Saturday, 2 October 2010

T 305/08 – When Third Parties Intervene

This case is interesting because there were two interventions the admissibility of which was contested by the patent proprietor. The case offers a good opportunity for getting more familiar with A 105 and its implementing rules: there were all sorts of lawsuits, but not all of them can trigger interventions.

Following the rejection of the opposition (on the grounds of A 100(a) and (b) only) on December 4, 2007, the opponent, Inventio AG, filed an appeal.

Then, on February 22, 2008, Schindler SA (hereafter “Opponent 2”) filed an intervention based on an infringement suit lodged by the patent proprietor against it in the Zaragoza Mercantile Court bearing a date of 23 November 2007. In support of its arguments, Opponent 2 filed an unsigned copy of said infringement suit, together with a translation thereof into English. Opponent 2 raised objections under Article 100(a), (b) and (c) EPC 1973.

On March 15, 2008, a further intervention under Article 105 EPC was filed by Schindler Aufzüge und Fahrtreppen GmbH (hereafter “opponent 3”), including objections under Article 100(a), (b) and (c) EPC 1973. The intervention was filed with respect to a request for an interlocutory injunction in respect of infringement lodged at the Landgericht Düsseldorf, against opponent 3, bearing a date of 10 January 2008. A copy of the request for an interlocutory injunction was filed.

The patent proprietor requested that the interventions also be dismissed as being inadmissible. In support of its arguments, it filed the following documents:
  • OT1: Nullity lawsuit filed in Milan on 30 November 2006 by inter alia opponent 2 against the patent proprietor) + OT1a: translation of OT1;
  • OT2: Order from Zaragoza Commercial Court dated 21 September 2007 in respect of “Preliminary Findings” regarding a complaint filed by the patent proprietor against opponent 2 + OT2a: Translation of OT2;
  • OT3: Nullity lawsuit dated 13 November 2007 filed by opponent 2 against Otis Elevator Company + OT3a: Translation of OT3;
  • OT4: “Financial Statements and Corporate Governance 2007”, Section 8, Schindler Holdings Ltd.;
  • OT5: Letter dated 4 August 2008 to Landgericht Düsseldorf regarding a request for costs.

In a letter dated September 15, 2009, the Landgericht Düsseldorf requested the Board to accelerate proceedings in light of an ongoing patent infringement lawsuit concerning the German part of European patent number 1 140 689. The Board informed the parties that it would accede to the request of the Landgericht.

Here is the part of the decision dealing with the admissibility of the interventions:

[1.1] The intervention by opponent 2 was filed on 22 February 2008. This had annexed thereto an unsigned copy of the infringement suit dated 23 November 2007 together with an English translation thereof.

[1.2] The three-month time limit in R 89(1) for filing the notice of intervention is met, only if it is proven that proceedings had been instituted in accordance with A 105(1).

[1.2.1] The date of drafting of the infringement lawsuit in Zaragoza dated 23 November 2007 is at first sight the earliest date on which the lawsuit could possibly have been filed, unless the lawsuit had been post-dated. The subsequent filing of the intervention on 22 February 2008 and payment of the fee on the same day were thus within three months of, seemingly, the earliest possible date.

[1.2.2] Although an unsigned copy and translation alone provided insufficient evidence for proving the date of institution of proceedings, or indeed whether proceedings were instituted at all, opponent 2 later filed evidence to that effect on 18 April 2008, in the form of E1. The [patent proprietor] did not contest that the lawsuit had indeed been filed as later proven by E1, nor that this lawsuit was indeed the lawsuit dated 23 November 2007.

[1.2.3] Since, according to R 89(2), R 76 and R 77 are also applicable to interventions, and since it is stated in R 77(2) that any deficiency which is not a deficiency under A 99(1) or R 76(2) can be remedied within a period specified, it follows that opponent 2 indeed filed E1 in good time because no period under R 77(2) had yet been set by the EPO for doing so.

[1.2.4] Although E1 was in Spanish and was not filed with a translation into one of the official languages of the EPO, it is to be noted that the Board first invited the opponent to remedy the deficiency of filing E1 in Spanish only, when issuing its communication subsequent to the summons to oral proceedings (OPs). The translation of E1 was also filed in due time (i.e. at least 20 days prior to the oral proceedings as specified in the communication), by way of the letter of 15 January 2010.

[1.3] The infringement action in Zaragoza dated 23 November 2007 was the first proceedings falling within the terms of A 105(1).

[1.3.1] A 105(1) states:
“Any third party may, in accordance with 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
(b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for ruling that he is not infringing the patent.”

