FOXTEL Management Pty Ltd v British Broadcasting Corporation - [2016] APO 19

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FOXTEL Management Pty Ltd v British Broadcasting Corporation [2016] APO 19

Patent Applications 2011201939
Title:Accessing Broadcast Media

Patent Applicant:  British Broadcasting Corporation
Opponent:  FOXTEL Management Pty Ltd
Delegate:  Dr S. K. Aggarwal
Decision Date:  12 April 2016
Hearing Date:  23 November 2015, in Canberra
Catchwords:  PATENTS – opposition to grant - claims are inventive in light of common general knowledge - claims are a manner of manufacture - claims are clear - costs awarded against the opponent.

Representation: Opponent: Mr Gideon van Rensburg assisted by Mr Guy Tucker of the patent attorney firm Spruson & Ferguson, Sydney
Patent Applicant: Ms Katrina Crooks assisted by Mr Nicholas Lakatos of the patent attorney firm Shelston IP, Sydney

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011201939

Title:Accessing Broadcast Media

Patent Applicant:  British Broadcasting Corporation
Date of Decision:  12 April 2016
DECISION
All of the claims are inventive in light of common general knowledge and are clear. Claims are for a manner of manufacture. Subject to appeal, I direct that the application proceed to grant.
Costs awarded against the opponent.
REASONS FOR DECISION
Background

Patent application 2011201939 (“the opposed application”) entitled Accessing Broadcast Media was filed on 29 April 2011 as a divisional of a patent application 2005256003 (WO 2005/125200) and derives priority from United Kingdom application GB 0413848.3 filed on 21 June 2004. The opposed application was advertised accepted on 27 March 2014.

A notice of opposition to the application 2011201939 was filed on 27 June 2014 by FOXTEL Management Pty Ltd (“the opponent”) and a statement of grounds and particulars was filed on 29 September 2014.
The opponent completed their evidence in support on 23 December 2014. The applicant completed their evidence in answer on 8 April 2015. The opponent completed their evidence in reply on 12 June 2015.
The opponent and the applicant filed their summary of submissions prior to the hearing on 9 November 2015 and 16 November 2015 respectively.
Subsequent to the hearing of this case, the Federal Court of Australia on 11 December 2015 issued its decision in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAC 177. On 15 December 2015, the parties were invited to provide any further submission under the ground of manner of manufacture in light of the above decision by 15 January 2016 and responding submissions by 22 January 2016. The applicant and the opponent provided their further submissions on 15 December 2016. No responding submissions were provided by either of the parties.
The Statement of Grounds and Particulars
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the case of the present application, the grounds of opposition are governed by the Patents Act in force before 15 April 2013.
The grounds of opposition specified in the statement of grounds and particulars are that the specification does not comply with paragraphs 18(1)(a), 18(1)(b) and sub-sections 40(3) of the Patents Act 1990.

The statement of grounds and particulars states that the claims are not a manner of manufacture. The statement of grounds and particulars further asserts that the claims lack novelty and inventive step and cites fifteen prior art patent documents and five non-patent literature documents. In addition, several aspects of non-clarity and one aspect of fair basis have been raised in respect of sub-section 40(3).
The Specification
The invention relates to providing individual users access to audio/visual content broadcast to a plurality of users on a scheduled basis wherein a user downloads the content prior to the scheduled broadcast time of the content. The downloaded content can then be accessed by the user based on a scheduled broadcast time of the content.
The specification concludes with eighteen claims including two omnibus claims. The independent claims 1, 8, 10 and 16 read as follows:
1.A system for providing individual users access to audio/visual content broadcast to a plurality of user on a scheduled basis, the system comprising:
ordering means for enabling a user to order the download of said content prior to the scheduled broadcast time of said content;
downloading means for downloading said content prior to the scheduled broadcast time of the content; and
access means for enabling a user to access said downloaded content, wherein the access means is adapted to enable access to the downloaded content in dependence on a scheduled broadcast time of said content.
8.A user interface for providing a user access to audio/visual content broadcast to a plurality of users on a scheduled basis, the user interface comprising:
means for listing such content which is available for download, for listing such content whose download has been ordered, and for listing such content which has been downloaded prior to the scheduled broadcast time of the content; and
means for enabling a user to order the download of such content prior to the scheduled broadcast time of the content, wherein user access to said content is dependent on a scheduled broadcast time of said content.
10. A method of providing individual users access to audio/visual content broadcast to a plurality of users on a scheduled basis, the method comprising:
enabling a user to order the download of said content prior to the scheduled broadcast time of the content;
enabling a user to download said content prior to the scheduled broadcast time of the content; and
enabling a user to access said downloaded content, wherein the access to said content is dependent on a scheduled broadcast time of said content.
16. An electronic programme guide for providing users with access to audio/visual content items, the guide comprising:
means for listing content which has previously been broadcast as part of a scheduled programme broadcast together with content scheduled to be broadcast in the future;
means for enabling a user to order the download of content prior to the scheduled broadcast time of the content;
means for downloading content prior to the scheduled broadcast time of the content; and
wherein user access to said content is dependent on a scheduled broadcast time of said content.
Evidence
The evidence in support consists of a single statutory declaration (“the first Cohen declaration”) from Mr Keith David Cohen.

