T 1891/20 - Intervention by entity related to opponent

 Key points

•  A legal entity belonging to the same economic group as one of the opponents files an intervention. The patentee objects that the intervention is inadmissible because the opponent and the intervener would not be separate parties.
• The Board: " In the present case, the intervener did not have the status of an "opponent" in the opposition proceedings. In particular, the intervener is a legal entity which is separate from appellant II. This has not been disputed by the respondent. In T 305/08, it was stated that "any third party" in Article 105(1) EPC cannot be given an interpretation other than that each party must be a separate legal entity, and that this also applies to an intervention filed by a legal entity belonging to the same group of companies as the opponent (Reasons 1.5.2)." The Board follows this case law.
• The Board: “ As to the respondent's objection to appellant II and the intervener having a common representative, the board refers to Rule 151 EPC, according to which parties may appoint a common representative. ”
• As a comment, I think this is confusing.  Rule 151(1) first sentence refers only to the case of multiple applicants. Rule 151(1) third sentence reads: “The same shall apply to third parties acting in common in filing a notice of opposition or intervention and to joint proprietors of a European patent.” As I understand it, this refers to joint opponents (multiple natural or legal persons filing a single opposition and paying one opposition fee, see G 3/99) and to joint proprietors (including the backreference to the mandatory common representative of Rule 151(1), first and second sentence). The opponent and intervener in the present case are not joint parties. Nevertheless, there is no provision prohibiting two (non-joint) opponents from appointing the same representative. However, it would indeed be very confusing if the same representative speaks for two (non-joint) parties (“Mr/Ms. Chair, thank you, Opponent 1 has no novelty objections and Opponent 2 submits that claim 1 is not novel over D4”).
• The Board, on the admissibility of the appeal: “Questions of admittance of allegedly late-filed submissions and the admissibility of an appeal should not be mixed up (see e.g. T 2069/15, Reasons 4). With regard to the latter, the board does not see any convincing reasons why the appeals of appellants I and II should be considered inadmissible under Rule 99(2) EPC.”

T 1891/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t201891eu1.html

Reasons for the Decision

1. Admissibility of the intervention (Article 105 EPC)

1.1 The respondent requested that the intervention be dismissed, for the following reasons:

i) During the licence negotiations following the appealed decision, the intervener claimed to be equivalent to appellant II, so that they would automatically inherit the rights of appellant II in the framework of a legal agreement concerning, inter alia, the patent under dispute. In fact, the main representative of appellant II in the cross-licence agreement was Mr. Branzka, which was listed in an e-mail of 25 January 2017 as Director of Patents/Licences for the intervener, while successive e-mails of the same thread defended the position of appellant II. The identity between both appellant II and intervener was reinforced by the fact that the notice of intervention was filed in the name of the intervener, but with the same address and the same representative as the notice of opposition of appellant II filed two years earlier. The position of the intervener was contradictory. On the one hand, they tried to defend that appellant II "does not qualify as a different party" from the intervener on a cross-licence agreement signed by the intervener but, on the other hand, tried to defend that the intervener and appellant II were different entities that should have rights as different parties to the opposition proceedings.

ii) The intervener claimed that the notice of intervention found basis in the legal proceedings instituted against appellant II and the intervener before the German court. However, the respondent was forced to sue both appellant II, having the technological assets, and the intervener, their successor in title, for the sake of completeness of the legal demand and due to the financial operation carried out by the intervener. The intervener, by filing a notice of intervention, was taking advantage of this financial operation for their own benefit. The intervener's actions, not the respondent's, were the reason why proceedings were opened against both companies. In fact, the lawsuit was made for both companies in the same action by the same document on 29 July 2020, not by two separate actions.

1.2 The respondent concluded that the intervener should not be considered as a "third party" on account of their self-proclaimed identity in terms of patent licences, so that there was no reason to consider that they should be treated as different parties in the opposition proceedings. Furthermore, allowing this intervention would cause a serious and unfair balance as to the chances of each of the parties of the opposition proceedings, as clearly shown by the fact that appellant II had used, in these appeal proceedings, the new documents introduced by the intervener in the notice of intervention.

The respondent further submitted that the intervener was a company which belonged to the same group of companies as appellant II and had shown an undeniable and very close connection thereto. In this context, the intervener claimed their right to intervene in a procedure which had already been closed, trying to introduce new evidence, which had been subsequently used by appellant II to submit arguments against a claim which had been examined without taking into account those documents. Moreover, appellant II had had the opportunity to file them in the opposition proceedings, and had deliberately withheld them to file them in the name of a company of the same group, with whom the IP staff is shared. If the appeal was settled with the patent being maintained, nothing would prevent the G+D group from creating another company and transferring to these new company some relevant assets, thus forcing the respondent to incorporate them in the infringement lawsuit, providing this new company the legal instrument to claim intervention in the opposition proceedings. Such behaviour should clearly be considered as an "abuse of procedure".

The respondent further stated that appellant II and the intervener, i.e. a non-appellant, had a common representative. The latter had made submissions in a single document which concerned both of these parties. This could lead to procedural problems, for example if the intervention was deemed inadmissible.

1.3 The board considers the intervention admissible for the following reasons:

1.3.1 A "third party" within the meaning of Article 105(1) EPC is a party which is different from the parties to the proceedings before the EPO. Opponents are parties to the opposition proceedings (Article 99(3) EPC) and to the subsequent appeal proceedings (Article 107 EPC). Thus, a third party within the meaning of Article 105 EPC can only be a party which does not have the status of an "opponent".

1.3.2 The status of "opponent" is a procedural status and the basis on which it is obtained is a matter of procedural law. The question of whether an opponent's acts accord with the intentions or instructions of a third party has no bearing in this context (G 3/97, Reasons 2.1).

