Starsight Telecast Inc. & Anor v Virgin Media Ltd & Ors  EWHC 828 (Pat) is the latest in a string of altercations between Virgin Media Ltd. and Rovi Corporation regarding various patent infringement claims. So far Virgin has rebuffed all of Rovi's advances, but more are to come later this year.
The decision handed down on 26 March 2014 concerns the alleged infringement of two of Rovi's patents by the TiVo, VHD and V+HD set-top boxes that Virgin supplies to its customers.
The first patent under consideration, EP(UK) 1 763 234, relates to parental control features, with the "Hide Adult Channels", "Hide Adult Listings" and "Alternative Adult Listing Display" features of the set-top boxes alleged to infringe the patent claims. These features allow users to exclude adult channels from the Electronic Programme Guide and to prevent access to them (and in particular even prevent access to programme information on those channels) unless the correct PIN is entered.
The second patent, EP(UK) 0 821 856, relates to the merging of programme scheduling information from multiple television sources and automatically switching to the appropriate source as required.
Sadly for Rovi, despite this two pronged assault, they came away empty handed. Mr. Justice Arnold's long and rigorous analysis concludes hard and to the point, accepting nearly all of Virgin's submissions. The granted claims of the parental controls patent were found to be invalid for extending beyond the content of the application as filed as well as being obvious first over a prior published document, secondly over an earlier public demonstration and thirdly over prior use of earlier satellite receiver/decoder equipment. Throwing Rovi a small bone, Arnold J finds that if the granted claims had been valid, Virgin's VHD and V+HD set-top boxes (with the "Alternative Adult Listing" feature) would have infringed, but not the TiVo ones.
The European patent from which this UK parental controls patent derives was opposed by Virgin and is currently under appeal at the European Patent Office. However during the first instance proceedings, Rovi came away with a set of claims deemed to be allowable. These claims were also considered by Arnold J and although they faired slightly better under his analysis, they were still found to lack inventive step over both the earlier document and the demonstration and, even if valid, would not have been infringed.
The second patent likewise went down without success with the claims being found to lack novelty over the same prior use considered in relation to the first patent as well as being obvious over another prior publication. And if the claims had been valid, Arnold J also found no infringement.
Notably, Arnold J preferred Virgin's expert witnesses over Rovi's in relation to both patents, commenting in both cases about the relevance of their backgrounds. Another important factor that came into play in relation to both patents was the order in which steps were carried out. None of the claims explicitly set out an order and the parties argued different ways. In the end certain time relationships were identified during the claim construction that strongly influenced the outcomes.
Rovi may yet appeal this decision, but regardless of whether or not they do, the parties will be at it again soon as there are still four more patents in the pipeline to be tried. Virgin has remained on top so far, but how long can they keep it up?