EP 3 194 681 B1 relates to a honeycomb, in particular deformable honeycomb for light weight component and to a block and method for producing the honeycomb.
Brief outline of the case
The OD decided that claim 1 as granted as well as of AR 1 and 2bis lacked N over a PPU. AR2 had a problem under Art 84 and AR3bis was not admitted.
The OD decided maintenance according to AR3ter.
The proprietor appealed the decision.
The board maintained the patent as granted as it considered specific features of granted claim 1 were not directly and unambiguously derivable from the PPU.
In the meantime the opponent had withdrawn its opposition.
The board also decided that the OD had committed a SPV by ignoring an offer of counter evidence.
The proprietor’s point of view
Besides refuting the PPU, the proprietor had also requested – only conditionally, namely in the event that the OD established the relevance of the asserted PPU – for legal certainty under Art 117 and R 117 and for reasons of procedural economy, the hearing of actual witnesses on the facts of the case, namely of Mr G.G. and of Ms S.B, to be heard as witnesses on the PPU.
Mr G.G. belongs to the buyer of the allegedly PPU, and reported a test failure to Ms S.B is an employee from the opponent having received a mail about the failed test.
The OD’s position
In the its decision, the OD confirmed that it did not intend to hear the witnesses nominated by the proprietor, as the burden of proof lied with the opponent and it is for the opponent and not the patent proprietor to select, present and request suitable evidence.
The OD added that, in the event that the division came to the conclusion that the allegations are sufficiently proven [sic], the proprietor could provide counter-evidence and request the examination of counter-witnesses.
The patent proprietor did not subsequently file a request for the examination of counter-witnesses.
The board’s decision
The competence of the board
By referring to T 1604/16, Catchword and Reasons 3.1.6 and T 1138/20, Reasons 1.2.4, the board confirmed the view, that boards are authorised to establish the relevant facts of a case before them and thus to replace the findings of facts of the first instance.
In its statement of grounds of opposition, the opponent merely referred globally over the PPU.
It is only more than 17 months after filing the notice of opposition, that the former opponent went into more detail on the asserted PPU and in particular filed affidavits E1 and E2. In this letter, it asserted that the honeycombs of thePPU were such that they disclosed all the features of claim 1 as granted. The persons having signed the affidavits were heard as witnesses by the OD.
The board held that specific features of granted claim 1 were not directly and unambiguously derivable from the PPU.
Neither a specific picture part of the PPU and witness’ 1 statement could allow to derive directly and unambiguously derivable said specific features.
Even from witness’ 2 statement it could not be inferred that specific features claim 1 were directly and unambiguously derivable.
The board concluded that the subject-matter of claim 1 as granted was novel and inventive over the PPU.
The SPV
The condition that the OD established the relevance of the PPU has been met and the OD did not give sufficient reasons in its decision why the witnesses offered by the proprietor were not summoned.
For the board, it is already incorrect that a party to the proceedings should generally be excluded from providing evidence on factual issues for which another party to the proceedings bears the burden of proof.
The material burden of proof determines to whose disadvantage the lack of clarification of a factual matter is. However, this does not mean that only the party with the burden of proof may contribute evidence to clarify these facts.
Irrespective of this, the OD ultimately also considered the prior use in dispute to be proven, which is why its statement in the summons that the proprietor could provide counter-evidence in this case became relevant.
In the opinion of the board, the OD’s statement that ‘A request for the examination of counter-witnesses was not subsequently filed by the proprietor’ is incorrect. The proprietor actually requested, albeit conditionally, that Mr G.G and Ms S.B be called as witnesses. This request was not withdrawn by the proprietor and did not have to be repeated by the proprietor.
Comments
In its annex to the summons, the OD made clear that the PPU was not properly substantiated. It is only in reply to the annex to the summons that the opponent filed the two affidavits discussed in the OD’s decision and the OD decided the hearing of witnesses.
The OD was thus quite daring in admitting 17 months after the filing of the opposition two affidavits from employees of the opponent and to summon them as witnesses.
As the PPU became relevant in the decision, the affidavits and the witnesses statement are part of the appeal procedure.
As the OD did not, in view of the situation, summon the witnesses proposed by the proprietor, it clearly committed a SPV. Like most of the recent SPVs, it could easily have been avoided.
That one of the witnesses proposed by the proprietor was working for the opponent, did not change the necessity of hearing it. The opponent could not have refused the hearing of a further employee it it had been summoned for testifying before the EPO.
Already in T 959/00, it was held that the failure by an OD to hear the witness on an alleged public prior use, and absence of any reference to a reason in the decision under appeal why it was not necessary to do so amounted to a SPV.
T 1991/23
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