T 2440/16 - The Board hears witnesses

Key points

• Board 3.3.06 hears witnesses concerning the alleged public prior use.
The Board, in machine translation: "The opposition was based, among other things, on the obvious previous use of a machine of the type Oasys OCL 600/3 for the production of laminated plastic cards with the serial number 42010 (previous use "Hythe Offset"). This objection was based, inter alia, on video D1.6 showing this machine in operation but recorded after the priority date and the associated affidavits of Mr. Bridger (D1.1) and Mr. Lane (D2.1)." The OD consisted of four members.
• "Although the opposition division admitted numerous late-filed documents in connection with the prior use "Hythe Offset" into the proceedings, it did not consider the prior use of the machine in the mode shown in video D1.6 before the priority date to have been proven."
• "With its statement of grounds of appeal, the appellant submitted a further statement by Mr Bridger (D32) and a written comment (D33) on video D1.6 and submitted, among other things, that the public prior use "Hythe Offset" shown in D1.6 had been proven."
• "[The appellant/opponent] requested, in the alternative, that Adrian Lane, Richard Bridger, Elliot Lamb, Steven Walker and Colin Stokes be heard as witnesses should the Board consider dismissing the appeal "
• The Board decided to hear the five witnesses (!). Notably, as the OD consisted of four members, the Board consisted of five members.
• The hearing took place on 27-28 April. The witnesses were heard on 27 April, from 09:45 to 11:55, giving 70 pages of transcript. After a break until 13:20, the evidence was discussed with the parties. The Board deliberated from 14:45 to 15:20 and concluded that the alleged public prior use was proven. Novelty was then discussed. The Board concluded that the main request was not novel; the patentee subsequently withdrew the main request and some auxiliary requests. 
• There were no objections to the remaining auxiliary request, and the Board's decision contains no substantive reasoning. (minutes)
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t162440du2.html

Machine translation

 facts and requests

I. The opponent's appeal is against the decision of the opposition division to reject the opposition to European patent No. 2 029 360.

II. The objection was based, among other things, on the obvious previous use of a machine of the type Oasys OCL 600/3 for the production of laminated plastic cards with the serial number 42010 (previous use "Hythe Offset"). This objection was based, inter alia, on video D1.6 showing this machine in operation but recorded after the priority date and the associated affidavits of Mr. Bridger (D1.1) and Mr. Lane (D2.1).

Although the opposition division admitted numerous late-filed documents in connection with the prior use "Hythe Offset" into the proceedings, it did not consider the prior use of the machine in the mode shown in video D1.6 to have been proven before the priority date.

III. With its statement of grounds of appeal, the appellant submitted a further statement by Mr Bridger (D32) and a written comment (D33) on video D1.6 and submitted, among other things, that the public prior use "Hythe Offset" shown in D1.6 had been proven and established constitutes prior art which is detrimental to the novelty of Claim 1 as granted.

She also requested, in the alternative, that Adrian Lane, Richard Bridger, Elliot Lamb, Steven Walker and Colin Stokes be heard as witnesses should the Board consider dismissing the appeal and that the appeal fee be reimbursed.

With regard to auxiliary request 2 filed in the first instance, the appellant argued that its subject matter was also not new or at least not inventive compared to the prior art shown in video D1.6.

IV. With the reply to the appeal, the respondent submitted six auxiliary requests, with auxiliary requests 1-5 corresponding to the auxiliary requests filed in the first instance, and requested, among other things, that the opposition be rejected as inadmissible, that the appeal be dismissed in the alternative and that the request for the hearing of the witnesses be rejected.

V. In its preliminary opinion, the Chamber held, inter alia, that Messrs. Lane, Bridger, Lamb, Walker and Stokes should be called as witnesses. The board issued a corresponding decision on the taking of evidence under Rule 117 EPC on October 6, 2020.

VI. With its submission of December 21, 2020, the Respondent requested that the decision on the taking of evidence be set aside and that the witnesses not be heard, or alternatively that the matter be referred back to the opposition division.

VII. On June 11, 2021, the Chamber informed the parties that, due to the Covid-19 pandemic, it did not consider it feasible to hold the oral hearing scheduled for July 21, 2021, including the on-site hearing of witnesses. The chamber suggested sticking to the planned hearing date in order to discuss in advance in a video conference the questions and motions that the respondent raised or made in its submission of December 21, 2020. The parties agreed, whereupon the Chamber quashed the witness summons.

VIII. In the oral proceedings held on July 21, 2021, the appellant withdrew the request for reimbursement of the appeal fee. The Respondent referred to her written submissions with regard to the request that the opposition be dismissed as inadmissible. At the end of the hearing, the Chairman informed the parties that the Chamber remained of the opinion that the decision on the taking of evidence should be upheld by the examination of witnesses. The Respondent then declared that he would challenge all members of the Chamber because of bias, whereupon the Chairman declared that the challenge procedure would be initiated.

IX. With the interim decision of May 17, 2022, the application for rejection of the chamber members was rejected due to bias.

X. The Chamber then summoned the oral hearing again and ordered the witnesses to be summoned, referring to the original decision to take evidence.

XI. In the on 27.-28. At the hearing held on April 1, 2023, the witnesses were heard. After discussing the main request and the first auxiliary request, the appellant stated that it had no objections to the second auxiliary request and that it did not request any adaptation of the description. The respondent then withdrew the request to reject the opposition as inadmissible as well as the main request and the first auxiliary request.

XII. The final motions were as follows:

Although the appellants requested the complete revocation of the patent, they also stated that they had no objections to the second auxiliary request.

The respondent requests maintenance of the patent in amended form on the basis of the second auxiliary request filed with the statement of defense.

Reasons for decision

1. The second auxiliary request ranks highest in the proceedings after the respondent has withdrawn the requests to reject the opposition as inadmissible, to dismiss the appeal or to maintain the patent in amended form on the basis of the first auxiliary request.

2. During the oral hearing, the appellant stated that she had no objections to this request. For its part, the board sees no reason to examine ex officio whether the request satisfies the requirements of the EPC. An adjustment of the description was also not requested. Thus, the patent can be maintained as granted on the basis of the claims of this auxiliary request and the description and drawings.

decision formula

For these reasons it is decided:

1. The contested decision is set aside.

2. The matter is referred to the lower court with the proviso

remitted, the patent as follows

to maintain:

- Claims 1-12 of auxiliary request 2, filed with

the reply to the statement of grounds of appeal;

- Drawings 1-6 of the patent as granted;

- Description columns 1-10 of the patent as granted.