Key points
- The decision includes a tutorial on proof of public prior use.
- "a) First variant - If the opponent's evidence on file, for example documents and affidavits, do not confirm the alleged facts, or if doubts remain as regards their credibility, and the opponent, as the party bearing the burden of proof, requests an inspection or hearing of such affidavit writers as witnesses, such hearing and/or inspection should be granted (T 1363/14, reasons 2.2.4)."
- "If, as a further variant, the opponent's evidence on file confirms the facts provided to substantiate the prior use with a sufficient degree of certainty (i.e. as such do not give cause to doubt their credibility) and the proprietor has contested the findings and offered counter evidence and/or requested to hear the authors of the affidavits as witnesses, it cannot be concluded at this stage that all the facts of the prior use have been proven. Rather, such a conclusion can only be drawn after taking and evaluating the entire available evidence offered by the parties, including (counter) evidence by the patent proprietor. Thus, if the opponent's evidence confirms the prior use, the (counter) evidence offered by the patent proprietor becomes relevant and needs to be considered. If assertions made in an affidavit or in any other witness declaration remain contested, a request from a party to hear the (available) witness must be granted before these assertions can be made the basis of a decision against the contesting party (Case Law of the Boards of Appeal, 10th edition, G.3.3.1)."
- "To conclude in such a case that the opponent proved its allegations without considering the counter evidence goes against the prohibition of prejudging the weight of evidence and violates the proprietor's right to be heard. It contradicts Articles 113(1) and 117(1) EPC which embody a basic procedural right generally recognised in the EPC contracting states, i.e. the right to give evidence in appropriate form and the right to have that evidence heard (G 2/21, OJ 2023, 85, reasons 41). This right applies not only to the party bearing the burden of proof but also to the other party with respect to counter evidence. Thus, to decide whether a fact can be regarded as proven, all the relevant evidence needs to be taken into consideration (G 2/21, OJ 2023, 85, reasons 42; T 474/04, reasons 6-10). "
- "The principle of unfettered consideration and evaluation of the evidence does not apply until after an offer of evidence has been taken up and cannot be used to justify not taking offered evidence into account (G 2/21, point 44 of the reasons). Thus, if the evidence offered as proof of contested facts is potentially relevant, the body hearing the case must, as a rule, order that it be taken into account (G 2/21, point 42 of the Reasons; see T 474/04, reasons 8, 10) otherwise the party's right to be heard would be violated. "
- Note also the Guidelines, regarding affidavits: "If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the opposition division and the parties to put questions to the witness and thus enables the opposition division to establish the facts on the basis of that person's testimony. If that person is not offered as a witness, the opposition division will not pursue this evidence further."
3.4 General principles for assessing an alleged prior use
If it has to be determined whether an objection based on a prior use is persuasive, in general, the following assessment needs to be made:
3.4.1 Step 1: It needs to be evaluated whether the prior use has been substantiated, i.e. whether the opponent has
- presented a chain of facts and arguments that describe the subject of the prior use;
- indicated when the prior use occurred;
- indicated how the subject of the prior use was made available to the public; and
- indicated what was disclosed by the subject of the prior use.
As to how detailed the substantiation needs to be depends on the specific circumstances of the case and the arguments presented by the proprietor.
3.4.2 Step 2: If the facts and arguments of the opponent presented in the first step are found to substantiate the prior use, a second step must establish whether evidence has been offered by the opponent, as the party bearing the burden of proof, in order to prove the alleged facts in dispute.
3.4.3 Step 3: An evaluation of the evidence provided by the opponent must be made as to whether the facts that were set out to substantiate the prior use are confirmed. This includes the assessment of the entire evidence offered by the opponent.
Depending on the outcome of the assessment, the next (fourth) step can vary:
3.4.4 Step 4:
a) First variant
If the opponent's evidence on file, for example documents and affidavits, do not confirm the alleged facts, or if doubts remain as regards their credibility, and the opponent, as the party bearing the burden of proof, requests an inspection or hearing of such affidavit writers as witnesses, such hearing and/or inspection should be granted (T 1363/14, reasons 2.2.4).
b) Second variant
If the opponent's evidence on file, does not confirm the alleged facts, or if doubts remain as regards their credibility and if the opponent does not request an inspection or hearing of witnesses, despite the deciding body not being convinced by the evidence on file, it is not necessary to initiate an inspection or to hear the witnesses even if this was requested by the patent proprietor. The reason for this is that the patent proprietor is not the party having the burden of proof. Thus, its request for an inspection is to be regarded as counter evidence. Such counter evidence and also the hearing of the authors of the affidavits as witnesses upon request of the patent proprietor only becomes relevant if the evidence provided by the party bearing the burden of proof (i.e. the opponent) confirms the facts set out by the opponent for substantiation of the prior use with a sufficient degree of certainty. Thus, if the evidence offered by the opponent is insufficient to convince the deciding body, no further assessment or taking of counter evidence is required as it would be irrelevant for the outcome of the decision. Rather, in such cases, it can be concluded that the alleged prior use was not proven and is thus not prior art under Article 54(2) EPC.
c) Third variant
If, as a further variant, the opponent's evidence on file confirms the facts provided to substantiate the prior use with a sufficient degree of certainty (i.e. as such do not give cause to doubt their credibility) and the proprietor has contested the findings and offered counter evidence and/or requested to hear the authors of the affidavits as witnesses, it cannot be concluded at this stage that all the facts of the prior use have been proven. Rather, such a conclusion can only be drawn after taking and evaluating the entire available evidence offered by the parties, including (counter) evidence by the patent proprietor. Thus, if the opponent's evidence confirms the prior use, the (counter) evidence offered by the patent proprietor becomes relevant and needs to be considered. If assertions made in an affidavit or in any other witness declaration remain contested, a request from a party to hear the (available) witness must be granted before these assertions can be made the basis of a decision against the contesting party (Case Law of the Boards of Appeal, 10th edition, G.3.3.1). To conclude in such a case that the opponent proved its allegations without considering the counter evidence goes against the prohibition of prejudging the weight of evidence and violates the proprietor's right to be heard. It contradicts Articles 113(1) and 117(1) EPC which embody a basic procedural right generally recognised in the EPC contracting states, i.e. the right to give evidence in appropriate form and the right to have that evidence heard (G 2/21, OJ 2023, 85, reasons 41). This right applies not only to the party bearing the burden of proof but also to the other party with respect to counter evidence. Thus, to decide whether a fact can be regarded as proven, all the relevant evidence needs to be taken into consideration (G 2/21, OJ 2023, 85, reasons 42; T 474/04, reasons 6-10). The principle of unfettered consideration and evaluation of the evidence does not apply until after an offer of evidence has been taken up and cannot be used to justify not taking offered evidence into account (G 2/21, point 44 of the reasons). Thus, if the evidence offered as proof of contested facts is potentially relevant, the body hearing the case must, as a rule, order that it be taken into account (G 2/21, point 42 of the Reasons; see T 474/04, reasons 8, 10) otherwise the party's right to be heard would be violated. Only after taking the entire evidence into account can the deciding body, in a next step, consider whether or not the prior use is proven with a sufficient degree of certainty.
In what follows these principles will be applied to the present case.
3.5 Evaluation of the Opponent's submissions as regards prior use PU
In the case on file, after having heard the parties' arguments in the oral proceedings, the Board changed its preliminary opinion as set out in the communication under Article 15(1) RPBA and found that the opponent substantiated prior use PU (step 1) and provided evidence (step 2) confirming this prior use (step 3). Thus, the proprietor's request for an inspection of the washing machine and for hearing the authors of the affidavits as witnesses needs to be granted (step 4, third variant). This is reasoned as follows (see points 3.6 to 3.8.3).
3.6.2 The opponent's substantiation of prior use PU is based on the sale of a washing machine with model number WFW94HEXW2 and serial number C21850524, which was sold by the opponent to ABT Television & Appl FDC on 5 February 2012, i.e. before the date of filing of the patent in suit. These events are confirmed by the invoice PU1 and the affidavits of Mr Erickson (PU2) and Mr New (PU3). At least the dates provided in PU1 and the related declarations of Mr New in PU3 demonstrate that the machine with serial number C21850524 was made available for the public in 2012 when it was sold to ABT Television & Appl FDC. In their affidavit, Mr Erickson explained how they were requested by the opponent to find a washing machine having the specific structural features of claim 1 of the patent in suit and found such a machine on the opponent's so-called "Alpha" platform. They further stated that it had been possible to find the product with the model number WFW94HEXW2 and serial number C21850524 and to buy it back from the customer. Mr New continued to explain how it had been possible to find the invoice for the washing machine with the model number WFW94HEXW2 and serial number C21850524 in the business transaction reporting system used by the opponent and provided a screenshot of the information found in that system concerning the sale of this machine.
3.6.3 The proprietor argued that the model number WFW94HEXW2 included an additional '2' at the end in photograph PU4g, which was absent from the references to the washing machine on the invoice PU1. This caused doubt as to whether the washing machine allegedly shown in the photographs PU4a to PU4g was made available to the public. PU3 also detailed a SAP system internal to Whirlpool which did not allow any external verification of the data in the system.
In this respect the Board notes that Mr Erickson explained in PU2 that commercial models ended with a letter (WFW94HEXW), i.e. without a number, while the engineering models comprised an additional number at the end (WFW94HEXW2) even though they referred to the same type of machine. This statement is confirmed by the table shown in PU3 which, according to Mr New, the author of the affidavit, shows a screenshot of the "SAP BW" system.
Thus, based on the submissions and evidence on file at this stage of the proceedings, the opponent has substantiated that the subject of the prior use PU, a machine with the model number WFW94HEXW2 and serial number C21850524, was made available to the public and has provided evidence confirming the related facts.
It should however be noted that a final conclusion on whether all relevant aspects of the prior use, including public availability, are proven beyond reasonable doubt, can only be drawn after considering the evidence requested to be considered, by the proprietor, i.e. after inspecting the prior use PU washing machine with model number WFW94HEXW2 and serial number C21850524 and hearing Mr New and Mr Erickson as witnesses.
[...]
3.7.12 Summarising, therefore, in steps 1 to 3 the submitted facts and arguments are found to be sufficient to substantiate prior use PU and these facts are confirmed by the evidence provided by the opponent. Therefore, the patent proprietor's request for taking (counter) evidence (Step 4, third variant - see point 3.4.4 above) needs to be considered.
3.8 Proprietor's request to consider (counter) evidence
3.8.1 The proprietor's request to inspect the machine and hear Mr New and Mr Erickson as witnesses needs to be granted (Article 113(1) and 117(1) EPC).
3.8.2 The patent proprietor contested public availability of the washing machine with the model number WFW94HEXW2 and serial number C21850524 with specific arguments. It argued that the circumstances of taking the photographs and how the machine was bought back were not clear and based its allegation on the specific wording of the affidavits PU2 and PU3. It also contested the explanations provided in Mr Erickson's affidavit with respect to the identification of the serial number. Moreover, the patent proprietor contested the connection between prior use PU and photographs 4a to 4g.
3.8.3 The patent proprietor thus provided a clear line of argument to contest the opponent's submissions and evidence.
[...]
The body hearing the case must therefore order that the requested evidence be taken into account in order to avoid violation of the proprietor's right to be heard. Only after that can the entire evidence be evaluated to conclude whether or not prior use PU has been proven beyond reasonable doubt.
4. Remittal according to Article 111(1) EPC
4.1 In view of the need to hear Mr New and Mr Erickson as witnesses and to inspect the prior use PU washing machine, remittal of the case to the opposition division in accordance with the proprietor's and opponent's auxiliary request is appropriate.
4.2 It is noted that the opposition division's decision with respect to the substantiation and proof of prior use PU was in relation to auxiliary request 6 pending before it. In view of the general principles as set out above, the (counter) evidence requested by the proprietor was relevant to that decision and should have been taken into account in order to guarantee the proprietor's right to be heard (see Articles 113(1) and 117(1) EPC) being met.
4.3 The Board avails itself of its power under Article 111(1) EPC to remit the case back to the opposition division for further prosecution.
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