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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Rovi Guides, Inc v Virgin Media Ltd & Ors  EWCA Civ 781 (23 July 2015)
Cite as:  EWCA Civ 781
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
MR JOHN BALDWIN QC SITTING AS A DEPUTY HIGH COURT JUDGE
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE LEWISON
LORD JUSTICE FLOYD
| ROVI GUIDES, INC
|- and -
|(1) VIRGIN MEDIA LIMITED
(2) VIRGIN MEDIA PAYMENTS LIMITED
(3) TiVo INC.
(Transcript of the Handed Down Judgment of
WordWave International Limited
Trading as DTI
165 Fleet Street, London EC4A 2DY
Tel No: 020 7404 1400, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
James Mellor QC and Andrew Lykiardopoulos QC (instructed by Marks & Clerk Solicitors) for the Respondent
Hearing date: 14 July 2015
Crown Copyright ©
Lord Justice Floyd :
Approach to obviousness at first instance and on appeal
"An invention shall be taken to involve an inventive step if it would not be obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art…"
"(1) (a) Identify the notional person skilled in the art; (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."
"Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation."
The patent and the invention it discloses
"if the media is a live feed the remote media-on demand server begins recording the media when the request to freeze delivery is received from the first [STB]."
The judgment of Mr Baldwin QC
"12.1 the way that cable systems, OTA [over the air] broadcast systems and telecoms systems operated to deliver content. Thus:
12.1.1 cable networks deliver content to subscribers over channels in a private network, with content being delivered simultaneously to all STBs 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. Although there is no actual point to point connection in a cable network, the use of entitlement messages permits what was referred to in evidence as a logical point to point transmission of content.
12.1.2 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.
12.1.3 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.
12.2 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.
12.3 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.
12.4 The use of subscriber management software at the head-end to cater for multiple cable STB households.
12.5 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.
12.6 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).
12.7 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.
12.8 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[. 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.
12.9 Personal Video Recorders (PVR), how they worked and the functionality they provided. This included time shifting, 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.
12.10 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) In addition to VOD, DAVIC discussed "delayed broadcast" in section 9.5. Delayed broadcast allowed a user to select a particular scheduled broadcast programme to be recorded at the head-end for delivery at a later time. DAVIC 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. The judge accepted that the skilled person would understand that the session interruption and transfer functions, i.e. relocation, should be available in any on-demand application including delayed broadcast.
ii) "Pause live TV" was a hot topic at the priority date and had been implemented on consumer equipment distributed by TiVo and Replay Networks. The judge referred to Mr Kerr's evidence that the skilled addressee would be keen to implement this feature in any new product and this would have led him directly to the idea of a system wherein live TV is paused and a recording is made at the head-end for subsequent on-demand play.
iii) The judge then summarised and dismissed an argument that if all this had been obvious it would have been mentioned in DAVIC. The judge's answer to this was that the art had moved on since DAVIC with the introduction of devices with pause live TV, and the excitement about that feature.
iv) Next the judge recorded that no positive reason had been put forward by Mr Hoarty as to why the core idea of the live feed claims was not obvious.
v) Finally the judge, relying on the evidence of Mr Kerr, concluded that the live feed claims were obvious.
The grounds of appeal
i) The judge failed to recognise that Virgin's attack was an impermissible ex post facto attack and depended on hindsight. The judge could not have concluded that the claims were obvious based on DAVIC.
ii) The judge failed to address the four steps individually when analysing whether the claims were obvious. If he had done so he would have appreciated that Virgin's case was an impermissible ex post facto analysis with the benefit of hindsight.
iii) The judge had failed to analyse the motivation for taking each of the steps. Had the judge considered the motivations for the first two steps he would have recognised that they would have "positively deterred" the skilled person from taking the third of the steps.
iv) Finally the judge had been wrong in his assessment of the relevance of the "delayed broadcast" application described in DAVIC. The delayed broadcast application taught away from step 3.
The arguments on the appeal
a) DAVIC teaches recording of whole programmes: it is contrary to this teaching to record only that part after pause is pressed;
b) To take this step means "throwing away" live rewind;
c) The justification for using the head-end was to provide a single copy for multiple users: but taking this step means that there are multiple, user-specific fragments, each fragment starting from the moment pause is pressed;
d) So step 3 contradicts the starting point and steps 1 and 2.
"The second hottest topic at the meeting was the significance of the Personal Video Recorder (PVR) for cable. The two main brands of PVRs are TIVO and Replay TV. Two views emerged on how to best apply this concept to cable. One view advocated adding PVR functionality to the cable settop box. Another view held that the hardware investment should be in the head end and not in the home (sound familiar?).
Since massive hard drives have become so inexpensive, PVR functionality could be provided by cable using VOD technology. Subscribers could be rented capacity on the bank of hard drives to store the programs they find interesting. Because multiple users can access the same copy, the amount of storage is substantially less than would be required in cable set-top boxes or in consumer-owned PVRs. Total hard drive capacity investment would be less if it was shared at the headend than if it was installed in each of the subscriber locations. Consumers would be pleased to avoid another set-top box and its costs. As hard drive technology continues its advance, consumers would keep pace without the worry of obsolescence. This approach can be both a revenue opportunity and another sustainable competitive advantage over other multichannel video providers who have no choice but to put the PVR functionality in the set-top box."
Mr Abrahams emphasises the part of this article which speaks of multiple users renting the same copy.
i) Not surprisingly he agrees that step 1 was obvious. He did not accept however that the skilled person would necessarily want to implement all the possible PVR functionality. The "pause live TV" feature was particularly important at the time and the skilled person would consider implementing this alone independently of instant replay.
ii) Deciding whether to implement the functionality of "pause live TV" at the head-end or in the STB was a matter of design choice. These were two well known options and there were proponents of both camps.
iii) There is no contradiction in Virgin's obviousness argument because:a) Although DAVIC does teach the recording of whole programmes, it is not contrary to this teaching to decide in a different context (pausing live TV) that the server need only record from the moment of pausing the programme.b) A skilled team wishing to implement live re-wind must either start recording from the moment the viewer starts watching or record everything all the time. Such systems were resource intensive. Pause live TV was the feature everyone wanted by 2000. It was not essential to provide instant replay and it was cheaper and simpler not to. The judge had been entitled to accept Mr Kerr's evidence, which was to this effect. Weighing up the pros and cons of having instant replay as well was not inventive. Moreover this analysis had been accepted by Rovi's own expert Mr Hoarty.c) The ability to make recordings at the head-end available to all users was not the only justification for functionality to be placed at the head-end. There were other considerations such as the ability of the network provider to keep control of the service.
"The reason why I am stating this is because I honestly did not remember, and these things were of interest to me in 1999, the fact that they [i.e. TiVo and Replay Networks] recorded all the time even when you were not asking for it. The one liner was "Hit pause on live TV". It was not "Go back on live TV"."
Lord Justice Lewison
Lord Justice Longmore
Note 1 DAVIC is the Digital Audio-Visual Council 1.3.1 Specification Part 1 published in 1998. [Back]
Note 1 DAVIC is the Digital Audio-Visual Council 1.3.1 Specification Part 1 published in 1998. [Back]