Mr Cohen is a consultant specialising in high-technology product development in broadcasting, telecommunications, internet services and consumer electronics with over 20 years experience in the field. He was employed with the opponent from 1996 to 2005. The first Cohan declaration relies on exhibits KC-1 to KC-7 in support of the opponent’s case.
The evidence in answer consists of single statutory declaration by Mr Benjamin Lavender.
Mr Lavender’s background includes working in broadcast/media and internet video streaming. He was employed with the applicant from 2002 to 2007. Mr Lavender is a co-inventor of the opposed application. The Lavender declaration relies of exhibits BL-1 to BL-3.
The evidence in reply consists of a single statutory declaration (“the second Cohen declaration”) from Mr Keith David Cohen.
During the hearing, the opponent pleaded only on the grounds of lack of inventive step, lack of manner of manufacture and lack of clarity. Therefore, I will cover the above grounds in this decision without going into the remaining grounds of opposition raised in the statement of grounds and particulars.
I will provide the details of what is contained in the evidence, and the details of the opponent’s submissions, where relevant, later in my decision.
Decision
Onus of Proof

The examination request for the opposed application was filed on 7 November 2011. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Inventive Step
Law Relating to Inventive Step

Section 7 of the Patents Act 1990 at the relevant date provides that
(2) For the purpose of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 confirmed that “obvious” means “very plain” as stated by the English Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 45 where it was said:
"'Obvious' is, after all, a much-used word and it does not seem to [us] that there is any need to go beyond the primary dictionary meaning of 'very plain'.”
A person skilled in the art is a non-inventive worker who is not overly qualified and has a practical interest in the subject matter of the invention. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242, Finkelstein J stated:
"Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected.”
While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).

Common General Knowledge

As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to the person skilled in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.

Approach Used to Assess Inventive Step

There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hassle (supra) referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the `Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances which includes a knowledge of all the relevant prior art and of the facts of the nature and success of [compound], directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
Inventive Step Determination in the Current Case
The opponent advocated the use of “problem solution approach” for assessing inventive step in the current matter and referred to the following exhibits as prior art documents:
KC-4. Windows Media Rights Manager SDK, version 7, released 17 July 2000;
KC-5. “Open Digital Rights Language (ODRL) Version 1.1, W3C Note Note 19 September 2002;
KC-6. “Comparing Logic-based and XML-based Rights Expression Languages” Cheun Ngen Chong, Sandro Etalle and Pieter Hartel, published OTM Confederated International Workshops, 3-7 November 2003:779-792; and
KC-7. “Profiling MPEG Rights Expression Language: Concept, Approach and Application” Copyright 2003 ContentGuard, Inc.
Before determining the inventive step of the claimed invention, I will first determine the “problem to be solved”. I will also identify the person skilled in the art and the common general knowledge of that person at the priority date of the claims of the opposed application. If required, I will also determine whether the prior art documents KC-4 to KC-7 could reasonably be expected to have been ascertained, understood and regarded as relevant by the skilled addressee.
Problem to be solved
The opponent stated that specification does not state a specific problem addressed by the claimed invention. However they submitted that the problem solved by the claimed invention is how to distribute electronic content, but limit when that content could be accessed.
The applicant disagreed with the opponent’s description of the problem and stated that the specification does not at all mention “electronic content”. They submitted that at the priority date of the specification, broadcast content was only viewable at the time of broadcast and a viewer was restricted to either watching the content at the broadcast time or utilising a recording device, such as a VHS recorder, to record content for later viewing. The only commercial video on demand system at the priority date were used in hotels where the viewer would order the content and it would be streamed to the viewer’s television in their hotel room via a dedicated cable from a central library.
The applicant added that while the internet was available and used in some applications for streaming and download, it had not been used to deliver content in the nature of broadcast content and there was a perception that users would not want to watch television on a computer and downloading an audio/visual file of typical broadcast content via the internet, that was suitable for relatively clear viewing, was lengthy. The applicant suggested that there was no perceived problem at the priority date of the opposed application which was required to be solved.
I cannot agree with the opponent’s description of the problem to be solved because it appears to have been formulated with the benefit of hindsight. I am disposed towards the applicant’s suggestion that there was no particular problem to be solved at the priority date of the claimed invention. From a fair reading of the specification it appears to me that the invention provides technological means of accessing content broadcast to a plurality of users on a scheduled basis.
The person skilled in the art

