T 0778/21 - When must a witness be heard?

Key points

• The decision includes a tutorial on proof of public prior use. 
• "a) First variant - If the opponent's evidence on file, for example documents and affidavits, do not confirm the alleged facts, or if doubts remain as regards their credibility, and the opponent, as the party bearing the burden of proof, requests an inspection or hearing of such affidavit writers as witnesses, such hearing and/or inspection should be granted (T 1363/14, reasons 2.2.4)."
•  "If, as a further variant, the opponent's evidence on file confirms the facts provided to substantiate the prior use with a sufficient degree of certainty (i.e. as such do not give cause to doubt their credibility) and the proprietor has contested the findings and offered counter evidence and/or requested to hear the authors of the affidavits as witnesses, it cannot be concluded at this stage that all the facts of the prior use have been proven. Rather, such a conclusion can only be drawn after taking and evaluating the entire available evidence offered by the parties, including (counter) evidence by the patent proprietor. Thus, if the opponent's evidence confirms the prior use, the (counter) evidence offered by the patent proprietor becomes relevant and needs to be considered. If assertions made in an affidavit or in any other witness declaration remain contested, a request from a party to hear the (available) witness must be granted before these assertions can be made the basis of a decision against the contesting party (Case Law of the Boards of Appeal, 10th edition, G.3.3.1)."
• "To conclude in such a case that the opponent proved its allegations without considering the counter evidence goes against the prohibition of prejudging the weight of evidence and violates the proprietor's right to be heard. It contradicts Articles 113(1) and 117(1) EPC which embody a basic procedural right generally recognised in the EPC contracting states, i.e. the right to give evidence in appropriate form and the right to have that evidence heard (G 2/21, OJ 2023, 85, reasons 41). This right applies not only to the party bearing the burden of proof but also to the other party with respect to counter evidence. Thus, to decide whether a fact can be regarded as proven, all the relevant evidence needs to be taken into consideration (G 2/21, OJ 2023, 85, reasons 42; T 474/04, reasons 6-10).  "
• "The principle of unfettered consideration and evaluation of the evidence does not apply until after an offer of evidence has been taken up and cannot be used to justify not taking offered evidence into account (G 2/21, point 44 of the reasons). Thus, if the evidence offered as proof of contested facts is potentially relevant, the body hearing the case must, as a rule, order that it be taken into account (G 2/21, point 42 of the Reasons; see T 474/04, reasons 8, 10) otherwise the party's right to be heard would be violated. "
• Note also the Guidelines, regarding affidavits: "If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the opposition division and the parties to put questions to the witness and thus enables the opposition division to establish the facts on the basis of that person's testimony. If that person is not offered as a witness, the opposition division will not pursue this evidence further."

EPO 

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

T 2395/19 - Review of facts, public prior use

Key points

• An example of the new style review of findings of facts, by Board 3.2.01.
• "The Board confirms the conclusion of the opposition division that the appellant (opponent) has convincingly and sufficiently proven that a public prior use of a coated cutting tool type "Tiger-Tec WAK1O" manufactured by Walter AG took place before the priority date of the contested patent (December 2004). 
• "To the extent that there is no error in the application of law, in principle a Board has no reason to set aside the evaluation of evidence of a deciding body of the first instance and supersede it by its own unless the deciding body of first instance recognizably failed to consider essential aspects, included irrelevant considerations, or violated the rules of logic, such as when logical errors and contradictions are detected by the Board in the reasoning of the decision (see also T1418/17, point 1.3 of the Reasons, T 42/19, point 3.4 of the Reasons)."
• " The burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. 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 (T 1138/20, point 1.2.5 of the Reasons)."
• On the standard of proof: "The Board also considers that it has been proved beyond any reasonable doubt (see affidavits D26, D26a and D49) that coated cutting tools of type "Tiger tec" with grades WAKl0 manufactured by Walter AG were available on the market as a "mass product" to everyone - hence also to the appellant (patent proprietor) - at least from July 2004, i.e. before the priority date of the contested patent (December 2004)."
• The fact that the specific test specimen was tested in house, does not raise the standard of proof to "up to the hilt".
• "It appears to be normal that a party submits their own experimental data be it produced within their company or an affiliate company. This may lead to a need of the other party to run comparative tests and submit the results if they shed doubt on the other party's data. But it does not lead to a shift of the standard of proof since both parties are free to run their own tests on standard products available on the market. Should the other party contest the comparative results based on the fact that material properties may change within a series of products they would be under an obligation to provide a specimen out of the toolbox acquired by them for further inspection by the other party or by an expert appointed by the opposition division. "
• This is the EPO-appointed expert of Art. 117(1)(e) EPC. Does anyone know of a case (appeal or application number) where one was appointed? (asking for study and teaching purposes)
• "The credibility of the declaration signed by the employees of TaeguTec was questioned by the appellant (patent proprietor) ..."
• As a comment, if signed declarations are timely (contested before the OD (in a substantiated way), the declarant should normally be offered as a witness by the party filing the declarations. The decision indicates that the opponent did offer witnesses. 
• "As a consequence of these findings, the taking of evidence in the form of a hearing of the witnesses Mr. Na and Mr. Lee offered by the appellant (opponent) was not required." (by the OD)
• E-IV, 1.2: "If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the opposition division and the parties to put questions to the witness and thus enables the opposition division to establish the facts on the basis of that person's testimony." (see also T0474/04)
• 
  
• "The complaint of the appellant (patent proprietor) that they were not able to carry out counter-tests of the same specimens tested by Mr. Lee and Mr. Na is not justified either because, as confirmed by the appellant (opponent), no request in this sense was submitted by the appellant (patent proprietor) to the appellant (opponent) and the contrary has not been proven by the appellant (patent proprietor). The Board also observes that the appellant (patent proprietor) did not make any attempt to purchase and counter-test specimens of "Tiger-tec WAK1O" coated cutting tools which were available on the market at least as from the year 2024 in order to confute the results presented in the affidavits under discussion."
• The Board considers and rejects numerous other objections to the evidence by the proprietor.
• "The subject-matter of claim 1 according to the main and to the auxiliary request 1 thus lacks novelty over the public prior use, whereby irrespective of the further issues raised by the appellant (opponent) these requests are not allowable as correctly stated by the opposition division."
• The patent is maintained in amended form: "The Board agrees with the appellant (opponent) that the solution recited in claim 1 defines an alternative to the known "Tiger-tec WAK1O" coated cutting tool because the advantageous technical effect claimed by the appellant (patent proprietor) is neither mentioned in the contested patent nor was this technical effect demonstrated by the appellant (patent proprietor). However, the Board considers that the elevate number of parameters at stake and the complexity of their interactions which, as it is well known, characterizes this kind of composite products, suggests to the person skilled in the art to apply extreme caution when considering to replace a component of a very well working composite material as the coatings of the "Tiger-tec WAK1O" cutting tool with a different one. Therefore, the Board agrees with the appellant (patent proprietor) that the person skilled in the art has no motivation to replace the material of the third coating of the public prior use cutting tool with the materials suggested in claim 1, whereby the subject-matter of claim 1 results in an non-obvious alternative to the solution known from the prior art."

