The Court of Appeal has dismissed claims by Gemstar in a patent case against cable television operator Virgin Media. Gemstar, now owned by Rovi Corporation, had claimed infringement of patents covering selection of a programme from a channel grid, filtering favourite channels, and transferring a programme to secondary device. The appeal judges upheld an earlier ruling that the patents were invalid in the United Kingdom and they will now be revoked. A number of consumer electronics companies and platform operators have been persuaded to licence apparently patently obvious features to avoid the threat of litigation. As this case demonstrates, patent claims are not necessarily valid when it comes to court.

Gemstar, a patent licensing company owned by Rovi Corporation, previously called Macrovision Corporation, originally issued proceedings against Virgin Media in January 2008 alleging infringement of three patents relating to the various uses of electronic programme guides.

At the time, News Corporation, the main shareholder in British Sky Broadcasting, also held a 41% stake in Gemstar-TV Guide, which was in the process of being acquired by Macrovision for $2.8 billion. News Corporation is also a major shareholder in NDS which provides the software for its electronic programme guide and Sky+ digital video recorder and has licensed patents from Gemstar.

The patents in the Virgin Media case related to selecting a programme from a channel grid, filtering channel lists into favourites and transferring a recorded programme from a set-top box to a secondary storage device.

In December 2009 the High Court in the United Kingdom found all three patents, numbered EP0969662, EP1377049 and EP1613066, to be invalid on multiple grounds. The judge concluded that the first two patents were invalid, simply relating to the presentation of information and lacking technical effect. He found that the third was potentially patentable but lacked novelty.

Gemstar appealed but in the end confined their case to the last two, referred to as the favourites and transfer patents.

The High Court of Justice Court of Appeal agreed with the original judge, Justice Mann, who found that the favourites patent lacked novelty over prior art called SuperGuide, first developed between 1985 and 1986. The court also concluded that the transfer patent lacked novelty over a prior patent from Toshiba in Japan published a few months earlier in April 1998. The patents in dispute will now be revoked.

When Gemstar-TV Guide International first sued Virgin Media for patent infringement, informitv suggested that “it seems unlikely that Gemstar will prevail in this case” and suggested that “the failure of litigation against Virgin Media could set a useful precedent for the rest of the industry”.

Scott Dresser, General Counsel at Virgin Media said the appeal verdict “comprehensively dismisses Gemstar’s claim, confirming their patents are not valid and bringing an end to over three years of legal dispute. We have vigorously defended our assertion that Gemstar’s claim was unfounded and that they should not have brought this case and the Court agrees emphatically.”

Uncertainty over patent issues has inhibited innovation in interactive programme guides. Some consumer electronics companies and platform operators have felt obliged to licence patents to protect them from the threat of litigation over apparently obvious forms of presentation such as selecting programmes from a channel grid.

Rovi Corporation announced that M7 Group, which provides satellite services in the Netherlands under the name CanalDigitaal, has just joined a long list of operators that have licensed its claimed intellectual property in relation to electronic programme guides. They include Canal+, Sky, Sky Italia, Sky Deutschland, Unitymedia and UPC Broadband.

“Our announcement today with M7 shows the continued expansion of our patent licensing program on a global basis,” Samir Armaly, the senior vice president of intellectual property and licensing at Rovi, said in a statement.

A Rovi representative said: “We’re disappointed but not surprised by the Court’s decision. Rovi has an extensive portfolio of other patents besides the ones asserted in the Virgin litigation and we intend to continue to protect our investments in our intellectual property.”

Virgin Media has since launched a new set-top box developed in conjunction with TiVo. It is understood that TiVo has directly licensed patents relating to electronic programme guides.

TiVo is itself involved in a long-running patent infringement dispute with EchoStar and Dish Network in relation to digital video recording. The latest ruling on this is expected imminently and could be critical to the future of the company.