T 0384/15 Circumvention via straw man must always be proven
In this opposition appeal case, the decision to reject the opposition was
appealed by the opponent, Santorelli SA.
In appeal, a notice of intervention was filed by a first intervener, Bose GmbH. The
proprietor requested that the intervention be found inadmissible for the reason
that Santarelli was a straw man acting on behalf of Bose, meaning that the
opponent and the intervener were one and the same. Bose GmbH denied any involvement
in the opposition prior to its intervention, which was held to be admissible. Subsequently,
a second intervener Bose Ltd filed a notice of intervention.
The patent proprietor requested that the original opposition be held
inadmissible and, if the Board did not accede, further requested that a
question be referred to the Enlarged Board: "If evidence clearly indicates that a strawman opponent is acting
on behalf of a party who intervenes in opposition proceedings, is the
involvement of the opponent to be regarded as circumventing the law by abuse of
procedure (cf. G 3/97 and G 4/97), the consequence of which being that the
opposition is inadmissible?"
The Board agreed with the proprietor that any intervener must be a
different party from the opponent in order to be a third party in the meaning
of Art 105(1), and that even when the interveners are
"third parties", it
still has to be considered whether there has been an attempt by the opponent
and/or interveners to circumvent the law by abuse of process and thus whether
there are grounds for holding the opposition and/or interventions inadmissible.
The Board concluded that the three opponents were separate parties and
was able to decide on the available facts that the interventions were
admissible and thus also the original opposition, given that the proprietor had
submitted no proof that the interveners were in fact the principals instructing
the original opponent.
The request for a referral to the Enlarged Board was denied.
Summary of Facts and Submissions
I. The appeal concerns the decision of the
opposition division rejecting the opposition of the opponent Santarelli SA. The
grounds for opposition invoked by the opponent were those pursuant to Article
100(a) and (b) EPC.
II. In the impugned decision, the opposition
division held that the invention as claimed in claim 1 of the patent as granted
was disclosed sufficiently clearly and completely for a skilled person to carry
it out (cf. Article 83 EPC). It also held that the subject-matter of claim 1
was new with respect to the disclosure of either D1 or D2 (= US 2005/0008180)
respectively and involved an inventive step with respect to the combination of
D1 and D2.
III. In the statement of grounds of appeal, the
opponent (hereinafter "appellant") requested that the decision under
appeal be set aside and that the patent be revoked in its entirety. It argued,
inter alia, that the disclosure was insufficient and that the subject-matter of
claim 1 was not new with respect to document D2, and did not involve an
inventive step based on the combination of D1 and D2.
IV. In response to the statement of grounds of
appeal, the proprietor requested that the patent be maintained in unamended
form, i.e., implicitly, that the appeal be dismissed.
V. Subsequently, an intervention by an assumed
infringer, namely Bose GmbH, (hereinafter "first intervener") was
filed (cf. Article 105 EPC). The first intervener paid the opposition fee and
the appeal fee and requested that the decision under appeal be set aside and
that the patent be revoked in its entirety. It also requested reimbursement of
the appeal fee (citing decision G 3/04) and accelerated prosecution.
VI. The first intervener invoked the grounds for
opposition pursuant to Article 100(a), (b) and (c) EPC. With respect to Article
100(a) EPC, it was argued, inter alia, that the subject-matter of claim 1 of
the granted patent lacked novelty with respect to D1 or D2 and that the
subject-matter of claim 1 lacked an inventive step with respect to D1 alone or
the combination of D1 and D2.
VII. In a reply to the notice of intervention, the
proprietor requested that the intervention be held inadmissible for the reason
that the opponent was a straw man acting for Bose, so that the party behind the
opponent and the intervener was one and the same.
VIII. In a letter of reply, the first intervener
stated that "Bose GmbH ... was definitely not a party to the present
opposition prior to its intervention". Therefore, it was contended that
the intervention was admissible.
IX. In a summons to oral proceedings the board gave
the following preliminary assessment:
(i) The [first] intervention was admissible;
(ii) There was doubt as to whether claim 1 of the
patent complied with Article 123(2) EPC (cf. the ground for opposition pursuant
to Article 100(c) EPC);
(iii) The ground for opposition pursuant to Article
100(b) EPC did not appear to prejudice the maintenance of the patent as
granted; and
(iv) The subject-matter of claim 1 did not appear
to be new with respect to the disclosure of D2.
