T 2350/15 - Cost apportionment for not attending oral proceedings

Key points

• In this opposition appeal, the preliminary opinion of the Board is to maintain the patent as granted. The opponent informs the Board that they will not attend oral proceedings adding that “this did not mean that it was withdrawing its appeal or its request for oral proceedings”.
• The Board orders a cost apportionment. “By maintaining its request for oral proceedings, the appellant/opponent thus not only obliged the Board to hold the oral proceedings but also obliged the appellant/patent proprietor to come to the oral proceedings and to prepare for them. Under these circumstances, pursuant to Article 104(1) EPC and Article 16(1)(e) and 16(2) RPBA 2020, the Board finds it equitable that the appellant/opponent bears the costs (for preparation, travel and presence) incurred by the appellant/patent proprietor for the oral proceedings before the Board.”.
• I note that the opponent was “Strawman Limited” represented by a large British patent attorney firm. I assume that they will pay upon first request.
• The Board also notes, under Art.123(2), that “it is established case law that claims should not be read alone but in the context of the patent as a whole with a mind willing to understand [...] This means that a word or expression in a claim must always be given the same meaning as the one the author of the patent wished to give it.”.

EPO T 2350/15 - link



3. Objection pursuant to Article 100(c) EPC

[...]


3.1.1 Interpretation of claim 1

In the Board's opinion, it is established case law that claims should not be read alone but in the context of the patent as a whole with a mind willing to understand (e.g. T 0190/99, point 2.4 of the Reasons; T 0556/02, point 5.3 of the Reasons). This means that a word or expression in a claim must always be given the same meaning as the one the author of the patent wished to give it. This line of thought is confirmed in T 1592/14 (point 5 of the Reasons), which was cited by the appellant/patent proprietor.

In the present case, for a person skilled in the art having read the patent as a whole, it is clear that a mistake was made in claim 1, namely "first" and "second" were inverted in this litigious feature. This is evident not only from a whole-content-disclosure point of view but also from a technical point of view.

Indeed, the object of the patent is a suturing apparatus, and it is only once the suture has passed through the tissue that it should be released from the needle. Or, said differently, it makes no technical sense to release the suture during the movement which brings the suture through the tissue, namely the movement from the first to the second position. Hence, even if the person skilled in the art had read the claim alone, contrary to the opinion of the appellant/opponent, they would have immediately understood that in the claim wording the two words "first" and "second" had been inverted.

This also means that the decisions T 0431/03 (point 2.2.2 of the Reasons), T 1018/02 (point 3.8 of the Reasons), T 1395/07 (point 4 of the Reasons) and T 0197/10 (point 2.3 of the Reasons) cited by the appellant/opponent in any case do not apply because they start with the assumption that the claim wording is clear and makes technical sense in itself for the person skilled in the art, which as explained above is not so in the present case.

The technically sensible interpretation of claim 1 is supported by the rest of the specification since, indisputably throughout the description and figures, it is when the needle goes back from the second to the first jaw, or more precisely once the suture is retained, that the suture is released from the needle.

7. Costs

In its statement setting out the grounds of appeal, the appellant/opponent requested oral proceedings before any decision, other than to revoke the patent in its entirety, was taken.

Consequently, the Board summoned the parties to oral proceedings. By letter dated 10 December 2019, the appellant/opponent informed the Board that it would not be attending the oral proceedings, but that this did not mean that it was withdrawing its appeal or its request for oral proceedings. Hence, the Board went ahead with the scheduled oral proceedings.

However, since the Board intended to maintain the patent according to the main request of the appellant/patent proprietor (the patent as granted), the oral proceedings (in the absence of the appellant/opponent) served no purpose and could have been cancelled, had it not been for the request of the appellant/opponent. Indeed, the appellant/patent proprietor is not adversely affected by the decision to maintain the patent on the basis of its main request, and would thus not have needed any oral proceedings to defend its case.

By maintaining its request for oral proceedings, the appellant/opponent thus not only obliged the Board to hold the oral proceedings but also obliged the appellant/patent proprietor to come to the oral proceedings and to prepare for them.

Under these circumstances, pursuant to Article 104(1) EPC and Article 16(1)(e) and 16(2) RPBA 2020, the Board finds it equitable that the appellant/opponent bears the costs (for preparation, travel and presence) incurred by the appellant/patent proprietor for the oral proceedings before the Board.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.

3. The appellant/opponent shall bear the costs of the oral proceedings before the Board of appeal.