Tuesday, 28 May 2013

T 766/11 – Covered By The Clause

In this appeal against the rejection of an opposition Board 3.2.03 dealt with an alleged prior public use.

Claim 1 of the opposed patent read:
Control and/or regulating device for a support roller stand (2) of a continuous casting device (1) for metals, particularly for steel materials (3), wherein the support roller stand consists of several successive roller segments (8), which are respectively adjustable in regulated manner relative to one another by means of paired piston-cylinder units (13) by way of a lower frame (11) carrying the support rollers (10) and an opposite upper frame (12), for conveying, straightening and/orforimproving the internal quality and for changing the thickness of the metals, wherein on the upper frame (12) of the roller segment (8) the signals of position transmitters of the hydraulic cylinder units (13) are respectively conducted to a terminal box (21) and wherein a cable packet (23) is led from the terminal box (21) via a detachable rnedia coupling (22) to a stationary works stand (17), characterised in that for each roller segment (8) a separate axis regulator (18) with a connected valve station (26) is arranged on the stationary works stand (17) and that signals from all axis regulators (18) are respectively conducted by way of a field bus module (20) to a common memory-programmable control  (19) in a control space (25) of the continuous casting 20 device (1).
*** Translation of the German original ***

[3.1.1] The prior public use is a modernisation project of the VAI company for the continuous slab casting plant (Brammenstranggießanlage) (CSCP) of the Wuhan Iron & Steel Group Corporation (China). A copy of the agreement was filed as document O1. It is undisputed that VAI has installed a plant having the claimed features. What is disputed is whether this casting plant and in particular the positioning of the axis regulators had been made available to the public.

[3.1.2] The [opponent] pointed out that there had not been any obligation of secrecy or confidentiality concerning the continuous slab casting plant. The subject-matter of claim 1 had been made available as a consequence of the sale of the casting plant and/or a factory visit (Werksbesichtigung) during a seminar on continuous casting in China.

The agreement contains a secrecy clause (Article 15 on page 25) concerning the “know how and related technical documentation” for a period of 5 years following the conclusion of the agreement (December 21, 2000). This period overlaps the priority date of the impugned patent (November 9, 2004); thus the question of secrecy is relevant for determining whether the control systems of the CSCP belong to the prior art (A 54(2)).

The [opponent] argued that the know-how according to Article 2.3 of the agreement referred to the manufacture of the product concerned by the agreement (Vertragsprodukt), i.e. the slabs, and not to the CSCP itself.

However, the Board is of the opinion that the obligation of secrecy is not to be interpreted so narrowly, for the following reasons:

First of all, the subject-matter of the agreement is defined in Article 2 and encompasses not only the components of the CSCP but also the know-how and the technical documentation (see point 2.1 of the contract). Both are defined in point 1.22 of the contract (“Technical Documentation means the technical indices, specifications, drawings and documents (including the licensed patent and know-how) related to design, inspection, Erection, Cold Test, Commissioning, Performance Test, operation and maintenance of Contract Plant, …”) and thus concerns, as usual, information that the skilled person cannot derive from the apparent structure of the plant without further ado. Article 15 mentions that the know-how and the technical documentation are to be kept secret; this comprises at least the technical information and indications that are not apparent. The control of the individual roller segments typically are part of this.

[3.1.3] Moreover, the [opponent] referred to D23 and D24 and argued that this technology was not covered by the secrecy clause of the contract. D23 and D24 disclose “SMART” roller segments developed by VAI as well as the “ASTC” control system. According to these disclosures each roller segment has a distinct axis regulator that is connected to a master-control system located in a control room of the CSCP. D23 and D24 are scientific articles which the [opponent] has filed in order to prove that VAI had no interest in keeping the SMART segment technology and the ASTC control system secret.

It is, therefore, clear that the SMART segment and the ASTC technologies were available to the public during the five years of the secrecy obligation. However, the conclusion that the part of the subject-matter of the agreement that concerned control was not to be covered by the secrecy clause of the Article would be mere speculation. Rather, the agreement has to be interpreted according to the wording of the agreement, without referring to any further documents that are not cited in the agreement. Article 15 of the agreement, however, clearly states that the technical documentation and the know-how are to be treated as confidential, and, as explained above, this includes the control of the roller segments.

