T 0014/11 - Falsified prior art?

Blog headnote
A patent proprietor asserts that a novelty-destroying document is in fact falsified or tampered with.

Quote
"The inconsistencies and discrepancies found by the appellant in document E1 are insufficient to warrant the conclusion that document E1 has been manipulated or falsified. The presence of inconsistencies in a document is normally no convincing proof that said document is forgery, since it can be argued that if it were forged, the fraud would have tried to manipulate it in such a way no one can easily tell that it is forged." [3.2]

Analysis
The OD had also heard three witnesses about a trade fair in 1997. As far as can be seen from the present decision, this was handled rather thoroughly by the OD.

T 0014/11 - published 31.03.2015

Dated 03.12.2014 - Board 3.2.05 (Poock, Schram, Weiss, Bridge, Vogel) - for the decision, clik here

Summary of Facts and Submissions

I. On 29 December 2010 the appellant (patent proprietor) lodged an appeal against the decision of the opposition division, posted on 9 December 2010, by which European patent No. 1 031 778 was revoked. The statement setting out the grounds of appeal was filed on 6 April 2010.

The opposition division held that the catalogue "Ball valve from Mars, Series 88" (document E1), was considered as state of the art under Article 54(2) EPC 1973 and that the subject-matter of claim 1 as granted was not new with respect to that document, Article 54 EPC 1973.

Reasons for the Decision

1. The appeal is admissible.

2. It has not been contested by the appellant that document E1, if it were made available to the public before the priority date of the patent, 23 February 1999, is novelty destroying for the subject-matter of claim 1 of the patent in suit.

3. Authenticity of document E1

3.1 In this section it is investigated, whether document E1 must be regarded as non-authentic on the basis of the submissions of the appellant alone, whereby the evidence resulting from the taking of evidence of hearing witnesses in the oral proceedings before the opposition division is postponed to the next section.

3.2 The inconsistencies and discrepancies found by the appellant in document E1 are insufficient to warrant the conclusion that document E1 has been manipulated or falsified. The presence of inconsistencies in a document is normally no convincing proof that said document is forgery, since it can be argued that if it were forged, the fraud would have tried to manipulate it in such a way no one can easily tell that it is forged.

The omission of the dimensions X1 and X2 in the drawing on page 3, left upper corner, may be just that, an inadvertent omission. The same can be said about the size dimensions and the seat material, ie the sizes ¼" and 3/8" and the seat material graphite may have been inadvertently omitted on pages 2 and 3, respectively. It may be noticed that the size ranges given on page 2 ½"-3" and ½"-4" include the sizes 2½" - 4", of which it is stated that they will be available soon (see page 3, below the dimensions table). With respect to the terms "threaded end" and "screwed end" used on page 3 to denote the ball valve 88-10, the board judges that the two terms are used as synonyms.

3.3 With respect to the indication "API 607" under the heading "Design Specifications" on page 2 of document E1, the board judges that this means, since said document does not state expressis verbis that the Series 88 valves passed the performance requirements of said standards, that said valves are designed in a way that they are compliant with the then current version of the American Petroleum Institute (API) Fire Test Standard "API 607", ie the fourth edition published in May 1993.

3.4 The Chinese and United States patents (documents P2 and P4) and the German utility model (document P3) mentioned in the Series 88 valve catalogue of March 2000 (cf document P1) all belong to the same patent family. Documents P2 and P4 have a filing date of 23 February 1998 and 17 July 1998, respectively, and were published after the alleged publication date of document E1. This might explain why these patents were not mentioned in document E1 having an alleged printing date of September 1998. It may be noticed that document P3 was filed on 24 June 1999, ie after document E1 was allegedly published. If document P3 would have been cited in document E1 this would have been proof that document E1 was not printed in September 1998.

The US-patent (document P4) is assigned to respondent I. The object of this patent is to provide a ball valve which can be connected securely to a valve control device (actuator) without using a connecting bracket (see P4, column 1, lines 45 to 47). This patent does not disclose a fixation having oblong mounting holes extending in a radial direction. Whilst the shape of the mounting holes of the flat support end 422 shown in figure 3 is circular, this is not mentioned in the patent specification. The shape of the mounting holes was obviously not of interest to the applicants of document P4. From the fact that applicants of documents P3 and P4 did not mention oblong mounting holes in said documents, and did not separately file patent applications for it, it cannot be concluded that they were at the time of filing unaware of the advantages of such design (namely, to fit adaptors with different diameters onto the valve), since they may have believed that said design was known in the art, or considered the provision of oblong mounting as a simple constructional measure which comes within the scope of the person skilled in the art.

3.5 Documents P1' and P2' are marked-up pictures taken at the Valve World 98 Exhibition of booth Nr. 615 of Mars Valve Co., Ltd., showing on the left-side wall what looks like the front page of document E1 (indicated by red arrows with the text "Series 88 brochure"). These pictures provide some evidence that document E1, at least the front page thereof, existed in September 1998.

