T 2305/08 (Rendering transaction/CONTENTGUARD) of 5.7.2012

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining di vi sion to refuse the European patent application no. 02028709.0, dispatched on 11 June 2008 as a so-called de cision according to the state of the file by refe rence to the communi ca tion dated 6 February 2008 which found the pending claims to lack an inventive step, Ar ticle 56 EPC 1973, over the documents

D1: Perritt H., "Knowbots, Permissions Headers & Contract Law", Paper for the Conference on Techno lo gical Strategies for Protecting Intellectual Pro perty in the Networked Multimedia Environment, April 2-3, 1993 (with revisions of 30 April 1993), and

D2: US 5 260 999 A.

II. Appeal was filed on 18 August 2008 with the appeal fee being paid on the same day, and on 21 October 2008 a statement of the grounds of appeal was filed. The appellant requested that the decision under appeal be set aside and that a patent be granted based on the do cu ments subject to the decision.

III. With a summons to oral proceedings the board raised se veral clarity objections, Article 84 EPC 1973, and gave its preliminary opinion that the invention as claimed indeed lacked an inventive step over D1, Article 56 EPC 1973.

IV. In response to the summons, the appellant filed several amended sets of claims to be considered as auxiliary requests and explained their basis in the application as originally filed.

V. Oral proceedings took place on 5 July 2012 during which the appellant withdrew all pending requests and filed a new set of claims to form the basis of its sole request, which is to grant a patent based on

description, pages

1, 3-50 as originally filed

2, 2a as received with letter dated 7 November 2007

drawings, sheets

1-13 as originally filed

claims, no.

1-7 as filed during oral proceedings on

5 July 2012,

or to remit the case to the first instance for further prosecution based on these documents.

VI. The only independent claim 1 reads as follows:

"A system comprising a rendering subsystem and a server repository for storing digital works and controlling the use of digital works in accordance with usage rights (1050; 1450-1457; 1501-1525) associated with said digital works and including a manner of use for a digital work;

said server repository comprising storage means for storing digital works and usage transaction means for:

receiving requests for digital works;

determining whether a request for a digital work should be granted based on usage rights associated with said digital work; and

granting access to said digital work;

said rendering subsystem comprising:

a requestor repository for generating said requests and transmitting said requests to said server repository, said requests specify a manner of use of said digital work; and

means for rendering (403; 412, 413) said digital work; and

wherein said requestor repository is coupled to said means for rendering (403; 412, 413);

wherein

said server repository and said requestor repository are the same device, and the transactions for requesting, determining and granting access are entirely internal in said system;

said usage transaction means for receiving is operative to receive said requests generated by said requestor repository;

said digital work is transmitted from said server reposi tory to said requestor repository as an ephemeral co py of said digital work if the request is granted; and

said ephemeral copy of said digital work is removed after rendering."

VII. At the end of the oral proceedings, the chairman announced the decision of the board.

Reasons for the Decision

New set of claims

1. In the summons to oral proceedings (see point 10) the board of appeal expressed its preliminary opinion that the claimed invention did not imply anything which would "con trol the usage or distribution of a document in a ren dering system" once transferred. This conside ra tion was central for the board's preliminary con clu sion as to lack of an inventive step. The newly in tro duced feature that the digital copy is an ephemeral co py however does express some such control as is argued in more detail below (see point 13) and so con sti tutes a reasonable response to the board's ob jec tions. There fore, the board exercises its discretion under Article 13 (1) RPBA and admits this new request into the procedure.

The Invention

2. The invention generally concerns a system for con trolling the rendering of digital content in accordance with associated usage rights.

2.1 The notions of "digital con tent" and "ren dering" are meant to cover, respectively, any work in a digital re presentation such as audio, video, text or software, and its output in the "desired form", for instance dis playing, printing, playing or executing (cf. original de scription, p. 5, lines 13-16; p. 7, lines 4-7; and figs. 4a and 4b).

2.2 The system is based on interactions between so-called "repositories". This term is central to the invention and discussed at some length in the application (cf. p. 6, line 7 ff., and p. 12, line 17 ff.). For in stance it is disclosed that "the general instance of a repo sitory ... has two modes, a server mode and a re questor mode", but also that there are "various reposi tory ty pes", amongst which a "rendering repository".

2.3 Interaction between repositories is defined in terms of what the application calls "transactions" (see p. 26, penult. par., ff.), in particular "usage trans ac tion" (p. 31, line 16 ff.). During a typical usage trans ac tion a repository in requestor mode ("a re ques tor repo si tory") will request a digital work from a re pository in server mode ("a server reposi tory") and in dicate an intended "manner of use". The server repo si tory will establish whether access to the digital work shall be granted based on the usage rights asso ci ated with the digi tal work, and if so will trans mit it to the reques tor repository. After transmission it is upon the reques tor to ensure that the rights asso ciated with the digital work are not exceeded.

2.4 The claimed invention concerns a sys tem comprising a ser ver repository and a requestor repository as part of a rendering sub system. These three components are tight ly coupled in that the two repositories "are the same device" and that the "transactions for requesting, determining and granting access are entirely internal in said system". The claimed invention further spe ci fies that the digital work is transmitted "as an ephe me ral copy" and that, "after rendering", "said epheme ral co py ... is removed".

Article 123(2) EPC

3. The decision under appeal did not raise any objections under Article 123(2) EPC against the then pending claims, and the board has no reasons to raise any of its own.

3.1 That server and requestor "are the same device", espe cially for requests to render (e.g. print) a work, is disclosed on page 31, lines 21-23 of the original de scription.

3.2 Page 7 (lines 15-16) of the description discloses that a printing repository may keep an "ephemeral copy" of a digital work until it is printed, already the term "ephe meral" in the board's view imply ing that the copy will be deleted thereafter. In the context of the usage rights grammar (cf. p. 19, lines 26-29 and fig. 15) it is dis closed that ephemeral copies may be de fined for other kinds of rendering, too. As part of the "play" and the "print transactions" it is further ex plained that works to be rendered are not "retained after the transactions" but that the rendering device, player or prin ter, "remove the contents from their me mory" (p. 38, lines 18-19 and 35-36; p. 39, lines 24-25).

3.3 The board is thus satisfied that the amended claims do not go beyond the contents of the application as ori gi nally filed and thus conform with Article 123(2) EPC.

Claim construction and Article 84 EPC

4. The board observes that the term "reposi tory" is not an established one in the art with a well-de fined tech ni cal meaning. Therefore, the board con si ders that the mea ning of the server and requestor repo si to ries in the claims is exclusively determined by the fea tures the claims ascribe to them. The term "reposito ry" per se does, in the board's view, not limit the claims but also does not render them unclear.

5. Claim 1 states that the "transactions for re ques ting, de termining and granting access are entirely in ternal in said system" without defining the term "entirely in ter nal" any further. According to the de scription (see p. 31, lines 21-24), when server and re po si tory "are the same device" - and thus the usage transactions are "en tirely internal" - certain transaction steps need not be performed. This applies in particular to the "re gis tration" step via which the repositories would nor mally establish a secure channel between them (p. 27, lines 29-33). Thus that the transactions are claimed to be "entirely internal" corresponds to the fact that nei ther a registration transaction nor a secure channel is claimed, but does not imply any further technical limi ta tion. On this understanding the board has no clarity ob jections against this term.

6. Claim 1 only mentions "trans actions for requesting, de ter mining and granting" but does not refer to a ren de ring transaction, let alone a specific play or print transaction. Claim 1 also fails to specify that the requests generated by the reques tor relate to ren de ring as a specific "manner of use". As it stands, claim 1 thus does not imply that the removal of the ephe me ral copy is part of a transaction invol ving the server repository and the rendering subsystem set up to con trol the use of a digital work within its usage rights. Therefore, the board considers claim 1 to be unclear, Article 84 EPC 1973.

However, it is the appellant's clear and express in ten tion that the ephemeral copy and its removal after ren dering be understood as a constituent part of a ren de ring transaction. In view of the board's finding on in ven tive step (see point 13 below) and in confor mance with the appellant's auxiliary request for re mittal the board decided to leave the due clarification to be done during fur ther prosecu tion before the first instance.

The Prior Art

7. Document D1 discloses a digital library system in which digital works (called "information objects") are stored on servers from which they can be retrieved by users at their workstations (D1, p. 2, penult. par.).

7.1 Each digital work contains a "permissions header" defi ning the "terms under which the copyright ow ner makes the work available" (p. 1, first par.). These terms may define "manners of use", for instance whether and under what restrictions (and at what price) a digi tal work may be displayed, copied or dis tri buted, or used to create a derivative work (p. 5, 2nd par. ff.).

7.2 While it is true that the permissions headers may con tain bibliographic and pricing information (see D1, p. 4, 2nd par., and p. 5, 3rd par. from the bottom), the board disagrees with the appellant's statement that this makes the permissions headers "equivalent to" mere "bib lio gra phic record information" (see grounds of appeal, p. 2, 1st par.).

8. Document D2 discloses a system in which an application program upon start-up makes a call to a licence server to check whether usage is permitted or not and act accor dingly (e.g. see abstract). Further more, D2 states that the licence management program and the application pro gram "may be executing on the same CPU" (col. 10, lines 61-63).

Article 56 EPC 1973

9. It is common ground that D1 constitutes the best star ting point for the assessment of inventive step of the claimed invention. In particular, according to D1 it is a precondition for the transmission of documents that a document request and the permission header match, while in D2 the licences do not regulate program trans mission but program execution on the client com puter.

10. According to the appellant D1 does not disclose the request of an individual digital work but only the request for any document that matches a given search que ry (grounds of appeal, p. 3, 3rd par.).

10.1 The board concedes that the queries according to D1 may not identify an individual document. In the board's judgment however it is entirely obvious that individual documents can be identified using such queries, say by ISBN or by a suitable combination of author, title and edition of a book.

10.2 In view of es tablished digi tal library technology (cf. D1, e.g. p. 3, 1st full par.) such queries constitute at least an obvious modification of the system of D1.

11. The appellant also argues that the decision under appeal is wrong not to have "distinguished between the reques tor repository and the rendering subsystem" and challenges the finding of the decision (in point 2.1 of the summons to oral proceedings) that the client work station of D1 contains a requestor repository (grounds of appeal, p.3, last par.).

11.1 The board considers it to be implicit that the client workstation according to D1 is equipped with a display and to be at least obvious that it is further equipped with a printer. Both qualify as "means for ren dering" as claimed. Likewise, the board con siders that the que ries issued by the client work stations and their treat ment at the servers correspond to the claimed re quests, only up to the marginal diffe rence between queries and requests as just discussed (point 10).

11.2 Therefore, the board is of the opinion that the client workstations according to D1 comprise a "repository" as claimed, broadly interpreted as argued above (see point 4), which in com bi nation with a rendering means such as its display forms a "ren de ring subsystem" as claimed.

12. D1 does not disclose that client and servers "are the same device".

12.1 The appellant does not challenge that the licence ma nage ment system and the application pro grams according to D2 - acting, respectively, as server and clients for licences - may run on the same CPU and thus on the same computer (D2, loc. cit.). It argues however that the different treat ment of permissions or licences, in D1 and D2 res pectively, namely before transmission or just before exe cution, either rules out a combination of D1 and D2 altogether, or means that their combination would yield a li cence-based system like that of D2 which would not render obvious the claimed invention.

12.2 The board disagrees with this argument, considering that the option to run server and clients on the same CPU is quite independent from the question of how per missions are managed or when. Therefore, the skilled per son would obtain as a separate teaching from D2 that client and server could be "the same device" and incor po rate it without hesitation into the system of D1.

13. The board agrees with the appellant that D1 does not disclose or suggest anything which would "con trol the usage or distribution of a document in a ren dering sys tem, i.e. client terminal" once transferred (grounds of appeal, p. 2, last par.).

13.1 In contrast, amended claim 1 discloses that digital works are removed after rendering. In the board's view it is clear from claim 1 as a whole that this removal is automatic.

13.2 The board accepts that the removal of an ephemeral copy of a digital work after rendering is a measure of ma king sure that a digital work transmitted for ren de ring is not used in further, possibly prohibited manners. While this may not be a particularly secure way of en for cing usage rights, it does achieve some security which may be appropriate according to circumstances (cf. in this respect the description, p. 14, 4th par. - p. 16, 1st par. and table 2).

13.3 D1 does not disclose that a document transmitted to a cli ent workstation may be automatically removed after ren dering. Insofar as a document is requested and trans mitted for one-time viewing, say, it would appear obvious that the user may delete it when, after viewing, it can no longer be legally used. However, as the board reads D1, this is entirely within the user's responsi bi lity and no automatic support to do this is disclosed or suggested in D1. The same applies to D2.

13.4 So the board concludes that claim 1, under the proviso of the clarity objection raised above (point 6), is non-obvious over D1, even in view of D2, and thus shows an inventive step with regard to these documents in the sense of Article 56 EPC 1973.

Extent of the search

14. The board observes that neither the original claims nor the claims subject to the decision under appeal men tioned or implied that the digital work should be trans mitted as an ephemeral copy to be removed after rendering.

14.1 Therefore the board cannot establish for sure that this feature was covered by the European search and it would thus be inappropriate to order the grant of a patent.

14.2 Therefore, it is necessary that the case be re mitted to the department of first instance for further prosecu tion during which the examining division should clarify whether the pertinent feature was searched and, if not, perform an additional search and proceed from there.

14.3 In case that further prosecution does not produce any new pertinent document it is also noted that this application can only proceed to grant when the clarity problem (point 6) has been remedied and the description has been adapted to the new set of claims.

ORDER

For these reasons it is decided that:

1. The decision is set aside.

2. The case is remitted to the department of first instance for further prosecution on the basis of the sole request before the board, namely

description, pages

1, 3-50 as originally filed

2, 2a as received with letter dated 7 November 2007

drawings, sheets

1-13 as originally filed

claims, no.

1-7 as filed during oral proceedings on

5 July 2012.