The claimant companies brought proceedings, contending that two patents had been infringed by the defendant companies (together, Virgin). Virgin contended that the patents lacked novelty over a number of other matters, and were obvious. The Patents Court held that, among other things, both patents were invalid for obviousness.

Starsight Telecast Inc and another v Virgin Media Ltd and others: Chancery Division, Patents Court: 26 March 2014

Infringement – Validity of patent – Claimant companies being involved in provision of television services – Claimants alleging defendant companies infringing two patents concerning the scheduling and delivery of television programmes – Defendant companies contending patents invalid for lack of novelty and for obviousness

The claimants were members of the same group of companies. The three defendant companies were all linked to Virgin Media (together, Virgin). The claimants claimed that Virgin had infringed two patents belonging to them, relating to the provision of television services. The first patent, European Patent Application No 1 763 234 (234) related to an electronic programme schedule system, which provided a user with schedule information for broadcast or cablecast programme viewed by the user on a television receiver.

Under that patent, there were two sets of claims: the granted claims and the European Patent Office (EPO) claims. The second concerned European Patent No 0 821 856 (1856). That patent was directed to co-ordinating input signals and program information and provided a method and apparatus for delivering television signals from a plurality of sources, which were then mixed and sorted into a desired order.

Virgin submitted that the claims made with respect to 234 lacked novelty over a number of other patents: (i) a paper concerning ‘Flexible Data Structures and Interface Rituals for Rapid Development of OSD [On Screen Display] Applications’ (Bestler); (ii) a public demonstration (the Davis Demonstration); and (iii) an integrated receiver/decoder system (IRD) system, Uniden 4800 (Uniden).

Consideration was given to, among other things, whether claims 1, 2 and 4 were invalid on the ground of added matter, and what the skilled team would understand the system to do under the true construction of Bestler. Consideration was given to, among other things, what Virgin submitted that the 1856 claims lacked novelty over Uniden. It contended that 1856 was obvious over both Uniden and International Patent Application No WO 92/04801 (Young). With regard to Young, the issue arose as to whether it disclosed switching between over-the-air (OTA) and cable signals, which it would be profitable to do.

The court ruled:

(1) Regarding 234, on the true construction of Bestler, the skilled team would understand that the system ought to enable the conditional display/user filtering of detailed description for adult channels: in other words, that users ought to be able to control whether such descriptions were displayed or not. It followed that the granted and EPO claims were all obvious over Bestler. Further, although the evidence on the Davis Demonstration was not as strong as that regarding Bestler, it had been an obvious step to take in both the granted and EPO claims.

Regarding Uniden, there was little in it that was different to the common general knowledge approach. The EPO claim was not obvious over Uniden. However, the granted claims were obvious over Uniden (see [187], [192], [196], [200] of the judgment).

Granted claim 1 and the combination of claims 1, 2 and 4 were invalid on the ground of added matter, but not EPO claim 1. The granted claims and the EPO claims were obvious over Bestler and the Davis Demonstration. The granted claims were also obvious over Uniden, but not the EPO claims (see [315] of the judgment).

Aerotel Ltd v Telco Holdings Ltd; Re Macrossan’s Application [2006] All ER (D) 346 (Oct) applied; Symbian Ltd v Comptroller General of Patents [2008] All ER (D) 75 (Oct) applied; British Westinghouse Electric and Manufacturing Co v Braulik 27 RPC 209 considered; Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 considered; Synthon BV v Smithkline Beecham [2005] All ER (D) 235 (Oct) considered; Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] All ER (D) 235 (Oct) considered; Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] All ER (D) 67 (Dec) considered; KCI Licensing Inc v Smith and Nephew plc [2010] All ER (D) 207 (Jun) considered; Nokia OYJ (Nokia Corporation) v Ipcom Gmbh & Co Kg [2012] All ER (D) 127 (Aug) considered.

(2) Regarding 1856, on the proper construction of Uniden, the claims lacked novelty over Uniden. Further, Young had disclosed switching between OTA and cable signals. It would be obvious to the skilled team that it could be used that way. As a result, the claims were obvious (see [276], [294] of the judgment).

All the claims concerning 1856 lacked novelty over Uniden and were obvious over Young (see [316] of the judgment).

Daniel Alexander QC, James Abrahams and Isabel Jamal (instructed by Powell Gilbert LLP) for the claimants; James Mellor QC and James Whyte (instructed by Marks & Clerk Solicitors LLP) for the defendants.