Rovi Guides Inc (“Rovi”) lost its appeal against an earlier decision ( EWHC 2301 (Pat)) that its patent was invalid for “obviousness”. The patent in question allowed set-top box users to pause the programme they were watching, whether on-demand or live TV, at which point a recording would be made on a remote server. This recording could then be watched back at a later point and from a different device, if required. In the earlier decision the judge held that the obviousness stemmed from prior art produced by the Digital Audio-Visual Council and common general knowledge.
Rovi appealed against the finding, specifically in relation to the live feed relocation element of the patent – i.e. the use of the remote server – and the fact that the recording only started at the point at which the pause button was pushed.
In dismissing the appeal, the judge made various points. We focus on a couple:
- In assessing “obviousness” the key issue is what was obvious to a person skilled in the art at the priority date of the patent – this structured approach, as set out in Pozzoli SpA v BDMO SA, remains valid.
- Rovi’s argument failed because:
- as at the priority date, there had been general industry discussion as to where the recording functionality could be provided (either the set top box or a remote server); and
- according to expert evidence, as at that priority date the ability to pause live TV was considered more important than re-winding or replaying live TV. Therefore the implementation of a system that recorded only from when the user pressed ‘pause’ was “obvious”.