Rovi Guides, Inc. v. Videotron Ltd.

Date: 20220623

Docket: T-921-17

Citation: 2022 FC 874

Ottawa, Ontario, June 23, 2022

PRESENT: The Honourable Mr. Justice Lafrenière

BETWEEN:

ROVI GUIDES, INC.

Plaintiff/

Defendant by Counterclaim

and

VIDEOTRON LTD.

Defendant/

Plaintiff by Counterclaim

PUBLIC JUDGMENT AND REASONS

I.

Introduction

[1]

On June 23, 2017, Rovi Guides, Inc. [Rovi], and TiVo Solutions Inc. [TiVo], brought the

present action against the Defendant, Videotron Ltd. [Videotron], alleging infringement of four

patents owned by Rovi, described in paragraph 2 below, and two patents owned by TiVo -

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Canadian Patent Nos. 2,333,460 and 2,323,539 [TiVo Patents]. TiVo discontinued its action

against Videotron with respect to the TiVo Patents on January 21, 2020.

[2]

Rovi seeks relief in respect of alleged infringement of the following patents that relate

generally to “interactive television program guide” [IPG] technology:

1) Canadian Letters Patent No. 2,337,061 [061 Patent];

2) Canadian Letters Patent No. 2,339,629 [629 Patent];

3) Canadian Letters Patent No. 2,730,344 [344 Patent]; and

4) Canadian Letters Patent No. 2,336,870 [870 Patent].

[Collectively, the “Patents”.]

[3]

At the heart of the Patents is the concept of an IPG. At a high level, an IPG consists of

software that generates for display television program listings and recorded content in electronic

form that a user can navigate by electronic means. In IPGs, information on available

programming content is downloaded or sent to a user’s television equipment, typically a set-top

box [STB], and the information is then stored in memory. A STB is so-called because it

originally sat on top of the television set. It is also colloquially known as a cable box.

[4]

The Patents cover many aspects of the design and engineering of an IPG that can be

accessed through a television set or another platform, such as a mobile phone or website. The

Patents originated from filings made in the late 1990s. They were all expired by the time the trial

commenced.

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[5]

Although over a hundred claims of the Patents were in issue when the action was

commenced, they were whittled down to fourteen (14) by the time the trial started. Rovi is

pursuing only four (4) sets of claims. These will be referred to in these reasons collectively as the

“Asserted Claims.”

[6]

Videotron denies the allegations of infringement and has counterclaimed that the claims

of the Patents are invalid on various grounds, including anticipation, obviousness, insufficiency,

and ambiguity. It submits that the Asserted Claims of the Patents are directed to straightforward

and routine design choices for user interfaces and system access methods for STBs and IPGs,

that no technological problem has been identified for which the claimed subject matter provides

a solution, and there is nothing novel or inventive in the Patents. Videotron further argues that

there are substantive differences between the Asserted Claims and Videotron’s particular

implementations of STB and IPG software and there has been no infringement of any rights

owned by Rovi.

[7]

For the reasons set out below, I conclude that all of the Asserted Claims are invalid

because they are either anticipated and/or obvious having regard to the prior art and the common

general knowledge [CGK] of the skilled person (as defined further below). It follows that Rovi’s

action is dismissed and Videotron’s counterclaim is granted.

[8]

I wish to point out from the outset that the parties both filed meticulous and well-

reasoned written representations. I have borrowed liberally from their facta in reaching my

conclusions.

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II.

A.

Overview

Interactive Program Guide

[9]

A brief description of the development of IPGs over the years is useful at this stage to put

the issues in these proceedings in context.

[10] Television viewers originally obtained information about upcoming programs and

scheduling in paper form, such as an insert in the newspaper or as a stand-alone television guide

that was available for purchase.

[11] In the late 1980s to early 1990s, television program guides moved from a printed version

to an electronic program guide [EPG]. The early EPG was essentially a non-interactive, linear

list of current and upcoming television programs on all available channels that scrolled

automatically. The user would have to wait for the list to reach a time slot of interest in order to

see what programming was available on the various channels in that particular period of time.

[12] An example of an early EPG is shown below.

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[13] The manner in which program information was delivered to a consumer’s television

changed over time. As technology progressed, EPGs were enhanced to allow users to interact

with the content being displayed.

[14] These new EPGs, more commonly referred to as IPGs, were typically full-screen grid

guides that displayed television program listings by time and channel in a two-dimensional grid.

Using a remote control, a user could interact with the guide to see what was on television at the

present or later times on a different channels, instead of depending on the automated scrolling of

the traditional on-screen guide of that time. With the rise of the IPG, the use of scrolling EPGs

diminished.

[15] By the mid-1990s, more modern front-line presentation and navigation user interfaces

were being introduced in the marketplace. Examples of such IPGs on the market in 1994 and

1996 respectively are shown below.

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[16] Because the processing and storage capabilities of STBs was generally limited in the

early and mid-1990s, the functionality of an IPG on such a platform was limited. However,

additional interactive functionality, such as viewing programming by time or genre, obtaining

more information about particular programs, and facilitating recording of programs,

progressively became available as STB capacity and memory increased and the cable industry

moved inexorably from analog to digital systems.

B.

The Parties

(1)

Rovi

[17] Rovi and other members of its corporate family (collectively referred to hereinafter as

Rovi) own a portfolio of thousands of patents in jurisdictions around the world. This includes

hundreds of patents in Canada. Rovi supplies digital entertainment technology, including IPG

technology, to consumers to help them find programming of interest.

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[18] There was much evidence led at trial about how Rovi’s predecessors were pioneers and at

the forefront of program guide technology. Rovi’s corporate lineage starts with the paper TV

Guide Magazine launched in the United States of America in 1953 and continues to today’s

modern IPG technology.

[19] In the period from at least 1996 onward, Rovi entered into a series of transactions, such

as acquisitions of competitors and mergers with other companies. Corporate predecessors include

United Video, StarSight Telecast, Inc. [StarSight], TV Guide on Screen, Gemstar, Macrovision,

and others.

[20] The corporate history of Rovi and its predecessors is neatly set out in the diagram below.

[21] Significant investments were made by Rovi in research and development over the years -

in the order of magnitude of USD$1 billion - to develop new products and services for its core

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business: licensing patented innovations to third-party companies who create or use their own

digital entertainment solutions using Rovi’s patented technology.

[22] Rovi’s largest market for licensing has been subscription-based television broadcasting

[Pay-TV]. Rovi has licensed its technologies and related patents to many of the leading Pay-TV

providers around the world, including most of the largest Pay-TV providers in Canada and the

United States of America [USA].

[23] Rovi’s predecessors have been recognized by the industry for their long history of

innovation and received awards and accolades for their contributions to the IPG technology.

Moreover, Rovi has a long history of successfully licensing its technology, generating billions of

dollars in revenue over the years.

[24] The focus of the dispute before this Court, however, is not on Rovi’s past successes, nor

on its business acumen in licensing its products. The role of this Court is to consider the merits

of each individual patent claim asserted by Rovi and determine whether it is entitled to the relief

it is seeking - an accounting of profits earned by Videotron as a result of the alleged patent

infringement or a reasonable royalty.

(2)

Videotron

[25] Videotron is a Canadian telecommunications company and Pay-TV provider. It has been

providing cable television services, primarily in the Province of Quebec, since the 1960s. The

business of Videotron includes supplying terminals and services to subscribers to permit access

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to television and other content. It also supplies customers with Internet connectivity, mobile

telephone, streaming and home phone services. The Videotron interactive service known as

“Vidéoway” was launched in 1989. In 2001, Videotron launched the “illico” service [illico 1].

[26] Within Canada, leading content providers, such as Bell, Rogers and Shaw Cablesystems

G.P., have taken licenses to the Rovi patent portfolio covering its IPG technologies, including the

patents at issue in these proceedings. Videotron itself entered into an Interactive Program Guide

Patent Licence Agreement [Licence Agreement] with Rovi, effective as of April 1, 2010.

[27] In 2012, Videotron launched “illico New Generation” [illico 2]. After Videotron refused

to renew the licence arrangement at the end of 2016, Rovi selected four of its patents and, in this

action, allege infringement of those patents by the illico 2 system.

[28] Over time, the equipment and detailed services supplied under the Videotron’s services

[illico 2 service] have varied. In particular, Videotron introduced a new television and audio-

video content delivery service branded “Helix”. The parties agree that the illico 2 service has not

changed in any respect material to the issues in this litigation and before the expiry dates of the

Patents. The parties further agree that the commencement of any potential infringement of the

Patents by Videotron is no earlier than January 1, 2017.

III.

The Trial

[29] The evidentiary portion of the fully electronic trial lasted 20 days. Seventeen lay and

expert witnesses were heard and 164 exhibits running into the tens of thousands pages were

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admitted into evidence. The first three witnesses testified in person in Toronto, while the balance

of the witnesses participated remotely by videoconference following the COVID-19 outbreak in

March 2020: see Rovi Guides, Inc. v. Videotron Ltd., 2020 FC 596.

[30] Closing submissions were to be presented a few weeks after the conclusion of the

evidentiary portion of the trial; however, the hearing had to be put over due to my sudden

unavailability for medical reasons. I regret the attendant delay in considering the parties’ written

and oral submissions and in issuing these reasons and judgment.

[31] On consent of the parties, the trial of this action proceeded first, followed by the joint trial

of patent infringement actions brought by Rovi against other Canadian telecommunication

companies, collectively referred to respectively, as “Bell” and “Telus” in Court File Nos. T-113-

18 and T-206-18. The actions against Bell and Telus relate to the alleged infringement of four

patents owned by Rovi, including the 629 Patent and 870 Patent. I have been careful to keep the

evidence in the present case distinct from the other two cases and was uninfluenced in deciding

this case by the evidence and submissions in the other.

IV.

The Witnesses

[32] Below are brief descriptions of the fact and expert witnesses in the order in which they

appeared at trial.

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(1)

Rovi’s Witnesses

[33] Rovi first called three lay witnesses: Samir Armaly, William (Bill) Thomas, and Clay

Gaetje.

[34] Mr. Armaly is employed by TiVo, Rovi’s parent company, as a strategic intellectual

property advisor. In that role, he was responsible for all aspects of the company’s intellectual

property business. Mr. Armaly provided the corporate history of Rovi and TiVo and their

corporate predecessors. He testified about Rovi’s business, including the products and services it

offered to its customers, its licensing practices, and the revenues generated over the years. He

also described Rovi’s IP strategy generally, its research and development history and investment.

He worked behind the scenes in negotiations in late 2008 to January 2009 leading to the portfolio

licence agreement with Videotron.

[35] Mr. Thomas has a Master of Science in electrical engineering and is a named inventor on

all of the Asserted Patents other than the 629 Patent. Mr. Thomas was responsible for the

engineering of the products that were built. He testified that in 1993, companies started working

on IPGs, including TV Guide On Screen, StarSight, Jerrold and Scientific Atlanta. From 1996 to

2000, Mr. Thomas worked for TV Guide on Screen. He was on a team working in IPG product

development at TiVo at the time. He spoke to the industry’s evolution and the research and

development processes in Rovi’s early years. He provided the backgrounds of the inventors of

the Patents and explained the process that led to the inventions claimed by the Patents.

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[36] Between 2007 and 2014, Mr. Gaetje worked at Gemstar-TV Guide, which became Rovi

in 2009, as Vice-President, Intellectual Property Licensing. During his tenure of employment

with Rovi, Mr. Gaetje was responsible for all aspects of licensing for specific companies and

markets and became responsible for active negotiations within the U.S. and Canada. He spoke

about Rovi’s licensing practices generally, and the particular licence agreements that Rovi has

entered into, including in both Canada and the United States. He testified about Rovi’s licence

agreements with Videotron, including the negotiating history of those agreements.

[37] Rovi called one technical expert, Dr. Ravin Balakrishnan, who is a Professor of

Computer Science at the University Toronto. He was qualified to provide expert evidence on

areas of computer science including computer programing, interactive human computer

interfaces, including on television, mobile and personal computer platforms, data visualization

and interactive computer graphics.

[38] To close its case, Rovi called three expert witnesses who gave evidence relating to the

appropriate remedy: Coleman Bazelon, Andrew Harington and Sean Iyer.

[39] Dr. Bazelon holds a PhD in economics. He was qualified to provide expert opinion

evidence on economics, the valuation of intellectual property, market reconstruction, the

calculation of reasonable royalties in patent infringement cases, and damages quantification.

[40] Mr. Harington is a Chartered Accountant, a Chartered Business Valuator, and a Chartered

Financial Analyst. He was qualified to provide expert opinion evidence on investigative and

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forensic accounting, business valuation, and quantification of financial remedies, including

accounting for profits in patent infringement matters.

[41]

Mr. Iyer holds an M.A. in Economics. He was qualified to provide expert opinion

evidence on market research methods and conducting and designing surveys in the context of

intellectual property disputes. He prepared and oversaw the administration of a survey to

estimate the usage of the patented features by Videotron subscribers.

(2)

Videotron’s Witnesses

[42] For its part, Videotron called six lay witnesses: Caroline Paquet, Daniel Proulx, Mark

Christiano, Francis Claprood, Martial Gourde, and Mario Lessard. Mr. Christiano testified in

English, while the others testified primarily in French.

[43] Ms. Paquet is Videotron’s Vice-President of Marketing and Content. Her responsibilities

relate to marketing of Videotron’s services and arranging for the content available through its

video-on-demand [VOD] services and broadcast television offerings. She provided evidence

relating to Videotron’s marketing understanding, approaches and decisions relating to its

television services and how those approaches and decisions are received in the market. She also

provided evidence relating to such factors as pricing, system features and customer service. Ms.

Paquet spoke specifically about Videotron features alleged to be infringed. Her testimony was

that the absence of such features would not impact the subscriber base for Videotron.

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[44] Mr. Lessard, General Manager of Big Data Strategies and Business Intelligence, provided

similar evidence as Ms. Paquet relating to the value of Videotron system features in the market

and their impact on subscriber choice and loyalty.

[45] Mr. Proulx was the Senior VP Engineering with Videotron at the time Videotron was

negotiating a licence agreement with Rovi. He later became its Chief Technology Officer [CTO]

until his retirement in 2016. Mr. Proulx provided evidence relating to his role in Videotron, how

Videotron entered into its first licence agreement with Rovi in 2011 and the negotiating

objectives of Videotron. He spoke about the IP rights that Rovi was understood by Videotron to

have had at the time and the benefits perceived to exist for Videotron in obtaining a licence from

Rovi as it was about to launch its new illico 2 system.

[46] Mr. Christiano joined Videotron’s procurement department as Senior Director Strategic

Procurement and General Management and Chief Procurement Officer in September 2015. He

was involved in negotiations with Rovi for renewal of the Licence Agreement. He provided

evidence relating to the approach that Rovi took in the negotiations and the context for the

negotiations at Videotron. He spoke about issues discussed, including the expiry of many of the

patents in Rovi’s portfolio and the question of which patents Rovi alleged were infringed by

Videotron. He explained what led to Videotron’s decision to not renew the Licence Agreement.

[47] Mr. Claprood is a Senior Director in the Finance group at Videotron. He provided

evidence relating to the cost and revenue reporting structure at the different lines of business at

Videotron, particularly how Videotron tracks and reports its costs and revenues.

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[48] Mr. Gourde is a Senior Enterprise Architect at Videotron for its IT department. He has

been with Videotron since 2008 in various technical roles, primarily Director of illico Systems

and Application development. He provided evidence about Videotron’s commercial launch of

the illico 2 system in 2012 and generally described certain technical features including their

implementation.

[49] Like Rovi, Videotron called only one technical expert: Frank Sandoval. Mr. Sandoval

was qualified to provide expert opinion evidence on television STBs, including interactive

television features and user interactivity.

[50] The trial concluded with testimony of three experts on the issue of remedy: Andrew

Carter, Farley Cohen, and Itamar Simonson.

[51] Mr. Carter is a Chartered Professional Accountant [CPA] and Certified Licensing

Professional. He was qualified as an expert in the areas of intellectual property valuation,

licensing, and investment, including damages valuation in intellectual property disputes.

[52] Mr. Cohen is also a CPA. He was qualified as an expert in the areas of investigative and

forensic accounting, the quantification of economic damages, accounting of profits, lost profits,

business valuations and income determination.

[53] Dr. Simonson is a Professor of Marketing at the Graduate School of Business at Stanford

University. He was qualified as an expert in consumer behaviour, the role of price, brand, and

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product features/characteristics on consumer behaviour, and buying decisions, and as an expert

on survey methodologies.

(3)

General Observations

[54] I do not propose to repeat the evidence of the witnesses in these reasons and will instead

set out the most salient aspects of the evidence and how the facts, as I find them below, factor

into my decision.

[55] While the parties do not accept all of the evidence provided by the other party’s lay

witnesses, they do not question their credibility, with two exceptions. Rovi submits that Mr.

Lessard and Ms. Paquet were not credible and their evidence should accordingly be given little

or no weight. I will address Rovi’s concerns regarding the evidence of these two witnesses later

in these reasons when dealing with the issue of remedy. As for the remaining lay witnesses, I

found them to be generally credible in the sense that they were forthright, attempting to respond

honestly and accurately to the questions asked of them.

V.

The Technical Experts

[56] Each party introduced one expert to opine on construction of the elements of the Asserted

Claims, the credentials and characteristics of the skilled person, the state of the art and the CGK

of the skilled person, and infringement and validity issues.

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[57] It is trite to say that the role of expert witnesses is to assist the Court by providing

insights and opinions on topics that may be outside the Court’s experience. Dr. Balakrishnan

and Mr. Sandoval were subjected to exhaustive cross-examination at trial and a considerable

portion of the parties’ closing submissions is devoted to either the criticism of the expert

opposite or a defence of their own expert. As often happens in patent infringement cases, the trial

became a battle of the technical experts. My task is to determine which, if any, of the divergent

experts’ evidence to accept.

[58] In SNF Inc. v Ciba Specialty Chemicals Water Treatments Limited, 2015 FC 997 at para

64, Mr. Justice Michael Phelan set out some of the factors to be considered in evaluating the

credibility and weight of an expert’s evidence, including whether the witness:

• was intransigent, particularly during cross-examination and

evaded questions that could expose any frailties in his

theory and was intent on reiterating his views, when he

deemed it necessary, irrespective of whether those views

were responsive to the questions at hand (including by

providing answers that went much beyond the question put

to the witness);

• emphasized those areas favourable to the expert’s

interpretation and reluctant to respond to other questions;

• frequently would not concede something which seemed to

be obvious or logical and when the concession came, did so

reluctantly and grudgingly;

• was forthright, fair, thoughtful and reasonable in answering

all questions asked of him/her during both direct and cross-

examination;

• in testifying as to the teachings of the Prior Art and the

patent in issue, varied their interpretation in order to reach

the desired result.

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[59] Bearing these factors in mind, I have set out in the section below the main criticisms

levelled against the two technical experts and my general observations as to their credibility and

the reliability of their evidence.

(1)

Dr. Balakrishnan

(a)

Relevant Experience

[60] Videotron initially objected at trial to Dr. Balakrishnan’s expertise to opine about

television and mobile platforms. The objection was withdrawn after it was agreed that the

concern raised went to weight of his evidence rather than to an actual qualification. Videotron

raised a new objection regarding Dr. Balakrishnan’s expertise in its closing submissions, this

time arguing that Dr. Balakrishnan did not have “hands-on” experience with either STBs or IPGs

at the relevant time. I reject this argument.

[61] Dr. Balakrishnan’s academic background is quite impressive. He obtained a BSc in

Computer Science in 1993, followed by a MSc in 1997 and a PhD in 2001. He has over 30 years

of experience studying and teaching computer programming and human-computer interaction

and has been in the field since 1993.

[62] While Dr. Balakrishnan may not have real-world experience with either STBs or IPGs

other than at a high level, he worked for a software company during the relevant time period that

provided software for various media applications, including the design of media software for

STBs and guides.

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[63] The fact that Dr. Balakrishnan could not recall what specific STBs or features he or his

team may actually have had access to and tested in the 1990s has no bearing on his expertise in

the subject areas of his evidence. His role was to opine about the Patents, the CGK and prior art

from the perspective of the skilled person, and his own idiosyncratic knowledge is not material.

[64] I am satisfied that Dr. Balakrishnan’s research work gave him a fundamental

understanding of IPGs and STBs, as they existed in the relevant timeframe, what was available

technologically, and their limitations.

(b)

Shortcomings in the Evidence

[65] Videotron submits that Dr. Balakrishnan’s evidence suffered from numerous

shortcomings, including failing to read the prior art as a skilled person with a mind willing to

understand, being unprepared to give reasonable concessions and resisting providing answers to

direct questions posed to him.

[66] As explained below, I share the same concerns. I found Dr. Balakrishnan’s evidence, and

in particular his approach to the prior art, to be less persuasive, consistent, objective and

balanced than one would reasonably expect of an independent expert.

[67] The legal principles applicable to claim construction are clear. Claims of a patent should

be read with a mind willing to understand. The language of the claims must also be examined in

an informed and purposive way: Whirlpool Corp. v Camco Inc., 2000 SCC 67 at para 49

[Whirlpool]. These principles apply equally to reading prior art. As stated by the Supreme Court

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of Canada in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 SCR 265

[Sanofi], at para 25, the skilled person is “taken to be trying to understand what the author of the

description [in the prior patent] meant.” Anticipation and obviousness analyses must also

proceed as part of a flexible, contextual, expansive and fact driven inquiry. Yet, Dr. Balakrishnan

repeatedly failed to adhere to these principles. He instead examined the prior art looking for

specific claim language and disregarded references if he found the language missing. At trial, he

was also reluctant to agree to propositions put to him by Videotron’s counsel that were self-

evident or would favour Videotron’s position. To illustrate this point, I provide here but one

example.

[68] The asserted claims of the 061 Patent focus on a user using a remote device with a

limited guide to schedule a recording on a device inside the user’s home. There was initially a

dispute between the experts whether there was disclosure of remote access to a STB on a home

network in DAVIC¹.

[69] DAVIC is a prior reference relied upon heavily by Videotron to make its invalidity

attacks on the asserted claims of the 061 Patent, the 344 Patent and the 870 Patent. DAVIC is the

culmination of the work of the Digital Audio-Visual Council [Council], an industry body based

in Geneva. The Council was working from the mid to late 90’s on standards for digital audio-

visual applications based on submissions from equipment manufactures, service providers and

government organizations and non-members. Published in 1998, DAVIC is a lengthy, detailed

document that provides a full specification that defines “the minimum tools and dynamic

¹DAVIC 1.3.1 Specification Part 1 [DAVIC]

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behaviour needed by digital audio-visual systems for end-to-end interoperability across

countries, applications and services.” (My emphasis.)

[70] DAVIC describes at section 7.2, under the heading of “HOME NETWORK”, the ability

to exchange information, potentially in a direct and simple manner, between devices on a home

network, accompanied by a simple illustration (which was the subject of much discussion at

trial).

As multiple digital services begin to penetrate the consumer

market, the need will arise for an in-home digital network that will

provide selectable access to these services from multiple in-home

devices. Furthermore, the introduction of digital storage devices in

the home will expand this need. Home networks for DAVIC must

support the functions required to link digital consumer devices so

that information may be exchanged among these devices in a

simple and direct manner.

[71] Section 7.3 of DAVIC also provides a Function Decomposition Table listing a number of

functions anticipated for a fully defined DAVIC system, including function 15.17 that is depicted

below, highlighted in a green box.

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[72] During his cross-examination, Dr. Balakrishnan testified he did not see “express

disclosure” of remote access to a STB on a home network in DAVIC. He was cross-examined at

length on this point and it is in that context the following exchange took place:

Q. What I'm doing is I'm taking what someone skilled in the art

understands by reading DAVIC and I'm mapping it on to the

claims of the 061. So we have already identified what someone of

skill in the art understands from reading DAVIC. What I'm

suggesting to you is that DAVIC discloses a set-top box in the

home and that's something that someone of skill in the art would

understand when they are reading the section of DAVIC that we

just went through.

A. Well, are we talking about the section in DAVIC 15:17? It just

says the network should support remote access. It doesn't say

anything about a set-top box in the home in that section that you

reference. So I just want to make sure. Which part of DAVIC are

you talking about?

Q. 15.17, is it not crystal clear to you, as somebody putting who's

putting this in front of a person of skill in the art at the time, that

we're talking about remote access to something like a set-top box,

the set-top box being inside the home and the access being outside

the home? And I'm looking now at page 11 of Exhibit 90, the

bundle.

A. I don't think that is necessarily what that sentence is saying.

This could also be saying the network could be supporting remote

access outside the home. It doesn't mean remote access necessarily

to the local set-top box. It could be remote access to the network,

to the headend as well.

Q. We're talking about the home. You see that?

A. I see that. This is saying access from a device outside of the

home. This is saying the network should support remote access

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from a device outside the home. So I could be accessing the

headend from outside the home, that is one reasonable

interpretation of this. It doesn't say that the network should support

remote access from outside the home to a local IPG in the home.

Q. That's what you're saying would be the only thing that someone

would take when they read this? Someone skilled in the art would

only think, when they read that sentence, that it was relating to

access to a central server of some kind as opposed to access to the

set-top box in the home? The person of skill in the art would not

think at all about access to the set-top box in the home?

A. I think the first thing that would come to mind is that this is

access to the network from outside the home, just as the local set-

top box in the home is accessing the network. So I don't think the

second interpretation, which accords one more step of accessing

the network remotely and then accessing the home device, I don't

see that expressly disclosed in DAVIC.

Q. I'm not talking about express disclosure here. What I'm talking

about is what someone skilled in the art, knowing that DAVIC is

talking about set-top boxes and cable systems, when it says that

you can get access outside the home, that it would be -- one of the

immediate understandings that a person of skill in the art would

have was that the network would allow you to have access

remotely from outside the home to what is inside the home. Are

you denying that someone of skill in the art would come to that

conclusion reading that sentence?

A. I don't think that's the immediate conclusion that one would

come to reading that sentence as you phrased it.

Q. Would it be the second thing that would happen within the

minute or two that the reader has to take to read this one sentence?

A. It might be something that comes in if other things are

imported, but I don't think your minute or two characterization is

appropriate.

[73] The experts had agreed that the skilled person would have familiarity with STBs. The

disclosure of the 061 Patent itself states that IPGs are typically implemented on STBs located in

the homes of users. The experts had also agreed that the skilled person would also be aware of

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home networks. Knowledge of these basic concepts is especially true for skilled persons coming

from the computer engineering world. I therefore find it perplexing that Dr. Balakrishnan would

insist at trial that DAVIC doesn't say anything about a STB in the home. This is plainly obvious

simply by looking at Figure 7.2. It was also peculiar that he would maintain that DAVIC does

not disclose remote access to a home network, when this very function is described in DAVIC’s

Function Decomposition Table under the prominent heading of HOME NETWORK

FUNCTIONS.

[74] Dr. Balakrishnan sought to marginalize the teaching of DAVIC on the grounds that it did

not provide information about what technology was at the time implemented in the field and that

it was more of a “wish list” of desired functions. He also described DAVIC as “arcane”. I find,

to the contrary, that DAVIC was a hot topic at the time. It provides a snapshot of what people in

the industry understood to be the evolving set of features that would be available on television

platforms. The individual features described in DAVIC were so known in the industry that

feature standardization was becoming a requirement.

[75] DAVIC was a must-read for anyone interested in digital audio-visual applications,

including IPGs. It also proved to be a useful, objective and probative resource for me.

[76] Dr. Balakrishnan adopted a similar dismissive and myopic approach to other prior art

cited by Videotron, such as when he would refused to acknowledge that there was implicit

Page: 25

disclosure of a STB in Florin²or an IPG in Blake³, when a fair reading of the prior art references

as a whole would indicate that they did.

[77] I find that Dr. Balakrishnan did not approach the assessment of the prior art from a

position of neutrality. At trial, he displayed a marked tendency to hold on to a view or position

that could be perceived as assisting Videotron or damaging to Rovi.

[78] It is important to note that the teachings in the pieces of prior art were not minor

peripheral matters. They went to the very heart of Videotron’s infringement defence and validity

attacks.

