T 0538/24 - The photograph is in color for the Board

Key points

• The Board, in translation: "in the opposition proceedings, the object of the alleged prior use, Recaro, was inspected during an oral hearing held as a videoconference. The Opposition Division rejected the opponent's request for an in-person hearing, which was based on the planned inspection, because it considered the conditions for an in-person hearing, as defined in the decision of the President of the EPO (OJ EPO 2022, A103), to be not met."
• " The appellant argued that it had been virtually impossible to explain the mechanics of the object under consideration in a manner as adequate as would have been possible in a face-to-face event. This was also evident from the inadequate black-and-white photographs in the transcript of the taking of evidence provided to her, which were partly of poor quality and partly blurry."
• The appellant requests a new inspection of the device, in person.
• The Board refuses the request.
• The Board: "The alleged poor quality of the photographs taken during the inspection with a high-resolution camera does not relate to the inspection itself, but rather to its documentation and transmission to the parties. In fact, the Chamber has received the photographs in good quality and in color."
• It is strange, to say the least, that the Board looks at a different picture than the parties. The question is: how do you know what the Board is actually looking at, during vico oral proceedings? Perhaps it will be less of an issue now that documents are made visible in color in the public online file.
• The primary reason for refusing the request for a new inspection is that "As the respondent argued, there was agreement at the end of the inspection regarding the functionality of the prior use by Recaro"

EPO 

The link to the decision is provided after the jump.

T 0729/24 - A case with a letter rogatory

Key points

• A rare case with a letter(s) rogatory.
• The opponent had filed emails, as alleged prior art, that the original applicant sent to third parties. The original applicant was summoned as a witness by the OD. The witness, an Italian national, requested to be heard by the competent national court
• The EPO sent a letter to the Italian authorities requesting that the competent Italian court hear the witness (the document refers to an attached letter rogatory, but I've not found that in the public file wrapper. The EPO's letter uses 'letter rogatory', though customarily it is always plural (I understand).
• The transcript of the hearing by (and before) the Italian court (attended by the chair and the legal member of the OD), and the English translation of the transcript, can be found here.
• The OD concluded that the emails and documents at issue were not public, except for one email (D18) with attachments (see the OD's decision). D18 was sent to a prospective customer a couple of days before the filing date of the patent (and the priority is only partially valid). 
• The Board's preliminary opinion was that the claims as granted lacked basis in the application as filed, and that D18 was prejudicial to inventive step of most of the auxiliary requests.
• The proprietor then withdraws all auxiliary requests on file. The Board finds, as the OD, that the claims as granted lack basis in the application as filed.
• See T 2893/18 for an earlier appeal in this opposition case.

EPO 

The link to the decision is provided after the jump.

T 1113/24 - OD should have heard witnesses

Key points

• The opposition is based on an alleged public prior use. The OD rejected the opposition. The opponent appeals. The OD had refused to hear two witnesses (as requested by the opponent) in connection with the public prior use. The opponent had substantiated the public prior use with documents, including technical drawings and diagrams.
• The OD had reasoned as follows: "The witnesses had been offered to confirm that the filling and cleaning installation according to the prior use "Adelholzener" anticipates all the features of claim 1 of the contested patent. However the documentary evidence supporting the alleged prior use D21 to D39 was of such a low quality that a skilled person would not be able to read any technical information from the diagrams of documents D23, D24, ..., and thus would not be able to identify whether some of the claimed features ... were disclosed in these documents or not."
• The Board: "The appellant [opponent] convincingly demonstrated that a substantial procedural violation took place in the opposition proceedings for the following reasons."
• "the [opponent] offered witnesses specifically to corroborate and explain the technical details of the circulation paths that were visible in the diagrams (but required expert interpretation). This means that the witnesses have not been offered to introduce new facts into the proceedings, but merely to confirm the facts alleged in the notice of opposition."
• "According to the established jurisprudence (CLBA, III.G.3.1.1), if the evidence offered as proof of contested facts essential to the settlement of the dispute is decisive, the body hearing the case must, as a rule, order that it be taken."
• "The opposition division also incorrectly based its decision on the prior use on an assumption about what the witnesses would say, thereby pre-empting the evidence's evaluation."
• "Additional clarifications provided by a witness to close a potential gap in the documentary evidence on file cannot be considered per se, even before hearing the witness, as new facts; hearing a witness would otherwise be futile (CLB, point III.G.2.4.1)."
• " The absence of written declarations by the offered witnesses is also not a reason to suspect that their testimony would exclusively introduce new facts, and also does not justify the decision of not hearing them."
• "This is because, according to the established jurisprudence 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 available rather than to expect the presentation of more preferred pieces of documentary evidence, and to speculate on the reasons for and draw conclusions from their absence "
• "While it is correct that oral evidence of a witness should only be taken when required to clarify matters decisive for the decision, the opposition division should have heard the witnesses before deciding what the alleged prior use was, and was not, disclosing, as the witnesses were offered to corroborate decisive facts already alleged in the notice of opposition."
• "By refusing to hear the proposed witnesses before deciding on the allegation of prior use, the opposition division has in fact proceeded to assesDat is evidence that had not yet been completely established thereby incurring a substantial procedural violation ..."
• The impugned decision is set aside, and the case is remitted to the OD. The Board does not decide on any other points.

EPO 

The link to the decision is provided after the jump.

T 0143/24 - Interpreting G 1/23

Key points

• The opponent alleges three prior uses. The prior uses concern sales by companies within the Ashland Group. Furthermore, the opponent also belongs to that group of companies. Hence, it is an alleged public prior use in the opponent's own sphere.  
• The Board, in machine translation: The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge.
• If the sale of an item and its delivery to a customer are claimed as prior public use, the recognisable features of the item for sale will generally become publicly accessible if the item for sale is handed over without an obligation of confidentiality and can be analysed by a person skilled in the art. Contrary to the patent proprietor's view, reproducibility is not necessary for a product that is freely available and analyzable on the market to be considered as prior art under Article 54(2) EPC (G 1/23, Reasons 73, 74). However, there is no free accessibility on the market if the product is sold with confidentiality agreements. Contrary to the opponent's view, decision G 1/23 does not lead to a different conclusion, as it relates to products that are on the market and accessible to the public. This requirement is not met if the product is marketed only subject to confidentiality agreements.
• In other words, if a product is marketed under confidentiality agreements, it does not become part of the state of the art, even if it can be analysed and reproduced.
• Furthermore, the Board holds, obiter, that under G 1/23, a product becomes prior art (part of the state of the art) (at least) if it is sold, is handed over to the customer, and the sale is without an obligation of confidentiality and can be analysed by a person skilled in the art (as cumulative requirements). 
• In the present case, the terms and conditions of the sales invoked by the prior uses provided for a confidentiality agreement, which is why the products sold were not available to the public and therefore do not form part of the state of the art within the meaning of Article 54(2) EPC.
• The opponent had offered two witnesses, who were heard by the OD. The witness did not fully support the opponent's case, it seems: "Mr. [G] also confirmed in his testimony during the oral proceedings before the Opposition Division that the composition of [the product] Magnaset was an internal matter and, to his knowledge, that customers were not supposed to know this composition. ... Witnesses G and A also stated that the manufacturing instructions and the production process were confidential (see the transcript ... ). The witness statements therefore confirm that there was no intention to disclose the composition of the Magnaset binder to customers."
• The Board concludes that the alleged public prior use is not proven to have been public. 
• "The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge."
• In such a case (public prior use by the opponent, wherein the prior use is moreover 'intra-company'), the standard 'beyond doubt' is indeed correct. The standard 'beyond doubt' was never abolished in the case law, in my view. It is the specific implementation of the general standard 'is convinced' in the case where the evidence is exclusively in the sphere of the opponent (the party asserting the fact). 

