Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd - [2018] APO 83

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2018] APO 83

Patent Application: 2013101518

Title:Remote Content Download

Patentee:  The Advanced Technology Group Pty Ltd
Opponent:  FOXTEL Management Pty Ltd
Delegate:  Isaac Tan
Decision Date:  12 November 2018
Hearing Date:  16 August 2018 in Canberra, ACT

Catchwords: PATENTS – opposition under section 104 – allowability of amendments under section 102(2)(a) and 102(2)(b) – opposition governed by the Patents Act 1990 as amended by the ‘Raising the Bar’ provisions – opponent carries the onus of proof – construction of claims – ‘for use’, ‘when used’, ‘suitable for’, ‘capable of’, ‘comprising’, ‘at least one’ – a claim to an article per se would be infringed by the use of that article – whether a feature would be ‘inherent’ or ‘implicit’ – invention relates to a computer system or method of facilitating a digital content download – amended claims result in broadening the scope of the claims of the specification before amendment – one claim lacks clarity, but does not arise ‘as a result of the amendment’ – lack of support not established – opposition is successful – amendment refused – further opportunity to propose suitable amendments allowed – costs awarded against the patentee

Representation: Patentee:
Joseph Seisdedos, Patent Attorney of Foundry Intellectual Property Pty Ltd
Colin O’Brien of The Advanced Technology Group Pty Ltd
Opponent:
Guy Tucker, Patent Attorney of Spruson & Ferguson

Januar Yap, Patent Attorney of Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013101518

Title:Remote Content Download

Patentee: The Advanced Technology Group Pty Ltd
Date of Decision: 12 November 2018
DECISION
The opposition is successful.
I refuse the amendments. The Advanced Technology Group Pty Ltd is allowed two (2) months from the date of this decision to propose amendments to address the issues raised in the substantive opposition.
Costs are awarded against The Advanced Technology Group Pty Ltd.
REASONS FOR DECISION
Background

Innovation Patent Application 2013101518 (Patent) was filed on 21 November 2013 in the name of ICETV PTY LIMITED. On 5 June 2017, the decision Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd (earlier decision) was issued pursuant to section 101M of the Patents Act 1990 (the Act). The history of the patent up to 5 June 2017 is outlined in the earlier decision.[1]
[1] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [2]-[6].
In the earlier decision, Foxtel Management Pty Ltd (Opponent) was successful on the ground of section 40(2)(a), section 40(3), Novelty and Innovative Step, and The Advanced Technology Group Pty Ltd (Patentee) was allowed a period of two months from the date of the earlier decision to propose suitable amendments.
The patentee proposed amendments on 7 August 2017. On 10 August 2017, a copy of the proposed amendments was forwarded the opponent with an invitation to provide comments pursuant to regulation 10.2(7) of the Patent Regulations 1991 (the Regulations) within twenty one days. The opponent’s comments were filed on 31 August 2017.
On 27 October 2017, the parties were informed that a Delegate of the Commissioner had considered that the request for leave to amend is allowable, and advertised in the Supplement to the Australian Official Journal of Patents dated 9 November 2017 for a period of two months.
On 9 January 2018, the Opponent filed a Notice of Opposition under regulation 5.10(1). The Statement of Grounds and Particulars (SGP) was filed on 9 February 2018, and Evidence in Support on 9 April 2018. Evidence in Answer was not filed.
On 2 May 2018, the Patentee’s representative was changed from IP Solved (ANZ) Pty. Ltd., to Foundry Intellectual Property Pty Ltd.
The Patent expired on 16 June 2018.
A hearing was held on 16 August 2018, in Canberra, ACT.
The specification
An overview of the alleged invention, was outlined in the earlier decision, and has been reproduced below:[2]
[2] Ibid [7]-[13].
According to the specification as amended on 19 September 2014, the alleged invention is described as relating to a method of facilitating a digital content download via a server. The specification defines digital content as:
·     a listing of most popular TV shows, movies, series or programs;
·     a user-specific request to mark a particular TV show, movie, series or program as a favourite;
·     a user-specific listing of favourite TV shows, movies, series or programs;
·     an instruction to download a digital image, digital audio file, digital show, movie, series episode or program from a network location; and/or
·     a request to list receiving devices for a specific user.
The alleged invention is performed via a plurality of devices configured to operate in a “requestor” and/or “recipient” role and comprises one or more of:
·     an IP enabled (networked) digital television;
·     a set-top box, media centre, digital video recorder, or personal video recorder associated with a television;
·     a general purpose computer;
·     a portable media device; and/or
·     a mobile device.
In a “requestor” role, the device is operable to display a list of digital content files that are selectable for download and when selected by a user, sends to a remote server a request to download said digital content files to device operating in a ”recipient” role. The device in a recipient role will automatically connect to the remote server at predetermined intervals to receive the download instructions and to download the digital content files. The operation and functionality of the devices are controlled via an application programming interface (API) for an interactive widget.
In one embodiment, the interaction between the components of the alleged invention is shown in Figure 10 which I have reproduced below:
As shown in the system (10) of Figure 10, digital content files (52) are stored on a remote storage device (50) in communication with the server (12) via the internet (19). An electronic TV guide is also contained in the server memory (16) and is personalised for each user based on each user’s selections and settings. In order to access the system, a widget (20) is installed on a user device which may be a digital television (14) that may be an IP enabled (networked) digital television or a standard television associated with a digital set-top box, a personal video recorder or media player. Alternatively, the user device may also comprise a personal computer (17), or a mobile device (18). The user devices can operate as the requesting device or the recipient device or both.
Figure 11 reproduced below, is an example of the widget interface.
As seen above, the interface (51) allows a user to select a digital content file (52) on a device operating as a requesting device. Each digital content file is selectable using a link (54) which when selected, sends a download request that includes an address of the selected file to the server. Generally, the address is in the form of a uniform resource locator (URL) that identifies the remote storage device and the filename of the selected digital content file. The interface also allows multiple files to be selected (56) and recommendations are provided via a “Virtual Channel” feature (58).
The law
The request for examination of the patent was filed on 23 December 2013. As a consequence, substantive amendments to the Act bought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present application.
Typically, in the case of an opposition under section 101N(4) of the Act, the standard of proof that would apply would be the balance of probabilities. That is, I must accept the application if I am satisfied on the balance of probabilities that a ground does not exist for the revocation of an innovation patent. If I am not so satisfied, then I can revoke the patent either wholly or so far as it relates to a particular claim.
However in Gabriele Ludwig v The Arizona Board of Regents on behalf of The University of Arizona [2018] APO 55, the delegate noted:[3]
The standard of proof that applies to section 104 oppositions proceeding under the RTB Act has not been expressly stated in the Act. However, as reasoned by the delegate in Cytec Industries Inc v Nalco Company [2018] APO 4 at [18]: “it is a logical inference that the standard required is the balance of probabilities (consistent with the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof”.
[3] Gabriele Ludwig v The Arizona Board of Regents on behalf of The University of Arizona [2018] APO 55 at [17] quoting Cytec Industries Inc v Nalco Company [2018] APO 4 at [18] citing CSR Building Products Limited v United States Gypsum Company [2016] APO 41 at [18].
Grounds
The SGP lists the following grounds:
Ground 1: Section 102(2)(a)
The provisionally allowed amended claims of the specification do not in substance fall
within the scope of the claims of the specification before amendment.
Ground 2: Section 102(2)(b)
The provisionally allowed amendment does not comply with subsection 40(2) or (3) of
the Patents Act 1990.
At the hearing, the Opponent pressed both grounds.
Evidence
The sole piece of evidence in the present matter is a declaration by Keith David Cohen (Cohen) dated 6 April 2018 with exhibits KC-1 to KC-9.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, the skilled addressee was identified by Kiefel J as:[4]
A person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.
[4] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481; 71 IPR 615 at [16].
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:[5]
He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.
[5] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70].
I have previously considered Mr Cohen’s background,[6] and am still of the view that Mr Cohen may be regarded as a person who is skilled in the relevant art.
[6] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [21]-[24] quoting H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228; Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451.
Section 102
Section 102 of the Act deals with what amendments are not allowable, and provides as follows:
(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) or (3).
The ‘relevant time’ for the purposes of section 102(2)(b) the Act is after certification in accordance with section 101E(1)(a). Therefore, as the present specification had been certified when the amendments were requested, the requirements of Section 102(2) apply. It is plain from the wording of section 102(2) that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment.[7] Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
[7] Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969; (1994) AIPC 91-056 at [24] – [26].
In Bristol-Myers Squibb Company v Apotex Pty Ltd, Yates J conveniently laid out the relevant principles applying to section 102:[8]
38 Consideration of the prohibition in s 102(1) of the Act requires a comparison between what would be claimed as a result of the proposed amendment and what is disclosed in the specification as filed. The steps involved in this comparison were described in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 at 466C-E. As there emphasised, the key point is that the words “as a result of the amendment” in s 102(1) are not to be confused with the expression “after the amendment”. The amendment is identified by considering the specification as it stands with how it would stand after the proposed amendment. It is only by that step that one can determine what matter results from the amendment. Once that is determined, the next step is to read the specification as a whole (that is, amended in the manner proposed) and to compare it with what is “in substance disclosed” in the specification as filed. If by reason of the amendment proposed, and for no other reason, the specification would then claim matter not in substance disclosed in the specification as filed, the amendment would not be allowable.
39 As to the notion “in substance disclosed”, the Full Court in ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 at [118] referred to the close relationship between that notion and the test for fair basis, saying that it would be a rare case where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification: see also Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2000) 49 IPR 321 at [18] where the two requirements were said to be “very similar” . In Ethyl Corporation’s Patent [1972] RPC 169 at 195, Lord Denning MR said that the requirements were “virtually the same”, although in Lubrizol the Full Court thought it unnecessary to go that far. It is thus expedient to test whether matter is “in substance disclosed” in the specification as filed by asking whether there is a “real and reasonably clear disclosure” of that matter.
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) 127 FCR 561 at [29]; W J Voit Rubber Corp’s Application, Re (1965) AOJP 1752 at 1754-1755.
[8] Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814; 87 IPR 516 at [38]-[40].
Where an amendment seeks to replace claims to one aspect of the invention with claims directed to another aspect of the invention, this may result in broadening the scope of the claims. For example, a claim to an article per se would be infringed by the use of that article. Consequently, an amendment to claim the use of the article (in a manner already disclosed in the specification), would be a narrowing of the claim which would not make an act an infringement that was not an infringement previously.[9] However, the reverse situation would not be allowable. A claim to the use of an article is not infringed by the article per se and therefore an amendment to insert a claim to the article per se would not be allowable.[10]
[9] Farbwerke Hoechst A.G.'s Application (1972) RPC 703.
[10] Boehringer Ingelheim International GmbH v Commissioner of Patents [2001] FCA 647; 52 IPR 529 at [42].
The relevant parts of section 40 of the Act, as they apply to the present case, are set out below:
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The law on support is well established and has been set out in a number of recent decisions.[11] The provisions of section 40(3) were considered in detailed by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR), who having reviewed several UK and EPO decisions and having regard to the guidance they provided, formulated a test in order to determine whether a claim is supported by the description.[12]
[11] See generally Evolva SA [2017] APO 57; Inter Aqua Advance A/S v Bent Urup Holding ApS [2018] APO 43; Stephen Anderson v K-fee System GmbH [2018] APO 31; Fisher & Paykel Healthcare Limited v ResMed Limited [2018] APO 67; YWIDAG-Systems International Pty Limited v FCI Holdings Delaware, Inc. [2018] APO 75.
[12] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [115].
The support requirement was first considered by the Federal Court of Australia in Encompass where Perram J did not have regard to the approach formulated in CSR, but instead directed attention to the two elements said by the Explanatory Memorandum to be broadly encompassed by the term ‘support’. That is, there must be (a) a basis in the description for each claim and (b) the scope of the claims must not be broader than is justified by the extent of the description, drawings or contribution to the art.[13]
[13] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, [170] citing Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; 217 CLR 274.
In relation to clarity, this does not mandate the use of precise and absolute terms in the claims. As noted in Flexible Steel Lacing Company v Beltreco Ltd:[14]
Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.
[14] Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331 and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229.
With regard to what constitutes ‘a workable standard’, consideration should be given to whether a claim provides a reasonable basis by which a third party could, without difficulty, determine whether or not what he proposes to do falls within the scope of the claim. A claim will lack clarity if the standard specified by the terms of the claim would not permit a third party to ascertain whether an act would fall within the scope of the claim.[15]
[15] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60.
Rules of Construction

The rules of construction are well established. In Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd, Stone J set out that:[16]
[i]t is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim.
[16] [2006] FCA 261, [16] citing Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; Decor Corporation Pty Ltd (formerly Brian Davis & Company Pty Ltd) & Anor v Dart Industries Inc. [1988] FCA 682; Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890.
If the claims are clear and unambiguous, ‘[i]t is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification’.[17]
[17] Ibid [17] citing Welch Perrin &Co. Pty. Ltd. v. Worrel [1961] HCA 91. See also Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318, [39]; Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) [2006] FCA 1787; 71 IPR 46.
Moreover, as noted by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[18]
the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification.
[18] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118] citing Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 at [67].
The original claims
Prior to amendment, the patent contained five claims (original claims). These claims are as follows:
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, 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.
Claim 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.
Claim 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.
Claim 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.
Claim 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.
A discussion of how the original claims have been construed, are set out in the earlier decision.[19] Relevantly, the earlier decision notes that claim 1 utilises the term ‘comprising’ as being used in a non-exhaustive sense,[20] in relation to what the digital object is said to contain, being ‘one or both of: (a) an instruction to record a TV show, movie, series or program, and (b) an electronic program guide’. It is worth noting, for reasons that will become apparent later, that the digital object of claim 1 also includes (c) addresses of devices in a recipient role. In any event, I consider that the digital object may include more than what is listed under (a) or (b).[21]
[19] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [25]-[37].
[20] Ibid [29]-[31] citing Asahi Kasei Kabushiki Kaisha v WR Grace and Co [1991] FCA 530; 22 IPR 491 at [514]-[515]; General Clutch Corporation v Sbriggs Pty Ltd [1997] FCA 499; (1997) 38 IPR 359 at [376]; Frensnius Medical Care Australia Pty Limited [2005] FCAFC 220; 67 IPR 230 at [56]-[64].
[21] Ibid [31].
The Opponent also submitted, which I agreed with, that there are three aspects of original claim 1, as follows:[22]
a first aspect of claim 1 relates to a first device (i.e., a device in a requesting role) sending a digital object in the form of an instruction to record a TV show, movie, series or program ... to the server, the server determining a second device (i.e., a device in a recipient role) from an address in the digital object, and the server storing the digital object until the second device connects and downloads the digital object.
a second aspect of claim 1 relates to a first device (i.e., a device in a requesting role) sending a digital object in the form of an electronic program guide ... to the server, the server determining a second device (i.e., a device in a recipient role) from an address in the digital object, and the server storing the digital object until the second device connects and downloads the digital object.
a third aspect of claim 1 relates to a first device (i.e., a device in a requesting role) sending a digital object in the form of both an instruction to record a TV show, movie, series or program and an electronic program guide ... to the server, the server determining a second device (i.e., a device in a recipient role) from an address in the digital object, and the server storing the digital object until the second device connects and downloads the digital object.
[22] Ibid [35].
The opponent has taken a similar view in their submissions for the present opposition, with the exception that the digital object in all three aspects includes (c) - addresses of devices in a recipient role.[23]
[23] Opponent Submissions, [27].
There was some discussion in relation to element (c) in the earlier decision in relation to the evidence on file.[24] It was determined that:[25]
According to the specification and shown in Figure 12, once a user selects a digital object to be downloaded (82), the user will also select a recipient device to receive said digital content file. The recipient devices are listed under the user’s account (86). Once a selection is made, download instructions are generated in the server memory identifying the digital content to be downloaded, and the selected recipient device (88).
To my mind, this correlates with examples provided by Mr Cohen of how a device could be remotely controlled by another device via a server.
It follows that I am satisfied that the specification provides a disclosure of encapsulating an address in at least one digital object in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.
[24] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [61]-[67].
[25] Ibid [64]-[67].
This example is shown in Figure 12, reproduced below:
The proposed amendments
The claims, as proposed to be amended, are as follows:
Claim 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 broadcast 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 broadcast 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 instruct ion, and storing the at least one instruct ion 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 instruction.
Claim 2
A method for a computer system facilitating a digital object download in communication with a plurality of devices 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 broadcast 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 broadcast 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 at least one instruct ion 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 instruction.
Claim 3
A method for a computer system, according to claim 2 wherein, 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.
Claim 4
A method for a computer system, according to claim 2 wherein, the instruct ion identifies at least one of:
a) a listing of most popular broadcast shows, movies, series or programs;
b) a user-specific request to mark a particular broadcast show, movie, series or program as favourite;
c) a user-specific listing of favourite broadcast shows, movies, series or programs;
d) an instruct ion 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.
Claim 5
The method of 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 broadcast show, movie, series or program utilising the content address information.
Amended claim 1 is now directed towards ‘[a] computing system for facilitating a digital download over a network’. Amended claim 2 is directed towards ‘[a] method for a computer system facilitating a digital object download in communication with a plurality of devices over a network’. It is worth nothing that there is little difference in scope between amended claim 1 and 2 (collectively ‘the amended claims’). In contrast, original claim 1 is directed towards ‘[a] method of a server facilitating a digital object download in communication with a plurality of devices over a network’.
Where a claim is directed to a product or apparatus, the term ‘for’, ‘for use in’, ‘used to’, ‘used for’ and the like place a limitation on what is claimed only to the extent that it must be suitable for the specified purpose. In this respect, where the term is used in the form ‘Apparatus for…’, this is merely indicative of the environment in which it is intended to use the apparatus, and do not limit the apparatus to use solely in that environment.[26] As a consequence, a claim of this form is to be construed as a per se claim to the apparatus, albeit having a functional capability in the specified environment.
[26] Thurston Catton's Application (1978) AOJP 3666; L'Aire Liquide Societe Anonyme pour L'Etude et L'Exploitation des Precedes George Claude, (1932) 49 RPC 428.
The amended claims define a computing system or method with steps to be performed by a number of components. I will need to construe the word ‘for’ in context of the claims and specification as a whole. From a reading of the specification I am satisfied that the computing system or method, as defined in the claims, is at least restricted to a specific environment. This is made clear throughout the specification, and the preamble of the amended claims, where the environment within which it operates is specified as to facilitate the downloading of a digital object over a network.[27] However it does not follow that the operation of the claimed components, is limited such that the downloading of a digital object over a network must be facilitated. Rather, the components simply need to be intrinsically capable of doing so,[28] albeit with one caveat. The amended claims refer to the software application as being ‘executable’ on a first electronic device and ‘arranged to send at least one digital object to the server via the network’. Therefore the software application must be able to perform this action, and not merely be capable of doing so. In a similar vein, it would appear that the digital object is an extension of the how the software application functions, and will therefore need to be able to encapsulate at least the integers specified in the amended claims.[29]
[27] Cf Melbourne Water Corporation v Green Edge (IPCO) Pty Ltd [2009] APO 26 at [28].
[28] Machinery Developments Limited v Sealed Air Corporation [2003] APO 22 at [14].
[29] See generally Davies v Lazer Safe Pty Ltd [2018] FCA 702 at [224]-[239].
The components of the amended claims consists of 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. In the earlier decision, I defined what a device in a requestor role and recipient role to be,[30] and that the alleged invention could be performed with just one device operating in both a requestor role and a recipient role.[31] In the amended claims, it is clear that the first and second mobile electronic devices are equivalent, respectively, to a device operating in a requestor and recipient role.
[30] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [27].
[31] Ibid [37].
Moving on to the digital object, it is worth noting that the digital content may now include a ‘broadcast show’. This I will address later. The digital object is said to encapsulate an instruction to record, device address information identifying the at least one second electronic device, and content address instruction. The recording instruction, is similar in scope to (a) as defined in the original claims. The device address information, is analogous to (c) as I have construed it in the original claim. Once the digital object is received by the server, the server is said to store the at least one instruction and content address information, until the at least one second device connects to the server at predetermined intervals to download the at least one instruction. It is worth noting that the at least one instruction, is just a portion of the integers which forms the digital object. In contrast, the original requires that the digital object, in its entirety, is downloaded.
As I briefly touched on above, there is a question as to what is defined by a ‘broadcast show’. The specification is silent on this specific term, but does make reference to ‘broadcast’ in a number of locations, as metadata within a TV guide relating to broadcast television programs,[32] as the date and time a selected program or series is broadcasted,[33] and in relation to live broadcast television programs.[34] The television may be an IP enabled networked television.[35]
[32] Specification, Page 9 Lines 17 – 18.
[33] Ibid Page 11 Lines 18 – 20.
[34] Ibid Page 12 Line 1.
[35] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [8].
According to the Macquarie Dictionary, ‘broadcast’ within the context of television and radio, is defined as ‘the broadcasting of sound and images, a radio or television program, or a single period of broadcasting’. The Cambridge Dictionary further states that the act of broadcasting may be carried out using radio waves, or over the internet.
In this respect, it is clear that the term ‘broadcast show’ simply refers to a program or series, which is transmitted via electromagnetic waves or digitally over the internet. A radio program would be well understood, to be a show which does not include a visual component. In contrast, a TV show would need to include at least a visual component.
Section 102(2)(a)
The server and electronic device
As an initial point, the Opponent submits that as original claim 1 is directed to a method of a server facilitating a digital object download, and that (emphasis in quote):[36]
the scope of a method claim to use a server is limited to the server when in use only, but the scope of such a method claim does not extend to when the server is not in use. Therefore, a method claim could only be infringed by the server when the server is in use to perform the method, but not when the server is not in use.
[36] Opponent Submission, [43].
To illustrate, the Opponent presented an analogy comprising a pair of wireless headphones and a mobile phone, where the two components interact with each other in a specific way. In this respect, the scope of a claim which describes this interaction extends only to operation of the two components while in use. Conversely, said claim would not be infringed if, for example, a pair of wireless headphones and a mobile phone was available for sale in a store, separately, in its inactive state. However, infringement would occur where a claim is directed to a system ‘for’ an interaction which comprises a pair of wireless headphones and a mobile phone.
Referring to amended claim 1, the Opponent submits that the scope of this claim would extend to a server when in use and when the server is not in use, and ‘[t]herefore, a computing system per se and a server per se in substance fall within the scope of amended claim 1.’[37] Similarly, the Opponent submits that the same situation would arise with the at least one electronic device.[38] In this respect, the Opponent’s position is a server or a second electronic device would, in its inactive state, infringe amended claim 1, but could not infringe original claim 1.[39]
[37] Ibid [46].
[38] Ibid [47].
[39] Ibid [46]-[48].
The Patentee disagrees, stating that the Opponent’s argument is non-sequitur as:[40]
a person having a server (and not taking any other features of the claim) and/or having a first mobile device (and not taking any other features of the claim) or a second device (and not taking any other features of the claim) would not infringe amended claim 1
[40] Patentee Submission, [51].

As I noted above, the amended claims require that the components of the claims simply need to be intrinsically capable of facilitating a digital object download over a network, subjected to a caveat related to the software application and digital object. On this point, I do not agree with the Opponent that the amended claim would be infringed, by a server per se and/or an electronic device per se. At the very least, all of the integers of the amended claim must be present. Moreover, the amended claims refer to the software application and digital object as having to perform a specific action, and must be able to do so, rather than merely be capable of doing so.
In my view, the first aspect of original claim 1 is the closest example to the amended claims, and is provided as follows:[41]
a first aspect of claim 1 relates to a first device (i.e., a device in a requesting role) sending a digital object in the form of an instruction to record a TV show, movie, series or program ... to the server, the server determining a second device (i.e., a device in a recipient role) from an address in the digital object, and the server storing the digital object until the second device connects and downloads the digital object.
[41] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [35].
In the amended claims, the first device sends, via a software application, a digital object encapsulating an instruction to record, device address information of the second device, and content address information. The server determines, from the digital object, the device address information, the content address information, and the instruction. The server stores the at least one instruction and content address information until a second device connects to the server at predetermined intervals to download at least one instruction.
As an initial point, it is worth nothing that the original claim makes no reference to a software application. However, it would not be an unreasonable proposition that computer hardware would not be operable without software to instruct said computer hardware to perform certain tasks.[42] In essence, within the present context, the presence of a software application is inherent and would be implicit in the original claims.
[42] See, eg,. Trading Technologies International, Inc [2017] APO 13 at [31]; Apple Inc. [2018] APO 54.
With the above understanding in mind, it appears clear to me that the hardware components of the amended claims perform similar functions to the corresponding counterpart in the original claims. Specifically, the device in the requestor role sends the at least one digital object to the server, in the same manner as the first mobile electronic device. The server determines the address of at least one device in a recipient role from addresses encapsulated in the at least one digital object, in the same manner as the server of the amended claims determining the device address information of the at least one second electronic device. Lastly, the at least one device in the recipient role connects to the server at a predetermined interval, to download certain information from the server in a similar manner to the at least one second electronic device of the amended claims. However this is where the similarity ends.
The Digital Object
Turning to the issue of the digital object, I have made a comparison above between what the digital object encapsulates in the original claims and the amended claims. I see two ways forward at this point, which I will describe below as a first interpretation and a second interpretation. To best illustrate my point, it is useful to set out the digital object into three distinct steps. In original claim 1:
·Step 1 relates to sending information, specifically a digital object, from a device in a requestor role to the server.
·Step 2 involves storing the digital object on the server.
·Step 3 involves a device in a recipient role, connecting to the server at predetermined intervals to download the digital object.
In amended claim 1 and 2:
·Step 1 is analogous to step 1 of original claim 1.
·Step 2 involves storing certain information from the digital object on the server. Specifically, the ‘at least one instruction’ and ‘content address information’.
·Step 3 requires that a second electronic device connects to the server at predetermined intervals to download the ‘at least one instruction’.
As an initial point, it is worth pointing out the similarities and differences of the information encapsulated by the digital object between the original and amended claims. The recording instruction, of the amended claims, is similar in scope to (a) as defined in the original claims. The device address information, of the amended claims, is analogous to (c) in the original claim. Once the digital object is received by the server, the server is said to store the at least one instruction and content address information, until the at least one second device connects to the server at predetermined intervals to download the at least one instruction. It is worth noting that the at least one instruction, is just a portion of the integers which forms the digital object. In contrast, the original requires that the digital object, in its entirety, is downloaded.
The original claim define that the digital object comprises ‘an instruction to record a TV show, movie, series or program’ and/or ‘an electronic program guide’. In contrast, the digital object of the amended claim encapsulates at least one of ‘an instruction to record’, ‘address information of the second electronic device’ and ‘information identifying the location of content’. It is worth noting that in the original claims, the contents of the digital object is used in a non-exhaustive sense. That is, the digital object may include other additional elements other than what is listed within the claim.[43] However in the amended claims, the digital object only includes what is listed. It follows that although, for example, the ‘address information of the second electronic device’ and ‘information identifying the location of content’ was not an explicit limitation of the original claim, the scope of the digital object is such that it may incorporate these two integers.
[43] Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26; 129 IPR 615 at [31].
This leads me to my next point. In the original claim, the digital object, in its entirety, is stored on the server. Subsequently, the digital object, in its entirety, is downloaded by the device in a recipient role. Consequently, where the digital object also encapsulates other elements than that listed, all of these additional elements must also be downloaded by the device in a recipient role. However in the amended claim, it is only the instruction to record and content address information that is stored on the server, and only the instruction to record subsequently downloaded. That is, only a fragment of the digital object needs to be stored and downloaded.
Alternatively, with the second interpretation, the digital object can be construed as being constructed from certain information. Particularly in relation to original claim 1, the digital object must contain at least ‘an instruction to record a TV show, movie, series or program’, and ‘device address information’. It is worth noting that, as outlined above, the digital object is transmitted, stored, and downloaded without any changes made to the information it contains.