[79] In terms of demeanour, Dr. Balakrishnan was invariably respectful and courteous.

However, he could be pedantic and exacting at times, to the point of evasiveness. He would split

hairs over terms used by Videotron’s counsel when being cross-examined.

[80] I was particularly struck by his response to a fairly benign question posed by counsel.

When asked whether he agreed that Microsoft, Apple and Alias “as computer companies” were

interested in the 1990s in television technology like STBs, Dr. Balakrishnan ignored the gist of

the question and went off on a tangent.

A. I would say I'm not sure I agree with your characterization that

these are computer companies per se. These are very large

conglomerates. They are technology companies that deal with

2

US5,583,560 entitled “Method and Apparatus for Audio-Visual Interface for the Selective Display of Listing

Information on a Display”, published on December 10, 1996 [Florin]

3

PCT/US97/15420 entitled “Schedule System with Enhanced Recording Capability” published on March 12, 1998

[Blake]

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computation in various forms. Certainly Apple and Microsoft and

Alias were interested in all forms of computation at that time.

[81] There were other weaknesses in Dr. Balakrishnan’s opinions and testimony that were

brought out in cross-examination. Dr. Balakrishnan would respond to straightforward questions

by expostulating in considerable and extraneous detail. He would preface many of his answers

with the words “at a high level”, in an apparent attempt to leave himself room to manoeuvre in

case counsel tried to pin him down on a particular point. He was non-responsive to many

questions put to him by Videotron’s counsel that invited a simple yes or no answer, to the point

that I had to admonish him to answer the question.

(c)

Credibility and Reliability

[82] While I did find some aspects of Dr. Balakrishnan’s evidence to be both helpful and

reliable, I have approached his reports, opinions and conclusions with great caution and

skepticism. His general approach towards the prior art was particularly troubling and only served

to raise questions about the reliability of his evidence as a whole.

(2)

Mr. Sandoval

[83] Rovi submits that Mr. Sandoval is not a credible or reliable witness, citing his lack of

relevant experience, hindsight bias, failure to act independently with respect to the prior art, and

shifting claims construction. As explained below, while there were some aspects of Mr.

Sandoval’s evidence that gave me pause, overall I found him to be a straightforward, credible

and reliable witness.

Page: 27

(a)

Relevant Experience

[84] Mr. Sandoval is a technology contractor with his own consulting company focussed on

television related technology. He has degree in English with a minor in Computer Science

obtained from the University of New Mexico. Mr. Sandoval worked as a software engineer from

1985 to 1999. In 2001, he was hired at CableLabs as Principal Software Architect. His work at

CableLabs included developing the OCAP platform, a standard which Videotron later adopted.

[85] Mr. Sandoval candidly admitted during his cross-examination that prior to 2001, he had

no cable television experience, no mobile device experience, no telecommunication industry

experience and no experiences with STBs or IPGs. Rovi submits that Mr. Sandoval’s evidence

should be given little weight because he has no relevant experience in the field of the invention

at the relevant dates of the Patents.

[86] While that may be the case, there is no requirement that an expert actually be in the field

of the invention at the relevant time in order to comment on how a skilled person would construe

a patent and what CGK the skilled person would possess. Nor, for that matter does expert

evidence as to the state of the art at a particular point in time need to come from a person who

has the requisite skills: Halford v Seed Hawk Inc, 2006 FCA 275, at para 17.

[87] Mr. Sandoval devoted the majority of his professional career to software engineering and

development of applications for audio-video enabled embedded systems. Moreover, he was the

only expert who had any hands-on experience developing user interfaces for embedded systems

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during the relevant time. In the circumstances, I found Mr. Sandoval amply qualified to opine on

television STBs, including interactive television features and user interactivity at issue in these

proceedings.

(b)

Hindsight Bias

[88] Rovi submits that Mr. Sandoval’s job at CableLabs involved looking back at the

technology to build on, which Rovi claims placed him at significant risk of perceiving the

inventions of the Patents as being simpler and more predictable than they were before the

technology was developed.

[89] Mr. Sandoval could not speak from personal knowledge acquired at the time as to the

CGK at the dates relevant to the Patents (1998 and 1999). His view of the CGK, and other

related issues in relation to this matter, had to be reconstructed from other information. There is

therefore reason to be concerned about the reliability of this type of look-back evidence and the

risk of hindsight bias. Hindsight bias is a danger that experts and the Court must be wary of in

any patent litigation, as experts are inevitably asked to opine on technology that was developed

in the past, often with a lengthy intervening period where technology has accelerated

appreciably.

[90]

My concerns about hindsight bias on the part of Mr. Sandoval were allayed somewhat by

the fact that he was looking back at the technology commercially deployed in homes that had not

changed very much over the previous few years. Moreover, Mr. Sandoval did not come out of

nowhere to become CableLabs’ chief software architect. Between 1985 and 1999, he worked at

Page: 29

several companies developing software for interactive applications, including interactive

multimedia platform on laser discs, Compact Disc Interactive and in the gaming industry for

3DO and Electronic Arts. At the time, 3DO was also working with other companies to provide

STB systems for on-demand video streaming. While Mr. Sandoval may not have been a member

of the team working on the project, he was aware and interested in what the team was doing.

[91] I also note that Mr. Sandoval conducted his research to acquaint himself with matters that

would have been relevant to and known to at least some of the skilled team back in 2001. He was

required to understand the technology historically in his new position. He also based his opinions

on objective information that preceded the priority dates of the Patents, as well on matters that

arose directly out of his principal expertise.

[92] Mr. Sandoval is an expert at developing applications on embedded devices in general.

From his perspective, whether presenting the content from a multi-media disk or from a

television tuner, the challenges, the design principles, and the mechanisms to build applications

on an embedded device, are the same. He was therefore in a good position, given his extensive

experience, to give useful evidence about what the skilled person would have known and

understood at the relevant time.

[93] I remain mindful that some degree of hindsight may be unavoidable. The issue then

becomes a matter of weight to be given to the evidence, as was succinctly stated by Madam

Justice Karen Sharlow in Apotex Inc v Bayer AG, 2007 FCA 243 at paragraph 25:

[25] This does not mean that the trier of fact is required as a

matter of law to reject an expert’s hindsight analysis. After all, the

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evidence of a party alleging invalidity for obviousness is

necessarily based to some degree on hindsight because it is

addressed to a hypothetical question about a point of time in the

past. However, as a factual matter, an allegation of obviousness

may be weakened if the evidence does not explain, directly or by

inference, why the claimed invention was not discovered by others.

(c)

Independence

[94] Mr. Sandoval acknowledges that he relied on prior art provided by Videotron and did not

conduct his own prior art search. According to Rovi, Mr. Sandoval simply took the prior art as

relevant and, knowing that it was in Videotron’s interests for him to find the Patents invalid,

found every single piece of prior art to either anticipate or render obvious one or more of the

Patents. This approach is said to cast significant doubt on Mr. Sandoval’s independence. I

disagree.

[95] Generally, experts are expected to conduct their own prior art searches, and not simply

rely on documents provided by counsel: Astrazeneca Canada Inc v Apotex Inc, 2015 FC 322 at

para 203. As Mr. Justice Robert Barnes explained at paragraph 231 of that judgment:

[a]n expert who carries out an obviousness analysis largely or

solely on the strength of prior art references selected by retaining

counsel runs a real risk of offering a hindsight opinion.

[96] It remains that the choice of prior art is entirely in the hands of the party (Ciba Specialty

Chemicals Water Treatments Limited’s v SNF Inc, 2017 FCA 225 at para 60). There is nothing

untoward about a party pointing the expert to relevant prior art, so long as the accompanying

instructions are neutral, transparent and do not constrain the ability of the expert to prepare their

opinion. In fact, in case management, this Court encourages parties to narrow the scope of the

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prior art and focus only on those references that are relevant to the issues raised in the

proceeding.

[97] In the present case, the parties agreed that all the prior art cited by Mr. Sandoval was

available to the public at the relevant time. Mr. Sandoval confirmed that the prior art references

were relevant to the claims he was asked to construe. Further, there is no indication that Mr.

Sandoval failed to include in his reports everything he personally regarded as relevant to the

expressed opinion.

[98] Rovi did not identify anything else in the prior art that could reasonably lead to a

different conclusion and was not drawn to Mr. Sandoval’s attention. In the circumstances, I am

satisfied that the lack of independent research ultimately goes to weight to be given to his

evidence, not its admissibility.

(d)

Shortcomings in the Evidence

(i)

Defining the Skilled Person

[99] Defining the skilled person is the first step for the Court and is foundational to

construction and validity. The skilled person is a fictitious construct that represents an average

worker competent in the field or fields relevant to the invention at the relevant timeframe. The

person skilled in the art can represent an individual, or a team of individuals whose conjoint

knowledge is relevant to the invention in suit (Pfizer Canada Inc v Pharmascience Inc, 2013 FC

120 at para 28 [Pfizer 2013 FC]).

Page: 32

[100] Mr. Sandoval received clear instructions from Videotron that are consistent with the

above jurisprudence. However, when pressed during cross-examination whether he understood

the notional skilled person to be a person or a team, he maintained that “it would have to be a

person”. He also asserted that a marketing person could be a skilled person with respect to the

Patents. These misconceptions are said to have coloured Mr. Sandoval’s whole approach to the

CGK, the Patents and the prior art.

[101] Mr. Sandoval had great difficulty articulating his definition of the skilled person at trial.

His evidence was at times inconsistent, even incoherent.

[102] Notwithstanding, I find that he was alert to the fact that the skilled person was a

“notional” person. He explained that this person “would have had access to and be able to work

with software engineers and developers either as part of the same company or through outside

vendors.” I am satisfied that he understood that the notional person would work with others as a

team.

[103] Rovi tried to make hay out of Mr. Sandoval’s assertion that a marketing person could be

a skilled person. However, this answer was only provided in response to a hypothetical question

posed to Mr. Sandoval in cross-examination. He immediately added that the person in question

would need to have sufficient technical knowledge of the domain to be considered a skilled

person. There was no suggestion that Mr. Sandoval ever contemplated a marketing person to be

included in the team of skilled people.

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(ii)

Using the Wrong Lens

[104] When Mr. Sandoval was retained as an expert by Videotron, he was instructed that the

skilled person is not inventive by nature. In defining the skilled person in his expert report on

validity of the Patents, Mr. Sandoval stated that the person reading the Patents “would have been

focused primarily on new technology for the cable industry rather than on simply maintaining

existing infrastructure.” Mr. Sandoval struggled during his cross-examination to explain what he

meant by the concept of a skilled person “focussing on new technology”, at one point suggesting

that “one can innovate without being inventive”.

[105] Rovi submits that Mr. Sandoval in effect defined an inventive skilled person, which

would conflict with the description of the skilled person by Mr. Justice Rothstein, in Sanofi at

para 52, as a “… technician skilled in the art but having no scintilla of inventiveness or

imagination …” I disagree.

[106] I found that Mr. Sandoval was instead grappling, as I have had to do, with the question

that has to be asked in an obviousness case. This involves a comparison between the state of the

art and CGK of the skilled person, on the one hand, and the inventive concept of the patent’s

claims, on the other. (Sanofi at para 67). If there is no difference between the two comparators,

the claims are obvious. If there is a difference, the claims are obvious if the skilled person would

not need to take any inventive steps to bridge the gap. In other words, a step may be taken that

can be viewed as different, but would not necessarily be inventive.

Page: 34

[107] While the hypothetical skilled person is deemed to be uninventive as part of their

fictional personality, they are thought to be reasonably diligent in keeping up with advances in

the field to which the patent relates. As stated by Justice Binnie in Whirlpool at paragraph 74, the

CGK of the skilled person undergoes “continuous evolution and growth.” Mr. Sandoval clarified

during his cross-examination that he appreciated that this was a nuanced topic. In my view, there

was therefore nothing untoward with Mr. Sandoval defining the skilled person as keeping abreast

of new technology.

(iii)

Shifting Construction

[108] Rovi submits that Mr. Sandoval’s evidence with respect to construction should be

approached with grave caution because he exhibited a total misunderstanding of claims

construction and shifted his construction as a result before and after seeing the illico system.

Videotron maintains that Mr. Sandoval has been consistent in his approach to construction.

[109] The parties agree that claim construction is an objective question of law, concerned with

what a reasonable skilled person would have understood the author (inventor) to mean. It is not a

results-oriented approach, and should be undertaken without regard to either infringement or

validity: Whirlpool at para 49(a).

[110] During his cross-examination, Mr. Sandoval was asked if he understood that he should

not shift his construction with an eye to validity or infringement. He responded: “I’m not sure if I

understand that explicitly.” Mr. Sandoval’s response is surprising, to say the least, given that he

had received clear legal instructions on this point.

Page: 35

[111] Rovi offers the following example of what it views as “shifting” interpretation by Mr.

Sandoval. In his validity report, Mr. Sandoval provided his construction of Claim 79 of the 629

Patent, including the element “Means for providing a user with an opportunity to select directory

entry information.” He stated:

“…This is also part of the directory listing screen. While only the

abstract idea of an 'opportunity' is stated in the claim, the skilled

person would likely think of particular interactive parts of a user

interface that allow a user to select a directory entry information.

For example, this could be a selection that the user can manipulate

using cursor keys, such as on a remote control…”

[112] Dr. Balakrishnan finalized his expert report on infringement the same day Mr. Sandoval

signed his validity report. Dr. Balakrishnan set out the basis for his opinion that Videotron’s

illico service falls within the scope of the asserted claims of the 629 Patent based on testing he

conducted. He argued that “the illico program guide displays the ‘List of Recorded Programs’

(directory entry information) via the directory listing screen in the form of a grid (means for

indicating directory entry information), with each line item corresponding to a different recorded

program.” (My emphasis.) A screenshot of the grid, highlighted in red by Dr. Balakrishnan, is

reproduced below.

Page: 36

[113] Mr. Sandoval responded as follows in his infringement report.

Claim 79 also includes the following element: “means for

providing a user with an opportunity to select directory entry

information” - Dr. Balakrishnan does not identify any particular

user interface that corresponds to this “means” or provide a

meaning for this term, but says that a user can use the up/down

buttons on the remote control to change the item that is currently

highlight in the list. In my view, more is required than simply

moving a highlight up and down to match this element of the claim

since the claim requires a user to actually “select” an item, not

merely cycle to it. For example, the 629 Patent states "[i]f user

interface 46 is a remote control such as remote control 40 of FIG.

2, this can be done by positioning highlight region 95 over the

desired entry using 'up' and 'down' keys, and then selecting the

entry, or by selecting an on-screen 'info' option."10…(his

emphasis)

[114] At trial, Mr. Sandoval was questioned about the apparent change to his original

construction of the element in dispute.

Q. In your -- when you were doing your construction, you stated

that selection could be – the selection that the user can manipulate

using cursor keys such as on a remote control. You did not add

further constraints to your construction at that time?

A. That's right. So that sort of was maybe not worded as crisply as

it could have been. So probably the word "selection" could have

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been sort of, you know, indicating a target for selection. But you're

right, the words say what they say.

Q. And that was the construction you came to before you turned to

your infringement analysis, correct?

A. Well, sure, yeah, those were the words that were written down

first.

[115] Rovi submits that Mr. Sandoval shifted construction in this case, as well as at various

other points in his analysis of the Patents, to suit Videotron’s purposes. I disagree. In this

particular case, Mr. Sandoval explained why the construction in his validity report of the element

in dispute required more elaboration.

A. Well, you know, as we’ve seen over the last couple days, you

know, once you peer into these seemingly innocuous words, then

they start to become much more nuanced. You know, the human

mind being what it was, if I had come back to 419 the next day, I

may have said -- thought to myself, Frank, is selection really the

right word there, is that really what's going on. So, you know, I

may be guilty of having changed it in light of the new information

or maybe just really appreciating the nuance that's behind that

behaviour.

[116] It is was only upon reviewing Dr. Balakrishnan’s infringement report that Mr. Sandoval

twigged to the fact that his description of the concept of selection in his original construction

may have been wanting and required further elaboration. While this may bring into question the

reliability of his evidence on this point, I see no inconsistency in the way he construed the term.

[117] I should add, an expert cannot be criticized for revisiting their opinion in light of a

contrary view expressed by another expert, or new or nuanced arguments that could not have

Page: 38

been anticipated, so long as it is done in a transparent manner. Otherwise, as Mr. Sandoval

elegantly stated:

…if there is no opportunity to come with greater understanding

and more time to ponder, if that’s not, you know, something that's

allowable, then we'll have to constrain ourselves to what's been

written down.

[118] The court would not be well served by an expert who is not prepared to acknowledge

frailties in their evidence, or who doggedly sticks to their position and refuses to concede the

possibility of a reasonably supported opposing view. I should add that revising one’s opinion on

construction does not necessarily render the evidence unreliable. In some rare cases, rather than

weakening the evidence, it may very well strengthen it.

[119] I am satisfied that to the extent Mr. Sandoval may have varied any of his opinions, it was

more the product of his willingness to assist the Court than an attempt to dissemble. The role of

the technical expert is, after all, to assist the Court and bring out, in an objective, consistent and

coherent manner, the technical aspects with which the Court has to wrestle.

(e)

Lack of Methodology

[120] Rovi criticizes Mr. Sandoval for failing to undertake his anticipation analysis and

obviousness inquiry on a claim-by-claim basis. Given the lack of rigour with which Mr.

Sandoval’s analysis was carried out, it was at times difficult to appreciate what he considered in

reaching his conclusions. The brevity of his analyses certainly goes to the weight to be given to

his evidence.

Page: 39

(f)

Credibility and Reliability

[121] I found Mr. Sandoval to be a good witness. He was self-effacing in his acknowledgement

that there were at times issues with some of his evidence. Where any errors or inconsistencies in

his evidence were pointed out to him, he readily admitted to mistakes he may have made. He

was a very transparent witness who gave his evidence in what I considered to be an objective and

balanced manner. His plain and candid evidence was both helpful and appreciated.

[122] While Mr. Sandoval may not have been a perfect witness, perfection from a witness is

neither required nor realistic. I found Mr. Sandoval to be a knowledgeable, objective and

credible witness doing his best to assist the Court. While I do not accept all of Mr. Sandoval’s

evidence, I tended to prefer his opinions and conclusions over those of Dr. Balakrishnan when

they conflicted.

[123] Mr. Justice George Locke, then of this Court, stated in Shire Canada Inc. v. Apotex Inc.,

2016 FC 382 at para. “…In the end, I remain of the view that I am mainly interested in the

substance of each expert’s opinion and the reasoning that led to that opinion.” Despite the

shortcomings in evidence of the two experts, I was able to reach my own conclusions regarding

validity and infringement of the Patents.

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VI.

The Skilled Person

[124] The first step in a patent action is to construe the claims at issue. A patent must be

construed “through the eyes and with the common knowledge of a worker of ordinary skill in the

field to which the patent relates.” Whirlpool, at para 53.

[125] The skilled person has been defined in Free World Trust v Électro Santé Inc, 2000 SCC

66 at para 57 [Free World Trust], at para 44 as:

…a hypothetical person possessing the ordinary skill and

knowledge of the particular art to which the invention relates, and

a mind willing to understand a specification that is addressed to

him. This hypothetical person has sometimes been equated with

the "reasonable man" used as a standard in negligence cases. He is

assumed to be a man who is going to try to achieve success and not

one who is looking for difficulties or seeking failure.

[126] As stated earlier, the skilled person is unimaginative and uninventive, but has an ordinary

level of competence and knowledge incidental to the field to which a patent relates and is

reasonably diligent in keeping up with advances.

[127] The skilled person brings background knowledge and experience to the workbench and

can make deductions based on the information available. (Valeant Canada LP/Valeant Canada

S.E.C. v Generic Partners Canada Inc, 2019 FC 253, at para 44)

[128] Because of the common subject area of the Patents, both Dr. Balakrishnan and Mr.

Sandoval agree that the skilled person to whom the Patents are addressed is the same for all four

patents. They also generally agree on the skilled person’s technical qualifications.

Page: 41

The Patents are addressed to electrical engineers and computer

scientists working in the areas of electronic content delivery,

electronic program guides, television video signal processing,

graphical user interfaces, cable or satellite television systems and

content distribution, set-top boxes, and multimedia systems. The

Skilled Person would have at least a few years of industry

experience.

[129] Where the experts part ways is on the requirement for a formal degree. Dr. Balakrishnan

argues that the skilled person would have an undergraduate degree in computer science,

electrical engineering, computer engineering or applied mathematics, as well as two or more

years of experience in some or all of these areas. According to Dr. Balakrishnan, a technical

degree provides a foundation for understanding the relevant technologies – knowledge that

would not easily be obtained working in the industry. Mr. Sandoval does not agree that a formal

degree is required, but rather would be expected, and that industry experience could suffice even

without a formal degree.

[130] Any distinction between the details of the two proposed definitions is neither substantive

nor determinative. However, given that I must choose between the two, I prefer Mr. Sandoval’s

definition to that of Dr. Balakrishnan for the following reasons.

[131] First, Dr. Balaskrishan argued that the skilled person would need to have a bachelor’s

degree in any one of four different fields. However, no explanation was provided as to what

specific knowledge transcends those particular fields that would provide relevant technical

background required by the skilled person.

Page: 42

[132] Second, there was no issue identified where Dr. Balakrishnan found the formal

credentials of the skilled person to be directly relevant other than a bald statement that “it is

about understanding the context of each patent and understanding what’s possible and not

possible.” Ironically, Dr. Balakrishnan relied on the skilled person not appreciating the

applicability of computing software techniques to evolving STB hardware in his obviousness

analysis.

A. I’m suggesting that one of skill in the art for these patents as

I've identified the level of skill would not necessarily be familiar

with the level of advanced technology that someone like myself at

that time would have been familiar with. And even if they were

familiar with it they would not necessarily have borrowed from

those technologies to apply it to the set-top boxes, as I've described

in my report, because they would have understood that the set-top

box had limitations that did not allow for such importation directly

without significant modifications.

[133] Third, Dr. Balakrishnan testified that having a minor in one of the fields identified above

would “typically” not provide sufficient fundamental technical background for the skilled

person. This would imply that there could be other ways of obtaining such a background. In my

view, the necessary general knowledge and skill to understand the technology at issue in this

case could be acquired by practical experience, instead of study.

[134] Accordingly, I find that the skilled person consists of a team of electrical engineers and

computer scientists familiar with the general technology landscape [Skilled Person]. The

knowledge of the Skilled Person includes experience and information relating to digital systems,

processors, computers, computer storage systems, computer networks and the Internet. The

Skilled Person would have at few years of experience in the field in order to obtain the set of

skills and knowledge described in paragraph 128 above. Although the Skilled Person would not

Page: 43

necessarily have had an undergraduate degree, an undergraduate degree in computer science,

communications or electrical engineering would be expected.

[135] I also agree with Mr. Sandoval that the Skilled Person would also have been focused on

new technology for the cable industry in the market. The Skilled Person is not a dullard, but

rather a competent worker who keeps up to date with the relevant literature.

VII.

The State of the Art and Common General Knowledge

[136] The second issue the Court must decide is how to define the CGK of the Skilled Person.

As stated earlier, CGK means knowledge generally known by persons skilled in the relevant art

at the relevant time. This knowledge undergoes continuous evolution and growth (Sanofi, at para

37, Whirlpool at para 74).

[137] The CGK distinguishes the body of information that is widely recognized from that

which is simply publicly available. Individual disclosures may become CGK, but only when they

are generally known and regarded as a good basis for further action: Eli Lilly & Co v Apotex Inc,

2009 FC 991 [Eli Lilly 2009] at para 97).

[138] The parties agree on the publication dates of the prior art cited by Videotron. Moreover,

there was no suggestion that the prior art would be difficult to find or would not have formed the

state of the art.

Page: 44

[139] There was also substantial agreement about the CGK. Since the Patents have priority

dates in a short window of time, there was considerable overlap. To the extent there is any

difference in the CGK or prior art between the priority dates and filing dates of any of the

Patents, it will be highlighted at the appropriate time.

[140] Based on the evidence, I find that the CGK of the Skilled Person would encompass the

following key concepts and skills from a number of technologies in the mid to late 1990s:

a)

b)

c)

Television delivery technology - both analog and digital - to STBs in the home.

Computing technology such as personal computers, Windows 95 and the Internet.

STB technology at the time, including the software and applications that operated

on STBs, such as interactive guides and other interactive features including Pay-

Per-View, and VOD.

d)

e)

Designing and writing software for STBs either directly or using the services of

contractors/vendors.

Computers and other electronic devices could be networked together and such

networks were becoming much more prevalent.

[141] I further find that the following mainstream ideas would have been well known to the

Skilled Person:

 IPGs,

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 networking devices and remote access networks,

 digital recording of programs onto hard disks and STBs, \

 converging technologies,

 home and general computer networking,

 Moore’s law,

 head-end/distributions systems,

 television delivery systems,

 transition from analog to digital cable systems, and

 satellite systems.

[142] What follows is largely excerpted from Mr. Sandoval’s validity report which fairly

summarizes the start of the art and the CGK. I have also included my findings regarding certain

areas where there was no meeting of the minds.

(1)

State of the industry in the late 1990s

(a)

Television Delivery Technologies

[143] In decades past, television programs were generally provided in the form of over-the-air

[OTA] analog signals received by TV antennae in users’ homes.

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[144] Cable television was subsequently developed, and it provided a different way of

delivering television programming to consumers.

[145] As of the late 1990s, there were also satellite television delivery systems available for

subscribers in Canada and the U.S. Satellite delivery systems used digital delivery of television

using satellites to relay signals from a single base station to digital equipment at the subscribers’

home.

[146] The late 1990s were a time of transition in the cable television industry, including in

North America. Most of the existing cable infrastructure at the time was based on analog

technology, but most cable operators were in the process of testing or anticipating a move to

digital distribution.

[147] Most of the existing cable infrastructure at the time was based on analog technology.

(b)

Analog Cable Systems

[148] Analog TV cable distribution involved acquiring and then simultaneously sending out a

number of analog TV channels on predefined frequencies over cables to subscribers’ homes.

These signals were sent over the cable systems from “head-end” equipment at the cable

operators’ facilities. The head-end is the equipment at the cable operator's facility that transmits

content over the network to the STBs at the consumer homes. This equipment included systems

for actually transmitting the content over the cable network in a format that could be received by

the STBs.

Page: 47

[149] The analog signals that represented the TV channels would typically travel over co-axial

cables into the subscriber's premises.

[150] Typically, the cable would terminate at a STB at the subscriber premises near a television

set. STBs were consumer electronic devices, typically distributed by a cable company to their

subscribers in the 1990s, and usually rented or included in the subscription. They were also used

in satellite television systems at the end of the 1990s. The STBs were typically manufactured by

one of several equipment manufacturers, and then distributed by the cable company to

subscribers of that company.

[151] A main function of the STB was to “tune” to the channel that the subscriber wanted to

watch. The cable provided all available channels to the subscriber’s STB and a control device (in

the 1990s typically a wireless, handheld remote control) would allow the subscriber to input the

desired channel to the STB circuitry. As a result, the STB system would then effectively select

the right signals from the many that were available on the cable for presentation to the TV set.

The STB could also provide other functionality, beyond merely selecting the desired signal from

the cable input, such as decrypting premium or speciality channels that were available at a

defined fee.

[152] In general, analog systems for the delivery of television signals were well known by the

1990s, having been in operation from dawn of television for broadcast systems and from the start

of the cable system era. It was common usage among cable customers to connect a VCR input to

a STB output and record broadcast programming for later playback.

Page: 48

(c)

Digital Cable Systems

[153] With the enactment of the Telecommunications Act of 1996 in the USA, there was a

mandate for the television industry to move to digital distribution. Cable operators were

considering how they would be able to move to digital systems and how they would be able to do

more with a digital platform: more features for subscribers and more options for user equipment.

Much activity was taking place in the industry at the time to meet the expected demand.

[154] The Skilled Person and others in the industry knew that with the Internet and graphical

web browsers, streaming of audio-visual content online was going to be common as soon as the

bandwidth and hardware could support it.

[155] In the 1990s, the cost of computing devices, such as microprocessors, and digital storage,

was rapidly decreasing. This decrease was predicted by Moore’s law, which implied that more

powerful processors and more memory would be available as time went on and at the same cost

but in a smaller package.

