Gemstar- Tvguide International Inc & Ors v Virgin Media Ltd & Anor

A prior publication anticipates a patent claim only where it gives clear and unmistakable directions to do what the claim covers. A mere signpost towards the invention is insufficient. The document is assessed through the eyes of the skilled person at the publication date, although an obscure document may fail to destroy novelty. Prior art must be construed purposively and in its full technical context. Claim language is also construed in the context of the specification and drawings. A construction which excludes the described invention, or produces artificial opportunities to avoid infringement, may be rejected.

The appellants sued the respondents for infringement of three EP UK patents concerning electronic programme guides. Mann J held that all three patents were invalid: the Transfer patent lacked novelty over a Toshiba patent application, and the Favourites patent lacked novelty over SuperGuide. The appellants initially appealed in relation to all three patents but pursued only the Favourites and Transfer patents.

The appeal proceeded on two limited questions. For the Transfer patent, the issue was whether paragraph 162 of the Toshiba application clearly disclosed the claimed transfer of recorded programmes to a secondary storage device. For the Favourites patent, the issue was the meaning of channels available for viewing by the user in claim 1. The central question was whether the judge’s construction and resulting findings of anticipation were correct.

The appeal was unanimously dismissed. The court upheld Mann J’s findings that both patents under appeal lacked novelty.

1. For anticipation, the prior publication must contain clear and unmistakable directions to do what the patent claim covers. A signpost towards the invention is insufficient. The principles stated in General Tire v Firestone [1972] RPC 457 and the skilled-person approach in EMGS v Schlumberger [2010] EWCA Civ 819 were applied.
2. The Toshiba application had to be read as a whole, particularly in the context of its editing section. Paragraph 162 concerned transferring edited index information together with the recorded programme and the address information needed to locate it. Paragraph 163 confirmed that the transferred disk contained the programme selected for playback. The disclosure was therefore clear and unmistakable, and anticipated the Transfer patent.
3. Construction is a matter for the court. Expert evidence assists the court in understanding the technology but does not determine the meaning of the document. Purposive construction must prevail over meticulous verbal analysis, following the approach referred to in Catnic v Hill & Smith [1982] RPC 183.
4. In the Favourites patent, channels available for viewing by the user meant the channels listed and delivered to the user’s equipment by the schedule update, not merely channels which the equipment could actually receive. That construction reflected the specification and drawings. The contrary construction would exclude the described system and permit artificial avoidance of infringement by adding a non-receivable channel or using equipment unable to receive all listed channels. SuperGuide therefore anticipated the claim.
5. The court also observed that disputes over translations of foreign-language documents should ordinarily be identified and resolved at an early case-management stage.

The appeal was dismissed.

• Court of Appeal (Civil Division) dismissed the appeal and upheld the findings of anticipation.
• High Court, Chancery Division, Patents Court: Mann J held that all three patents were invalid in [2009] EWHC 3068 (Ch).