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Promptu v Sky: The Q box and talking into the void

Member News published by Marks & Clerk, under Legal / IP

In a case reminiscent of the series of Rovi v Virgin Media cases[1], the Sky Q box has just avoided a patent infringement claim.  In Promptu v Sky[2], patent infringement was alleged against the Q box voice command feature which, inter alia, raised a point about the territoriality of infringement in the modern interconnected world.

The patent at issue was found invalid for obviousness over the single piece of prior art pursued at trial. However, Mr Justice Meade considered various points of construction said by Sky to limit the patent to old coaxial cable style TV networks (the patent had a June 2000 priority date and hence suffered from the problem of not being on all fours with the way technology has rapidly advanced in this area) and a second point about the timing of sending certain data.  These points of construction failed to impress the judge and on a normal interpretation the judge found for Promptu (no equivalence argument appears to have been run).

The problem for Sky was that although the specification was very much focussed upon old coaxial cable networks there was enough in the description to suggest other ways of operating the network.  These bear greater relation to modern systems utilising the “open” internet (as Promptu characterised it) and, of course, the claim language had been drafted openly.

Turning to the territoriality point, the following facts about the Sky Q system, which is really several interconnected systems operating over the internet, are relevant:

  1. A “VREX” voice platform is hosted on Amazon Web Servers (“AWS”) in the UK.
  2. An automatic speech recognition (“ASR”) function provided by Google turns voice data into text. This may or may not take place in the UK and Sky does not know for any individual instance whether it does or does not.
  3. Sky Search, a content engine containing searchable metadata for the content available to the user, is also hosted on AWS, but in Ireland.

In summary, when you say “What should I watch?” into your Sky Q remote control you are talking into the void and no one seems to know where it goes.

Referring to the cases Menashe, RIM and Illumina[3], Meade J summarised the principles to be applied as (a) the Court’s task is to identify by whom and where, in substance, the method is being used; and (b) it is relevant to take into account that for some steps it simply may not matter where processing power is located.”

Sky focussed on the steps carried out abroad but, in the judge’s view, this failed to grapple with the central question of whether the method as a whole was being carried out abroad.  He summarised the method as being, “overall, a method of using a back channel which takes place at the wireline node, i.e. at the ‘server’ end, remote from the user”. It is the VREX system that handles the back channel with the user and this is the server located in the UK.

The Judge held that the method is performed, in substance, in the UK.

While the judgment warns against comparison of fact patterns (Sky having submitted the RIM case was the most similar relied upon the fact there was no infringement in that case), this case serves as a further reminder of how the UK courts will approach the issue of distributed systems.  This, in the age of the internet of things, can be an important issue when alleging patent infringement.

Authored by Ian Turner

[1] Rovi Guides Inc v Virgin Media Ltd & Ors [2015] EWCA Civ 1214; Rovi Guides, Inc v Virgin Media Ltd & Ors [2015] EWCA Civ 781; Starsight Telecast Inc & Anor v Virgin Media Ltd & Ors [2014] EWHC 828 (Pat); and Gemstar-Tv Guide International Inc & Ors v Virgin Media Ltd & Anor [2011] EWCA Civ 302

[2] Promptu Systems Corporation v Sky UK Ltd & Ors [2021] EWHC 2021 (Pat)

[3] Menashe v. William Hill [2002] EWCA 1702; RIM v. Motorola [2010] EWHC 188 (Pat); and Illumina Inc v Premaitha Health Plc [2017] EWHC 2930 (Pat)

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