The patent proprietor filed an appeal after the Opposition Division (OD) had maintained the opposed patent in amended form.
After expiration of the time limit for filing an appeal, the opponent filed a “cross- appeal” (Anschlußbeschwerde) but he finally withdrew this appeal.
The patent proprietor requested the Board to maintain the patent as granted. Claim 1 as granted read:
1. Method for cleaning a UHT installation (1) for flowable foods comprising the steps:
(a) Placing a cleaning solution in a storage vessel (6,7),(b) Cleaning the UHT installation (1) with a first portion of the cleaning solution,(c) Discarding this first portion of the cleaning solution,(d) Cleaning the UHT installation (1) with a second portion of the cleaning solution,(e) Recirculating this second portion to the storage vessel (6,7),(f) Rinsing the UHT installation (1) with fresh water,(g) Collecting at least a portion of the rinse solution in step (f) in the storage vessel (6,7),(h) Fortifying the solution in the storage vessel (6,7) with cleaning agent.
The decision contains some interesting statements on late filed documents and witness testimonies.
*** Translation of the German original ***
Consideration of documents D18 to D25
 Documents D18 to D25 were announced on May 4 and 13, 2009, by the [opponent] and filed together with a written submission dated August 26, 2011, about one month and a half before the oral proceedings (OPs) before the Board.
The [patent proprietor] is of the opinion that said documents were late filed, so that he did not have the opportunity to prepare himself properly. It should also be taken into account that the late filed documents concerned the alleged prior public use (PPU) and evidence therefor, respectively, and that all the evidence was in the sphere of the [opponent], so that all the [patent proprietor] could do was to point out gaps and inconsistencies of the evidence. This possibility would be seriously limited if the late filing of documents D18 to D25 was considered admissible.
According to the [opponent] the documents under consideration were not indispensable for establishing the alleged PPU Leche Pascual but could nevertheless provide further evidence for the prior use and invalidate (entkräften) the patent proprietor’s objections against the conclusions at which the OD had arrived when assessing the evidence.
The [opponent] has announced the filing of further documents related to the PPU at an early stage of the proceedings – in written submissions dated May 4 and May 13, 2009 – when reacting against the objections made by the [patent proprietor] in the statement of grounds of appeal. He justified the fact that the documents were filed only together with his written submissions of August 26, 2011, i.e. more than two years later and shortly before the date of the OPs (October 13, 2011) by the tense economic situation the [opponent] had had to face in the meantime.
In the exercise of its discretional power, the Board considers that the late filing of documents that had been announced earlier and which, therefore, were available, without any justification having a causal link to the present proceedings, does not comply with a regular way of conduction the proceedings.
Therefore the late filed documents D18 to D25 have not been admitted into the proceedings. […]
Prior public use
[4.1] According to the impugned decision […] the processing plant (Prozeßanlage) that is said to constitute a prior public disclosure has been delivered in the 1994/1995 period by the Gea Finnah company to the Grupo Leche Pascual company, the latter being both the purchaser and the operator of the plant. This delivery, for which there had been no confidentiality obligation, had made the plant available to the public. Moreover, the operation of this plant had made a process for cleaning a UHT installation available to the public, which process destroyed the novelty of claim 1 as granted, which is the only version that will be considered hereinafter […].
[4.2] When assessing the evidence, the OD has considered the witness testimonies of witnesses Tacke and Assing […] to be the essential pieces of evidence. Moreover, in the context of these witness testimonies, it has referred to documents D5 and D6 as “written evidence”.
[4.3] The Board is of the opinion that the two witness testimonies, which go beyond the disclosure of documents D5 and D6 – as far as the process plant alleged to have been the object of a PPU and the cleaning process are concerned –, are the decisive pieces of evidence by which the alleged PPU has been completely (lückenlos) established to the extent that is necessary in the present case. As both witnesses have referred to D5 for explaining their statements and as witness Tacke also used D6, these pieces of evidence comprise facts that can be taken from D5 and D6, insofar as they are comprised by the witness testimonies.
Each witness testimony as such gives a consistent and complete picture of the cleaning process which is to be established. Moreover, the witness testimonies agree with each other as far as the essential process steps of the cleaning process are concerned.
[4.4] Based on the content of the witness testimonies that has been taken into account in the impugned decision, and on the minutes of the hearing of witnesses Tacke and Assing, the Board considers the way in which the evidence was assessed by the OD, the underlying standard of proof and the outcome of the assessment to be correct.
The Board agrees with the [patent proprietor] that in the present case the applicable standard of proof is such that the alleged public prior use has to be established “beyond reasonable doubt”.
This follows from the fact that it is the legal predecessor of the [opponent’s] company who delivered the CIP (Cleaning In Place) plant under consideration and, therefore, caused the PPU, which means that the PPU belongs to his sphere of influence.
[4.5] The [patent proprietor], who considers that the PPU has not been established and contests its reality […] has tried to expose gaps and inconsistencies regarding the evidence of the opponent and shortcomings in the assessment of the evidence on behalf of the OD, both in the opposition and appeal proceedings.
The OD has not endorsed the corresponding objections, essentially because it considered the facts to be proven by means of the witness testimonies […].
[4.6] The Board considers the OD’s assessment of the situation to be correct.
[4.6.1] In particular, as far as the availability to the public is concerned, it is of the opinion that the impugned decision is right in coming to the conclusion that the CIP plant, which had been delivered by the Gea Finnah company to the Leche Pascual company, who was both purchaser and operator, has been made available to the public through this very delivery.
The Board is of the opinion that the same holds true for the assessment according to which the operation of the CIP plant for cleaning the UHT installation has made the process used for cleaning the UHT installation available to the public before the date of filing of the impugned patent. As a matter of fact, when the plant was sold, put into service and homologated (see witness testimony […]) all process steps have been carried out.
In this context the OD was right in coming to the conclusion that the delivery and operation of the plant was performed without there being any confidentiality obligation and that the Leche Pascual company acting as a purchaser and operator of the plant was a third party within the meaning of patent law, in the person of whom the CIP plant for cleaning a UHT installation under consideration as well as the process for cleaning the UHT installation carried out with it have been made available to the public.
[4.6.2] The impugned decision is also correct on the object of the PPU.
Accordingly, the witness testimonies have shown that the delivered CIP plant is suitable for carrying out the cleaning process according to claim 1 both in view of the means provided in the plant and its control and of the interaction with the UHT installation.
As far as the operating sequence of the cleaning process carried out in the plant of the PPU is concerned, the impugned decision refers to the process steps disclosed in D5 and uses the designations for the individual steps used therein. This is in agreement with the declarations of both witnesses who have kept their declarations on the operating sequence of the cleaning in line with the process sequence of D5.
The outcome is that the OD has considered that it has been proven that the process for cleaning a UHT installation carried out in the plant of the PPU comprised all steps of the process according to claim 1.
[4.6.3] It may be left open to which extent D5 is to be considered as an independent piece of written evidence alongside the witness testimonies – as the OD appears to have believed – because the two witness testimonies – partly referring to D5 – completely encompass its disclosure insofar as it concerns the object of the PPU in view of the process according to claim 1. The same holds true for D6 and the construction of the CIP plant, because the witness Tacke refers to this document in his deposition.
[4.6.4] Therefore, the objections of the opponent concerning the use of D5 and D6 as independent pieces of evidence are pointless because the witness testimonies are complete both in view of the construction of the CIP plant and – to the extent necessary – the UHT installation, and in view of the operating sequence of the cleaning process carried out on the UHT installation by means of the CIP plant to the extent required in the context of the process according to claim 1, and as such establish the alleged PPU.
As a consequence, it may be left open to which extent D5 and D6 are to be considered as independent pieces of evidence alongside the two witness testimonies.
For analogous reasons it is not necessary to consider declaration D16, which the [opponent] has used for supporting his argumentation alongside both witness testimonies, either.
[4.6.5] Concerning D5 and D6, the objection of the [patent proprietor] according to which it was not proven which version of D5 and D6 was available when the PPU took place, and what they disclosed, is also irrelevant. The same reasoning applies to the objection that D5 does not disclose the complete cleaning process and that the precise interaction of the CIP plant and the UHT installation in view of cleaning the UHT installation by means of the CIP plant is not apparent in D6. That the cleaning process has indeed been carried out in compliance with the process according to claim 1 follows from the relevant declarations of both witnesses, which are extensive and complete, as explained above.
In this context, it has to be taken into account that, according to the minutes of the hearing of the witnesses, the witness Tacke has been personally involved as project manager in the start-up of the plant until its homologation According to the minutes of the hearing of witness Assing, the same holds true for this witness, who was responsible for developing and implementing the complete software and who, therefore, was on site from October 1994 to June 1995. As a consequence, both witnesses could draw upon their recollections concerning the operating sequence of the cleaning process during the start-up of the delivered CIP plant in conjunction with the UHT installation.
[4.6.6] As far as the establishment of proof (Beweisführung) is concerned, the [patent proprietor] has explained that he did not question the reliability of the witnesses as such. However, as there were inconsistencies in the witness declarations regarding the dates at which the documents D5 and D6 were established / published and their content during the relevant period, there were indications that doubts concerning the witnesses’ powers of recollection were justified. This also held true for the witness declarations concerning the period and the object of the alleged PPU.
In this regard, it has to be noted, as explained above, that in the present case the PPU is considered to have been proven by the two witness testimonies. Therefore, links and details that can be found in D5 and D6 do only matter to the extent to which the witnesses have referred to them during the hearing.
Regarding the powers of recollection of the witnesses the general experience of life allows to act on the assumption that when actions that have taken place in the past, such as in the context of the present PPU, actions that are experienced directly (unmittelbar wahrgenommen), such as the construction of the CIP plant in conjunction with the UHT installation, as well as the start-up of the CIP plant for cleaning the UHT installation, wherein both witnesses have participated actively, according to their declaration, can be recollected much better than actions that are not readily assigned to such immediate perception. In the present case this concerns the moment at which D5 or D6, respectively, have been established and the version of each of these documents that was available in the period that is relevant for the PPU.
[4.7] Based on the fact that, as mentioned above, both witness testimonies as such are complete in view of the factual situation to be established and do not contradict each other or the other documents filed in this regard, in particular D5 and D6, the other objections of the [patent proprietor] with respect to the proof of the PPU are irrelevant.
[4.7.1] The objection that, starting from D5 and D6, gaps in the disclosure made it unclear how the CIP plant and the UHT installation were constructed, how they interacted in the cleaning of the UHT installation and which process steps a cleaning process for the UHT implemented in the allegedly used CIP plant has comprised, cannot be accepted.
As the PPU has been proven by the two witness testimonies, further documents or pieces of evidence, such as the “written pieces of evidence” D5 and D6 mentioned in the impugned decision, are not relevant.
This holds true at least for the present case wherein there are no fundamental contradictions between the pieces of evidence such as the two witness testimonies, and further documents, such as D5 and D6, which would diminish the evidentiary power (Aussagekraft) of some or all of the pieces of evidence so that they cannot be taken into account, either partly or completely, when evidence is assessed within the framework of the free evaluation of evidence.
However, the [patent proprietor] has not been able to demonstrate the existence of such gaps of disclosure or contradictions. […]
[4.7.2] The [patent proprietor] also expressed the opinion that, given his unlimited access to the pieces of evidence concerning the alleged PPU, the [opponent] could have been expected to provide further written pieces of evidence concerning the construction of the plant that had been delivered and, therefore, the cleaning process carried out with it. In this context, he also criticized that there had not been any documents representing the whole construction of the CIP plant and the UHT installation or from which the whole operating sequence of the cleaning process was discernable.
The Board is of the opinion that this request for further pieces of evidence concerns aspects of establishment of proof by the [opponent] which go beyond what the [opponent] had to supply in order to bear his burden of proof.
As the OD, acting within the framework of free evaluation of evidence, has come to the conclusion – which the Board considers to be correct – that the alleged PPU has been essentially established by the two witness testimonies, and as the [patent proprietor] has not been able to cast into doubt the probative value of these witness testimonies, there was no motivation for the opponent to file further pieces of evidence, neither in the opposition nor in the appeal proceedings.
Finally the appeal was dismissed.
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