COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
The Hon Mr Justice Mann
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE JACOB
THE RT HON LORD JUSTICE PATTEN
| (1) Gemstar-TVGuide International Inc
(2) Starsight Telecast Inc
(3) United Video Properties Inc
|- and -
|(1) Virgin Media Ltd
(2) Virgin Media Payments Ltd
for the Claimants/Appellants
Mr James Mellor QC and Mr Andrew Lykiardopoulos (instructed by Marks & Clerk)
for the Defendants/Respondents
Hearing dates: 22 and 23 February 2011
Crown Copyright ©
Lord Justice Jacob:
 At the heart of these three patents is the concept of an EPG - an electronic programming guide. In the past 30 years or so the number of television broadcasting stations (including cable and satellite stations) has increased enormously in many countries (and in particular in the US). Each broadcaster wishes the consumer to know what programmes are being or are to be broadcast. Until the advent of electronic means of broadcasting this information was disseminated principally in paper form, of which the best known English publication was (and is) the Radio Times. The listing information took various forms. It could be lists of programmes (with supporting information about those programmes) listed by broadcasting channel, and by time within each channel, in the form of an elaborate chronological list. That form will be familiar to anyone who has used the Radio Times or the independent television equivalent, the TV Times. It could be a listing by start times, with each programme starting at a given time appearing by that start time, and then by channel within the start time. Or it could be by way of a grid, with start times on one axis and the channel on the other, with each cell representing the particular programme being broadcast in the cell (and bearing the name of that programme). In that last form the cells would be of irregular length, because not all TV shows are of the same duration. The left and right hand borders of the cell represent the start and finish times when read against the time axis. Each of those methods of listing has its benefits, and a choice between them will depend on the preferences of the information providers and/or the subscribers to the lists. Sometimes one sees both formats in one publication - I was shown US guides which had both a grid (which enables more of an overview) and start time listings (which allows for a little more detail for each programme). Written listings also contain some notes about the programmes in question, sometimes by the actual listing, and sometimes separately on the page.
 The increase in the number of channels means that the size of the listings has increased, making their survey, and choice from them, more difficult. One answer to this problem is to provide lists electronically to the subscriber of the TV service so that it can be viewed on the screen. The information can be transmitted by various means, but now the most common is over the air by one or more service providers. By calling up the relevant list, and looking up the relevant day, time and channel, the viewer can see what programme is being broadcast at the relevant time. Background information about that programme (type, cast list and so on) can also be broadcast and accessed. The guides thus produced are called EPGs electronic programme guides. For the purposes of this action I can distinguish between two sorts of EPGs - those which merely provide information to the consumer, and those which go further and provide that information and at the same time use software and hardware links to control the television, typically switching to the relevant programme directly from the EPG screen. In a typical case the EPG is controlled by a handheld selector, which controls a selecting highlight on the screen, and a programme would be "selected" by highlighting it and pressing a selection button, at which point an operation is carried out in relation to that programme for example providing more information about it, or switching the TV receiver to receive it. Two of the patents in suit represent the former category (information only); the third has elements of the second (information plus switching) as well.
The Transfer Patent: Anticipation by Toshiba
(a) Applicable Law
i) If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty per Sachs LJ in General Tire v. Firestone  RPC 457, 485-486.
ii) To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee, ibid.
iii) One has to consider how they [i.e. cited items of prior art] would be understood on their date of publication .. by the notional person skilled in the art. There is no reason why such a person, just as in the case of a real person, must find a meaning. In real life there are documents which have no clear meaning, documents so obscure that one throws up one's hands saying "I have no idea what this author was really trying to say." The notional skilled reader can do likewise, and if he or she does, the document is not novelty-destroying. It is not "clear and unambiguous," per Jacob LJ in EMGS v. Schlumberger  EWCA Civ 819 at  .
