Rovi Guides, Inc. v Virgin Media Limited & Ors., England and Wales Court of Appeal (Longmore, Lewison, Floyd LJJ), London UK, 14 July 2015, Neutral Citation Number:  EWCA Civ 781
The Court of Appeal has affirmed the decision of Mr John Baldwin QC, sitting as a deputy judge of the Patents Court, to revoke Rovi’s patent which describes and claims features which allow a user to pause live television or video on demand (“live feed”) and resume watching it on a different device (a process known as “relocation”). At first instance, the patent had been held to be obvious over a single piece of prior art, the Digital Audio-Visual Council 1.3.1 Specification (DAVIC). Rovi appealed the decision in relation to the live feed relocation claims (the “live feed claims”), but not the video on demand relocation claims.
Mr Baldwin QC had held that the live feed claims were obvious over DAVIC, in particular the discussion of delayed broadcasting in DAVIC. Delayed broadcast is a process by which a user can elect in advance for a whole programme to be recorded at the “head end” (a remote server) for viewing at a later point. Mr Baldwin QC concluded that the skilled person would understand that this would include a relocation function. Further, as pausing live TV was a “hot topic” at the priority date, the skilled addressee would be keen to implement this feature in any new product.
On appeal, Rovi set out a four step process which it argued the skilled person would need to take to get from DAVIC to the live feed claims, namely deciding to:
1. add personal video recorder functionality to their system, including live pause;
2. do that at the head end;
3. add live pause by commencing recording when pause is pressed; and
4. enable relocation and to use the live pause functionality for the purpose of the relocation.
Rovi accepted that steps 1 and 2 were obvious, and the Court of Appeal quickly dismissed arguments on step 4, so the focus of the judgment is on step 3. Rovi argued that step 3 could not be obvious because it goes directly contrary to steps 1 and 2 once the motivation for those steps is considered. In particular, Rovi argued that DAVIC only disclosed the recording of whole programmes at the head-end and that the skilled person would be motivated to do this by the space saved by multiple users being able to access each recording. In contrast, the patent allowed for individual users to record fragments of a programme at the head end, initiated by pressing pause, and which could only be accessed by that user.
Virgin argued, and the Court of Appeal agreed, that whilst DAVIC teaches the recording of whole programmes, it does not say that fragments of programmes cannot be recorded, and a skilled team trying to implement a “pause live TV function” would consider this as an option.
Rovi further argued that a skilled person adding functionality to the head end, such as the ability to pause live TV, would want to include instant replay and in doing so would not consider step three as an option. Indeed, neither Virgin’s advisors, nor their expert, initially appreciated that the preceding systems (TiVo and Replay Networks) worked by recording a particular channel from the moment a user switched to that channel. They had incorrectly assumed that those systems recorded from the point a user pressed pause. Rovi submitted that a pause button being used to initiate recording was not in the prior art and the evidence of Virgin’s expert that this was technically preferable was given on the basis of hindsight. The Court of Appeal dismissed this argument and stated that in implementing the invention, a minimalist and resource light approach would be taken and therefore that it was obvious to use pause to initiate recording.
The Court of Appeal noted that although recording from pressing pause is not mentioned in DAVIC, the technology had moved on between DAVIC and the priority date to the extent that pausing live TV was a “must have” feature.
The Court of Appeal also dismissed Rovi’s criticism that the Judge had failed to conduct a proper Windsurfing/Pozzoli analysis. Whilst it was noted that the Judge had not set out in as much detail as the Court of Appeal the reasons for rejecting Rovi’s arguments, he was plainly aware of the Windsurfing/Pozzoli guidelines and evidence had been structured by reference to those guidelines. The Court of Appeal also emphasised that although a judge must state his conclusions and brief reasons for reaching his conclusion, he is not required to deal with every argument and evidential dispute which is debated in the course of the trial, as per Lewison LJ in FAGE UK Limited v Chobani UK Limited at  to .
Read the judgment here.
Headnote: Thomas Hendicott, Bristows LLP