Strand, London, WC2A 2LL
B e f o r e :
| (1) GEMSTAR-TV GUIDE INTERNATIONAL INC.
(2) STARSIGHT TELECAST INC.
(3) UNITED VIDEO PROPERTIES INC.
|- and -
|(1) VIRGIN MEDIA LIMITED
(2) VIRGIN MEDIA PAYMENTS LIMITED
MR. J. MELLOR Q.C. and MR. A. LYKIARDOPOULOS (instructed by Messrs. Simmons & Simmons) for the Defendants.
Hearing dates: 11th, 12th, 15th, 16th, 17th, 18th, 19th, 23rd, 24th, 29th, 30th June 2009
1st and 2nd July 2009
Crown Copyright ©
Mr Justice Mann :
The overall field and nature of the patents - electronic programme guides - "EPGs"
The nature of this action
Dr Mark Maybury
Mr Guy Hirson
Dr Walter Ciciora
Mr Andrew Glasspool
Mr Peter Hallenbeck
Mr Simon Prentis
The Single Channel patent, or the 662 patent
"relates generally to a system and process that allows a television viewer to access from the screen television program listings."
There then follows a section entitled "Description of the Prior Art". It begins by describing the difficulty of setting a video-tape recorder ("VCR") for automatic recording at a future date, identifying the procedures which might lead to errors with the consequence that either the wrong thing, or nothing, will be recorded.
Paragraph 0003 says:
"0003 The difficulty of VCR programming has been alleviated somewhat by the development of VCRs that use a television set as a display for user prompt and feedback to the user during the programming process."
Paragraph 0004 refers to some specific prior art which proposes a user interface, but observes:
"0004 However, the provision of a highly intuitive user interface that makes such a system and process easy and convenient to operate is a difficult task. Further development of the system and process has produced considerable change in the user interface as originally proposed."
Paragraph 0006 gets closer to the invention:
"0006 while the art pertaining to the control of VCRs and to television schedule systems is a well-developed one, a need still exists for a television schedule system and process incorporating an improved user interface. In particular, unlike most computer menus, a grid TV guide is an array of irregular cells, where the cell size can vary from a fraction of an hour to many hours extending well beyond the current screen. [an example of a grid guide is given]
Paragraph 0006 also identifies problems arising out of "long" cells in that, unless the problem is addressed, there can be violent and unsettling movements of the cursor when the cursor (which fills each cell) moves across the screen. A gentler cursor motion is said to be needed.
Paragraph 0007 says:
"0007 Printed grid television schedule guides often include additional information besides the program title and broadcast names. Such grids are also typically provided in combination with a more detailed printed schedule that contains a synopsis of each program, whether the programme is a repeat, rating for movies, and other information. When using a television set as a display for a schedule system, the size and resolution of the television display limits the amount of text that can be displayed with the grid. Improved techniques are required for conveying the most amount of information to the user in an easily understood manner within the limitations of the television display. When a large number of channels are available for viewing, there is also a need to order the display of information most conveniently for the user. Various aspects of the present invention are defined in the independent claims. Some preferred features are defined in the dependent claims."
The patent then turns to a detailed description of the invention. Many of the initial paragraphs deal with solving what is said to be the problem of the cursor display, something which is outside the scope of the claims.
Paragraph 0019 starts to introduce the programme notes feature of this patent. It refers to figure 6, which appears in appendix 2 to this judgment, and reads:
"0019 Fig 6 shows a television schedule grid screen 20 with a program note overlay 52. With limited text capacity on TV displays, it is preferable to display as many lines of TV listings as feasible. To handle program notes, which are text intensive, on-demand overlays 52 are used. Program notes overlay 52 may include any or all of the following information:
- A program genre
- Program description
- Stars and personalities
- Year of release
- [and further irrelevant detail]
0020 Program notes for a selected program are overlaid over the grid guide upon request. The program note can be toggled off/on using a SELECT command. The program note 52 overlays and hides 3 or 4 listings of a guide. To minimise concealment of the guide, an auto-roving note is used. The program note will overlay either the top half or the bottom half of the screen, as necessary to avoid masking the title of the selected listing. If the cursor 32 is in the upper half of the screen, the note will appear in the bottom half, and vice versa. If the cursor 32 is moved to the lower half of the screen, the note will automatically position itself in the upper half of the screen."
This is the teaching which underpins Claim 3 in the patent the programme notes feature. The notes are displayed over what would otherwise be the last three lines of the grid one can see the boundary lines of the grid extending beyond the two vertical edges of the box. Otherwise figure 6 displays a grid programme guide with times across the top in half hour slots and channels down the left (see Appendix 4 to this judgment). The programmes are identified in the cells of the grid.
