Friday, May 11, 2018 T 1746/15 Proceedings to find evidence of infringement ≠ “infringement proceedings”

In opposition proceedings against the European patent in this case, the Division admitted an intervention on the basis that the patent proprietor had, in Germany, instituted independent evidentiary proceedings (BSV proceedings) against the intervener, whereby a court-appointed inspector is empowered to take evidence of possible infringement. The patent was revoked in opposition for lack of novelty. This decision was appealed by the proprietor, who also  requested that the intervention be found inadmissible.

The patent proprietor argued that BSV proceedings are comparable to "saisie" proceedings in France, which, according to Case Law, do not qualify as "proceedings for infringement" in the meaning of Art. 105(1)(a). The intervener argued that BSV proceedings are not comparable to "saisie" proceedings, but are more akin to Belgian seizure proceedings, which had been held to qualify as proceedings for infringement.

The Board concluded that BSV proceedings are different from both "saisie" proceedings and the Belgian seizure proceedings, but do not qualify as proceedings for infringement because they do not constitute the establishment of an infringement. The intervention was therefore held to be inadmissible. The Board upheld the decision to revoke the patent for lack of novelty.

Summary of Facts and Submissions

I. The appellant (patent proprietor) lodged an appeal in the prescribed form and within the prescribed period against the decision of the opposition division to revoke European patent No. 2 159 174.

The opposition of opponent/respondent I had been filed against the patent as a whole and was based on the grounds of Article 100(a) EPC (lack of novelty and lack of inventive step), Article 100(b) EPC (insufficiency of disclosure) and Article 100(c) EPC (unallowable amendments).

The intervention of opponent/respondent II pursuant to Article 105(1)(a) EPC had been filed against the patent as a whole and was based on the grounds of Article 100(a) EPC (lack of novelty and lack of inventive step).

The opposition division held that the intervention of opponent/respondent II was admissible and that the subject-matter of claim 1 of the patent as granted lacked novelty over D1(=DE 199 59 843 A). The opposition division found the auxiliary request filed during the oral proceedings to be prima facie not allowable and did not admit it into the proceedings.

II. With letter dated 13 October 2017, the appellant reacted to the Board's preliminary non-binding opinion annexed to the summons for oral proceedings by filing new first to seventh auxiliary requests to replace the former first to seventh auxiliary requests.

III. Oral proceedings took place on 13 November 2017, at the end of which the present decision was announced. For the course of the oral proceedings, the issues discussed with the parties and the parties' initial and final requests, reference is made to the minutes of the proceedings.

IV. The appellant requested

that the decision under appeal be set aside and that the patent be maintained on the basis of the main request (patent as granted) or on the basis of any of the first to seventh auxiliary requests filed with letter dated 13 October 2017.

The appellant requested further

that, should novelty be acknowledged, the case be remitted to the opposition division for having a first instance decision on inventive step.

The appellant requested moreover

that the intervention of respondent II be found inadmissible.

The appellant also requested

that, should the Board find the intervention of respondent II to be admissible, the following question be referred to the Enlarged Board of Appeal pursuant to Article 112(1)(a) EPC:

"whether or not the instigation of independent evidentiary proceedings under German law and practice ("selbstständiges Beweisverfarhen" / "Beweissicherungsverfahren" / "Düsseldorfer Verfahren") like the one pending against opponent/respondent II in the present case qualify as "proceedings for infringement" under Article 105(1)(a) EPC".

V. Respondent II requested

that its intervention be found admissible.

Respondent I requested

that the appeal be dismissed and

that the first to seventh auxiliary requests filed with letter dated 13 October not be admitted into the proceedings.

VII. The appellant argued essentially as follows:

Admissibility of opponent/respondent II's intervention

The independent evidentiary proceedings to which respondent II is currently subject in Germany ("selbstständiges Verfahren", also known as "Beweissicherungsverfahren" or "Düsseldorfer Verfahren"), hereafter referred to as "BSV proceedings", do not qualify as proceedings for infringement pursuant to Article 105(1)(a) EPC.

Proceedings initiated by the patent proprietor are deemed to be "proceedings for infringement" pursuant to Article 105(1)(a) EPC only where a court is called upon to establish by a ruling "whether a third party is commercially active in an area that falls within patentee's right to exclude".

This is not the case in BSV proceedings, since no facts are established by a court in the sense that the opinion provided by the expert inspecting the alleged infringing product or process is not binding for the subsequent distinct infringement proceedings to be initiated by an action.

There is no automatic or procedural link between BSV proceedings and subsequent infringement proceedings. There is no time limit for bringing the case to infringement proceedings, so that opponent/respondent II in the present case may not even be faced with an actual accusation of infringement.

