T 1024/18 - (II) Public prior use

Key points

•  "The opposition division found that the prior use was sufficiently substantiated at least by the Neos 3 diaper production line. The technical features of the production line were disclosed in E4 and evidence of the sale [of the Neos 3 production line] to SCA in 2009 was proven by invoice E3. It however found that: [] the alleged prior use was not made publicly available by the sale to SCA" 
• " According to established case law, the sale of an apparatus is, in the absence of any special circumstances limiting the freedom to divulge details thereof, sufficient to render the technical details of the apparatus available to the public. The sale by GDM of the Neos 3 production line to SCA in 2009, as evidenced by E3, has not been questioned. However, the Board finds, contrary to the opposition division, that there is no evidence of confidentiality, not even tacitly so, which restricted [the buyer] SCA from freely divulging details of the production line to any third party." 
• " The Board concurs with the respondent and the opposition division that the 'beyond reasonable doubt' standard of proof is appropriate for the prior use to be seen as proven. " 
• The Board reviews the findings of fact based on the evidence on file, in particular based on the transcripts of the witness hearings. The  Board: " As regards SCA allegedly not communicating information regarding the Neos 3 production line to others, this cannot be concluded from the witness statements. On page 9/40, 2nd last paragraph, of his testimony, Mr Claessens states 'we do not kind of openly communicate issues of GDM to others, but it's not a secrecy agreement'. This further enforces that no confidentiality agreement was in place restricting SCA from divulging details of the Neos 3 production line to a third party." 
• "  The respondent's argument that a tacit obligation not to divulge details of Neos 3 must have existed due to the commercial and technical relationship that existed between GDM and SCA is held to be mere conjecture lacking foundation. According to the witness Mr Berg, indicated as commercially responsible for the acquisitions of Neos 2 and Neos 3 and for preparing, negotiating and signing the purchase contracts on SCA's behalf, there was no joint development project between GDM and SCA (see Mr Berg's testimony, questions and answers bridging pages 3-4/8 and 5-6/8, respectively). Irrespective of this, any possible existence of a commercial and technical relationship existing between GDM and SCA before the sale of the machines also does not allow a conclusion that a tacit obligation of confidentiality existed once the machines were sold to SCA and became its sole property. In fact, the sole secrecy agreements referred to by the witnesses (see Mr Berg's statement, page 4/8, line 6 onwards and page 7/8, last paragraph) relate to GDM being prohibited from divulging any detail of the SCA production facilities, rather than any restrictions being placed on SCA relating to the purchase of the Neos 3 production line. It is noteworthy that, despite a secrecy agreement restricting GDM from divulging details of the SCA facilities, no agreement is referred to by the witnesses, let alone has been filed, obliging SCA to similar secrecy with respect to the purchased Neos 3 production line. The lack of an agreement limiting SCA from divulging detail of Neos 3 is thus found by the Board to be proven beyond all reasonable doubt." 
• As a comment, in the present case, the patentee does not seem to be SCA. 
• The somewhat puzzling aspect is that disclosure from an assistant to the inventor is of course no prior art even if the inventor is not bound by secrecy. 

EPO -  T 1024/18

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t181024eu1.html

Reasons for the Decision

Main request

1. Novelty

The subject-matter of claim 1 lacks novelty over the prior use "AT 450 Neos 3 Flex Adult" diaper production line (hereafter, simply "Neos 3").

1.1 In its decision, the opposition division found that the prior use was sufficiently substantiated at least by the Neos 3 diaper production line. The technical features of the production line were disclosed in E4 and evidence of the sale to SCA in 2009 was proven by invoice E3. It however found that:

(a) The alleged prior use was not made publicly available by the sale to SCA; and

(b) The prior use lacked relevance in that it did not disclose all features of claim 1.

1.2 Public availability

1.2.1 According to established case law, the sale of an apparatus is, in the absence of any special circumstances limiting the freedom to divulge details thereof, sufficient to render the technical details of the apparatus available to the public. The sale by GDM of the Neos 3 production line to SCA in 2009, as evidenced by E3, has not been questioned. However, the Board finds, contrary to the opposition division, that there is no evidence of confidentiality, not even tacitly so, which restricted SCA from freely divulging details of the production line to any third party.

1.2.2 The Board concurs with the respondent and the opposition division that the 'beyond reasonable doubt' standard of proof is appropriate for the prior use to be seen as proven. The respondent's arguments relating to various statements of the witnesses to show that doubt exists to the public availability of the Neos 3 production line are however not persuasive.

(a) In regard to signing confidentiality agreements, on page 7/40, lines 6 to 10 of Mr Claessens's testimony, the witness states, 'I know that some [visitors] have to do, I know that some are not requested to'. This does not allow any conclusion that a blanket condition of confidentiality applied to visitors to the Neos 3 production line. Quite the contrary, it shows that SCA had the freedom to disclose the Neos 3 production line to whom it wished.

(b) As regards SCA allegedly not communicating information regarding the Neos 3 production line to others, this cannot be concluded from the witness statements. On page 9/40, 2nd last paragraph, of his testimony, Mr Claessens states 'we do not kind of openly communicate issues of GDM to others, but it's not a secrecy agreement'. This further enforces that no confidentiality agreement was in place restricting SCA from divulging details of the Neos 3 production line to a third party.

(c) Mr Claessens's statement on page 37/40, 4th paragraph, that the operating and maintenance manual (E4) would not be shown to competitors, would however not have restricted a third party, on visiting the production line, from understanding its operation and the process steps employed in forming the absorbent core. Indeed, from a real life perspective it would be entirely normal and indeed expected not to show such a manual to the vast majority of visitors.

