TiVo Inc.
[2014] APO 52
•16 July 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
TiVo Inc. [2014] APO 52
Patent Application: 2005306361
Title:Method and apparatus for secure transfer of previously broadcasted content
Patent Applicant: TiVo Inc.
Delegate: Dr S.D. Barker
Decision Date: 16 July 2014
Hearing Date: Submissions were due by 21 June 2014, but were not provided
Catchwords: PATENTS – re-examination of application following withdrawal of opposition – objection of lack of novelty and inventive step – no reasonable prospects of the applicant amending the specification – application refused
Representation: Patent applicant: Pizzeys Patent and Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005306361
Title:Method and apparatus for secure transfer of previously broadcasted content
Patent Applicant: TiVo Inc.
Date of Decision: 16 July 2014
DECISION
I refuse to accept the request and specification.
REASONS FOR DECISION
Patent application number 2005306361 was filed as an application under the Patent Cooperation Treaty on 21 November 2005. The applicant is TiVo Inc. (TiVo). The application was examined and accepted by the Commissioner, and subsequently opposed by FOXTEL Management Pty Ltd (FOXTEL). FOXTEL withdrew the opposition on 17 February 2014. In the light of documents filed in evidence in relation to the opposition, the Commissioner decided to re-examine the application, and issued a report on 4 March 2014. TiVo did not respond to the report, and the Commissioner decided to determine the re-examination on the basis of written submissions. TiVo did not provide any submissions.
The re-examination
The Examiner reported that claims 1 – 9, 11 – 21, 23 – 32 and 34 lack novelty in the light of US 2003/0158958 (D1), and that claims 1 – 3, 8, 9, 12 – 15, 20, 21, 24 – 26, 31 and 32 lack novelty in the light of US 2004/0024886 (D2). The Examiner also reported that claims 1 – 34 lack inventive step in the light of both D1 and D2 (each considered separately).
Clearly there are no claims as presently drafted that the Examiner considers possess inventive step. It may be possible that the claims could be amended to define subject matter that the Examiner would consider to be both novel and inventive. TiVo has not provided submissions disputing the objections, and has not proposed any amendment to attempt to overcome the objections.
In this situation, it appears that TiVo has lost interest in further prosecuting the application. Consequently, if I find that an objection is validly raised, there are no reasonable prospects of the objection being overcome. There would be no point in giving TiVo a further opportunity to amend, and I should proceed to refuse the application.
The specification
The specification relates to the secure transfer of content between devices over a network. Specifically, the specification is concerned with obtaining previously broadcast material and securely transferring it to devices. The specification ends with 34 claims which are directed to a method of providing secure transfer, a system for providing secure transfer, an apparatus for providing secure transfer, and a computer-readable medium.
Claim 1
There are several independent claims. For the present decision I will only consider claim 1:
A method for providing secure transfer of previously broadcast content comprising:
receiving, at a service provider, a request from a digital video recorder (DVR) to retrieve previously broadcasted content;
validating the request at the service provider by determining, based on a unique identifier assigned to the DVR, that the DVR is authorised to retrieve the previously broadcasted content;
determining that the requested broadcasted content is located on a plurality of devices;
creating a pool of devices based on information regarding the the [sic] plurality of devices; and
initiating, at the service provider, a transfer of the previously broadcasted content from one or more devices in the pool of devices to the DVR, the initiating step includes sending a message, by the service provider, to one or more devices in the pool of devices to transfer at least a portion of the requested previously broadcasted content to the DVR.
The features of the claim are self-explanatory.
Novelty
It is a requirement of subsection 18(1) of the Patents Act (the Act) that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art. A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim.
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"
US 2003/0158958
US 2003/0158958 (D1) was published on 21 August 2003. Consequently it is part of the prior art base.
The general nature of the disclosure in D1 can be gleaned from the Abstract:
"An electronic content delivery system uses a network of end-user devices around a hub. Each end-user device has storage capability. Content is stored in a distributed fashion on the network of those end-user devices for being made available to individual ones of these devices in a P2P fashion so as to cut download time and reduce transmission errors. The system enables digital rights management of the content."
The Examiner provided a consideration of D1 in his report, referring to paragraphs [0003] – [0005] and [0015] – [0018] of D1. It is apparent to me after considering these and other portions of D1 that it is a valid citation against claim 1.
I am satisfied that the objection has been validly raised in relation to D1 and the novelty of claim 1. It is unnecessary to consider D2.
Conclusion
The objection of lack of novelty was validly raised, and there are no reasonable prospects of the objection being overcome. The application should be refused.
Dr S.D. Barker
Delegate of the Commissioner of Patents
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