When the EPO’s BoA decision is not persuasive authority

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Case No. O2019_005 | Decision of 3 May 2021 | ‘Schnittschutzstreifen’

As reported earlier on this Blog here and here, Sanipat GmbH and Hafner AG have been litigating over certain sealing strips for e.g. shower trays, i.e. Hafner’s ISO-SET®.

In brief, Sanipat had initially asserted EP 2 405 067 B1 and CH 703 691 (see the complaint below), but EP 067 had been revoked by a Board of Appeal of the EPO while proceedings at the FPC were pending; see T 0717/20 – 3.2.03 below. However, CH 691 was still in the game.

No infringement

The operative part of the judgment is not a complete surprise anymore after the pleadings and the taking of evidence at the main hearing: Sanipat’s complaint has been dismissed for lack of infringement. The key issue was whether or not ISO-SET® comprises a cut protection strip (‘Schnittschutz-Streifen’). The cutting experiments had established that ISO-SET® could well be cut with relative ease with a knife. Even though the polyamid / aramid backing of ISO-SET® provides for some reinforcement at the ‘right’ place, this effect was not pronounced enough to convice the court: The backing could still be cut through with a cutter knife operated at a pressing force of only 4-8 Newton. Accordingly, this backing could not fulfill the function it should have according to the patent, in the court’s view.

Now, what is the backing good for, then — if not for cut protection?

The judgment holds that this is indeed a tricky question. However, Hafner only claims in its commercial documents that this aramid backing is meant to keep the sealing tight even when the silicone joint is replaced. It is not specifically claimed that the backing is meant to prevent cuts. A pretty thin line of distinction.

The Board of Appeal decision is not «persuasive authority»

The claim at stake inter alia requires an adhesion surface (‘Klebefläche’). Now, does that feature imply that the surface is equipped with an adhesive? Or does that feature read on any surface onto which an adhesive can be applied?

handicraft paper

The judgment holds that the latter understanding might well be applicable in a different context, e.g. in case of a handicraft paper. However, in case of an adhesive tape, the skilled person would not refer to the non-sticky side as an ‘adhesion surface’. Very illustrative, isn’t it?

Still, a Board of Appeal decided differently in T 717/20 — and revoked the corresponding European patent based on that different claim construction:

The FPC took note of that decision, but was not convinced of its reasoning. Even though Board of Appeal decisions are persuasive authority in some cases, this is not necessarily the case. In the specific claim construction issue at stake, the judgment holds that T 717/20 was not persuasive (i.e. no authority).

Novelty and non-obviousness

The decision holds that CH 691 C1 (after the second partial waiver) is novel over Wetzel 2010, Wetzel 2006, EP 2 071 091 A2, DE 299 08 603 U1 and JPH 09 125 560.

To avoid confusion: Note that the publications of the partial waiver of 2016 and 2019 both have the same Inid code (11), i.e. CH 703 691 C1. This is wrong. The second partial waiver should have been published as C3, actually.

Defendant’s obviousness attacks were based on various alternative pieces of ‘closest’ prior art, i.e. DE 10 2007 043 593 A1, EP 1 038 485 A2, DE 10 2007 010 997 A1, EP 1 891 877 A2, Wetzel 2010 and Wetzel 2006. None of these attacks was successful. I do not believe that the detailed discussion of (non-)obviousness is of broader interest — with two exceptions:

First, the judgment refers to the secondary indicator of a (long-felt) need in support of a finding of non-obviousness, similar to the EPO Guidelines, G VII 10.3. Interestingly, a time of (only) four years is held to be indicative of a (long-felt) need.

Secondly, the FPC defined the objective technical problem more ambitious than the Board of Appeal. Since it had not been pleaded that a certain effect would not occur over the whole scope claimed, the judgment holds that it is to be accepted that the effect (which is a matter of fact) actually occurs.

Claim construction, revisited

Claim construction is one of my favourites, and it is always highly interesting to see how courts deal with it. The most general remarks on claim construction in ¶ 27 (first paragraph) of the judgment refer to O2019_003, ¶ 22 — reciting exactly the same wording (emphasis added):

If the patent specification does not define a term differently, the usual understanding in the relevant technical field is to be assumed.

However, when this concept is being applied to a specific term used in the claim, i.e. adhesive surface (‘Klebefläche’) in ¶ 29 on the very next page, a somewhat different standard is apparently applied:

The usual understanding in the relevant technical field must be taken as a basis, and then it must be examined whether the patent uses the term differently.

Even though the fn again refers to O2019_003 (r. 22), this is not exactly what had been held in that decision: A patent may well use a term differently than usual in the relevant technical field, without actually defining it differently.

So, is it sufficient to just use a term unconventionally in the specification for it to be construed in deviation from the usual understanding? And, if so, which kind of use does it need? Maybe, we will catch a further glimpse on that issue from a judgment in case O2020_001 soon.

No appeal has been filed; the decision is final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_005 | Decision of 3 May 2021

Sanipat GmbH
./.
Hafner AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Alfred KÖPF

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Andri HESS (Homburger)
    • Julian SCHWALLER (Homburger)
    • Dr. Bruno MEYER (PRINS), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Michael RITSCHER (MLL)
    • Michelle AMMANN (MLL)
    • Silvan LATSCHA (LS Partner), assisting in patent matters

DECISION IN FULL

COMPLAINT AS FILED

T 717/20 (EPO)

EP 2 405 067 B1

CH 703 691

Partial waiver of 2019:

Partial waiver of 2016:

Initially granted:

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How to deal with an unclear feature in terms of infringement?

Case No. O2019_005 | Hearing of 17 March 2021

Reading time: 6 minutes
Hafner’s logo

As reported on this Blog here, Sanipat GmbH and Hafner AG are litigating over certain sealing strips for e.g. shower trays, i.e. Hafner’s ISO-SET®:

Hafner’s website

Sanipat had initially asserted EP 2 405 067 B1 and CH 703 691 (see the complaint below), but EP 067 has meanwhile been revoked by a Board of Appeal of the EPO; see T 0717/20 – 3.2.03 below. However, CH 691 is still in the game, and this is where it gets interesting.

Before EP 067 was revoked at the EPO, the judge-rapporteur’s expert opinion had held that EP 067 was valid. I understood from the pleadings that this was essentially due to a different interpretation of the feature ‘Klebefläche’ (adhesion surface). The Board of Appeal held that any surface that can be used for adhesion purposes reads on that feature:

But it appears that the expert opinion concluded that ‘Klebefläche’ implies an adhesive property of that surface. Accordingly, the expert opinion held that EP 067 was valid. This does not matter anymore for EP 067 itself, in view of the EPO’s revocation decision. But the same claim construction issue arises with respect to CH 691. It will be interesting to see how this turns out in the final judgement.

Notably, even though the FPC had requested accelerated appeal proccedings at the EPO, which request was granted, the FPC still followed its own timeline and moved forward with commissioning of the expert opinion.

Which is good, not only because of the second patent-in-suit!

In view of the (maybe, unexpected) claim construction in the judge-rapporteur’s expert opinion, Hafner presented further lines of attack against CH 691. However, these new lines of attack have not been admitted into the proceedings, as requested by Sanipat during the hearing.

On the infringement side, the parties disagree on the correct interpretation of cut protection strip (‘Schnittschutz-Streifen’). This is what the inspection in accordance with Art. 181, 182 CPC was all about. The cutting experiments showed that ISO-SET® could well be cut with relative ease with a knife. Still, ISO-SET® has an aramid backing in the area of the joint to be sealed. The experiment showed that this backing increased the necessary force to cut through the strip about fivefold.

But is that all that is needed to be cut protective?

A reference product (in my understanding, according to the patent in suit beyond dispute) is Flexzarge® Schnittschutz® of GABAG. This product has a metal backing that could not be cut through with a knife.

Hafner argued that the inspection clearly showed that ISO-SET had no cut protection strip; the feature implied that cutting had to be prevented (completely). On the other hand, Sanipat argues that ISO-SET has improved protection against accidential cutting due to the aramid backing, and that Hafner itself claimed that this aramid backing is meant to keep the sealing tight even when the silicone joint is replaced.

Finally, Hafner made an interesting argument on the consequences of unclarity. With reference to Heinrich (PatG 51, N 20), Hafner argued that an unclear claim has no scope at all. But even if one would find this too harsh of a consequence, unclarity should be dealt with in a similar way as in contract law, i.e. in dubio contra stipulatorem (133 III 118, ¶ 2). In Hafner’s view, this should be the case in patent matters a forteriori, since the defendant did not have a chance to proof-read (and accept) the ‘contract’ beforehand.

I could not stop thinking about this over the weekend.

Sure, a patentee has to bear the consequences of an unclear feature in the assessement of validity, simply because an «unclear term cannot be used to distinguish the invention from the prior art» (EPO Guidelines, G VI, 1.); an unclear feature is thus being construed (very) broadly in examination and validity later on. But when a claim is held valid despite the unclarity, can the interpretation of that feature then be any different in terms of infringement?

In O2013_008, the FPC applied the ‘broadest interpretation’ approach in the assessment of infringement of a claim  («Da dem Anspruch immer die breiteste Auslegung gegeben werden muss, […]»; see ¶ 4.2, p. 22, last paragraph, emphasis added). Later decisions have frequently referred to this ever since, but with the explanation that such a broad interpretation must not impair the intended functioning of the feature in the context of the invention; see e.g. O2019_003 (¶ 22).

I am not aware of any decision re validity where mercy had been given to an unclear feature. And I cannot readily see that two different standards of claim construction can be applied in the assessment of validity and infringement, in particular not before one and the same court.  However, in the German bifurcated system, the Federal Supreme Court had apparently some sympathy for a narrowest possible claim construction in an infringement case in view of an unclear feature; X ZR 95/05:

It will be interesting to see how the FPC deals with this argument.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_005 | Hearing of 17 March 2021

Sanipat GmbH
./.
Hafner AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Alfred KÖPF

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Lukas ABEGG

Representative(s) of Sanipat:

    • Dr. Andri HESS (Homburger)
    • Dr. Bruno Meyer (prins), assisting in patent matters

Representative(s) of Hafner:

    • Dr. Michael RITSCHER (MLL)
    • Michelle AMMANN (MLL)
    • Silvan LATSCHA (L&S), assisting in patent matters

ANNOUNCEMENT

COMPLAINT AS FILED

EP 2 405 067 B1

T 0717/20 – 3.2.03

CH 703 691 C1

Second partial surrender, published on 30 April 2019:

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