3.6 In view of the above, the board comes to the conclusion that on the basis of the submissions of the appellant alone, there is insufficient evidence that document E1 is not authentic.

4. Does document E1 form part of the state of the art?

4.1 Articles 54(2) EPC and 54(3) EPC 1973 provide that the state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application and in addition the content of European patent applications as filed, which were filed prior to said date of filing and which were published on or after that date.

4.2 During the oral proceedings before the opposition division three witnesses were heard.

The first witness, in 1998 a sales director and subsequently the managing director of the UK operations of a Swiss manufacturer of ball valves, stated that he was given a brochure (document E1) at the Valve World exhibition on 17 November 1998 when he visited the Mars stand, see Annex 2, page 3, paragraphs 10 and 14. The first witness gave as reason why he had remembered this, that a subsidiary of his firm had introduced in 1997 a pneumatic actuator with an ISO mounting and that his firm was looking for a valve onto which that actuator could be directly mounted, see Annex 2, page 3, last two paragraphs. When asked by the opposition division (see Annex 2, page 3, lines 3 to 6) whether he had any personal or economic interest in the outcome of today's proceedings that could influence the way he testified, the witness answered: "No, other than the fact that we sell Mars ball valves that are manufactured by Transworld Steel".

The second witness, since 1980 the owner and managing director of a Norwegian family company (until a holding company owned by the family took over the firm), whose main business is selling valves, stated that his sales director visited the Valve World exhibition in 1998 and brought back the catalogue (document E1), see Annex 2, page 20, fourth paragraph from the bottom. The second witness gave as reason why he had remembered this, that he had noticed a sticker on page 2 of document E1 on the text "bottom entry blow out proof system", see Annex 2, page 21, fourth paragraph from the bottom, page 22, first two paragraphs, and page 23, paragraphs 7 and 8. When asked by the opposition division (see Annex 2, page 17, last 7 lines): "And do you have any personal or economic interest in the outcome of today's proceedings? We are talking about a patent and whether it will be upheld or not", the witness answered "Absolutely not".

The third witness, in 1998 working as a sales manager and developer of new products for a Belgium firm in several countries, stated that his firm and Mars both had a booth at the Valve World of 1998 and that after the exhibition he had sent a fax dated 26 November 1998 to Mars asking for detailed documentation and prices of Series 88 valves, see Annex 2, page 33, second paragraph and page 34, third paragraph. He added "So it must have been either prior to the exhibition ... or during the exhibition" (that he received the Mars brochure (document E1)). When asked "And how come that you still have one?", he answered "When I founded the company in 1999 I made my personal catalogue and as a relic I kept that catalogue ...". When asked by the opposition division (see Annex 2, page 31, lines 3 to 21) "Have you any personal or economic interest in the outcome of today's proceeding, whether this patent will be maintained or it will be revoked or whatever the outcome is, the patent of Genebre?" answered: "As I, we do not buy any valves from Genebre at this point in time. We do buy the Mars series and we distribute those. It would create me, let's say, a technical problem to adjust it. But financially it wouldn't make a big difference to us. There are two lines of these products, one is what we call direct mount, the one in question, but it also exists as an indirect mount. So we can easily switch over, we even have both of them in the programme. So it doesn't mean very much to me".

4.3 The appellant has submitted that since all three witnesses sold Series 88 valves from Mars, they had an economic interest in the outcome of the case and their testimonies were therefore not credible.

The first witness started to work for Mars Valve UK in 2000 and was company director of that firm when he was heard by the opposition division on 22 June 2010. He stated that he had no economic interest in the opposition case against the patent in suit, "other than the fact that we sell Mars ball valves that are manufactured by Transworld Steel". Arguably, if the opposition would finally have been rejected by the EPO, it cannot be excluded that the patent proprietor would envisage infringement proceedings against Mars Valve Co., Ltd. TW and Mars Valve UK (see letter of the appellant dated 18 November 2013) and that this would have an impact on sales.

The testimonies of witnesses should be evaluated as a whole, not in isolation, unless the testimonies contradict one another. In the present case the board is convinced that the second witness did not have a personal or economic interest in the outcome of the opposition proceedings that would disqualify him as a witness. The board is also convinced that this witness received a copy of document E1 before the priority date of the patent in suit. Despite the long interval between the taking of evidence and the Valve World exhibition of 1998, the second witness had remembered that page 2 of document E1 had a sticker for correcting a printing mistake (which, incidentally, adds further proof of the authenticity of document E1). The board considers the testimonies of the first and second witness as corroborative evidence.

4.4 Summarizing, the board comes to the conclusion that document E1 was made available to the public before the priority dated of the patent in suit.

5. In view of point 2 and the conclusion in point 4.4, the patent must be revoked.

Order

For these reasons it is decided that:

The appeal is dismissed.