T 0195/20 (User access/GOOGLE) 20-09-2021

Admittance of late submissions

1. Admittance of the submissions by the respondent filed after the summons to oral proceedings (cf. point IX above) are governed by Article 13(2) RPBA 2020, those made in response to the board's communication under Rule 100(2) EPC and before expiry of the two-month period specified therein - which ended on 21 March 2021, see Rule 126(2) EPC - (cf. point VII above) are governed by Article 13(1) RPBA 2020.

1.1 The board considered that admittance of the expert opinions by Prof. Gray and Mondorf were not detrimental to procedural economy and could be dealt with without delay in the board's annex to the summons to oral pro­ceedings. Accordingly, the board decided to admit these submissions. Likewise, the board admitted the clarifi­cation by Prof. Gray filed after the summons on its own volition because it can, without undue delay, deal with that ancillary submission, too (see T1294/16, point 18.4 of the reasons).

1.2 However, the Stellungnahme by Prof. Ruland filed after the summons to oral proceedings was not admitted pursuant to Article 13(2) RPBA 2020.

1.2.1 The respondent argued in its letter of 13 Septem­ber 2021 (see point 3) that the submission by Prof. Ruland (filed 25 May 2021) was made in response to the board's communication dated 25 March 2021 (i.e. the summons), especially its point 4.4, in order to "explain that a person of skill in the art will in fact make sense out of the claim feature at issue".

1.2.2 In that communication, however, the board only addressed the statements by Prof. Gray and Mondorf, the issue of "venire contra factum" and Article 69 EPC but not - either in point 4.4 or elsewhere - whether the skilled person would or would not "make sense" of feature 1.3. The board takes it that Prof. Ruland's Stellungnahme was rather meant to address point 9.1 in the communication under Rule 100(2) EPC.

1.2.3 Therefore, the board cannot accept the respondent's reasons as cogent ones which would establish exceptional circumstances that could justify the very late submission of Prof. Ruland's Stellungnahme. With a further view to the appellant' disagreement with the admittance, the board decided not to admit it under Article 13(2) RPBA 2020. As a consequence, the respondent's subsidiary request to allow Prof. Ruland to explain his written statement was moot.

1.2.4 The board notes in passing that the respondent, during the oral proceedings, stated that an expert statement like that by Prof. Ruland might, in fact, not have been necessary to explain why the interpretation of feature 1.3 favoured by the respondent did make technical sense and the representative was allowed and able to explain that point orally without referring to Prof. Ruland's Stellungnahme.

The issue at stake

2. The opposition division objected to feature 1.3 accor­ding to claim 1 as granted, arguing (see point 17.1 of the reasons in the decision under appeal) that the description (page 14, lines 1-3) disclosed that it was "'the system' that validate[d] credentials and provide[d] access to the resource" and that "from original claim 1, it" could "be understood that the access [was] provided to the user instead of by the user" (underlining in the cited decision). The wording of feature 1.3, however, "clearly reads that access is provided by the user, contrary to the original disclosure", so that a non-compliance with Article 123(2) EPC arose. The opposition division further dismissed the proprietor's argument and argued that the difference in meaning between "providing secured access to a user" and "providing secured access by a user" were "very different in their nature and technical meaning," that "their difference c[ould] not be seen as a mere ambiguity in wording, that could be resolved by interpreting the wording of feature 1.3 in the light of the description" and that "They c[ould] also not be seen as two alternative wordings having the same meaning" (see points 17.2 to 17.4 of the reasons).The opposition division further decided that all auxiliary requests either shared the deficiency under Article 100(c) resp. Article 123(2) EPC with the main request (auxiliary requests 1, 3 and 4) or, in an attempt to overcome it, replaced, effectively, "by" by "to" and thereby did not comply with Article 123(3) EPC (auxiliary requests 2a-2c, 5a-5c and 6a-6c).3. The appellant argued in its grounds of appeal (page 7, below the recitation of feature 1.3) that the change of "by the user" to "to the user" was made for stylistic reasons only to avoid two "to"s in a row ("to the user to the content site"). Furthermore, it stated that "from a linguistic standpoint" feature 1.3 could not "be regarded as clear and unambiguous" and thus could not "be simply considered by itself, but had to be interpreted in view of the claim systematic and also the description as a whole" (see page 9, para­graph 1). More specifically, it argued that "the phrase 'by the user'" could "be associated with the term 'pro­viding' and also [...] with the term 'access'". In the latter case, feature 1.3 stated that that "access [...] by the user" was "provided" (see page 9, para­graph 3). This was, more­over, the only sensible inter­pre­tation of fea­ture 1.3 (page 9, points e) to g)), so that fea­ture 1.3 fulfilled the requirements of Article 123(2) EPC.4. The respondent argued that the language of feature 1.3 was clear on its face so that "no interpretation" was "necessary" (see letter of 27 May 2020, point II.a). It further argued that the appellant's position might only be plausible, if a comma were inserted between "access" and "by the user", which however it is not (see page 4, paragraph 4). Moreover, it argued that only "techni­cally illogical interpretations should be exclu­ded" when interpreting the claim language, and that the provision of access "by the user" might be uncommon but is not excluded by the claim language, the description, or for fundamental technical reasons (see page 5, paragraph 3 et seq.). As a consequence, the respondent considered that the decision had to be confirmed. 4.1 Prof. Gray, in her letter dated 5 March 2021, stated that "the preposition by" in the pertinent phrase was "unambiguous in meaning" and implied an "agentive meaning". It also stated that "The prepositional phase in question, 'by the user,'" was "a postmodifier in the noun phrase 'access by the user' and thus was "modi­fy­ing the noun 'access'" and did "not modify or relate to 'providing'". In her letter dated 17 March 2021, she stressed the differences between the prepositions "to" and "by" as marking, respectively, "benefactive" and "agent" roles. She stated that "secured access to the user" meant the access was "going to the user" without implying that the user actually "acted upon the receipt of access", whereas "providing secured access by the user" referred to the user's action. She then concluded that, in the given context, "the user would likely click okay to accept cookies or a data protection policy or to install a program". Furthermore, according to Prof. Gray the user being the "agent of the access" meant that "the access c[ame] from the user" and hence "the user [would be] clearly and unambiguously allowing the access". 4.2 Prof. Mondorf, in her letted dated 11 March 2021, stated that the change of preposition in the phrase in question caused a significant change of meaning because the user in the granted version was referred to as agent (AGENS), which would have to enable the secured access, whereas in the original version the user was referred to as benefactive in the sense of profiting from the secured access. Both phrases were not equivalent and the reformulation of one into the other could, from a linguistic perspective, not be motivated.

The board's position

Article 100(c) EPC

5. To begin with, the board notes the following. While it has no occasion to question the linguistic analyses by Prof. Gray or Mondorf, it would seem that Prof. Gray's speculation that the user, in the given context, would "likely click okay to accept cookies or a data protec­tion policy or to install a program" goes beyond a mere linguistic analysis, which is the field of expertise for which both statements were filed. Secondly, the question at stake is not how a linguist would construe the meaning of the sentence but how the person skilled in the art would. Albeit a linguistic analysis may be helpful in determining how a skilled person would un­derstand a phrase in a claim, the skilled person would not stop at determining the semantic roles of words in a phrase but interpret the phrase in the context of the claimed subject-matter and the applica­tion as a whole. Thirdly, the board notes that its findings as to how a claim must be con­strued is not merely the board's "opin­ion", as the respondent would have it (see the letter dated 9 June 2021, page 2, pen­ulti­mate para­graph), but the board's legal judgment at which it arrives after consideration the factual and legal cir­cumstances of the case and the parties' submissions.

6. Turning now to the feature in question:

"(1.3) providing (112) secured access by the user to the content site upon confirmation of authenticating, [...]",

the board considers that, on the face of it, there seems to be an ambiguity between whether the clause "by the user" modifies the "secured access" or the "provi­ding". That is, although the user clearly has an "agent" rule due to the preposition "by" it may be asked whether the user is the "agent" of the access or of the providing.

6.1 Prof. Gray clearly stated in her letter dated 5 March 2021 that "by the user" modified the noun "access" and not the "providing". In the board's judg­ment, this speaks in favour of the first interpre­ta­tion. In her letter of 17 May 2021, Prof. Gray implies the contrary: Her statements that "Providing secured access by the user" refers to a "user's action" preceding the access and that the "agent of the access" is "allowing the access" imply, effectively, that "by the user" would be modifying the "providing", not the "access" itself. That position is also taken by Prof. Mondorf, where she states that in the new sentence the user would have to take care of the secured access ("für den sicheren Zugang Sorge zu tragen [hätte]"), i.e. is an agent of the providing.

6.2 The board takes the view that already the mere proximity of the clause "by the user" speaks in favour of it modifying "access" rather than "providing". The latter would be the preferred reading of the different phrase "providing by the user secured access to the content site". Also, if one were to construe "by the user" as modifying the entire clause "providing secured access", then it would become unclear what the follow­ing clause clause "to the content site" referred to.

6.3 Moreover, claim 1 as a whole specifies a method "for providing secured access" in response to "a request for" such "secured access to a content site [...] from a user". The request for access coming from the user, the skilled reader will assume that it is the user to eventually (if authenticated) be provided with the access. This would make the user "agent" of the access, also irrespective of whether the user would eventually "act[] upon the receipt of access". This reading is also consistent with the claimed requirement that the user, before secured access is provided, is to be authenticated, that the "authenticated user" will be "link[ed] to a secondary profile" and that "secured access to the content site is enforced by a security policy associated with the secondary profile". In the board's view, the skilled person would understand the so-enforced "secured access to the content site" to be an "access by the user", mediated by the "secondary profile".

6.4 In the linguistic terms as used by Prof. Gray and Mondorf, this means that the benefactive and the agent roles coincide in the case to hand. The user "to which" the access is provided will be the same one "by which" the access is carried out, as the skilled person would understand.

6.5 The board agrees that claim 1 as granted does not exclude the - entirely reasonable - possibility that the user also contributes to the process of providing secured access, for instance "by click[ing] okay to accept cookies or a data protection policy or to install a program". This does not, however, mean that this is implied by the claim language.

6.6 In summary, the board finds that the skilled person would construe feature 1.3 so that it is the user to which access is provided or, in other words, so that "access by the user to the content site" is provided and that the agent of the providing is un­defined - as it is, incidentally, in original claim 1.

Venire contra factum proprium

7. The respondent argued that the appellant had replaced "to" with "by" in order to address an objection under Article 56 EPC rather than, as alleged, to address clarity (or style) of the claims. Now stating that this amendment did not change the meaning was "venire contra factum proprium" and should not be allowed. The respondent conceded, however, that the file does not contain an express statement regarding the appellant's intentions and does not establish without doubt the appellant's alleged intentions.

7.1 Therefore, no contradiction can be derived between the appellant's present view on the meaning of feature 1.3 and any clearly documented view that the appellant may have held earlier.

7.2 The respondent's argument fails for this reason alone.

7.3 It may therefore be left open whether and to what extent the principle of "venire contra factum proprium" applied in proceedings before the EPO at all and whether, in particular, it might prohibit a change of mind of a party as to how a claimed feature was to be interpreted. Also the relevance of the BGH decision cited by the respondent need not be determined.

Conclusion

8. The board concludes that that the objection to feature 1.3 under Article 100(c) EPC does not prejudice main­te­nance of the granted patent.

Remittal for further prosecution

9. The decision under appeal only dealt with feature 1.3, and not with any of the other grounds for opposition according to Article 100(c) EPC, let alone those according to Articles 100(a) and (b) EPC. Even though the opposition division expressed a preliminary opinion on these grounds in the annex to its summons to oral proceedings, none of these grounds were discussed during the oral proceedings before the opposition division.

10. The board considers this - with an additional view to the fact that this case has been taken considerably out of order by the board - as a special reason within the meaning of Article 11 RPBA 2020 to remit the case to the opposition division for further prosecution.

11. In response to the (meanwhile withdrawn) request by the respondent to remit the case with particular instructions to the first instance, the board notes that the opposition division is bound under Article 111(2) EPC by the ratio decidendi of the above decision, in so far as the facts are the same. No further express instructions by the board are necessary or called for.