X. Together with a reply to the board's
communication received on 22 March 2018, the respondent submitted claims of
seven auxiliary requests aimed at overcoming the board's objections with
respect to Articles 123(2) and 100(c) EPC. The respondent made a plurality of
requests, inter alia, that the opposition and/or intervention be held
inadmissible as a result of an attempt to circumvent the law by abuse of
process. The requests set out in the respondent's letter were essentially
maintained until the end of the oral proceedings and thus are reproduced below
in connection with the respondent's final requests.
XI. Subsequently, a second intervention of an
assumed infringer, namely Bose Limited, was filed (hereinafter "second
intervener"). The second intervention essentially relied on the same
grounds for opposition as the first intervention and both interveners were
jointly represented.
XII. Oral proceedings were held on 27 April 2018.
The appellant requested that the decision under
appeal be set aside and that the patent be revoked, as did both interveners.
The first intervener further requested that its appeal fee be reimbursed.
The respondent's requests made in the letter dated
22 March 2018 were maintained, except that requests concerning "the
intervention" applied to both interventions. The requests as set out in
the letter read as follows:
"1.1 We request that the opposition filed by
Santarelli be deemed inadmissible.
1.2 Should the Board
be unable to accede to the above request, we request that the following
question be referred to the Enlarged Board of Appeal in accordance with Article
112(l)(a) EPC: "If evidence clearly indicates that a strawman opponent is
acting on behalf of a party who intervenes in opposition proceedings (Art. 105
EPC), is the involvement of the opponent to be regarded as circumventing the
law by abuse of procedure (cf. G 3/97 and G 4/97), the consequence of which
being that the opposition is inadmissible?".
1.3 Should the Board accede to neither of the above
requests, we request that the intervention be deemed inadmissible and that the
appeal of the Appellant be dismissed.
1.4 Should the Board
deem the intervention to be admissible, we request that the case be remitted to
first instance to have all new grounds, facts and evidence examined in order
that we be in a position to defend the patent before two instances of
jurisdiction.
1.5 Should the Board deem the intervention to be
admissible, but wishes to examine whether the decision of first instance is
correct in view of the grounds, facts and evidence raised in the Appellant's
written statement setting out the grounds of appeal, we request that the Board
decides on the correctness of the decision of first instance only on the basis
of these grounds, facts and evidence and, if the Board were to conclude that
these do not prejudice the maintenance of the patent, remit the case to first
instance to have all new grounds, facts and evidence examined.
1.6 Should the Board nevertheless intend to proceed
as laid out in section 19 of its Communication, we request that the appeal of
the Appellant be dismissed, that the granted patent be found to fulfil the
requirements of Article 123(2) EPC and that the case be remitted to first
instance to examine the objections based on the new documents on file cited by
the intervener.
1.7 To the extent that the Board were to find that
the granted patent contravenes Article 100(c) EPC, First [to] Seventh Auxiliary
claim sets are enclosed. To the extent that the Board finds that one of these
Auxiliary claim sets overcomes the objections laid out in the Board's
Communication, we request that the decision under appeal be set aside and that
the case be remitted to first instance to have that Auxiliary claim set
examined in view of the objections based on the new documents on file cited by
the intervenor."
In addition, as a further auxiliary request, the
respondent requested that the patent be maintained in amended form on the basis
of "first auxiliary patent claims" as filed during the oral
proceedings. This request was to be ranked between requests 1.6 and 1.7.
At the end of the oral proceedings, the chairman
announced the board's decision.
Reasons for the Decision
1. Admissibility of the opposition and the
interventions (cf. respondent's requests 1.1 and 1.3)
1.1 The respondent argued that there was credible
evidence that the opponent Santarelli SA was acting on behalf of one or more
divisions of Bose Corporation, but had concealed this relationship. Further,
all divisions of Bose, including the assumed infringers and interveners Bose
GmbH and Bose Limited, were legally inextricably linked to the Bose Corporation.
A requirement for an admissible intervention is that it be filed by a third
party. By having chosen to protect its anonymity by filing the opposition in the
name of a straw man, the true opponent has availed itself of the possibility of
also intervening in the opposition proceedings because it is impossible, at
least at first glance, for the EPO or any other party to ascertain whether the
interveners are third parties or not. This constituted an abuse of process
allowing circumvention of the law as laid out in Article 105(1) EPC.
