T 1634/17 - Sheets shown during presentation but no prior art

Key points

• The question is whether D11 is prior art. "document (11) is a copy of the slides used by [Dr. Murphy] during the presentation held on 3 November 2009 at Hinxton, UK. The presentation with the title "BAC-based Modifications of the Mouse Genome: The Big and the Backward" took place at the Wellcome Trust in an advanced course entitled "Wellcome Trust Advanced Course: Genome Manipulation of ES Cells". According to Dr Murphy, neither hard copies were handed out to the audience nor electronic copies of the slides were distributed ".
• "It is common ground between the parties that Dr Murphy's presentation took place on the date and place described above." "according to Dr Murphy, all slides were shown to the audience"
• "the presentation took less than one hour, i.e. the 58 slides reproduced in document (11) were shown in less than one hour "
• "the relevant question is not what was presented or shown to the audience but what was actually conveyed to the public, i.e. what the audience took away from Dr Murphy's presentation. In line with the examples in the case law, providing (at least) a contemporary written note from a member of the audience present at this presentation might be an important and decisive element in the evaluation of evidence (cf. T 1212/97, point 7 of the Reasons; T 2003/08, point 42 of the Reasons)."
• T 1212/97 headnote: "The information content made publicly available by a lecture cannot be put beyond reasonable doubt by any evidence of the lecturer alone, as the lecturer is in a quite different position to a member of the audience".
  
• " None of the declarations on file (documents (23) to (28), (30), and Dr Meng (Amy) Li's witness testimony) is indeed a contemporary written note taken at Dr Murphy's presentation. "
• "Although ... some members acknowledge in their declarations  [from 2016] to have taken such notes, none of them has actually been ever produced "
• " Following the laboratory meeting [of the group of Prof. Bradly on 4 November 2009, including some members of the audience of Dr Murphy's presentation], Professor Bradley compiled on 6 November 2009 a summary of "what we had learnt from Dr Murphy's presentation" that was circulated to the participants of this meeting on 9 November 2009 []). None of these documents is thus contemporary to Dr Murphy's presentation and all of them were produced after conversations, discussions and a meeting that took place [in the group of Prof. Bradly] well after Dr Murphy's presentation among members of the audience who, to use Professor Bradley's own words, "had a particular interest in attending the 2009 presentation by Dr Murphy from Regeneron, because ... had great relevance to our own work".
• "[There can be no] doubt that, in view of the interest/relevance of Dr Murphy's presentation, conversations, discussions and comments on this presentation took place among such a group of skilled persons immediately after this presentation"
• "The fact that all these discussions, conversations and comments took place after Dr Murphy's presentation and before the compilation of a summary of this presentation by Professor Bradley [...] as well as before the statements/declarations of the members of the audience of Dr Murphy's presentation on file (documents (23) to (28), and (30)), is to be taken into account. This has not been done by the opposition division. After all, the board can thus not agree with the opposition division's conclusion that the relevant "information content" was indeed made available and conveyed to the audience in Dr Murphy's presentation."
• " Since, as a consequence, document (11) does not form part of the state of the art, no information can be derived therefrom"

EPO 

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/t171634eu1.html

Document (11) and the status of document (11)' as prior art

16. According to Dr Murphy (document (13)), document (11) is a copy of the slides used by him during the presentation held on 3 November 2009 at Hinxton, UK. The presentation with the title "BAC-based Modifications of the Mouse Genome: The Big and the Backward" took place at the Wellcome Trust in an advanced course entitled "Wellcome Trust Advanced Course: Genome Manipulation of ES Cells". According to Dr Murphy, neither hard copies were handed out to the audience nor electronic copies of the slides were distributed (cf. page 2, point 5 of document (13); see also page 13 of Dr Meng (Amy) Li's witness testimony annexed to the Minutes of the oral proceedings at first instance).

17. It is common ground between the parties that Dr Murphy's presentation took place on the date and place described above. In addition to Dr Murphy's declaration, there is also other evidence on file provided by several attendees of Dr Murphy's presentation to support that this presentation took place as described (documents (23) to (28) and (30), and Dr Meng (Amy) Li's witness testimony).

18. Although appellant I has raised doubts on whether all slides were actually shown to the audience during Dr Murphy's presentation, the fact remains that a presentation with the title indicated above and subject-matter related thereto was presented by Dr Murphy to an audience on the above date and place. In this context, decisions T 1212/97 of 14 May 2001 and T 2003/08 of 31 October 2012 have been cited by appellant I to illustrate "the correct legal standard" to apply.

18.1 These decisions held that the standard of proof for ascertaining the contents of an oral disclosure to be high, "[w]hat has been said, or to use the terms of Article 54(2) EPC, what has been "made available to the public" has to be put beyond reasonable doubt" (cf. T 2003/08, point 37 of the Reasons; T 1212/97, point 2 of the Reasons). Both decisions acknowledge that "the amount of evidence necessary to establish the content of an oral presentation beyond reasonable doubt is to be judged on a case to case basis, i.e. it depends on the quality of the evidence in each case" (cf. T 2003/08, point 38 of the Reasons; T 1212/97, point 4 of the Reasons).

