The Rovi v. Ziggo case  

The Rovi/Gemstar companies are engaged in a pan-European effort to enforce a patent portfolio relating to electronic television programming guides. In the Netherlands, Rovi sued the largest Dutch cable operator Ziggo inter alia for infringement of its European patent (EP 1 244 300; "EP 300") relating to a "method and apparatus for accessing information about television programs".

The claims of EP 300 concerned a method or apparatus for storing television schedule information in a memory, displaying some basic information in an overlay when the user changes the television channel, and then displaying a second overlay containing further information upon an input from the television user.  

In the first instance, the District Court of The Hague invalidated the patent for added subject matter. After Rovi filed an auxiliary request in an attempt to overcome these objections, the Court of Appeal focused on the more fundamental questions of patentability and inventive step.

The reasoning of the Court of Appeal   

The Court of Appeal first established that the claim was a mix of technical features and non-technical features. The non-technical features included the presentation of certain specific information on a television program (such as the name of the show or a short summary of the program content). It then held that the only difference between the patent and the prior art was the display of specific further information from a memory upon a user input in a 'second overlay'.

Ziggo argued that the novelty - if any - resided only in the nature of the information on display, since all of the technical features in the claim, necessary to enable such a display were well known at the priority date of the patent.  

As to the law, the Court of Appeal first of all reiterated that Article 52(2) of the European Patent Convention provides that "software as such" and the "presentation of information as such" are not patentable. However, the Court of Appeal also held that when such excluded subject matter is combined with technical features - no matter how trivial - the claim as a whole may escape these excluded categories. The Court of Appeal thereby explicitly adopted the principles set forth in the EPO case law, particularly in Opinion G03/08 and more specifically in TBA 154/04 (Duns Licensing), from which decision the Court quoted:

"It is legitimate to have a mix of technical and "non-technical features" appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step."

In respect of EP 300, the Court of Appeal ruled that the information itself had no relevant interaction with the (known) technical features which enabled such a presentation of information in an overlay on a television screen. And therefore, a large part of the claim was deemed to be concerned with the presentation of information as such, whilst the remainder of the relevant (technical) features were already known in the prior art. On that basis the Court of Appeal considered that there was no inventive step in EP 300.

Analysis - European developments and comparisons

The approach of the Court of Appeal is different from the reasoning followed in the United Kingdom. In the UK, the courts have followed the "contribution" approach, the principles of which were set forth in Aerotel v Telco - Macrossan's application (and which were also applied in another Rovi case, i.e. Gemstar v. Virgin Media, Mann J, 26 November 2009). In that approach it is - in summary - assessed what actually distinguishes the patent from the prior art. If the distinguishing features are excluded matter ("software as such" or "presentation of information as such"), the entire claimed subject matter is considered non-patentable.

Interestingly, very recently the French patent court adopted the same approach as the UK Court in a parallel litigation concerning EP 300. In a ruling dated 7 June 2013, the Tribunal de Grande Instance de Paris rejected the EPO approach and held that "patentability of an invention should be assessed in an "overall way", having regard to the claimed subject matter". More specifically, the Paris Court held that it was clear that what was actually claimed was the presentation of information, also in view of the fact that the specification expressly stated that all technical features were well known since the 1980s. According to the Paris Court, these technical features can therefore not be deemed to have been "claimed" in the patent. And contrary to the EPO doctrine, the Paris Court held that including "general", known technical features in a claim, is insufficient to give the alleged invention a technical character.  

The debate on the right test for assessing the validity - and more specifically patentability - of computer implemented inventions is therefore expected to continue in the coming years. And the recent US Federal Circuit decision in CLS Bank International v. Alice Corp. (Fed. Cir. 2013) shows not only that this is a global debate, but also that the issues are complicated and difficult to fit in a single approach. In CLS Bank, even a single Court of Appeal of the Federal Circuit could not reach a majority opinion on the correct approach.

With France joining the UK and the Netherlands siding with the EPO, the national differences within Europe may become more distinct and the question of where to file and where to litigate becomes more important. So far the end results in the different countries have been more or less the same, but theoretically the current trend means that EPO-minded countries would be slightly more lenient towards software patents than France and the UK.