Respondents in BSV proceedings are not faced with injunctions, contrary to the order in the Belgian proceedings discussed in T 188/97 (not published in OJ EPO), in which the assumed infringer is unambiguously prohibited from "releasing or alienating" in any way the infringing articles described by the expert.

In BSV proceedings, the assumed infringer is not left without any means of defence, since, according to § 494a German Code of Civil Procedure (Zivilprozessordnung, hereafter "ZPO"), it can force the patent proprietor to bring the case to infringement proceedings.

According to the Case Law of the Boards of Appeal (see T 1713/11 and T 305/08, neither published in OJ EPO), "saisie-contrefaçon" in France or "descrizione" in Italy, which are proceedings comparable to BSV proceedings, do not qualify as "proceedings for infringement" pursuant to Article 105(1)(a) EPC.

As a consequence, BSV proceedings under German law cannot be considered as proceedings for infringement within the meaning of Article 105(1)(a) EPC. Therefore, the intervention of opponent/respondent II should not be admitted.

IX. Respondent II argued essentially as follows:

Admissibility of opponent/respondent II's intervention

The evidence gathered during BSV proceedings can be used in subsequent proceedings, including infringement proceedings.

Unlike "saisie" proceedings, such as "saisie-contrefaçon" proceedings in France, German law does not provide for a time limit within which the patent proprietor must make use of the gathered evidence. BSV proceedings also differ from "saisie" proceedings in that the court ordering the inspection must be convinced that infringement is probable. Such threshold does not exist in "saisie-contrefaçon" proceedings in France. Therefore, "saisie" and BSV proceedings are not comparable, and the conclusions of decisions T 1713/11 and T 305/08, supra, do not apply.

The order in BSV proceedings is comparable to that of the Belgian proceedings referred to in T 188/97, supra, which had led to the conclusion that the intervention was admissible.

In BSV proceedings, the assumed infringer is left with no means of defence, such that Article 105 EPC is meant for that purpose, i.e. to provide means of defence.

For these reasons, the intervention should be regarded as admissible.

Reasons for the Decision

1. Admissibility of opponent/respondent II's intervention

1.1 The present intervention of respondent II was filed pursuant to Article 105(1)(a) EPC, which states the following (emphasis added by the Board):

"(1) Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that

(a) proceedings for infringement of the same patent have been instituted against him, or..."

Hence, for an intervention to be admissible and treated as an opposition pursuant to Article 105(2) EPC, "proceedings for infringement" must have been initiated against the intervener, i.e. respondent II in the present case.

It must then be assessed whether the independent evidentiary proceedings under § 485 ZPO ("selbständiges Beweisverfahren", also known as "Beweissicherungsverfahren" or "Düsseldorfer Verfahren") which have been initiated against respondent II qualify as proceedings for infringement (see order of the Landgericht Düsseldorf: "Beschluss des Landgerichts Düsseldorf", filed by respondent II with its letter dated 27 April 2015).

1.2 The Board follows T 1713/11, supra (point 2.6 of the reasons), according to which "proceedings for infringement" pursuant to Article 105(1)(a) EPC are "proceedings meant to establish whether a third party is commercially active in an area that falls within the patentee's right to exclude".

However, contrary to the view of respondent II, the BSV proceedings initiated against it by decision of the Landgericht Düsseldorf do not constitute the "establishment" of an infringement within the above meaning.

As a matter of fact, according to German law, the expert opinion produced in BSV proceedings will be just one of the evidentiary means in a possible subsequent and separate infringement proceedings to be initiated by an action. The expert opinion is by no means binding for the court of the subsequent infringement proceedings, and the assumed infringer has the opportunity to contest the expert opinion and to file its own evidence or counter-evidence. Hence, it cannot be regarded as establishing facts.

This is all the more true since BSV proceedings are ex-parte proceedings in which the assumed infringer ("Antragsgegnerin") (see §§ 491 and 493 ZPO) does not participate. This is also reflected in the order of the Landgericht Düsseldorf, which states that the expert opinion is to be conducted without informing the assumed infringer in advance (see page 3, No. 5: "Die Begutachtung soll ... ohne vorherige Ladung und Anhörung der Antragsgegnerin erfolgen").

1.3 Even though BSV proceedings are only ordered by a court if a legal interest ("rechtliches Interesse"; § 485(2) ZPO) exists and the arguments are sufficiently convincing ("Glaubhaftmachung"; § 487 ZPO), such that infringement appears to be highly probable ("hinreichende Wahrscheinlichkeit") pursuant to § 140c German Patent Law (Deutsches Patentgesetz, hereinafter "PatG") implementing EU Directive 2004/48/EC on the enforcement of intellectual property rights, this still does not constitute the establishment of an infringement that would in any way be binding in subsequent infringement proceedings.

