Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors

This is the fourth in a series of actions in which the Claimants (Rovi) seek relief in respect of alleged patent infringement by the Defendants (Virgin). The first and second Defendants are part of the Virgin Media group and provide cable television services to customers in the UK and the third Defendant provides some hardware and software in relation to that business. I was not told what, if any, business is carried out by Rovi but it is common ground that it is the proprietor of European Patent (UK) 1,327,209 B1 and it is that patent which is in issue.

Rovi has made an unconditional application to amend the patent and at the trial the only remaining issue was the validity of the proposed to be amended claims – Virgin contending that all the claims, whether amended or not, were invalid and conceding infringement in respect of those claims (Footnote: ¹) alleged to be infringed. Thus, Virgin, having to discharge the burden of proof, opened the case and made its invalidity attack on the claims as proposed to be amended. The only attack made was based on lack of inventive step and only one piece of prior art, DAVIC (Footnote: ²), and common general knowledge was relied upon to support that attack (Footnote: ³).

There was no dispute as to the correct approach to an obviousness attack. It has been set out many times (Footnote: ⁴). The four step approach (Footnote: ⁵) elaborated by the court of appeal in Pozzoli v BDMO [2007] FSR 37 is well known and the parties accepted it was appropriate for this case. Moreover, it was agreed that, especially in relation to inventions which appear on their face to be rather simple, the court must be careful to avoid attributing to the skilled addressee the 20:20 vision of hindsight (Footnote: ⁶).

There was no real dispute about the first two Pozzoli steps. Indeed, the only major dispute was about what DAVIC would teach the skilled addressee at the priority date.

Although a large number of claims were in issue, it became common ground that there were two groups of such claims (Footnote: ⁷) and that there was really only one feature which mattered in each of the two groups. I shall explain this in more detail below. But the case needs a little more introduction first.

The Virgin cable television service offers a video on demand (“VOD”) service to its customers. Virgin maintains copies of a number of films on a VOD server and a customer can purchase an opportunity to watch any such film on his television. After a successful purchase, the bits comprising the film are streamed over the cable network for decoding by the customer’s set top box (STB) and viewing on his television, and the customer is provided with what has been called full VCR (Footnote: ⁸) functionality with respect to that film. Thus the customer can pause, rewind, fast forward or stop the film as he might do with a traditional video cassette player.

The provision of such a VOD service by a cable operator was old at the priority date of the patent (9 October 2000). However, the Virgin system has an additional feature - the customer can pause the film being viewed through one STB and resume play where he left off on another STB, that other being connected to another television either in his own home or elsewhere. It is the idea of this latter feature which Rovi contend is the invention of the patent. The patent calls it a “relocate feature” and it is the subject of the first group of claims.

The patent also discloses and claims the idea of this relocate feature in connection with the provision of live TV by a cable system. Thus, another aspect of the relocate feature is the idea of determining, when a request to pause a TV output is made via an STB, whether the content being viewed is a live feed and, if it is, making a recording of that live feed so that such is available for a viewer who wishes to resume watching that live broadcast (Footnote: ⁹), without missing any content, via a second STB and its associated television. This feature is the subject of the second group of claims. Virgin is not alleged to infringe these claims but does contend that they are invalid. They are referred to below as the “live TV claims”.

In summary, therefore, the invention provides the benefit of allowing the use of multiple STBs in a cable television system to view VOD or live programming, such that the effect of the viewer pausing the presentation of programming on one STB is to enable viewing of that programming to be resumed on another STB without any content being missed. From a viewer’s point of view, the benefit is that he can stop watching a programme (either VOD or live TV) on one television and then resume where he left off on another television.

It was common ground that the skilled person, the person to whom the patent is addressed, is a person or a team working in the cable, satellite, terrestrial TV or telecoms industries who was interested in the development of VOD systems.

It was also common ground that, in relation to the patent, there were no questions of construction for the court to resolve and, further, that the patent was an ideas patent in that once the skilled person had the ideas of relocation as prescribed by the various claims, then he would have no particular difficulty in putting those ideas into effect.