EPO 

The link to the decision can be found after the jump.

T 0490/23 - The board inspects the public prior use device

Key points

• The Board, in translation; "During the oral proceedings, the board decided, pursuant to Article 117(f) and Rule 117 EPC, to take evidence by inspecting the prior use subject-matter "Comfort X3" in order to determine the behavior and stability of the belt tensioner flaps under dynamic loading of simulated impact forces from various directions, and thereby answer the crucial question of the suitability of the folding elements as side impact protection. "
• "During the inspection, a direct measurement of the length of the folding element of the "Comfort X3" child seat projecting beyond the outer wall was taken on the prior use subject-matter, which did not appear to be reliably possible based solely on the cited illustrations. The taking of evidence took place in the presence and with the participation of the parties. For the decision to take evidence and the results of the inspection, reference is made to the minutes of the oral proceedings."
• "The visual inspection led to the following results: ..."
• "For the reasons stated above, the Board does not consider the belt tensioner flap of the "Comfort X3" child seat to be suitable as impact protection within the meaning of feature M1.2 of granted claim 1. Features 1.3 to M1.5, which require the presence of side impact protection according to feature M1.2, are also not derived from this prior use."
• Regarding other features of claim 1: As can be seen from images IMG_0789 and IMG_791, attached to the minutes of the oral hearing, the entire extension of the flap element of the belt tensioner flap is 14.3 cm. This is undisputed."
• " The subject-matter of granted claim 1 is therefore novel over the prior use "Comfort X3", as correctly found by the Opposition Division."

EPO

 

The link to the decision can be found after the jump.

T 2027/23 - (I) On evidence and appellate review of findings of fact

Key points

• "The appellant [proprietor] has challenged the findings of the opposition division regarding the public prior-use vehicle."
• "the board notes that, on appeal, the burden is on the party challenging a fact to demonstrate that the first-instance department erred in its finding of fact. "
• Note, this can be the appellant or respondent because a decision favorable to the respondent in the overall result can still contain findings of fact in favour of the appellant. 
• "In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous. Only if the party succeeds in discharging this burden and demonstrating such an error will the board establish the facts on its own if this is necessary for reaching a decision (see T 1138/20, Reasons 1.2.5)."
• Of course, pointing out one error is sufficient, and the board will then review the specific alleged fact that is affected by that error in the OD's evaluation of the evidence.
•  "The case law of the Boards of Appeal has identified a non-exhaustive list of typical situations where a finding of fact may be overruled, namely (i) failure to take into account essential points, (ii) relying, for the conclusion, on irrelevant subject-matter, or (iii) violation of the laws of thought, for instance in the form of logical errors and contradictions in its reasoning (T 1418/17, Reasons 1.3; see also T 42/19, Reasons 3.2 and T 1138/20, Reasons 1.2.5)."
• The list is helpful, but precisely because of that, we should not forget it is a non-exhaustive list.
  
  
• " The appellant requested that the testimony of Mr. Wieser should be disregarded in its entirety, because it was not credible and consequently the witness' credibility should be re-assessed and some statements in the decision under appeal  should be disregarded."
• " The board, first of all, notes that according to the appealed decision, the witness' credibility was not questioned by the proprietor (Reasons 2.1.2). Lack of credibility can thus not be an argument for discarding the witness' statement."
• As a general rule, this statement could be correct (Art. 12(6)(s.2)), but there could be exceptions.
  
  
• " The appellant further highlighted the fact that the information provided by the witness was handed to him by other people and was based on documents collected many years after the sale [which was in 1987]."
•  The board considers that this was correctly recognised by the opposition division. It was precisely for this reason that the opposition division considered the probative value of the testimony to be limited. The opposition division therefore prudently based its decision not only on Mr. Wieser's testimony, but also on Mr. Noe's affidavit (D10a) that confirmed, independently from Mr. Wieser's testimony, that the "Feuerwehr Tauberbischofsheim", in 1987, received from the company "Metz" a vehicle with a turnable-ladder mounting and the corresponding operation manual D9, without confidentiality obligations; [photos and vehicle registration certificate] " 
• Note, if the proprietor wished to challenge the affidavit of Mr. Noe, he should have requested a witness hearing of Mr Noe.
•  "Finally, the mere fact that other witnesses could have been offered does not call into question the credibility of the witness." 
• This sentence could require some analysis.
  
  
• On the inspection of the vehicle by the OD
• From the minutes (see p.29 of  PDF of the minutes):  "The oral proceedings were interrupted at 10:22 to allow the participants to move outside the building of the EPO, where the vehicle was parked." See also p.48 of the PDF for a protocol of the inspection. 
• 
  
  (I acknowledge that many younger colleagues may no longer recognise the building, never having had oral proceedings in it). 
• " The appellant argued that there was insufficient evidence that the vehicle inspected in the course of the oral proceedings before the opposition division was the one sold to the fire brigade in 1987 ...
• The protocol of the inspection, page 48, mentions that a type plate with the year 1987 was observed inside the inspected vehicle. 
• 
  
• Standard of proof
• "With regard to the fifth point concerning the applicable standard of proof, the board notes that in the case at issue the evidence does not lie exclusively within the sphere of the respondent. Indeed, the vehicle was received by the fire brigade and was in the brigade's possession and was later sold to a third party. Even if the board had been minded to apply the standard of "up to the hilt" or "beyond reasonable doubt" in cases where evidence was in the exclusive possession of the respondent, there would be no place for such application under the factual circumstances of this case. 
• Note, the company selling the vehicle, Metz, was later acquired by the current opponent.
• "In any event, the present board, in a previous decision (see T 1138/20, Reasons 1.2.1), held that regardless of the specific circumstances of the case, only one standard of proof should apply, namely that the deciding body, taking into account the circumstances of the case and the relevant evidence before it, at the end of the day, should be convinced that the alleged fact had indeed occurred (as confirmed in T 733/23, Reasons 3.2, but see also T 2463/22, Reasons 4.5.10 and 4.5.12 in that regard)."
  
