Busy times ahead for the Enlarged Board of Appeal (EBoA). While we are still awaiting the decision G 1/18, and only shortly after the referral re double-patenting, yet another Board referred questions to the EBoA in case T 489/14; interlocutory decision of 22 February 2019. Computer-implemented inventions (CIIs) are at stake now. The last time that the EBoA had to deal with CIIs was the finally inadmissible (yet exhaustively answered) referral by the President in G 3/08.
Now, the underlying case is EP 1 546 948 which pertains to a computer-implemented method of simulating pedestrian motion. It’s a Euro-PCT application published (without search report) as WO 2004/023347 A2; the (belated) search report had been published separately as WO 2004/023347 A3.
The application had been refused by an Examining Division (ED) already back in 2013; the ED held that the claimed subject-matter was not inventive. It’s all about how to assess computational simulations: The referring Board disagrees with the reasoning of Board 3.5.01 in T 1227/05, the reasoning of which would clearly have helped the present applicant’s case: In T 1227/05 it had been held that a computational simulation of a circuit was both technical and non-obvious, even though it had no direct physical effect.
To resolve the issue, the following questions are referred to the EBoA:
1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?
The outcome of this referral will not only affect claim drafting practice, i.e. whether claims will be drafted with and/or without some physical implementation step(s). Perhaps more importantly, an answer to Q1 in the affirmative would significantly improve the position of companies / developers that are active in the field of technical simulations and which are no longer involved in the actual physical implementation. Will their work product finally be patentable per se?
Note that Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.
The plaintiff Two-Way Media requested that, in accordance with Art. 77(1) lit. b PatA, a precise description be made of certain infrastructure and processes relating to Swisscom’s internet-based televion (IPTV) products Swisscom TV 1.0, Swisscom TV 2.0 and TV Air. Swisscom was one of the first providers worldwide of IPTV, with about 1m customers already in 2013; see here.
The patents generally relate to the communication of audio or video content over a network, such as the Internet. More specifically, certain processes and products for the provision of real-time audio and/or video communication services to a wide range of users are concerned.
The patents propose a multi-casting system with a scalable distribution architecture and a scalable control architecture that provides for superior management and administration of users who are to receive the information. In addition to the provision of real-time audio and/or video communication services to a large number of users, the operator can also provide related follow-on offerings based on the behaviour of a user who has registered and authenticated himself in advance.
Parallel proceedings elsewhere
The defendant inter alia argued that validity of the patents was doubtful, with reference to a decision of the CAFC in the U.S. and the fact, that infringement proceedings based on validations of both European Patents in Germany are stayed while nullity proceedings are pending.
However, the reasoning from the U.S. could not be applied to the present matter, and the defendant did not provide any material arguments for invalidty. The decision thus holds that invalidity has not been sufficiently substantiated.
Eine materiell-inhaltlich begründete Auseinandersetzung zur Nichtigkeit der hier massgeblichen Streitpatente wird von den Beklagten nicht vorgetragen und eine solche ist daher nicht glaubhaft gemacht.
The decision holds that the requests at least partially pertain to facts which are accessible to the plaintiff even without judicial intervention, and that it therefore is questionable whether there is a legitimate interest to that extent; Art. 59(2) lit. a CPC.
Further, the decision holds that it was not clear to what extent the current state of affairs could allow conclusions to be drawn for a possible patent infringement before May 2017. The plaintiff could and should have argued that the current system of the defendant corresponds to the system in place at the time before the expiry of the patents, or to what extent which current facts allow conclusions to be drawn about the system in place at that time.
As mentioned above, the patents in suit have already lapsed. Thus, only infringment in the past is at stake — incl. compensation for damages, and the right to information.
The decision holds that a description according to Art. 77(1) PatA indeed is possible even after a patent has lapsed.
Wenn eine Beschreibung auch dazu dienen kann, um Beweismittel zu beschaffen bzw. um die Prozessaussichten für Verletzungshandlungen während der Wirksamkeit bzw. der Gültigkeitsdauer eines Patents abzuklären […], dann muss sie grundsätzlich auch nach Erlöschen des Patents möglich sein. […] Es genügt, wenn ein der Klägerin zustehender Anspruch verletzt ist. Demnach schliesst Art. 77 PatG die Anrufung eines bloss finanziellen Anspruchs nicht aus.
However, the decision further holds that the plaintiff has to substantiate his financial claims with the request for description, but did not do so.
Allerdings ist […] der der Klägerin zustehende finanzielle Anspruch, resultierend aus einer in der Vergangenheit erfolgten Patentverletzung, zu substantiieren und glaubhaft zu machen. Zu Schaden, Widerrechtlichkeit und Kausalität eines konkreten Schadens äussert sich die Klägerin jedoch nicht; ein ihr zustehender Anspruch wurde damit nicht einmal substantiiert behauptet.
On a personal note: Isn’t that at odds with the hn and reasons of O2013_008?
How to describe software-implemented processes
The defendant argued that software-implemented processes were not accessible to sensual perception and could therefore not be the subject of a precise description within the meaning of Art. 77(1) lit. b PatA.
The FPC did not agree. Rather, everything that can be described technically in the context of an inspection is accessible to a precise description. But when the target of the description cannot be directly assessed, then it is the plaintiff’s task to to give precise instructions how to obtain specific findings so that the software-implemented processes can be concluded from such findings.
Die Klägerin hätte, um ihrer Substantiierungspflicht nachzukommen, mit ihrem Gesuch konkret angeben müssen, wie was wo genau beschrieben werden kann und soll bzw. welche angeblich gespeicherten Informationen wie angezeigt und betrachtet werden können.
The decision gives some examples of how software-implemented processes could be indirectly described, e.g. by measuring temperatures in a software-controlled manufacturing process. But how would you do that when only data is concerned, and you cannot know how the data is actually handled by the defendant? Is a description then really available? Reading between the lines of the decision, I have my doubts. The decision suggests that there may well be situations where a plaintiff just cannot meet his burden of substantiation.
Kann oder will der Antragsteller seiner diesbezüglichen Substantiierungslast nicht nachkommen, kann ihm das Gericht dies nicht abnehmen ohne die Dispositionsmaxime zu verletzen (Art. 55 Abs. 1 ZPO).
The FPC thus dismissed the request for a precise description.