Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd

Case •

[2022] APO 69

•

30 September 2022

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2022] APO 69

Patent:2013101518

Title:Remote content download

Patentee:  The Advanced Technology Group Pty Ltd

Opponent:  Foxtel Management Pty Ltd

Delegate:  Dr V. Z. Kolev

Decision Date:  30 September 2022

Hearing Date:  7 April 2022, via video conference

Catchwords:  PATENTS – final determination – opposition under s 101M – whether the amendment resulted in overcoming the negative findings – clear enough and complete enough disclosure – support – novelty – innovative step – all negative findings overcome as a result of the amendment – the innovation patent not revoked – costs awarded against the opponent  

Representation:  Patent attorney for the opponent: J. Yap, with L. Hartland and G. Tucker, of Spruson & Ferguson

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent:2013101518

Title:Remote content download

Patentee:  The Advanced Technology Group Pty Ltd

Date of Decision:                   30 September 2022

DECISION

The amendment proposed on 15 May 2019 and allowed on 27 October 2021 has resulted in overcoming all negative findings made in Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26 with respect to the opposition under s 101M. I am not satisfied that there are valid grounds for revocation of the innovation patent as presently on file. I will not revoke the innovation patent.

I award costs in accordance with Schedule 8 against Foxtel Management Pty Ltd.

REASONS FOR DECISION

  1. Throughout this decision, unless explicitly stated otherwise, any reference to the Act, or to a specific section or subsection, refers to the Patents Act 1990, and any reference to the Regulations, or to a specific regulation or subregulation, refers to the Patents Regulations 1991. In addition, any reference to the Commissioner refers to the Commissioner of Patents as per the Act.

    BACKGROUND

  2. The matter relates to innovation patent 2013101518 (the Patent), presently expired, in the name of The Advanced Technology Group Pty Ltd (the Patentee).  The Patent was assigned to the Patentee by the original patentee, IceTV Pty Limited, with the assignment recorded on 9 June 2016.  The application for the Patent was filed on 21 November 2013 as a divisional of 2010100616 and claims the earliest priority date of 16 June 2009.  The Patent was certified on 7 August 2014.  An amendment was proposed on 19 September 2014, and subsequently allowed on 22 January 2015 and incorporated into the specification of the Patent (the Specification). 

  3. On 14 December 2015, a notice of opposition under s 101M was filed by Foxtel Management Pty Ltd (the Opponent) together with a statement of grounds and particulars and evidence in support.  Evidence in answer was not filed.  Following a hearing of the opposition, a decision was issued on 5 June 2017, namely Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26 (the Original Decision, also referred to by the Opponent as the First Decision).  In the Original Decision, the Opponent was successful on the grounds of s 40(2)(a), s 40(3), novelty, and innovative step.  The Patentee was allowed a period of two months from the date of the Original Decision to propose a suitable amendment.  I will refer to the claims as considered by the Delegate of the Commissioner in the Original Decision as the original claims.

  4. A series of proposed amendments to the claims followed.  The allowance of some of these amendments was formally opposed by the Opponent.  Finally, on 27 October 2021, as a result of Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2021] APO 36 (the Amendment Decision, also referred to by the Opponent as the Third Decision), the amendment to the claims, proposed on 15 May 2019, was allowed and incorporated into the Specification.  I will refer to the claims presently in the Specification as the amended claims.  

  5. On 10 November 2021, a Delegate of the Commissioner wrote to both parties:

    “The above matter is due for final determination. If you wish to be heard, please advise within fourteen (14) days of the date of this letter.

    Even if the parties do not wish to be heard, a delegate will consider whether the amendments to the specification overcome the issues identified in the earlier decision, and whether they introduce any new deficiencies.

    Please note that any hearing / final determination is not an opportunity to re-argue matters finally determined in the previous decision.” (original emphasis)

  6. In response, on 23 November 2021, the Opponent requested to be heard.  No response from the Patentee was received to the above mentioned correspondence or to any further correspondence from IP Australia in relation to the final determination.  The matter was set for an oral hearing following a specific request from the Opponent.  The hearing was conducted via video conference on 7 April 2022.

  7. In summary, the instant decision is with respect to the hearing requested by the Opponent in relation to the final determination of the opposition under s 101M that was initiated by the notice of opposition filed by the Opponent on 14 December 2015.

    EVIDENCE AND SUBMISSIONS

  8. As noted in the Original Decision in paragraph [18], “[t]he sole piece of evidence filed in the present opposition is Evidence in Support consisting of a declaration by Keith David Cohen (‘Cohen’) with exhibits KC-1 to KC-18” (original emphasis).  In the Original Decision, the Delegate considered and accepted Mr Cohen’s suitability to give evidence:

    “23. The opponent submits:

    ‘Keith David Cohen has a Bachelor in Engineering with expertise in Electronic Engineering. Mr Cohen is a consultant specialising in high-technology product development in the broadcasting, telecommunications, Internet services, and consumer electronic fields. Mr Cohen also has more than 20 years of experience in this field.’

    24. The Patentee appears to agree with this identification. I have reviewed Mr Cohen’s background and I am also satisfied with it.” (original emphasis, reference(s) omitted)

  9. On 24 March 2022, with respect to the present final determination hearing, the Opponent filed a document titled “Opponent’s Summary of Submissions” (the Opponent’s Summary or OS).  The Opponent’s Summary includes an annexure, referred to as Annex A.  The Opponent also provided oral submissions at the hearing.  As I already mentioned, the Patentee did not request to be heard.

    APPLICABLE LAW AND SCOPE

10.  The examination of, and the opposition with respect to, the Patent are governed by the Act and Regulations as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which commenced on 15 April 2013. The application for the Patent was filed on 21 November 2013, i.e., after the above commencement date.

11.  This was also acknowledged in paragraph [1] of the Original Decision.

The scope of the instant decision

12.  As I have already noted, the instant decision is with respect to the final determination of the opposition.  The Opponent states:

“16. Merck Sharpe & Dohme (Australia) Pty Ltd v Genentech Inc [2016] FCA 324 (Merck) in paragraph 61 cited R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd [1981] HCA 25 (Mole). Merck and Mole confirmed that a decision made in an opposition cannot be re-heard or challenged, except on appeal to the Federal Court.

17. Paragraph 61 of Merck emphasized that Mole stated ‘his decision was nonetheless a final decision on the original unamended application – there was nothing provisional or tentative about the finding on the grounds of objection.’

18. The Patentee confirmed the Merck and Mole decisions in the submissions dated 30 June 2020 in relation to a hearing of 7 July 2020 to dismiss the third opposition.

19. In view of Merck and Mole, the Opponent submits that any features of the original claims that were decided by the First Decision cannot be re-heard or changed in the Final Determination.” (OS, original emphasis)

13.  I agree.  Indeed, the scope of this decision is limited to whether the amendment to the Specification has overcome the negative findings in the Original Decision and whether that amendment has introduced new deficiencies.