EPO 

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

T 2892/19 - Regen kits

Key points

•  "The Board has to consider first whether Regen kits and instructions for use according to D127 and D129 belong to the state of the art."
•  "it has to be established whether such Regen kits and instructions were delivered to Levi Medical and from this company to clinicians in Italy before the priority date of the patent and, if so, whether the deliveries made these Regen kits part of the state of the art."
• "Evidence for the deliveries of the Regen kits and instructions does not lie exclusively within the sphere of the respondent [opponent]. Rather, both the appellant and the respondent had access to this evidence since the deliveries under scrutiny are for material which originated from the appellant [proprietor] and which was the subject of a distribution agreement between the appellant and Levi Medical (D63). Hence, the applicable standard of proof is the balance of probabilities"
• "the respondent provided a witness statement by [person]  Levi (D126) according to which a Regen kit as shown in D127 including instructions for use according to D129 had been found at her home. In D126, [person] Levi produced shipping documents as evidence of the delivery of nine Regen kits to different clinicians in Italy before the priority date of the patent."
• "The appellant alleged that [person]  Levi was an unreliable witness, also on the basis of D200 and D201, mainly because she had an interest in the invalidation of the patent in suit and was involved in criminal proceedings."
• The Board: "it is not exceptional in opposition proceedings that a piece of evidence or a witness statement stems from an interested person or even a party to the proceedings."
• "In view of the strong documentary evidence provided in addition to [person] Levi's witness statements and the fact that the appellant has not pointed to any substantial contradictions in these witness statements about the deliveries of Regen kits and instructions for use according to D127 and D129, the Board is convinced, on the balance of probabilities, that Regen kits according to D127 and instructions for use according to D129 were delivered to Levi Medical and clinicians in Italy before the priority date of the patent."
• "the Board notes that it is the appellant which initially has the burden of proof to establish the existence of a confidentiality agreement (T 473/13, point 11.2 of the Reasons)." 
• "The respondent provided [person] Levi's witness statements to the EPO and the UK High Court of Justice, according to which purchases and sales by Levi Medical of the appellant's products were not confidential. The witness hearing before the UK High Court of Justice remained unchallenged (points 20 and 88 of D137). The witness statements are supported by distribution agreement D63, which does not include or hint at any confidentiality agreement for the Regen kits. On the contrary, D63 clearly indicates that these kits were normal items of trade, explicitly defining the relationship between the appellant and Levi Medical as one of vendor and vendee, the latter of which has to maximise the sales of the product and actively demonstrate it to potential customers (paragraphs 3, 8 and 10). There is no reason to assume that the lack of confidentiality derivable from D63 should not extend to the deliveries of the Regen kits to Levi Medical and clinicians in Italy, especially because the appellant provided no explicit evidence that those deliveries had been made under a confidentiality obligation."
• "The appellant only argued that the deliveries had implicitly been confidential as the Regen kits had not been approved for commercialisation in Italy and therefore were for test purposes only. To support this argument, the appellant referred to T 906/01 and T 818/93."
• "Even if the Italian Ministry of Health had to be informed before the selling of the kits in Italy and even if this information had not been provided, this does not imply that the Regen kits were prototypes. The fact that the appellant may have had a significant interest in obtaining patent protection does not render the kits prototypes either. Mistakes in this respect happen. As regards the allegedly small number of deliveries according to D126, this is not evidence that the Regen kits were prototypes. As concluded under similar circumstances in T 1464/05 cited by the respondent (point 4.2 of the Reasons), the deliveries could have been for promotional purposes, for instance. "
• "he Regen kit shown in D127 and the instructions for use according to D129 bear a CE marking, which conveys the information that the kit was a final product that could be sold in the EU. Even if the Regen kit should, as argued by the appellant, not have had such a CE marking for legal reasons, the mere fact that this marking was actually on the product speaks strongly against customers considering it a prototype."
• "the Board is convinced that the deliveries of Regen kits according to D127 and instructions for use according to D129 to Levi Medical and clinicians in Italy before the priority date of the patent made those kits part of the state of the art."
• "the subject-matter of claim 1 of auxiliary request II, i.e. the only claim request on file, is not inventive (Article 56 EPC) over the prior use of Regen kits and instructions for use according to D127 and D129."

EPO 

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

T 2082/19 - Complete case on prior use / submitting sales data

Key points

• The patent has a filing date of 16.02.2005. A notice of opposition was filed in 2010, the first decision in appeal was issued in 2017, and in the present decision notified in March 2023, the Board decides on the patentability of the claims. 
• The opponent alleges lack of novelty over public prior use of a product by the patentee itself. Part of the evidence is "a video commercial shown [relating to "Extra Strength Tylenol Rapid Release Gels"] to the public on 6th February 2005 during the Super Bowl pre-program advertisements."
• Documents A30-A36 were filed by the opponent/appellant with its statement of grounds. The Board does not admit them.
• "The Board notes first that the prior use objection was raised in the notice of opposition on 10 March 2010 and that the main request is on file since 2 November 2011. It is established case-law that where lack of novelty is alleged over a public prior use, the burden of proof lies with the party claiming that the claimed features were disclosed in the alleged public prior use before the relevant date. This requires a provision of a complete chain of evidence that the product "Tylenol Extra Strength - Rapid release gels" disclosed all the claim features and was made available to the public before the filing date of the contested patent. Yet, for the first-time in appeal the appellant files a document (A30) relating to the composition of the Tylenol gelcaps, in particular to the presence of a sub-coating and to the width of the gap. These features were at the heart of the substantive discussion in the opposition proceedings."
• "Documents A31, A32 and A34-A36 are intended to demonstrate the public availability of the Tylenol product before the priority date. The content of documents A31, A32 and A34 was available already in 2005, while A35 and A36 are declarations relating to the purchase and the receipt of the Tylenol product in 2005. As they relate to the prior use objection raised in the notice of opposition, the Board could not find any reason why these documents could not have been filed earlier."
• "In the present case, the crucial document appears to be D20, which is supposed to make the link between the product "Extra Strength Tylenol Rapid Release Gels" seen in D29 or in the video commercial and proving that the same product was effectively sold before the effective date of the contested patent, namely 16 February 2005. "
• "According to the appellant [opponent] [D20]  is a sales report from the AC Nielsen database indicating a summary of sales of Tylenol product for the period ending 29 January 2005. For the product code 030045048824 there were specifically 158.975 units sold by the week ending 29 January 2005. "
• The Board: "document D20 merely discloses a table of undefined provenance, without any evidence or certificate of authenticity. As observed by the respondent, the appellant has offered no substantiation of exactly what the data of D20 demonstrate or any further explanation to corroborate the alleged sales. In the Board's view, D20 cannot provide any evidence in relation to the questions that need to be answered to substantiate an allegation of prior use, here to the occurrence of a public use in the form of the sale of the product, since its authenticity cannot be certified and it does not mentions inter alia where, how or to or by whom the product was indeed sold."
• D 20 is here. 
• As a comment, the Board apparently wants more information and a certification of authenticity. The document seems to mention a grocery shop chain, I understand that AC Nielsen is a company buying sales information from groceries and supermarkets (based on point-of-sale data) and selling the information to other companies. However, D20 itself does not identify the document as coming from an AC Nielsen database.
• "Referring to T 55/01, the appellant [opponent] argued that in case of mass-produced and distributed consumer products there were no need to prove that the product was sold to specific customer. However, this decision is not relevant to the present case since there is no convincing evidence that the product Tylenol Rapid Release Gels was massively distributed before the filing date of the patent."
• The public prior use is considered to be not proven.