There was very little dispute about the common general knowledge in the art (Footnote: ¹⁰) at the priority date. I find it included:

the way that cable systems, OTA (Footnote: ¹¹) broadcast systems and telecoms systems operated to deliver content. Thus:

cable networks deliver content to subscribers over channels in a private network, with content being delivered simultaneously to all STBs (Footnote: ¹²) in the network from a central transmission facility, referred to as the head-end. It was common for networks to include a ‘return path’ so that each STB could communicate with the head end and this enabled interactive functions such as VOD. The content of any channel may contain entitlement messages which, although delivered like all content to all STBs in the network, are such that only a particular STB is capable of decoding data transmitted on that channel. Such messages enable the cable provider to stream, e.g. a film, down a channel on the network and restrict the ability to view the film to a single STB, being that one where the subscriber has requested and paid for the film (Footnote: ¹³). Although there is no actual point to point connection in a cable network (Footnote: ¹⁴), the use of entitlement messages permits what was referred to in evidence as a logical point to point transmission of content.

OTA broadcast systems deliver content over the air to viewers with antennae. Content may be free to air or encrypted, in which case the viewer needs a decryption device. There is no return path unless one is provided in another way, e.g. by a phone line, in which case the systems work in a similar way to cable.

Telecoms systems deliver content via copper pair cable or fibre optics. The infrastructure was set up as a telephone network and two-way connectivity is established via point to point wire and switches. That infrastructure was known to be suitable for transmitting television content. A VOD programme is delivered on a single point to point connection that is set up between the provider and the STB requesting the content.

VOD and other interactive services could be provided over cable networks, and that, in a VOD system, the recorded material is stored at the head-end. Individual STBs can access that stored material and the user can play, pause, rewind etc., as with a VCR.

Storage at the head-end in a VOD cable system necessitates the head-end being able to identify the point at which content began to be recorded, was paused or is to be resumed.

The use of subscriber management software at the head-end to cater for multiple cable STB households.

In connection with new functionality proposed to be added to a cable system, there was a debate in the industry as to whether the new aspects should be added to the user’s STB or, centrally, at the head end. This debate was well known, with proponents on either side.

Servers in networked systems were useful for providing services to users. In the context of interactive VOD services, server requirements were generally split between an audio-visual streaming device (storing and streaming the content) and a controller server (managing the interaction with the user to enable other functionalities such as selection of content).

The concepts of layered software and distributed systems in service-providing systems. Thus system requirements were split into software layers (categorising requirements into common operation levels so that they were more easily identifiable) which enabled service providers to provide services, including VOD services, to customers in a more cost effective and standardised way (Footnote: ¹⁵).

The concept of sessions which could exist at various layers. The main session, or user session, is the one created when a user starts to use a service on a VOD system and closes when the user finishes using the service. A subsidiary session or connection session is set up which consists of the network connection between the user equipment and the service source (Footnote: ¹⁶). The two different sessions are not necessarily set up and closed down at the same time, the possibility existing for a user session to be maintained after a connection session has been closed.

Personal Video Recorders (Footnote: ¹⁷) (PVR), how they worked (Footnote: ¹⁸) and the functionality they provided. This included time shifting (Footnote: ¹⁹), pausing live TV and later resuming from the same point, and rewinding live TV for replay. The notion of pausing live TV was a hot topic at the priority date.

Cable system providers were in competition with PVR providers and were interested in offering PVR functionality to their customers. The industry debate previously mentioned included a debate as to whether it was preferable to record content and provide functionality from the head-end or a local STB.

I now turn to DAVIC and to consider its teaching. In this respect I was assisted by experts on both parties and I must comment upon the help each of them gave to me.

The expert witness instructed by Virgin was Mr Kerr. He was a business/IT consultant with extensive experience in the telecommunications, multimedia and TV areas up to 2001 and, subsequently, in more general communications and IT systems. His experience and expertise in the interactive TV/VOD arena spanned 19 years from 1981 to 2000. During this time he covered system-level architectures, designs and performance.

