T 1076/21 - (II) Contesting facts in appeal

Key points

• The Board in the headnote: "The burden of proof regarding the facts, arguments and evidence on the substance (which initially lies with the opponent) does not shift to the proprietor just because the patent has been revoked due to an alleged insufficient disclosure."
• My analysis is as follows. 
• A decision of an opposition division consists of conclusions in law, findings of fact, and inferences about what the skilled person would do. 
• Both the appellant and the respondent may wish to contest one or more of the conclusions and findings in the appeal. For this purpose, the term 'complainant' could actually be useful to identify the party that tries to contest conclusions in law or findings of fact in appeal.
• The appellate review of conclusions in law is de novo (this is beyond doubt, I believe). Moreover, there is no burden of proof as to legal conclusions. 
• As to findings of fact, the complainant may wish to alter the factual basis of the decision by i) challenging the evaluation of the evidence, ii) presenting new evidence, and iii) introducing new facts. The latter two courses involve case amendments under Art. 12(4) RPBA, but admissibility is not the focus of the present post. 
• As to any new facts introduced by a party in appeal, this party has the burden of proof, following the general rule.
• As to challenging the OD's evaluation of the evidence, T 1138/20 provides a comprehensive framework. The gist is that the Boards, in principle, apply a deferential standard of review to factual findings of the OD that are based on evidence. This means that the complainant has the initial burden to contest those findings in a substantiated way, e.g. by attacking the reasoning of the OD about the evaluation of the evidence or by filing appropriate counter-evidence (without prejudice to the limitations of Art. 12(4) and (6)). 
• If the Board examines the evidence de novo (explicitly considered as a discretionary power of the Boards in T 1138/20, especially for documentary evidence), logically, the same rules of evidence as for the first instance proceedings apply (regarding the burden of proof).
• I expect that the Boards will not apply a deferential standard to inferences about what the skilled person does and knows as common general knowledge, except perhaps in the case that the OD based their inferences specifically on evidence submitted by the parties.
• Often, in appeal, the opponent repeats objections that the OD did not arrive at, and the proprietor may maintain auxiliary requests from the first instance proceedings and related factual assertions, e.g. about the technical effect. The examination of these issues, when done by the Board, is strictly speaking no review of the (reasoning) of the first instance decision, and the same rules of evidence apply as in the first instance proceedings. This applies broadly to any submission that benefits from the unless clause of Article 12(4) RPBA.
• In the decision at issue, the factual debate was about the sufficiency of disclosure.  
• "The decision under appeal revoked the patent because in the opposition division's view, the patent did not sufficiently disclose the claimed subject-matter. The examples were contradictory, and there was no guidance in the patent as to which parameter to adjust in order to obtain the desired coating weight for layers A and B and the tension ratio."
• I understand that the Board applied a de novo review in the sense of T 1138/20.  The opponent filed an expert declaration on the point, but it was late, and that evidence was not admitted.
• It might be observed that the Board will not necessarily give an express opportunity to file evidence to the parties once it decides to apply a de novo review of factual findings. However, where the OD's decision is not based on extensive consideration of evidence, parties should be prepared for a de novo review in appeal of factual findings under the current state of case law. 
• I will post a second post about the decision soon with quotes from the decision. 