1.3.3 In the present case, the intervener did not have the status of an "opponent" in the opposition proceedings. In particular, the intervener is a legal entity which is separate from appellant II. This has not been disputed by the respondent.

1.3.4 In T 305/08, it was stated that "any third party" in Article 105(1) EPC cannot be given an interpretation other than that each party must be a separate legal entity, and that this also applies to an intervention filed by a legal entity belonging to the same group of companies as the opponent (Reasons 1.5.2). Considering the allegations that this would effectively allow an opponent to belatedly file further oppositions and new evidence (Reasons 1.5.5) and that the patent department of one company could file oppositions on behalf of the other companies (Reasons 1.5.6), it was concluded that such an intervention did not amount to a circumvention of the law by "abuse of due process" (Reasons 1.5.8). The board concurs with these findings.

1.3.5 The respondent's reference to appellant II's statements on the interpretation of certain terms in a

cross-licence agreement has no bearing on the intervener's status as a third party. As pointed out above, the latter is a matter of procedural law only.

1.3.6 If a right is exercised for a purpose other than its intended legal purpose, this can constitute an "abuse of rights". This is in particular the case if no legitimate interests are pursued and if a right is primarily exercised to cause harm. "Abuse of rights" must be established beyond reasonable doubt; the burden of proof is on the party claiming any such abuse of rights (cf. J 14/19, Reasons 13.1).

1.3.7 The fact that appellant II (and appellant I, who has not been alleged to be part of the same group of companies) refer to documents introduced by the intervener (i.e. E17 to E19**(*)) with the notice of intervention does not amount to an abuse of rights. It is neither vexatious nor illegitimate if opponents

and/or interveners coordinate their actions within the limits of the applicable procedural framework. Rather, a party trying to increase their chances of success by referring to prior-art documents which have been introduced by another party is pursuing a "legitimate interest". In the present case, this did not lead to an unfair position either.

1.3.8 The respondent has not provided any proof of their allegation that appellant II had had the opportunity to file the new documents cited in the notice of intervention already in the opposition proceedings, but deliberately withheld them to file them later in the name of another company belonging to the same group of companies.

1.3.9 As to the respondent's objection to appellant II and the intervener having a common representative, the board refers to Rule 151 EPC, according to which parties may appoint a common representative. As such, the appointment of a common representative for two opponents is not different from the appointment of a common representative for an opponent and an intervener. In both cases, the commonly represented parties may, if considered on their own, be in a different situation as to the admittance of their submissions. This, however, does not prevent them from appointing a common representative.

1.4 In view of the above, the intervention is admissible.

1.5 The board additionally points out that the possible "procedural problems" referred to by the respondent remain insofar hypothetical as the board's conclusions on the merits of the case (see points 3 and 4 below) do not contain any reference to the new documents E17 to E19* cited in the notice of intervention.

2. Admissibility of the appeals (Article 108 EPC and Rule 99(2) EPC)

2.1 Under the heading "Inadmissibility of appeals", the respondent submitted that appellants I and II had included in their statements of grounds of appeal a series of new evidence: appellant II's statement of grounds of appeal included documents E17, E18, E18**(*), E19 and E19**(*) and appellant I showed their adherence to the new documents and arguments submitted in appellant II's statement of grounds of appeal, and further introduced document E20. These documents were not part of the opposition proceedings, were not considered by the opposition division in the decision under appeal and therefore should not be introduced into the appeal proceedings. Furthermore, there were some grounds for opposition invoked by appellants I and II that were not part of the decision under appeal and that should be disregarded according to Article 12(6) RPBA 2020:

i) Appellant II introduced a fresh ground by questioning the admissibility of the amendments introduced by the respondent during the

first-instance oral proceedings (Article 123(2) EPC), since these amendments were not objected in those oral proceedings.

ii) Appellant II introduced a fresh ground by questioning the feasibility of the opposed patent (Article 83 EPC). Section 4.1 of the decision under appeal contained a clear statement concerning this ground.

iii) Appellants I and II introduced fresh grounds by questioning the amendments made (Article 123(2) EPC), the clarity of the opposed patent (Article 84 EPC), and the admissibility of the changes (Rule 80 EPC). Sections 3.2 and 5.1 of the decision under appeal contained a clear statement concerning this ground. As stated by the minutes (point 19), no objections concerning Article 123(2)[sic] EPC were raised by any of the opponents (now appellants). This was repeated again (point 21 of the minutes) when the chairman invited the opponents to express any objection other than Article 52(1) EPC (and explicitly mentions Article 123(2) EPC). The rest of the procedure (since the submission of the last main request) did not contain any discussion other than the one concerning novelty and inventive step. Clarity had not even been invoked.

iv) Appellant II introduced a fresh ground by questioning the novelty (Article 54 EPC) of claim 1 over either of E1 and E17. This ground had not been discussed in the decision under appeal either.

2.2 The respondent's arguments concern the board's discretion under Article 12(6) RPBA 2020 not to admit certain pieces of evidence and objections rather than the admissibility of the respective appeals as a whole under Article 108, third sentence, EPC and Rule 99(2) EPC. Questions of admittance of allegedly late-filed submissions and the admissibility of an appeal should not be mixed up (see e.g. T 2069/15, Reasons 4). With regard to the latter, the board does not see any convincing reasons why the appeals of appellants I and II should be considered inadmissible under Rule 99(2) EPC. Moreover, as to the application of Article 12(6) RPBA 2020, the pieces of evidence and the objections referred to by the respondent as "fresh grounds" do not have any impact on the board's considerations on the merits of the case (see points 3 and 4 below). Hence, their admittance does not have to be discussed.