T 2440/12 - Software discloses method

Key points

• The patentee had commercialized its software before the priority date of the opposed patent. After having been sued for patent infringement, the patentee had filed the application for which the present patent was granted. Therefore, patentee acknowledged that all features of claim 1 where implemented in the software.  However, users of the software would not be aware of the method steps. 
• " In a situation such as the present one, where a potentially unlimited number of members of the public performed or were able to perform a process by means of a commercially available software tool, the fundamental legal question arises whether, and if so, to what extent these persons had to be aware of the specific features of the performed process for the latter to have been made available to the public."
• The Board concurs with the [opponent] that even a different "disclosure" of the method, as it could be obtained by executing it on a computer line-by-line without infringing copyright protection, is sufficient to take away the novelty of the method as claimed.

EPO T 2440/12 - [C] - link

Prior use

5. The crucial issue of the present case is the effect of the alleged public prior use (see Sections III-VIII above) on the patentability of the claimed invention.

5.1 The essential facts of the prior use are not in dispute. Prior to the filing date of the opposed patent, the respondent [patentee]  already commercialised its software product Cadmould. After having been sued by the appellant for patent infringement, the respondent intended to disclose the method embodied in this software in order to demonstrate that it was based on its own development and did not infringe the appellant's patent. Since the respondent did not wish that the disclosed information be unprotected, it decided to file its own patent application - i.e. the European patent application No. 02016515 leading to the opposed patent - in the assumption that a valid patent could still be granted notwithstanding the prior commercialisation of its software (see documents D6, page 8, and D7, page 6).

5.2 Consequently, the respondent repeatedly emphasised in national court proceedings that the teaching of the patent application did not differ from the technical features of the commercialised software. This can be exemplified by the following statements in proceedings before the District Court I of Munich (see document D6, pages 7 and 8):

"Die Beklagte tritt dem entgegen und verwehrt sich insbesondere gegen die Unterstellung der Klägerin, die Patentanmeldung [...] bewußt abweichend von der tatsächlichen Funktion der Software formuliert zu haben, um eine angebliche Patentverletzung zu verschleiern. Diese Behauptung ist durch nichts gerechtfertigt."

[Translation: "The defendant disagrees with this and rejects the plaintiff's allegation that the defendant has formulated the patent application [...] intentionally in a departure from the actual function of the software to dissimulate an alleged patent infringement. There is no justification to this allegation whatsoever."]

"Ein Softwareprodukt mit dem in der Patentanmeldung Anlage B1 beschriebenen Verfahren wurde von der Beklagten bereits im Jahre 1997 auf der Messe NPE in Chicago, USA, vorgestellt und international, z.B. auch in Brasilien, mit Veröffentlichungen angekündigt."

[Translation: "A software product featuring the method as described in the patent application as per exhibit B1 was already presented in 1997 at the NPE Trade fair in Chicago, USA, and announced in publications internationally, e.g. also in Brazil."]

5.3 In the context of the present opposition and appeal proceedings the appellant heavily relied on these statements and concluded that the subject-matter of all the patent claims was embodied by the commercialised software. This conclusion was never disputed by the respondent in the proceedings before the Opposition Division and in the written appeal proceedings. It is true that, at a late stage of the oral proceedings before the Board, the respondent declared that the subject-matter of claims 1 to 3 according to the auxiliary request 2 (which correspond to claims 23 to 25 of the granted patent) was not embodied by the previously commercialised software (see Section XV, last paragraph, above and points 15.2, 15.5 and 15.6 below). However, this statement is of no relevance for the assessment of the respondent's main request since this request includes several other claims, i.e. claims 1 to 22, in respect of which the respondent has never disputed that they were embodied by the software.

6. According to Article 52(1) EPC, European patents shall be granted for any invention, in all fields of technology, provided, inter alia, that they are new. An invention shall be considered to be new if it does not form part of the state of the art (Article 54(1) EPC). 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 (Article 54(2) EPC).

6.1 In the present case, the invention is a method to be performed by a computer (following some input by the user). As pointed out above (cf. points 3 to 3.3), the essential features of the method relate to the generation of a "semi-volumetric" mesh representing a thin-walled object through which fluid flow is simulated.

6.2 It follows from the uncontested facts set out above that any customer to whom the respondent's software product was delivered before the filing date of the patent was able to perform the claimed method, simply by running the software on a (general purpose) computer. In the Board's view, the circle of customers of an internationally commercialised software product is potentially unlimited in the sense that any interested person could have bought or otherwise acquired a copy of the software. Therefore, the respondent's customers have to be regarded as members of the public.