Mr Kerr was a very impressive and knowledgeable witness who was able to explain concepts clearly and succinctly. I found him very helpful.

Mr Abrahams, counsel for Rovi, had two main criticisms. The first was that Mr Kerr was much too clever and imaginative to be able to give an opinion upon what the skilled addressee might learn from a document or what the skilled addressee might do in consequence of any teaching in a document. But, as Jacob LJ explained in Technip France SA’s Patent [2004] RPC 46 at [11] – [15], it does not really matter whether or not the expert approximates to the skilled team, what matters is how good he is at explaining things and what are the reasons for his opinion.

Mr Abrahams’ second criticism was that Mr Kerr’s approach was tainted by hindsight, that he was looking at the prior art with knowledge of the invention of the patent and applying ex post facto analysis. In my consideration of the evidence I have been careful to bear in mind Mr Abrahams’ comments in this respect.

The expert witness instructed by Rovi was Mr Hoarty. He studied electronics engineering at Ohio State University and between 1974 and 1977 established an electronics engineering consulting business. During the 1980s he worked on Wall Street and was responsible for designing and developing financial data analysis systems for the fixed interest and equities departments of Goldman Sachs. In 1990 he founded ICTV Inc, one of the first interactive television companies and between 1990 and 1997 he was responsible for developing the first interactive TV and VOD systems for cable television. He authored or co-authored more than 20 patents for ICTV, several of which, he told me, are the most cited in the interactive TV/VOD patent field. Between 1997 and 1998 he helped develop a new MPEG (Footnote: ²⁰) video compression technology that could be inserted in analog television systems and in 2000 he founded Dotcast Inc where he was responsible for the design and development of the Dotcast digital-media national distribution network. He has regularly attended numerous conferences including the National Cable Television Association conferences and has served on a number of relevant technical committees

I have no doubt that Mr Hoarty was well versed in the relevant technology. However, I did not find he was very good at explaining things and he was not very good at answering questions. Nor was he consistent with the answers which he did give. At times I felt that he was more concerned at arguing or asserting Rovi’s position with respect to what the skilled addressee might or might not have done in connection with the prior art rather than trying to explain the reasons for his views.

In his written evidence in chief Mr Hoarty chose not to deal with sections of DAVIC which appeared to me (and to Mr Kerr) to be plainly relevant and, moreover, his overall approach to that document was dismissive. In his written evidence in Reply he stated that by the priority date DAVIC had become obsolete. However, in cross examination he accepted that he should have said ‘obsolete save in relation to VOD and various other matters’. Since VOD is clearly relevant to this case, that statement in his Reply evidence was potentially misleading. Mr Abrahams contended that the reference to ‘obsolete’ was in relation to a system built in accordance with the whole of DAVIC, and that such was clear from other paragraphs of that Reply evidence where Mr Hoarty accepted that the skilled addressee could pick out aspects of DAVIC that would work in any particular network topology. Even if Mr Abrahams were right, and I am not completely satisfied that he is, the point illustrates the care that is needed when considering Mr Hoarty’s evidence.

Mr Mellor QC, counsel for Virgin, had a number of serious criticisms of the way in which Mr Hoarty undertook his role as an independent expert witness, and he drew my attention to what he submitted were a number of examples of Mr Hoarty changing his evidence or accepting in cross examination matters which were inconsistent with his written evidence. For example, there was an issue as to whether, in connection with the provision of PVR functionality and VOD in a cable system, the skilled addressee would think that such functionality should be provided at the head-end or in the STB (the relevance being that it is provided in the head-end with the invention in suit). In written evidence Mr Hoarty said that the skilled addressee would consider that PVR functionality should be provided in the STB and that any debate over its location had been resolved; that at the priority date there were no discussions in the industry as to whether or not to locate that functionality in the head-end. In cross examination however, he readily accepted that there was an ongoing debate about the matter and that there were good arguments for locating the functionality in the head-end. This was one of a number of instances (Footnote: ²¹) in which Mr Hoarty made inconsistent statements in his evidence, with the result that I found his evidence much less useful than that of Mr Kerr. I turn now to the prior art and its teaching.