EPO 

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

T 0345/21 - Advanced aspects of reformatio in peius

Key points

• The title is not a tautology. 
• "The patent proprietor lodged an appeal against the interlocutory decision of the opposition division finding that European patent No. 2 737 379 as amended according to auxiliary request 1A met the requirements of the [EPC]"
• "During the oral proceedings held before the opposition division, the sole opponent withdrew its opposition against the patent. The opposition division then continued the proceedings of its own motion in accordance with Rule 84(2) EPC."
• In the contested decision, the opposition division came to the conclusion that the ground for opposition under Article 100(c) EPC prejudiced the maintenance of the patent as granted, that the subject-matter of claim 1 according to auxiliary request 1 filed with letter dated 13 November 2020 was not novel over document SP06"
• This is a rare case where interlocutory revision was possible in an opposition appeal.
• "The [operative] second auxiliary request includes a total of four independent claims: claims 1, 2, 3 and 12. Independent claims 2 and 3 are identical to claims 1 and 2 of auxiliary request 1A on the basis of which the opposition division intended to maintain the patent. "'
• "Since the patent proprietor is the sole appellant in the present case, the maintenance of the patent on the basis of claims that are identical in wording to those of auxiliary request 1A, which the opposition division had found to comply with the EPC, may in principle not be challenged. Otherwise the sole appellant would be put in a worse situation than if it had not filed an appeal. This follows from the prohibition of reformatio in peius, as established in the decision of the Enlarged Board of Appeal G 9/92 "
• "Hence, the board can in principle not examine or object to independent claims 2 and 3 of the second auxiliary request without contravening the principle of prohibition of reformatio in peius. The same applies to dependent claims 4 to 6, 8 and 9 of the second auxiliary request, at least insofar as they depend on independent claims 2 or 3."
• The Board examines the novelty of claim 1.
• "the opposition division concluded that it lacked novelty over document SP06 (Reasons 4 for the decision under appeal). In particular, it was held that the embodiment of the low pressure gradient system ("Niederdruck-Gradientensystem") as shown in Figure 4.2 on page 65 of document SP06"
• "The opposition division's view on feature F1.2 seems to be based on the false premise that for concluding lack of novelty it is sufficient that all claim features are disclosed in the same prior art document. It is well-established in the case law of the Boards of Appeal that, unless there is a clear teaching combining different passages in a document, these passages may not be combined for the examination of novelty"
• "In view of the above, the subject-matter of claim 1 of the second auxiliary request is new over document SP06 (Article 54(1) and (2) EPC)."
• "The board exercised its discretion under Article 111(1) EPC to remit the case to the opposition division for further prosecution."
• "The board finds it fitting to add here that the prohibition of reformatio in peius prevails in principle until the final settlement of the opposition case and, therefore, also in opposition proceedings subsequent to a remittal under Article 111 EPC (T 1843/09, Reasons 2.3.3). The claims setting the framework for reformatio in peius are those according to auxiliary request 1A as held allowable by the opposition division in the decision underlying this appeal".

EPO 

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

T 1684/21 - To encourage the others

Key points

• The Board finds that claim 1 as granted does not meet Article 83 EPC.
• "In the Board's view the skilled person would not be able to implement feature (i) ("an air flow whose temperature has been regulated by an evaporator (4) and a heater (5)"), for the following reasons."
• The feature "requires that the evaporator and the heater regulate the temperature of the air flow. This means that both the heater and the evaporator are operated and controlled in such a way that a desired temperature variation occurs"
• The patent teaches in para. [0031] to use an air-mix damper to regulate the temperature. This unit is, however, not specified in the claim.
• "the skilled person would face the task of putting into effect an HVAC (according to claim 1) including feature (i) implying that the air flow temperature is regulated by the evaporator and the heater, not necessarily including an air-mix damper."
• "The skilled person, however, would not find in EP-B any indication, guidance or instruction as to how feature (i) is to be implemented when the air flow temperature is regulated only by operating and controlling an evaporator and a heater. The specific embodiment disclosed in EP-B and discussed above does not give the skilled person any suggestions or hints leading to a solution of this technical problem, the air-flow temperature regulation by means of an air-mix damper being based on entirely different principles as already noted hereinbefore."
• I can't judge the technical merits of the Board's reasoning. That's not the point of this post.
•  Claim 1 of auxiliary requests 4, 5, 6 and 7 differs from claim 1 of the main request, [by specifying]  "simultaneously so as to guide the temperature-regulated air to the side demister channels (31), and an air mix damper (6) arranged between the evaporator (4) and the heater (5)"."
• " The Board did not admit auxiliary requests 4 to 7 into the appeal proceedings, since these requests were filed at a late stage in the proceedings, i.e. after the communication of the Board pursuant to Article 15(1) RPBA 2020 (Rules of Procedure of the Boards of Appeal), and such late filed requests can only be admitted under exceptional circumstances (Article 13(2) RPBA 2020)."
• " the Respondent [proprietor] could and should have submitted auxiliary requests 4 to 7 at the latest with its reply to the statement of grounds of appeal. No exceptional circumstances can be identified and invoked in the present case".
• The patent is revoked.
  
