3.1. Relevance of the evidence

Catchword:

Hearing a witness in first instance proceedings by videoconference allowed sufficient interaction between the deciding body, the parties and the witness. Albeit a part of the witness' body language was not visible to the participants, this did not amount to an infringement of the parties' right to be heard since the judgement on the witness' credibility was mainly based on the conclusiveness of his/her testimony and the absence of contradictions within the witness' own testimony, between the testimonies of several witnesses and/or contradictions between the witness' testimony and information derivable from supporting documents (reasons, point 2).

Abstract

In T 778/21 (laundry appliance), the opposition division concluded inter alia that the subject-matter of claim 1 of the patent as granted was not new in view of both document E2 and the prior use (PU) relating to a washing machine. Both parties appealed. The opponent alleged that the sale of the prior use PU washing machine as detailed on the invoice PU1 and the related affidavits of Mr N. (PU3) and Mr E. (PU2) sufficed for proving that the machine was publicly available. Serial numbers were unique, so the indication of the serial number of the prior use machine allowed a definitive identification of the machine. Thus, in the opponent's view, the inspection of the machine or the hearing of witnesses as requested by the proprietor was not necessary. The errors in the opponent's grounds of appeal associated with the model number for the prior use PU were to be seen as clerical errors. The proprietor inter alia submitted that in view of the doubts presented already in the opposition proceedings, an inspection of the machine with serial number C21850524 and the hearing of witnesses would have been necessary for verification.

The board first dealt in detail with several issues in relation to RPBA and late filed submissions at different stages, eventually most not admitted. On a particular late submission, the board did not accept the opponent's argument that documents filed during the written stage of the opposition proceedings should generally be included in the appeal by default. Regarding the opponent's reaction to the preliminary opinion of the board, in which the opponent explained that the incorrect association of model number WFW97HEXW2 with serial number C21850524 was a clerical mistake, the board found that exceptional circumstances existed that in its view justified admitting the opponent's explanation.

Concerning the general principles for assessing an alleged prior use, the board set out four steps that should generally be made (detailed in the Reasons). Steps 1 to 3 consisted in the examination of the substantiation of the prior use, establishing the evidence offered by the opponent as bearing the burden of proof and the evaluation of the entire evidence offered by the opponent. Depending on the outcome of this evaluation, step 4 could vary (three variants) depending on whether or not the opponent's evidence on file confirmed the alleged facts, or if doubts remained, and whether the opponent did (first variant) or did not (second variant) request an inspection or hearing of witnesses (see the detailed Reasons as to the consequences). If, in the third variant, the opponent's evidence confirmed the prior use, the (counter) evidence offered by the patent proprietor would become relevant and would need to be considered. If assertions made in an affidavit or in any other witness declaration remained contested, a request from a party to hear the (available) witness would have to be granted. The board made reference to G 2/21 (points 41, 42, 44 of the Reasons) and to T 474/04.

In case T 778/21, the board applied these general principles for assessing the alleged prior use. Steps 1 to 3 of the assessment were fulfilled. Step 4 concerned the third variant, therefore the proprietor's request for an inspection of the washing machine and for hearing the authors of the affidavits as witnesses needed to be granted. Since the alleged instance of prior use concerned a specific machine to which the proprietor had no access, the applicable standard of proof was either "beyond all reasonable doubt" (T 97/94) or that the deciding body had to be convinced with a sufficient degree of certainty (T 1138/20, T 545/08). Thus, based on the submissions and evidence on file, the board found that the opponent had substantiated that the machine of the prior use was made available to the public and had provided evidence confirming the related facts. Based on the evidence on file, all features of claim 1 were seen to be known from the prior use. Therefore, the patent proprietor's request for taking (counter) evidence (step 4, third variant) needed to be considered. A final conclusion on whether all relevant aspects of the prior use, including public availability, were proven beyond reasonable doubt, could only be drawn after considering the evidence requested to be considered by the proprietor, i.e. after inspecting the machine and hearing the witnesses. The case was remitted to first instance for further prosecution.