T 2090/08 (Unused digital rights/LG) of 9.1.2013

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division, with written reasons dispatched on 23 April 2008, to refuse European patent application 05016429.2 for lack of an inventive step, Article 56 EPC 1973, over, inter alia, the document

D1: US 6 009 401 A.

II. Notice of appeal was filed on 18 June 2008, the appeal fee being paid on the same day. A statement of grounds of appeal was filed on 22 August 2008. It was requested that the decision under appeal be set aside and that a patent be granted based on a new set of claims filed with the grounds of appeal.

III. With summons to oral proceedings, the board indicated that, according to its preliminary opinion, the deci sion as to lack of inventive step over D1 would have to be confirmed. Objections under Article 84 EPC and Rule 29 (4) 1973 EPC were also raised.

IV. In response to the summons, the appellant filed amended claims accor ding to a main and two auxiliary requests, and reques ted the grant of a patent based on the following documents:

claims, numbers

1-44 according to the main or the 1st auxilia ry re quest, or

1-41 according to the 2nd auxiliary request, all filed with letter of 29 November 2012

description, pages

2a, 3-5, 16 filed with letter of 29 November 2012

2 filed with letter of 17 September 2007

7, 8, 13 filed with the grounds of appeal, and

1, 6, 9-12, 14, 15 as originally filed

drawings, numbers

5, 6, 8C, 8D, 11 filed with letter of 29 November 2012

1-4B, 7, 8A, 8B, 9, 10 as originally filed

V. Claim 1 according to the main request reads as follows:

"A server (20) for processing access rights to digital contents in a Digital Rights Management, DRM, system, the server adapted to manage at least one rights object related to accessing the digital contents and further adapted to:

analyze a request message received from a first terminal (10), the request message indicating a transfer of the at least one rights object to a second terminal (11) if the request message comprises an identifier of the second terminal (11);

transmit a response message, to the first terminal, containing status information indicating successful processing of the request message so as to enable the first terminal (10) to delete the at least one rights object that the first terminal intends to transfer to the second terminal (11);

transmit the at least one rights object to a second terminal (11) accroding to the indicated transfer,

wherein, when the at least one rights object cannot be successfully transferred to the second terminal (11), the server (20) is adapted to provide the first terminal (10) with selection options comprising at least two of a refund by cyber cash, re-trying the transfer, obtaining another rights object and getting back of the rights object."

Claim 1 according to the 1st auxiliary request is iden ti cal with claim 1 of the main request, except that in its third paragraph, between the words "delete" and "the", the following phrase is inserted:

", directly upon receipt of the response message by the first terminal,"

Claim 1 according to the 2nd auxiliary request differs from claim 1 of the 1st auxiliary request in that the two references to the "server (20)" are replaced by references to the "rights issuer (20)" and in that, at its end, the following text is added:

"wherein, in the operation of providing the first device (10) with selection options:

the rights issuer (20) is adapted to transmit a status message to the first terminal (10), the status message indicating that the transfer failed, so as to enable the first terminal (10) to connect to a presentation server (30) using a URL address of the presentation server included in the status message."

All requests further contain an independent method claim 29 which corresponds closely to the respective independent server or rights issuer of claim 1.

VI. Oral proceedings were held as scheduled on 9 January 2013. At the end of the oral proceedings, the chairman announced the board's decision.

Reasons for the Decision

The invention

1. The application relates to a digital rights management (DRM) system which enables users to transfer unused or partially used rights to different users or, alter na tive ly, to return such rights for a refund or a re place ment (see par. 6).

1.1 A DRM system is described and de pic ted (see fig. 1) in which client devices (fig. 1, items 10 and 11) obtain di gital contents from a presentation server (PS, item 30) and the corresponding "rights ob jects" (RO) from a "rights issuer" (RI, item 20), acting as a "server" for rights.

1.2 The transfer of an unused rights object is initi a ted by its present owner, the "first device", which commu ni cates its intent, the per tinent rights ob ject, and the target, a "se cond device", to the rights issuer (see e.g. par. 54), and is per formed under the con trol of the rights issuer (see e.g. pars. 55-57).

1.3 If the trans fer of the rights ob ject to the second de vice fails - because the second device is powered off or otherwise un rea chable, or out of memory (par. 60) - the first device receives a corresponding status me ssage (see original claim 25). This message comprises, inter alia, a URL of the presentation server (see ori gi nal claim 27) and the presentation server, when connec ted, provides the first device with a choice of alter native actions such as to re-try the transfer, to terminate the transfer and keep the rights object, or to obtain a refund or another rights object instead (par. 61).

The prior art

2. Document D1 discloses a DRM system in which end users can obtain licenses, i.e. "rights objects", for the use of "software products" like software programs or other electronic content (col. 3, lines 2-4) at a particular machine. The licenses are maintained by a so-called li cense clea ring house which keeps count of licensed in stalla tions of the software product and re vokes or au thorizes licenses (see col. 3, lines 5-6; col. 4, 47-51 and 55-58; col. 5, lines 7-12), possibly in coopera tion with or on request by a "publisher site" and a "mer chant site".

2.1 The system of D1 enables end users to transfer a li censed software product from one machine to another one or to return the license and obtain a refund (see ab stract, lines 5-10). To this end, the end user's ma chine must run a dedicated so-called "relicensing mana ger software utility" which interacts in particular with the licensing clearing house (col. 2, line 63 - col. 3, line 1; see also col. 4, lines 59-61).

2.2 When a user wishes to transfer a piece of software from a first to a second machine, the relicensing manager on the first machine uninstalls the software product and in structs the license clearinghouse to decrement the license count (col. 4, lines 52-58). Furthermore, the user must store ("capture") the license on, for in stance, a floppy disk (col. 4, lines 53-55). Then the user installs on the se cond machine the captured li cense and, if not already present, the relicensing ma na ger, which requests from the license clearing house that the trans ferred license be authorized for the se cond machine (see col. 4, lines 61-63 and line 66 - col. 5, line 16). Eventually, the license clearing house will increment the license count again (see col. 4, lines 63-65).

2.3 When a user wishes to return a licensed software pro duct for a refund, the relicensing manager on the local machine locks or removes the software and marks the li cense as revoked and then requests the merchant site to initiate the refund and the license clearing house to revoke the license (col. 4, lines 41-51).

2.4 D1 does not disclose that a revoked license is deleted from the end user's machine.

Main request

3. The independent claims of the main request differ from the disclosure of D1 by the following features:

a) The procedure according to D1 requires manual user intervention to store the licence on a floppy disk and to install it on the second device, whereas the transfer procedure according to the claimed inven tion is automatic and runs un der the control of the server. More specifically, the claimed procedure involves a request message from the first terminal to the server, identifying inter alia the second machine to which the rights object is to be trans ferred, and a response message from the ser ver to the first terminal after succesful transfer of the rights object.

b) The system of D1 does not provide the first device with se lection options when the transfer fails.

c) D1 does not disclose that a revoked license, i.e. the rights object, is deleted from the first ter minal, let alone in response to a response message indi ca ting success ful transfer of the license.

This assessment substantially corresponds to the appellant´s ana ly sis according to the letter of 29 November 2012 (p. 7, 2nd par. - p. 8, 2nd bullet point).

4. In the board's judgment, differences a)-c) solve the following problems: Difference a) makes the relicensing procedure of D1 more convenient for the end user by avoi ding the need for a manual transfer of the license, difference b) handles the possible failure of the re li censing pro ce dure at the second terminal, and diffe rence c) saves storage on the first machine by deleting a revoked li cense. The board considers that these prob lems arise naturally in the context of D1 (see below).

5. According to the appellant, these diffe ren ces in ter act with each other for the following reasons.

5.1 During the oral proceedings, the appellant argued that the "early deletion" of the rights object from the first machine - namely in response to an acknow ledge ment of receipt by the server but indepen dent of whe ther it was successfully transferred to the second de vice - incurs the risk that it may have to be reco ve red later when the transfer to the second device fails. The alternative options offered in this case compensate for this risk by, for instance, enabling the end user to take back the rights object.

5.2 In writing (letter of 29 Novem ber 2012, p. 11, 4th par. to p. 12, 1st bullet point), the appellant also argued that the individual alternative options all con tri bute to the saving of storage: The options "refund" and "re-try" are storage saving, so the argument, because a deleted rights ob ject may re main de leted, the option "get another rights ob ject" is sto rage saving because it allows the first terminal to store only the rights objects of interest rather than also other, unused rights objects, and the option "get back old rights object" is sto rage saving "from a dy namic point of view", since the pertinent rights ob ject will at least tem po rarily not be stored on the first terminal.

5.3 The board disagrees: Firstly, the storage saving effect achieved by deleting an unused rights object from the first terminal is unaffected by the options "refund", "re-try", or "get another"; the unused rights object re mains deleted in any case and another rights object requires the same amount of space whether it was ob tained directly or in exchange for a returned right. Se condly, it is an elemen ta ry consequence of deleting any data object that it may have to be recreated or re trans mitted should it be needed again later on for any reason. The interaction between the storage saving effect and the option for the user to "get back" its rights object is thus, in the board's judgment, at best a trivial one.

5.4 The board therefore concludes that differences a)-c) may be assessed independently from each other as to their inventive merit.

Difference a) Transfer of rights object under server control

6. In the board's view it is obviously incon ve nient for the end user in D1 to transfer the licence manually from the first to the second device. This holds in par ti cular in view of the fact that the soft ware itself is transferred from the pub li sher to the second device automatically, i.e. without the user's inter vention. The skilled person seeking to remedy this inconvenience for the end user would be incited to modify D1 so as to auto mate the transfer of the li cense, too.

6.1 A major part of the transfer according to D1 is already auto matic based on interaction between the end user's machines and the license clearing house, i.e. the ser ver (see e.g. col. 4, 55-58 and 63-65; col. 5, lines 3-16). Moreover, D1 already provides for the possibi li ty, if only "in an emer gency", that the license clearing house reissues a license (see col. 4, lines 2-10). There fore, the board considers it to be an immediate option for the skilled person to ex tend the re li censing procedure according to D1 so that the li cense transfer is also handled by the li cense clea ring house.

6.2 Given this, the board further considers it obvious that the protocol according to which the first end user's machine and the license clearing house, i.e. the server, communicate comprises a "request message" which, inter alia, identifies the "second machine" to the license clea ring house, and a "response message" which acknow led ges this request to the first machine and confirms successful receipt of the license.

Difference b) Alternative actions when transmission fails

7. The board notes that the authorization of the software product for the second machine may fail (col. 4, line 66 - col. 5, line 16). It is further generally known that the trans fer of data between devices may fail for a variety of reasons, for example due to communication prob lems. Handling such situa tions is a matter of rou tine for the skilled per son. Indeed the most obvious, and commonplace, react ions to a failed trans mission are to retry or to termi nate the transmission. The board also deems it to be common prac tice to offer these two options for choice to the user. This also applies to fur ther op tions which may happen to be available such as a refund; no ta bly, whe ther or not a refund is offered is an entirely commer cial de ci sion, apart from the fact that it is known from D1 (col. 4, lines 41-51). As a matter of necessity, this se lec tion must be offered at the machine the user happens to in teract with. To the board, it is an obvi ous op tion that the user initiates the transfer at the first machine and stays there during the entire pro ce dure: Thus providing the selection to the first machine is obvious, too. These considerations were put to the appellant in the summons to oral proceedings but were not specifically addressed by the appellant in writing or during oral proceedings.

7.1 During oral proceedings, the appellant referred to D1 as a legacy system and suggested that the age of D1 would discourage the skilled person from modifying D1 towards the invention. Further, in its letter of 29 No vem ber 2012 (p. 13, 1st par.), the appellant argued that D1 would provide a number of negative pointers poin ting away from the claimed invention. In particular, the alterna tive options offered in the failure case were im possible to conduct in the system of D1 (letter of 29 November 2012, p. 13, 3rd par. and bullet points). The board dis agrees for the following reasons:

7.1.1 According to the appellant, the retry option would be "vir tually impossible" and "imprac ti cal beyond reason" within D1 due to the necessary handling of the floppy disk this would imply. In the board´s view it may be left open whether this is indeed the case in the con text of D1 as it stands, because, as already argued above (point 6), it would be ob vi ous independent of the retry option to do away with the floppy disk in favour of full automation. In a fully auto ma ted context how ever, if the transmission or authorisation of the li cense on the second machine fails, the board deems it to be a normal course of action for the license clea ring house to inform the first machine accordingly and to re quest indication from the first machine whether the transfer should be retried.

7.1.2 When the transfer fails, possibly several times, it would be an obvious idea to give up the attempt to re license the software on the second ma chine and, instead, "relicense" the software on the first machine where it had been installed before ("get back"). D1 provides imme diate support for this operation in the sense that the second machine could be identical to the first one.

7.1.3 If, after a failed transfer, the user happens to find it prefe rable to return the license and receive a re fund or an alternative license, the board cannot see any technical complication which would prohibit that the user inform the license clea ring house accordingly and that the due transmissions be triggered ("get refund" or "get another rights ob ject").

7.1.4 The board thus concludes that all the alternative options can easily be incorporated into the system of D1 at least on the assumption that the entire transfer pro cedure is automatic and under the control of the li cense clearing house, which the board argued above is an obvious improvement of D1 (points 6 and 6.1). The board also cannot see that D1 would, by any explicit negative pointers or its age, keep the skilled person from modifying D1 in this way.

7.2 The appellant further argued (sub mission of 29 November 2012, p. 11, 4th par. - p. 12, 1st bullet point) that all the alternative options contribute to the saving of storage on the first machine and/or the entire system, suggesting that the objective technical problem con si dered by the board ("handling transmission failure", see point 4 above) is the wrong one. As ar gued above (points 5.2 and 5.3 above), the board disagrees in sub stance. However, even if a storage sa ving effect could indeed be ascribed to the al ter native options, this would not affect the board’s rea soning, because an ar gu ment showing that the claimed inven tion is obvious for the skilled person from the desire to achieve some of its effects is not invali da ted by the presence of further effects.

Difference c) Deleting a revoked rights object

8. The problem to con tain, control or reduce storage con sumption is one that, in the board's view, a person skilled in software develop ment is always aware of. The board therefore deems ob vious the idea that any unused data object - such as, in D1, a revoked license - should, at some point, be deleted from the end user's machine. It is also ob vious for the skilled person that the unused data ob ject can be deleted as soon as possible or at later point in time. In order to choose between these al ternatives the skilled person would have to assess the circumstances and weigh the re quire ments against each other, including, e.g., whether sto rage consumption is critical and whether it is like ly that a deleted object may be needed again later (see point 5 above). In the board's view, the skilled person would make this assessment and choice as a matter of routine and with out exercising an inventive step.

9. In summary, the board concludes that the subject matter of the independent claims of the main request lack an inventive step over D1, Article 56 EPC 1973.

1st auxiliary request

10. The independent claims of the 1st auxiliary request differ from those of the main request only in requiring that the pertinent rights object is deleted "directly upon receipt of the response message by the first ter minal". Disregarding the question whether the feature of "direct deletion" is clear and supported by the application as originally filed, the board has already expressed above (point 8) its opinion that deletion of a data object "as soon as possible" is an obvious op tion for the skilled person. Therefore, the above ar gu ments as to lack of inventive step vis-à-vis the main request apply unchanged to the 1st auxiliary request.

2nd auxiliary request

11. The independent claims of the 2nd auxiliary request refer to the "rights issuer" where those of the main and 1st auxiliary request merely refer to a "server". This amendment does not affect the above analysis of the higher ranking requests since the "license clearing house" according to D1 issues the licenses and thus qua li fies as a "rights issuer" within D1.

11.1 The independent claims of the 2nd auxiliary request fur ther specify that the rights issuer sends a "status message" to the first terminal which indicates the failed transfer and includes a URL to a presentation server.

11.2 According to the application (e.g. par 61 and fig. 7), the first terminal connects to the URL of the presen tation server which then provides the selection of al ternatives to the end user.

11.3 The board notes that the claim language does not imply how the user at the first terminal uses the transmitted URL nor what happens at the presen ta tion server. This might constitute a lack of clarity or warrant a very broad claim interpretation. However, since the appellant offered to clarify the claim language in view of the application (loc. cit.), the board decided, for the appellant's benefit, to leave these and similar ques tions open and to interpret the claim langua ge as intended and disclosed in the application.

11.4 The appellant argued that the choice to provide and handle the selection of alternative options at the pre sentation server avoids the need to provide the corres ponding control on the first terminal and therefore re duces the terminal's memory requirements.

11.5 However, D1 teaches that a "relicensing manager" must be in stalled on each end user's machine before it can obtain a license. Evidently, this requirement is un affected by the mere fact that additional services are provided to the end user's machine.

11.6 According to D1, a "publisher site" and a "merchant site" cooperate with the license clea ring house to serve the different user requests. For in stance, a user re quest for a refund is handled by the merchant site (D1, col. 4, lines 41-51 which eventually instructs the li cense clearing house to revoke the license. By analogy it would be obvious that similar requests such as to license a different product instead of obtaining a re fund (i.e., "get another rights object") are handled by the merchant site, too.

11.7 The board considers that the distribution of tasks over different servers in a distributed system in general, and, over the specific servers disclosed in D1 in parti cular, is a task which the skilled person would address and solve without exer ci sing an inventive step according to circumstances. Thus it would also be ob vious for the skilled person to choose the merchant site of D1 as the claimed "presentation server". Using a URL to identify the relevant server to the user would also have been an obvious option for the skilled person at the priority date of the present application.

11.8 Therefore, the board comes to the conclusion that also the additional features of the independent claims of the 2nd auxiliary request are insufficient to establish an inventive step, Article 56 EPC 1973, even when in terpreted according to the appellant’s intention on the basis of the description.

Summary

12. There being no allowable request, the appeal has to be dismissed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.