Posted: December 11th, 2015
Rovi Guides Inc v (1) Virgin Media Ltd, (2) Virgin Media Payments Ltd and (3) Tivo Inc, England and Wales Court of Appeal (Floyd, Kitchin and Moore-Bick LJJ), London UK, 26 November 2015, Neutral Citation Number:  EWCA Civ 1214.
The Court of Appeal dismissed Rovi’s appeal against the decision of the Patents Court that certain claims of European patent (UK) 0 862 833 (the “Patent”) were invalid for lack of inventive step. Rovi’s appeal proceeded on the basis that the construction of the claim at issue by the judge at first instance (Mann J) was too broad, and that had he adopted Rovi’s narrower construction then the evidence of obviousness on which he based his finding would not have touched the claim. Rovi did not challenge the evidence on obviousness itself, and the appeal therefore turned on the question of construction.
The Patent is entitled “Interactive special events video signal navigation system”, and is concerned with the ability of a television viewer to interact with their television set so as to cause it to display information, for example information about a pay-per-view event, and in particular viewer-controlled selection of programming information.
In giving the leading judgment of the Court of Appeal, with which the other judges agreed, Floyd LJ noted that the process of claim construction was seldom assisted by taking paraphrases of the words of the claim, and that Mann J was right to maintain his focus on the claim language, which did not descend to the level of detail contended by Rovi to be required by the claim. In Floyd LJ’s view, the relevant language chosen by the patentee was very general, and there was no justification for substituting specific language for the entirely general words of the claim. Although the expert evidence included references to the specific language argued for by Rovi, Floyd LJ held that expert evidence was there to assist the court with relevant technical background for the purposes of construing the claim, whereas the task of construction was one for the court alone.
The claim in issue, claim 3, was dependent on claim 2. Based on the frequently deployed canon of construction that dependent claims are normally expected to add technical subject matter to what is claimed in the claims on which they depend, Rovi argued that a particular feature (feature A) of claim 3 (the feature in dispute) should be construed narrowly. Rovi’s reasoning was that if feature A was not construed narrowly, then as a result of Mann J’s construction of claim 2 at first instance, claim 3 could not be distinguished from claim 2. Floyd LJ rejected Rovi’s arguments and held that in this case the construction of Mann J at first instance did not result in the two claims having the same scope. This is because a different feature, feature B, added technical subject matter to claim 3 over and above that in claim 2. (It was common ground that feature B was not implicit in claim 2). There was therefore no reason why, based on dependency, the skilled person would assume that feature A was intended to add technical subject matter to claim 3. As such, the general language used for feature A in claim 3 did not need to be construed narrowly.
Floyd LJ added that although the patentee’s purpose is a powerful guide to the construction of patent claims, the court had to be careful to match up any purpose it derived from a reading of the specification with the claim or claim feature under discussion. He acknowledged that this is not always straightforward.
In conclusion, the Court of Appeal agreed with the construction of Mann J and dismissed the appeal.
Read the judgment here.
Headnote by Greg Bacon, Bristows LLP