THE SPECIFICATION

14.  The amendment made to the Specification following the Original Decision concerns only the claims.  The description and drawings of the Specification are unchanged and as discussed in the Original Decision (e.g., paragraphs [7]-[13]).  Given the limited scope of the instant decision and the somewhat descriptive, self-explanatory language of the claims, I do not consider it necessary to repeat the Delegate’s discussions from the Original Decision with respect to the body of the Specification.  

The original claims

15.  The original claims, that were considered in the Original Decision, are as follows (some formatting done to assist readability):

“1. A method of

a server facilitating a digital object download in communication with a plurality of devices over a network,

the plurality of devices configured to perform a requestor role and/or a recipient role,

the method comprising:

at least one of the devices in a requestor role sending at least one digital object to the server,

the digital object comprising one or both of:

(a) an instruction to record a TV show, movie, series or program, and

(b) an electronic program guide;

the server determining respective addresses of at least one device in a recipient role from addresses encapsulated in the at least one digital object; and

storing the at least one digital object on the server

until the at least one device in a recipient role connects to the server at predetermined intervals to download the at least one digital object.

2. The method according to claim 1, wherein the plurality of devices in a recipient role and/or requestor role comprises one or more of:

(a) an IP enabled (networked) digital television;

(b) a set-top box, media centre, digital video recorder, or personal video recorder associated with a television;

(c) a general purpose computer;

(d) a portable media device; and/or

(e) a mobile device.

3. The method of claim 1 or claim 2, wherein the at least one digital object further comprises one or more of:

(c) a listing of most popular TV shows, movies, series or programs;

(d) a user-specific request to mark a particular TV show, movie, series or program as a favourite;

(e) a user-specific listing of favourite TV shows, movies, series or programs;

(f) an instruction to download a digital image, digital audio file, digital show, movie, series episode or program from a network location; and/or

(g) a request to list receiving devices for a specific user.

4. The method of claim 3 further comprising at least one device in a recipient role downloading at least one digital object from the server.

5. The method of claim 4 further comprising storing the at least one digital object on the at least one device in a recipient role following download by the at least one device in a recipient role.”

The amended claims

16.  The amended claims, that I need to consider in this decision, are reproduced below.  In addition to the usual formatting done to assist readability, I have also separated the features of the independent claims and added reference numbers (in bold) as per the Opponent’s Summary.

“[1.1]   1. A computing system for

facilitating a digital object download over a network,

comprising:

___________________________________________________________________________________________________________

[1.2]    at least one software application

executable on a first mobile electronic device;

a server; and

___________________________________________________________________________________________________________

[1.3]    at least one second electronic device

capable of recording video in a digital format;

___________________________________________________________________________________________________________

[1.4]    wherein,

the at least one software application is arranged to send at least one digital object to the server via the network,

___________________________________________________________________________________________________________

[1.5]    the digital object encapsulating

at least one instruction to record at least one of a television show, movie, series or program,

device address information identifying the at least one second device, and

content address information identifying the location of the at least one of the television show, movie, series or program;

___________________________________________________________________________________________________________

[1.6]    wherein

the server determines from the at least one digital object,  

the device address information,

content address information, and

the at least one instruction, and

storing

the device address information,

the at least one instruction and

content address information

on the server

until the at least one second device connects to the server at predetermined intervals to download the at least one digital object.

___________________________________________________________________________________________________________

[2.1]    2. A method for

a computer system facilitating a digital object download in communication with a plurality of devices over a network,

comprising the steps of

___________________________________________________________________________________________________________

[2.2]    providing

at least one software application executable on a first mobile electronic device;

a server; and

at least one second electronic device capable of recording video in a digital format;

___________________________________________________________________________________________________________

[2.3]    whereby,

the at least one software application is arranged to send at least one digital object to the server via the network,

___________________________________________________________________________________________________________

[2.4]    the digital object encapsulating

at least one instruction to record at least one of a television show, movie, series or program,

device address information identifying the at least one second device, and

content address information identifying the location of the at least one of the television show, movie, series or program,

___________________________________________________________________________________________________________

[2.5]    wherein

the server determines from the at least one digital object,

the device address information,

content address information, and

the at least one instruction, and

stores

the device address information,

the at least one instruction and

content address information

on the server

until the at least one second device connects to the server at predetermined intervals to download the at least one digital object.

___________________________________________________________________________________________________________

3. The method according to claim 2 whereby, the at least one second device comprises at least one of:

a) an IP enabled networked digital television;

b) a set top box, media centre, digital video recorder, or personal video recorder associated with a television;

c) a general purpose computer;

d) a portable media device; and

e) a second mobile device.

4. The method according to claim 2 whereby, the instruction identifies at least one of:

a) a listing of most popular television shows, movies, series or programs;

b) a user-specific request to mark a particular television show, movie, series or program as favourite;

c) a user-specific listing of favourite television shows, movies, series or programs;

d) an instruction to download a digital image digital audio file, digital show, movie, series episode or program from a network location; and/or

e) a request to list devices capable of recording video in a digital format for a specific user.

5. The method according to claim 4 further comprising the step of the at least one second device

downloading the at least one digital object from the server, and

storing the at least one digital object on the at least one second device, and

optionally recording the at least one of a television show, movie, series or program utilising the content address information.”

HAS THE amendment OVERCOME THE NEGATIVE Findings?

17.  The Original Decision found that “[t]he opposition is successful on the ground of section 40(2)(a), section 40(3), Novelty and Innovative Step”.  More specifically, the negative findings in the Original Decision were as follows (paragraphs [60], [67], [71], [80], [82], [85], [102]-103], [111]-[112], [123]-[124], [128], and [136]-[138]):

(a)lack of clear enough and complete enough disclosure – s 40(2)(a);

(b)claims not supported by matter disclosed in the specification – s 40(3);

(c)claims not novel – s 7(1) – in light of prior art information made publicly available:

(1)in a single document referred to as Foti; and

(2)in a single document referred to as Tivo (or as the TiVo Guide);

(d)claims lack an innovative step – s 7(4) and s 7(5) – in light of prior art information made publicly available:

(1)in the single document referred to as Foti;

(2)in the single document referred to as Tivo; and

(3)through doing a single act of prior use of the IceTV’s Personal Interactive Media Planner, referred to as PIMP (or as the IceTV PIMP).

18.  The Opponent’s Summary contends that:

“24. The TiVo Guide was a prior art document, which the First Decision asserted to anticipate all the features of the original claims.

25. The IceTV PIMP was a prior use, which the First Decision asserted to render the original claims to lack an innovative step.

