29 May 2014

Is Rovi fighting a losing battle?

Rovi Corporation has been defeated again in its ongoing battle against Virgin Media, in a decision from the High Court handed down earlier this month. Gary Moss and Emma Muncey of EIP Legal discuss.

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In the last five years, Rovi Corporation (previously Gemstar TVGuide International Inc. and parent of Starsight Telecast Inc.) has asserted eleven patents against Virgin Media in the UK.  So far, six of these patents have been held to be invalid by the UK courts, and a further patent has been revoked by the European Patent Office in a final decision in opposition proceedings.  The trials of the remaining four patents are due to take place in June this year and in March 2015. 
It also appears that Rovi is not having that much joy elsewhere in Europe, having lost against parties other than Virgin Media in the Netherlands, Belgium and France.  However, Rovi did appear to succeed in fending off a nullity and non-infringement suit in Italy brought by Italvideo International S.r.l., and there are several other cases which are currently pending in Germany.

What are the patents in suit about?

Rovi specialises in interactive programme guides for navigating and discovering content on TVs, set-top boxes, tablets and PCs. It has acquired a large number of software companies since 2000, including Gemstar, Sonic Solutions (and its DivX video software) and SideReel.  It claims to have one of the world’s leading digital entertainment patent portfolios, with more than 5,400 issued and pending patents.

The patents which Rovi has asserted against Virgin Media in the UK concern various aspects relating to the display of TV programme schedule information or guides, and the infamous ‘red button’.  The six patents for which judgment in the UK has been given relate to:

(i) an information-only guide where the information is displayed in a grid format and users can select a programme in order to view more information about that programme (“662”);
(ii) a guide which allows the user to select their favourite channels and filter out others so that the list of programmes becomes more manageable (“049”);
(iii)  an additional feature to a guide which allows users to transfer a pre-recorded programme to a secondary recorder by identifying it from the guide displayed on the TV screen (“066”);
(iv) the use of parental controls to restrict the display of a guide (“234”);
(v) the ability to display TV programme schedule information in a guide from multiple sources and the automatic coupling of TV signals from those various sources (“856”); and
(vi) the “red button” feature on TVs.

Why did Rovi lose in the UK?

All six patents to reach judgment in the UK have been found invalid by the UK courts.The validity of the first three patents to reach judgment in the UK (662, 049 and 066) was decided in 2009 at first instance  and upheld on appeal in 2011 .  Hearing only the novelty arguments, the Court of Appeal upheld Mr Justice Mann’s first instance decision on the invalidity of 049 and 066 (only the validity of two of the three patents was appealed).  049 and 066 were found to be invalid because of lack of novelty over prior art.  662 was found invalid at first instance because of obviousness and lack of patentable subject matter.   My Justice Mann held that the advance described in 662, the display of information in a selectable grid format, was not patentable because it was a mix of computer programmes and a presentation of information which had no technical effect.

Judgment was handed down in the first instance decision on 234 and 856 on 26 March 2014 by Mr Justice Arnold .  He found that 234 was invalid for added matter and obviousness, and that 856 was invalid for lack of novelty and obviousness. 

The latest decision to be handed down by the UK High Court was given by Mr Justice Mann on 15 May 2014 .  He held the patent invalid for lack of inventive step.  The case seemed to turn on expert evidence with Mr Justice Mann preferring Virgin’s expert’s evidence on a number of points.
Rovi may yet appeal the decisions from the UK High Court.  However, even if it doesn’t appeal, there are still four of its patents waiting to be tried in the UK.  Current indications are that two are scheduled for trial in June and the remaining two for March 2015.

It’s not all bad for Rovi

Despite its losses in the courts, Rovi continues to successfully license its patents.  In 2013, it renewed or entered into licences with at least six third parties, including Samsung, Google, CBS and Sony and reported revenues of over $538 million.  But Rovi must be concerned about the fact that so far its patents do not appear to be achieving traction before the European courts.

Gary Moss is a partner and  Emma Muncey associate at EIP Legal

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