(d) That the Neos 3 machine was housed in a separate facility to the other production lines at SCA and visitors could take pictures only of their own equipment (see page 39/40) fails to prove that third parties had no access to the Neos 3 production line. Taking a photo is not a prerequisite for a production line to be considered available to the public.

(e) The respondent's reference to E10 with the argument that the operating and maintenance manual E4 contained confidential know-how and that the production line was thus to be seen as confidential, is not accepted. Even if it were accepted that the 'Client's know-how' referred to in E10 was actually 'confidential know-how', this fails to cast doubt on the public availability of the Neos 3 production line for which no evidence of the existence of a secrecy agreement has been provided. Indeed the statements from the witnesses confirm the precise opposite.

1.2.3 The respondent's argument that a tacit obligation not to divulge details of Neos 3 must have existed due to the commercial and technical relationship that existed between GDM and SCA is held to be mere conjecture lacking foundation. According to the witness Mr Berg, indicated as commercially responsible for the acquisitions of Neos 2 and Neos 3 and for preparing, negotiating and signing the purchase contracts on SCA's behalf, there was no joint development project between GDM and SCA (see Mr Berg's testimony, questions and answers bridging pages 3-4/8 and 5-6/8, respectively). Irrespective of this, any possible existence of a commercial and technical relationship existing between GDM and SCA before the sale of the machines also does not allow a conclusion that a tacit obligation of confidentiality existed once the machines were sold to SCA and became its sole property. In fact, the sole secrecy agreements referred to by the witnesses (see Mr Berg's statement, page 4/8, line 6 onwards and page 7/8, last paragraph) relate to GDM being prohibited from divulging any detail of the SCA production facilities, rather than any restrictions being placed on SCA relating to the purchase of the Neos 3 production line. It is noteworthy that, despite a secrecy agreement restricting GDM from divulging details of the SCA facilities, no agreement is referred to by the witnesses, let alone has been filed, obliging SCA to similar secrecy with respect to the purchased Neos 3 production line. The lack of an agreement limiting SCA from divulging detail of Neos 3 is thus found by the Board to be proven beyond all reasonable doubt.

1.2.4 As regards the respondent's specific argument that any co-development of the Neos 3 production line would suggest a desire to keep it confidential, this is also not accepted. Page 24/40, first paragraph of Mr Claessens's testimony states that, in principle, the basic process carried out in the Neos, Neos 2 and Neos 3 production lines was the same, any such [co-developed] modifications relating to e.g. easier maintenance. In this regard it is firstly noted that Neos and Neos 2 relate to production lines sold by GDM to SCA in 2001 and 2004 respectively and, as such, are predecessors to the Neos 3 production line. It is further noted that, in the entirety of its submissions in the appeal proceedings, the respondent has not countered the appellant's argument that the Neos, Neos 2 and Neos 3 production lines each disclosed all the technical features of claim 1. Thus, even if, despite Mr Berg's testimony (see point 1.2.3 above), joint, cooperative modifications and developments took place on the Neos 3 production line, any such modifications and developments would not have been to the fundamental method of manufacturing the absorbent cores which remained constant between the three production lines, this notably not having been disputed by the respondent. Consequently, the modifications and developments would not, even if they were co-developed under secrecy, for which there is anyway no evidence or suggestion, restrict the basic process of the production line from being available to the public merely by way of the unfettered sale of the Neos 3 production line to SCA.

1.2.5 In conclusion, the Board thus finds it to be proven beyond reasonable doubt that the sale of the Neos 3 production line occurred without any obligation to confidentiality. Consequently, the sale of the Neos 3 production line, as evidenced by E3, is seen to have rendered the (relevant) technical details of the Neos 3 production line available to the public.

1.3 Technical features of Neos 3

1.3.1 In point 2.4.3.5 of the opposition division's decision, the conclusion was reached that a gap existed in the precise technical features of the diaper production lines due to one of the witnesses being unable to confirm whether the operating and maintenance manual (E4) included improvements and adaptations made to the machines.

1.3.2 In reaching that conclusion, the opposition division referred to page 22/40 of Mr Claessens's statement. It however failed to properly reflect further questioning on this subject by the opposition division itself on page 23/40 as to whether the adaptations and improvements related to the basic features of the machines in the Neos, Neos 2 and Neos 3 production lines. To this the witness replied (see page 24/40) that "[the basic machines] were the same. I can well imagine that we did small improvements to have a problem solved or easier maintenance or things like that. But in principle the process was the same."

1.3.3 From this it is clear that the fundamental operation of all three of the alleged prior used production lines, as detailed with respect to Neos 3 in E4, was the same (this also not being disputed by the respondent, see point 1.2.4 above), the sole differences, if any, in Neos 3 amounting to improvements and adaptations, for example, to enable easier maintenance. This is further supported on page 9/40 of Mr Claessens's testimony which states, 'a big portion of the machine is common supply' which in the context of the witness questioning implies that the production line is not specific to SCA requirements and any improvements and adaptations would not affect the fundamental steps used to manufacture the core in the Neos 3 production line. Consequently, it is inconceivable that any improvements and adaptations would have altered the fundamental operation of the core elements of the production line.

1.3.4 Lastly, in its reply to the appellant's statement of grounds of appeal, the respondent did not contest that any features of claim 1 were not disclosed by the Neos 3 production line.

1.3.5 From all the above points, the Board concludes that the prior use Neos 3 discloses all features of claim 1.

1.4 In summary, therefore, the Board finds it to be proven beyond all reasonable doubt that Neos 3 was sold and used without any confidentiality while disclosing all features of claim 1. Consequently the subject-matter of claim 1 lacks novelty (Article 54 EPC) over the prior use Neos 3. The main request is thus not allowable.