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Proving the existence of confidentiality agreements and the celestial teapot - T 2037/18

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T 2037/18 is an EPO Boards of Appeal case that considers how much an opponent needs to prove in the Notice of Opposition itself. The case related to a dispute between Bombardierand Siemens regarding Bombardier’s EP patent (EP2619063) for a train carriage. Siemens cited a train (the TDR Series 460) as prior art against the patent, alleging prior use by Bombardier’s customer Transregio Deutsche Regionalbahn (TDR). The case centred around whether the transfer of the train from Bombardier to TDR could be considered to have taken place under conditions of confidentiality. Crucial questions in the case were a) on which party the burden of proof should be laid and b) whether this burden was on the opponent in the Notice of Opposition. Another key question was whether the burden of proof placed on Siemens in opposition had been the equivalent of asking them to prove a negative (or more philosophically speaking, had it been like asking the opponent to prove the existence of the philosophical "celestial teapot").

The Opposition Division (OD) did not consider the information provided by Siemens on the TDR 460 train to be enough to substantiate the opposition. The OD particularly considered that the process of transfer between Bombardier and TDR should be considered as having taken place under conditions of implied confidentiality. The OD thus found that the burden of proof had been on Siemens to demonstrate the lack of such conditions of confidentiality between Bombardier and TDR in the Notice of Opposition. In the absence of any such proof the opposition was considered inadmissible.

The appeal case explored the issue of whether the burden of proof really should be viewed as resting with the opponent in such a case.

Legal Background – Prior use and burden of proof

The public use of an invention prior to the priority date of a patent may be novelty destroying (Article 54(2) EPC). The approach of the UK courts to the issue of prior public use was considered by the High Court earlier this year (IPKat: Mr Justice Nugee and the Superhose: The potentiality of disclosure). The EPO and UK courts agree that an invention is judged to have been made available to the public even if only one member of the public was able to gain access to and understand the disclosure (T 0084/83). A rear-view mirror was considered by the EPO to have been disclosed, for example, because it was used in a public transport vehicle. However, a prior use disclosure is not considered public if it took place under conditions of confidentiality (T 1081/01).

In EPO proceedings, arguments such as an allegation of prior use must be supported by facts and evidence (as recently reviewed in another Boards of Appeal case, see IPKat: Shifting the burden of proof back to the patentee (T 1299/15)). In a case of alleged prior public use, the burden of proof is on the opponent to substantiate the when, what, and how of the public use (Case Law of the Boards of Appeal, I.C.3.2.4).

The burden of proof should not amount to proving a negative

So who had the burden of proof in Siemen’s opposition of Bombardier’s patent (T 2037/18)? The Board (3.2.01) noted the Boards of Appeal case law that, if prior use is alleged, the burden of proof first falls on the opponent to demonstrate that the sale took place (T 326/93, r. 4.1). In particular, the when, what and by whom of the alleged prior use must be outlined by the opponent. The Board noted that this evidence had been provided in the Notice of Opposition. The question of whether the prior use had been public (i.e. whether it had been confidential) was considered irrelevant for the admissibility of the appeal. Such a question should be left to the assessment of the substantive merits of the case. The Board therefore considered the opposition to have been admissible.

The celestial teapot

The Board further noted that, in general, if the patentee argues in their defence that a prior use was confidential, the burden of proof is on the patentee to prove that conditions of confidentiality were, in fact, in place (T 221/91, r. 2). The shift of the burden of proof to the patentee is considered appropriate given that a buyer can typically be expected to disclose an item they have bought. As Siemens argued, TDR would have had a strong interest in using the train. TDR would also have assumed Bombardier to have made the arrangements for patent protection if any were necessary. As the Board put it “[a] search of the entire body of the Board of Appeal has not revealed a case, in which a chamber from the delivery of a rail vehicle to an operating company would have concluded the existence of a tacit confidentiality agreement” (r. 17, machine translation).

The Board further considered this reasoning to follow the legal principle of “negative non sunt probanda”, i.e. you can’t prove a negative. This Kat is reminded of Bertrand’s Russell’s analogy of the “celestial teapot”. Russell argued that if a party was to allege the existence of a small teapot orbiting the earth (where the teapot is too small to be spotted by telescopes) it would be impossible for another party to disprove the claim. Russell used this analogy to argue that the burden of proof must lie on the party making the unfalsifiable claim.

