T 2395/19 - Review of facts, public prior use

Key points

• An example of the new style review of findings of facts, by Board 3.2.01.
• "The Board confirms the conclusion of the opposition division that the appellant (opponent) has convincingly and sufficiently proven that a public prior use of a coated cutting tool type "Tiger-Tec WAK1O" manufactured by Walter AG took place before the priority date of the contested patent (December 2004). 
• "To the extent that there is no error in the application of law, in principle a Board has no reason to set aside the evaluation of evidence of a deciding body of the first instance and supersede it by its own unless the deciding body of first instance recognizably failed to consider essential aspects, included irrelevant considerations, or violated the rules of logic, such as when logical errors and contradictions are detected by the Board in the reasoning of the decision (see also T1418/17, point 1.3 of the Reasons, T 42/19, point 3.4 of the Reasons)."
• " The burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous (T 1138/20, point 1.2.5 of the Reasons)."
• On the standard of proof: "The Board also considers that it has been proved beyond any reasonable doubt (see affidavits D26, D26a and D49) that coated cutting tools of type "Tiger tec" with grades WAKl0 manufactured by Walter AG were available on the market as a "mass product" to everyone - hence also to the appellant (patent proprietor) - at least from July 2004, i.e. before the priority date of the contested patent (December 2004)."
• The fact that the specific test specimen was tested in house, does not raise the standard of proof to "up to the hilt".
• "It appears to be normal that a party submits their own experimental data be it produced within their company or an affiliate company. This may lead to a need of the other party to run comparative tests and submit the results if they shed doubt on the other party's data. But it does not lead to a shift of the standard of proof since both parties are free to run their own tests on standard products available on the market. Should the other party contest the comparative results based on the fact that material properties may change within a series of products they would be under an obligation to provide a specimen out of the toolbox acquired by them for further inspection by the other party or by an expert appointed by the opposition division. "
• This is the EPO-appointed expert of Art. 117(1)(e) EPC. Does anyone know of a case (appeal or application number) where one was appointed? (asking for study and teaching purposes)
• "The credibility of the declaration signed by the employees of TaeguTec was questioned by the appellant (patent proprietor) ..."
• As a comment, if signed declarations are timely (contested before the OD (in a substantiated way), the declarant should normally be offered as a witness by the party filing the declarations. The decision indicates that the opponent did offer witnesses. 
• "As a consequence of these findings, the taking of evidence in the form of a hearing of the witnesses Mr. Na and Mr. Lee offered by the appellant (opponent) was not required." (by the OD)
• E-IV, 1.2: "If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the opposition division and the parties to put questions to the witness and thus enables the opposition division to establish the facts on the basis of that person's testimony." (see also T0474/04)
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• "The complaint of the appellant (patent proprietor) that they were not able to carry out counter-tests of the same specimens tested by Mr. Lee and Mr. Na is not justified either because, as confirmed by the appellant (opponent), no request in this sense was submitted by the appellant (patent proprietor) to the appellant (opponent) and the contrary has not been proven by the appellant (patent proprietor). The Board also observes that the appellant (patent proprietor) did not make any attempt to purchase and counter-test specimens of "Tiger-tec WAK1O" coated cutting tools which were available on the market at least as from the year 2024 in order to confute the results presented in the affidavits under discussion."
• The Board considers and rejects numerous other objections to the evidence by the proprietor.
• "The subject-matter of claim 1 according to the main and to the auxiliary request 1 thus lacks novelty over the public prior use, whereby irrespective of the further issues raised by the appellant (opponent) these requests are not allowable as correctly stated by the opposition division."
• The patent is maintained in amended form: "The Board agrees with the appellant (opponent) that the solution recited in claim 1 defines an alternative to the known "Tiger-tec WAK1O" coated cutting tool because the advantageous technical effect claimed by the appellant (patent proprietor) is neither mentioned in the contested patent nor was this technical effect demonstrated by the appellant (patent proprietor). However, the Board considers that the elevate number of parameters at stake and the complexity of their interactions which, as it is well known, characterizes this kind of composite products, suggests to the person skilled in the art to apply extreme caution when considering to replace a component of a very well working composite material as the coatings of the "Tiger-tec WAK1O" cutting tool with a different one. Therefore, the Board agrees with the appellant (patent proprietor) that the person skilled in the art has no motivation to replace the material of the third coating of the public prior use cutting tool with the materials suggested in claim 1, whereby the subject-matter of claim 1 results in an non-obvious alternative to the solution known from the prior art."

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t192395eu1

APPEAL OF THE PATENT PROPRIETOR

Assessment of the Public Prior Use "Tiger-Tec WAK10"

1. The Board confirms the conclusion of the opposition division that the appellant (opponent) has convincingly and sufficiently proven that a public prior use of a coated cutting tool type "Tiger-Tec WAK1O" manufactured by Walter AG took place before the priority date of the contested patent (December 2004). This coated cutting tool thus represents a state of the art according to Article 54(2) EPC as correctly stated in the decision under appeal.