[156] It was understood by the industry that digital systems would replace analog distribution,

and that there was a need for hardware advances.

[157] Activity in the area of television digital services lagged behind other industries. However,

as storage capacity and processing speed increased in STBs and related costs went down,

program guides were enhanced to allow users to interact with the content being displayed.

Page: 49

[158] The 1990s saw the upgrading of distribution networks to support more digital services.

This included the introduction of the hybrid fiber coax [HFC] network, in which fiber optics

were introduced to transmit data digitally from centralized locations to neighborhood facilities

(head ends), at which the signal would transition to the traditional coaxial network, primarily

analog. These new HFC networks introduced both digital signaling, and a return path from the

household STB to the network, enabling services such as VOD.

[159] With the introduction of digital systems, program guide data could be included in the data

packets that comprise an incoming cable TV digital data stream and extracted by program guide

software for presentation to the viewer.

[160] The manner in which program information was delivered to a consumer’s television

changed quickly in the early and mid 1990s. As technology progressed, moving from analog to

digital, EPGs were enhanced to allow users to interact with the content being displayed.

[161] In the mid 1990s, fully digital distribution was being used in some markets. Even where

the technology was not in actual use, the industry understood that digital systems would be

replacing analog distribution.

[162] The cable industry had developed standards for Internet over cable systems, namely

CableLabs’ data cable service interface specification, DOCSIS, published in 1997. These

standards allowed the deployment of internet access services over the cable system.

Page: 50

(d)

Satellite Systems

[163] Satellite based television distribution systems were also known and used at the time. In

those systems, encoded and compressed digital content was transmitted from satellites to satellite

dishes at the consumer's home. A STB at the subscriber premises was used to decode and

decompress the content and convert the digital signals to a format for viewing on a TV.

[164] Both DVD and satellite television systems stored television “programs” in digital format.

Because audio-video content is extremely data heavy, it was important to compress the data

using a particular format. In the 1990s there were several possible formats. The MPEG format

was used for DVDs and was also becoming popular in other systems, including for digital

television services.

(e)

Home Computing

[165] In the 1990s, personal computers for business and home use were becoming more

affordable and much more common. There was exponential growth in the number of users of the

Internet and the “information superhighway.”

[166] Early versions of Microsoft Windows such as Windows 95 were released in the mid-

1990s which included the Microsoft Internet Explorer web browser. The costs of

microprocessors, memory ( e.g. RAM) and hard drives, all key components of computing were

all decreasing at this time leading to more widespread use. The Skilled Person would have been

using a computer for many years as part of their daily work routine.

Page: 51

[167] Along with the use of personal computers at home, schools and at work came familiarity

with basic file management in the form of files and folders. Personal management of storing and

retrieving data was becoming routine; in combination with VCRs, the Internet and VOD

systems, the concept of storing and playback of media content on a variety of computing systems

would have been recognized by the Skilled Person.

(2)

Set-Top Boxes

[168] Cable operators typically relied heavily on their vendors to develop STBs compatible

with their infrastructure. The vendor that supplied the content encryption infrastructure within

the network, also typically supplied the corresponding decryption system in the STB.

[169] Because the STBs were distributed by the cable operators to all their subscribers, there

was a large incentive to keep the cost of each box to a minimum. The benefit of any new feature,

and particularly any new hardware, would have to be carefully balanced against the significant

new cost this would impose on the operator and subscribers.

[170] In 1996, an Open Cable platform was developed for the industry to allow more

interoperability between vendors for STBs. The objective of the platform was to allow for more

retail availability, creating a more competitive market and hence more features on STBs without

significantly increasing the cost. Under such a standard, head-end equipment could work with

STBs from several vendors, without requiring as much customization and therefore reducing

vendor-lock in and the costs associated with that.

Page: 52

[171] Concurrently, the DVB-MHP standard was being developed to offer a universal

application programming interface [API] for STBs.

[172] Without such standards, a user could not use a STB from a first cable operator on another

cable operator’s system, or buy a STB at retail and expect it to work with their cable service

Since a cable operator would typically have a monopoly on offering cable services within a

given area, either by license or because it was the only company to install cable infrastructure, a

subscriber unhappy with the operator’s features or offering could not easily switch, other than by

going to a company using a different distribution medium, such as satellite, or only in more

recent years, phone lines.

(3)

The User Interface

[173] Scrolling guides were replaced by IPGs in the mid-1990s when new features available on

STBs were cost effective, particularly, the availability of additional memory and processing

power.

[174] In an article published in 1994 entitled “Electronic Program Guide Application – The

Basic of System Design,” Mr. Thomas (a named inventor of three of the patents) explores the

basics of an EPG. The article describes the state of IPG technology at the time. He notes that “the

user interface is receiving much attention as the first systems are being developed.”

[175] Program guide systems, including those that allow a user to record programs were well

known in the art in 1998. By then, IPGs had become as ubiquitous as the remote control - the

Page: 53

tool of choice for consumers to manage the intersection of TV, the Internet, telephony and a host

of other interactive services delivered over cable and satellite.

[176] Guide data could be transmitted or downloaded that included a list of the channels

available and what programs would be broadcast at which time. This data would be stored by the

STB on its internal memory and could be used to generate a user interface for the user to

navigate. The STB displayed this content on the television upon request. The guide then

permitted users to navigate by channel or time and tune directly to a selected channel.

[177] In some systems, this was only for live programming and in some instances, the user

could identify content available from other sources, such as Pay-Per-View.

[178] In some cases, the systems allowed the user to select a future program and the STB

would initiate a recording of that program at the appropriate time, such as by activating a VCR.

The user would select a program available in the future from the guide and at the appropriate

time, the STB would instruct the VCR to begin recording the appropriate channel.

[179] The limitations of using only an up/down/left/right to navigate content led to many

options for navigating and entering content. Options such as navigating by genre or category

were used. In some cases users could enter text by selecting letters from alphabets displayed on a

screen or using up/down keys. Letters already selected would be displayed while the user

selected the next character. Game console systems had used similar interfaces for entering text,

such as character names since the 1980s.

Page: 54

(4)

Head-end/Distribution System

[180] For pre-recorded content, the head-end equipment would have a repository of the audio-

visual content that would then be transferred for transmission to the STBs. By the late 1990s,

pre-recorded content was stored in digital format. Because head-end equipment served thousands

or more subscribers, it was typically cost effective to have expensive digital systems at the head-

end, even while STBs were still analog based. For live content, head-end equipment may receive

a stream of content from a studio such as by satellite or OTA.

[181] As actually implemented, the cable distribution system would typically include several

tiers of infrastructure with one or more central centers with regional hubs serving smaller groups

of subscribers. Content distribution systems may be located at the central center and/or the

regional hubs depending on the installation.

[182] Some other services that were available at the time were Pay-Per-View broadcasts that

the subscriber would have to pay extra to watch. This type of system was used for broadcasts

such as speciality sports games. Since only some users could watch this content, individual STBs

were enabled or unlocked to access the content. Some systems required the user to phone a call-

centre to arrange for payment but other systems allowed for ordering from the television using

the STB. These systems therefore included some communications from the STB back to systems

at the head-end to indicate a request for a Pay-Per-View content. In addition, the availability for

Pay-Per-View content was often included in guide data provided to the STB so that viewers

would know about it and be enticed to order it.

Page: 55

[183] VOD was another service offered that involved extra features at the head-end. As the

name suggests, audio-visual content was available to subscribers on demand, or at the request of

the user. A system that had a copy of the content being offered would transmit the content, as

requested to the STB for display to the user. This also involved a communication from the STB

to the server to provide a request for playback of the content.

[184] These systems used large media libraries to hold copies of the content typically at the

head-end. Since the content was provided on demand, each subscriber could get content at a time

of their choosing, as well as offered VCR-like controls to play/pause/rewind/fast-forward the

content.

[185] Typically, VOD content was not acquired by recording broadcast content, but was

obtained and licensed by the system operator directly from the content source. The content may

be loaded into the VOD system such as from a back archive of recorded content. The content

could then be accessed by users for viewing on their televisions.

[186] Legal issues would arise if broadcast programs were to be recorded by the operator,

because making content available other than as part of a live broadcast or distribution required

separate copyright licensing agreements. Because of often highly contested legal constraints,

related to personal recording usage, such as a video cassette recorder [VCR], rights owners may

require cable companies making centralized copies of content being broadcast to make a unique

copy of broadcast programming for each user requesting a copy, even if multiple users were

recording the same program.

Page: 56

[187] Some systems in the 1990s were referred to as Near Video On Demand [NVOD] where

the content would be broadcast on several channels, say every 15 minutes. The user could select

one of the channels that best suited their schedule. This type of system would be less intensive

for the head-end since rather than transmitting a separate version of the content for each user that

requests it, only a fixed number of versions would need to be transmitted. Software on the STB

may automatically find the best scheduled version for the user and could switch versions if the

user wanted to jump ahead, back or pause the program.

[188] The availability of VOD was not universally commercialized by the late 1990s, but the

Skilled Person would have been familiar with such systems. The significant cost to host the

content, the bandwidth required to deliver unique content to individual subscribers and low-

latency two-way communications with STBs slowed the commercialization of these systems.

(5)

Other Areas of the CGK

[189] There were two areas of the CGK that were the subject of differing views by the parties:

convergence and countervailing factors. I will deal with these in turn.

(a)

Convergence

[190] Convergence was the idea that traditional television could become combined with other

digital technologies as television went digital. In a book entitled “OpenCable Architecture,”

published by Cisco Press in 1999, the author Michael Adams explains that: “Convergence has

may faces, but is really just the parallel application of evolving digital technologies across

Page: 57

different fields.” In Florin, the inventor, Fabrice Florin, describes the state of the industry as “a

marriage of video and television technology with computer interface technology.”

[191] Rovi submits that convergence should be considered a minor factor in evaluating

inventiveness. The evidence would suggest the exact opposite.

[192] The idea that traditional television would become combined with other digital

technologies once television went digital was quite popular in the mid 1990s. The cost of

computing devices, such as microprocessors and digital storage, was rapidly decreasing and

digital systems, with their ability to carry more channels, were expected to replace older, analog

systems.

[193] The anticipated digital systems were widely understood to allow for the convergence of

content delivery. Rovi’s own expert conceded that there would be convergence. Dr. Balakrishnan

described it as a transference from the more advanced technology of the personal computer to the

less advanced technology of the STB, albeit over time.

[194] Notable “converged” systems were known to the Skilled Person. One such system was

the Full Service Network created by Time Warner in the early 1990s to test out concepts for a

fully interactive digital converged cable system in Florida. Its existence was well known in the

industry. It offered subscriber’s digital connections to allow for interactive features, such as

VOD and ordering of Pay-Per-View content, using a sophisticated STB.

Page: 58

[195] Another such system was offered around the same time by Worldgate. It provided email

and web browsing through a television using a two-way communication link.

[196] Rovi argues that the introduction of IPGs “did not begin until the late 1990s and early

2000s.” However, this is not consistent with the evidence.

[197] By the mid 1990s, cable operators were considering both how they would be able to

move to digital systems and how they would be able to do more with a digital platform, such as

providing more features for subscribers and more options for user equipment. IPGs were the

wave of the future and the industry was keen to get into the action, as evidenced by the following

examples.

[198] In a press release issued in August 1994, TV Guide on Screen announced that it had been

selected by TeleCable, based on Norfolk, Viginia, as its vendor for passive and “interactive

electronic program guides.” In the same press release, TeleCable is quoted as being “particularly

excited about (TV Guide on Screen’s) work in support of the DigiCable platform, which we have

previously announced as the foundation for our transition into digital television services.” In a

second press release issued on September 1994, TV Guide on Screen announced the launch of

“the first fully digital on-screen guide,” the On Screen Channel, in two non-affiliated cable

systems. At the Western Cable and Television Trade Show held in Anaheim, California in late

November 1994, TV Guide on Screen also touted the benefits of the digital television technology

to its customers.

Page: 59

[199] Microsoft was also working on technology in this area, making a Windows Operating

System powered STB that allowed internet access over cable along with television, as part of its

Web TV system. Microsoft’s activities in the space were well known by the Skilled Person,

including Rovi, which was looking over its shoulder at its competitors.

[200] In an email dated July 7, 1997, Mr. Thomas provided a heads-up to other members of his

team of Microsoft’s plans as follows:

The following message is a bit cryptic, but the bottom line is that

with the next version of the Microsoft Operating system coded

named Memphis (Windows '98?), there will be a built in EPG to

complement TV video cards that you can plug into (or may be built

in to) your computer.

Listings will be provided “free” each week and will be customized

to the local cable system level. This will directly compete with our

Internet, Interactive and Prevue Products (including IE4.0) ... Note

reference to reminders.

Shows Microsoft plans for convergence of TV and PC - the

EPG / Navigator is a key element!

[Emphasis mine.]

[201] The evidence before me establishes that there was widespread borrowing of ideas and

technologies in the digital audio-visual field in the mid 1990s. The Skilled Person would have

known that it was simply a question of time for the technology around computers to transfer to

television, and vice versa.

[202] Dr. Balakrishnan argued that the Skilled Person would not have necessarily borrowed

from home computing technology and applied it to STB technology because of the known

Page: 60

limitations that did not allow for direct importation without significant work and modifications. I

disagree.

[203] Dr. Balakrishnan acknowledged that it was common to emulate STB functionality on a

personal computer in the 1990s. His own experience with STBs came from his team’s efforts to

move computer interfaces onto STB equipment. Dr. Balakrishnan conducted internal analyses of

the capabilities of computational platforms. Specifically, he researched STBs, among other

devices, as a platform for advanced user interfaces in the mid-to-late 1990s and examined

capabilities such as the use of guides, storage, user interface elements such as menuing, sensing

technology, and ways of presenting information. He could not point to any technical step or

approach that needed to be taken to implement any advance claimed in the Patents that would

have been outside the CGK of the Skilled Person.

[204] It also bears noting at this time that the sole inventor witness, Mr. Thomas, had only one

recollection about work done to come up with any of the purported inventions in this proceeding.

His memory was merely that he and his colleagues had contemplated recording in a home by

access outside the home - something that was, in light of Blake, not new. In a telling exchange

during his cross-examination, Mr. Thomas readily admitted that he could not recall any “eureka”

moment with respect to any of the Patents or technology at issue in this proceeding. According to

him, they “just seemed like a reasonable thing do.”

[205] No evidence was presented at trial of any technical barrier that prevented taking more

memory or a better processor available on a personal computer at the time and placing them in

Page: 61

an STB. Further, none of the Patents identifies a technical problem for which the claimed subject

matter provides a solution.

(b)

Countervailing Factors

[206] With respect to countervailing factors, Rovi submits that there was a lack of motivation

to innovate in the space. However, the evidence before me would suggest the opposite.

[207] The parties agree that the fields of personal computing and television were not aligned in

their development in the 1990s. In the television industry, equipment and software were less

sophisticated, and developed at a lower rate than that in the home computing field. There was

delay in installing infrastructure to support digital distribution. This time lag was seen as a

frustration by some technologists. Moreover, interactive television was not coming together as

soon as the industry expected or in the way it expected.

[208] Nonetheless, there was a lot of interest and knowledge around both adding television

features to a personal computer and adding personal computing features to television systems

well before the Patents were developed.

[209] The parties agree that there were other countervailing commercial forces that impacted

the timeframe when new STB features could be presented to consumers. The debate centered on

the cost incentives of cable service providers to replace hundreds of thousands STBs in people’s

homes.

Page: 62

[210] In the 1990s, the business incentive was to keep STB costs down. For the cable operators,

getting more subscribers and monthly revenue was key. Keeping the customers happy by adding

features to their STBs was of lesser importance to their financial success. STB equipment and

software were less sophisticated and developed at a lower rate than that in the home computing

field. As stated by Mr. Sandoval, for many years, legacy STBs “were sort of frozen in time.”

[211] There were various factors pointing away from investing money in a more advanced

STBs or the development of new features. However, these were essentially economic constraints.

[212] Mr. Thomas testified that his team was dependant upon the innovations of third parties.

The rollout of third party innovations was subject to the pricing of such things as disk drives,

memory, or processors. He testified that while there may have been technical issues to consider,

it was primarily a cost barrier that prevented taking the processor and memory available on a

personal computer at the time and placing it in an STB.

[213] In his 1994 article referred to above, Mr. Thomas mentioned cost constraints for

commercial devices as the reason why sophisticated computer software was not readily available

on STBs. The following is an excerpt from the overview in his paper:

Electronic Program Guide (EPG) systems are currently under

development for first deployment in cable, satellite and consumer

electronics products.

On the surface, these applications seem simple in comparison to

much of the sophisticated computer software now available to

consumers through personal computers. However, due to the cost

constraints inherent in mass produced consumer products, such as

the first advanced analog and digital compression based cable

converters, there are challenges in designing, implementing and

supporting these new EPG products.

Page: 63

[214] As the cost of computer memory and better processors fell as predicted by Moore’s Law,

and television progressively went digital, the industry made developments that, among other

things, increased network capacity (through bi-directional communication), facilitated file

transfers and allowed for high bandwidth upstream/downstream communication between cable

providers and customers. This was in anticipation of an explosion of new installable applications

for TV viewers, from weather, traffic, news, to ordering food and introducing enhanced

interactive television features to consumers.

VIII. The Issues

[215] The issues to be determined were narrowed over the course of the proceeding to the

following:

A.

Claims Construction

(1)

How would a skilled person construe the words and phrases in the Asserted

Claims below and the claims on which they depend?

(a)

Claims 2, 7 and 8 of the 061 Patent [061 Claims]

(b)

(c)

(d)

Claims 79 and 80 of the 629 Patent [629 Claims]

Claims 113, 116, 119, 120, and 123 of the 344 Patent [344 Claims]

Claims 456, 459, 720, 721 of the 870 Patent [870 Claims]

Page: 64

B.

C.

What is the claim date for the 870 Patent (is the indicated priority filing date for the 870

Patent relevant to each of the 870 Claims)?

Infringement

(1)

From January 2017 until expiry of the Asserted Claims (various times in 2019)

were any of the Asserted Claims infringed by reason of Videotron having

supplied subscribers with illico 2 terminals and functionality directly, or by reason

of Videotron inducing its subscribers to infringe the Asserted Claims?

D.

Validity

(1)

Are each of the Asserted Claims valid?

a. Anticipation - Are any of the following claims anticipated by the prior art?

i. 061 Claims by Blake

ii. 629 Claims by Florin

b. Obviousness - Are any of the following claims obvious to the skilled person

(having regard to the common general knowledge) in view of:

i. 061 Claims - Blake, DAVIC

ii. 629 Claims - Florin, Browne, Girard, the common general knowledge

alone?

iii. 344 Claims – Fujita⁴, DAVIC

4

US5,598,523 entitled “Method and System for Displayed Menu Activation Using A Matching Distinctive

Arrangement of Keypad Actuators” published on January 28, 1997 [Fujita]

Page: 65

iv. 870 Claims - DAVIC, Hair⁵, Fujita,

c. Overbreadth/Insufficiency - Are the Asserted Claims broader than the invention

purportedly made or disclosed or, in the alternative to obviousness, insufficiently

supported by the specification?

d. Patentable subject matter - Are the Asserted Claims invalid for not being directed to

patentable subject matter, contrary to section 2 of the Patent Act, RSC, 1985, c. P-4

[Patent Act],?

e. Ambiguity - Are any of the 344 Claims invalid for being ambiguous?

Remedies

E.

a.

b.

Is Rovi entitled to an accounting of Videotron’s profits?

If not, what is the appropriate reasonable royalty rate?

[216] Subsection 43(2) of the Patent Act provides that a patent is presumed to be valid in the

absence of evidence to the contrary. Videotron therefore bears the onus to prove each of its

invalidity attacks on a balance of probabilities: Georgetown Rail Equipment Company v Rail

Radar Inc, 2018 FC 70 at para. 109 aff’d on this point in 2019 FCA 203, at para 57.

5

US5,675,734 entitled “System for Transmitting Desired Digital Video or Audio Signals” published on October 7,

1997 [Hair]

Page: 66

[217] The onus rests on the patentee, Rovi in this case, to prove infringement on a balance of

probabilities (Monsanto Canada Inc. v Schmeiser, 2004 SCC 34 at para 29) [Schmeiser]. In

terms of remedies, Rovi must establish that the Court should exercise its discretion to award an

accounting of profits and, if so, it bears the onus of establishing the portion of profits that were

actually earned by Videotron that are causally attributable to the invention.

IX.

Claims Construction

[218] The applicable principles of claim construction have been summarized by the Federal

Court of Appeal in Tearlab Corporation v. I-Med Pharma Inc., 2019 FCA 179 at paragraphs 30

to 34 and need not be repeated here. Suffice it to say that claims must be construed purposively,

once and for all purposes, before and independent of considerations of the issues of infringement

or validity. The key to purposive construction is the identification of the particular words or

phrases in the claims that describe what the inventor considered to be the “essential” elements of

the invention. A patent is to be construed through the eyes and with the common knowledge of a

worker of ordinary skill in the field to which the patent relates. Claims should be read with a

mind willing to understand. Further, the language of the claims is to be examined in an informed

and purposive way, not in an overly technical or literal way.

[219] There is a dispute between the parties about both infringement and validity of the

Asserted Claims of the Patents. The primary evidence on the Skilled Person’s understanding of

the claim terms was introduced through Mr. Sandoval and Dr. Balakrishnan. While Mr. Sandoval

provided his views as to what the Skilled Person would understand the claim language to mean

Page: 67

in the context of the Patents, Dr. Balakrishnan primarily responded to Mr. Sandoval through

analysis in his second report.

[220] In the claim construction sections below, the focus has been on the claims where the

proverbial “shoe pinches” (Bayer Inc. v Apotex Inc., 2014 FC 436 at paras. 46-47). Other claim

terms are less contentious and their specific construction is less relevant to the ultimate

determination of validity and infringement.

[221] For the purpose of these reasons, once an element, term or concept of a claim has been

construed, the same construction would apply to identical language used in other claims of the

Patents unless a difference is noted later in these reasons.

[222] The parties agree that each element of the Asserted Claims of the Patents to be construed

is essential. I therefore did not perform an essentiality analysis - an interpretative task that would

normally be undertaken by the court in claims construction.

X.

The 061 Patent – Remote Recording

[223] The invention of the 061 Patent relates to IPG video systems that provide access to

program guide functionality outside the user’s home.

[224] The disclosure states the invention will address the following problem identified in the

prior art.

Page: 68

Interactive television program guides are typically implemented on

set-top boxes located in the homes of users. A typical set-top box

is connected to the user's television and videocassette recorder.

The program guide system is therefore not portable. As a result,

the user cannot use the program guide to adjust program reminder

settings, to select programs for recording, to purchase pay-per-

view programs, or to perform other program guide functions

without that user being physically located in the same room in the

home.

[225] The specification of the Remote Recording Patent indicates that an object of the

invention is “to provide an interactive television program guide system in which the program

guide may be remotely accessed by the user. Such a system may allow the user to access

important features of the user’s in-home program guide from a remote location and set program

guide settings for those features.”

[226] The Summary of the Invention states that:

This and other objects of the present invention are accomplished in

accordance with the principles of the present invention by

providing an interactive television program guide system with

remote access. A local interactive television program guide is

implemented on interactive television program guide equipment.

The interactive television program guide equipment is connected to

one or more remote program guide access devices over a remote

access link. A remote access interactive television program guide

is implemented on the remote program guide access device. The

remote program guide and remote program guide access devices

provide users with the opportunity to remotely access features of

the interactive television program guide on the interactive

television program guide equipment and to remotely set program

guide settings.

Page: 69

[227] For ease of reference, the 061 Claims are reproduced in their entirety below:

Claim 2

The system defined in claim 1 wherein the local interactive

television program guide is configured to record the television

program selected by the user on the user television equipment (22).

Claim 7

A system for selecting programs over a remote access link (19) for

recording, the system characterized by:

means for providing the user with an opportunity to select a

program for recording over a remote access link (19) by a local

interactive television program guide implemented on interactive

television program guide equipment (17) having user television

equipment (22) located within a user’s home with a remote access

interactive television program guide implemented on a remote

program guide access device (24) located outside of the user’s

home; and means for recording the program selected by the user

with the local interactive television program guide on the

interactive television program guide equipment (17).

Claim 8

The system defined in claim 7 wherein the means for recording the

program selected by the user with the local interactive television

program guide on the interactive television program guide

equipment (17) comprises means for recording the program on the

user television equipment (22).

[228] The construction of claim 1 is relevant as claim 2 depends on claim 1. It reads as follows:

A system for selecting programs over a remote access link (19) for

recording characterized by:

interactive television program guide equipment (17) on which a

local interactive television program guide is implemented, wherein

the interactive television program guide equipment (17) includes

user television equipment (22) located within a user's home; and

a remote program guide access device (24) located outside of the

user's home on which a remote access interactive television

program guide is implemented, wherein the remote access

interactive television program guide is configured to provide the

Page: 70

user with an opportunity to remotely select a program for recording

by the local interactive television program guide over a remote

access link (19); and

the local interactive television program guide is configured to

record the television program selected by the user with the

interactive television program guide equipment (17).

[229] At a high level, the 061 Claims focus on a user using a device located outside the home,

such as a laptop or smartphone, with a limited IPG to schedule a recording on a device inside the

user’s home. An IPG running on the device inside the home is configured to conduct the

recording.

A.

Construction of the 061 Patent

[230] The 061 Patent is construed as of the publication date of January 27, 2000. Anticipation

and obviousness are assessed as of the priority date of July 17, 1998. The parties have not

identified any material differences in the CGK or prior art between the priority date and filing

date of the 061 Patent.

[231] The dispute between the parties boils down to the construction of two elements of the 061

Claims. The two experts disagree on whether the Videotron’s illico 2 system includes: (1)

“remote program guide access device;” and (2) “recording by the local interactive television

program guide.” Videotron does not dispute that the illico 2 system includes all of the other

elements of the 061 Claims.

Page: 71

[232] I have set out below my construction of those elements, terms or concepts in the 061

Patent that I consider germane to the matters in dispute.

(1)

“remote program guide access device”

[233] There is no construction dispute over the element “remote program guide access device”

(“Remote Device”) which appears in claims 2 (as dependent on claim 1) and 7. Both experts

agree that it would be understood by the Skilled Person to be almost any type of electronic

device, such as a personal computer, laptop or mobile phone, located outside of the user’s home,

that can connect over a remote access link to other equipment, and on which a remote access

interactive television program guide is implemented.

[234] The dispute centers on whether or not Videotron supplies the device or the means for

remote recording by a device. This claim term is only relevant for assessing infringement.

(2)

“remote access interactive television program guide”

[235] There was a minor dispute prior to trial on claim construction of the element “remote

access interactive television program guide” (“Remote IPG”) which appears in claims 2 (as

dependent on claim 1) and 7. Mr. Sandoval initially suggested that in the description of the 061

Patent, the “Remote IPG” may not have a guide but simply provide to some guide functions. I

agree with Rovi that the portion of the 061 Patent quoted by Mr. Sandoval does not support his

position.

Page: 72

[236] The claim language is clear and there is no need to look to the disclosure to assist in

understanding the term. Even if the user interface on a “Remote Device,” as defined in the 061

Patent, may be basic and have limited functionality, a guide is still required. I accept Dr.

Balakrishnan’s construction of “Remote IPG” to mean an IPG implemented on a Remote Device

that generates a user interface, which may be similar to a local interactive television program

guide, as construed below, or which may be different depending on its implementation. I note

that Dr. Balakrishnan agreed during his cross-examination that the “Remote IPG” may provide a

user with program listings organized by type or theme, as illustrated below in Figure 8 of the 061

Patent.

(3)

“recording by the local interactive television program guide” / “the local

interactive television program guide is configured to record the television

program”

[237] The parties disagree on whether a “local interactive television program guide” (“Local

IPG”) solely includes the software that allows a user to view program listings or also includes the

software that enables broader and related functionalities. Two elements in claims 1 and 7 -

Page: 73

“recording by the local interactive television program guide” and “the local interactive television

program guide is configured to record the television program” - are relevant for assessing both

infringement and validity.

[238] Before construing the two elements, I consider it necessary to address a comment made

by Rovi in its closing written submissions that “both experts” construed the Local IPG “as

software and/or hardware.” In fact, only Dr. Balakrishnan did so. While Mr. Sandoval agreed

with Dr. Balakrishnan’s that the Local IPG, “among other things, can generate for display, and

display, listings of programs and recorded content in electronic form that a user can navigate by

electronic means (e.g., by using a remote control)”, he drew a clear distinction between hardware

and software. From his perspective, both “IPG” and “Local IPG” would be understood by the

Skilled Person to be a combination of software and hardware, but not hardware by itself. This is

consistent with the weight of evidence.

[239] First, Mr. Thomas confirmed in cross-examination that an IPG is a software product. He

testified that he and his team worked with software and they would receive third party hardware

on which to write software.

Q. Right. And you were effectively a software company?

A. Well, I'll say what I said before. We were building IPGs, so the

goal of the company was to build these products. We used software

to do that.

Q. So the IPG is a software product itself?

A. Yes.

Q. And you would get the benefit of the hardware designers were

coming up with in terms of being able to put your software

together with the hardware from another third party source?

Page: 74

A. Yes, we put our software on other devices.

Q. Yes. And when those devices got better and faster and more

powerful, more memory, you would be able to take advantage of

that with your software presumably?

A. I think that's a reasonable statement.

[240] Second, the Patent refers to IPGs being “implemented” or “configured” on some type of

hardware, such as a “Remote Device” or “user television equipment.”

[241] Third, during cross-examination, Dr. Balakrishnan conceded, after some quibbling, that

the Patents are directed to software implementations running on hardware.

Q. … In terms of the interactive program guide, the IPG, you

agree, I believe, that the IPG is implemented in software that runs

on hardware?

A. I would say the IPG? Which IPG are we talking about? In

general or in the accused products?

Q. Any of the IPGs that are referenced in the Rovi patents or in the

accused devices.

A. I would say it’s mostly software running on hardware.

Sometimes there are hardware components that come into play as

well, such as networking components and so forth.

Q. You’re saying an IPG is a network component?

A. No, I said an IPG may include networking components in its

overall structure.

Q. All right. So what can you point to as a feature in an IPG in the

Rovi patents or accused device that is implemented in hardware?

A. I didn’t say they were necessarily implemented in hardware, I

said they may be using particular hardware to handle the entirety

of the IPG.

Page: 75

Q. And software is something that computer scientists such as

yourself routinely speak of as being implemented on hardware,

correct?

A. That is one terminology that computer scientists do use. But we

also understand that software interacts with hardware in particular

ways depending on the technology at issue. And that sometimes an

interplay depending on the particular hardware, the software may

behave very differently for example.

Q. Ultimately has to be somewhere for the hardware to execute on,

correct?

A. From a browser point of view, yes. That’s correct.

Q. That doesn't make the software into hardware, just means that’s

how it runs?

A. It doesn’t make the software into hardware. I don’t think I ever

said that.

Q. So is there anything about an IPG that you can say is

implemented in hardware as opposed to being implemented in

software in terms of the Rovi patents or the accused devices?

A. I haven't looked at that level of analysis in the Rovi patents and

the accused devices. My sense is that if the software, the IPG is

running on a processor and uses a variety of hardware, not just the

processor but also networking, access to databases and storage and

support. So if we run a particular component, say for example a

device driver or something may have a piece that's implemented in

hardware, that level of detail I did not need to do that of analysis to

ascertain infringement, for example.

Q. Right, because these patents and what you're concerned with are

software implementations? Not things like device drivers?

A. The claims at issue that's generally true, but it doesn't

necessarily exclude a device driver that might be coming into play

in a particular implementation.

Q. I'm not asking hypothetically. I'm asking specifically for the

opinion you gave in this case with respect to these patents and

these accused devices. Can you point to any place where an IPG is

anything other than software?

Page: 76

A. I think if you're talking about just the software code, it's just the

software but is it's running on particular hardware, as I've already

said, and using different hardware components.

[242] I therefore find that the Skilled Person would understand the terms “interactive television

program guide” and “local interactive television program guide,” as they are used in the 061

Patent, to be a reference to software running on hardware, and not to hardware by itself.

[243] In his validity report, Mr. Sandoval argued that the Skilled Person would understand

“Local IPG” to be software “likely operating on the local user television equipment, such as a

STB, but perhaps running on a combination of the user equipment and the head-end, namely the

'interactive television guide equipment’ … to provide information about available programs to

the user.” [My emphasis.] Dr. Balakrishnan did not take issue with Mr. Sandoval’s description of

the equipment on which the Local IPG runs. However, he saw no reason, either from the

perspective of the Skilled Person or from the disclosure of the 061 Patent, to limit the

functionality of “Local IPG” simply to the display of program listings. According to Dr.

Balakrishan, the 061 Patent intended to include other features, including program recording.

[244] Dr. Balakrishnan’s construction is well supported by the CGK and the disclosure of the

061 Patent. Functionality related to the control of television programing is assumed to be part of

the “Local IPG”, as explained by the patentee at page 4:

“[a]ny suitable interactive television program guide function or

setting may be accessed. The remote access program guide may,

for example, provide the user with an opportunity to remotely

schedule a reminder for a program, remotely view television

program listings, remotely select programming for recording

(storage)….”.

Page: 77

[245] On a purposive construction of claim 1, I find that the functionality of “Local IPG” is not

limited to only providing program listings. This lack of limitation is logical since claim 1 itself

tells us that the “Local IPG” is responsible for recordings programs.

[246] To the extent that Mr. Sandoval may have been advocating that the “Local IPG” was

meant solely to encompass the software that allows a user to view program listings, I disagree.

The 061 Patent specifies that there is a difference between program guide applications and non-

program applications, such as a web browser application, a home shopping application, an e-mail

application, and a banking application. The Skilled Person would understand “Local IPG” to

include applications and/or programs on the STB that facilitate other user features, such as the

ability to record.

[247] Another dispute over the meaning of “recording by the location interactive television

program guide” and “the local interactive television program guide is configured to record the

television program” did not crystallize until it was raised by Mr. Sandoval in his responding

infringement report.

[248] Mr. Sandoval noted that claim 1 requires that the “Remote IPG” “is configured to provide

the user with an opportunity to remotely select a program for recording by the local interactive

television program guide over a remote access link (19).” [His emphasis.] He argued that simply

because the STB in the illico 2 system has an EPG Application implemented in software that

allows a user to see upcoming broadcast programs does not mean that the EPG Application is

used to record programs. According to Mr. Sandoval, Claim 1 could have said that the recording

Page: 78

is performed by the “interactive television program guide equipment” or by “user television

equipment,” but instead is specific that the recording is done by the “Local IPG” itself.

[249] Rovi submits that the 061 Patent does not restrict the way in which the software is

architected, be it as a single monolithic piece of software, in modules, or in multiple applications.

At trial, Dr. Balakrishnan testified that “the fact that the illico system is architected in a modular

style … is basically what is done in modern software engineering for any software system of a

reasonable amount of complexity.”

[250] The dispute between the experts arose in context of their infringement analysis. Both

experts were looking at the architecture of the illico 2 system, which is described in technical

documents by its component parts, referred to as applications. The software includes the PVR

Application, the STB Daemon, the EPG Data Manager, the EPG application, and the Search

Application. Different parts of the software are responsible for different functionalities of the

system, as illustrated in the system context diagram below.

Page: 79

[251] While some applications may standalone (such as the PVR Application), many

applications do not, such as the keyboard enabler, flip bar, monitor and STB Daemon, which

only have utility when interacting with another application. The Main Menu application provides

one place where the user can access various functionalities. To be clear, none of this is disputed

by Videotron.

[252] Rovi suggests that Mr. Sandoval and Videotron drew an arbitrary line in the system

context diagram to argue that the 061 Patent only covers one part of the software (specifically,

the EPG Application) and not the illico STB software as a whole. It claims the line was drawn

simply to suit Videotron’s case. According to Rovi, the diagram does not accurately represent

how the system works. The illico 2 system should instead be viewed as a whole.

Page: 80

[253] My focus in construing the disputed elements should be on what the 061 Patent says and

not on how software may have been implemented on Videotron’s system, given that a patent

must be construed independent of considerations of infringement or validity: Laboratoires

Servier v Canada (Minister of Health), 2015 FC 108, at para 90.

[254] I am not convinced that recourse to the disclosure is necessary to resolve any ambiguity

in the meaning of the two elements as they appear in Claim 1. The words used are not terms of

art. Nor did the expert suggest that they would be understood by the Skilled Person to have a

special meaning.

[255] Words are primarily to be construed in their ordinary meaning or common or popular

sense. Simple logic would suggest that the words “recorded by” imply that it is the “Local IPG”

that is responsible for effecting the recording. The same can be said for the words “configured

to.”

[256] The Oxford English Dictionary (online) defines the verb “configure,” in the context of

the computing field, as “[t]o choose or design a configuration for; to combine (a program or

device) with other elements to perform a certain task or provide a certain capability.” Inherent in

the ordinary, dictionary meaning of the past tense of the verb is the concept of something having

been set up or arranged so that it can be used in a particular way.

[257] The meaning of the term “configured to” was canvassed in the recent decision of Guest

Tek Interactive Entertainment Ltd. v. Nomadix, Inc., 2021 FC 276. The case involved a claim for

Page: 81

patent infringement of some software, as well as a counterclaim for declarations of invalidity of

two patents. One of the claims at issue claimed a network that comprises a gateway and a

wireless access node. The disputes between the parties lay in the descriptions in the claim of how

the wireless access node and the gateway were configured.

[258] Mr. Justice Nicholas McHaffie made the following observations at paragraph 126:

… While a purposive construction must be given to the claims, the

claims must nonetheless be construed as they are written [citing

Free World Trust at para 31]. Claim 1 states that the wireless

access node is configured to transmit packets to the gateway. It

does not say the wireless access node simply transmits packets to

the gateway. Nor does it say that the network is configured so that

packets are transmitted from the wireless access node to the

gateway. [His emphasis.]

[259] Justice McHaffie went on to conclude that the skilled person would understand the claim

in question to mean that “the wireless access node must, itself, be configured so the packets it

receives from wireless devices are transmitted to the gateway regardless of their destination

address.” I would apply the same reasoning in construing the disputed elements. I find the

Skilled Person would understand the two disputed elements to mean that the “Local IPG” must

itself be configured to effect the local recording of a program.

[260] I find that the 061 Patent intended to include other features including program recording,

as argued Dr. Balakrishnan. That said, it was the choice of the patent drafter to say that the IPG

includes this particular feature.

Page: 82

[261] In his 1994 article, Mr. Thomas listed a number of basic elements which must be present

to have a complete EPG system: (a) a method for gathering TV listings, (b) extracting system

specific information, (c) sending the data to the local controller, (d) coordinating with the system

controller, (e) transmitting the data to the converter and (f) the guide application itself. Mr.

Thomas wrote that the level of user functionality must be carefully considered and “will be

implemented with different characteristics for advanced analog, first generational digital and

future advanced digital platforms.” He added that there are many features which “can” be offered

in an EPG.

[262] It was understood that software engineers would be free to choose what features to

include and implement in an EPG when the industry moved to digital. The benefits of design

freedom were also recognized by Mr. Armaly during his cross-examination. He agreed that

people who didn't take a patent license had the option to design around the patents.

[263] The 061 Patent does not purport to limit the freedom of others to make design and

implementation choices of their own. I agree with Videotron that merely because a software

function could be designed to be part of an IPG does not mean that it is in fact part of the IPG.

[264] Having set the stage with the above findings, I now turn to the validity issues of the 061

Patent.

Page: 83

B.

Validity

[265] Videotron submits that the 061 Patent is invalid because it is either anticipated by Blake

or it is rendered obvious on the basis of Blake or DAVIC in light of the Skilled Person’s

common general knowledge.

(1)

Anticipation

[266] For a claim of a patent to be valid, it must disclose an invention that is novel; that is, it

cannot have been anticipated.

[267] The test for anticipation is well established and set out in detail Sanofi at paras 24-30. It

was succinctly explained in Hospira Healthcare Corporation v Kennedy Trust for Rheumatology

Research, 2020 FCA 30 at para 66:

It is useful to note that there are two requirements for establishing

that a prior art anticipates:

1) the prior art must disclose the claimed invention such that, if

performed, it would necessarily result in infringement; and

2) the prior art reference must be sufficiently detailed to enable a

PSA to perform the claimed invention without the exercise of

inventive ingenuity or undue experimentation.

[268] In short, to meet the disclosure requirement, one must be able to look at a single prior art

reference and find in it all the information which, for practical purposes, is needed to produce the

claimed invention without the exercise of any skill. To meet the enablement requirement, one

Page: 84

must also determine whether the person skilled in the art would have been able to perform the

invention without the exercise of inventive skill.

[269] The test is also a difficult one to meet, as noted in Free World Trust at para 26:

One must, in effect, be able to look at a prior, single publication

and find in it all information which, for practical purposes, is

needed to produce the claimed invention without the exercise of

any inventive skill. The prior publication must contain so clear a

direction that a skilled person reading and following it would in

every case and without possibility of error be led to the claimed

invention.

[270] If a published reference fails to either disclose or enable the essential elements of a claim,

the patent claim is novel, or not anticipated (Apotex Inc. v Shire LLC, 2021 FCA 52, at para 36

[Shire LLC]).

[271] Mr. Sandoval’s anticipation analysis for the 061 Patent is found in one paragraph of his

report. While it does not contain an element-by-element analysis nor refer to his earlier claims

construction, it was not conducted in a vacuum. Mr. Sandoval provided detailed constructions for

each of the essential elements of the 061 Patent. I also note that claims 7 and 8 substantively

parallel the scope of claims 1 and 2. While Mr. Sandoval’s analysis may be brief, it is pithy and

supported by technical evidence found elsewhere in his validity report. What remained was a

legal analysis, which Mr. Sandoval was not required nor in a position to provide.

[272] Videotron submits that Blake discloses and enables the 061 Claims. Blake is a WIPO

application published on March 12, 1998 on application by Starsight. The invention provides an

interactive schedule system with enhanced recording capability.

Page: 85

[273] Videotron fairly summarizes what is contained in Blake in its written submissions as

follows. Blake describes a peripheral device inside a user’s home, which may be a STB or a

PC/TV. Software in the peripheral device generates a local guide. A user may record a program

from a remote location by selecting it with an input device. The input device may be any device

capable of transmitting data from a remote location, including a laptop computer, cellular phone,

or personal computer with access to the Internet. If the remote input device is a computer, for

example, the user may select a program from a program list organized by theme. At the

appropriate time, a recording device inside the user’s home will be activated by the local guide to

record the program. A record daemon application manages recording functions. The recording

device may be a VCR, or it may be any device with audio/video recording capabilities, such as a

hard disk.

[274] In terms of what Blake describes in general, Dr. Balakrishnan agreed to the following:

Q.

Let's talk about Blake specifically. There is no doubt, I

don't think, that Blake discloses an ability to have recording

happen in a home by access outside the home?

A. I think that's fair, yes.

Q. And it involves a set-top box?

A. Yes.

Q. And it also involves some kind of remote device?

A. Yes.

[275] Rovi’s position is that the invention of the 061 Patent is novel and not anticipated

because two elements are not disclosed in Blake: (a) a “Remote IPG”, and (b) a “Local IPG”

configured to record the television program selected by the user.

Page: 86

(a)

Does Blake disclose a Remote IPG?

[276] Dr. Balakrishnan’s initial view was that while the Remote IPG taught by the 061 Patent

can include reminders, a program listing with which the user can interact with cursor keys,

ability to remotely adjust parental controls, and ability to set favourite channels or programs,

Blake only describes the use of codes entered into some sort of interface that may be available

through a telephone or computer. Dr. Balakrishnan maintained his position that Blake does not

disclose a Remote IPG and actually points away from the use of a remote IPG.

[277] Dr. Balakrishnan’s opinion is plainly incorrect, as he conceded in cross-examination.

While Blake states that codes may be entered to designate which program to record, it also

describes an embodiment where the user is presented with a list of programs on the remote

interface and can select a program to be recorded locally using the remote interface. This is made

quite clear at page 18 of Blake:

…Examples of themes which the user may select from include

sports, movies, science fiction, sit-corns and the like. Selecting by

themes is particularly helpful when the user is not quite sure of the

title of the program, or when the user desires to record a sports

event. For example, if the user wishes to record the Chicago Bulls

v. LA Lakers game, the user may first choose to select program by

themes. The user may then select sports when presented with a list

of theme selections, and further select basketball. The user may be

presented with a list of basketball games which are currently, being

played or are scheduled to be played, and the user may then choose

the Bulls vs. Lakers game. Alternatively, the user may enter Bulls,

and processing system 334 will present a list of Bulls games to the

user, and the user may select one or more of the games to record.

After the user has made his/her selection(s), processing system 334

preferably confirms the user's selection(s), and stores the

information upon receipt of user confirmation. At the appropriate

time(s), processing system 334 will activate recording device 336

at the user’s home to record the game(s).

Page: 87

[278] Dr. Balakrishnan claims that there was no contemplation in Blake of a Remote IPG to

allow for the remote scheduling of recordings. During his cross-examination, Dr. Balakrishnan

attempted to distinguish between what he characterized as functionality “within an IPG” and

functionality “outside an IPG” as in Blake.

Q. Dr. Balakrishnan, back then to page 22 of the materials, this is

page 18 of the Blake reference. And is it not a simple fact that

Blake describes a functionality that is an IPG functionality as being

implemented on the remote device?

A. I cannot agree with the way you have phrased that sentence.

Q. So you say no?

A. I say I cannot agree with the way you phrased the sentence. I

think the answer is not a yes or no. It's a nuanced answer.

Q. So the choice of programing by way of themes is a set-top box

enabled, in some cases, and in some cases not, but it's an IPG

function. In other words, providing themes to a user and allowing a

user to select programing from those themes is one aspect of an

IPG, correct?

A. It can be one aspect of an IPG. It is not a required aspect to an

IPG. And you can also do it, do that outside an IPG.

Q. How would you know whether it's inside or outside an IPG?

A. I think if I'm reading a disclosure or a document and it's talking

about IPGs, then the functionality is within that IPG. And it talked

about -- for example, themes, this is discussing, the discussion of

themes, then I would say it's part of the IPG. If the discussion of

themes as an example is within the phraseology of a different

embodiment, as done in Blake, and Blake is not discussing IPGs in

the remote context in what I've read of Blake, then I would not

read this as being part of an IPG. I would see that as a

functionality, an embodiment that allows users to select some

program to record according to themes, as Blake discloses.

[279] I found Dr. Balakrishnan’s reasoning to be confusing and not persuasive. Mr. Sandoval

agreed in cross-examination that Blake does not “explicitly discuss having something like a

Page: 88

program guide on the remote device.” However, as Mr. Justice Roger Hughes clarified in Abbott

Laboratories v Canada (Health), 2008 FC 1359 at para 75, aff'd 2009 FCA 94, the disclosure in

the prior art does not have to be an “exact description” of the claimed invention. It must only be

sufficient so that when read by a person skilled in the art willing to understand what is being

said, it can be understood without trial and error.

[280] Blake describes a theme search function that includes a “user interface” to search for

programs by themes. Dr. Balakrishnan agreed that providing themes to a user and allowing a

user to select programing from those themes is “one aspect of an IPG.” This is obviously the case

since the remote device would necessarily have to provide some way to search for a theme,

identify a program, and then select the program for recording.

[281] Rovi submits that Blake does not contain details of what the user interface might be, nor

does Blake specify any method by which a user may move a cursor to navigate on the remote

device. However, such details were not required as the Skilled Person would have a good

understanding of program guides and how to implement them. Blake provides that “it will be

obvious to those skilled in the art that various modifications and changes may be made.” The

disclosures and descriptions in Blake are said to be illustrative, but not limiting, of the scope of

the invention. It was well known that a user could navigate a program guide by selecting

channels or time slots, such as by using navigation keys on a remote control.

[282] Based on the evidence before me, I find that Blake does teach a remote IPG. The

functionality and explanation in Blake about providing a list of programs organized by theme

Page: 89

exactly matches the explanation in the 061 Patent. As the old saying goes “If it looks like a duck,

swims like a duck, and quacks like a duck, then it probably is a duck.”

(b)

Does Blake disclose a “Local IPG” configured to record the television

program selected by the user?

[283] Mr. Sandoval stated in his validity report that, in Blake, an EPG exists on a user

equipment such as a television or personal computer and that this equipment includes a guide

that allows the user to see what programs are available and to schedule programs for recording,

such as on a VCR or digital video disk. According to Mr. Sandoval, Blake anticipates the 061

Claims because it describes a home television or personal computer that has a local interactive

guide. It also describes a remote input device that includes the ability to navigate available

programs at least by theme and by title, which would be considered a “guide.” On the remote

input device, the user can select a program which is then recorded by the home user equipment at

the home equipment. The connection between the remote input device and the home user

equipment is described as using any available network with a central processor that

communicates with the home user equipment.

[284] Dr. Balakrishnan argues that the 061 Patent is different than Blake in that the 061 Claims

require the local IPG to be configured to record a television program while, in Blake, the

command to record remotely is stored in the network and it is the network that controls the

recording. In formulating his opinion, Dr. Balakrishnan was focused on the role of the central

processing system in Blake, as shown below in Figure 13.

Page: 90

[285] Dr. Balakrishnan testified that this direct control of the recording device at the time of

recording shows that, even if the recording device receiving commands includes a local IPG, the

local IPG is not “configured to record the television program selected by the user.” He ultimately

conceded that it was “configured to record” in cross-examination.

Q. …And the very first sentence of the first paragraph on page 17

says: “The present invention enhances the recording capability of

the schedule guide.” Do you see that?

A. Yes.

Q. So it is teaching that the guide itself has recording capability,

correct?

A. I don't think I'm disputing that the guide, the local guide has

recording capability.

Q. Now let’s look at the last sentence of the same paragraph. At

line 19 it says: "Recording device 336 in one embodiment is a

VCR, but may be any device with video and/or audio recording

capabilities." Do you see that?

A. Yes.

Q. So if we’re looking around as a person of skill in the art to see

what has recording capabilities as defined in Blake, do we not just

Page: 91

have reference to the same paragraph where it says the schedule

guide has recording capability?

A. Certainly this schedule guide, the local schedule guide has the

recording capability to record on the recording device 336.

Q. The teaching is that the remote needs to direct something to

record. You look at any device with recording capabilities and the

patent also teaches you that the schedule guide has a recording

capability. That's all what that paragraph says, correct?

A. This paragraph says the local schedule has recording capability

to record to a device and has a central processing system that also

records to the device.

Q. And you can record to any device with recording capabilities

and the schedule guide has recording capabilities, so you just direct

your request to the schedule guide that has the recording

capabilities. It's right there in that paragraph. Is that not true?

A. That is not true. The request as is shown now in Figure 13 goes

to a central processing system, not to the -- it has no disclosure that

it goes to the local guide.

Q. What I’m saying is that the disclosure is you can use any device

with a recording capability, and the disclosure is also that the

schedule guide has a recording capability.

A. First of all, I don't think it's any device that has recording

capability, it has to be recording device 336, in that embodiment

that happens to be -- could be a VCR or any device, but that falls in

that. And I agree with you that the local schedule guide has

recording capability. Where I don't agree with you is that the

remote is doing it through the local schedule guide.

Q. But the figures don't show that, but it's what the guide can do. It

has the capability to record?

A. A local guide has the capability to record locally.

[286] Dr. Balakrishnan continued to maintain nonetheless that there is no disclosure in Blake

that the request to record goes to the local guide. I disagree. Blake describes a remote device

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connected to a central processing system that receives commands and those commands are

passed on to a recording device. This is no different than what is described in the 061Patent.

[287] As stated earlier, Dr. Balakrishnan did not dispute Mr. Sandoval’s construction as it

relates to equipment on which a Local IPG may run. Mr. Sandoval construed “interactive

television program guide equipment” (IPG Equipment) as a combination of equipment both at

the head-end and also equipment at the user’s home. This is consistent with the language used in

the 061 Patent and accompanying figures. As shown in Figure 2a below, “interactive television

program guide equipment 17” is depicted as both the program guide distribution equipment

located at the television distribution facility and the user television equipment located at home.

The IPG equipment communicates with the remote program guide access device 24 via remote

access link 19.

[288] The experts agreed that the element “interactive television program guide equipment”

may include both local and head-end equipment. It follows that transmitting a recording

command from the Remote Device via the head-end equipment falls within the claim language.

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[289] If I am incorrect in the above finding, it remains that the path the recording commands

takes from the Remote IPG to the Local IPG is irrelevant. The simple question is whether Blake

discloses a local IPG configured to record a program. The answer is yes.

[290] Blake describes a “guide user interface [GUI]” that takes remote control commands as its

primary input and a “record daemon” that is resident in the local device. The record daemon

manages the recording functions of the local device, including by examining what is queued for

recording. In cross-examination Dr. Balakrishnan agreed that in Blake local recording is

facilitated by an interactive program guide:

Q.

A record daemon is then called from the realtime executive

to examine the queue and manage the recording functions." You've

got that?

A.

Yes.

Q.

And that GUI embodiment, that is a form of interactive

program guide, correct?

A.

On the local device, yes.

Q.

You're using the interactive program guide on the local

device to carry out a recording function according to Blake, right?

A. In this example, yes. Now, it doesn't say where the

recording happens. It certainly is carried out using the GUI on the

local device.

[291] For the above reasons, I conclude that Blake does teach a local IPG configured to record

within the meaning of the 061 Patent.

[292] Rovi submits that if the invention is found to be disclosed, Blake does not enable the

invention of the 061 Patent; however, the argument was not pursued vigorously. Based on the

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evidence before me, I find that there is sufficient information in Blake to allow the alleged

invention of 061 Patent to be performed.

[293] It follows that all of the elements of the 061 Patent’s asserted claims can be found in

Blake, rendering the claims invalid for anticipation. It is unnecessary to further consider the

obviousness of claims that have been found to be anticipated, since there are no differences, and

therefore nothing to which inventive ingenuity could be attributed. However, if I am incorrect,

and the 061 Claims are not anticipated, I would have found the said claims invalid for

obviousness for the following reasons.

(2)

Obviousness

[294] Videotron submits that the 061 Patent is rendered obvious on the basis of Blake or

DAVIC in light of the Skilled Person’s CGK.

[295] As stated by Mr. Justice Michael Manson in Hoffmann-La Roche Limited v. Sandoz

Canada Inc., 2021 FC 384, the test for obviousness is set out in section 28.3 of the Patent Act.

This attack on inventiveness requires careful attention, particularly considering that hindsight is

20-20 (Bridgeview Manufacturing Inc v 931409 Alberta Ltd (Central Alberta Hay Centre), 2010

FCA 188 at paras 50-51, leave to appeal to SCC refused 33885 (14 April 2011)).

[296] As with anticipation, obviousness is assessed on a claim-by-claim basis. Each claim is

evaluated against the four-part Sanofi test (at para. 67):

(1)

(a) Identify the notional “person skilled in the art”;

Page: 95

(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) 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?

[297] Rovi submits that Mr. Sandoval’s opinion on obviousness should be given little weight

because his analysis is very brief and does not address each element of the 061 Claims in

comparison to the prior art. While there is merit to the criticism, I find that Mr. Sandoval did

employ, in substance, the required steps of the Sanofi analysis in his expert report on validity of

the 061 Patent. (This applies to the other Patents as well.) Mr. Sandoval determined who the

Skilled Person was and what their common knowledge would be. He then reviewed the prior art,

identified “gaps,” and indicated whether in his opinion it would have been obvious to the Skilled

Person to traverse those gaps. Using this analysis, he concluded that the 061 Claims were

obvious.

(a)

Stage 1: Identify the Skilled Person and the CGK

[298] The Skilled Person and the CGK are identified and described earlier in these reasons.

Focusing on key aspects of the CGK relevant to the 061 Patent, the experts agreed that the

Skilled Person would have known in the 1990s that both local area and wide area networks could

be created with computers and electronic equipment.

