Gemstar v Virgin: fighting over the TV remote control

Gemstar had three patents and brought court proceedings against Virgin over the Electronic Program Guide (EPG) on Virgin's set-top boxes.

Looking through the latest caselaw in the UK on computer software, the Judge (Mann J. in the High Court) decided that:

- two of the patents (the "single channel" patent and the "favourites" patent) presented a grid of TV program information on screen, much like the Radio Times, and then changed the way that the information was displayed by switching to display only programs on a single channel or by showing only favourite channels. These patents were considered to be obvious over earlier systems, and to be excluded from patentability as being either a plain computer program with no useful technical effect in terms of making a better set-top box, or as simply the presentation of information.

- one of the patents (the "transfer" patent) was found to be not excluded from patentability because the system did more than display a TV guide and instead went on to control the way that the programs were recorded onto two hard disk drives. Unfortunately for Gemstar this third patent was also found to cover an old idea that had been disclosed previously by Toshiba.

This case highlights two important points:

1) Software-related patents need to describe a technical effect that makes the machine work better in order to survive in the UK courts

2) UK courts will carefully review earlier related technical disclosures and find patents to be invalid if the invention has already been done before

Software patents are in a fast-changing area of the law in the UK, the US and at the European Patent Office, with the US Supreme Court and the EPO Enlarged Board of Appeal both currently considering how best to interpret the current statutory provisions for software related patents. For the full decision in the Gemstar case, including a review of the current UK position click here