T 2517/22 - OD did not hear offered witness

Key points

• The OD did not hear a witness. The Board finds this a substantial procedural violation, sets aside the decision, and remits the case. There are some interesting details - including that the filing date of the Euro-PCT was in 2004 so the opposition procedure after remittal will end well after the end of the patent term.
• Grant: 2015 (after 1 communication of the Examining Division), first decision OD: 2018 (not novel over D1), first appeal decision (2021; novel over D1, remittal), second decision OD in 2022: reject opposition,  
• If you would like to learn more about witness hearings at the EPO, you can still sign up for the EPO course of this year (until 1 October): https://justpatentlaw.blogspot.com/2024/09/epo-two-day-course-on-taking-of-evidence.html 
• "D2 is an operating manual for a graphic control and supervision system VGCS delivered by appellant 2 (Vestas Wind System A/S, see page 4). VGCS "provides service for supervision and control of wind farms with Vestas Wind Turbines (WT)" and further optional components such as meteorological masts and substations. In the affidavit D2a, an employee of appellant 2 [opponent], Mr. Rasmussen, stated that - he was responsible for VGCS between 1995 and 2005; - D2 has been handed over to customers having purchased the VGCS between September 2001 and October 2003 and was not subject of a confidentiality agreement; - D2 "was offered and/or supplied" to 19 customers who had purchased a VGCS in this period.
• "Already in the notice of opposition and again in their reply of 13 February 2017, after the patentee had put into question the probative value of the affidavit D2a, appellant 2 offered to hear Mr. Rasmussen as witness "
• "The Opposition Division changed its mind [compared to the preliminary opinion] and announced after discussion of public availability of D2 during the second oral proceedings that D2 was not part of the prior art (last paragraph on page 1 of the minutes) albeit without taking into account the previous offer to hear a witness on the topic. The reasons for this change of mind can be found in sections 3.2 - 3.6 of the contested decision: "There is therefore a doubt about whether Mr. Rasmussen's recollection of events after 15 years is correct". In the absence of further written evidence and documentation relating to the alleged sales of VGCS and hand-overs of D2, "a person's memory alone ...does not constitute sufficient proof of prior public disclosure" 15 years ago.  
• The Board: "An offer to hear the undersigned of the affidavit D2a as a witness for confirming these facts represents a further relevant and appropriate offer of evidence for these facts. It is a party's choice to present whatever means of evidence it considers to be suitable and it is an Opposition Division's duty to take its decision on the basis of all the relevant evidence actually available rather than to expect the presentation of more preferred pieces of documentary evidence, to speculate on the reasons of and draw conclusion from their absence (see sections 3.2, 3.6. of the impugned decision). The Opposition Division is of course free to evaluate any evidence provided by a party, but this freedom cannot be used to disregard evidence which has been offered, and might turn out to be decisive for a case, in particular not with the argument that some better evidence would have been expected,"
• " Instead of accepting the evidence offered by appellant 2, the Opposition Division appears to have based its decision on general assumptions made on the capability of persons to recollect events after a certain time period and specific assumptions made on the witness' personal capability, knowledge and experience, thus implicitly on assumptions made on the veracity of his statements and on his credibility. By making these assumptions without hearing the offered witness in person, the Opposition Division in fact assessed evidence without examining it "
• "According to the respondent [patentee], the offer to hear Mr. Rasmussen was not substantiated, since it did neither set out in detail why Mr. Rasmussen was in a position to know about the non-existence of a NDA, nor under which circumstances exactly 19 VGCS had been sold and delivered, nor why he could remember this exact number and these circumstances. 
• The Board: "Appellant 2 [opponent] did therefore not have to address these concerns and had no obligation to announce in their offer, how exactly the witness would be able to corroborate his own statements, e.g. by answering in advance hypothetical questions that might possibly arise with regard to the background of his knowledge of the facts and why his statements should be accepted as true. Such questions are normally asked during witness hearings in order to assess the credibility of the witness and the exactness of his memory, which is one of the main purposes of the hearing. Other than assumed by the Opposition Division, this cannot be figured out and a sufficiently exact recollection of various events 15 years later cannot be denied beforehand without a hearing in person since there is always the possibility that a witness remembers very well certain details because of personal records or special events having occurred at the same time. Neither is it common to inform the witness before the hearing about the questions he will be asked, nor does the party offering the witness have to guess and answer these question in advance already in their offer in order to substantiate even further why the witness is to be heard."
• " Therefore, the Board concludes that the failure to consider appellant's 2 offer to hear a witness on the public availability of D2 constitutes in the circumstances of the present case a substantial procedural violation, in that it deprived appellant 2 of their basic rights enshrined in Article 117(1) and 113(1) EPC, see CLBA, 10th edition, III.B.2.6.4, in particular headnote of T 474/04, and III.G.3.3.4, and the decisions there cited."
• T 474/04 headnote is about the reverse case where the OD considers a contested unsworn witness to be credible and refuses the request of the party disputing the declaration to hear that witness. 
• Note that normally, the opponent would have to set out in appeal how D2 is prejudical to the patentability of the claims in appeal, otherwise the error of the OD could be seen as harmless; the proprietor argues accordingly in appeal against a remittal. 
•  The Board considers various factors, including that: "Even the respondent seems to have never defended patentability in the light of D2 and countered the objections raised in opposition proceedings, but only denied its public availability. On this basis, apart from its prior art status, there were no substantive counter-arguments against D2 in the proceedings which the appellant opponent could have been expected to address in detail already in its grounds of appeal. Nor is there anything to suggest that a novelty and/or inventive step attack based on D2 would have been manifestly unsuccessful, in which case a remittal to the Opposition Division would appear to serve no purpose. Rather, patentability over D2 is to be examined by the Opposition Division."
• "the Board concludes that the absence of an explicitly substantiated novelty and/or inventive step attack based on D2 in opponent 2's statement of grounds of appeal in the present case does not lead to the conclusion that the procedural violation before the division had not been substantial because it had been without consequence for the outcome of the proceedings. Rather, the Board is in the position to issue a final decision without having to deal in depth with the issue of patentability over D2. "

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222517eu1

6. Procedural violation

6.1 The appellant 2 had submitted documents D2 and D2a together with their notice of opposition and argued lack of inventive step with regard to the disclosure of D2 (sections 4.2.2, 4.2.3, 4.3).

D2 is an operating manual for a graphic control and supervision system VGCS delivered by appellant 2 (Vestas Wind System A/S, see page 4). VGCS "provides service for supervision and control of wind farms with Vestas Wind Turbines (WT)" and further optional components such as meteorological masts and substations.

In the affidavit D2a, an employee of appellant 2, Mr. Rasmussen, stated that

- he was responsible for VGCS between 1995 and 2005;

- D2 has been handed over to customers having purchased the VGCS between September 2001 and October 2003 and was not subject of a confidentiality agreement;

- D2 "was offered and/or supplied" to 19 customers who had purchased a VGCS in this period.

Already in the notice of opposition and again in their reply of 13 February 2017, after the patentee had put into question the probative value of the affidavit D2a, appellant 2 offered to hear Mr. Rasmussen as witness (page 3, fourth paragraph).

6.2 In section 3.2.2 of the annex to the first summons, the Opposition Division considered D2a to be sufficient evidence for public availability of D2 and did not summon Mr. Rasmussen as witness. This was confirmed and corroborated with further arguments in section 3.2.1 of the annex to the second summons, in which moreover a discussion of novelty over D2 was envisaged for the oral proceedings (section 2.1.1.1). The Opposition Division changed its mind and announced after discussion of public availability of D2 during the second oral proceedings that D2 was not part of the prior art (last paragraph on page 1 of the minutes) albeit without taking into account the previous offer to hear a witness on the topic.

The reasons for this change of mind can be found in sections 3.2 - 3.6 of the contested decision: "There is therefore a doubt about whether Mr. Rasmussen's recollection of events after 15 years is correct". In the absence of further written evidence and documentation relating to the alleged sales of VGCS and hand-overs of D2, "a person's memory alone ...does not constitute sufficient proof of prior public disclosure" 15 years ago. In particular, it was questionable how Mr. Rasmussen as SCADA specialist would have known about the details of the sales agreements including or not a non-disclosure agreement (NDA) for D2, which was possibly required according to its classification "2" (see point 5.1, above). In the absence of any evidence to prove that there was not an implicit NDA associated with the distribution of D2, reasonable doubts concerning its public availability pertained.

6.3 In the Board's view, the above-mentioned statements in the affidavit D2a represent facts which are a priori of high relevance for the establishment of whether or not D2 was part of the prior art in the sense of Article 54(2) EPC, therefore of the patentability of the claimed invention and thus in the end of high relevance for the outcome of the opposition proceedings. An offer to hear the undersigned of the affidavit D2a as a witness for confirming these facts represents a further relevant and appropriate offer of evidence for these facts. It is a party's choice to present whatever means of evidence it considers to be suitable and it is an Opposition Division's duty to take its decision on the basis of all the relevant evidence actually available rather than to expect the presentation of more preferred pieces of documentary evidence, to speculate on the reasons of and draw conclusion from their absence (see sections 3.2, 3.6. of the impugned decision). The Opposition Division is of course free to evaluate any evidence provided by a party, but this freedom cannot be used to disregard evidence which has been offered, and might turn out to be decisive for a case, in particular not with the argument that some better evidence would have been expected, see CLBA, 10th edition, III.G.4.1.

6.4 Instead of accepting the evidence offered by appellant 2, the Opposition Division appears to have based its decision on general assumptions made on the capability of persons to recollect events after a certain time period and specific assumptions made on the witness' personal capability, knowledge and experience, thus implicitly on assumptions made on the veracity of his statements and on his credibility. By making these assumptions without hearing the offered witness in person, the Opposition Division in fact assessed evidence without examining it (similarly in T 0314/18, Reasons 6.4, also T 0906/98, Reasons 2.3.1 to 2.3.3).

6.5 According to the respondent, the offer to hear Mr. Rasmussen was not substantiated, since it did neither set out in detail why Mr. Rasmussen was in a position to know about the non-existence of a NDA, nor under which circumstances exactly 19 VGCS had been sold and delivered, nor why he could remember this exact number and these circumstances. Thus Mr Rasmussen could only have been expected to merely confirm what he had already stated in D2a, what was already known to the Opposition Division and considered not to be sufficiently proven by the affidavit D2a alone. A witness hearing merely confirming the same facts could then only lead to the same conclusion and the same decision on public availability of D2 and was therefore not necessary.

As mentioned above, the affidavit D2a as such appears already to contain the factual information which is relevant for the outcome of the case. With regard to the personal circumstances of the witness, according to D2a, Mr. Rasmussen dealt not only with the technical development of VGCS, but was generally "responsible for" VGCS after its development until 2005, when it was already sold and delivered. Moreover, before the oral proceedings, the Opposition Division had not shared the concerns about the veracity of D2a expressed by the respondent (proprietor).

Appellant 2 did therefore not have to address these concerns and had no obligation to announce in their offer, how exactly the witness would be able to corroborate his own statements, e.g. by answering in advance hypothetical questions that might possibly arise with regard to the background of his knowledge of the facts and why his statements should be accepted as true. Such questions are normally asked during witness hearings in order to assess the credibility of the witness and the exactness of his memory, which is one of the main purposes of the hearing. Other than assumed by the Opposition Division, this cannot be figured out and a sufficiently exact recollection of various events 15 years later cannot be denied beforehand without a hearing in person since there is always the possibility that a witness remembers very well certain details because of personal records or special events having occurred at the same time. Neither is it common to inform the witness before the hearing about the questions he will be asked, nor does the party offering the witness have to guess and answer these question in advance already in their offer in order to substantiate even further why the witness is to be heard.

6.6 In the oral proceedings before the Board the respondent submitted that appellant 2 did not base any patentability objection in appeal on D2 so that there was no case to decide, which depended on its public availability. Consequently, the Board was in a position to decide on the appeal directly, without considering D2, irrespective of whether a procedural violation might have occurred or not. The Board understands this as an argument against the substantial nature of the alleged procedural violation of not hearing the witness.

6.6.1 The respondent's argument might have been pertinent if the Board, for whatever reason, would have decided that it needs to examine the issue of novelty and/or inventive step over D2 still in the appeal proceedings. However, absent particular procedural situations, it is normally sufficient for a Board to concentrate and decide on the explicitly formulated procedural and substantive requests of the parties.

6.6.2 In the present case, appellant 2 requested to set aside the decision due to a violation of their right to be heard and to remit the case, not to decide on novelty or inventive step in the light of D2. It had also explicitly stated that the ultimate substantive legal effect that it sought to achieve, namely the revocation of the patent, was also part of its case. The request for remittal had been sufficiently substantiated for the Board to decide on it. As set out below, the Board also found this request allowable. There was no need for the Board to examine the question in depth whether the totality of the submissions on appeal permitted the conclusion that the novelty and/or inventive attack based on D2 had been implicitly part of appellant 2's appeal case. Even if this had not been the case, there was still the theoretical possibility, even if small, to introduce this attack in the appeal later under Article 13(2) RPBA. However, this question need not be decided in the present case.

6.6.3 The Board observes that the respondent itself did not argue in its reply to the appeals that a substantive attack based on D2 did not form part of the appeal case, but rather argued in depth why there had been no procedural violation and why the Opposition Division's finding on the prior art status of D2 was correct. This is seen by the Board at least as an indication that also the respondent considered the attacks based on D2 to be implicitly part of the opponent 2's appeal case and as such maintained on appeal.

6.6.4 The Board considers it undisputed that if the Opposition Division had reached another conclusion on public availability of D2, possibly also taking into account further evidence, it would have decided on the patentability of the claimed invention also by taking into account the disclosure of D2. However, the division left this question open, and the contested decision only dealt with the public availability of D2. Even the respondent seems to have never defended patentability in the light of D2 and countered the objections raised in opposition proceedings, but only denied its public availability. On this basis, apart from its prior art status, there were no substantive counter-arguments against D2 in the proceedings which the appellant opponent could have been expected to address in detail already in its grounds of appeal. Nor is there anything to suggest that a novelty and/or inventive step attack based on D2 would have been manifestly unsuccessful, in which case a remittal to the Opposition Division would appear to serve no purpose. Rather, patentability over D2 is to be examined by the Opposition Division.

6.6.5 In summary, the Board concludes that the absence of an explicitly substantiated novelty and/or inventive step attack based on D2 in opponent 2's statement of grounds of appeal in the present case does not lead to the conclusion that the procedural violation before the division had not been substantial because it had been without consequence for the outcome of the proceedings. Rather, the Board is in the position to issue a final decision without having to deal in depth with the issue of patentability over D2.

6.7 Since it is the primary object of appeal proceedings to review the content of decisions, Article 12(2) RPBA, the Board dealt with the way in which the Opposition Division came to its conclusion on public availability of D2 and found a procedural violation. This fundamental deficiency leads as a rule to a remittal of the case according to Article 11 RPBA, and specific circumstances for doing otherwise have not been put to the Board. A prolongation of the procedure as a whole is not a special circumstance but an inherent consequence of a remittal and as such accepted by the legislator. Furthermore, the parties have the possibility of requesting acceleration of the proceedings.

6.8 Therefore, the Board concludes that the failure to consider appellant's 2 offer to hear a witness on the public availability of D2 constitutes in the circumstances of the present case a substantial procedural violation, in that it deprived appellant 2 of their basic rights enshrined in Article 117(1) and 113(1) EPC, see CLBA, 10th edition, III.B.2.6.4, in particular headnote of T 474/04, and III.G.3.3.4, and the decisions there cited.

Due to this procedural violation, the decision of the Opposition Division to reject both oppositions has to be set aside in order to allow re-examining of public availability of D2 taking into account all the evidence admissibly submitted by appellant 2.

7. Result

With their appeals both opponents contest without success the findings of the Opposition Division that the subject-matter of granted claim 1 (main request) is novel with respect to E6b and involves an inventive step with regard to prior art E6b and D1.

The failure to hear a witness offered by appellant 2 in order to prove public availability of further prior art D2 represents, however, a substantial procedural violation of the right to be heard of appellant 2, which leads to setting aside the Opposition Division's decision to reject both oppositions and to a remittal to the Opposition Division for further prosecution, Article 11 RPBA.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Opposition Division for further prosecution.