26. In view of the First Decision, the Third Decision, and Annex A, the Opponent submits that the amended claims are anticipated by the TiVo Guide.

27. The Opponent also submits that the amended claims lack an innovative step in view of the IceTV PIMP, in view of the First Decision, the Third Decision, and Annex A.”

19.  The Opponent does not assert that the negative findings listed at (a), (b), (c)(1), and (d)(1) are applicable to the amended claims, and this was also confirmed at the oral hearing.  Nonetheless, in this decision, I will discuss whether the amendment has resulted in overcoming all negative findings, including those not pressed by the Opponent.  

The negative findings not pressed by the Opponent

(a) lack of clear enough and complete enough disclosure

20.  In the Original Decision, the basis for this negative finding was summarised as follows:

“60. Based on the evidence available to me, I find that the specification does not provides [sic] an enabling disclosure of sending EPG [i.e., electronic program guide] data from a device to a server that is clear enough and complete enough for the invention to be performed by a person skilled in the art.”

No other deficiencies under s 40(2)(a) were identified. 

21.  None of the amended claims defines “sending EPG data from a device to a server”, hence the amendment has resulted in overcoming the negative finding with respect to this ground of invalidity.

(b) claims not supported by matter disclosed in the specification

22.  The basis for this finding in the Original Decision was essentially the same as above:

“82. I find that the feature of sending an EPG from one device to another via a server is not supported by the technical contribution to the art.

…

85. Consequently, I find that the scope of claim 1 is not supported by the technical contribution to the art. This conclusion applies to all of the claims.”

No other support deficiencies under s 40(3) were identified. 

23.  None of the amended claims defines “sending an EPG from one device to another via a server”, hence the amendment has resulted in overcoming the negative finding with respect to this ground of invalidity.

(c)(1) claims not novel in light of Foti

24.  The Original Decision summarises the disclosure in Foti as follows:

“90. Foti describes a system for pushing personalised electronic program guide data to a set top box. In a preferred embodiment, the system includes a set top box, an internet protocol television (‘IPTV’) server and an electronic program guide server. The IPTV server requests generic electronic program guide content from the electronic program guide server. The IPTV server also contains a subscriber profile which is specific to a subscriber of the system. Personalised electronic program guide data is calculated or defined by the IPTV server based on the generic electronic program guide content, and the subscriber profile. The subscriber profile may be inputted or modified directly into the IPTV server via an operator interface, URLs pointing to the IPTV server or entered from the set top box.

91. In order to use the system, a user would first register a set top box with the IPTV server by sending a message such as a Session Initiation Protocol (‘SIP’). Once received, the registered status of the user’s set top box is stored on the IPTV server. The IPTV server will also fetch new generic electronic program guide content in response to a periodic time out signal generated by a timer.

92. The IPTV server will then send the personalised electronic program guide information either autonomously such as when a new generic electronic program guide version is received, or in response to a request from the set top box.” (original emphasis, reference(s) omitted)

25.  In the Original Decision, the negative finding with respect to novelty in light of Foti was based on an interpretation of the original claims, according to which the device in a requestor role (that sends the digital object to the server) and the device in a recipient role (that connects to the server at predetermined intervals to download the digital object) can be the same device.  The set top box in Foti was considered the relevant disclosure of this device.  Additionally, the subscriber profile in Foti, which contains the user’s personalisation, was considered an electronic program guide sent as the digital object.  The Delegate noted:

“99. As I stated above, there is nothing which excludes the device in a requestor role and the device in a recipient role from being the same device. Further, the definition of EPG data is per se broader than user-customised EPG data.

100. Using this interpretation, the features of claim 1 are anticipated by Foti as follows:

·     The at least one device in a requestor role is the set top box

·     The Digital Object is the subscriber profile which contains a user’s personalisation

·     The at least one device in a recipient role is same set top box

·     The server is the IPTV server.

…

102. Consequently, I find that claim 1 is anticipated by Foti, and is not novel

103. Regarding the dependent claims, Mr Cohen has provided a table and pointed out where each feature of claims 2 – 5 is disclosed in Foti. I have reviewed this table and conclude that claims 2 – 5 are also anticipated by Foti, and are not novel.” (original emphasis, reference(s) omitted)

26.  Following the amendment, the expressions “in a requestor role” and “in a recipient role” are no longer used to define and differentiate the devices.  Instead, this is done by using the expressions “first mobile electronic device” and “second electronic device capable of recording video in a digital format”.  These expressions clearly indicate that the device that sends the digital object to the server (via the software application which is now explicitly defined) and the device that connects to the server at predetermined intervals to download the digital object are different devices.  It follows that the claim interpretation supporting the finding of lack of novelty in light of Foti is not applicable to the amended claims, hence the amendment has resulted in overcoming this negative finding.  While there are other features of the amended claims that are not disclosed in Foti (see the discussion of innovative step below), I do not need to consider these features here as any such consideration will be superfluous in view of my conclusion above.

(d)(1) claims lack an innovative step in light of Foti

27.  In the Original Decision, this negative finding was based entirely on the lack of novelty in light of Foti:

“128. Claims 1 – 5 were found to be not novel over Foti and TiVo. As there are no differences between these prior art and the claimed invention, it follows that claims 1 – 5 are also not innovative over Foti and TiVo.” (underlining added)

28.  I have already concluded that the finding of lack of novelty in light of Foti is not applicable to the amended claims.  In addition, the disclosure in Foti appears to be limited to electronic program guides and, in particular, personalised electronic program guides.  As I already mentioned, the amended claims no longer define an electronic program guide as part of the digital object.  Instead, an instruction to record a television show, movie, series, or program being communicated between devices is a clear limitation of the amended claims, and I am unable to find any disclosure of such communication in Foti.  I also note that, as claimed, the first device is a mobile device and none of the disclosed set top box, IPTV server, and electronic program guide server could reasonably be described as mobile.  Based on all this, I do not consider that the invention clamed in the amended claims only varies from what is disclosed in Foti in ways that make no substantial contribution to the working of the invention.  Hence, I am not satisfied that the amended claims lack an innovative step in light of Foti.  It follows that the amendment has resulted in overcoming this negative finding.

The negative findings pressed by the Opponent

The Opponent’s submissions

29.  As I have already mentioned, the Opponent pressed the negative findings in light of Tivo and PIMP, and stated that the amendment has not overcome these negative findings in the Original Decision (OS at [28]).  Regarding the features of the claims, the Opponent submits:

“19. In view of Merck and Mole, the Opponent submits that any features of the original claims that were decided by the First Decision cannot be re-heard or changed in the Final Determination.