Mr Cohen, the opponent’s witness, stated that the skilled addressee would be someone who would be responsible for the design, delivery and operation of commercial media content delivery systems, such as broadcast streaming services, entertainment media downloading services and advertising media delivery services. Mr Cohen further suggested that this person would be a network engineer, systems engineer, operations manager and vendor specialist (such as within Microsoft supporting Windows media DRM).
On the other hand, Mr Lavender, the applicant’s witness, put the view that the skilled addressee would be a commercial broadcast company software engineer with knowledge of cable-based video on demand.
Considering that the claimed invention provides users access to audio/visual content broadcast to a plurality of user on a scheduled basis, I am inclined to agree with Mr Lavender that the skilled addressee would be a commercial broadcast company software engineer.
The Common General Knowledge in the Art
The opponent stated that the skilled non-inventive worker was very familiar with a mechanism to select a file to be downloaded, to download the selected file and to access the file before the priority date of the opposed application. The opponent further stated that the skilled addressee would have been aware of the functionality provided by DRM to restrict access to files, especially those working in the field of on-line media delivery, such as music and video selling and rental services and broadcaster streaming, and would have, as a matter of routine, used DRM to restrict access to files when the need arose.
The applicant did not dispute that mechanism such as FTP and HTTP were known with respect to selection, downloading and access to electronic files. However, they submitted that there was no evidence that using such protocols in relation to broadcast content was common general knowledge before the priority date of the claimed invention. Mr Lavender stated that media downloading services existed at the priority date of the claimed invention and that he used DRM to deliver music and video over the internet. He also stated that “can’t play before” restriction in DRM was used as a “belt and brace” mechanism by the right owners to restrict access to material which might have leaked prior to its official release date.
Thus based on the evidence before me, I am of the view that the following were common general knowledge in respect of downloading and accessing of electronic files over the internet in Australia before the priority date of the claims of the opposed application:

1.Selection and downloading of electronic files over the internet
2.Use of DRM including “can’t play before” restriction by the right owners to deliver music and video over the internet
3.Access to the electronic files including play back or display of the content after downloading

Inventive step in light of the Common General Knowledge

Presenting claim 1 in “European two-part form”, the opponent argued that over and above what was common general knowledge at the priority date (or in the alternative, if it is not accepted that DRM was common general knowledge at the priority date, the common general knowledge as it existed before the priority date with the information contained in any one of Exhibits KC-4 to KC-7), the substance of the invention as defined in claim 1 merely sets the time prior to which the content may be ordered and downloaded, and the time dependent upon which the content may be accessed, to be equal to the scheduled broadcast time of the content. They argued that selecting the predefined time as defined in the rewritten form of the claim to coincide with the scheduled broadcast time for the same content does not involve an inventive step and, therefore, claim 1 lacks an inventive step.