DAVIC is a specification developed by an industry body based on submissions from members and non-members. It provides a full specification and defines the minimum tools and dynamic behaviour needed by digital audio-visual systems. It was common ground that DAVIC describes a layered, session based system.

Rovi contended that by the priority date DAVIC was of historical interest only and that the skilled person would not consider its contents to be a good basis for further action. That submission was based on some evidence in chief from Mr Hoarty which did not stand up to cross examination and which I reject. Accordingly I shall consider DAVIC as a document which the skilled addressee would read with interest.

Part 1, being the part relied upon by Virgin, summarises the functionalities required by users and providers of digital audio-visual applications and systems. In simple terms, it is an overview of functionality which the skilled addressee would read and, thereby, learn the functionality which was available to him. It is mostly focussed on higher level aspects of technology layers, i.e. the higher level functionality observed by a user and how the devices within the networked system (servers and user equipment) work with one another. It is generally network agnostic.

Section 7 of Part 1 lists and defines the functions supported by DAVIC systems. These are the core functions that are basic to the system’s operation, integrity and development. Section 8, which is headed ‘Common Requirements of Applications and Services’ describes generic tools which can be implemented with the functions of section 7 and used in applications, and section 9 describes example applications. The applications given priority are specified in detail in sections 9.1 to 9.8 and the first of such is VOD (Footnote: ²²). Mr Kerr said, and I agree, that it is important to understand this structure of DAVIC in order properly to understand what it would teach the skilled addressee interested in developing VOD systems in the cable, satellite, terrestrial TV or telecoms industries. Mr Hoarty, on the other hand, referred only to sections 8 and 9 of DAVIC in his report in chief. By failing to consider section 7 I think he put himself at a disadvantage when he gave his opinion on the teaching of DAVIC.

With respect to the functions in section 7, Mr Kerr was of the opinion that the following would be of particular relevance in relation to VOD: Session Functions, Application Control Functions, Usage Data Functions and User Profile Functions. The Session Functions to which he drew particular attention were:

Mr Kerr noted that the skilled addressee would not have necessarily focussed on these functions alone but that they formed part of the list of desired functionality which the DAVIC specification tells the reader a system should include. He said they reflected desirable functionality for any audio-visual system in 2000.

With respect to section 8, Mr Kerr drew attention to the section on session management:

Mr Kerr’s evidence was that the skilled addressee would note that an important application in section 9 of DAVIC was VOD, i.e. that the document was right within his sphere of interest, and that he would turn to section 8 to see what functionality he needed to implement. On considering this functionality he would see section 8.2.5.2 and immediately appreciate that his VOD service should include the functionality of pause (which would accord with his understanding of basic VCR functionality). He would go onto the third bullet and note that an enhancement of this basic functionality may be supported and that this enhancement was a transfer of sessions between terminals within a home. If the skilled addressee were at all uncertain as to what this meant he would seek clarification in section 7, and sub-sections 4.06 and 4.07 would tell him exactly what was meant. He would learn that DAVIC was requiring the system to be capable of transferring a VOD session and the programme that was being watched within it from an STB in one room of a house to an STB in another room of the house. He would note that session management is all about connecting and disconnecting from one or more services and that the user must, therefore, be able to pause a service (e.g. viewing a movie) on one STB and resume that service on another STB in another room of the home. This, of course, is the basic ‘relocate feature’ of the patent.

