Monday, 13 September 2010

T 2043/07 – Not Quite Up To The Hilt

The present decision gives an example of how difficult it may be to convince the EPO that a prior use has taken place.

[3] Lack of novelty has been alleged based on public prior use of the product D-KX412CS.

[3.1] A number of pieces of evidence have been submitted in support of this objection:
  • […] a copy of a writ served on the present appellant/opponent by the respondent/patent proprietor relating to infringement of a patent by D-KX412CS (D5);
  • […] D16: two invoices relating to transactions involving 4000 kg and 3200 kg of D-KX412CS, the invoices bearing dates of 17 July 1997 and 11 November 1997;
  • […] it was explained that the lot number indicated on the invoices forming D16 (670626) indicated that the product in question had been made on 26 June 1997;
  • […] an invoice relating to a transaction involving 2140 kg of D-KX412CS. The invoice recorded the shipping date as 8 May 1996 and the date of receipt as 9 May 1996. The invoice bore two lot numbers, 660314 and 651223. It was explained that the lot 660314 had been produced in 1996, employing an extruder with a die diameter of 2.5mm. It was stated that some samples of the lot 660314 had been found and that the joint venture partner KJE had been able to retrieve the invoice. The properties of KX412CS from lot number 660314 were reported, all of which fell within the scope of the corresponding features of operative claim 1. Further an affidavit (“Imachi”) was provided which stated inter alia that particle size distribution was not a sales or product specification and that the particle size distribution of KX412CS would likely differ slightly from production lot to production lot.
[3.2] Regarding the evidence provided by the writ D5 it is apparent from pages 2 and 3 thereof that the claims of the patent of which infringement was being alleged did not specify the bulk density, the particle size distribution or the total pore volume of the polymer, i.e. features (e)-(g) of operative claim 1. Nor is there any further statement in D5 relating to these properties.

Accordingly D5 fails to establish even the existence of an allegation that D-KX412CS exhibited all the features of operative claim 1. This conclusion is not altered by the theoretical possibility, as argued by the appellant/opponent that these properties could have been determined by the skilled person.

[3.3] The invoices submitted as part of D16 provide only a disclosure of the product grade (D-KX412CS) and the production batch (670626). However as no details were provided of the properties of this product there is no evidence that this exhibited the properties required by operative claim 1.

[3.4] The invoice submitted together with the letter of 7 August 2008 records two batch numbers. For one of these an analysis has been provided.

[3.4.1] With respect to the presence of two lot numbers on the invoice, it has been submitted by the opponent and not challenged by the patent proprietor, that polymer from the different lots would be separately packaged (into 20kg sacks) and that the packages would be marked with the respective lot numbers.

In the light of this uncontested statement the Board has no grounds for doubting that polymer resulting from production lot 660314 would have been delivered - as part of the consignment recorded in the invoice - in a pure, unmixed form and hence product of the specified grade identifiably derived from this production batch would have been made available and could have been analysed.

[3.4.2] The Board is satisfied that the amount delivered - over 2 tonnes - constitutes an amount which could plausibly be seen as a commercial delivery rather than a sample e.g. for test purposes.

In this connection the Board considers that it is immaterial precisely which proportion of the consignment was derived from the lot or batch for which analytical data had been provided. As submitted by the opponent at the oral proceedings […], and not contested by the patent proprietor, such a transaction would be in respect of a specified amount of a defined (commercial) grade of polymer, not of a specific production batch thereof.

Accordingly the Board is satisfied that the delivery reported was of a commercial nature and that the entirety thereof was made available to the recipient on a non-restricted commercial basis.

[3.4.3] However a number of questions arise regarding the determination of the properties of the product.

In the letter of 7 August 2008 it is stated that some samples of KX412CS, lot number 660314 had been “found”. It is however not stated where and under what circumstances these had been “found”, for example to whom it had originally been delivered, or when. No information is provided about “KJE”, or the nature of the joint venture.

There is furthermore no information relating to the manner in which the sample had been stored in the period between manufacture (1996) and being found (2008) - a period of 12 years. Thus it is not possible to conclude that no changes to the product constitution had occurred during the period of storage or even to estimate the nature of the likely changes. Further it is not possible on the basis of this information to ascertain whether the “found” sample derived from batch 660314 corresponded in all respects, specifically particle size, to that which had been delivered according to the invoice submitted. In particular, as witnessed in the Imachi affidavit of 11 June 2008 attached to the 7 August 2008 letter, particle size was not a sales or product specification. Consequently there is no basis for assuming that the particle size of that portion of the named batch which had been “found” necessarily and inevitably corresponded to the particle size of that portion of the batch which had been delivered according to the invoice submitted. The doubts in this respect are only compounded by the absence, noted above, of any information concerning the identity of the recipient of the batch that was “found” and analysed.

