Key points
- The OD revoked the patent as not novel over the alleged public prior use "toasted deli sandwich bag". The patentee tries to reverse the OD's findings of fact. The evidence comprises a sample of the bag, a witness declaration, and the (minutes) of the witness hearing before the OD. Finally, there is a document "Confirmation from Keystone Distribution to Mr. Longstaffe about monthly deliveries of the "WRIN 02135042 TDS Bag" to McDonald's, Linwood".
- The following quotations of the Board use machine translation.
- The alleged fact is that " the bags were supplied by Smith Anderson Packaging Limited to Keystone Distribution UK Ltd. and from Keystone to McDonalds" (before the priority date)
- The patentee tries to contest the credibility of the witness Mr. Longstaffe.
- "The opposition division saw no reason to doubt the credibility of the witness Longstaffe because he had denied the question of economic or personal interest. Mr Longstaffe is the managing director of Smith Anderson Packaging Limited, which manufactured the prior-use bags. However, it does not follow from this that Mr Longstaffe had a personal economic interest in the outcome of the opposition proceedings"
- "The appellant [patentee] argued that the opposition division's assessment was unjustified, that the credibility of the witness Longstaffe was not objectionable because, contrary to his testimony (minutes of the hearing of witnesses, page 1: "No, I don't believe so .") he had a special personal and economic interest in the outcome of the proceedings. This is shown by the fact that Mr. Longstaffe's statements that McDonald's was the largest customer of the Smith Anderson company, which Mr. Longstaffe was the managing director of (witness hearing record, page 12, last paragraph: "Almost 50% of our business is with McDonald's") [...] If the patent in suit is maintained, the Smith Anderson Group faces a possible infringement lawsuit. "
- The Board: " The Board notes that the witness Longstaffe initially denied the question of any economic or personal interest in the outcome of the opposition proceedings. However, his statements did not completely rule out such an interest. However, the board is convinced that the discrepancies highlighted by the appellant do not call into question the credibility of the witness, so that the reliability of the entire testimony should be called into question and should not be taken into account as a whole."
- The patentee argues that because the alleged prior use involved 72,000 field test bags, more written evidence should have been filed.
- The Board, in translation: " The evidence of the testimony thus has the same value as any other evidence referred to in Article 117(1) EPC. The probative value of the testimony of the witness Longstaffe is therefore not devalued by a missing document or a missing piece of evidence, contrary to the view of the [appellant]."
- As a comment, based on the machine translation, I understand that the patentee complains about the lack of supporting written evidence; not about any discrepancy between an actually filed document and the testimony. In my view, that has little to do with Article 117(1) EPC not prescribing a hierarchy of evidence.
- The Board does not admit an objection against the evidence. "1 In the statement of grounds of appeal, the appellant stated that doubts arose as to the credibility of Mr. Longstaffe's statements, since he was unable to give an exact time when he was appointed CEO in 2007 when questioning witnesses. On the other hand, he was able to determine delivery dates and quantities for a single product from Smith Anderson's entire product portfolio in 2007 to the day (reasons of appeal, point III.4 b)).
In this respect, the appellant formally criticized the opposition division's assessment of the evidence, but in the end, it aimed for a factual statement by the witness. The board agrees with the respondent (Response of Appeal, points 3 to 5) that the contested decision was not based on this objection. Thus, the admission of this submission is at the discretion of the Board under Article 12 (4) RPBA 2020.
The Board agrees with the Respondent that the Appellant could and should have asked the witness during the taking of evidence by hearing the witness why he could not remember the exact day when he was appointed CEO if that question had been relevant to her. This objection by the appellant relates to facts that could have been clearly clarified in the opposition proceedings as a suspicion during the taking of evidence by questioning the witness. The objection could also not be followed up without further ado, since the witness would have had to be questioned or would have to be questioned.
Even during the subsequent discussion of the result of the taking of evidence in the oral hearing before the opposition division, the credibility of the witness was not called into question on the basis of this fact.
Therefore, the Board sees no reason, in exercising its discretion under Article 12 (4) RPBA 2020, to consider this objection in the proceedings, as requested by the Respondent." - As a comment, this decision suggests that you must raise any and all objections against witness testimony during the first instance proceedings. Alternatively, a party may allege a violation of the right to be heard, i.e. allege that it was given insufficient opportunity to comment on the testimony. In the case at hand, the witness hearing took place on the same day as the oral proceedings before the OD.
" The Board is of the opinion that the testimony as a whole is to be regarded as very clear and detailed with regard to the issues relevant to the decision and that it provides a consistent and complete picture with regard to the public prior use to be proven. The opposition division did not err in linking the assessment of the evidence to its conviction. The alleged inconsistencies and lack of connection cited by the complainant are not considered sufficient to undermine the probative value of the witness testimony. -
The board is thus not convinced that the opposition division's assessment of the evidence was incorrect. Therefore, the board shares the opinion of the opposition division in the decision under appeal that on the basis of the witness statements, D1, D1.3 and D1.6, the alleged public prior use of the "toasted deli sandwich" bag is sufficiently proven.
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Consequently, it forms part of the state of the art under Article 54(2) EPC with the features listed in the minutes of the taking of evidence by visual inspection of D1."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/10/t-046420-should-contest-witness.html