1.1 With their appeal the appellant (patent proprietor) contested both the evaluation of the relevant facts and evidence submitted by the appellant (opponent) in support of the alleged public prior use and its technical content as assessed by the opposition division in the contested decision.

1.2 Regarding the evaluation of the relevant facts and evidence by the opposition division, the Board reminds that the principle of free evaluation of evidence is recognized to apply before the EPO. This principle also impacts the review of the evaluation of evidence of the first instance department in appeal proceedings. To the extent that there is no error in the application of law, in principle a Board has no reason to set aside the evaluation of evidence of a deciding body of the first instance and supersede it by its own unless the deciding body of first instance recognizably failed to consider essential aspects, included irrelevant considerations, or violated the rules of logic, such as when logical errors and contradictions are detected by the Board in the reasoning of the decision (see also T1418/17, point 1.3 of the Reasons, T 42/19, point 3.4 of the Reasons).

1.3 After assessment of the reasoning of the opposition division and of the submissions of the parties in the appeal proceedings, no one of the above mentioned circumstances which may lead to supersede the assessment of the public prior use provided by the opposition division arises in the present case for the reasons that will be presented below.

1.4 The burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous (T 1138/20, point 1.2.5 of the Reasons).

When contesting the assessment of the alleged public prior use of the opposition division the following points were raised by the appellant (patent proprietor):

Standard of proof

1.5 The appellant (patent proprietor) alleged that the opposition division, when evaluating the relevant facts provided by the appellant (opponent) in support of the alleged public prior use, mistakenly adopted the lower standard of proof of the "balance of probabilities" instead of the higher, and in the present case supposedly correct standard of proof of "up to the hilt". It was pointed out that all the declarants of the relevant affidavits submitted by the appellant (opponent) to substantiate the alleged public prior use were employees of TaeguTec Ltd. which was a subsidiary company of the appellant (opponent) and hence under their full control. The appellant (patent proprietor) put forward that since the 2 specimen of the "Tiger-Tec WAK1O" coated cutting tool allegedly tested at the TaeguTec R&D center were in full possession of ISCAR Ltd via the controlled TaeguTec Ltd., the appellant (opponent) was "de facto" the only party at the opposition proceedings that had full access to the relevant information regarding the alleged public prior use. The appellant (patent proprietor) further pointed out that the fact that the appellant (opponent) was not able to show a copy of a written request to TaeguTec Ltd. to purchase and test the "Tiger-Tec WAK1O" coated cutting tools or, at least, an invoice for the provision of the test reports demonstrated that TaeguTec Ltd. was indeed a subsidiary company under full control of the appellant (opponent). The appellant (patent proprietor) wondered why the tests had not been commissioned to an independent research institute, and alleged that since the appellant (opponent) had full control on TaeguTec Ltd., it could not be excluded that the controlled company delivered precisely the results which were required to successfully support the appellant's (opponent's) position in the opposition proceedings. The appellant (patent proprietor) concluded that in view of all the circumstances above and according to established case law of the boards of appeal, the higher "up to the hilt" standard of proof should have been adopted by the opposition division instead of the lower standard of proof of the "balance of probabilities" in order to correctly assess all the relevant facts submitted by the appellant (opponent) in support of the alleged public prior use, this amounting to an error in the application of law justifying the request to set aside the result of the evaluation of evidence of the opposition division.

1.6 The Board does not agree with the arguments and conclusions of the appellant (patent proprietor) regarding the adopted standard of proof for the following reasons:

1.7 Firstly, the Board observes that from the reasoning of the opposition division it is not even evident which standard of proof was actually adopted to come to the conclusion that the alleged public prior use had been sufficiently proved. In any event, i.e even under the assumption of the appellant (patent proprietor) that the conclusion of the opposition division was mistakenly based on the lower and supposedly incorrect standard of poof of the "balance of probabilities", the Board concurs with the appellant (opponent) that this less demanding standard of proof is the correct one in the present case, and that it was correctly applied by the department of the first instance.