18.2 In decision T 1212/97, the board stated that "[t]he lecturer's evidence can be taken as defining the maximum amount of knowledge that may have conveyed to the audience, but cannot be relied on to establish even what minimum of new knowledge was necessarily conveyed to the audience". Therefore, the lecturer's evidence by itself was considered not to be sufficient in their case. The board went on to state that "[i]nformation appearing in each of the contemporary written notes made at the lecture by at least two members of the audience can usually be regarded as sufficient" (cf. T 1212/97, points 3 and 4 of the Reasons).

18.3 The relevance of contemporary written notes in the context of an oral/ephemeral disclosure has also been emphasized in decision T 2003/08 (point 39.2 of the Reasons). However, the board also stated that "there may be circumstances where evidence from the lecturer and only one member of the audience is convincing enough to reach the standard of proof - i.e. beyond reasonable doubt" (cf. T 2003/08, point 42 of the Reasons).

19. There is no need to take a stand on the question which standard of proof to apply, if different standards of proof should be applied in proceedings before the boards, depending on the context, and if "proof beyond reasonable doubt" is indeed the right yardstick. There is also no need to take a stand on the question if the categorical reference to contemporary written notes made at a lecture by at least two members of the audience so as to "usually" be sufficient (see again T 1212/97, point 4 of the Reasons) is compatible with the principle of free evaluation of evidence.

What is decisive is that, in view of the evidence before the first instance department or the board in an individual case, the deciding body is persuaded that a particular oral disclosure has taken place and a particular information has been conveyed to the audience, or not.

The circumstances of the present case are such that the opposition division's conclusions cannot be followed.

19.1 In the present case, slides 23 to 26 of Dr Murphy's presentation - referring to the presence of poor male fertility in the homozygous transgenic mice and the role of the ADAM6 gene to restore male fertility, are relevant. Although according to Dr Murphy, all slides were shown to the audience (cf. page 3, point 9 of document (13)), the opposition division, after assessing all evidence on file, considered it to be "very likely" but that "still this fact could not be finally proven beyond reasonable doubt" (cf. page 13, point 3.24 of the decision under appeal). Be that as it may, this evidence is from the lecturer himself and thus, may by itself not be sufficient to proof that the relevant slides were indeed shown.

19.2 It is worth noting here that, to the best of Dr Murphy's recollection, the presentation took less than one hour, i.e. the 58 slides reproduced in document (11) were shown in less than one hour (cf. page 3, point 9 of document (13); see also page 12, last paragraph of Dr. Meng (Amy) Li's testimony).

The "manner or speed of presentation may affect the comprehensibility of a lecture" (cf. T 1212/97, point 4 of the Reasons), and the amount of material/information covered by the lecture may be another factor to affect said comprehensibility. Therefore, "it is the wrong approach to try and answer successive factual questions such as whether a slide was shown at or not, and then what the audience would understand from it. The board is concerned with the information content made available to the public" (cf. T 1212/97, point 7 of the Reasons).

19.3 The current board agrees therewith. As stated by appellant I, the relevant question is not what was presented or shown to the audience but what was actually conveyed to the public, i.e. what the audience took away from Dr Murphy's presentation. In line with the examples in the case law, providing (at least) a contemporary written note from a member of the audience present at this presentation might be an important and decisive element in the evaluation of evidence (cf. T 1212/97, point 7 of the Reasons; T 2003/08, point 42 of the Reasons).

20. None of the declarations on file (documents (23) to (28), (30), and Dr Meng (Amy) Li's witness testimony) is indeed a contemporary written note taken at Dr Murphy's presentation. Although shortly after Dr Murphy's presentation some members of the audience were asked to bring such contemporary notes to a meeting organised by Professor Bradley on 5 November 2009 (cf. page 5, points 13 and 15, and Exhibits 2 and 3 of document (24)) and some members acknowledge in their declarations to have taken such notes, none of them has actually been ever produced (cf. page 2, point 8 of document (25); page 2, point 8 of document (26); page 1, point 4 of document (27); page 1, point 4 of document (28); page 13 of Dr Meng (Amy) Li's witness testimony).

21. Nonetheless, the opposition division took "into account the amount and quality of all evidence produced, particularly the reliability of the witness recollections and the high relevance of D11" and, on the basis of all this evidence, concluded that the information content referred to as D11' in the decision under appeal was made available by Dr Murphy's presentation (cf. pages 13 and 14, points 3.25 and 3.26 of the decision under appeal).

The board however cannot agree therewith.

21.1 Neither the amount nor the quality of all this evidence or, for that case, the reliability of the witness recollection taken at the oral proceedings at first instance, needs to be assessed by the board. As stated above, whilst all this evidence might be used to support, complement, interpret or explain the content of a contemporary written note, none of them might be as reliable as such a contemporary note.