(b) The Transfer Patent
A method for transferring programs to a secondary storage device, the method comprising:
[A] using an interactive television program guide implemented on user television equipment to cause a first display in a display screen of at least one program listing related to at least one program;
[B] using the interactive television program guide to enable a user to select a program listing from the at least one displayed program listing;
[C] using the interactive television program guide to cause the program related to selected program listing to be recorded on a digital storage device;
[D] using the interactive television program guide to cause a second display in the display screen that includes at least one recorded program listing for at least one program recorded on the digital storage device, wherein the at least one recorded program listing includes a recorded program listing for the program recorded on the digital storage device;
[E] using the interactive television program guide to enable the user to select the recorded program listing to transfer the recorded program from the digital storage device to a secondary storage device; and
[F] using the interactive television program guide to transfer the recorded program from the digital storage device to a secondary storage device.
[1-39] - Initial description and summary of the invention
[40-55] - Recording and playback
[56-86] - Search and display
[87-148]- Programming (including by date, genre, child friendly).
[149-64]- Editing the index of stored information
[165-169]- Effect of the invention (effectively a final summary).
Followed by a "brief explanation of the drawings" and "key to figures".
When editing genre categories, programme types, titles, synopses, and the dates and times of recording from a DVD-RAM 16 (refer to Fig. 5) on which video and still images are recorded, it is useful to use the index information (refer to Fig. 6) recorded in programme and index information recording area 16a in said disk.
Part of the DVD-RAM is for the actual recording and part is for the programme and index information. Moreover it was common ground that in any digital storage system there is a directory which tells the system where to find the data. The index information cannot be separated from the recorded programme. For otherwise the system could not find the programme.
It shows information about recorded programmes, actually identifying the start positions and recording length. Clearly  is talking about material which has already been recorded.
When DVD-RAM 16 is placed in an image output device equipped with editing functions, as shown in Fig. 25, the titles of all recorded programmes are automatically displayed on display device (television) 10, arranged by their index information, for example by genre, such as movie, sports, music, cartoons, cooking, news, weather forecast, drama, and so on. At this point, a user can edit by selecting any title of any genre with an input device such as a mouse, keyboard, or remote control and copying it onto the editing screen by dragging or clicking.
At this time, as shown in Fig. 27, a detailed listing of the programme content can be displayed, for example, synopsis of a drama, details about the performers, date and time of recording, and channels recorded. A user can use input device 14 such as a remote control, keyboard, or a mouse to select the title or number of the video and still images he wishes to edit from any of the display screens. He can also edit and record on the same disk or on a separate recording medium.
As an example of editing, if titles selected from the menu display screen are copied into editing screen 88 by dragging them or clicking on them with a mouse and the "Edit" button 89 is then selected, the recorded information is edited and re-recorded in the order in which the titles were copied.
As shown in Fig. 2, a variety of other information such as synopses of TV programmes, TV programme trailers and profiles of performers normally distributed at key stations 22 such as convenience stores, bookshops, or kiosks at train stations can be recorded on DVD-RAM 16 as programme and index information in addition to the information distributed by the TV station 21, the playback of this information allowing the recorded content of a programme to be easily grasped at a glance, as explained under the "Search/Display" and "Programming" sections above.
What this is saying is you can add to the "programme information" distributed by the TV station things like trailers. They become part of the "programme information" not the programme itself ("the recorded content of a programme").
The editing results can be organised on the same disk when a high-capacity disk like the DVD-RAM 16 is used, but can also be transferred to and edited on a different disk in an image recording playback output device which allows multiple disks to be loaded separately.
In such a case, the user can prepare a separate disk for each genre, in other words a separate disk for movies, music, or drama. In the case of a drama series, the user can prepare a disk just for that series, and record all episodes on one disk.
When editing and recording on the same disk, index information for the programme content the user wishes to edit, and address information indicating the actual image recording area, are recorded in part of index recording area 16a (refer to Fig. 5.)
On the other hand, when recording the results of editing on another disk, both the edited index information and playback data for video and the like may be transferred and recorded.
 is all about the recording of programme information not transferring recordings of the programmes themselves. Moreover, if, contrary to EMGS the Court tries to force a meaning out of , it turns out to be something quite straightforward and not what the Judge held it to show.
Toshiba uses a disk of TV listings information, which is obtained from a "key station", and the relevant information is stored in a particular area of that disk known as 16a1.
Toshiba also explains that you can have a single disk system (i.e. using the disk you obtained from the key station) or a multiple disk system (whereby you have other disks as well). The attraction of a multiple disk system is, for instance, that you can use additional disks on which to record programmes in the same genre e.g. successive episodes of a series; or sports programs; or feature films - all without filling up the original disk with a mixture of genres.
If you want to create a recording list, the relevant information is written into area 16a2 of the listings disk in a single disk system and into the relevant area (16a`, perhaps) of a new disk in a multiple disk system. The user then records off-air on to the single disk, or on to one of the multiple disks, in accordance with the relevant recording list.
That is it.
When playing back edited recorded information on a particular disk, the index information is automatically displayed on a TV screen when that disk is placed in an image output device. The display format for the index information in this case is of course a layered structure, and the data is arranged so that the synopsis of the programme and details of the cast can easily be retrieved and displayed. In other words, as described above, a user can easily play back a programme of his choice by selecting the desired programme from the desired menu by using input device 14 such as a remote control, mouse, or keyboard.
This paragraph clearly contemplates that the edited recorded information on a particular disk has the desired programme on it. In the case of a second disk that can only be so if both the edited information and the programme have been transferred to it.
The Favourites Patent.
A method for allowing a user to select favorite channels in an electronic program guide, the method comprising:
providing a display (116) of a plurality of cells (124) representing a corresponding plurality of channels available for viewing by the user, wherein each cell comprises a channel number and a program service name for a particular channel of the plurality of channels;
allowing the user to use the display to select a channel among the plurality of channels;
changing a status of said selected channel to that of a favorite channel in response to the user selection;
displaying in cells corresponding to the favorite channels a visual indication that the selected channels are favorite channels; and
providing program guide information for the subset of channels having said favorite status in response to a user indication to view the program guide information.
The last point turns on the meaning and effect of "channels available for viewing by the user" (emphasis supplied). Gemstar says that this means all channels which can be received at the system level (whether or not the viewer has actually subscribed to them), and does not include any channels which cannot be received; in other words, it means "all channels which can be received for viewing, and no other channels". Virgin disputes this construction, and says it means "at least all channels available for viewing".
 The second patent (the "049" or "Favorites patent") deals with perceived problems arising out of the sheer number of channels that would appear on an EPG which sought to list all programmes available to a subscriber. It enables the user to filter out channels which he or she would not wish to be informed about, leaving him/her with "favourites". This is done by scrolling down a displayed list and pressing a button to "mark" those which the viewer wishes to have listed for the future. By selecting (electronically, on a controller) to view just the favourites, the non-favourites are filtered out of the view, and the list is more manageable.
Figure 20 shows a Channel Customization screen 116. The screen 116 allows the user to customize channels to match viewing interest, providing a compact listing as well as eliminating undesired channels during up down scanning. During schedule update, a list of all cable channels available at the subscriber's cable system (or broadcast stations for over-the-air subscribers) is also delivered to the VCR. This unabridged set of channels may be customized using screen 118.
Listing information and other support information, such as cable channel assignment date, will be transmitted by one or more local stations or cable channels several times a day or continuously.
This is reinforced by an absurdity point. If Gemstar were right in its construction, then anyone seeking to implement the underlying discovery of the patent (the selection of Favourites) could simply avoid infringement by adding one extraneous, non-receivable station to the EPG list. Mr Birss accepted that that would be the case. That would be a very odd effect. While avoidance of infringement is an uncertain guide to construction, I think that it is a legitimate point to make in this case. There is another oddity. A map showing the satellite footprint in about 1990 showed that someone with a smaller dish in Florida would not be able to receive all the broadcast satellite channels, while someone with a big dish could. If Gemstar were right, someone using a system like SuperGuide which broadcast all systems would infringe (assuming all integers were present) if he used his big dish (because he would get listings of all channels available to him) but could fix the problem by going out and buying a smaller dish so that he could not receive all the channels that were listed. That, again, points up the oddity of Gemstar's interpretation.
Lord Justice Patten:
Lord Justice Laws: