Court of Appeal Rejects Rovi’s Claim Construction
27 January 2016
Claim language remains all important in determining the scope of protection of a granted patent. Whilst the disclosure of the patent as a whole should be considered in order to understand a claimed invention, it is the specific language that is used in the claims that sets out the scope of the protection. In the recent case of Rovi Guides Inc. v Virgin Media Limited & Virgin Media Payments Limited & TiVo Inc. (Rovi v Virgin) (the full judgement can be found here), the Court of Appeal dismissed Rovi’s appeal and in doing so issued a succinct reminder about how patent claims will be interpreted by the courts.
Rovi held a patent dating back to 1995 (EP (UK) 0,862,833), relating to a system and method for a user to interact with a television. More specifically, the patent relates to a system which informs the user, in real time, of events which are currently viewable or will be in the future, such as the start of a pay-per-view sporting event. The system alerts the viewer by displaying a prompt or icon on the screen. This case was first heard in the High Court before Mr Justice Mann where Rovi claimed that Virgin infringed their patent, whilst Virgin counter-claimed that Rovi’s patent was obvious over an earlier patent application by Apple Inc. and should be revoked. Mr Justice Mann agreed with Virgin and ruled that Rovi’s patent should be revoked for obviousness.
Interestingly, by the time the case was heard by the Court of Appeal, Rovi focused purely on dependent claim 3, which they argued had been wrongly dismissed for obviousness in the High Court.
The case revolved around how the invention described in dependent claim 3 should be interpreted. Key to this point was one particular paragraph of claim 3 which states (emphasis added by Lord Justice Floyd in his judgement):
A system according to claim 2, wherein said first identification signal comprises…ii. (a) data defining an icon or textual matter alerting a viewer to the availability of information or (b) data enabling access to such an icon or textual matter as may be already stored on said computer;
In the High Court decision, the above features were held to mean that data in the identification signal must trigger or invoke the icon but that they did not mean that the identification signal must include any type of specific “pointer” or “address field” to enable this triggering (arguing that receipt of the signal itself could be considered the trigger). Consequently, Mr Justice Mann considered that claim 3 did not add anything inventive over claim 2 and thus quickly dismissed claim 3 as obvious for the same reasons as claim 2.
On appeal Rovi argued that the High Court judge had wrongly interpreted this claim and argued that it did in fact require the identification signal to include a specific “pointer” and that the inclusion and use of this pointer in the identification signal made the invention non-obvious. The main reasoning put forward to support this claim construction was that dependent claims are drafted to add further technical subject matter, so claim 3 must be construed to include this “pointer” so as to be narrower than claim 2. This is referred to as the “repercussive effect”.
In his leading judgement, Lord Justice Floyd quickly dismissed Rovi’s arguments and their appeal was dismissed. In doing so he provided a useful reminder as to the correct approach to the construction of patent claims. In section 35 of his judgement, Lord Justice Floyd confirmed that it “should not be assumed that it was the patentee’s intention that optional features described in the specification have been translated into requirements of the claim.” He also referred to a list of principles approved by the Court of Appeal (in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Ltd) and noted that, whilst rightly highlighting the importance of ascertaining the inventor’s purpose, those principles include at item (vi) that: “purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used…It is the terms of the claims which delineate the patentee’s territory.”
The take away message is that, whilst the disclosure of the patent as a whole should be considered in order to understand the claimed invention, it is the specific language that is used in the claims that set out the scope of the protection. This is not overridden by conventions such as the repercussive effect.
Electronics, Computing & Physics
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© Withers & Rogers LLP, January 2016