Virgin Media Limited, represented by Marks & Clerk Solicitors, has been held to be the victors in the latest round of the ongoing patent battle between Virgin Media and Rovi Corporation.
The first set of legal proceedings brought by Rovi (then called Gemstar) against Virgin Media was won by Virgin Media in the Patents Court in 2009 and on appeal in 2011, with all three patents alleged to be infringed held to be invalid. Rovi followed up with two new sets of proceedings which together concern eight patents. The trial of two of those eight patents took place in February 2014. The first of those patents, EP (UK) 1 763 234, concerned the use of parental controls to restrict the display of programme schedule information which was alleged to be infringed by the “Hide Adult Channels” and “Alternative Adult Listing Display” functionality of Virgin Media’s set top boxes. The second patent, EP (UK) 0 821 856, concerned the ability to display television programme schedule information from multiple sources and the automatic coupling of television signals from those various sources. This was alleged to be infringed by the “backwards EPG” functionality of Virgin Media’s TiVo set top box. Rovi had applied conditionally and unconditionally to amend the EP 234 patent, so the Court had to consider various potential claim sets.
Mr Justice Arnold handed down his decision on 26 March 2014. He held that the EP 234 patent, whether in its original form or as proposed to be amended, was invalid on a number of grounds, including excluded subject matter, added matter and obviousness over several different pieces of prior art. All of the claims of the EP 1856 patent were also held to be invalid on the ground of obviousness over two pieces of prior art. Furthermore, the Judge held that Virgin Media’s TiVo box would not have infringed either patent, even if they had been valid. Virgin Media’s VHD and V+HD set top boxes would not have infringed the claims of EP 234 as Rovi had proposed to amend them but a single “Alternative Adult Listing Display” function would have infringed the unamended EP 234 claims had they been valid.
It remains to be seen whether Rovi will seek leave to appeal the findings of the High Court. As things currently stand, of the eleven patents which Rovi has to date asserted against Virgin Media, five have been held to be invalid by the UK Courts. A further patent has been revoked by the European Patent Office in a final decision in opposition proceedings. The trial of one other patent took place in December 2013 in the UK Patents Court and judgment is expected shortly. The trials of the remaining four patents are due to take place in 2014 and 2015.
Case: Starsight Telecast Inc and United Video Properties Inc v Virgin Media Limited, Virgin Media Payments Limited and TiVo Inc  EWHC 828 (Pat).