Friday, 22 January 2010

T 780/05 – How Not To Present A Witness

This decision deals with the requirements for a witness to be heard by a Board.

The request filed in writing by Opponent 2 during the oral proceedings (OPs) before the Board, read as follows: “It is requested to provide proof, by hearing the witness Bob Cormia, to be summoned via Opponent 2, that the sheets “XIR-70 2mil”, which had been supplied to the clients listed in Appendix C, had the longitudinal and transversal shrink values corresponding to material data sheet MS-0046. In the event of witness Cormia not being available any more, it is requested to summon witness Dave Jones, also via Opponent 2.”

[…] During the OPs Opponent 2 filed the request that Mr Cormia be heard as a witness.

This hearing was requested in connection with the alleged prior uses. The testimony of Mr Cormia was believed to prove that the shrinking values in both directions of stretching of the XIR-70 2mil sheets, which according to Appendix C had been delivered, could be calculated to fall into the claimed domain. [4.1]

This request is to be rejected as late filed (Article 13(1) RPBA).

The request was first filed during the OPs before the Board, when the novelty of the claimed subject-matter was discussed. It differs from the earlier requests that Mr Cormia be heard as a witness. Therefore, the request was filed at an extremely late stage of the proceedings. Moreover, the request is insufficiently substantiated because there is no prima facie evidence concerning the circumstances which are expected to qualify Mr Cormia to make reliable statements on the facts of the case, i.e. precise knowledge with respect to the technical facts of the delivery mentioned in Appendix C. This concerns the precise role that Mr Cormia played in [opponent’s company] with respect to the alleged prior use, his technical qualification in so far as it is relevant for the administration of the desired proof, and, finally, his implication in the contested operation. The available information on Mr Cormia does not make it apparent to which extent he has direct and objective knowledge concerning the deliveries according to Appendix C. The lack of substantiation of the offer of testimony is further underlined by the fact that in the course of the OPs a certain Mr Jones was offered as a possible replacement witness without any substantiation of the competence of the latter with respect to the question to be answered. [4.2]

The Board cannot accept the argument of the opponent according to which the same request for hearing of Mr Cormia as witness had already been made earlier. It is true that it had been proposed in the written proceedings to hear Mr Cormia as a witness, but only in view of distinct (but related) circumstances which did not refer to the problem of the sheets delivered according to Appendix C. […] [4.3]

Under these circumstances a continuation of the proceedings with summons of the witness and fixing of new OPs was not justified from the point of view of procedural economy and because of the lack of substantiation of the offer of testimony. Therefore the corresponding request cannot be allowed. [4.4]

The present situation differs from the situation underlying decision T 474/04. In this decision, basic questions concerning the meaning of hearing witnesses were discussed and the fact that the evaluation of the offered evidence was anticipated by a refusal to hear the witness was criticized. The question of sufficient substantiation of the offer of testimony, which is decisive here, was not dwelt upon. [4.5] 

To read the whole decision (in German), click here.