Paragraph 0027 introduces the single channel element:
"0027 Figure 7 shows a screen 22, showing a program list 58 for a single channel, generated by toggling a user What's on TV command, which switches between the grid 24 and the list 58. The list 58 consists of rows 60 of sequential program listings on the channel and a channel information field 62. Program notes are overlaid on the list 58 in the same manner as shown in figure 6 of the grid 24.
0028 Each What's on TV command alternates between the grid guide 24 and the What's on Next on channel row guide 58. While viewing the grid guide 24, the next What's on TV command will replace the grid guide 24 with a single channel row guide 58. Figure 8 is the flow diagram for the What's on TV command.
0029 The page relationship between the two guides 24 and 58 are tightly coupled. The single channel guide will open to the channel and schedule time that was selected by the cursor 32 on the grid 24. While viewing the single channel guide 58, the Up/Down channel command may be used to change the channel to be listed. When exiting the single channel guide 58 and returning to the grid guide 24, the grid cursor 32 will be pointed to the channel and schedule time last selected on the single channel guide 58."
Figure 7 shows the single channel display that arises from clicking with an appropriate key on a cell in the grid display. It does not contain a "program note overlay".
Skilled addressee and common general knowledge
i) An understanding of computer windows technology, and in particular WIMP (windows, icon, mouse, pointers) technology, and how to paint windows on a screen.
ii) Universal remote controls.
iii) Spreadsheets (and therefore cells).
iv) The manner in which TV listings appeared in printed form - grid, single channel, multiple channel/single time format and programme notes.
v) An ability to manage and provide access to structured and unstructured metadata containing listings.
vi) The ability to present that information on a screen (though not necessarily optimally in terms of efficiency and effectiveness).
vii) The ability to write software achieving the last point, including windows and pointers.
Excluded matter - the Single Channel patent
"(c) anything which consists of a program for a computer as such" and
(d) anything which consists of the presentation of information .. as such."
Originally Virgin had also relied on the mental act exclusion, but that was not pursued.
i) Properly construe the claim
ii) Identify the actual contribution
iii) Ask whether it falls solely within the excluded subject matter
iv) Check whether the actual or alleged contribution is actually technical in nature (See Aerotel at paragraph 40).
"the provision of better situational awareness and context management achieved by "tight coupling" of programme titles between single channel and grid guide formats"
He also expressed the invention, or the "technical contribution" (as he put it) to be "a better user interface, a more intuitive user interface". This way of interfacing having been discovered and published by his client, others did not have to travel down a road to get there. However, in his submissions in reply he dropped the word, or concept, "better" and in essence relied on a novel aspect of an EPG.
"The point that the Board is making is that the computer output results in something happening in the real world, namely the giving of visual indications. The claim related to things going on inside the workings of the computer, rather than any form of data processing." (paragraph 25, my emphasis).
He drew the same sort of distinction in paragraph 31:
"This, too, of course leaves the phrase 'in a technical sense' undefined, but it points towards some generally applicable method of operating a computer rather than a way of handling specific data."
If that distinction is applied in the present case, then in my view it falls on the data processing side of the line. The purpose of the invention is to achieve the display of information in a user-friendly way by user-friendly means. But in reality it is data processing rather than technical effect that is in play here.
"Nevertheless, it seems to me that this aspect of the contribution is no more than a reflection of how the programmer has chosen to create the desired representation. Just as in Fujitsu the programmer had to devise a program to create a pictorial display which reproduced the effect of a model, so here the programmer had to devise a program to produce a visual representation of the rack and all it contains. The fact he has chosen to do it by synthesising the representation from a number of smaller images is simply a matter of program design. The result is not a new combination of hardware as in Aerotel. Nor is it an improved computer or an improved display as in Vicom. The result is a computer of a known type operating according to a new program, albeit one which reduces the load on the processor and makes an economical use of the computer memory. I agree with the hearing officer that this aspect of the contribution relates to a computer program as such." (paragraph 37)
This is applicable to the case before me. The invention involves the operation of a known computer type according to a new program (or aspect of a program). Even if the more economical use of memory in Raytheon might push the invention towards patentability after Symbian, that element is not present in the present case.
"38 I can deal with the third and final aspect of the contribution quite shortly. In my judgment it falls into the same category as the second. The display of the image in response to the user clicking on an appropriate part of the screen is once again an element of program design.