  
• This seems a strict but not unusual application of Article 13(2) RPBA. Probably, admitting the request would have necessitated a whole round of debate on novelty and inventive step late in appeal. 
  
  
  
• Incidentally, claim 1 reads - note the very long preamble: "A vehicle heating ventilation and air conditioning unit (1) that is configured so as to selectively blow out an air flow whose temperature has been regulated by an evaporator (4) and a heater (5) mounted in an air channel from a DEF blowing channel (17), a face blowing channel (16), and a foot blowing channel (18), which are provided downstream of the evaporator (4) and the heater (5), into a cabin by opening and closing a DEF damper (8), a face damper (7), and a foot damper (9), the vehicle heating ventilation and air conditioning unit comprising: side demister channels (31) ... and plate-like baffle ribs ". 
• The functional feature was hence located in the claim preamble and not a functionality of the claimed air conditioning unit itself but of the "surrounding" heater and evaporator (as I understand it). 
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EPO 

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

T 1329/21 - Errors and admissibility

Key points

• The Board, on the admissibility of documents filed by the proprietor/appellant (namely, experimental reports): (untranslated) "Die diesbezüglichen Argumente der Beschwerdegegnerin betreffen eher die Frage, ob der Vortrag der Beschwerdeführerin überzeugend ist oder nicht, als die Frage der Zulassung. Die tatsächliche Offensichtlichkeit des angeblichen Fehlers und dessen Berichtigung sowie die wiederholten Fehler in den Angaben der Beschwerdeführerin im erstinstanzlichen Verfahren sind für die Frage der Zulassung der Eingabe der Beschwerdeführerin gemäß Artikel 13 (1) und 13 (2) VOBK 2020 nicht relevant."
• "Die Kammer ist daher der Auffassung, dass der Fachmann tatsächlich die Wasserangabe in D25 als einen offensichtlichen Fehler, dessen Berichtigung ebenfalls offensichtlich sei, betrachten würde."
• So, obvious errors in the experimental report D25 were no factor in the admissibility of the experimental report under Art. 13(1) RPBA.
• The patent is about a cosmetic formulation with cellulose particles having a certain size, wherein the particles are derived from vegetable cellulose.
• On the credibility of the technical effect: (in translation) "The respondent [opponent] also argued during the oral hearing that the granted claim 1 was broadly worded. In particular, particles of different sizes and cellulose from a very wide variety of sources are claimed. Any woody plant would actually be suitable as a source according to claim 1. In contrast to this variety of claimed particles, only one type of particle was tested in D25, namely "Ultrafine Cellulose Arbocel M8". A single example is therefore not sufficient to make the alleged effect credible for the entire breadth of claim 1".
• "[The proprietor] replied that bacterial, fermentatively produced celluloses such as those from Example 2 of D11 would have a fibrillar ... structure. The fibrils would then form MCC-like networks. In contrast, native celluloses obtained from plant fibers would have a cross-linked structure. Thus, the claimed celluloses would have a uniform structure that would distinguish them from bacterial celluloses and MCC."
• The Board considers the technical effect credible over the whole scope of the claim.
• The Board also considers the subject matter inventive. "The objective technical task based on D11 is accordingly to provide another cosmetic formulation containing glycerin and cellulose with improved sensory properties when distributed on the skin"
• "None of the documents D1, D3, D7, D14 or D19 cited by the respondent indicate replacing the cellulose component from D11 with native cellulose obtained from plant fibers in order to improve the sensory properties when distributed on the skin. The respondent did not raise any argument regarding evidence of such an improvement in the prior art. "
  
  
  
• The Board formulates the objective technical problem as: "Die objektive technische Aufgabe ausgehend von D11 besteht dementsprechend in der Bereitstellung einer weiteren Glycerin- und Cellulose-haltigen kosmetischen Formulierung mit verbesserter Sensorik beim Verteilen auf der Haut."
• I find this a bit curious because the provision of alternatives is usually used as the objective technical problem if there is no improvement. However, I've not studied the decision in great detail on this point. 
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• EPO 

