2022 FC, 2022 FC 1388

Date: 20221024 Dockets: T-113-18 T-206-18 Citation: 2022 FC 1388 Ottawa, Ontario, October 24, 2022 PRESENT: The Honourable Mr. Justice Lafrenière Docket: T-113-18 BETWEEN: ROVI GUIDES, INC. AND TIVO SOLUTIONS INC. Plaintiffs/ Defendants by Counterclaim and BELL CANADA Defendant/ Plaintiff by Counterclaim Docket: T-206-18 AND BETWEEN: ROVI GUIDES, INC. AND TIVO SOLUTIONS INC. Plaintiffs/ Defendants by Counterclaim and TELUS CORPORATION, TELUS COMMUNICATIONS INC. AND TELUS COMMUNICATIONS COMPANY Defendants/ Plaintiffs by Counterclaim PUBLIC JUDGMENT AND REASONS I.

Overview [ 1 ] The two cases before me are patent infringement and validity proceedings brought under the Patent Act , RSC 1985, c P-4 [ Patent Act ]. [ 2 ] At issue in the proceedings are certain claims in four patents that relate to " “interactive television program guide” " [IPG] and " “internet protocol television” " [IPTV] technology. [ 3 ] At a high level, an IPG consists of software that generates for display television program listings.

The interface allows the user to interact with the displayed content, for example, through navigating the listings by scrolling up and down using a remote control or other input device. 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. It should be noted that the parties agreed during trial that the abbreviations IPG and EPG were interchangeable.

It was understood that EPG is a broader term that encompasses all types of electronic program guides and range in functionality – from simple channel selection to advanced web access. [ 4 ] IPTV is the delivery of television content over Internet Protocol [IP] networks. This is in contrast to delivery through traditional terrestrial, satellite, and cable television formats. [ 5 ] The asserted claims of the patents encompass various features such as the ability to manage a digital directory of recordings, view a recording from another device,

schedule more than one recording at a time, retrieve on demand media data to improve user experience, and the ability to restart a broadcast program after it has commenced. [ 6 ] For the reasons below, I find that nothing in the asserted claims was new or inventive as of the date the patents were filed and are therefore invalid. The Plaintiffs’ actions against the Defendants for infringement of the asserted claims are accordingly dismissed and the Defendants’ counterclaims for declarations of invalidity are granted. II.

The Parties [ 7 ] The Plaintiffs/Defendants by Counterclaim are Rovi Guides, Inc. and TiVo Solutions Inc. [TiVo], and other members of its corporate family. In 2020, TiVo merged with Xperi Corporation [Xperi]. For ease of reference, these companies are collectively referred to in the singular as " “Rovi.” " [ 8 ] The Defendant/Plaintiff by Counterclaim in Court Docket No. T-113-18 is Bell Canada [Bell].

[ 9 ] The Defendants/Plaintiffs by Counterclaim in Court Docket No. T-206-18 are TELUS Corporation, TELUS Communications Inc., and TELUS Communications Company [collectively " “TELUS” " ]. [ 10 ] Both Bell and TELUS (at times referred to as " “the Defendants” " ) are Canadian telecommunications companies that offer internet, phone, and television services to Canadians. [ 11 ] In 2010, Bell launched an IPTV service, " “Bell Fibe TV” " [Fibe TV], to subscribers in Ontario, Quebec, Manitoba, and the Atlantic provinces.

Around the same time, TELUS started offering its own IPTV service, " “TELUS Optik TV” " [Optic TV], to subscribers in Alberta, British Columbia, and Quebec. III. The Patents [ 12 ] In early 2018, Rovi commenced separate actions against Bell and TELUS asserting the infringement of six of its patents and over 200 claims.

Issues relating to the infringement of two patents owned by TiVo were discontinued a few months later. [ 13 ] Rovi seeks relief in respect of the following four patents: 1) Canadian Letters Patent No. 2,336,870 [870 Patent]; 2) Canadian Letters Patent No. 2,339,629 [629 Patent]; 3) Canadian Letters Patent No. 2,425,482 [482 Patent]; and 4) Canadian Letters Patent No. 2,514,585 [585 Patent]. [Collectively, the " “Patents” " ]. IV. The Asserted Claims [ 14 ] By the time the trial started, the number of claims asserted to be infringed had whittled down from over 200 to the following 20:

i) Claims 346, 456, 721 and 724 of the 870 Patent [870 Claims]; ii) Claims 79, 80, 90, and 91 of the 629 Patent [629 Claims]; iii) Claims 1, 5, 13, 14, 41, 45, 53, and 54 of the 482 Patent [482 Claims]; and iv) Claims 34, 36, 87, and 127 of the 585 Patent [585 Claims]. [Collectively, the " “Asserted Claims” " ]. [ 15 ] The 870 Patent describes IPG systems and methods in which programs and associated program data may be stored on remote or local servers and played back by one or more users. The 870 Claims are divided into two groups.

Claim 346 is referred to by the parties as the " “870A Claim” " and relates to simultaneously transmission and recording of two programs.

Claims 456, 721, and 724, the " “870C Claims,” " relate to peer-to-peer transmission. [ 16 ] The 629 Claims relate to an IPG with integrated digital storage that users employ to record programs, maintain program guide data, and display guide data. [ 17 ] The 482 Claims describe systems and methods for caching of on-demand media data in a video-on-demand [VOD] system to reduce latency. [ 18 ] The 585 Claims relate to systems and methods for operator-initiated recording of programs on a remote server, based on retention- criteria, for later viewing by users and then subsequent deletion of those programs. V.

The Relief Requested by the Parties [ 19 ] This action was bifurcated. Quantification issues relating to damages or profits have been put aside until after determination of the liability issues (infringement and validity). [ 20 ] Rovi seeks a declaration that the Asserted Claims are or were valid and infringed by Bell and TELUS until the expiry of the patents. It also seeks a declaration that it is entitled to elect for an accounting of profits.

Rovi also requests that Bell and TELUS be enjoined from practicing the subject-matter of the 482 Claims and the 585 Claims until the expiry of the patents. [ 21 ] Bell and TELUS counterclaim that the Asserted Claims are invalid on various grounds and argue in particular nothing in the claims were new or inventive as of the date the Patents were filed. The Defendants request that Rovi’s claims be dismissed and that their counterclaims be allowed.

They submit that if should I find otherwise, and a damages phase of this litigation becomes necessary, Rovi should not be entitled to elect an accounting of profits or be entitled to injunctive relief.

VI. Background to the Litigation [ 22 ] A brief review of the evidence established before me is required to understand what led to the present litigation. [ 23 ] Rovi owns 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.

It also has an intellectual property licensing business that licenses third-party companies with their own digital entertainment solutions using Rovi’s patented technology. [ 24 ] Rovi has invested hundreds of millions of dollars in research and development. Rovi has a long history of innovation and numerous patented features have been incorporated in its products.

Rovi licenses its patent portfolios to cable television and IPTV providers worldwide, including in Canada. [ 25 ] In 2012, Rovi first started speaking with Bell about licensing its IPG portfolio of approximately 200 pending and issued Canadian patents. |||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| Rovi later approached TELUS with the same goal. [ 26 ] |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||| [ 27 ] When they launched their IPTV services around 2010, Bell and TELUS selected Microsoft’s " “Mediaroom” " software to run their systems.

As the manufacturer and vendor of Mediaroom, Microsoft was responsible for dealing with any patent issues relating to its software.

Microsoft had patent coverage through a mutual licence with Rovi such that Bell and TELUS were licensed when they launched their IPTV systems. [ 28 ] In or around 2013, Telefonaktiebolaget LM Ericsson [Ericsson] acquired the Mediaroom business from Microsoft. |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| . [ 29 ] For years Rovi was in discussions with Bell, TELUS, and Ericsson regarding the need for a licence to Rovi’s patent portfolio. |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||| [ 30 ] |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| || |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| [ 31 ] |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| [ 32 ] Over the course of the negotiations, Rovi made no mention of the 482 Patent or the 585 Patent to Bell or TELUS.

