absurd results referred to by the Judge at [159]:

I think the point is very clear indeed. The Judge was plainly right.

It is for the above reasons that the appeal should be dismissed.

I agree.

I also agree.