T 1138/20 - Review of findings of fact in appeal (VI)

Key points

• Board 3.5.03 expresses their view on the review of finding facts in appeal. The decision seems very important to me, especially for opposition cases involving public prior use and contested non-patent literature. I can recommend studying it in full. 
• The OD found the alleged public prior use to be proven after the hearing of two witnesses. The patentee contests this finding in appeal.
• "The boards of appeal constitute the first and final judicial instance and thus the only judicial body to establish both facts and law in proceedings before the EPO. As such, the boards have the power, at any stage of the appeal proceedings, to establish the relevant facts of the case before them and thereby substitute the findings of fact of the departments of first instance. However, the boards have no obligation to establish facts de novo already established by the departments of first instance ... "
• "it is not unheard of that national laws put restrictions on the competence of an appellate court to establish facts (see e.g., for Germany, section 529(1) DE-ZPO). However, such a limitation must be understood in the context in which the facts were established by a (first) judicial instance and subsequently reviewed by an appellate court as a second judicial instance. This situation differs from that under the EPC. In any case, such a restriction in relation to the boards of appeal has no basis in the EPC."
• "The review of findings of fact has simply nothing to do with the review of discretionary decisions. Discretionary decisions can only be reviewed for a particular type of errors (cf. G 7/93, Reasons 2.6), while a review of findings of fact has no such limitation."
• "Having the boards of appeal as final judicial arbiter of disputes arising in the context of the EPC is not a luxury to be had but it is a necessity to ensure compliance with international obligations, in particular that the proceedings under the EPC are in accordance with Article 6 of the European Convention on Human Rights, ECHR"
• "The present approach is also in line with the current practice of the boards of appeal: 
  If the findings of fact of the departments of first instance rely on documents, the boards regularly make an own assessment of the evidence. For example, the board may assess a patent proprietor's factual allegation that the available prior art differs from the invention by a specific feature so that the invention is novel within the meaning of Article 54(1) EPC, and come to a conclusion different from that of the opposition division. This may be, for example, because the (implicit) disclosure of a prior-art document is interpreted differently. What is done in such a situation is that the board indeed assesses the piece of evidence (i.e. the prior-art document) de novo and replaces the findings of fact of the opposition division with its own findings."
• " In case of oral evidence given by a party, a witness or an expert (Article 117(1)(a), (d), (e) EPC) or an inspection (Article 117(1)(f) EPC), the boards will normally not assess the evidence de novo by, for example, re-hearing the witness. In such a situation, the department having heard the witness is better placed to determine the probative value of the evidence given, in particular the credibility of the witness (i.e. the witness' truthfulness and honesty) and the reliability of the testimony (i.e. its accuracy, e.g. how accurately the witness remembers and recounts the events). The boards may then defer to the first-instance department's evaluation of evidence."
  
  
• Then, as a very important practical point for the parties to the proceedings: "the burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous. If the party succeeds in discharging this burden and demonstrating such an error, the board will establish the facts on its own if this is necessary for reaching a decision. Depending on the circumstances of the case, the board may also remit the case to the respective department for a new finding of fact (Article 111(1) EPC). For the sake of completeness, the following is noted: since the review of the decision is only one of the functions - albeit the primary function - of the boards of appeal, a board may, as mentioned above, also decide, at any stage of the appeal proceedings, to establish the facts on its own motion - even if no error was demonstrated by a party.'
• "For demonstrating an error in the fact-finding process, it will generally not be sufficient [for the party] to argue on appeal that the evidence on file would have allowed a different conclusion and that this conclusion was equally likely, plausible or reasonable. Such an argument is, by itself, normally not sufficient to meet the burden of showing an error. The mere fact that the body competent to establish the facts (be it the examining or opposition division) could have come to a different conclusion is typically not sufficient to demonstrate an error in the fact-finding process. Rather, in order to show an error, the party must demonstrate that no body competent to establish the facts and acting in a reasonable way could have come to this conclusion. In such a situation, the contesting party may successfully allege on appeal that the first-instance department did not fulfil its duty as outlined in point 1.2.3 above. For example, the party can argue on appeal that it had brought forward an - equally likely, plausible or reasonable - alternative to the department of first instance which the latter, however, did not properly consider in its fact-finding process or failed to explain in its reasons why this alternative was refused."
• 
  EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://new.epo.org/en/boards-of-appeal/decisions/t201138eu1.html

1.2.2 Evaluation of evidence

The evaluation of evidence is the genuine task of the trier of fact, that is, the deciding body that establishes the facts of a case. In the context of the EPC, these are the departments of first instance and the boards of appeal. Evidence is assessed in accordance with the principle of the free evaluation of evidence which also means that Article 117 EPC contains no hierarchy of evidence listed therein. As a consequence thereof, there are no firm rules defining which types of evidence are more, less or not at all convincing. Nor are there rules on the probative value of a particular piece of evidence based on its type, form or presentation. Instead, the question whether or not a fact can be regarded as proven has to be assessed on the basis of all the relevant evidence on file (see e.g. G 2/21, Reasons 34; G 3/97, Reasons 5; T 1604/16, Reasons 3.1.3).

