T 0710/02 25-05-2007

1.1 Admissibility of the Appeal

A notice of appeal filed in the name of the patentee and signed by the professional representative of the patentee having acted in the opposition proceedings together with EPO form 1010 for payment of the appeal fee, were submitted on 10 July 2002 by fax. On 12 July 2002 a confirmation copy of the notice of appeal signed by that representative was filed, which stated: "We enclose the grounds of appeal...". Two pages containing arguments clearly relating to the credibility of the witnesses heard by the Opposition Division were attached to said confirmation letter (see section XI above). The Board considers that these arguments constitute the grounds of appeal against the impugned decision. They were filed on 12 July 2002, i.e. in time under Article 108, third sentence, EPC.

As the letter accompanying these grounds of appeal holds the signature of the appointed representative, they have been validly filed for the appellant. The fact that the same arguments have also been filed on 10 July 2002 by fax signed by the inventor does not influence the validity of the grounds of appeal as filed by the appointed professional representative, during the time he was still the representative.

The appellant by putting into question the credibility of the witnesses in the grounds of appeal gives reasons, which combined with the statement in the accompanying letter that the decision should be cancelled, can be seen as reasons for setting aside the impugned decision.

The case law cited by the respondent relating to a lack of such reasons is not relevant because of these circumstances.

For the above mentioned reasons the Board finds that the appeal is admissible.

1.2 Procedural matters

1.2.1 Since on the one hand the appointed professional representative with his letter dated 18 August 2003 withdrew his appointment as being the appellant's representative, asking at the same time that the EPO corresponds directly with the appellant, and on the other hand the inventor filed on 14 July 2003 an extract of the Finnish Trade Register and a certification of a Finnish public notary as evidence that by being a member of the appellant's board he is authorized to sign for the appellant, the Board concludes that the appellant is now represented by the inventor.

1.2.2 The Board fails to understand the purpose of the question in the second sentence of the fourth paragraph of the "Facts and submissions on 13.05.2002" of the grounds of appeal, stating "Why especially inventor Mr Ossi Laakko did not get noticed from the new witness Mr Hummelen with his given evidence and claim before EPO has made it's decision?".

According to the opposition file Mr Hummelen was offered as witness by the opponent with letter dated 15 November 2001, and the appellant was informed via his representative with the communication of the Opposition Division dated 7 December 2001 that Mr Hummelen was to be heard as a witness during the oral proceedings on 30 January 2002. The appellant's representative commented under point 2 of his letter dated 19 December 2001 on the written statement made by Mr Hummelen. The appellant's representative was present at the oral proceedings in question during which the witnesses Hummelen and Kuusela were heard (see the minutes, Form 2309.1), whereby he asked questions to both witnesses (see the minutes of the hearing of witnesses) and he presented his comments on the hearing of the witnesses (see the minutes, point 6).

From the above mentioned facts the Board can only conclude that the appellant has had sufficient opportunity to respond to what was stated by the witness Mr Hummelen and that therefore the requirements of Article 113(1) EPC are fulfilled.

To which extent the inventor or the appellant company was informed about the hearing of the witness Mr Hummelen is an internal matter between the appellant and its appointed representative, which has no bearing on the present decision and does not therefore need to be considered by the Board.

1.3 Grounds of Appeal

1.3.1 Claim 1 forming the basis for the decision under appeal reads as follows: "A method for removing and installing rolls (2) in a paper machine or the like substantially in the direction of the longitudinal axis of the rolls, in which method - an auxiliary displacing means (3) is supported to a substantially horizontal support structure (1) of the paper machine or the like above the roll (2) to be displaced, the auxiliary displacing means being mounted to move along the support structure; - one end of the roll (2) to be displaced is fixed immovably to the auxiliary displacing means (3) so as to be suspended from it, and the other end of the roll to be displaced is supported by a displacing device; and - the roll (2) to be displaced is moved by the displacing device substantially in the direction of the longitudinal axis of the roll to be displaced so that the auxiliary displacing means (3) fixed to one end of the roll to be displaced moves along the support structure (1) while the roll to be displaced moves with it, characterized in that another roll (1) of the paper machine or the hike positioned above the roll (2) to be displaced is used as the support structure."