6.3 In a situation such as the present one, where a potentially unlimited number of members of the public performed or were able to perform a process by means of a commercially available software tool, the fundamental legal question arises whether, and if so, to what extent these persons had to be aware of the specific features of the performed process for the latter to have been made available to the public.

7. In the Board's view, it can be rather convincingly argued that the mere fact that any interested person who acquired the software product and used it for the purpose for which it was commercialised, i.e. for simulating a fluid flow within thin-walled three-dimensional geometries, automatically executed the method steps as defined in claim 1 of the patent, is as such already sufficient for destroying the novelty of the claimed subject-matter.

7.1 The factual circumstances of the present case appear to be very different from a situation where an inventor (or another individual person) carries out a process in public which is later sought to be patented. In that situation a novelty-destroying effect only occurs when cognitive information is transmitted to the public, since, without a proper understanding of the steps of the process, no member of the public would be able to carry out the process himself. On the other hand, the public prior use in the present case is characterised by the commercial availability of a software tool that allowed the repeated execution of the patented method even without requiring any understanding of the steps performed by the software.

7.2 Nevertheless, the Board does not base its decision on this line of argument since the parties did not specifically focus on it in their written submissions and since the Board has come to the conclusion that, as set out in the following, the subject-matter of claim 1 lacks novelty in view of the undisputed public prior use even if one assumes to the benefit of the respondent that in the present case the novelty-destroying effect presupposes a certain amount of cognitive information about the method embodied in the respondent's software.

8. In the contested decision (cf. point 2 of the reasons), the Opposition Division took the view that "[o]n the balance of probabilities a mere disassembly of an available executable will not enable the person skilled in the art to reconstruct the underlying mathematical method for a finite element program. In particular, the person skilled in the art would not be able to directly and unambiguously derive the use of a framework of rod elements in conjunction with the generated mesh as part of the simulation" (emphasis added).

8.1 In particular, the Opposition Division concluded that, "taken into account that a disassembler translates machine language into assembler language and not into a high-level language it is more than doubtful that a person skilled in the art would be able to deduce from code in assembler language clearly and unambiguously for example the feature 'inside the surface mesh a framework of internal rod elements is generated extending from node to node of the polygons'".

9. In the proceedings before the Board, the appellant, inter alia, argued that the present invention related to the particular geometry of the mesh used for a computer-implemented simulation of fluid flow and therefore was essentially of a mathematical nature. This kind of inventions could be expressed in formal mathematical language, in terms of a computer program or in the language of a claim. All these forms of expression constituted a disclosure as long as they were made available to the public and could, in principle, be "read" by the skilled user. This was certainly the case for a computer program that could be disassembled and translated into readable language.

10. The respondent relied basically on the line of reasoning followed by the Opposition Division and stressed that the essential teaching of the present invention, namely the generation and use of two-noded rod elements between nodes of opposite mesh elements (see feature (c) at point 4 above), could not be derived from the low-level language into which a disassembler might translate computer code. In other words, the teaching made available to the public by means of the contested patent was not anticipated by a software product which could not possibly provide the same information to a skilled person.

10.1 It is the respondent's position that executing a complex software program on a computer can be compared to operating a "black box" with input and output terminals. The user may realise that, in response to a given input, the "black box" generates a certain output. However, this operation of the "black box" would, in general, not provide any information as to its modus operandi and, in this respect, would not contribute any teaching to the state of the art.

11. A computer program is essentially a set of instructions given to a computer for performing a sequence of operations on input data and for delivering corresponding output data. These instructions expressed in machine code may indeed as such normally have no understandable meaning for the user. Nevertheless, as argued by the appellant, they could be easily converted by a disassembler into human readable language.

Furthermore, by executing an application line-by-line, the skilled person would be able to see how the input data is processed and understand how the method implemented by the software product is carried out step-by-step. The information provided by the stepwise execution of the software product represents, in the Board's opinion, a form of disclosure of a specific embodiment of this method.

11.1 The respondent has essentially objected that the teaching provided by the opposed patent was not comparable to the teaching which could be obtained even by running a program step-by-step on a computer. In the respondent's view, the skilled person would not be able to derive all the features of the method recited in claim 1 and, in particular, not become aware of the step of generating rod elements between the nodes of opposite surface mesh elements.

11.2 The Board concurs with the respondent that there is no evidence that the skilled person could extract from the disassembled software program or from its execution line-by-line on a computer the notion of rod elements generated between nodes of the surface meshes as recited in claim 1.

On the other hand, the Board considers that what the skilled person obtains from a disassembled code or from the stepwise execution of a software product is indeed an "alternative" description, albeit very concrete and detailed (= low-level), of the method embodied by the software.