In the case of prior use, the Board argued, an opponent cannot be expected to prove that the sale didn’t take place under conditions of confidentiality. Such a requirement would require the opponent to prove a negative. The burden of proof would thus amount to the same as would be required to disprove the existence of the celestial teapot.

Burden of proof may shift again in view of prima facie evidence. For example, if a patentee presents what appears to be prima facie evidence of conditions of confidentiality covering a prior use, the burden of proof shifts to the opponent to disprove this evidence (r.10). However, the Board noted that such a shift in the burden of proof could only be triggered after the Notice of Opposition had been filed, i.e. in view of the patentee’s response to the opposition. The Board (obviously a fan of a pertinent Latin phrase), summarised that a shift in the burden of proof with respect to the existence of a confidentiality agreement could only occur ex nunc.

The reasoning provided in this decision is welcome, especially in light of the upcoming changes to the Rules of Procedure of the Boards of Appeal (RPBA) (see IPKat here). Under the new regime it will become significantly harder to introduce new arguments and evidence into proceedings as proceedings progress. Commentators are predicting that opponents and patentees will front load their cases in response to the revised changes. T 2037/18 provides some salient reasoning why it should not be required of an opponent to introduce all possible arguments and counter-arguments in the Notice of Opposition. The Opponent must also be able to respond to the patentee's position as proceedings progress.

Shifting the burden of proof back to the patentee (T 1299/15)

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In disputes of insufficiency before the EPO, the burden of proof is initially on the side of the party alleging that the patent or application is insufficient. An opponent arguing that an invention is insufficiently disclosed generally must provide evidence that, despite making all reasonable efforts, they were unable to put the invention into practice (see T 30/15, 1.4.1) (Article 83 EPC). However, as a recent Board of Appeal decision confirms (T 1299/15), it is possible for the burden of proof to shift back to the patentee if "serious doubts" exist regarding whether a skilled person could carry out the invention.

Legal background: Burden of proof

The established case law of the Boards of Appeal is that each party bears the burden of proof for the facts it alleges. During prosecution, the burden of proof lies initially with the Examiner. An Examiner may not, for example, simply recite common general knowledge against a claim if the common general knowledge (CGK) is disputed. The Examiner must instead provide documentary evidence of the CGK. Similarly, for an insufficiency, novelty or inventive step objection, the burden of proof is initially on the Examiner (T 578/06, r. 13). Notably, a recent Board of Appeal also removed the burden of proof from the applicant to demonstrate the novelty of purity inventions (T 1085/13, IPKat post here).

During opposition, the burden of proof very clearly rests with the opponent, at least initially. This applies to all forms of objection, from novelty to insufficiency. However, it is also possible for the burden of proof to shift back to the patentee in certain circumstances. In T 570/08, for example, the opponent and patentee had both submitted data relating to whether the objective problem had been solved. The opponent's data contradicted that of the patentee. The Board of Appeal was convinced that the opponent's data created sufficient doubt so as to place the burden of proof on to the patentee.

Shifting the burden of proof - T 1299/15

The patent (EP 2191187) at issue in T 1299/15 related to a device and method for renewing buried pipes. The claimed device coats the inside of the pipes with resin and then cures the resin using LEDs. The granted patent claimed a pipe renewer comprising a spiral shaped carrier on which LEDs are arranged in a specified pattern. The pipe renewer also comprises an “adjusting device”, with which the circumference of the spiral-shaped carrier may be adjusted. The claim of insufficiency was directed at the design of the adjusting device.

Spiral

The opponent (Aarsleff, a Danish construction company) argued that the specification did not provide any embodiments of the “adjusting device”. The adjusting device is not shown in the Figures and is mentioned only once in the specification. Furthermore, the opponent argued that there were doubts as to the feasibility of the adjustment device. In particular, how may the adjusting device be attached to the carrier? The specification suggested that pneumatic arms may be used but did not indicate how these arms may be designed so as to be compatible with a spiral carrier varying in width and length.

The Board of Appeal (3.2.05) considered the question of whether the patent (together with common general knowledge) sufficiently disclosed the adjusting device. A key problem faced by the skilled person, the Board reasoned, was how to design the adjusting device so that it could accommodate the complex 3D movements of the spiral windings. The skilled person would also have to design the adjusting device so that the arrangement of the LEDs was maintained.

