T 1801/07 – When Witnesses Disagree

The present decision contains an interesting discussion on the reality of an alleged prior disclosure.

The opponent (Osram) filed an appeal against the decision of the Opposition Division (OD) to maintain Toshiba’s patent in amended form.

[2.1] Document A21 is a copy of the original brochure allegedly distributed to the participants of the meeting “Arbeitstagung für Leuchtenhersteller” in January 1996. All the witnesses heard by the opposition division confirmed that these meetings were held annually by Osram, were attended by about 50 participants and that no secrecy agreement was involved. The meeting was held twice on two consecutive days (i.e. 15-16 and 17-18 January) in which substantially the same subject-matter was presented to different audiences, once in German and once in English. At these meetings the new lamps developed so far were presented so that manufacturers of lighting fixtures could adapt their products to the new lamps to be introduced in the market. Two witnesses (Mr D. and Mr W.) declared that the brochure was placed on the participant’s chair in the meeting room while the two other witnesses (Mr H. and Mr M.) stated that it had been distributed at the meeting’s reception desk. Mr M. and Mr D. confirmed that the brochure was a bound volume (“Tagungsband”) and contained copies of the overhead transparencies presented at the meeting, although it could not be ruled out that more specific information could have been presented orally at each workshop […].

The front page of A21 identifies the meeting’s audience: the manufacturers of lighting fixtures (“Arbeitstagung für Leuchtenhersteller”), the meeting’s dates (15./16.01.1996 and 17./18.01.1996) and the meeting’s location (“Osram-Haus, München”).

The board considers therefore that the questions of “when”, “what” and “under which circumstances” can be answered satisfactorily based on the witnesses’ testimony and document A21. The board is aware that these questions are usually posed in the context of public prior use (although in those cases they take often the form of the four W questions, i.e. “when”, “where”, “what” and “by whom”). They are however also relevant when assessing written state of the art, although in the majority of those cases these questions do not need to be explicitly posed, since they can be answered in a self evident manner from the document itself (a published patent or patent application or an article from a technical journal or encyclopaedia).

Document A11a is a copy of the front page and the pages corresponding to the T5 FH (Fluorescent High Efficiency), T5 FQ (Fluorescent Quintron) and T5 FC (Fluorescent Circline) lamps of document A21. In the following discussion on inventive step document A11a will be used for ease of reference.

[2.2] The [patent] proprietor objected that none of the witnesses could positively confirm that document A21 had been distributed in 1996. He pointed out, in particular, that the witnesses contradicted each other with reference to where and when the brochure had been made available to them (i.e. at the reception desk or on the seats of the meeting’s room).

[2.3] This, however, is not the issue. It would be very unusual that a witness could recall after more than ten years the exact circumstances of an event, unless something special made it remarkable. That some of the witnesses recalled obtaining the brochure at the reception desk while others remembered finding them on their seats is something that can reasonably be expected. It does not shed doubts on that they received the brochure, since both ways of distribution are usual at conferences and meetings.

[2.4] The witnesses also declared that the meetings were structured the same way each year and that a brochure that contained copies of the material presented at the different workshop sessions was always distributed to the participants without any agreement, implicit or explicit, of secrecy. According to the minutes of the witnesses’ testimony, Mr W. presented at the oral proceedings (OPs) before the OD an original of document A21 on which the dates, audience and location of the meeting were indicated […]. According to the minutes of the OPs before the OD, the opponent brought forward a copy of the original brochure the next day of the hearing. This copy was compared with the original by the opposition division and introduced into the proceedings under A 114(2) as document A21 […]. These facts were not contested in the appeal proceedings.

[2.5] The opponent thus has a credible case that copies of document A21 were distributed to the participants of the meeting in January 1996. The burden of proof therefore shifts to the [patent] proprietor who has to show counterevidence for e.g. that the brochure was only available at a later date than the date shown on the document, that the content of document A21 was not that of the brochure distributed at the meeting or that a secrecy agreement existed.

[2.6] The present circumstances therefore differ from an allegation of prior use in which all the evidence is in possession of the opponent and in which the proprietor is restricted to point out loopholes or contradictions in the chain of evidence.

The board also does not share the view of the [patent] proprietor that it was impossible to him to prove non-distribution or non-publication and that therefore the burden of proof lay wholly on the  [opponent’s] side. The [patent proprietor] had the possibility of disproving public availability of the document in question, e.g. by contacting further participants of the meeting who might testify that the documents handed out had different content, were given out much later, etc.

[2.7] From the foregoing considerations, the board concludes that the public availability of document A21/A11a has been sufficiently proven and agrees with the finding of the OD that document A21/A11a was made available to the public on the first day of the meeting, i.e. 15 January 1996.

Since this date lies before the first priority date claimed by the patent (i.e. 5 March 1996), document A21/A11a is part of the state of the art under A 54(2) EPC 1973.

I wonder if the patentee should have insisted on the standard of proof rather than discussing who was to bear the burden of proof.

The reasoning of the Board appears to be correct if the balance of probabilities is the standard to be applied. The fact that the witnesses contradicted each other as to the way in which the document was distributed does not - in my opinion - counterbalance the rest of the evidence.

As Osram was the opponent, the patentee could have argued that the alleged prior disclosure in Osram’s premises created a situation where the standard “beyond reasonable doubt” was to be applied. Then the contradiction might perhaps (?) have been found to create some reasonable doubt as to the reliability and correctness of the testimonies.

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