R 0015/13 (Petition for review/LADYBIRD) 18-10-2013

I. The petition for review concerns the decision T 2198/10 of the Technical Board of Appeal 3.5.03 of 21 February 2013 to allow the appeal of the opponent and to revoke the petitioner's European patent No. 0885532, after the opponent had appealed against the interlocutory decision of the Opposition Division to maintain the patent in amended form. The written decision was issued on 16 April 2013. The petitioner filed the petition by fax on 14 June 2013 and paid the petition fee on the same date.

II. The petition was filed by Papst Licensing Gmbh & Co, KG, which was the patent proprietor at the time of both the decision under review and the filing of the petition, but during the petition proceedings Ladybird Innovations Oy was recorded as proprietor. The petition was filed by Dr. Mikko Väänänen who is a European Patent Attorney and the petitioner's professional representative, the inventor of the patent in suit and the managing director of Ladybird Innovations Oy. According to the petitioner's sub-authorised representative, Dr. Väänänen has over seventeen years personally invested considerable funds in the invention the subject of the patent.

III. The patent in suit was entitled "Method for call set-up and a telecommunication system". The opposition division held that claim 1 of the eighth auxiliary request before it was novel and inventive over inter alia document D1 (WO-A-94/28683) and maintained the patent on the basis of that request. The opponent (appellant in the appeal proceedings) appealed and requested revocation of the patent. The petitioner (respondent in the appeal proceedings) requested dismissal of the appeal (and thus that the patent be maintained with the claims allowed by the Opposition Division) or alternatively maintenance of the patent on the basis of one of thirteen auxiliary requests. In a preliminary opinion dated 14 September 2012 the Board of Appeal observed that D1 appeared to be more relevant for inventive step than for novelty. At the end of the oral proceedings the Board decided that the main request was novel but not inventive over document D1 and that none of the first to third auxiliary requests overcame the inventive step objection. Of the remaining requests, only the eleventh auxiliary request contained subject-matter suitable to overcome that objection and that request was admitted into the proceedings but also held not to be inventive over D1. The other auxiliary requests were held inadmissible. The petitioner's request to refer questions to the Enlarged Board, as to whether Article 113(1) EPC means a patentee must be allowed to file auxiliary requests in response to a board's preliminary opinion, was refused.

IV. By a fax dated 10 April 2013 the opponent withdrew its opposition. The petitioner then sent a letter dated 15 April 2013 addressed to both the Board of Appeal and the Enlarged Board of Appeal referring to the withdrawal of the opposition and Article 105(b)(3) EPC and continuing:

"So the Proprietor now wonders, whether the Boards of Appeal is now effecting a decision of its own motion to revoke the patent. After deliberating the Oral Proceedings a strong impression of partiality remains. This is evidenced by the alleged ground itself: if the construct from three embodiments that does not end up in the claimed invention could be used to invalidate a patent, every European Patent is invalid. This was further exemplified by the Board of Appeal violating Article 113 EPC. All the documents (16) on file showed polling from the terminal, and the Board of Appeal explicitly argued non-polling to be an equivalent choice and explicitly said that all the 16 documents were being ignored. Nobody believes the Board's arguments, as evidenced by the current legal situation of the sole appellant withdrawing.

The Boards are urged to not effect wrong decisions of their own motion. Therefore, the Proprietor requires that without an Appellant the wrong decision of the Oral Proceedings of 21 February 2013 cannot be effected. The Proprietor is not opposed to the Boards publishing their analysis per se. It is therefore suggested that the Board of Appeal publish their own attacks against the claim in a decision, but note at the end of the decision that the patent is maintained in the absence of an Appellant. This will allow every alleged infringer to solicit these grounds in their own jurisdiction, should they so choose.

It is noted that effecting this wrong decision intentionally will directly cause the Proprietor considerable financial damage. If the Boards of the Appeal continue to persecute the Proprietor by effecting wrong decisions of their own motion, a referral to the Enlarged Boards of Appeal is to be expected."