20. Further, the Opponent submits that any amended features of the amended claims that are considered in the Third Decision to be substantially the same or fall within the scope of the features of the original claims must follow the determination of the First Decision.” (OS, underlining added)

30.  While I completely agree with the Opponent with respect to the first of the above statements, I am struggling to understand the reasoning behind the second.  This is because the “amended features of the amended claims” may “fall within the scope of the features of the original claims” and, for example, have additional integers.  However, any additional integers that were not part of the original claims would not have been discussed in the Original Decision, hence any such amended features cannot “follow the determination of” that decision. 

31.  Somewhat confusing reasoning could also be found in Annex A to the Opponent’s Summary.  For example, the argument presented on pages 1-2 with respect to features 1.1 to 1.4 (see amended claim 1 above) is reproduced below in its entirety:

“According to the Third Decision, in paragraphs 50 to 52, features 1.1 to 1.4 fall within the scope of the following features of original claim 1:

A method of a server facilitating a digital object download in communication with a plurality of devices over a network, the plurality of devices configured to perform a requestor role and/or a recipient role, the method comprising:

at least one of the devices in a requestor role sending at least one digital object to the server,

Paragraphs 50 to 52 of the Third Decision discuss that a device in a requestor role is equivalent to a device that sends the digital object to the server and therefore is equivalent to the first device of amended claim 1.

Similarly, Paragraphs 50 to 52 of the Third Decision discuss that a device in a recipient role is equivalent to a device that will connect to the server to download the digital object. Accordingly, a device in a recipient role is equivalent to the second device of amended claim 1.

Paragraphs 104 to 112 of the First Decision consider these features to be anticipated by TiVo HD Series 3 Digital Media Recorder (TiVo Guide). The TiVo Guide is part of the Cohen Declaration filed on 14 December 2015 in relation to the First Opposition [i.e., Cohen].

Paragraphs 113 to 119 of the First Decision find (and as conceded by the Patentee) that these features were also used by the IceTV PIMP. The IceTV PIMP is also part of the Cohen Declaration referred to above.

The Opponent notes that the only feature that the Patentee asserted not to be used by the IceTV PIMP is the feature of ‘until the at least one device in a recipient role connects to the server at predetermined intervals to download the at least one digital object.’ The equivalent feature is in feature 1.7 of amended claim 1. The Opponent notes that the First Decision in paragraphs 114 and 115 agreed that the IceTV PIMP was used before the priority date of the opposed patent.

Accordingly, features 1.1 to 1.4 of amended claim 1 are equivalent to the above noted features of original claim 1 in accordance with the Third Decision.

Consequently, features 1.1 to 1.4 are anticipated by both the TiVo Guide and IceTV PIMP in accordance with the First Decision.” (bold in the original, underlining and italic added)

At the hearing, the Opponent clarified that “feature 1.7” in the above quotation should, in fact, read “feature 1.6”.  Indeed, I note that feature 1.7 does not exist. 

32.  As best understood, the above analysis appears to be presented along the following line of reasoning:

·     according to the Amendment Decision (in paragraphs [50] to [52]), features 1.1 to 1.4 are within the scope of a certain set of features of original claim 1 (for brevity, I will refer to this as feature set A);

·     the Amendment Decision found (in paragraphs [50] to [52]) that two integers in original claim 1 are equivalent to two respective integers within features 1.1 to 1.4;  

·     the Original Decision found that feature set A is disclosed in a prior art document and through an act of a prior use;

·     therefore features 1.1 to 1.4 are equivalent to feature set A, hence features 1.1 to 1.4 are also disclosed in the prior art document and through the act of a prior use.  

33.  I must note that the finding that “features 1.1 to 1.4 fall within the scope of” feature set A does not preclude features 1.1 to 1.4 from having additional integers in comparison to feature set A (indeed, as a mere example, the first device is a mobile electronic device).  Such additional integers may well render features 1.1 to 1.4 not disclosed, however this does not appear to be part of the Opponent’s analysis. 

34.  At the oral hearing, I tried to clarify the submissions in the Opponent’s Summary by asking the Opponent what they mean when stating that a certain feature (or a set of features) is equivalent to another feature (or set of features).  As best understood, the Opponent’s response was that it means that the features have the same scope, however this does not appear consistent, for example, with the next argument presented in Annex A to OS, on pages 2-3.  In this argument, a set of integers in amended claim 1, referred to as feature 1.5 (or as “the digital object and its content”), is said to fall within the scope of, and accordingly to be equivalent to, a set of integers in original claim 1, despite the clear admission that there exists an integer (emphasised in bold below) that is included in feature 1.5 and is not included in original claim 1 (meaning that the scope cannot be the same):

“The Third Decision in paragraph 53 considers the digital object and its content to fall within the scope of the digital object of original claim 1. Accordingly, feature 1.5 is equivalent to the following features of original claim 1:

the digital object comprising one or both of: an instruction to record a TV show, movie, series or program, and an electronic program guide;

… respective addresses of at least one device in a recipient role from addresses encapsulated in the at least one digital object;

…

The feature of ‘content address information identifying the location of the at least one of the television show, movie, series or program,’ as recited in feature 1.5 of amended claim 1, is not recited in original claim 1.” (underlining, bold, and italic added)

35.  In addition, it is perhaps worth noting that the Amendment Decision uses the word “equivalent” in paragraph [52] as a simple reference to the similar (or equivalent) roles performed by the first device and the device in a requestor role, without ever stating that the respective features have the same scope.  Importantly, regardless of the exact meaning of the word “equivalent” as used by the Opponent, it is clear that the newly added (emphasised in bold above) integer in feature 1.5 is the only new integer or feature of the independent claims that is discussed in the Opponent’s Summary with some level of detail.  The Opponent asserts that this newly added integer or feature is disclosed both in Tivo and through the prior use of PIMP:

“22. As shown in Annex A, the only feature that is substantially different to the original claims is the addition of ‘content address information identifying the location of the at least one of the television show, movie, series or program’ being encapsulated in the digital object.

23. Annex A discusses that the feature of ‘content address information identifying the location of the at least one of the television show, movie, series or program’ is anticipated by both the TiVo Guide and the IceTV PIMP.” (underlining added)

36.  While I am unsure about the exact meaning of “substantially different”, at the oral hearing, I directed the Opponent’s attention to the fact that there are other different features introduced by the amendment, and noted that it would be helpful if the Opponent addresses all of them in their oral submissions, especially in light of the ground of novelty pressed by the Opponent.  I also provided some examples for those features, including the above mentioned fact that the first device (formerly the device in the requestor role) is now defined as a mobile electronic device.  To the extent necessary for my analysis, I will discuss the Opponent’s submissions on the disclosure of the features, newly introduced through the amendment, later in this decision as part of my considerations of the specific issues. 

37.  I will initially focus my attention to amended claim 1 and will consider whether the amendment has resulted in overcoming the negative findings pressed by the Opponent with respect to this claim.

