Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd - [2017] APO 26

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2017] APO 26

Patent:2013101518

Title:Remote Content Download

Patentee:  The Advanced Technology Group Pty Ltd
Opponent:  Foxtel Management Pty Ltd
Delegate:  Isaac Tan
Decision Date:  5 June 2017
Hearing Date:  11 April 2017 in Canberra ACT

Catchwords: PATENTS – opposition to an innovation patent under section 101M – novelty under section 7(1) –lack of novelty established – innovative step under section 7(4) – lack of innovative step established – disclosure under section 40(2)(a) - specification is not clear enough and complete enough for the invention to be performed by the person skilled in the art – no enabling disclosure of sending an electronic program guide – support under section 40(3) – claims lack support - opposition is successful – opportunity to propose amendments allowed – costs awarded against the patentee

Representation: Patentee:
Joe Seisdedos, patent attorney of IP Solved (ANZ) Pty Ltd
Caitlin Gallacher, patent attorney of IP Solved (ANZ) Pty Ltd
Colin O’Brien of The Advanced Technology Group Pty Ltd
Opponent:
Januar Yap, patent attorney of Spruson & Ferguson
Guy Tucker, patent attorney of Spruson & Ferguson
Lisa Hill of Foxtel Management Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2013101518

Title:Remote Content Download

Patentee : The Advanced Technology Group Pty Ltd
Date of Decision: 5 June 2017
DECISION
The opposition is successful on the ground of section 40(2)(a), section 40(3), Novelty and Innovative Step.
The Advanced Technology Group Pty Ltd is allowed two (2) months from the date of this decision to propose amendments to address these issues.
Costs awarded according to schedule 8 against The Advanced Technology Group Pty Ltd
REASONS FOR DECISION

The present opposition is governed by the Patents Act 1990 (the “Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the “Raising the Bar Act”).
Background
Innovation Patent Application 2013101518 (the “patent”) was filed on 21 November 2013 in the name of ICETV PTY LIMITED and claims an earliest priority date of 16 June 2009. The present patent is one from a series of related patents 2010100616, 2014101162 and 2015100803 which have all ceased.
The present patent, then represented by A J PARK, was granted on 11 December 2013 and certification was requested on 23 December 2013. The patent was certified on 6 August 2014 and advertised in the Australian Official Journal of Patents on 21 August 2014. Amendments were proposed on 19 September 2014, subsequently allowed, and advertised in the Supplement to the Australian Official Journal of Patents on 5 February 2015.
On 14 December 2015 a Notice of Opposition was filed by Foxtel Management Pty Ltd (the “Opponent”) along with a Statement of Grounds and Particulars and Evidence in Support. Evidence in Answer was not filed.
On 9 June 2016, the patent was assigned to The Advanced Technology Group Pty Ltd (the “Patentee”) and on 24 November 2016, representation was changed to IP Solved (ANZ) PTY. LTD.
A hearing was held on 11 April 2017 in Canberra.
The Specification
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 a digital object 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).
Onus of proof
According to section 101N(4) of the Act, the Commissioner may revoke a patent either wholly or so far as it relates to a particular claim if the Commissioner is satisfied, on the balance of probabilities, that a ground exists for the revocation of an Innovation Patent.
The grounds of the opposition
The grounds of opposition relied on by the Opponent are as follows:
Ground 1: Section 101M(c)
The invention is not a patentable invention because it does not comply with subsection 18(1A)(a), 18(b) or 18(c);
Ground 2: Section 101M(b)
The complete specification does not comply with subsection 40(2) or 40(3).
The Statement of Grounds and Particulars identifies the following: lack of novelty under section 7(1), lack of innovative step under section 7(4), lack of disclosure under section 40(2)(a), lack of utility under section 40 (2)(aa) and lack of support under section 40(3).
At the hearing, the ground for lack of utility was not pressed.
The sole piece of evidence filed in the present opposition is Evidence in Support consisting of a declaration by Keith David Cohen (“Cohen”) with exhibits KC-1 to KC-18.
Submissions were filed by the Opponent on 27 March 2017 and the Patentee on 4 April 2017.
The Claims
The present patent contains one independent claim and four dependent claims which are reproduced below:
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.
Person skilled in the art
The parties referred to KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 where Kiefel J identified the skilled addressee as[1]:
“…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.”
[1] 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 [2000] FCA 980; 49 IPR 225, Finkelstein J stated[2]:
“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.”
[2] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]
The opponent submits[3]:
“Keith David Cohen has a Bachelor in Engineering with expertise in Electronic Engineering. Mr Cohen is a consultant specialising in high-technology product development in the broadcasting, telecommunications, Internet services, and consumer electronic fields. Mr Cohen also has more than 20 years of experience in this field.”
[3] The Opponent’s submission at [12]
The Patentee appears to agree with this identification[4]. I have reviewed Mr Cohen’s background[5] and I am also satisfied with it.
[4] The Patentee’s submission at [15] - [16]
[5] Cohen at [1] – [5]; Exhibit KC-1
Claim construction
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228[6]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
[6] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
In Eli Lilly and Company Limited v Apotex Pty Ltd [2016] FCA 214; 100 IPR 451, Middleton J stated[7]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
[7] Eli Lilly and Company Limited v Apotex Pty Ltd [2016] FCA 214, 100 IPR 451 at [139]
Construction of claim 1
The parties were largely in agreement in the construing of the terms and phases of claim 1.
- Digital Object[8]: The digital object could be (a), (b), or (a) and (b).
- Requestor role[9]: any device that sends at least one digital object to the server
- Recipient role[10]: any device that connects to the server at predetermined intervals to download at least one digital object.
- The Server determining respective addresses of at least one device in a recipient role from addresses encapsulated in the at least one digital object[11]: The encapsulated address is utilised to determine the address of the at least one device acting in a recipient role.
[8] The Patentee’s Submission at [30]; The Opponent’s Submission at [27.2]
[9] The Patentee’s Submission at [30]; The Opponent’s Submission at [27.3]
[10] The Patentee’s Submission at [30]; The Opponent’s Submission at [27.4]
[11] The Patentee’s Submission at [30]; The Opponent’s Submission at [27.5]
Claim 1 also utilise the term “comprising”. Typically, the meaning of “comprising” is determined according to the context in which it is used.
In Asahi Kasei Kabushiki Kaisha v WR Grace and Co [1991] FCA 530; 22 IPR 491, it was held[12] that in the context of the case the term “comprise” was used in an exhaustive sense rather than an inclusive sense. In General Clutch Corporation v Sbriggs Pty Ltd [1997] FCA 499; (1997) 38 IPR 359, it was concluded[13] that the normal linguistic meaning is that comprising means made up of, composed of, or constituted by the integers listed. In Frensnius Medical Care Australia Pty Limited [2005] FCAFC 220; (206) 67 IPR 230[14], this term was giving a non-exhaustive meaning.
[12] Asahi Kasei Kabushiki Kaisha v WR Grace and Co [1991] FCA 530; 22 IPR 491 at [514] – [515]
[13] General Clutch Corporation v Sbriggs Pty Ltd [1997] FCA 499; (1997) 38 IPR 359 at [376]
[14] Frensnius Medical Care Australia Pty Limited [2005] FCAFC 220; (206) 67 IPR 230 at [56] – [64]
The specification also states that[15]:
“The term “comprising” as used in this specification and claims means “consisting at least in part of”. When interpreting statements in this specification and claims which include the term “comprising”, other features beside the features prefaced by this term in each statement can also be present. Related terms such as “comprise” and “comprised” are to be interpreted in similar manner.”
[15] Specification as amended 19 September 2014 at Page 2 line 26 – Page 2 line 30
I am satisfied to adopt this interpretation that the term comprising is used in a non-exhaustive sense. That is, the system could include another device in addition to the at least one device acting in a requestor role and/or a recipient role, and the digital object may include more than what is listed in (a) or (b).
Option (b) of claim 1 explicitly specifies that the digital object is an electronic program guide.
According to Mr Cohen, an electronic program guide (“EPG”) is defined as[16]:
“the presentation of scheduled broadcast television or radio programs on either i) a consumer device or ii) a service for the use of electronic program guide information, such as websites or computer applications.”
and that[17]
“At a minimum, an EPG would include a list of programs on its own, such as a list of movies that are coming up on that day provided as a search result. Alternatively, it would include a list of programs with channel information, a list of programs with time information, or a list of programs with both channel information and time information. As a further alternative, an EPG would include a list of channels with time and no program information. That is, it was not necessary to display all information fields that are associated with program scheduling to generate an EPG.”
[16] Cohen at [26] – [28]
[17] Cohen at [29]
Mr Cohen’s explanation suggests that there can be a great deal of variation in the content which makes up the EPG data. It is clear that an EPG is a well understood term in the art and I see no reason why I should not adopt Mr Cohen’s interpretation.
The Opponent submits that there are three aspects of claim 1[18]:
“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.”
[18] The Opponent’s Submission at [28] – [28.3]
I am satisfied that the Opponent’s interpretation is reasonable, and I agree with it.
Further to the Opponent’s characterisation, I note that claim 1 also describes that the plurality of devices could be configured to operate in a requestor role and a recipient role. Therefore the alleged invention could be performed with just one device operating in both a requestor role and a recipient role.
Disclosure
Section 40(2) of the Act states that:
“(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention.
In CSR Building Products Limited v United Gypsum Company [2015] APO 72 ( “CSR”), the delegate stated[19]:
“In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:
i. construe the claims to determine the scope of the invention as claimed,
ii. construe the description to determine what it discloses to the person skilled in the art, and
[19] CSR Building Products Limited v United Gypsum Company [2015] APO 72 at [95]
iii. decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”
The delegate referred to Eli Lilly & Co v Human Genome Sciences, Inc [2008] EWHC 1903; [2008] RPC 29 where Kitchin J states[20]:
"Even though a reasonable amount of trial and error is permissible, when it comes to sufficiency of disclosure, for example in an unexplored field or where there are many technical difficulties, the skilled person has to have at his disposal, either in the specification or on the basis of his common general knowledge, adequate information leading necessarily and directly towards success through the evaluation of initial failures".
and the general approach in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKPC 6; [2005] RPC 9, where Lord Hoffmann explained[21]:
"The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it."
[20] Eli Lilly & Co v Human Genome Sciences, Inc [2008] EWHC 1903; [2008] RPC 29 at [243]
[21] Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKPC 6; [2005] RPC 9 at [103]
Electronic Program Guide

As characterised above, the second and third aspects of claim 1 describes at least one device in a requestor role, sending at least one digital object comprising an EPG to a server, and subsequently downloading said digital object by at least one device in a recipient role. While the specification does describe downloading an EPG from a server, it does not describe how a device would send an EPG to a server[22].
[22] The Opponent’s Submission at [89] – [91]
The Patentee submits that[23] “the question of how the invention is put into practice is informed by the Common General Knowledge of the Person Skilled in the Art” and that[24] “the step of uploading a digital object is a step that would be innately understood by a skilled addressee”.
[23] The Patentee’s Submission at [79]
[24] The Patentee’s Submission at [81]
Mr Cohen provides an explanation on how EPG data is obtained and updated by a device[25]:
“The type of data sent from the client device to the server device would typically be user preference changes, user requests, device requests, device status or configuration changes. The server device then provided the client device with data or commands as determined from the combination of authentication information plus state information, configuration changes or requests made. These data would typically include i) responses to request by users or devices and ii) updates to data stored within the device that required updating as determined by the server, including configuration or internal state changes, such as updates to EPG data or software for example.”
[25] Cohen at [39]
Mr Cohen states[26] that the specification does not describe how a device in a requestor role would send an electronic program guide to the server, or indeed why a device that is in a requestor role would send an EPG to a server. Typically, the EPG is stored on a server. A widget may connect to the server to request the electronic program guide data and therefore implies that a device with the widget activated (in a requestor role) is initially making a request for the EPG data from the server.
[26] Cohen at [129.2]
Mr Cohen provides an example[27] of where EPG data is transmitted from a web server as a series of web pages to a web-based user interface available on a client device. Data at the user interface was automatically updated whenever the EPG data changed. I find this example to be consistent with the example shown in Figure 10 of the patent as shown above where the EPG data is stored on a remote storage device in communication with the server via the internet.
[27] Cohen at [40]
During the hearing, the Patentee submitted that the claim does not require the entire electronic program guide be sent to the server but rather, an extract of the electronic program guide is sufficient. Further, the step of uploading a digital object is a step that would be innately understood by a skilled addressee as both the present patent and prior art are replete with instances of uploading and downloading information, files etc.[28].
[28] The Patentee’s Submission at [81]
The Patentee referred to the specification which states:[29]
“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.”
[29] Specification as amended 19 September 2014 at Page 12 line 21 – Page 12 line 25
The specification also describes how the EPG is updated[30]:
“There is regular interaction between the “widget” and the server as it is necessary to ensure that the view presented to the user is kept up to date. The “widget” automatically connects to the server every 5 minutes. The “widget”: requests electronic program guide data from the server and displays it in a list view, it also requests data about the user’s favourite shows, currently scheduled recordings and series that the user has nominated to record. The “widget” also provides details of its last update, and the server will compile and send an electronic program guide extract that includes changes that have occurred since the last update.”
[30] Specification as amended 19 September 2014 at Page 11 line 8 – Page 11 line 16
The Opponent pointed out that the distinction here is that the EPG data is created by the server rather than the device in a requestor role.
According to the specification, the at least one device refers to a user device such as[31] 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.
[31] Specification as amended 19 September 2014 at Page 2 line 31 – Page 3 line 3
The widget functions as a local extension of the remote server and provides as much of the functionality of the server as required[32]. The specification also describes a set of typical functions available via the widget[33] which allows a user to, for example, request updated EPG data, schedule recordings, and add particular shows or programs to a favourites list.
[32] Specification as amended 19 September 2014 at Page 6 line 12 – Page 6 line 18
[33] Specification as amended 19 September 2014 at Page 11 line 22 – Page 12 line 15
Based on Mr Cohen’s interpretation of what an EPG entails, an EPG in a broad sense does not need to contain all the information associated with program scheduling. It is also clear that EPG information on a server is regularly updated and there are various ways and devices which may hold EPG data to be subsequently sent to the server. It is also important to note that the at least one digital object contains both an encapsulated address of at least one device in a recipient role, and the EPG.
It is clear from the widget capabilities that the EPG data sent by the user device does not correspond to EPG data as well understood in the art, but to user customisation changes of an EPG. While EPG data is per se broader than user-customised EPG data, there is nothing to suggest that user-customised EPG data is inherent in EPG data.
Following the approach of the delegate in the CSR (supra)[34]:
i.The scope of claim 1 extends to any device capable of sending an EPG to a server.
ii.The description only describes utilising user devices to send user-customised EPG data.
[34] CSR Building Products Limited v United Gypsum Company [2015] APO 72 at [95]
Mr Cohen provides the following examples to describe how EPG data is typically obtained by a device.
With a broadcast stream method[35]:
“Typically, the EPG broadcast servers acquired EPG data from external providers and/or internal scheduling systems. The EPG broadcast servers then transformed, encapsulated and stored the EPG data locally in readiness for broadcast.”
[35] Cohen at [32]
With an internet method[36]:
“…typically there were data servers that obtained EPG data from external providers and/or internal scheduling systems. The data servers then transformed, encapsulated and stored the EPG data locally. A client device (such as a DVR or PC using Windows Media Centre) connected to the data server to make a request for the stored EPG data…”
[36] Cohen at [35]
It is clear from Mr Cohen’s examples that EPG data is typically transmitted from a server to the user device.
While I envision that it may be possible to program the widget of the patent so that EPG data could be sent from a user device, there is no evidence to suggest the level of technical expertise required or if it would impose an undue burden. However the mere fact that this is not how EPG data is normally transmitted suggests that there would be some level of technical difficulty involved programming a user device with such a function.
Based on the evidence available to me, I find that the specification does not provides an enabling disclosure of sending EPG data from a device to a server that is clear enough and complete enough for the invention to be performed by a person skilled in the art.
Addresses encapsulated in the at least one digital object
In his declaration, Mr Cohen states[37]:
“Claim 1 states that the server determines “respective addresses of at least one device in a recipient role from addresses encapsulated in the at least one digital object”. One particular device in a recipient role is “Mac Mini” as shown in the widget user interface in Figure 5 of the 518 Patent. However there is no description of how the widget enables a user to select between multiple devices. There is also no description in the 518 Patent that describes encapsulating such an address in a digital object or how this would be done.”
[37] Cohen at [130]
Mr Cohen also describes a number of ways in which a device could be remotely controlled by another device via a server[38]. One example is via the use of an “intermediary service” which is used to receive commands from a controlling device and routing said commands to a controlled device[39]:
“This topology was common for consumer devices connected to the Internet due to the problems of NAT, ISP Dynamic IP Address allocation, and firewalls. The intermediary service was often implemented as an HTTP server accessible via the Internet after a level of authentication with the controlling device was achieved. Devices obtaining authentication had their authentication credentials associated with data held on the server. For example, with the FOXTEL IQ STB, users logged in with their user name and password. The account of the user would include a list of devices associated with that account and the server would offer a selection of devices for the user to select if there was more than one device associated with that user. The server typically also held the identities of the controlling and controlled devices. The controlled device was identified by the smart card being used with that device. The messages sent to the controlled device typically included the command and the smart card number amongst other addressing information and control information. “
[38] Cohen at [60] to [63.4]
[39] Cohen at [63.1] to [63.2]
Mr Cohen goes on to explain that commands could be routed over a variety of networks such as Web-to-Broadcast, Web-to-Server, Direct connection between the controlling and controlled device, or via hybrid approaches.
This technique appears to be similar to the example shown in figure 12 of the opposed specification which I have reproduced below:
According to the specification[40] 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).
[40] Specification as amended 19 September 2014 at Page 14 line 17 to Page 14 line 22
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.
The “requestor role” and “recipient role”
The Opponent submits[41] that the terms “requestor role” and “recipient role” have not been explicitly used in the description of the Opposed Patent. While these terms have been given a broad interpretation based on the context of the claim, the Opponent submits that this does not change the fact that these terms and their meaning have not been disclosed in the description in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
[41] The Opponent’s Submission at [94] – [95]
The Patentee disagrees, and submits[42] that there is no requirement that there needs to be an explicit “mapping across” of specific words or phrases between the specification and the claims. The question that needs to be addressed in considering enabling disclosure is whether the Patent contains a sufficient level of detail for a skilled reader to put the invention into practice.
[42] The Patentee’s Submission at [85] – [87]
While I agree that the terms “requestor role” and “recipient role” are not explicitly used, the description does however provide an explanation of the function of the Widget on a recipient device and on a requesting device[43] and is consistent with the broad interpretation provided by the parties. Furthermore, Mr Cohen did not express any difficulty interpreting these terms broadly.
[43] Specification as amended 19 September 2014 at Page 4 line 21 to Page 6 line 7
It follows that I am satisfied that the specification provides a disclosure of a device operating in a requestor role and recipient role in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.
Support
Section 40(3) of the Act states that:
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
In order the answer the question of support, the general approach is as stated in Schering Biotech Corporation’s Application [1993] RPC 249 by Aldous J[44]:
"to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court's task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word 'support' means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed."
[44] Schering Biotech Corporation’s Application [1993] RPC 249 at [252]
In CSR (supra), the delegate summarised that the scope of the claims should correspond to the technical contribution to the art[45] and outlined that[46]:
“Thus the task is to:
i.construe the claims to determine the scope of the invention as claimed,
ii.construe the description to determine the technical contribution to the art; and
iii.decide whether the claims are supported by the technical contribution to the art.”
[45] CSR Building Products Limited v United Gypsum Company [2015] APO 72 at [109] quoting Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 at [659]
[46] CSR Building Products Limited v United Gypsum Company [2015] APO 72 at [115]
The Opponent submits that the following features are not supported by the description of the present patent:
·a device in a requestor role sending a digital object comprising 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.
·the terms “requestor role” and “recipient role”.
In essence, the Opponent’s position is that where a feature is not at all disclosed in the specification, it should follow that said feature is not supported.
The Patentee disagrees and submits that the above features, when construed correctly, are supported by the description of the patent[47].
[47] The Patentee’s Submission at [90] – [92]
Scope of the invention as claimed
To reiterate what I previously stated, claim 1 is directed towards a method of a server facilitating a digital object download. In order to achieve this, the following integers must be present:
·at least one device operating in a requestor role
·at least one device operating in a recipient role.
·a server
·a digital object which contains at least (a) an instruction to record; and/or (b) an electronic program guide; and encapsulates a respective address of at least one device in a recipient role.
The technical contribution to the art
The specification describes the use of widgets operated on user devices. The widget functions as a local extension of a remote server, and provides as much of the functionality of the server as required. For example, the widget allows a user to schedule a recording on a recipient user via a server. The address of a recipient user device is encapsulated within the file containing the recording request which is used by the server to determine the location of the recipient user device. Alternatively, the request may contain user customised EPG data instead of, or in addition to the recording request.
Are the claims supported?
The scope of claim 1 extends to using any device capable of, in a requestor role, sending a digital object to a device in a recipient role via a server. As I previously discussed, the specification describes how an address could be encapsulated in the digital object, and how a device could be operated in a requestor role or recipient role. To this extent, I find that these features are supported.
The question here is whether sending an EPG from one device to another via a server is broader than the technical contribution to the art. As I previously stated:
i.The scope of claim 1 extends to any device capable of sending an EPG to a server.
ii.The description only describes utilising user devices to send user-customised EPG data.
I find that the feature of sending an EPG from one device to another via a server is not supported by the technical contribution to the art.
To consider whether that the lack of support could be resolved by one of the dependent claims, I believe that claim 3 is worth a brief consideration. Claim 3 recites:
The method of claim 1 or claim 2, wherein the at least one digital object further comprises one or more of:
(a)   a listing of most popular TV shows, movies, series or programs;
(b)   a user-specific request to mark a particular TV show, movie, series or program as a favourite;
(c)   a user-specific listing of favourite TV 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 receiving devices for a specific user.
Importantly, the preamble of claim 3 states that the digital object further comprises one or more of (c) to (g), and therefore does not limit the scope of an EPG as defined in claim 1.
Consequently, I find that the scope of claim 1 is not supported by the technical contribution to the art. This conclusion applies to all of the claims.
Novelty
Section 7(1) provides that:
“(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information”
It is well established that the general test for anticipation or want of novelty is the reverse infringement test[48], and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed[49]. The alleged anticipation must also contain “clear and unmistakable directions” to produce the invention as claimed[50]. However, if the alleged anticipation contains a direction which is capable of being carried out in a manner which would infringe the invention as claimed, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated[51]
[48] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]
[49] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; 16 IPR 545 at [19]
[50] Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [314]
[51] General Tire & Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-486; (1971) 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]

The parties referred to Kingsford Ross Heylen v Balsam Pacific Pty Limited [2000] APO 10 where the delegate stated:
“To this I add that the weight of the evidence must be sufficient to establish on the balance of probabilities the alleged prior use, and that this evidential burden lies with the opponent (see eg. Dunlop Holdings Ltd's Application [1979] RPC 523).”
The Opponent cited the following documents:
D1 – US 2008/0141306 (Foti) 12 June 2008 (“Foti”)
D2 – TiVo HD Series 3 High Definition Viewer’s Guide, 2006 (“Tivo”)
D3 – Prior use based on IceTV’s Personal Interactive Media Planner or PIMP based on various webpages from IceTV’s Official website, accompanied by the decision Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172. (“PIMP”)
Foti
Foti describes a system for pushing personalised electronic program guide data to a set top box. In a preferred embodiment, the system includes a set top box, an internet protocol television (“IPTV”) server and an electronic program guide server. The IPTV server requests generic electronic program guide content from the electronic program guide server. The IPTV server also contains a subscriber profile which is specific to a subscriber of the system. Personalised electronic program guide data is calculated or defined by the IPTV server based on the generic electronic program guide content, and the subscriber profile[52]. The subscriber profile may be inputted or modified directly into the IPTV server via an operator interface[53], URLs pointing to the IPTV server[54] or entered from the set top box[55].
[52] Foti at [0023] - [0026]
[53] Foti at [0036]
[54] Foti at [0042]
[55] Foti at [0030]
In order to use the system, a user would first register a set top box with the IPTV server by sending a message such as a Session Initiation Protocol (“SIP”). Once received, the registered status of the user’s set top box is stored on the IPTV server[56]. The IPTV server will also fetch new generic electronic program guide content in response to a periodic time out signal generated by a timer[57].
[56] Foti at [0025]
[57] Foti at [0039]
The IPTV server will then send the personalised electronic program guide information either autonomously such as when a new generic electronic program guide version is received[58], or in response to a request from the set top box[59].
[58] Foti at [0040],
[59] Foti at [0028]
The Opponent submits that claim 1 is anticipated by Foti as follows[60]:
- The at least one device in a requestor role is the electronic program guide server.
- The Digital Object is the electronic program guide data.
- The at least one device in a recipient role is the set top box
- The server is the IPTV server.
[60] The Opponent’s Submission at [66] – [70]
Using the above interpretation, the respective address of the set top box is determined from the addressing information within the electronic program guide data, the set top box registration step and the set top box profile information.
Mr Cohen describes this feature in more detail[61]:
“From my knowledge, the EPG data typically would contain addressing with regard to channels, for example. The session initiation protocol (SIP) is mentioned in [0025] of Foti. SIP is described in RFC 3261 and RFC 3665. SIP contains addressing information about the registered STB. This addressing information enables the subsequent determination of the specific IP addresses at the time when the STB polls the server for potential EPG information updates.
Therefore, the STB addresses are determined from addresses encapsulated (ie. contained) within the EPG data.”
[61] Exhibit KC16 at item 1.6
The Patentee disagrees and submits that[62]:
“…Mr Cohen states that “SIP contains addressing information about the registered STB”, but this is not explicitly disclosed. Moreover, it is not clear whether the process of “SIP” includes EPG data and/or instructions to record.”
“As the name implies as stated in paragraph [0025] of Foti, SIP is an initiation protocol that establishes a communication channel between the STB and the server. For example, Foti, at paragraph [0025], states “…the message being for example a Session Initiation Protocol (SIP) invite message. The SIP Invite message may be indicative that the subscriber has registered in the IMS network…”. This statement does not appear to support the proposition that an SIP message is a digital object that contains both an address, an EPG and/or a request to record a program.”
[62] The Patentee’s Submission at [61] – [62]
On this basis I am inclined to agree with the Patentee. As I described above, the EPG server sends generic EPG content. This implies that the content has not been preassigned or personalised for any specific subscriber. It is not until this content is merged with a subscriber profile that an address is actually assigned. Therefore the generic EPG content could not be said to also contain an encapsulated address until it is assigned by the server.
However, I am of the view that there is another manner in which Foti could be interpreted.
As I stated above, there is nothing which excludes the device in a requestor role and the device in a recipient role from being the same device. Further, the definition of EPG data is per se broader than user-customised EPG data.

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

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

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

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

The server is the IPTV server.

101. When the user’s subscriber profile is changed, this information containing the changes is sent to the IPTV server. The IPTV server will then merge this new information with the generic electronic program guide content and automatically sends the personalised electronic program guide back to the set top box. In this manner, the address of the set top box is already encapsulated in the subscriber profile, having previously registered with the IPTV server.
102. Consequently, I find that claim 1 is anticipated by Foti, and is not novel

103. Regarding the dependent claims, Mr Cohen has provided a table[63] and pointed out where each feature of claims 2 – 5 is disclosed in Foti. I have reviewed this table and conclude that claims 2 – 5 are also anticipated by Foti, and are not novel.
[63] Exhibit KC-16
Tivo
104. Tivo is an operation manual for a TiVo HD series 3 Digital Media Recorder. The manual instructs a user on how to connect to, and schedule recordings on a DVR at home from any computer with internet access. A TiVo user account is required in order the access the system. The instructions for using online scheduling is listed as follows[64]:
[64] TiVo at Page 18
1.Go to and sign in
2.Go to the Welcome page of TiVo Central Online, select the name of the DVR for which you want to schedule recordings.
3.Use the simple or advanced search of your TV listings, or browse by channel.
4.From the list of search results, click the name of a program and choose either Record This Episode or Get a Season Pass.
5.Choose whether to receive a confirmation e-mail sent to the e-mail address you provide.

105. The Opponent submits that the features of claim 1 are anticipated by TiVo as follows[65]:
[65] The Opponent’s Submission at [76] – [79]

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

The Digital Object is the instruction to record.

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

The server is the TiVo Central Online website.

106. The DVR also makes periodic connections to the TiVo service[66]:
[66] TiVo at Page 95
“The DVR uses the phone line or the Internet to make periodic connections to the TiVo service. Each time it connects, your DVR receives updated program information (channels and show times), online scheduling requests, available software updates, and other information from the TiVo service.”

107. The Patentee submits that[67]:
[67] The Patentee’s Submission at [68] – [69]
“In the Tivo Guide there is no disclosure, either explicitly or implicitly, that data which is passed between the website and the server comprises a “digital object” where the address is “encapsulated in the at least one digital object”. It is entirely reasonable to assume that information regarding the request to record and the address of the TiVo PVR are sent separately, as separate strings of data.
Indeed, Mr Cohen, in his declaration at item 1.6 of Exhibit KC-17, never directly answers the question of whether the TiVo Guide discloses this feature. Rather, Mr Cohen skirts the question and simply provides a number of possible manners in which addresses could be resolved. However, the question to be addressed is not what types of addressing systems or methods were known before the priority date of the Patent, but rather whether the TiVo Guide, on the balance of probabilities, give “clear and unmistakable directions” to a skilled addressee to encapsulate the address in at least one digital object.”

108. The Opponent submits that[68]:
[68] The Opponent’s Submission at [78]
“The features of the server determining respective addresses of at least one device in a recipient role from addresses encapsulated in the at least one digital object read onto the unique service number of the selected TiVo DVR being encapsulated in the record instruction when that record instruction is sent to TiVo Central Online website, and directly leads onto the server determining that unique service number of the TiVo DVR from within the record instructions.”

109. Mr Cohen describes[69] that this service number uniquely associated with that DVR is used by the TiVo service based on an address sent from the selection by the user. This is used as part of the authentication and identification information when connecting to the server.
[69] Exhibit KC-17
110. As shown above, in order to access the TiVo service a user must first select the name of the DVR which the records are to be scheduled on prior to selecting the program to be recorded. In order for the instructions to reach the intended DVR system, the instructions must also contain information which identifies the intended DVR system. On this basis, I am inclined to agree with Mr Cohen that the unique service number of the DVR corresponds to the claimed encapsulated address.
111. Consequently, I find that claim 1 is anticipated by TiVo and is therefore not novel.

112. Regarding the dependent claims, Mr Cohen has provided a table[70] pointed out where each feature of claims 2 – 5 is disclosed in TiVo. I have reviewed this table and conclude that claims 2 – 5 are also anticipated by TiVo, and are also not novel.
[70] Exhibit KC-17
PIMP
113. Mr Cohen describes his recollection and understanding of IceTV PIMP as[71]:
[71] Cohen at [72] – [73]
“… IceTV provided the PIMP on a webpage and on a widget to enable viewing of EPG data, viewing of recommended content for the user, recording preferences to be stored, and the scheduling of recordings of content (such as TV series, movies, etc.). The webpage was accessible by devices via web-browsers, while the widget was installed on a Windows PC or an Apple Macintosh.
The scheduling of recording of content was remotely performed through the webpage or widget so that an IceTV-enabled DVR could perform the recording. Another compatible DVR-enabled computer, such as a PC running Windows Media Centre or an Apple Macintosh running Elgato EyeTV, could also receive and perform the remotely scheduled recording …”

114. The prior use of PIMP before the priority date of the opposed application is corroborated with screenshots from pages of IceTV’s website in 2005 and 2006[72], and is briefly mentioned in the Federal Court Decision of Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172 which provided the following description[73]:
[72] Exhibits KC-7 – Exhibit KC-13
[73] Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172 at [113] – [115]
“The IceGuide is also available to subscribers on a test trial basis through a service marketed as the “Personal Interactive Media Planner” (‘Pimp’). The Pimp is intended to enable users to control and program PVRs or Media Centres remotely using a mobile phone or the internet.
Ice has also developed a service called the “Widget”. The Widget can be downloaded by any person (not just subscribers) from Ice’s website using a PC and is a small, desktop application. It displays television program listings for the next 7 days for all the free to air channels on the PC screen.”

115. I am satisfied that the website screenshots and Federal Court Decision establishes the prior use of PIMP before the priority date.
116. The Opponent submits that the features of claim 1 are anticipated by PIMP as follows[74]:
[74] The Opponent’s Submission at [48] – [56]

The at least one device in a requestor role is the mobile phone or computer running PIMP[75].
[75] Exhibit KC-9

The Digital Object is the instruction to record.[76]
[76] Exhibit KC-9, Exhibit KC-11, Exhibit KC-12

The at least one device in a recipient role is the selected IceTV-enabled DVR or compatible DVR-enabled computer[77].
[77] Exhibit KC-11

The server is the PIMP server[78]
[78] Exhibit KC-9

117. The PIMP service also allows a user to register multiple devices on one account, where each device would have its own unique address identification[79].
[79] The Opponent’s Submission at [44]; Exhibit KC-11
118. As listed out in Exhibit KC-9, PIMP is operated by:
1.Logging in to PIMP from a mobile phone or PC
2.Browse the TV guide and choose shows to record
3.A message is then sent to your media centre from the PIMP server. The message instructs the media centre to schedule the programs. This usually takes no more than 15 minutes.
4.The programs are then recorded as they are broadcast and stored on the media centre for later viewing.

119. The Patentee submits[80] that PIMP does not describe the feature of “…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”
[80] The Patentee’s Submission at [47]
120. On this point, the Opponent points to Exhibit KC-12 which describes how to configure Windows XP Media Centre Edition 2005 (MCE) to access iceguide data:
“MCE will automatically update the program guide data every 24 hours (starting from the most recent download) and inform you if any errors occur with the update.”

121. I do not agree that this periodic update refers to the download of the at least one digital object. Rather it appears that the purpose of this periodic update is to update the program guide data.
122. It is also clear from Exhibit KC-9 that in PIMP, the connection is initiated by the server rather than the client device, and is only made when a user makes a request to record a show. Therefore the connection could be said to be initiated on an irregular interval rather than a predetermined interval. However regardless of whether the connection request is initiated by the user device or the server, the transmission step is the same.
123. Consequently, I find that claim 1 is not anticipated and is therefore novel in light of PIMP.

124. It follows that dependent claims 2 – 5 are also novel in light of PIMP.
Innovative Step
125. Section 7(4) provides that:
"For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention."

126. Section 7(5) identifies the information to be of the following kinds:
"(a) prior art information made publicly available in a single document or through doing a single act;
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information."

127. In Dura-Post (Aus) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; 177 FCR 239; 81 IPR 480, the full Federal Court stated that[81]:
[81] Dura-Post (Aus) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; 177 FCR 239; 81 IPR 480 at [74]
“In making this comparison, s 7(4) requires that each comparison be made from the perspective of a person skilled in the art, whose task is to identify and assess the variations between the invention as claimed in each claim and the prior disclosure and determine whether or not these variations make a substantial contribution to the working of the invention as claimed in each claim”.

128. Claims 1 – 5 were found to be not novel over Foti and TiVo. As there are no differences between these prior art and the claimed invention, it follows that claims 1 – 5 are also not innovative over Foti and TiVo.
129. The question which remains is whether claims 1 – 5 are innovative over PIMP.
130. Neither party has made any substantive arguments with regard to innovative step. However at the hearing, the Patentee submitted that the contribution of features which make up the claimed invention would also constitute an innovative step.
131. As I concluded above, claim 1 is not anticipated by PIMP due to the feature “…the at least one device connects to the server at predetermined intervals” to download the digital object. The question I must as is, whether this feature would make a substantial contribution to the working of the invention as claimed in each claim.

132. This feature is described in the specification[82]:
[82] Specification as amended 19 September 2014 at Page 6 line 13 – Page 6 line 16
“The predetermined intervals for automatic connection may be set to provide timely updated information to the user, while at the same time keeping server traffic to manageable levels. “

133. According to Mr Cohen[83]:
[83] Cohen at [39]
“As it was not (and still is not) typically technically feasible or economic to maintain a connection between client devices and server devices continuously, various polling mechanisms were (and still are) used. Client devices in the home typically polled server devices by opening an outward communications channel to allow for automatic firewall and Network Address Translation (NAT) traversal by the client device to the server device. Once open, the client device and server device were able to communicate with each other. Typically, client devices had a specific time, or a time interval since the last successful poll, to determine when to attempt to poll a server device.“

134. In PIMP, the connection is initiated by the server rather than the client device, and is only made when a user makes a request to record a show. Therefore the connection could be said to be initiated on an irregular interval rather than a predetermined interval. However regardless of whether the connection request is initiated by the user device or the server, the transmission step is the same.
135. Mr Cohen makes it clear that having a device connect to a server at predetermined interval is conventional in the art. While I accept that there are advantages in setting a predetermined interval as opposed to, for example, a continuous connection, I am not satisfied that this could be said to make a substantial contribution to the working of the invention.
136. On this basis, I find that claim 1 does not have an innovative step in light of PIMP.
137. Regarding the dependent claims, Mr Cohen has provided a table[84] pointing out where each feature of claims 2 – 5 is disclosed in PIMP. I have reviewed this table and conclude that claims 2 – 5 are anticipated by PIMP.

[84] Exhibit KC-18

138. It follows that claims 1 – 5 does not have an innovative step in light of PIMP.
Conclusion
139. The specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art and does not comply with section 40(2)(a) of the Act.
140. Claims 1 – 5 are not supported by matter disclosed in the specification and do not comply with section 40(3) of the Act.
141. Claims 1 – 5 lack an innovative step in light of PIMP.

142. Claims 1 – 5 are not novel and lack an innovative step in light of Foti and TiVo.

143. However there may be patentable subject matter in the innovation patent specification. I allow the Patentee two (2) months from the date of this decision to propose suitable amendments to overcome the above findings, otherwise the innovation patent will be revoked.
Costs
144. The parties submitted that costs should follow the event. It is clear from Section 210 and Regulation 22.8 that the power of the Commissioner to award costs is discretionary.
145. The opposition is successful on the grounds of section 40(2)(a), 40(3), novelty and innovative step.

146. I therefore award costs according to Schedule 8 against The Advanced Technology Group Pty Ltd.

Isaac Tan
Delegate of the Commissioner of Patents