Friday, 7 May 2010

T 448/07 – Much Talk About A Mute Witness

Need for a hearing

[1.1] Together with the notice of opposition the opponent has filed a written declaration by Mr. Mandrioli. The declaration was based on annexes 1 to 7. Annexes 1 to 4 concern a prior use by sale of a device without any obligation of confidentiality. Annexes 5 to 7 are leaflets and manuals concerning further prior uses. As far as the latter are concerned, Mr. Mandrioli gives details including the serial number but does not use any of the evidence and does not indicate how he obtained knowledge on these further prior uses.

[1.2] The [opponent] has offered the hearing of Mr. Mandrioli as a witness. In the communication of the Opposition Division (OD) dated September 5, 2006, which was enclosed with the summons to oral proceedings (OPs) the OD has told the parties that it was of the opinion that a hearing of Mr. Mandrioli was not necessary.

Together with its submission of December 5, 2006, and during the OPs before the OD the [patent proprietor] has pointed out that there were loopholes in the evidence and contradictions between the Annexes.

In the reasons for the contested decision the OD considers that Annex 1, which is an invoice from 1992 constitutes proof for a prior use by sale of a G.D. 2001 device.

[1.3] When answering the question as to which features this device had, the OD bases its reasoning on the pictures in Annex 4 which apparently have been taken at some time in the year 2000, i.e. after the priority date. It implicitly follows Mr. Mandrioli’s declaration because he has indicated the date at which the pictures were taken and affirmed that the condition of the device had not changed since its delivery in 1992.

According to the contested decision, the pictures show a G.D. 2001 device having the same serial number as mentioned in the invoice. The OD further states that the pictures show that the device has remained substantially unchanged over the years and, therefore, corresponded to the condition of the device sold in 1992. Moreover, the OD believes to be able to perceive the content of the box from the pictures, i.e. that it is a control box.

[1.4] As to the argument of the [patent proprietor] that the alleged box was of different colour than the other parts of the device, the OD has objected that both colours looked as if they had the same age and that all the colours were “soiled in the same manner by age and use”.

However, the decision does not state how it came to this conclusion.

[1.5] When asked whether the device had not been modified over the years, Mr. Mandrioli has declared that in 1995 the device still had had its original configuration, as could also be seen in the pictures taken at a later time. Mr. Mandrioli having not been heard, it is not known why he was able to declare this, for instance how he had known the original configuration.

[1.6] The Board comes to the conclusion that the OD based its reasoning on the declarations of Mr. Mandrioli at least for determining the object of the alleged prior use.

[1.6.1] In a case where a patent is revoked or maintained in amended form on the basis of the declaration of a single person, it is necessary to very carefully examine the evidence, including as a rule the hearing of this person as a witness if such hearing is – as in the present case – offered.

Such a hearing is indeed necessary in order to find out how the witness remembers the alleged facts and to receive an impression concerning his/her credibility. As the [patent proprietor] has explained, it was initially essentially limited to pointing out possible loopholes and contradictions in the evidence. As a rule it is necessary to hear the witness in order to confirm or eliminate such loopholes and contradictions.

[1.6.2] It results from the present evidence that the contradictions alleged by the [patent proprietor] could indeed be real.

For instance, the different colours of parts of the device constitute such a contradiction. During the OPs before the OD there were, according to the minutes, only declarations by the representative of the opponent and his accompanying person that this was usual and did not indicate a subsequent modification. Only the accompanying person but not the representative was present – as asserted – when the pictures were taken. However, neither of them was heard as a witness concerning this fact.

The Annexes 2 and 3 and the declaration by Mr. Mandrioli also contain such contradictions. Annex 2, page 2, contains a “note” according to which an instruction manual (“libro istruzioni”) was provided in the Italian language. However, on page 4 of Annex 2 there is a reference to documents for the customer (“documentazione per cliente”) which concerns a manual in the Italian language (“Manuali istruzioni copie : 1 ITA). Annex 3, which, according to the declaration by Mr. Mandrioli, “corresponds’ to the instruction manual, is, however, written in the English language. Also the fact that Mr. Mandrioli has not declared that Annex 3 was supplied with the device, but only that it corresponds to the documents supplied with the device only allows to suspect what has exactly been supplied.

The presence of such contradictions or loopholes can under certain circumstances render moot the whole evidence so that it is as a rule necessary to clarify them in order to be able to correctly appreciate the evidence.

[1.7] Moreover the declaration by Mr. Mandrioli concerns a series of further alleged prior uses. It is not clear which of these facts Mr. Mandrioli can personally attest and which of them are only based on information provided by third parties, such as his colleagues. The need for determining which facts Mr. Mandrioli has learned from third parties and which he can personally attest is another reason for hearing Mr. Mandrioli as a witness.

[1.8] The Board therefore comes to the conclusion that a hearing of the witness Mr. Mandrioli is necessary.

Procedural violations due to not hearing the witness

[2.1] The [patent proprietor] expressed the opinion that it had implicitly required a hearing of the witness Mr. Mandrioli during the opposition proceedings. There was no explicit request, as the [patent proprietor] admitted during the OPs before the Board.

[2.2] Mr. Mandrioli was offered for a hearing together with the notice of opposition. In its response dated March 11, 2004, the [patent proprietor] did not request his hearing as a witness but has only dealt with the evidence by pointing out: that Annexes 2 and 4 were not to be taken into account because Annex 2 was post-published and the pictures of Annex 4 were taken after the priority date of the impugned patent; that there was a contradiction between Annexes 2 and 3 concerning the language in which the instruction manual was written; that there was no evidence for the affirmation that the G.D. 2001 device had been delivered without any secrecy obligation; and that in any case it was not clear that the control box units of this device had received monitoring and steering organs. The missing features were in none of the documents of the prior art and, therefore, justified novelty and inventive step. In order to be understood as an implicit request for a hearing of witnesses, this submission would have to have only this interpretation. However, the above submission can also be understood to mean that the [patent proprietor] limited itself to excluding certain evidence from the proceedings, to attacking certain alleged facts and to affirm that they, even if they were real, could not cast doubt on the novelty and the inventive step.

[2.3] In its communication accompanying the summons to OPs, the OD has stated that it would not hear Mr. Mandrioli as a witness. […] At this moment at the earliest [sic] the [patent proprietor] knew that it had to explicitly request a hearing if it considered such a hearing to be necessary. This is all the more true as the [opponent], in its letter dated October 6, 2006, again inquired whether Mr. Mandrioli was summoned as a witness. Then the OD had called it and informed it that the OD did not intend to do so. The corresponding minutes were sent to the [patent proprietor] on November 24, 2006.

[2.4] In its letter dated December 5, 2006, the [patent proprietor] then again only dealt with the evidence, which leads to the same result, i.e. that this reaction cannot be understood as an implicit request for a hearing of the witness. Quite to the contrary, the [patent proprietor] has requested that the declaration of Mr. Mandrioli not be taken into account.

[2.5] During the OPs at the latest the [patent proprietor] should have realized that its written submissions were not understood as an implicit request. Nevertheless, it has not filed a request for a hearing of the witness and there is no indication in the minutes that it had pointed out the necessity for such a hearing in any other form.

Therefore, the Board cannot share the opinion of the [patent proprietor].

[2.6] The [patent proprietor] has also explained that the OD has not complied with its duty to act of its own motion, by not deciding to summon and hear the witness.

However, the [patent proprietor] fails to see that the witness had been offered by the [opponent], in order to corroborate its declarations, and not by itself, and that the OD had considered the question and has made use of its discretion under A 114(1) such that it came to the conclusion that it could allow the requests of the [opponent] without any hearing. If the position of the [patent proprietor] were adopted, it would lead to the situation where the OD would have to accept any offer of a witness and, therefore, lose its power of discretion.

[2.7] The [patent proprietor] has also cited decision T 474/04. The facts underlying this decision differ from the facts of the present case in that the concerned [patent proprietor] had filed an explicit request for a hearing of the witness offered by the [opponent] already during the opposition proceedings, which had been ignored or overseen by the OD. In the present case there has not been any explicit or implicit request. Therefore, this decision is not relevant.

[2.8] For the above mentioned reasons the Board does not see any procedural violation on behalf of the OD.

The Board then remitted the case to the OD. The patent proprietor had asked the Board not to do so, but the Board rejected this request because the required hearing would transform the appeal proceedings into first instance proceedings. It pointed out that the patent proprietor had contributed to the long delay caused by the remittal, by not requesting a hearing of the witness during the opposition proceedings.

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