[1.3.2] Contrary to the [patent proprietor’s] submissions, none of the court actions according to OT1, OT2 and OT3 is an action under A 105(1) which would have caused the three-month time limit for filing an intervention to end earlier.

[1.3.3] OT1 was a lawsuit brought by opponent 2 against the [patent proprietor], requesting inter alia nullification of the European patent number 1 140 689 […] and a declaration that the products of opponent 2 […] did not infringe this patent. However, neither of these claims constitutes proceedings under A 105(1), because the law suit is not a proceedings for infringement instituted against opponent 2 as in A 105(1)(a), nor is the lawsuit a proceedings instituted by opponent 2 “following a request of the proprietor of the patent to cease alleged infringement” as in A 105(1)(b).

[1.3.4] On page 2 of OT1a under the heading “The competition”, it is stated that the f[patent proprietor] “began a campaign of systematic aggression towards” opponent 2, and that “The feeling of the plaintiff (opponent 2) is that Otis (the [patent proprietor]) wishes to intimidate the Schindler Group companies, so as to discourage it from continuing in the production, sale and installation of systems ...”. On page 3, it is stated that “It is likely...that (the [patent proprietor]) will undertake further judicial measures”. Further a “saisie-contrefaçon” of 11 September 2006 is also mentioned “on the basis of the assumption that such elevators systems would constitute infringement of ... EP 1140689 B1 ...”. Additionally, it is stated that “in consideration of the assumed behaviour by (the [patent proprietor]) in Germany and France, the grounds subsist also to fear the now (the [patent proprietor’s]) suits in Italy on the aforementioned patent titles against (opponent 2)”.

However, none of these statements concerns a proceedings for infringement instituted against opponent 2, nor does any of these statements imply a request of the proprietor of the patent to cease alleged infringement in Italy. Instead, the statements merely show that the lawsuit of opponent 2 was an attempt to pre-empt any action of the proprietor in which it might request the ceasing of alleged infringement.

[1.3.5] As regards the fact that a “saisie-contrefaçon” (seizure procedure) in Zaragoza/Spain had been instituted earlier, it is stated in A1 (see item 2a) that this procedure does not constitute infringement proceedings.

In order to find the correct definition of infringement proceedings in the sense of A 105 reliance has to be placed on the specific national law. The [patent proprietor] provided no evidence which could lead to a contrary interpretation under Spanish national law than that given in A1.

[1.3.6] OT2 is an order regarding the findings of a seizure procedure according to a Court resolution of 29 December 2006 […] providing conclusions as to the patent of the present appeal […] stating that “we cannot determine if there exists hints of a potential violation as the information is not sufficient ...”. In accordance with Article 130 of the Spanish Patents Act […], it is evident that the procedure does not simply continue as though an infringement action has been brought, but that a new procedure must commence. In as far as concerns Article 130 of the Spanish Patents Act […] a judge must indeed order the opening of a separate file in cases where “the Judge considers that it is not presumable that the devices inspected serve to execute the violation of the patent.” The case relating to OT2 is therefore also not proceedings which correspond to A 105(1)(a) or (b). The [patent proprietor] has provided no evidence to counter the submission supported by A1 in this regard.

[1.3.7] OT3 […] is an ordinary action for a declaration of nullity brought by opponent 2 against the [patent proprietor]. Reference is made […] to an alleged opinion of the [patent proprietor] that certain lifts infringe its patents. OT3 however gives no indication that the [patent proprietor] had started an infringement proceedings against opponent 2 according to A 105(1)(a), nor that proceedings had been opened for a ruling that opponent 2 was not infringing the patent or even that the nullity suit was made following a request of the proprietor to cease alleged infringement under A 105(1)(b). Again, the [patent proprietor] has provided no evidence to the contrary.

[1.3.8] Consequently, the first action from which an intervention could have been filed was the action in Zaragoza dated 23 November 2007 in which proceedings were instituted on 29 November 2007, and the intervention was validly filed within the three-month time limit from that date.

[1.4] The proceedings instituted by the [patent proprietor] against opponent 3 in the Landgericht Düsseldorf on 10 January 2008 were the first proceedings instituted between the [patent proprietor] and opponent 3 under A 105(1). The [patent proprietor] has not disputed the evidence put forward by opponent 3 in this regard, nor has evidence concerning an earlier instituted proceedings against opponent 3 been supplied. Thus the Board finds that the intervention was validly filed within the applicable three-month time limit under R 89.

[1.5] The [patent proprietor] however argued that both opponents 2 and 3 were not a “third party” in accordance with A 105(1). The Board however finds otherwise.