1.8 As demonstrated by the appellant (opponent) who referred in this respect to the Wikipedia link https://en.wikipedia.org/wiki/TaeguTec and to a brochure accessible via the Taegutec's website at https://www.taegutec.com/pages/wp-content/uploads/2019/01/image_En.pdf, TaeguTec Ltd. is not a subsidiary of the appellant (opponent) as asserted by the appellant (patent proprietor), but rather a sister company belonging to the same parent company, namely the IMC Group to which both TaeguTec Ltd. and the appellant (opponent) ISCAR Ltd. are affiliate. This finding is also confirmed by the information presented in IMC Group web-side www.imc-companies.com consulted by the Board. Furthermore, as correctly pointed out by the opposition division and the appellant (opponent), the "Tiger-Tec WAK1O" coated cutting tool which is the object of the disputed public prior use is manufactured and marketed by a third company, i.e the WALTER AG which is a direct competitor of the appellant (opponent) in the field of competition of the coated cutting tool inserts. Therefore, as correctly stated by the opposition division, it cannot be concluded that in the present case only the appellant (opponent) had access to all the relevant information concerning the contested public prior use and hence that according to established case law of the boards of appeal, the stricter standard of proof of "up to hilt" should have been applied by the opposition division as asserted by the appellant (patent proprietor). The Board also considers that it has been proved beyond any reasonable doubt (see affidavits D26, D26a and D49) that coated cutting tools of type "Tiger tec" with grades WAKl0 manufactured by Walter AG were available on the market as a "mass product" to everyone - hence also to the appellant (patent proprietor) - at least from July 2004, i.e. before the priority date of the contested patent (December 2004). In view of this circumstance, the Board concurs with the appellant (opponent) that the case law of the boards of appeal does not support the assertion of the appellant (patent proprietor) that the higher standard of proof of "up to the hilt" must be applied when a specific specimen of a product is analyzed by a party other than the patent proprietor, in the present case by TaeguTec Ltd. It appears to be normal that a party submits their own experimental data be it produced within their company or an affiliate company. This may lead to a need of the other party to run comparative tests and submit the results if they shed doubt on the other party's data. But it does not lead to a shift of the standard of proof since both parties are free to run their own tests on standard products available on the market. Should the other party contest the comparative results based on the fact that material properties may change within a series of products they would be under an obligation to provide a specimen out of the toolbox acquired by them for further inspection by the other party or by an expert appointed by the opposition division. Thus, as stated under point 4.1 of the Reasons of the decision T 55/01 referred to by the appellant (opponent), the higher standard of proof of "up to the hilt" does not apply to mass products available to everyone on the market as it is indeed the case with respect to the "Tiger-Tec WAK1O" coated cutting tools.

1.9 In view of all the above, the Board concludes that even assuming that the opposition division applied the lower standard of proof of the "balance of possibilities" to come to its conclusion that the disputed public prior use had been sufficiently proven, this was the correct standard of proof to be adopted in the present case whereby, contrary to the allegations of the appellant (patent proprietor), no error in the application of law occurred.

Credibility of the circumstances of the public prior as reported in the declarations of Mr. Na (D26 and D26A), Mr. Lee (D49 and D54) and Mr. Kim (D71).

1.10 The credibility of the declaration signed by the employees of TaeguTec was questioned by the appellant (patent proprietor) who submitted the following arguments:

1.11 The appellant (patent proprietor) recalled that according to the appellant (opponent) one of the tasks of TaeguTec Ltd. within the IMC Group was to monitor the market in order to identify, purchase, test and store competitor products after they became available to the public. The appellant (patent proprietor) argued that in view of this activity profile it was not credible that the appellant (opponent) was not able to provide any documentary evidence supporting the recollection of the events made by Mr. Na and Mr Lee in their declarations D26, D26a, D49 and D54, as for example an invoice proving the alleged purchase and delivery to the TaeguTec R&D center on the 7th of July 2004 of a box containing ten samples of "Tiger-tec WAK1O" coated cutting tools and/or a report indicating the conditions and the parameters adopted in the residual stress tests allegedly carried out by Mr. Na and Mr. Lee.

1.12 Regarding the absence of any documentary evidence confirming the correctness of the statements of Mr. Na and Mr. Lee which was objected by the appellant (patent proprietor), the Board is satisfied with the plausible explanation provided by the appellant (opponent) that at the time of the tests it was neither required nor customary practice at TaeguTec R&D center to produce and keep for long time written records regarding their monitoring and analysis activity of competitor products released on the market.

1.13 Regarding the alleged delivery date of the box with the "Tiger-tec WAK1O" coated cutting tools to the Taegu-Tec R&D center indicated in the affidavits D26 and D26a , the appellant (patent proprietor) argued that the undecipherable handwritten text denoted on the box and barely visible in the photos labelled 50-2 and 50-5 of evidence D50 annexed to the affidavit D26 could not unambiguously confirm the delivery date of 7 July 2004 indicated by the declarants. The appellant (patent proprietor) also criticized that no information was available regarding who received and opened the box, how the cutting tools were sorted, manipulated and stored at TaeguTec, and whether the storing conditions where such as to preserve the mechanical characteristic of the tools over the time. It was alleged that storing coated cutting tools under uncorrect or uncontrolled environmental conditions in particular with regard to the temperature could have altered the original mechanical characteristics of the coatings and hence the original residual stress distributions, thereby rendering the measurements carried out by Mr. Na and Mr. Lee unreliable. Finally it was alleged that it could not be excluded that as a consequence of erroneous sorting and manipulating procedures occurred at the Taegu-tec R&D center the tests and analysis reported in the affidavits had been mistakenly carried out on different coated cutting tools, i.e on coated cutting inserts not taken from the box containing the "Tiger-tec WAK1O" cutting inserts. The appellant (patent proprietor) argued that the above observations were further supported by the absence of any documentation regarding the sorting, testing and storing procedures followed at the Taegu-Tec R&D center.

1.14 Also these arguments are not convincing: