Wednesday, 23 February 2011

T 2149/08 – Come In

Should you want to refresh your knowledge on the admissibility of third party interventions, this decision might be of interest to you.

The relevant facts of the case are as follows:
  • November 30, 2006 : lawsuit for ruling of non-infringement, filed by the intervening party (hereinafter referred to as “opponent OII”) at the Court in Milan, Italy, as established by document P5
  • November 14, 2007 : invalidity action filed by the intervening party, as established by document P6
  • November 23, 2007 : infringement action in Zaragoza, Spain
  • February 22, 2008 : intervention
Obviously, one of the crucial questions is whether it is the infringement action that triggers the 3 month time limit under R 89(1) or whether the non-infringement lawsuit or the invalidity action do (in which the case the intervention is belated).

[1.1] The intervention by opponent OII was filed on 22 February 2008. This had annexed thereto an unsigned copy of an infringement suit dated 23 November 2007 together with an English translation thereof. This is not in dispute.

[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 bearing a date of 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] It can be left undecided whether an unsigned copy and translation alone provide insufficient evidence for proving the date of institution of proceedings, or indeed whether proceedings were instituted at all. In the present case opponent OII later filed evidence to that effect on 18 April 2008, in the form of E1.

The [patent proprietor] also agreed that the earliest possible date of institution of proceedings was proven by E1.

[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 OII 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 is in Spanish and was not filed with a translation into one of the official languages of the EPO, the [patent proprietor] had acknowledged that E1 was evidence showing that the lawsuit had been filed at the earliest on 23 November 2007. A translation was thus not required, although translations of E1 to E3 were indeed filed by way of opponent OII’s submission of 19 November 2010, in response to the Board’s mention of this in its communication sent prior to oral proceedings (OPs).

[1.3] The infringement action in Zaragoza bearing a date of 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 the 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 P5 […], P6 […], nor the verification proceedings in Zaragoza (of which a copy was not anyway filed in the appeal procedure), 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] P5 […] is a lawsuit brought by opponent OII against the [patent proprietor], requesting inter alia nullification of the European patent […] and a declaration that the products of opponent OII […] 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 OII as in A 105(1)(a), nor is the lawsuit a proceedings instituted by opponent OII “following a request of the proprietor of the patent to cease alleged infringement” as in A 105(1)(b).

[1.3.4] Nowhere in P5 […] is there any statement indicating that the intervener had been requested to cease alleged infringement. On page 3, it is stated that
“It is likely...that (the [patent proprietor]) will undertake further judicial measures”.
Additionally on page 4, 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 OII)”.
However, none of these statements concerns a proceedings for infringement instituted against opponent OII, 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 indicate that the lawsuit of opponent OII 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 verification procedure in Zaragoza had been instituted earlier, which was not contested as such by opponent OII, the [patent proprietor] supplied no evidence which would indicate that these verification proceedings would constitute an “equivalent or even more than” a request to cease alleged infringement, as it had argued in its written submissions. This was also mentioned in the Board’s communication prior to OPs and no new evidence was supplied by the [patent proprietor] in response thereto.

[1.3.6] Instead, in its letter of 24 November 2010, the [patent proprietor] argued that the rationale of the “request” mentioned in A 105(1)(b) was to allow a party with a legitimate interest to enter the EPO proceedings and that this was so because in many countries a legitimate interest had to be shown before a lawsuit for a declaration of non-infringement could be filed. However, the [patent proprietor] has merely put this forward as an argument, without providing any evidence which would support its interpretation of the alleged intent of A 105(1)(b) when it was drafted. The Board thus sees no reason to alter its provisional opinion.

Further, the [patent proprietor’s] argument that a “request” need not be in writing and that it should merely be understood as a serious intent not to tolerate patent infringement which would result in the third party understanding that the proprietor would sue it for patent infringement, is also entirely unsupported by any evidence to that effect. Merely because a possibility, or even a likelihood, exists that a proprietor may sue a potential infringer, there is no evidence on file which would allow the Board to equate this to be a “request ... to cease alleged infringement.”

Also, the actions undertaken in other countries by the [patent proprietor] also against other companies in the same group as opponent OII do not constitute a request by the proprietor of the patent to cease alleged infringement.

[1.3.7] P6 […] relates to the lawsuit for nullity filed in Barcelona, but this however gives no indication that the [patent proprietor] had started an infringement proceedings against opponent OII according to A 105(1)(a), nor that the nullity suit is equivalent to a request for a non-infringement ruling and 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 which shows that a request to cease alleged infringement had been made.

[1.4] The [patent proprietor] argued further that opponent OII was not a “third party” in accordance with A 105(1). The Board however finds otherwise.

[1.4.1] P7 and P8 were supplied as evidence by the [patent proprietor] to demonstrate that because opponent OII belonged to the same group of companies as opponent OI, opponent OII should not be understood as independent, nor a “third party” in the terms of A 105(1).

[1.4.2] P7 indeed appears to show that opponents OI and OII are within the same group of companies, 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 also 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.

[1.4.3] P8 also adds nothing to the aforegoing, since it merely shows that the company (Inventio AG) which forms the patent department was able to claim costs for one of the subsidiaries of the holding group. The presumption that opponents OI and OII may be licensees of the patent department company which may further indemnify opponents OI and OII in respect of actions against it by third parties holding intellectual property rights, does not serve to undermine the status of opponent OI and opponent OII as being separate legal entities.

[1.4.4] The [patent proprietor’s] allegation that allowing the opponent OII to intervene was an attempt to abuse the opposition procedure is not followed by the Board. The fact that opponent OII may intervene at all lies entirely within the sphere of responsibility of the [patent proprietor], by its choice to institute proceedings against opponent OII during opposition proceedings.

[1.5] The Board thus finds, based on the evidence and arguments provided by the parties, that the intervention during opposition proceedings was admissible.

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

To have a look at the file wrapper, click here.

For a similar decision (involving the same parties), click here.

Another interesting decision on third party interventions can be found here.