The opponent also stated that the elements of the system as defined in claim 1 of the opposed application have to be suitable for the specified functionality because the word “for” has been used to limit these elements as defined in the claim.
Disagreeing with the opponent, the applicant submitted that the invention is specific to audio/visual content broadcast on a scheduled basis, and the scheduled broadcast time is not an arbitrary selection as it provides a direct link to when the programme is broadcast which defines a time window of availability which is continuously shifting in time in direct relation to the actual broadcast schedule. By making content available for ordering, download and access relative to the scheduled broadcast time of each piece of content within the system, a “rolling” dynamic menu of content is created which is fundamental to the system.
The applicant further submitted that while the building blocks for achieving a system as described in the claim may have been available, the opponent has failed to show that the skilled addressee would have been directly led to combine the individual elements of the claimed system and has not even established that the skilled addressee would conceive such a system, which allows users to access broadcast content by way of download.
Taking the matter further the applicant argued that the closest prior art in this case is a broadcast system in which users can only access content at the appointed scheduled broadcast time or alternatively video-on-demand may be seen as an appropriate starting point. They argued that there were in fact many reasons why the skilled addressee would have preferred a streaming system, rather than a downloading system. If content were to be downloaded, the only feasible way of receiving it was via a computer while the benefit of watching/listening to broadcast content on computer was alien to the skilled addressee before the priority date of the claimed invention. Furthermore, while means to download files via internet were available, the time required to download a broadcast content was lengthy, in the region of several hours.
I note that the Exhibits KC-4 to KC-7 relate to licensing of electronic content including media files for future events. As I have already concluded that the use of DRM including “can’t play before” restriction to deliver music and video over the internet was common general knowledge in the art before the priority date of the claimed invention, the question whether the skilled addressee could reasonably be expected to have ascertained, understood and regarded the above documents as relevant, and whether the claimed invention is inventive in light of one or more of these documents is moot.
Therefore, I will only consider whether the claimed invention is inventive in light of common general knowledge as it existed before the priority date.
I cannot agree with the opponent’s analysis of claim 1 as it is based on their version of what is known and what is new cast in a European two part form. It is not settled that the opponent’s version of the claim is indeed correct.
Considering the claim as a whole, it clear to me that the elements of the claim namely the ordering means, the downloading means and the access means have to be only suitable for the specified functionality. Additionally, the access means is defined as adapted to enable access to the downloaded content in dependence on a scheduled broadcast of said content. Although means for selecting, downloading and accessing media files along with the use of DRM including ‘can’t play before” restriction to play media files over the internet were common general knowledge in the art and technically their inclusion in a system such as defined in claim 1 would have presented little challenge to the skilled addressee, there is no evidence before me suggesting that the skilled addressee would have been directly led to the concept of providing individual users access to audio/visual content broadcast to a plurality of users on a scheduled basis by way of download through internet and limit access to said content in dependence on a broadcast time of said content when trying to provide technological means of accessing content broadcast to a plurality of users on a scheduled basis. Therefore claim 1 is inventive in light of common general knowledge in the art.
The subject matter of claims 10, 16 and 18 is similar to that of claim 1, and claims 2-7 and 11-15 are appended to claims 1 and 10 respectively. Therefore, these claims are also inventive.
Presenting claim 8 in “European two-part form”, the opponent applied a similar analysis to the claim as regarding claim 1. They submitted that the elements of the claim were common general knowledge before the priority date and setting the predefined time to be equal to the scheduled broadcast time when the content is also broadcast to users does not provide a technical contribution to the art, and therefore claim 8 does not involve an inventive step.
Once again I cannot see any merit in the opponent’s arguments as there is no motivation evident in the material before me that would lead the skilled addressee, as a matter of routine, to produce the claimed invention having the features defined in the claim. Therefore I consider that claim 8 is also inventive in light of common general knowledge in the art. The subject matter of claims 9 and 17 is similar to claim 8, and therefore these claims are also inventive.
Overall I find that claims 1 to 18 are inventive and therefore the opposition fails on this ground.
Manner of Manufacture
Law Relating to Manner of Manufacture
Section 18 of the Patent Act 1990 provides that:

(1) Subject to subsection (2), an invention is a patentable invention for the purpose of a standard patent if the invention, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.

The High Court in National Research Development Corp (NRDC) v Commissioner of Patents [1959] 102 CLR 252, has provided a definitive statement of the law in this regard. At page 275, it was stated that "a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art …- that its value to the country is in the field of economic endeavour".
The decision of the High Court has since been applied in numerous cases including computer related inventions. For example, the inventions in International Business Machines Corporation v Commissioner of Patents [ 1991] FCA 625 (method and apparatus for producing curves on a computer graphics display) and CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 (apparatus for assembling text in Chinese language characters) were found to be patentable. Also in Welcome Real-Time SA v Catuity Inc [2001] FCA 445, a method involving smart cards storing traders' loyalty programs, and monitoring customer entitlements through a behaviour file in the cards relating to the behaviour (for example, spending history) of card holders towards the traders was found to be patentable.
However, in Grant v Commissioner of Patents [2006] FCAFC 120, the Court found that a method of protecting an asset including the steps of establishing a trust, making a gift of a sum of money to the trust, making a loan of that money from the trust and securing the loan was not a manner of manufacture. While observing that the fact that a method may be called a business method does not prevent it being properly the subject of letters patent, the Court indicated that for an invention to be a manner of manufacture, it must give rise to an artificially created state of affairs in the sense of a concrete, tangible, physical or observable effect.
Recently, in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, the Full Federal Court considered a computer implemented method for generating a financial index and made the following observation at [106]:
“The determination whether the claimed invention is truly “an artificially created state of affairs” in satisfaction of NRDC is made not by some mechanistic application of the criterion of artificiality or physical effect, but by an understanding of the claimed invention itself. The invention is to be understood as a matter of substance and not merely as a matter of form.”
The need to consider the substance of the claimed invention was reiterated by the High Court in D’Arcy v Myriad Genetics Inc [2015] HCA 35, where it was observed at [94]:
“Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids, embodies a product created by human action, that is not sufficient to support its characterization as a manner of manufacture. The substance of the invention as claimed and the considerations flowing from its substance militate against that characterization.”
It is clear from the above decisions that for a claimed invention to define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990, it is important to go beyond the form of words used and consider the substance of the claimed invention in the context of the specification as a whole.
Most recently, the Full Federal Court considered a computer implemented method and system for automatic collection of evidence of skills and knowledge in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAC 177, and concluded that the claimed invention is to a scheme or a business method that is not properly the subject of letter patents. In the above case the Full Court made several important observations which are pertinent in the present matter. It was observed at [96]:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that.”
The Full Court further went on to observe at [96]:
“Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions.”
Manner of Manufacture Determination in the Current Case
The opponent submitted that determining the substance of the invention involves an analysis of the alleged inventive step compared to the prior art and that, regarding inventive step, the substance of the claimed invention is in setting the time prior to which the content may be ordered and downloaded, and the time dependent upon which the content may be accessed to be equal to the scheduled broadcast time of that content. They argued that the significance of the claimed invention lies in the selection of a specific predefined time which does not provide a technical contribution to the art and that there is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation and therefore the claims of the opposed application do not define a patentable invention within section 18(1)(a) of the Patents Act.
In response, the applicant submitted that the test proposed by the opponent would logically mean that an obvious invention is not a manner of manufacture (because there is no inventive step in an obviousness sense and so no matter which could be a manner of manufacture) and that this implication has not been suggested in any of the relevant case law. They stated that section 18(1)(a) of the Patents Act requires that an invention is a manner of manufacture which is clearly different from section 18(b)(ii), which requires that an invention involve an inventive step.
I note that the opponent is advancing the same reasoning as for the inventive step to argue that the claimed invention lacks a manner of manufacture. It is well established that manner of manufacture and inventive step are two distinct requirements of the Patents Act under sections 18(1)(a) and 18(b)(ii) respectively. By suggesting that, to determine patentable subject matter, the substance of the invention be determined via an analysis of the inventive step compared to the prior art, the opponent is essentially equating the requirements of manner of manufacture with that of the inventive step. I consider the opponent’s contention in this matter as misconceived and unsustainable.
The opponent, in their submissions filed on 15 January 2016, stated that the problem solved by the claimed invention is to pre-deliver content, but restrict when the content may be accessed and that the pre-delivery of content and restricting when the content can be accessed has a well-known and understood solution involving Digital Rights Management (DRM) as the DRM allows the access of the content to be restricted to after a predefined time. The opponent added that the selection of predefined time to be dependent on a scheduled broadcast time of the same content in a separate broadcast system is not solving a technical problem within the system in which the invention is implemented.
