Rovi Guides, Inc v Virgin Media Ltd & Ors

Obviousness is assessed through a structured inquiry: identify the skilled person and common general knowledge, identify the inventive concept or construe the claim, identify differences from the state of the art, and ask whether those differences were obvious at the priority date. The statutory question remains decisive. The assessment must avoid hindsight and reconstruction after knowledge of the invention. Obviousness is an evaluative judgment, and an appellate court should be highly reluctant to interfere with a trial judge’s conclusion absent an error of fact or principle.

Rovi appealed from the judgment of Mr John Baldwin QC, sitting as a deputy judge of the Patents Court, reported at [2014] EWHC 2301 (Pat). The judge revoked European Patent (UK) 1,327,209 after allowing an unconditional amendment of its claims.

The VOD relocation claims and live feed relocation claims were held invalid for obviousness over DAVIC and common general knowledge. There was no appeal concerning the VOD claims. The appeal concerned whether the live feed claims, particularly the feature requiring a remote server to begin recording live media when the user requested a pause or relocation, were obvious without impermissible hindsight.

Lord Justice Floyd gave the leading judgment. Lord Justice Lewison and Lord Justice Longmore agreed. The appeal was dismissed.

1. Statutory framework. The Patents Act 1977 permits revocation where an invention is not patentable, including for lack of inventive step. Section 3 states the governing question: whether the invention would have been obvious to a person skilled in the art having regard to the state of the art.
2. Structured obviousness inquiry. The approach in Pozzoli SpA v BDMO SA [2007] FSR 872 provides useful mental scaffolding. The court identifies the skilled person and common general knowledge, the inventive concept or properly construed claim, the differences from the state of the art, and whether those differences were obvious without hindsight. The fourth step contains the statutory question.
3. Evaluative assessment and appellate restraint. Obviousness is a judgment of evaluation. The court must weigh the relevant circumstances, which may include the motivation to solve the problem, the available research avenues, the effort involved and the expectation of success. The warnings against hindsight in British Westinghouse v Braulik [1910] 27 RPC 209 and Technograph Printed Circuits v Mills & Rockley (Electronics) [1972] RPC 346 remain important. An appellate court should be very cautious before differing from a trial judge’s evaluation where no issue of principle or fact is shown, as explained in Biogen v Medeva [1997] RPC 1.
4. Application to the prior art. DAVIC did not require every disclosed application or feature to be implemented slavishly. Its teaching that whole programmes would be recorded for delayed broadcast did not make recording only from the point at which live television was paused contrary to its teaching in another context. Nor was there an inherent contradiction between head-end functionality and user-specific fragments. Sharing whole programmes was only one reason for locating functionality at the head-end; cost, control, upgrading and personalised capacity supplied other reasons.
5. Feature J and the evidence. The judge was entitled to accept the evidence that pause live TV was an independently important functionality and that recording only from the press of the pause button was a technically simpler, less resource-intensive option. The evidence provided material on which he could find feature J obvious. The judge was aware of the Pozzoli approach and the operation of the relevant PVR systems. The Court of Appeal found no appealable error. A trial judge need not address every argument or evidential dispute, provided conclusions and sufficient reasons are given, as stated in FAGE UK Limited and another v Chobani UK Limited and another [2014] EWCA Civ 5.

• Court of Appeal (Civil Division) dismissed Rovi’s appeal and upheld the finding that the live feed relocation claims were invalid for obviousness.
• High Court of Justice, Chancery Division, Patents Court ([2014] EWHC 2301 (Pat)) revoked the patent after holding the VOD and live feed relocation claims invalid for obviousness over DAVIC and common general knowledge.