Said requirements are only a legal prerequisite to justify a third person (expert) being allowed to access the assumed infringer's premises and/or production facilities to inspect the alleged infringing products or processes and to prohibit the assumed infringer from altering, destroying or removing these products or processes before said inspection has been performed.

1.4 The further submission of respondent II during the oral proceedings to the effect that the information obtained by the expert in the context of BSV proceedings could also be used elsewhere apart from in any infringement proceedings does not ? even if it were possible and true - impart any legal interest for an intervention to the present opposition proceedings. In any case, respondent II has not provided any evidence in support of its allegation.

1.5 Respondent II cannot successfully rely on T 188/97, supra, since the order in the Belgian proceedings underlying that case is not comparable to that of the present BSV proceedings.

In both proceedings, an expert is allowed to access to the assumed infringer's premises to inspect the alleged infringing products or methods.

However, the order served by the Judge of Seizures in T 188/97 differs significantly from the order of the present BSV proceedings since, in the Belgian proceedings, the assumed infringer is prohibited from "releasing or alienating" in any way the infringing articles described by the expert (point 3 of the reasons), i.e. it is prohibited from selling or transferring to third parties, whereas in the present BSV proceedings the assumed infringer is only prohibited from altering, modifying or destroying the articles at issue before the expert has completed his inspection. Therefore, in T 188/97 the order was considered to have "all the features of an injunctive order" (point 4 of the reasons), which according to the case law of the Boards of Appeal is regarded as "infringement proceedings" within the meaning of Article 105(1)(a) EPC.

In the present case, however, the assumed infringer is not faced with any such injunctions as it is not prohibited from performing trade or business or selling the alleged infringing products or processes after the inspection and is not requested to cease the infringement or to pay damages.

At the oral proceedings, respondent II submitted that the wording "releasing and alienating" should be understood, in view of the T 188/97 case seen as a whole, as having exactly the same meaning as the order in the present BSV proceedings. For respondent II, the order was wrongly translated from the original language.

The Board cannot follow this view, since respondent II has not provided any evidence of its allegation of wrong translation or misinterpretation of the Belgian order, such that T 188/97 can only be considered in accordance with its published text, which is clear and unambiguous.

1.6 According to the case law of the Boards of Appeal, "saisie" proceedings, e.g. "saisie-contrefaçon" in France, are not regarded as "infringement proceedings" in terms of Article 105(1)(a) EPC (T 1713/11, point 2.4.1 of the reasons and T 305/08, point 1 of the reasons, supra).

It is true, as pointed out by respondent II, that, unlike BSV proceedings, "saisie-contrefaçon" does not require any threshold in terms of infringement probability. A "saisie" can indeed be ordered simply at the request of the patent proprietor. Such threshold in infringement probability does not, however, qualify as establishing an infringement, as already discussed under points 1.2 and 1.3 above.

After "saisie" proceedings, the assumed infringer has the right to claim the initiation of (separate) infringement proceedings. Similarly, the assumed infringer in BSV proceedings can, once the proceedings are over, ask the court to order the patent proprietor to file an action for infringement within a certain time limit (§ 494a(1) ZPO), otherwise the patentee must pay the assumed infringer the costs occasioned by the BSV proceedings (§ 494a(2) ZPO).

Hence, the Board considers that "saisie" proceedings are comparable to BSV proceedings in this respect.

It further appears that, contrary to the view of respondent II, the assumed infringer subject to BSV proceedings is not left without any means of defence. As mentioned, it is indeed entitled after termination of the BSV proceedings to compel the patent proprietor to initiate patent infringement proceedings within a certain time limit (§ 494a(1) ZPO).

Furthermore, the assumed infringer, who did not and could not participate in the BSV proceedings, can object to the use of the result obtained therein in subsequent (infringement) proceedings (§ 493(2) ZPO).

1.7 It follows from the above that there is no need for a "balance of interests" to allow an intervention. Further, the BSV proceedings and the possible subsequent infringement proceedings are two separate proceedings which are independent from each other. There is no automatic or procedural link between them. Only the latter qualify as "proceedings for infringement" according to Article 105(1)(a) EPC and Boards of Appeal's case law.

1.8 The intervention of respondent II is therefore not admitted pursuant to Article 105(2) EPC.

As a consequence, since the Board came to a conclusion which matches the appellant's opinion concerning the inadmissibility of the intervention and the appellant's respective requests, and moreover since said conclusion is in line with the Boards of appeal's case law (see T 188/67, T 305/08 and T 1713/11, supra), the appellant's auxiliary request for referral to the Enlarged Board of Appeal becomes moot.

2. Main request (patent as granted)

Since the Board concludes that the subject-matter of independent claim 1 of the main request lacks novelty over D1 (see full decision for details), there is no need to discuss the further objections raised by respondent I against this request.