Mr Abrahams submitted that this line of reasoning was completely impermissible and was a product of the worst kind of hindsight analysis (Footnote: ²³). He submitted that the bullets of §8.2.5.2 were not necessarily connected with each other and that there was nothing to suggest they might refer to transfer of sessions in a cable system. He supported that by reference to subsections 4.06 and 4.07 of section 7 and submitted that these could only refer to transfer of video telephony sessions, or other non-related sessions. He argued that the concept of relocating a VOD session or a TV session (either in a cable, OTA or telecoms system) was completely alien to the skilled addressee and that such a person could only understand 4.06 and 4.07 within the world with which he was familiar – which did not include relocating a TV session.

Mr Abrahams supported his argument with what he called his ‘killer point’. He submitted that if §8.2.5.2 or the references in 4.06 and 4.07 had been intended to refer to relocating VOD sessions, then this would have been a revolutionary concept and it would be certain to have made it into section 9.1 and its general description of the functionalities available with VOD. He pointed out that the main VCR functionalities were all there and that it would be striking if DAVIC had intended to teach relocation but had not included the novel feature in section 9.1. He argued that DAVIC was a product of the best industry brains at almost the relevant time and the absence of any mention of relocation in section 9.1 was the best evidence of the fact that these persons in the art had simply missed the Rovi invention.

Mr Abrahams further supported his argument by pointing out that §8.2.5.2 referred to the transfer of sessions. He drew attention to the fact that in a cable system the only session is a connection session and that this cannot be transferred. He pointed out that in a cable session, all STBs on the network received the same content from the head-end (Footnote: ²⁴) and, therefore, it was wholly inapposite to talk of transfer in relation to this kind of session. He said (correctly) that relocation is achieved in a cable system by arranging for the head-end to transmit a different entitlement message so that a second STB can interpret the streamed content and that there was no transfer of a connection session, merely the termination of one connection session and the opening of another.

Mr Abrahams submitted that transfer of sessions would make perfect sense to the skilled addressee in the context of telecoms and, in particular, video or audio telephony, but would make no sense at all to the skilled addressee in the context of VOD or television, especially in cable. When he was asked to explain what ‘transfer a program to [an STB] in a different room in a home’ in §4.06 of section 7 meant if it did not mean ‘transfer a [VOD or other TV] program to [an STB] in a different room in a home’, he said that it was not up to him to provide an answer, that it was up to Virgin to persuade the court that its meaning supported its case. I did not regard that as a helpful answer, particularly since Rovi’s expert, Mr Hoarty, accepted that §4.06 was referring to, amongst other things, the transfer of VOD programming.

Mr Hoarty had tried to provide an evidential basis for Mr Abrahams’ submissions. Thus he was adamant that the skilled addressee would never think that the ‘enhanced mechanisms’ of the third bullet of §8.2.5.2 referred to the transfer of VOD sessions on cable, or that §4.06 could possibly refer to the transfer of a VOD session in a cable system. His position did not survive cross examination (Footnote: ²⁵):

In this section of evidence Mr Hoarty conceded that §4.06 of section 7 of DAVIC would teach the skilled addressee about the transfer of a VOD programme from one STB to another, a point which was inconsistent with Rovi’s submissions. Mr Abrahams dealt with the inconsistency by asserting Mr Hoarty had been duped by Mr Mellor, that the answers he gave were of no value because the questions were tainted by hindsight. However, I am satisfied that this is not a fair criticism, that what Mr Hoarty was recognising was the actual teaching of DAVIC.

Mr Abrahams also argued that Mr Hoarty could not properly have accepted that §4.06 of section 7 or section 8.2.5.2 were teaching relocation of a viewing session in a cable system since it was a well-known technical fact that, in cable, the same data is simultaneously streamed from the head-end to all STBs in the network and, accordingly, and as would have been well known to the skilled addressee, relocation did not involve the transfer of a connection session (Footnote: ²⁶).

