Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors

For an obviousness challenge, the court should identify the skilled person and common general knowledge, identify or construe the inventive concept, identify differences from the prior art, and assess obviousness without hindsight. A specification may disclose an invention even though the relevant feature is not repeated in the detailed description of a particular application. Where a prior-art document presents a layered, session-based system and teaches transfer between terminals, its teaching must be assessed as a whole and in the context of the skilled person’s technical knowledge. The court may rely on an expert who explains the prior art clearly and gives reasoned evidence, while guarding against ex post facto analysis.

Rovi sought relief for alleged infringement of European Patent (UK) 1,327,209 B1 by Virgin and TiVo. Rovi applied unconditionally to amend the patent. Infringement was conceded in relation to the amended claims alleged to be infringed, leaving validity as the only issue.

Virgin attacked the proposed amended claims for lack of inventive step, relying on the DAVIC Digital Audio-Visual Council 1.3.1 Specification Part 1, published in 1998, together with common general knowledge. The dispute concerned whether DAVIC taught relocation of a viewing session between set-top boxes, including in relation to live television, and whether the claimed features were obvious.

1. Disposition. The proposed amendments were refused and the patent was ordered to be revoked. The claims in both groups were invalid for lack of inventive step.

2. The court applied the four-step approach summarised in [2013] EWCA Civ 93 and elaborated in [2007] FSR 37: identify the skilled person and common general knowledge; identify or construe the inventive concept; identify the differences between the invention and the prior art; and ask whether those differences would have been obvious to the skilled addressee without knowledge of the invention.

3. The court had to guard against hindsight, particularly because the inventions appeared simple. The relevant question was what the skilled addressee would learn from DAVIC, read as a whole, rather than whether the document expressly described the patent’s terminology or repeated the feature in its VOD example.

4. DAVIC taught session transfer between set-top boxes in the same or different locations. Its session-management provisions, read with its functions concerning transfer of a programme and its treatment of VOD, disclosed the relocation feature. The omission of relocation from the detailed VOD application section did not alter that conclusion because the section was not comprehensive and relocation was not shown to be a core function.

5. The relocation feature made claims 1 and 12 obvious over DAVIC. The live-television claims were also obvious in light of DAVIC’s delayed-broadcast teaching, its session interruption and transfer functions, and common general knowledge concerning pause-live-TV functionality and personal video recorders. No individual feature of the remaining claims required an inventive step.

6. The court preferred the evidence of the defendants’ expert because it was clear, coherent and reasoned. The court rejected the criticism that his expertise prevented him from representing the skilled addressee, applying the approach in [2004] RPC 46.

First-instance decision. No appellate history was stated in the judgment.