UPC: Late filed physical evidence cannot clarify the content of an earlier filed brochure

In a recent decision from the Vienna Local Division of the Unified Patent Court (UPC), the Court maintained EP 3705415, taking a strict approach to the admissibility of late-filed evidence in a novelty attack based on a commercial brochure.

The patent in suit, held by Messerle, relates to a food packaging product. Messerle initiated infringement proceedings against Sabert in respect of their “Tray2Go” product, to which Sabert responded by filing a counterclaim for revocation.

Sabert asserted that the patent lacked novelty in view of a commercial brochure published by another company. It was arguably not clearly discernible from the 2D images in the brochure that the product had all the features of the patent. 

In an attempt to address this deficiency, Sabert submitted physical samples of the product in the brochure with their Reply to Defence to counterclaim. During discussions of admissibility, it was argued that these enclosures were not filed as separate pieces of prior art (and especially not as a claim to and proof of a public prior use), but in support of the skilled person’s understanding of the disclosure of the commercial brochure. 

The Court rejected this approach, stating that the brochure is a stand-alone piece of prior art and will be evaluated by the person skilled in the art as such. The physical evidence of the product may not be used to establish the disclosure of the brochure, and in fact must be avoided so as not to reconstruct the disclosure with hindsight. 

The Court further found that the late-filing of samples and related arguments did not further develop the point in dispute, namely what the skilled person takes as disclosure from the brochure, but instead amounted to introducing a whole new line of attack based on alleged prior use.

Consequently, the physical evidence was not admitted and it was concluded that the brochure in isolation did not clearly and unambiguously disclose all the features of Claim 1 of the patent. 

This decision demonstrates that external physical evidence cannot be used to supplement or clarify what a document discloses, risking hindsight reconstruction. Furthermore, it highlights the Court’s discipline with regards to admissibility of late-filed evidence – it must develop an existing argument and cannot be used to disguise the introduction of an entirely new attack.