In this decision on a Nespresso ® patent – which has excited Tufty the cat some time ago (see here) – Board 3.2.04 in a five-man composition inter alia had to deal with a whole bunch of partiality objections raised by the four opponents after a somewhat chaotic series of oral proceedings (OPs) before the Opposition Division (OD). To make a long story short, OPs had been summoned for September 8, 2011, but the OD decided to continue on September 9, although several opponents objected to this and were absent on that day. However, at the beginning of the OPs on September 9, the OD made only one statement and then decided to adjourn the OPs after the patent proprietor had requested it to do so. The OPs were resumed on April 18, 2012.
The decision also contains an interesting paragraph on a statement that the EPO spokesman made after the decision of the OD.
*** Translation of the French original ***
[2.1] Opponents 1 and 3 have essentially required [the Board] to set aside the impugned decision and to remit the case to the first instance in order for it to be dealt with by an OD in a different composition. They have alleged a series of procedural violations which they considered to be substantial, in particular a bias of the OD resulting from seven particular points seen in combination and which were presented both in writing and orally. Moreover, the continuation of the opposition proceedings after an appeal had been filed constituted a substantial procedural violation in itself.
[2.2] The first point intended to demonstrate the bias of the OD concerns the fact that the date for OPs was fixed three months after the end of the time limit for filing an opposition (and, more generally, the alleged acceleration and deceleration of the proceedings in line with the instructions of the patent proprietor). When this time limit had expired on February 12, 2011, four oppositions had been filed by opponents 1 to 4. The patent proprietor has commented on these oppositions on March 29, has referred to a series of infringement proceedings and has asked for an acceleration of the proceedings, i.e. for OPs to be held before September 23, 2011, because a hearing by a Dutch tribunal was to be held on that day. The OD has allowed this request.
In view of the fact that the patent proprietor has given reasons for his request for accelerated proceedings by providing evidence that the national infringement proceedings had indeed been opened (incidentally, their existence has not been contested by the opponents), the Board cannot see why it would have been wrong to summon [the parties] to OPs to be held on September 8, 2011. The assertion according to which the OD submitted to the instructions of the patent proprietor and has accelerated and then slowed down the proceedings has not been proven. First, the acts of the patent proprietor do not attest that it undertook efforts in order to slow down the proceedings. It has to be noted that the efforts undertaken in order to stay the national proceedings (and not the opposition proceedings) until there was a final result of the opposition proceedings are in line with the request for acceleration. The patent proprietor has only once requested a stay of the proceedings, during the OPs held on September 9, 2011, under very special circumstances where the adjournment of the proceedings was indeed the only correct procedural solution, even if this fact has only been acknowledged (reconnu) at a later time (see below). Moreover, the patent proprietor has consistently requested accelerated proceedings.
On the other hand, the fact that the OD has not allowed the request of opponent 1 for a stay of the proceedings and has not cancelled the OPs foreseen on April 18, 2012, after opponent 1 had filed the statement of grounds in appeal case T 112/12 does not justify the suspicion of partiality on behalf of the OD. As explained below, this appeal had no suspensive effect. The letter of opponent 1 dated April 13, 2012, i.e. five days before the OPs to which [the parties] had already been summoned, only informed the OD on the filing of the statement of grounds but did not draw the attention of the OD to any new fact that could have an impact on the OPs, such as the stay of national proceedings. Under these circumstances, the OD was not entitled to deal with the appeal and the arguments and facts presented together with the statement of grounds in appeal case T 111/12 were not part of the opposition proceedings. Moreover, a stay of national proceedings is no good reason for staying the opposition proceedings before the EPO. Quite to the contrary, what is desirable is for the proceedings to come to an end quickly, and all the more so because the OPs of April 18, 2012, were only the continuation of OPs that had been interrupted.
To sum up, the OD has conducted the proceedings in a way that is not only formally lawful but also reasonable.
[2.3] The second point which [the opponents] invoke concerns the assertion according to which the opponents had been limited in their liberty of expression during the OPs of September 23, 2011, by the chairman of the OD who had told the parties that they had to stick to presenting their own arguments and should not develop arguments that had already been presented by the other parties. This objection is difficult to evaluate because the minutes do not mention this instruction and the parties do not agree with each other as to whether such an instruction has indeed been given. According to the patent proprietor, the chairman of the OD has simply expressed the fact that it was not useful to repeat what the parties had presented in writing because the members of the division were fully aware of [those arguments].
