Friday, November 04, 2016 T 564/12: proving public prior-use

In this opposition appeal there is initially an interesting discussion about the admissibility of two prior-use cases. The Appellant-proprietor asks the Board to declare these prior-use cases retroactively as non-admissible. Furthermore, the Appellant-proprietor is of the opinion that an author of one of the filed affidavits in one of these prior-use cases should have been called as a witness. According to the Appellant-proprietor, the affidavit should be excluded because the opposition Division did not call this author as a witness. 

The board decides that the prior-use cases are admissible. In general, it is quite difficult to prove public prior-use - the questions "what was disclosed", "when", "where"and "under which circumstances" must be answered. In this case quite a lot of evidence was filed by the Appellant-opponent - it was already filed during the opposition proceedings. This Board extensively examines the evidence to decide whether the prior use is proven or not. If you are interested in the prior-use reasonings, you should read the complete text that is provided below.

The invention relates to a lid of a snuff-box. I found it also interesting to see that the PCT publication of this case has only a 2 page description and has 5 claims in total. The limited amount of words written down in the original patent application have been compensated by all the documents drawn up during the opposition and appeal procedure.

Summary of Facts and Submissions

[...]

II. The opposition was filed against the patent as a whole and based, inter alia, on Article 100(a) together with Articles 52(1) and 54(2) EPC for lack of novelty and Article 56 EPC for lack of inventive step. The division held, inter alia, that the grounds for opposition (novelty and inventive step) mentioned in Article 100(a) EPC did not prejudice maintenance of the patent as amended according to an auxiliary request, having regard to the following pieces of evidence, amongst others:

Regarding the alleged prior use "Kombilock" (PA);

PA1: model of Kombilock snuff-box

PA2: model of Kombilock packaging

D2: Affidavit of Jonas Jönemark dated 7 March 2007

D3: photos of Kombilock in its packaging

D4: Swedish Match price list, June 2002

D5: Invoice dated 12 May 2003 from Swedish Match to 3:ANS TOBAK & DIVERS

Regarding the alleged prior use "Dubbellock"

PB1: Sample of snuffbox with best before date of 29 January 2007

D9: Press release from Swedish Match, dated 7 April 2003, and its English translation D9 bis

D12: photographs of Dubbellock snuff-box filed as PBnew, with letter received 24 July 2008

D18: photographs of Dubbellock snuff-box, filed with letter received 15 May 2009

Further evidence

D19: Affidavit of Leif Henry Olsson, dated 15 March 2011 together with annexed photos of inter alia Kombilock and Dubbellock

D20: Affidavit of Frank Svandal and its translation, together with annexed photos of inter alia Kombilock and Dubbellock, and invoice dated 29 April 2003 from Swedish Match to Northerner Scandinavia AB

D24: Product specification by Plast-Teknik dated 29 October 1991

D25: Fax dated 25 November 1991 to Bo Carlsen of Gothia Tobak

D26: Invoices dated 4 February 2003, 11 April 2000, 11 May 2000, 13 January 2003 from Nolato Plastteknik to Swedish Match.

D27: excerpt from Swedish Company Register dated 29 September 2011, concerning Nolato Plastteknik AB.

D28: Affidavit of Bo Carlsen with annexed drawings 1-332-1505 (first sheet) and 1-333-1505 (second sheet) and annexed photographs of Kombilock lid and its packaging.

D29: "The Northerner" online shop website page, archived 11 May 2003 by Internet Archive WaybackMachine, product page "Grovsnus White (Swedish Portion Snus)"

D30: "The Northerner" online shop website page, archived 22 June 2003 by Internet Archive WaybackMachine, product page "Combi lid for Tobacco Snuff Cans"

[...]

VI. The appellant proprietor argued as follows:

Prior uses Kombilock and Dubbellock

Admission of prior uses

These should not be admitted since there are doubts as to whether or not they actually took place. Furthermore affidavits D19 and D20 should not be admitted as they are late filed. In view of the doubts about the prior uses, the opposition should have called Mr Bo Carlsen, author of affidavit D28, as a witness, instead of relying on the affidavit D28.

[...] 

VII. The appellant-opponent argued as follows:

Prior uses Kombilock and Dubbellock

Admission of prior uses

All the evidence relied upon, including the affidavits D19, D20 and D28 were already admitted in the opposition proceedings, therefore there can be no question of their non-admission.

[...] 

Reasons for the Decision

[...]

2.2 Admission of prior uses of Kombilock and Dubbellock

The appellant-proprietor requests the alleged prior uses referred to as Kombilock and Dubbellock not to be admitted as not proven, and in particular the affidavits D19 and D20, filed with the opponent's letter of 15 April 2011, also not to be admitted as late filed (grounds of appeal, page 8, 2nd and 5th paragraph).

