ROVI GUIDES, INC. Plaintiff/ Defendant by Counterclaim v. VIDEOTRON LTD., 2022 FC 874

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 - 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. [ 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. II. Overview A.

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.

Early EPG Screenshot [ 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.

Examples of IPGs [ 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. [ 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.

Rovi Corporate History [ 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 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 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 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.

(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. [ 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 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 the Videotron features alleged to be infringed. Her testimony was that the absence of such features would not impact the subscriber base for Videotron. [ 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. [ 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 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. [ 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. [ 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. [ 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 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 DAVIC. [1] [ 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 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. Davic - Home Network [ 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. DAVIC 15

DAVIC 15 [ 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 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 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 disclosure of a STB in Florin [2] or an IPG in Blake [3] , 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 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. (

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 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 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 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 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 ]). [ 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. (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. [ 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. [ 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. [ 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 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 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. (

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 48 " “…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.

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 [ 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: T he 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 the relevant technical background required by the skilled person. [ 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 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 rel evant 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 actio n: 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. [ 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) Television delivery technology - both analog and digital - to STBs in the home.

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

c) 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) Designing and writing software for STBs either directly or using the services of contractors/vendors.

e) 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, satellite systems. • 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 [ 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. [ 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. [ 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. (

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. [ 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. (

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. [ 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. [ 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 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.

(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 actuall

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