(c)(2) claims not novel in light of Tivo

38.  As a preliminary observation, it is worth noting that Tivo is clearly intended to be used as a guide and reference by the end user of the system.  As such, Tivo appears to be providing very little information about the aspects of system operation that are not expected to be of interest to the end user, such as the inner workings of the system. 

39.  In the Original Decision, the Delegate explained that:

“104. Tivo is an operation manual for a TiVo HD series 3 Digital Media Recorder. The manual instructs a user on how to connect to, and schedule recordings on a DVR [i.e., digital video recorder] at home from any computer with internet access. A TiVo user account is required in order the access the system. The instructions for using online scheduling is [sic] listed as follows:

1. Go to and sign in

2. Go to the Welcome page of TiVo Central Online, select the name of the DVR for which you want to schedule recordings.

3. Use the simple or advanced search of your TV listings, or browse by channel.

4. From the list of search results, click the name of a program and choose either Record This Episode or Get a Season Pass.

5. Choose whether to receive a confirmation e-mail sent to the e-mail address you provide.

105. The Opponent submits that the features of claim 1 are anticipated by TiVo as follows:

·The at least one device in a requestor role is the computer with internet access.

·The Digital Object is the instruction to record.

·The at least one device in a recipient role is the selected TiVo DVR

·The server is the TiVo Central Online website.

106. The DVR also makes periodic connections to the TiVo service:

‘The DVR uses the phone line or the Internet to make periodic connections to the TiVo service. Each time it connects, your DVR receives updated program information (channels and show times), online scheduling requests, available software updates, and other information from the TiVo service.’ ” (original emphasis, reference(s) omitted)

40.  It is clear from the Original Decision that the parts of Tivo where the relevant disclosure is made are related to the online scheduling functionality.  This functionality is briefly mentioned on page 12, further explained on page 18, and some related troubleshooting information is provided on page 107.  These relevant parts of Tivo are reproduced below in that order and separated by lines (highlighting in yellow added).

41.  As I already mentioned, the Opponent focusses (exclusively so in OS) on the fact that feature 1.5 (i.e., the content of the digital object) now includes the integer of “content address information identifying the location of the at least one of the television show, movie, series or program”.  Indeed, feature 1.5 as a whole will be disclosed in Tivo, if the newly added feature of the digital object encapsulating the integer of “content address information …” is disclosed in Tivo, since the Original Decision has already found that Tivo discloses the other integers contained in the digital object.

42.  The Opponent argues that:

“… channel information identifying the channel on which to record a show must also be included as part of the recording instructions. This is because the channel information is required by the TiVo DVR in order to tune to the particular channel for recording a broadcast show. The required channel information is the same as the claimed ‘content address information’ as the channel information identifies a frequency (i.e., the location) of the television show, movie, series or program to be recorded.” (OS, page 3 of Annex A, underlining added) 

43.  The Opponent refers for support to the discussion of Tivo in Cohen in paragraphs [50]-[51] and submits that “[a]s stated in the Cohen Declaration, channel parameters (i.e., content address information) is part of the metadata of the record instructions” (OS, page 4 of Annex A).

44.  The Opponent also relies on some illustrations in Tivo to further support their proposition that “the TiVo DVR requires the channel on which to record a show” (OS, page 6 of Annex A): 

“Pages 24 to 27 of the TiVo Guide then show various screenshots of the user interface of the TiVo DVR where the channel of a show is shown. Such clearly indicates that the channel is inherently tied to a show and therefore the channel information is required to record the show.

The Opponent therefore submits that feature of ‘content address information identifying the location of the at least one of the television show, movie, series or program’ being encapsulated in the digital object was prior disclosed in the TiVo Guide.” (OS, page 6 of Annex A, underlining added)

45.  I must note that even if:

·     on “the user interface of the TiVo DVR”, the channel is shown next to the program as asserted by the Opponent (although not clearly ascertainable due to the quality of reproduction of the document in evidence); and

·     this visual association between the channel and the program also exists on the online scheduling user interface (as “the user interface of the TiVo DVR” is not directly relevant for the potential disclosure); and

·     the DVR indeed requires the channel information in order to schedule the recording;

this still does not necessarily establish that the channel information, per se, must be sent from the computer with Internet access to the server, and that it must be sent together with the request to record the program, as I will explain below.

46.  From a functional point of view, it would appear that, when performing online scheduling, information identifying the selected TV program must be somehow sent to the server, however Tivo does not provide any disclosure on the exact nature or type of this information.  For example, what is sent may simply be a unique TV program identifier, which the server then may translate into a set of parameters (including the channel) as needed by the DVR to record the selected program.  It is also possible that this unique identifier is what the DVR is receiving from the server and then using to extract the necessary set of parameters from internally stored information, e.g., “using the metadata previously synchronized between the network and the DVR” (see Cohen at [51] quoted in full later in this decision).  I do not consider that a unique TV program identifier could reasonably be regarded as a disclosure of “content address information identifying the location of the at least one of the television show, movie, series or program” (underlining added). 

47.  In addition, as it could be expected given the nature of the document, Tivo is completely silent with respect to exactly how and when the information identifying the selected TV program is sent from the computer with Internet access to the server, as this is of no real concern to the end user.  While it may indeed be possible that all necessary information is sent in a single digital object, this appears to be neither directly ascertainable from Tivo nor the only possibility.  For example, it may also be possible that the information identifying the selected TV program is sent immediately after “click[ing] the name of a program” at step 4 (see the portion of page 18 of Tivo reproduced above) and separately from the other two integers, being the “at least one instruction to record at least one of a television show, movie, series or program” and the “device address information identifying the at least one second device”. 

48.  In the absence of any evidence to the contrary, the above alternative possibilities, which are all different from the invention defined in amended claim 1, do not appear unreasonable in light of the disclosure of Tivo and Mr Cohen’s comments as underlined below: 

“50.1 The first scheduled recording method is ‘Search by Title’ based on searching by title of broadcast content. In this mode, the DVR lists programmes sorted by their title. The user was then able to filter by category or subcategory as well as by the leading letters of the title of the programme. The user may then select a programme from the resulting lists to be recorded (i.e., by selecting the program’s record option). The selected programme correlates to a unique piece of metadata within the DVR, allowing it to determine the time, duration, date, frequency and channel parameters necessary to record the selected programme. It was also possible to use the metadata about a specific programme to find other related programmes, such as other showings of the same programme or other episodes of the same series.” (underlining added)

49.  While Mr Cohen’s explanations in the above quoted paragraph do not appear directly related to the online scheduling, they seem to be supportive of the view that the channel can be determined by the DVR from internally stored information, which implies that the channel, as such, do not have to be sent to the DVR.  It is also important to note that Mr Cohen does not talk about the channel alone.  Instead, he talks about “the time, duration, date, frequency and channel parameters necessary to record the selected programme”. 

50.  On purposive construction, I consider that “content address information identifying the location of the at least one of the television show, movie, series or program” is information that sufficiently identifies “the location of the at least one of the television show, movie, series or program” such that the second device can directly record “the at least one of the television show, movie, series or program” without any location uncertainty or further searching.  Without conclusively deciding the issue as this will not affect the outcome of my decision, I am prepared to accept that, in this context, the full set of “parameters necessary to record the selected programme”, as explained by Mr Cohen above, provides such information and, thus, can be considered “content address information …”.  It is my understanding (which appears confirmed by Mr Cohen) that the TV channel alone is not sufficient information.  Thus, contrary to the Opponent’s submissions, the channel information alone cannot be considered a disclosure of “content address information …” as claimed in amended claim 1.

51.  Furthermore, as I already mentioned on several occasions, amended claim 1 requires that the first device that sends the digital object to the server is a mobile device (features 1.2 and 1.4).  At the oral hearing, the Opponent submitted, in essence, that the computer with Internet access that is used for online scheduling can be a laptop, which is a mobile device, hence the feature is inherent in Tivo.  However, I note that this computer may also be a stationary desktop computer as nothing in Tivo suggests one way or the other.  As noted in the Original Decision:

“87. It is well established that the general test for anticipation or want of novelty is the reverse infringement test, and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed. The alleged anticipation must also contain ‘clear and unmistakable directions’ to produce the invention as claimed. However, if the alleged anticipation contains a direction which is capable of being carried out in a manner which would infringe the invention as claimed, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated” (underling added, reference(s) omitted)

52.  I do not consider that Tivo provides “clear and unmistakeable directions” to use a mobile device as the computer with Internet access to reach TiVo Central Online and perform online scheduling.  Based on the disclosure of Tivo, I find that it would be “at least as likely” that a stationary desktop computer would be used for that purpose.

53.  On the basis of the above considerations, I am not satisfied that all essential features of amended claim 1 are disclosed in Tivo, therefore I am not satisfied that amended claim 1 is not novel in light of Tivo.

(d)(2) claims lack an innovative step in light of Tivo

54.  In the Original Decision, this negative finding was based entirely on the lack of novelty in light of Tivo:

“128. Claims 1 – 5 were found to be not novel over Foti and TiVo. As there are no differences between these prior art and the claimed invention, it follows that claims 1 – 5 are also not innovative over Foti and TiVo.” (underlining added)

55.  In my discussion of novelty in light of Tivo, I established that some of the essential features of amended claim 1 are not disclosed in Tivo.  I note that these features relate to the important consideration of how the information, necessary to record a TV program, is sent from the computer with Internet access (or the first device) to the server, and ultimately received by the DVR (or the second device) as well as whether this computer is a mobile device or not, thus allowing or not the flexibility of sending a request to record from any location where Internet connection is available.  At the hearing, the Opponent submitted (as best understood) that, in alternative, if Tivo does not disclose that the computer with Internet access is a mobile device, then the claimed invention will lack an innovative step in light of Tivo.  Taking into account the nature of the above mentioned differences between the disclosure in Tivo and the invention claimed in amended claim 1, I do not consider that the invention clamed in amended claim 1 only varies from what is disclosed in Tivo in ways that make no substantial contribution to the working of the invention.  Hence, I am not satisfied that amended claim 1 lacks an innovative step in light of Tivo.

(d)(3) claims lack an innovative step in light of information made publicly available through prior use of PIMP

56.  Regarding PIMP, the Original Decision stated that:

“113. Mr Cohen describes his recollection and understanding of IceTV PIMP as:

‘… IceTV provided the PIMP on a webpage and on a widget to enable viewing of EPG data, viewing of recommended content for the user, recording preferences to be stored, and the scheduling of recordings of content (such as TV series, movies, etc.). The webpage was accessible by devices via web-browsers, while the widget was installed on a Windows PC or an Apple Macintosh.

The scheduling of recording of content was remotely performed through the webpage or widget so that an IceTV-enabled DVR could perform the recording. Another compatible DVR-enabled computer, such as a PC running Windows Media Centre or an Apple Macintosh running Elgato EyeTV, could also receive and perform the remotely scheduled recording …’

114. The prior use of PIMP before the priority date of the opposed application is corroborated with screenshots from pages of IceTV’s website in 2005 and 2006, and is briefly mentioned in the Federal Court Decision of Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172 which provided the following description:

‘The IceGuide is also available to subscribers on a test trial basis through a service marketed as the “Personal Interactive Media Planner” (“Pimp”). The Pimp is intended to enable users to control and program PVRs or Media Centres remotely using a mobile phone or the internet.

Ice has also developed a service called the “Widget”. The Widget can be downloaded by any person (not just subscribers) from Ice’s website using a PC and is a small, desktop application. It displays television program listings for the next 7 days for all the free to air channels on the PC screen.’

115. I am satisfied that the website screenshots and Federal Court Decision establishes the prior use of PIMP before the priority date.

116. The Opponent submits that the features of claim 1 are anticipated by PIMP as follows:

·The at least one device in a requestor role is the mobile phone or computer running PIMP.

·The Digital Object is the instruction to record.

·The at least one device in a recipient role is the selected IceTV-enabled DVR or compatible DVR-enabled computer.

·The server is the PIMP server” (original italic, underlining added, reverence(s) omitted)

57.  Regarding novelty and innovative step in light of PIMP, the Delegate in the Original Decision found that:

“122. It is also clear from Exhibit KC-9 that in PIMP, the connection is initiated by the server rather than the client device [i.e., ‘the selected IceTV-enabled DVR or compatible DVR-enabled computer’], and is only made when a user makes a request to record a show [i.e., using a ‘mobile phone or computer running PIMP’]. Therefore the connection could be said to be initiated on an irregular interval rather than a predetermined interval. However regardless of whether the connection request is initiated by the user device or the server, the transmission step is the same.

123. Consequently, I find that claim 1 is not anticipated and is therefore novel in light of PIMP.

…

131. As I concluded above, claim 1 is not anticipated by PIMP due to the feature ‘…the at least one device connects to the server at predetermined intervals’ to download the digital object. The question I must as [sic] is, whether this feature would make a substantial contribution to the working of the invention as claimed in each claim.

…

135. Mr Cohen makes it clear that having a device connect to a server at predetermined interval is conventional in the art. While I accept that there are advantages in setting a predetermined interval as opposed to, for example, a continuous connection, I am not satisfied that this could be said to make a substantial contribution to the working of the invention.

