T 2068/15 - Public prior use, secrecy

Key points

• In this extensive opposition appeal decision about an alleged public prior use of multilayer films for car parts, one of the issues is whether there was a tacit secrecy agreement.
• " It can be accepted that, if joint development projects are agreed, they often are - explicitly or implicitly - combined with an obligation of confidentiality. In the case at hand, the board does however not see enough indications from which it could be convincingly concluded that there existed a joint development project between opponent 2 and Nissan and, linked to that, confidentiality as regards the nature (composition and layer sequence) of the films". " the 37 films [that were supplied] were not the only films produced by opponent 2 but were part of in total 12600 parts 93893 8Z400 of production run 12 (D41) as shown by the opponents. The production of such a large number is not indicative of test purposes either." 
• The Board also finds that the supplied multilayer films had the composition of claim 1, based on extensive evidence (including three experimental reports from research institutes). 
• The Board also discusses analysability. " The board acknowledges that a precondition for the chemical composition of a product to be prior art is that it can be analysed by the skilled person (G 1/92[]). This question therefore has to be examined in the present case. The Board finds that the skilled person could have determined the composition of the supplied films based on a combination of technologies including IR, 1H and 13C NMR, and pyrolysis GC-MS.
  
  

EPO T 2068/15 -  link

Reasons for the Decision

Main request (claims as granted)

2. Lack of novelty - alleged public prior use

2.1 Both opponents contested novelty in view of a public prior use of films which they said had a composition as defined in claim 1 and were part of the state of the art before the date of filing of the patent in suit (Article 54(2) EPC).

2.2 To substantiate a public prior use, it must be established when the prior use occurred, what was used, and the circumstances relating to the alleged use (T 328/87, headnote).

2.3 Date of the alleged public prior use

2.3.1 In February 2002, Kay Automotive Graphics, who is opponent 2 in the present proceedings, received a specification tender dated 25 February 2002 from Nissan to initiate production of part numbers 93892-8Z400 and 93893-8Z400 (D26). On 29 September 2004, a job ticket was issued to initiate production run number 12 of 12600 of each of these two part numbers for the customer Nissan (D41). Once produced, the parts were placed at inventory location WHB-703-G within opponent 2's facility (D55 and D56).

Twenty films of part number 93893-8Z400 were taken from inventory location WHB-703-G and packed for shipment to Nissan on 15 November 2004 under shipping ID number 72067 (D57 and D58). Nissan was invoiced for this shipping ID number on 15 November 2004 (page 6 of D59) and paid for it on 21 December 2004 (D60).

Furthermore, seventeen films of the same part number 93893-8Z400 were taken from inventory location WHB-703-G and packed for shipment to Nissan on 3 December 2004 under shipping ID number 72446 (D57 and D61). Nissan was invoiced for this shipping ID number on 3 December 2004 (page 5 of D62) and paid for it on 8 January 2005 (D63).

2.3.2 Consequently, in line with the decision of the opposition division, it is credible that in one case 20 and in a second case 17 films, i.e. in total 37 films, of part number 93893-8Z400 were sold by opponent 2 and delivered to Nissan in 2004, i.e. before the relevant date of the patent (29 April 2005). In fact, this was not disputed by the proprietor.

2.4 Circumstances of the alleged public prior use

2.4.1 It was a matter of dispute between the parties whether the films had been made available to Nissan without any obligation of secrecy. It was uncontested in this respect that there was no explicit confidentiality agreement. The point of dispute was whether there was an implicit agreement on secrecy. The proprietor argued that the circumstances, in particular the low number of 37 films which had been sent to Nissan, indicated that they were part of a joint development project to find new protective films and were thus not publicly available. Within such joint development projects, the parties were implicitly bound by secrecy and this was also the case here.

2.4.2 It can be accepted that, if joint development projects are agreed, they often are - explicitly or implicitly - combined with an obligation of confidentiality. In the case at hand, the board does however not see enough indications from which it could be convincingly concluded that there existed a joint development project between opponent 2 and Nissan and, linked to that, confidentiality as regards the nature (composition and layer sequence) of the films. The reasons are as follows:

2.4.3 As set out above, and as not disputed by the proprietor, the 37 films were sold by opponent 2 to Nissan. Selling products to be developed to project partners is however not normal practice within joint development projects.

2.4.4 Furthermore, the 37 films were undisputedly packed and shipped to Nissan together with many other products. More specifically, 20 of the 37 films were packed and shipped together with 19 other types of product in 40 boxes on one pallet (packing list D58). The remaining 17 films were packed and shipped together with 26 other types of product in 69 boxes on two pallets (packing list D61). This too is suggestive of ordinary sales rather than a sending of samples in the framework of a joint development project.