Importantly, as well as not providing an embodiment in the specification, the patentee did not submit or prove that adjustment devices, such as the claimed device, were already known. The Board accepted that an expert may be able to find solutions for the problems associated with designing the adjustment device. However, the Board doubted whether such solutions could be found without inventive skill.

Therefore, the Board concluded that there were doubts as to whether the invention had been sufficiently disclosed. Furthermore, the Board reasoned, the burden of proof had shifted from the opponent to the patentee. This was because the patentee had failed to provide even one example of an adjustment device as claimed. The patent was therefore revoked for insufficiency.

The legal reasoning in this decision is similar to that of T 63/06, in which the opponent was able to shift the burden of proof with regards to the sufficiency to the patentee. In T 63/06 the Board found that the patentee was relying on only a weak presumption that the invention was sufficiently disclosed. The opponent was successfully able to shift the burden of proof by arguing that the skilled person would have difficult in putting the invention into practice.

The recent case T 1299/15 is similarly a reminder that insufficiency attacks may be applicable even to the mechanical field. As is often the case with insufficiency disputes, the issue of how much work would need to be done by the skilled person (and whether inventive endeavour would be required) was a key issue. Following on from this, if the patentee has not provided an embodiment of the claimed invention, the burden of proof is shifted to the patentee if there is serious doubt that a skilled person could perform the invention without inventive skill.

Honda goes for Silver

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Sometimes IP litigants just effortless breeze into court and, hey presto, whatever problem they have instantly vanishes. Japanese motor vehicle manufacturer is not such a litigant. Indeed,

Honda Motor Co Ltd and another v David Silver Spares Ltd [2010] EWHC 1973 (Ch), a 28 July 2010 ruling by George Leggatt QC, sitting as a deputy judge of the Chancery Division (England and Wales), is the latest chapter in the long and often frustrating journey taken by Honda into the highways and byways of the English legal system in its attempt to stop the importation and sale in the United Kingdom of genuine Honda bikes that were first sold in all sorts of distant lands (see earlier IPKat posts here, here and here).

Right: unable to purchase grey goods spare parts for his Honda, the IPKat decided to resort to pedal power as an economy measure ...

In this action Honda was flexing the muscles of its Community and UK registered trade marks for the word HONDA in respect of motorcycles and parts for them. These muscles were being flexed in the direction of Silver, the biggest British supplier of Honda spare parts. Honda sued for trade mark infringing, saying that Silver was trading in spares that had not been first marketed in the European Economic Area (EEA) by Honda or with its consent. In these proceedings Silver demanded that this claim be struck out or at least that summary judgement should be granted in its favour on the ground that the claim was entirely speculative and lacking in particularity.

The Deputy Judge dismissed Silver's application.

The effect of harmonised domestic European trade mark law was that, even where a trade mark proprietor puts goods on the market himself outside the EEA, he can still assert his trade mark right to prevent importation of those goods into the EEA without his consent.
Such consent has to relate to each individual item of the trade mark-protected product in respect of which a defendant pleads exhaustion of rights. This consent must be expressed positively [it can also be implied if the evidence of the implication is uniquivocal, the IPKat reminds readers], it being for the trader alleging consent to prove it -- not for the trade mark owner to demonstrate its absence. Only if the defendant can establish that a real risk of partitioning of national markets exists will that burden of proof be reversed.
In this case, Silver did not even begin to show that Honda's claim lacked any reasonable basis or had no real prospect of succeeding. There was therefore no need for Honda to show that the motorcycle parts which Silver was selling were first placed on the market by Honda or with its blessing outside the EEA. Honda only needed to assert on reasonable grounds that Silver had used its trade marks within the EEA for the goods for which they were registered and that it (Honda) had not consented to such use.

Says the IPKat, Honda's bike might go like a rocket but there was no rocket science in this case, just the straightforward recitation and application of principles enunciated by the Court of Justice of the European Union. With nothing more than a LexisNexis alert to go on, the Kat feels sure that there must have been some further significant factors that induced Silver to go for a strike-out or summary judgment: he wonders if any readers can oblige.

Why the market for motorbike spare parts is so valuable here and here

Silver the pirate here

Motion sickness: are motorbikes better or worse than cars?