Nor did it mention the 870 Patent to Bell, and only raised claims of the 629 Patent, which are not asserted at trial. During the same period, Rovi examined the Defendants’ IPTV systems and amended the 870 Patent, by adding claims asserted in this litigation. [ 33 ] Ultimately, neither Bell, TELUS nor Ericsson would agree to the portfolio licence that Rovi demanded. VII. The Trial [ 34 ] The two proceedings were heard together with common evidence. The evidentiary portion of the virtual and electronic trial was completed in 16 days. [ 35 ] The parties filed lengthy and detailed agreed statements of facts.

These include a useful recitation of the common general knowledge [CGK] of the person of ordinary skills in the art [Skilled Person] at the relevant time of the Patents, as well as an agreement on the prior art that was disclosed and made available to the public prior to each patent. [ 36 ] The trial took place shortly after completion of the trial of a patent infringement action brought earlier by Rovi against Videotron Ltd., another Canadian telecommunications company.

Judgment was issued in that case on June 23, 2022: Rovi Guides, Inc v Videotron Ltd , 2022 FC 874 [ Rovi #1 ]. [ 37 ] In Rovi #1 , there were four patents at issue, including the 870 Patent and the 629 Patent. In that case, I concluded that Claims 456, 459, 720 and 721 of the 870 Patent, and Claims 79 and 80 of the 629 Patent were invalid.

I will consider these matters anew given that the parties called different technical experts in this case, their opinions and testimonial evidence was not the same, the experts were subject to a different cross-examination strategy by counsel, and the parties’ closing submissions were tailored to the evidence adduced at trial. [ 38 ] The trial in Rovi #1 and the trial in the present case proceeded on substantially the same evidence as it relates to the development of EPGs and IPGs over the years, Rovi’s corporate history and licensing business, and certain aspects of the CGK that are not contentious.

Rather than repeating this evidence, Rovi #1 should be read in conjunction with this decision for this evidence only. [ 39 ] Closing submissions were to take place 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’ submissions and in issuing these reasons and judgment.

VIII. Introductory Remarks regarding the State of the Art [ 40 ] Before delving into the minutiae of the issues raised in these proceedings, it would be useful to do a succinct review of the state of the art before the priority date of any of the Patents. [ 41 ] Rovi sets out at paragraphs 122 to 127 of its closing submissions its understanding of the television industry in the late 1990s , which it describes as " “practically the Stone Age compared to today.” " The submissions are reproduced below in their entirety with footnotes omitted: 122.

It is important for the Court to be cautious not to approach the patented inventions from the perspective of technology today, particularly when the priority dates of the 870 and 629 Patents are so far in the past. This risk of hindsight is compounded by the fact that the television technology at issue in the 870 and 629 Patents is ubiquitous; it is in all of our homes . 123. In the 1980s, the United Video Satellite Group first launched an analog TV Guide known as the “Prevue Channel”, which is now understood to be one of the first EPGs. This EPG did not require a STB and was not interactive.

It used a scrolling grid in a video channel and was usually available on a fixed channel.. 124. The image below on the left is a primitive broadcast-oriented scrolling EPG from Jones Intercable in Napierville, IL in the late 1980s. The image on the right is the Prevue Guide in the 1990s, which was only marginally more sophisticated, but still had very limited functionality: 125. In the early 1990s, multiple technological developments intersected to result in the advent of digital television and the digital version of the EPG.

For example, the use of the MPEG digital video standard over telephone and cable wires began around 1994 and required a device, now known as a STB, to decode the digital MPEG signal. 126. In 1997, the first consumer STB containing an IPG was created. This form of program guide was generated using software on the STB rather than being on a broadcast channel. The earliest versions of the IPG were primitive in comparison to today’s technology. These early IPGs allowed a user to scroll down through the channel listing and scroll to the right forward through time.

Users could select a current show, press select and tune to that channel directly. Users could also select a show and obtain information. And that was essentially all they could do. 127. By 1998 (the priority dates of the 629 and 870 Patents), available IPGs could only perform very basic functions such as displaying a grid guide and descriptive information, sorting and filtering content, and recording to VCR. The DVR had not been released commercially, and VOD systems were not available, other than in trials. [ 42 ] Rovi would have me believe that IPG technology was at its infancy back in 1998.

Nothing can be further from the truth. [ 43 ] The evidence before me establishes that interactive television systems were broadly deployed and IPGs were in use well before 1998. The concepts underlying these systems had been widely known in the computer industry for years. [ 44 ] In 1995, Time Warner was promoting a Full Service Network television trial, which had an IPG that allowed users to watch programs with sophisticated functionality like fast-forward, rewind and pause, and shopping.

Time Warner slide [ 45 ] Similarly, StarSight, a provider of EPGs in the 1990s, offered an interactive guide that allowed users to set recordings directly from the guide. The Starsight Guide, reproduced below, was an example of an IPG used to record programs with program information in 1997.

Starsight [ 46 ] In addition, there had been convergence between the computer and television industries. In Florin, [1] a patent published on December 10, 1996 on application of Apple Computer Inc., well before the priority date of any of the Patents, the inventor, Fabrice Florin, describes the state of the industry as follows: Over the past 40 years, television and motion pictures have become an important aspect of everyday life for people in the industrialized world.

The development of advanced technology in the areas of digital and high definition television (HDTV), video recording systems, laser disks and compact disc (CD) entertainment systems, coupled with satellite, cable television and telephone services, have provided opportunities for viewers to store, retrieve and selectively display a variety of television and audio-visual or interactive programming on home entertainment systems.

Over the past decade, improvements in personal computing systems have provided a variety of powerful miniaturized personal computers which permit the storage of data and control of home appliances, such as entertainment systems, through the use of microprocessors.

Additionally, a variety of graphic user interfaces have been developed to ease human interaction with these new personal computer systems. [ 47 ] Florin goes on to state: " “The marriage of video and television technology with computer interface technology provides consumers with maximum flexibility in storing, retrieving and viewing television and other audio-visual programming.” " [ 48 ] While the parties quibbled about the pace of convergence between the computer and television industries, there is no dispute that it was known.

Incorporating IPGs into an interactive television system to record and manage broadcast television systems were CGK by the mid-1990s.

Major corporations were actively incorporating these concepts and deploying them into television systems around the world, such as Microsoft, which announced in 1997 that it planned to put an EPG in their operating system. [ 49 ] I am fully cognizant that the success of trials by telecommunication companies ended without much success in deploying digital video systems, that the extent to which EPGs were fully interactive varied considerably, and that digital transmission only started to be adopted among cable television systems in the late 1990s.

However, the concepts were so well known that they had become part of an industry-wide standard published by the Digital Audio-Visual Council [DAVIC] in March 1998 — the DAVIC 1.3.1 Specification [DAVIC 1.3.1]. [ 50 ] Rovi sought to dismiss DAVIC 1.3.1 as nothing more than a high-level conceptual document that does not provide any specific guidance or teaching.

In its words, DAVIC 1.3.1 is a " “pin to a pile of Lego” " and a document that " “covers everything, but says almost nothing.” " To the contrary, I find that DAVIC 1.3.1 represents a snapshot of the CGK in the field taken immediately before the filing date of any of the patents at issue. [ 51 ] It important to note that DAVIC was not involved in inventing new technology; rather its members came together to discuss and standardize existing technology that was known and in use.

DAVIC 1.3.1 provides a full specification that defines the minimum tools and dynamic behaviour needed by digital audio-visual systems for end-to-end interoperability across countries, applications and services. It sets out in detail what people in the industry understood to be the evolving set of features that would be available on television platforms. It also shows how the Skilled Person can implement systems which would be compliant with DAVIC 1.3.1 and make use of all the toolsets described in 14 parts and over 1,500 pages.

The specification document was accepted by the industry as the gold standard. [ 52 ] Rovi claims that companies innovating at the time encountered significant technology limitations because of low memory and limited hard drive capabilities in STBs and that the transition from analog to digital television delivery proved challenging due to bandwidth and frequency limitations.

However, no evidence was presented of 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. [ 53 ] Finally, none of the Patents identify any technical problem for which the claimed subject matter provides a solution. The reason for this is simple. It was understood that the Skilled Person knew how do it. IX. The Witnesses A. Rovi’s Witnesses [ 54 ] Rovi called three fact witnesses: Mr. Samir Armaly, Mr. Michael Ellis, and Mr. Clay Gaetje. [ 55 ] Mr.

Armaly is the President of the intellectual property business at Xperi. He joined Rovi as an employee when it was known as Gemstar-TV Guide [Gemstar] and worked as a patent attorney on the company's patent portfolio. Over the years, his roles and responsibilities increased. He became the executive vice-president in charge of intellectual property and licensing for Rovi and is now its strategic IP advisor. He provided evidence on Rovi’s corporate history, innovation, litigation, and licensing practices.

He testified at length about Rovi’s efforts over the years to convince Bell, TELUS and Ericsson to enter into a licence arrangement. [ 56 ] Mr. Ellis is a named inventor of each of the Patents. In the mid-1990s, he worked for a variety of Rovi’s companies including TV

Guide On Screen, Prevue Networks and Gemstar. He spoke about the research and development processes in the early years of Rovi. Through his years at the company, Mr. Ellis’ role evolved to include managing various development groups and acting as system architect. [ 57 ] Mr. Gaetje is the Vice-President of intellectual property business development at Xperi. Mr. Gaetje joined Gemstar-TV Guide, a Rovi predecessor company, in 2007. He was with the company until early 2014 as Vice-President of intellectual property licensing. Mr.

Gaetje subsequently returned to Rovi in early 2018 as Vice-President of intellectual property business development. He was responsible for negotiating patent licences worldwide with pay television providers and provided a detailed overview of Rovi’s product offerings and IP licensing in Canada. Mr. Gaetje was involved in negotiations with Bell, TELUS and Ericsson and prepared slide-show presentations to assist in the discussions. [ 58 ] Rovi called two technical experts. Mr. Timothy Wahlers was the only expert to testify on infringement and validity issues.

He has over thirty years of experience in interactive television platforms, client and cloud-based platforms, VOD, and digital video recorder [DVR] technology. He was qualified to opine on software applications and interfaces for interactive television on STB, personal computer, and web-based platforms; broadcast television, digital video recording, and VOD systems; content management platforms; client and cloud-based platforms; digital rights management; and multimedia systems. [ 59 ] The second technical expert was Mr. Jerry Barth.

He conducted testing of the Bell and TELUS systems in relation to the 482 Patent. [ 60 ] Two other experts were called by Rovi to provide evidence relating to the entitlement to remedies: Dr. Coleman Bazelon and Mr. Andrew Harington. [ 61 ] Dr. Bazelon 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. [ 62 ] Mr.

Harington was qualified to provide expert opinion evidence on investigative and forensic accounting, business valuation, and quantification of financial remedies, including accounting for profits in patent infringement matters. B. The Defendants’ Witnesses [ 63 ] Bell and TELUS each called one fact witness. Mr. Andy Basler and Mr. Shawn Omstead provided evidence on TELUS and Bell’s business and services respectively. [ 64 ] Two technical experts were called by Bell and TELUS on liability issues. [ 65 ] Mr. Gordon Kerr testified about the validity and infringement of the 629 and 870 Patents. Mr.

Kerr is a telecommunications engineer with over twenty years of experience. He worked at British Telecommunications plc. [BT] between the 1980s and mid-1990s. He was involved in developing the first commercial VOD system, the BT " “Interactive TV Trial,” " and the BT " “Interactive Multimedia Futures” " program. Mr. Kerr was also closely involved from 1995 to 1997 in DAVIC, a non-profit industry body based in Geneva. DAVIC was working at the time on standards for digital audio-visual applications, which culminated in DAVIC 1.3.1 published in 1998. [ 66 ] Dr.

David Robinson is a computer software engineer and network architect with over thirty years of experience in delivering multimedia over distributed networks, including the Internet. In the mid-1990s and early 2000s, he was also heavily involved with various standards organizations, including DAVIC. He provided opinions on the 585 and 482 Patents. [ 67 ] Bell and TELUS called one expert on entitlement to remedy. Mr. Christopher Bakewell is an accredited senior appraiser in business valuation and a certified licensing professional.

He was qualified to opine on the valuation and appraisal of intellectual property rights and intangible assets, business valuation, licensing, royalty analysis and damages analysis. X. Rovi’s Allegations of Unfair Litigation Tactics by the Defendants [ 68 ] Rovi submits that Bell and TELUS played games throughout the litigation process with respect to the infringement issues. First, it contends that the Defendants deliberately chose to withhold technical information and access to the Fibe TV and Optik TV services from their experts. Instead, they provided assumptions to Mr. Kerr and Dr.

Robinson, and then failed to lead evidence to support those assumptions. Second, Rovi criticizes the decision by Bell and TELUS not to call their technical fact witnesses, even though they had advised at least one of their experts that they would be doing so.

According to Rovi, the Defendants’ litigation strategy has never been about ensuring that this Court hears all relevant evidence so that it can make a fair and informed decision; instead, it has been a continual game of " “hiding the ball.” " [ 69 ] I see no merit to these arguments. [ 70 ] While Rovi may disagree with the manner in which the Defendants instructed their experts and bemoans their decision not to call certain witnesses at trial, the burden of proving infringement on the balance of probabilities rests with the party that alleges it: Monsanto Canada Inc v Schmeiser , 2004 SCC 34 at para 29 [ Schmeiser ] .

In this case, that party is Rovi. [ 71 ] In most patent infringement cases, once the claim has been construed, it is clear on the facts whether infringement has taken place. Claims construction is a matter of law but whether a defendant's activities fall within the scope of the monopoly thus defined is a question of fact: Whirlpool Corp v Camco Inc , 2000 SCC 67 [ Whirlpool ] at para 76 . [ 72 ] In the present case, most of the infringement issues in dispute were predicated on construction, and not on the way in which the

Defendants’ systems operate. Bell and TELUS largely relied on Rovi's evidence to show they did not infringe . It also bears noting the Defendants do not contest infringement of many of the Asserted Claims. Their arguments are primarily focussed on issues relating to the validity of the Asserted Claims. [ 73 ] Bell and TELUS were fully entitled to determine how best to respond to allegations of infringement made against them. It was their decision to determine what assumptions their experts should rely on in rendering their opinions.

They had no obligation to lead any evidence when the burden was on Rovi to make its case. Their burden was to prove invalidity of the Asserted Claims on a balance of probabilities. XI. Credibility Findings (Liability Issues) [ 74 ] Rovi submits that Mr. Wahlers and Mr. Barth’s evidence should be preferred to Bell and TELUS’ experts, Mr. Kerr and Dr. Robinson. [ 75 ] For their part, Bell and TELUS submit Mr. Wahlers’ testimony should be given little to no weight. They say that to the extent there is any conflict between the experts’ opinions, the Court should strongly prefer the evidence of Mr. Kerr and Dr.

Robinson. [ 76 ] I have set out below the main criticisms levelled by the parties against the witnesses identified above and my general observations as to their credibility and the reliability of their evidence. A. Mr. Barth [ 77 ] Rovi submits that Mr. Barth’s evidence should be preferred to that of the Defendants’ technical experts; however, there was no conflicting evidence between them. Mr. Barth was not qualified to construe the Asserted Claims or provide an opinion on the infringement or validity of the patents. Instead, Mr.

Barth’s mandate was to conduct factual testing, and to determine how and when the systems retrieved, stored and displayed data. Mr. Barth provided helpful, consistent, and reliable evidence – so much so that both Mr. Wahlers and Dr. Robinson relied on Mr. Barth’s test results to opine on infringement of the 482 Patent. B. Mr. Wahlers [ 78 ] Rovi submits that Mr. Wahlers was an objective and balanced expert, with thirty years of highly relevant experience. It argues that Mr. Wahlers’ evidence should be preferred over that of Mr. Kerr and Dr.

Robinson due to his greater wealth of relevant experience, his extensive testing of the services at issue, and the reasoned defence of his opinions during cross-examination. [ 79 ] While the Defendants take no issue with the breadth of Mr. Wahlers’ experience and knowledge, they say that Mr. Wahlers’ testimony should be given little to no weight due to serious credibility problems. [ 80 ] Mr. Wahlers left a favourable impression when he testified with authority and confidence during his examination-in-chief. My view of him changed, however, soon after he was cross-examined by Defendants’ counsel, Mr.

Steven Mason. What transpired during his cross-examination was truly remarkable and left his credibility in tatters. Let me explain. [ 81 ] Mr. Mason first asked Mr. Wahlers to confirm that he had prepared the infringement reports dated January 30, 2020, the responding validity reports dated April 3, 2020, and his reply reports, which he did. [ 82 ] Mr. Wahlers agreed that Rovi retained him in late August 2019 and that there was a significant amount of work to be done to prepare his infringement reports. This involved perusing the patents at issue (including the 870 Patent containing 999 claims, which Mr.

Wahlers conceded was surprisingly long), developing protocols for infringement testing of the Defendants’ products, travelling cross-country to conduct the testing, and construing the dozens of claims originally asserted by Rovi. [ 83 ] Mr. Wahlers further agreed he was pressed for time to prepare four separate validity reports for each patent in suit in response to Mr. Kerr and Dr. Robinson’s extensive reports, which referred to approximately 50 pieces of prior art. [ 84 ] Mr.

Wahlers acknowledged that two pieces of prior art, Browne [2] and DAVIC 1.3.1, were key for the 870A Claim; that Browne, DAVIC 1.3.1 and Girard [3] were key prior art for claims which are no longer in issue; and that DAVIC 1.3.1 and Hair [4] were key prior art references for the 870C Claims. [ 85 ] Mr. Mason then shared his screen and showed Mr. Wahlers a slide of paragraph 61 of his responding report, dated April 3, 2020, on validity of the 870 Patent. The slide, with passages highlighted, is reproduced below:

Wahlers par 61 870 [ 86 ] Mr. Mason asked Mr. Wahlers whether the decision to use the words " “wish-list” " in quotes was a deliberate and specific choice of words. Mr. Wahlers responded " “Yes.” " [ 87 ] Mr. Mason then asked Mr. Wahlers whether he knew someone named Dr. Ravin Balakrishnan. Mr. Wahlers stated that the name “does not ring a bell.” Mr. Mason informed Mr. Wahlers that Dr. Balakrishnan was Rovi’s expert in a patent infringement case held in this Court a few weeks earlier ( Rovi #1 ), and that he had prepared an expert report before Mr.

Wahlers prepared his own reports that also addressed the 870 Patent and the 629 Patent, and some of the same prior art, including DAVIC 1.3.1. [ 88 ] Mr. Wahlers was then shown a screenshot of paragraph 61 of his 870 Patent validity report side-by-side with paragraph 53 of Dr. Balakrishnan’s validity report, dated January 20, 2020, relating to the same patent. Par 61 and 53 [ 89 ] When confronted with the striking similarities of wording in the highlighted portions of the two paragraphs, Mr. Wahlers agreed that they were virtually identical, apart from the tenses of the verbs.

It is in that context the following exchange took place: Q. It appears that the sentences in your report that are highlighted were copied from Dr. Balakrishnan's report, do you agree? A. I absolutely do not agree. Q. It's just a striking coincidence that you used virtually the same words in your report that Dr. Balakrishnan used in his report? A. My singular focus was on my report. I am not familiar -- never -- I think I've heard of his name. I did not seek out or search for the information on that trial. Have not seen any of it. Was not aware of any cross-pollination, even the potential of it.

The legal counsel for Rovi never mentioned it. I don't know if -- I can't answer to the fact as to whether he was aware of my comment about it being a wish list, so it certainly is possible. It's a question you would have to ask him as to whether or not – Q. It's not possible, is it, Mr. Wahlers? It's not possible because you started looking at DAVIC in responding to Mr. Kerr's report, you told us, after January 30th, 2020, and Dr. Balakrishnan signed his report on January the 10th. Sorry, January 20th, 10 days before Mr. Kerr even sent his report. A.

I can't answer as to how or why there's a similarity between the two. Q. Did you write those words that are highlighted in paragraph 61? A. Yes. Q. And it's just a striking coincidence that you used virtually every single one of the same words that Dr. Balakrishnan used? A. Seemingly they are certainly the same, so I can only answer to the fact that my words are my words. Q. Okay. Okay. Certainly you would agree that if you did copy something from Dr. Balakrishnan's report, it would be appropriate to attribute that to him and acknowledge that it's his work?

A. Certainly. [ 90 ] Mr. Wahlers was then shown a screenshot of paragraph 56 of his 870 Patent validity report, reproduced below with highlighted sentences: Walhers par [ 91 ] Mr. Wahlers agreed that he was addressing in paragraph 56 of his report, a key issue in this case — the extent to which the fields of television and home computing were aligned. When asked whether he wrote the highlighted passage and whether those were his words, Mr. Wahlers simply responded " “Yes.” " [ 92 ] Mr. Wahlers was shown another slide with paragraph 56 of his report and paragraph 52 of Dr.

Balakrishnan’s validity report dated January 20, 2020, reproduced below. Par 56 and par [ 93 ] After drawing Mr. Wahlers’ attention to the similarities in the two paragraphs, Mr. Mason once again asked him whether he had copied from Dr. Balakrishnan’s report. Mr. Wahlers responded as follows: A. No, I did not. Again as I stated before, I have not seen his report. This is the first time I've seen any excerpts of it. I saw no, any, or none of the documentation results from the Videotron trial. Q.

Do you have any explanation for how it is that your letters and words that you said you wrote are virtually word-for-word identical to what we find in Dr. Balakrishnan's report, which was written even before you turned your mind to the validity issues in this case? A. I can only respond to what is in my report, and certainly with some assistance from my -- the legal staff at [the law firm retained by Rovi] in honing the words that occurred in my report but I can categorically state I had no input or read no documents from the other trial at any time to this date. [ 94 ] Over the course of the next hour, Mr.

Mason meticulously went through numerous other paragraphs or passages of Mr. Wahlers’ reports with him that were identical or virtually identical to those found in Dr. Balakrishnan’s report. [ 95 ] At one point, Mr. Wahlers conceded that it was a " “remarkable” " coincidence that he would have articulated an opinion about the teaching of Girard at paragraphs 120 to 122 of his report using the same four reasons, in the same order, and using virtually the same words as those found at paragraphs 75 and 76 of Dr. Balakrishnan’s report. A slide comparing the paragraphs in question is reproduced below:

Walhers Side by side [ 96 ] Mr. Wahlers kept insisting throughout the withering cross-examination that he had never seen Dr. Balakrishnan’s report, that he " “wrote all of the words” " in his reports, and that the words were his. [ 97 ] During re-examination, counsel for Rovi sought to rehabilitate the witness. She asked Mr. Wahlers whether " “all of the words in your report reflect your opinions?” " Rather than pick up on the implication in counsel’s question and admit that he did not write the words but endorsed their substance, Mr.

Wahlers doubled down and insisted again that " “all the words are my words.” " He then added: …Certainly for the editorial process and the contributions of the Rovi counsel, they were targeted at the audience. Sometimes, as you found, I go a little too deep. So I do appreciate their efforts to help me to line them up, but absolutely every word is my intent, and I read every word and signed off to every word. [ 98 ] On the evidence before me, it is clear that substantial portions of the opinions and conclusions expressed by Dr.

Balakrishnan in his validity report of the 870 and 629 Patents have been repeated, almost word for word, in Mr. Wahlers’ validity report for the same patents. Given that Dr. Balakrishnan’s validity report was served well before Mr. Wahlers began working on his validity report, it is simply not possible, as Mr. Wahlers speculated during his cross-examination, that Dr. Balakrishnan could have copied from Mr. Wahlers’ report. [ 99 ] That leaves me with only three possibilities: either

(1) Dr. Balakrishnan and Mr. Wahlers independently drafted reports in which thousands of words and dozens of paragraphs just happened to be identical,

(2) Mr. Wahlers appropriated portions of Dr. Balakrishnan’s report himself without attribution, or (3) someone else took portions of Dr. Balakrishnan’s report and put them before Mr. Wahlers to endorse practically verbatim. [ 100 ] The first possibility requires an unimaginable coincidence and should be rejected. [ 101 ] As for the second possibility, the evidence before me would suggest that Mr. Wahlers was not aware that plagiarism had taken place at all. I find that Mr. Wahlers was truthful when he testified that he never met Dr. Balakrishnan and he did not review Dr.

Balakrishnan’s reports or seek out information from the Rovi #1 trial. Mr. Wahlers appeared to be genuinely surprised and shocked to learn during his cross-examination that some portions of his report were identical or virtually identical to those found in another expert’s report. He was adamant that he did not copy Dr. Balakrishan’s report and I accept his evidence on this point. This would explain why his validity report did not include any attribution to Dr. Balakrishnan’s work. [ 102 ] However, that is not the end of the matter.

I remain troubled by the fact that even after being repeatedly confronted during cross- examination with paragraph after paragraph of another expert’s report containing nearly identical words or sentences as in his report, Mr. Wahlers kept insisting that he wrote all of the words. All he could muster when pressed during cross-examination to explain the glaring similarities between the two reports was that he received some editing and wordsmithing assistance from Rovi’s counsel. Despite being given ample opportunity to own up to the fact that he was not the original author of the passages in question, Mr.

Wahlers failed to do so. Nor would he explain how passages addressing key issues in this case, with such specificity, somehow made their way into his report. This lack of candour goes to the issue of his credibility and the reliability of his evidence. [ 103 ] This brings me to the third possibility – that someone else took passages from Dr. Balakrishnan’s report and provided them to Mr. Wahlers to incorporate into his report. This to me is the most likely scenario, as it appears to be conceded by Rovi at paragraph 59 of its closing submissions: 59.

The fact that, as a result of counsel’s role in wordsmithing and stylistic editing, similar words ended up in both Dr. Balakrishnan and Mr. Wahlers’ reports is entirely acceptable… [ 104 ] Rovi submits that collaboration between experts and counsel is permitted by law and should be encouraged. I certainly agree on this point.

Without the assistance and guidance of counsel, leaving experts to their own devices would result in " “increased delay and cost in a regime already struggling to deliver justice in a timely and efficient manner,” " as well as other undesirable outcomes such as encouraging the use of " “shadow experts” " and incentivizing counsel to abandon rather than edit and improve badly drafted reports, causing added cost and delay: Moore v Getahun , 2015 ONCA 55 [ Moore ] at para 65 .

This Court has recognized that counsel may assist in the preparation of an expert report, and that counsel’s involvement can even be beneficial in ensuring reports are framed in a way that is comprehensible and relevant: Guest Tek Interactive Entertainment Ltd v Nomadix, Inc , 2021 FC 276 at para 29 . [ 105 ] However, there are limits to how much consultation is appropriate. Determining those limits is a profoundly contextual matter that

depends upon the particular circumstances of the proposed expert, the substance of the proposed evidence, and the particular circumstances of the case: Simons v Canada (Attorney General), 2018 ONSC 3741 at para 56 . [ 106 ] Rovi submits that there can be no criticism of counsel assisting an expert witness in the preparation of giving evidence where the assistance goes to form as opposed to the substance of the opinion itself. Once again, I agree on this point. [ 107 ] However, what happened in this case went well beyond collaboration, consultation, wordsmithing or editing.

It was word-for-word copying of a technical expert’s opinions and conclusions on key issues before this Court, all done without any attribution. It is plagiarism pure and simple. Plagiarism is wrong whether it is intentional or not. [ 108 ] A critical distinction must be drawn between counsel assisting an expert in framing their reports in a way that is comprehensible and responsive to the pertinent legal issues in a case and leading, or be seen to have led, an expert to express a particular opinion.

The latter crosses the line of propriety and puts into real doubt the impartiality and independence of the expert: White Burgess Langille Inman v Abbott and Haliburton Co , 2015 SCC 23 [ White Burgess ] at paras 26-32 . It also brings into question what other " “assistance” " may have been given to the expert in drafting their report.

The expert’s opinion " “must be independent in the sense that it is the product of the expert’s independent judgment, uninfluenced by who has retained him or her or the outcome of the litigation” " ( White Burgess at para 32 ). [ 109 ] Rovi argues that counsel working with an expert and the process leading to similar words is no different from judges copying and pasting the words of counsel. I disagree. This very argument was rejected in Cojocaru v British Columbia Women’s Hospital and Health Centre , 2013 SCC 30 [ Cojocaru ].

In that case, the Supreme Court of Canada was faced with an extensive case of copying in the context of judicial reasons. The SCC concluded that " “[T]he considerations that require attribution in academic, artistic and scientific spheres do not apply to reasons for judgment” " ( Cojocaru at para 65 ). In any event, while judges may copy from the briefs of parties in setting out the facts, the legal principles and the arguments, they must still assess all the issues and arguments comprehensively and impartially.

Judges are expected to perform an independent analysis, just like experts are required to do. [ 110 ] The Defendants submit that Mr. Wahlers’ willingness to be untruthful under oath means that his evidence should be given no weight. They maintain that there has to be consequences for witnesses who come before the Court that are lacking in candour, particularly in a patent infringement action where expert opinions regarding validity and infringement are paramount. They argue that Mr.

Wahlers’ willingness to import large swaths of someone else’s work – with little revision – demonstrates that he did not approach his task with independence and impartiality as this Court’s Code of Conduct for Expert requires.

The Defendants further submit that an expert report that contains extensive and unattributed copying of another’s work is disqualifying relying on Anderson v Pieters , 2016 BCSC 889 [ Anderson ] for this proposition. [ 111 ] In Abbott Laboratories v Canada (Minister of Health) , 2006 FC 76 , aff'd 2009 FCA 94 [ Abbott Laboratories ] at para 19 , Associate Judge Martha Milczynski, then called Prothonotary, set out the proper approach to determine whether or not an expert should be disqualified.

In that case, the plaintiff expressed concern that a proposed expert of one of the defendants had received some confidential information of the plaintiff, thereby placing the expert in a potential conflict of interest. Prothonotary Milczynski stated that there must be an objective review of the facts and circumstances in each case and listed various factors to be analyzed in conducting the review.

For the purpose of the present case, the following factors are relevant: - whether the expert knew he or she was relying on plagiarized information; - the nature of the plagiarized information; - the risk of prejudice arising to either the party challenging the expert or to the party seeking to retain the challenged expert; and - the interests of justice and public confidence in the judicial process. [ 112 ] After balancing all of the above factors, I conclude that Mr. Wahlers should not be disqualified as a witness. The circumstances in the present case are different than those in Anderson .

In Anderson , the expert report prepared by a family physician was found to be plagiarized and the physician was found to have lied about it. The judge also concluded that the expert was biased, unqualified and not independent.

The primary reason the expert was disqualified was because he did not have the appropriate expertise, which is not the case here. [ 113 ] While the second factor identified above militates in favour of disqualification, I find there would be a severe prejudice to Rovi to disqualify its only technical expert, one that far outweighs any prejudice to the Defendants. [ 114 ] It remains that Mr. Wahlers lack of candour and his apparent indiscriminate adoption of another expert’s opinions or conclusions, albeit unknowingly, raise serious concerns in my mind as to whether Mr.

Wahlers has fulfilled his duty to the Court to provide an independent opinion. The problem is compounded by the fact that, contrary to what is asserted by Rovi, Mr. Wahlers was unable to defend many of his opinions at trial. [ 115 ] By way of example, in his 629 Patent validity report, Mr.

Wahlers claims that Florin does not describe an EPG because it uses the term " “user interface” " rather than " “EPG” " and criticizes Florin because it does not disclose an EPG that " “receives program information about upcoming programs, and allows the user to navigate through that program information and make decisions about what to watch and/or record.” " On cross-examination, Mr. Wahlers conceded this point entirely. [ 116 ] The most glaring example is Mr. Wahlers’ dismissive and myopic treatment of DAVIC 1.3.1.

Rather than approach the assessment of this important piece of prior art from the perspective of the Skilled Person with a mind willing to understand, he parroted the words of Dr. Balakrishnan that DAVIC 1.3.1 is a " “wish-list” " of desired functions. As I stated earlier, that is simply not the case. [ 117 ] The Federal Court of Appeal recently reiterated that the teachings of the prior art are to be read as a skilled person would understand them: Western Oilfield Equipment Rentals Ltd et al v MILLC , 2021 FCA 24 at para 86 [ Western Oilfield ].

