T 0482/89 (Power supply unit) of 11.12.1990

Summary of Facts and Submissions

I. European patent application No. 84 401 017.3, filed on 17 May 1984 and claiming the priority of a French patent application filed on 17 June 1983, was granted on 21 January 1987 as European patent No. 129 454 on the basis of ten claims, Claims 1 and 6 of which read as follows:

"1. A process for measuring the available self-sufficiency of a chopped electric power supply connected to an external source

6. An apparatus for carrying out the process as claimed in Claim 1, said apparatus comprising a chopped power supply ..."

II. On 21 October 1987 the respondents filed notice of opposition to this patent and requested that it be revoked in its entirety on the grounds that its subject-matter lacked novelty because it had been made available to the public by prior use. The grounds for opposition were based on the following documents:

A1: Two delivery notes Nos. 689747 and 690967

A2: Circuit diagram of Nixdorf power supply unit 3110 (sheets 1-6)

A3: Description of power supply unit 3110, Doc. No. 028, dated 6 January 1984, pages 1-39.

In a letter dated 17 April 1989, the respondents further submitted the following document:

A3a: "Tech. Datenblatt" of power supply unit 3110, Doc. No. 422, dated 18 January 1983, pages 1-10.

III. In the contested decision delivered on 5 July 1989 the Opposition Division revoked the patent, ruling that the delivery notes proved that the Nixdorf power supply unit 3110 had been made available to the public before the priority date of the contested patent. It also ruled that the circuit diagram demonstrated that power supply unit 3110 was identical to the subject-matter of Claims 1 and 6 of the contested patent, a fact not disputed by the patent proprietors.

IV. On 22 July 1989 the appellants filed the present appeal against the Opposition Division's decision. They paid the appeal fee on 25 July 1989. In the grounds for appeal filed on 10 November 1989 they pointed out that the delivery notes had not been signed either by the supplier or the consignee, and consequently had no legal status. The appellants likewise expressed doubts as to the legal status of the internal documents (A2 and A3) submitted to identify power supply unit 3110 and requested that the Board of Appeal rule that the documents produced by the respondents, and in particular the delivery notes, were inadmissible and did not constitute proof of disclosure prior to the invention claimed.

V. In their reply of 16 March 1990 the respondents submitted the following documents:

A4 and A5: Ready for service notice (Mitteilung der Betriebsbereitschaft) Nos. 113751 and 113754.

The respondents argued essentially that document A4, dated 16 May 1983, had the same order number (Auftrags-Nr. 168355100) and the same machine number (Maschinen-Nr. 94) as delivery note No. 690967. Document A5, signed by the consignee on 9 June 1983, had the same order number (Auftrags-Nr. 168368200) and the same machine number (Maschinen-Nr. 136) as delivery note No. 689747. Documents A4 and A5 therefore confirmed delivery of the equipment to two different customers. The equipment could not have been commissioned without the power supply unit.

Documents A2 and A3 were merely a description of power supply unit 3110. The changes made to the circuit diagram did not concern characteristics relevant to the present case. The respondents also proposed that the Board call Mr Friedhelm Römer as a witness to confirm that power supply unit 3110 was identical to the subject-matter of the contested patent.

VI. In response to a communication from the Board of Appeal sent under Article 11(2) of the Rules of Procedure of the Boards of Appeal the respondents submitted the following documents:

A6: Invoice (Beleg-Nr. 15872, pages 1-3)

A7: Nixdorf internal memo dated 30 January 1981.

The respondents argued essentially that power supply unit 3110 was a part of the central processing unit. The invoice A6 dated 26 May 1983 had the same order number as delivery note No. 690967 and document A4. It had the same number, 113751 (FA-Nr.), as document A4. Delivery note No. 690967 and documents A4 and A6, taken together, demonstrated that a word processing system containing power supply unit 3110 had been delivered to the "Bank für Gemeinwirtschaft" in Darmstadt before the priority date of the contested patent. Delivery had been made under Nixdorf's standard conditions of sale which did not include an obligation to maintain secrecy.

