Rovi Guides, Inc. v. Videotron Ltd.

Rovi Guides, Inc. v. Videotron Ltd.
Court (s) Database
Federal Court of Appeal Decisions
Date
2024-08-06
Neutral citation
2024 FCA 125
File numbers
A-186-22
Decision Content
Date: 20240806
Docket: A-186-22
Citation: 2024 FCA 125
CORAM:
STRATAS J.A.
GLEASON J.A.
MONAGHAN J.A.
BETWEEN:
ROVI GUIDES, INC.
Appellant
and
VIDEOTRON LTD.
Respondent
Heard at Toronto, Ontario, on November 28, 2023.
Judgment delivered at Ottawa, Ontario, on August 6, 2024.
PUBLIC REASONS FOR JUDGMENT BY:
GLEASON J.A.
CONCURRED IN BY:
STRATAS J.A. MONAGHAN J.A.
Date: 20240806
Docket: A-186-22
Citation: 2024 FCA 125
CORAM:
STRATAS J.A.
GLEASON J.A.
MONAGHAN J.A.
BETWEEN:
ROVI GUIDES, INC.
Appellant
and
VIDEOTRON LTD.
Respondent
PUBLIC REASONS FOR JUDGMENT
This is a public version of confidential reasons for judgment issued to the parties. The two are identical, there being no confidential information disclosed in the confidential reasons.
GLEASON J.A.
[1] The appellant, Rovi Guides Inc. (Rovi), appeals from the judgment of the Federal Court in Rovi Guides, Inc. v. Videotron Ltd., 2022 FC 874 (per Lafrenière J.). In that judgment, the Federal Court dismissed Rovi’s action against the respondent, Videotron Ltd. (Videotron), for patent infringement and granted Videotron’s counterclaim for declarations of invalidity and non‑infringement in respect of several claims in Rovi’s Canadian Patents Nos. 2,337,061, 2,339,629, 2,336,870 (the 870 Patent), and 2,730,344 (the 344 Patent).
[2] The four Patents all involve interactive television program guide (IPG) technology. This technology, as the Federal Court summarized at paragraph 3 of its reasons:
…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.
[3] The Federal Court held that all of the asserted claims were invalid because they were either anticipated and/or obvious, having regard to the prior art and the common general knowledge of the person skilled in the art to which the Patents were directed (the Skilled Person). While this was sufficient to dismiss Rovi’s action and grant Videotron’s counterclaim, the Federal Court went on to reach conclusions about the appropriate remedy for completeness sake. The Court concluded that, had the claims in suit been valid, Rovi would not have been entitled to an accounting of profits and instead would have only been entitled to a reasonable royalty.
[4] Rovi has appealed the Federal Court’s findings in respect of the 870 Patent and the 344 Patent, but not the findings in respect of the other two Patents that were at issue before the Federal Court. Rovi argues that the Federal Court made reviewable errors in its obviousness analysis in respect of both Patents and in concluding that Videotron did not infringe the 344 Patent. It also asserts that the Federal Court made reviewable errors in its remedial analysis.
[5] For the reasons that follow, I find that the Federal Court did not make a reviewable error in its obviousness analysis concerning the 870 Patent and the 344 Patent. Therefore, it is unnecessary to address its non-infringement findings. However, some of its observations on remedy require correction by this Court.These corrections do not affect the diposition of this appeal, which I would accordingly dismiss, with costs.
I. The Reasons of the Federal Court [6] In reviewing the Federal Court’s reasons, I focus only on those portions that are relevant to the issues that Rovi has raised on appeal. I commence the discussion by saying a little more about the 870 Patent and the 344 Patent.
A. The 870 Patent and the 344 Patent [7] The 870 Patent was filed on July 13, 1999 and expired on July 13, 2019. The Federal Court found that the priority date for the 870 Patent was June 11, 1999 (after considering two different priority dates listed in the Patent): Federal Court Decision at para. 351. To quote from the reasons of the Federal Court, “[a]t a high level, the 870 Patent relates to IPG systems, and more particularly, to IPG systems that allow users to record programs and program guide data on a media server”: Federal Court Decision at para. 339.
[8] At trial, Rovi asserted that Videotron infringed Claims 456 (dependent on 454), 459 (dependent on 457), 720, and 721 of the 870 Patent. These claims read as follows:
Claim 454
A method of playing back programs stored on another user's user equipment, comprising:
generating a request to playback a program with a first user equipment, wherein the program was recorded on a second user equipment in response to a record request generated at the second user equipment;
in response to the request to playback, receiving with the first user equipment the program from the second user equipment;
and generating for display the received program.
