T 1682/09 – A Prior Public Lease

What about another decision on an alleged prior public use?

The claims under consideration were directed at a weighing and packing system.

[3.1] The [opponent’s] allegation of public prior use V1 relates to an assembly of the weighing system Multipond Wägeautomat MP 1401-B, Nr. M 695 of the associated companies Multipond and Atoma and of the packing system SBM VBMS 250, Nr. 4908 of the company Aquarius […]. The assembly was allegedly delivered on 30 May 1994 […] and mounted on 9 August 1994 […] at the premises of the company Sonnentau Gebr. Winkelmann KG (Visselhövede, Niedersachsen, Germany).

In its decision the Opposition Division (OD) found that the pieces of evidence V1 […] submitted by the [opponent] in support of its allegation of prior use and the results of the hearing of the witnesses F. Hofer and M. Hormann […] were sufficient to prove the relevant facts of the alleged public prior use and that the mentioned assembly comprised all but one of the features of the weighing and packing system defined in claim 1 of the then auxiliary request (and now the only claim request before the Board). The only missing claimed feature related to the weighing driving section and the weighing control means being mutually connected through a LAN, the corresponding connection in the assembly of prior use V1 being implemented by means of a VME bus […].

3.2 The [patent proprietor] has contested the OD’s conclusion that the alleged prior use V1 has been sufficiently proven. In particular, the [patent proprietor] has submitted that there is no independent evidence corroborating the alleged facts, that the [opponent] has failed to submit a copy of the original of the instruction manual of the assembly, and that the prior use was based on a leasing agreement and not on the selling of the system.

[3.2.1] In the present case all the written evidence relating to prior use V1 […] originates from the [opponent] (Multipond Wägetechnik GmbH), i.e. one of the companies involved in the alleged prior use, and the witnesses that were heard by the OD were also employees of the [opponent]. The evidence relied upon by the OD is therefore based exclusively on evidence originating from the [opponent] itself and, as submitted by the [patent proprietor], there is no independent corroborating evidence on file of the pertinent facts of the alleged prior use. However, while corroborating evidence from an independent source can certainly constitute strong evidence in support of an allegation of prior use, the mere absence of such independent evidence does not constitute a sufficient reason for dismissing an allegation of prior use.

The [patent proprietor] referred in this respect to the case considered in decision T 1210/05 [2.5.4, 2.5.5, 2.6 and 2.8] in which the evidence submitted in support of an alleged prior disclosure was considered, in the absence of independent evidence, not sufficient to conclude that the disclosure constituted prior art. In the circumstances of the case underlying the mentioned decision, however, the allegation relating to the relevant technical content of the prior disclosure was based on a copy of a poster allegedly displayed in a congress (point [2.2]) and, for the rest, exclusively on the testimony of the person who allegedly displayed the poster (points [2.5.3-5]). In contrast, in the present case the alleged prior use is based on a series of pieces of documentary evidence S1 to S34 including copies of invoices and confirmation orders, delivery records, assembly reports, documents countersigned by the customers, constructional drawings, etc. which already substantiate the alleged facts, and the declarations of the witnesses merely confirm or corroborate in the OD’s view the relevant facts shown in the documentary evidence. In addition, the [patent proprietor] has failed to identify, among the allegations accepted by the OD as having been proven, any specific relevant fact that would only have found support on the witnesses’ declarations. The circumstances of the case in decision T 1210/05 are therefore different from, and not comparable with those of the present case.

The [patent proprietor] has also made reference to the comments of decision T 1210/05 [2.5.8] relating to the capacity of a witness to recollect past events. It is, however, noted that these comments were made in the context of an assessment which, unlike in the present case, depended critically on the probative value of the witness’ declaration (points [2.2, 2.5.1 and 2.5.5]). They are therefore not readily applicable to the present case, at least not to the extent of justifying disregarding the witnesses’ declarations which, as submitted by the [opponent], were not only based on their own recollection of the events, but also on personal logs and installation notes made at that time and shown to the OD during the hearing of the witnesses.

[3.2.2] As regards the [patent proprietor’s] submissions that no copy of the instruction manual of the assembly has been filed as evidence by the [opponent], the Board notes that the documentary evidence V1 contains, in addition to constructional drawings […], also copies of brochures and excerpts specifying the technical characteristics of the delivered system […] and that the mere absence of a copy of the instruction manual, or the like, originally handed over to the company Sonnentau – which went bankrupt in the meantime – is not detrimental to the probative value of the evidence on file.

[3.2.3] The [patent proprietor] has also pointed out that the public character of the alleged prior use V1 has not been proven because the assembly was not sold, but only leased to the company Sonnentau […]. Nonetheless, according to the established case law the selling of an apparatus is, in the absence of any special circumstance, sufficient to render the apparatus sold available to the public. The Board does not see in what respect the mere fact that the assembly under consideration was leased and not sold may affect, in the circumstances of the present case, the public availability of the assembly. In particular, as the assembly was only leased, it was not owned by the company Sonnentau, but this circumstance did not appear to impose restrictions to the public availability of the features of the assembly; more particularly, the prior use involved the mounting of the assembly at the premises of the company Sonnentau and also – as submitted by the [opponent] – the subsequent conventional start-up, training and maintenance procedures of the assembly at the same premises. Thus, the features of the assembly were rendered available to the company Sonnentau which, in the absence of any special reason for concluding otherwise, constituted at that time a member of the public.

In addition, in view of the documentary evidence and the witnesses’ declarations, no secrecy agreement was to be expected in the circumstances of the case, and the [patent proprietor] has failed to identify any special circumstance surrounding the prior use that would indicate that the assembly could have been leased under some form of express or implied confidentiality.

[3.3] The [patent proprietor] has also submitted that the alleged prior use originates from the [opponent] itself and that for this reason the burden of proof to be applied in the assessment of the alleged prior use is beyond any reasonable doubt or “up-to-the-hilt”. However, apart from the specific submissions already addressed in the previous paragraphs and considered not persuasive by the Board, the [patent proprietor] has failed to identify any particular deficiency in the reasoning of the OD – such as gaps in the line of argument developed by the OD, or inconsistencies in the available evidence, or contradictions between the written evidence and the witnesses’ declarations – that would be at variance with the standard of proof referred to above.

In addition, in the Board’s opinion there is no manifest ground for challenging the reasoning and the conclusion of the OD in respect of prior use V1.

[3.4] Having regard to the above, the Board sees no reason for overturning the OD’s finding that the relevant facts of the alleged public prior use V1 have been sufficiently proven.

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