Rovi Guides Inc v Virgin Media Ltd & Ors

Patent claims are construed from their language, read in context. The specification’s purpose is a useful guide, but it cannot introduce a technical limitation which the claim wording does not contain. General words such as data enabling access do not become a requirement for a pointer, memory address or portfolio of alternative icons merely because the specification describes content-specific alternatives. A dependent claim’s usual role in adding technical subject matter cannot justify such an implication where the claim expressly lists signal contents. A signal that triggers or invokes a single stored icon may satisfy the wording. On that construction, prior art and common general knowledge made the claimed system obvious.

Rovi appealed against Mann J’s decision revoking European Patent (UK) No 0 862 833 on the respondents’ counterclaim. The first-instance judgment was reported as [2014] EWHC 1559 (Pat). By the time of the appeal, Rovi had abandoned all permitted grounds except the finding that dependent claims 3 and 28 lacked inventive step.

The appeal concerned the construction of claim 3, particularly whether the requirement for data enabling access to an icon already stored on the computer required a specific pointer or memory address identifying one of several possible icons. The central issue was whether the broader construction adopted at first instance included data which merely triggered or invoked a stored icon.

1. Disposition. Permission to appeal was granted, but the appeal was dismissed. The court agreed with Mann J’s construction of claim 3 and his conclusion that it was obvious.
2. Construction principles. Patent claims must be construed by concentrating on the language chosen by the patentee, read as a whole and in context. The inventor’s purpose is a valuable guide, but it cannot override the claim language. The court should also avoid replacing the claim’s general wording with a more specific paraphrase. These principles were applied with reference to Nokia v IPCom [2009] EWHC 3482 (Pat) and Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Ltd [2009] EWCA Civ 1062.
3. Meaning of claim 3. The words data enabling access were general and did not require a pointer, an address field, a software table or a choice between multiple icons. They could cover data which caused or invoked the display of a fixed icon already stored on the set-top box. The word enable indicated that the set-top box would not display the icon without the signal, but did not require a second branch of logic selecting one icon from a portfolio.
4. Dependent-claim reasoning. Although dependent claims would normally be expected to add technical subject matter, that expectation was not decisive. Claim 3 expressly listed the contents of the identification signal. Feature C(iii) added a limitation not implicit in claim 2, while feature C(ii)(b) did not need to add a further substantive limitation. The reference to content-specific icons in paragraph [12] of the specification did not justify narrowing the claim.
5. Obviousness. On the correct construction, the judge was entitled to accept the expert evidence that implementing the Florin prior art with common general knowledge would produce data in the identification signal which enabled the icon to be displayed. Claim 3 was therefore obvious. Further arguments concerning whether the respondents had a proper opportunity to address a narrower construction did not arise for decision.

• Court of Appeal (Civil Division): On 26 November 2015, permission to appeal was granted but the appeal was dismissed. [2015] EWCA Civ 1214.
• High Court of Justice, Chancery Division, Patents Court: Mann J revoked the patent on the respondents’ counterclaim, finding claims 3 and 28 obvious. [2014] EWHC 1559 (Pat).