Claim 456
The method of claim 454, wherein the program is a broadcast program.
Claim 457
A first user equipment for playing back programs stored on a second user equipment, the first user equipment comprising:
means for generating a request to play back a program with the first user equipment, wherein the program was recorded on the second user equipment in response to a record request generated at the second user equipment;
means for receiving with the first user equipment the program from the second user equipment in response to the request to playback; and
means for generating for display the received program.
Claim 459
The first user equipment of claim 457, wherein the program is a broadcast program.
Claim 720
A method for playing back programs, the method comprising:
receiving a record request at a first user equipment to record a program on the first user equipment, wherein the first user equipment is coupled to a first display screen configured to generate for display video;
in response to receiving the record request at the first user equipment, recording the program on the first user equipment;
transmitting, from a second user equipment to the first user equipment, a request to play back the program, wherein the second user equipment is coupled to a second display screen configured to generate for display video;
receiving, at the first user equipment from the second user equipment, the request to play back the program;
in response to receiving, at the first user equipment from the second user equipment, the request to play back the program, transmitting the program to the second user equipment;
receiving, at the second user equipment, the transmitted program from the first user equipment; and
generating for display, at the second user equipment, the received program on the second display screen.
Claim 721
The method of claim 720, wherein the program is a broadcast program.
[9] The 344 Patent was filed on July 16, 1999 and expired on July 16, 2019. Its claimed priority date was July 17, 1998, which the Federal Court accepted as appropriate: Federal Court Decision at para. 415. As noted by the Federal Court, “[t]he 344 Patent relates to ‘interactive media guides’ providing IPG functionality on multiple devices within a household”: Federal Court Decision at para. 416.
[10] The claims in the 344 Patent that Rovi alleged were infringed by Videotron were the following:
Claim 113
A method for coordinating a first interactive media guide and a second interactive media guide, the method comprising:
receiving, from the first interactive media guide, a first indication of a first activity performed on a first user equipment device implementing the first interactive media guide, wherein the first activity is associated with a first program;
receiving, from the second interactive media guide, a second indication of a second activity performed on a second user equipment device implementing the second interactive media guide, wherein the second activity is associated with a second program;
and generating content, for display on the first interactive media guide, based on the first indication from the first interactive media guide and the second indication from the second interactive media guide.
Claim 116
The method of claim 113 further comprising generating content, for display on the second interactive media guide, based on the first indication from the first interactive media guide and the second indication from the second interactive media guide.
Claim 119
The method of claim 113, wherein the first activity and the second activity comprise one or more of adjusting favorite channels, modifying parental control settings, scheduling a recording, adjusting recording settings, adjusting pay-per-view settings, adjusting message settings, adjusting reminders, and modifying user profiles.
Claim 120
The method of claim 113, wherein the first user equipment device and the second user equipment device are located in a household.
Claim 123
The method of claim 113 further comprising:
generating, based on the first indication from the first interactive media guide and the second indication from the second interactive media guide, an aggregated list of scheduled recordings.
B. The Federal Court’s Obviousness Findings [11] The Federal Court found that the foregoing claims in the 870 Patent and the 344 Patent were obvious and therefore invalid by reason of the common general knowledge of the Skilled Person and the information contained in a document published by the Digital Audio-Visual Council (the Council) in 1998 entitled, “DAVIC 1.3.1 Specification Part 1” (DAVIC).
[12] The Council was a non-profit organization based in Switzerland. To quote from the Foreword of DAVIC, the Council’s objective was “…to promote the success of interactive digital audio-visual applications and services through the specification of open interfaces and protocols”. DAVIC was the culmination of a multi-year consultation process with equipment manufacturers, service providers, government organizations, and non-members of the Council. As stated in its introduction, DAVIC “… define[s] the minimum tools and dynamic behaviour required by digital audio-visual systems for end-to-end interoperability across countries, applications and services”.
[13] The Federal Court found that DAVIC would have been understood by the Skilled Person to be read as a whole. The Court also held that DAVIC reflected the technologies and information that would have already been known to the Skilled Person as of the relevant dates for assessing obviousness.