However in the amended claims, only the ‘at least one instruction’ and ‘content address information’ is stored on the server. Subsequently, only the ‘at least one instruction’ is downloaded. Notably, there is nothing in the amended claims which suggests that the ‘device address information’ is stored, or downloaded.
Briefly, I note that the Opponent’s submission is based off similar reasoning to this alternative interpretation.[44] The Patentee disagreed, and submits that, with a reasonable construction of the claims, the ‘device address information’ would be considered implicit. I do not consider the Patentee’s interpretation to be unreasonable as there are some circumstances in which words may be deleted from a claim without any significant change in meaning.[45] On this point, I note what was discussed in Chrysler Aust. Ltd. v RegieNationale Des Usines Renault, where it was stated:[46]
There is, of course, a considerable force behind the argument that deletion of a limiting clause from a claim would not be allowable under the provisions of sub-section (2) of sec 78 [1952 Act: sec 102(2)(a) of the 1990 Act corresponds]. But it is also clear that this argument may relate only to real limitations, and should not be necessarily extended to apparent limitations. In particular, one must be careful not to equate the deletion of words with the deletion of limitations, since not all words in a claim impose a limitation.
[44] Opponent Submission, [54]-[79].
[45] AMP Incorporated v Commissioner of Patents (1974) AOJP 3224.
[46] Chrysler Aust. Ltd. v RegieNationale Des Usines Renault (1974) AOJP 4807.
The latter aspect has been extensively dealt with in the decision of the High Court in Farbwerke Hoechst Aktiengesellschaft vormals MeisterLucius & Bruning v Commissioner of Patents 1972 AOJP 3524. The High Court allowed the deletion, from a number of claims, of the words 'of the general formula given in claim 1'. Prima facie, these words have the appearance of a definite and substantial limitation. However, in his decision, Gibbs J pointed out that the question which arises is primarily one of the interpretations of the claims in the light of the specification as a whole.
The original claim 1 and the amended claims both utilise the term ‘at least one’ to refer to the devices or electronic devices, which suggests that there may be a plurality of devices. In this respect, some information must be present which identifies which device is authorised to download the digital object. Although, as the server determines certain information from the at least one digital object, that this information must be stored on the server in some form. However, I have some difficulty with the next step as the amended claims explicitly states that only the ‘at least one instruction’ is downloaded.
Therefore, I do not agree with the Patentee’s construction that information pertaining to ‘device address information’ is implicitly downloaded, holds true.
Where ‘an amendment makes anything an infringement which would not have been an infringement before the amendment’, said amendment would not be allowable under section 102(2)(a).[47]
[47] Farbwerke Hoechst A.G.'s Application (1972) RPC 703; AMP Incorporated v Commissioner of Patents (1974) AOJP 3224.
Based off my first interpretation, it is clear that where only a fragment of a digital object is stored and downloaded, said embodiment would not infringe original claim 1 as it requires that the digital object, in its entirely, is stored and downloaded. However, this embodiment would infringe the amended claims. Consequently, based on this first interpretation, the amendment is not allowable under section 102(2)(a).
In relation to the second interpretation, an embodiment which only requires that the instruction to record is stored and downloaded, without explicitly requiring the device address information, would not infringe original claim 1. However, this embodiment would infringe the amended claims. Consequently, based on this second interpretation, the amendment is not allowable under section 102(2)(a).
For completeness, it is worth nothing that amended claims 3 and 4 corresponds substantially to original claims 2 and 3. Amended claim 5 corresponds to original claims 4 and 5. However by virtue of dependency, the above finding is also applicable to each of the dependent claims.
Broadcast show
Although not raised under s102(2)(a), I believe that the issues in relation to the definition of a ‘broadcast show’ in the amended claims is best dealt under this ground.
As I stated above, it is clear that the term ‘broadcast show’ simply refers to a program or series, which is transmitted via radio waves or digitally over the internet. A radio program would be well understood, to be a show which does not include a visual component. In contrast, a TV show would need to include at least a visual component. It follows that the term ‘broadcast show’ is broader in scope than a ‘TV show’, and consequently the amendment is not allowable under section 102(2)(a).
Conclusion on Section 102(2)(a)
I find that amended claims 1 and 2 do not comply with section 102(2)(a). It follows that the same consideration also applies to all of the dependent claims.
Section 102(2)(b)
Support
In relation to the issue of Support, the Opponent submits that the ‘amended claims appear to have attempted to combine features from two disparate embodiments (i.e., the recording and downloading embodiments), where the disclosure as a whole provides no support for doing so.’[48] The question to be asked here is whether the amended claims lack support and if so, does it arise as a result of the amendment.
[48] Opponent Submission, [81].
The Opponent’s position concerns the definition of a ‘broadcast show’ in the amended claims. Specifically, from the integer ‘content address information identifying the location of at least one of the broadcast show’, which is one of the options which may be encapsulated by the digital object of the amended claims? Previously, I decided that the term ‘broadcast show’ simply refers to a program or series, which is transmitted via electromagnetic waves or digitally over the internet. This may include, for example, internet or radio media programs.
In support, the Opponent refers to the following passage in the specification:[49]
[a]n exemplary interface 51 to select a digital content file 52 on a requesting device is shown in Fig. 11. The interface can be provided on an interactive “widget” 20 or a web browser. Each digital content file 52 is selectable using a “link” 54 that, when clicked, automatically sends a download request that includes an address of the selected file 52 to the server 12. Generally, the address is in the form of a uniform resource locator (URL) that identifies the remote storage 50 and the filename of the selected digital content file 52.
[49] Specification, Page 13 Lines 26–32.
Disagreeing, the Patentee refers to the following passage, which refers to a broadcast TV show (emphasis added by the Patentee):[50]
[a] user can select a single program or an entire series for recording on a digital television 14. A recording record will then be automatically created in the memory 16 at the server 12 to instruct the digital television 14 to record the selected program or series.
The recording record identifies one or more of: the user, the digital television 14 to perform recording, the selected program or series, the channel, date and time the selected program or series is broadcasted. If a series is selected for recording, multiple recording records will be created in the memory 16 – each record corresponding to an episode in that series.
[50] Patentee Submission, [67]; Specification, Page 12 Lines 17-31.
In this respect, the Patentee’s position is that ‘location of a broadcast show’, when read in light of the specification, refers to the location of a digital television which is used to record a broadcast show.
I am inclined to agree with the Patentee. The amended claims utilise the term ‘at least one’ to describe the at least second electronic device. In amended claim 3, the at least one second device is said to comprise at least one of a plurality of different devices.
Consequently, I find that amended claim 1 and 2 are supported. It naturally follows that no support issues arise as a result of the amendments.
Clarity
The Opponent submits that amended claim 1, 2 and 5 lacks clarity for a number of reasons. In relation to amended claim 1 and 2, the Opponent submits that the ‘content address information identify the location of the at least one of the broadcast show, movie, series or program’ lacks clarity for similar reasons raised under lack of support. However, in light of my conclusion above, I do not agree.
In relation to claim 5, the Opponent submits that ‘[a]mended claim 5 recites a digital object being downloaded from the server to a second device and stored in the second device…amended claim 2 recites that items (a) and (f) are stored in the server…it is unclear how the digital object can be stored in the second device when it is not clear how the digital object can be downloaded to the second device.’[51]
[51] Opponent Submission, [93]-[96].
This position is further discussed in the Cohen declaration as follows:[52]
[a]mended claim 5 requires that a digital object is downloaded from the server. However, I note that the digital object is not stored in the server, rather only the instruction and content address are stored in the server. Therefore, it is not clear how the digital object can be downloaded from the server.
Amended claim 5 also requires that the digital object is stored in the second device. However, based on my comments in [the previous paragraph], it is also not clear how the digital object can be stored in the second device when it is not clear how the digital object can be downloaded to the second device.
[52] Cohen, [24]-[25].
The Patentee’s position on this point appears to be that the device address information is implicitly stored by the server, and downloaded. In essence, as long as both the instruction to record and the device address information is stored and downloaded, this would be equivalent to the digital object. The Opponent also submits that claim 5 lacks clarity as it recites ‘optionally recording the at least one of a broadcast show, movie, series or program utilising the content address information’.
However, as outlined above, I did not find the Patentee’s line of reasoning convincing. While this leads to a determination that amended claim 5 lacks clarity, it does not follow that the lack of clarity arises ‘as a result of the amendment’. Original claim 1 clearly states that the digital object is stored on a server, and in one embodiment, is downloaded by a second device.
Consequently, this argument has not been made out.
Conclusion
The proposed amendments do not comply with section 102(2)(a) and section 102(2)(b), and are therefore not allowable. I will accordingly refuse the amendments.
It follows that as a result of the refusal, suitable amendments were not proposed by 7 August 2017 as required by the earlier decision, and it is likely that the patent will be revoked. However the Patentee has made a genuine attempt to overcome the findings of the earlier decision. Consequently, I consider it appropriate to allow the Patentee two (2) months from the date of this decision to propose suitable amendments.[53]
[53] See, eg, Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd [2015] APO 85 where proposed amendments to address the issues raised in an earlier decision Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd [2014] APO 77 was refused, but the applicant was subsequently allowed to propose further amendments.
Costs
The opposition is successful. I see no reason to depart from the usual practice that costs follow the event. I will award costs in accordance with Schedule 8 against the Patentee, The Advanced Technology Group Pty Ltd.
Isaac Tan
Delegate of the Commissioner of Patents