3. First auxiliary request

3.1 Admissibility

3.1.1 The first auxiliary request was filed with letter dated 13 October 2017, i.e. after the summons had been sent to the parties, so that its admission into the proceedings is subject to Article 13(3) RPBA. It differs from the former, withdrawn, first auxiliary request filed with the statement setting out the grounds of appeal only in that the repeated wording (printing error) has been deleted from claim 1 (see point VI above, in particular claim 1 of the main request, for the deleted wording).

The Board considers that this deletion does not raise any issues which the Board or respondent I cannot reasonably be expected to deal with without adjournment of the oral proceedings, so that it cannot form as such a justification for not admitting the first auxiliary request into the proceedings.

3.1.2 Respondent I also contested the admission of the first auxiliary request into the proceedings on the basis that the former, withdrawn, first auxiliary request could have been filed during the first instance proceedings.

The Board considers, however, that the former, withdrawn, first auxiliary request was filed "in due time" with the statement setting out the grounds of appeal pursuant to Article 114(2) EPC and Article 12(2) RPBA, i.e. taking account of the positive preliminary opinion of the opposition division in its summons for oral proceedings dated 1 September 2014, and that at the oral proceedings the opposition division clearly stated that it would not admit any further requests (impugned decision, point 21).

3.1.3 The first auxiliary request is hence admitted into the proceedings (Article 12(4) RPBA).

3.2 Novelty

Since the Board concludes that the subject-matter of independent claim 1 of the first auxiliary request lacks novelty over D1 (see full decision for details), there is no need to discuss in this decision the further objections raised by respondent I against this request.

4. Second to seventh auxiliary requests

4.1 The second to seventh auxiliary requests were filed by letter dated 13 October 2017 and differ from the former, withdrawn, second to seventh auxiliary requests filed by letter dated 7 April 2017, i.e. after the reply of respondent I, only in that the repeated wording (printing error) has been deleted from claim 1 (see point VI above, in particular claim 1 of the main request, for the deleted wording).

As for the first auxiliary request, this deletion cannot justify the non-admission of said auxiliary requests into the proceedings (see point 3.1.1 above).

4.2 Respondent I contests the admission of the second to seventh auxiliary requests into the proceedings for prima facie lack of novelty of the subject-matter of claim 1 of all the requests pursuant to Article 13(1) RPBA (see annex to the summons, point 9).

4.3 During the oral proceedings, the appellant confirmed that only claim 1 of the fifth auxiliary request could comprise features which would enable to prima facie overcome the lack of novelty objection regarded as valid against claim 1 of the first auxiliary request, contrary to claims 1 of the second to fourth, the sixth and the seventh auxiliary requests. These auxiliary requests were in fact filed merely in order to overcome objections based on or in combination with other documents.

4.4 With respect to claim 1 of the first auxiliary request, claim 1 of the fifth auxiliary request comprises the features of claim 2 of the patent as granted, i.e. that the apparatus "comprises a series of said transport containers, which are transportable by the driving means".

4.5 The appellant considers that these added features would confer novelty over Figure 6 of D1, should said Figure 6 be the basis for justifying lack of novelty of the subject-matter of claim 1 of the first auxiliary request, in the sense that the apparatus as a whole as shown in Figure 6 would be regarded as a single transport container providing synchronous discharge of the products (see also point 3.2.1 above).

4.6 The Board does not, however, consider this interpretation of Figure 6 of D1 as relevant for arguing lack of novelty of the subject-matter of claim 1 of the first auxiliary request (see point 3.2.2 above). Further, it follows respondent I's view that the apparatus of D1 unambiguously comprises a series of transport containers, which are transportable by the driving means (see for instance Figures 4 and 5), said containers being those of Figure 1 considered in the discussion of novelty of the subject-matter of claim 1 of the main request and first auxiliary request (see D1, column 4, lines 64-65).

As a consequence, the subject-matter of claim 1 of the fifth auxiliary request prima facie lacks novelty over D1.

4.7 In the absence of any arguments from the appellant, the same applies de facto to the subject-matter of claim 1 of the second, third, fourth, sixth and seventh auxiliary requests.

4.8 As a consequence, the second to seventh auxiliary requests are not admitted into the proceedings (Article 13(1) RPBA).

Order

For these reasons it is decided that:

1. The intervention by SDI Group Material Handling Solutions GmbH is inadmissible.

2. The appeal is dismissed.

This case T 1746/15 (pdf) has European Case Law Identifier ECLI:EP:BA:2017:T174615.20171113. The file wrapper can be found here. Photo "magnifying-glass" by bluebudgie obtained via Pixabay under CC0 license.