Starsight Telecast Inc & Anor v Virgin Media Ltd & Ors

A patent product or process description must give full particulars sufficient to resolve every infringement issue. It must contain at least the specificity of the claims and may require more detail where infringement depends on the precise operation of the product or process.

Patent claims must be construed purposively in context. Where a claim presents a sequence of functional steps, that sequence may be implicit. Added matter arises where a claim generalises a specific disclosure and thereby presents the skilled reader with new information. For computer-related inventions, the statutory exclusions require attention to the actual technical contribution. Claims may be obvious where the prior art makes the claimed restriction or functionality an obvious implementation of known systems.

Rovi claimed that Virgin’s TiVo and VHD set-top boxes infringed European patents 1 763 234 and 0 821 856, concerning parental control of electronic programme guides and the coordination of television signals and guide information from multiple sources. Virgin denied infringement and counterclaimed for revocation on grounds including added matter, excluded subject matter, lack of novelty and obviousness.

The court considered the patents as granted and in proposed amended forms. The central issues were the proper construction of the claims, whether the amendments disclosed new information, whether the claims were patentable over Bestler, the Davis Demonstration, the Uniden 4800 and Young, and whether the accused systems fell within the claims.

1. Product and process descriptions. Under CPR PD63 para 6.1, a description must provide full particulars sufficient to enable all infringement issues to be resolved. The information must be at least as specific as the claims and may need to be more detailed where the infringement issues depend on the construction or operation of the product. Both parties must articulate and cooperate on the infringement case, but uncertainty about the claimant’s case does not excuse an inadequate description.
2. Patent 234. The claims were construed purposively. Entering the code had to enable the viewer to see particular restricted programme information without turning off parental controls altogether. Claim 4 required separate restrictions on programme information and television programming; it did not require the latter to result from the former. The hybrid product claims implicitly required the functional steps to occur in the sequence necessary for the method to work.
3. Granted claim 1 and the combination of claims 1, 2 and 4 were invalid for added matter. The application disclosed a detailed, programme-level method using specified records, fields, options and a sequence of steps. The claims generalised that disclosure and presented the skilled team with new information. The corresponding product claims were likewise invalid.
4. The granted and EPO claims were obvious over Bestler and the Davis Demonstration. The granted claims were also obvious over the Uniden 4800, although the EPO claims were not obvious over that device. If valid, the Alternative Adult Listing Display would have infringed the granted claims, but the Hide Adult Channels/Listings functionality would not.
5. Patent 1856. “Sources” and “source devices” referred essentially to the immediate sources of the signals, differentiated by their transmission schemes. “Telecast” covered television broadcasting, including broadcasting via telephone lines, but not downloading on request via the internet. Source identifiers had to be distinct from the programme information and identify the source device. The claimed steps were implicitly sequential.
6. Patent 1856 was not invalid for added matter or extension of protection. All claims lacked novelty over the Uniden 4800 and were obvious over Young. Even if valid, the TiVo system did not infringe because its guide information was downloaded rather than telecast, it had only one transmission scheme, its alleged identifiers did not identify source devices, and its operations did not follow the claimed sequence.

Not stated in the judgment as an appellate history. The judgment records pending appeals before the Technical Board of Appeal concerning patent 234, but this was a first-instance trial decision.