This anonymity also allowed Bose to pick and choose who they might subsequently
wish to present as the true opponent, depending on circumstances, which also
resulted in an abuse of process. As a consequence, the opposition filed in the
name of Santarelli SA must be deemed inadmissible ex tunc. In turn, this meant
that there were no pending opposition proceedings when the notices of intervention
were filed by Bose GmbH and Bose Limited respectively. It followed that the
interventions were also inadmissible.
1.2 The appellant
further argued that all divisions, companies and legal entities within the Bose
Corporation should be regarded as a group of joint opponents (cf. G 3/99, OJ
EPO 2002, 347) with Santarelli SA acting as a common representative. On that
basis, Bose GmbH (and by implication Bose Limited) would be one of the joint
opponents and thus not able to intervene as a third party.
1.3 The board agrees
with the proprietor that an intervener must be a different party to the
opponent in order to be a "third party" within the meaning of Article
105(1) EPC. However, the board considers that there is no question that the
interveners are "third parties", i.e. different legal entities, with
respect to the opponent Santarelli SA whether or not one of Bose GmbH and Bose
Limited is the principal instructing Santarelli SA. As stated in G 3/97 (OJ EPO
1999, 245), point 2.1 of the reasons:
"The status of opponent is a procedural status
and the basis on which it is obtained is a matter of procedural law. The EPC
addresses this in Article 99(1) in conjunction with Article 100, Rules 55 and
56(1) EPC. On this basis, the opponent is the person who fulfils the
requirements of the EPC for filing an opposition; in particular, the person
must be identifiable (see Rule 55(a) EPC). The EPC does not specify any further
formal requirements to be met by the opponent. A person who fulfils the said
requirements becomes a party to the opposition proceedings (Article 99(4) EPC).
In these proceedings, only his acts are relevant. A third party (the
"principal") who has incited the opponent to file the opposition
cannot perform any procedural acts. The question whether the opponent's acts
accord with the intentions or instructions of the principal is relevant only to
the internal relationship between the latter and the opponent, and has no
bearing on the opposition proceedings." (board's underlining).
1.4 Although the
interveners are "third parties", it still has to be considered
whether, by invoking Article 105 EPC, there has been an attempt by the opponent
and/or interveners to circumvent the law by abuse of process and thus whether
there are grounds for holding the opposition and/or interventions inadmissible.
1.5 In decision T
305/08, the opponent-appellant OI was alleged to be the patent department
(although had an entirely different name) acting for interveners OII and OIII.
The board of appeal in that case noted the evidence which appeared to suggest
that OII and OIII belonged to the same group of companies as OI, but found that
there was no attempt to circumvent the law by abuse of process. In this
respect, the interveners were quite clearly distinct legal entities and were
adhering to due process by filing interventions which was only possible by the
actions of the respondent-proprietor against them (cf. point 1.5.8 of the
reasons).
1.6 In the board's view, the same situation exists
in the present case. The respondent has produced evidence suggesting a
relationship between the appellant and the interveners, but no proof, as
admitted by the respondent, that Santarelli SA was acting directly on behalf of
either Bose GmbH or Bose Limited. Further, the representatives for the
appellant and the interveners expressly denied that this was the case.
1.7 The argument that it is impossible for either
the EPO or the proprietor to determine whether the interveners are third
parties or not is here not relevant, since the board is satisfied that in the
present case the interveners are third parties in the sense of being separate
legal entities and not being the principal behind the opponent.
1.8 The argument that the anonymity created by
using a straw man allowed Bose to pick and choose who they might subsequently
wish to present as the true opponent, depending on circumstances, is also not
convincing. In the present case, neither Bose GmbH nor Bose Limited were
apparently involved when the opposition was filed. Bose has
not presented anyone as the "true
opponent", and indeed has had no need to do so.
1.9 The argument that all divisions, companies and
legal entities within the Bose Corporation should be regarded as a group of
joint opponents (cf. G 3/99) with Santarelli SA acting as a common
representative is not convincing either. The opponent in this case is the legal
entity which filed the opposition (Santarelli SA). There is no request by
either Santarelli SA or Bose GmbH and Bose Limited that the oppositions should
be considered as joint oppositions and therefore no basis for considering them
as such.
1.10 The other requirements set out in Articles
99(1) and 105(1) EPC and Rule 77(1) EPC being met, which was not contested by
the respondent, the board concludes that the opposition of Santarelli SA and
the interventions by Bose GmbH and Bose Limited are admissible.
