Rovi Guides, Inc. v. Bell Canada

Rovi Guides, Inc. v. Bell Canada
Court (s) Database
Federal Court Decisions
Date
2022-10-24
Neutral citation
2022 FC 1388
File numbers
T-113-18, T-206-18
Notes
A correction was made on November 25, 2022.
Decision Content
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.
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[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. |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| ||||||||
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[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.
[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.
[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:
[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.
[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:
[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.
[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:
[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