Can an expert witness add prior art as an appendix to his testimony, if not previously listed in evidence?

expert witnesses expert witness

In Israel, allowed patent applications publish for opposition purposes. It will be appreciated that the opponent has an interest in the patent not being allowed, so has a tendency to procrastinate. It is thus important that opposition proceedings follow a standard procedure with tight deadlines, so that they can eventually be brought to a close.

In  an opposition concerning Israel Patent Application No. 168200 to DSM IP Assets BV, Mifalei PMS Migun LTD., represented by Adv. Mati Barsam, filed an opposition. The patent, titled “Process for the  Manufacture of a Ballistic-Resistant Moulded Article”, concerns ballistic armor made by hot pressing and sintering. The Opposer, Mifalei PMS Migun LTD., wanted to reference eleven prior art citations in the testimony by their expert witness, however these were not mentioned in the statement of case, which is the correct place to introduce prior art used to reject the novelty or inventiveness of a patent application. Alternatively, they requested to correct thier statement of case to refer to the additional prior art. The Applicant,  DSM IP Assets BV,  wanted to withdraw one of their previously filed affidavits of an expert witness.

To put in a timeline, the application in question published for opposition purposes at the end of June 2010. An opposition was filed on 20 September 2010, and the Scounter statement was filed in July 2011. The evidence of the opposer was filed on 12 January 2012, and the applicant’s affidavit was filed on 5 August 2012. A statement of the Opposer was filed on 21 January 2013.

To a large extent, the opposer denies having knowledge of the new references prior to the expert witness bringing them to their attention. Since they are pertinent to patentability, they should be included. The applicant alleges that to allow their inclusion would effectively be widening the argument between the parties, complicates matters and wrongs the applicant.

Quoting M-Systems and Albermarle, the commissioner ruled that citations should be brought in the statement of case and to bring additional references later on was unfair to the applicant. However, basic knowledge and core texts rather than obscure refences may be submitted later (Unipharm vs Smithkline Beecham).

In the specific case, the new references upgrade the opposition from a question of inventive-step (obviousness) to one of absolute novelty. The Commissioner, however, noted that the prior art cited was known to the opposer and used to challenge inventive step. the commissioner refused to allow the statement of case to be corrected to take into account these new arguments.

As to whether the new references were to be understood as explaining the state of the art, or to be used to show anticipation, the Commissioner ruled that cited patents were clearly to show anticipation and there was a table submitted by expert to this effect. The Commissioner ruled that the two US patents could not be relied upon at any stage.

Since the applicant had argued that the expert witness’ testimony was unclear, the Commissioner ruled that whether the other citations were generally of value to explain the state of the art, or were illegitimately widening the grounds of the dispute was an issue that could be left until the cross-examination of the expert witness.

The Opposer also claimed prior use by the Applicant, that disqualified patentability. Applicant claimed that this was a new argument, and objected to this, however the Commissioner found support for this argument in earlier rounds and although considered it inappropriate to be raised substantively at this stage, ruled that it could be discussed, and costs could be awarded to compensate the applicant. Since the opposer had caused a further round of evidence to be required, the Commissioner ruled NIS 7000 (about $2000) costs to the applicant.

COMMENTS

As usual, the issue in question is one of formal requirements vs. substantive justice and uncovering the truth, with a good dose of equitable behavior or the lack thereof thrown in for good measure.

One should, however, bear in mind that the purpose of oppositions is ultimately to prevent invalid patents from issuing. If new evidence and arguments are not allowed to be discussed in an opposition, there is a second chance to raise the issues since the opposer can challenge the validity of the patent post-issuance by filing an annulment procedure. It seems to me that it is in the interest of the applicant to have certainty regarding the validity of the patent and so standing on procedure to prevent claims of anticipation from being considered seems silly. On the other hand, the opposer in Israel is a local company. The patent application in question was first filed in Holland and there are probably corresponding patents abroad. It could be in the applicant’s interest not to have arguments of anticipation discussed.

The two US patents, US 4,623,574 and US 3,766,148 were referenced by the Commissioner in his ruling. They are now in the file wrapper and can be discovered by defendants in Israel or abroad.  The Commissioner is an IP professional. Most judges are not. Anticipation or absolute novelty is an objective standard that requires an IP expert to rule on. Although I am, by nature, a formalist, I think that a ruling on whether these citations show lack of novelty would be helpful and useful.

The issue in question seems to relate to the novelty of hot pressed polyethylene fibers in ant-ballistic armor in 2002.  From my earlier life as a materials scientist, I think Professor Gad Marom of the Hebrew University had a student called Ziva working on this years earlier.

One Response to Can an expert witness add prior art as an appendix to his testimony, if not previously listed in evidence?

  1. Benny Attar says:

    This is an example of the sort of behaviour that makes engineers look down their noses at the entire legal profession. Instead of determining, factually, whether the applicant is the first inventor or whether “its been done”, using all available information, you have a bunch of highly paid legal types arguing over procedure. (Yes, I know it is far far worse in criminal courts)

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