39 The final step in relation to these aspects is to ask whether there is anything technical about the contribution they have made. In my judgment the answer is that there is nothing beyond the fact that they are aspects of a computer program."
Those remarks are, in my view, equally applicable to Claims 1 and 2 of the Single Channel patent.
"A presentation of information defined solely by the content of the information is not patentable. This applies whether the claim is directed to the presentation of the information per se or to processes and apparatus for presenting information. If, however, the presentation of information, as distinct from the information content, has new technical features, there could be patentable subject-matter in the information carrier or in the process or apparatus for presenting the information (see Guidelines C-IV, 2.3.7 - June 2005 version)."
Mr Birss points particularly to the first sentence, and the concept of a presentation being defined solely by the content of the information. That founds his distinction, which he says is made in the third sentence. I do not think that the passage as a whole really justifies Mr Birss's sharp dividing line. At one level "presentation of information" means "information"; but the concept must mean more than that. Some aspects of how it is communicated must be within the concept, because otherwise the word "presentation" would be meaningless. That is borne out by the second sentence, which looks to the substance of the matter - if what is happening is that information is being presented, it remains unpatentable even if the claim includes the processes (an important word) or apparatus for communicating (presenting) it. So one cannot escape the exclusion by wrapping up some processes or apparatus with the claim. The distinction is made in the third sentence - if the presentation of information has some technical features over and above the information and its delivery, then it might be patentable. So the contrast is between the content or its mere delivery, on the one hand, and that material plus some additional technical aspect of its delivery, on the other. That approach is consistent with the law on computer programs, discussed above.
"A representation of information defined solely by the content of the information is not patentable. This applies whether the claim is directed to the presentation of the information per se (eg by acoustical signals, spoken words, visual displays, books defined by their subject, gramophone records defined by the musical piece recorded, traffic signs defined by the warning thereon) or to processes and apparatus for presenting information (eg indicators or recorders defined solely by the information indicated or recorded). If, however, the presentation of information, as distinct from the information content, has new technical features, there could be patentable subject-matter in the information carrier or in the process or apparatus for presenting the information. The arrangement or manner of representation, as distinct from the information content, may well constitute a patentable technical feature. Examples in which such a technical feature may be present are: a telegraph apparatus or communication system using a particular code to represent the characters (eg pulse code modulation); a measuring instrument designed to produce a particular form of graph for representing the measured information; a gramophone record having a particular groove form to allow stereo recordings; a computer date structure defined in terms which inherently comprise the technical features of the program which operates on the said data structure (assuming the program itself in the particular case, to be patentable); and a diapositive with a soundtrack arranged at the side of it."
So what achieves patentability is some real world technical achievement outside the information itself.
Novelty and obviousness - Single Channel patent
"1 A portable, single-user interface device is described which enables a user to implement many operational functions in systems that incorporate combined utilisation within a single logical unit, such as a computer, TV, VCR, telephone etc.
2 With the advent of integrated devices incorporated within a single system unit, the concept described herein provides a means of actuating any device function and manipulating the functions from a portable remote device. The functions are applicable to both home-related systems and industrial uses.
3 The primary physical interface is a portable hand-held remotely operated unit with a touch-pad actuating device .conventional pointing devices, such as a mouse or joystick, utilizing one or more buttons, as well as a keyboard, may also be used.
4 The touch-pad enables the user to perform several generic actions which, in turn, cause corresponding reactions by the system unit. The functions and applications are reflected on the screen through the use of action icons and windows. The term 'action icon' is used to mean a small image representing a function. The image can be shaped similar to a button with a label, or it may have a shape which illustrates the functional representation, such as a TV set or a telephone.
5 To illustrate the use of a touch-pad, when TV functions are chosen, controls and action functions are displayed on the screen overlaying the TV picture. The functions include items such as mute, channel selection, volume control, and a means to go to other functions. When channel selection is selected, the picture on the channel selected is shown in the background. The station, identification network, or other source of signal, such as videotape, is shown in the window associated with the controls. This is instead of, or in addition to, the channel number.
6 The user can pre-select the channels for viewing by calling up the appropriate function. In this case, a graphic representation of the schedule is shown, such as would be published in newspapers or TV guide-like publications. The user selects which station to view by moving the cursor to that position on the screen by using the touch-pad, positioning the cursor at the station selected, and then pressing the touch pad. This can be used to pre-select stations for viewing, or taping, by selecting programmes scheduled for future broadcast.
7 Pre-selecting is enhanced through the use of the 'view' function. The user will see in a window what is being shown on selected stations, by selecting the description function, the user can see in a window the TV guide review and/or the description of the corresponding selection. A similar arrangement can be used to programme a VCR for current or future recording.
