Rovi Guides, Inc. v. Videotron Ltd.

Rovi Guides, Inc. v. Videotron Ltd.
Court (s) Database
Federal Court Decisions
Date
2022-06-23
Neutral citation
2022 FC 874
File numbers
T-921-17
Notes
A correction was made on October 28, 2022 Digest
Decision Content
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.
[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.
[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.
[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.
[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.
[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.
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 t