Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors

Patent claims concerning interactive television systems were revoked for obviousness. A prior-art disclosure may support an obviousness case even where it leaves implementation details unstated, but the court must identify the steps that the skilled team would have taken without hindsight. Common general knowledge includes information generally known and accepted in the relevant art, although a detailed work may qualify if it is the sort of stock reference ordinarily consulted. Apparatus claimed as being for a function means apparatus suitable for that function as it stands. Hardware capable of performing the patented process is insufficient where particular programming is required. Vague consumer-facing disclosures do not establish obviousness where several material implementation choices remain unresolved.

The claimants alleged that Virgin’s set-top box infringed a patent concerning the use of identification and information signals to display interactive prompts and information on television screens. Virgin accepted infringement if the claims were valid, subject to specified exceptions, and counterclaimed for revocation on anticipation and obviousness grounds. The patent was amended at trial, and two claims were not defended. The principal issues concerned the construction of program-related expressions, the skilled team and common general knowledge, and whether Florin, Bennett or Takiff anticipated or rendered the claims obvious. A separate issue concerned the meaning of apparatus being suitable for carrying out claimed functions.

Claim construction. “Program initiation data” meant data initiating execution of a resident program or routine, rather than any instruction causing a computer to perform an operation. “Computer program data” meant executable code, including scripts. The timing integers in the relevant claims were not limited to timing information carried in the identification signal.

1. Common general knowledge. The skilled team included expertise in conditional access and head-end signalling. Common general knowledge required information to be generally known and accepted in the relevant art. A detailed work could qualify if it was the sort of stock work that would be available for consultation.
2. Florin. The claims directed to separate identification and information signals, automatic prompts, timing data and executable or initiating program data were obvious over Florin. The skilled team would have considered a separate digital signal to trigger and time the prompt, and would have considered downloadable code or resident routines to generate the interactive screens.
3. Bennett. Bennett did not anticipate the claims because it disclosed no separate identification signal distinct from the information signal. That difference was not shown to be obvious. The related claims requiring icon-access and timing data therefore also survived the Bennett obviousness challenge.
4. Takiff. Takiff disclosed an interactive television concept but was technically vague. It did not make it obvious to download applications in advance, or to invoke executable code immediately when the viewer responded to the icon. The claims directed to those features were therefore not obvious over Takiff. The analysis reflected the danger of using hindsight to fill gaps in an imprecise disclosure.
5. “Suitable for”. Apparatus claimed as being for a function had to be suitable for that function as it stood. Florin’s hardware did not anticipate the apparatus claims merely because appropriate programming could have made it perform the claimed processes. Software could distinguish the apparatus without rendering the patent excluded subject matter.

All considered claims were invalid, and the remaining claims were not independently defended. The claimants’ action was dismissed and Virgin’s counterclaim for revocation succeeded.