[3.4.4] The report of the properties of this product in the letter of 7 August 2008 is also deficient and, as established by statements made by the opponent […], incomplete. In particular only results are presented. There is no information in the letter of 7 August 2008 regarding by whom or when the analyses were carried out. No information is provided regarding the precise manner in which the analyses had been carried out, nor are the underlying data which gave rise to the reported values and conclusions reported.

It was only in the letter of 14 December 2009 that it was disclosed that the analytical data had been obtained by Kraton Polymers in collaboration with the Delft University of Technology, and that the analyses had been carried in accordance with the methods described in the patent. However even at this point no detailed report of the analyses was provided, for example the date of the analyses, who carried out the analyses, their qualifications, precise equipment/conditions employed and the raw data obtained. In particular since the porosity analyses had been carried out by a different laboratory it would in the Board’s view have been necessary to provide information relating to the history, handling and conditioning of the samples employed in order to demonstrate that the samples subjected to analysis in the two laboratories were in all respects identical i.e. that no variations in handling occurred which could have influenced the analytical results of the respective sample portions analysed at the two laboratories.

[3.5] The case law of the Boards of appeal sets a high threshold for proving public prior use. In particular it has to be established (cf. T 300/86 [2.7]; T 93/89 [8.1]):
  • What was made available,
  • Where it was made available,
  • When it was made available,
  • How it was made available,
  • By whom it was made available.
Further the case law identifies two levels or standards of proof to be applied - either the “balance of probabilities” or “up to the hilt”. The standard of “balance of probabilities” is applicable when both parties involved, i.e. the patent proprietor and the opponent had access to the material of which public prior use is alleged (cf. T 472/92 [3.1]). Although D5 appears to establish that the patent proprietor had access to a product of the grade designated D-KX412CS it has not been established that the patent proprietor had access to the specific batch of this product referred to in the letter of 7 August 2008, and as established by E2 the properties of D-KX412CS varied from batch to batch. Thus there is no basis for concluding that all batches of this product grade are identical. In circumstances where only one party had access to the material, public prior use of which is being alleged then a higher standard of proof is to be applied, namely “up to the hilt” (T 472/92 [3.1]).

[3.6] Regarding the question of “what” was made available as explained above, the chain of evidence contains gaps. Although it has been established that product derived from a given production lot had been made available in a commercial transaction, and an analysis has been presented for a portion of product derived - at some unspecified point in time - from that production lot, as explained above, nothing is known about the history of the analysed portion of this production lot between production and analysis. It is, for example, not known:
  • where this sample was found;
  • in whose possession it had been in the intervening period of ca 12 years between production and the - presumed - date of analysis;
  • under which conditions (e.g. heat/humidity) it had been stored during this period;
  • no information has been provided which would permit it to be concluded that the particle size of the portion subjected to analysis was identical to that of the portion of the production batch which had been delivered according to the invoice.
Thus there exist a number of sources of doubt as to whether the portion of batch 660314 subjected to analysis was indeed identical to and representative of that portion of the indicated production batch which was the subject of the delivery witnessed by the invoice.

Further doubts or uncertainties arise because, as explained above neither the original submission of 7 August 2008 nor the later written and oral submissions provide a complete record of the history and treatment of the sample or the analyses carried out or establish that, despite analyses being carried out in two different institutions, the samples of product submitted to analysis had undergone precisely the same history.

[3.7] In view of these uncertainties it is not possible to conclude, even on the “balance of probabilities”, let alone “up to the hilt” that the sample subjected to analysis was necessarily identical to that product which was the subject of the delivery documented by the invoice. Accordingly the evidence submitted falls short of the standard required to establish that the product sold was identical to that according to the subject-matter of the operative claims.

[3.8] Accordingly the allegation of lack of novelty due to public prior use of the product identified as “DKX412CS” has not been proved.

[3.9] Consequently it is concluded that the subject-matter of the patent-in suit meets the requirements of A 54.

To read the whole decision, please click here.