EP 2 950 075 B1 relates to an on-road running test apparatus for a vehicle to be used when a running test of the vehicle is performed on a road.
Brief outline of the case
The OD decided maintenance according AR 3. The proprietor and the opponent appealed this decision.
The case is interesting as it relates to the possible standard of proof to be used for assessing the public availability of a public prior use, E7=Semtech-DS, User Manual, Revision 1.07, June 9, 2006
The OD considered the public availability given for E7, but this was challenged by the proprietor.
The board held E7 as prior art under Art 54(2).
Eventually, the case was remitted to the OD for further prosecution.
The parties point of view on the public availability of E7
Opposition division
According to the principle of “balance of probabilities“, the OD considered that E7 was made available to the public prior to the priority date of the Patent in suit.
Opponent
The opponent stated that the standard of proof to be applied here is the “balance of probabilities“, i.e. on the basis that one submission of facts is more likely to be correct than the other
Proprietor
The proprietor was of the opinion that “balance of probabilities” is not the correct standard of proof and that “a strict standard of proof must be applied: the Opponent has to prove public availability of E7 “up to the hilt“.
- E7 is a user manual written by the company Sensors, Inc. for the product SEMTECH-DS sold by Sensors, Inc.
- E7b is a “tailor-made” document from the CEO of Sensors, Inc. This showed that Sensors, Inc. actively supported the opponent.
- No source that distributes user manual E7 could be found, in particular it could not be retrieved from the internet.
- Certain documents referred to by the proprietor prove that there was a business relationship at least from 2005 to 2007 between the opponent and Sensors, Inc., including the transfer of distribution rights of SEMTECH products from Sensors, Inc. to the opponent. This was not disputed by the opponent during OP
Since there was “an imbalance regarding the possibilities to obtain evidence in favour or against the alleged public prior use” and “due to the business relations between the Opponent and Sensors, Inc. during the alleged prior use, evidence for the distribution of products by Sensors, Inc. must be considered to fall within the domain of the Opponent”.
The board’s decision on the public availability of E7
For the board, E7 forms part of the prior art under Art 54(2).
In the present case, neither of the two standards of proof “balance of probabilities” and “beyond reasonable doubt” is to be applied exclusively and without further reflection.
When both parties have access to the evidence relating to the alleged prior use, the well-known jurisprudence of the boards is that the boards examine the allegation of prior use by applying the standard of proof of “balance of probabilities”, whereas in case that the evidence lies within the sphere of the opponent in the sense that the proprietor has barely any or no access to the evidence the stricter standard of proof “beyond reasonable doubt”, also called “up to the hilt” is applied, cf. CLBA, Sections III.G.4.3.2 a and b.
However, in certain cases, such as the present one, this binary approach to proof standards can turn out to be overly formalistic and simplistic.
On the one hand, since E7 originates not from the opponent but from a third party, it cannot simply be said that the evidence “lies within the sphere of the opponent”. Hence, the higher standard of proof “beyond reasonable doubt” is not to be applied without further thought.
On the other hand, the arguments put forward by the proprietor show that there is an imbalance between the parties in the access to E7 and thus the possibility to establish whether E7 is part of the prior art, so that it can also not simply be said that both parties had access to this evidence.
Hence, the lower standard of proof “balance of probabilities” is also not to be applied without further thought. Already based on these basic considerations, neither standard appears to be suitable for application. The question then arises how to assess the evidence on the public availability of E7.
Actually, while the board concured with the proprietor that the evidence on the question of whether E7 is part of the prior art is not in a neutral sphere of control, inter alia due to the undisputed business relationship between the opponent and Sensors, Inc., the board is of the opinion that the patentee did have opportunities to search for counter-evidence.
In particular, as discussed during OP, the proprietor could have directly contacted not only Sensors, Inc., but also the purchaser of SEMTECH-DS explicitly mentioned in document E7d, namely “The Texas Transportation Institute”, whose contact details were even given in E7d, or searched for any other purchaser.
Since the user manual E7 whose public availability prior to the priority date of the patent is at issue is neither within the sphere of control of the opponent nor within a neutral sphere of control to which both parties have access, the board is of the opinion that neither standard of proof is applicable.
The board cited two decisions T 1138/20, Reasons 1.2.1, and T 1634/17 and concluded that the dispute between the parties about which exact standard of proof is to be applied to the present situation can be left undecided.
The board was convinced that, in view of the evidence E7 and E7d, the user manual E7 was made publicly available before the priority date of the patent.
According to E7d, page 1, left column, Sensors, Inc. delivered the 100th SEMTECH unit to Natural Resources Canada in January 2007. The photo of the unit below this announcement shows a SEMTECH-DS unit. A SEMTECH-DS unit was acquired by The Texas Transportation Institute in June 2006.
The proprietor’s arguments that it was not sufficiently proven that E7 had actually been made available to the public prior to the priority date of the patent were thus not found convincing by the board.
The board was further of the opinion that the mere fact that the proprietor was unable to retrieve the document from the internet is not a sufficient reason to seriously question the existence of E7. On the basis of everyday life experience, it is very unlikely that such an elaborate user manual as E7 would be compiled, printed, and regularly revised without being used.
Comments
The decision is interesting as it makes clear that in some situations, were both parties can have access to a document, be it directly or indirectly, neither the criterion “balance of probabilities” nor that of “beyond reasonable doubt” or “up to the hilt” does apply.
A business relationship between an opponent and a provider of a specific item is not sufficient to fully shift the onus of proof to the opponent.
Like in a criminal case, what matters then is the inner conviction of the decision-making body. Luckily such situations are rare. On the other hand, when the board speaks about the basis of everyday life experience, it looks quite near to the “balance of probabilities”.
Comments
2 replies on “T 1311/21 – When neither “balance of probability” nor “up to the hilt” are determining”
Is this a case where the Board makes more complicated than necessary an issue which is inherently very simple?
In civil litigation, the default standard of proof is the balance of probabilities ie “more likely than not”. Absent special circumstances, that is the standard that should apply, all the time. One special circumstance might be where one party has access to the relevant evidence, the other not. OK, fair enough.
But are opposition proceedings at the EPO an exception from normal civil litigation? I think not. The patent owner is protected, in that the opponent carries the burden of proving what they assert. The public is protected, in that as soon as the opponent has reached the level of “more likely than not” the duly issued claim has been proven to be invalid. OK, fair enough, I say (as a member of the public).
Is the Board here rejecting the idea of “more likely than not” as the default standard of proof? If so, why?
Dear Max Drei,
I agree with you that the present board has made things more complicated than necessary.
Oppositions at the EPO are not an exception from normal civil litigation.
In view of the case law of the boards, they have nevertheless developed two sets of standards of proof.
If all the elements of proof are fully within the hands of the opponent, the standard of proof is not “balance of probabilities”, but “up to the hilt”. This is quite reasonable.
If the elements of proof are not fully within the hands of the opponent, the standard of proof is “balance of probabilities”. This is quite reasonable as well and should indeed initially be applied by default.
In the present case I would not say that the board is rejecting the idea of “more likely than not”, but as some information was common to both opponent and proprietor, the present board felt obliged to say something different. Motivation for such digressions can be seen in the desire of some boards, not to say some legal members of the boards, to attempt to distinguish themselves from other boards.
In the present case, “balance of probability” would have been amply sufficient. There was no real reason to go any further and to create a kind of further category, the “conviction” of the board. Bringing in the intimate conviction of a board is something applicable in criminal matters when there is only a chain of indicia and no absolute proof. Here the indicia were more than enough to come to a conclusion under “balance of probabilities”