After the Board of Appeal's written decision was issued on 16 April 2013, the petitioner wrote a further letter to the Board of Appeal on 18 April 2013 in which it stated that, in view of the Enlarged Board's order in decision G 8/93, the appellant's withdrawal had ended the proceedings. It suggested that the Board should halt the publication in the Patent Bulletin of the mention of the decision and maintain the patent as amended in the Opposition Proceedings by adding the addendum "Appellant withdrew" to its decision.

The Board of Appeal replied to the petitioner's letters of 15 and 18 April 2013 in a communication dated 6 May 2013. It observed that the decision publicly announced at the end of the oral proceedings was binding and there was no legal means for the board to change its decision which had become res judicata.

V. The following is a summary of the petition, to the extent its contents were still relied on at the oral proceedings before the Enlarged Board. The petition, which was written in an emotive style, began with general comments critical of the Board of Appeal and then set out five alleged fundamental procedural violations in five sections numbered with Roman numerals and each headed with a one-sentence summary of the alleged violation and a question, both of which indicate the petitioner's opinion.

1. The Board of Appeal's written decision reveals that the Board had decided to revoke the patent regardless of facts or arguments, for whatever reason, probably because the patent owner at that time was a "patent troll" (an apparent reference to Papst Licensing GmbH & Co. KG). In doing so, the Board conducted a series of five fundamental and serious procedural violations, which were needed for fabricating the basis for the decision. The petition for review was based on the grounds of Article 1l2a(2)(c) EPC and Article 1l2a(2)(d) EPC for the time being. Additional grounds might be raised later if those were not sufficient, but only if the current petition failed to bring the stolen patent back. The petitioner took Board member partiality very seriously and could not and would not tolerate the current decision. It requested acceleration of the petition proceedings because of related proceedings in Finland.

2. The first alleged substantial procedural violation was described thus:

I Article 112a(2)(c) EPC — Violation of Article 113 EPC by insertion of subject matter in the written decision after the final decision

Q: Is it permissible for the Boards to add grounds into the written decision after the decision?

The petition referred to paragraph 2.8 on pages 14 to 15 of the Board's written decision which read:

"The respondent argued that even if for the sake of argument Dl disclosed a non-polling ("push") variant of the first embodiment (which the respondent did not accept), the skilled person would not have contemplated pushing data onto the mobile phone of the second embodiment at the priority date of the invention. For example, pushing emails to a mobile phone was used for the first time with Blackberry phones many years later.

The board however does not see that the skilled person would have had any technical difficulty at the priority data of the patent in setting up a connection to a mobile phone initiated by the network. For example, the board notes that this was done for incoming calls or text messages to a mobile phone."

The petition stated that the first of those paragraphs was discussed at the oral proceedings before the Board but that the second paragraph, which was not discussed at the oral proceedings, had been inserted by the Board after the final decision. Two statements of Mr. Hutter and Dr. Schneider said to testify to this were filed with the petition.

This insertion of material in the written decision for the first time after the final decision clearly violated Article 113(1) EPC because, if the petitioner had been aware of this ground, it would have contested it with facts to the contrary. The ground could have been proven as completely bogus. A statement of Dr. Esmael Dinan, a technical expert, was also filed with the petition and showed that this post-inserted ground was wrong as a technical fact. Phone calls and messages had been incoming to mobile phones for years before the invention, but why did the inventive feature only occur six to seven years after the priority of the patent? Clearly because it was non-obvious.

Further, the fact that the Board "does not see technical difficulty" is no indication of obviousness. There are many inventions that are not ring-fenced by technical difficulty. The Board should have considered whether the skilled person would have arrived at the invention based on the evidence, which was now of course lacking due to the procedural violation. [Emphasis in petition]

The petitioner only became aware of this ground when the written decision reached him. Therefore it was impossible to comply with Rule 106 EPC because the Board had withheld grounds from the petitioner. This fundamental procedural defect had the effect of deciding the entire case, so the defect was fundamental and needed to be rectified by the Enlarged Board of Appeal by re-opening the appeal proceedings.

3. The second alleged substantial procedural violation was described thus:

II Article 112a(2)(c) EPC — Violation of Article 113 by suppressing materially relevant subject matter

Q: Is it permissible for the Board to completely suppress Opponent's evidence, when the Respondent insists that it be taken into account?

The petitioner had emphasised the fact that the opponent itself had verified the inventiveness of the claim as all the fifteen prior art publications it produced showed polling which was the opposite alternative of "push" update.

The Board alleged that the first embodiment of Dl did "propose" a non-polling update when it clearly did not. The petitioner argued that this embodiment contained two alternatives which were unambiguously and directly derivable from Dl. If a feature is not unambiguously and directly derivable from a disclosure, it is not there. The Examining Division and the Opposition Division in this case, and the Examining Division in the case of two divisionals, had concluded the same objective fact, namely that a non-polling update is not present in Dl. These were undisputed facts.

However, the Board's written decision reveals that it excised all material and arguments relating to the other fifteen publications and refused to consider them. The written decision makes no mention of what was the key observation in the entire opposition and appeal process: that the prior art was littered with polling solutions, and the skilled person consistently chose polling when it came to configuration data updates in call setup. The statements of Mr. Hutter and Dr. Schneider also verify this fact. Mr. Hutter repeated this observation, with the consequence of the Board staying silent. During the oral proceedings there was still a bona fide assumption that the Board was deliberating this.

The petitioner only discovered after receiving the written decision that the board was actively suppressing its key argument which fell on deaf ears. This clearly violated Article 113 EPC, but it was impossible to comply with Rule 106 EPC because the board did not give any indication of how this fact would be dealt with in the decision. The right to be heard can only be established when there is a willingness to listen. In this case there was none.

The causal link between the violation and the wrong decision is also beyond any doubt, as it is clear that evidence has to be evaluated as a whole from the perspective of both sides. In essence the Board was picking evidence suitable for the opponent's case and ignoring the same evidence if it was used to prove the respondent's case. This procedural defect had the effect of deciding the entire case, so the defect was fundamental and needed to be rectified by the Enlarged Board by reopening the appeal proceedings.

4. The petition then set out three further complaints III to V which were not subsequently maintained. The heading of each of those complaints referred to both Article 112a(2)(c) and (d) EPC.

5. The petition then concluded with further general remarks as follows:

After receiving the written decision the petitioner saw that the decision had been fabricated against it in bad faith and felt it was the victim of a fraud. The petitioner would understand a strict approach but that taken by the Board had nothing to do with the EPC or the European method of evaluating obviousness. The petitioner discovered only afterwards that the Board was applying a logically impossible standard of patentability which relied on a series of Article 113 EPC violations which are such that all European patents ever issued would be invalidated. The patent system cannot credibly exist if this petition is not allowed.

The requests in the petition were to re-open the appeal proceedings with a different composition of the Board of Appeal due to the prima facie corrupt or incompetent nature of some of the Board members, to hold oral proceedings and to accelerate the petition proceedings. As the opponent had withdrawn, the patent should then be maintained in the form allowed by the opposition division.

VI. Enclosed with the petition were three signed statements.

One is from a technical expert, Dr. Esmael Dinan, who says that "to [his] best knowledge, Over-the-Air=radio configuration data updates controlling the choice of the roaming operator from the subscriber terminal appeared first in 2002-2003. It is also described in the 3GPP standard at that time. [He] gained this knowledge when [he] worked with Clearwire, the pioneering 4G company".

The other two statements are from professional representatives who attended the oral proceedings before the Board of Appeal together with Dr. Väänänen. The earlier is a statement of a Dutch and European patent attorney, Mr. Hutter, dated 5 June 2013 of which the relevant part reads:

".... 2. I was one of the European patent attorneys representing Papst Licensing GmbH & Co. KG during oral proceedings held on 21 February 2013 before the Boards of Appeal relating to appeal number T 2198/10-3.5.03. I was present during the entire oral proceedings. 3. Paragraph 2.8 of the written decision of T 2198/10 states: (The statement then reproduces the first paragraph of point 2.8 of the decision under review - see section V.2 above.)

I declare that, as I remember best, this statement was, indeed, made from the side of the respondent. 4. Paragraph 2.8 of the written decision of T 2198/10 also states: (The statement then reproduces the second paragraph of point 2.8 of the decision under review - see section V.2 above.) As I remember best, this statement was not made during the course of the oral proceedings.

5. The opponent filed in total 15 prior art documents D1-D15 in the course of the opposition and appeal proceedings. Some of these documents were Art. 54(3) documents, so only relevant from the perspective of novelty. During the oral proceedings, I put forward the fact that none of the prior art documents published before the priority date of European Patent No. 0 885 532 discloses a pushing mechanism from a network to a mobile terminal. I indicated that that should be born in mind when assessing whether Dl, page 10, lines 33-39, can be interpreted to disclose/suggest a pushing mechanism to persons skilled in the art. As I remember best, the Board of Appeal did not reply to this argument in any way." (A final paragraph 6 relates to Violation III which was not maintained at the oral proceedings on 18 October 2013.)

The last statement is that of Dr. Schneider, a German and European patent attrney, dated 12 June 2013 which is verbatim the same as Dr. Hutter's statement except that in paragraph 5 he says "Mr. Hutter who was also present as an attorney of the patentee put forward...", and he omits the last sentence of paragraph 6 in Mr. Hutter's statement which contained opinion.

VII. In a letter dated 24 July 2013, the petitioner again requested acceleration of the petition proceedings.

VIII. The Enlarged Board appointed oral proceedings on 18 October 2013. Together with the summons to those oral proceedings, the Enlarged Board sent a communication dated 1 August 2013 informing the petitioner of its provisional opinion that if, or to the extent that, the petition might be admissible, it appeared to be clearly unallowable. It also observed that the petition was written in a highly emotive style and included a large volume of derogatory language, much of which was excessive and without apparent basis in the petition. The question arose whether the petition was "in a reasoned statement" as required by Article 112a(4) EPC.

IX. The Enlarged Board received a letter dated 30 July 2013 from Papst Licensing GmbH & Co. KG in which that company dissociated itself from "unangemessene oder diffamierende Äußerungen" (inappropriate or defamatory comments) made in the petition by Dr. Väänänen.

X. In reply to its preliminary opinion the Board received a letter from a new representative of the petitioner dated 18 September 2013 who had been appointed to present its case at the oral proceedings on 18 October 2013 in place of Dr. Väänänen, in direct response to the comments made in the preliminary opinion about the emotive language used in the petition. The letter stated that Dr. Väänänen now recognized that such language has no place in EPO proceedings before the European Patent Office and wished to apologise unconditionally for any offence that language might inadvertently have caused.

The letter continued by stating that written representations would be limited to the ground set out in Article 112a(2)(c) EPC but the petitioner reserved the right to present arguments concerning other grounds at the oral proceedings should it appear necessary or expedient to do so. From the preliminary opinion, the petitioner believed Violation I of the Petition was admissible, that Rule 106 EPC was impossible to observe during the proceedings, and that left the question whether Article 113 EPC was violated as the only outstanding issue with regard to Violation I.

The letter then referred to the second paragraph in point 2.8 of the written decision (see section V.2 above) and said this contained an assertion which, as attested by the Hutter and Schneider statements, was not presented to the petitioner during the appeal proceedings and as a consequence the petitioner was not provided with an opportunity to challenge it contrary to Article 113 EPC.

The statement made in the Board of Appeal's decision might, at first sight, appear to be an "argument" that the Board is entitled to present without first having put it to the petitioner but this is not in fact the case. While the language used is couched in terms of an argument, it is clear on closer inspection that this statement is actually a factual assertion. Specifically, the Board is asserting that the skilled person would at the priority date have the necessary skills to set up a connection to a mobile phone that is initiated by the network (i.e. a so-called "push" notification). In other words, the Board is making an assertion concerning what would constitute common general knowledge at the priority date. That is quite clearly a factual matter, not a mere argumentative re-interpretation of facts that were previously presented. By making this assertion in the written decision, the Board deprived the petitioner of the opportunity to comment on its veracity during the oral proceedings or earlier during the written procedure in clear contravention of Article 113 EPC.

This assertion was key to the Board's justification for revoking the patent for a lack of inventive step based on the combination of three embodiments set out in Dl and the common general knowledge ascribed by the Board to the man skilled in the art. The issue of whether a skilled person would have been motivated to instigate push notifications at the priority date is one that had previously been considered during Finnish court proceedings as illustrated by a transcript of proceedings (enclosed with the letter of 18 September 2013) in which Dr. Esmael Dinan provided expert evidence accepted by the Finnish court concerning the exact same issue — namely when push notifications from a network to a mobile telephone had first been proposed - and stated that such techniques first appeared in 2003, some seven years after the priority date of the revoked patent. Thus had the petitioner been heard, the decision should have not been and would have not been the revocation of the patent. If the Board had put its assertion to the petitioner at the oral proceedings, the petitioner would have had an opportunity to present this testimony to the Board. The fact that the petitioner did not present the transcript, which it had at the oral proceedings, to the Board is testimony to the fact that the Board's factual assertion was not put to the petitioner during the appeal proceedings.

XI. Oral proceedings before the Enlarged Board of Appeal took place on 18 October 2013 at the end of which the decision was announced. Both the newly-appointed representative of the petitioner and Dr. Väänänen appeared as representatives.

The petitioner was asked by the chairman at the outset if, in addition to the apology in the letter of 18 September 2013, the abusive language in the petition was withdrawn which was confirmed. The petitioner was also asked to confirm that the proceedings were now confined to Article 112a(2)(c) EPC as the only ground and to what the letter of 18 October 2013 referred to as "Violation I". This was also confirmed although, at a later point in the proceedings, Dr. Väänänen insisted on discussing "Violation II", which the Enlarged Board allowed.

XII. The petitioner's additional arguments submitted at the oral proceedings are summarised below:

1. The patent was revoked at the end of oral proceedings before the Board of Appeal on the basis of D1. The discussion had been about the combination of three embodiments of D1 with the knowledge of the skilled person at the priority date in 1996. It was put to the petitioner that the additional functionality required was a Blackberry push-button device and the petitioner had argued that Blackberry hand-held devices were not available in 1996. The written decision now shows, in the second paragraph of point 2.8, that the Board subsequently changed from a combination of the three embodiments of D1 plus the Blackberry technology to those three embodiments plus text messaging to a mobile phone. The Board modified its view of what was the common general knowledge of the skilled person without allowing the petitioner to comment on that new view. In answer to questions from the Enlarged Board, the petitioner agreed that it did have the opportunity to discuss inventive step and the common general knowledge of the skilled person but not the combination of the three embodiments of D1 with text messaging.

2. As regards Violation II, Dr. Väänänen submitted that the petitioner was robbed of the opportunity to present arguments on the fact that none of the fifteen prior art documents disclosed the feature considered by the Board to be obvious. In answer to the Enlarged Board's observation that the evidence showed that the Board, rather than preventing the petitioner from speaking, was just silent on the issue, Dr. Väänänen said Mr. Hutter tried to discuss the prior art documents but the Board continued to discuss D1. The Board had decided and so prevented discussion. Mr. Hutter tried two or three times to present his argument. His statement means he did not have the chance to speak.

XIII. The petitioner requested the Enlarged Board of Appeal to set aside the decision under review, to re-open the proceedings before the Board of Appeal, to order that the members of the Board who participated in the decision under review be replaced, and to order reimbursement of the petition fee.