[ 118 ] Despite my strong reservations as to Mr. Wahlers’ credibility, independence and impartiality, it would not be just to reject his reports or testimony out of hand. There are, after all, some aspects of his evidence that are not controversial and prove useful and reliable. The concerns raised by the Defendants go to weight to be given to Mr. Wahlers’ evidence, rather than to its admissibility. Just to be clear, I have looked upon Mr. Wahlers’ evidence with great skepticism. C. Mr. Gordon Kerr [ 119 ] Rovi attacks Mr.

Kerr’s credibility and the reliability of his evidence on numerous grounds. [ 120 ] First, Rovi questions how Mr. Kerr could purport to give an opinion on infringement when he was totally unfamiliar with IPTV systems, was " “denied access” " to the Bell and TELUS services via Slingbox, and told he need not speak to technical staff. The simple answer is that Mr. Kerr was called to give opinions on the 629 Patent and the 870 Patent, which have nothing to do with IPTV. There is no dispute that Mr.

Kerr is an expert in the field of these two patents. [ 121 ] It is important to note that the Defendants do not dispute the asserted claims of the 629 Patent and the 870 Patent, other than Claim 346, would be infringed in the event the patents were held to be valid. Mr. Kerr did not give any infringement opinions on the 629 Patent, and only touched on one asserted claim of the 870 Patent — Claim 346. [ 122 ] Mr.

Kerr opined that Claim 346 requires a " “tuner,” " which the Skilled Person understands to be an analog or digital device that can select a specific frequency band, and therefore, a specific television channel. The experts agreed that there is no piece of equipment in the Defendants’ IPTV systems called a tuner. The only non-infringement opinion Mr. Kerr gave with respect to Claim 346 is that there is no tuner in the Fibe TV system, because the tuner described in the 870A Claim is a piece of hardware. The issue on infringement was predicated on construction, and not on the way in which an IPTV system operates.

In the circumstances, it understandable why the Defendants felt it was unnecessary for Mr. Kerr to have access to their services to provide his opinion. [ 123 ] Second, Rovi claims Mr. Kerr did not follow the basic obligations of an expert in a patent case when he reviewed the prior art provided to him by counsel before arriving at his claims construction. Rovi submits that: " “[h]aving reviewed the prior art with an eye to either infringement or validity of the patent, Mr.

Kerr could not have construed the claims purposively and independent of the issues of validity, as required by the law.” " In my view, this is a completely unfair criticism. [ 124 ] Claims must be construed purposively, once and for all purposes, before and independent of considerations of the issues of infringement or validity: Whirlpool at paras 43, 49 (a); Free World Trust c Électro Santé Inc , 2000 SCC 66 [ Free World Trust ] at para 19 . Mr. Kerr testified in examination-in-chief he understood he was to construe the claims without consideration of validity or infringement.

He also confirmed in cross-examination that he understood it was his obligation to construe the claims without having regard to the prior art. However, it was never put to Mr. Kerr on cross-examination that he reviewed the prior art with an eye to either infringement or validity of a patent. It is therefore unfair to suggest that Mr. Kerr failed to comply with the instructions set out in Whirlpool and Free World Trust . [ 125 ] Third, Rovi claims that Mr. Kerr’s demeanor during cross-examination was not that of an impartial expert witness and he was defensive and evasive throughout. I disagree. I found Mr.

Kerr to be a candid, thoughtful and careful witness, one who wanted to be sure he understood the questions before answering them. While he may have been somewhat pedantic at times, he was neither evasive nor reluctant to answer any questions posed to him in a clear manner. [ 126 ] Finally, Rovi submits that Mr. Kerr’s opinions on obviousness should be viewed as unreliable because of his inability to approach the task from the perspective of the uninventive Skilled Person. According to Rovi, because Mr.

Kerr’s entire experience and role at BT was to innovate and think about the future, he wouldn’t be aware if he was approaching a question as a paragon of deduction and dexterity wholly devoid of intuition, a triumph of the left hemisphere over the right, because he has only ever worked in an inventive capacity. While Rovi is not suggesting that an expert who has innovated in their field could never provide an expert opinion from the perspective of the Skilled Person, it claims that given Mr.

Kerr’s particular experience, he cannot put himself into the shoes of the non- inventive skilled person: Apotex Inc v H Lundbeck A/S , 2013 FC 192 [ H Lundbeck ] at paras 118 , 122. In my view, this is pure speculation on Rovi’s part and inconsistent with the evidence before me. [ 127 ] Mr. Kerr testified that as a professional, he was able to follow the guidance given to him by Defendants’ counsel and felt he was able to give the Court evidence from the perspective of the Skilled Person. I have no hesitation in accepting his evidence on this point.

I should add that it does not matter whether or not the expert approximates to the Skilled Person. As stated by Mr. Justice George Locke, then of this Court, in Shire Canada Inc v Apotex Inc , 2016 FC 382 , what matters is " “the substance of each expert’s opinion and the reasoning that led to that opinion” " ( Shire Canada Inc at para 48). [ 128 ] I found Mr. Kerr to be a very knowledgeable witness who could explain complex concepts clearly. His opinions and testimony were thorough, persuasive and largely unshaken on cross-examination. He proved to be an extremely helpful witness. D. Dr.

David Robinson [ 129 ] Rovi submits that Mr. Wahlers’ evidence should be preferred over that of Dr. Robinson for numerous reasons. [ 130 ] Rovi claims that the Defendants provided assumptions to Dr. Robinson and then failed to lead evidence to support the assumptions. [ 131 ] It criticizes Dr. Robinson’s deportment during his cross-examination and contends that he was evasive in answering questions and adopted unreasonable positions. [ 132 ] Rovi claims that in addition to being evasive in his evidence, Dr. Robinson was unfamiliar with the contents of his own expert reports.

It says that the most glaring example of this was Dr. Robinson’s contradictory evidence regarding anticipation of Claim 34 of the

585 Patent by iMagic. [5] [ 133 ] Rovi cites other examples where Dr. Robinson alleges to have refused to provide a yes or no answer to straightforward questions that warranted such an answer. [ 134 ] I find these criticisms to be without merit. [ 135 ] I can certainly understand why Rovi considered Dr. Robinson to be a difficult witness. He was often hard to pin down and Rovi’s counsel was not able to move him from his strongly held positions. Dr. Robinson was also reluctant to answer questions affirmatively and fully without first knowing where counsel intended to go with their line of questioning.

However, this is understandable given the volume of information, with all of its subtleties, that Dr. Robinson had to plow through and the fact that Rovi’s counsel often posed confusing questions or repeated the same questions in any attempt to get a different response. [ 136 ] Contrary to Rovi’s assertions, Dr. Robinson’s opinions were well supported by the evidence, including data and facts collected by Mr. Barth. While Dr.

Robinson’s answers may have been longwinded and convoluted at times, I am satisfied that he was trying his best to assist the Court. [ 137 ] Overall, while there may have been some frailties in Dr. Robinson’s evidence, I have considered them in assessing the weight to give to it. It remains that most of his key opinions went entirely unchallenged. [ 138 ] I see no reason to question Dr. Robinson’s credibility or impartiality. Ironically, Rovi had no difficulty citing Dr. Robinson’s evidence when it suited its purposes. [ 139 ] Overall, I considered Dr.

Robinson to be an extremely knowledgeable and helpful witness. His evidence was persuasive, consistent and objective — exactly what one would reasonably expect of an independent expert. E. Conclusion [ 140 ] For the above reasons, I gave significantly more weight to the opinions and conclusions of Mr. Kerr and Dr. Robinson when they conflicted with those of Mr. Wahlers. XII. The Issues [ 141 ] The issues to be determined were substantially narrowed by the parties after the conclusion of the evidentiary portion of the trial. [ 142 ] Rovi alleges that all of the Asserted Claims are infringed.

The Defendants concede infringement, except for Claim 34 of the 585 Patent, the 870A Claim and all of the 482 Claims. [ 143 ] Therefore, the issues to be determined are as follows: 1. The 870 Patent a . Is the 870A Claim anticipated by Browne or obvious in light of Browne, the CGK and DAVIC 1.3.1?; b . Are the inventive concept/subject matter of the 870A Claim and the 870C Claims obvious in view of the CGK, DAVIC 1.3.1 and Hair?; c . Are all of the asserted claims broader than the invention made by the inventors?; d . If not, is the Claim 346 infringed? 2 . The 629 Patent a .

Are the asserted claims invalid as anticipated by Florin?; b . Are the asserted claims obvious in light of Florin, the CGK, Browne and DAVIC 1.3.1? 3 . The 585 Patent a . Are the asserted claims anticipated by iMagic?; b . Are the asserted claims obvious in light of the CGK alone and one or more of several prior art references, including iMagic, Minerva [6] , DAVIC 1.3.1 and the Microsoft Patent? [7] ; c . Is Claim 34 of the 585 Patent infringed? 4 . The 482 Patent a . Are the asserted claims anticipated by Rosin? [8] ; b .

Are the asserted claims obvious based on the CGK alone, or the CGK in light of the state of the art that included Aristides, [9] LaJoie, [10] and O’Robarts? [11] ;

c . In the alternative, are the asserted claims overbroad?; d . If not, are the 482 Claims infringed? 5 . Remedies a . Is Rovi is entitled to elect an accounting of profits?; b . Should injunctive relief be granted for the 585 Patent? [ 144 ] The issue of costs was reserved at the request of the parties. They will be addressed by way of written submissions after issuance of this Judgment. XIII. The Law [ 145 ] The law of claim construction, anticipation, obviousness, sufficient disclosure, overbreath and infringement is well-settled and stated in detail in Rovi #1 .

For the sake of brevity, I have reproduced below only those portions of the law set out in the parties’ written submissions that I consider relevant to the issues at hand. A. Claim Construction [ 146 ] Claims must be construed purposively, once and for all purposes, before and independent of considerations of the issues of infringement or validity: Whirlpool at paras 43, 49 (a); Free World Trust at para 19 . Claims must be construed as of the publication date of the patent at issue.

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. [ 147 ] As set out in Tearlab Corporation v I-MED Pharma Inc , 2019 FCA 179 at paras 30-33 , the principles of claims construction include: (

a) 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; (

b) Claims should be read with a mind willing to understand; and (

c) Claims are to be construed in light of the whole specification, but plain language in the claims is not to be expanded or restricted by references in the disclosure. Recourse to the disclosure is: (

i) permissible to assist in understanding the terms used in the claims; (ii) unnecessary where the words are plain and unambiguous; and (iii) improper to vary the scope or ambit of the claims. B. Anticipation [ 148 ] A patent claim is invalid if it is anticipated, meaning that it lacked novelty as of the priority date. One cannot patent subject matter that is already in the public domain. This requirement is set out in s 28.2(1)(

a) and (

b) of the Patent Act . [ 149 ] A claim is anticipated if: (1) the essential elements of the claim are disclosed in a single instance (such as a publication), and (2) that disclosure was enabling, meaning that a Skilled Person could produce the invention using that disclosure without any inventive skill: Sanofi-Synthelabo Canada Inc v Apotex Inc, 2008 SCC 61 at paras 31-37 [ Sanofi-Synthelabo ]; Free World Trust at para 26 ). [ 150 ] For disclosure, the prior art must disclose subject matter which, if performed, would necessarily result in infringement of that patent.

For enablement, the Skilled Person must have been able to perform the claimed invention without undue burden, not the prior art: Sanofi-Synthelabo at para 27 . If an inventive step were required to get to the invention of the patent, the prior publication would not be enabling. The Skilled Person may use the CGK during the enablement portion of the test. C. Obviousness [ 151 ] A claim in a patent is invalid if it was obvious as of the claim date (the priority date in this case). The requirement is set out by s 28.3 of the Patent Act .

In Sanofi-Synthelabo at para 67 , the Supreme Court of Canada set out the four part test for obviousness as follows:

a) Identify the notional Skilled Person and the relevant CGK of that person;

b) Identify the inventive concept of the claim, or if that cannot readily be done, construe it;

c) 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; and

d) If the differences constitute steps which would have been obvious to the Skilled Person, the claim is obvious and invalid. [ 152 ] Insofar as the state of the prior art is concerned, the Federal Court of Appeal stated in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 at para 23 that " “[p]rior art is the collection of learning in the field of the patent at issue. It comprises any publically available teaching, however obscure or not generally accepted.” "

[ 153 ] If there is no difference between the inventive concept and the state of the art, then the claim will be obvious ( Bristol-Myers Squibb Canada Co v Teva Canada Ltd , 2017 FCA 76 at para 65 ). If there are differences, but those differences do not require any degree of inventiveness, then the claim will also be obvious.

The Skilled Person can rely on their CGK to determine if the bridge between the state of the art and inventive concept was obvious. [ 154 ] The CGK is the technical background of the Skilled Person against which the prior art must be considered: Angelcare Canada Inc v Munchkin Inc , 2022 FC 507 at para 88 , citing Laddie J in Raychem Corporation’s Patents , [1998] RPC 31 at 40. As stated by Mr.

Justice Michael Manson in Biogen Canada Inc v Taro Pharmaceuticals Inc , 2020 FC 621 at para 170 , " “the prior art should be approached by a motivated [Skilled Person] with a mind willing to understand, not one myopically focussed on seeking out failure.” " D. Overbreadth [ 155 ] If a patent claims more than what was invented or disclosed, it is invalid for being overly broad: Pfizer Canada Inc v Canada (Minister of Health), 2007 FCA 209 at para 115 [ Pfizer 2007 ].

A claim in a patent is invalid for being overbroad if it is either: (1) broader than the invention disclosed in the patent; or (2) broader than the invention actually made by the inventors: Pfizer Canada Inc v Canada (Minister of Health), 2008 FC 11 at para 46 [ Pfizer 2008 ] . [ 156 ] In assessing whether the claim is broader than the invention made, courts look to evidence from the inventor regarding what was actually made: Apotex Inc v Wellcome Foundation Ltd, 1998 CarswellNat 458 (FCTD) at paras 267-270 , 294-303, rev’d in

part 2000 CarswellNat 2643 (FCA) , aff’d 2002 SCC 77 . [ 157 ] In assessing whether the claim is broader than the invention disclosed in the patent, the Court asks whether any of the claims lack an essential element in the patent specification. E. Infringement [ 158 ] 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 ( Schmeiser at paras 33-34 ).

This monopoly is the exclusive right, privilege, and liberty of making, constructing, and using the invention, and selling it to others to be used ( Patent Act , s 42). [ 159 ] Once the essential elements of the patented invention have been established, determining whether there is an infringement is an exercise in comparing the allegedly infringing item and the patented invention ( Schmeiser at para 30 ). If the accused item includes all of the essential elements of a particular claim, then infringement is established ( Eli Lilly & Co v Apotex Inc , 2009 FC 991 at para 211 [ Eli Lilly & Co ]).

A claim is only infringed if the subject matter of the infringing product falls within the claims as construed. [ 160 ] Having a larger and more complex system than the systems claimed in the patents does not render a system immune to infringement: Bessette v Quebec (Attorney General), 2019 FC 393 at paras 279-281 . XIV. The Skilled Person [ 161 ] Defining the Skilled Person is the first step for the Court and is foundational to construction, infringement and validity issues.

Patents must be construed from the perspective of the Skilled Person to whom the patent is addressed: Whirlpool at para 53 . [ 162 ] The law on the Skilled Person is settled. The Skilled Person is a hypothetical individual or team possessing the level of skill and knowledge that would allow them to understand the subject matter taught by the patent and to put it into practice.

The Skilled Person has " “no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right” " ( Beloit Canada Ltd et al v Valmet OY (1986), 8 CPR (3d) 289 (FCA) at para 17 ). They possess an ordinary level of competence and knowledge incidental to the field to which the patent relates.

The Skilled Person " “never misses the obvious nor stumbles on the inventive.” " ( H Lundbeck at para 83 , citing Lilly Icos LLC v Pfizer Ltd , [2000] EWHC Patents 49 at para 62). [ 163 ] The experts agree that the four Patents are addressed to the same Skilled Person. [ 164 ] Mr.