VII. Oral proceedings were held on 11 December 1990.

(a) Regarding the claimed deliveries the appellants argued essentially as follows: it was not possible to verify the authenticity of the documents submitted by the respondents. Authenticity would have to be confirmed by a third party, unconnected with the respondents, before they could be viewed as admissible. Furthermore these documents did not prove that the deliveries claimed by the respondents had indeed taken place.

The respondents essentially reiterated the arguments they had already put forward (see V. and VI. above) and submitted the originals of the documents relating to the delivery made to the "Bank für Gemeinwirtschaft", namely delivery note No. 690967 and documents A4 and A6. They also supplied the Board with a copy of Nixdorf's general conditions of sale (Bedingungen für Kauf - Stand 5/81) valid at the time the two deliveries were made. Although the warranty was dependent upon a service contract being concluded with Nixdorf, this in no way represented an obligation to maintain secrecy. The licence agreement mentioned in document A4 referred only to the software. Power supply unit 3110 had therefore been made available to the public by these deliveries, which had taken place before the priority date of the contested patent.

(b) With a view to ascertaining the salient features of power supply unit 3110, the Board called Mr Friedhelm Römer, an engineer at Nixdorf, as a witness. Essentially he explained that he had been involved in the development of power supply unit 3110 for a word processing system. The relevant work had been completed during week 36 of 1982. This power supply unit was the only one which could be fitted into the frame of the word processing system. Document No. 225 (document A2) was a circuit diagram of power supply unit 3110. All the changes later made to power supply unit 3110 had been entered in the diagram. He had written document A3, which described power supply unit 3110.

(c) Regarding the subject-matter of the contested patent, the appellants argued essentially that the subject-matter did not constitute a word processing system.

(d) During oral proceedings the appellants submitted a new claim as an auxiliary request. This claim read as follows:

VIII. The appellants request that the contested decision be set aside and that the patent be maintained unamended. In the alternative they request that the patent be maintained on the basis of the claims in their auxiliary request.

IX. The respondents request that the appeal be dismissed, in the alternative that the proceedings be continued in writing if the Board rules that the appellants' auxiliary request is admissible.

Reasons for the Decision

1. The appeal is admissible.

2. The appellants have disputed the authenticity and the legal status of documents A1 to A7 submitted by the respondents. Bearing in mind that the documents in question are internal documents of the respondents' company, the appellants feel that a third party, unconnected with the respondents, should confirm their authenticity before they can be regarded as admissible.

2.1 On this point the Board notes that under Article 117(1)(c) EPC in any proceedings before, inter alia, an Opposition Division or a Board of Appeal, the means of giving or taking evidence may include the production of documents. As the EPC neither defines the term "documents" nor gives any indication of the probative value of such documents, the Board takes the view that the principle of free evaluation of evidence should apply (cf. Singer: "Europäisches Patentübereinkommen", 1989, pp. 507 and 510). Any kind of document, therefore, regardless of its nature, is admissible during proceedings, including appeal proceedings, before the European Patent Office. The probative value of any such document, however, depends on the peculiar circumstances of the particular case.

2.2 The principle of free evaluation of evidence also applies to the hearing of witnesses under Article 117(1)(d) EPC. In particular, the EPC does not rule out hearing an employee of one of the parties to the proceedings as a witness.

2.3 Acting on the principle recognised above, the Board began by examining the documents relating to the delivery made to the "Bank für Gemeinwirtschaft", i.e. delivery note No. 690967, documents A4 and A6, Nixdorf's conditions of sale (Bedingungen für Kauf - Stand 5/81), and documents A2, A3 and A3a describing the details of Nixdorf's power supply unit 3110.

2.4 While the Board agrees with the appellants that because delivery note No. 690967 was not signed by the consignee, it did not in itself prove that delivery really took place, the said delivery note must be looked at in combination with documents A4 and A6, both of which bear the same order number (168355100) and relate to the same delivery.

2.5 During oral proceedings the respondents provided the Board with the originals of these documents and it saw no reason to doubt their authenticity. Considered together and in combination with Mr Römer's testimony, these documents allow the Board to conclude with a sufficient degree of certainty that the respondents did supply the "Bank für Gemeinwirtschaft" in Darmstadt with a word processing system 8840/5 on 3 May 1983 (see delivery note No. 690967), that the system was commissioned on 15 or 16 May 1983 (see document A4 which is signed by the Bank's central administration) and that the respondents did send the invoice for this delivery on 26 May 1983 (see document A6). Furthermore, it is evident from the delivery note and the invoice that the system supplied contained a power supply unit of the 3110 type, version 00. According to Mr Römer's testimony, only a power supply unit of the 3110 type could be fitted in the word processing system's frame. It is clear that the system could not have been commissioned without the correct power supply unit.

This delivery, including commissioning, took place before the priority date of the contested patent (17 June 1983).

2.6 As to the conditions under which the system was supplied, the Board sees no reason to doubt that the delivery was made under Nixdorf's standard conditions of sale, which do not contain any obligation to maintain secrecy, as is shown by the document "Bedingungen für Kauf" submitted to the Board during the oral proceedings. Concerning the document's authenticity the Board finds it hard to imagine that the respondents would provide the Board with bogus conditions of sale, especially as the document in question is one which would be well known to Nixdorf's customers. As to the reference made to a licence agreement in document A4, the Board accepts as true the respondents' explanation that it refers solely to the software, as is standard practice with contracts of this nature.

2.7 With regard to the salient features of power supply unit 3110, Mr Römer stated that he had been involved in its development. He said that document A2 shows the circuit diagram of power supply unit 3110 as developed. He also stated that he was the author of document A3 which describes power supply unit 3110. The Board notes that all six sheets of document A2 and page 1 of document A3a bear his signature. The Board also notes that documents A2, A3 and A3a refer to the type 3110 power supply unit, version 00, the one delivered to the "Bank für Gemeinwirtschaft" in Darmstadt. Even if documents A2 and A3 date from after the priority date of the contested patent, each sheet of document A2 indicates that the initial drawing was produced in November 1982 (before the priority date of the contested patent). The Board sees no reason to doubt the witness's statement that power supply unit 3110, which was sold before that priority date, is identical to the one described in documents A2, A3 and A3a (apart from some slight changes made later which are clearly marked as such).

2.8 For the above reasons the Board of Appeal concludes that the respondents have furnished sufficient proof that a power supply unit of the type 3110.00, conforming to documents A2, A3 and A3a, was sold to the "Bank für Gemeinwirtschaft" in Darmstadt without an obligation to maintain secrecy before the priority date of the contested patent.

3. It is the Board's view, and in accordance with principles well-established in the case law of the majority of Contracting States, that a single sale is sufficient to render the article sold available to the public within the meaning of Article 54(2) EPC, provided the buyer is not bound by an obligation to maintain secrecy. It is not necessary to prove that others also had knowledge of the said article. It is the Board's opinion that this principle is also applicable to the present case, where the article was sold to a bank, even though the warranty was dependent upon a service contract being concluded with the seller.

3.1 Leaving aside the question of whether the respondents furnished sufficient proof of the delivery claimed on the basis of delivery note No. 689747, the Board therefore concludes that power supply unit 3110.00 manufactured by Nixdorf was made available to the public before the priority date of the contested patent. It therefore forms part of the state of the art within the meaning of Article 54(2) EPC.

4. Prior to oral proceedings the appellants never once contested the Opposition Division's conclusion that the circuit diagram of power supply unit 3110.00 (document A2) shows an apparatus as described in Claim 6 of the contested patent, for carrying out the process described in Claim 1 of the contested patent.

4.1 ...

4.2 Even if the circuit diagram shows some changes made after the priority date of the contested patent, the Board notes that these changes do not affect those parts corresponding to the subject- matter of Claims 1-6 of the contested patent as granted.

4.3 It is the Board's view therefore that the apparatus described åååååååååååååååååå in Claim 6 and the process described in Claim 1 of the contested patent as granted lack novelty compared with power supply unit 31 10.00 manufactured by Nixdorf.

4.4 The contested patent cannot herefore be maintained as granted.

6. Under these circumstances, the appeal must be dismissed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.