[1.5.1] OT4 and OT5 were supplied as evidence that opponents 2 and 3 belonged to the same group of companies as the appellant and that therefore these allegedly supported the [patent proprietor’s] contention that neither of these parties could be seen as independent, nor a “third party” in A 105(1) EPC.

[1.5.2] OT4 indeed appears to show that opponents 2 and 3 are within the same group of companies as the appellant, but provides no information which could lead to a finding that each is not a separate legal entity.

The Board finds that the terminology “Any third party” in A 105(1) cannot be given an interpretation other than that each party must be a separate legal entity. This was mentioned in the communication sent to the parties in preparation for OPs, and the [patent proprietor] did not then contest the fact that each party was a separate legal entity, nor did it provide evidence to the contrary as will be explained below.

[1.5.3] According to the [patent proprietor], OT5, which is a request for costs drafted on behalf of the appellant in a national proceedings, allegedly demonstrates that the appellant acts as the patent department of opponent 3 which itself has no patent department, and that opponent 3 is a licensee to the appellant which further indemnifies opponent 3 in respect of actions against it by third parties holding intellectual property rights. Its representative indeed also claimed costs for representing opponent 3. However, the Board finds that this does not alter the fact that the appellant and opponent 3 are separate legal entities. Indeed it is quite common that an employee of one company may be named as a legal representative of another company in the company statutes.

[1.5.4] OT7 to OT10 do not provide any evidence which would alter the conclusion that the appellant and opponents 2 and 3 are separate legal entities. These documents merely show that a particular employee of the appellant may represent not only the appellant but also opponent 3, and can receive costs for this representation. The allegation that the appellant has no presence on the market by which it can be held liable for infringement does not alter this conclusion either.

[1.5.5] The [patent proprietor’s] allegation that allowing the interventions would be the same as allowing the appellant effectively to late-file oppositions via opponents 2 and 3 under its control, and thus introduce new evidence, is not found convincing. The Board finds no reason which should prevent opponents 2 and 3 filing new evidence when filing their interventions (see G 1/94 [13], where the Enlarged Board stated that if an intervener were prevented “from making use of all available means of attacking the patent, which he is accused of infringing, including the raising of new grounds for opposition under A 100 not relied upon by the proper opponent, (this) would run contrary to this purpose of intervention”), since they are a “third party” under A 105(1).

[1.5.6] Whilst the [patent proprietor] argued that the intention of A 105 was to allow parties who had not had a chance to file an opposition, to do so when court proceedings relating to infringement were started, the [patent proprietor] provided no evidence of this alleged intention underlying A 105. The wording of A 105 itself is quite clear in allowing “any third party” to file an intervention, and is not restricted to any third party who had not had a chance to file an opposition, it being noted that all third parties always have the possibility to file an opposition within the nine month time limit for filing an opposition.

Likewise, there is no evidence supporting the [patent proprietor’s] allegation that it would be contrary to the intention of A 105 to allow a party to arrange its company structure so that, in particular, the patent department being one company could file oppositions on behalf of the other companies.

Further, there is also no evidence that the opposition filed by opponent OI was filed on behalf of the other companies; it was filed solely in its own name. Whether the [first] opponent chooses to indemnify the other opponents for possible consequences of this is entirely outside the scope of A 105.

[1.5.7] The allegation that allowing the opponents 2 and 3 to intervene would be abusing the opposition procedure is not agreed. The fact that opponents 2 and 3 are allowed to intervene lies entirely within the sphere of responsibility of the [patent proprietor], by its choice to institute proceedings against the opponents.

[1.5.8] The argument of the [patent proprietor] that the interventions had the character of straw man oppositions in accordance with G 3/97 since they were a circumvention of the law by abuse of due process cannot be followed. In G 3/97 [4], an abuse of due process is assigned to the cases where the proprietor is represented by a straw man in order to file an opposition or where an unauthorised representative acts in the role of a professional representative before the EPO. Moreover, in as far as a straw man might be filing an opposition on behalf of a third party this was found anyway to be acceptable (see e.g. G 3/97 [3.3]).

In the present case, neither of these circumstances arises and there is no evidence showing a parallel circumstance to the use of a straw man to circumvent the law, since due process is indeed being adhered to by opponents 2 and 3 filing interventions, as this was only possible by the actions of the [patent proprietor] against them. Without such action by the [patent proprietor], the interveners would not have been able to file their oppositions at all.

Merely because the appellant was not a party which the [patent proprietor] was able to sue for infringement cannot alter this conclusion.

We shall see another aspect of this decision in a forthcoming post.

Should you wish to download the whole decision, just click here.