Federal Court takes Rovi’s IPTV patents off the air
Justice Lafrenière dismissed Rovi’s infringement actions and granted the defendants’ counterclaims for declarations of invalidity, holding that nothing in the asserted claims was new or inventive.
Background
Rovi brought infringement actions against Bell and TELUS, alleging that their internet protocol television services infringed four of Rovi’s patents. The four patents relate to interactive television program guide (IPG) and internet protocol television (IPTV) technology. An IPG is software that generates TV program listings, which are transmitted to and stored on a user’s equipment. IPTV refers to delivery of TV content over internet protocol networks, as opposed to traditional satellite or cable TV formats. The defendants did not contest infringement of many of the asserted claims, focusing their arguments on validity.
Expert witness credibility
The Court heavily discounted the evidence of Rovi’s validity expert after it came to light that several passages in his expert report were reproduced from an earlier expert report written by Dr. Balakrishnan, a different expert retained by Rovi in 2022 FC 874. Justice Lafrenière explained that while collaboration between experts and counsel is permitted by law and should be encouraged, there are context-dependent limits on how much consultation is appropriate. Leading an expert to espouse a particular opinion by taking passages from a previous expert’s report and providing them to a different expert to incorporate into his or her report “crosses the line of propriety and puts into real doubt the impartiality and independence of the expert.”
The 870, 629, 585, and 482 Patents were anticipated and/or obvious
1. The 870 Patent
The 870 Patent describes IPG systems and methods by which TV programs and data can be stored on remote or local servers and played back by users. Justice Lafrenière held that the common general knowledge (CGK), paired with the Browne and the Digital Audio-Visual Council standard version 1.3.1 (DAVIC) references, rendered the two groups of asserted claims obvious. Claim 346 covers using an IPG to direct more than one piece of user equipment to record two programs simultaneously. By 1998, there was no difference between the state of the art, the CGK, and claim 346. DAVIC standardized the idea of using an IPG to control TV systems, recording programs to local digital storage, and recording multiple programs at once. Browne taught simultaneous recording of two programs. Claims 456, 721, and 724 cover peer-to-peer transmission: the ability to request playback via a second user’s equipment of a program recorded on a first user’s equipment. The CGK and DAVIC reference likewise rendered these claims obvious. DAVIC expressly taught the skilled person how to implement a home network, enabling transfer of recorded programs between two pieces of user equipment.
2. The 629 Patent
The 629 Patent describes an IPG with built-in digital storage, enabling users to record programs, maintain program guide data, and display guide data. The asserted claims cover use of an electronic program guide to record programs, store those programs digitally, maintain a directory of program data, and display directory listings. Justice Lafrenière held that the asserted claims were anticipated and obvious considering the Florin reference and CGK. Florin disclosed use of an electronic program guide to record/store programs digitally and display a directory listing screen, and a means for maintaining the directory of program data. This was an enabling disclosure as Florin included details (exceeding that of the 629 Patent itself) regarding system components and network arrangements. With respect to obviousness, the Court held that no differences existed between Florin and the inventive concept of the 629 Patent.
3. The 585 Patent
The 585 Patent, dubbed the “Restart” Patent, describes systems and methods for operator-initiated recording of programs on a remote server based on retention criteria for later viewing by users, and subsequent deletion of those recordings. Justice Lafrenière held that the asserted claims were anticipated and obvious. The asserted claims were anticipated by iMagic, a patent which disclosed an IPTV system with several on-demand applications for which on-demand video servers continuously recorded TV programs for access by subscribers after the programs initially aired. The Court held that iMagic disclosed all essential elements of the asserted claims and was an enabling disclosure, given that the experts agreed “iMagic was far more technical and detailed than the 585 Patent.” The Court likewise held that the asserted claims were obvious. By 2003, operator-initiated recordings of programs to a remote server for future viewing was well known, in use, and detailed in several pieces of prior art.
4. The 482 Patent
The 482 Patent is directed to systems and methods for retrieving non-on-demand media data, and retrieving/caching on-demand media data on user equipment in an electronic program guide to reduce network latency. Justice Lafrenière construed the asserted claims in a way that required retrieval of on-demand media data to occur in a sequence of four steps. Justice Lafrenière held that the asserted claims were anticipated and obvious. Rosin, a US patent, disclosed an IPG that included efficient ways to cache on-demand media data in the same sequence as claimed in the 482 Patent. Rosin provided detailed figures showing how to set up network components, the guide page and interface, and the process by which the on-demand media data is automatically retrieved and stored. Regarding obviousness, by October 2000, there was no difference between the state of the art and the inventive concept. Aristides, a patent filed by Microsoft, and LaJoie, a patent issued to Time Warner, disclosed virtually every element of the inventive concept of the asserted claims except for the on-demand media data retrieval sequence. However, O’Robarts, a third prior art reference, clearly taught the sequence.
A copy of the decision is available here.