2.4.5 Moreover, the 37 films were not the only films produced by opponent 2 but were part of in total 12600 parts 93893 8Z400 of production run 12 (D41) as shown by the opponents. The production of such a large number is not indicative of test purposes either.

2.4.6 Lastly, the films were sold to the Nissan Parts Redistribution Center (see the upper left-hand corner of the invoices D59 and D62). A redistribution centre is not a research facility or similar institution typically involved in development projects. In fact, as explained by opponent 2, redistribution centres of car manufacturers distribute service parts to automobile dealerships or repair shops e.g. for repair work or the replacement of worn-out films on cars. Because the demand for service parts is relatively small and is difficult to predict, shipments of this kind are typically less frequent and in smaller quantities than production parts.

The proprietor argued that the Nissan redistribution centre, to which the films were sent could also be a mailing centre to which all mail for Nissan went and that redistributed this mail subsequently to the final addressees within Nissan. However, the proprietor did not submit any details or evidence supporting this hypothesis. Furthermore, the invoices D59 and D62 contain the entry "Sold to: NISSAN PARTS REDIST. CENTER" and it is contrary to life experience for alleged test products, like films in this case, to be sold to a mail distribution centre. The proprietor's argument is thus not convincing.

2.4.7 The above is not at variance with T 782/92 relied upon by the proprietor. In the case underlying that decision (see in particular point 2.2), 15 dampers had been delivered to Daimler Benz AG and no details about the conditions of the transaction were available, in particular whether this constituted a normal delivery of dampers for use in the production of vehicles or rather concerned a small batch of dampers intended for experimental or test purposes. In view of the relatively small number of dampers involved, the board in that case decided that the latter appeared to be true. That case differs however from the present one in that firstly there was no invoice on file, secondly the dampers had not been packed and shipped with other different products and thirdly, the dampers had not been sent to a redistribution centre or similar of Daimler Benz AG. So, unlike in the present case, evidence of a commercial sale was not available.

2.4.8 The proprietor also argued that the specification tender D26, that led in the end to the specific sales of the 37 films, was marked "CONFIDENTIAL" (upper right corner of D26) and that this implied that the 37 films had been supplied to Nissan under a confidentiality agreement.

However, D26 does not prove that the composition of the films was confidential but rather that Nissan wanted its specification tender to be treated as confidential.

This is corroborated by the fact that opponent 2 had numerous car manufacturers as customers (D25), so that it is plausible that Nissan did not want its competitors to know about its specification tender.

That the films themselves were not to be treated as confidential is also supported by the fact that of the two boxes "Trial" and "Production" in D26 (upper left-hand corner), the latter is ticked. Had the films been part of a development project and thus confidential, ticking the box "Trial" would have seemed more appropriate.

2.4.9 The proprietor lastly argued that the witness Mr B. Stump, when asked about confidentiality clauses in sales contracts, stated: "Yes, there will be confidentiality. Yes" (second paragraph on page 12 of the minutes of the witness hearing).

However, this statement has been taken out of context. More specifically, the cited statement together with the relevant subsequent passages reads as follows (emphasis added by the board):

"Witness:
Yes, there will be confidentiality. Yes. Depending on what's involved in the paperwork and everything, if there's design of the part and things like that, that is confidential between us and that customer. We can't go and share that with, let's say if I'm dealing with Ford, I cannot share that information with GM, Chrysler or any other customer.
Opposition division:
And as far as your own product is concerned, the properties of your own product, what can you tell us about confidentiality between your company and a potential buyer in this regard?
Witness:
I don't understand.
Opposition division:
Because now you just said it's like a specification from GM which you can't share with another one, but the properties of your own product, of the film?
Witness:
We sell that to them. We don't have to go through every single layer and tell them exactly what it is. We would hope that they wouldn't also take our parts and share that with one of our competitors either."

From the above statements in their entirety, it is clear that the witness was talking about confidentiality only in as far as the design of the parts which came from Nissan was concerned, but not with respect to the composition of the film. Regarding the latter, the witness only expressed a "hope" that this would not be shared with other companies. This would not be understandable if confidentiality had been seriously agreed.

The proprietor's reference to the witness statement thus does not support its view that the composition of the films was confidential.

2.4.10 Consequently, in the light of all the submissions of the parties the board concludes that there was not enough support on file for the proprietor's assertion that Nissan was bound by a confidentiality agreement with opponent 2 covering the 37 films sold. It concludes rather that Nissan was part of the public, so when the films were sold and delivered to it, they entered the public domain.

