Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd
[2021] APO 36
•22 September 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2021] APO 36
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: 22 September 2021
Hearing Date: 11 February 2021, via video conference
Catchwords: PATENTS – opposition to the allowance of an amendment – allowability under s 102(2)(a) – claim infringement – when the invention is a product – when the invention is a method or process – true product claims – claim interpretation – all claims as proposed to be amended in substance fall within the scope of the claims before the amendment – amendment allowed – costs awarded against the opponent
Representation: Patent attorney for the patentee: J. Seisdedos of Auctus Attorneys and Advisors Pty Ltd with C. O’Brien of The Advanced Technology Group Pty Ltd
Patent attorneys for the opponent: J. Yap, 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: 22 September 2021
DECISION
The opposition is unsuccessful. The amendment is allowable. Subject to appeal, I allow the amendment.
I award costs in accordance with Schedule 8 against Foxtel Management Pty Ltd.
REASONS FOR DECISION
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
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 09 June 2016. The Patent is a divisional of 2010100616 and claims the earliest priority date of 16 June 2009. The Patent was certified on 07 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). I will refer to the claims as amended by this allowed amendment as the allowed claims.
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 05 June 2017, namely Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26 (the First Decision). In this 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 First Decision to propose a suitable amendment.
An amendment to the claims was proposed by the Patentee on 07 August 2017. On 23 October 2017, an Examiner considered that the amendment was allowable and granted leave to amend. On 09 January 2018, the Opponent filed a notice of opposition to the allowance of the amendment. A statement of grounds and particulars was filed on 09 February 2018, and evidence in support was filed on 09 April 2018. Evidence in answer was not filed. Following a hearing of the opposition, a decision was issued on 12 November 2018, namely Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2018] APO 83 (the Second Decision). In this decision, a Delegate of the Commissioner found that the opposition was successful and refused the proposed amendment. The Patentee was allowed a period of two months from the date of the Second Decision to propose a further suitable amendment.
The Patentee filed a further proposed amendment to the claims on 14 January 2019. An Examiner considered that the amendment was not allowable and issued an adverse examination report on 15 March 2019. In response to that report, on 15 May 2019, the Patentee filed new proposed amended claims (the proposed claims). On 29 July 2019, the Examiner granted leave to amend, and this fact was advertised on 15 August 2019. On 14 October 2019, the Opponent filed a notice of opposition to the allowance of the amendment (the Instant Opposition). The Opponent filed a statement of grounds and particulars with respect to the Instant Opposition (the SGP) on 14 November 2019, and evidence in support on 10 January 2020.
On 19 December 2019, the Patentee filed a request to dismiss the Instant Opposition. Having considered the submissions on the matter from both parties, on 12 February 2020, a Delegate of the Commissioner proposed the following directions:
“1. That the ground of opposition under s102(2)(b) is dismissed.
2. That particulars 1.1, 1.2, 1.3 and 1.5 (to the extent this is dependent on 1.1 to 1.3) under are not available to the Opponent in the opposition.”
The Opponent requested to be heard with respect to the proposed directions. Following a hearing, on 07 August 2020 a Delegate of the Commissioner decided:
“After considering the submissions made in writing and at the hearing, I make the following directions:
1. That the ground of opposition under s102(2)(b) is dismissed.
2. That particulars 1.2, 1.3 and 1.5 (to the extent this is dependent on 1.2 to 1.3) are not available to the Opponent in the opposition.” (original italic)
A procedural direction with respect to the filing of evidence in the Instant Opposition followed on 11 August 2020. On 13 August 2020, the Opponent confirmed that the evidence filed on 10 January 2020 completes the evidence in support. Evidence in answer was not filed. The Instant Opposition was heard on 11 February 2021 via video conference.
In summary, the present decision is with respect to the Instant Opposition to the allowability of the proposed amendment filed on 15 May 2019 (i.e. the proposed claims), the opposition being based on the statement of ground and particulars filed on 14 November 2019 (i.e. the SGP) as affected by the above quoted directions made on 07 August 2020.
EVIDENCE AND SUBMISSIONS
10. The evidence on file consists only of:
· A declaration by Mr Keith David Cohen dated 12 December 2019 (Cohen), with exhibits KC-1 to KC-9.
11. On 28 January 2021, the Opponent filed “Opponent’s Summary of Submissions” (the Opponent’s Summary or OS). On 04 February 2021, the Patentee filed “Patentee’s Summary of Submissions” (the Patentee’s Summary or PS). Oral submissions were provided by both parties at the hearing.
12. With respect to the evidence, the Opponent submits that:
“14. Keith David Cohen has a Bachelor in Engineering with expertise in Electronic Engineering. Mr Cohen was 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. See the Cohen Declaration, paragraph [3]. It is plain that Mr Cohen has the requisite knowledge and experience before the relevant priority date to be a skilled addressee for the Patent, and this was accepted by the Delegate of the Commissioner in the First Decision and in the Second Decision.” (OS)
13. While I agree that Mr Cohen is technically qualified to give evidence in the Instant Opposition, I also note that he appears to be an employee of the Opponent (see Cohen at [3.8]). Therefore, I need to be careful in weighing his evidence bearing in mind that Mr Cohen is not an independent expert.
APPLICABLE LAW
14. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations. The application for the Patent was filed on 21 November 2013; hence the amended provisions of the Act and Regulations apply to the examination of the Patent and to the hearing decision with respect to the Instant Opposition.
The law on allowability of amendments
15. The part of the Act applicable to the Instant Opposition is:
“102 What amendments are not allowable?
…
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).
…
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2), (3) or (3A).
…
(2A) For the purposes of subsection (2), relevant time means:
…
(b) in relation to an amendment proposed to a complete specification relating to an innovation patent—after the Commissioner has made a decision under paragraph 101E(1)(a) in respect of the patent.” (original emphasis)
The above mentioned paragraph 101E(1)(a) relates to certification after examining the innovation patent.
16. As I will discuss later, the Opponent’s case is based entirely on s 102(2)(a), and it is well-established that the test for compliance with this part of the Act could be formulated as:
“Would the amendment make anything an infringement which would not have been an infringement before the amendment?”
17. While there are clear disagreements between the parties with respect to the proper application of the test to the facts of the case, the test itself, as formulated above, does not appear to be in dispute (see OS at [34]-[36] as well as PS at [5]-[15]). In light of this, I do not consider it necessary to discuss in detail the historic origins of the test. It will suffice to mention that this form of the test was approved by the Federal Court in Boehringer Ingelheim International GmbH v Commissioner of Patents [2000] FCA 1918 at [18]-[19] (and was not criticised by the Full Court on appeal) in the context of extension of the term, where a very similar requirement is imposed, in that something “must … in substance fall within the scope of the claim or claims of that specification”. Importantly, in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814, Yates J stated:
“40. Consideration of the prohibition in s 102(2)(a) requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Once again the prohibition is conditioned on a state of affairs existing as a result of the amendment, namely that a claim would not in substance fall within the scope of the claims before amendment. Thus the identification of the amendment is, once again, an important first step. Moreover, the reference to ‘within the scope of the claims’ before amendment is significant. The comparison is not between a particular amended claim and that claim before amendment. The expression ‘within the scope of the claims’ directs attention to all the claims. For this reason a practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment. If the answer is ‘yes’, the amendment is proscribed by s 102(2)(a) of the Act: AMP Incorporated v The Commissioner of Patents (1974) 3 ALR 283 at 289-290; Fina Research SA v Halliburton Energy Services Inc (No 2) [2003] FCA 251; (2003) 127 FCR 561 at [29]; W J Voit Rubber Corp’s Application, Re (1965) AOJP 1752 at 1754-1755.” (underlining added)
18. The long-established test for infringement could be formulated as per Rodi and Wienenberger A.G. v. Henry Showell Ltd. (1969) RPC 367 at page 391:
“To constitute infringement the article must take each and every one of the essential integers of the claim.”
This means that something can infringe an amended claim and not infringe the original claim before amendment only if there are essential features of the original claim that are missing or broadened in the amended claim.
19. While, at the hearing, the Opponent also mentioned the above test for infringement, their main argument appears to involve s 13(1) and the definition of “exploit” in Schedule 1 of the Act (see OS at [39]-[41]). This definition distinguishes between when “the invention is a product” and when “the invention is a method or process”. Later in the decision, I will discuss the definition and its relation to product claims and method claims.
THE SPECIFICATION AND THE PROPOSED AMENDMENT
20. The amendment proposed to the Specification, and subject to the Instant Opposition, concerns only the claims. The description and drawings of the Specification were already discussed in the First Decision (see e.g. [7]-[13]). Given the limited scope of the Instant Opposition and the somewhat descriptive, self-explanatory language of the claims, I do not consider it essential to repeat the Delegate’s discussions from that decision, or to provide any further general comments on the matter at this point. If it becomes necessary for me to consider the body of the Specification (e.g. for the purpose of claim construction), I will provide more specific analysis to the extent necessary for the purposes of my decision.
The claims before the amendment
21. The allowed claims (i.e. the claims in the Specification immediately before the proposed amendment) are as follows (some formatting done to assist readability and construction):
“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 proposed amendment to the claims
22. The proposed claims (i.e. the claims as presently proposed to be amended) are as follows (again, some formatting done to assist readability and construction):
“1. A computing system for
facilitating a digital object download over a network,
comprising:
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;
wherein,
the at least one software application is arranged to send at least one digital object to the server via the network,
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;
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. 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
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;
whereby,
the at least one software application is arranged to send at least one digital object to the server via the network,
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,
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.”
IS the PROPOSED amendment allowable?
23. Given the fact that the Instant Opposition is unsuccessful, I consider it necessary to discuss in more detail the Opponent’s case. The Patentee’s submissions, although helpful, do not appear to be of decisive importance.
The Opponent’s grounds and particulars
24. As a result of the directions made on 07 August 2020 and quoted earlier in this decision, the grounds and particulars available to the Opponent are, essentially, as follows:
“Ground 1: Section 102(2)(a)
1. The provisionally allowed amended claims do not in substance fall within the scope of the claims of the specification before the amendment. Hereinafter, when referring to the claims of the provisionally allowed amended claims [i.e. the proposed claims], the prefix of ‘amended’ will be appended to the term ‘claim’ or ‘claims.’ Further, hereinafter, when referring to the claims of the specification before amendment [i.e. the allowed claims], the prefix of ‘original’ will be appended to the term ‘claim’ or ‘claims.’
1.1. Amended independent claim 1 recites a computing system. In contrast, none of the original claims recite a computing system. Therefore, amended independent claim 1 does not fall within the scope of any of the original claims, which are all method claims.
1.4. Amended claim 2 recites storing, in the server, (a) at least one instruction to record, (b) device address information, and (c) content address information identifying the location of the at least one of the broadcast show, movie, series or program. However, original claim 1 recites that the server stores a digital object having (a) and (b). As will be shown in evidence, storing a digital object having (a) and (b) is different to storing the content of the digital object (i.e., (a) and (b)).
1.5. Amended claims 3 to 5, which are dependent on amended claim 2, also have the same issues as amended claim 2 (discussed in paragraph 1.4 above) at least based on their dependency.” (the SGP, underlining and bold in the original, the dismissed and unavailable to the Opponent parts omitted)
25. I note that the above is also acknowledged by the Opponent (see OS at [8] and [11]).
Preliminary considerations
26. The allowed claims include only one independent claim, i.e. allowed claim 1, prima facie defining a method. It appears that each one of the dependent claims is within the scope of this independent claim, hence the scope of the claims of the Specification before amendment is determined by the scope of allowed claim 1.
27. The proposed claims include two independent claims, i.e. proposed claims 1 and 2, prima facie defining respectively a computing system and a method. It appears that the scope of each one of the dependent claims, i.e. proposed claims 3 to 5, is within the scope of proposed claim 2.
28. This means that if proposed claims 1 and 2 each in substance fall within the scope of allowed claim 1, the requirements of s 102(2)(a) will be satisfied. If this is not the case, then the requirements of s 102(2)(a) will not be satisfied and the proposed amendment will not be allowable.
Is proposed claim 1 within the scope of allowed claim 1?
29. It would appear that most of the Opponent’s concerns with respect to proposed claim 1 are based on the premise that, on the Opponent’s construction, it is a product-type claim, whereas the allowed claim 1 is a method-type claim.
Is proposed claim 1 a true product claim?
30. The Opponent’s argument is as follows:
“25. The Opponent construes the terms and phrases of original [i.e. allowed] claim 1 as follows:
…
25.2 ‘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 Opponent construes this phrase to mean that the digital object could contain (a), (b), or (a) and (b).
…
25.6 ‘addresses encapsulated in the least one digital object’: the Opponent construes this phrase to mean that the digital object of paragraph 25.2 further contains:
(c) addresses of devices in a recipient role.
Therefore, the digital object could contain: (a)+(c), (b)+(c), or (a)+(b)+(c).
…
27. The Opponent construes the terms and phrases of opposed [i.e. proposed] claims 1 and 2 as follows:
27.1 ‘digital object’: the Opponent construes this term to be the same as the digital object in original claim 1. The Cohen Declaration describes in paragraph 19 that ‘a digital object is a logical container structure having data contained within that logical container structure.’
27.2 ‘The digital object comprising:
(d) an instruction to record at least one of a broadcast show, movie, series or program,
(e) device address information identifying the at least one second device, and
(f) content address information identifying the location of the at least one of the broadcast show, movie, series or program.[’]
The Opponent considers this term to have some correspondence with original claim 1 as set out in paragraph 25.2 above and explained further below.
27.3 The Opponent construes item (d) to have a similar scope as item (a) in original claim 1. Therefore, both items (a) and (d) will be referred to herein as item (a) for ease of reference.
27.4 The Opponent construes item (e) to have similar scope as item (c) in original claim 1. Therefore, both items (c) and (e) will be referred to herein as item (c) for ease of reference.
28. In view of the above, the Opponent construes opposed claim 1 to be a computing system having (1) at least one software application executable on a first mobile electronic device; (2) a server; and (3) at least one second electronic device. Opposed claim 1 relates to a first mobile electronic device sending a digital object containing items (a), (c) and (f) (see paragraphs 27.2 to 27.4 above) to the server, the server determining items (a), (c), and (f) from the digital object, and the server storing items (a), (c), and (f) until the second device connects and downloads the digital object.
…
42. Opposed claim 1 recites a computing system claim that is configured to facilitate a download of a digital object …
43. The computing system of opposed claim 1 is a product-type claim. In contrast, all the original claims are method-type claims for using a server to facilitate a digital object download.” (OS, bold italic in the original, underlining added)
31. It is worth clarifying that while the above quotation includes the phrase “broadcast show”, in fact the phrase in question in proposed claims 1 and 2 reads “television show”.
32. The reasons for the Opponent’s conclusion regarding the type of proposed claim 1 are not comprehensively elaborated in the Opponent’s Summary. At the hearing, as best understood, the Opponent clarified their position by pointing mainly to the preamble of the claim, i.e. “[a] computing system for facilitating a digital object download over a network” (underlining added). When asked whether the preamble is the only part of a claim that determines the type of the claim, the Opponent made some further submissions to the effect, again as best understood, that the wording of proposed claim 1 imposes only functional capability limitations to the claimed computing system, and nothing in the claim suggests that the claimed computing system is actually performing any of the claimed actions.
33. As I already mentioned, the Opponent also relies on s 13(1) and the definition of “exploit” given in Schedule 1 of the Act:
“exploit, in relation to an invention, includes:
(a) where the invention is a product—make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or
(b) where the invention is a method or process—use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.” (original emphasis)
34. Importantly, the above definition clearly differentiates between an invention that is “a product” and an invention that is “a method or process”. Since the invention is defined in the claims (see s 40(2)(b) and (c)), it is important to be able to decide whether a particular claim defines an invention that is a product or an invention that is a method or process. This will also determine the type of the claim (e.g. a product claim or a method claim).
35. I consider that the invention defined in a claim will be a product, such that paragraph (a) from the above definition will apply, only if what is defined by the claim as a whole is a product per se. This means that the scope of the claim is not limited by any actions to be performed (e.g. by the product or with respect to the product). For brevity, in this decision I will refer to such claims as “true product claims”. When a claim includes a definition of a product, however the scope of the claim is further limited by particular actions to be performed, then the mere making, hiring, selling or otherwise disposing of the product, offering to make, sell, hire or otherwise dispose of it, using or importing it, or keeping it for the purpose of doing any of those things will not constitute exploit of the invention defined in the claim. Hence, the claim will not be infringed by any of these acts, unless the defined particular actions are also performed. In this case, the invention defined in the claim is not the product per se, and I do not consider that such a claim is a true product claim, regardless of the fact that, on the basis of its preamble, the claim may appear prima facie to be defining a product.
36. I must emphasise that while the preamble is of some importance and it usually reveals the type of the claim, this cannot be conclusive. Neither Boehringer Ingelheim International GmbH v Commissioner of Patents [2001] FCA 647 (see OS at [51]-[54]) nor Prejay Holdings Ltd v Commissioner of Patents [2003] FCAFC 77 (see OS at [55]-[56]) supports the view that the preamble needs to be considered exclusively or in isolation from the rest of the claim when determining the type of the claim. The type of a claim is governed by its scope and can be conclusively determined only after thorough construction of the claim to determine all of its limitations. As succinctly expressed by the High Court in Wellcome Foundation Ltd v Commissioner of Patents [1980] HCA 21; (1980) 145 CLR 520 at [21] (p 530):
“… there is no distinction between the claim to the process and the claim to the substance when the substance claim is limited to its use in the process.”
37. Importantly, in true product claims, the claimed product is defined only by features describing the product itself, e.g. by reference to its properties, capabilities, materials, parts and their interrelationship, etc. In cases where the wording of a claim is such that the product is actually required to perform an action, this is quite a different limitation from the mere capability of the product to perform the action, and such a claim cannot be considered a true product claim. In contrast, nothing prohibits the presence of products in method claims, the products being defined by features describing these products by reference to their properties, capabilities, construction, material, etc. For example, the products may be used in the method or produced by the method.
38. From the above discussion, it follows that proposed claim 1 will be a true product claim if the computing system is defined only by features describing its components, configuration, and capability, so that the scope of the claim is not limited by any actions performed by the computing system or its components. Below, I have reproduced this claim again with some added emphasis and comments. The newly added labels (d), (e), and (f) are consistent with the labels in the Opponent’s Summary.
“1. A computing system for [i.e. capable of, configured and programmed for]
facilitating a digital object download over a network,
comprising:
at least one software application executable [i.e. that can be executed] on a first mobile electronic device;
a server; and
at least one second electronic device capable of recording video in a digital format;
wherein,
the at least one software application is arranged to send [i.e. programmed to send, when executed] at least one digital object to the server via the network,
the digital object encapsulating
[(d)] at least one instruction to record at least one of a television show, movie, series or program,
[(e)] device address information identifying the at least one second device, and
[(f)] content address information identifying the location of the at least one of the television show, movie, series or program;
wherein
the server determines from the at least one digital object,
[(e)] the device address information,
[(f)] content address information, and
[(d)] the at least one instruction, and
storing
[(e)] the device address information,
[(d)] the at least one instruction and
[(f)] 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.”
39. In the broadest sense, the defined computing system comprises a server, an electronic device capable of recording video in a digital format, and a software application. The latter can be executed on a different electronic device, that is a mobile device but not necessarily part of the system.
40. Importantly however, the claim defines that “the server determines from the at least one digital object …” and this wording is clearly suggestive of an action actually performed by the server, as opposed to a mere capability limitation. There is a clear distinction between this wording and the wording used in other expressions that indeed impose only capability limitations, such as “software application executable on …” and “second electronic device capable of …”. The server is not just capable of determining, and what is supposed to be determined is not just determinable by the server. Instead, the server determines. In light of this clear difference in wording, I conclude that the expression “the server determines from the at least one digital object …” defines a particular action performed by the server that is limiting to the scope of the claim. In other words, the claim will not be infringed unless this action is performed.
41. Similar reasoning applies to the word “storing”, which also defines an action that is limiting to the scope of the claim. The wording of the expression “storing … on the server” closely resembles a definition of a method step as per allowed claim 1. It is worth noting that the larger expression “wherein the server determines … and storing … on the server until …” does not appear to follow the rules of grammar. It would be much more grammatically correct for this expression to read “wherein the server determines … and stores … on the server until …” as in proposed claim 2. However, I do not consider that this grammatical issue is significant enough to create an ambiguity. On purposive construction, the meaning of the expression is clear, and I consider that this results in introducing the action of storing on the server as a proper limitation of the claim.
42. Further, for the action “the server determines from the at least one digital object …” to be possible, the server must have access to the digital object, i.e. the digital object must have been received by the server. Since “the … software application is arranged to send at least one digital object to the server via the network”, on purposive construction, it is clear that the digital object must have been sent to the server by the software application as it is the only defined element that has the required functional capability for that. Hence, sending the digital object to the server by the software application is another action that limits the scope of the claim.
43. At the hearing, the Opponent submitted that to say that proposed claim 1 is not directed to a computing system per se is similar to saying that a claim directed to “a car having wheels that turn around” is not directed to the car per se. I find this analogy a bit too simplistic and not entirely fair to the wording of the actual claim. If I use the Opponent’s car example, in my opinion, proposed claim 1 is directed to something more along the lines of “a car for moving passengers from <point A> to <point B>, wherein the car picks up the passengers at <point A> and carrying them to <point B>” (using wording equivalent to that in the claim). I do not think that simply making, importing, selling, keeping, or using a car would infringe this claim, despite the fact that the car may well be functionally capable of moving passengers from <point A> to <point B>.
44. Again at the hearing, the Opponent raised the argument, as best understood, that since proposed claim 2 is a method claim, there will be no point to have two method claims for the same thing, hence proposed claim 1 must be a product claim. In support of this argument, the Opponent also stated that there are no method steps in proposed claim 1. I am of the view that any action defined in a claim that limits the scope of the claim is, in substance, not dissimilar to a method step. Based on my construction of proposed claim 1 as discussed above, I consider that this claim does define such actions. In addition, the content of the claims set is a matter for the Patentee to decide, and I do not consider that the presumption against redundancy, even if I assume that it may be applicable in the present case, is sufficient for me to decide that proposed claim 1 is a true product claim, despite the clear wording of the claim.
45. Following the above analysis, I conclude that the scope of proposed claim 1 is limited by some particular actions to be performed by components of the defined computing system, hence proposed claim 1 cannot be considered a true product claim. In other words, I do not consider that paragraph (a) of the definition for “exploit” in Schedule 1 of the Act (quoted above) is applicable with respect to proposed claim 1 because, on proper construction, the defined invention is not just a product per se. This means that all of the Opponent’s arguments that are based on asserting the opposite cannot be persuasive.
What is the scope of allowed claim 1?
46. The simplest embodiment, corresponding to the broadest scope of allowed claim 1, comprises (in a non-exclusive manner) a server and two devices, wherein the server facilitates the download of a digital object in communication with the devices over a network. In addition, one of the devices is configured to perform a requestor role and the other one of the devices is configured to perform a recipient role. It would appear that such an arrangement reflects the broadest interpretation of the claim that will still allow the claimed method to work. If more devices and/or digital objects are present, and/or at least one of the devices is configured to perform both a requestor role and a recipient role, this would result in more complex embodiments each corresponding to a narrower scope, because each will also include all the features of the above simplest embodiment.
47. The digital object comprises one or both of: (a) an instruction to record a TV show, movie, series or program; and (b) an electronic program guide. The digital object also has encapsulated in it addresses from which an address of the device in a recipient role can be determined by the server. Consistently with the Opponent’s Summary, I will label these with (c), and as the Opponent puts it, “[t]herefore, the digital object could contain: (a)+(c), (b)+(c), or (a)+(b)+(c)” (OS at [25]).
48. According to the claimed method:
· the device in a requestor role sends the digital object to the server;
· the server determines the address of the device in a recipient role from item (c); and
· the server stores the digital object on the server, so that the device in a recipient role can download the digital object as it connects to the server at predetermined intervals.
How does the scope of proposed claim 1 compare?
49. The scope of proposed claim 1 will be broader than the scope of allowed claim 1 if some of the limitations that are present in the latter claim are missing or are broadened in proposed claim 1. I have already provided some discussions of the limitations of proposed claim 1 when considering whether it is a true product claim. Based on those discussions, I can conclude that some particular actions are defined as limiting to the scope of proposed claim 1 and, on purposive construction, these actions do not appear to be imposing broader limitation than those imposed by the method steps of allowed claim 1 as listed in the dot-points in the previous paragraph.
50. Regarding some wording differences, I note that proposed claim 1 does not include any reference to “devices configured to perform a requestor role and/or a recipient role”. However, as also noted by the Opponent (see OS at [25.3] and [25.4]), the body of the Specification does not provide definitions for “requestor role” or “recipient role”. Hence, it would appear that the sole purpose of the roles, as they are defined in allowed claim 1, is to distinguish the device that sends the digital object to the server (i.e. the device in a requestor role) from the device that will connect to the server to download the digital object (i.e. the device in a recipient role). In other words, one of the devices is configured to send the digital object to the server, the other one is configured to connect to the server to download the digital object. No further limitations to the devices are imposed by the feature that the “devices [are] configured to perform a requestor role and/or a recipient role”. In proposed claim 1, the same functions are performed, respectively, by the first device and the second device, which means that the first and second devices are implicitly “configured to perform a requestor role and/or a recipient role”.
51. In addition, the two “devices” of allowed claim 1 can clearly be, respectively, a “mobile electronic device” and “electronic device capable of recording video in a digital format” as defined in proposed claim 1, and this change has the effect of narrowing, not broadening, the scope in comparison with the scope of allowed claim 1.
52. As I already alluded to, it may potentially be argued that the first device (the equivalent to the device in a requestor role) is not part of the defined computing system due to its introduction by the expression “at least one software application executable on a first mobile electronic device” (underlining added). However, as I also already discussed, the digital object must have been sent to the server by the software application. Hence, the software application must have been executed and this, on purposive construction, must have happened on the first device. Therefore, even if the first device may not necessarily be part of the defined computing system, I consider that the need for its existence is still a limitation of proposed claim 1.
53. The digital object and its content as defined in proposed claim 1 also does not appear to be imposing broader limitations in comparison to those defined in allowed claim 1. The Opponent accepts “item (d) to have a similar scope as item (a)” and for simplicity adopts the label (a) for both items (a) and (d) (see OS at [27.3] as quoted earlier). The Opponent also accepts “item (e) to have similar scope as item (c)” and for simplicity adopts the label (c) for both items (c) and (e) (see OS at [27.4] as quoted earlier). For consistency, I will follow the same labelling. Since in proposed claim 1 “the digital object [is] encapsulating” item (a), it follows that “the digital object [is] comprising” item (a) as required by allowed claim 1. While it could be argued that item (b), i.e. “an electronic program guide”, as present in allowed claim 1, is not defined at all in proposed claim 1, the expression “the digital object comprising one or both of: (a) … , and (b) … ;” makes it clear that the presence of item (b) is not necessarily limiting to the scope of allowed claim 1. The presence of item (a) without item (b) is clearly within the scope of allowed claim 1.
54. In addition to their argument that proposed claim 1 is a product-type claim and hence it cannot be within the scope of allowed claim 1, which is a method-type claim, the Opponent argues that:
“30. As discussed in the Cohen Declaration in paragraphs 19 and 20, both opposed [i.e. proposed] claims 1 and 2 do not recite storing the digital object in the server, rather items (a), (c), and (f) (which are originally contained in the digital object) are stored in the server.” (OS, underlining added)
55. It appears that most of the Opponent’s arguments on that point are provided with respect to proposed claim 2, most likely because the Opponent considers proposed claim 1 to be a product-type claim, in which the action of storing the digital object in the server cannot be defined at all. Following my earlier finding that proposed claim 1 is not actually a true product claim, I consider that the Opponent’s arguments on the point of storing, or not, of the digital object are equally applicable to proposed claim 1, because its language is very similar to the language of proposed claim 2.
56. I note that the Opponent puts a lot of emphasis on the difference between:
·“storing the at least one digital object on the server” (as in allowed claim 1) and
·“storing/stores the device address information, the at least one instruction and content address information [i.e. items encapsulated in the digital object] on the server” (as in proposed claims 1 and 2).
57. However, I do not think that this distinction is of such crucial importance for deciding whether proposed claims 1 and 2 require that the digital object is stored on the server. It is well established that a patent claim must be read and construed as a whole, and each one of proposed claims 1 and 2 includes the expression:
“… the at least one second device connects to the server at predetermined intervals to download the at least one digital object.” (underlining added)
58. In my opinion, this is an important expression as it clearly indicates that the digital object must be stored on the server, otherwise it would not be possible for the digital object to be later downloaded from the server. The Opponent also acknowledges the existence of the above expression in question, but their interpretation, based on Cohen, is somewhat confusing:
“79. The construction of opposed [i.e. proposed] claim 2 is discussed in paragraphs 27 to 30 above. In particular, opposed claim 2 recites that at least one second device connects to the server at predetermined intervals to download the digital object. This is shown in Exhibit KC-8 and paragraphs 23 to 26 of the Cohen Declaration.
80. As noted in the Cohen Declaration in paragraph 24, it is unclear how the digital object can be downloaded when the digital object is not itself stored in the server. As discussed in the Cohen Declaration, ‘it is not possible to simply download a digital object when only the constituent parts of that digital object are stored in the server.’” (OS, underlining added)
59. While Mr Cohen’s statement is quite understandable (after all, it is not his task to construe the claim), I am of the view that such an apparent inconsistency in the claim language can easily be resolved by construing the expression in question as clearly implying the storing of the digital object on the server so that later it could be downloaded.
60. In summary, I consider that proposed claim 1 is within the scope of allowed claim 1.
Is proposed claim 2 within the scope of allowed claim 1?
61. Proposed claim 2 is undoubtedly a method claim and, as I already mentioned, its wording closely resembles that of proposed claim 1. Hence, all my considerations and conclusions about the wording differences between proposed claim 1 and allowed claim 1 are also applicable to the wording differences between proposed claim 2 and allowed claim 1.
62. The Opponent argues:
“70. On the other hand, opposed [i.e. proposed] claim 2 is infringed by a server that stores items (a), (c), and (f). A server storing items (a), (c), and (f) as recited in opposed claim 2, however, does not infringe original [i.e. allowed] claim 1, as such a server does not store the digital object as required by original claim 1.
71. Further, the server storing items (a), (c), and (f) as recited in opposed claim 2 also does not infringe the second or third aspect of original claim 1, as such a server does not store the digital object or item (b) [i.e. an electronic program guide] as required by the second and third aspects of original claim 1.
72. Answering the test of allowability of amendment, the Opponent submits that opposed claim 2 would make a server (which stores only items (a), (c), and (f)) an infringement which would not have been an infringement against original claim 1.
73. Therefore, in accordance with the Patent Manual of Practice and Procedure and Australian case law, an amendment to recite a server that stores items (a), (c), and (f), without the digital object, would not be allowable as the scope of opposed claim 2 has been shifted in relation to the scope of the first aspect of original claim 1.
74. Further, an amendment to recite a server that stores items (a), (c), and (f), without the digital object or item (b), would not be allowable as the scope of amended [i.e. proposed] claim 2 has been shifted in relation to the scope of the second and third aspects of original claim 1.” (OS, underlining in the original, italic added)
63. I am not entirely sure about the legal basis of the statements in OS paragraphs [73] and [74] above. The mere fact that a proposed claim has its scope “shifted in relation to the scope of [particular] aspect/s of [the] original claim” says very little about whether that proposed claim is within the scope of the original claim or not. In any event, I have already discussed the point of storing the digital object and concluded that each one of proposed claims 1 and 2 does require the storing of the digital object on the server. In addition, I have already noted that not storing item (b) (i.e. an electronic program guide), or indeed item (b) not being contained within the digital object, is clearly within the scope of allowed claim 1.
64. I conclude that proposed claim 2 is within the scope of allowed claim 1.
Allowability of the proposed amendment – summary
65. In my preliminary considerations, I noted that if proposed claims 1 and 2 each in substance fall within the scope of allowed claim 1, the requirements of s 102(2)(a) will be satisfied. Based on my claim interpretation, I have concluded that each one of proposed claims 1 and 2 is within the scope of allowed claim 1, hence the requirements of s 102(2)(a) are satisfied. Since no other grounds are advanced, the proposed amendment is allowable.
CONCLUSION AND COSTS
66. I have found that the proposed amendment is allowable. It follows that the amendment should be allowed.
67. It is a normal practice that the costs should follow the event, and the submissions of both parties are broadly along the same line. In the present case, I can see no reasons to divert from this practice. The Instant Opposition is unsuccessful; hence I will award costs according to Schedule 8 against the Opponent.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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