In this revocation appeal case, the patent proprietor – in the course of the oral proceedings (OPs) – requested the Board to hear an expert.
[4.1] Claim 1 of new auxiliary request 2 differs from the claim 1 of auxiliary request 1 in that the cell is now restricted to the species Lactococcus lactis […].
[4.2] During the discussion of the admissibility of new auxiliary request 2, the [patent proprietor] requested that Mr Johansen be allowed to speak about “their experience of repeating the claimed invention with other strains of Lactococcus lactis and their observed success rate in providing Lactococcus strains fulfilling the requirements of claim 1 of the newly presented auxiliary request 2”.
[4.3] The board is aware that the [patent proprietor] referred to Mr Johansen as a technical expert in its letter of 13 June 2013 and requested that Mr Johansen be allowed to provide comments on any technical issue relating to the claimed invention that might come up during the hearing. However, the subject on which Mr Johansen intended to speak according to the [patent proprietor’s] request as specified during the OPs was not simply a technical issue but in fact an event in the past, namely the performance of experiments and the results obtained thereby, which had taken place at the [patent proprietor’s] laboratory. So the [patent proprietor’s] request was actually directed to hearing Mr Johansen as a witness rather than as a technical expert.
[4.4] The [patent proprietor] argued that the proprietor had made a statement during the opposition proceedings similar to the one which Mr Johansen was going to present in appeal. The [patent proprietor] referred to the passage of the Opposition Division’s decision in the second part of the fifth paragraph on page 8 of the decision, which reads as follows
“... P argued that the majority of the strain produced by Chr. Hansen and tested in the laboratory produced cytochrome d, and although some trial and error might be necessary to select the suitable strains, no undue burden was left to the skilled person as the results obtained – with producing and non-producing strains – were repeatable.”
The proprietor’s statement referred to in the OD’s decision that the majority of strains produce cytochrome d had been challenged by the [opponent] in its response to the statement of grounds of appeal (letter of 9 September 2011). In this letter the [opponent] had specifically stated that “[H]owever, none of the other strains/species tested produced cytochrome d. Notably, even the other strain of Lactococcus lactis tested, namely strain HP, did NOT produce cytochrome d.”
So at the latest upon receipt of this letter, the [patent proprietor] must have been aware that its statement during the opposition proceedings may not be sufficient to prove that the majority of strains lead to the required cytochrome d amount, and that thus more evidence would be required as regards the success rate obtained with these strains. Nevertheless, the [patent proprietor] chose to wait until the latest possible point in time during the present appeal proceedings to offer further evidence in the form of a “witness statement”.
If the witness had been allowed to speak, the [opponent] would have had to be given sufficient opportunity to challenge the witness statement and it would have been necessary to adjourn the OPs. Therefore, the board decided not to allow the [patent proprietor’s] request to hear Mr Johansen, pursuant to Article 13(3) RPBA.
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