T 1074/10 (Providing a DRM license/SAMSUNG) 19-09-2014

The appellant's absence from oral proceedings

According to Article 15(3) RPBA the board is not ob­liged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned. Therefore, and further in accordance with Article 15(3) RPBA, the board treats the appellant as relying only on its written case. The following reasons are based on those communi­cated to the appellant in the annex to the summons to oral proceedings.| |

Non-admission of the second auxiliary request

2. During the oral proceedings, the examining division exer­­­cised its discretion under Rule 137(3) EPC - equiva­­lent to Rule 86(3) EPC 1973 - and de­cided not to ad­mit the second auxiliary request for lack of conver­gence with the previous, i.e. the first auxiliary request.

2.1 This is reported in the minutes of the oral proceedings (points 37-40) and the section entitled "Sub­missions" of the decision under appeal (point 9). In the section entitled "Reasons for the Decision", however, the second auxili­a­r­y request is not mentioned at all.

2.2 The discretionary decision of an instance not to admit amendments to a European patent application adversely affects the applicant (or proprietor) in that the amendment may not form the basis of decision in its favour. Therefore, in view of Article 107 EPC 1973, it is a decision which is open to appeal pursuant to Article 106 EPC and which is to be reasoned according to Rule 68(2) EPC 1973. The non-admission of a request is thus not a simple fact but a decision the reasons for which form part of the reasons of the overall de­ci­sion. In order to avoid any doubt about this, the non-ad­mission of a request is to be addressed in the written decision as part of the reasons. In the present case, the non-admission of the second auxiliary request should have been reasoned in the section entitled "Rea­sons" rather than merely in the section "Submissions".

2.3 This notwithstanding, the board notes that the section "Submissions" explains that the second auxiliary re­quest was not admitted "be­cause it did not converge towards patentable subject-matter, as it was going into a different direction than the pre­vious request" (loc. cit.). Thus although this explanation is not part of the reasons of the decision under appeal the board is nevertheless able to determine from the decision as a whole why the examining division exercised its dis­cre­tion in the way it did. Obviously, this was also the case for the appellant who did not argue that this rea­soning might be insufficient and thus not conform with Rule 68(2) EPC 1973.

3. The appellant argued that the examining division wrong­ly exercised their discretion when not admitting the then second auxiliary request for lack of convergence because this criterion does not have a basis in the EPC. Instead, the admissibility of any request should be judged by prima facie considera­tions based on com­pliance with requirements of the con­ven­tion (see grounds of appeal, p. 9, penult. para.).

3.1 The board notes that Rule 86(3) EPC 1973 - and, equi­valently, Rule 137(3) EPC - leaves open en­tirely how the examining division should exercise its dis­cre­tion and, in particular, neither defines a con­vergence cri­terion nor a criterion based on prima facie compliance with the requirements of the EPC.

3.2 According to G 7/93, reasons 2.5, "[w]hen deciding whe­ther or not to allow a request for amendment at that stage of the pre-grant procedure, in the exercise of its discretion under Rule 86(3) EPC, in the Enlarged Board's judgment an Examining Division is required to consider all relevant factors which arise in a case. In particular, it must consider both the applicant's inte­rest in obtaining a patent which is legally valid in all of the designated States, and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent, and must ba­lance these interests against one another." The conver­gence criterion has been accepted by the boards of appeal in many cases and has also been applied by the boards themselves (see e.g. T 1969/08, reasons 3.4).

3.3 The present board is of the opinion that the "diver­gence" of a request from earlier re­quests in the sense that it changes sub­stan­tially the issues at stake may be contrary to the EPO's interest in bringing the pro­cedure to a close. Therefore, the board agrees with the cited jurisprudence and considers that divergence of a request is one factor amongst others which a deciding in­stance may consider when exercising its discretion under Rule 86(3) EPC 1973. The decision of the exami­ning division not to admit a request is therefore not wrong merely be­cause this criterion was used, as the board under­stands the appellant to argue. As it stands, hence, the appellant's argument fails.

3.4 Further according to G 7/93 (reasons 2.6), "it is not the function of a Board of Appeal to review all the facts of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised the discretion in the same way as the first instance department". Rather, "a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first in­stance department in its decision has not exercised its discretion in accordance with the right prin­ciples ... or that it has exercised its discretion in an unreaso­nable way, and has thus exceeded the proper limits of its discretion."

3.5 In the summons to oral proceedings, the board invited the appellant to argue why, if it so consi­dered, the second auxiliary request should have been ad­mitted by the examining division - or should be admitted by the board - even if "convergence" was considered to be a possible cri­te­rion ­for exercising the dis­cre­tion under Rule 86(3) EPC. The appellant did not provide any such reasons. Thus, the appellant has not estab­lished that it was objectionable how the examining di­vision exer­cised its discretion and the board has no reason to overturn this decision.

3.6 Therefore, the board does not admit the second auxilia­ry request into the proceedings.

The invention

4. The application relates to a digital rights management (DRM) sys­­tem according to which a license for some con­tent re­quested by a "sink system" is generated and "pro­­­vi­ded" by a "source system". At the sink system, there may be multiple users ("use subjects") and mul­tiple devices such as players ("use objects") which are, collec­tively referred to as "prin­ci­pals" (p. 11, 1st para.).

4.1 The "license", alternatively also referred to as a "rights token" (see original application, p. 11, last para.) is "bound" to the devices or users which are allowed to use the content. "Binding" is explained to be what "limits the playback (or access) of digital con­­­­tent to a specified device or user through ... en­cryp­tion", especially by using an encryption key avai­lable to the relevant users or devices (see p. 3, last para., and p. 4, 2nd para.).

