T 1384/15 (Class-action prediction/SWISS RE) of 17.9.2018

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 08154400.9.

II. Citing no documents, the Examining Division refused the application for lack of inventive step in the subject-matter of the independent claims. At the search stage, the Search Division had issued a declaration under Rule 63 EPC as in force until 1 April 2010 to the effect that carrying out a meaningful search into the state of the art had not been possible. At the examination stage, the Examining Division had not performed an additional search.

III. In the statement of grounds of appeal, the appellant filed two annexes corresponding to a main request and a first auxiliary request, each annex containing the text of amended claims 1 and 16.

IV. In a communication accompanying a summons to oral proceedings, the Board raised a number of clarity objections and expressed the preliminary view that the subject-matter of claim 1 of both annexes lacked inventive step over notorious prior art.

V. In its written submissions, the appellant filed two sets of amended claims as annexes A and B.

VI. Oral proceedings were held on 17 September 2018. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VII. The appellant requested that the decision under appeal be set aside and:

- as a main request, that it be concluded that the newly filed claims were clear and that the case be remitted to the Examining Division for assessing inventive step on the basis of the claims filed as annex A or B;

- as a first auxiliary request, that a patent be granted on the basis of the claims filed as annex A; and

- as a second auxiliary request, that a patent be granted on the basis of the claims filed as annex B.

VIII. Claim 1 of annex A reads as follows:

"Method for triggering upcoming class actions and/or legal actions based on a predefinable exposure threshold, one or more linkable search key words (310,311,312,313) being stored in a memory (31), a computing unit (10) accessing, via a network (50), network nodes (40,41,42,43) connected to source databases (401,411,421,431), and data from the source databases (401,411,421,431) being selected based on the search key words (310,311,312,313), characterized

in that at least one rating parameter (320,321,322) is stored in a memory (32) assigned to a search key word (310,311,312,313) and/or to a combination of search key words (310,311,312,313) wherein the rating parameter (320,321,322) comprises an evaluation topic with corresponding evaluation attributes,

in that an assignment of at least one source database (401,411,421,431) comprising a network address of the source database (401,411,421,431) and/or a link to the source database (401,411,421,431) and categories and/or groups of the source database (401,411,421,431) is stored assigned to a search key word (310,311,312,313) and/or a combination of search key words (310,311,312,313),

in that, by means of a filter module (30), the computing unit (10) accesses the source databases (401,411,421,431) of the network nodes (40,41,42,43), scans their content according to the defined search key word (310,311,312,313) and/or a combination of search key words (310,311,312,313) and generates a scorecard (330,331,332) for data sets found in the source databases (401,411,421,431) of the network nodes (40,41,42,43) for each rating parameter (320,321,322) in connection with the assigned search key words (310,311,312,313) and the assigned source databases (401,411,421,431) using a content-based indexing technique,

in that the generation of the scoreboard for each rating parameter (320,321,322) is performed with respect to a time-based rating based on the temporal correlation of when and which content was entered to the respective source databases (401,411,421,431) and an exposure-based frequency rating, wherein the exposure-based frequency is generated as a function of detected one or more exposure variables comprised by the evaluation topic with corresponding evaluation attributes,

in that, by means of a parameterization module (20), a variable frequency value (21) is generated at least partially dynamically based on the scorecard (330,331,332) for the respective rating parameter (320,321,322) with respect to their exposure-based frequency, which variable frequency value (21) corresponds to network (50) class action frequency variations and/or legal action frequency variations with respect to time, and

in that, by means of a tracing unit based on a generated assigned distribution of the variable frequency values (21), a predefined exposure threshold is triggered, whereas a trigger signal is generated with respect to time and the variable frequency values (21) and transmitted for activation to an automated receiving work unit."

IX. Claim 1 of annex B differs from claim 1 of annex A in that the following paragraph has been inserted before the last paragraph:

"in that, by means of the parameterization module (20), one or more of the rating parameters (320,321,322) are generated dynamically and added to the rating parameters (320,321,322) during the generation of the scorecard (330,331,332) by means of dynamically checking the multimedia data and/or data of the scorecard 330,331,332 by way of association according to a rating parameter (320,321,322) during indexing,"

X. The appellant's arguments where relevant to the decision are discussed in detail below.

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The application

2.1 The application relates to a system and method for aggregating and monitoring "multimedia data stored in a decentralised way triggering upcoming class actions". The "Technical Object" section, in paragraph [0009] of the A1 publication, explains that the system and method proposed in the application are meant to assist companies with risk management and due diligence related to legal actions.

2.2 The system's architecture is illustrated in Figure 1 and described in paragraphs [0019] to [0022].

Figure 1 shows a computing unit 10 connected via a network 50 to network nodes 40 to 44, which can include web servers, chat servers, email servers, news servers, e-journal servers, group servers and other file servers. The network nodes are connected to source databases 401, 411, 421, 431 and 441. The source databases contain multimedia data.

The computing unit 10 is coupled to memories 31 and 32. Memory 31 contains "linkable search key words" 310 to 315. Memory 32 contains "rating parameters" 320 to 325. Each rating parameter is assigned to a search keyword or a combination of search keywords.

The rating parameters "include the evaluation topic, e.g. a selected risk for a certain company, class action, legal action, court case, etc. with corresponding evaluation attributes" (paragraph [0021]).

The rating parameters can also contain "limitations with respect to the network 50 and/or specific network nodes 40-43" (paragraph [0022]).

3. The appellant's requests

3.1 The Board understands the appellant's main and first and second auxiliary requests as two substantive requests, namely that the decision under appeal be set aside and that a patent be granted on the basis of the claims filed as annex A or, in the alternative, on the basis of the claims filed as annex B, in combination with procedural requests relating to how the Board should deal with the substantive requests. In particular, with its main request the appellant requests the Board to deal only with clarity and to remit the case to the Examining Division for assessing inventive step.

3.2 The Board notes that it is not bound by the appellant's procedural requests. Nevertheless, it considers it appropriate to assess compliance with the requirement of clarity first.

4. Clarity

4.1 Claim 1 of annex A is directed to a method "for triggering upcoming class actions and/or legal actions", but it does not contain any features relating to the triggering of such actions. At the oral proceedings, the appellant explained that the invention was about measuring the probability that a class action or other type of legal action would occur, which is in line with the Board's understanding of the application. The Board concludes that the expression "for triggering upcoming class actions and/or legal actions" is at odds with the application as a whole and renders the claim unclear within the meaning of Article 84 EPC.

4.2 According to claim 1 of annex A, the computing unit 10 accesses the source databases, scans their content "according to" a search keyword or a combination of search keywords and, for each rating parameter, generates a "scorecard" for data sets found in the source databases.

Claim 1 further specifies that the generation of the scorecard (here the claim states "scoreboard", but at the oral proceedings the appellant confirmed that "scorecard" was meant) is performed "with respect to a time-based rating based on the temporal correlation of when and which content was entered to the respective source databases and an exposure-based frequency rating, wherein the exposure-based frequency is generated as a function of detected one or more exposure variables comprised by the evaluation topic with corresponding evaluation attributes".

In the Board's view, this formulation does not allow the reader of the claim to establish with any certainty what a "scorecard" is and how and from what kind of data it is generated. To start with, no other part of the claim refers to "exposure variables", let alone explains what is specifically meant by them. This means that it also cannot be understood in what sense the "exposure-based frequency" or "exposure-based frequency rating" is generated "as a function" of exposure variables. Although "when and which content was entered to the respective source databases" can be understood as referring to the points in time at which the data sets found had been entered in their respective source databases, the claim leaves undefined how a "time-based rating" is "based" on the temporal correlation between these points in time and the "exposure-based frequency rating" (which apparently is also a function of time), how scorecard generation is performed "with respect to" such a rating and, finally, what specific type of information is produced that makes up the "scorecard".

At the oral proceedings, the appellant attempted to explain what was behind terms such as "scorecard", "exposure-based frequency" and "exposure variables". But Article 84 EPC requires the claims to be clear; it is not sufficient that the terms used in a claim can be linked to plausible concepts if the wording of the claim does not allow the reader to determine the matter for which protection is sought.

Hence, this is a further reason why claim 1 of annex A is not clear (Article 84 EPC).

4.3 The same objections apply to claim 1 of annex B, which is therefore likewise unclear (Article 84 EPC).

5. Inventive step

5.1 Although claim 1 of both annex A and annex B is unclear, the appellant's explanations given at the oral proceedings, which accord with the Board's initial understanding as expressed in its communication, allow the Board to assess inventive step.

5.2 From a technical point of view, the computing unit of claim 1 of annex A retrieves, for a number of "rating parameters", multimedia data from a number of source databases to which it is connected via a network. For each rating parameter, this retrieval of data is based on search keywords associated with the rating parameter and is limited to the source databases assigned to the search keywords.

The retrieved data (the "found data sets") is then processed on the basis of various parameters and principles, inter alia with the help of scorecards, resulting in the generation of a "trigger signal" (the claim mentions a further concept, namely that of "variable frequency values", linking the generation of the trigger signal to the generated scorecards).

The "trigger signal" is transmitted "for activation" to an "automated receiving work unit". According to paragraph [0011] of the description, this may refer to signalling a financial computing system to activate or block certain financial transactions.

5.3 Precisely how the retrieved data is to be processed with the help of scorecards in order to achieve the generation of a "trigger signal" with the desired properties is not clearly defined in the claim (see in particular point 4.2 above), and the Board has some doubt that the application as filed discloses this in a sufficiently clear and complete manner. But for the purpose of assessing inventive step in the present case, the following conceptual understanding of the invention suffices.

As the appellant explained at the oral proceedings, the goal of the invention is to estimate the probability that, in a particular context, certain legal actions such as class actions will be instigated. The main idea behind the invention is that upcoming legal actions can be predicted by analysing the content of certain information sources, such as web-sites, internet chat rooms and email forums (see paragraph [0023]). If the frequency of critical postings about a particular topic, for example postings mentioning side effects of a drug, has recently risen, the probability that a legal action will be brought will have increased.

Hence, the various claim features relating to the processing of the retrieved data are intended to specify procedural steps for analysing information extracted from relevant data sources to come to an estimation of the likelihood of an upcoming legal action and for deciding whether (financial) action needs to be taken.

5.4 Computing units, computer networks and network nodes connected to source databases (database servers) were notorious at the priority date of the present application, i.e. their existence in April 2007 cannot be reasonably disputed (cf. decision T 2467/09, reasons 8). It was also notorious to search databases on the basis of keywords or combinations of keywords. The appellant indeed did not dispute this.

5.5 In the Board's view, the data processing scheme of claim 1 of annex A, as explained in point 5.3 above, is based only on non-technical considerations about how to make predictions about upcoming class actions or legal actions on the basis of cognitive data such as internet postings. This non-technical data processing scheme specifies, in particular, rating parameters together with relevant types of multimedia data and keywords, and the transaction which is to be activated or blocked.

The Board judges that the skilled person, starting from a notorious computer network connecting database servers and client computing units and faced with the problem of implementing the non-technical data processing scheme, would arrive at the claimed subject-matter without the exercise of inventive skill. In particular, he would, for each rating parameter, store relevant search keywords and links or network addresses of relevant database servers in a memory of a computing unit and implement a suitable "filter" software module to retrieve the required data from the databases. He would also transmit a specification of a transaction to be activated or blocked to the appropriate financial system as a "trigger signal".

5.6 At the oral proceedings, the appellant did not contest that the subject-matter of claim 1 of annex A lacked inventive step if the data processing scheme were found to be non-technical. But it argued that the scheme did in fact provide a technical contribution. Although the prediction of an upcoming legal action was admittedly not a technical result, automation of the process of making such predictions was. Conventionally, the probability that a legal action would be brought was estimated by a lawyer, who analysed the situation in view of legal principles and his experience. The invention did not suggest programming a computer to function in the same way as a lawyer, which would be difficult if not impossible. Instead, it proposed a very different scheme which was amenable to implementation on a computer. The person developing this scheme was neither a legal expert nor a computer specialist but a technical expert in between the legal expert and the computer specialist. All the features of the scheme contributed to the solution of a technical problem, namely the automation of predicting upcoming legal actions, and thus made a technical contribution.

5.7 The Board cannot accept this argument. Although it is true that automating a particular activity by suitably programming a computer is technical because it involves the use of technical computer means, it does not follow that all the steps involved in automating the activity are technical.

In the present case, the automation is based on the idea that the probability of a legal action can be derived from what people write on web-sites and in internet chat rooms and email forums. The Board agrees with the appellant that this idea is neither a pure business idea nor a purely legal idea, but what matters is that it does not reflect any technical principles. In particular, the mere fact that the idea lends itself to being implemented on a computer (in so far as it can be sufficiently understood despite the lack of clarity) does not mean that it is technical (see opinion G 3/08, OJ EPO 2011, 10, reasons 13.5 and 13.5.1, and decision T 1358/09 of 21 November 2014, reasons 5.5).

5.8 The Board is also not convinced by the analogy that the appellant attempted to draw in its statement of grounds of appeal with, for example, an earthquake prediction system. The present invention does not involve making a prediction about physical processes on the basis of measured physical quantities and a model based on technical considerations about such processes; instead, it involves the retrieval of cognitive information and a scheme for processing that information not based on technical considerations.

5.9 The appellant also argued that determining which source databases were more relevant for certain rating parameters was a technical issue, as it was based on the structure and functionality of those databases. In the Board's understanding, however, whether the data contained in a particular source database is relevant for a certain rating parameter (e.g. the probability that a class action will be brought) depends on the cognitive meaning of the data stored in the database. In any event, the claim does not reflect any considerations about the structure and functionality of different source databases.

5.10 In view of the above, the Board reaches the conclusion that the subject-matter of claim 1 of annex A lacks inventive step (Article 56 EPC).

5.11 Claim 1 of annex B adds to claim 1 of annex A a step of dynamically generating rating parameters by means of a "parameterization" software module. Since the dynamic generation of rating parameters (dynamic in the sense that new rating parameters are somehow produced in the process of generating the scorecard for another rating parameter) is part of the non-technical data processing scheme, and since it is obvious to implement this non-technical step (again, to the extent that the application sufficiently discloses it) by means of a suitable software module, the subject-matter of claim 1 of annex B too lacks inventive step (Article 56 EPC).

6. Conclusion

Since neither of the appellant's substantive requests complies with the EPC, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.