[14] In undertaking its obviousness analysis, the Federal Court, at paragraph 296 of its reasons, correctly set out the applicable test from Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265 [Sanofi] at paragraph 67, which requires that a court:
first, identify the notional Skilled Person;
second, identify the relevant common general knowledge of that person;
third, identify the inventive concept of the claim(s) in question or, if that cannot readily be done, construe them;
fourth, identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim(s) or the claim(s) as construed; and
finally, viewed without any knowledge of the alleged invention as claimed, determine whether those differences constitute steps that would have been obvious to the Skilled Person or whether they require any degree of invention.
[15] In this appeal, Rovi does not challenge the Federal Court’s findings regarding the attributes of the Skilled Person. Thus, no more needs to be said about the first step in the obviousness analysis.
[16] As concerns the second step of the obviousness inquiry, the Federal Court held, at paragraph 140 of its reasons, that the common general knowledge of the Skilled Person as of the relevant priority dates would have included the concepts from a number of technologies, namely:
television delivery technology—both analog and digital—to STBs in the home;
computing technology such as personal computers, Windows 95, and the Internet;
STB technology, including the software and applications that operated on STBs, such as interactive guides and other interactive features, including Pay-Per-View and video on demand;
designing and writing software for STBs either directly or using the services of contractors/vendors; and
technologies associated with networking computers and other electronic devices, which were becoming much more prevalent as of the dates relevant for assessing obviousness.
[17] With respect to the 870 Patent more particularly, the Federal Court found, at paragraph 392 of its reasons, that the Skilled Person as of the priority date would have:
been familiar with home networks;
understood that once audio-visual content is available on a network, such as from a server, any other device on the network would be able to retrieve the content;
been familiar with multi-room personal video recorders or PVRs;
understood that such PVRs could be networked together; and
been aware of systems such as TiVo and Replay TV that allowed for the recording of programs on digital storage devices.
[18] The Federal Court construed “users” in the claims in suit in the 870 Patent as not meaning exclusively persons in the same household. It also construed “receiving/transmitting the program from or to the second user equipment” as encompassing both streaming and file transfer.
[19] As concerns the third part of the Sanofi test, the Federal Court found that the inventive concept of the claims in suit in the 870 Patent involved the following features: (1) generating a request to playback a program recorded on a second user’s equipment from the first user’s equipment; and (2) receiving the program from the second user’s equipment with the first user’s equipment. The Court agreed with Videotron’s expert, Mr. Sandoval, that the “essence” of the multi-room digital video recorder (DVR) described in the 870 Patent was networking within the home, one of the benefits of which was that “…STBs could transfer content between each other”: Federal Court Decision at para. 409.
[20] As already noted, the Federal Court found the inventive concept of the claims in suit to be obvious in light of the common general knowledge of the Skilled Person and the disclosures contained in DAVIC. Videotron relied in particular on sections 4.06 and 4.07 of the Function Decomposition Table in section 7.3 of DAVIC, which provide:
4.06 The application should be able to transfer a session to another STU in the same location (for example to transfer a program to a unit in a different room in a home).
4.07 The application should be able to transfer a session to another STU in a different location (for example to transfer a program to a unit in another home).
[21] The Federal Court held that the Skilled Person would understand the term “set top units” (or STUs) used in the foregoing sections in DAVIC as being synonymous with STBs: Federal Court Decision at para. 394.
[22] As concerns the first element of the inventive concept of the claims in suit of the 870 Patent, involving generating a request to playback a program recorded on a second user’s equipment from the first user’s equipment, the Federal Court held that DAVIC showed a home network with many interconnected devices: Federal Court Decision at para. 396. The Court relied on the evidence from Mr. Sandoval that the Skilled Person would know that once a home network was established, every device in the network could “talk” to every other connected device: Federal Court Decision at para. 396.
[23] The Federal Court found that this functionality was also expressly described in section 7.2 of DAVIC. That section reads as follows:
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.
[24] The Court further noted at paragraph 396 of its reasons that:
…The clear identification in [section 7.2 of] DAVIC of “selectable access”, coupled with the reference of such access being for “digital storage devices in the home” using “home networks for DAVIC”, is strong support for the opinion of Mr. Sandoval that it was known by the skilled person to use an STB to selectably access (i.e. request) a particular service - i.e. the playback of a program stored by another STB.
[25] As to the second element of the inventive concept of the claims in suit in the 870 Patent involving receiving, there was a dispute between the parties relating to the term “session” in sections 4.06 and 4.07 of the Function Decomposition Table in section 7.3 of DAVIC. The Federal Court preferred the evidence from Mr. Sandoval and found that a “session” was a technical term where there are two points that start and end a session, such that the term would be understood “as referring to streaming content from one STB to another”: Federal Court Decision at para. 398.
[26] The Federal Court also accepted Mr. Sandoval’s evidence that the Skilled Person would understand DAVIC as describing streaming content from one STB to another. The Court further agreed with Mr. Sandoval that the Skilled Person would know that they could transfer programs between STBs and that any implementation details would be inherent to the functionality described in DAVIC. The Federal Court therefore concluded that “…to the extent that the specific claim elements such as, for example, a ‘request to playback a program’ or a ‘record request’ are not expressly set out in DAVIC, such a gap between the prior art and the [claims in suit] would be obvious to the Skilled Person”: Federal Court Decision at para. 405.
[27] Turning now to the 344 Patent, as already noted, the Federal Court found that it was also obvious in light of the common general knowledge of the Skilled Person and DAVIC. According to the Court, the Skilled Person as of the relevant date would have:
been familiar with how to create a network of devices, both as a local area network and a wide area network;
been familiar with digital systems, including personal computers and home networks;
known that once devices were connected to a network they could communicate with one another; and
been aware that subscriber level settings could be shared between devices inside a user’s home.
[Federal Court Decision at para. 452].
[28] With respect to the inventive concept of the claims in suit in the 344 Patent, the Federal Court held that the key features of all the claims were:
1) coordinating settings for a first IPG and a second IPG; 2) receiving first/second indications associated with first/second programs; 3) displaying an interface with certain content related to the coordinated settings
[Federal Court Decision at para. 454].
[29] Rovi alleged that there was a gap between the foregoing and the prior art in that two elements were absent from the prior art—namely, the use of IPGs to carry out the required coordination and a return communication path. Rovi alleged that the gap between these elements and the prior art could not be bridged without inventiveness.
[30] The Federal Court disagreed. It found that the inventive elements of the claims in suit were obvious in light of DAVIC, and in particular its section 8.14, and the common general knowledge of the Skilled Person. Section 8.14 of DAVIC provides as follows:
8.14 An application running on one STU should be able to communicate with, and synchronize with, a related application running on a different STU.
[31] As concerns the first element of the inventive concept of the claims in suit in the 344 Patent involving coordinating settings for a first IPG and a second IPG, the Federal Court again relied on the evidence of Mr. Sandoval and found that the concept of coordinating settings across multiple STBs was identified by DAVIC, which described the ability to exchange information between devices on a home network. While section 8.14 of DAVIC does not use the word “coordinating” that appears in the claims in suit, the Federal Court held that, for all intents and purposes, synchronization is the same as coordination: Federal Court Decision at para. 459. It also agreed with Mr. Sandoval that the Skilled Person would understand that one of the applications described as being synchronized in section 8.14 of DAVIC was an IPG running on an STB and that synchronizing applications would be understood to mean synchronizing their operation. The Court further agreed with Mr. Sandoval that the Skilled Person would have been familiar with subscriber settings. The Court noted that one such setting that could be synchronized between IPGs was a known subscriber setting, namely, the Pay-Per-View setting: Federal Court Decision at para. 460.
[32] On the element of receiving first/second indications associated with first/second programs, the second of the inventive concepts of the claims in suit in the 344 Patent, the Federal Court held:
Given the disclosure in DAVIC that synchronization should be established between STBs on a network, and the [common general knowledge] related to digital devices on a network, the Skilled Person would be able to put into practice a home network comprising multiple STBs, each STB with the ability to synchronize the operation of its application with an application running on another STB.
I agree with Mr. Sandoval that, once synchronized, the settings would be available on both STBs. Necessarily some “indication” that user settings were adjusted would have to be exchanged by the STBs for the described synchronization to occur.
[Federal Court Decision at paras. 461–462].
[33] Finally, on the third element of the inventive concept of the claims in suit in the 344 Patent, the Federal Court held that generating a display of synchronized settings would be obvious because the Skilled Person would be familiar with general IPG and user interface concepts. Thus, “[i]t would not be inventive to the Skilled Person to include a display of the synchronized applications described by DAVIC”: Federal Court Decision at para. 463.
[34] The Court concluded that the gaps identified by Rovi’s expert witness “…would have been easily traversed by the Skilled Person by looking to DAVIC and having regard to their [common general knowledge]”: Federal Court Decision at para. 464. The Court accordingly held that the claims in issue in both the 870 and 344 Patents were obvious and therefore invalid.