Wahlers defined the Skilled Person to whom all four patents is addressed as a team of engineers and/or 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, STBs, and multimedia systems. The Skilled Person would have a bachelor’s degree in engineering, computer science, or applied mathematics, as well as two or more years of experience in some or all of the areas identified above. [ 165 ] Neither Mr. Kerr nor Dr.

Robinson had any specific points of disagreement with Mr. Wahlers’ opinion relating to the credentials of the Skilled Person. I adopt Mr. Wahlers’ definition as I consider it comprehensive and correct. XV. Common General Knowledge [CGK] [ 166 ] The second issue the Court must decide is how to define the CGK of the Skilled Person. CGK means knowledge generally known by persons skilled in the rel evant art at the relevant time.

This knowledge undergoes continuous evolution and growth ( Whirlpool at para 74 ). [ 167 ] The CGK distinguishes the body of information that is widely recognised 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 actio n ( Eli Lilly & Co at

para 97). At the same time, some information that forms part of the CGK may not have been written down at all ( Janssen-Ortho Inc v Novopharm Ltd, 2006 FC 1234 at para 113 [ Novopharm ] ) . [ 168 ] The parties submitted agreed statements of fact setting out what was part of the CGK of the Skilled Person in 1998, 2000 and 2003. The CGK prior to the filing date of any of the patents includes:

a) A television system typically includes a headend (a central location run by the operator, which collects multimedia from content providers and processes it for distribution), and customer premises equipment (such as a television sometimes with a STB, which receives the television content and displays it to the user).

b) EPGs and their provision to and storage of information of television program data by an STB.

c) The STB could be controlled by the user by way of a remote control.

d) Up to the mid-1990s, most television content was transmitted to users in analog format.

e) The development and widespread adoption of digital transmission, compression and storage techniques in the mid-1990s changed the ability to provide a richer interactive television experience to users.

f) The Internet digitally connected users across the globe, allowing them to exchange messages, play games, and view various types of multimedia (including pictures, music, and video).

g) In March 1998, DAVIC released version 1.3.1 of its specification, which consists of 14 parts. [ 169 ] This is by no means a complete listing of the CGK. Rather than reciting it at length in these reasons, I hereby adopt the CGK which I consider to be fairly laid out in the validity reports of the Defendants’ experts. In my analysis of the validity issues, I will focus on the elements of the Asserted Claims that are said to be CGK by the Defendants, which are not accepted by Rovi. [ 170 ] There is no dispute between the parties’ experts that the elements of the Asserted Claims discussed below are essential.

Only the elements that there remains a construction debate will be analysed in depth in these reasons. The focus is on the claims where the proverbial " “shoe pinches” " ( Bayer Inc v Apotex Inc, 2014 FC 436 at paras 46-47 ). XVI. The 870 Patent [ 171 ] The 870 Patent is 346 pages long and has 999 claims. It was filed on July 13, 1999 and claims priority to U.S. Application No. 60/092,807, filed on July 14, 1998 [the " “807 Application” " ] , and to U.S. Application No. 09/332,244 filed on June 11, 1999.

It is generally directed to an IPG system that allows users to record programs and program data to a local or remote server. [ 172 ] The 870 Patent was laid open to public inspection on January 27, 2000, issued to patent on January 3, 2017, and expired on July 13, 2019. Nearly 15 years after the filing date and four years after Bell and TELUS launched their services, it was amended to add the 870 Claims.

The significance of these amendments will become apparent when dealing with the Defendants’ argument that the 870 Claims are broader than the invention made by the inventors. [ 173 ] Rovi initially asserted infringement of 124 claims of the 870 Patent against Bell and 96 claims against TELUS. At trial, only four claims, the 870A Claim and the 870C Claims, were alleged to be infringed by the Defendants. [ 174 ] I will first address infringement and validity issues relating specifically to the 870A Claim before turning to the validity attacks against the 870C Claims.

I will then address the Defendants’ overbreadth arguments that apply to the 870 Claims as a whole. A. The 870A Claim [ 175 ] The 870A Claim describes an IPG recording two programs simultaneously and reads as follows: 346.

A method for using an interactive television program guide to record programs, the method comprising: receiving a first user selection made using an interactive television program guide to record a first television program on a random access digital storage device; directing a first tuner to tune to a channel corresponding to the first television program in response to receiving the first user selection; recording the output of the first tuner to the random access digital storage device; receiving a second user selection made using the interactive television program guide to record a second television program on the random access digital storage device, wherein the broadcast time of the second television program overlaps at least partially with the broadcast time of the first television program; directing a second tuner to tune to a channel corresponding to the second television program in response to receiving the second user selection; and simultaneously recording the output of the second tuner along with the output of the first tuner to the random access digital storage device.

1. Claim construction – 870A Claim [ 176 ] The sole claim construction dispute between the parties arising from the 870 Patent centers on the meaning of the terms " “tune” " and " “tuner” " in the 870A Claim. [ 177 ] Mr. Wahlers provided the opinion that " “tune” " and " “tuner” " are not limited to describing traditional cable systems, and that the Skilled Person would have used the terms " “tune” " and " “tuning” " in the context of IPTV deployments. Mr. Wahlers argued that a tuner " “encompasses any hardware and software to enable selection of a particular channel.” " [ 178 ] In contrast, while Mr.

Kerr agreed that " “tuning” " (the verb) is colloquially used to describe accessing a channel by joining a multicast stream, he opined that the Skilled Person would understand that a tuner (the noun) is a specific piece of hardware that functions to filter out a specific channel from among many channels. [ 179 ] In his validity report, Mr. Kerr observed that television content is often delivered to users by the signal being modulated and transmitted over a medium, such as a coaxial cable.

The television programs are typically broadcast to the user within a number of " “channels,” " which are frequency bands of a specific bandwidth. A " “tuner” " is a device that can select a specific frequency band, and therefore, a specific television channel. This evidence was not challenged. [ 180 ] Rovi submits that Mr. Wahlers’ opinion should be preferred because it is supported by: (

i) Bell and TELUS’ own descriptions of their IPTV systems; (ii) Mr. Kerr’s evidence that " “technical people” " use the term tune when discussing IPTV systems; and (iii) Dr. Robinson’s evidence on IPTV systems, which was far more candid that Mr. Kerr’s. I disagree. [ 181 ] There is no dispute that " “tune” " and " “tuning” " are terms used in the context of IPTV systems. Mr. Kerr conceded in cross- examination that technical people use " “colloquial” " terms like " “channel” " and " “tune” " in the IPTV context.

These terms have also been used in documents describing the Fibe TV and Optik TV services, including in Bell’s marketing material to consumers. Moreover, tune is a commonly used term to describe accessing a live broadcast television program in the Defendants’ IPTV systems built on Mediaroom software provided by Ericsson. [ 182 ] I note that the term " “tuner” " appears in the Ericsson document titled " “Set-Top Box Client, Ericsson Mediaroom for Set-Top Box Client 3.3 GA,” " however, no evidence was adduced to explain what this term, in the context of the document, would be understood to be by the Skilled Person.

During his cross-examination, Mr. Kerr was shown the document, which he was seeing for the first time, and asked to comment. He volunteered that the Ericsson document is an " “operational document” " focused on " “set[ting] up the set-top box” " rather than a " “technical treatise on how the system was built.” " From his perspective, the references to " “tuner” " mostly entailed coding abbreviations. [ 183 ] To be clear, all the experts, including Dr. Robinson, agreed that " “tuning” " is colloquially used to describe accessing a television program.

However, the crux of the issue before me is not what is meant generally by tuning, but rather what the Skilled Person would understand by the term " “tuner” " (noun), which Rovi concedes is an essential element of the 870A Claim, juxtaposed to the verb " “to tune.” " [ 184 ] Rovi claims that Dr. Robinson’s evidence supports Mr. Walhers’ opinion. However, I note that Dr. Robinson was never squarely asked what the term " “tuner” " would mean to the Skilled Person reading the 870 Patent. In cross-examination, Dr.

Robinson was simply asked whether " “tuning” " is a term that the Skilled Person would know and understand in or around the year 2000. Dr. Robinson responded that a person, particularly with an electronics background, would know what tun

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