136. On this basis, I find that claim 1 does not have an innovative step in light of PIMP.” (original emphasis)

58.  The important question I need to answer is whether PIMP discloses the newly added feature in amended claim 1, namely that feature 1.5 (i.e., the content of the digital object) now includes the integer of “content address information identifying the location of the at least one of the television show, movie, series or program”.  To support their position that this is the case, the Opponent uses similar line of reasoning as in the case of Tivo:

“As can be seen above [i.e., on a screenshot of PIMP included in Annex A], the TV guide shows the shows and also the corresponding channels (on which to record the shows). It is inherent that, when a show is selected to be recorded, the corresponding channel is also included as part of the recording process. This is because it is not possible to record a show broadcast on a particular channel without knowing the channel.

Similar to the TiVo Guide above, the channel information required by the IceTV PIMP is equivalent to the claimed ‘content address information’ as the channel information identifies a frequency (i.e., the location) of the television show, movie, series or program to be recorded.

It is accordingly inherent that the channel information (i.e., the content address information of the show to be recorded) must also be sent by the IceTV PIMP to the server and, in turn, to the media centre. Again, without the channel information, it would be impossible for the Media Centre to determine the channel on which to record a selected show.” (OS, page 7 of Annex A, underlining added)

59.  As I already concluded, it is the full set of parameters necessary to record the selected program (not the TV channel information alone) that can potentially be considered the claimed “content address information …”.  In addition, I also noted that even if the channel of a TV program is ultimately needed for the program to be recorded, this does not necessarily mean that the channel information, as such, must be sent to the server during the scheduling.  This applies even if the channel identifier of a program may be displayed to the user during the scheduling of the recording of the program.  

60.  The Opponent also refers to Cohen:

“The Media Centre is discussed in the Cohen Declaration in Section G How Content Was Recorded with paragraphs 47 to 59. Paragraph 58 of the Cohen Declaration explicitly describes that ‘For example, on the PC Windows Media Centre system incorporating the IceTV metadata service, a metadata query may be generated by creating criteria to match against the metadata in the IceTV head-end. The metadata may include, for example, names of series, episode names, episode numbers, channels etc.’ Emphasis added.” (OS, page 8 of Annex A, original emphasis)

61.  It is worth noting that the whole “Section G How Content Was Recorded” of Cohen was provided in answer to a rather broad question, not specifically related to Tivo, PIMP, or even remote scheduling of recording in general:

“47. I was asked by Spruson & Ferguson to describe how content was recorded onto a device (such as a DVR or a PC using Windows Media Centre) as at 16 June 2009. Where I reference a DVR in this section, this also includes a STB. I believe my comments below are representative of common knowledge most engineers working in the field of set top box technology would have had as of 16 June 2009.” (underlining added)

62.  As far as the functionality of PIMP is concerned, Mr Cohen explains in this section that:

“54. As discussed in paragraphs 37-39 and 42 above, IceTV’s web server provided an interactive EPG called IceGuide. The IceGuide may be used to schedule recordings. Recording requests were made by the viewers by scrolling through or across program titles and selecting programs for future recording by the DVR/PC. Alternatively, recording requests were sent over the Internet from a mobile phone (or other device) to the IceTV servers, which in turn transmitted the recording requests to the PC. For Windows Media Centre, the PC processed the recording requests via IceTV software resident on the PC. Upon receipt of the recording requests, the IceTV software used the metadata previously synchronized between the IceTV head-end and the IceTV software resident on the PC to schedule the recording of programmes. This functionality is similar in architecture to the ‘TiVo Central Online’ method used in the TiVo DVR discussed in paragraph 51 above.

55. The remote recording functionality of IceTV was also available via IceTV’s PIMP, previously discussed in paragraph 45 above. …” (underlining added)

63.  Mr Cohen then continues with his answer to the broad question he was asked:

“56. A number of different recording options were available to DVR users, as well as to users of Windows Media Centre as at June 2009, as described in paragraphs 57 to 59 below.”

64.  The Opponent relies in particular on paragraph [58] of Cohen quoted in full below:

“58. Content matching recording was available on a PC using Windows Media Centre. This option was available by configuring the PC to record types of content that match particular criteria. For example, the criteria may be a genre, keyword, content metadata (such as a director or actor, for example). Algorithms for matching content by defined criteria may be executed either on the PC, at the head-end where the content source was located, or at an alternative head-end that was separate from the content source. For example, on the PC Windows Media Centre system incorporating the IceTV metadata service, a metadata query may be generated by creating criteria to match against the metadata in the IceTV head-end. The metadata may include, for example, names of series, episode names, episode numbers, channels etc. The user may provide the query to the IceTV head-end, where the head-end performed the matching and then sent any matched programs as a recording request to the PC. This is similar to the ‘TiVo Central Online’ method mentioned in paragraph 51 above.” (underlining added)

65.  With respect to the above explanations, on one hand, I note that apparently the metadata query is not generated remotely on a mobile device, but “on the PC Windows Media Centre system incorporating the IceTV metadata service”.  Then, “[t]he user may provide the query to the IceTV head-end” and presumably the query (i.e., the digital object) is sent by the same PC, not by a mobile device.  Next, “the head-end performed the matching and then sent any matched programs as a recording request to the PC”, i.e., to the same PC on which the metadata query was generated, and from which it was presumably sent.  On the other hand, Mr Cohen asserts that “[t]his is similar to the ‘TiVo Central Online’ method mentioned in paragraph 51 above” and, in that paragraph, he clearly explains that the search and scheduling is done via the web site, hence on another device connected to the Internet, not on the user’s DVR: 

“51. Alternatively, the content may be scheduled to be recorded on the hard drive of the DVR by using metadata matching. The metadata may be programmed either by a user of the DVR, the network the DVR was connected to or by both the user and the network. For example, the metadata may include the channel upon which content was being broadcast, the location of the DVR, specific DVR addressing, or a particular genre associated with the content. An example of scheduling a recording using metadata is shown in the TiVo Guide on page 18 at the section titled ‘Finding Programs Using TiVo Central Online’ where a user can search for a programme through a website and request to schedule a recording on the DVR via the website. Based on the user request, the website sends programme recording requests over the Internet to the user’s DVR to schedule the recording using the metadata previously synchronized between the network and the DVR.”

66.  Perhaps Mr Cohen is talking about similarities in different aspects, not necessarily related to remote vs local scheduling.  In light of his statement in paragraph [56] as quoted above, I am uncertain whether the explanation provided by Mr Cohen in paragraph [58] is related to the remote scheduling via PIMP or not.  I note that this is not the only part of Mr Cohen’s declaration, which is somewhat open to interpretation, and I refer for example to his explanations with respect to how the request to record was transferred from the IceTV server to the DVR or computer (i.e., the potential disclosure of the second device of amended claim 1):

“d) IceTV is another example of software functionality available on a DVR device to enable the device to connect periodically to a server to fetch any commands addressed to that device [i.e., the transfer appears to be initiated by the DVR (the second device)]. The commands were typically to perform scheduled recordings. The connection was made dependent on the settings of the device, but was typically carried out on a daily basis or sooner.” (in [63.2], underlining added)

“81. In a third step as shown in the screenshots of pages 2 and 3 in Exhibit KC-9, after selecting a program to be recorded, the PIMP server would contact the applicable IceTV-enabled DVR/computer to schedule the recording [i.e., the transfer appears to be initiated by the server].