[35] As is apparent from the foregoing summary of the Federal Court’s reasoning on obviousness, it relied to a considerable extent on the evidence from Mr. Sandoval, Videotron’s expert. On the other hand, the Federal Court found that the evidence from Rovi’s expert, Dr. Balakrishnan, “… 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”: Federal Court Decision at para. 66. The Federal Court preferred the evidence from Mr. Sandoval, holding that “while there were some aspects of Mr. Sandoval’s evidence that gave [the Court] pause, overall [he was] a straightforward, credible and reliable witness”: Federal Court Decision at para. 83.
C. The Federal Court’s Findings on Remedy [36] I turn next to summarize the Federal Court’s findings regarding remedy.
[37] As already noted, even though it dismissed Rovi’s action and granted Videotron’s counterclaim, the Federal Court went on to make findings on remedy for the sake of completeness. It held that, had the Patents been valid and infringed, Rovi would not have been entitled to an accounting of profits. Instead, the Court found that Rovi would only be entitled to a reasonable royalty in respect of the claims Videotron would have infringed.
[38] In deciding against an accounting of profits, the Federal Court cited the decision of this Court in Philip Morris Products S.A. v. Marlboro Canada Limited, 2016 FCA 55, [2016] F.C.J. No. 175 [Marlboro FCA], at paragraph 8, for the proposition that while the remedy of an accounting of profits is a discretionary one, a court should not refuse an accounting in the absence of compelling reasons. The Federal Court found that factors relevant to awarding an accounting of profits include: (i) whether there has been undue delay in commencing or prosecuting the litigation; (ii) the patentee’s conduct; (iii) the infringer’s conduct; (iv) whether the patentee practiced the invention of the patent in Canada; and (v) the complexity of calculating an accounting of profits: Federal Court Decision at para. 581.
[39] The Federal Court first assessed Videotron’s allegation of delay and noted that “[w]here a patentee has delayed commencing their action toward the infringer, thereby deliberately allowing an infringer to accumulate profits in an inordinate manner, an accounting of profits may be denied”: Federal Court Decision at para. 582. The Federal Court held that Rovi had not delayed commencing the action and that the first factor was therefore neutral.
[40] As concerns the second factor of Rovi’s conduct, the Federal Court found that it weighed heavily against awarding an accounting of profits. More particularly, it found Rovi’s business model of pursuing licence agreements in the way it did, the length of time Rovi took to prosecute the Patents before the Patent Office, and Rovi’s dealings with Videotron all militated against awarding an accounting of profits.
[41] As concerns Rovi’s business model, the Federal Court wrote, at paragraph 586 of its reasons, that:
…Rovi has a reputation of using hard-ball legal tactics to pressure third parties to license its patent portfolio. Rovi was known for its business model of aggregating patent portfolios, seeking licences, and relying on its prior licences and aggressive use of litigation to drive risk-avoiding businesses into deals that are consistent with its schedule of royalty fees. It would spend in the tens of millions of dollars annually on patent litigation.
[Federal Court Decision at para. 586].
[42] The Federal Court further determined that Rovi had apparently followed a deliberate strategy of delaying the prosecution of its Patents in suit because the Patents were issued between 13 and 17 years after their priority dates. In making this finding, the Federal Court noted that one of Rovi’s expert witnesses confirmed that “…patent holdup was a problem because once a potential infringer has launched a product it reduces flexibility and an opportunistic patent holder can then try to extract a larger, unreasonable licencing fee”: Federal Court Decision at para. 590. However, the Federal Court had no evidence about what led to the delays in the prosecution of the Patents in suit nor about usual prosecution practice before the Patent Office in Canada.
[43] The Federal Court went on to note that Rovi had not disclosed to Videotron full details of the claims in the Patents that it alleged were being infringed, finding that Rovi behaved this way because it wanted to prevent Videotron from designing around the relevant claims. The Court wrote that it was:
…quite apparent…that the reason why Rovi declined to reveal to Videotron a complete list of specific patent claims it considered infringed was to prevent Videotron from designing around them. Rovi took the position that even after all four patents in suit expire, Videotron would not be free to continue carrying on its current activities as there were always other patents that Rovi would be able to assert against Videotron.
[Federal Court Decision at para. 592].