  
• Confidentiality
• The Board, obiter it seems: "manual D9 was made available to the staff of the fire brigade who are certainly members of the public. The fact that these members of the public should not make the manual available to competitors does not change the fact that at least some members of the public have already taken notice. It is not necessary for a document, contrary to what the appellant seems to argue, to be made available to all and sundry for it to be considered "publicly available". Instead, it is sufficient for the document to be made available to some (or even one) member of the public. In the case at issue, this was undoubtedly so."
• The above remark was obiter and given the point below, not critical to the case. Nevertheless, I doubt it is correct. If the (head of the) Firebrigade Department (as the recipient of the manual) had signed a secrecy agreement, then the manual is not public, and the employees (volunteers or not) of the fire brigade were not 'members of the public'. Also, a government body can bind itself to secrecy (contractually, vis-à-vis suppliers). Evidently, it still is an organisation under public law in such a case. Its employees are possibly public officers or civil servants, but not members of the public in the sense of Art 54 EPC in respect of the secret information. 
•  "To prove an obligation of secrecy, the appellant further referred to the copyright notice on pages 2 and 4 of document D9, which reads in relevant part:"... Ohne unsere schriftliche Genehmigung dürfen sie nicht kopiert oder vervielfältigt werden, auch nicht dritten Personen, insbesondere Wettbewerbern mitgeteilt, oder zugänglich gemacht werden."
• " the board first notes that copyright notices can be found in almost all published books without the readers of such books being thereby bound to secrecy. "
• I don't know if the cited sentence is just a normal copyright notice. On the other hand, it is not a signed NDA either. 

EPO 

The link to the decision can be found after the jump.

T 1991/23 - (II) When a witness must be heard on request of the other party

Key points

• The OD decided that an alleged public prior use exhibited all features of claim 1. The proprietor appeals. 
• "The appellant alleged a violation of the right to be heard, inter alia, due to the failure to comply with a request for evidence submitted by it "
•  
• The relevant section of paragraph 23.2 of the contested decision reads as follows: "The patent proprietor further requested that Mr. Grzegorz GALEZOWSKI and Ms. Sylvia BUCHER be heard as witnesses regarding the public prior use. The notice of summons stated that the Opposition Division did not intend to hear the witnesses nominated by the patent proprietor, since the burden of proof lies with the opponent and it is the responsibility of the opponent, not the patent proprietor, to select, present, and request appropriate evidence. If the Division concludes that the allegations are sufficiently proven, the patent proprietor could submit counter-evidence and request the hearing of rebuttal witnesses. The patent proprietor subsequently did not request the hearing of rebuttal witnesses.""" 
• "In this context, attention is drawn to the relevant passage on pages 4 and 5 of the appellant’s statement of defence dated 18 September 2019, which reads as follows:

  "The patent proprietor therefore requests - only conditionally, namely in the event that the opposition division finds that the alleged prior use is relevant (see below) - for legal certainty under Art. 117 and R. 117 EPC and for reasons of procedural economy, the hearing of actual witnesses on the facts of the case, namely: Mr Grzegorz GALEZOWSKI (author of the email in Annex A3) to the address in Annex A3" [....]

• " The condition that the opposition division finds the prior use relevant (OV1) has been met, and the opposition division does not provide sufficient reasons in its decision for not summoning the witnesses offered by the patent proprietor. The reference to the notice of summons, in which the opposition division stated that it did not intend to hear the witnesses nominated by the patent proprietor, since the burden of proof lies with the opponent and it is the responsibility of the opponent, not the patent proprietor, to select, submit, and request appropriate evidence, cannot justify this. "

• " First of all, it is incorrect that a party to the proceedings should generally be excluded from submitting evidence on factual issues for which another party bears the burden of proof. The (substantive) burden of proof determines to whose disadvantage the inability to clarify a factual situation affects. However, this does not mean that only the party to the proceedings with the burden of proof may contribute evidence to clarify this matter. Irrespective of this, the opposition division ultimately considered the disputed prior use to be proven, which is why its statement in the summons that the patent proprietor could present counter-evidence in this case became relevant."" 

• " The Board considers that the Opposition Division's statement that "the patent proprietor subsequently did not request the hearing of rebuttal witnesses" is incorrect. The appellant requested that Mr. Grzegorz Galezowski and Ms. Sylvia Bucher be summoned as witnesses. This request was not withdrawn by the appellant and did not need to be repeated."

• " In the Board’s view, the Opposition Division’s approach constitutes a violation of the right to be heard within the meaning of Article 113(1) EPC and thus constitutes a substantial procedural violation."

EPO 

The link to the decision can be found after the jump.

T 1991/23 - (I) Review of findings of fact

Key points

• The issue is whether the alleged public prior use displayed certain features. The OD found it did. The proprietor appeals. 
• The Board, in translation: "Regarding the scope of the boards of appeal's power to review findings of fact made by the first instance, particularly where the latter has heard witnesses, the boards are the first and final judicial instance in proceedings before the EPO and thus the only judicial body that establishes facts both in fact and in law. Accordingly, at any stage of the appeal proceedings, the boards are empowered to establish the relevant facts of a case before them, thereby replacing the findings of fact made by the first instance (see T 1604/16, Catchword and point 3.1.6 of the Reasons, and T 1138/20, point 1.2.4 of the Reasons)."
• " It will therefore be examined whether the annexes A1 to A4, affidavits E1 and E2, witness statements Z1 and Z2, and visual inspection I1 cited by the opposition division sufficiently demonstrate that a honeycomb with all the features of claim 1 became publicly available. In particular, Mr. Denker's affidavit E2, the photograph in Annex A3, the transcript of Mr. Denker's examination of the witness (Z1), and the transcript of Mr. Huebner's testimony (Z2) are to be examined. "
• The Board concludes that these pieces of evidence do not demonstrate the presence of all features.
• Follows a detailed review of the evidence. 
• " In the Chamber's view, point 7 of Mr Denker's affidavit E2 does not make it clear, let alone directly and unambiguously, that both the mechanically adjusted offset of every second film layer and the centre-to-centre distance between all connecting areas along a longitudinal direction of a film had to be the same." 
• "In the Board’s view, neither the affidavit E2 nor the photograph in Annex A3 sufficiently demonstrate that the public prior use (OV1) directly and unambiguously discloses the features M1.3b and M1.5 in question."
• "In the Board's view, it cannot be deduced from the testimony of Mr. Denker (Z1) that the features in question, M1.3b and M1.5, were directly and unambiguously disclosed in the prior use product (OV1). "
• "Taking all the evidence (A1 to A4, E1, E2, I1, Z1 and Z2) into account, the Board is not convinced with the required degree of certainty that the prior use (OV1) directly and unambiguously discloses the combination of all the features of claim 1, in particular features M1.3b and M1.5."
• "The board cannot see why the claimed subject-matter should not involve an inventive step compared to the public prior use (OV1). In this context, particular account must be taken of the fact that the publicly used honeycomb (OV1) is a defective product with a distorted cell geometry, which differs substantially from the originally ordered catalog product (with a honeycomb structure made up of identical hexagonal cells, as shown on page 1 of Annex A4). The board cannot see why it would have been obvious to use this defective product as the starting point for a further modification, which also differs from the actual catalog product. There appears to have been no reason for doing so. Rather, a skilled person would recognize the obvious error, correct it, and produce the desired honeycomb structure."
• The decision does not speak of any requests fo the respondent/opponent to submit or take further evidence in appeal.

EPO 

The link to the decision can be found after the jump.

T 0449/23 - (III) On evidence and inventive step

Key points

• "As regards an alleged lack of inventive step, the burden is on the opponent to adduce appropriate prior art which - when following the established substantive test, i.e. the problem-solution approach - persuades the opposition division or the board of the obviousness of the solution provided by the subject-matter claimed."
• " On the other hand, if the patent proprietor asserts that, in comparison to the prior art, there is an advantage or effect giving rise to a more ambitious formulation of the objective technical problem than that presented by the opponent and hence to an inventive step, the burden of proving this advantage or effect to the required standard of proof is on the patent proprietor (T 20/81, OJ EPO 1982, 217, headnote and reasons, point 3; T 912/94, reasons, point 3.5; T 355/97, reasons, point 2.5.1; T 1392/04, reasons, points 15, 19 and 20; T 2179/13, reasons, points 5.3 and 7). The mere assertion in the patent specification of an advantage or effect cannot be regarded as evidence of such an assertion."
• (e) The above principles have been confirmed in the following selected cases in which the underlying circumstances were comparable to those of the present case.
• Follows a review of these cases.
•  The patent proprietor cited decision T 1797/09 (reasons, point 2.7) in support of its view that the burden of proof rested on the opponent. 
• (a) In the board's opinion, decision T 1797/09 cannot support the patent proprietor's view. It appears that point 2.7 of the reasons is in reply to an allegation by the respondent (patent proprietor) relying on decision T 692/09 that no evidence for the solution of the technical problem of the patent had to be provided where the technical problem underlying the invention was completely new at the priority date of the patent (T 1797/09, reasons, point 2.6). 
• T 1797/09 : "The Board agrees with the Respondents insofar as a technical problem set out in a patent is considered to be credibly solved by a claimed invention if there exist no reasons to assume the contrary. In such circumstances, it is normally the Opponent's burden to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If no such evidence is provided, the benefit of doubt is given to the Patent Proprietor. However, if the Opponent succeeds to cast reasonable doubt on the alleged effect, the burden to proof its allegations is shifted to the Patent Proprietor ... In the present case, however, the Opponent has pointed to the comparative examples of document D1 where it is shown that the antispotting and antiscaling performance of a dish wash composition containing components a), b) and c) (Example 12) is worse than one containing only components a) and c) "
• This allegation appears, however, to misrepresent the findings in case T 692/09. Point 2.7 of T 1797/09 moreover fails to analyse the findings in T 692/09 and to relate this decision to the specific facts under consideration. From the reference to the Case Law of the Boards of Appeal, 6th Edition 2010, chapter VI.H.5, it is also not possible to identify a specific section in support of the statements in point 2.7 of T 1797/09. In fact, on the basis of the statements in decision T 1797/09, which lack any reasoning, the present board is unable to determine whether and why the conclusions in said decision could be relevant to the present case.
• As is apparent from the Case Law of the Boards of Appeal, 10th edition 2022, pages 866 to 867 of the English language version, decision T 1797/09 has remained a singular decision which was not followed by any other decision of the boards of appeal.
• (c) Of course, an advantageous technical effect could be notorious or part of the common general knowledge. In the first case, no evidence is needed in support of such effect, in the second case, only proof of such common general knowledge must be provided by the patent proprietor relying on such an effect. However, there are no such circumstances in the present case.
• As a comment, G 2/21 point 26 can also be cited:  "According to the established case law of the boards of appeal (see CLB, 10th edition, I.D.4.2, and the decisions therein) it rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved." 

EPO 

The link to the decision can be found after the jump.

T 0449/23 - (II) On evidence (in general)

Key points

• The Board provides a useful overview of the general rules on evidence. 
• (a) The legal burden of proof is the duty of a party to persuade the deciding body of allegations of facts on which the party's case rests. In principle, a party must prove alleged facts (assertions) from which it infers a legal consequence, i.e. which establish the basis for the party's legal claims. Thus, the allocation of the burden of proof depends on a party's substantive case.
• (b) To discharge its legal duty of persuasion, a party must prove the alleged facts by appropriate evidence to the required standard of proof. The party with whom the legal burden of proof lies therefore bears the risk that the alleged facts remain unproven, i.e. that the deciding body has not been persuaded in accordance with the required standard of the existence of these facts. In this case, the deciding body will decide against that party and reject its legal claims. Thus, the legal burden of proof requires the production of appropriate evidence to persuade the deciding body to the required standard.
• See also my recent analysis of T2463/22 of a (possibly) somewhat different approach. 
• (c) In principle, the legal burden of proof does not shift. References in the case law to a shift of burden of proof relate to the so-called evidentiary/evidential burden of proof (see for this distinction T 741/91, point 4.3). The notion of evidentiary/evidential burden of proof relates to the state of the evidence produced in the course of proceedings. Once the party bearing the legal burden of proof has adduced sufficient evidence to support its allegations of facts to the required standard of proof, the onus is on the adverse party to rebut the asserted facts by adducing appropriate evidence. Otherwise, the adverse party risks that the deciding body is persuaded of the existence of the facts and allows the claims. Thus, if the party having the legal burden of proof has made a "strong case" by filing convincing evidence, the onus of producing counter-evidence shifts to the adverse party (see e.g. T 859/90, reasons, points 2.2.2 and 2.2.3). However, this does not mean that the legal burden of proof is on the adverse party to prove the non-existence or the contrary of asserted factual allegations. It is sufficient that the adverse party raises substantiated doubts that prevent the deciding body from being persuaded of the existence of the alleged facts.
• In practice, of course, and differently from Dutch civil procedure, parties are not informed of such a shift of the evidentiary burden, and the Board does not invite parties to submit counter-evidence. 
• (d) In opposition and opposition-appeal proceedings, each of the parties carries the legal burden of proof for the asserted allegations of facts on which their respective substantive case rests.
• This seems correct, though a somewhat open question is whether the standard of review of factional findings by the opposition division is deferential or de  novo, with a related question about whether the burden of proof of the appellant can be different from the one in the first instance procedure. 

EPO 

The link to the decision can be found after the jump.

T 2463/22 - (I) On evidence, the standard of proof, Re B (Children) (and Francis Bacon)

Key points

• Some reflections on the standard of proof from Board 3.3.09 in this appeal about an alleged public prior uses.
• "The case law of the Boards of Appeal has tried to reconcile the following two aspects.
• - On the other hand, there is an imbalance in that one of the parties to the proceedings has access to the evidence and the other does not. The party that contests the prior use usually has little or no access to evidence that could support its case. All it can do is, essentially, point out inconsistencies or gaps in the chain of evidence provided by the other party.
• - On the one hand, under the principle of free evaluation of evidence, the deciding body must not observe any formal rules when assessing evidence, such as giving one means of evidence, as such, more weight than another. Accordingly, a lower probative value must not be systematically attributed to e.g. witness statements on a prior use from real life than to written evidence such as patent specifications."
• " In the current board's view, under the principle of free evaluation of evidence, it is always decisive in the evaluation of evidence that the members of the deciding body are personally "convinced". Moreover, they must always be convinced of whether, as stated in T 1138/20, "the alleged fact has occurred". Both is true regardless of which standard of proof is applied. "
• "The current board considers the following extracts from House of Lords, Re B (Children) [2008] UKHL 35, Reasons 2 to be an accurate and illustrative description of the issue at hand: "If a legal rule requires a fact to be proved (a 'fact in issue'), a judge or jury must decide whether or not it happened. There is no room for a finding that it might have happened. The law operates a binary system in which the only values are 0 and 1. The fact either happened or it did not. [...] [T]he standard of proof [...] is [...] the degree of persuasion which the tribunal must feel before it decides that the fact in issue did happen." (emphasis by the board)."
• As a comment, I thought "non liquet" is an essential element of the law on evidence, but legal traditions apparently differ. Even in the meaning of the phrase, it turns out. Compare the English and German Wikipedia pages for non liquet
• https://en.wikipedia.org/wiki/Non_liquet - "In law, a non liquet (commonly known as "lacuna in the law") is any situation for which there is no applicable law."
• https://de.wikipedia.org/wiki/Non_liquet - "Auch heute wird im Verfahrensrecht bei Beweisproblemen mit non liquet eine Situation bezeichnet, in der weder der Tatsachenvortrag der einen noch der anderen Seite bewiesen werden kann." ... "Im Zivilprozess hängt die Entscheidung bei einem non liquet von der (materiellen) Beweislast ab. Derjenige, der nach den Regeln der Beweislast die streitige Tatsache zu beweisen hat, verliert den Rechtsstreit, weil er beweisfällig bleibt (zumeist der Anspruchsteller)."
• I'm more familiar with the German use of the term non liquet (the term is used in the same way in Dutch law). The question for me was: what do judges do if the evidence is ambiguous in common law procedures / in the UK?
• To cite Francis Bacon in Reading on the Statute of uses (published in 1642):
• 
  
  https://books.google.nl/books?id=fusOD6ELKZ4C&newbks=1&newbks_redir=0&dq=The%20learned%20reading%20of%20Sir%20Francis%20Bacon%2C%20one%20of%20Her%20Majesty's%20learned%20counsel%20at%20law%2C%20upon%20the%20statute%20of%20uses&pg=PA305#v=onepage&q=non%20liquet&f=false 
• It seems that the view of the House of Lords in 2008 is still very much in line with the common law approach, or perhaps the remark of the House of Lords - self-evident as it is to the Lords, it is foreign to me - can be explained by the historical English approach to evidence.
• As a further remark, since under German law, the "Beweislast" rules determine the outcome of the case in the event of a (German-style) non liquet of the evidence, a concept alien to English law, it seems, it may have to be considered what 'burden of proof' precisely means in English law.
• See also T 1076/21: "If a material fact is not or cannot be proven, a decision is taken on the basis of who bears the relevant burden of proof. The fact that the real position cannot be established is to the detriment of the party which bears the burden of proof for this fact, among other things because the other party is given the benefit of the doubt. In principle, each party bears the burden of proof for the facts it alleges (T 63/06, Reasons 3.1 and 3.2)."

EPO 

The link to the decision can be found after the jump.

T 2250/21 - Is the witness a deepfake?

Key points

•  The OD revoked the patent. The proprietor appeals.
• The Board, in translation: "The appellant had essentially complained that the hearing of witnesses was not suitable to prove the alleged facts, since the chosen format of the hearing, namely by video conference, opened up a wide range of possibilities for influence or manipulation. "
• The The OD heard witnesses by video conference (in 2021). However, the Board considers the public prior use to be proven by the evidence alone, see below.
• "Therefore, questions should be submitted to the Enlarged Board of Appeal regarding the obligations of the opposition division, in particular whether the opposition division "must insure
• - whether the witness is not a deepfake,
• - whether the witness is a real human person,
• - whether the witness examined fully and not only partially confirms the identity given,
• - whether the ID is genuine and/or physically existent and/or is not a deepfake,
• - whether the witness is uninfluenced, for example by a 360° camera pan to view the entire room,
• or whether the mere testimony of the witness must be accepted physically without verification (e.g. with the risk that the witness is a deepfake acted by another person)""
• The Board, in the original German: "Wie oben unter Punkt 1. dargelegt, und im Laufe der mündlichen Verhandlung von der Vorsitzenden erläutert, ist die beanstandete Zeugenvernehmung jedoch für den Beweis der geltend gemachten offenkundigen Vorbenutzung "Space Jet 3 Almbahn", und damit die vorliegende Entscheidung, nicht relevant (Artikel 112 (1) a) EPÜ). Demgemäß erklärte die Vorsitzende während der mündlichen Verhandlung, dass eine Vorlage diesbezüglicher Fragen an die Große Beschwerdekammer nicht in Betracht komme. Die Patentinhaberin widersprach dieser Feststellung nicht und erklärte, dass die Vorlage angesichts der Auffassung der Kammer keinen Sinn mehr ergeben würde."

• In point 1 of the decision, the Board finds the public prior use proven by the documentary evidence alone.

• The documentary evidence did not include  affidavits, only documents such as a manual, technical drawing, and delivery receipt. 

• For sure, there are already some inventions addressing the authenticity of videos? 

EPO 

The link to the decision can be found after the jump.

T 1199/22 - When must a witness be heard?

Key points

• When must an offered witness be heard by the OD? 
• "Opponent 3 criticised that the opposition division took this decision - that the alleged prior use did not form part of the state of the art - without hearing the witnesses Mr Weist and Mr Schubert, because the witnesses had not only been offered to confirm that the meeting to which D24 relates took place, but also to testify as to the participants and the contents of the meeting (opponent 3's notice of opposition, page 10, as reproduced in opponent 3's statement of grounds of appeal, page 7). This included the delivery. Opponent 3 also criticised the fact that the witness Mr Hasenclever was heard on the contents of D24 instead of the witnesses that had been offered in relation to it. In their opinion, not hearing the witnesses Mr Weist and Mr Schubert affected the outcome of the decision."
• "The opposition division found that the presentation D24 and the general statements by the witness Mr Hasenclever did not prove beyond reasonable doubt the actual delivery of the foils to Hueck, and that considerable doubts remained as to the public nature of the delivery, if any (point 2.4.2 of the impugned decision). The opposition division was of the opinion that the alleged deliveries in the presentation D24, page 11, could be considered to be more likely than unlikely, but it concluded on the basis of D24 and Mr Hasenclever's testimonial (who, however, did not participate in the relevant meeting) that "absent any indications to the contrary" there were doubts as to the public nature of the alleged sales in view of the applicable standard of proof, beyond reasonable doubt (ibid.)."
• The Board: "the witnesses Mr Weist and Mr Schubert had been offered to testify as to the content of the meeting, which included the delivery of the foil because this meeting (in the form of the internal presentation D2
• 4) was provided as the (only) evidence of the delivery (opponent 3's notice of opposition, page 10, second and fifth paragraphs). In the light of the above, it is not possible to exclude the possibility that the opposition division might have come to a different conclusion if it had heard the witnesses Mr Weist and Mr Schubert on the content of this meeting."
• " Furthermore, the alleged prior use with order number 709.437-01 seems to be highly relevant because it allegedly relates to a foil having a relevant chemical composition (D27), ... "
• "In particular, it may be more relevant than the other prior art under consideration, and - if proven - may thus be decisive for the outcome of the case. For these reasons, it appears equitable that the witnesses Mr Weist and Mr Schubert should be heard before deciding on the public availability of the prior use "Hydro/Hueck"."
• The case is remitted.

EPO 

The link to the decision can be found after the jump.

T 0832/22 - On evidence and when something is proven

Key points

• When is a statement proven? What is the role of the standard of proof?
• The Board: "The Enlarged Board's reference in G 2/21 to a judge's personal conviction makes clear that it is the state of mind of the members of the fact finding body which is decisive in the evaluation of evidence. This is always the case, regardless of which standard of proof is to be applied. In other words, referring to the deciding body's conviction that an alleged fact occurred (see T 1138/20, Reasons 1.2.1, last paragraph, and T 1311/21, Reasons 3.2.1(d)(vi)), does, strictly speaking, not yet say anything about which standard of proof should be applied by the deciding body to arrive at this conviction."
• "As to "the required standard of proof" referred to by the Enlarged Board in G 2/21, different concepts have been developed in the case law of the Boards of Appeal. The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof is that of beyond reasonable doubt, mainly in opposition proceedings where only the opponent has access to evidence concerning, usually, an alleged public prior use "
• As a comment, I'm not sure that 51% likelihood is generally sufficient, see also below.
• "[S]tandards of proof relate, in legal systems based on the principle of free evaluation of evidence, necessarily to a mental state, namely to the nature or degree of conviction of the members of the fact finding body. Accordingly, it is difficult to quantify the difference in the required degree of conviction between "the balance of probabilities" standard and the "beyond reasonable doubt" standard. In fact, attempting to describe this difference in the form of numerical thresholds, for example as a certain percentage of likelihood that an alleged fact occurred, can even be misleading. In regard to the "beyond reasonable doubt" standard, it thus seems more expedient to focus on the term "reasonable". In the present Board's view, this expresses that the "beyond reasonable doubt" standard does not require absolute certainty, and that it is sufficient if the (majority of the) members of the deciding body have no reasonable doubt that[t] an alleged fact occurred. In other words, even if there is some remaining doubt, the "beyond reasonable doubt" standard of proof can be met as long as the remaining doubt is not reasonable, which can be understood as overall insubstantial in view of the entirety of the available evidence."
• "if the higher one of two disputed standards of proof is met, it can be left open which of these standards must be applied when assessing the evidence in question. Hence, if the deciding body is convinced beyond reasonable doubt that an alleged fact occurred, there is no need to decide which standard of proof is applicable (see, for example, T 2466/13, Reasons, 2.1.1). For the reasons given below, this is the situation in the present case."
  
  
• The opponent had filed evidence of the publication date of a document. "D39 is a digital forensic report by the company BIT4LAW SRL created "in the interest of" the opponent (see D39, page 1, and chapter 2, page 4: "Introduction". D39 establishes, inter alia, the upload dates of certain documents [including D9] from the opponent's computer system to a public web server (see chapter 5 starting on page 13)."
• "the Board considers that D39 - a document only cursorily mentioned in the appealed decision and not considered in substance - establishes that D9 was publicly available on the internet at least on 19 November 2014, i.e. well before the priority date of the patent (29 March 2017)."
• "The data on page 21 of D39 also contain the information that version 1.0 of the document in question was last updated by Daniela Volpin on 19 November 2014. Ms Volpin confirmed in her affidavit (D38) that on 19 November 2014 she "personally uploaded on the Carel website the release 1.0 dated 30/10/2014 of the Technical Manual of the Heos device". The information in D38 is thus consistent with that in the report D39."
• There was further supporting evidence in the form of affidavits.
• An interesting point is the level of evidence required in this case to show the publication date of the document. "Up to the hilt" is not limited to prior use. 

EPO 

The link to the decision can be found after the jump.

T 0479/22 - Video inspection of a CD-ROM

Key points

• "the opposition division found the two public prior uses alleged by the opponent (the respondent), relating respectively to the "sleep safe" dialysis machine and the "PatientOnLine" (POL) software, to be proven. With regard to the latter, two witnesses, Mr Guido Neyer and Ms Claudia Wolfers, were heard and a CD was inspected during the oral proceedings, which were held by videoconference."
•  D6 is a user manual for the "PatientOnLine" (POL) software sold by the respondent which enables the creation and management of prescriptions for the "sleep safe" dialysis machine. D6a and D6d are affidavits stating that D6 was made publicly available during the installation of this software in a hospital in June 2007. In relation to this alleged prior use, the authors of the affidavits were heard as witnesses and a CD, presented by the respondent as an original installation CD of the POL software and allegedly containing a copy of D6, was inspected during the oral proceedings before the opposition division, which were held by videoconference."
• I assume it is a CD-ROM, not an audio CD.
• "The inspected CD was filed after the expiry of the opposition period. However, as noted by the opposition division (see point 2 on page 10 of the decision under appeal), the respondent did not submit it as evidence of a new set of facts but to support the alleged prior use of the POL software and in accordance with the opposition division's order to take evidence of 21 January 2021, according to which evidence was to be taken on this prior use, inter alia, "by inspecting an original installation CD of the POL software in the version 4.2" (see page 2). This prior use had already been invoked in the notice of opposition (see point VI.3 on page 16). In such a situation, the opposition division had no discretion not to admit the CD into the opposition proceedings. In any case, its decision to admit it did not suffer from an error in the use of discretion as set out in G 7/93, point 2.6 of the Reasons.'" 

• "the Board does not have any discretionary power of its own under Article 12(4) RPBA not to admit the CD into the appeal proceedings as it forms part of the evidence on which the decision under appeal is based within the meaning of Article 12(2) RPBA."

• "The appellants also objected that it had been inappropriate to inspect the CD and to hear the two witnesses in oral proceedings held by videoconference. In their view, this format of oral proceedings was incompatible with the high degree of complexity of the case."

• "The Board disagrees. The fact that taking of evidence may be conducted by videoconference is expressly mentioned in Rule 117 EPC. It is also immaterial that the appellants themselves did not have physical access to the inspected CD. The inspection of the CD did not concern its haptic feel, texture or handling experience, but only its content - in particular the file "PatientOnLine User Manual" with which D6 was alleged to be identical - and the fact that the inspection of the CD was carried out by videoconference did not prejudice the proper inspection of that content. The inspection was carried out by a member of the opposition division, assisted by a technician who presented the CD to the camera. The minutes also show that the parties were able to follow the inspection in real time during the videoconference and that the content of the CD, including some of its directories, was displayed to the videoconference participants. Moreover, all the pages of the user manual requested by the parties and the opposition division, as well as the contents of several other files, were also displayed, with corresponding screenshots being included in the minutes. The fact that some of the files were corrupted and therefore could not be opened is not related to the format of the oral proceedings."

• "The Board also sees no reason to consider that the hearings of the two witnesses by the opposition division were compromised by holding the oral proceedings by videoconference. The minutes of both hearings show that precautions were taken to ensure that the witnesses were alone in front of the camera and that they had no document in front of them from which to read their statements."

• Good to know about this. I wonder if the EPO sends practical instructions to witnesses?
•  The Board is satisfied that this evidence is sufficient to establish that D6 was made available to the public in June 2007, i.e. before the earliest priority date of the contested patent. D6 therefore belongs to the state of the art for assessing the novelty and inventive step of the subject-matter claimed in the patent.
• The case is remitted to the OD.

 

EPO 

The link to the decision can be found after the jump.

T 0104/23 - (The limits on) Witness prepping at the EPO

Key points

• As I understand it, preparing your witness is fine in USA civil litigation, while UK law has a "fundamental prohibition, that “you must not rehearse, practise with or coach a witness in respect of their evidence" (source). What about the EPO?
• The present decision gives some guidance. 
• " the proprietor submits that the opponent spoke with the witness just before the witness was heard"
• "Contact between the opponent and witness during an interruption of oral proceedings may potentially raise doubts about the witness's impartiality and therefore diminish the probative value of their testimony. However, these are merely factors to consider when assessing the witness's credibility, especially considering the - undisputed - link between the witness and the opponent.  "
• "It would also appear as manifestly unrealistic to expect from parties to wholly refrain from contacting witnesses before their hearing, in particular to refrain from consulting them before a hearing. It is in the overall interest of the procedure that the witness statement is directed at those facts that are relevant to the case, and it is only natural that the attorney will have to talk to a witness before offering him or her as witness in the proceedings. Otherwise it would be plainly impossible for the attorney to select the appropriate persons, possibly out of a larger circle of people, very often all the employees of the party. "
  
  
  
  
• "The opposition division held, based on the witness testimony E1 together with evidence D4, D6 and D26, that the sale and delivery of the "LINCO Killing Machine Model IID" on 27 May 2009 (indicated as public prior use LINCO Benelux, Linco Benelux B.V., Linco Benelux or LINCO) constitutes state of the art (section 8 of the appealed decision). The appellant patent proprietor, in their grounds of appeal, challenges this finding of the division."
• "The appellant proprietor reiterates the same objections to admissibility of El and to the witness credibility as in first instance, namely the arguments that the opponent spoke with the witness just before the witness hearing, also pointing at the contradictions, lack of recollection and the unsolicited answers in the testimony."
• However, note that the evidence is actually: "the appellant proprietor argues that the admission and reliance on the witness testimony of Mr. [K] from the grandparent application (El) "
• As a comment, it is not clear to me if the members of the OD had a live interrogation of the witness in this case, and I doubt that written documents can be treated as 'witness evidence' in the sense of Article 117 EPC. 
• The proprietor could have requested a hearing of the witness and that document E1 be excluded as evidence if no witness hearing of Mr K took place before the OD in the case at hand.  
• 
  
• Separately, under Rule 103(4)(c), a statement that the appellant will not attend the oral proceedings was treated as a withdrawal of the request for oral proceedings, giving rise to a 25% refund of the appeal fee. 
• "The Board is aware that the case law does not appear to be uniform on this issue."  

EPO 

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

T 2011/21 - Incorrect video inspection of a device

Key points

• "the opposition division found that [auxiliary request 1] met the requirements of Article 83, 84 and 123(2) EPC and that the subject-matter of independent claim 1 was novel and involved an inventive step in view, among others, of the public prior use represented by the child safety seat commercialized with the name "Sirona" (bundle of evidence M11). During the oral proceedings which was held by videoconference the "Sirona" child safety seat was inspected remotely by the opposition division. The inspection was transmitted by videoconference to all parties with every party having been given the chance to direct the camera used for inspection to specific details of interest. Screenshots showing several relevant views and constructional details of the child safety seat "Sirona" were taken and attached to the protocol of inspection."
  
  
• "The public availability of the prior use of the "Sirona" child safety seat is not contested by the respondent (patent proprietor). Based on the taking of evidence, the opposition division concluded that the subject-matter of claim 1 according to the auxiliary request 1 underlying the decision under appeal was novel over this public prior use. The opposition division held that the inspected "Sirona" child safety seat did not comprise the feature introduced in claim 1 of the auxiliary request 1 that:

  "the outer shell (2) comprises a side wing (13) and the housing component (7) is embedded into the side wing (13)".  ... The conclusion of the opposition division regarding the alleged distinguishing feature above was based on an interpretation of the term "side wing" [...] which was considered too narrow by the appellant (opponent)." The Board agrees with the opponent.

• "In view of all the above and contrary to the findings of the opposition division, the subject-matter of claim 1 of the patent as maintained lacks novelty over the public prior use "Sirona". An assessment of the further novelty attacks raised by the appellant (opponent) is thus not required."

• Auxiliary request 3 is considered to be novel and inventive.

• In connectio with the opponent's request for reimbursement of the appeal fee: "the appellant (opponent) contested the correctness of the decision of the opposition division to hold oral proceedings and to carry out the inspection of the child safety seat "Sirona" per videoconference hence in the physical absence of the opposition division and of the parties although it had been requested to hold them in person. The appellant (opponent) essentially pointed out that in view of the complexity of the structure and design of the outer shell, in particular of the rear part of the "Sirona" child safety seat, it was not possible by a mere video-inspection to correctly identify the effective location/extension of the portions of the seat functionally corresponding to the "side wings" recited in claim 1.  

• "The Board considers that the opposition division erred in not granting the opponent's request to take evidence by inspection be made in-presence. The opponent's request was namely substantiated and in the Board's view well-founded, in particular because the object to be inspected was a complex three-dimensional item, and it could not a priori be ruled out that the images on the screen would allow the participants to appreciate the full extent of the disclosure."

• However, the Board considers the procedural error to be harmless because in the end the OD only found the claim to  be novel based on an issue claim interpretation. Hence the opponent was not adversely affected by the procedural decision of the OD.

EPO 

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

T 1311/21 - Standard of proof, prior use, sale by a related company

Key points

• E7 is a user manual written by the company Sensors, Inc. for the product SEMTECH-DS sold by Sensors, Inc.
• "the board concurs with the patentee that the evidence on the question of whether E7 is part of the prior art is not in a neutral sphere of control, inter alia due to the undisputed business relationship between the opponent and Sensors, Inc., the board is of the opinion that the patentee did have opportunities to search for counter-evidence. In particular, as discussed during oral proceedings, the patentee could have directly contacted not only Sensors, Inc., but also the purchaser of SEMTECH-DS explicitly mentioned in document E7d, namely "The Texas Transportation Institute", whose contact details were even given in E7d, or searched for any other purchaser. 
• "Since the user manual E7 whose public availability prior to the priority date of the patent is at issue is neither within the sphere of control of the opponent nor within a neutral sphere of control to which both parties have access, the board is of the opinion that neither standard of proof is applicable. "
• "in certain cases, such as the present one, this binary approach to proof standards can turn out to be overly formalistic and simplistic. On the one hand, since E7 originates not from the opponent but from a third party, it cannot simply be said that the evidence "lies within the sphere of the opponent". Hence, the higher standard of proof "beyond reasonable doubt" is not to be applied without further thought. On the other hand, the arguments put forward by the patentee (see point 3.2.1 (c) above) show that there is an imbalance between the parties in the access to E7 and thus the possibility to establish whether E7 is part of the prior art, so that it can also not simply be said that both parties had access to this evidence. Hence, the lower standard of proof "balance of probabilities" is also not to be applied without further thought. Already based on these basic considerations, neither standard appears to be suitable for application. The question then arises how to assess the evidence on the public availability of E7."
• "what matters, in plain language and as concluded in T 1138/20, Reasons 1.2.1, is the deciding body's conviction on the occurrence of an alleged fact, taking into account the particular circumstances of the case and the relevant evidence before it."
• "For the above reasons, the dispute between the parties about which exact standard of proof is to be applied to the present situation can be left undecided."
• "The board is convinced that, in view of the evidence E7 and E7d, the user manual E7 was made publicly available before the priority date of the patent, i.e. 19 May 2014, for the following reasons:" (follow detailed reasons)
• "The subject-matter of claim 1 is not novel in view of document E7 (Article 54(1) EPC). 
  
  
• Turning to an auxiliary erquest, and a further document E6: "It is undisputed between the parties that the standard of proof to be applied for assessing the public availability of E6 prior to the priority date of the patent is "beyond reasonable doubt"."
• "(a) The board is convinced beyond reasonable doubt that E6 forms part of the prior art under Article 54(2) EPC for the following reasons:

  (i) E6 is a handbook for a software with the title "AVL M.O.V.E System Control 2013". In the headnote of E6 are mentioned the date "M rz 2013", the reference "AT3732D" and the revision number "Rev. 02". In the delivery note E6c, page 2, the handbook E6 is identified as item "01.30.12" and described as "M.O.V.E SYSTEM CONTROL SOFTWARE, UG DOCU, AT3732D". According to E6cc, the handbook E6 was delivered to Daimler AG on 6 December 2013. While the actual version of the handbook E6 is not mentioned in the delivery note E6c, this missing information is to be found in E6e, the veracity and context of which is certified in E6f. In fact, as explained by the opponent during oral proceedings, according to E6e in conjunction with E6f, page A14, the version 02 of E6 was valid (in German in E6f: "g ltig ab") from 8 March 2013 to 09 December 2013, i.e. on the date of the delivery of E6 to Daimler AG. It follows that there is no doubt that a handbook E6, version Rev. 2, was delivered to Daimler AG before the priority date of the patent."

• 
  
• "E6 is a user manual intended to be delivered to all purchasers of an AVL M.O.V.E system and, as a user manual, only describes how to use a product already purchased by the customer. "
• "There is no presumption recognised in the jurisprudence for the existence of a non-disclosure agreement when it comes to the delivery of goods to one of many other end customers. On the contrary, the sale of a product to one of many other end customers, who generally wishes to dispose of the product freely (e.g., as the opponent stated during oral proceedings, the product will be used by an uncontrolled and unlimited number of employees of the customer), is considered to be a typical case of an unrestricted disclosure to the public. "
  
  
• The Board remits the case as the OD had concluded that E6 was no prior art.

EPO 

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

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.