1.3.2 As stated under point 3 of the reasons for the decision under appeal the Opposition Division found that the hearing of the witnesses (Mr Hummelen and Mr Kuusela) has proven that a method having all the features of the method according to this claim - except that blow boxes or doctor blades are installed in the paper machine instead of rolls - was made available to the public at Parenco before the priority date of the patent in suit.

As testified by the witnesses this method was developed and used by Parenco (see minutes of the hearing of witnesses, pages 5, 7 and 8). On no occasion during the opposition proceedings was it established that the "Easy-way Technology" as sold by the appellant, or the paper machine Kaipola PM6 (PK6 in Finnish) had been the subject of a public use prior to the priority date of the patent in suit.

1.3.3 The appellant's statement in the grounds of appeal that "All evidence of opponent has been testified as pirates namely falsified wrong ones completely" is an allegation which cannot be accepted by the Board, since no supporting evidence has been presented by the appellant.

1.3.4 In the grounds of appeal the appellant argues that "It has also been testified that Mr Hummelen was not able to know before 1991 nothing about Easy-way technology (EWM Technology Ltd.)".

This statement is probably correct, since Mr Hummelen neither mentioned the name Easy-way nor described its technology. What Mr Hummelen testified to was that a specific method for installing doctor blades was developed and publicly used at Parenco before the priority date of the patent in suit. It was the Opposition Division which made the connection with the features of the method according to claim 1 of the patent in suit.

This statement of the appellant cannot raise doubts about the method as seen by the witness being used at Parenco before the priority date of the patent in suit. Whether or not Easy-way technology was involved is of no impact.

1.3.5 In the first sentence of the fourth paragraph of the chapter "Facts and submissions on 13.05.2002" of the grounds of appeal the appellant states that "The witness has not been able to give any evidence for his claim".

The Board cannot follow the appellant's argumentation, since the hearing of the witness itself is the evidence for the prior use at Parenco. Further, as can be seen from the minutes of the witness hearing, the witness did produce additional evidence regarding what was used at Parenco (see minutes, pages 2 and 3).

Finally, the appellant criticizes the fact that no further evidence was presented by the witness. However, it did not supply evidence for a claim that the prior use at Parenco did not take place as testified. The Board therefore sees no reason to deviate from the Opposition Division's conclusion regarding the public prior use of the method as applied at Parenco.

1.3.6 In the fifth paragraph of the chapter "Facts and submissions on 13.05.2002" of the grounds of appeal the appellant argues that Mr Kuusela could only have seen an Easy-way technology, i.e. a method according to claim 1 of the patent in suit, after 1991, i.e. after the priority date.

As it was also stated under point 1.3.4 above with respect to the testimony of Mr Hummelen, Mr Kuusela testified only that a specific method for installing blow boxes was used at Parenco before the priority date of the patent in suit, he did not testify that the Easy-way technology had been the subject of a prior use.

Therefore, also this statement of the appellant cannot cast doubt on the method as seen by Mr Kuusela being used at Parenco before the priority date of the patent in suit.

1.3.7 In the following only those enclosures referred to by the appellant in its grounds of appeal and in its letter dated 14 May 2003 will be examined by the Board. The enclosures to which no reference has been made and in particular all parts of the documents in a non-official language, for which no translation has been filed despite the Board's invitation to do so (Rule 1(3) EPC) are not investigated by the Board in these opposition appeal proceedings (see G 9/91, point 18 of the reasons, OJ EPO 1993, 408). In the above mentioned reasons of G 9/91 it is stated that the purpose of the inter partes appeal procedure is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits and in contrast to the merely administrative character of the opposition procedure, the appeal procedure is to be considered as a judicial procedure, such procedure being by its very nature less investigative than an administrative procedure.

1.3.8 Under point a) of the section entitled "Minutes of the oral proceedings held in public 30.01.2002" of the grounds of appeal the appellant defines "what" was a prior use, by referring to enclosure 7 of the grounds of appeal, which refers to different Valmet-apparatuses and to a drawing made by the appellant. A date of 14 September 1994 is mentioned.

