(1) Gemstar-TV Guide International Inc. (2) Starsight Telecast Inc. (3) United Video Properties Inc. v (1) Virgin Media Limited (2) Virgin Media Payments Limited [2009] EWHC 3068 (Ch)

Virgin Media has successfully defended a patent infringement claim brought against it by Gemstar TV Guide International Inc (Gemstar). Gemstar sued Virgin Media for alleged infringement of three of its patents relating to EPGs. These consist of the "Single Channel Patent", the "Favourites Patent" and the "Transfer Patent". Virgin Media denied the infringement and sought the revocation of the patents. Justice Mann held that two of the patents were found to be unpatentable for lacking a technical contribution and were therefore excluded. In addition, the patents in dispute were invalid for lack of novelty or inventive step and as a result, even if they were not excluded from patentability, were not infringed.

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(1)Gemstar-TV Guide International Inc. (2) Starsight Telecast Inc. (3) United Video Properties Inc. v (1) Virgin Media Limited (2) Virgin Media Payments Limited [2009] EWHC 3068 (Ch)

Virgin Media has successfully defended a patent infringement claim brought against it by Gemstar TV Guide International Inc (Gemstar). Gemstar sued Virgin Media for alleged infringement of three of its patents relating to EPGs. These consist of the "Single Channel Patent", the "Favourites Patent" and the "Transfer Patent". Virgin Media denied the infringement and sought the revocation of the patents. Justice Mann held that two of the patents were found to be unpatentable for lacking a technical contribution and were therefore excluded. In addition, the patents in dispute were invalid for lack of novelty or inventive step and as a result, even if they were not excluded from patentability, were not infringed.

Background

The patents involved techniques for providing electronic programming guides (EPG) and handling recordings from those EPGs. Until electronic means of broadcasting programme information became available, EPG information was mainly provided in paper form, an example of which is the Radio Times. Virgin Media had provided its subscribers with set-top boxes, which enable them to receive and record its programmes. The box broadcasts programme information and box displays it on the TV as an EPG.

One of the features of the Virgin EPG is that it allows the viewer to switch from a grid display to a single channel display in a manner, which Gemstar alleged infringed its patent. Users could display programme information in a manner, which according to Gemstar infringed its Single Channel Patent. The mechanism for arriving at favourite channels allegedly infringed Gemstar's Favourite Channel Patent and the mechanism for secondary recording allegedly infringed the Transfer Patent.

In early 2008, Gemstar announced the initiation of patent proceedings against Virgin Media at the High Court in London. Gemstar alleged that Virgin Media infringed three of its European patents: EP0969662 ("Patent 662"), EP1377049 ("Patent 049") and EP1613066 ("Patent 066"). Virgin disputed the infringement and claimed that the patents should be revoked as covering non-patentable subject matter, lacking novelty and being obvious from certain prior art.

Both the European Patent Convention and The Patents Act 1977 exclude from patentability both computer programmes and the presentation of information, under Section 1(2)(c) and (d). However, as a consequence of Section 1(3) the interpretation of the exclusions has been narrow and material is only excluded if it relates to pure computer programmes or pure presentations of information. Regrettably, this interpretation is not followed in all jurisdictions and the Boards of Appeal of the European Patent Office follow a different approach. This has been the subject of much controversy over the last twenty years.

Decision

Mr Justice Mann confirmed that the appropriate test for determining what constitutes patentable subject matter is the 4-stage test set out in Aerotel v Telco Holdings Ltd [2006] EWCA Civ 1371, as refined by Symbian Limited v Controller General of Patents [2008] EWCA Civ 10.

In his ruling, Justice Mann discussed the three patents as follows:

  • The Single Channel Patent, Patent 662 displays programmes in a grid format. The invention was a television schedule system incorporating a user interface, capable of shifting the focus from numerous channels to just one. The court found that the matter of Patent 662 should be excluded because the invention does not constitute a "technical effect". Therefore, patent 662 was excluded from patentability on two counts: (1) as a presentation of information and (2) as programme for a computer. Justice Mann concluded that even if the subject matter was not excluded, it was in any case not novel over the prior art. However, if the patent had been valid, Virgin would have infringed some of Patent 662's claims.
  • The Favourites Patent, Patent 049 allows the user to select certain channels as favourites through a user interface, which is customisable and compensated for by the nature of the schedule. The patent was excluded because it was found to be a computer programme and a presentation of information. According to Mr Justice Mann, "the patent describes a computer taking some information, getting some input from the user and then giving the user the information he wants. No more than that" (at para. 148). Mr Justice Mann dealt with Patent 049 swiftly, revoking the patent for being "plainly a computer program" and "an example of a presentation of information", thus holding that the subject-matter fell foul of both exclusions in the Patents Act 1977. However, Justice Mann went on to say that even if Patent 049 were valid, though Virgin's EPG would in that case infringe, it would nonetheless be revoked for want of novelty as it had already been anticipated by a previous patent.
  • The Transfer Patent, Patent 066 deals with the transfer of a recording to a secondary device, for example a VCR or recordable DVD, not in relation to the recording itself or to the triggering of the recording by the identification of the programme. The Aerotel test was applied to Patent 066. The matter was not excluded as merely a computer programme, as a technical effect was deemed to be present, i.e. the movement of data to the secondary device. The patent was also found to involve more than just the presentation of information as it had a separate effect outside of that movement. However, the patent had been anticipated by prior art in a patent application made by Toshiba and therefore still lacked novelty and fell to be revoked.

Comments

This decision encompasses three counterclaims of invalidity. Mr Justice Mann found all three patents to relate to non-novel subject matter. More importantly, the case provides further insight into the Patents Court's application of the exclusions to patentability and the text in Aerotel/Macrossan, as modified by the Symbian case. In his application of the Aerotel test to Patent 662 and Patent 066, Justice Mann sought to assess the presence of a technical effect in the claimed inventions, finding that the invention of Patent 662 provided no technical effect and was therefore excluded from patentability, while the matter of Patent 066 did provide a technical effect and was not excluded.

The test for exclusion to patentability in Aerotel, and especially its Step 4, "check that the contribution is technical" is clearly difficult. After years of controversy over the various approaches in the UK and at the EPO to patentability exclusion, Step 4 raises almost as many questions as it answers, relying inevitably on a sub-test for "technicality" for which there is no simple answer. While Mr Justice Mann saw no need to address the sub-test at all for one of the disputed patents, he demonstrated that, for the other two disputed patents, the correct approach is to assess the technical effect produced by the contribution to the art. The improved computer capable of initiating a data transfer between disks was deemed to show a technical effect and not to be excluded, whereas the improved interface device, which modifies visual displays on a computer screen, was not deemed to show a technical effect.

Despite the cases of Aerotel and Symbian, the Court of Appeal has not provided guidance on the meaning of "technical effect" and legal uncertainty remains. The treatment of three different patents in this single case demonstrates a continued case-by-case approach in the UK courts, from which it is difficult to draw general lessons on technical effect.

This area of law is certain to remain controversial: as well as the difficulties outlined above, there is also the inconvenient matter of the EPO's approach. Currently the EPO's decisions are not supportive of the UK courts. The decisions reject the UK's Aerotel test because it mixes tests for novelty or inventive step with those of exclusion, arguing that they should be tested separately... but that's another story.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

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The original publication date for this article was 07/12/2009.