T 2435/22 27-01-2025

1. The appeal is admissible.

Patent as granted, inventive step when starting from D3 - Article 100(a) EPC

2. Closest prior art

It is common ground between the opposition division and both parties that document D3 represents the closest prior art.

3. Distinguishing features

3.1 The opposition division held that document D3 did not disclose feature M1.1.1, M1.1.2, M1.1.3, M1.2, M1.4 or M1.5 of claim 1 (see point 22 of the Reasons for the decision).

3.2 The appellant-opponent argued that the distinguishing features were feature M1.1.3 and the feature "updating the last action indicator" in feature M1.4 (referred to by the appellant-opponent as feature M1.4UPD_LAST_ACT) (see pages 3 to 9 of the statement of grounds of appeal).

3.3 The respondent-proprietor submitted that each of features M1.0, M1.1, M1.1.1, M1.1.2, M1.1.3, M1.2, M1.3, M1.4 and M1.5 comprised elements which were not disclosed in document D3 (see pages 8 and 9 of its letter dated 5 June 2023).

3.4 The board's view regarding the distinguishing features is set out below.

Document D3 discloses a method and system for streaming audio-video "content units", which are individual information items (corresponding to "programs" in claim 1), from a server to a client for presentation to a user (see the abstract and page 2, line 5). The content units are categorised into channels or playlists and may belong to one or more channels or playlists (see page 2, lines 5 to 7). For each registered user, the streaming server stores an array of cursors in persistent storage (see page 2, lines 14 to 16, and page 3, lines 8 to 10). A cursor indicates the point at which a user stopped viewing a content unit (see page 1, line 31, to page 2, line 1). The cursors indicate the user's viewing progress and allow a user to avoid viewing content units or portions of content units which have already been presented, for instance, in other channels (see page 2, lines 9 to 13). Content units may be automatically serially presented to a user in a predefined order (see claims 6 and 7). The array of cursors associated with a user is updated according to the user's viewing progress (see page 2, lines 1 to 4).

Document D3 does not disclose, inter alia, "a series of related programs" or "episodes" thereof. Indeed, the content units of D3 are essentially "individual information items or stories" (see page 2, lines 5 to 7). There is no disclosure in D3 of a series of related content units. The fact that content units may be presented in a "serial presentation" in D3 (see, for instance, claim 7) only means that they may be presented one after the other, not that they form a multi-episode series or that they are related with one another.

3.5 Based on the above, the board considers that document D3 discloses the following features of claim 1.

(M1.0) A method for monitoring a user's viewing progress of [deleted: a series of related ]programs on user equipment, the method comprising:

(M1.1) creating a media profile comprising the user's current viewing progress through [deleted: at least one series of related ]programs, wherein the media profile comprises:

(M1.1.1) a media progress indicator containing a[deleted: n episode] number[deleted: of an episode in the at least one series of related programs], the [deleted: episode ]number being indicative of the user's current viewing progress through the [deleted: at least one series of related ]programs;

(M1.1.2) a position indicator associated with the user's elapsed viewing time[deleted: within the episode]; and

(M1.1.3) [deleted: a last action indicator associated with the user's last monitored action for the episode];

(M1.2) storing the media profile;

(M1.3) determining the user's viewing progress[deleted: through the at least one series]; and

(M1.4) updating the user's current viewing progress in the media profile in response to determining the user's viewing progress[deleted: through the at least one series], wherein updating the user's current viewing progress in the media profile comprises updating the media progress indicator, the position indicator,[deleted: and the last action indicator,] the method further comprising:

(M1.5) [deleted: determining whether the user's current viewing progress through the series is consistent with the progress of the series being broadcast or otherwise being made available to the user equipment; and, where the user's current viewing progress of the series is consistent with the progress being broadcast or otherwise made available to the user equipment, updating the media progress indicator and displaying the date and/or time that the next episode in the series will be broadcast or otherwise made available to the user equipment].

3.6 The appellant-opponent's arguments, where relevant to the present decision, can be summarised as follows.

(A) According to the broad definition of a series and of episodes thereof given in paragraph [0005] of the patent specification, the plots of the individual episodes might be self-contained. Based on this definition, the serially presented content units of D3 might be regarded as episodes of a series. The feature of claim 1 specifying that the programmes of a series were related was a non-technical limitation (see points (a) and (b) on pages 3 to 5 of the statement of grounds of appeal).

(B) In D3, a cursor indicated a position within a content unit. Since there might be a plurality of cursors for a plurality of content units, each cursor must contain information to identify both the content unit and the position within the content unit. Since a content unit might be regarded as an episode of a series of related programmes, that information implicitly comprised both an episode number and a position number and thus anticipated features M1.1.1 and M1.1.2 (see points (c) and (f) on pages 5 to 9 of the statement of grounds of appeal).

(C) Feature M1.5 was non-technical because the step of "displaying the date and/or time that the next episode in the series will be broadcast or otherwise made available to the user equipment" related to a presentation of information. According to established case law, feature M1.5 as a whole must be ignored for the assessment of inventive step.

3.7 The board does not find these arguments persuasive for the following reasons.

Arguments (A) and (B)

Even if, as stated in paragraph [0005] of the patent specification, the episodes of a series are self-contained, they are still sub-parts of the series and share a number of common features, such as typically the characters, setting or theme. The board doubts that a plurality of serially presented "individual information items or stories" (see page 2, line 5, of D3) can be equated to a plurality of episodes of a series. Also, as pointed out by the opposition division, in a series, episodes are in a fixed predetermined order, whereas the content units of D3 are serially presented but have no predetermined order (see the discussion of the "fixed and invariable" order in a series versus the "ad hoc" order of content units in D3 in points 25 and 26 of the Reasons for the decision). Accordingly, D3 does not disclose "a series", "an episode" or "an episode number". The board agrees with the appellant-opponent that each cursor of D3 must contain both information (i.e. a number) to identify the content unit and information (i.e. a number) to identify the position within the content unit. However, the former is not an "episode number" because the content unit is not an episode of a series.

Argument (C)

The board concurs with the appellant-opponent that the step of "displaying the date and/or time that the next episode in the series will be broadcast or otherwise made available to the user equipment" in feature M1.5 relates to a presentation of information and is therefore not technical. However, feature M1.5 also comprises steps of "determining whether the user's current viewing progress through the series is consistent with the progress of the series being broadcast or otherwise being made available to the user equipment; and, where the user's current viewing progress of the series is consistent with the progress being broadcast or otherwise made available to the user equipment, updating the media progress indicator". These determining and updating steps are technical and are not disclosed in D3. Hence, argument (C) fails to convince the board that feature M1.5 as a whole is non-technical.

3.8 The respondent-proprietor's arguments, where relevant to the present decision, can be summarised as follows.

(1) The "media progress indicator" defined in feature M1.1.1 is a single indicator for at least one series of related programmes. In contrast, document D3 discloses an array of cursors, one for each programme, which cannot be equated to a single progress indicator.

(2) Similarly, "determining the user's viewing progress" in feature M1.3 is a determination of the viewing progress through a sequence of programmes, which is different from the determination of the viewing progress through individual programmes in document D3.

3.9 The board does not find these arguments persuasive for the following reasons.

The meaning of the wording "media progress indicator" and "determining the user's viewing progress" is not as limited as the respondent-proprietor has alleged. A "media progress indicator" is not limited to linear progress; it also covers media progress through a plurality of programmes. Similarly, the expression "determining the user's viewing progress" does not limit the progress to linear progress; it also covers viewing progress through a number of unrelated programmes.

3.10 In conclusion, the board takes the view that the distinguishing features of claim 1 are the features that are struck-through in point 3.5 above, a view that is essentially similar to that of the opposition division (see points 21 to 37 of the Reasons for the decision).

4. Technical effect(s) and objective technical problem(s)

4.1 The opposition division and the respondent-proprietor held that the distinguishing features achieved the technical effect of "improving the monitoring of consumption of multiple programs for the benefit of the user" and that the objective technical problem should thus be formulated as "how to improve the monitoring of consumption of multiple programs for the benefit of the user" (see point 50 of the Reasons for the decision and point 3 on page 9 of the respondent-proprietor's letter dated 5 June 2023).

4.2 The appellant-opponent argued that the distinguishing features M1.1.3 and M1.4UPD_LAST_ACT solved a first objective technical problem of how to capture a detailed or more complete profile for better monitoring of the process on the part of the user (see "die Aufgabe, die Erfassung eines detaillierten oder vollständigeren Profils für eine bessere Rückverfolgung des Prozesses auf Seiten des Benutzers zu erreichen" in the first sentence of point (d) on page 11 of the statement of grounds of appeal), whereas distinguishing feature M1.5 independently solved a second objective technical problem of how to inform the user about the availability of user-specific content, such as new episodes of the series followed by the user (see "die Aufgabe, den Benutzer über die Verfügbarkeit benutzerspezifischer Inhalte, hier neuer Episoden der vom Benutzer verfolgten Serien, zu informieren" in the second sentence of point (g) on page 15 of the statement of grounds of appeal). According to the appellant-opponent, there was no synergy between features M1.1.3 and M1.4UPD_LAST_ACT on the one hand, and feature M1.5 on the other.

4.3 The board notes that the appellant-opponent's objective technical problems are only based on a subset of the distinguishing features (see section 3. above).

When all of the distinguishing features (see point 3.5 above) are taken into consideration, the board concurs with the opposition division and the respondent-proprietor that there is synergy between the distinguishing features in M1.1 to M1.4, on the one hand, and distinguishing feature M1.5, on the other hand, because both groups of distinguishing features address problems relating to a user's viewing progress through an episode-based series of related programmes, whereas document D3 is not concerned with a user's viewing progress through an episode-based series of related programmes.

4.4 For the reasons set out above, the board has adopted the formulation of the objective technical problem proposed by the opposition division and the respondent-proprietor, namely "how to improve the monitoring of consumption of multiple programs for the benefit of the user".

5. Obviousness

5.1 Relevance of document D5

5.1.1 Document D5 discloses a method of providing audio-video programmes from a server to a digital video recorder (DVR) at a set-top box (STB) for a user to watch (see paragraphs [0033] to [0035]). A list of downloadable video programmes, which may include one or more episodic series, is communicated from the server to the STB (see paragraph [0039]). The user may select one or more programmes from the list (see paragraph [0040]). Based on the programmes selected by the user, a download schedule is created (see paragraph [0047]). The downloaded programmes are stored in the DVR at the STB (see paragraph [0048]). The locally stored programmes can then be played back by the user. The DVR updates the viewing history of the video programmes, for instance, by providing a "time and date stamp" indicating when the programme was watched using the DVR (see paragraph [0059]). The viewing history may include a "unique episode identification number" (see paragraph [0059]). A "ready-to-watch list (54)" indicates the viewing history of each video programme so that each user can easily determine if and when they have watched each video programme (see paragraph [0059]). For each user, the DVR may store preference data which may be obtained by observing viewing habits of the user using the viewing history (see paragraph [0067]). An "automatic program selector (94)" in the DVR may automatically add programmes, such as unwatched or subsequent episodes of a series, to the download schedule based on the user's viewing history (see paragraphs [0067] to [0070]). The viewing position within a programme is monitored, at least for billing purposes (see paragraph [0087]).

5.1.2 The appellant-opponent argued that by applying the teachings of D5 to the method of D3, in particular regarding the "unique episode identification number", the "ready-to-watch list (54)" and the automatic addition to the download schedule of unwatched or subsequent episodes based on the user's viewing history (paragraphs [0067] to [0070]), the skilled person would have arrived in an obvious manner at all of the features of claim 1 except for features M1.1.3 and M1.4UPD_LAST_ACT, i.e. all of the features of claim 1 except for those relating to the "last action indicator" (see points (g), (h) and 5 on pages 15 to 18 of the statement of grounds of appeal). As to features M1.1.3 and M1.4UPD_LAST_ACT, the appellant-opponent argued that they either could not contribute to inventive step because they did not produce any technical effect or were obvious in view of the pause/resume function disclosed in paragraph [0058] of D5.

5.1.3 The respondent-proprietor's arguments, where relevant to the present decision, can be summarised as follows.

(A1) The "last action indicator" was to be understood as indicating the last action in the series. Document D5 neither disclosed nor suggested including a "last action indicator" in the "media progress indicator" as stated in features M1.1.3 and M1.4UPD_LAST_ACT.

(A2) Document D5 neither disclosed nor suggested determining whether the user's current viewing progress through the series was "consistent" with the progress of the series being broadcast or otherwise being made available to the user equipment as specified in feature M1.5. The automatic downloading of unwatched episodes of a series disclosed in paragraphs [0069] and [0070] of D5 was based on the download history rather than on the viewing history and thus did not imply a determination based on consistency with the viewing history (see the first paragraph on page 10 of the respondent-proprietor's letter dated 22 December 2024).

(A3) Document D5 only disclosed automatically adding a programme from a series to a download schedule if the programme was already available. It did not disclose displaying information on a presently unavailable video programme and, thus, it did not disclose conditionally displaying the "date and/or time that the next episode in the series will be broadcast or otherwise made available to the user equipment" as claimed in feature M1.5 (see point (c) on page 11 of the respondent-proprietor's letter dated 5 June 2023).

5.1.4 The board's view on the relevance of document D5 is set out below.

Although the audio-video programmes are downloaded in D5, whereas they are streamed in D3, the skilled person would have found document D5 and considered it relevant.

By applying the teachings of D5 to the method of D3, in particular regarding the "unique episode identification number" to identify an episode of a series, the skilled person would have arrived in an obvious manner at features M1.0, M1.1, M1.1.1.1, M1.1.2, M1.2, M1.3 and M1.4 but not M1.4UPD_LAST_ACT of claim 1.

In other words, the remaining features which may potentially render the method of claim 1 inventive in view of D3 in combination with D5 are the features relating to the "last action indicator" (features M1.1.3 and M1.4UPD_LAST_ACT) and feature M1.5.

Re features M1.1.3 and M1.4UPD_LAST_ACT

In order to assess whether features M1.1.3 and M1.4UPD_LAST_ACT can render the method of claim 1 inventive, it is necessary to understand what technical effect is achieved by the "last action indicator".

Claim 1 does not indicate what the "last action indicator" is used for. The respondent-proprietor submitted that it helped the system decide what to do next and referred to the examples of last action in Figures 7B and 12 of the patent specification ("skipped last episode", "watched last episode", "scheduled last episode", "delayed viewing schedule", "skipped ahead", "viewed summary"). However, the "last action indicator" of claim 1 is not limited to these examples. It also includes many other possible last actions by the user, such as "increasing the sound volume", for which there is no technical effect. In other words, even if the above examples of a last action can help the system decide what to do next, which in itself is speculative because there is no such feature in claim 1, the fact that the "last action indicator" is not limited to those specific last actions has the consequence that no technical effect is achieved by the "last action indicator" over the whole breadth thereof.

Since the "last action indicator" does not achieve a technical effect, this feature cannot contribute to inventive step. Hence, whether or not this feature is suggested by D5 is irrelevant (see argument A1 in point 5.1.3 above).

The respondent-proprietor argued that the "last action indicator" was implicitly limited to indicating the last action in the series (see argument A1 in point 5.1.3 above).

Regarding this last argument, the board is not convinced that the term "last action indicator" should be understood as having this narrower meaning. Moreover, even if it were to be understood in this way, the "last action indicator" would be obvious in view of the resume function in paragraph [0058] of D5, which implies that the user's last action in the series, e.g. a playback pause, is stored.

Re Feature M1.5

Regarding the displaying step in feature M1.5, the board has already indicated in point 3.7 above that it concurs with the appellant-opponent that this displaying step relates to a presentation of information and is thus a non-technical feature which cannot contribute to an inventive step. Hence, whether this feature is suggested by D5 is irrelevant (see argument A3 in point 5.1.3 above).

As to the step of determining whether the user's current viewing progress through the series is consistent with the progress of the series being broadcast or otherwise made available to the user equipment, the board notes that the patent specification provides examples, but not a definition of what "consistent" means in the context of claim 1 and that this term has a broad meaning within the context of claim 1.

In document D5, the list of episodes of a series in the download schedule corresponds to "the progress of the series ... made available to the user equipment" of claim 1. According to D5, this list of episodes is automatically adjusted based on the user's viewing history (see paragraphs [0067] to [0070]). Unwatched or subsequent episodes may be automatically added to the download schedule based on the user's current viewing history (see paragraph [0069]). For example, if the user watches two episodes of a series, the subsequent two episodes of the series may be scheduled for download (see paragraph [0070]).

In the board's view, it would be obvious from D5 to regularly check whether the episodes in the download list are "consistent" with the user's current viewing progress, i.e. whether the episodes in the download list are still "unwatched" or "subsequent" episodes based on the user's current viewing progress. Hence, the board does not find argument A2 persuasive (see point 5.1.3 above).

As to the step of updating the media progress indicator in feature M1.5, the respondent-proprietor argued during the oral proceedings before the board that this should be interpreted as a mere reference to the updating of the media progress indicator already mentioned in feature M1.4, not as an additional updating step, and that this updating was performed independently of the consistency determination in feature M1.5. The respondent-proprietor further submitted that the condition "where the user's current viewing progress of the series is consistent with the progress being broadcast or otherwise made available to the user equipment" in feature M1.5 should be understood as only concerning the step of displaying the date and/or time at which the next episode in the series will be broadcast or otherwise made available to the user equipment.

The board accepts the above interpretation of claim 1 proposed by the respondent-proprietor. As a consequence, the updating step of feature M1.5 should be ignored because it is already present in feature M1.4, and the above condition cannot contribute to inventive step because it concerns a non-technical feature (displaying the date and/or time).

6. Conclusion on inventive step

For the reasons set out above, the method of claim 1 of the patent specification does not involve an inventive step.

7. Conclusion on the patent as granted

In light of the above, the ground for opposition under Article 100(a) EPC prejudices the maintenance of the patent as granted.

Auxiliary request 1, admittance under Article 13(2) RPBA

8. Article 13(2) RPBA reads as follows:

"Any amendment to a party's appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a communication under Article 15, paragraph 1, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned."

9. Article 13(2) RPBA implements the third level of the convergent approach applicable in appeal proceedings (see document CA/3/19, section VI, explanatory remarks on Article 13(2), first paragraph, first sentence; see also Supplementary publication 2, OJ EPO 2020). When an amendment is made to a party's appeal case at this advanced stage of the proceedings, Article 13(2) RPBA provides that it will, in principle, no longer be taken into account unless the party concerned has shown compelling reasons why the circumstances are exceptional. If such circumstances are shown to exist, the board of appeal may, in exercising its discretion, decide to admit an amendment made to the appeal case at this advanced stage of the proceedings (see document CA/3/19, section VI, explanatory remarks on Article 13(2), third paragraph, last sentence).

10. In the case in hand, auxiliary request 1 was filed by letter dated 21 January 2025, i.e. six days before the date of the oral proceedings.

11. The respondent-proprietor argued that this request should be admitted because of the following "exceptional circumstances" within the meaning of Article 13(2) RPBA.

Auxiliary request 1 had been filed in reaction to the changes in the case created by the board's preliminary opinion in its communication under Article 15(1) RPBA, in which the board had diverged from the opposition division's assessment of inventive step regarding claim 1 of the granted patent in the Reasons for the decision under appeal. The board had assessed the disclosures of documents D3 and D5 differently from the opposition division, for instance, by referring to the "unique episode identification number" in paragraph [0059] of D5. Moreover, the board's reasoning of a lack of inventive step in its preliminary opinion had been based on documents D3 and D5, whereas the opposition division's corresponding reasoning had been based on documents D3, D4 and D5. All these aspects created a fresh case to which the respondent-proprietor reacted by filing auxiliary request 1.

12. The board considers that the above circumstances are not "exceptional circumstances" within the meaning of Article 13(2) RPBA for the reasons set out below.

The fact that the board's preliminary opinion, based on the same legal and factual framework, may diverge from the reasons given by the opposition division in the Reasons for the decision under appeal is something that parties to appeal proceedings must expect because the purpose of appeal proceedings is to review the validity of the decision under appeal. In that reviewing process, the board may assess the content of the disclosures of the cited prior-art documents differently from the opposition division.

In the case in hand, the board's assessment of inventive step in its preliminary opinion was based on prior-art documents D3 and D5 which had been considered in combination by the opposition division in the Reasons for the decision. In its preliminary opinion, the board did not refer to prior-art document D4 because it doubted that the features of granted claim 1 relating to the "last action indicator" contributed to an inventive step since they did not achieve a technical effect. Regarding the "unique episode identification number" in paragraph [0059] of D5, the board notes that this paragraph was mentioned in points 45 and 46 of the Reasons for the appealed decision.

For the reasons set out above, the board disagrees with the respondent-proprietor that the board's communication under Article 15(1) RPBA created a fresh case that would justify the filing of new claim requests.

13. Conclusion on auxiliary request 1

For the reasons set out above, the board does not admit auxiliary request 1 into the appeal proceedings in exercise of its discretion under Article 13(2) RPBA.

Auxiliary requests 2 to 7, 9 and 10 - admittance under Article 12(6) RPBA

14. Article 12(6) RPBA reads as follows:

"(6) The Board shall not admit requests, facts, objections or evidence which were not admitted in the proceedings leading to the decision under appeal, unless the decision not to admit them suffered from an error in the use of discretion or unless the circumstances of the appeal case justify their admittance.

The Board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance" (emphasis by the board).

15. Auxiliary requests 2 to 7, 9 and 10 were filed by the respondent-proprietor (as auxiliary requests 1 to 6, 8 and 9, respectively) with its letter of reply to the statement of grounds of appeal.

16. The respondent-proprietor argued that these auxiliary requests were not filed in the proceedings before the opposition division because the opposition division had consistently expressed a positive opinion towards the patent as granted during the opposition proceedings. There had thus been no need for the proprietor to file auxiliary requests in the first-instance proceedings (see the first paragraph of section 5 on page 11 of the letter dated 5 June 2023 and pages 1 and 2 of the letter dated 19 March 2024).

17. The appellant-opponent submitted that those auxiliary requests should have been filed in the first-instance proceedings because the arguments set out in the appellant-opponent's statement of grounds of appeal were essentially the same as those submitted before the opposition division, namely a lack of inventive step (Article 100(a), 56 EPC) of the subject-matter of claims 1 and 7 of the granted patent in view of either D3 in combination with D4 or D3 in combination with D4 and D5. In other words, there was nothing new in the statement of grounds of appeal which could have justified the filing of those auxiliary requests as a reaction thereto.

18. The board notes that claim requests a patent proprietor intends to use as possible fallback positions in case the patent as granted cannot be maintained should be filed as early as possible and therefore, whenever possible, in the first-instance proceedings. Throughout the first-instance proceedings, the opposition division expressed the opinion that the opposition would be rejected. In the case in hand, the respondent-proprietor therefore raised reasonable doubts that it should have filed the auxiliary requests in the first-instance proceedings. Therefore, the board admits the above auxiliary requests into the appeal proceedings in exercise of its discretion under Article 12(6) RPBA.

Auxiliary requests 2 to 7, 9 and 10 - inventive step - Article 56 EPC

19. Claim 1 of auxiliary requests 2 to 7, 9 and 10 differs from granted claim 1 on account of various combinations of one or more of the following additional features:

(1a) the series consisting of at least one season of a plurality of episodes;

(1b) the series consisting of a plurality of seasons, each season having a plurality of episodes;

(2) a season number;

(3) the at least one series of related programmes is user-selected.

20. The board is of the opinion that these additional features cannot render the subject-matter of claim 1 inventive for the following reasons.

Series, such as the "ER" series mentioned in paragraph [0039] of D5, conventionally comprise one or more seasons. When a series comprises more than one season, it is obvious to identify an episode not only by an episode number but also by a season number. The user selection of an episode in D5 (see paragraph [0040]) also implies a selection of the series to which the episode belongs.

21. Conclusion on inventive step

For the reasons set out above, the subject-matter of claim 1 of auxiliary requests 2 to 7, 9 and 10 does not involve an inventive step (Article 56 EPC).

22. Conclusion on auxiliary requests 2 to 7, 9 and 10

For the reasons set out above, auxiliary requests 2 to 7, 9 and 10 are not allowable.

Overall conclusion

23. In the absence of any request meeting the requirements of the EPC, the patent must be revoked.