However, no reference to the prior use which took place according to the witnesses at Parenco can be found in enclosure 7, nor does the appellant establish that what is shown in the drawings is the only arrangement which could have been installed at Parenco (but then only as late as 1994).

1.3.9 Under point b) of the same section the appellant defines "when" a prior use took place by mentioning the years 1994 and 1991 and referring to the enclosures 4, 5a+b and 14 of the grounds of appeal.

Enclosure 4 is a declaration which mentions the year 1994 for implementing a paper cylinder exchange device, but bears no reference to the prior use at Parenco as testified.

Enclosures 5a and 5b relate to devices of the appellant delivered to Valmet or Enso and bear the dates of 2.3.94, 10.3.94, 18.4.94, 19.4.94 and 18.10.94. The only reference to the prior use at Parenco can be found on page 4 of enclosure 5a where the appellant states that the devices described by Mr Hummelen in the oral proceedings as being used at Parenco "have nothing to do with patented devices of us, in question, only for their own purpose is done and belong under the criminal law, etc.". At most, this establishes what Valmet or Enso, or the appellant, installed in 1994, but not what took place at Parenco, in 1981 and 1982 as testified by the witness Hummelen, or in 1989 as testified by the witness Kuusela. In addition it appears to allege that what was testified as having been installed at Parenco was not a truthful account of what actually had been taking place. However, for that allegation no supporting evidence has been filed, so that it is not further considered by the Board.

Enclosure 14 is a brochure about the appellant's products and services without any reference to the prior use according to the witnesses at Parenco. The same applies to enclosure 15.

In all, these enclosures can at most establish that the appellant started delivering its Easy-way technology, which is similar to the one claimed in the patent in suit, only after the priority date. It cannot however, establish that what the witnesses testified as having taken place at Parenco did not take place. The enclosures cannot therefore raise any doubts about these prior uses at Parenco before the priority date of the patent in suit.

1.3.10 Under point c) of the section entitled "Minutes of the oral proceedings held in public 30.01.2002" of the grounds of appeal the appellant argues that public uses took place outside of Parenco and refers to the above mentioned enclosures 4, 5a and 5b.

Again, the fact that other public uses took place, in 1994, in places other than at Parenco is no proof that what was testified by the witnesses did not take place at Parenco before the priority date of the patent in suit.

1.3.11 Also the arguments of the appellant under point d) of the section entitled "Minutes of the oral proceedings held in public 30.01.2002" of the grounds of appeal are directed only to the appellant's Finnish patent, not to the present patent at issue, and does not address the issue of the prior use at Parenco. Thus it cannot cast doubt on this prior use.

1.3.12 The cover page of enclosure 8 of the grounds of appeal is a photocopy of a photograph filed as Annex A during the opposition procedure disclosing handwritten comments about the functionality and the structural features of a wire rope shown in said photograph. Since the comments in enclosure 8 are directed only to the functionality and the structural features of a wire rope and not to the method testified to form part of the public prior use at Parenco, these comments cannot put in question the testimony of the witnesses.

1.3.13 Enclosure 10, referred to in the appellant's letter of 14 May 2003, as the enclosures 5a and 5b referred to in point 1.3.8 above, relates to the same distinction between what took place at Parenco before the priority date of the patent in suit and what was delivered by the appellant to Valmet paper machines after that date. As with the enclosures 5a and 5b, it cannot throw doubt upon what was testified by the witnesses regarding the Parenco prior use.

1.3.14 For the above mentioned reasons, the Board follows the argument of the respondent that the arguments given by the appellant in its grounds of appeal and its further submissions are not suitable to question the public prior use at Parenco as testified by the witnesses which was found by the Opposition Division as being sufficiently proven.

The appeal, only being based on questioning the validity of the witnesses' statements, is therefore unfounded and has to be dismissed.

Since appellant did not request oral proceedings, this decision could be arrived at taking into account only of the written submissions, particularly noting the indication of the appellant at the end of the appeal grounds, that it awaited a final decision.

1.4 In view of the above reasons in favour of the respondent's request for dismissal of the appeal, its request to be allowed to file additional argumentation needs no further consideration.