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Court of Appeal affirms decision revoking Rovi's 'live pause and relocation' media patent
The Court of Appeal rejected Rovi's appeal against a finding that the patent in suit was invalid due to lack of inventive step over the prior art.
Section 72(1)(a) of the Patents Act 1977 provides that a court may revoke a granted patent where the invention to which it relates is not a patentable invention. Section 3 of the Act provides that an invention involves 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’.
This appeal was brought by Rovi against a judgment and consequential revocation order made by Mr John Baldwin QC on 14 July 2014 (Rovi Solutions Corporation & Another v Virgin Media Ltd & Others  EWHC 2301 (Pat)) in respect of European Patent (UK) 1,327,209, which the judge ruled was invalid due to the lack of an inventive step.
Rovi had asserted the patent against the defendants, Virgin Media and TiVo. Virgin conceded infringement but alleged that the claims were invalid.
The patent covered an invention relating to both video on demand (‘VOD’) services (in which a user can request television media content for viewing at a time requested by him) and live TV services (the ordinary transmission of content over broadcast or cable TV services). The invention allowed a user to pause VOD or live TV content and resume watching it elsewhere (ie a different room or on different apparatus), functionality which the patent referred to as ‘relocation’.
The patent consisted of two broad categories of claim: claims relating to VOD relocation and claims relating to live TV relocation. The judge held that both sets of claims were obvious over a single piece of prior art: the Digital Audio-Visual Counsel 1.3.1 Specification Part 1, published in 1998 (‘DAVIC’).
Rovi appealed in respect of the live TV relocation claims only.
Rovi's primary argument on appeal was that the judge at first instance had erred in his application of the four-part structured approach to questions of obviousness, as formulated by the Court of Appeal in Pozzoli SpA v BDMO SA and Moulage Industriel de Perseigne SA  EWCA Civ 55. This approach advocates the following steps:
- ‘(a) Identify the notional person skilled in the art; (b) Identify the relevant common general knowledge of that person;
- Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
- 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;
- 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 fourth step highlights the importance of avoiding hindsight; the test is whether the invention was obvious to the notional person skilled in the artat the priority date of the patent, not subsequently, with the benefit of the alleged invention or any additional wisdom acquired later.
The judge at first instance had held that the live TV claims were obvious, given a discussion about delayed broadcasting in DAVIC. Delayed broadcasting is a service in which a user elects for a television programme to be recorded in advance at the ‘head end’ (ie on a remote server transmitting the programme rather than on a user device receiving the content).
The relevant claim (claim 22 as amended by Rovi in 2014) contained limitations which required a user to be able to ‘freeze delivery’ of a live TV programme delivered from a media server as part of an on-demand media service (by pressing pause). The freeze command (such as pressing pause) was transmitted from the user's first set-top box and on receipt, the server would begin recording the media. The user would then be able to resume watching from where he or she had left off on a second set-top box, which would receive from the server the recording, beginning at the point the user had pressed pause.
The key element in this, according to Rovi, was that, in the case of a live feed, recording only began once the user had pressed pause and this command had been received by the server. This was referred to in the case as ‘feature J’. The user could rewind the content up to the point that he/she had sent that command, but would not be able to rewind to before that point. It argued that in DAVIC, it was anticipated that recording would begin as soon as the user started watching the channel in question.
Rovi asserted that there were four steps an inventor would need to take in order to get from the invention disclosed in DAVIC to the patent; (1) deciding to add Personal Video Recording (PVR) functionality to their system, including ‘live pause’ (functionality by which a user can pause and resume live TV); (2) deciding to implement this at the head end (ie the remote server); (3) deciding to provide live pause by commencing recording when pause is pressed; (4) deciding to enable relocation and use live pause for the purpose of relocation.
Rovi accepted that (1) and (2) were obvious, but argued that step (3) was not, and in particular feature J. It argued that the judge had failed to take into account the motivation for taking steps (1) and (2), and that these steps ‘positively deterred’ a person from then taking step (3), because it would make far more sense to such a person to start recording from when the user began watching the channel in question, so that it could be rewound to the start if desired, rather than from when the pause button was pressed. This also allows for ‘instant replay’ and was the way preceding systems, such as those offered by TiVo had operated.
The Court of Appeal rejected these arguments. It found that although DAVIC did not expressly discuss recording from pressing pause, there was no inherent contradiction between the desire to implement PVR functionality, including live pause at the ‘head end’, and starting recording from the point that pause was pressed. The Court of Appeal found that there was evidence before the judge that live pause was a ‘hot topic’ at the time, and that much discussion centred on the idea of pausing live TV, rather than instant replay technology.
It had also been accepted by Rovi's expert that recording from the pause button being pressed required less resources than recording from when a viewer began watching a programme or a channel. The Court of Appeal noted that, in implementing the invention, the person skilled in the art would take a minimal and resource-light approach, especially as instant replay was less of a desirable feature at the time. The Court of Appeal therefore found that the judge was entitled to find that the implementation of a system with feature J was obvious over DAVIC, and therefore the live TV claims as a whole were invalid.
This case reiterates that the Court of Appeal will be reluctant to review a judge's findings as long as it is satisfied that the correct approach has been applied and there has been no error of fact or principle.
Rovi also criticized the alleged brevity of the first instance judgment. However, the Court of Appeal rejected this, noting that although a judge must set out his or her conclusions and brief reasons behind those conclusions, he or she is not required to deal with every argument and evidential dispute that is debated in the course of a trial.
This article was originally published in the Oxford Journal of IP Law and Practice. For further information, please contact Peter Dalton.