IP Report 2015/I

Reported by Dr. Stefan Steinbrener

One of the more complex items on the non-exhaustive list of non-inventions set out in Article 52 (2) EPC is the exclusion of presentations of information. Neither in the Convention nor in its preceding travaux préparatoires is any explanation given of what has to be understood by a “presentation of information”.

Nor is the existing case law of the Boards of Appeal consistent in this respect: while presentation of information is seen by some Boards (see, e.g., decisions T 49/04-3.4.03 or T 1749/06-3.4.03) to relate only to the information contents but not to its layout (only “what” is excluded but not “how”), other Boards (see, e.g., decisions T 1143/06-3.5.01 or T 1741/08-3.5.06) are much stricter and base their argument on whether or not the effect of data visualization, including both contents and layout, is only on the mind of the user, in particular by easing a mental evaluation or lowering a cognitive burden. In this case, a technical effect is denied, more or less irrespective of whether such evaluation step may occur in an otherwise technical environment. Decision T 643/00-3.5.01 takes up an intermediate position by holding that even if an evaluation by the user on a mental level is involved in solving a technical task such as searching and retrieving images stored in an image processing apparatus in a more efficient or faster manner, the mere fact that mental activities are included does not necessarily qualify subject-matter as non-technical.

Since it goes without saying that visualization aspects play an ever increasing role in modern man-machine interactions which are most notably realized by graphical user interfaces, the current legal and judicial situation does not seem to be satisfactory.

In the recent case T 1214/09, Board 3.5.07 joined the club of more severe Boards. The underlying European patent application EP 0 977 132 A2, which had been refused by the Examining Division for lack of inventive step, related to an information managing device including an LCD display, storage means for storing image files and corresponding thumbnail files and input means for selecting and displaying a plurality of thumbnail files. By evaluating these files, a user could retrieve and display the image file corresponding to a desired thumbnail file.

The subject-matter of claim 1 according to the main request before the Board differed from the prior art by the information managing device being programmed to

(i) display the thumbnail file images partially overlapping and in a three-dimensional arrangement that was dependent on the number of displayed thumbnail file images, for which purpose

(ii) a table was created using suitable software means specifying the screen coordinates for each thumbnail file image.

In the Board’s view, feature (i) concerned the manner in which the thumbnail file images were displayed and hence related to a presentation of information, excluded “as such” from patentability under Article 52 (2) (d) EPC. The Board therefore went on to determine the extent to which feature (i) might interact with the technical subject-matter of the claim for solving a technical problem.

The appellant argued that the arrangement of thumbnail file images defined by feature (i) contributed to improved evaluation of a large number of thumbnail file images by the user and thereby solved the problem of enabling more efficient image retrieval. Since feature (i) appeared to cover arrangements in which almost none of the thumbnail file images could be recognized, the Board questioned whether the alleged effect was actually achieved over the whole scope of the claim, however chose to first address the question whether the alleged effect was technical.

Referring to decisions T 643/00-3.5.01 and T 1143/06-3.5.01, both decided by one and the same Board, however in different compositions, Board 3.5.07 found that “feature (i) contribute/d/ only to improved search and retrieval in that it (allegedly) improve/d/ the cognitive evaluation of the displayed thumbnail file images by the user”, and that this situation was similar to that considered in T 1143/06, where the “direct effect” of the visualization was the impression it made on the user. The problem solved was therefore not concerned with the search for, and retrieval of, information, but was that of presenting information about data files to a person in such a manner that he or she could easily evaluate it. This wording demonstrated that the problem was not a “purely technical one”, so that a “direct technical effect” seemed to be absent.

In the Board’s opinion, decision T 643/00 admittedly held that arranging a predetermined plural number of images in a side-by-side manner at a low level of resolution and allowing selection and display of an image at higher resolutions contributed to the technical solution of the technical problem of an efficient search, retrieval and evaluation of images. However, in that case the cognitive evaluation of the displayed thumbnail file images formed an integral part of the solution to the technical problem of an efficient search, retrieval and evaluation of images, and this solution did not rely on an improvement in this cognitive evaluation, e.g., in the form of a lowered cognitive burden. The solution rather resided in an efficient (new) manner of inputting the selection of a desired image.

The appellant’s reference to decisions T 49/04 and T 1749/06 turned out to be not helpful because the Board, though acknowledging a different interpretation of the meaning of “presentation of information” applied, did not follow this case law without giving much reasoning as to why. Rather, the Board held that under the given circumstances any improvement in the efficiency of image retrieval could only be the result of the non-technical improvement in the user's evaluation of the displayed thumbnail file images. Hence, feature (i) did not contribute to a technical solution of the problem of enabling more efficient image retrieval and in consequence was disregarded for inventive step.

Since feature (ii) relating to the implementation of feature (i) in software was found obvious from the prior art, the subject-matter of claim 1 did not involve an inventive step and was thus not allowable.

Remarks
The Board did not deny any contribution by the claimed arrangement to improved search and retrieval of stored images. However, in the Board’s judgment, the arrangement was not based on considerations other than those proper to the field of designing presentations of information for human viewing and hence was not
an expression of any technical principle.

Hence, it appears that with the new decision the case law moves in the direction of denying technical character of mental evaluation steps based on data visualization, even if these steps are included in otherwise technical subject-matter like methods for data retrieval. In this context, additional requirements for accepting a technical contribution have been established, in particular the necessities of a “direct technical effect” or an “unbroken chain of technical effects” and a “purely technical problem”.

In this context, it has, however, to be noted that Article 52 (2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded “as such”. Hence, as is normally accepted for other exclusions listed in Article 52 (2) EPC, non-technical features are ignored in assessing novelty and inventive step only to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e., do not provide a contribution to the technical character of the subject-matter claimed (see, e.g., decision T 154/04-3.5.01).

In the present case, it appears that a technical contribution of the thumbnail arrangement displayed has not entirely been ruled out by the Board when finding that feature (i) indeed contributed to improved search and retrieval, but “only” by an aspect of presentation of information. This finding therefore begs the fundamental question under what circumstances, and if at all, presentation of information, normally including a human mental interaction, can make a technical contribution. One might therefore have doubts whether such a strict approach is systematically correct and whether the standard to be applied should not preferably be along the lines of T 643/00 accepting technical interactions by visualization steps in an overall technical method.

In any case, taking account of the turn the case law is about to take, claims based on visualization aspects should at least be drafted such that a comprehensive set of features clearly defining an altogether technical subject-matter is included, and not only visualization steps are referred to.

Reported by Dr. Tilman Müller-Stoy

In May 2014, the decision of the Enlarged Board of Appeal (EBA) in case R 19/12 allowing in a review case an objection to the Chairman of the EBA based on suspicion of partiality was widely reported.

The EBA held that, considering the integration of the Chairman as Vice-president DG 3 into the administration of the Office at the management level, the suspicion of the petitioner that the replaced Chairman might possibly not be able to entirely detach his jurisdictional activities from the constraints and influences due to his participation in management decisions of the Office could not be considered to be a merely subjective impression or a merely general suspicion. Rather, a reasonable, objective and informed person might have good reason to fear that the Chairman might possibly not exercise his judicial functions without being influenced by requirements which are referred to him being the Vice-president DG 3.

Also in review case R 2/14, the petitioner objected to the Chairman of the EBA, referring to the decision given in case R 19/12. Moreover, an objection to the technical member and the legally qualified member was raised, inter alia submitting that the concurrent assignment of both members to the Technical Boards of Appeal and to the EBA implied a fundamental and systematic deficiency in the judicial system of the EPO. Citing decision R 12/09 (Reasons, pt. 6), the EBA states that the dual capacity of members of the EBA as members or chairmen of the Technical Boards of Appeal or the Legal Board of Appeal complies with the legislator’s intention when enacting Article 112a EPC. Thus, these members’ dual function should not, in itself, constitute a reason for objection under Article 24 EPC.

As to the objection to the Chairman, the EBA does not see any reason to re-examine the factual findings and legal conclusions of the EBA in R 19/12 or to add anything to them. The EBA notes that the Chairman, in his comments on the objection, has assured the Board that, following decision R 19/12, all his managerial activities have been discontinued, in particular his membership in the President’s Management Committee (MAC) and the EPO’s General Advisory Committee (GAC), with the exception of his participation as an observer in the MAC for points of discussion having a direct bearing on the Boards of Appeal and their support services. As a consequence, the EBA finds that the present factual circumstances clearly differ from those on which decision R 19/12 was based.

The EBA concedes that the Chairman’s dual functions laid down in Article 10 (2) f) and (3) EPC for his managerial function and Article 23 (3) EPC with regard to his judicial function could in principle come into conflict with one other, both provisions being of equal ranking. The EBA denominates this as a “normative conflict” and takes recourse to German constitutional law to solve this conflict. The decision cites the principle of “praktische Konkordanz” (“practical” or “normative concordance”) being applied in order to establish a balance between two conflicting fundamental rights provisions. In applying this principle, the EBA concludes that the President’s power to give instructions to the Chairman in his function as Vice-president is limited by virtue of Article 23 (3) EPC with the consequence that the Chairman is relieved of any obligation to obey any instructions, or to observe any directions, or to assist the president if and to the extent that this might affect him or any other member of the Boards of Appeal, directly or indirectly in performing their judicial duties.

The EBA concedes that the principle of “praktische Konkordanz” has been developed in connection with rules governing fundamental rights. Whereas the EPC may be considered as the constitution of the EPO, the status of the Vice-president is certainly not a fundamental right. However, the independence of the Board of Appeals is the necessary pre-requirement of the fundamental right of the parties to the proceedings of having access to a proper court. Perhaps a more obvious parallel to German constitutional law would have been to cite the decision of the German Supreme Administrative Court of 1959 which gave rise to the creation of the Federal Patent Court stating “the German Constitutional Court has developed the principle that the courts have to be specific institutions, separated from the executive, because only in this way a jurisdiction can be realised which can act vis-à-vis the state like an uninvolved third party” (GRUR 1959, 435, at p. 437).
The EBA held oral proceedings in November 2014. Events in December 2014, in particular the temporary removal of a member of the Boards of Appeal from office, prompted the petitioner to make further submissions basing the alleged suspicion of partiality on new facts and arguments. Whereas the EBA accepts that these submissions could not have been made earlier, the Board, relying on its discretion, refuses to consider the new submissions in the pending proceedings, on the grounds that they amount to a fresh case. This raises the question how this exercise of discretion can be reconciled with the petitioner’s right that no judge should decide its case in respect of whom it may have good reason to assume partiality (G 1/05, OJ EPO 2007, 362, Reasons, pt. 5). The latter right is an expression of the more general fundamental right of the parties to a fair trial as enshrined in Article 6 of the European Convention on Human Rights to have the case decided on the basis of a fair trial. Safeguarding this right may require that the EBA has to take its decision on the basis of all relevant facts known to it at the date on which the decision is taken as stated in R 19/12 (Reasons, pt. 5).

Read interlocutory decision R 02/14 (click here)

Reported by Professor Dr. Alexander von Mühlendahl, J.D., LL.M.

Ms Hejduk, the claimant, is a professional photographer of architecture. At of a conference organised by EnergieAgentur, the architect Mr Reinberg, whose works Ms Hejduk had photographed, used her photographs in order to illustrate his buildings, which he was authorised to do by Ms Hejduk. EnergieAgentur subsequently, without Ms Hejduk’s consent, made those photographs available on its website for viewing and downloading. Ms Hejduk, claiming infringement of her copyright, brought an action before the Vienna Commercial Court. Ms Hejduk relied on Article 5 (3) Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (“Brussels-I-Regulation”) to justify jurisdiction of the Austrian Court. EnergieAgentur raised an objection that the Court lacked international and local jurisdiction, claiming that its website is not directed at Austria and that the mere fact that a website may be accessed from Austria is insufficient to confer jurisdiction on that Court. Accordingly, the Vienna Commercial Court decided to stay the proceedings and to refer the following question to the Court of Justice of the European Union:

Is Article 5 (3) Brussels-I-Regulation to be interpreted as meaning that, in a dispute concerning an infringement of rights related to copyright which is alleged to have been committed by keeping a photograph accessible on a website, the website being operated under the top-level domain of a Member State other than that in which the proprietor of the right is domiciled, there is jurisdiction only

• in the Member State in which the alleged perpetrator of the infringement is established; and
• in the Member State(s) to which the website, according to its content, is directed?

The Court of Justice approached the question by referring to its established case law, according to which the term “place where the harmful event occurred or may occur” in Article 5 No. 3 Brussels-I-Regulation covers both the place where the damage occurred and the place of the event giving rise to it. This means that the claimant can sue the defendant – in addition to the courts of the defendant’s domicile – in either of those two places.

The Court recognised that the rights allegedly to have been infringed (here: the rights relating to the photographs) are territorial in nature. As regards the “place of the event” giving rise to the infringement, the Court explained that

[24] (…) the activation of the process for the technical display of the photographs on that website must be regarded as the causal event. The event giving rise to a possible infringement of copyright therefore lies in the actions of the owner of that site.

For the present case, that event can be localised “only at the place where EnergieAgentur has its seat, since that is where the company took and carried out the decision to place photographs online on a particular website.” Thus, jurisdiction of the Vienna Commercial Court could not be based on the place where the event giving rise to the damage occurred.

Turning to the second possible basis for jurisdiction of the Vienna Court, the place where the alleged damage occurred, the Court of Justice of the European first stated that it was necessary to determine, with regard to the Austrian rights involved here, whether the damage may occur in a state other than the place where the defendant took the decisions and placed the photos on the website. The defendant argued that as its website was not directed at Austria there could not have been any damage in Austria. The Court however held that, for purposes of jurisdiction based on the place where the damage occurred, the mere accessibility of the website in the Member State (here: in Austria) was sufficient:

[32] It is clear from the Court’s caselaw that (…) Article 5 (3) Brussels-I-Regulation does not require, in particular, that the activity concerned be ‘directed to’ the Member State in which the court seized is situated.

[34] In circumstances such as those at issue in the main proceedings, it must thus be held that the occurrence of damage and/or the likelihood of its occurrence arise from the accessibility in the Member State of the referring court, via the website of EnergieAgentur, of the photographs to which the rights relied on by Ms Hejduk pertain.

The Court added that the issue of the extent of the damage is part of the examination of the substance of the claim and is not relevant to the stage in which jurisdiction is verified.

Finally, the Court reiterated its approach to jurisdiction in cases of the kind involved here, namely that the jurisdiction of the court seized on the basis of the place where the damage occurred is limited to the Member State where the court is located.

The answer of the Court thus was as follows:

Article 5 (3) Brussels-I-Regulation (…) must be interpreted as meaning that, in the event of an allegation of infringement of copyright and rights related to copyright guaranteed by the Member State of the court seized, that court has jurisdiction, on the basis of the place where the damage occurred, to hear an action for damages in respect of an infringement of those rights resulting from the placing of protected photographs online on a website accessible in its territorial jurisdiction. That court has jurisdiction only to rule on the damage caused in the Member State within which the court is situated.

Remarks
The Hejduk judgment is part of a series of judgments of the Court dealing with the issue of jurisdiction over a defendant located in a Member State different from the forum state. The novel element in the present case is that “occurrence of damage”, for jurisdictional purposes, may be established on the mere accessibility of the website displaying infringing content in the forum state.

For claimants seeking enforcement of their national IP rights in the European Union the message is clear: Jurisdiction will always be available in the Member State where the right is protected, even if the alleged infringement is limited to placing infringing items on a website which is merely accessible in the forum state, without being directed at that state. Of course, whether and to which extent the claimant will recover damages depends on the applicable law – which will be the forum law because it is the law of the Member State where the right is protected.

When the infringement involves an EU-wide right, such as a Community trademark or a Community design, the rules are different – it follows from the Court’s judgment of June 5, 2014 (Case C-360/12 – Coty that jurisdiction on the basis of infringing acts committed is available only in the Member State where the infringer acted, not in the Member Stare where the damage occurred (see BARDEHLE ­PAGENBERG IP Report 2014/II).

According to the Court, the shape of the contested product was not merely perceived by the public as an aesthetical expression and variation of what was commonplace. Rather, the average consumer would perceive the product, due to its distinctiveness and without any examination and particular attention, as an indication of origin. Actually, the contested product would depart from the norm or customs of the sector, i.e., the design of chocolate bars. The fact that the addressed average consumer would conclude from the shape of the good to its commercial origin was supported, according to the Court, by a survey submitted by the plaintiff concerning the consumer’s perception of the defendant’s product. According to this survey, 71.5 % of all interviewees associated the defendant’s product with a specific company or a specific trademark.

In a third step, the Cologne Appeal Court addressed the fact that the consumer would perceive the contested single chocolate piece only when unpacking and then consuming the product but did not accept this as a valid defence. Rather, also a 3-D trademark, which could not be directly perceived by the consumer in the moment of the purchase decision because it is packed, could serve as an indication of origin and, thus, could be used as a mark if it is perceived as such when consuming the product. Moreover, in the case at hand, the challenged piece of chocolate was already shown on the packaging.

Then, in a fourth step, the Cologne Appeal Court examined, and denied, whether the asserted shape mark’s distinctiveness had been weakened. Rather, the products of the competitive environment introduced by the defendant were not sufficiently similar to the trademark-in-suit and/or not sufficiently present on the German market.

Subsequently, in a fifth step, the Court was called to compare the conflicting signs in terms of a visual similarity. Overall, the conflicting signs differed merely in the design of the surface but the “star” – contrary to the opinion of the defendant – did not characterize the overall impression. As a rule, the average consumer perceived a trademark as a whole and did not pay attention to its details. As a consequence, the “typical, soft shape” of the asserted mark as such was dominant while “details of the ornament” had “barely any relevance for the recollection”.

Finally, in a sixth step, the Cologne Appeal Court reminded the defendant that, according to established German case law, it was wrong from the outset to consider whether a risk of confusion can be excluded by the packaging of the challenged products. Trademark protection, said the Court, was directed against use of identical confusingly similar signs as such so that, as a rule, accompanying circumstances which lie beyond the trademark are irrelevant when examining a risk of confusion. In conclusion, the Court confirmed infringement.

Remarks
In light of the careful reasoning it appears difficult to find points of law which would allow finding non-infringement. Actually, the Cologne decision is good news for trademark owners after a series of cases denying claims for infringement of a shape mark (see ­BARDEHLE PAGENBERG IP Report 2014/I) and complicating acquiring protection for shape marks (see BARDEHLE PAGENBERG IP Report Special 2014/II).