[3.1.4] The [opponent] finally referred to D22 where “know-how” was defined as follows:
“Information that enables a person to accomplish a particular task or to operate a particular device or process.”
It was of the opinion that this meant that “know-how” only concerned the operation of the CSCP, i.e. the manufacture of slabs. However, the Board is of the opinion that the “operation of the CSCP” inter alia comprised information regarding the control of the plant and was not limited to the final product. Moreover, Article 15 of the agreement expressly refers not only to know-how but also to the relevant technical documentation.

Factory visit

[3.2.1] There was a factory visit of the CSCP 3 of the Wuhan Iron & Steel Corporation during a seminar on continuous casting in Wuhan, China.

[3.2.2] The [patent proprietor] has argued that a CSCP is a very large and complex device having a many components. In view of the great number of components the Board is not persuaded that a visitor who did not know the subject-matter claimed in the impugned patent would have realized without any further explanation which structural elements, let alone the control modules disclosed in D23 and D24, were hidden behind the boxes.

[3.2.3] The [opponent] submitted that during the visit questions regarding the control of the plant could have been asked and would have been answered.

According to the case law of the Boards of appeal it is sufficient for [information] to be publicly available that there was a theoretical possibility to take note of this information. It is irrelevant whether there was any reason to search for such information or for requesting it, as well as whether a member of the public indeed did take notice of it (Case Law of the Boards of appeal, point I.C.1.8).

In T 947/99 the alleged prior public use concerned the visit of an ice-cream factory. There was no proof that a feature of the manufacturing process was explicitly explained to the visitors. This notwithstanding the Board decided that information concerning the process had nevertheless been made available to the public because
(i) the visitors were not subject to a secrecy or confidentiality obligation;
(ii) the information concerned a generally known process step; and
(iii) if a visitor had requested information on details of the manufacturing process he would have obtained the relevant piece of information (see point [10.6] of the reasons).
However, the present case differs from case T 947/99. As a matter of fact, if someone asked questions on the control of the casting plant in the course of the visit, he would not have received such information because this information was confidential according to Article 15 of the agreement.  

[3.2.4] The [opponent] has offered the testimony of Mr. S. on this issue.

The only reason for this offer of proof, however, was that Mr. S. had been present at the factory visit as an employee of the [opponent’s] (VAI’s) distribution and that he could have asked questions and received answers on behalf of VAI during the visit.

Thus the [opponent] has not made any submission concerning the proper evidence that could establish the prior public use it invokes. Also, the alleged possibility of asking questions and receiving answers corresponds to a merely hypothetical consideration of the [opponent]. The [opponent] has not asserted that questions regarding the technical construction and the mode of operation of the casting plant had indeed been asked and answered in detail.

Thus the Board found itself in a situation where it lacked a substantiated submission on behalf of the [opponent] as to what the witness could declare and why this was relevant for the technical aspects that were relevant for taking a decision in the present appeal proceedings. Moreover, the [opponent] only based its argumentation on a theoretical possibility, which, in the absence of any substantiated submission, could not establish a basis for the taking of evidence by hearing the witness.

Thus the Board has decided not to invite the witness to the oral proceedings and not to hear him.


[3.3] The sales agreement concerning the modernisation of the CSCP of the Wuhan Iron & Steel company contains a secrecy clause regarding the know-how and the technical documentation of the casting plant. The case law of the Boards of appeal has developed a narrow concept of novelty, i.e. the features of the invention have to be derived clearly, directly and unambiguously from the prior art. In the present case, for the reasons mentioned above, the secrecy clause of the agreement was not limited to the sole manufacture of slabs but also comprised technical details that typically include the controls and their arrangement.

In the course of the factory visit [the skilled person] could not realise where the control was installed and in particular whether the axis regulators were installed in the boxes that were arranged laterally. Although the participants to the factory visit were not only shown the casting plant but also had the possibility of asking questions, the details of the casting plant according to the sales agreement were covered by a secrecy agreement, which means that it is not established that a control system as defined in claim 1 was available to the public.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.