The opponent further submitted that the claimed invention uses well-known and understood functions of a known prior art computer system in which the download of content is ordered, the content is downloaded and the content is accessed using DRM and as a matter of substance, there is no suggestion of the utilisation of an unusual technical effect. They put the view that there is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors and no ingenuity in the way in which the known computer system is utilised.
The applicant, in their submissions of 15 January 2016, stated that RPL (supra) sets out clear directions to apply a two-stage test when assessing manner of manufacture. The first stage of this test is to determine whether the substance of an invention is a “technological innovation” or a “business innovation” (for example a scheme). The former satisfies manner of manufacture requirements without the need for further consideration while the second stage of the test, which is relevant only where the first stage reveals a “business innovation”, is to consider whether there is a threshold degree of inventiveness in the manner by which the business innovation is implemented by computer technology.
The applicant further submitted that when assessing the present invention, there is no need to move beyond the first stage of the RPL test as it is clear from the specification that there is a technological problem in the context of delivering scheduled broadcast content at a time dependent on the broadcast time and the claimed invention provides a technological solution to that problem. It was stated that part of the technical solution is the selection of downloading the content via the Internet and this selection is a significant part of the non-obvious technical solution to the problem of how to deliver broadcast content to a user in the manner claimed. The applicant argued this part of the solution alone cannot be classified as a “business innovation”. The applicant also asserted that even if the present invention was somehow deemed to be a “business innovation”, the technical implementation of this “business innovation” would still pass the test set out in RPL (supra).
Claim 1 relates to a system for providing individual users access to audio/visual content broadcast to a plurality of users on a scheduled basis. The system comprises means for ordering and downloading the broadcast content prior to the scheduled broadcast time of the said content. The broadcast content is in the form of downloadable files. The system also includes access means to enable access to the download content in dependence on a scheduled broadcast time of the said content.
In a preferred embodiment, the content provider prepares the broadcast content for distribution to users by an encoding process. A known DRM system encrypts the content by applying appropriate rules so that the content is unviewable unless a unique, non-transferable license is issued from the content provider to the user. The rules may include start and expiry dates, number of plays, portable device support etc. The encrypted files and the associated license keys are stored on a media distribution server and a DRM license server respectively. The encrypted files and the respective keys are accessible to users via Internet.
A user is able to view the downloadable broadcast content via web pages and may decide to order or book content to be downloaded prior to the schedule broadcast time of said content using a personal computer. Once downloaded, the encrypted files are locally stored on the user’s computer. The access means comprises a media player which is implemented in software and is executable on a personal computer. The media player is used to obtain a license from the content provider and play the broadcast content in accordance with the relevant rules.
From reading the specification as a whole, it is apparent to me that the substance of the claimed invention lies in providing broadcast content to a plurality of users via download such that the users are unable to play the broadcast content prior to a scheduled broadcast time of said content. The substance clearly relates to a technological problem in the context of delivering the broadcast content to the users in a manner defined in the claim. A Digital Rights Management system, a personal computer and Internet provide the necessary technological solution to the problem. This is different to RPL (supra) wherein the court found that the claimed invention was to a scheme or a business method and did not solve a technical problem within or outside the computer. Here, their Honours also found that the “computer [was], in effect operating as an intermediary” which did not provide a requisite technical solution.
Therefore I conclude that the invention defined in claim 1 is for a manner of manufacture. The subject matter of claims 2-7, 10-16 and 18 is very similar to that of claim 1. Therefore, these claims also define a manner of manufacture.
Claim 8 relates to a user interface for providing access to the broadcast content to a plurality of user including means for listing content which is available for download, the content whose download has been ordered and the content which has been downloaded. The substance of the claimed invention is similar to claim 1. Consequently this claim also define a manner of manufacture. The subject matter of claims 9 and 17 is similar to claim 8, and therefore these claims also define a manner of manufacture.
I conclude that all of the claims are for a manner of manufacture within the meaning of section 18(1)(a) of the Patents Act 1990.
Clarity
The opponent raised several aspects of clarity in respect of the claims. Having considered the specification as a whole, I cannot see any merit in the opponent's arguments regarding any of the issues raised. Notwithstanding that Mr Cohen makes mention of some of these issues, I note that he had no major difficulty with the specification. All are matters which are easily resolved when the specification is read as a whole, as should be expected. I find that the claims are clear.
Conclusion
All of the claims are inventive in light of common general knowledge and are clear. The claims are considered to be a manner of manufacture. Subject to appeal, I direct that the application proceed to grant.
Costs

The award of costs is a discretionary matter. It is a general principle in matters such as these that costs follow the event. I see no reason to depart from this general principle and award costs against the opponent, FOXTEL Management Pty Ltd.

Dr S. K. Aggarwal
Delegate of the Commissioner of Patents