UK - Gemstar-TV Guide International Inc. v Virgin Media Limited

Gemstar-TVGuide International Inc, Starsight Telecast Inc, United Video Properties Inc v. Virgin Media Ltd, Virgin Media Payments Ltd, Case No. [2011] EWCA Civ 302

The English Court of Appeal has dismissed the appeal by Gemstar against the earlier judgment of the Patents Court, which held that three of Gemstar's patents relating to various uses of electronic programme guides (interactive on-screen menu systems for digital television) were invalid.

The first instance judgment considered issues of novelty, obviousness and whether the claimed inventions were patentable at all or consisted of unpatentable excluded subject matter.  The appeal was only concerned with two of the three patents.  Rather than hear arguments on all the potential issues, the Court of Appeal considered novelty first, as if Gemstar could not succeed on this point, the appeal would be bound to fail.  In the event the Court of Appeal agreed with the first instance judge that the patents lacked novelty and that disposed of the appeal.  Although it would have been interesting to see the Court of Appeal's views on excluded subject matter, this judgment nevertheless provides a good illustration of the Court of Appeal's willingness to split the issues before it, in order to determine the case as expeditiously as possible.

A further issue worth noting was the comment made by Lord Justice Jacob (in one of his last judgments before his retirement from the Court of Appeal) regarding translations.  He strongly disapproved of the amount of time that had been taken up by disputes over the correct translation of prior art documents.  The judge's view was that in future any issues concerning translations should be determined at an early stage of the proceedings, if necessary by way of a court hearing specifically for that purpose.  It will therefore be important in future that litigants in the UK identify any potential issues concerning translations quickly and seek to resolve them without delay.

Read the judgment (in English) here.

Head note: Graham Burnett-Hall