Thursday, 27 May 2010

R 21/09 – Autonomous But Not Autistic

This decision deals with an alleged violation of the right to be heard. The crucial fact was that the Board had accepted evidence filed before the High Court of Justice – Chancery Division – Patents Court, which had led to the revocation of the UK part of the patent, without examining in detail all the documents that had been filed before that Court.

After having established that the petition was not clearly inadmissible, the Enlarged Board of appeal (EBA) deals with its allowability:

[2.1] The petitioner distinguishes between the violation of its right to be heard and the violation of the principle of independence of the law under the EPC with respect to national law, which principle gives a party to appeal proceedings before the Boards of appeal the right to independent proceedings (instance indépendante). When asserting that the right to be heard has been violated, the petitioner criticizes the Board for not having allowed a new discussion of the whole set of documents that had been filed before the English jurisdictions. The second point of the petition for review points out in detail why the Board, therefore, was believed to have adopted the position of the English judge without examining directly the evidence.

The EBA considers that in reality each of these two infringements concerns the right to be heard: the petitioner has been deprived of its right to present a complete defence because the decision has taken into account partial elements, i.e. elements taken from the English decisions, without allowing for a discussion of the whole set of evidence that had been filed before these jurisdictions.

[2.2] The central point of the impugned decision is to know whether example 3D of document D1 destroyed the novelty of claim 1 of the patent under consideration and, more precisely, whether crystalline form α was a direct implicit and inevitable result of this example. The Board of appeal has come to the conclusion that this crystalline form α was indeed produced when example 3D of D1 was carried out.. It is the elements of proof (elements de prevue) on which it relies that are criticized by the petitioner.

[2.3] As far as principles are concerned, the EBA fully agrees with the petitioner. The proceedings before the Boards of appeal are autonomous and decisions of national jurisdictions have no legal authority (autorité en droit). This principle has been asserted in the case law of the Boards of appeal already at a very early stage (see T 452/91 [5.4]). It follows that before the Boards of appeal the parties may expect to dispose of intact rights as to the organisation of their defence.

Any infringement of this principle would not only affect the integrity of the rights of the parties but would also be incompatible with the principle of independence of the members of the Board of appeal asserted in A 23(3), which members shall comply only with the provisions of this Convention and shall not be bound by any instructions.

[2.4] However, this principle does not exclude a certain interaction between national judicial systems and the European system, in particular in view of the elaboration of a harmonious European jurisprudence (see for example the decision of the High Court of Justice, Court of Appeal (Civil Division) in case n° A3/2009/0675 Actavis UK Ltd. V. Novartis AG, where the English judge analyzes the problem-solution approach as practised by the EPO and concludes in paragraph 63 that the decision on the obviousness of the solution provided by the patent under consideration to which he had come would have been the same if the problem-solution approach had been applied).

[2.5] In its decision T 665/95 (cited by the impugned decision) the Board has not considered this principle to be an obstacle when it refused further taking of evidence and relying on testimonies taken in Dutch proceedings. It is true that there is nothing to be said against parties introducing national decisions or documents filed during a national law suit into proceedings before the Boards of appeal of the EPO, but the Boards have to take utmost care when treating such facts and evidence which are somewhat different from ordinary documents, so that the independence of mind (liberté d’esprit) is safeguarded during the assessment of these documents so that the Board can come to a conviction of its own.

[2.6] Anyway, the filing of documents that have already been filed before national jurisdictions and of decisions of these jurisdictions has to comply with the general rule according to which each of the parties has to file the documents which it intends to use in the various proceedings, respectfully of the defence or the right to be heard. As matter of fact, even if the parties are the same, the appeal proceedings are distinct proceedings from national proceedings, and autonomous.

[2.7] These principles having been recalled, what is criticized in the decision [of the Board] is not that it had taken into account documents that had not been part of the proceedings (mis aux débats) but that it had not allowed the petitioner to discuss the documents filed, which according to the petitioner are incomplete, within the general context from which they had been extracted.

[2.8] Therefore, it is necessary to examine if the circumstances of the filing of the English decisions have deprived the petitioner of the right to be heard (A 113). This requires [the EBA] to check whether the petitioner has had the time needed to be prepared to discuss these decisions and the elements pertaining to these decisions, depending on whether it had to expect that they would be discussed during the oral proceedings.

[2.9] In its conclusion that crystalline form α was inevitably present in example 3D of document D1, the Board relied both on the experimental results filed by the opponents during the opposition proceedings […] and on the statements of experts before the English court […].

[2.10] In its preliminary communication, the EBA had already pointed out that the elements taken from the decision of the English first instance judge had not been the sole basis for the revocation of the patent and, therefore, there was no causal link between the alleged procedural violation and the decision to revoke the patent.

Thereupon, the petitioner has made a distinction between the effects proven on laboratory scale and on industrial scale. According to the petitioner, the Board had entirely relied on the assessment made by the English judge in the second case.