2.5 Object of the alleged public prior use - identity with claim 1

2.5.1 It was a matter of dispute whether the sold films were as required by claim 1.

2.5.2 To prove that the films were as claimed, the opponents submitted test reports D81 to D83 and GLP3 in the present appeal proceedings (GLP3 is largely identical to D82).

2.5.3 In D81 from JordiLabs, a sample 93893-8Z400 from production run number 12 (page 3 of D81) was analysed using IR for the first top layer, **(1)H NMR and pyrolysis GC-MS for the second layer and pyrolysis GC-MS for the pressure-sensitive adhesive layer. The results were as follows:

- first top layer: polyester urethane (page 13 of D81)

- second layer: polyurethane from hydrogenated methylene diphenyl diisocyanate H12MDI and epsilon-caprolactone soft segments and possibly butanediol as polyol components (pages 6 and 10 of D81)

- pressure-sensitive adhesive layer: two polymers of 2-butyl acrylate and 2-ethyl hexyl acrylate or their copolymer (page 8 of D81).

2.5.4 In D82, a sample 93893-8Z400 from production run number 12 was analysed, using IR, pyrolysis GC-MS and 1D and 2D **(1)H and **(13)C-NMR for the first top layer, IR, 1D and 2D **(1)H and **(13)C-NMR, GPC and pyrolysis GC-MS for the second layer and IR and **(13)C-NMR for the pressure-sensitive adhesive layer. The results were as follows:

- first top layer: polyesterurethane-polyacrylate, the polyesterurethane being composed of HDI, H12MDI, 1,4-butanediol, 1,6-hexanediol, epsilon-caprolactone, isophthalic acid, phthalic acid and adipic acid (penultimate paragraph on page 15 of D82),

- second layer: aliphatic thermoplastic polyurethane mainly composed of polycaprolactone and hydrogenated H12MDI and, as side components, 1,4-butanediol and diethylene glycol (page 8 of D82),

- pressure-sensitive adhesive layer: polyacrylate with the comonomers n-butylacrylate and 2-ethylhexylacrylate (pages 4 and 5 of D82).

For the analysis of the second layer by NMR, GPC and GC-MS, the second layer was separated from the first insoluble top layer by dissolution in chloroform. It is reported that dissolution of the second layer was complete.

2.5.5 In D83 from Currenta, a sample 93893-8Z400 from production run number 12 was analysed using IR, **(1)H-NMR and pyrolysis GC-MS for both the first top layer and the second layer. The results were as follows:

- first top layer: polyester polyurethane from hexamethylene diisocyanate HDI and a polyester from the carboxylic acids adipic acid, phthalic acid and isophthalic acid, and the glycols 1,6-hexanediol, ethyleneglycol, trimethylolpropane (TMP), epsilon-caprolactone and 1,4-butanediol and a polyacrylate (page 3 of D83)

- second layer: polyester polyurethane made from H12MDI and a polyester from epsiloncaprolactone and the glycol monomers 1,4-butanediol and diethyleneglycol (page 3 of D83)

- adhesive layer: not analysed.

In the same way as in D82, the second layer was separated from the first top layer by dissolution.

2.5.6 Hence, all test reports come to the same conclusion, namely that the analysed films were composed of three layers:

- a top layer of a polyesterurethane, corresponding to the polyester-based polyurethane of the first layer of claim 1;

- a second layer of a polyurethane composed of at least hydrogenated methylene diphenyl diisocyanate H12MDI and epsilon-caprolactone, corresponding to the polycaprolactone-based thermoplastic polyurethane of the second layer of claim 1; and

- a pressure-sensitive adhesive layer, corresponding to the PSA layer of claim 1.

The 37 films sold thus had a composition as required by claim 1.

2.5.7 The proprietor argued that there was no evidence that the second layer was a thermoplastic polyurethane. It has however been observed in D82 and D83 that this second layer is completely dissolvable in chloroform. This implies that the material of this layer is uncrosslinked and thus thermoplastic. The proprietor argued in this respect that some elastomers existed that were reversibly crosslinked. If these elastomers were heated, the crosslinks would open and thus the elastomers would become dissolvable in chloroform. Therefore, the observation in D82 and D83 that the second layer was dissolvable in chloroform did not necessarily imply that it was thermoplastic. This argument however ignores the fact that no such heating is described in D82, and that from D83 it is even derivable that the second layer dissolved when stored in chloroform for 2 days at room temperature (page 1, "Ergebnisse"). The proprietor's argument must therefore fail.

2.5.8 The proprietor furthermore argued that it had not been shown in D81 to D83 that the polyol component of the polyurethane of the first top layer was based on, and thus comprised as a major component, a polyester and that of the second layer was based on, and thus comprised as a major component, a polycaprolactone.

