This is the second appeal in this opposition case.
In a first decision, the Opposition Division (OD) had rejected the oppositions. Appeals were filed by opponents 1 to 4. The Board of appeal (“BoA”; decision T 1399/04) decided that with regard to the question of inventive step the decision had been taken in violation of the opponents’ right to be heard. The BoA also decided that the main request (patent as granted) fulfilled the requirements of A 123(2), A 52(4) and A 54 EPC 1973 and that its claims were entitled to the claimed priority. The case was remitted to the department of first instance for further prosecution.
In its second decision, the OD found the main request to lack inventive step. The patent was maintained on the basis of the eleventh auxiliary request. Both the patent proprietor and three of the four opponents filed appeals.
The BoA, in a different composition, finally decided that the patent was to be maintained as granted. The decision inter alia contains an interesting discussion of res judicata, ratio decidendi and more Latin stuff.
Binding effect of decision T 1399/04
[10] As set out above […], the present case constitutes the second appeal concerning the patent and the only issue to be decided with regard to the main request is inventive step.
[11] The parties disagree on whether the interpretation of document OD2 by the board in decision T 1399/04 [34] is binding on the present board or not. While [the patent proprietor] considers that the finding is res judicata and binding, [opponent 2] submits that the relevant finding in the context of novelty is not res judicata and is not binding on the present board in its assessment of inventive step.
[12] According to established jurisprudence, “res judicata” means a matter finally settled by a court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies, such a final judgement constituting an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies (Case Law, 6th edition 2010, VII.E.11.1). It follows, that the following findings of the BoA in the first appeal proceedings (cf. decision T 1399/04) are “res judicata” for the present appeal proceedings: the subject-matter of claims 1-11 as granted is entitled to the claimed priority, relates to patentable subject-matter, finds a basis in the application as originally filed, and is novel over the public prior use disclosed in document OD105 and the disclosure of documents OD2, OD8 and OD12. The interpretation of document OD2 by the board in decision T 1399/04 is consequently not “res judicata”.
[13] However, for the interpretation of document OD2 in the present appeal proceedings the provisions of A 111(2) are of relevance. Pursuant to A 111(2), if the BoA remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the BoA in so far as the facts are the same.
[14] According to the established jurisprudence of the BoA, the same binding effect applies to a subsequent appeal in respect of an earlier decision of a BoA as it applies to the department of first instance (Case Law, 6th edition 2010, VII.E.11.1). This has not changed with the introduction of new A 112a (Petition for review by the Enlarged Board of Appeal), see decision T 365/09 [2]. Accordingly, the board in the present appeal proceedings is bound by the ratio decidendi of earlier decision T 1399/04 in so far as the facts are the same.
[15] It is well established that the “ratio decidendi” of a decision under A 111(2) is the ground or the reason for making it - in other words, the point in a case which determines the outcome of the judgement (Case Law, 6th edition 2010, VII.E.11.1). The ground or reasons for making the decision that the subject-matter of claim 1 is novel over document OD2 is thus of relevance.
[16] In decision T 1399/04 [34] the board analyses document OD2 and notes:
“In the chapter titled “Discussion” on page 110S, right column, it is said that it is difficult to recommend combination therapy as the first approach to treatment for interferon naïve patients. Especially patients with a favourable clinical profile (young age, low viral load or infection with HCV genotype 2 or 3) respond equally well to interferon alone. The sentence bridging pages 110S and 111S reads as follows:“In this respect, patients with high HCV RNA levels, genotype 1, high degrees of viral genomic diversity, or histological evidence of advanced fibrosis or cirrhosis would be candidates to receive combination therapy initially.” (emphasis added by the board).”
The board then explains how it understands the sentence bridging pages 110S and 111S of document OD2, (see decision T 1399/04 [34]):
“The sentence bridging pages 110S and 111S (see above) lists several parameters of a clinical profile that would make an interferon naïve patient a candidate for receiving combination therapy initially. The first three of these parameters are separated by commas, the third and fourth parameters are separated by the word “or”. The Board concludes that the authors of document OD2 considered a patient having a high HCV RNA level, or genotype 1, or a high degree of viral genomic diversity, or histological evidence of advanced fibrosis or cirrhosis, to be a candidate for combination therapy.”
[17] Hence there can be no doubt that one of the reasons for finding the subject-matter of claim 1 to be novel over document OD2 was that this document did not disclose the patient group as defined in present claim 1 (see decision T 1399/04 [34]).
[18] Accordingly, the argument of [opponent 2] that the sentence bridging pages 110S and 111S of document OD2, when read together with the previous sentence relating to patients with a favourable clinical profile, discloses a patient group having a high HCV-RNA level and genotype 1 runs contrary to the ratio decidendi in decision T 1399/04.
[19] The board would not be bound by the ratio decidendi in decision T 1399/04 if the facts were not the same (see last sentence, point [14] above). However, document OD2 has not changed nor have the claims under consideration. The question which needs to be answered is thus whether consideration of the sentence bridging pages 110S and 111S in document OD2 in combination with the previous sentence amounts to a new fact.
[20] According to decision T 860/93 [5.1]
“[i]t is a general principle of law that the proper interpretation of any document, and more specifically any part of a document, is to be derived by having regard to the document as a whole. That principle is expressed in Latin as: Ex praecedentibus et consequentibus optima fit interpretations. [The Latinists among you will have realised that ‘interpretations’ is a typo for ‘interpretatio’] (The best interpretation is that made from what precedes and what follows).”[Opponent 2] has not advanced any indication that this principle was not followed by the board in decision T 1399/04 when arriving at the interpretation of document OD2. In fact, it can be taken from decision T 1399/04 [34] that the board took into account not only the preceding but also the following sentences of document OD2 when it arrived at its interpretation of the sentence bridging pages 110S and 111S. The present board concludes that the facts are, thus, unchanged.
[21] It follows that the argument of [opponent 2] which runs contrary to the ratio decidendi of decision T 1399/04 must be disregarded in view of the binding effect of T 1399/04 in the present appeal proceedings pursuant to A 111(2). For the purpose of the present decision the sentence bridging pages 110S and 111S of document OD2 is thus understood as disclosing a patient having either a high HCV RNA level, or a HCV genotype 1 infection, or a high degree of viral genomic diversity, or histological evidence of advanced fibrosis or cirrhosis, to be a candidate for combination therapy.
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