2.3 As a matter of principle, such a retroactive non-admission of evidence appears hardly possible, given that the opposition division not only admitted this evidence but also based its decision on this evidence. The evidence cannot therefore now be retroactively excised from the first-instance proceedings. Therefore, the question of their admittance is moot, rather the Board views this request as amounting to a request to disregard the evidence on file with respect to these prior uses.

2.3.1 No arguments are apparent to the Board which would justify the discounting of the evidence in question. As to the affidavit D19 and D20, the opposition division admitted these into the proceedings (decision, reasons point 2, communication dated 4 July 2011 points 1 and 2) as further evidence relating to the alleged prior use. In so doing the opposition division appears to have properly exercised its discretion, and the Board sees no reason to overrule this. The admission of the affidavits does not appear to have been challenged by the proprietor in written proceedings, whereas their relevance was discussed (see letter of 31 October 2011, page 2). Likewise they appear to have been discussed at the oral proceedings without challenge from the proprietor (see minutes, points 3, 4, 32 and 33).

2.4 Affidavit of Mr Bo Carlsen, D28

The appellant-proprietor states for the first time in their letter of 10 August 2016 (see page 10) that the opposition division should have called Mr Carlsen, author of Affidavit D28, as a witness "in view of the substantiated doubts surrounding the prior uses". However, the appellant-proprietor has not specified any part of Mr Carlsen's affidavit that might be inconsistent or require any verification. Nor is it apparent to the Board that the proprietor provided any reason as to why they doubted the credibility of the affidavit D28 at oral proceedings before the opposition division (minutes, point 4, impugned decision, reasons 3.2.15), which might have warranted calling Mr Carlsen as a witness.

The Board itself sees no such inconsistencies or points requiring verification, nor apparently did the division (see impugned decision reasons 3.2.3 and 3.2.4). Therefore the Board sees neither reason as to why the opposition division should have called Mr Carlsen as a witness nor any reason to do so now, nor any cause to doubt the statements in the affidavit D28, or the credibility of its author. It is noted that the proprietors themselves at no point actually requested to hear Mr. Carlsen as a witness, neither before the Opposition Division nor before the Board.

2.5 The proprietor pointed to decisions T 0474/04 (OJ EPO 2006,129) and T 0716/06, ostensibly to support their argument that the affidavit can only be accepted when its author is heard as witness. However, the case underlying decision T 0474/04 differs from the present case in the decisive point that there the proprietor expressly requested to hear the author, whose affidavit was used against him. In case T0716/06, an offer to hear a witness was not followed and the case was decided against the party offering the witness, there the opponent. Otherwise T0716/06 explicitly stated that "There is normally no need for the competent department to hear a witness on an alleged prior use, if it does not evaluate differently the facts and arguments brought forward by the Opponent in support of the claimed prior use", Reasons No. 3, fourth paragraph. This decision does not discuss at all what the consequences should be where a proprietor is calling an affidavit into question, and also does not discuss how various possible requests (or merely arguments) from the proprietor could potentially affect the decision whether or not a witness offered by the opponent, i.e. the other party should be heard. Thus the cited cases cannot support the proprietor's position.

2.6 For all these reasons, the Board finds that the alleged prior uses known as Kombilock and Dubbellock and in particular the associated evidence filed in first instance proceedings should not be disregarded in the appeal proceedings (Article 114(2) EPC). Furthermore, absent any substantiated doubts concerning the credibility of the statements made in D28, the Board finds that the contents of the affidavit D28 are not to be excluded from the totality of the evidence merely because the the Opposition Division decided not to call Mr. Bo Carlsen as a witness.

[...] 

4. Main request

4.1 The impugned decision found that the alleged prior uses of the product called Kombilock, a snuff-box lid with its packaging, and the product called Dubbellock, a snuff-box, were prior used by sale and therefore prior art (see decision, reasons, section 3.2). The Board agrees with the decision in this respect.

4.2 According to established jurisprudence, in cases of alleged prior use where all evidence in support of the alleged public prior use lies within the power and knowledge of the opponent, while the proprietor has barely any or no access to it at all, it is incumbent upon the opponent to prove the alleged prior use to the standard of proof "beyond any reasonable doubt", see Case Law of the Boards of Appeal, 8**(th) edition, 2016 (CLBA) III.G.4.3.2, and the decisions cited therein. In particular to establish a prior use to this standard, the questions "what was disclosed", "when", "where" and "under which circumstances" must be answered, see for example T 2010/08.

4.3 Prior use of Kombilock

Kombilock is a retrofit lid for snuff cans. The appellant-opponent has supplied a sample of the Kombilock lid, PA1, together with its packaging PA2. These are as shown in photographs D3.

According to D2, an affidavit of Jonas Jönemark, director of sales at Swedish Match, the Kombilock lid was sold by companies within the Swedish Match group at least since June 2002. D2 makes reference to a Swedish Match price list, D4 (see page 3, third line from bottom, product 8810), photos of Kombilock in its packaging D3, which appear the same as PA1 and PA2, and an invoice, D5 addressed to the company 3:ans, detailing Kombilock with product number 8810.

In particular, D4, D5 and the barcode on the packaging PA2 (see last 4 digits minus the final check digit) consistently give the product number of Kombilock as 8810. The purpose of the European Article Number (EAN) barcode system is to assign a unique number to a product. The Board therefore considers that the Kombilock lid in the various documents is the same lid, not different lids with the same reference number. In the Board's opinion, what is alleged to have been prior sold is therefore clear.

4.4 In the Board's view the circumstances of the alleged prior use, and when it happened, are also proven beyond reasonable doubt by the affidavit D2 and supporting evidence D4 and D5. In particular the invoice D5 documents a sale of Kombilock with product code 8810 to the retailer "3:ANS TOBAK & DIVERS" on 12 May 2003. The Board finds it unlikely that such a mass-market product would be sold to a retailer under secrecy, nor has this been argued. The Board also finds it unlikely that Swedish Match would produce a price list in June 2002 that included products which were not available on the market before the priority date of the patent (August 2003), thus this further corroborates the statements in D2.

4.5 The appellant-opponent has supplied further affidavits, photos and invoices supporting the alleged prior use of Kombilock.

4.5.1 In particular D19, affidavit signed by Leif Henry Olsson of "3:ans Tobak & Diverse" states the company freely sold the Kombilock, as shown in annexed photographs, to consumers prior to August 2003. The photographs look identical to Kombilock PA1 and its packaging PA2. This is supported by a copy of the invoice D5.

4.5.2 Likewise affidavit D20, signed by Frank Svandal, founder of the company "Northerner.com", states that the company sold Kombilock to consumers before August 2003, as shown in annexed photographs. Also annexed are various invoices (8 January 2003, 21 January 2003, 25 March 2003, 3 April 2003 and 29 April 2003) showing that the retailer "Northerner" purchased Kombilock, with reference number 8810, from Swedish Match.

4.5.3 The appellant has also provided an Internet archive screen shot from the Northerner's on line shop, D30, dated 22 June 2003. D30 shows a picture of Kombilock looking identical to the sample PA1, and describing its double lid with space for used loose snuff. The Internet address also contains the number 8810, the same product reference that appears on all the above invoices and in the barcode on packaging PA2.

4.5.4 Moreover, in his affidavit, D28, Bo Carlsen states that he commissioned the company Plast-Teknik (later renamed Nolato, cf. D27) to make the Kombilock lid in 1991, as shown in the annexed photos and drawings. He also states that the design of the lid and its packaging remained unchanged from 1992 to 2006, apart from removal of an embossed name. The Board notes that the photos appear to show the same lid and packaging as PA1 and PA2.

4.5.5 The appellant-opponent has also provided a product specification from the manufacturer of Kombilock (Nolato), D24, and a fax D25 addressed to Bo Carlsen proposing a delivery plan for production of Kombilock with pivoting cover lid, dated 25 November 1991. The appellant-opponent has furthermore filed invoices from Nolato, D26, dated 4 February 2003, 11 April 2000, 11 May 2000 and 13 January 2003. Each invoice being for production of over 15000 pieces of "Kombilock Svenskt Snus Guld", the name appearing embossed on the cover lid of PA1. The invoices are addressed to Swedish Match. Each refers to Bo Carlsen and bears the article number 20150500, thus linking the article to elements of the technical drawing numbers annexed to D28, so corroborating Bo Carlsen's statements in D28. Furthermore, since D24, D25 and D26 all bear Bo Carlsen's name, his substantial involvement in the development of Kombilock appears evident.

4.5.6 In the Board's opinion, all the evidence paints a consistent picture, proving beyond any reasonable doubt that the Kombilock lid of sample PA1 and its packaging PA2 were prior used by sale.

The name Kombilock, the reference 8810 on invoices D17 and those annexed to D20, together with the affidavit of D28 with its annexed photographs and drawings, show that the same lid, linked also by the barcode EAN number on packaging PA2, was sold to the retailers "Northerner" and "3:ans Tabak & Divers". The Internet archive screen-shot D30 also supports the statement made in D20 that "The Northerner" not only bought Kombilock but furthermore made it available for sale on their web shop on 22 June 2003.

Finally, the affidavit of Bo Carlsen, D28, with its annexes, also supports the alleged prior uses by sale. Not only Bo Carlsen's statement itself confirms sales of the Kombilock lid, but also the Board finds it highly unlikely that "Swedish Match" would have commissioned a new lid in 1991, bought over fifteen thousand of them (cf. D26), at least by April 2000, followed by repeat orders for thousands more, inter alia in May 2000, without having sold one to a customer before August 2003.

4.5.7 As explained above, all the affidavits, D2, D19, D20 and D28 make reference to supporting documents. Thus although there may have been several years between the events described in these statements and the writing of the statements themselves, where the authors' memories might have lapsed, the documents on hand will have jogged them. In the case of D28, as explained above, Bo Carlsen was actively involved in the development of Kombilock, and nothing suggests that he could not have remembered the milestones of its progression from drawing-board to sold product. The Board therefore finds it convincing that the statements in the affidavits reflect what actually happened and are not rendered doubtful or inaccurate by the time-spans between events.

Therefore the Board considers that the prior use of Kombilock, PA1 and its packaging PA2, by sale, are proven to the necessary standard of proof.

4.6 Prior use of Dubbellock

4.6.1 Dubbellock is a snuff-box. The appellant-opponent has supplied a sample of the dubbellock, PB1, a press release D9, and its translation D9a, which includes photos of two boxes that appear structurally to be the same box as PB1. They have also provided photographs, D12, D18 (also referred to by the parties as PBnew), of a box looking structurally the same as PB1, and bearing a barcode EAN ending in 884 (minus the final check-digit) and a best before date of 4 July 2003. It is therefore clear what is alleged to have been prior used by sale.

4.6.2 D9 also states that the box in question would be introduced into service shops from 7 April 2003 and in everyday trade shops in May of that year. In affidavit D19, Leif Henry Olsson states that "3:ans Tobak & Diverse" offered and sold Grovsnus White portion tobacco in boxes as shown in photos appended thereto, before August 2003. The photos show a box structurally the same as PB1. The statements in D19 are consistent with invoice D17, dated 12 May 2003 (see 13th entry), which details Grovsnuss White 24 gram, with article number 884, as being sold by Swedish Match to the company 3:ans. The Board therefore considers, from this evidence alone, it is proven that a sale of Dubbellock took place and to whom. As with Kombilock, such mass-market products can hardly have been sold to retailers under secrecy. In any case, D19 states they were sold on to consumers prior to August 2003, likewise corroborated by the press release D9. Therefore the Board finds the circumstances of the sale likewise to be proven.

4.6.3 In addition, affidavit D20 and its annexes prove further sales of Dubbellock. In particular Frank Svandal states that Northerner.com offered, inter alia, Grovsnus White for sale prior to August 2003 in boxes as shown in annexed photos. The photos show a box structurally the same as PB1. To support this statement he also annexes an invoice dated 29 April 2003, showing Grovsnus White, with reference 884, as being sold by Swedish Match to the Northerner. The statements of D20 are further corroborated by screen shot D29, showing the Northerner's on-line shop on 11 May 2003 offering Grovsnus White, with a pictured snuff-box apparently structurally the same as PB1 and describing its double lid. Furthermore, the number 884 appears in the web address for the product.

4.6.4 The Board finds it unlikely that a dated press release apparently taken from an Internet web page, with an address string incorporating the same date, would have been a draft that was never published.

The Board is also not convinced that the article number 884 refers solely to the product and not to the product with its packaging. It is true that different contents will have a different product reference number, just as the model PB1, which contained "General White" portions has an EAN containing a product reference number 881 (the last four digits of the bar code EAN, minus the final check digit), whereas the "Grovsnus White portions" snuff-box in the photographs D18, invoice D17 and archived web page D29, have a number 884. However, as explained above, the idea of EAN numbers is, inter alia, to assign a unique product identity number to an article. Far from this number merely designating contents it designates the complete assembly of contents and its packaging. In the case of invoice D17, the photos of D12 link this invoice to a particular snuff-box, namely Dubbellock, structurally as PB1.

4.6.5 Although it may be true that D17 in isolation might not prove that an end consumer bought the product with reference 884 from 3:ANS, this does not negate the fact that the evidence shows 3:ANS bought the product before the priority date, and this itself is a public prior use by sale. In any case, given the other evidence, the press release D9, the affidavits D19 and D20, the photographs D12, with best before date 4 July 2003 and the web shop screen shot D29 dated 11 May 2003, the Board also finds it proven beyond any reasonable doubt that end-users were offered Dubbellock before the priority date.

4.6.6 The Board is therefore of the opinion that the prior use by sale of Dubbellock is proven to the necessary standard of proof.

4.7 In summary the Board finds both the prior use of Kombilock and Dubbellock proven beyond any reasonable doubt and therefore that they are prior art within the meaning of Article 54(2) EPC.

[...]

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

Reasons for the Decision

This decision T 564/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T056412.20160914. The file wrapper can be found here. Photo "Snuff Boxes" by plenty.r obtained via Flickr under CC BY-SA 2.0 license (no changes made).