This is not correct. As regards the first top layer, all three test reports D81 to D83 refer to a polyester urethane (first sentence on page 13 of D81, sixth line of the penultimate paragraph on page 15 of D82, third paragraph "Ergebnis" from the bottom of page 3 of D83). There can thus be no doubt that the polyurethane of the first top layer is polyester-based as required by claim 1.

As regards the second layer, it is true that D81 and D83 do not contain any information about the amount of polycaprolactone relative to other polyol components. However, D82, the only document addressing this issue, states on page 8 that the material of the second layer ("Trägerschicht") is a polyurethane that is mainly composed of polycaprolactone and hydrogenated H12MDI and, as side components, 1,4-butanediol and diethylene glycol. Hence, there can be no doubt that polycaprolactone is the main polyol component of the second layer, so that the polyurethane of this layer is polycaprolactone-based as required by claim 1.

2.5.9 The proprietor also argued that the term "proposed" on page 6 of D81 showed that the author of the report was not quite sure about his results. The proprietor is however ignoring the fact that the same results were obtained in two further reports D82 and D83, where no doubts were expressed.

According to the proprietor, D82 too was flawed, since the polyurethane of the first top layer contained, next to the 1,6 hexamethylene diisocyanate, H12MDI, i.e. 4,4' dicyclohexylmethane diisocyanate, as an isocyanate component while the material safety data sheet D34 submitted by the proprietor for this material only mentioned the 1,6-hexamethylene diisocyanate. However, claim 1 does not specify the type of isocyanate of which the polyurethane of the first top layer is composed. It is thus irrelevant what the isocyanate component of this polyurethane was found to be in D82 and D34.

In the written proceedings, the proprietor had relied on expert opinion D97, which allegedly showed that D81 to D83 contained several further flaws. In this opinion, the expert Mr B. Dippel doubted whether the first and second layers had been separated before being analysed in D81 to D83 by NMR and pyrolysis GC-MS. D81 however presents results for the individual layers, so there can be no doubt that these had been separated before analysis. Furthermore, as set out above, in D82 and D83 the second layer was separated from the insoluble first layer by way of dissolution.

According to Mr B. Dippel, the reports were flawed for the further reason that the infrared analysis in D82 did not reveal the type of polyurethane in the top layer and the pyrolysis GC-MS results did not fully support the conclusion that the polyurethane was a polyester-based polyurethane. Even if this were true, it is however irrelevant since this information is supplemented in D82 by **(1)H/**(13)C-NMR and is furthermore confirmed by the other test reports D81 and D83.

2.5.10 Referring to the test reports D29 and D64, the opposition division reasoned that the caprolactone detected in the second layer could be due to contamination from the first top layer. However, in D82 and D83, the second layer was separated from the first layer by dissolution and it is credible that the caprolactone detected in the dissolved material comes from this material rather than the first insoluble layer.

2.5.11 Hence, the conclusion remains valid that the 37 films sold had all the features required by claim 1.

2.6 Object of the alleged public prior use - analysability

2.6.1 The proprietor argued that even if the 37 films sold had been public and had been as required by claim 1, they would still not have been novelty-destroying, since at the priority date of the patent the skilled person would not have been able to gain knowledge about the chemical composition of the films sold.

The board acknowledges that a precondition for the chemical composition of a product to be prior art is that it can be analysed by the skilled person (G 1/92, point 1 of the headnote). This question therefore has to be examined in the present case.

2.6.2 The proprietor argued that if the three research institutes that carried out the tests in D81 to D83 had not been informed beforehand that the film was composed of three layers, they would have overlooked the very thin first top layer, which had a thickness of only 5 microns. The proprietor relied in this respect on its test report D96, where with a stereomicroscope at

5-fold magnification only the second layer and the adhesive layer were identified (second layer with a thickness of 194 microns and 201 microns and adhesive layer with a thickness of 55 microns and 62 microns).

However, it is not realistic to assume that the skilled person wanting to analyse the morphology of a film would use the extremely low 5-fold magnification applied in D96. And even if one were to assume in the proprietor's favour that the skilled person would start with this magnification, at the latest when realising that the film contained two thin layers in the micron range, the skilled person would have increased the magnification to obtain more information about the layer morphology. The board therefore considers the approach chosen by opponent 1 in D82 to be much more realistic, namely to use electron microscopy at a magnification of 500. As can be seen in figure 1 of D82, at this still not very high magnification the first top layer is clearly visible as a separate, clearly distinct layer. This is even more apparent at the higher magnification of 5000, where the top layer shows a morphology completely different from the underlying second layer (figure 2 of D82). As was not disputed by the proprietor, electron microscopy was well known at the priority date of the patent. The skilled person analysing the film with the techniques known at that time would thus not have overlooked the first top layer.