[44] The Federal Court also relied on the fact that Rovi had not provided Videotron with specific information about the value of the Patents when it sought a licence agreement renewal. The Federal Court further noted that Rovi had not sent a cease and desist letter to Videotron before commencing the litigation. While accepting that sending such a letter was not required to obtain an accounting of profits, the Federal Court nonetheless found that “…bringing legal proceedings against a party who declines to enter into a licence without first giving that party an opportunity to assess the claim and attempt to resolve the dispute smacks of retaliation”: Federal Court Decision at para. 593.
[45] The Federal Court concluded its assessment of Rovi’s conduct by stating that, “Rovi’s questionable business practices cannot help but serve to colour [the Court’s] view of the value of the features that it claims in the Patents. This factor weighs heavily against Rovi”: Federal Court Decision at para. 594.
[46] As concerns the third factor of Videotron’s conduct, the Federal Court found Videotron behaved appropriately even though it had not provided any technical response to Rovi’s claim that the Videotron system violated its Patents. The Court held that this factor was neutral.
[47] The Federal Court found the fourth factor, whether a patentee practiced the invention of the patent in Canada, to be neutral because there was some evidence that, in addition to licencing its Patents, Rovi provided products to Pay-TV providers in Canada.
[48] With respect to the final factor associated with calculating an accounting of profits, the Federal Court held that complexity, in and of itself, would not preclude the remedy. However, in light of the evidence called by the parties, the Federal Court concluded that an award of an accounting of profits was not appropriate because it was not satisfied that using any of the methods proposed by Rovi to calculate Videotron’s profits would allow the Court to arrive at a reliable and appropriate amount: Federal Court Decision at para. 607.
[49] The Federal Court accordingly determined that, had the Patents been valid, it would not have been appropriate to award an accounting of profits. Instead, the Federal Court stated that it would award a reasonable royalty, based on a reasonable royalty rate that Rovi could have reached with Videotron. In assessing what such a rate would have been, the Federal Court accepted Videotron’s submission that “…the appropriate remedy [was] a one-time reasonable royalty, capped at no more than Videotron’s cost to remove or design-around the subject-matter of the relevant asserted patent claim”: Federal Court Decision at para. 611. The Court went on, in the same paragraph, to conclude that, “…the approximate cost for such a design change would have been $150,000 per feature”. However, the Federal Court made this finding without finding what such design changes would have been, accepting Videotron’s assertions that it could have made the required changes.
II. Analysis [50] I turn now to evaluate the various arguments that Rovi advances before this Court.
A. Did the Federal Court Err in its Obviousness Analysis? [51] As refined during its oral submissions, Rovi alleges that the Federal Court made three errors of law in its obviousness analysis. First, Rovi argues that the Federal Court erred in relying on the evidence from Mr. Sandoval because he was misinformed as to the attributes of the notional Skilled Person and therefore approached the obviousness inquiry incorrectly. Second, Rovi asserts that the Federal Court fell into the error of applying hindsight bias. Third, Rovi alleges that the Federal Court had a coloured view of Rovi and of its Patents, as evidenced in particular by paragraph 594 of the Court’s reasons, where the Court relied on extraneous and irrelevant factors. This coloured view, according to Rovi, taints the Federal Court’s obviousness analysis.
[52] I am not persuaded by any of the foregoing arguments that the Federal Court committed reversible error.
[53] Before delving into each of Rovi’s arguments, it is important to remember that a trial court’s findings on obviousness are findings of mixed fact and law. Thus, absent an extricable error of law, they are reviewable only if they disclose a palpable and overriding error: Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2019 FCA 96, 164 C.P.R. (4th) 191, leave to appeal to SCC refused, 38694 (19 December 2019) at para. 29 [Packers], citing Teva Canada Limited v. Pfizer Canada Inc., 2019 FCA 15, 163 C.P.R. (4th) 265 at para. 23 [Pfizer]; Teva Canada Limited v. Novartis Pharmaceuticals Canada Inc., 2013 FCA 244, [2013] F.C.J. No. 1108 at paras. 10-12; Alcon Canada Inc. v. Actavis Pharma Company, 2015 FCA 191, [2015] F.C.J. No. 1083 at para. 11.
