FOXTEL Management Pty Ltd v TiVo, Inc
[2014] APO 8
•17 February 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FOXTEL Management Pty Ltd v TiVo, Inc. [2014] APO 8
Patent Application: 2006344735
Title:In-Band Data Recognition and Synchronization System
Patent Applicant: TiVo, Inc.
Opponent: FOXTEL Management Pty Ltd
Delegate: Matt Kraefft
Decision Date: 17 February 2014
Hearing Date: 12 December 2013
Catchwords: PATENTS – section 59 – opposition to grant of a patent – novelty – inventive step – usefulness – fair basis – sufficiency of description - opposition only successful on a relatively minor point of lack of clarity – no award of costs made.
Representation: Patent applicant: Did not appear at the hearing
Opponent:Mr Guy Tucker and Mr Robert Miller, patent attorneys, Spruson & Ferguson, Sydney.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006344735
Title:In-Band Data Recognition and Synchronization System
Patent Applicant: TiVo, Inc.
Date of Decision: 17 February 2014
DECISION
The opposition fails on all grounds other than a relatively minor point of lack of clarity.
Claims 4-6 are not clear in respect to the terminology of identifying one or more events.
The applicant is allowed one (1) month from the date of this decision in which to propose suitable amendments to overcome the above deficiencies.
REASONS FOR DECISION
Background
TiVo, Inc. (“the applicant”) filed patent application 2006344735 on 23 June 2006. The application claims priority from a US application filed on 22 June 2006. Application 2006344735 was advertised accepted on 30 September 2010.
FOXTEL Management Pty Ltd (“the opponent”) filed a notice of opposition on 14 December 2010. A statement of grounds and particulars in support of the opposition followed on 15 March 2011. The opponent subsequently amended this statement under Patent Regulation 5.16. This amendment was allowed on 16 September 2013.
The opponent completed its evidence-in-support, with several allowed extensions of time, on 23 August 2012. The applicant was also allowed several extensions of time to serve evidence-in-answer. In the end the applicant did not serve any evidence-in-answer. For the hearing, the applicant also chose not to file written submissions or attend the hearing.
The specification
The specification states the invention relates to recognising in-band data in a multimedia content stream and locating points within the multimedia content stream at a multimedia device.
Digital video recorders (“DVRs”), or similar multimedia devices, record broadcasted television (“TV”) programs for later playback by changing electrical signals, digital or analogue, of the TV program into digital information and storing the digital information on a hard drive. The use of DVRs for recording TV programs has led to content providers searching for different means of presenting content to DVR users and enriching the experience of video or TV programs. The term DVRs includes set-top boxes (“STBs”) with a recording facility.
The specification states that a technique for recognizing distinct events within video programs is desirable. Content providers that desire to present additional content, such as marketing or enhanced textual content, within video programs can have particular icons, messages or interactive elements displayed to the user at particular parts of the video or TV program. A DVR must thus synchronize with the multimedia content stream to display the additional content data at the correct time.
The additional content may be in the form of in-band data. In-band data is used for signalling additional data over the same channel or band as the one used to send the audio and video data. Examples of in-band data include closed-caption data and Enhanced TV (“ETV”) signalling data. The former may present captions associated with the video content. The latter enables interactive applications.
The specification, as accepted, ends with 21 claims defining the claimed invention. Claim 1 is the only independent claim and reads as follows.
- A method for processing in-band data at a multimedia device, comprising:
receiving a multimedia content stream, wherein the multimedia content stream contains in-band data;
processing the in-band data, including computing at least two hash values from the in-band data and a time period between generation of the at least two computed hash values;
determining that the at least two computed hash values and the time period between generation of the at least two computed hash values match, within a margin of error, a particular pattern associated with one or more events; and
performing the one or more events responsive to determining that the particular pattern is matched within the margin of error.Statement of Grounds and Particulars
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the case of the present application the grounds of opposition are governed by the Patents Act in force before 15 April 2013.
The opponent’s grounds of opposition were that the nominated person is not entitled to the grant of a patent for the alleged invention, that the invention is not patentable because of a lack of manner of manufacture, novelty, inventive step and utility, that the specification does not fully describe the invention, and that the claims are not clear and fairly based. The opponent provided particulars against each of these grounds.
The grounds pressed at the hearing were all of the above except for the entitlement ground.
Evidence-In-Support
The opponent served evidence-in-support from Dr Jason Pieloor. At the time of his declaration, Dr Pieloor had about 16 years of experience as an engineer in product development and technology solutions for embedded platforms, primarily for subscription and pay-per-view television delivery.
In his evidence, Dr Pieloor has set out the state of the art related to multimedia content and its manipulation, particularly to TV or video broadcasting. He has further presented evidence related to the grounds of opposition pressed by the opponent at the hearing except for the manner of manufacture ground.
Claims construction
The expression “in-band data” should be addressed in this case. This is because the meanings ascribed by the applicant and by the opponent’s Dr Pieloor appear to be different.
At [0036] of the specification, the applicant defines in-band data as signalling data sent over the same channel or “band” as the one used to send audio and/or video data. Dr Pieloor, at [19] of his declaration, defines in-band data as data that is situational in time to the content. By this definition, audio and video data would be examples of in-band data as they primarily define the content stream. Subtitles would also be in-band data as they need to be synchronised with the audio and video content. According to Dr Pieloor, by contrast, out-of-band data is data that is not time-situational with the content. For example, metadata about the content, such as titles or lists of actors, would be out-of-band data since it does not share a common time-base with the content itself.
It is clear that some data types would be grouped in the same categories regardless of which definition is used. For example, subtitles or closed-caption data would be regarded as in-band data under both definitions. Nonetheless the appropriate definition should be resolved.
It appears that Dr Pieloor’s definition is somewhat artificial. That definition creates a dependency on whether the data itself is time-based or not. On the other hand, the applicant’s definition is more aligned with transmission of the multimedia data, the subject of the presently claimed invention. In the context of the present application, I would regard in-band data as the non-video or non-audio data flowing over the same path, channel or “band” as the video and/or audio data. Conversely, an out-of-band implementation would separate the video/audio data flow from the non-video and non-audio data flow.
The specification may also be set up as a dictionary in which the meaning of words is defined. In such cases the dictionary meaning or special meaning from the specification would prevail over any plain meaning from the art (British Thomson-Houston Company Ltd v Corona Lamp Works Ltd, [1922] 39 RPC 49 at 67). I think the specification at [0036] adequately sets up a dictionary for “in-band data”, amongst other terms.
For the above reasons, I accept the applicant’s definition for “in-band data”.
Patentable Invention
Section 18 of the Patents Act relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
(c) is useful; and …….
Novelty
In referring to several earlier decisions in respect to novelty, the Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, (2000) 46 IPR 553 at 576, states that what the authorities contemplate is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.
There may be circumstances where a document can deprive a claimed invention of novelty even though it does not expressly make that complete disclosure of all the integers of the claimed invention. One example is where the skilled reader would understand the disclosure of the prior publication to include a missing integer. Another is where the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Danisco A/S v Novozymes A/S (No.2), [2011] FCA 282 at [248]).
D1 – US 2005/0226601 – Cohen et al
This document discloses a method for synchronizing special effects to a media presentation. A media recording device may include one or more recording/reading units and be linked to a media source. Similarly a media presentation device may be linked to a media source. One or both of the media recording device or media presentation device may further be linked to an effects signal generator interface. The latter links to effects generators. The generators may include a scent generator, a smoke machine, a horn, bell, alarm, bubble blower, colour or lights generator, music generator, or other generator of effects for enhancing or supplementing a listening or viewing experience of a media presentation.
A processor in one or both of the above devices may execute algorithms for generating an identifying value from a segment or multiple segments of data in a data stream. The algorithms may be a cyclic redundancy check (“CRC”) algorithm or a hash algorithm. Furthermore the algorithms may be executed on close caption signals in a data stream.
The media recording device may include a time stamper for associating a time value with the segments in a data stream. For example the time stamper may assign a time stamp or time point to a position of one or more close caption signals in a presentation. The above-identified values may be loaded into a first table such that the value for a particular portion of a closed caption line is associated with the time stamp entry in the table that matches when the closed caption line appears in the recording. A second table may be created by a content provider to associate time stamps with effects signals so as to generate a specific effect in a particular segment of the media presentation data stream. In this way, specific effects may be synchronized to the media presentation.
The opponent submitted, through Dr Pieloor’s evidence at [160], that D1 disclosed the features of claim 1 of the application. On the other hand, Dr Pieloor acknowledges that D1 does not describe the use of a time period between generation of at least two computed hash values. Claim 1 of the application includes computing such a time period and determining whether the time period, amongst other things, matches, within a margin of error, a particular pattern associated with one or more events.
I conclude the claimed invention is novel over D1.
Inventive Step
In respect to inventive step, the Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd decision, (1981) 148 CLR 262 at 280, states the question is whether the invention would have been obvious to a hypothetical skilled addressee armed with the common general knowledge at the priority date. Also from that decision at page 286, an appropriate test is whether a person skilled in the relevant field, and faced with the same problem, would have taken as a matter of routine whatever steps might have led from the prior art to the invention.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Limited, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome (supra) test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
Person Skilled in the Art
The opponent submitted the person skilled in the art relating to the alleged invention included an engineer familiar with multimedia content and its manipulation. I have no contrary view and accept the opponent’s statement. Dr Pieloor clearly is and had been such a person at the priority date of the application.
Common General Knowledge
At the hearing the opponent submitted, with reference to Dr Pieloor’s evidence, that all of the following items formed part of the common general knowledge in the art before the priority date.
Television data was broadcast for use by STBs using elementary streams of video and audio, and using program streams and transport streams for system coding as detailed in the AS/NZS 13818.1:2002 Standard. Subtitles or closed caption data were transmitted as in-band data. Metadata was used to describe an event for use by the STB. Metadata was used as the only practical means for instructing a device to skip a segment of a content stream.
The above statements all appear to be a reasonable account of the common general knowledge before the priority date. In the absence of evidence from the applicant, I accept the opponent’s statements.
The opponent further submitted that the FOXTEL subscription TV service enabled users to bookmark or tag specific locations in content streams. These bookmarks were stored locally on the STB for retrieval by the STB in response to user action.
In the absence of evidence from the applicant, I would consider the described bookmarking features to have been common general knowledge before the priority date. One may query whether it was common general knowledge for a specific subscription TV service to have enabled such features. On the other hand, FOXTEL has been a major and active company in the Australian subscription or pay TV market for at least 10 years before the priority date of the application. I accept the opponent’s statements in respect to the FOXTEL subscription TV service.
The opponent further submitted that hash values were used to summarize or represent a variable length data input, and that server-based distribution of files was a basic method of file sharing. I have no reason to doubt these statements and therefore I accept them.
Whether There is an Inventive Step
From the novelty discussion above, the key difference of the claimed invention over D1 is the computing of a time period between generation of hash values and the determining of whether the time period matches, within a margin of error, a particular pattern associated with one or more events.
Dr Pieloor stated, at [68], that hashing was well described, by the priority date, in standard computer programming texts. He cited Robert Sedgewick’s “Algorithms in C++”, [1992], Addison-Wesley Publishing Company, as a commonly referenced text. That text’s chapter 16, exhibited in evidence, is a chapter on hashing. On page 231, it is stated that hashing provides a way to use a reasonable amount of both memory and time to strike a balance between these two extremes. Efficient use of available memory and fast access to the memory are prime concerns of any hashing method. It is further stated there is a great deal of empirical and analytic evidence to support the utility of hashing for a broad variety of applications.
Dr Pieloor further stated, at [141], the computation and use of hash values for pattern matching was common and a widely known programming technique before the priority date. Moreover Dr Pieloor indicated he knew and regarded it as well known at the priority date that hashes could be used for reducing the size of data files and improving matching speed at the client device.
I am satisfied that, well before the priority date, it was well understood that hashing broadly involved the transformation of variable-length inputs, such as strings of characters, into fixed-length outputs, usually shorter. As such, the use of hashes for enabling reductions in file storage size requirements and enhancing processing speeds would have been well recognised. I would regard that as a mechanism that the person skilled in this art would have considered as a matter of course in applying to multimedia streams.
The parameter of a time period between generation of two hash values is quite a distinct addition to the claimed invention. There is nothing in D1 or in the common general knowledge described above to suggest the computation of such a time period and its use for matching a particular pattern associated with one or more events, as claimed, was obvious.
I conclude the claimed invention has an inventive step.
Manner of Manufacture
The opponent submitted that all the features of the claims were known and therefore were below the threshold required for inventiveness and therefore the application did not claim a manner of manufacture.
It appeared the opponent’s submission related principally to lack of novelty or inventive step which has already been discussed above. On the other hand the opponent referred to the NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd case, [1995] HCA 15, 183 CLR 655. One may thus conclude there was more to the opponent’s submission. The NV Philips (supra) decision considered whether there was a general threshold requirement of newness or inventiveness in S18(1)(a) of the Patents Act. The decision states that the threshold requirement of an alleged invention means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent is absent, one need go no further. In the present case there is no reference in the specification that would indicate that features claimed relating to the computation and use of a time period between generation of hash values were known or not inventive.
I conclude the application relates to a manner of manufacture.
Usefulness
The opponent submitted that claim 1 lacked utility on a couple of grounds. Firstly, claim 1 includes the step of computing a time period between generation of at least two computed hash values. From Dr Pieloor’s declaration at [151] – [155], different processing speeds of different multimedia devices result in different time periods between generation of the computed hash values in each multimedia device. The claimed invention would thus not be able to provide accurate identification of locations in a content stream.
The Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC decision, [2008] FCAFC 82 at [141], provides guidance:
“If the claimed invention does what it is intended to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c). ….the invention as claimed must attain the result promised by the patentee.”
In the present case, the claims are clearly directed at a receiving multimedia device. Processing speeds may differ between, for example, a faster server and a DVR. On the other hand, one would expect a person skilled in this art to appreciate this, as Dr Pieloor has done, and be able to compensate for such differences between devices. In this case, the reference in claim 1 to matching the time period should be construed in this light, that is, subject to any compensation as required for different processing speeds of different devices. I conclude claim 1 does not fail for lack of usefulness on this point.
Secondly, the opponent submitted the computing or determining of time periods between the generation of hash values provided no advantage and therefore no useful purpose. Dr Pieloor at [156] indicated that, provided the hash value sequences were already sufficiently unique, the inclusion of time offset information provided no measurable gain, and may be detrimental in terms of storage and/or processing costs. He further indicated that uniqueness of hash sequences was likely for any reasonable sized input to the hash algorithm, and that the specification itself acknowledges that instances where hashes will have the same value will be rare [0105].
Dr Pieloor has indicated one example where the time period may be of some use, that being where the hash value sequences are not sufficiently unique, rare though that may be. Furthermore, the specification may not explain the point but I am not prepared to state the feature of determining time periods is not useful.
I conclude the claimed invention is useful.
Clarity and Fair Basis of Claims
The opponent, through Dr Pieloor’s evidence, mentioned a couple of items that supposedly offended against the clarity and fair basis of the claims. Firstly, in respect to claim 3, Dr Pieloor mentioned there is no description of the determination of hash values from ETV data.
The specification at [0127] and [0128] states that, similar to recognising hash value sequences in closed-caption data, patterns of ETV signalling data are recognised to synchronize ETV events with particular portions of a video program. This may suggest that hash sequences are exclusive to closed-caption data. That is, ETV signalling does not involve the calculation or determination of hash value sequences. On the other hand, paragraph [0054] states the invention is not limited to closed-caption and ETV signalling data, and may be applied to other types of in-band data. Closed-caption data may be the only example provided that involves hashing. However the specification at [0054] is open to the hashing of other types of in-band data. The use of hashing as a matter of course has been mentioned above for data transformation to reduce file storage needs and enhance processing speeds. With ETV signalling for example, there would appear to be no barrier to hashing ETV signalling data similar to that described for closed-caption data. I conclude that claim 3 is fairly based on this point.
Secondly, in respect to claims 4-6, Dr Pieloor noted these claims define the step of identifying one or more events in the multimedia content stream which is not defined in claim 1, to which claims 4-6 are appended. Instead claim 1 defines performing one or more events. Dr Pieloor has further indicated that the application does not describe the identification of an event as the trigger for performing an action as in claim 4 for example, the action in that claim being the display of an icon. I concur with these statements. Moreover it appears the display of the icon in claim 4 is an example of the performance of an event in the context of the specification. The definition in claims 4-6 of identifying one or more events, as compared with performing one or more events, thus appears to be erroneous terminology in the context of the remainder of the claims and the description.
I conclude that claims 4-6 in this case are presently unclear.
Sufficiency of Description
The opponent submitted that, in respect to claims 12 and 13, the specification failed to fully describe the invention because there was no description of how event identification data can be or is associated with specific segments extracted from different content streams. Event identification data is not defined in the claims. Consequently I have taken the opponent’s criticism to refer to the metadata associated with an identified location.
From Dr Pieloor’s evidence, at [176] – [178], the opponent’s criticism is about the absence from the specification of an explanation of how metadata is associated with specific segments extracted from different multimedia content streams. Dr Pieloor states the application does not define how different segments would be identified and that it would be a major undertaking to determine this.
The test for the full description of an invention was expressed in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd, [2004] HCA 58 at [60] as:-
“For the purposes of S40(2)(a), it is not necessary for the inventor to disclose all the alternative means; it is enough that there is disclosure in the sense of enabling the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty.”
Dr Pieloor has stated the identification of different segments would be a major undertaking. I presume additionally that the identification of different segments from different content streams was meant as a major undertaking. In any case, it seems the test is not solely whether that would be a major undertaking. The above case indicates an affinity for considering the specification, for the purposes of full description, in the light of the capabilities of the person skilled in the art or the addressee at the relevant time. As mentioned earlier, the person skilled in this art would have been an engineer familiar with multimedia content and its manipulation. I am satisfied such a person would have had the capacity to produce something within claims 12 and 13 without new invention, additions or prolonged matters of study presenting additional difficulty.
I conclude the specification fully describes the alleged invention.
Conclusion
I have found that the opposition fails on all grounds other than a relatively minor point of lack of clarity.
That is, claims 4-6 are not clear in respect to the terminology of identifying one or more events.
It is clear that suitable amendments could be made to the claims to overcome the above deficiencies. The necessary amendments would appear to be relatively small in nature and so I conclude that a relatively short period in which to propose suitable amendments is in order. I allow the applicant one (1) month from the date of this decision in which to propose suitable amendments.
Costs
The opponent sought the costs of these proceedings. Costs normally follow the event. The opposition is successful on a relatively minor point of lack of clarity. On the other hand, the opposition is unsuccessful on the remaining substantive grounds of opposition such as novelty and inventive step.
In these circumstances I make no award of costs.
M G Kraefft
Delegate of the Commissioner of Patents
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