8 TV program descriptive information can be entered into the system in several ways. For example, a service may be provided whereby this information can be downloaded or captured from a cable service or from the telephone line "
"(1) (a) Identify the notional 'person skilled in the art'.
(b) Identify the relevant common general knowledge of that person.
(2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it.
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed.
(4) Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
"Although embodiments described above illustrate the program table as displaying two channels on one screen, more channels may be displayed thereon. Also, the table may comprise, for example, one channel with more time slots for display."
It will be noted that one of the cells in fig 3 is shaded. This is cross-referenced in a preceding paragraph which describes the process of an operator wishing to make a recording. He navigates to the desired programme by moving the cursor to the appropriate cell and then triggers the recording instructions. The specification explains:
"The cursor indicates that the programme is selected by changing the color of the whole area displaying the program. Fig 3, in which the cursor is being displayed in oblique lines, shows a state where news A is selected."
"a name of a program and a summary of the program, if necessary, are stored in the program field 11 1 and 11 2." (my emphasis those are the relevant words).
i) putting a grid and a single channel display in the same system.
ii) switching from the former to the latter by highlighting a programme (whether or not some other way would also have occurred).
iii) (for Claim 3) taking the programme information from the field in which it is stored and (i) displaying it (ii) in a separate window.
"The notional skilled person is assumed to have read and understood the contents of the prior art. However that does not mean that all prior art will be considered equally interesting. The notional skilled person is assumed to be interested in the field of technology covered by the patent in a suit, but he is not assumed to know or suspect in advance of reading it that any particular piece of prior art has the answer to a problem he faces or is relevant to it. ... Some pieces of prior art will be much more interesting than others. A document directed at solving the particular problem at issue will be seized upon by the skilled addressee. ... But the same may not be the case where a document comes, say, from a distant and unrelated field. .. It may be that [the document] is written in such a way that, although he understands it, the skilled person will dismiss it as irrelevant after his work. The more distant a prior art document is from the field of technology covered by the patent, the greater the chance that an intelligent but uninventive person skilled in the art will fail to make the jump to the solution found by the patentee."
This is actually addressed to a slightly different situation, but it is germane to the proper approach to Kono. That is an application dealing with something other than the presentation of EPGs. The skilled addressee would not approach it as dealing directly with a problem in his own area of concern. EPGs figure in Kono as a tool. The content is dealt with incidentally in one paragraph (plus a reference to notes). I do not consider that the skilled addressee would look at that paragraph (and the table) as teaching him anything other than the possible formats for an EPG, which he will be aware of anyway. For him to start working from that paragraph in that context to step (i) and then to step (ii), in his own field of interest (which is related to, but not the same as, the field of interest of Kono) would require inventiveness, not a step or steps of obviousness. It is true that Kono does refer to the possibility of a switch operating by highlighting a programme in a grid, but its context would not lead to the skilled addressee's finding it obvious to turn that to account in his own field and for his own purposes. I do not accept Dr Ciciora's evidence to the contrary. I think that this is a piece of prior art which, in relation to claims 1 and 2, would not interest the skilled addressee much at all.
The story of SuperGuide
i) Mr Hallenbeck himself. He gave evidence as to how it worked and what he did in relation to it.
ii) An article in a magazine called STV for May 1987 and ostensibly written by Mr John Gurney (in fact a pseudonym for somebody else). This is the piece of prior art in this case called "Gurney".
iii) A demonstration of a prototype of SuperGuide. I was given a demonstration of the functionality of this prototype, and provided with a DVD showing Mr Hallenbeck operating it. This prototype lacked one feature which was important to this case but which Mr Hallenbeck said featured in the product as distributed, and as demonstrated by him at various trade fairs, namely a single channel listing. Whether or not the production version had this functionality is a question of fact that I have to decide.
i) All the evidence about it turns on Mr Hallenbeck's memory, which itself related to events over 20 years ago.
ii) There are no documents or items which demonstrate the truth of what Mr Hallenbeck says in a direct way no production units were produced, no user manuals were produced and no document directly evidenced the presence of a single channel display.
iii) The earliest form of documentary reference to the single channel roundup is a series of depictions in magazine advertisements, the first of which was May 1987 (after the production units had first been sold). Before then, a variety of magazine adverts, containing screen shots of the operation of SuperGuide, did not show the single channel roundup. It is never described in a document contrast the Gurney article which does describe the favourites feature.
