Dr Sean Hughes

September 2021

Overview

An infringement action brought by Promptu against Sky was dismissed by the High Court, based on patent invalidity (lack of inventive step).

Promptu alleged that the voice control functionality in the Sky Q television service infringed its European Patent (UK) No. 1,290,889. Sky denied infringement based on (1) claim construction and (2) that certain parts of the claimed method were performed outside the UK (referred to as the “territoriality issue”). Sky also counter-claimed that the patent was invalid for added matter and lack of inventive step over a prior art citation referred to as “Houser”.

In this article, it is the territoriality issue in particular that is reported.

The Decision

The relevant part of the Sky Q system comprised three sub-systems connected via the internet:

1. A VREX voice platform hosted on Amazon Web Servers (“AWS”) in the UK;
2. An automatic speech recognition (“ASR”) function provided by Google which turns voice data into text (unknown to Sky whether performed in the UK or elsewhere); and
3. A search function hosted by AWS in Ireland.

Sky argued, therefore, that the method was not performed (exclusively) in the UK and therefore could not be held to infringe the UK patent in the name of Promptu.

Based on previous case law, the judge (Meade J) noted that the Court’s task is to identify by whom and where, in substance, the method is being used; and it is relevant to take into account that for some steps it simply may not matter where processing power is located.

The judge considered that the ASR function (sub-system 2) and the searching of metadata (sub-system 3) in the Sky Q system were “subordinate” and essentially sub-contracted functions, and it did not matter where those two functions took place. This was alleged to be consistent with the fact that Sky did not know where the ASR took place for any given user interaction.

As such, the Promptu patent was held to be infringed by Sky to the extent that it was found to be valid (which it wasn’t).

Conclusion

In reality, there is always a risk of ambiguity in identifying the “substance” of a claimed invention. Patentees are therefore best advised to draft claims that cover the end user equipment, where possible, avoiding the territoriality issue entirely.

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