82. My understanding of the second and third steps is that, when the user selected a program (and a DVR/computer, if applicable) to be recorded, the PIMP updated the user’s IceTV account, which was stored on the IceTV server. The IceTV server would then send the scheduled recording to the IceTV-enabled DVR or computer when that device requests an update from the IceTV server [i.e., the transfer again appears to be initiated by the DVR or computer (the second device)].” (underlining added)

67.  Paragraphs [81] and [82] quoted above are explanations of the “screenshots of a webpage from IceTV’s official website, copies of which are shown in Exhibit KC-9” (Cohen at [75], original emphasis). These screenshots explain what will happen at step 3 (after the user selects the programs to be recorded at step 2), namely “PIMP will then contact your media centre or digital video recorder via the internet and schedule the program or programs for you” and “[a] message is then sent to your media centre from the PIMP server”, which clearly indicates that the transfer is initiated by the server. This was also noted by Mr Cohen at paragraph [81], and was accepted by the Delegate in the Original Decision (e.g., in paragraph [122] quoted earlier in this decision). Mr Cohen does not clearly explain the reasons for his understanding that the transfer is initiated not by the server, but by the DVR or computer as stated, e.g., in paragraph [82].

68.  When discussing, in paragraph [54] (quoted above in full), that “recording requests were sent over the Internet from a mobile phone (or other device) to the IceTV servers, which in turn transmitted the recording requests to the PC”, Mr Cohen states that “[u]pon receipt of the recording requests, the IceTV software used the metadata previously synchronized between the IceTV head-end and the IceTV software resident on the PC to schedule the recording of programmes” (underlining added). 

69.  Amended claim 1 requires that the same digital object that is sent from the first device to the server will then be transferred to (i.e., downloaded by) the second device.  If the metadata query, or the recording request, sent from the mobile device to the IceTV high-end did indeed include the full set of parameters necessary to record the selected program, then this full set must also be included in the recording request transmitted by the IceTV high-end to the second device, for there to be a relevant disclosure.  The full set of parameters would be sufficient for the second device to directly schedule the recording of the program, hence there would be no need for what is explained by Mr Cohen in paragraph [54] with respect to previous synchronisation of metadata and use of such synchronised metadata.  Indeed, it is clear from Cohen that when the full set of parameters is provided to the recorder (i.e., the second device), no metadata is necessary to schedule the recording:

“50.4 The fourth scheduled recording method is ‘Manually Record Time/Channel’, which is based on directly instructing the DVR to record a channel at a specific time and date, without requiring program metadata. The user selects whether the DVR is to repeat the recording, then selects a date (or in the case of repeat recordings, days of the week), channel, start time and stop time. The DVR then schedules the recording as requested. This is useful for channels where program metadata is unavailable or unreliable.” (underlining added)

70.  In addition to the uncertainty regarding what exactly Mr Cohen’s explanation in paragraph [58] relates to, I am unable to find any clear statement in his evidence suggesting that the full set of parameters necessary to record the selected program can be part of the information sent from the mobile device to the IceTV head-end (or server) together with the request to record the selected program.  It is also worth noting that in section “J. Functionality of the PIMP” (Cohen at [71]-[87]), Mr Cohen does not mention anything about any of the parameters necessary to record the selected program being sent from a mobile device to the IceTV head-end (or server).

71.  On balance, based on the available evidence, I am not satisfied that feature 1.5 of amended claim 1 is disclosed by the prior use of PIMP.  What is not disclosed relates to the exact content of the digital object, and in particular the integer of “content address information identifying the location of the at least one of the television show, movie, series or program”.  Based on my discussions above, I conclude that whether or not the full set of parameters necessary to record the selected program (i.e., potentially the “content address information …”) is encapsulated in the digital object is likely to affect the way in which the recording is scheduled.  It follows that I do not consider that the invention clamed in amended claim 1 only varies from what is disclosed by PIMP in ways that make no substantial contribution to the working of the invention.  Hence, I am not satisfied that amended claim 1 lacks an innovative step in light of the prior use of PIMP. 

Has the amendment overcome the negative findings – summary

72.  I have confirmed that the amendment resulted in overcoming the negative findings not pressed by the Opponent (i.e., those listed as (a), (b), (c)(1), and (d)(1)). 

73.  In addition, I have concluded that I am not satisfied that the negative findings pressed by the Opponent (i.e., those listed as (c)(2), (d)(2), and (d)(3)) are applicable to amended claim 1.  

74.  The Opponent submits that “[i]n accordance with the Third Decision, the above arguments against amended claim 1 also apply against amended claim 2” (OS, page 12 of Annex A).  To the extent the Opponent refers to the similarities between amended claims 1 and 2, I agree.  Indeed, as I found in the Amendment Decision (e.g., paragraphs [55] and [61]), the language of amended claim 2 is very similar to the language of amended claim 1.  It follows that all my discussions above with respect to amended claim 1 are also relevant to amended claim 2, hence I am not satisfied that the negative findings pressed by the Opponent are applicable to amended claim 2. 

75.  I also noted, in the Amendment Decision at paragraph [27], that “[i]t appears that the scope of each one of the dependent claims, i.e. proposed [now, amended] claims 3 to 5, is within the scope of proposed [now, amended] claim 2”.  Therefore, since the negative findings pressed by the Opponent relate only to novelty and innovative step, I am not satisfied that these negative findings are applicable to any one of amended claims 3 to 5. 

76.  It follows that the amendment has resulted in overcoming all negative findings made in the Original Decision.

CONCLUSION AND COSTS

77.  I have found that, as a result of the amendment, all negative findings made in the Original Decision are now overcome.  The Opponent did not submit that any new deficiencies are introduced by the amendment.  I am also of the view that no new deficiencies exist by the reason of the amendment.  

78.  In conclusion, I am not satisfied that any valid grounds for revocation exist with respect to the Patent as presently on file.  Hence, I have no reasons to revoke the Patent.

79.  It is a normal practice that the award of costs should follow the event and, in the present case, I can see no reasons to divert from this practice.  I note that the Patentee did not request to be heard and, because of that, it is unclear to me whether any costs according to Schedule 8 have been incurred by them.  Nonetheless, since the Opponent was unsuccessful, it appears reasonable to me to award any such costs according to Schedule 8 against the Opponent.

Dr V. Z. Kolev
Delegate of the Commissioner of Patents

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