2.6.3 The proprietor furthermore argued that the research institutes that carried out the tests in D81 to D83 had been informed beforehand about the specific polymers present in the three layers of the film. Had they not had this information, they would not have been able to find the relevant reference spectra needed for the analysis of the IR data, as evidenced by D95. Thus, they would not have been able to attribute the correct chemical entities to the individual peaks in the NMR and GC-MS spectra.

The board does not share this view.

First of all, at least as far as D81 and D83 are concerned, there is no evidence that the two research institutes had indeed been informed beforehand about the specific composition of the films. From D81, it can only be derived, if anything, that JordiLabs had been told that the film was composed of a topcoat layer, a polyurethane layer and an adhesive layer ("Objective" on page 2), and D83 does not contain any indication at all that Currenta had received any information beforehand. The proprietor's starting assumption that the three research institutes knew beforehand the specific composition of the film is thus unfounded, at least as far as D81 and D83 are concerned.

Secondly, even if all the research institutes had known the specific composition of the film beforehand, this alone would not allow the reverse conclusion to be drawn that, if they had not known it, they could not have identified it. In particular, the argument that without knowing the specific nature of the polyurethane of in particular the second layer, the skilled person would not have been able to identify the correct IR reference spectra in the databases available at the priority date of the patent and would not have been able to attribute the correct chemical entities to the individual peaks in the NMR and GC-MS spectra is not convincing. This applies even if, as asserted by the proprietor, the IR reference spectrum of Argotec 46510 for the polycaprolactone-based polyurethane of the second layer was not available at all at the priority date of the patent. More specifically, the proprietor's argument ignores the fact that IR spectra give some information already without the use of any reference spectra. For instance, certain chemical groups give infrared signals at certain specific wave numbers (e.g. carbonyl groups typically result in a peak around 1600 cm**(-1)). Hence, from the infrared spectra alone, i.e. without the help of reference spectra, the skilled person would already have been able to obtain some basic information about the chemical composition of the layers, e.g. that the first and second layers were polyurethanes. Furthermore, as not disputed by the proprietor, it was common practice at the priority date of the patent to apply more than one analytical method in order to obtain information about the composition of a material. So the skilled person who carried out infrared spectroscopy and obtained some basic information about the composition of the layers of the film would not have stopped there, but would have applied further analytical methods available at the priority date of the patent, such as **(1)H and **(13)C NMR and pyrolysis GC-MS (see D78). By using his knowledge gathered by IR spectroscopy, namely that the spectra thus obtained can be attributed to polyurethane components, and by looking at the results of the **(1)H and **(13)C NMR and pyrolysis GC-MS in combination, he would have been able to identify the exact nature of the polyurethanes. With this information he would have been able to select appropriate IR reference spectra in the databases available at the priority date of the patent, to verify his assumptions about the nature of the polyurethanes. So, the comparison with IR reference spectra is just one of many jigsaw pieces that lead to the complete picture provided by the totality of measurement methods, and in fact is needed only to confirm what was already established by the other techniques. Therefore, even if, as argued by the proprietor, the IR reference spectrum of Argotec 46510 for the polycaprolactone-based polyurethane of the second layer was not available at the priority date of the patent, the skilled person could still have determined the composition of this layer.

2.6.4 The skilled person at the priority date of the patent would thus have been able to determine the exact composition of the 37 films sold.

2.7 In conclusion, those 37 films were made available to the public by selling them to Nissan, as set out above, on a date prior to the filing date of the patent pursuant to Article 54(2) EPC. The films therefore formed part of the state of the art and have to be taken into consideration when establishing the question of novelty. Since they had a composition identical to the one defined in claim 1, they are to be considered novelty-destroying for the subject-matter of this claim.

3. Request to hear Mr T. Sokolowski

During the oral proceedings, it was requested that Mr T. Sokolowski be heard on whether the skilled person at the priority date of the patent would have been able to analyse the composition of the 37 films. The board rejected this request, since, unlike in G 4/95, no details had been given in the written proceedings about what Mr T. Sokolowski would be talking about.

4. Conditional request to hear Mr B. Stump as a witness

Opponent 2 had requested that if the board deviated from the decision of the opposition division that the films of production run number 12 were publicly available, Mr B. Stump be re-heard as a witness. In view of the fact that the board found the 37 films to have been publicly available, there was no need to hear the witness and to decide on this request.