EPO 

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

T 1841/18 - A visit of a factory as prior art

Key points

• "Both parties agree that Mr. G. inspected a machine supplied by the patent proprietor during a visit to Caffitaly before the filing date of the patent in suit."
• This is asserted as a public prior use.
• "The opposition division decided, after having heard Mr. G. as a witness [see the minutes], that the above mentioned inspection did not amount to a disclosure of the inspected machine because the circumstances of the inspection implied the existence of an obligation to maintain secrecy."
• There was a confidiality agreement between Caffitaly and GIMA. GIMA was the parent company of IMA, and IMA is the employer of Mr. G.
• "Mr. G. during the inspection, acted in the best interests of GIMA and IMA, which was to keep the observed technical information confidential", according to the OD.
• "there is no evidence on file of the existence of a non-disclosure agreement directly involving IMA at the time of the inspection because the non-disclosure agreement contained in D1m was signed by GIMA and Caffitaly"
• "Mr. G.was therefore not directly bound by these contractual obligations, irrespective of the extent thereof"
• "Document D1r, ... only shows that IMA owned 65% of the shares of GIMA."
• "the transfer to IMA of the totality of the [GIMA's] business assets was only finalized after the inspection, and there is nothing in D1r supporting the patent proprietor's allegation that when IMA acquired a controlling majority of the shares of GIMA (65%, see D1r), also these specific secrecy obligations were taken over."
• " the witness [Mr. G.] explicitly confirmed that he was not aware of any confidentiality obligation during the inspection (page 8, second paragraph of the minutes of the taking of evidence), and that at that time GIMA was a competitor of IMA" 
• " the opponent convincingly demonstrated that the assumption, at the basis of the appealed decision, that Mr. G. was not a member of the public, is unjustified. 
• As a consequence of the above, the opponent also convincingly demonstrated that the inspected machine (see D1e) was made available to the public, and is therefore prior art."
• The patent is revoked.
• I note that the Board also mentions that  "Caffitaly signed a non-disclosure agreement with the patent proprietor" and that "the patent proprietor [submitted documents] to show that the sale of the allegedly disclosed machine was made under secrecy".
• The visit was on 25.08.2010. The patent's filing date was more than six months later, on 16.03.2011. Article 55 is, therefore, of no avail.
• The declaration of Mr. G. does not seem to explain why he visited the site and, especially, why he was granted access.
• As a comment, however, without checking the complete file, there appears to be no evidence on record from Caffitaly confirming that they granted Mr. G. access to their site without expecting any confidentiality and giving any explanations of why they did so. The OD notes in its decision that Mr. G stated that "he was not aware of the specific details regarding the organisation of the visit as it had been organised by Mr. T.". Mr. T. also was present during the visit but gave no witness testimony.  
• I find the Board's decision remarkable. However, courtesy obliges me to comment no further here.
• There is also an issue of the effect of a national court's judgement on the matter discussed in the decision.
• Note, there is also a case T 1814/18 that is closely related. 
• 
  
• EPO 

The link to the decision is provided after the jump.

T 1024/18 - (II) Public prior use

Key points

•  "The opposition division found that the prior use was sufficiently substantiated at least by the Neos 3 diaper production line. The technical features of the production line were disclosed in E4 and evidence of the sale [of the Neos 3 production line] to SCA in 2009 was proven by invoice E3. It however found that: [] the alleged prior use was not made publicly available by the sale to SCA" 
• " According to established case law, the sale of an apparatus is, in the absence of any special circumstances limiting the freedom to divulge details thereof, sufficient to render the technical details of the apparatus available to the public. The sale by GDM of the Neos 3 production line to SCA in 2009, as evidenced by E3, has not been questioned. However, the Board finds, contrary to the opposition division, that there is no evidence of confidentiality, not even tacitly so, which restricted [the buyer] SCA from freely divulging details of the production line to any third party." 
• " The Board concurs with the respondent and the opposition division that the 'beyond reasonable doubt' standard of proof is appropriate for the prior use to be seen as proven. " 
• The Board reviews the findings of fact based on the evidence on file, in particular based on the transcripts of the witness hearings. The  Board: " As regards SCA allegedly not communicating information regarding the Neos 3 production line to others, this cannot be concluded from the witness statements. On page 9/40, 2nd last paragraph, of his testimony, Mr Claessens states 'we do not kind of openly communicate issues of GDM to others, but it's not a secrecy agreement'. This further enforces that no confidentiality agreement was in place restricting SCA from divulging details of the Neos 3 production line to a third party." 
• "  The respondent's argument that a tacit obligation not to divulge details of Neos 3 must have existed due to the commercial and technical relationship that existed between GDM and SCA is held to be mere conjecture lacking foundation. According to the witness Mr Berg, indicated as commercially responsible for the acquisitions of Neos 2 and Neos 3 and for preparing, negotiating and signing the purchase contracts on SCA's behalf, there was no joint development project between GDM and SCA (see Mr Berg's testimony, questions and answers bridging pages 3-4/8 and 5-6/8, respectively). Irrespective of this, any possible existence of a commercial and technical relationship existing between GDM and SCA before the sale of the machines also does not allow a conclusion that a tacit obligation of confidentiality existed once the machines were sold to SCA and became its sole property. In fact, the sole secrecy agreements referred to by the witnesses (see Mr Berg's statement, page 4/8, line 6 onwards and page 7/8, last paragraph) relate to GDM being prohibited from divulging any detail of the SCA production facilities, rather than any restrictions being placed on SCA relating to the purchase of the Neos 3 production line. It is noteworthy that, despite a secrecy agreement restricting GDM from divulging details of the SCA facilities, no agreement is referred to by the witnesses, let alone has been filed, obliging SCA to similar secrecy with respect to the purchased Neos 3 production line. The lack of an agreement limiting SCA from divulging detail of Neos 3 is thus found by the Board to be proven beyond all reasonable doubt." 
• As a comment, in the present case, the patentee does not seem to be SCA. 
• The somewhat puzzling aspect is that disclosure from an assistant to the inventor is of course no prior art even if the inventor is not bound by secrecy. 

