EP 3 285 690 B1 relates to percutaneous mitral valve replacement device.
Brief outline of the case
The OD considered that claim 1 as granted was not infringing Art 123(2), but dependent claims 5-7 were. The patent was maintained according to AR1, which comprised claim 1 as granted.
The proprietor appealed.
The case is interesting as the proprietor protested against the fact that the board considered claim 1 as granted infringed Art 123(2).
The proprietor’s point of view
The OD had concluded that claim 1 as granted did not contain added subject-matter in breach of Art 123(2). As the proprietor was the sole appellant, the principle of prohibition of reformatio in peius barred the board from reopening and deciding upon this question. This prevented the board from considering feature F in the context of claim 1 as granted to the detriment of the proprietor.
In any event, § [0106] as filed, which explicitly used the term “suspended” and from which the wording of feature F was derived, did not establish an inextricable link between the suspension of the valve component and a gap between the frames over the entire height of the frame.
The proprietor argued that national courts could be influenced to its detriment by the reasoning given in the board’s decision.
To support its point of view, the proprietor referred to T 659/07 and T 1626/11 for the first time during the OP before the board.
The opponent’s point of view
The term “suspended” was only found in the originally filed application in relation to the embodiments E1.
Claims 5 to 7 as granted – like claim 1 as granted – did not explicitly or implicitly define a gap between the valve component and the support structure over the entire height of the valve component’s frame; nor did they specify any corresponding requirements for the outer and inner diameters of these components. However, according to § [0106], it was this that caused the valve component to be “suspended” within the support structure.
The board’s decision
Feature F was added to claim 1 as originally filed during the examination phase. The term “suspended” only appears in § [0081] of the patent specification and § [0106] of the description as originally filed.
In the present case, it follows from the principle of prohibition of reformatio in peius that the board’s consideration of feature F cannot prevent the contested patent from being maintained in the form found allowable by the OD, i.e. on the basis of AR1, which contained claim 1 as granted in unamended form.
It is established case law of the boards of appeal that the prohibition of reformatio in peius relates solely to the legal effect of an appealed decision and cannot be construed to apply separately to each point or issue decided, and particularly not to the reasoning leading to the impugned decision, see CLB, V.A.3.1.1.
Therefore, the board is not precluded from applying its own consideration of feature F when examining dependent claims 5-7 of the patent as granted, which were found to be unallowable by the OD.
The ratio decidendi of the decisions of the boards of appeal are not binding on national courts, which have judicial independence in their decisions.
These conclusions are in line with the established case law of the boards of appeal, in particular with decision T 659/07.
In T 659/07, Reasons 3.1, the board did not consider itself precluded from assessing the feature in question again on appeal, finding that by virtue of this feature claim 1 as granted contravened the requirements of Art 123(2) and concluding that the MR was therefore not allowable. This corresponds to the present case.
The bord dismissed the argument based on T 1626/11, as this decision concerned independent sets of claims. The present case clearly deviates from such constellations, since claims 5-7 are not additional/independent claims but are dependent on claim 1, so claim 1 cannot be disregarded when assessing dependent claims 5-7.
Therefore, the principle of prohibition of reformatio in peius does not bar the board from considering the feature “suspended“, and more generally feature F, in the context of claim 1 as granted.
Added matter
In view of the description as filed, the skilled person would therefore understand from paragraph [0106] that the “suspension” or “floating” of the valve component within the support structure described for these embodiments is inextricably linked to the presence of such a gap.
Contrary to the proprietor’s argument and the OD’s view, a gap between the frames of the valve component and support structure over the entire height of the valve component’s frame does not implicitly follow from the wording of claim 1 as granted.
The wording of claim 1 as granted does not rule out the possibility that the valve component might additionally engage the support structure at some other location, with the consequence that there would be no gap extending between the frames of the two components over the entire height of the valve component’s frame.
This is in particular the case if the term “suspended” in feature F of claim 1 as granted is interpreted as put forward by the proprietor.
The appeal was therefore dismissed.
Comments
Decisions of EPO’s boards of appeal are not biding for other courts
The board made clear that EPO’s board of appeal decisions are not binding for other courts and thus neither for the UPC. With the latter, diverging decisions should be avoided, but cannot be excluded.
Even if the CoA UPC is of the opinion that the court deciding after the UPC should take over the UPC’s decision, this is mere jurisdictional imperialism, as the UPC will in most cases have decided first in view of the short delays built in its RoP. See Order UPC_CoA_22/2024, Headnote 4, commented in the present blog.
Limits of the of the prohibition of reformatio in peius
The decision is interesting as it clarifies that the prohibition of the reformation in peius does not hinder a board to examine a claim, which is part of the claim as maintained, even if the OD had no objection to the wording of said claim.
Checking board’s decisions carefully before quoting them
When quoting board’s decisions, better check that they apply to your case. Otherwise it backfires badly, as it was the case here.
Quoting board decisions for the first time during OP
The proprietor’s representative was lucky in that he was allowed to refer for the first time during OP before the board the two decisions T 659/07 and T 1626/11.
Even before an OD, referring to board decisions for the first time during OP, represents a late filed submission/argumentation, the admissibility of which should normally be decided before they can be discussed in substance. If you intend to do so have at least a sufficient number of copies to give to the deciding body and the other party.
In appeal, the board could have refused to discuss the two decisions under Art 13(2) RPBA.
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