iv) Mr Birss also relied on the unsatisfactory manner in which he said potentially relevant documents had not been disclosed to Gemstar.
v) At some later point in time, Mr Hallenbeck applied for a US patent for a different invention. He did not mention SuperGuide in that, even though prior art which was equally material was mentioned.
vi) It was said that some of the supporting material that Mr Hallenbeck referred to in court was unsatisfactory, not least because some of it had not been referred to before. When being cross-examined, Mr Hallenbeck referred to a conversation that he had had with someone else in the trade known as John Roop, who had incorporated an equivalent feature to single channel roundup in his (the competitor's) product. Mr Roop was said to have remarked that he got the idea from SuperGuide. Mr Birss says that this was a lie, made up on the spot by Mr Hallenbeck. It was not referred to in his witness statement. Similarly, Mr Birss relied on some evidence which, Mr Birss said, demonstrated that Mr Hallenbeck himself was only "reminded" about the single channel roundup feature when he found a "stuffer" of SuperGuide II, which apparently certainly did have this feature.
"When you want to see what's on television, you don't have to search for your programming guide, you simply pick up the remote control and push the blue button labelled 'What's On Now', and suddenly a page of schedules is displayed on the TV screen. No searching for the right page and the right time - SuperGuide does that automatically for you.
Now, if there are more listings for the time slot than will fit on a single screen, simply press the 'Next Page' button, and to back up, press the 'Previous Page' button.
There are actually so many features available with SuperGuide that it is almost impossible to describe them in a magazine article. The 'Select Favorites' mode, for instance, enables the user to access two very interesting features. In this mode, a complete listing of scheduled program services on each satellite is displayed on the screen. Using the 'Select' button, one can program each channel by placing a '+', a '-' or a blank spot.
Next to the channel designation the '+' symbol flags a particular channel as one of your 'favorites'. In the favorites recall mode, only the channels selected will be displayed By programming in your favorite channels, you bypass the need to look at all the other listings.
By inserting a '-' in front of the channel designation, that channel will be completely eliminated from all displays of SuperGuide. This mode is useful for eliminating channels you never watch or that you are unable to watch (for instance, scrambled channels to which you do not subscribe). If neither a '+' nor a '-' is inserted, SuperGuide will automatically display listings for that channel in all modes."
Single Channel patent - obviousness over Gurney
Single Channel patent - obviousness over SuperGuide itself
Conclusions on the 662 patent validity
The Single Channel patent infringement
The Favorites patent, or the 049 patent
"0001 The present invention relates generally to a system and process that allows a television viewer to access on screen television program listings and use the program listings in an easy and convenient way to control operation of a video cassette recorder (VCR) or other recording device . More particularly it relates to such a system and process in which the VCR or other recording device is controlled by a simple selection of program title and a record command, even for recording at a future date and time. Most especially, it relates to such a system and process incorporating an intuitive user interface."
Paragraphs 0002 to 0007 deal with the prior art, with a heavy emphasis on VCR control. Paragraph 0007 refers to printed grid schedules and limits on the size and resolution of television displays of text. It ends:
"Improved techniques are required for conveying the most amount of information to a user in an easily understood manner within the limitations of the television display. When a large number of channels are available for viewing, there is also a need to order the display of information most conveniently for the user."
There is then a heading "Summary of the Invention" and paragraph 0008 reads:
"0008 Accordingly, it is an object of this invention, as defined in the claims, to provide a television schedule system and process with a user interface that is configured to compensate for the particular nature of the television schedule information.
0012 It is a still further object of the invention to provide such a user interface in which order of presentation of the schedule information is customizable by user preference."
What then follows is a large number of paragraphs dealing with matters which are nothing to do with the claims. They deal with such things as grids and automatic programming of VCRs by reference to an EPG. Some of the text is shared by the specification of the Single Channel patent. It is not until paragraph 0069 that one gets to paragraphs germane to the claims. At this point the relevant text reads:
"0069 Fig 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 116.
0070 The Channel Customization screen 116 has two fields, a three column field 118 listing up to 36 unabridged channels and a single column field 120 listing 12 favorite MY channels. The latter is a replica of the channel descriptor column 122 (fig 1) of the opening grid guide. Additional pages are available (using the page key to swap between the pages) to accommodate systems with more than 36 channels. Each cell 124 in the three column field 118 contains the following information:
'Channel number and program service name (such as HBO or station KTVU2). The cell 124 is color-coded to indicate the following states:
ON, default state before any customization, with the cell 124 in light green background.
MY, favourite channels listed in the single column field 120, also shown in the three column field 118 with a blue background.
OFF, a channel deleted from all guides, as well as during Channel UP/Dn scanning (still accessible using the ten key channel keypad). OFF cells have a gray background.'
0071 When first installed, the system assigns the first 12 (listed in numerical order) channels as MY favorites. The channel status may be changed by selecting a channel and picking a state(s) MY, OFF or ON using the SELECT key.
0072 Since only 12 favorites are allowed, the user must first remove a favorite channel by changing the status of an existing favorite channel to ON or OFF. When that is done, the first column will automatically open up a space for the next MY selection. When a new MY is selected, the MY column 120 will automatically insert the new selection in the prescribed order .
0077 In the system 180, programmable tuner 202, which may be part of a cable decoder unit, receives a TV signal from antenna 200 and/or from cable input 205. Tuner input 216 goes to a vertical blanking interval (VBI) decoder 222, which may be a closed caption decoder or a high-speed teletext decoder. Listing information and other support information, such as cable channel assignment data, will be transmitted over the VBI by one or more local stations or cable channels several times a day or continuously.
0088 Schedule information may be downloaded from the VBI. Alternatively or supplementally, it may be downloaded from a telecommunication line 270 to the modem 268 and to CPU 228 via line 266. Other means of delivering scheduled information can be employed, including the use of a sub carrier channel on the cable service.
0089 It should now be readily apparent to those skilled in the art that a system and method incorporating a novel user interface capable of achieving the stated objects of the invention has been provided . Order of presentation of the schedule intervention in the interface is customisable by user preference."
Novelty of the Favorites patent as granted - anticipation by Gurney and SuperGuide
i) Originally it was said that SuperGuide did not display both a channel number and programme service name. A demonstration of the prototype (which I find to be the same as the production model in this respect) shows that SuperGuide displays both.
ii) The "available for viewing" point arose in relation to SuperGuide as well as Gurney. It is dealt with in the same way.
iii) If I were wrong as to where Gurney said the "+" sign appears, it is quite plain in SuperGuide that it appears on the screen.
Favorites patent obviousness
Conclusions on the 049 patent validity
The application to amend the Favorites patent
Favorites patent infringement
"wherein each cell comprises a channel number and a program service name for a particular channel"
The Virgin offering does not do that. The channel number and the programme service name appear in different cells; or at least not in one cell. On the screen the channel number and service name appear next to each other. The name can be selected, but the number is not selected at the same time (or indeed selectable at all). Thus the name is in a cell without the number. Whether the number falls to be treated as being in a cell at all may be debatable, but it is apparently not in the name cell.
The transfer patent
"The use of independent analog storage devices like video cassette recorders, however, does not allow for the more advanced features that might be implemented if a digital storage device were associated with a program guide.
0005 It is therefore an object of the present invention to provide an interactive television program guide with digital storage."
The "Summary of the Invention" goes on:
"0006 This and other objects of the invention are accomplished in accordance with appended Claims 1 and 6, the principals of the present invention, by providing an interactive program guide system with digital storage that allows the program guide to be used to provide more advanced features than previously offered by interactive program guide systems."
Paragraph 0008 describes some of the controls related to a set-top box and goes on:
"The set-top box may store television programming and program information in a digital storage device associated with the program guide. The digital storage device may be an optical or a magnetic storage device (e.g. a device using writable digital video discs, magnetic discs, or a hard drive or random access memory (RAM) etc).
0009 The use of a digital storage device associated with the program guide provides the user with more advanced features than could be performed using an independent analog storage device. For example, the current invention gives the user the ability to store information associated with recorded programs in a directory in the digital storage device thereby providing easy access to program information . The program guide also allows the user to define "super-programs" for playback of a sequence of stored programs or program segments. The program guide may also provide for the transfer of programs and super-programs to other volumes of the digital storage device or to a secondary storage device."
There then follows a detailed description of preferred embodiments. Various schematics are referred to, including a fig 2 which shows a "daisy chain" arrangement in which the output from the recording box is shown as going to a "secondary storage device" and from there to the television. The teaching does not necessarily anticipate a second output for the secondary recording device. Certain other connection options are referred to in the specification; I do not need to deal with them.
"0022 When a user indicates a desire to access the main menu or other feature of the program guide (e.g. by entering a command with user interface 46), the program guide generates an appropriate program guide display screen for display on monitor 45 .from the main menu the user can access any one of a number of features of the program guide. Features indicated by main-menu screen 50 may include program listings, recording schedules, the digital storage medium directory, program guide setup, transferring stored entries and super-programs to another volume or device, and global media library."
Paragraph 0076 deals with the nature of the secondary storage device:
"The program guide may also allow the user to transfer programs and super-programs stored on digital storage device 49 to other volumes of digital storage device 49 or to secondary storage device 47 secondary storage device 47 may be another storage device available in the home network system like a video cassette recorder, a recordable digital video disc device, a computer (with an appropriate storage device), or other digital storage device."
The processes are then described in a little more detail and then:
"0078 Transferring the data (e.g. software) associated with a program or super-program may not be possible with some analog secondary storage devices, so the program guide may accordingly ignore the associated data during transfer."
It is unnecessary to set out any more of the extensive specifications. What was described as the "meat" of the invention lies in the integer (using the amended claims for this purpose):
"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."
Points of construction
The attacks on the patent
The skilled addressee
Common general knowledge
"Software inside the device enables the user to easily select programs up to two weeks in the future to record on the disc drive for later viewing, as well as pause, forward, fast-forward and review programs that they're currently watching and that's still being recorded."
Mr Hirson considered that this paragraph was referring either to the use of an EPG or possibly to programming with a Video+ type mechanism, though he thought that the skilled team would probably favour the former interpretation. Mr Glasspool considered that it must be talking about an EPG. I think that Mr Glasspool is right about that.
"The product will be available in various models, with storage capacity ranging from seven to 30 hours. Should users wish to save programs permanently they can be recorded from the replay TV device to a VCR." (my emphasis)
Virgin's case is that that sentence simply means what it says it is possible to record from the device to a VCR. Gemstar suggested two further alternative readings. The first was that the system envisages a Video+ system. I consider that, even if it did, this sentence has got nothing to do with that. It is talking about something different. The second alternative reading was, in my view, deeply contrived. There was at the time a copy-protection programme or facility called Macrovision. In the course of his cross-examination (though not in his expert report) Mr Hirson suggested that this sentence was referring to an absence of such copy-protection. It came out as a rather incidental sort of observation. By the time Mr Birss came to cross-examine Mr Glasspool it became a rather more serious suggestion, though one which Mr Glasspool firmly rejected. Having heard the evidence on the topic, and having heard the experts, I regard the suggestion as fanciful. I think that Mr Hirson was stepping beyond the normal boundaries of an expert and casting around for some interpretation which might assist those who engaged him. This is not a technical article. Variety is plainly describing a commercial product to a layman. A layman might be interested in whether or not there was copy-protection, but if the journalist had been trying to describe that feature, he would inevitably have done so in different terms. As I have said, I find that those words simply mean what they say.
Variety novelty and obviousness
" To use a medium for recording programme information and a device for programming recordings which employs this recording medium to enable the quick retrieval and viewing of various kinds of programme information and allow the recording of a desired programme to be programmed easily and accurately without the need to refer to newspapers, TV guides or the like.
The use of recording medium 16, such as a DVD-RAM or the like, prerecorded with programme information distributed by a TV station not only allows a variety of information such as programme listings or programme content to be displayed in a selected format based on the said programme information, it also enables a specific programme to be selected directly from this programme listing and programmed for recording. This programming data can be managed by associating it with programme information relating to the specified programme held in an area for recording index information, and when the programme is actually recorded using this programming data, index information such as the time and date of recording, start position and duration are recorded and managed as an attachment to the corresponding programme information in addition to images of the programmed recording being recorded in the video recording area."
"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."
"The operation of the "record/playback", "search/display", "programming" and "editing" functions will now be described for the case where programme information, data for programming recordings and other recorded image data are recorded using DVD-RAM 16."
" 0053 With the present invention, details such as the programme title, cast, and synopsis can be very easily retrieved from the distributed programme information, and recorded as index information for the recording without the need for manual intervention.
0054 When the index information recorded on DVD-RAM 16 is played back, for example when the DVD-RAM 16 is placed in the recording and playback unit, the recorded programme can be easily found from the "programme title" recorded in programme and index information recording area 16a [viz the annulus on the disk referred to above] retrieved by information-searching unit 13, and output on television 10 via image interface 12. Moreover, the desired "programme title" can be selected using input means 14 or the like such as a remote control and the recorded programme played back from the corresponding "recording start position" in the index information.
0055 Thus not only can a desired recorded programme be easily selected and played back, the content of other information stored as index information can also be searched and played back in various different ways, such as finding whether information about a given performer is stored in the disk."