EPO -  T 1024/18

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

T 0041/19 - Appellate review of findings of fact (III)

 Key points

• Board 3.2.01 sticks with its earlier decision T1418/17 that the Board should only review the OD's evaluation of the evidence for clear error. The Board does not comment on T 1604/16 of Board 3.2.02.
• The present Board also considers that a “eidesstattliche Versicherung” (written signed witness declaration) is also valid as evidence, even if the party submitting that evidence does not offer the witness for hearing. Rather the other party must formally request a hearing of the witness (and bear the costs), according to the present Board.

T 0041/19

epo.org/law-practice/case-law-appeals/recent/t190041du1.html

2.2 Aus Sicht der Kammer ist es nicht Aufgabe des Beschwerdeverfahrens, die Beweiswürdigung erneut vorzunehmen, sondern die Beweiswürdigung der Einspruchsabteilung zu überprüfen. Die Entscheidung über die Beweiswürdigung der ersten Instanz wird nur dann aufgehoben, wenn sie nicht rechts- oder logikfehlerfrei ist (siehe hierzu auch T 1418/17, Entscheidungsgründe 1.3).

2.3 Die Kammer konnte in der Entscheidung der Einspruchsabteilung bei der Beurteilung der von den Parteien vorgelegten Beweismitteln jedoch kein fehlerbehaftetes Vorgehen erkennen.

[...]

2.3.2 Das in diesem Zusammenhang von der Beschwerdeführerin (Patentinhaberin) vorgetragene Argument, eine eidesstattliche Versicherung dürfe nur dann berücksichtigt werden, wenn parallel dazu die die eidesstattliche Versicherung abgebende Person als Zeuge befragt werden könne, kann nicht gefolgt werden.

T 0314/18 - OD should have heard witness

Key points

• The opponent submitted a public prior use in the Notice of opposition and offered a witness. The OD did not hear the witness after deciding that “the alleged prior use was insufficiently substantiated in the notice of opposition with respect to its date, subject-matter and circumstances and that the lack of adequate substantiation could not be removed by hearing of the proposed witness”. 
•  The OD refers to GL E-IV 1.2 where it is said that “If the testimony of a witness is offered, the opposition division may decide to hear this person in order to verify the facts for which this witness is brought forward, e.g. the prior use of the claimed product in an undertaking or the existence of an obligation to secrecy. For adequate substantiation the notice of opposition must make clear these facts, as witnesses are meant to serve for corroboration of facts brought forward, not for supplying these facts in place of the opponent”. I think that 'substantiation' here refers to 'the request to hear the witness'.
• “The Board agrees with the [opponent] that, in particular having regard to the existing evidence on file as well as to the doubts that the opposition division had with respect to its probative value, the opposition division should have heard the witness. From the language used to offer the witness it is clear upon reading the notice of opposition that - contrary to the view of the opposition division and the respondent - the appellant offered the witness solely to corroborate the facts already brought forward in support of the alleged prior use  [...].”
• “No provision of the EPC requires that an alleged prior use be conclusively proven within the opposition period. When referring to the EPO Guidelines G-IV, 7.2 and E-IV, 1.2, and arguing that the lack of adequate substantiation of the prior use in the notice of opposition could not be removed by hearing the witness, the opposition division mixed up the submission of facts and the proof required to establish them”.
• “By refusing to hear the proposed witness, the opposition division proceeded in fact to assess evidence that had not been established, although it appeared to be prima facie relevant for the decision to be taken. This is procedurally incorrect. The opposition division thus has infringed the appellant's right to be heard under Articles 117(1) and 113(1) EPC.”

EPO  T 0314/18 -  link


3. Alleged public prior use

3.1 With respect to the public prior use alleged by the appellant, the opposition proceedings can be summarised as follows:

3.1.1 In the notice of opposition, the appellant alleged that the claimed invention was anticipated by a public prior use in the form of several sales of the pocket spring coiling machine PWS-100 by REMEX AG before the patent's filing date (19 December 2012). The appellant explained in detail why the claimed subject-matter was anticipated by the machine PWS-100 as described in operating manuals O1 and O2 and document O3, when used in the system PST-200 as disclosed in document O5. The appellant submitted that O1 to O3 were printed before 19 December 2012, whereby O1 and O2 were delivered with the machine. To confirm the alleged sales the appellant provided copies of shipment orders, delivery notes and invoices relating to the sale and delivery of a machine PWS-100 and the corresponding system PST-200 by REMEX AG to AGRO International (Germany) in 2007 (O6), Charles Blyth & Co. Ltd. (England) in 2007 (O7) and Kovas (Lithuania) in 2010 (O8). These different public disclosures were subsumed under the term "prior use". The appellant asserted that the sales were not subject to any confidentiality agreement. Finally, the appellant offered the hearing of a witness (Mr Nussbaum) to corroborate the date, the subject-matter and the circumstances of the alleged prior use (page 7) as well as the correctness of the appellant's submissions with respect to the technical features and the mode of operation of the machine PWS-100 and the system PST-200 (page 9).

T 1551/14 - Witness Declaration admissible

Key points

• In this opposition appeal, the opponent filed a declaration about a prior use. The Board has to decide on the admissibility of the declaration.
• From the headnote, in translation: A legitimate reaction on a change of the subject of the proceedings (here the filing of a new declaration under oath after the filing of a new auxiliary request) is as a general rule admissible. The objection, that that reaction is inconsistent with a previous submission, can as a rule not lead to the non-admission. 
• The OD had heard four witnesses in a first hearing. The OD had then announced that it considered the public prior use to be proven. The procedure was continued in writing. The patentee filed a new auxiliary request. Second oral proceedings were summoned. The opponent then filed a new witness declaration on the prior use and offered the witness for a further hearing. The OD did not hear the witness and held the declaration to be inadmissible.
• The Board can not agree with this course of proceedings. The declaration engaged with how the public prior use disclosed the feature added by patentee in the new request, which feature only became relevant with the filing of the new request. The declaration was hence also timely filed. Since the OD admitted the new request, it should have also admitted the declaration of the opponent. By deciding otherwise, the OD violated the right to be heard of the opponent.
• Furthermore, even if the declaration is inconsistent, this is not a ground for holding the declaration inadmissible, because doing so would violate the right to be heard of the opponent.
• However, in order to decide on the case, the witness declaration is not sufficient evidence. The Board finds the declarations to be not very credible because they follow the language of the claim of the patent closely.  
• " Es ist auch denkbar, dass Herr Deckert eine nicht von ihm selbst verfasste Erklärung unterzeichnet hat, was auch dafür sprechen würde, dass sie nicht genau den Inhalt seiner mündlichen Ausführungen widerspiegelt." 
• Therefore, the case is remitted for a hearing of the witness. The Board expressly points to the possibility to have the witness heard under oath by a national court (Rule 120 EPC).

