This appeal against the revocation of the opposed patent contains an interesting passage on an alleged prior use.
The Board considered that this prior use was established beyond all reasonable doubt although some elements of the prior use were not supported by evidence.
What has been made available, when and under which circumstances?
[2.2.1] It was not disputed by the [patent proprietor] that the washing machine with the model number WD-R100C dismantled by the respondent as documented by the set of photographs of Appendix B comprises all features of claim 1 of the patent as granted.
[2.2.2] It was also not disputed that this dismantled machine was manufactured in October 2003 as may be seen from the printed label on several of these photographs. There is however no evidence on file as to when and under what circumstances this particular dismantled machine was made available to the public. The Board considers it nevertheless improbable that this washing machine would have have been stored for at least one month by the manufacturer before being delivered to a commercial distributor only after the relevant date, taking into account that machines of this model were already commercially available at that time, as will be shown below.
[2.2.3] Document A6 is a report on a price survey for a number of consumer products conducted by the Korean National Council of Consumer Organisations. Amongst the products covered by it is the washing machine WD-R100C. According to this report the survey was conducted from 6 to 10 October 2003 to provide consumers with the exact price information for a rational decision in their purchase. It was carried out in a number of department stores located in Seoul, i.e. on the street (pages 1/2 of the translation of A6 list several shopping centres/malls, department stores etc.). Based on this (again uncontested) evidence and in view of the fact that it is indeed the purpose of a department store to have the real product in its showroom in order to allow potential buyers to get a direct impression of the product compared to that from e.g. a catalogue or an internet shopping site, the Board cannot conclude that the same washing machines WD-R100C were delivered to these distributors and were physically standing at least in some of these places for an unconditional sale to the public only at a later point in time. Absent any indication to the contrary, it is hardly conceivable that a survey, such as in A6, conducted by a consumer organisation and intended to assist consumers by demonstrating the price variations amongst specific distributors would select products which were not (yet) available on the market.
Consequently, it has to be concluded that washing machines with model number WD-R100C have been available for public sale with the distributors reported in A6 in the survey period, 6 to 10 October 2003, and thereby available within the meaning of A 54(2) to the public before the relevant date, that is 2 December 2003.
A11 confirms the conclusions drawn from A6. It contains the following statement made by the deciding body (text in square brackets added by the Board):
… it is acknowledged that the company of the defendant [the appellant in the present case] had manufactured and sold the drum-type washing machine of model name “WD-R100C” before the filing date (December 2, 2003) of the patented invention of the subject case, and there is no dispute between the two parties regarding the subject issue.
Accordingly, the [patent proprietor] in the present case agreed before the Korean Intellectual Property Tribunal that washing machines with model name WD-R100C were publicly available prior to the second priority date of the patent. The [patent proprietor] did not contest this statement.
Also the remaining evidence in A1 to A5, A7 and A8, which shows indeed some inconsistencies with respect to “release dates”, is not suitable to cast doubt on the conclusions drawn from A6 and confirmed by A11. It appears even that, as far as A1 to A5, A7 and A8 indicate dates of delivery or release (“coming out”), these dates lie clearly before the relevant date of the patent in suit, e.g. A7, a printout from the [patent proprietor’s] Customer Service web page, reports a “Coming-out date” of 11 August 2003. The [patent proprietor] as the manufacturer of the product constituting the prior use should have been able to provide convincing evidence for a later release, had this been the case.
The evidence therefore shows beyond any reasonable doubt that washing machines with the model number WD-R100C, were publicly available prior to the relevant date of the patent in suit.
[2.2.4] The Board accepts that products already on the market may be subject to design changes while keeping their model name or number. In the absence of any evidence to the contrary, the Board is however convinced that within the short period of interest, set by the manufacturing date of the dismantled washing machine in October 2003, the period in which the survey in A6 was conducted, 6 to 10 October 2003, and the relevant date of the patent in suit, 2 December 2003, a design change of the structure of the washing machine with model number WD-R100C in regard to the features defined in claim 1 of the patent in suit, which notably relate to the connection between the drive unit and the tub and hence concern a major structural element of the washing machine design, is excluded beyond all reasonable doubt.
Appendices A and A12 submitted by the [patent proprietor] to support the allegation of design changes are not suitable to cast doubt on the assumption of an unmodified structure of the machines referred to in A6 and A11 and disclosed in the photographs B. The [patent proprietor] did not establish a clear link between the content of Appendix A and the relevant features of a washing machine, let alone to features concerning the particular structures and alleged changes in the assembly of motor parts, shaft bearing and tub of the model WD-R100C. The modification pointed out by the [patent proprietor] in the photographs of A12 […] concern only the type of stator core used in the washing machine with model number WD-R100C, which has no impact at all on the mounting design of the stator to the tub rear wall. Indeed, as can be seen from the remaining photographs in A12 […], the assembly of the drive unit and the tub rear wall is in no way affected by any modification compared to the machine in Appendix B.
If it were the case, as argued by the [patent proprietor], that in the short period before the relevant date of the patent a washing machine with the same model number but different assembly of drive unit and tub rear wall was on the market and that the machine shown in Appendix B was not already on the market, which would go completely against normal practice, the [patent proprietor] as the manufacturer of such product should have clearly been in the position to provide evidence for it. The [patent proprietor] however provided no evidence to this effect.
In other words, there is no evidence on file which casts doubt on the fact that the machines WD-R100C referred to in A6 or A11 and the one of Appendix B were identical with respect to the features of claim 1.
[2.2.5] As regards the decision T 2043/07 referred to by the [patent proprietor], the Board notes that the facts underlying that decision are different from those of the present case, and further that in that case, as stated by the [patent proprietor] with regard to the applicable standard of proof, “it was immaterial which test was to be applied” and, last but not least, that the [patent proprietor] (proprietor) in the present case is not adversely affected by the application of the stricter standard of proof “beyond reasonable doubt”.
In T 1464/05 [5.3.1], also cited by the [patent proprietor], the Board concluded that although subsequent modifications of the composition cannot be excluded ..., there is no indication that the modifications would have been sufficiently significant to affect the present conclusions”. A similar conclusion was reached by the Board in the present case (see [2.2.4] above), in that no modification of (relevant) features of washing machines with the same model number (“WD-R100C”) during the critical period could be established.
[2.2.6] In summary, although for the specific washing machine dismantled by the opponent […] there is no proof on file that it was indeed available to the public prior to the relevant date of the patent in suit, notwithstanding that it is already highly unlikely that this specific machine manufactured in October 2003 remained with the manufacturer more than one month before being delivered for sale to a distributor, the evidence submitted by the opponent allows to conclude beyond any reasonable doubt that washing machines with the model number WD-R100C, being identical in structure with respect to the features defined in granted claim 1 to those disclosed in Appendix B, were publicly available prior to the relevant date of the patent in suit.
[2.3] The public prior use relating to a washing machine with model number WD-R100C as established on the basis of Appendices A6, A11 and B thus forms part of the state of the art according to A 54(2).
Novelty
[3] Since it was not contested by the [patent proprietor] that the washing machine with model number WD-R100C constituting the established public prior use, as exemplified in Appendix B, comprises all features of claim 1 of the patent in suit and since the Board finds no reason to conclude otherwise, the subject-matter of claim 1 lacks novelty (A 54(1)) and the [patent proprietor’s] main request is therefore not allowable.
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