[54] Determinations as to the state of the art and as to the nature and extent of the skilled person’s common general knowledge are likewise findings of mixed fact and law, reviewable only if they disclose a palpable and overriding error: Packers at para. 30, citing Apotex Inc. v. Allergan Inc., 2015 FCA 137, [2015] F.C.J. No. 953 at para. 7 [Allergan]; AFD Petroleum Ltd. v. Frac Shack Inc., 2018 FCA 140, 157 C.P.R. (4th) 195 at para. 38 [Frac Shack].
[55] This Court and the Supreme Court of Canada have underscored on multiple occasions that the palpable and overriding standard is a highly deferential one. “Palpable” means an error that is obvious and “overriding” means that the error affects the outcome. As the Supreme Court put it in Salomon v. Matte-Thompson, 2019 SCC 14, [2019] 1 S.C.R. 729 [Salomon], “[w]here the deferential standard of palpable and overriding error applies, an appellate court can intervene only if there is an obvious error in the trial decision that is determinative of the outcome of the case”: at para. 33, citing Canada v. South Yukon Forest Corporation, 2012 FCA 165, [2012] F.C.J. No. 669, leave to appeal to SCC refused, 34946 (6 December 2012); see also Benhaim v. St-Germain, 2016 SCC 48, [2016] 2 S.C.R. 352 at para. 38.
[56] Thus, in a case like the present, it is not the task of this Court in appellate review to sift through and reweigh the evidence the Federal Court used to ground its obviousness findings nor to re-decide which expert is to be preferred: see Pfizer at para. 31; Eli Lilly and Company v. Apotex Inc., 2010 FCA 240, [2010] F.C.J. No. 1199 at para. 8; E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2015 FCA 163, 134 C.P.R. (4th) 207 at para. 25. As the Supreme Court underscored in Salomon “[t]he fact that an alternative factual finding could be reached based on a different ascription of weight [to evidence] does not mean that a palpable and overriding error has been made”: at para. 33, citing Nelson (City) v. Mowatt, 2017 SCC 8, [2017] 1 S.C.R. 138 at para. 38.
(1) Did the Federal Court Err in Relying on Mr. Sandoval’s Evidence? [57] Bearing these cautions in mind, I turn now to assess Rovi’s first argument.
[58] As already noted, Rovi says that the Federal Court erred in relying on the evidence from Mr. Sandoval because he was misinformed about the attributes of the Skilled Person and therefore approached the obviousness inquiry incorrectly. Rovi more particularly submits that Mr. Sandoval defined the Skilled Person as being inventive, which is the opposite of what the case law instructs.
[59] Rovi is correct that the governing legal principles applicable to defining the Skilled Person require that they not be inventive. Indeed, the notion of the Skilled Person exists so as to remove the application of inventiveness from the obviousness analysis. The classic “touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right”: Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30, [2020] F.C.J. No. 179 at para. 79 [Hospira], citing Beloit Canada Ltd. v. Valmet Oy, [1986] F.C.J. No. 87, 8 C.P.R. (3d) 289 (F.C.A.) at 294 [Beloit FCA 1986]. As this Court stated in Beloit FCA 1986 at page 294:
The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.
[60] In other words, the notional Skilled Person, through whose eyes a patent is to be read, is different from the inventor who does creative work and makes an invention: Amgen Canada Inc. v. Apotex Inc., 2015 FC 1261, [2015] F.C.J. No. 1382 at para. 86, aff’d 2016 FCA 196, [2016] F.C.J. No. 765, leave to appeal to SCC refused, 37124 (27 October 2016).
[61] The common general knowledge of such an uninventive notional being is derived from “a common sense approach to the question of what would be known, in fact, to an appropriately skilled person that could be found in real life, who is good at his or her job”: Eli Lilly Canada Inc. v. Apotex Inc., 2018 FC 736, 156 C.P.R. (4th) 387 at para. 46, quoting Eli Lilly & Co. v. Apotex Inc., 2009 FC 991, [2009] F.C.J. No. 1229 at para. 97, aff’d 2010 FCA 240, [2010] F.C.J. No. 1199 [Eli Lilly]. As part of this, “[t]he skilled person is assumed to be reasonably diligent in keeping abreast of advances in the field to which the patent relates”: Johnson & Johnson Inc. v. Boston Scientific Ltd., 2008 FC 552, 71 C.P.R. (4th) 123 at para. 373, citing Whirlpool Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067 at para. 74 [Whirlpool].
[62] With these principles in mind, it is useful next to reproduce the Federal Court’s findings relevant to Rovi’s first issue. They were as follows:
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.”
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.
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 [the common general knowledge] 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, bu