EPO T 1551/14 -  link

EPO Headnote

Legitime Reaktionen auf die Änderung der Verfahrenslage (hier: Einreichung einer eidesstattlichen Erklärung nach Einreichung eines neuen Hilfsantrags) sind grundsätzlich zuzulassen. Der Einwand, dass sie zum bisherigen Vortrag im Widerspruch stehen, kann eine Nichtzulassung in der Regel nicht rechtfertigen (siehe Punkt 3.2 der Gründe).

Zurückverweisung mit der Auflage, die Zeugeneinvernahme fortzusetzen, ggf. unter Eid vor einem nationalen Gericht (siehe Punkte 8.5 und 9 der Gründe).

Entscheidungsgründe

1. Anzuwendendes Recht

Die Anmeldung, auf deren Grundlage das Patent erteilt wurde, war am 3. Juli 2004 eingereicht worden. Deshalb sind im vorliegenden Fall in Anwendung von Artikel 7 der Akte zur Revision des EPÜ vom 29. November 2000 (ABl. EPA 2007, Sonderausgabe Nr. 4, 217) und des Beschlusses des Verwaltungsrats vom 28. Juni 2001 über die Übergangsbestimmungen nach Artikel 7 der Akte zur Revision des EPÜ vom 29. November 2000 (ABl. EPA 2007, Sonderausgabe Nr. 4, 219) die Artikel 54, 56, 84 und 111 EPÜ 1973 sowie Artikel 117 und 123 EPÜ [2000] anzuwenden. Da die Regel 120 EPÜ [2000] dem Artikel 117 EPÜ zugeordnet ist, ist sie in Analogie zur Entscheidung J 10/07 der Juristischen Beschwerdekammer vom 31. März 2008 im vorliegenden Fall ebenfalls anwendbar.

2. Einführende Bemerkungen

Von besonderer Bedeutung in diesem Fall ist eine angebliche offenkundige Vorbenutzung, die im Folgenden kurz beschrieben wird.

Die Firma Unicor hat im Januar 2004 jeweils ein Paar von Muffenformbacken (cuff mould blocks) an die Firma Politejo verkauft (siehe Rechnung D2.3). Diese Muffenformbacken wurden noch im Januar 2004 versandt, ausgeliefert und bezahlt (siehe Versandauftrag D2.5, Bestätigung D2.7 und Belege für die Bezahlung D2.11) und somit der Öffentlichkeit zugänglich gemacht. Der Aufbau der gelieferten Muffenformbacken ist aus den Zeichnungen D2.1 und D2.2 ersichtlich. Durch die Lieferung der Muffenbacken sind die Informationen zu ihrem Aufbau in den Besitz der Firma Politejo (und somit der Öffentlichkeit) übergegangen, und zwar unabhängig davon, ob die Zeichnungen D2.1 und D2.2 der Firma Politejo übergeben wurden.

T 0287/16 - Contradictory passages in affidavit

Key points

• In this opposition appeal, claim 1 is for a graphite sheet with two properties (thermal conductivity dispersion and roughness). The opponent alleges lack of novelty over a commercial product as prior use. There is no dispute that the graphite sheet was a public prior use, but opponent had measured the two properties only later. 
• "the opposition division raised doubts as to whether the properties of the tested graphite sheets which form the basis for the results of D6 and D7 were identical to those of the graphite sheets available prior to the priority date of the patent in suit" 
• The opponent then files an affidavit to declare " the manufacturing methods, [] have not changed to any material extent. In other words, no significant changes have occurred. (....)   the graphite sheets were created using the same method of manufacture".
• The Board is not  convinced : "the cited passages are contradictory or at least ambiguous. The first of the cited passages permits some (minor) changes in manufacturing methods as well as in the properties of the final expanded graphite sheet compared with the graphite sheets publicly available before the priority date. No further details about the nature and degree of such changes, apart from the subjective statement that they were "no[t] significant", are given. In contrast thereto, [the second passage] stresses that the same method of manufacture (as in the past) was used and that therefore the product had the same physical properties, although this was relativised in the next sentence by a reference to a (quantitatively undefined) margin of error. " 
• " Concerning document E6, this excerpt from a laboratory notebook contains a page dated 8 October 2006. A printed sheet seems to be glued onto that page, the printed sheet bearing a different date, i.e. 13 November 2006. The [opponent] has not provided a convincing reason as to why these two dates are different. " 

EPO T 0287/16 -  link


3.2 Prior use of HS-400

3.2.1 The opposition division found that the "HS-400 Heat Sink Material" having a thermal conductivity in a direction parallel to the surface of 370 W/mK and described in E5 was publicly available prior to the priority date of the patent in suit (see impugned decision, section 5). This finding is not contested.

T 1534/16 - Prior use and withdrawn opposition

Key points

• In this opposition appeal, the opponent and the intervener had asserted a public prior use, and had subsequently withdrawn the opposition (and intervention).
• The patentee had defended the claims by casting doubts on whether the prior use was public, or whether an obligation to maintain secrecy had been in place.
• " The Board, regarding the appellant's doubts as justified and considering that further investigations would require the co-operation of the opponent and/or intervener, who have withdrawn their oppositions and their intervention [], concludes that the allegations of prior use are to be disregarded."

	T 1534/16 - link

Reasons for the Decision

1. Prior uses
The opponent and the intervener submitted a plurality of allegations of prior use before their respective oppositions were withdrawn.
The appellant replied by raising doubts concerning the public availability of the installations in accordance with the alleged prior uses, in particular by referring to the presence of an obligation to maintain secrecy.
The Board, regarding the appellant's doubts as justified and considering that further investigations would require the co-operation of the opponent and/or intervener, who have withdrawn their oppositions and their intervention (see Case Law of the Boards of Appeal, 8th edition 2016, IV.D.2.2.9 (c)), concludes that the allegations of prior use are to be disregarded.

2. Exclusion from file inspection
During the written proceedings before the Board, documents E48, E48a, E49, E51, E52, E53 and E54 filed by the appellant before it withdrew its opposition were provisionally excluded from file inspection (see communication dated 28 February 2018) at the request of the appellant (patentee). The Board, considering that the opponent and intervener had explicitly agreed by letters of 6 March 2018 to the appellant's request and being satisfied that the documents in question do not serve the purpose of informing the public about the patent in suit, concludes that the above-mentioned documents should remain excluded from file inspection pursuant to Rule 144(d) EPC.

T 0621/14 - Prior use and witness hearing

Key points

• In this opposition appeal, witnesses were heard during the first instance proceedings about alleged prior use. The opponent wishes to back-up the prior use with  a further declaration of one of the witnesses during the appeal. The Board does not admit this.
• The Board, Headnote: The subject-matter of a public prior use, as determined by the opposition division on the basis of a witness hearing for which the minutes were not contested, defines the extent of the prior art disclosed in the prior use for the appeal opposition proceedings if the alleged facts are the same (bei unverändertem Sachverhalt) .
• In other words, the takes the minutes of a witness hearing by the OD as binding for the appeal proceedings, if the minutes are not contested, and if the alleged facts are the same. The phrase "bei unverändertem Sachverhalt"  is unfortunately only used in the headnote and I'm not sure about the translation. 

Headnote
Der Gegenstand einer offenkundigen Vorbenutzung, der von der Einspruchsabteilung anhand einer Zeugeneinvernahme ermittelt und deren Niederschrift inhaltlich nicht bestritten wurde, stellt bei unverändertem Sachverhalt den Umfang des in der Vorbenutzung offenbarten Stands der Technik im Einspruchsbeschwerdeverfahren dar.

EPO  T 0621/14 - link 

Entscheidungsgründe

1. Neues Vorbringen

Die von der Beschwerdeführerin [opponent] vorgelegten Anträge:

• - eine neue Erklärung D28 (von Herrn B.N.) betreffend die Viskosität von Straßenmarkierungsmaterial zu berücksichtigen,
• - Herrn N. zu erlauben, insoweit in der mündlichen Verhandlung als technischer Experte vorzutragen,
• - farbige Fotos gemäß D16a bis D16h während der mündlichen Verhandlung auf einer Leinwand darzustellen,
• - den in der Erklärung D28 genannten YouTube-Film in der mündlichen Verhandlung vorzuführen,

sind mit Schreiben vom 18. Dezember 2017 erstmals im Beschwerdeverfahren und lange nach der Beschwerdebegründung ergänzend zu den offenkundigen Vorbenutzungen VB1 und VB2 gestellt worden.

Nach Prüfung im Rahmen von Artikel 12 (4) bzw. 13 (1) VOBK und Artikel 114 EPÜ gelangt die Kammer aufgrund folgender Überlegungen zu der Entscheidung, dieses späte Vorbringen nicht in das Verfahren zuzulassen.

T 1409/16 - Novelty and extrinsic characteristics

Key points

• The Board decides that the phrase " either ... or"  in the claim means an inclusive or (both also being allowed). "The Board holds that the "either ... or" wording could only be considered as expressing an exclusive or in cases where the two situations referred to are, due to their very nature, mutually exclusive, i.e. incompatible with each other." 
• About novelty based on a prior use: the opponent submitted that claim 1 was not novel becuase D1 to D3 described compositions containing the polymer Finnfix® BDA, and the opponent had fractionated the polymer to show that it included a polymer fraction having a degree of substitution and degree of blockiness as specified in claim 1. 
• " The Board does not find these arguments convincing for the following reasons. Polymeric components (here: substituted celluloses), usually comprise individual molecules differing in terms of e.g. chain length and molar mass. A physical property measured and expressed as a single discrete value attributed to a polymeric component is thus often an average value determined over the totality of the individual polymeric molecules present. Therefore, the Board holds that when a polymer (CMC in Finnfix® BDA) is known to be a component of a prior art composition, intellectually splitting said polymeric component into fractions and attributing to one of these fractions (necessarily composed of individual molecules differing in terms of e.g. chain length and molar mass) a physical property (discrete numerical value) distinguishing this fraction from other such fractions, is an artificial approach based on hindsight." 
• " In the present case, the Board regards the fractionation of Finnfix® BDA as carried out by the Appellant as a kind of reverse engineering based on hindsight and revealing a particular ("extrinsic" within the meaning of G 1/92) property of the Finnfix® BDA containing compositions: In the knowledge of the invention, "deliberate choices" were made "with specifically chosen outside conditions" in order to obtain "a particular result" in terms of DS and DB values. Information revealed by following this procedure does, however, not correspond to what can be considered to having been made available to the public by an analysis of the chemical composition of Finnfix® BDA in the sense of G 1/92." 
• As a comment, fractionating polymers is usually not an intellectual exercise but a laboratory procedure.

EPO T 1409/16  - link

Reasons for the Decision

Main request - the meaning of "either ... or" in claim 1 as granted

1. The parties disagreed as regards the meaning to be given to the feature of claim 1 at issue expressed by the sentence "either DS+DB is of at least 1.00 or DB+2DS-DS**(2) is of at least 1.20" (emphasis added by the Board; complete wording of the claim under II, supra).

[...]

1.3 For the following reasons, the Board holds that in the context of claim 1 at issue the "either ... or" wording expresses an inclusive or.

1.3.1 Document D19 clearly shows, by means of example sentences taken from everyday language that both "exclusive disjunctions" and "inclusive disjunctions" may be expressed by the "either ... or" wording.

Claim 1 is, therefore, ambiguous and needs to be construed in this respect, taking into account the entire patent in suit.

T 1833/14 - Commercially available but not anticipated

Key points

• In this opposition appeal about a public prior use, the Board deals what I call the "Coca Cola" question: does a product that is commercially available and that falls within the claim, take away novelty of the claim, if the recipe for that commercial product is not known (e.g. is Coca Cola still novel under Article 54 EPC?)
• " In the Board's view, those passages of G 1/92 also imply that a product put on the market is considered not to have been made available to the public within the meaning of Article 54(2) EPC if the skilled person had no means of establishing the composition or the internal structure of the product or was not able to reproduce it, in spite of the product being publicly available before the priority/filing date of the patent."
• The Board also does not admit a document D14: "Considering that the appellant argued that D14 was well known to the parties involved in the current proceedings because it was also cited in the appeal of the parallel case T 1766/14 [], there can be no excuse for not having filed said document before. The fact that the document is known by the parties and the Board from separate appeal proceedings is not a valid reason to justify its submission at such a late stage and, to the contrary, even speaks against admitting it into the proceedings." 
• 2019.10.02: typo's corrected. The decision is added in the GL 2019 G-IV, 7.2.1.

EPO T 1833/14 -  link

Reasons for the Decision

Main request (patent as granted)

1. Novelty

1.1 The sole novelty objection put forward in appeal by the appellant is against granted claim 1 in view of the alleged public prior use in respect of product Rigidex®P450xHP60.

1.2 Although all the concerns identified in the Board's communication (see section IX above) regarding the relationship between the documents relied upon by the appellant (sections 6.2.1, (a) to (e)) and/or the nature of the product disclosed in each of those documents (sections 6.2.2, (a) to (d)) were not removed by the appellant's arguments, it is not necessary for the Board to deal with those issues in details in view of the conclusion drawn in sections 1.3 to 1.9 below.

1.3 According to G 1/92 (see the headnote), one of the conditions for a product to belong to the state of the art is that it can be reproduced by the skilled person. In section 1.4 of the reasons it is in particular indicated that: "An essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art" (emphasis by the Board).

1.4 In the Board's view, those passages of G 1/92 also imply that a product put on the market is considered not to have been made available to the public within the meaning of Article 54(2) EPC if the skilled person had no means of establishing the composition or the internal structure of the product or was not able to reproduce it, in spite of the product being publicly available before the priority/filing date of the patent.

1.5 In the present case, independently of whether a sample of Rigidex®P450xHP60 was publicly available before the filing date of the patent in suit and whether it fulfilled each of the features specified in granted claim 1, a condition to be fulfilled is therefore that the skilled person knew how to prepare said product without undue burden.

1.6 In that respect, it is generally known in the field of polymers and it was not contested by the appellant that the nature of the catalyst system, the type of reacting system and the process conditions significantly affect the properties of the produced polymer and of any product derived from it. Indeed, in the polymer field, in which products and compositions are often defined by means of parameters, the requirements of sufficiency of disclosure is analysed with particular care and is considered to be met in such cases if the application or the patent, when necessary supported by the common general knowledge, discloses the method of preparation of the polymers (in particular by means of the catalyst system, the type of reacting system and the process conditions) which results in products and compositions with the required parameters. The same criteria must therefore apply to the reproducibility without undue burden of a product on the market.

Considering that it was neither shown by the appellant that any information in that respect was available to the public before the filing date of the patent in suit for the product under scrutiny, nor that such information belonged to common general knowledge, it is concluded that the mere disposal of a sample of Rigidex®P450xHP60 was not sufficient for the skilled person to be able to prepare it.

It is further noted that in its notice of opposition (section on sufficiency of disclosure) the appellant [opponent] argued that the combination of parameters defined in granted claim 1 could only be obtained using a specific catalyst system, which is in line with the above conclusion that without knowing among others which catalyst system was used for preparing Rigidex®P450xHP60, the skilled person would not be in a position to prepare said product without undue burden.

1.7 In its letter of 12 October 2017 (page 5: heading "6.3") the appellant [opponent] argued that it would not have been difficult for the skilled person to prepare a composition having the features of the public prior use product which were specified in claim 1. However, this is not the issue at stake. Rather, in order for the product to be state of the art, the question is whether or not the skilled person would have been in a position to prepare the product as such, i.e. a sample identical to Rigidex®P450xHP60 in all its properties (not only those specified in claim 1, but exhibiting e.g. also the same properties as indicated in D2a). It was however not shown by the appellant that this was the case. To the contrary, the appellant stated in the above identified passage of its letter dated 12 October 2017 (see last full paragraph) that "what may be more difficult (if the catalyst used for the original product is not known) is obtaining the same mechanical properties as the Rigidex product".

1.8 During the oral proceedings before the Board the appellant argued that Rigidex®P450xHP60 was very similar to the products prepared in D6 and that the skilled person could adapt the teaching of D6 in order to prepare a composition according to granted claim 1. However, there is no evidence on file that the specific product supporting the objection of public prior use, namely Rigidex®P450xHP60, was prepared according to the teaching of D6. There is also no evidence on file that a product prepared according to D6 may show the same combination of properties as Rigidex®P450xHP60 (see e.g. D2a). Therefore, the appellant's argument does not convince.

1.9 During the oral proceedings before the Board the appellant submitted that it would not be reasonable to consider that a product falling under granted claim 1 which was in the public's hands before the filing date of the patent in suit could be held not to anticipate the subject-matter of said patent.

However, this is the conclusion reached in view of the condition which is derivable from decision G 1/92 (as explained in sections 1.3 and 1.4 above), namely that in order to be part of the prior art pursuant to Article 54(2) EPC, a public prior use must also amount to an enabling disclosure. A similar conclusion was already reached e.g. in T 977/93 (OJ EPO 2001, 84: sections 3, 4, 11 and 13 of the reasons), T 370/02 (sections 8.6 to 8.8 of the reasons), T 2045/09 (sections 29, 31 and 32-38 of the reasons) and T 23/11 (sections 2.1 to 2.5 of the reasons). The same line of argumentation was also adopted in T 301/94 (sections 3.3 to 3.5 of the reasons), albeit the conclusion in that case was that the alleged public prior use was part of the prior art because it could be reproduced without undue burden. Therefore, the appellant's argument is not persuasive.

1.10 In view of the above, it cannot be concluded that the skilled person was able to reproduce the product Rigidex®P450xHP60 without undue burden. Under those circumstances, a sample of Rigidex®P450xHP60 does not form part of the prior art pursuant to Article 54(2) EPC and cannot anticipate the subject-matter of the granted claims.

1.11 For those reasons, the appellant's sole objection pursuant to Article 54 EPC against granted claim 1 is rejected.

[...]

Admittance of the late-filed document D14

3. After the communication of the Board setting out its preliminary view of the case had been received, the appellant submitted with letter of 12 October 2017 the new document D14. Considering that the filing of that document represents an amendment to a party's case pursuant to Article 13(1) RPBA, the admission to the proceedings of D14 is subject to the Board's discretion (Article 13(1) RPBA) and underlies the additional stipulations of Article 13(3) RPBA.

3.1 Regarding the late-filing, it was not contested by the appellant that that document was available to the public and could have been retrieved earlier.

The appellant did not justify why D14 was only submitted at such a late stage. Considering that the appellant argued that D14 was well known to the parties involved in the current proceedings because it was also cited in the appeal of the parallel case T 1766/14 (see section II above), there can be no excuse for not having filed said document before. The fact that the document is known by the parties and the Board from separate appeal proceedings is not a valid reason to justify its submission at such a late stage and, to the contrary, even speaks against admitting it into the proceedings.

Also, it was not shown that any surprising development of the case had occurred, which could have justified the filing of D14 in response thereto.

3.2 There is no doubt that lack of novelty does not immediately appears from the document as such, as the appellant argues why the missing features (Mz(XCS) in particular) should be implicitly disclosed and should have been provided by the respondent (who was under no obligation to do so).

3.3 The fact that in the parallel case T 1766/14 (see section II above) the document was cited in the preliminary opinion of the Board for its relevance on either sufficiency of disclosure or lack of novelty (see sections 6.1.1.b and 7.2 of the Board's communication dated 18 July 2017 in T 1766/14) also does not speak in favour of the admittance of the document. Firstly the facts in both cases are different, e.g. the missing feature is not the same (Mz/Mw in T 1766/14). Secondly also the objections related to the document are different, as in T 1766/14 D14 (referred to as D10 therein) is pertinent also to sufficiency of disclosure. This means that, should D14 be admitted to the proceedings, a new and possibly complicated issue related to sufficiency of disclosure could have had to be dealt with for the first time in appeal (the findings on sufficiency of disclosure in the decision under appeal were never disputed by the appellant in the current appeal proceedings).

3.4 In view of the above, the admission to the proceedings of D14 would raise new issues, which would require to provide sufficient time for the respondent to prepare an appropriate line of defense. This, however, runs counter to the need for procedural economy. Besides, it makes no doubt that those new issues could not reasonably be expected to be dealt with by the respondent or the Board without adjournment of the oral proceedings.

3.5 For those reasons, the Board does not admit D14 to the proceedings pursuant to Articles 13(1) and (3) RPBA. | |

T 1452/16 - Novel parameter and old products

Key points

• This opposition case is about prior use of a chemical composition. The claim uses a novel parameter. Opponents had old samples re-analysed to measure the novel parameter. 
• The Board, in general, about the standards of evidence: "In this context, it has to be pointed out, however, that even though these different concepts as to the level of proof have developed in the case law of the boards [i.e. "up to the hilt"  and " balance of probabilities", they have in common that a judgement is to be made on the basis of application of the principle of free evaluation of evidence (cf. [G 1/12, r. 31]). The board therefore takes the view that what matters is whether or not the deciding body, here the board, is - having regard to all evidence and arguments put forward by the parties - convinced that the alleged facts, e.g. a public prior use, had indeed occurred. Hence, even if the present case falls into the category of "balance of probabilities", the board did not merely form its opinion on the basis of whether the alleged facts were just slightly more likely to have occurred than not, but on the basis of whether it was convinced that they had occurred." 
• About patents allegedly claiming old products with describing them with some novel parameter, and the burden of proof: " However, by [the patentee] using a parameter [in claim 1] which had not been used in the prior art, the burden is on the patentee to prove that the prior art does not fall within the terms of the claim. Rather than the patent proprietor, it was the opponents that were at a disadvantage in the present case, since they were only prompted to test the available enzymes for the claimed ratio once this was used as a characterising parameter in the patent: were it not for the existence of stored samples [], it would have been virtually impossible for the opponents to test that ratio in samples available before the priority date." 
• The appeal procedure was accelerated in view of national (court) proceedings. Notices of appeal filed 27.06.2016, statement of grounds 08.09.2016, replies to appeal 24.01.2017, summons 07.02.2017 (!), oral proceedings scheduled 19-21.09.2017. So a bit more than a year from statement to grounds to final revocation of patent. 

EPO T 1452/16 -  link

Reasons for the Decision

1. The appeals are admissible.

2. With its notice of appeal and statement of grounds of appeal, appellant III requested acceleration of the appeal proceedings, in view of pending national proceedings. On the basis of the documentary evidence subsequently submitted by appellant III and in the absence of any objections to this request by any of the other parties, the board decided to accelerate the present proceedings.

3. Appellant III had requested, in its written submissions and again at the oral proceedings, that the board should first deal with the ground for opposition under Article 100(b) EPC before turning to the grounds under Article 100(a) EPC because the board's decision on insufficiency would have an impact on the discussion of novelty and inventive step.

The board notes that there is no right of a party to have oral proceedings conducted by the board in a particular manner. It is up to the board to decide what points are to be addressed during the oral proceedings, and in which order. In this respect the board is guided by Article 15(6) RPBA, which stipulates that the board must ensure that, as a general rule, each case is ready for decision at the conclusion of the oral proceedings. Self-evidently, the board is, pursuant to Article 113(1) EPC, under the obligation to give the parties the opportunity to present their comments on all the grounds or evidence on which it will base its final decision. The various grounds for opposition under Article 100(a) to (c) EPC which might be prejudicial to the maintenance of a granted patent are separate ones, and the board considered it most appropriate to start the discussion at the oral proceedings with the topic of the alleged public prior use concerning the product Amano lactase.

4. Main request

[Claim 1 of the MR is claim 1 as granted, see XII, and reads:
"1. Process to produce a dairy product which comprises using a preparation of a neutral lactase from Kluyveromyces which comprises less than 30 units arylsulfatase activity per Neutral Lactase Unit (NLU) of lactase activity."]

Novelty over the alleged public prior use of "Lactase Y Amano L"

4.1 Several lactase preparations from Kluyveromyces, and in particular from K. lactis, were known and available at the priority date (patent, paragraphs [0008] and [0023]; D1), K. lactis being the major commercial source of lactase, according to D1 (page 1769, left column, lines 1 to 3: beta-galactosidase is lactase; see patent, paragraph [0003]). These lactases were known to be neutral and intracellularly produced (patent, paragraph [0008]), but there was no information at the priority date as to the presence of arylsulfatase in these preparations, let alone concerning the ratio of arylsulfatase activity (ASU) and lactase activity (NLU).

T 0064/13 - Public prior use and evidence

Key points

• In this opposition appeal case, the Board applies "balance of the probabilities"  as the evidence standard, because the public prior was not by the opponent but by an (independent) third party. The third party had filed evidence of their own prior use in the opposition against the parallel German patent. The opponent had filed a copy of the file of the German opposition. Hence, the prior use was outside the sphere of influence of the opponent, and therefore the evidence standard of " balance of probabilities"  is applied. 
• Also the sworn declaration of the manager of the third party is accepted as evidence, albeit on the principle of the free evaluation of evidence. 

EPO T 0064/13 - link

7.3 Beweiswürdigung der Vorbenutzung D3-D5,DX

7.3.1 Bei allen in Art. 100 EPÜ aufgeführten Einspruchsgründen gilt zwar dasselbe Beweismaß; dennoch kennt die Rechtsprechung zwei unterschiedlich hohe Beweisaufforderungen, wenn eine offenkundige Vorbenutzung bestritten wird ? das "Abwägen der Wahrscheinlichkeit" und den "lückenlosen Nachweis". Das Abwägen der Wahrscheinlichkeit wird dann angewandt, wenn Patentinhaberin wie Einsprechende gleichermaßen Zugang zu dem Material hatten, dessen offenkundige Vorbenutzung behauptet wird (siehe Rechtsprechung der Beschwerdekammern, 8e. Auflage, III.G.4.3.2)

T 1647/15 - Evidence inspection; partiality

Key points

• " When relevant features of the prior art trailers as asserted by the Opponents are questionable and remain contested, a request from the Opponents to secure the evidence, e.g. by hearing witnesses proposed by the Opponents or by inspection of the trailer in accordance with Article 117 (1) (f), cannot be rejected without justification."
• " However, to the eyes of an objective observer, taking into account the strong language of the chairman's utterance which clearly went beyond the form of a mere reprimand and on account of the escalation following the incident and its ensuing emotional impact, the Board accepts that, subsequently to his outburst ["Shut your mouth"], the ability of the chairman to hear Opponent III with an objective judicial mind could be perceived as being affected. " 
• " In particular" is taken as indicating an optional feature.
• Filin date in 2005, grant in 2009, first appeal decision T1907/11 in 2014 (remittal), second OD decision in July 2015, notice of second appeal in August 2015, decision taken in June 2016. 

T 1647/15 - link

Reasons for the Decision

1. The appeals are admissible.

2. Substantial procedural violations: Suspected partiality against at least one member of the Opposition Division, and right to be heard in connection with the prior uses

2.1 All the Appellants-Opponents requested that the contested decision be set aside for partiality of at least one of the members of the Opposition Division and that the case be remitted for rehearing before an Opposition Division in a different composition. In its statement setting out its grounds of appeal and in accordance with its Legal Questions 1 and 2, Appellant-Opponent III has argued that Article 24(3) EPC was automatically applicable to opposition divisions. The Appellants-Opponents have in particular argued that the suspected members should not have participated to the decision on their own partiality. Instead, an Opposition Division in a different composition should have taken a decision on the objection of partiality.