Page: 96

[299] Dr. Balakrishnan also agreed that networks could support remote access, a remote access

device would have some input/output capability that allowed for identification of a program to be

recorded, and one common way of proving user input/output was to identify data through a

program listing. The Skilled Person would also have also been familiar with recording programs

using an IPG on either a VCR or a hard disk.

(b)

Stage 2: The Inventive Concept

[300] At stage 2, the Court is to “identify the inventive concept of the claim in question or if

that cannot readily be done, construe it.” On occasion, the inventive concept may be “readily

apparent” where there is agreement on it. If not, the inventive concept needs to be construed

(Apotex Inc. v Shire LLC, 2021 FCA 52, at para. 67). To do that, the Court is to first determine

whether it can be identified from the previously completed claims construction exercise. Second,

where it is not possible to grasp the nature of the inventive concept solely from those claims, the

Court may have regard to the patent specification to determine if it provides any insight or

clarification into the inventive concept of the claim(s) in issue (Sanofi at para 77).

[301] If this step is necessary, “it is not permissible to read the specification in order to construe

the [inventive concept of the] claims more narrowly or widely than the text will allow” (Sanofi at

para 77). While an inventive concept is an attribute of the claims, it differs from claims

construction. As such, though the process for the identification of an inventive concept bears a

striking resemblance to that of claims construction, it is nonetheless a distinct, separate exercise

(Shire LLC at para. 68). It is the inventive concept(s) of the claim(s) in issue that must be the

focus of an obviousness inquiry, not the inventive concept of the patent (Shire LLC at para 69).

Page: 97

[302] The experts agree that the Skilled Person would read Blake and DAVIC and understand

that in order for remote access to work, there was a need for a remote access network and

communication pathways, input/output capabilities, and would also appreciate that STBs could

record and receive a command to record from a remote device. Rovi claims that these are not the

invention of the 061 Claims and there are important differences between the prior art and the 061

Claims. Each of the following elements is alleged to be in the 061 Claims but is absent from the

prior art:

(1) A remote program guide access device upon which an IPG is

implemented;

(2) The presence and use of a remote access IPG (as opposed to a

non-IPG interface) to issue the command to record; and

(3) A local IPG that receives the communication from the remote

access device and controls the recording of the program.

[303] There was no inventive concept for the 061 Claims expressly identified by either

technical expert other than the claim language itself. In particular, there is no language in the 061

Claims that provides that the Local IPG directly receives the communication from the Remote

Device, as is advocated by Rovi. The focus of the 061 Claims is on the combination of two ideas:

(1) a user using a remote device upon which an IPG is implemented to issue a command to

record a program on a device inside the user’s home; and (2) an IPG running on the device inside

the home that is configured to receive the command and control the recording of the program.

(c)

Stage 3: Difference between the Prior Art and the Inventive Concept

[304] At step 3 of the obviousness analysis, the inventive concept of the claim in step 2 is

compared to the state of the art to determine whether, or to what extent, an equivalent or similar

Page: 98

solution to the problem being addressed by the applicant was known at the claim date. The state

of the art refers to the information available to the person skilled in the art and generally will be

identified by reference to specific prior art documents that would have been discovered in a

reasonable and diligent search.

[305] The parties agree that the prior art cited by Videotron was publicly available when they

were published. Moreover, there is substantial agreement by the parties on the CGK of the

Skilled Person on the priority date of the 061 Patent. As explained below, I see no difference

between the inventive concept of the 061 Claims compared to the state of the art. The “problem”

to be solved in this case - remote recording - was already recognized in Blake, which identified

the need or advantage of a device for allowing a user to schedule recording of a television

program from a remote location. The 061 Claims have the same objective - to allow the user to

access the recording feature of the user's in-home program guide from a remote location.

[306] I start first with DAVIC. The prior art reference lists a series of functions for a “HOME

NETWORK”, including function 15.17 that reads: “The network should support remote access

(i.e. access from a device outside of the home)”. The function description does not by itself teach

the Skilled Person a system as described in the 061 Claims. In fact, it does not even mention

recording.

[307] However, DAVIC was purposely kept at a high level on the understanding that the

industry was aware of the objectives and ultimate approaches to design for the systems described

therein, leaving to them the freedom to make implementation choices. I agree with Mr. Sandoval

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that function 15.17 would be understood by the Skilled Person to mean that a user would be able

to access the features of their home network using a device outside their home. In the same

section, DAVIC states: “Network nodes should be capable of transmitting and/or receiving

applicable control commands to and/or from other network nodes.” Mention of this feature

would reinforce to the Skilled Person that control commands, such as instructions to record,

could be sent remotely to the network to control devices on the network. Any gap in the

inventive concept was filled by Blake.

[308] As noted in my anticipation analysis, Rovi argued that Blake did not disclose two claim

elements: (1) using a remote IPG and (2) having a local IPG configured to record. Videotron

submits that these so-called gaps would have been obvious from Blake, if they are not held to be

explicitly disclosed by Blake. I have already set out in my anticipation analysis my reasons for

concluding that Blake teaches both a remote IPG and a local IPG configured to record and need

not repeat them.

[309] In terms of a “Remote Guide” in claims 1 and 7, both experts agree that Blake describes a

system that allows users to schedule recordings from a remote location using, for example, a

computer. If I am incorrect in concluding that Blake fully describes a remote and limited

program guide, I find that the addition of such a guide to Blake’s remote computer would have

been obvious to the Skilled Person. Some type of user interface for navigation would necessarily

have to be provided on the remote access computer to enable the user to interact with the list of

programs. This is only common sense.

Page: 100

[310] As for the “Local IPG configured to record,” as described in claims 1 and 7, the Skilled

Person in the 1990s was very well familiar with IPGs and how IPGs could be implemented on

various devices, including devices that could be used remotely. The Skilled Person would be

familiar with the fact that an IPG could be configured to record a program. To the extent that

Blake’s use of a local daemon application is not explicitly use of the IPG, it would have been

obvious for the Skilled Person to have the guide user interface in Blake conduct the local

recording.

[311] Based on the evidence before me, I conclude that the elements purportedly missing from

Blake would nevertheless be obvious to include in Blake.

(d)

Stage 4: Do the differences identified in stage 3 constitute steps which

would have been obvious to the person skilled in the art or do they require

any degree of invention?

[312] Stage 4 of the obviousness inquiry asks whether the differences, in light of the prior art

and viewed without any knowledge of the alleged invention as claimed, constitute steps which

would have been obvious to the skilled person, or if they instead required any degree of

invention (Sanofi at paras 67, 70). Obviousness is assessed objectively and purposively, having

regard to the problem addressed by the patent.

[313] In Janssen-Ortho Inc. v. Novopharm Ltd., 2006 FC 1234 at para 113, a list of factors

were enumerated that a Court may take into consideration in a determination of obviousness, on

a principled and objective basis, including:

Page: 101

the climate in the relevant field at the time the alleged invention

was made, including not only knowledge and information available

but also attitudes, trends, prejudices and expectations that would

define the person skilled in the art;

any motivation in existence at the time of the alleged invention to

solve a recognized problem in the field of the invention; and

the time and effort involved in the invention

[314] Where the problem to be solved was already recognized in the art, it may be appropriate

to inquire only into whether inventive ingenuity was required to conceive of the claimed solution

and put it into practice. Where, however, the problem or its underlying cause was not previously

recognized or understood, there may be an invention even where the proposed solution to the

newly identified problem would have been immediately apparent to the person skilled in the art.

Inventive ingenuity, however, does not exist if the alleged problem never existed and was simply

an artificial obstacle or “straw man” developed to imply inventiveness in the proposed “solution”

(Sanofi-Aventis Canada Inc. v Ratiopharm Inc. 2010 FC 230 at para 87).

[315] Given my conclusion that that there was no difference between the prior art and the

inventive concept, I will be brief in performing my stage 4 analysis.

[316] First, the activity in the industry and the motivation to innovate have already been

canvassed in the CGK section of these reasons. Suffice it to say that the 1990s was a period of

great innovation in the field of interactive digital audio-visual applications and services. Blake,

published just a few months before the priority date of the 061 Patent, is but one example.

Page: 102

[317] Second, there was little evidence presented at trial of the work done to come up with the

061 Patent or, for that matter, any of the purported inventions in this proceeding. In terms of

research and development, Mr. Thomas explained that one of the key things that needed to be

determined from the start by the team was what equipment their products were going to run on.

For IPGs, there were what his team called “advanced analog set-tops and then the promise of

digital cable set-tops.” The next step was “what are the product features that we want.” However,

Mr. Thomas had no recollection of any actual steps taken to develop the remote recording

functionality, or what any listed inventor may have contributed to it. In fact, he could not recall

doing any work to make a practical system that would allow a user to set a program to be

recorded remotely. Further, when asked about the idea of recording a specific program remotely,

Mr. Thomas could only say: “sitting here today that seems like a reasonable scenario.”

[318] The invention must, of course, add something of a substantial character to existing

knowledge. In my view, the Skilled Person would consider that there is no inventiveness in the

idea of using IPGs in the ways described in the 061 Claims in light of Blake and the CGK. The

061 Claims are therefore invalid for obviousness.

[319] If I am incorrect in my validity analysis and the 061 Claims are found to be valid, the

issue then is whether they have been infringed.

C.

Infringement

[320] Infringement is defined broadly as any activity that deprives the patentee, in whole or in

part, directly or indirectly, of full enjoyment of the monopoly conferred on them by law

Page: 103

(Schmeiser at paras 34-35). This monopoly is the exclusive right, privilege, and liberty of

making, constructing and using the invention, and selling it to others to be used (section 42 of the

Patent Act).

[321] As noted earlier, the elements with respect to which the experts have an infringement

dispute are “remote program guide access device” and “recording by the local interactive

television program guide”.

(a)

“remote program guide access device”

[322] Claim 2 includes as an essential element “a remote program guide access device located

outside of the user’s home on which a remote access interactive television program guide is

configured…” Mr. Sandoval argues that the devices used by Dr. Balakrishnan for testing were

supplied by Dr. Balakrishnan and not Videotron, and that “laptops and mobile devices do not

form part of the illico ‘system’ as provided by Videotron.”

[323] Rovi submits that who supplies the device is irrelevant to the question of infringement. It

claims that by having provided users with access to this functionality and assuming a user is

going to have a remote access device, Videotron is depriving Rovi of the full enjoyment of its

monopoly.

[324] There is no evidence of any direct infringement by Videotron of the element in Claim 2.

However, Videotron’s conclusion that supply of these devices by the subscriber themselves

Page: 104

avoids infringement is incorrect because one may be found guilty of infringement simply by

inducing or procuring another to infringe a patent.

[325] Induced infringement requires that: (i) the act of infringement has been completed by the

direct infringer; (ii) the completion of the act was influenced by the alleged inducer to the point

that, without the influence, direct infringement would not have taken place; and (iii) the

influence was knowingly exercised by the inducer, that is, knowing that such influence would

result in the completion of the act of infringement (Corlac Inc v Weatherford Canada Ltd, 2011

FCA 228 at para 162).

[326] In my view, induced infringement of the above element of Claim 2 has been proven.

[327] Since at least January 1, 2017, Videotron has provided the illico system to users which

allows them to set recordings remotely. It has provided users with the mobile and online software

applications to achieve this functionality and provided instructions to users on how to download

or access that software from their devices.

[328] The only way that a subscriber could obtain access to the benefit of the invention of the

061 Patent is by using the system provided by Videotron. By causing the system to set the

recording and obtaining the benefit of the result, the subscriber used the system. This use was

induced by Videotron in that without the influence of Videotron, direct infringement would not

have taken place. Videotron exercised this influence knowing that it would result in the

completion of the act of infringement. Further, Videotron provided subscribers with the remote

Page: 105

record mobile application (an illico application) and instructions on how to download and use it

via Videotron’s website and user guides. Likewise, clear instructions were provided on how to

access the web browser application on Videotron’s website and remotely record programs from

there. Without the illico application or the Videotron website, the subscriber would be unable to

use the system and make a remote recording. Further, Videotron prescribed the way that a user

could make a remote recording.

[329] With respect to claims 7 and 8, Mr. Sandoval raised the same issue concerning the

“remote program guide access device” being supplied by the user. In doing so, he ignored the

specific language of claims 7 and 8 and conflated them with claims 1 and 2. Claim 7 requires

that the “means for providing the user with an opportunity to select a program for recording over

a remote access link” be supplied.

[330] Since Claims 7 and 8 do not require the supply of the device itself, but the means by

which a remote recording may be executed, I agree with Rovi that they were directly infringed

by Videotron. In the alternative, Videotron induced infringement of claims 7 and 8 in a similar

manner as set out above for claim 2.

(b)

“recording by the local interactive television program guide”.

[331] Rovi submits that if Dr. Balakrishnan’s construction of “recording by the local interactive

television program guide” is accepted then this element is present in the illico 2 system. It is not

that simple.

Page: 106

[332] As I have already explained, the 061 Claims state that the Local IPG is “configured to”

record a program that is selected by the user of a Remote Device. The 061 Claims do not purport

to restrict the way in which a local IPG may be architected. Nor do they describe “interactive

television program guide” or “local interactive television program guide” as a single monolithic

piece of software implemented exclusively on a device in the home.

[333] The experts agreed that the Skilled Person would understand “Local IPG” to be software

likely operating on the local user television equipment, such as a STB, but perhaps running on a

combination of the user equipment and the head-end, namely the interactive television guide

equipment. While the illico 2 system does allow for a remote recording to be scheduled from a

remote device, its EPG Application is not configured to carry out this function.

[334] A remote record request travels instead from a user supplied remote device to the

“Remote Client PVR,” which is resident in the Videotron head-end. The Remote Client PVR, a

network element, receives the request and routes it to the correct STB. Similar to Blake,

Videotron’s STB also employs a “STB Daemon.” The message routed from the Remote Client

PVR is detected by the STB Daemon application, which forwards the request to the PVR

Application. The PVR Application manages all recording for the system. The EPG Application

is a separate piece of software.

[335] While the EPG application and the PVR application are part of the embedded device,

they do not interact for the purposes of remote recordings as highlighted in green in the illico 2

system context diagram below.

Page: 107

[336] The boxes and lines in the system context diagram were not drawn after the litigation

started. Rather, they were part of the architecture of illico 2 system from the beginning. It is

therefore inappropriate for Rovi to suggest that diagram was somehow manufactured to suit

Videotron’s case.

[337] Given that a Local IPG configured to record is an essential element of the 061 Claims,

and that this is not how the illico 2 system functions, I conclude that Videotron does not infringe.

[338] As an aside, Dr. Balakrishnan claimed that Blake did not anticipate the 061 Patent in part

because the local IPG in Blake was not configured to record the television program selected by

the user. However, this argument is a double-edged sword. Assuming for the moment that this is

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true, then it is clearly the same for Videotron’s system: the local EPG Application is not

configured to record a remotely selected program. Videotron’s system employs a similar type of

daemon application as Blake. Under this interpretation, to be consistent, either Blake’s system

anticipates because it uses a record daemon to manage remote recording, or Videotron’s system

does not infringe as the daemon receives messages from the network, not direct from a remote

device, and does not route messages to the EPG Application; instead, it routes them to the PVR

Application.

XI.

The 870 Patent- Multiroom PVR

[339] At a high level, the 870 Patent relates to IPG systems, and more particularly, to IPG

systems that allow users to record programs and program guide data on a media server.

[340] The filing date of the 870 Patent is July 13, 1999. The claimed priority date is July 14,

1998.

[341] There were originally dozens of claims of the 870 Patent alleged to be infringed, grouped

into 3 different claim sets. The Group A and B claims were abandoned, presumably because they

were rendered obvious by the Boyer patent, CA 2,274,560 published on June 18, 1998. Boyer,

cited by Videotron as prior art, explains the use of WorldGate (see paragraph 195 above) to build

an “Internet capable set-top box.”

Page: 109

[342] Rovi has elected to move forward only with the Group C claims - Claims 456 (dependent

on 454), 459 (dependent on 457), 720, and 72 [870C Claims]. All the 870C Claims are asserted

to be infringed by Videotron. They read as follows.

Claim 454

A method of playing back programs stored on another user's user

equipment, comprising:

generating a request to playback a program with a first user

equipment, wherein the program was recorded on a second user

equipment in response to a record request generated at the second

user equipment;

in response to the request to playback, receiving with the first user

equipment the program from the second user equipment;

and generating for display the received program.

Claim 456

The method of claim 454, wherein the program is a broadcast

program.

Claim 457

A first user equipment for playing back programs stored on a

second user equipment, the first user equipment comprising:

means for generating a request to play back a program with the

first user equipment, wherein the program was recorded on the

second user equipment in response to a record request generated at

the second user equipment;

means for receiving with the first user equipment the program from

the second user equipment in response to the request to playback;

and

means for generating for display the received program.

Claim 459

The first user equipment of claim 457, wherein the program is a

broadcast program.

Claim 720

Page: 110

A method for playing back programs, the method comprising:

receiving a record request at a first user equipment to record a

program on the first user equipment, wherein the first user

equipment is coupled to a first display screen configured to

generate for display video;

in response to receiving the record request at the first user

equipment, recording the program on the first user equipment;

transmitting, from a second user equipment to the first user

equipment, a request to play back the program, wherein the second

user equipment is coupled to a second display screen configured to

generate for display video;

receiving, at the first user equipment from the second user

equipment, the request to play back the program;

in response to receiving, at the first user equipment from the

second user equipment, the request to play back the program,

transmitting the program to the second user equipment;

receiving, at the second user equipment, the transmitted program

from the first user equipment; and

generating for display, at the second user equipment, the received

program on the second display screen.

Claim 721

The method of claim 720, wherein the program is a broadcast

program.

[343] In essence, the subject matter of the 870C Claims is the ability to request playback by a

second user’s equipment of a program recorded on a first user’s equipment.

[344] Videotron takes issue with Rovi’s portrayal of the 870 Patent as a “Multiroom PVR”

patent. It submits that a fair reading of the disclosure of the 870 Patent makes it clear that the

focus of the patent is on enabling users to record programs on a media server, and not on a whole

home PVR system as advocated by Rovi. More will be said about this later.

Page: 111

[345] The elements that remain in dispute between the parties revolve around the meaning of

“another user’s user equipment” and the concepts of “receiving/transmitting the program from/to

the second user equipment.” Before turning to construction of the disputed elements and

consideration of the obviousness issue, there are three matters raised by Videotron that need to

be addressed: (1) priority support for the 870 Patent, (2) sufficiency of the disclosure of the 870

Patent; and (3) the implications of amendments made to the 870 Patent during its prosecution.

(a)

Priority Support

[346] The 870 Patent claims a priority date of July 14, 1998. This priority claim is made to a

one page document - US 60/092,807 [807 Provisional] - that relates generally to a media server

that can record user selected programs.

[347] Given its brevity, the 807 Provisional is reproduced below in its entirety.

Client/Server Based Interactive Television Program Guide with

Remote Recording

Electronic program guides typically run locally to a user's

television or computer device.

However, since the processing and storage capabilities of a

television settop (sic), receiver, or digital television are generally

quite limited, the functionality of the guide on such a platform is

significantly limited.

Television platforms being developed today support a return path.

This will allow a program guide to use a remote server to augment

its local processing and storage capabilities.

There are many possible methods for the settop/receiver (sic) to

communicate with a remote server. This might include a

connection over the cable return path, a telephone modem, or an

in-home network to a local PC that has an Internet connection.

Page: 112

One improvement that can be made with a connection to a remote

server is the use of the server to record television programs.

The viewer can select individual programs to be recorded. In

addition, the viewer may set up complicated criteria to identity the

programs of interest. For example, the viewer may wish to record

any comedy with Garry Shandling, as long as it hasn't been

recorded yet.

The server may record all programs that have been requested by

any viewer. Or, the server may record programs based on the

number of requests. If the latter approach is taken, the server may

notify the local client side of the guide of any requested program

that is not to be recorded on the server, so that it may be recorded

locally. The server may also allocate a specified amount of

memory for each household - either a fixed amount or a

configurable amount.

The server may automatically delete any recorded program after a

given period of time. Or, it may delete them after all interested

viewers have watched them.

The programs that have been recorded on the server may be made

available to the remote client guides, on a video-on-demand basis.

The guide may present lists, possible (sic) organized by theme,

date, or other criteria, for the viewer to select a program to watch.

The guide may present a list of personal recordings, requested by

members of the particular household. The programs available from

the server may also be included on other guide screens, such as

theme program lists.

When the viewer requests that a recorded program be played back

from a remote server, the normal VCR functions, including PLAY,

PAUSE, STOP, FAST FORWARD, and REWIND should be

available. All of the guide's parental control functions would apply

to and programs played back from the server.

Alternatively, the server may schedule the requested programs for

one or more later dates and times, perhaps based on preferences

indicated when the programs were originally requested. In this

case, the programs would be replayed on predetermined channels.

The server may delete any individual program after it has been

replayed a specified number of times.

Another alternative is that the recorded program would be sent to

the user on physical media such as DVD or VCR tape either

immediately or after a period of time of not being deleted.

Page: 113

The server may be located in the home, in which case requested

programs would be stored locally. The server in the home may just

be a settop (sic) box with additional memory - accessible locally

across the household cable network. Alternatively it may be a PC

or other device with extended memory.

[348] Mr. Sandoval noted in his validity report that the priority document does not mention any

search features (Group A claims), how “trickplay” can be effected (Claim 658), how “pointers”

to a remotely stored program are to be used (Group D claims), or how to effect a transfer of a

program between user devices – which is the very subject matter of the 870C Claims.

[349] Videotron submits that given the lack of disclosure in the 807 Provisional, the 870 Patent

should not be afforded its earliest priority claim; instead, the claim date should be June 11, 1999

(the date of the second priority document claimed in the patent). By this date, hard drive enabled

systems from both TiVo and Replay Networks, Inc. [Replay TV] had entered the market and

would have been very well-known to the Skilled Person.

[350] Rovi submits that it makes no difference what priority date is chosen. It claims that the

fact that the 870 Patent mentions the TiVo and ReplayTV systems indicates that there are no

important pieces of intervening art. Rovi further argues that there is no expert evidence on how

or if the obviousness analysis would change based on these pieces of art.

[351] I agree with Videotron that June 11, 1999 is the proper priority date for the 870 Patent.

As for Rovi’s argument that it does not matter what priority date is used, I consider it best to deal

with it in my obviousness analysis.

Page: 114

(b)

Sufficiency of the Disclosure

[352] This brings me to the matter of sufficiency of the disclosure of the 870 Patent.

[353] Section 27(3) of the Patent Act provides that the specification must correctly and fully

describe the invention and its operation or use as contemplated by the inventor.

[354] The disclosure must set out in clear and precise terms what the invention is (i.e. a correct

and full description). It must also provide sufficient instructions to the person skilled in the art so

that this person is enabled to reproduce and successfully operate the claimed invention. If the

first condition is not fulfilled the claim will fail for ambiguity, in the latter case, for insufficiency

(Pioneer Hi-Bred Ltd.v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623 at 1638).

[355] If the person skilled in the art is called on to solve problems in such a manner that undue

burden or an inventive step are required, the description is insufficient (and the attendant claims

are unsupported (Sanofi at paras 33-37). Moreover, a claim is overbroad if it claims more than

the invention made or disclosed (Pfizer Canada Inc. v Canada (Health), 2007 FCA 209 at para

115).

[356] Videotron submits that there is a complete disconnect between the written description of

the 870 Patent and the 870C Claims now being pursued by Rovi. I disagree.

Page: 115

[357] The 870 Patent acknowledges in its background description that systems capable of

storing programs on a hard disk had been developed, such as by TiVo and ReplayTV, but that

certain shortcomings with such systems had been identified at that point.

These systems are deficient in that they require additional

hardware in the user's home that may significantly increase the

cost of the user's home television equipment. Such systems also do

not allow users to record multiple programs simultaneously

without having multiple devices in the home.

[358] The 870 Patent further explains that typical VOD systems were known at the time, but

that they too suffered from purported drawbacks because either all programs were stored at the

head-end, or only those programs chosen by the head-end operator were stored.

[359] The problem that the 870 Patent purports to address is how to deal with the shortcomings

of storing programs on a local hard drive. The 870 Patent sets out the solution to the issues it

identifies with the prior art systems would be to “provide a program guide system that allows

users to direct a server to record certain programs that later may be played back to the user on

demand.”

[360] Mr. Sandoval critiqued the disclosure of the 870 Patent by stating he did not see any

section of the 870 Patent which describes a first user equipment communicating directly with a

second user equipment particularly regarding programs stored on the user equipment. The 870

Patent also does not describe two user equipment communicating with or sharing a single local

media. However, he did not say that this would prevent the Skilled Person from putting the

invention of the 870C Claims into practice.

Page: 116

[361] In my view, the 870 Patent allows the Skilled Person to use the invention of the 870C

Claims by relying on the information disclosed in the specification, and the common general

knowledge. There are instructions in the 870 Patent about communication with and playback

from both a remote or local media server.

[362] Both experts agree that the 870C Claims are generally directed to viewing content on one

STB that was recorded on a second STB. The patent also defines the “local media server” as a

device in the home of the user that is suitable for storing and playing back programs on demand.

This is consistent what Mr. Thomas described as the substance of the invention of the 870 Patent.

A. So it describes a client server environment where you have an

IPG and then you have media servers. The media servers could be

remote or they could be local within the household.

Q. Again, was there a problem that you were trying to solve with

respect to this patent?

A. Well, once you introduce media servers, particularly if you have

several different locations, the consumer is going to need

convenient methods of finding content on those servers. So, for

example, an integrated search function that would pull up the

information you were looking for from all the devices.

[363] In the circumstances, I find that Videotron has failed to prove that the 870C Claims are

insufficiently described.

(c)

Amendments to the 870 Patent during prosecution

[364] Videotron produced the file history of the 870 Patent which shows that substantial

amendments were made to the 870 Patent in or about 2014 by the addition of hundred of claims,

including the 870C Claims. Videotron claims that the inventors were not consulted about the

Page: 117

amendments and that the 870C Claims are not described in the disclosure. According to

Videotron, this raises an issue whether the claims are broader than the invention made or

disclosed.

[365] The circumstances of this case are certainly unusual, if not unorthodox. The 870 Patent

was not granted until almost two decades after its filing date, and only after Videotron refused to

renew its licence arrangement with Rovi in 2016. By that time, the 870 Patent had morphed into

a massive document that spans hundreds of pages of disclosure and 999 claims.

[366] During his cross-examination, Mr. Thomas was cross-examined at length about the

invention disclosed in the 870 Provisional, what work he and his team performed to develop the

system described in the 870 Patent, and what involvement he had in the patent amendment

process. Mr. Thomas had difficulty remembering what was done by his team 20 years earlier. In

fact, his memory of the events was quite poor.

[367] Mr. Thomas could not recall working on any feature or improvement described in the 807

Provisional and could only say that what was described in the priority document seemed

“reasonable” for someone working in the field at the time.

[368] The amendments to the 870 Patent were handled by US and Canadian patent counsel.

Rovi’s general approach was to involve inventors in the initial stages of drafting the provisional

and full utility applications. After that, the inventors were not as a matter of course involved.

Page: 118

This appears to be the case with the 870 Patent, as acknowledged by Mr. Thomas in cross-

examination.

Q. Maybe we could start by just telling me what you do actively

remember, and then we can talk about the process in general.

A. Well I don't actively remember what I might have done 20 years

ago.

Q. Fair enough. So you don't remember working with outside

patent counsel on this specific project in any way?

A. No, I don't.

Q. I take it that includes any kind of decisions in terms of what

scope the ultimate patent would get or how to deal with the Patent

Office? You don't remember being involved in that for this?

A. On a specific patent, no.

[369] Videotron submits that it is highly unlikely that any inventors had anything do with the

patent application after it was filed. While that may be, a claim is not invalid simply because it

was added without the involvement of the inventor after a patent application is filed. As stated in

Fox on the Canadian Law of Patents, 5^thEd. § 9:61: “Subject to a prohibition against the

addition of a new matter, the specification and any drawings furnished as a part of a patent

application may be amended before the patent is issued.”

[370] I am unable to conclude on the evidence before me that any new matter was added that

would invalidate any of the 870C Claims. In Dennison Manufacturing Co. of Canada Ltd. v.

