EP 2 376 810 B1 relates to a cast part, planet carrier, hollow shaft and planetary gear.
Brief outline of the case
The patent was revoked and the proprietor appealed.
The revocation was based on a Public Prior Use by Opponent 2.
The OD took a decision on the taking of evidence.
A witness was heard by ViCo by an enlarged OD. According to the minutes, at the beginning of the hearing, the witness said to be on the premises of Opponent 2, alone in a room and that he would inform the division should somebody enter the room.
The board confirmed the revocation, as it was considered that the PPU was properly documented by the board on the basis of the submitted written evidence.
Claim 2 as granted was lacking N over said PPU. All the AR were either lacking N, infringing Art 123(2) or not admitted in the procedure.
The proprietor’s point of view on the hearing of witness by ViCo
The proprietor requested the OP to be held in-person in view of the hearing of the witness. The OD rejected this requested and proceeded to the hearing of the witness by ViCo in the framework of a normal OP by ViCo.
The proprietor essentially complained that the hearing of the witnesses had not been suitable to prove the alleged facts, since the chosen format of the hearing, namely by ViCo, had opened up many possibilities of influence or manipulation.
Therefore, the EBA should be asked questions regarding the duties of the OD, in particular whether the opposition division “must ensure that
- whether the witness is not a deepfake,
- whether the witness is a real (actual) human person,
- whether the witness being questioned has the stated identity in full and not only in part,
- whether the ID is genuine and/or physically exists 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 statement of the witness must be accepted physically unchecked, e.g. with the risk that the witness is a deepfake who is being acted by another person”
The board’s decision on the referral
For the board, the PPU was sufficiently documented on the basis of the documents provided by Opponent 2. Furthermore, the chairperson explained during the OP, that the contested witness examination was not relevant for the proof of the claimed PPU, and for the present decision, cf. Art 112(1,a).
Accordingly, the chairperson stated during the OP that a referral of relevant questions to the EBA was out of the question.
The patent proprietor did not object to this finding and stated that the referral would no longer make sense in view of the board’s opinion.
The Board interpreted this as an implicit withdrawal of the request for referral.
Comments
Hearing of witness by ViCo is problematic
The board might not have seen the necessity of a referral to the EBA as it considered the PPU sufficiently documented without resorting to the witness’s hearing, it remains that the proprietor raised fundamental questions with respect to the hearing of a witness by ViCo.
That a witness could be a deep fake is a possibility, but might not be so much of a problem in view of the difficulties to establish it on the spot during the hearing.
What is more of a problem is that by hearing of a witness, there is no guarantee that it is the person having contributed to the PPU which is actually heard.
There is also no guarantee that the witness has not been listening in the OP before being actually heard. The witness could also be in contact with a member of the public listening to the OP.
In the present case, the witness acknowledged being on the premises of his employer, Opponent 2. That a witness is an employee of the opponent is not a reason to dismiss its statement or to render it without credit, e.g. T 1337/04 or T 1060/06. The free appreciation of evidence applies. But what about a free evaluation about fabricated evidence alledgedly supported by a witness statement.
Ways of insuring the correct identity of the witness and that it is not influenced when hearing by ViCo
Hearing of witnesses by ViCo should only be carried out when there is
- certainty about the person being heard and
- it is insured that the witness sits in neutral grounds.
This could for instance be in a court room or under supervision of a court. It could also be on the premises of a bailiff.
The EPO could also require that in case of an OP by ViCo, the witness to be heard before a court in its country of residence, cf. R 120, provided the witness resides in Contracting State.
In the absence of any guarantee about the witness, or when the latter is not residing in a Contracting State, it appears necessary to hear the witness in person and not by ViCo.
Hearing of witness in person
During in-person OP, when a witness is heard, it is identified at the beginning of the OP and asked to leave the room until it is heard. This guarantees that the witness cannot know what is discussed at the OP.
Witnesses and documents proving a PPU should also be inspected directly and not merely through a camera or on the basis of copies. Copies can easily be redacted.
I have experienced myself an opposition in which a PPU was entirely forged. The OP was in person as was the hearing of the a series of witnesses.
In this case, documents meant to prove the alleged PPU had been specially fabricated for the occasion.
This could only be discovered by actually looking at the original of the documents and not just through a camera. It is only after a very long hearing that one of the witness eventually owed up, albeit indirectly, that the PPU was forged. During OP by ViCo it would have been quasi impossible to check the documents and confront the witness with a nice invented story.
Conclusion
The present board has found a way out of the referral, but the questions raised by the proprietor are of fundamental importance and could impact all cases in which a witness is heard by ViCo.
When the chairperson of a board declares during the OP “a referral of such questions to the Enlarged Board of Appeal is out of the question”, cf. Reasons 11.3, then it was at best undiplomatic, not say not at all realising the implications of what it said.
It is not to be expected that the president of the EPO will ever refer corresponding questions to the EBA, as he has decided as matter of policy that all OP in first instance have to be in form of a ViCo.
However, hearing witnesses should be among the exceptional reasons for not holding OP by ViCo but in-person.
When the possibility of hearing witnesses by ViCo was first discussed, a legally qualified person from the EPO, has merely stated that she was reckoning on the “professionalism” of the parties. My experience is that in such a situation, professionalism is a nice word, but without any binding content.
T 2250/21
https://www.epo.org/de/boards-of-appeal/decisions/t212250du1
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