[2.11] Without entering into the discussion of the evidence retained by the Board of appeal, which corresponds to a substantial re-examination (réexamen au fond) and as such cannot be object of revision proceedings, the EBA comes to the conclusion that it is not true that the petitioner has been deprived of the right to defend itself using all of the elements taken into consideration by the Board of appeal, comprising those filed before the English jurisdiction, for the following reasons.

[2.12] There is no trace in the written submissions (écritures) filed by the petitioner during the appeal proceedings, nor in the minutes of the oral proceedings before the Board of appeal, nor in its decision [that would corroborate] the argument raised after the communication annexed to the [summons to ?] oral proceedings before the EBA, according to which the trials that Apotex had filed two months before the oral proceedings as third party observations did not correspond to those filed before the English jurisdiction.

Apotex had presented these trials as the trials filed before the English jurisdiction. In its written submission, […] Apotex declares that it has carried out four trials for the purpose of presenting them in the law suite in the UK and explains how the experimental conditions under which the trials were carried out could be guaranteed. It also indicates that the minutes of the trials and the X-ray diffraction pattern of the product are attached. […]

[2.13] In its written submissions filed as a response to these observations, the patent proprietor has expressed its astonishment […] that Apotex “made up its mind about two years after having filed them in the English proceedings …”. Then it criticized the results as to their substance (sur le fond) but did not allege that the trials were different from the trials presented to the English judge.

[2.14] The arguments made by the petitioner before the EBA in order to establish that the trials were not the same as those filed before the English jurisdiction reaffirm its arguments as to the substance of the case (de fond) made before the Board of appeal and do not contribute anything new as to the characterisation of the violation of its right to be heard. In particular, […] the petitioner has not established that it was unable to obtain the trials filed before the English jurisdiction for confidentiality reasons, as it mentioned orally when answering the questions of the EBA.

[2.15] In conclusion, it follows […] from the preceding assessment that the petitioner, who as the patent proprietor was a party to the proceedings before the English jurisdiction, knew two months before the oral proceedings before the Board of appeal that Apotex, its opponent in the infringement proceedings, had filed trials presented as those filed before the English judge. It has not pointed out, at that time, that the trials were different and that it had been refused access to the trials, or the whole set of trials, used by the English judge. Quite to the contrary, it has referred to their filing before the English judge. It has also discussed the substance of these trials. Moreover, the English decision had been filed as soon as September 3, 2007.

[2.16] Under these circumstances, it is not unreasonable to expect the patent proprietor to use all the means at its disposition for defending its patent, without compartmentalizing between the different proceedings which have to decide on the validity of the title. The attention of the patent proprietor had been drawn to trials that were potentially detrimental to the maintenance of the patent because they had already been decisive for the revocation of the patent by the English judge. It is true that these trials were only referred to in third party observations, but the third party, Apotex, was also the opponent in a law suite that ended in the revocation of the patent. As from this moment in time, it was predictable that the elements introduced into the proceedings by Apotex and presented as those already filed before the English judge, resulting the known consequences, could be used by the opponents in the appeal proceedings, as well as the decisions based on them. The petitioner chose not to complete the file of appeal with other documents examined by the English judge and which, according to the petitioner, could foil the documents filed by its opponents by providing a global vision of the trials only part of which had been retained.

[2.17] The fact that the Board of appeal had not referred to the decisions and trials in its preliminary communication cannot possibly characterize a violation of the right to be heard. On one hand, article 17(2) of the Rules of proceedings of the Boards of appeal (RPBA) points out that the communication cannot bind the Board. The communication expresses a preliminary opinion that the Board holds at a certain moment in time but which the Board may reconsider if the arguments made, in particular in response to this communication, were able to bring about changes in the case. In this very instance, the Board only gave a list of numbered documents, which was sent before Apotex filed its observations, in order to facilitate the preparation of the oral proceedings. It did not specify at all how the Board considered the case.

[2.18] Finally, as the proceedings were inter partes proceedings, it is clear that the framework of the discussions is also defined by the written submissions of the parties. As the trials had been introduced into the proceedings by a third party, they represented a potential danger for the patent proprietor. It was normally predictable that these documents could be used against it, the English decision being already part of the file.

[2.19] It follows from what has been said that the criticism in reality addresses the assessment by the Board of appeal of what it considered to be elements of proof. Under the pretext of a violation of the right to be heard, the EBA is requested to control the decision as to its substance (au fond), by checking whether the elements of proof which it retained were to be retained, and if they were sufficient or not. However, the choice between the elements of proof that have been filed and the assessment of their probative value fall within the sovereign assessment by the Board and are clearly outside the scope of revision proceedings.

[3] As a consequence of all that has been said above, the petition for review has to be dismissed as clearly unallowable.

You can download the whole decision (in French) here.