DYMO of Canada Ltd.(1975), 23 CPR (2d) 155 (FCTD), Mr. Justice Mahoney stated that for the

purpose of assessing whether new matter has been added, a comparison is to be made between

Page: 119

the application as filed and the patent as issued and the file history is irrelevant to this issues as is

the reason for the amendment.

[371] In the case at hand, no expert evidence was presented to make such a comparison.

Moreover, there was no expert evidence as to how the Skilled Person, reading the 870 Patent

application as originally filed, would understand the material added to the specification and

whether it would constitute improperly added matter. I find that Videotron has not proven that

the claims at issue are broader than the invention made or disclosed.

(d)

Claim Construction

[372] To find infringement, the Court must find that all essential elements of the 870C Claims

are part of the illico 2 system. There are two elements in dispute in the context of infringement.

The first element “another user’s user equipment” only pertains to Claims 456 and 459. The

second dispute relates to the element “receiving/transmitting the program from or to the second

user equipment” found in Claims 454, 457 and 720.

[373] There does not appear to be any dispute that the illico 2 system includes all the other

elements of the asserted claims. Since at least January 1, 2017, the illico 2 system has provided

the ability to schedule future recordings on STBs, and multiroom functionality.

Page: 120

(i)

another user’s user equipment

[374] The element “another user’s user equipment” is of relevance for the infringement analysis

of Claims 454 and 456 only.

[375] The experts disagreed as to whether “another user” refers to another person in the same

household (Dr. Balakrishnan’s view) or another subscriber in a different household (Mr.

Sandoval’s view).

[376] Mr. Sandoval argued that for the Skilled Person, the reference to “user” is akin to

“subscriber”, and to the industry, there is typically no distinction of equipment belonging to

different individual people within a household/subscriber. Therefore, when the claims refers to

“another user’s user equipment”, this would be referring to someone, and their equipment,

outside the household of the “first user”. From Mr. Sandoval’s perspective, the Skilled Person

would understand the use of the word “another user’s” to refer to a situation where a user is

playing back a program that was saved by someone else, such as a neighbour down the street or

possibly describing a peer-to-peer network, such as “Napster” or a centralized file sharing

system.

[377] Dr. Balakrishnan opined that the 870 Patent uses the term “user” in a generic way. It is

not referring to a user with a separate account. Rather, it is speaking about another user within

the same account or within the same home. Dr. Balakrishnan saw no logic to having one user

access another user’s account in another home because the Skilled Person would be cognizant of

Page: 121

privacy issues, ownership issues, and copyright issues that would make such a system

undesirable.

[378] Due to the lack of disclosure in the 870 Patent, it is not entirely clear what “another user’s

user equipment” would mean. That said, the term is clearly not limited in the way Mr. Sandoval

has suggested. While I agree with Dr. Balakrishnan that content stored on “user equipment” at

home would generally only be shared between users sharing the same account, I find that the

Skilled Person would not interpret “users” to be exclusively persons in the same household.

(ii)

“receiving/transmitting the program from or to the second user

equipment”

[379] The issue on construction of this element is whether transmitting or receiving in response

to a playback request encompasses both streaming and file transfer. Once again, the language

used in the asserted claims is not clear.

[380] Mr. Sandoval stated in this validity report that the Skilled Person would assume that the

program was transmitted (or received) at the same time that it was being viewed “although it

could also be that the second device stores the program temporarily, such as on its own hard

drive, first, and then displays it for viewing.” He noted in his infringement report that there is no

description in the 870 Patent of any functionality for transmitting a program from one STB to

another STB.

Page: 122

[381] In his infringement report, Dr. Balakrishnan did not construe the term “transmitting”. As

for the term “receiving”, he simply stated that it would be understood to have its ordinary

meaning. In his validity report, Dr. Balakrishnan argued that “the key concept is that the program

is transmitted from the first STB to the second STB in response to a play back request by the

user, i.e., the program is played back rather than stored at the second STB for future playback.”

[382] In his responding infringement report, Mr. Sandoval took issue with Dr. Balakrishnan’s

statement that “receiving” should be given its ordinary meaning. Mr. Sandoval noted that Claim

720 includes the step of “... transmitting the program to the second user equipment,” followed by

the step of “receiving, at the second user equipment, the transmitted program from the first user

equipment” and concluding with the step of “generating for display, at the second user

equipment, the received program on the second display screen.” Mr. Sandoval argued that should

"receiving" be given its ordinary meaning, as proposed by Dr. Balakrishnan, “this ordinary

meaning requires that the entire program be transferred to the second user equipment” and

Videotron's systems do not operate in this way.

[383] Rovi submits that this is an example of Mr. Sandoval shifting his construction to suit his

or Videotron’s purposes. According to Rovi, Mr. Sandoval was very clear in his validity report

that the Skilled Person would assume that the program was transmitted or received at the same

time as it was being viewed. While acknowledging that Mr. Sandoval also indicated that the

program could be stored temporarily, Rovi says that the notion of copying or permanent file

transfer was nowhere in his original construction and this narrowed construction should not be

accepted by the Court. I disagree.

Page: 123

[384] I see no shifting or inconsistency in Mr. Sandoval’s evidence. He made it clear from the

start that streaming was contemplated, but that temporary storage of the program on the second

device was also a possibility. Mr. Sandoval never suggested, as stated by Rovi, that the program

would need to be “permanently” stored on the second device.

[385] It may seem illogical to set up a system intended to address problems with storage

capabilities of devices that would include an option of storing a program on second device for

playback; however, as noted by Mr. Sandoval, the 870 Patent contemplates this approach.

“In a second suitable approach, programs and program guide data

are distributed as one or more digital files or as a digital data

stream, and are stored by user television equipment for playback.”

[386] I agree with Mr. Sandoval that the term “received” in Claims 454, 457 and 720 would be

understood by the Skilled Person as allowing for two options – streaming or file transfer. This is

consistent with the particular language used the claims, making a distinction between the active

“receiving” and passive “received”. Viewed logically, Claim 720 requires that the enumerated

steps be performed in a particular sequence. The last step is “generating for display, at the second

user equipment, the received program on the second display screen.” (My emphasis). The claim

could have said “the program being received” or some other language conveying the idea of

streaming. In my view, the use of the past participle of the verb receive cannot be ignored.

[387] For the above reasons, I find that the Skilled Person would understand that transmitting

and receiving could be accomplished either by streaming the program or file transfer.

Page: 124

(e)

Patent Validity

(i)

Obviousness

[388] Obviousness is assessed as of the priority date of June 11, 1999. Allegations of

obviousness, unlike anticipation, do not focus on a single disclosure but on the mosaic of the

relevant prior art and the common general knowledge.

[389] This step one of the Sanofi test, the Skilled Person and the CGK identified earlier in these

reasons apply to the 870 Patent. As for step 2, Rovi claims that the following are the key features

in the 870C Claims:

a) transmitting a recording from one STB to another;

b) a request to playback a program; and

c) “in response to the request to playback, receiving with the first user equipment the

program from the second user equipment” or “in response to receiving, at the first

user equipment from the second user equipment, the request to play back the

program, transmitting the program to the second user equipment.”

[390] The next step in the obviousness inquiry compares the state of the art, as viewed by the

Skilled Person through the lens of their CGK, with the claims at issue. As stated earlier, if there

is no difference between the two comparators, the claims are obvious. If there is a difference, the

claims are obvious if the skilled person would not need to take any inventive steps to bridge the

gap.

Page: 125

[391] Videotron submits that any potential gap between the subject matter of the 870C Claims

and what is found in each of DAVIC, Fujita and Hair would have been obvious for the Skilled

Person to bridge – having regard to the Skilled Person’s CGK.

[392] Focusing on key aspects of the CGK relevant to the 870 Patent, the experts agreed that

home networks would have been known to the Skilled Person. The Skilled Person would have

also understood that once audio-visual content is available on a network, such as from a server,

any other device on the network would be able to retrieve that content. Moreover, the concept of

multi-room PVR was also known in the 1990s. Although not many people may have actually

interconnected devices using Ethernet cables in their own homes, the concept was appreciated by

those in the industry and would have been known to the Skilled Person. Both DAVIC and Fujita

provide descriptions of the commonly known home network structure. Other systems (like the

TiVo and ReplayTV systems) were known and such systems allowed for the recording of

programs on digital storage devices, such as hard drives, including programs originally

broadcast.

[393] The sections of DAVIC that Videotron relies on in support of their obviousness argument

include functions 4.06 and 4.07, reproduced below.

Page: 126

[394] DAVIC describes “set top units” (STUs). The Skilled Person would understand that STU

is just another acronym for STB. The DAVIC reference identifies benefits of networking the

STUs in the same location, such as home, or a different location, such as another home. One of

the benefits of home networking is that two STUs on the network could synchronize their

applications and could transfer content between each other.

[395] Both Dr. Balakrishnan and Mr. Sandoval agreed that DAVIC does disclose the ability for

one STB to access a stored program on another STB. Similarly, there was no dispute that the

STB that accessed the stored program would make the program available for viewing.

(2)

“generating a request to playback a program recorded from broadcast on second

user equipment from first user equipment (Claims 456/459)”

[396] DAVIC shows a home network with many interconnected devices. As explained by Mr.

Sandoval, once a home network is established, the Skilled Person would know that every

connected device could “talk” to every other connected device. This functionality was expressly

described in section 7.2 of DAVIC: “an in-home digital network … will provide selectable

access to … services from multiple in-home devices” (see paragraph 71). The clear identification

in DAVIC of “selectable access”, coupled with the reference of such access being for “digital

storage devices in the home” using “home networks for DAVIC”, is strong support for the

opinion of Mr. Sandoval that it was known by the skilled person to use an STB to selectably

access (i.e. request) a particular service - i.e. the playback of a program stored by another STB.

(3)

“receiving the program from the second user equipment with the first user

equipment (Claims 456/459) / transmitting (Claims 720/721)”

Page: 127

[397] I have already construed the 870C Claims as relating to both streaming and playback

after receipt of some or all of the program.

[398] There was a dispute between the parties relating to the term “session” in the DAVIC

disclosure. Mr. Sandoval testified that “session” is a technical term where there are two end

points that start a session and end a session. He explained that “session” was temporal and that to

“transfer a session”, as that term is used by DAVIC, would be understood as referring to

streaming content from one STB to another STB. Mr. Sandoval added that the Skilled Person

would have been familiar with personal recording of broadcast content using a VCR, would be

familiar with the concept of client-server architectures, and would be familiar with the concept of

session based content delivery as supported be emerging VOD systems. According to Mr.

Sandoval, in this context, one would most readily read that as referring to streaming content from

one STB to another.

[399] Dr. Balakrishnan disagreed that DAVIC described streaming. He argued that the Skilled

Person would understand “transfer” to mean copying from one unit to another for subsequent

viewing.

[400] I prefer Mr. Sandoval’s evidence on this point. His evidence relating to the meaning of

“session” was not shaken on cross-examination. I also find Dr. Balakrishnan’s interpretation is

inconsistent with the way he construed the terms “transmitting” and “receiving” in the 870C

Claims. Nor is there any good factual basis for his opinion.

Page: 128

[401] The Skilled Person would know that they could transfer a program between STBs. From

there, Mr. Sandoval explained: “The skilled person would understand that a user would initiate,

request or arrange this transfer of the program so that it could be viewed at the receiving STB.

This could be done as a playback ‘session’ being viewed on the second STB, or as a copy being

‘transferred’ to the second STB for viewing after it has been fully or partially transferred.” I find

that his explanation is logical and completely consistent and supported by the CGK and by what

is said in DAVIC.

[402] Videotron submits that implementation details, such as specifics of playback requests for

recording a program at the first STB, and for requesting it to be played back from the second

STB are merely obvious implementation details. I agree. In order for a first equipment to have a

program, it must necessarily have been recorded or transferred there, most likely in response to

some type of user interaction. Similarly, a user action, such as to request a program would

initiate the transfer of the program to the second unit to watch it. These would be inherent to the

functionality described in DAVIC.

[403] Rovi submits that the Skilled Person would not understand DAVIC to teach the

immediate playback of a program based on a user request, as streamed from one STB to another.

However, this argument was based on Dr. Balakrishnan’s incorrect construction that the 870

Patent requires that the program be played back rather than stored at the second STB for future

playback, which was rejected, and is not otherwise supported by the evidence.

Page: 129

[404] During his cross-examination, Dr. Balakrishnan was asked to explain the difference

between the details set out in DAVIC and those in the 870C Claims.

Q. I would like you to focus again on the written description of the

870 patent. Not the claims, but the written description of the

embodiments. And is it not true that this so-called wish list of

DAVIC provides more detail about set-top box being networked to

share recorded programs than the entire 870 patent description?

A. I disagree with that.

Q. And what parts of the 870 patent description would you like to

take me to support your disagreement? Not the claims. Not the

claims.

A. We'll have to walk through it.

Q. We're not going to walk through it. Is there anything today that

you can point to in that description that you say makes it more

detailed than DAVIC?

A. I would have to walk through it. I don't have the 870, a very

large patent, memorized chapter and verse.

Q. Do you have any idea where it's described?

A. I will have to walk through it. I think I have answered that

question.

Q. So as of today, sitting here today, you cannot point me to any

part of …. the 870 that describes a connection between set-top

boxes to allow a stored program to be transferred, can you?

A. Beyond the claims I do not have the rest of it memorized so I

will have to walk through it.

[405] One would have expected Dr. Balakrishnan to have this information at his fingertips at

trial if it existed. I find that to the extent that the specific claim elements such as, for example, a

“request to playback a program” or a “record request” are not expressly set out in DAVIC, such a

gap between the prior art and the 870C Claims would be obvious to the Skilled Person.

Page: 130

[406] Rovi submits that DAVIC “covers everything but says almost nothing”. However,

nothing can be further than the truth. It is not, as claimed by Rovi’s counsel, random and

different ideas “like IKEA parts” or as Dr. Balakrishnan described it “a wish list”.

[407] It should be recalled that DAVIC was the product of extensive consultations with the

industry over a number of years. As explained in its introduction:

DAVIC specifications define the minimum tools and dynamic

behavior required by digital audio-visual systems for end-to-end

interoperability across countries, applications and services. To

achieve this interoperability, DAVIC specifications define the

technologies and information flows to be used within and between

the major components of generic digital audio-visual systems.

[408] DAVIC would be understood by the Skilled Person to read as a whole. It also reflects the

technologies and information that would already have been known to the Skilled Person.

[409] Mr. Sandoval testified that DAVIC makes very clear to the Skilled Person that one of the

benefits of networking within the home is that two STBs could transfer content between each

other. According to Mr. Sandoval, that is the essence of the multi-room DVR feature. I agree.

[410] For the above reasons. I conclude that the 870C Claims are obvious in view of DAVIC

and the CGK alone.

[411] Given that I find that any gap between DAVIC and the subject-matter of the 870C Claims

would have been bridged by the Skilled Person and their CGK, I need not address the two other

pieces of prior art cited by Videotron.

Page: 131

(a)

Infringement

[412] Mr. Sandoval agreed that the illico 2 system “allows programs stored on a PVR to be

streamed from that PVR to another STB within the home of the same user/subscriber.” This

element is present in the illico 2 system.

[413] In accordance with Mr. Sandoval’s original construction of “receiving” and

“transmitting”, which I accepted, and Dr. Balakrishnan’s infringement analysis set out in

Appendix 5 of his infringement report, “transmitting” includes streaming. By Mr. Sandoval’s

admission, the illico 2 system streams recorded program from one device to another. These

elements are therefore present in the illico system.

[414] Thus, if I am incorrect and the 870C Claims are found to be valid, the illico 2 system

infringes the said claims.

XII.

The 344 Patent: IPG Coordination

[415] The filing date of the 344 Patent is July 16, 1999. The claimed priority date is July 17,

1998.

[416] The 344 Patent relates to providing “interactive media guides” providing IPG

functionality on multiple devices within a household. The 344 Claims, reproduced below, are the

dependent on Claim 113 and claim a method for coordinating IPGs such that actions taken on

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one IPG are displayed in the other IPGs and vice versa. All the 344 Claims are asserted by Rovi

to be infringed by Videotron.

Claim 113

A method for coordinating a first interactive media guide and a

second interactive media guide, the method comprising:

receiving, from the first interactive media guide, a first indication

of a first activity performed on a first user equipment device

implementing the first interactive media guide, wherein the first

activity is associated with a first program;

receiving, from the second interactive media guide, a second

indication of a second activity performed on a second user

equipment device implementing the second interactive media

guide, wherein the second activity is associated with a second

program;

and generating content, for display on the first interactive media

guide, based on the first indication from the first interactive media

guide and the second indication from the second interactive media

guide.

Claim 116

The method of claim 113 further comprising generating content,

for display on the second interactive media guide, based on the

first indication from the first interactive media guide and the

second indication from the second interactive media guide.

Claim 119

The method of claim 113, wherein the first activity and the second

activity comprise one or more of adjusting favorite channels,

modifying parental control settings, scheduling a recording,

adjusting recording settings, adjusting pay-per-view settings,

adjusting message settings, adjusting reminders, and modifying

user profiles.

Claim 120

The method of claim 113, wherein the first user equipment device

and the second user equipment device are located in a household.

Claim 123

Page: 133

The method of claim 113 further comprising:

generating, based on the first indication from the first interactive

media guide and the second indication from the second interactive

media guide, an aggregated list of scheduled recordings.

[417] The background of the 344 Patent includes a description of the problem being addressed:

Families often have multiple televisions and set-top boxes placed

throughout the household. A family's household even may include

multiple homes. Because there is no coordination between the

program guides running on each of the various set-top boxes in the

household, if a user adjusts the settings for a program guide on one

set-top box, these settings are not communicated to the program

guides on any of the other set-top boxes in the household. If a

parent wants to restrict access to certain channels on all the

televisions in the household, the parent must adjust the parental

control settings on each set-top box individually. Reminders and

favorite channel settings must similarly be set for each program

guide separately if a user desires to have such settings be in effect

throughout the household…

Previously developed systems do not allow users at one location in

a household to adjust the program guide settings of another device

in the household over communications paths.

[418] The solution is captured in the following extract taken from the Summary of the

Invention.

Some embodiments of the present invention may provide a

program guide system that allows a user to adjust to the user

settings of a plurality of program guides at different locations

within a household from a single location.

This may be accomplished by providing an interactive television

program guide system for a household in which multiple

interactive television program guides within the household are

coordinated.

Page: 134

[419] Videotron points out that the 344 Patent describes two steps for adjusting user settings

across multiple devices. Figure 2 of the 344 Patent is a flow chart of the steps involved in

adjusting user settings and applying those adjustments to desired locations in accordance with

the invention.

[420] As can be seen in Figure 2, the two steps are: first, providing an opportunity for a user to

adjust program guide settings; and second, coordinating operation of multiple IPGs using the

adjusted program guide settings.

[421] The parties do not agree on the meaning of the two elements I have highlighted above.

The term “coordinating” is used in Claim 113, while the language describing “adjusting program

guide settings” can be found in Claim 119.

(1)

“coordinating” (Claim 113)

[422] The term “coordinating” is relevant for assessing infringement and validity.

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[423] The parties agree that the 344 Claims are generally directed to “coordinating” two IPGs

when there are two within a home. It is important to note that neither Mr. Sandoval nor Dr.

Balakrishnan originally construed the term.

[424] Mr. Sandoval only made passing reference to the term in his validity report. He observed

that the background of the 344 Patent includes a description of the problem and remarked that

the description was very general about how the problem is addressed. He then offered that the

specification “suggests that the solution is simply that the guides are 'coordinated' or that the user

interface allows settings on other guides to be modified.”

[425] A dispute over the meaning of “coordinating” only arose when Mr. Sandoval responded

to Dr. Balakrishnan’s infringement report. In his responding infringement report, Mr. Sandoval

referred to the laptop and mobile phone that Dr. Balakrishnan had used in testing the illico 2

system to set and modify recordings as “accessing devices (basically sophisticated remote

controls) and not peer devices with television functionality and settings.” [Emphasis in original.]

[426] In sur-reply, Dr. Balakrishan disagreed with Mr. Sandoval’s characterisation of the laptop

and mobile phone that were used for testing as accessing devices. He also disagreed that there

was no “coordination” between the mobile/online application and the STB. He argued that there

is “coordination” between the mobile/online application and the STB, based on the following

reasoning:

For example, when a recording is scheduled on the mobile

application and web application, the scheduled recording is

Page: 136

indicated on the STB. Further, when a recording is scheduled on

the STB, the scheduled recording is indicated on the mobile

application and web application. In rebuttal, Mr. Sandoval agreed

that, using a remote device, a user of Videotron’s system can

change the recording schedule on a particular STB. He added

however “this illustrates only that the remote device acts as a

remote interface for the STB. This does not establish that

‘coordination’ or sharing of settings is taking place.”

[427] Rovi submits that the issue on construction is whether the 344 Patent only contemplates

coordination taking place between “peer devices” or contemplates coordination between media

guides on a variety of devices. I see the issue differently.

[428] At trial, Mr. Sandoval testified that the Skilled Person would understand that

“coordinating” would require sharing information so that settings are made to be identical across

multiple program guides. I am fully cognizant that Mr. Sandoval’s construction must be viewed

with caution as he imported this limitation into the 344 Claims only after seeing the illico

system. However, the same can be said about Dr. Balakrishnan, who not only failed to construe

the term in his infringement report, but only came up with a construction in sur-reply.

[429] There is no description in the 344 Patent that limits “coordinating” to what Mr. Sandoval

calls “peer devices” or to STBs. In fact, the 344 Claims do not stipulate coordination between

devices, but rather between two “interactive media guide(s)” on those devices.

[430] Videotron’s argument is more nuanced however. It submits that the Skilled Person would

understand from reading the 344 Patent and looking at its drawings, and in particular Figure 4a,

that the “first interactive media guide” and the “second interactive media guide” would possess

Page: 137

similar settings in order for them to be coordinated. It contends that the Skilled Person would

understand that “coordinating” is more than just simply using a remote device like a cellphone to

change the settings on a STB, as advocated by Dr. Balakrishnan. It says that in such a scenario,

the cellphone is acting as a sophisticated remote control, but not as a peer device with its own

matching settings. The operation of two IPGs is not coordinated and only the first step of the 344

Patent is actualized – providing an opportunity to change a setting. I agree. The functionality

described by Dr. Balakrishnan actually appears to be the same as he describes for the 061 Patent,

namely, for remotely selecting a program for recording by a local device in the home.

[431] Dr. Balakrishnan’s construction is flawed. First, Claim 113 includes “receiving ... a first

indication of a first activity.” In Dr. Balakrishnan' s interpretation this would mean “receiving a

display of a communication that a request has been carried out of a request from a user relating

to program guide features.” There is not a piece of hardware or software part of the patent that

can “receive a display;” there is only the human user’s eye. Second, Claim 113 concludes with

the step of, “generating content, for display on the first interactive media guide, based on the first

indication ... and the second indication.” In Dr. Balakrishnan’s interpretation this would mean,

“generating content, for display on the first interactive media guide, based on a display that

something has been carried out on the first media guide and a display that something has been

carried out on the second media guide.” This does not make sense because neither the hardware

nor the software systems described in the patent generate content based on what has been

displayed on other equipment.

Page: 138

[432] Mr. Sandoval’s construction is both logical and well supported by the language of the

344 Patent. In the circumstances, I conclude the purpose of the 344 Patent is to coordinate

operation of guides with similar settings.

(2)

“the first activity and second activity comprise one or more of adjusting favorite

channels, modifying parental control settings, scheduling a recording, adjusting

recording settings, adjusting pay-per-view settings, adjusting message settings,

adjusting reminders, and modifying user profiles.” (Claim 119)

[433] The above terms are relevant for assessing validity. Videotron’s written submissions in

this regard are rather pithy and set out below.

…The skilled person would understand claim 119 on its face to

provide a list of example “activities”. However, as Mr. Sandoval

pointed out, the skilled person would have trouble reconciling the

list in claim 119 with the requirements of claim 113. For example,

claim 119 lists “modifying user profiles” as an “activity”, but user

profiles are not related to specific programs. The same issue arises

with respect to “adjusting message settings” – how is this setting

associated with a program?

[434] Rovi’s response is brief as well. It says that Claim 119 does not require every activity

listed to be present but merely requires “one or more of” the list of activities.

[435] It would appear that there is nothing here to construe. As conceded by Videotron, the

Skilled Person would understand Claim 119 on its face to provide a list of example activities.

The argument advanced by Videotron goes more to the issues of ambiguity and sufficiency of

the 344 Patent raised separately in its submissions.

Page: 139

(a)

Patent Validity

(i)

Ambiguity

[436] Videotron argues that the 344 Patent fails to properly demarcate the boundaries of the

monopoly claimed by the asserted claims. The words "activity" and "indication" are ambiguous

and would leave the skilled person puzzled as to their meaning. Mr. Sandoval stated that it is not

possible to definitively state what an “indication” is. Further, the claims are said to be

inconsistent in their usage of “activity.” In Claim 113, “activity” must be associated with a

program; however Claim 119 defines many “activities” that are not so associated. According to

Videotron, the impossibility of coming to a concrete claim construction renders the claims

ambiguous and invalid. I disagree.

[437] Mr. Sandoval provided no specific opinion on ambiguity. At best, he stated that the

claims were “unclear” but was nonetheless able to provide an opinion as to the meaning of all the

claim elements. On this basis alone, Videotron has failed to meet its onus of proving that the

claims are ambiguous or otherwise do not meet the requirements of section 27(4) of the Patent

Act.

[438] Despite Mr. Sandoval’s statements that the terms “indication” and “activity” are

“unclear,” he provided a construction and applied it in his validity report and his infringement

report. He and Dr. Balakrishnan came to different constructions of these terms, but those

differences are simply that: difference of opinions between two experts about the meaning of

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claim terms. Without more, such differences cannot form the basis for a conclusion that the 344

Claims are ambiguous.

[439] The allegation of invalidity of the 344 Claims for ambiguity fails.

(ii)

Insufficiency of the 344 Patent

[440] Videotron submits that there is no technical implementation suggested by the 344 Patent

that would allow someone to actually put into practice what is claimed. It says that apart from the

actual claims, there is also no technical description in the 344 Patent that explains how

coordination between different devices is to be done. Moreover, the 344 Patent does not teach

one how to solve the issue of having to replicate settings manually across devices. According to

Videotron, the disclosure of the 344 Patent is insufficient and it is therefore invalid. I disagree.

[441] Based on the evidence before me, the 344 Patent allows the Skilled Person to use the

invention of the 344 Claims with the same success as the inventors by relying on the information

disclosed in the specification, and the CGK.

[442] Videotron has not provided the Court with any evidence to meet its onus on sufficiency.

While Mr. Sandoval criticized the 344 Patent disclosure in a number of ways, correctly I may

add, none of those criticisms would render the 344 Claims insufficiently described or overbroad.

Page: 141

[443] Mr. Sandoval’s primary complaint about the disclosure of the 344 Patent was that the 344

Patent lacked detail on “coordinating” two guides. Dr. Balakrishnan disagreed, citing various

passages of the 344 Patent that assist in understanding the claimed method.

[444] The law is clear that to determine what the invention is, the skilled person must read the

disclosure together with the claims, with due regard to the primacy of the claim language as that

which defines and set the limits of the invention. The Claim 113 shows the steps required to do

this coordination.

[445] Mr. Sandoval also made a number of comments in his construction about other claim

terms not being specifically described in the disclosure but went on to provide his view that a

skilled person would understand the terms in a particular way.

[446] I find that Videotron has failed to prove that the 344 Claims are insufficiently described

or overbroad.

[447] The argument cuts both ways. When cross-examined, Dr. Balakrishnan discounted the

absence of technical implementation details in the 344 Patent.

Q. Setting aside the claims, can you point to any other place in the

patent that defines how to do the coordination?

A. I'll have to go through that here, if I may.

Q. Luckily it's not the 870.

A. I think the various figures do show examples of the

interconnection but I think, if your I think to short-circuit this, if

your question is, is there a technical example of doing the

Page: 142

coordination beyond what's in the claims, there is not a technical

description.

[448] Yet, Dr. Balakrishnan went on to argue that DAVIC is not enabling because it fails to

provide enough detail to the Skilled Person. However, if this is the case, then to be consistent,

the 344 Patent would also be insufficient. As counsel for Videotron put it, the question raised is:

“What does the 344 Patent disclose that goes beyond DAVIC that would provide the skilled

person with the tools necessary to implement coordination? Where is the “hard coinage”

provided by the patent disclosure?”

[449] As explained below in the obvious section below, the answer is nothing.

(iii)

Obviousness

[450] Videotron argues that the 344 Patent is obvious in light of either Fujita or DAVIC and the

Skilled Person’s CGK.

(3)

(i) The Skilled Person and their CGK

[451] The Skilled Person identified earlier in these reasons, as well as their CGK, would be

equally applicable to the 344 Patent.

[452] In terms of the key aspects of the CGK relevant to the 344, both experts agreed that the

Skilled Person would, by the late 1990s, be familiar with how to create a network of devices,

both as a local area network (LAN) and wide area network (WAN). As I already found, the

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Skilled Person would be familiar with digital systems, including personal computers and home

networks. It was also known that, once devices were connected on a network, they could all “talk

to each other”. The Skilled Person would also be familiar with the fact that subscriber level

settings could be shared between devices inside a user’s home.

(4)

(ii) The inventive concept / claims as construed

[453] No inventive concept for the 344 Claims was expressly identified by either expert, other

than the claim language itself. The parties agree that all claim elements are essential.

[454] The key features of Claim 113, and all of its dependent claims, are: 1) coordinating

settings for a first IPG and a second IPG; 2) receiving first/second indications associated with

first/second programs; 3) displaying an interface with certain content related to the coordinated

settings.

(5)

(iii) “Gaps” from the prior art are inventive

[455] Rovi submits that there are important differences between the prior art and the 344

Claims. It says that each of the following elements is contained in the 344 Claims but is absent

from the prior art: (a) the use of IPGs to carry out this coordination; and (b) a return

communication path.

[456] Videotron submits that any potential gap between the subject matter of the asserted

claims of the 344 Patent and what is found in each of DAVIC and Fujita would have been

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obvious for the Skilled Person to bridge – having regard to their CGK. I need not consider Fujita

since, as explained below, I conclude that the 344 Claims are rendered obvious by DAVIC and

the CGK alone.

[457] It bears repeating that DAVIC was a must-read for anyone interested in digital audio-

visual applications back in 1998. There was motivation in the industry to develop new systems

compliant with the DAVIC specifications, particular in light of the transition taking place from

analog to digital. One particular function in DAVIC that is very relevant to the present debate is

Function 8.14, under the heading of MEDIA SYNCHRONIZATION LINK FUNCTION, which

is reproduced below.

(a)

“coordinating” (all claims)

[458] Dr. Balakrishnan argued that the gap in DAVIC was that it fails to provide an indication

of what is being synchronized or how this may occur and does not describe how to display

synchronized content. However, as explained by Mr. Sandoval, the concept of coordinating

settings across multiple STBs is identified by DAVIC. DAVIC describes the ability to exchange

information, potentially in a direct and simple manner, between devices on a home network.

[459] DAVIC describes “synchronization” between applications running on STBs on the home

network, which for all intents and purposes is coordination. While the term IPG is not used in

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DAVIC, the Skilled Person would clearly understand one of the applications being synchronized

could be an IPG running on the STB. The Skilled Person would necessarily have understood

that synchronizing applications would be taken to mean synchronizing their operation.

[460] As noted by Mr. Sandoval, the Skilled Person would have been familiar with subscriber

settings. The Skilled Person would recognize that one setting that could be synchronized between

IPGs was a known subscriber setting – such as a Pay-Per-View setting.

(b)

“receiving first/second indications associated with first/second programs

(all claims”)

[461] Given the disclosure in DAVIC that synchronization should be established between STBs

on a network, and the CGK related to digital devices on a network, the Skilled Person would be

able to put into practice a home network comprising multiple STBs, each STB with the ability to

synchronize the operation of its application with an application running on another STB.

[462] I agree with Mr. Sandoval that, once synchronized, the settings would be available on

both STBs. Necessarily some “indication” that user settings were adjusted would have to be

exchanged by the STBs for the described synchronization to occur.

(c)

“generating content, for display” (all claims)

[463] Generating a display of the synchronized settings would be obvious as the Skilled Person

would be familiar with general IPG and user interface concepts. It would not be inventive to the

Skilled Person to include a display of the synchronized applications described by DAVIC.

Page: 146

[464] Therefore, the gaps identified by Dr. Balakrishnan would have been easily traversed by

the Skilled Person by looking to DAVIC and having regard to their CGK.

[465] This brings me to Fujita.

[466] Fujita describes how indications related to activities associated with programs may be

exchanged on a home network. Dr. Balakrishnan took issue with Fujita because he was of the

opinion that Fujita was not directed towards a television system, did not disclose IPGs, does not

teach receiving indications, and does not teach generating content for display.

[467] I disagree with the first point raised by Dr. Balaskrishnan. Fujita sets out details that

describe a home network comprising televisions, VCRs, STBs, and other devices. In particular,

the specifics of the Fujita menu interface used with the standardized “CEBus” audio-visual home

network for controlling televisions and VCRs are disclosed so as to provide specific teachings to

the Skilled Person.

[468] Dr. Balakrishnan is correct that Fujita does not teach use of an IPG. More particularly, it

does not disclose the “coordination” of a first interactive media guide and a second interactive

media guide as I have construed the term. Fujita simply describes a menu interface that allows,

among other things, a user to record a program, control playback, and determine that a VCR on

the home network is in the process of recording. While Fujita’s VCR menu provides a series of

options that may be accessed from different televisions, and potentially from different rooms,

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Fujita does not disclose anything about changing settings from one STB to another; the control

of recording settings from one STB to another; or sharing content between STBs.

[469] The mere existence of a home network does not teach a skilled person every innovation

that might leverage that home network, and it does not teach the specific method of coordination

of media guides of the 344 Claims.

[470] In the circumstances, I find that Videotron has failed to prove that the 344 Claims are

rendered obvious by Fujita and the CGK.

[471] In concludion, all of the essential features of the 344 Claims claims are found in DAVIC

as considered by the Skilled Person in light of their CGK. The remaining elements in claims 116,

120, 121, 123 do not add any inventive features. Claim 116 merely adds generating content on

the second device; Claim 120 merely adds the fact that the devices are in the same household;

Claim 121 adds that the devices need not be in the same household; and Claim 123 merely adds

the feature of displaying aggregated scheduled content. None of these claims would be viewed as

adding anything inventive given the obviousness of Claim 113.

(d)

Infringement

[472] If I am incorrect, and the 344 Patent is valid, then the issue is whether the illico 2 system

infringes any of the 344 Claims.

Page: 148

[473] Dr. Balakrishnan admitted that he had not actually seen any evidence of coordination as

between settings on STBs in Videotron’s system. Notably, Dr. Balakrishnan also claimed he was

not accusing Videotron’s system of being capable of such coordination.

[474] The functionality that Dr. Balakrishnan did accuse Videotron’s system of having was not

settings coordination leading to a coordination of operation, but was actually remote control,

similar to that which he claimed infringed the 061 Patent. In his infringement example, Dr.

Balakrishnan used a remote device to access and view the state of a local STB. Using the remote

device, Dr. Balakrishnan could change the recording schedule on the STB; the same as if they

had used a standard remote control. I agree with Videotron that this is only step 1 of the steps

noted by the 344 Patent.

[475] I have already concluded that the purpose of the 344 Patent is to coordinate the operation

of like guides. Since Videotron’s illico 2 system does not provide for coordination between the

operation of IPGs as required by the 344 Patent, it does not infringe the 344 Patent.

XIII.

The 629 Patent: Recording Directory

[476] The filing date of the 629 Patent is September 16, 1999. The claimed priority date is

September 17, 1998.

[477] The 629 Patent generally relates IPG systems which allow for digital storage of programs

and program information. The problem the 629 Patent purports to address is described as follows

in the Background of the Invention.

Page: 149

Recently, interactive program guides have been developed that

allow for storage of programs selected within the program guide on

an independent storage device, typically a videocassette recorder.

Usually, a control path involving an infrared transmitter coupled to

an infrared receiver in the videocassette recorder is used to control

the videocassette recorder. The use of independent analog storage

devices like videocassette recorders, however, does not allow for

the more advanced features that might be implemented if a digital

storage device were associated with the program guide.

[478] The solution is set out in the first paragraph of the Summary of the Invention.

Some embodiments of the present invention may provide 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.

[479] Claims 79 and 80 of the 629 Patent are asserted by Rovi to be infringed by Videotron.

The construction of claims 77 and 78 is also relevant as claims 79 and 80 depend on those

claims. The 069 Claims read as follows.

Claim 77

A system in which programs and associated program data are

displayed for users by an interactive television program guide

implemented on user television equipment, comprising:

a digital storage device in the user television equipment for

digitally storing the programs and associated program data using

the interactive television program guide in response to receiving a

user request to digitally store the programs; and

means for maintaining a directory of the digitally stored associated

program data using the interactive television program guide.

Claim 78

78. The system defined in claim 77 further comprising a means for

displaying a directory listing screen on the user television

equipment using the interactive television program guide.

Claim 79

Page: 150

The system defined in claim 78 wherein the directory listing screen

comprises:

means for indicating directory entry information;

and means for providing a user with an opportunity to select

directory entry information;

wherein the display means further comprises means for displaying

a full entry information screen in response to the selection by a

user of directory information.

Claim 80

The system defined in claim 79 wherein the full entry information

screen comprises a plurality of fields of directory entry information

selected from the group consisting of: title, description, episode,

channel, duration, viewed, cast members, category(ies), language,

video format, start and end time, date, re-run indicator, stereo

indicator, close-captioned indicator, and other information.

[480] In summary, the 629 Claims claim an IPG-based system that allows users to view a

maintained list of programs they have recorded, as well as information about those programs.

(a)

Claim Construction

[481] Dr. Balakrishnan and Mr. Sandoval disagree on whether the illico 2 system includes three

of the essential elements of the 629 Claims: “interactive television program guide”, “means for

providing a user with an opportunity to select directory entry information” and “full entry

information screen”.

Page: 151

(2)

“interactive television program guide” (Claim 77)

[482] This claim term is relevant for assessing both validity and the infringement. This

particular term was construed earlier in the context of the 061 Patent.

[483] The parties disagree on whether an “interactive television program guide” solely includes

the software that allows a user to view program listings or also includes the software that enables

broader and related functionalities. While the parties have advanced essentially the same

arguments as before, the evidence is slightly different.

[484] During cross-examination, Mr. Sandoval was asked whether he agreed that the 629 Patent

describes the television program guide as having a number of features and not just being a

listings application.

[485] Mr. Sandoval agreed that the inventors were saying that “the interactive program guide

can include a number of features,” and that the intent of the inventors was to define “the entirety

of the user facing features.” He further agreed that the 629 Patent did not use the term

“application”; that the 629 Patent does not specify that the program guide is a single piece of

software; and that the Skilled Person would know that software could be designed either as one

application or multiple applications.

[486] In light of these concessions, which were appropriately made, I agree that the element as

used in the 629 Patent would be understood by the Skilled Person to include other software on

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the STB that facilities other use features such as the ability to record and manage a directory of

recordings. I would reiterate however that merely because a software function could be designed

to be part of an IPG does not mean that it is in fact part of the IPG.

(3)

“means for providing a user with an opportunity to select directory entry

information” (Claim 79)

[487] This claim term is relevant for assessing both validity and infringement. Its construction

is relevant to the infringement analysis because the experts disagree about whether “selection”

includes manipulating cursor keys, or whether more is required. As explained earlier in these

reasons starting at paragraph 110, Mr. Sandoval initially defined the “means” as “a selection that

the user can manipulate using cursor keys such as on a remote control.” Dr. Balakrishnan simply

agreed with Mr. Sandoval’s construction. However, in his infringement report, Mr. Sandoval

added that “more is required than simply moving a highlight up and down.”

[488] Rovi submits that the construction originally given by Mr. Sandoval should be the one

accepted by this Court.

[489] I am fully aware that Mr. Sandoval added further constraints to his construction and that

his opinion may have been tainted after viewing the illico 2 system. However, his is the only

evidence before me on how to construe the term. Moreover, Dr. Balakrishnan has not shown that

Mr. Sandoval’s alleged narrowed construction is flawed.

Page: 153

[490] Videotron argues that the Skilled Person would understand that a “means” is provided

that allows the user to navigate listings in a directory – for example, “scrolling” up and down

with their remote – and then allows the user to “select” or choose a specific entry for which they

want to see additional information. There is support for this position in the 629 Patent, which

describes navigation of the directory and the selection of an entry as two distinct activities –

positioning a highlight region and then selecting an entry.

The program guide may allow the user to access a full view of all

of the directory information stored for an entry. The user may

access this feature while in directory listing screen 90 by indicating

a desire to do so by, for example, entering appropriate commands

with user interface 46. If user interface 46 is a remote control such

as remote control 40 of FIG. 2, this can be done by positioning

highlight region 95 over the desired entry using "up" and "down"

keys, and then selecting the entry, or by selecting an on-screen

"info" option. [Emphasis added.]

[491] The argument is sound and I accept it. I find that the Skilled Person would understand

from reading the passage above and the word “then” that a user must actually take a second step,

by press another button or take some further action (“entering an appropriate command”), to

receive (“access”) the additional information as such information is provided by way of a “full

entry information screen”, a term which will be described below.

(4)

“full entry information screen” (Claim 79)

[492] The experts disagree on whether the “full entry information screen” needs to occupy the

entire screen (Mr. Sandoval’s position) or can simply take up a portion of the screen (Dr.

Balakrishnan’s position).

Page: 154

[493] Mr. Sandoval stated in his validity report that a full entry information screen is most

likely to be understood by the Skilled Person to be another screen of information about a single

entry from the directory. In his infringement report, Dr. Balakrishan concluded that “full entry

information screen” would be understood to mean a display on a screen (e.g., a television

monitor within the user television equipment) of available information for a directory entry of

digitally stored associated program data. He identified the “full entry information screen” as the

red highlighted portion in the photograph reproduced below paragraph 112 above.

[494] Mr. Sandoval responded that the photograph in question is not a “full entry information

screen” since what Dr. Balakrishnan highlighted is only a portion of the user interface, rather

than a new screen of information that replaces or overlays the existing interface. He argued that

in his validity report, he had stated that the Skilled Person would understand this as “another

screen” of information about a single entry from the directory and that he had specifically

referenced Figure 10 from the 629 Patent in support of his argument.

[495] Rovi claims that Mr. Sandoval shifted and narrowed his construction when doing his

infringement analysis. I disagree. There is no narrowing of his construction. There is no

inconsistency. Mr. Sandoval is simply repeating and reinforcing his position in light of

information he viewed as erroneous in Dr. Balakrishnan’s infringement report.

[496] Rovi argues that the “full entry information screen” should be understood to mean

“another screen of information about a single entry from the directory,” or any iteration.

However, there is no support anywhere in the 344 Claims or in the description for this position.

Page: 155

[497] I agree with Mr. Sandoval that the Skilled Person would understand a “full entry

information screen” to be another screen, such as a completely separate full screen or overlaying

screen, but in any case a screen that is distinct from the directory screen. The claim language

makes it clear that the full entry information screen is provided only “in response” to the

“selection by a user” and is not provided in response to a user simply navigating through the

directory.

[498] This is the only logical conclusion since the description of the 629 Patent states that once

the user has entered the “full entry information screen,” they must “exit” the screen before they

are returned to the “previous screen for display on monitor 45.” A partial screen would not need

to be “exited” in this manner and the previous screen would not need to be “generated” again.

[499] While the CGK indicates that there were other common iterations, for example an

overlay or a partial screen display, the 344 Patent is clear. I conclude that “full entry information

screen” means a screen that fully paints over the display.

B.

Validity

[500] Videotron submits that the 629 Claims are either anticipated by Florin or are rendered

obvious on the basis of Girard⁶and Florin or Browne⁷in light of the Skilled Person’s CGK.

⁶US5,751,282 entitled “System and Method for Calling Video on Demand Using an Electronic Programming Guide”

published on May 12, 1998 [Girard],

⁷PCT/US92/04573 entitled “Large Capacity, Random Access, Multi-Source Recorder Player” published on December

23, 1992 [Browne],

Page: 156

(a)

Anticipation

[501] The test for anticipation is set out above at paragraph 266 to 269. One must be able to

look at a prior, single publication and find in it all information which, for practical purposes, is

needed to produce the claimed invention without the exercise of any inventive skill. If the

published reference fails to either disclose or enable the essential elements of a claim, the patent

claim is novel, or not anticipated.

[502] Videotron’s submits that Florin both describes and enables the 629 Claims Patent.

[503] Florin is a patent published on December 10, 1996 on an application by Apple Computer

Inc. The Field of the Invention is described as follows:

The present invention relates to the field of audio-visual systems.

More specifically, the present invention relates to a system for

selectively viewing and interacting with programs and services

from a number of program/service sources, a control device for

controlling the system, and the methods and apparatus

incorporated in the system for managing selection, viewing and

interacting with the program/service offerings.

[504] Videotron has set out in its written representations detailed reasons why the 629 Claims

are either anticipated by Florin. They are well reasoned and supported by the evidence before

me. I have therefore incorporated them into these reasons.

[505] It should be noted that when counsel for parties appeared before me to make oral

submissions, the only substantial argument advanced by Rovi on novelty was that Florin does

not disclose “a means for maintaining a directory if the digitally store associated program data

Page: 157

using the interactive program guide.” The basis for this argument was that Mr. Sandoval’s

opinion that the use of the IPG to maintain a directory was implied was not sufficient evidence to

meet the test of novelty. As explained below, I disagree.

[506] Florin describes a “list function” that provides a user with a “guide”; that is, a list of

programs, organized by channel and time. Further, Florin provides the user with the ability to

navigate through program listings – for example, the user may use their remote control to change

the list of programs from those currently available, to those available at a different time. In his

expert report, Dr. Balakrishnan construed “interactive television program guide” in the context of

the Patent as: “software and/or hardware that, among other things, can generate for display, and

display, listings of programs and recorded content in electronic form that a user can navigate by

electronic means (e.g. by using a remote control).” This definition is met by the Florin

description.

[507] Mr. Sandoval found Florin to describe an IPG as he had construed that term. In cross-

examination, Dr. Balakrishnan seemed to think that the prior art needed to use the precise

language of the patent claim: “I think that is a list function as it says. It doesn't use the word IPG,

but it is an element of an IPG.” He clearly failed to read the prior art as a skilled person with a

mind willing to understand.

[508] The disclosure of an IPG, as defined by both experts in the claim construction, is met by

Florin. The IPG runs on user television equipment, referred to as a “transceiver.”

Page: 158

[509] As explained by Mr. Sandoval: “Florin describes a system that includes a hard drive for

recording programs”. Florin describes recording programs to a hard disk: “a record button for

making copies of programs onto connected A/V recording devices (such as VCRs, hard drives,

etc.)”. Dr. Balakrishnan agreed that Florin describes digital storage – the storage of programs

onto a hard disk – and that the digital storage could be incorporated into Florin’s transceiver.

Accordingly, Florin discloses digital storage.

[510] As explained earlier in these reasons when dealing with the CGK, the technology to

record programs on a hard disk was known at the relevant time. Because such digital recording

techniques were part of the CGK, the disclosure of such recording in Florin provides sufficient

direction for the Skilled Person to use the hard drive. The 629 Patent itself has no specific

technical direction for the reader on this point. Both Florin and the 629 Patent rely on the CGK

of the Skilled Person.

[511] Florin discloses a directory that is maintained. As Mr. Sandoval noted, Florin describes

not just recording programs but also providing a user with a directory to those stored programs,

and it was understood that the directory is updated when programs are recorded; that is, it is

maintained. The directory could be stored in the rewritable memory of the transceiver, which

would signal to the skilled person, who knew about digital directories, that the directory could be

updated, or maintained, as needed.

[512] As Mr. Sandoval also pointed out: Florin describes an “information function,” which can

be used to obtain fully entry information about a program. A user pushes the “information button

Page: 159

136” and is provided with a separate “graphic overlay panel 190” denoted by a little “i”, as

illustrated in Figure 7.

[513] As noted by Florin, the information function retrieves additional program information,

including program title, length, channel number and network logo. Florin also specifies that the

information function can be used in conjunction with the list function. This conjoined

functionality provides a user with access to a directory of programs stored on a hard disk and

allows the user to select a program entry to obtain further information about that entry by way of

a separate overlay screen – a full entry information screen.

[514] Florin’s transceiver is “user television equipment” under either expert’s construction of

that term – both experts agreed that “user television equipment” could be a STB, but it could also

be something other than an STB. It should be noted that Dr. Balakrishan took the position at trial

that Florin did not disclose an STB. In cross-examination Videotron’s counsel suggested to Dr.

Balakrishnan that transceiver 54 (identified by a bracket in Figure 1 of Florin, reproduced below)

could be a STB.

Page: 160

[515] Dr. Balakrishnan responded: “I would just say it’s a box between the service provider and

the television with some A/V functionality. I don’t think it uses the word ‘set-top box’ in Florin.”

I found Dr. Balakrishnan’s response perplexing since the box in question would clearly be

understood by the Skilled Person to be, in common parlance, a STB. There is no indication that it

could be anything else.

[516] Florin discloses that a user uses a remote control to access the list function, which

displays a directory listing screen comprising either broadcast or recorded programs. The

directory is able to be maintained in the rewritable memory of the transceiver. The recorded

programs are able to be recorded by the user on a digital storage device, such as a hard disk. The

hard disk is described as being able to be incorporated into the transceiver. The user could also

access an “information function” in conjunction with the list function. After navigating to a

program, selecting the information function for a particular recorded program would retrieve

additional program information for that program, such as program name, category, and length of

program, and would display it for the user in an overlaid full entry information screen.

Page: 161

[517] Given the disclosure in Florin, Mr. Sandoval was of the opinion that the 629 Claims were

both disclosed and enabled. Mr. Sandoval was not cross-examined on the enablement issue. I

agree with Mr. Sandoval’s opinion.

[518] Based on the evidence before me, I conclude that the 629 Claims are invalid for

anticipation based on Florin.

(i)

Obviousness

[519] If I am incorrect, Videotron alleges that the 629 Patent claims would have been obvious

given the state of the art – Florin, Girard, Browne – and what was common general knowledge at

the time.

[520] Girard is a patent published on May 12, 1998 on application by Microsoft Corporation.

The Field of the Invention is described as follows:

This invention relates to an interactive television system which

permits a viewer to use an electronic programming guide to select

current programs, video on demand of past programs, and

previews of future programs. This invention also relates to

methods for calling video on demand using an electronic

programming guide and for operating such inter-active televisions

systems.

[521] Browne is a WIPO application published December 23, 1992 on application by the

inventors, Browne and Yurt. The invention relates generally to “a large capacity, random access,

multi-source audio and video recorder player which is capable of receiving a plurality of

Page: 162

simultaneous input signals and which allows a user to view and/or to record selected ones of the

plurality of input signals.”

[522] As noted in the CGK section, the experts disagreed on how heavily technology for

personal computing influenced IPG technology. As Dr. Balakrishnan described, there were

significant differences between PC and IPG technology at the relevant time. For example, "the

ability to save digital files on a personal computer was much more advanced than on a STB for a

number of reasons, including that the processing power of a personal computer was (and is)

significantly greater than that of an STB, and that the user interface for a personal computer was

(and is) far more advanced." However, as is clear from that statement, a significant factor in the

time lag or implementation issues was hardware limitations. Consequently, there was greater

convergence between PC and STB technology once processing power on STBs increased.

[523] As such, it was obvious to incorporate PC-style directory listings into STB technology.

Moreover, the 629 Patent acknowledges the CGK in its background that it was known by 1998

that: (a) IPGs were available and could be used to display television program information on a

user’s television; (b) an IPG could be used to select and record programs; and (c) certain features

would necessarily be made available if a digital storage device were implemented in a digital

storage device instead of analog.

[524] Rovi claims that the following elements required ingenuity and they are the inventive

concepts of the claims in question (step 2 of the Sanofi test):

the recording is initiated by an IPG;

Page: 163

the IPG records the program and associated program data to a

storage device in the user television equipment; and

the IPG provides the user an opportunity to view directory entries,

view full entry information screens on these entries, and maintain

the directory.

(a) Florin

[525] Rovi argued that the differences between Florin and the 629 Patent as identified in the

discussion on anticipation, constitute steps that would not have been obvious to the skilled

person. As I said above, there are no gaps between Florin and the 629 Patent.

[526] If I am incorrect, and there are gaps, these are filled by the CGK. Using a directory was

common for digital storage during that time. IPGs were also common at the time. Moreover, Dr.

Balakrishnan said that “the user interface for a personal computer was (and is) far more

advanced”.

[527] Rovi argues if it was obvious to incorporate PC-style directory listings into STB

technology as Mr. Sandoval suggests, that step would still not render obvious the invention of

the 629 Claims. However, the experts agreed, there were no technical obstacles to implementing

an IPG as a directory system and if there were, the 629 Patent does not teach the solution.

Moreover, full entry information screens were part of the CGK and ubiquitous. Again, in the

CGK, the method of storing associated data with files was well known, capable of being

displayed.

Page: 164

[528] If I am incorrect and there were differences between the CGK, Florin and a combination

of both, bridging that gap required no ingenuity. Applying all these ideas that were well known

in the art, disclosed and enabled in Florin to recorded programs instead of broadcast programs

was obvious. The 629 Patent does not solve the technical problem that may arise from doing so.

As the experts explained, the issue in applying this technology was processing power, not

ingenuity.

(b) Girard

[529] The primary difference between Girard and the 629 Patent is the location (local or

remote) where programs and associated data are stored. Dr. Balakrishnan agreed that there is

nothing in the 629 Patent that solves the supposed issue of moving centralized storage to local

storage (if there was ever any such issue) and there was no technical limitation to the Skilled

Person.

[530] Mr. Sandoval argued that the Skilled Person “would appreciate that there is no material

difference as to where the programs are stored in Girard, other than factors such as cost of

memory and bandwidth on the network and the number of copies of the programs needed.”

Rovi argues that the differences in technical environment between centralized and localized

storage are significant enough that the designer of a centralized service provider infrastructure

would not typically look to teaching relating to consumer electronics devices, and vice versa.

[531] Balakrishnan stated during cross-examination that he saw no clear motivation to move

from centralized to local storage nor to combine Girard with Florin. This ignores the trend

Page: 165

described earlier in these reasons that traditional television would become combined with other

digital technologies once television went digital. There were ample examples in the state of the

art of local storage. The motivation was there as can plainly be seen in both Florin and Browne.

Local storage and display of programs were part of the CGK. I accept that the teachings of

Girard in combination the CGK of how to store programs locally render the 629 Patent obvious.

(c) Browne

[532] Browne does not teach the use of an IPG to make recordings or maintain a directory and

does not disclose a full entry information screen. Browne only discloses a directory of recorded

items, and the information in the directory is manually entered by the user and is not managed by

the system or an IPG.

[533] Mr. Sandoval did not explain how the move from Browne to the 629 Patent would be

obvious. When cross-examined on the large number of steps Browne contemplates for a user to

manually enter information, Mr. Sandoval stated that “the skilled person would understand this is

one way of doing it, but this is the way Browne describes doing it. The Skilled Person would

know that, well, I can come up with another way to record a program. Maybe something with

fewer steps, for instance.” I agree with Rovi that Mr. Sandoval’s conclusion that the “other way”

is the way described in the 629 Patent requires hindsight. Mr. Sandoval provided no evidence as

to why the Skilled Person would have moved from the system in Browne to that in the 629

Patent.

Page: 166

[534] For the above reasons, the 629 Claims are either anticipated by Florin or obvious in light

of Florin and the CGK, the CGK and Girard or Florin and Girard, or a combination of all three.

(b)

Infringement

[535] If I am incorrect, I find that Rovi has failed to prove that the illico 2 system infringes the

629 Claims.

[536] The evidence is clear that in the illico 2 system software, it is the PVR Application that

handles “Storage Management” and “Recording Management”; it is also responsible for

maintaining the directory of recorded programs. In contrast, the EPG Application has no

responsibility over recording or storing programs, as shown in the illustration below.

[537] Moreover, in the PVR Application, a user cannot click on a program in the directory and

be provided with a “full entry information screen”, either as a full screen or as an overlay screen,

where the user must then hit “exit” to leave that screen. Instead, as a user scrolls through the

Page: 167

directory of recorded programs using the arrows on their remote control program, information is

automatically populated in a region of the screen.

XIV.

Patentable Subject Matter

[538] Videotron submits as an additional ground of invalidity that the Asserted Claims fail for

want of patentable subject matter as they are directed to the handling and display of data, namely

broadcast and/or recorded television programs, and no technical problems are addressed. It

argues that the generality of the systems can be seen from the Asserted Patents. According to

Videotron, they do not delimit a practical application but merely identify using standard

computer technology or manipulation of particular information or data, in other words the claims

go to information manipulation, an abstract idea.

[539] Given my conclusion that the Asserted Claims are invalid for other reasons, I will be

brief on this subject.

[540] This Court has summarily dispensed with unpatentable subject matter arguments where

infringers sought to characterize systems and methods having several elements as “abstract

mental steps” akin to the “mental operations” discussed in Schlumberger Canada Ltd v

Commissioner of Patents, [1982] 1 FC 845 (CA). As Justice Manson held in Uponor AB v

Heatlink Group Inc, 2016 FC 320, para 152: “the use of known equipment or apparatus in a

novel and unobvious application […] is […] capable of being patentable subject matter, subject

to the same requirements for patentability as for the process to carry out the invention

Page: 168

[sufficiency of description in the specification, utility, novelty and non-obviousness].” I would

adopt the approach taken by my colleague.

[541] The claims at issue are not mere mathematical formulae, scientific principles, or

theorems. Moreover, the system and method claims at issue do not monopolize a mathematical

formula, nor do they computerize a primarily mathematical method. Here, the experts agree that

each element of every asserted claim is essential. Further, each claim at issue includes multiple

method steps or multiple system parts.

[542] While Videotron has raised compelling arguments that resonate with me, I am not

satisfied that it has shown that the Asserted Claims are unpatentable subject matter.

XV.

Remedies

[543] Although Rovi’s action is dismissed, for the sake of completeness, I will briefly address

the issue of remedies.

[544] The Patent Act sets out two alternatives for remedies in an action where there has been a

finding of patent infringement. First, section 55 provides that a patentee is eligible to damages in

the form of a reasonable royalty or their lost profits. Damages comprise the loss of the inventor,

and sometimes includes the profit losses from sales or lost royalty payments of the patent holder.

Second, subsection 57(1)(b) of the Patent Act provides that on application of the plaintiff or

defendant, this Court may make an order for an accounting of profits. The accounting of profits

Page: 169

is calculated based on the profits made by the infringer due to their infringement. (Monsanto

Canada Inc v Schmeiser, 2004 SCC 34 [Monsanto], at para 100).

[545] Rovi seeks the remedy that will provide it with the greater quantum of monetary relief. It

believes this will be an accounting of profits. As an alternative, Rovi seek damages in the form

of reasonable royalty albeit only if it can generate a higher remedy.

[546] Let me say from the outset that the expert witnesses who opined on the issues of remedy

were well qualified in their area of expertise and I do not doubt their impartiality. They were fair

and balanced in their opinions - the epitome of what an expert witness should be. However, their

opinions relating to the appropriate remedy were based on assumptions and dependent upon the

accuracy of information provided to them by others. It is axiomatic that experts are frequently

called upon to express an opinion on the basis of assumptions. Therefore, in assessing the expert

evidence critically, I carefully considered the facts underlying each opinion, that is, whether they

have been established in evidence.

[547] The first issue before me in terms of remedies is whether it is appropriate to award

damages or profits on the facts of this case. Rovi must establish that the Court should exercise its

discretion and allow Rovi to pursue this remedy.

[548] It is useful to set out some background facts before turning to the factors I have taken into

account in determining whether to exercise my discretion in favour of Rovi.

Page: 170

A.

Background Facts

(a)

Rovi’s Licencing Business

[549] The line of business of Rovi is two-fold. First, it includes the provision of products, such

as the supply of IPG software and program data to cable or telecommunications companies

located in the United States and Canada. Second, Rovi provides licensing services, allowing

customers to license patents that they own. From 2003 to 2013, Rovi significantly grew its patent

licensing business.

[550] Rovi’s business model has been to licence all patents in its portfolio, not to licence only a

subset of these patents. Under the portfolio licence model, the rate that the licensee pays is a

fixed licence fee that does not vary based on the number of patents that Rovi has or the licensee

practices.

[551] Once Rovi has identified a potential licensee, its practice is to

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According to Rovi, there is no pay-TV provider “anywhere in the world” with an IPG who does

not need a license from Rovi to operate.

Page: 171

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[553]

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Rovi purposely does not disclose other patents of value to licensees, as admitted on discovery.

Q. Just to make it clear, when you talk about holding something

back, it’s a patent right that you understand applies to a Canadian

company and you’re addressing patent licensing with them and

you think that they’re infringing that patent, but you are not

disclosing to the potential licensee that information?

A. That’s right.

(b)

Videotron’s Business

[554] Videotron has provided cable television services in Quebec since the 1960s. Its

subscriber base is largely francophone and almost entirely in the Province of Quebec, with a

small set of subscribers located in Eastern Ontario.

[555] The business of Videotron includes supplying terminals and services to subscribers to

permit access to television and other content. Videotron also supplies customers with Internet

connectivity, mobile telephone, streaming and home phone services.

Page: 172

(c)

Licence Agreement

[556] In late 2008 to January 2009, Rovi engaged Videotron about licensing Rovi’s IPG patent

portfolio. Mr. Proulx was involved with early meetings with Rovi. I found Mr. Proulx to be a

forthright and credible witness, and I accept the entirety of his testimony.

[557] Mr. Proulx testified that Videotron was familiar at the time with Rovi’s products, but not

its patents. Videotron was aware that Rovi had reached agreements with U.S. cable providers.

Videotron also knew that Rovi was in litigation at the time.

[558] Rovi had instituted legal proceedings in the United Kingdom against Virgin Media in

2009 regarding the validity of certain Rovi patents. The result of these cases was that the Rovi

patents were found to be invalid, for reasons including patentability and prior art issues.

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[561] Following the presentation, Rovi and Videotron moved on to discussing commercial

matters and the licence structure. Negotiations over the licence terms took approximately two

years.

[562] Mr. Proulx testified that while negotiations were taking place, Videotron was

encountering technological problems with the illico 2 system. According to Mr. Proulx,

Videotron’s interest at that time was to play along and avoid any patent issues that could affect

the launch of its new system.

[563] Mr. Proulx conceded that Videotron did not mention to Rovi that it was entering into a

licence agreement in order to avoid litigation. Nor did Videotron suggest that it did not need a

licence to Rovi’s IPG patent portfolio, or raise the possibility of merely licensing one or a

handful of patents in the portfolio.

[564] The Licence Agreement was executed by Rovi and Videotron on January 31, 2011,

effective April 1, 2010.

[565] The Videotron Licence was drawn up as a portfolio licence. It acknowledges Rovi’s

ownership of, control of, and/or rights to the “Rovi IPG Patents”, which are defined so as to

include the claims of any patents and/or patent applications covering IPGs that were or became

Page: 174

owned by Rovi during the term of the Licence Agreement or under which Rovi had or obtained

the right to grant licences to third parties during the same term.

[566] The Licence Agreement has a 5 year term and covers activities of Videotron that could

otherwise have been alleged to infringe the Patents.

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[567] Mr. Proulx’s testified that when Videotron entered into the Licence Agreement, the

company had placed a high value on risk reduction given its awareness of prior agreements, as

well as litigation between Rovi and other U.S. cable companies. Videotron did not want patent

issues, including the threat of an injunction, to distract the company from completing its

important project.

[568] It find that freedom from suit was the primary motivating factor that led Videotron to

accept to pay the royalty rates that were ultimately negotiated, and not the value of any particular

patents in Rovi’s portfolio, as evidenced by the fact that Videotron did not perform any analysis

of the market value of different features covered by the patents in the Rovi portfolio before

entering into the Licence Agreement.

[569]

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Page: 175

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(d)

Licence Agreement Renewal Negotiations

[570] In 2014, before the expiry of the Licence Agreement, Videotron and Rovi began to

negotiate terms of renewal. Mr. Christiano provided evidence relating the licence renewal

negotiations. He was a very credible witness and I found the answers he gave were articulate,

fair, plausible and persuasive.

[571]

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Over the course of a number of meetings, Rovi

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[572] Rovi sought royalty rates to licence its patent portfolio that were nearly double what had

been originally agreed to in the first licence between the parties. Videotron was taken aback by

the substantial increase of royalty fees being sought by Rovi and started questioning the benefit

of renewing the licence. Videotron agreed to extend the licence for one further year in order to be

able to do a deep dive and better understand the patents in play, better understand the

applicability, and understand if, as Mr. Christiano put it, “whether there would be a license even

required going forward.”

Page: 176

[573] Rovi argued in its closing submissions that the increase of royalty fees was reflective of

the value of the patent portfolio. ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |

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[574]

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.

[Image redacted.]

[575] Mr. Christiano testified that throughout the discussions, Videotron kept asking Rovi to

identify those patents Rovi considered to have particular value to Videotron and that were

specific to its platform. From Videotron’s perspective, no appropriate details were ever provided

by Rovi of the relevance or value of its patent portfolio.

Page: 177

[576] Videotron declined to enter into another long-term licence for what appeared to be aging

patents taken from an increasingly obsolete IPG patent portfolio.

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[577]

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.

[578] Negotiations finally broke off in early 2017. Videotron ended up being licensed to Rovi’s

IPG patent portfolio until December 31, 2016.

B.

Accounting of Profits

[579] A patentee can elect for an accounting of profits instead of damages, and this relief can

be provided if at least one patent claim is found valid and infringed. A patentee does not have a

right to an accounting for profits, thus it will only be provided if the Court exercises its discretion

to award it. However, the Court should not decline to exercise its discretion to award an

accounting of profits to a party in the absence of any compelling reasons of doing so (Philip

Morris Products SA v Marlboro Canada Limited, 2016 FCA 55 at para 8.

Page: 178

[580] Essentially, the patentee bears the burden of proving their entitlement to an accounting of

profits as well as the infringer’s sales and revenues resulting from the infringement.

[581] In Apotex Inc v Bayer Inc, 2018 FCA 32 at para 15, the Federal Court of Appeal

reiterates the various factors to consider in deciding whether to award an accounting of profits.

These factors include: (i) whether there has been undue delay in commencing or prosecuting the

litigation; (ii) the patentee’s conduct; (iii) the infringer’s conduct; (iv) whether the patentee

practiced the invention of the patent in Canada; and (v) complexity of calculating an accounting

of profits.

(a)

whether there has been undue delay in commencing or prosecuting the

litigation;

[582] Where a patentee has delayed commencing their action toward the infringer, thereby

deliberately allowing an infringer to accumulate profits in an inordinate manner, an accounting

of profits may be denied.

[583] There has been no delay by Rovi in commencing the action. To the contrary, it acted

immediately when it became clear that the licence arrangement with Videotron would not be

renewed. Nor is there any indication that Rovi has delayed in moving the proceeding forward.

This factor is neutral.

Page: 179

(b)

Rovi’s conduct

[584] The conduct of a patentee is a relevant factor in this Court’s discretion to allow, or not, an

accounting of profits.

[585] Rovi maintains that it has acted appropriately and that there has been no misconduct its

part. Rovi explains that it acted in good faith to renew the Videotron Licence, such as meeting

with Videotron,

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. They only resorted to litigation to enforce their property rights as Videotron refused to renew

their agreement.

[586] While that may be, the evidence before me establishes that Rovi has a reputation of using

hard-ball legal tactics to pressure third parties to license its patent portfolio. Rovi was known for

its business model of aggregating patent portfolios, seeking licences, and relying on its prior

licences and aggressive use of litigation to drive risk-avoiding businesses into deals that are

consistent with its schedule of royalty fees. It would spend in the tens of millions of dollars

annually on patent litigation.

[587] According to Rovi, there was no pay-TV provider “in the world” with an IPG who did

not need a licence from Rovi to operate.

Page: 180

[588]

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.

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[589] While Rovi kept touting the value of its patent portfolio, it was never prepared to disclose

what that portfolio actually comprises. During its licence negotiations with Videotron, Rovi

would not reveal a complete list of its patents that it thought Videotron infringed, or even what it

referred to as its “best patents”.

[590] Added to this is Rovi’s apparently deliberate strategy of delaying the prosecution of its

patents. In the present case, the 344 Patent was accorded an international filing date of July 16,

1999, and was issued 15 years later on October 21, 2014. The 870 Patent was accorded an

international filing date of July 13, 1999, and the patent issued over 17 years later on January 3,

2017. The 629 Patent was accorded an international filing date of September 16, 1999–the patent

issued 13 years later on November 26, 2013. Rovi’s own expert witness confirmed that patent

holdup was a problem because once a potential infringer has launched a product it reduces

flexibility and an opportunistic patent holder can then try to extract a larger, unreasonable

licencing fee.

[591] When it came time to negotiate terms of renewal of the licence, Videotron repeatedly

sought specific information about the value of the Rovi patents. Its attempts to substantiate and

Page: 181

validate the terms for which Rovi wanted a multi-year contract, at a rate that was double the

amount originally agreed to in the first licence, were rebuffed.

[592] It is quite apparent to me that the reason why Rovi declined to reveal to Videotron a

complete list of specific patent claims it considered infringed was to prevent Videotron from

designing around them. Rovi took the position that even after all four patents in suit expire,

Videotron would not be free to continue carrying on its current activities as there were always

other patents that Rovi would be able to assert against Videotron.

[593] Finally, there is no indication that Rovi ever sent a cease and desist letter to Videotron to

put it on notice of infringement of the Patents before it started the present action. Although such

notice is not required by law, it appears to me that bringing legal proceedings against a party who

declines to enter into a licence without first giving that party an opportunity to assess the claim

and attempt to resolve the dispute smacks of retaliation.

[594] Rovi’s questionable business practices cannot help but serve to colour my view of the

value of the features that it claims in the Patents. This factor weighs heavily against Rovi.

(c)

Videotron’s conduct

[595] The willful infringement of the infringer, although not necessary for an accounting of

profits to be awarded, can shore up the case for this remedy (Laboratories Servier v Apotex Inc,

2008 FC 825, at para 509). Given the foregoing, Rovi submits that Videotron’s decision to take

Page: 182

the calculated risk of being unlicensed, knowing that they might infringe Rovi’s patents, shows a

willful intention to infringe and therefore calls for the accounting of profits remedy.

[596] Rovi points out that Videotron was previously licensed with Rovi for approximately six

years. Videotron knew that Rovi had a significant IPG patent portfolio and that other

telecommunication companies did as well. According to Rovi, Videotron never offered any

technical response to any of the patents exemplified by Rovi to demonstrate how it either did not

infringe Rovi’s patents or how its patents were invalid.

[597] In Rovi submits that Videotron’s conduct weighs heavily in favour of granting an

election for the accounting of profits, and Videotron’s behaviour is precisely the “catch me if you

can” attitude that Mr. Justice Russel W. Zinn cautioned against in Monsanto Canada Inc. v

Rivett, 2009 FC 317, at paragraph 23. Otherwise, there would be nothing to deter a past licensee

from infringing if the result is simply having to pay the sum that the licensee would have paid to

use the patent in any event.

[598] I disagree that Videotron’s conduct was inappropriate, let alone that it wilfully infringed

Rovi’s patents. The evidence suggests that Videotron’s motives to refuse to renew the licence

agreement with Rovi were well-founded. Its decision was based on a reasonable assessment of

the necessity of the patents.

[599] I am not convinced that this factor militates in favour on exercising my discretion in

favour of Rovi. It is neutral.

Page: 183

(d)

Whether Rovi practiced the invention of the patents in Canada

[600] The premise for an accounting of profits is that a defendant, due to its wrongful conduct,

has improperly received profits which should accrue to the plaintiff. One factor to consider is

whether the patentee practices its patents (Seedlings Life Science Ventures, LLC v Pfizer Canada

ULC, 2020 FC 1 at para 252 [Seedlings]).

[601] The Videotron argues where the patentee does not practice their patents and only licenses

them, it is “almost a rule of law” to assess damages in terms of a reasonable royalty (AlliedSignal

Inc v DuPont Canada Inc, [1998] F.C.J. No. 190 at para 22 [AlliedSignal]).

[602] While Rovi may not offer television services to Canadian customers, there is some

evidence that they do provide products to Canadian Pay-TV providers who use Rovi’s products

in the television services that they provide to end users.

[603] I find this to be a neutral factor in this analysis.

(e)

Complexity of Calculating an Accounting of Profits

[604] The last factor to be weighed against is whether calculating an accounting of profits

would be too complex or the result would unreliable. (Eurocopter v Bell Helicopter Textron

Canada Ltée, 2012 FC 113, at paras 411-414). Complexity alone does not prevent the Court

from exercising its discretion, but such a consideration may weigh heavily in denying the remedy

(Philip Morris Products S.A. v. Marlboro Canada Ltd., [2015] F.C.J. No. 1564 [Philip Morris

Page: 184

Products SA], at para 29). This is because the inventor is only entitled to that portion of the

infringers’ profit which is causally attributable to the invention, i.e. “perfect compensation”

(Nova Chemicals Corp v Dow Chemical Company, 2020 FCA 141[Nova Chemicals], at para 48).

However, this Court has held that where the amount of profits at stake is significant, complexity

is not determinative. Moreover, the calculation of damages can be just as complex as the

accounting of profits (Philip Morris Products SA, at paras 29-31).

[605] Rovi argues that this factor is not a reason not to award an accounting of profits in this

case for three primary reasons. First, its experts were able to calculate the profits earned from the

infringement using standard and reliable methodologies. There is no evidence that these

methodologies were inappropriate, and Videotron’s experts also agreed that these methods were

neither overly complex nor unreliable. Second, Rovi contends that complexity is not

determinative where the total amount of profits at stake is significant, and that is the case here as

the total amount of profits at stake is up to ||||||||||||||||||||. Third, when considering that

complexity is not determinative of whether an accounting of profits should be granted, and since

the other factors favour this accounting of profits, the complexity factor should not disentitle a

party to an award of an accounting of profits.

[606] Videotron maintains that Rovi should not be awarded a monetary remedy based on

Videotron’s profits from the alleged infringements, and instead can only be entitled to an amount

based on a reasonable royalty. First, Videotron claims that since Rovi failed to make an election

for an accounting of profits after due inquiry and full discovery as required, their own pleadings

restricted them to the legal remedy of damages.

Page: 185

[607] Videotron argues that the unreliability and complexity of calculating an accounting of

profits weigh against the award of an accounting of profits in this case, because the Rovi’s expert

relied on novel theories and assumptions, particularly as it relates to its hypothetical market

reconstruction, and lacks any factual support for its claims. Additionally, if liability is found,

Videotron argues that if an accounting of profits based on a portfolio access fee was conducted,

it would not lead to perfect compensation. According to Videotron, Rovi conducted an incorrect

assessment of market value in its market reconstruction theory, which results in an incorrect

calculation and an inflated result. I agree with Videotraon that this factor militates against

granting an accounting of profits. While the complexity of the evidence could be overcome, I am

not satisfied that using any methods proposed by Rovi’s expert to calculate profits, which would

be fraught with insufficient, speculative, and contradicted evidence would allow me to arrive to

reliable and appropriate amount reflecting Videotron’s profits.

[608] Given that the factors weigh against the granting an accounting of profits, I conclude that

the appropriate remedy is a reasonable royalty.

C.

Reasonable Royalty

[609] The reasonable royalty rate is defined as the amount the infringer would have to pay if

they had been licensed under the patent, instead of infringing the patent (AlliedSignal Inc v Du

Pont Canada Inc (1998), 78 CPR (3d) 129 (FCTD), para 199).

[610] There is a dispute between the parties as to whether the portfolio rate in the prior

Videotron Licence is the appropriate royalty, or whether that rate needs to be apportioned over

Page: 186

each patent in Rovi’s Canadian IPG patent portfolio. Rovi submits that the portfolio rate is the

appropriate one and seeks judgment in the amount of ||||||||||||||||, inclusive of prejudgment

interest to June 30, 2020.

[611] Videotron submits that should a particular Videotron system feature be found to infringe

a valid claim in the Asserted Patents, the appropriate remedy is a one-time reasonable royalty,

capped at no more than Videotron’s cost to remove or design-around the subject-matter of the

relevant asserted patent claim. The uncontroverted evidence at trial was that the approximate cost

for such a design change would have been $150,000 per feature.

[612] The evidence before me is clear that Videotron was not willing to pay to renew its licence

to Rovi’s portfolio in 2016. Beyond the uncontradicted evidence of Mr. Chistiano, who

explained why Videotron was not willing to accept to enter into a new licence arrangement with

Rovi, there was direct factual evidence at trial relating to the value of Videotron system features

in the market from Caroline Paquet (having a decade of relevant experience at Videotron and

now a Vice-President of Marketing and Content) and from Mario Lessard (General Manager of

Big Data Strategies and Business Intelligence). Both witnesses, as well as quarterly “tracking

surveys” and a survey from an independent firm, consistently reflected the limited impact of

system features on consumer choice.

[613] Ms. Paquet provided evidence specifically about Videotron features alleged to be

infringing. Her testimony was that the absence of such features would not impact the subscriber

base for Videotron. Her evidence was cogent and largely consistent with that of Mr. Lessard.

Page: 187

[614] Ms. Paquet was adamant in cross-examination that Videotron’s subscribers do not make

choices around staying or leaving based on the kind of functionality at issue in this case. Mr.

Lessard also confirmed Videotron customers do not make decisions based on these technical

features.

[615] Rovi submits that the evidence of Ms. Paquet and Mr. Lessard should not be accepted

because it is inadmissible opinion evidence, unsupported, speculative, incredible, and contrary to

the bulk of the evidence. It argues that their evidence was generally not credible and that her

evidence on how consumers would react was opinion evidence and inadmissible as she was not

qualified. Rovi argues that Ms. Paquet’s evidence is based on bald assertions that are not

supported by any contemporaneous evidence. I disagree.

[616] The rule on lay witness opinion on evidence was set out in White Burgess Langille Inman

v Abbott and Haliburton Co., 2015 SCC 23, at para 14 and confirmed in Toronto Real Estate

Board v Commissioner of Competition, 2017 FCA 236 [Toronto Real Estate Board], at para 78.

Generally, a lay witness can only provide evidence that is limited to facts of which they are

aware. However, there are exceptions to this rule, which, in my view, apply to the evidence

provided by Mr. Lessard and Ms. Paquet.

[617] In Toronto Real Estate Board, the Federal Court of Appeal affirmed that:

[79] […] opinion evidence from lay witnesses is acceptable in

limited circumstances: where the witness is in a better position

than the trier of fact to form the conclusions; the conclusions are

ones that a person of ordinary experience can make; the witnesses

have the experiential capacity to make the conclusions; or where

Page: 188

giving opinions is a convenient mode of stating facts too subtle or

complicated to be narrated as facts.

[618] The Court also referenced Pfizer Canada Inc. v Teva Canada Ltd., 2016 FCA 161, 400

D.L.R. (4th) 723(F.C.A.), which supports this finding, as it accepted “a corporate executive's

testimony about what his pharmaceutical company would have done in the "but for" world in

circumstances where the witness had actual knowledge of the company's relevant, real world,

operations (Toronto Real Estate Board¸ at para 80). The threshold is therefore that a lay witness

“cannot testify on matters beyond their own conduct and that of their businesses in the "but for"

world” (at para 81).

[619] Both Ms. Paquet and Mr. Lessard’s evidence did not stray into inadmissible opinion

evidence. It was based on knowledge acquired over a number years in their respective roles with

Videotron. They were intimately familiar with and attentive to the key aspects of Videotron’s

service: good customer service, customer service in French and “club illico”, a French-language

Netflix-like service.

[620] Rovi’s expert, Dr. Bazelon agreed that “non-infringing alternatives do come into

willingness to pay and willingness to accept” and if the infringer has an alternative to practicing

it, such a design-around cost is a reasonable upper bound for a royalty.

[621] I am satisfied that Videotron had the wherewithal to come up with workable non-

infringing alternatives for the implicated user interface components, which would not have

affected its subscriber base. This is evidenced by their regular upgrades to their system.

Page: 189

[622] A plaintiff who has been wronged is entitled to a remedy. Yet, Rovi, who bears the

burden of proof in this case and has been licencing these types of patents for decades, simply led

no independent evidence of the value of its own patented features. When it couldn’t make out its

case through Videotron’s witnesses, all it could point to is a portfolio of some 200 patents. There

is no evidence establishing the value, if any, of these patents which would allow me to determine

with any degree of certainty a reasonable royalty for the Asserted Claims themselves.

[623] Taken into account the particular facts of this case, I consider that an appropriate and

reasonable royalty would be $150,000 per feature as proposed by Videotron.

XVI.

Costs

[624] The parties requested at trial that costs be reserved to await either agreement by counsel,

or, failing agreement, written submissions. The request was granted. In the event the parties

cannot agree within 30 days of the date of this Judgment, they should submit a proposed

timetable for service and transmittal to the Registry of their written submissions on costs.

Page: 190

JUDGMENT IN T-971-17

THIS COURT’S JUDGMENT is that:

1. The Plaintiff’s action is dismissed.

2. The Defendant’s counterclaim is allowed.

3. Claims 2, 7 and 8 of Canadian Letters Patent No. 2,337,061 are invalid and not infringed.

4. Claims 456, 459, 720 and 721 of Canadian Letters Patent No. 2,336,870 are invalid.

5. Claims 113, 116, 119, 120, and 123 of Canadian Letters Patent No. 2,730,344 are invalid

and not infringed.

6. Claims 79 and 80 of Canadian Letters Patent No. 2,339,629 are invalid.

7. The issue of costs is reserved.

blank

“Roger R. Lafreniѐre”

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Judge

FEDERAL COURT

SOLICITORS OF RECORD

T-921-17

DOCKET:

ROVI GUIDES, INC. v VIDEOTRON LTD.

STYLE OF CAUSE:

TORONTO, ONTARIO (IN PERSON)

AND BY VIDEOCONFERENCE

PLACE OF HEARING:

DATE OF HEARING:

MARCH 9, 2020 TO MARCH 12, 2020 (IN PERSON)

MAY 25, 2020 TO MAY 29, 2020 (BY

VIDEOCONFERFENCE)

JUNE 8, 2020 TO JUNE 19, 2020 (BY

VIDEOCONFERENCE)

JANUARY 13, 2021 (BY VIDEOCONFERENCE)

JANUARY 20, 2021 TO JANUARY 22, 2021 (BY

VIDEOCONFERENCE)

LAFRENIÈRE J.

JUNE 10, 2022

JUDGMENT AND REASONS

CONFIDENTIAL JUDGMENT

AND REASONS ISSUED:

JUNE 23, 2022

PUBLIC JUDGMENT AND

REASONS ISSUED:

APPEARANCES:

Sana Hawlani

Paul-Erik Veel

Kaitlin Soye

FOR THE PLAINTIFF/

DEFENDANT BY COUNTERCLAIM

Veronica Tsou

Jonathan Chen

Jacqueline Chan

Cynthia L.Tape

Alan Macek

FOR THE DEFENDANT/

Bruce Stratton

PLAINTIFF BY COUNTERCLAIM

Michal Kasprowicz

Gabriella Levkov

Nicole Nazareth

Page: 2

SOLICITORS OF RECORD:

Lenczner Slaght

FOR THE PLAINTIFF/

Barristers and Solicitors

Toronto, Ontario

DEFENDANT BY COUNTERCLAIM

DLA Piper (Canada) LLP

Barristers and Solicitors

Toronto, Ontario

FOR THE DEFENDANT/

PLAINTIFF BY COUNTERCLAIM