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

T 0248/22 - Pre-emptive auxiliary requests and Art. 12(4) RPBA

Key points

• This decision seems important. The proprietor submitted a new auxiliary request with the Statement of grounds. Admissibility under Art. 12(4) RPBA is to be considered.
• "When exercising its discretion whether to admit an amendment to a party's case, the board has to consider whether the amendment is suitable for addressing the objections raised (Article 12(4) RPBA). In the current case, the proprietor argued that the amendments remedied an objection which is not part of the decision under appeal [...]. Any reasons why an amendment overcomes an unraised objection do not constitute valid reasons for admitting an amended request in view of Article 12(4) RPBA, second paragraph."
• Hence, in the Statement of grounds, the proprietor does not need to file auxiliary requests to address objections that could be raised by the opponent as respondent but are not part of the impugned decision.
• The decision is, however, difficult to follow on the specific facts as the Board also states that the auxiliary request addressed an objection under Art. 123(2) that "was presented for the first time during the oral proceedings before the opposition division". The objection was, therefore, not an "unraised objection". However, it seems that according to the Board, what matters is whether the objection is in the appealed decision.
• If the opponent as respondent introduces (or reintroduces) the objection in the reply to the appeal, the proprietor should file a rejoinder to address it with an appropriate auxiliary request. 

EPO 

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

T 1484/18 - Reformatio in peius

Key points

• This decision is older but still interesting.
• The opponent appeals the decision to maintain the patent in amended form of the OD.
• The Board finds the claims to be insufficiently disclosed.
• "Claim 1 of the main request incorporates the features of granted claim 7 that requires that "the dose dial button (10) is releasable coupled to scale drum (20)" (feature 1.13). Granted claim 7 was objected under Article 83 EPC during opposition proceedings and dealt with in the contested decision under point 15.4. [The opposition division found that]  the concept of a releasable coupling was well known in the art and that the exemplary disclosure of a one-way ratchet (paragraph [0016]) was sufficient to enable a skilled person to put the invention into practice.  The board does not agree for the following reasons."
• "The only hint in the patent about how to realize feature 1.13 is by means of any kind of one-way ratchet mechanism (paragraph [0016]). However this general disclosure of a releasable coupling does not specify how the desired functionality might be obtained, in particular as neither the dial button nor the scale drum moves axially"
• Hence, the feature added to claim 1 during the proceedings before the OD makes claim 1 insufficiently disclosed.
• Turning to auxiliary request 1: " The appellant (opponent) submitted that the deletion of feature 1.13 in claim 1 of the auxiliary request I was not allowable in view of the prohibition of the reformatio in peius."
• "In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, G 1/99 (see headnote) allows an exception to this principle in order to meet an objection put forward by the opponent/appellant during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the opposition division in its interlocutory decision.
• "In the present case, it is undisputedly not possible to restrict feature 1.13 by introducing one or more originally disclosed limiting features in order to overcome the lack of sufficient disclosure. The board thus takes the view that the deletion of feature 1.13 is the only possibility for the respondent (proprietor) to overcome the deficiency due to the amendment introduced into the version of the patent as maintained by the opposition division but which does not comply with the requirements of the EPC (see G 1/99, point 15)."
• "Hence the Board considers the amendment made in accordance with auxiliary request I is appropriate and necessary even if, as a result, the situation of the appellant (opponent) is worsened."
• The case is remitted:  "Feature 1.13 is no longer present in claim 1 of auxiliary request I and the latter is further amended by introducing other features." "This leads to a substantially different situation as compared to the one underlying the decision under appeal."
• This case illustrates that the 'reformatio in peius' issue is not limited to particular grounds why the claim is not allowable (the kind of 'objection put forward by the opponent/appellant during the appeal proceedings'): the issue can be added subject-matter, clarity, sufficiency, probably also loss of priority by the amendment, and possibly even novelty or inventive step as such.
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EPO 

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

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.