"0071 The data provided in the programme listing (programme information) includes a large quantity of video and still images, and while it is preferable to use a medium such as DVD-RAM 51 which is rewritable and has a large storage capacity, existing memory devices such as HDD, semiconductor RAM, or MO may also be used."
" 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 recorded in programme and index information recording area 16a in said disk."
" 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 programs 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 into the editing screen by dragging or clicking."
"0155 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 disc or on a separate recording medium."
"0156 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.
0157 In such a case it is preferable to use a large-capacity DVD-RAM 16 as the recording medium, but a HDD, PD or MO may also be used.
0158 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."
This again seems to be referring to recorded programme content and not merely metadata.
"0159 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.
0160 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.
0161 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 "
"0162 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."
The respective cases of the parties
"Paragraph  also points out the importance of maintaining the correct pointer to the start location of the TV programme recording in the post-recording index."
There must be some recorded programme material for that to make sense.
The transfer patent patentable subject matter
Appendix 1 - Single Channel Patent relevant claims
Storing in electronic memory a plurality of television programme listings, each listing including title, telecast time and channel;
displaying on a monitor screen some of the titles of programme listings in a grid guide format of time and channel;
Moving a cursor (32) on the screen to mark one of the displayed titles in the grid guide format;
opening to the marked title in a single channel format (58) instead of the grid guide format (24);
wherein the single channel format (58) includes rows of sequential television program listings for the channel corresponding to the marked title.
Appendix 2 Kono Fig 3
Appendix 3 Virgin grid display
Appendix 4 Single Channel Patent Fig 6
Appendix 5 Virgin's programme note
Appendix 6 Favorites Patent Claims
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.
2. The method of claim 1 wherein said electronic program guide displays the title of each program broadcast on the subset of channels for each interval displayed by said electronic program guide during which the corresponding program is broadcast.
2.3. The method of claim 1 or 2 wherein providing a display compromises providing a display of a plurality of cells representing a corresponding plurality of cable channels available for viewing by the user. 3. 4. The method of claim 1 or 2 further compromising displaying cells representing additional channels available for viewing by the user in response to a user selection from a remote control. 4. 5. A system for allowing a user to select favorite channels in an electronic program guide, the system comprising:
means for 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;
means for allowing the user to use the display to select a channel among the plurality of channels;
means for changing a status of said selected channel to that of a favorite channel in response to the user selection;
means for displaying in cells corresponding to the favorite channels a visual indication that the selected channels are favorite channels; and
means 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.
6. The system of claim 5 wherein the means providing program guide information for the subset of channels having favourite status comprises means for displaying the title of each program broadcast on the subset of channels for each interval displayed by said electronic program guide during which the corresponding program is broadcast.
5 7. The system of claim 5 or 6 wherein the means for providing a display comprises means for providing a display of a plurality of cells representing a corresponding plurality of cable channels available for viewing by the user. 6 8. The system of claim 5 or 6 further comprising means for displaying cells representing additional channels available for viewing by the user in response to a user selection from a remote control.
Appendix 7 Transfer Patent Claims
.1 .A method for transferring
recorded programs to a secondary storage device using an interactive television program guide implemented on user television equipment, the method comprising to cause a first display:
Displayingin a display screen of at least one program listing related to at least one program;
Enablingusing the interactive television program guide to enable a user to select a program entrylisting from at least one displayed program listing;
Recording the selectedusing the interactive television program guide to cause the program related to the at least one displayedselected program listing to be recorded on a digital storage device;
Displayingusing 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 de
vice, wherein at least one recorded program listing includes a recorded program
entrylisting for the program recorded on the digital storage device;
Enablingusing the interactive television program guide to enable the user to select the recorded program entrylisting to transfer the recorded program from the digital storage device to a secondary storage device; and
Transferringusing the interactive television program guide to transfer the recorded program from the digital storage device to the secondary storage device.
Enabling the user to select a sequence of programs recorded on the digital storage device; and
Transferring the sequence of programs to the secondary storage device.
Means for displaying in a display screen at least one program listing related to at least one program (45, 60);
Means for enabling a user to select a program
entrylisting (61) from at least one displayed program listing;
Means responsive to program listing selection to cause recording
for recording(49) the selectedprogram related to at least one displayed program listing on the digital storage device;
Means for displaying (80) at least one recorded program listing for at least one program recorded on the digital storage device, wherein at least one recorded program listing includes a recorded program
entrylisting for the program recorded on the digital storage device;
Means for enabling the user to select the recorded program
entrylisting to thereby cause transfer to the recorded program from the digital storage device to a secondary storage device (47); and
Means for transferring the recorded program from the digital storage device to a secondary storage device.