Undisputed 1 2 3 720p In Dual Audio 16
Roseanne Gennett
III. The patent proprietor appealed and filed respective claims numbered 1 to 39 according to a main request and auxiliary requests 1 and 2 with the statement of grounds of appeal. The appellant also submitted a declaration by a technical expert, Mr A. Cavallerano, in support of the appellant's position, in particular that the opposition division had used a definition for "compression" which was unrecognisable to a person skilled in the art, and had misconstrued sections of D2 upon which the opposition division had relied in the decision under appeal.
VI. In a communication annexed to a summons to oral proceedings the board noted that the crucial question seemed to be which technical effects, with respect to D2, were achieved by the data compression of the material in both formats in accordance with the teaching of the opposed patent.
VII. In response to a question from the appellant whether the technical expert could join the oral proceedings either by a videoconference link or by telephone, the appellant was advised in a communication of the Registry of the board dated 4 November 2008 that he had not requested permission for a person accompanying the professional representative of a party to make oral submissions on specific legal or technical issues on behalf of that party within the meaning of G 4/95.
IX. With a letter dated 17 November 2008 in reply to the summons, the appellant filed claims according to auxiliary requests 3 to 10. In a further letter dated 24 November 2008 the appellant requested permission for the technical expert to make oral submissions.
X. Oral proceedings before the board were held on 16 December 2008. The appellant (patentee) withdrew auxiliary requests 1 and 2. The respondent (opponent) objected to the making of the oral submissions requested. The appellant (patentee) did not object to admitting the documents filed with the letter dated 13 November 2008. At the end of the oral proceedings the chairman pronounced the board's decision.
XI. The appellant (patentee) requested that the decision under appeal be set aside and the patent be maintained on the basis of the main request filed with the statement of grounds of appeal, and should the main request not be allowable, that the patent be maintained on the basis of one of the auxiliary requests 3 to 10 filed with the letter dated 17 November 2008.
"An audio/video production method comprising the steps of: simultaneously recording information representative of a video program, plus correlated edit time-code information, onto first and second removable digital storage media (70, 88) in first and second digital formats, respectively, the material in both digital formats being data compressed, the program information in the first digital format being more compressed than the second digital format; receiving the first removable storage medium at a first video editing facility and editing the program information at the first facility in the first digital format to develop a set of edit decision directives based upon the edit-time-code information; and receiving the second removable storage medium and edit decision directives at a second video editing facility and editing the program information at the second facility in the second digital format in accordance with the edit decision directives so as to create a final video production."
Claim 11 of auxiliary request 5, apart from a typing error in the first word, has the same wording as claim 11 of auxiliary request 4 with the following differences. The expression "at a first video editing facility" is replaced by "at a first off-line video editing facility", and the expression "at a second video editing facility" is replaced by "at a second on-line video editing facility".
Claim 11 of auxiliary request 6 has the same wording as claim 11 of auxiliary request 4, with the words "at 24 frames per second" added after the expression "simultaneously recording information representative of a video program".
Claim 1 of auxiliary request 7 has the same wording as claim 11 of auxiliary request 4, with the expression "information representative of a video program" replaced by "information representative of audio and video program material".
Claim 1 of auxiliary request 8 has the same wording as claim 1 of auxiliary request 7 with the words "including interleaved digital audio and video program data" added after the expression "information representative of audio and video program material".
"A digital audio/video production system adapted to deliver program material and an accompanying edit decision list to an on-line video editing facility for the purpose of creating a final program, the system comprising:
digital video recording apparatus, including: an input to receive a video program including interleaved digital audio and video program data or separately recorded audio and video portions, means to digitally compress the program in accordance with more than one compression ratio, an interface to a first removable storage medium, an interface to a second removable storage medium, and means to simultaneously record the video program along with correlated edit-time-code information onto the first removable storage medium at a first compression ratio and onto the second removable storage medium at a second compression ratio, the material in both formats being data compressed, the first compression ratio being greater than the second;
the system further comprising an off-line digital video editing system, including: an interface to receive the first removable storage medium, a display to review portions of the video program, enabling a user to make edit decisions concerning the program, and an interface to a third removable storage medium to store a list of the edit decisions,
the system further comprising an on-line video editing facility (202, 204, 206, 208), which upon receiving the second and third storage medium, may be used to produce a final, edited version of the program in accordance with the decision list."
The opposition division had used a definition for "compression" which would not be recognised by a person skilled in the art and had misconstrued the sections of D2 relied upon in the decision under appeal. D2 mainly described a recording system, namely a camcorder for producing both a main recording and a sub-recording, not a production and editing system or method. According to D2, the editing would be performed using the original tape having the main recording stored thereon, and the usual video format that would have been considered for the original tape was the uncompressed digital format D-3. A person skilled in the art of video editing would not have considered compression of the main recording, even though it was technically possible. D2 did not disclose simultaneous recording at two different compression ratios. Instead D2, considered in its entirety, taught away from this idea. According to D2 compression was only used in conjunction with the sub-recording. This taught against any implementation in which the main recording was compressed. The statement in D2 (paragraph [0011]) that compressed images were unusable as originals made clear that no compression whatsoever was allowed for the main recording. Moreover D2 did not disclose that the recording included correlated edit time-code information because there were different time tracks for the main recording and the sub-recording. In D2 the time signals for both recordings were identical, and D2 did not take into account the compression effects. The simultaneous recording at two different compression ratios of the same audio/video program was a key inventive step associated with the system of the opposed patent. It improved the productivity in video production and post-production, enabling the producer to save time and expense while preserving image quality. Also the recording with correlated edit-time codes distinguished the invention of the opposed patent from the disclosure of D2 and facilitated the editing downstream of the recording. The auxiliary requests specified more clearly and precisely that the invention was a production and editing system and method, not a camcorder as in D2 and specified features which were not disclosed in D2.
The technical expert should not be allowed to make oral submissions because the subject-matter of his submissions had not been specified before the oral proceedings. The respondent could not prepare a response without knowing what the subject-matter of the oral submissions would be.
The multiple independent claims of the main request made it difficult to identify the scope of the claims. Amendments had not been made consistently to all the independent claims. This placed an undue burden on the respondent. Multiple independent claims were also present in auxiliary requests 3 to 10.
According to D2, both the main recording and the sub-recording were compressed. The sub-recording was data compressed by a compressing means 22, and the main recording was compressed because all known techniques for generating video signals used some form of compression. Compression was required to the effect that the main recording could be recorded onto a recording medium of choice. A person skilled in the art would understand that the sub-recording means should be compressed more than the main recording so as to preserve image quality in the main recording. The opposed patent did not disclose correlated edit-time code information having a functionality going beyond the synchronisation of the two recordings, and this functionality was also disclosed in D2. According to the opposed patent, the edit-time code information could be identical for both recordings. The additional features referred to in the independent claims of the auxiliary requests were either known from D2 or other documents on file, or were part of the common general knowledge of a person skilled in the art.
2.1 The main criteria to be considered by the boards when exercising their discretion to allow the making of oral submissions by a person accompanying a professional representative in opposition appeal proceedings are summarised in the headnote of the decision of the Enlarged Board of Appeal G 4/95 (OJ EPO 1996, 412). They are as follows.
b1e95dc632