Instructions of that kind on behalf of a chairman of the OD are not uncommon in such a situation and appear to be justified in view of the number of parties and the complexity of the file.
What is decisive in the eyes of the Board […] is that the minutes do not comprise any indication that the opponents had had the impression of being unable to present their arguments and had protested, for instance by requesting this fact to be mentioned in the minutes. Quite to the contrary, the fact that the OPs could not be terminated on the first day makes the Board think that the parties have not been limited in the way in which they presented their case.
As a consequence, the Board comes to the conclusion that it has not been established that the opponents had been limited in the way in which they presented their case.
[2.4] The third point which [the opponents] invoke concerns the question of whether the OD has helped the patent proprietor in drafting new claims in the course of the OPs. According to the minutes […] the OD has concluded that certain amendments did not extend the [claimed] subject-matter beyond the contents of the application as filed, but has identified an essential feature that was not found in claim 1 anymore. Based on this opponent 1 concludes that the division had suggested a particular wording of the claim.
First of all, it has to be noted that in a situation where a great number of amendments has been discussed as to [their compliance with] A 123(2) it is absolutely normal [for the OD] to state which are the amendments that do not comply with the requirements of this article. Otherwise, the patent proprietor would have to file a great number of requests in advance in order to consider all possible combinations.
Moreover, apparently the patent proprietor has not drafted a new claim after this indication. [The Board] has the impression that then auxiliary request 2, which had been on file before, was discussed. It is true that new auxiliary requests have been filed during the second OPs held on April 18, 2012. The Board cannot see how the OD could have helped the patent proprietor in drafting these claims either. It has simply announced during the OPs held on September 9, 2011, that it believed that the claim to priority was not valid. Even if the OPs of September 8, 2011, had been correctly adjourned, this conclusion would have had to be communicated to the parties in writing, well before the continuation of the proceedings on April 18, 2012. Consequently the patent proprietor had not been favoured by the division as a consequence of having already been informed on September 9, 2011.
[2.5] The fourth point which [the opponents] invoke was the fact that one of the members of the OD (other than its chairman) had participated in the grant of a patent for a divisional application of the impugned patent (EP 2181629). The communication concerning the grant of this patent has been issued on July 29, 2011, shortly after the summons to OPs and before the OPs to be held on September 8. The opponents express the opinion that the first examiner of the OD at least has shown partiality, by granting a patent for a divisional application without waiting for the decision regarding the prior patent, although he was aware of the objections raised against the prior patent.
In this respect one has to consider that it is admissible for a member of an Examining Division (ED) to participate in opposition proceedings concerning the same patent, provided that he does not chair the OD, see A 19(2), and the opponents have acknowledged this fact. This regulation differs from the one applicable to members of the Boards of appeal, A 24(1). In view of the fact that an examiner who has participated in grant proceedings for a patent may, under the provisions of the EPC, be member of the OD and decide on the validity of the same patent, it can hardly be criticised that a member of an OD has participated in the examination of another patent, even if the latter is related (apparenté). Such participation cannot justify that the member be excluded or suspected of partiality. Considering the fact that the examination file wrappers are open to public inspection, an examiner who participates in the examination of a divisional application cannot be said to be in possession of any particular piece of information that is not available to everyone and which could somehow justify any bias whatsoever.
The assertion of opponents 1 and 3 according to which the first examiner has proven biased is based on the fact that they consider that the examiner ought not take a decision regarding a divisional application before the outcome of the opposition against the prior patent on which it is based is known, but that he should above all take it into account when deciding the fate of the divisional application. In this respect [the Board] wishes to remind [the opponents of the fact] that the decision to grant a patent is taken by the ED and not by the first examiner alone. The Board acknowledges that a way of proceeding as suggested by the opponents appears to be, as such, perfectly reasonable and perhaps even preferable if the conditions and the organization of the treatment of the files by the ED allow to [proceed in that way]. However, to require the ED to mandatorily wait for the outcome of another case that is dealt with by another division, even if the file is related, would jeopardise the independence of the ED. This makes it very clear that the decision of the examiner to proceed with the divisional application cannot be considered as a sure sign of partiality.
[2.6] The fifth point concerns the continuation of the OPs on September 9, 2011, although the summons only mentioned September 8, and the opponents 1 and 3 had expressed their disagreement. This very Board (in a different composition) has decided in another case (T 2534/10) that OPs could not be continued the day after without there having been summons respecting the minimum time limit of two months (R 115). Thus the continuation of the OPs the day after constitutes a procedural violation, irrespective of whether the opponents 1 and 3 had protested against this decision or not. In order to continue the proceedings on September 9, an explicit agreement of all the parties would have been required. The above-mentioned decision of the Board has also made clear that a remittal was necessary only if this error had had an impact on the final decision, and has ordered the OD to resume the proceedings, but only from the point at which the error had occurred. According to this decision, the proceedings had to be remitted only for resuming the procedural acts that had been made on the second day, for which there had not been summons.
This notwithstanding, the Board wishes to remind [the opponents] that decision T 2534/10 has been taken on April 23, 2012, and that the reasons for the decision have been notified on July 31, 2012, i.e. after the OPs held on September 9, 2011. The OD was not necessarily aware of the fact that it committed a procedural violation, even if the opponents had invoked such an argument. It follows that the behaviour of the OD cannot be considered to have been biased for this reason. [The Board] also has to remind [the opponents] that their arguments regarding a possible procedural violation, although they had been raised at once, could only have been considered during an interruption of the OPs, i.e. in the evening of September 8, during the night from September 8 to September 9 or before the opening of the OPs on the next day. Under these circumstances, the fact that the OD finally acceded to the requests of the opponents without any excessive delays and adjourned the OPs, as explained above, cannot establish a bias of the OD.
According to the minutes, the OPs of September 9 have been opened and the OD has announced that the priority (D1) could not be validly claimed because of the feature “characteristic position of the axis in the housing”. Then the patent proprietor requested an adjournment of the OPs, which has been granted. The OPs were resumed on April 18, 2012, after summons in due form and respecting the time limits had been issued. Assuming the minutes to be correct, no procedural act involving the parties has taken place on September 9. The conclusion regarding the deliberation of the OD could also have been notified in writing. This decision was not contrary to the requests (pretentions) of the opponents either because the OD has decided in their favour. The parties have been informed of this decision both through the communication of the minutes and by the chairman of the OD who has repeated the announcement of the decision as soon as the OPs of April 18 were opened. Even if the proceedings had not been continued on September 9, the outcome of the deliberation of the OD would, as usual, have been communicated [to the parties] by sending the minutes or together with the summons to the new OPs. In other words, the proceedings would have been essentially the same if the OD had adjourned the OPs in the evening of September 8, 2011, without continuing them on the next day. Opponent 1 has admitted that the continuation of the proceedings on September 9 had not adversely affected it, but it found strange that the proceedings had been continued despite the protests of two of the opponents and adjourned at once at the request of the patent proprietor. The opponents 1 and 3 thought that this again showed the bias of the OD. However, by adjourning the OPs the OD has also decided in favour of the requests of the opponents 1 and 3 without any excessive delay and has satisfied the procedural requirements by summoning to new OPs respecting the time limit laid down in R 115.
[2.7] The sixth point concerns the contents of the minutes of the OPs of September 8 and, more particularly, of September 9. In particular, based on the testimony of opponent 2, opponent 3 has pointed out that the patent proprietor had filed and then withdrawn a request during the OPs of September 9, without this having been mentioned in the minutes. Opponents 1 and 3, which were absent on September 9, therefore, wonder what has really happened on that day. As a matter of fact, some parties have requested a correction of the minutes: the patent proprietor in its letters dated November 14 and December 14, opponent 2 in its letter dated December 1, and opponent 3 in its letter dated November 9, 2011. According to the opponents, on September 9, the patent proprietor had filed an auxiliary request 9. The patent proprietor has contested this allegation. The OD has refused to correct the minutes and has justified its position in a letter dated January 10, 2012. In view of these contradictory statements, the Board is unable to decide whether the minutes are indeed defective or incomplete. The subsequent proceedings at least appear not to imply this and the way in which the OPs of April 18, 2012, took place also appears to be coherent with the events as recorded in the minutes of September 8-9, 2011. It follows that the Board has no objective reason to conclude that the events of September 9 differ from what is recorded in the minutes.
[2.8] The seventh point concerns a declaration on behalf of the press relations department (service de presse) of the EPO, which has been published in different media and languages after the OPs had been terminated. On April 19, 2012, the Reuters agency, for instance, has published an article containing the following text:
“The EPO confirmed it has upheld a Nestle patent issued in 2010 concerning the way Nespresso capsules fit its machines, with minor modifications, spokesman Rainer Osterwalder said, adding the ruling could be appealed.
“The patent may stand but in an amended form”, Osterwalder said. “The essential part of the invention has not been touched by the limitations.”
Obviously, the EPO is not entitled to issue speculations on what constitutes the essential part of the invention. But even letting aside the question of whether the press relations department has been correctly cited, such a declaration obviously is to be imputed (reste le fait) to the press relations department and not to the OD. To deduce any bias whatsoever of the OD during the proceedings from a declaration that another department of the EPO has made after the closing of the OPs would presuppose that this declaration has been issued by the OD itself, which has not been confirmed.
[2.9] Opponents 1 and 3 have pointed out during the OPs before the Board of appeal that even if the different points mentioned, when considered separately, would not justify a bias on behalf of the OD, they nevertheless showed, when considered together, that the patent proprietor had been systematically favoured.
Objectively, the OD has made every effort to deal quickly with a very complicated case. Its desire to continue the OPs on September 9 was wrong, but it has renounced, either because it realised its error or because a corresponding request had been filed by the patent proprietor. The adjournment of the OPs was a legal necessity and corresponded to what opponents 1 and 3 had requested on the previous evening. It is regrettable that a badly drafted press release had been issued after the OPs, but it cannot be imputed to the OD. As the outcome of opposition and appeal proceeding hardly ever satisfies all parties, it is all the more important to convince the parties that they have been treated in an impartial manner.
This being said, according to the case law of the EPO, it is not sufficient for establishing a bias that one of the parties may have a subjective impression [of partiality], but one has to include an objective observer (see T 190/03  and T 281/03 ). Even though the Board considers that the reasons invoked [by the opponents], when considered together, do not objectively establish a bias, it regrets that two of the opponents have had this impression.
[2.10] It follows that the Board cannot objectively establish any bias in the behaviour of the OD or any substantial procedural violation. In view of the arguments filed, the request for a remittal is unfounded.
[2.11] During the written proceedings, but not during the OPs, opponent 3 has submitted that the impugned decision was insufficiently reasoned. It refers in particular to page 35 of the decision, where [the OD] allegedly assessed the existence of an inventive step without defining the problem on which the invention was based. This appears to be wrong because the problem to be solved in view of D7 is defined on page 34. The OD then summarises the arguments of the opponents and explains the differences with respect to the prior art. It is only then that the division notes that the person skilled in the field of D7 would not have combined with asymmetric capsules. Therefore, the Board cannot see in which respect the reasoning of this decision is incomplete or missing. That the opponent did not find this reasoning persuasive is another matter. It follows that the ground invoked [by opponent 3] cannot justify a remittal either.
[2.12] Finally, opponent 1 considered that the continuation of the OPs in April 2012 constituted a substantial procedural violation because on January 12, 2012, it had filed an appeal against the communication of the OD dated January 10, 2012. In this communication the OD had refused to modify the minutes (see point [2.7] above) and presented a summary of the OPs of September 9. Moreover, the OD had announced that the proceedings were to be continued and that there would be summons to new OPs. Before that, opponent 1 had requested, in letters dated December 1 and 8, 2011, that the proceedings would be resumed before an OD in different composition, that the minutes be corrected and that [the OD] would at least issue an appealable decision. Opponent 1 considers the communication dated January 10 to constitute an intermediate decision by which the division dismissed its requests, or at least a refusal to issue an appealable decision. According to [opponent 1], the appeal filed on January 12 (T 112/12) should have led to a stay of the proceedings in any case. Consequently, the continuation of the proceedings constituted a substantial procedural violation.
[2.13] As appeal T 112/12 has been withdrawn, the Board does not have to consider the question whether appeal T 112/12 may still have potential legal effects that can be examined within the framework of another appeal. Thus the Board will limit itself to commenting on the suspensive effect of the appeal as defined in A 106(1), second sentence.
It follows from the fact that A 106(1) contains, side by side, two sentences one of which defines decisions that can be appealed, and the other what the effect of an appeal is, that this suspensive effect only applies to appeals as defined in the first sentence, i.e. appeals filed against the decisions listed in the first sentence, which comprise decisions of the OD. For these decisions A 106(2) stipulates that only a decision that terminates proceedings as regards one of the parties can be appealed, unless the decision allows a separate appeal. The communication of the OD dated January 10, 2012, has not terminated proceedings, nor did it mention the possibility of a separate appeal. The question whether it is possible to file an appeal outside the conditions laid down in A 106 is irrelevant, because the appeal T 112/12, for which the question could have arisen, has been withdrawn. In any case, for such an appeal A 106 does not provide any suspensive effect. According to the spirit of A 106 the suspensive effect concerns decisions that terminate proceedings before an instance in order to avoid that the impugned decision might have legal effects (first sentence of A 106(2)), or, alternatively, it concerns decisions for which the instance that makes the decision can itself provide the possibility of filing an appeal (second sentence of A 106(2)). This second sentence clearly stipulates that the instance that makes the decision remains in charge (maître) of the proceedings until it takes a decision that terminates these proceedings or allows a separate appeal. Otherwise, the parties would be free to hinder the competent department from dealing with the files in an efficient way. According to A 106, in such a procedural situation, the OD has to take a decision on whether or not it will allow a separate appeal. The parties are not entitled to this option. If, as in the present case, the OD has not expressly allowed a separate appeal, and a party files an appeal, then the OD is entitled to note that this appeal does not satisfy any of the conditions of A 106(2), and in particular, of the conditions of the second sentence of this provision, because its decision did not offer the possibility of a separate appeal, and to pursue the proceedings. If it was not entitled to do so, then the purpose of A 106, which is to allow the decision-making instance to bring the proceedings to an end, could not be reached.
However, the purpose of the limitation of the possibility to file an appeal to decisions which terminate proceedings as regards one of the parties and decisions that allow a separate appeal would be circumvented if any appeal against any procedural act made during examination or during an opposition had a suspensive effect. The Board notes that if an appeal concerns a case that is not foreseen by A 106(1) and (2) (that is to say, an appeal against a procedural act that is not mentioned in A 106(1) and (2), or a decision of the OD that does not allow a separate appeal), this appeal does not have a suspensive effect irrespective of whether the appeal is admissible (recevable) or not. The Board wishes to emphasise that this finding is not in contradiction with decision J 28/03, because decision J 28/03 obviously has not considered the procedural situation from which the question that is presently before the Board has arisen.
[2.14] In the present case [the opponents] cannot invoke any suspensive effect irrespective of whether appeal T 112/12 is admissible or not. This is not an appeal against one of the decisions mentioned in A 106 (1) and (2), for which [the EPC] provides a suspensive effect. Thus the OD was entitled to note this fact and to exercise its discretionary power such as to pursue the proceedings. The Board does not see how the decision to pursue the proceedings can be seen to be based on an erroneous assessment. Therefore, opponent 1’s request for a remittal of the present case cannot be allowed. Its request to refer this question to the Enlarged Board of appeal has been withdrawn during the OPs before the Board. Incidentally, this request could not have been granted because the decision of the Board is directly based on the interpretation of the EPC by the Board and because the Board is not aware of any divergent decision on that topic.
[2.15] As the case is not remitted, it would not make sense to decide on the composition of the OD.
Finally the patent was revoked because the request on file did not comply with the requirements of A 123(2).
Having had a glimpse of the courtroom atmosphere in this case, I am sure you will find Christmas dinner with aunt Aglaé relatively enjoyable.
Should you wish to download the whole decision, just click here.
The file wrapper can be found here.