Rovi Corporation, the California based digital entertainment group, is proud to boast over 5000 issued or pending patents. It has recently tried to assert several of these against Virgin group companies in the UK. But the sceptical attitude to patent validity of the English courts has so far left Rovi empty handed.
Decisions in March (Starsight v Virgin) and May (Rovi v Virgin) dealt with patents claiming the blocking of adult content and the red button facility. Virgin was not found to have infringed any valid claims in either of these cases.
In the latest chapter (Rovi v Virgin), Rovi sued Virgin saying that its video on demand service infringed patent EP (UK) 1,327,209. This claimed a feature that allows a viewer to stop watching a film, or a live TV feed, on one set top box, and resume viewing on another – a ‘relocate feature’.
The date for assessing whether the invention was new and inventive was October 2000, and so the judge had to analyse whether at that point Rovi’s patent was new and inventive. Rovi was trying to amend the claims and so it was up to Virgin to prove that they were not. This involved a battle of the experts whose job it was to explain the response of the skilled person or team to the patent and earlier material. In the colourful language of a leading patent judge, the court has to understand how 'an assembly of nerds of different basic skills, all unimaginative' would react to the documents.
Rovi suggested that Virgin’s expert witness, Mr Kerr, was too clever and imaginative to tell the court what a normal person working the the cable, satellite, terrestrial TV or telecoms industries and interested in video on demand would think.
The judge was clear. It does not matter if an expert witness is too clever – so long as they can explain the technology to the court and give clear reasons for their opinions. Rovi’s expert witness was not found to be so helpful, despite having lots of relevant experience. Various inconsistencies and changes of evidence meant that the judge was reluctant to rely on his evidence. So when, for example, Rovi argued that a 1998 industry specification would have been regarded as old and uninteresting, the judge disagreed and said that it would have been read by the engineer in the field with interest.
Rovi had problems with its expert witnesses in the earlier cases (all before different judges). In the adult content blocking case, the judge felt that as a lone inventor with an unusual background Rovi’s expert could not comment on what the standard team working in the field would have known and thought. And in the red button case, Rovi’s expert was not working in exactly the right field at the relevant time, and had not done enough to learn what the relevant team would have known.
All going to show that the choice of expert witness is vital in patent litigation.