11.3 In the Board's opinion, defining a known process or method in different terms does not give rise to a different process or method, just like giving a different definition of a chemical composition does not create a new chemical composition. In the present case, the method implemented by the software product before the filing date of the opposed patent was expressed in computer-readable code, whereas in the patent the method is specified in much more abstract, even somewhat metaphorical language. If the machine code of the software can be translated into human-readable language, the two representations of the method should, in principle, be considered as two different forms of disclosure of the same method which are equally available to the public.

12. The respondent has objected that unconditional decompiling or disassembling of computer programs was not allowed in Europe and that the skilled person would infringe the copyright protection when trying to decompile a software product in order to gain knowledge of the underlying algorithm. The Board notes that, in the context of a prior use involving an international commercialisation which was not restricted to Europe, the respondent's reliance on provisions of European copyright law may not be sufficient in order to demonstrate that all the respondent's customers were bound by corresponding legal restrictions. For the sake of argument, the Board nevertheless follows the respondent's point of departure and uses European copyright law as the relevant yardstick.

12.1 Article 6 of the Council Directive of 14 May 1991 on the legal protection of computer programs (91/250/EEC) as in force when the public prior use occurred (the Directive was replaced in 2009 by Directive 2009/24/EC) deals with decompilation. According to it, the authorisation of the rightholder shall not be required where reproduction of the code and translation of its form are indispensable to obtain the information necessary to achieve the interoperability of an independently created computer program with other programs, provided that certain conditions are met. One of these conditions is that the decompilation is confined to those parts of the original program which are necessary in order to achieve interoperability.

Hence, this directive places indeed some restrictions on a full decompilation of a computer program for the purpose of understanding its structure and all its underlying algorithms.

12.2 However, the appellant has convincingly argued that it was not necessary to disassemble or decompile a program to make the corresponding operations performed by the processor "readable" for a skilled user. It would be sufficient to run the software on a virtual machine and execute it line-by-line. Although this was indeed a very tedious way of running a software program, it did not require any authorisation and would reveal the program's structure and functionalities to the skilled person in a very concrete manner.

12.3 According to Article 5, paragraph 3. of the above directive 91/250/EEC, "[t]he person having a right to use a copy of a computer program shall be entitled, without the authorisation of the rightholder, to observe, study or test the functioning of the program in order to determine the ideas and principles which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do" (emphasis added).

In the light of the above, the respondent's customers were not prevented by law to load the computer program and run it line-by-line "in order to determine its underlying ideas and principles".

12.4 In essence, the Board comes to the conclusion that prior use of a software product in the form of sales makes the method implemented by the software part of the state of the art since, in principle, the skilled person could have executed the software line-by-line on a computer, and, in doing so, would have not only carried out the method, but also gained knowledge of the method steps performed by the computer.

13. The Board finds that its conclusions are in line with the opinion expressed by the Enlarged Board of Appeal in case G 1/92 (OJ EPO 1993, 277).

13.1 According to G 1/92, the chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition. Furthermore, the same principle applies mutatis mutandis to any other product, since, as observed at point 1.1 of the reasons, the EPC does not make any distinction between chemical products and other products such as mechanical or electrical articles.

In particular, the Enlarged Board observed in point 1.4 that an essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art.

13.2 In the case of a software product, the "internal structure" is represented by the set of instructions which constitute a program to be run on a computer. As explained above, by executing the instructions line-by-line the skilled person can derive knowledge of all the operations to be performed in order to carry out the method embodied by the software product.

13.3 Similarly, a certain electronic circuit may be described and claimed in functional terms, namely as a combination of "means for" carrying out certain steps of a method. However, if an embodiment of this circuit is publicly available for examination, in order to implement the teaching of the claimed circuit (and of the corresponding method), it would be sufficient to reproduce the structure of the physical circuit component-by-component.

It could be argued that the teaching derivable from the "real" circuit would not be the same as the teaching provided by the description of the circuit given in a claim. Nevertheless, it follows from the established case law that the precise and detailed disclosure of the physical embodiment of a circuit takes away the novelty of the same circuit claimed in functional terms.

13.4 In summary, the point of contention in the present case is not whether the respondent's software product executed on a computer falls within the terms of the method according to claim 1 of the patent. It does, as this software product admittedly embodies the claimed invention. In the respondent's view, a software product would take away the novelty of a corresponding claimed method only if it disclosed to the skilled person the same features used in the claim to define the method. However, the Board concurs with the appellant that even a different "disclosure" of the method, as it could be obtained by executing it on a computer line-by-line without infringing copyright protection, is sufficient to take away the novelty of the method as claimed.

13.5 Hence, the Board comes to the conclusion that the subject-matter of claim 1 is not new within the meaning of Article 54 EPC following the prior use of a software product which undisputedly embodied the claimed subject-matter.