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Starsight Telecast Inc (Rovi) v Virgin Media Ltd [2014] EWHC 8 (pat)

Case Summary  |  Judgment  |   9 January 2014

 

Members of Chambers recently appeared for both sides in a partial summary judgment application in the on-going series of litigation between Rovi and Virgin Media. James Abrahams appeared for Rovi defending the application made by Virgin, who were represented by James Whyte.

In October 2012 the EPO Opposition Division held the claims of one of Rovi’s patents, which relates to parental control mechanisms for TV systems and electronic programme guides, invalid in the form they had been granted. They did however uphold the claims in an amended form. Pending the outcome of Rovi’s appeal to the Technical Board of Appeal, Rovi made a conditional application to amend the claims in their UK action against Virgin for patent infringement, to match those allowed by the Opposition Division.

Virgin contended on the present application that, with the claims of the patent in their amended form, there was no prospect of Rovi succeeding in their infringement action.

While commending the arguments advanced in support of it, Arnold J dismissed the application. The Judge held that the necessity to ‘don the mantle’ of the notional skilled person in construing the claims of the patent, meant that he could not conclude that Rovi had no prospect of success in their claim without receiving expert evidence.

In addition, the Judge held that the lateness of the application meant that it should fail. He held that if he had granted partial summary judgment, his decision would likely be the subject of an appeal. Such an appeal would not be heard before trial, which is due to commence in late February. This fact obviated the benefit of dealing with certain issues by summary judgment, as they would have to be gone into at trial in any event.