There are a number of points in answer to this argument. The first is that, according to Mr Kerr, the skilled addressee would understand that the session to which reference is being made in § 8.2.5.2 is a user session. If that is right, then 8.2.5.2 is concerned with transfer of a viewing session and the language reads naturally. According to Mr Hoarty, however, the skilled addressee would understand that 8.2.5.2 was referring to a connection session, i.e. an entity which can easily be transferred in a telecoms system (because of point-to-point connectivity), but not in a cable system (because of broadcast connectivity). But in a cable system Mr Hoarty accepted that the skilled addressee would recognise a logical point-to-point transmission of content and, if that is the right approach, the skilled addressee would appreciate that the subject matter of 8.2.5.2 was a logical connection session (Footnote: ²⁷).

Moreover, for the reasons given in that part of this judgment dealing with the two expert witnesses, I prefer Mr Kerr’s evidence as to what section 8.2.5.2 and §4.06 would teach the skilled addressee.

As for Mr Abrahams’ killer point referred to in §31 above, it is evident that section 9.1 was not intended to be comprehensive. The fact that relocation is not mentioned is easily explained by the fact that it was not put forward as a core function. Moreover, there is no evidence at all that the relocation feature is an important feature or has any real commercial value or is anything other than a gimmick.

Thus I am satisfied that DAVIC teaches the relocation feature of the Patent. There are aspects in claims 1 and 12 which prevent DAVIC from being novelty destroying but neither expert contended and Mr Abrahams did not argue that if the relocation feature is disclosed in DAVIC these claims would survive an attack of lack of inventive step. Mr Kerr’s opinion was that these claims were obvious over DAVIC and not only were the reasons he gave for that opinion persuasive they were not effectively challenged. I agree with that opinion.

I now turn to the live feed claims, those which involve the application of the relocation feature in the context of a viewer watching live television (Footnote: ²⁸). In relation to these claims Mr Mellor relied upon some more of the teaching in DAVIC and, in particular, that regarding ‘delayed broadcast’ which is described in section 9.5. Delayed broadcast is put forward as a specific broadcasting application wherein the user can select a scheduled broadcast programme to be stored at the head-end for delivery at a later time by, for example, VOD. The specification provides that the user should be able to start watching at any time after the recording has begun and that there should be VCR functionality. Mr Kerr explained, and I accept, that the skilled addressee would understand that in addition to the core session functions, the generic session interruption and transfer functions of DAVIC (Footnote: ²⁹) would be useful in any on-demand application, including ‘delayed broadcast’.

Mr Kerr also reminded the court that a hot topic at the time was the PVR functionality (in particular the ‘pause live TV’ aspect) provided on consumer equipment from TiVo and Replay Networks. He said that the skilled reader would be keen to implement that functionality in any new product and that DAVIC’s teaching in relation to delayed broadcasts (when read with the rest of DAVIC) would lead him directly to the idea of a system wherein live TV is interrupted (paused) and a recording made at the head-end for subsequent on-demand play like any other VOD asset (and including the transfer functionality).

Mr Abrahams’ riposte was that Mr Kerr was again applying hindsight and not properly considering the matter through the eyes of the unimaginative skilled addressee. As before, he reinforced his submission with the observation that if such had been obvious, then it would have been recognised by the authors of DAVIC and referred to in section 9. In the case of pausing live TV, however, the art had moved on since the publication of DAVIC. It had moved on by the introduction into the marketplace of the TiVo and Reply Networks devices and the excitement about the ‘pause live TV’ functionality.

Mr Hoarty was unable to put forward any persuasive reasons as to why Mr Kerr was mistaken in his opinion and conclusions and I am satisfied that the core idea of the live feed claims was not inventive at the priority date given the teaching in DAVIC and the common general knowledge.

Mr Kerr analysed each of claims 7, 17 and 22 to 25 (as proposed to be amended) and explained why none of their individual aspects required any invention. I do not think Mr Hoarty disagreed with that analysis and Mr Abrahams did not address me on any particular aspects of these claims (other than the relocate feature in connection with live TV). In the circumstances, and relying on the evidence of Mr Kerr, I am satisfied that none of the second group of claims as proposed to be amended is valid. I refuse permission to amend the claims and order that the patent be revoked.

An interactive media-on-demand system, comprising: