EP 3 669 828 B2 results from a first generation divisional application of EP 2 624 785 and relates to prosthetic heart valves, and delivery systems for implanting heart valves.
The patent belongs to Edwards Lifesciences Corporation.
Brief outline of the case
After an opposition by Abbott Cardiovascular Systems the patent was maintained in amended form according to AR 7. No appeal has been filed after maintenance in amended form. The difference is that claim 9 as granted has been deleted, and claim 10 as granted amended. All other claims were not amended.
The LD Munich of the UPC concluded that EP 3 669 828 B2 was valid and infringed.
The infringers were companies belonging to the Merril group.
Reasons for application of the Problem-Solution-Approach at the UPC
The LD Munich held that the PSA shall primarily be applied as a tool to the extent feasible to enhance legal certainty and further align the jurisprudence of the UPC with the jurisprudence of the EPO and the BAs.
The LD Munich held that the CFI and the CoA of the UPC have assessed IS in various decisions. Some decisions explicitly referred to the PSA, used by the EPO and the BoA, and several national courts; others applied a different approach, that is similar, if not identical, to the test of IS applied by the German Federal Court of Justice (BGH).
Both tests, the ‘German’ test and the PSA, if correctly applied, should lead to the same results in the majority of the cases and both tests require a “realistic starting point” and an “incentive” for the skilled person to do the “next step”, e.g. to amend the technical solution disclosed by the starting point to arrive at the patented solution.
As none of the tests is enshrined in the EPC and lead basically to the same results both can be applied as a tool to assess inventive step. However, the panel took the decision to apply the PSA Problem-Solution-Approach.
The same CPA=D2 was used at the UPC and at the EPO. Like the OD, the Munich LD found the patent in amended form valid.
Comments
That a LD of the UPC wants to align its jurisprudence to that of the EPO and of its BA is certainly to be welcomed.
Up to now it seems more that it is requested that the boards take over the way the German Federal Court (BGH) interprets the EPC. At the BGH, there is always an interpretation of the claim in the light of the description before any decision is made. The BGH practice has made strong inroads at the UPC.
I refer here to an article of Deichfuß, cf. GRUR Patent 2024, 94. The problem in this article is that the examples given stem from decisions of the BGH, which were not decided by a BA. Only then would a comparison have been possible and differences in approach visible.
It can be agreed that the PSA is not defined in the EPC, but has proven a quite efficient tool to avoid ex-post facto conclusions when assessing IS.
It does not come as a surprise that the results are the same at the UPC and at the EPO, even if another party was involved. Meril substantially used the argumentation of lack of IS used by Abbott in the opposition. The prior art was also, when it came to IS, the same. Edwards recycled its argumenttion in opposition before the EPO.
To say, like a party’s representative in the UPC action did, that the Munich LD used the PSA like at the EPO is going a bit too far. It only used it to the extent feasible, with some notable diferences.
Even if the UPC claims applying the PSA, it still used the description to interpret the claims and defined the skilled person which is seldom the case at the EPO. The EPO does not systematically Interpret the claim in the light of the description when assessing IS. This might however change with G 1/24.
At the EPO it is enough to decide, in general, whether one combination of documents leads to the conclusion that the subject-matter of the claims lacks IS. It is very rare that a board does this it with a plurality of “CPA”. One exception is for instance T 591/04 which illustrates very well how the PSA is to be applied at the EPO.
The Munich LD went through all combinations of documents brought forward by Merril. This is however also the case at the EPO when it has to be decided that IS is given, see below.
I have however not found a definition of the OTP decided by the LD itself.
A further difference is that the LD Munich is considering that the skilled person needs an “incentive” to carry out the “next step”. This is not what is required at the EPO.
In the Guidelines G-VII, 5.3 (definition of the could/would) it is said that: “Even an implicit prompting or implicitly recognisable incentive is sufficient to show that the skilled person would have combined the elements from the prior art” to conclude to a lack of IS. There is thus no explicit “incentive” needed at the EPO.
According to the jurisprudence of the BA, the skilled person would not combine two pieces of prior art if they teachings were not compatible even if all the claimed features could be found in both documents (the famous “leading away” from the solution).
On the other hand, in T 1246/21, commented in the present blog, it was also held that assessing IS is more than just combining documents. Common general knowledge also plays a role, as it allows to fill any gap.
We will have to see whether the CoA UPC will uphold the decision of the LD Munich. In other cases, it has made clear that it favourised the BGH approach. In the famous Hanshow case, the CoA UPC made clear that amendments made during the grant procedure cannot play a role in the interpretation of the claims.
Discrepancy between the UPC and a national court with the same prior art
In the case of EP 3 466 498, belonging to Ortovox, the LD Düsseldorf held the patent as granted valid and infringed by Mammut. EP 3 466 498 was not opposed at the EPO.
The Swiss Federal Patent Court (SFPC), came to the opposite conclusion on the basis of the same prior art. Here Mammut filed a nullity claim.
The SFPC declared the patent as granted invalid, but maintained it according to AR1. The SFPC was aware of the decision of the LD Düsseldorf, cf. § 26..
The SFPC also claims to have applied the PSA. It actually did it in a similar way as the LD Munich did, by defining the skilled person as well as the common general knowledge and interpreting the claims. It also went through the different combinations of documents proposed by Mammut.
It is on the interpretation of the claim that the SFPC and the LD Düsseldorf diverged.
In the specific case, it has to be agreed with the SFPC that starting from the “best” CPA, and in order to solve the OTP, it appears obvious to suppress an audio tone or output it at a reduced volume while a voice message is being played.
Different CPA for different attacks under the PSA
In T 320/15, Reasons 1.1.2, it was held, that the structure of the PSA is not to be seen as a forum where a party can develop various attacks at will from various prior art documents, in the hope that one of them would have a chance of success.
In T 2401/17, the board admitted three IS attacks applying the PSA from three different CPA. This is rather the exception than the rule.
A finding of lack of IS does not necessarily need a plurality of attacks with different CPA documents. If one attack is lethal in matters of IS it appears moot to discuss further attacks. as has been done at the SFPC.
On the other hand, if an opponent or a claimant in nullity, raises a plurality of attacks of lack of IS, then it is manifestly necessary to deal with the various attacks before coming to the conclusion that the claimed subject-matter involves an IS. This is also the case at the EPO, provided the opponent does not try too many attacks.
General Conclusion
Even with the same prior art, the conclusion about the validity of a patent can be different in different fora, be it only due to the different interpretation of the claimed features.
This does not mean that one decision is necessarily better than another one.
It simply depends. This was also the reply of the Chair of the legal BA to Sir Richard Jacobs, when the latter urged the EPO to adopt and follow the case law of the UPC.
This does however mean that before issue a decision to grant EDs at the EPO have to check, that not only the subject-matter of the claims is novel and inventive, but also that the claims are clear and correctly supported by the description. This an important step, not to end up with divergent interpretations, themselves possibly leading to the famous “Angora Cats”.
As far as interpretation of the claims in the light of the description is concerned, we will have to wait until G 1/24 is issued.
Decision Edwards-Merril – LD Munich
Comments
8 replies on “EP 3 669 828- EPO’s Problem-Solution-Approach applied by the UPC-LD Munich”
“Even if the UPC claims applying the PSA, it still used the description to interpret the claims and defined the skilled person which is seldom the case at the EPO”
It has always troubled me that the EPO does not define the skilled person before assessing inventive step. Art. 56 prescribes that “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”. It seems clear to me that establishing who actually is the “person” and what “art” they are skilled in must be crucial parts of the obviousness assessment.
Tongue in my cheek, I offer in reply to Anonymous the observation that at the EPO no definition of the skilled addressee is needed because we know already who that imaginary person is, in possession of the requisite common general knowledge (cgk), namely the EPO tribunal itself. It is not as if the proceedings are before a judge, or panel of judges, with no knowledge or experience in the relevant technical field.
Does not the entire set-up at the EPO run on the basis that an EPO tribunal has no need to hear evidence of what was the cgk of the skilled person, precisely because it knows it already? Imagine what it would be like if, instead, every OD and TBA finds itself unable to decide because it is not in possession of an accurate picture of the cgk. How much time and cost would that add, to the prosecution of a common or garden routine opposition case at the EPO?
True, and that’s why Article 114(1) EPC – “the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts […] provided by the parties” – is not limited to ex parte cases but applies fully to oppositions.
@ Plu,
Thanks for a valuable input. Without sound technical knowledge, the EPO and its BA would not be in a position examine the facts ex officio, as long as the requirements of Art 113(1) are fulfilled.
Dear Max Drei,
@ Anonymous,
Thanks to Max Drei to offer an explanation. I concur with his position, but without tongue in cheek.
Even if one considers an ED or an OD as an administrative deciding body, it is primarily composed of three technically qualified examiners. A bord of appeal is composed of at least two TQJ. There is thus a fundamental difference between a board of appeal and a civil court in most of the contracting states.
Civil courts are only composed with LQJs. At the UPC, LD divisions always comprise three TQJ, whereby one TQJ can be added. In the CD there are only two LQJ and one TQJ. At the CoA there are in principle 3 LQJ and 2 TQJ. All UPC panels have to be chaired by a LQJ and the latter have thus the majority.
The proponents of the UPC would have liked that only LQJ sit in panels. The main author of the deontological code for TQJ has never hidden his profound dislike of TQJs. I do not know this by hearsay, he said it in front of me, not knowing I was from the EPO.
It is thus not a surprise that LQJ have first to understand the technical matters discussed in front of them, then have to define the skilled person and CGK. All this is indeed superfluous at the EPO.
The necessity to first understand the technicalities and hence, the lengthy developments before a decision can be taken has been confirmed in a recent meeting I participated by a former chair of a German court dealing with patents. He would welcome TQJs in German courts dealing with patents. I think that he is probably quite alone with his view.
In reply to Daniel Thomas’s comment on technical judges, let me add that I started in the patent profession in the early 1970’s and in my more than 50 years have seen the law of patent validity in Europe go from a patchwork quilt of contradictions to a coherent body of case law so glorious, so unassailably clear and logical that, little by little, it is inexorably being adopted by the rest of the world. Case in point, the EPO’s problem-solution approach to obviousness. Watch gthe evolving UPC case law over the next ten years. Watch how in the USA the obviousness enquiry begins to show the influence of EPO-PSA. There is nothing to ival EPO-PSA in delivering efficiency to the debate about obviousness. Without EPO-PSA, the debate decends into hand-waving and decisions based on what are called “secondary considerations” because non-technical judges feel more comfortable deciding cases on commercial factors rather than science or engineering analysis.
The joy for me as private practice patent attorney is seeing the bafflement of inventors with legal matters in general displaced by enthusiasm for debate of obviousness under EPO-PSA. It is important for the future of the patent system that engineers and scientists support it.
Who to credit with this achievement? The esprit de corps within the EPO, I say, and a body of advocate patent attorneys all having a science or engineering degree.
And now, after 40 years of exclusion from the jamboree, for the general litigation community of lawyers it’s “Pay Back Time”.
Their chosen means to claw all the juicy work back into their camp, rival to the patent attorney profession in IPR matters, is the UPC. So, it might now be back to the (Good?????) Old Days, when each piece of patent litigation was a festival of time-billing for lawyers needing hundreds of hours of time to reply to all the “points” raised by the other side and admitted to the case because the court doesn’t know how to trim back the lawyers’ zeal and their inexhaustible ability to find more things to argue about.
Rant over!
I’m glad I’m out of it, retired from the fray.
Dear Max Drei,
I do not think that you have been ranting as you have said loudly what I have thought for a long time. I simply refrained to saying it so clearly.
The beneficiaries of the UPC are primarily large lawyer firms, especially Anglo-Saxon ones, which intended to deepen their already deep pockets.
Beside this point, I have never understood the necessity of the UPC. The number of real multinational litigations in Europe was always rather small and only large multinational firms were involved.
Knowing that less than 30% of patents belong to companies having their seat in UPC contracting states, the UPC offered to all other patent holders, especially from the US, a single door to act against European industry in general and European SMEs in particular.
When you further know that the Rules of Procedure have been concocted by a small group of lawyers helped with a bunch of national judges hoping for a big lap in wages, it also does not come as surprise that the time limits at the UPC have been deliberately shortened. Next to multinational litigation which entails already an increase in representation fees, the short time limits increase the fees even more.
A big blow to the UPC came first with the refusal of the ratification by the German Constitutional Court and with Brexit. It should be kept in mind that the UPCA does not have any exit clause!
After Brexit, rather than doing what should have been done, i.e. to renegotiate Art 7(2) UPCA, a murky solution was adopted by the presidium of the UPC deciding first on its own volition to amend Art 7(2) and Annex II, and then by the Administrative Committee by using Art 87(2) UPCA.
The CoA UPC has also decided that, contrary to Art 9(1) UPCA, it can also decide, for reasons of efficiency, in a composition of 3 LQJs.Where has it be seen that a court was allowed to interpret its founding text?
Be it the presidium or the UPCA, both instances superbly ignored the Vienna Convention on the Law of Treaties when taking their decisions. Any action at the UPC in view of amending its charter has been taken without any reference to the VCLT, even if some of its proponents considered it at a moment, cf. Mr Tilman in GRUR Int. 2024, 769. See my open letter to Mr Tilman published on the present blog.
At a moment it was question to refer to the VCLT when the decision of the Protocol of provisional application of the UPCA and of the Protocol on Privileges and Immunity was to be taken. Those decisions were taken without any reference to the VCLT.
I refer here to a blog of mine about the Brexit and its consequences published at the beginning of 2023.
In this respect it is interesting to note that the LD Düsseldorf in the litigation about patent EP 3 356 109 B1 considered that the VCLT is applicable to the UPCA, cf. Reasons 286 in UPC_CFI_50/2024.
If the VCLT is applicable in actions before the UPC, why has the VCLT not been applied after Brexit? The VCLT has been wilfully ignored by the presidium and the Administrative Committee of the UPCA.
The VCLT contains provisions to be applied in case a treaty does not contain any exit clause. They have never been applied, and it is manifest why this has not been the case: the UPC proponents didn’t want to kill the goose that laid the golden eggs.
To sum it up, the UPC is the result of a huge and massive lobbying action, with governments and the EU Commission being accomplices to large internationally acting lawyer firms.
What is actually worrying is that legally qualified persons and especially judges have been and continue to be prepared to support such dodgy “legal” practices.
We are far from any problem of applying the PSA or not at the UPC. Patents are technical items clad in a legal framework, but it does not mean that legally qualified people should have the last say in technical matters.
Enough rant!
The tech bro clique surrounding Mr Trump is now calling for the elimination of all laws on IP. I suppose that they resent how much the big law firms are billing them. Hey Ho. Be careful what you ask for, as the saying goes.