2. Party status of the interveners
The interveners are treated as opponents in these
opposition appeal proceedings (cf. Article 105 EPC).
3. The respondent's request for referral of a
question to the Enlarged Board of Appeal (cf. respondent's request 1.2)
3.1 The appellant requested, to the extent that the
board does not deem Santarelli SA's opposition inadmissible, that the following
question be referred to the Enlarged Board of Appeal:
"If evidence clearly indicates that a strawman
opponent is acting on behalf of a party who intervenes in opposition
proceedings (Art. 105 EPC), is the involvement of the opponent to be regarded
as circumventing the law by abuse of procedure (cf. G 3/97 and G 4/97 [OJ EPO
1999, 245 and 270)]), the consequence of which being that the opposition is
inadmissible?".
3.2 For the reasons given above (cf. points 1.6 and
1.7), the board has concluded that the opponent, even if a strawman, is not
acting on behalf of the interveners. Consequently, the board does not need an
answer to this question to decide the case. The request for referral is
therefore refused.
4. Request of the respondent for remittal to the
department of first instance (cf. respondent's request 1.4)
4.1 In the case that the board deems the
interventions to be admissible, the respondent requested that the case be
admitted to the first instance to have all new grounds, facts and evidence
examined in order that they be in a position to defend the patent before two
instances of jurisdiction.
4.2 In accordance with decision G 1/94 (OJ EPO
1994, 787), "in application of what has been stated by the Enlarged Board
in case G 10/91 [OJ EPO 1993, 420] for the exceptional situation of the
introduction of new grounds in ordinary appeal proceedings, if a fresh ground
for opposition is raised by the intervener, the case should be remitted to the
first instance for further prosecution, unless special reasons present
themselves for doing otherwise, for example when the Patentee himself does not
wish the case to be remitted".
4.3 As regards the fresh ground for opposition
under Article 100(c) EPC, the respondent stated that it did not wish this
ground to be discussed in these appeal proceedings. Further, the respondent
argued that the normal sequence of examination was to determine compliance with
Articles 83 and 123(2) EPC (cf. the grounds for opposition pursuant to Articles
100(b) and 100(c) EPC) before examining for novelty and inventive step. It
followed that the case should be remitted with no discussion of the ground for
opposition pursuant to Article 100(a) EPC.
4.4 The board agreed
with the respondent that there were no special reasons not to remit the case in
accordance with G 1/94 as regards the ground for opposition pursuant to Article
100(c) EPC. However, that did not mean that the other grounds for opposition,
in particular Article 100(a) EPC, could not be discussed insofar as being
within the scope of the opponent's case presented during the opposition
proceedings and decided on by the opposition division. In any case, the
respondent considered that claim 1 as granted complied with Articles 83 and
123(2) EPC, so that there was nothing illogical in discussing novelty and/or
inventive step within the framework of the original opposition.
4.5 The request for remittal of the case was
therefore refused.
5. Ground for opposition pursuant to Article 100(a)
EPC (cf. respondent's request 1.5)
5.1 Claim 1 as granted - novelty
5.1.7 The board concludes that the subject-matter
of claim 1 as granted is not new with respect to the disclosure of D2 (Articles
52(1) and 54 EPC). The ground for opposition pursuant to Article 100(a) EPC
thus prejudices the maintenance of the patent as granted.
8. Conclusion
As there is no allowable request, the patent must
be revoked.
9. Request for reimbursement of the appeal fee by
the first intervener
9.1 The first intervener Bose GmbH has paid both
the opposition fee and the appeal fee. At the same time, it requests
reimbursement of the appeal fee, citing G 3/04 (OJ EPO 2006, 118).
9.2 In accordance with G 3/04 (cf. point 11 of the
reasons), a party which intervenes during opposition appeal proceedings cannot
have the status of an appellant. There is therefore no legal basis to pay an
appeal fee. The appeal fee is therefore to be reimbursed.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3.
The appeal fee paid by the first intervener is reimbursed.
This decision T 0384/15(pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T038415.20180427. The file wrapper can be found here. Photo courtesy of Skitterphoto obtained via Pexel under CC0 license (no changes made).
This decision T 0384/15(pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T038415.20180427. The file wrapper can be found here. Photo courtesy of Skitterphoto obtained via Pexel under CC0 license (no changes made).
Comments
Post a Comment