Gemstar v Virgin is a case that gives an insight into where the UK Patents Court draws the line between a non-patentable man-machine interface and a patentable set-top box. Three patents were at issue. Two fell on one side of the line and the third fell on the other. But does this case give us a clear bright line?
Virgin Media are in the business of broadcasting TV programmes and were sued by Gemstar under three patents relating to electronic programme guides. There is little doubt that if the patents had been valid, Virgin's set-top boxes would have infringed, but the patents were all invalid. Two of them were held to relate to non-statutory subject matter (mere computer programs or mere presentations of information) and the other was not new.
The first patent - non-statutory
The first patent (the "Single Channel" patent) related to
- displaying programme listings in a grid guide format of time and channel,
- moving a cursor to select a cell and
- opening the selected cell in a single channel format to show details of sequential TV programmes for that channel.
"The touchstone is whether the invention makes a technical contribution" said the Judge, Mr Justice Mann, summarising the precedent set by Aerotel, Symbian and AT&T (this last case being one of Jenkins). This was not a case where a computer program made the computer a better computer (in the Symbian sense) nor could there be said to be any external technical effect beyond merely "painting information on a screen, the user having had the opportunity to select the manner in which that happens". The purpose of this invention was to achieve the display of information in a user-friendly way by user-friendly means, but Mann J took the view that this is mere data processing rather than any technical effect. He contrasted the case with T0208/84 - VICOM, in which the production of the manipulatable images was a technical effect beyond the mere placing of the images on the screen.
In any case, Mann J took the view that the interface fell within the exclusion against the mere presentation of information. The statutory exclusion (Article 52 EPC see page 13 ) could not be limited to information itself, otherwise the word "presentation" would be meaningless. The EPO guidelines apply the exclusion to processors and apparatus for presenting information, where the information is defined solely by its content. A contrast must be drawn 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 hand. Providing a better (or new) user interface is not a technical contribution. What matters is technical effect.
The invention was un-patentable in the view of either the computer program exclusion or the presentation of information exclusion. (It might be added that the patent, dating from 1990, was in any case found invalid for obviousness over various prior art references).
The second patent - also non-statutory
The second patent (the "Favourites" patent) was no more technical than the first. It called for
- selecting a channel,
- giving it a "favourites" status,
- displaying in corresponding cells a visual indication that selected channels are favourite channels, and
- providing programme guide information for the favourite channels in response to a user indication.
Again, the invention did not make the computer a better computer, nor did it do anything other than sort data, which is not sufficient, nor did it have any relevant effect outside the computer. It merely altered a screen display, but this was not considered to be a relevant technical effect, because otherwise every computer program which reported its output on a screen would escape the exclusion. There was no technical effect. There was merely a more gratified viewer of the screen.
The patent was invalid on the same grounds (and was again invalid in any case for other reasons).
The third patent (technical and therefore statutory)
The third patent called for:
- means for selecting a programme,
- means for recording the programme, with its programme listing, and
- means for enabling a user to select the recorded programme and to cause it to be transferred from a digital storage device to a secondary storage device.
In this case Mann J concluded that the invention did actually achieve something which could be regarded as a physical effect, namely the initiation of transfer of data from one disc to another (both TV programmes content and its metadata). This was just enough to prevent it being just a computer program as such and to render its patentable material, although it was held not to be new for other reasons.
Far from drawing a useful bright line, this decision draws a fine line between the presentation of information exclusion and the technicality requirement. It dismisses as unpatentable any new and inventive ideas in the field of more effective utilisation of the limited screen space of a computer. It dismisses all such ways of presenting information as the mere "manipulation of data" and the mere "presentation of the data manipulated within the computer". Yet it finds the technicality requirement satisfied by a simple transfer of data from one physical location to another.
Perhaps it would be better to use the EPO approach before T1173/97 - IBM and T0258/03 - HITACHI, which was to consider the contribution over the prior art and then ask the question whether that contribution is technical and inventive. (The present EPO approach is no better, which is to consider only those technical contributions over the prior art and then consider whether those technical contributions are inventive. That approach is often unsatisfactory, because it fails to give any weight to inventive but non-technical contributions.)
This decision (Gemstar v Virgin) has been unsuccessfully invoked in a yet more recent case (HTC v Yozmot 33). HTC sought revocation of Yozmot's patent in which a customized message for a registered caller is played through a selected loudspeaker and in which pre-listed or known callers can be distinguished from unlisted or unknown callers. HTC argued that, per Gemstar, this was no more than the "presentation of information in an audible way". The Court disagreed, saying the contribution made by the invention does not lie solely in that area, but on the contrary has a technical character. (All but one of the claims were held invalid for other reasons.)