21.2 According to Professor Bradley's declaration, he spoke to Dr Murphy on the evening of the presentation's day, i.e. 3 November 2009, and their conversation "was focused on deletions of BACs during integration". This was so because, as acknowledged by Professor Bradley, "my laboratory had noted this issue and described it in one of our prior publications" (cf. page 5, point 12 of document (24)). On the next day, and after this conversation, Professor Bradley called a laboratory meeting and an invitation was sent by his secretary on 4 November 2009 to, inter alia, some members of the audience of Dr Murphy's presentation, who are signatories of the declarations/statements of documents (23) and (26) to (28) on file (cf. page 5, point 13, and Exhibit 2 of document (24)).

21.3 On the morning of the scheduled laboratory meeting, Dr Friedrich, the signatory of the statement of document (23), sent an electronic message (e-mail) to the participants of this meeting, requesting them to put their impressions on Dr Murphy's presentation down in writing and to reply to the e-mail "with the contents of your notes from the talk or what you remember he said". In the same e-mail, he acknowledged to have briefly discussed with Professor Bradley "what was learned from the Regeneron fellow [i.e. Dr Murphy] at the recent advanced course" (cf. page 5, point 15, and Exhibit 3 of document (24)).

21.4 Following the laboratory meeting, Professor Bradley compiled on 6 November 2009 a summary of "what we had learnt from Dr Murphy's presentation" that was circulated to the participants of this meeting on 9 November 2009 (cf. page 5, point 16, and Exhibits 4 and 5 of document (24)). None of these documents is thus contemporary to Dr Murphy's presentation and all of them were produced after conversations, discussions and a meeting that took place well after Dr Murphy's presentation among members of the audience who, to use Professor Bradley's own words, "had a particular interest in attending the 2009 presentation by Dr Murphy from Regeneron, because ... had great relevance to our own work" (cf. page 3, point 8 of document (24)).

21.5 Indeed, Dr Meng (Amy) Li, the signatory of the statements of documents (25) and (30), confirms the interest and relevance of Dr Murphy's presentation in her witness testimony (cf. inter alia, pages 8 and 9 of said witness testimony). There is no doubt that the skills of these members of the audience, namely PhD students, post-doctoral researchers and professors leading research groups, are those acknowledged in the case law to define a person skilled in the art in the field of biotechnology, if not even higher (cf. "Case Law", supra, I.D.8.1.3). Nor can there be any doubt that, in view of the interest/relevance of Dr Murphy's presentation, conversations, discussions and comments on this presentation took place among such a group of skilled persons immediately after this presentation (as acknowledged by Dr Meng (Amy) Li in her witness testimony; cf. page 19, third witness' reply of said testimony). Such discussions also took place shortly after the presentation between Professor Bradley and Dr Murphy himself (cf. point 21.2, supra), and before the laboratory meeting arranged by Professor Bradley (as acknowledged by Dr Friedrich; cf. point 21.3, supra).

21.6 In fact, a laboratory meeting for such a group of skilled persons to be effective and rewarding usually requires, and it is to be expected, from the participants of such a meeting to attend it with a certain degree of preparation and readiness to provide a positive contribution (cf. page 19, last sentence of second witness' reply of Dr Meng (Amy) Li's testimony). This might have been the purpose of Dr Friedrich's e-mail sent on the day of the laboratory meeting at issue (cf. point 21.3, supra). It is worth noting here that, whilst Dr E-Chiang Lee, a participant of said laboratory meeting, acknowledges to have presented "some slides on our research progress" at this meeting and that Dr Amy (Meng) Li was a participant of this meeting (cf. page 2, point 7 of document (28)), Dr Amy (Meng) Li did not recollect her attendance to this meeting during her witness testimony at first instance (cf. paragraph bridging page 24, last paragraph to page 25, second witness' reply to said witness testimony).

22. The fact that all these discussions, conversations and comments took place after Dr Murphy's presentation and before the compilation of a summary of this presentation by Professor Bradley (cf. Exhibits 4 and 5 of document (24)) as well as before the statements/declarations of the members of the audience of Dr Murphy's presentation on file (documents (23) to (28), and (30)), is to be taken into account. This has not been done by the opposition division. After all, the board can thus not agree with the opposition division's conclusion that the relevant "information content" was indeed made available and conveyed to the audience in Dr Murphy's presentation.

23. Since, as a consequence, document (11) does not form part of the state of the art, no information can be derived therefrom nor, for that case, from Dr Murphy's presentation, let alone an "information content" that is "proven beyond reasonable doubt" (see pages 13 and 14, points 3.24 to 3.26 of the decision under appeal). Thus, the so-called document (11)' does not form part of the state of the art.

24. In the light of the above considerations, neither document (11) nor document (11)' form part of the state of the art within the meaning of Article 54(2) EPC.