4.2 It is said to be known to provide keys for sets of users or players (p. 4, 2nd para.) but that un­­­der this known "binding structure" cer­tain required use limita­tions cannot be "satis­fied" (see p. 5, line 4). Speci­fi­cally, it is consi­dered deficient that this prior art "considers only the subject using the license ... or the object" [emphasis by the board]. By way of example, it is ex­plained that the known method cannot express that a group of users may have access to some content but that individual users within this group may be fur­ther limi­ted to use that content only on certain play­ers (see p. 4, line 21 - p. 6, line 3). It is also dis­closed that the prior art techniques are disadvan­ta­geous in requiring the DRM on the content issuer side and the player side to be the same (p. 6, 2nd para.).

4.3 The invention, meant to overcome these limitations (see p. 6, 5th and 6th paras.), pro­po­ses the use of a "rights mediator" which receives a "first license" from the source system, generates a "se­­­­cond license" from it and passes that one on to the sink system (see e.g. p. 7, 6, line 31 - p. 7, line 18; p. 11, 3rd para.). The rights mediator may alternatively receive "a plurality of first licenses" (or "sub-rights tokens") and combine them into the second license (p. 14, lines 7-16). In combining the sub-rights tokens, the rights mediator may make use of set operations (such as set difference, intersection and union; see p. 14, lines 16-31).

4.4 Moreover, the application discloses that the licenses or rights tokens, in order to express the relevant bin­ding information, may contain contain "path in­for­mation among a plurality of principals, not by a single principal" (see p. 14, lines 1-5).

4.5 The application further refers to a "topology that in­di­cates the relations among the principals?" (see p. 12, last para.). This topology can be "determined by edges connecting ... principals", where an "edge" between principals A and B represents the fact that "prin­cipal A can" (i.e. is allowed to) "play content in the prin­ci­pal B". The board takes it that the typical such edge would connect a user and a player (B) on which the user (A) is allowed to play the content. It is disclosed that the client can generate such a topo­logy and "de­ter­mine whether to access the license bound by prin­ci­pals that comprise the sink system ... through the to­po­logy", and that the "topology" is "for giving the con­tent playback rights on the basis of the main rights token" (see p. 15, lines 5-7 and 17-19, and p. 17, lines 25-28).

Clarity, Article 84 EPC 1973

5. The claims specify licenses to include "binding infor­mation". The description defines binding information only in terms of what it achieves (p. 3, last para.) rather than how and leaves undefined form and structure of the "binding information" itself, except for a re­fe­rence to "paths" and "topologies". These terms are also used in the claims. The board considers that the form, structure and function of "paths" and "topology" is unclear, Article 84 EPC 1973.

5.1 Claims 3 and 13 of the main request use the phrase "path information that indi­cates relationships among a plurality of principals to which the requested license is provided". This language leaves undefined what "re­la­­tionships" are referred to and why or how they are re­presented as "paths". For instance, the license for some content to be used only by a specific user at a specific device may be consider to express a "rela­tion­ship" but it re­mains unclear why this would establish a "path" - ra­ther than, say, mere­ly an ordered pair or a mere edge.

5.2 Claims 5 and 15 of the main request specify the sink system to "generat[e] a topology for giving content play­back rights on the basis of the second licenses" and to "pro­vid[e] the requested license ... on the basis of the generated topology". This language is un­clear already because it leaves open what the "topo­lo­gy" is composed of. The description more clearly refers to a "topology of principals" (p. 13, lines 3-5), and suggests that the term "topology" is meant to be some sort of graph in which the nodes represent prin­­ci­pals, i.e. users and players, and the edges represent use permissions (p. 13, lines 5-9). Even if the unclear term "topology" is interpreted in view of the descrip­tion, however, the phrase "topology for giving ... rights" is unclear as it leaves open in what way the to­pology aids the client in "giving rights": in par­ticular, it is not clear whether the topology is "for giving rights" merely because it declares the binding in­formation to be enforced by the client, or whether it is meant to imply, say, a specific data structure chosen to simplify the client's task. Moreover, it is unclear whether the "topology" is merely a way of re­ferring to the totality of permissions in terms of "ed­ges" between principals or whether it goes beyond that or in what way. If the totality of edges happen to form a "topology" in an abstract sense, it becomes fur­ther unclear what is meant by the claimed features that the topology is generated and used to provide a li­cense.

5.3 In summary, the terms "paths" and "topology" do not achieve clarity as to the question whether - and, if so, how - "binding information" goes beyond an abstract de­claration of rights independent of how it is used to achieve its purpose.

5.4 As a consequence, the board considers claims 3, 5, 13 and 15 of the main request unclear, Article 84 EPC 1973. This objection applies to the other requests as well, namely to claims 1, 4, 8 and 13 in the first auxiliary request, claims 1, 4, 7 and 12 of the third auxiliary request, and, in fact, also to claims 3, 5, 12 and 14 of the second auxiliary request. It is noted that it also applies to the two auxiliary requests which the appellant "contemplated" to file at a later point and which would have been based on claim 5 of the main request.

6. In view of this objection, the further objections which the board raised in the annex to its summons are irre­levant for the present decision - even though the board, due to the appellant's silence, had no occasion to reconsider those objections either. It is merely noted, as an aside, that the lack of clarity of the claimed invention has an impact on the question what technical contribution, if any, can be attributed to the use of "binding information", "paths" and "topo­logies" in the context of the inven­tion and therefore whether and to what a extent they might contribute to an inventive step, Article 56 EPC 1973.

7. In summary, the board comes to the conclusion that none of the pending requests is allowable at least for lack of clarity, Article 84 EPC 1973 and that, therefore, the appeal is to be dismissed.