1.2.3 Findings of fact and the obligation to provide reasons in the decision

The deciding body that establishes the facts of the case has to weigh all relevant evidence before it. In this regard, the department of first instance is the first deciding body in proceedings before the EPO competent to undertake this task. It has to establish the facts on which its decision is based. Depth and detail of such finding varies and in particular depends on whether or not certain facts are disputed. If the facts of a case are undisputed, it is sufficient to merely state in the decision the facts on which the deciding body relies. If the facts are disputed, however, it is incumbent on the deciding body to evaluate the evidence and to come to a conclusion as to which facts it regards as established. In doing so, the deciding body has a duty to determine the probative value of each relevant piece of evidence. This is particularly important if the evidence is a testimony given by a witness, a party or an expert. In such a case, the credibility and reliability of the evidence may play an important role. But also for any other means of evidence, e.g. documentary evidence, its probative value may be determined. Only then can the deciding body be convinced that an event indeed occurred as alleged.

As with any other findings of a deciding body, a finding of fact must be reasoned (see e.g. G 2/21, Reasons 31: "The reasons that led the judge to be convinced of the correctness or incorrectness of a contested allegation as to fact are to be set out in the decision."). Therefore, the deciding body, in considering the evidence on file, must give reasons in its decision on how it ultimately arrived at its finding of fact. This is particularly important if there is contradictory evidence on file, i.e. one piece of evidence points in one direction and another piece of evidence in an opposite direction. Then, the process of weighing the different pieces of evidence must be properly reflected in the reasoning of the final decision. In particular, the deciding body in its decision must address the pieces of evidence which contradict those facts as finally established and give reasons why it is convinced of certain facts despite evidence to the contrary.

1.2.4 Competence of the boards of appeal

The boards of appeal constitute the first and final judicial instance and thus the only judicial body to establish both facts and law in proceedings before the EPO. As such, the boards have the power, at any stage of the appeal proceedings, to establish the relevant facts of the case before them and thereby substitute the findings of fact of the departments of first instance. However, the boards have no obligation to establish facts de novo already established by the departments of first instance (see also T 42/19, Reasons 3.3: "However, it is settled case law that a board is not obliged to take all the evidence anew and that parties do not have the right to have the taking of evidence repeated at their request before the board"). This is so for the following reasons.

(a) Neither the EPC nor any decision of the Enlarged Board of Appeal limits the boards' competence to establish the facts. Under Article 114(1) EPC, the EPO examines the facts of its own motion. This examination has no further restriction in the law. The power to establish the relevant facts of the case before the boards of appeal is not limited to what the parties have provided or what the

first-instance department has established. In this context, it is not unheard of that national laws put restrictions on the competence of an appellate court to establish facts (see e.g., for Germany, section 529(1) DE-ZPO). However, such a limitation must be understood in the context in which the facts were established by a (first) judicial instance and subsequently reviewed by an appellate court as a second judicial instance. This situation differs from that under the EPC. In any case, such a restriction in relation to the boards of appeal has no basis in the EPC.

In relation to Article 114(1) EPC, the Enlarged Board of Appeal has restricted the boards' power to examine in its opinion G 10/91. However, this restriction is solely related to the examination of fresh grounds for opposition (see Reasons 18), not the establishment of facts. No restriction can be found in G 7/93, either. In this regard, it is noted that T 42/19 (see Reasons 3.4 and third Catchword) refers to the frequently cited obiter dictum in G 7/93, Reasons 2.6. However, the present board finds that the board's review of a

fact-finding process should not be conflated with the review of discretionary decisions within the meaning of G 7/93, Reasons 2.6 (see also T 1604/16, Reasons 3.1.8). The review of findings of fact has simply nothing to do with the review of discretionary decisions. Discretionary decisions can only be reviewed for a particular type of errors (cf. G 7/93, Reasons 2.6), while a review of findings of fact has no such limitation.

(b) Having the boards of appeal as final judicial arbiter of disputes arising in the context of the EPC is not a luxury to be had but it is a necessity to ensure compliance with international obligations, in particular that the proceedings under the EPC are in accordance with Article 6 of the European Convention on Human Rights, ECHR (see also T 1604/16, Reasons 3.1.7) and the WTO/TRIPS Agreement. The latter provides in Article 32 TRIPS that "[a]n opportunity for judicial review of any decision to revoke or forfeit a patent shall be available." In the same vein, Article 41.4 TRIPS in the context of enforcement proceedings requires that "[p]arties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions ...". The boards of appeal must be, and indeed are, a tribunal and a judicial authority within the meaning of these provisions. For the purposes of Article 6(1) ECHR, the "tribunal" must have "jurisdiction to examine all questions of fact and law relevant to the dispute before it" (see e.g. the judgment of the Grand Chamber in Ramos Nunes de Carvalho e Sá v. Portugal, 2018, § 176). If the boards did not have such power, in particular to examine all questions of fact, the users of the EPC system would have no recourse to a "tribunal" to review the decisions of the departments of first instance and, therefore, users would be deprived of an effective judicial remedy.

(c) The present approach is also in line with the current practice of the boards of appeal:

If the findings of fact of the departments of first instance rely on documents, the boards regularly make an own assessment of the evidence. For example, the board may assess a patent proprietor's factual allegation that the available prior art differs from the invention by a specific feature so that the invention is novel within the meaning of Article 54(1) EPC, and come to a conclusion different from that of the opposition division. This may be, for example, because the (implicit) disclosure of a prior-art document is interpreted differently. What is done in such a situation is that the board indeed assesses the piece of evidence (i.e. the prior-art document) de novo and replaces the findings of fact of the opposition division with its own findings. In case of oral evidence given by a party, a witness or an expert (Article 117(1)(a), (d), (e) EPC) or an inspection (Article 117(1)(f) EPC), the boards will normally not assess the evidence de novo by, for example, re-hearing the witness. In such a situation, the department having heard the witness is better placed to determine the probative value of the evidence given, in particular the credibility of the witness (i.e. the witness' truthfulness and honesty) and the reliability of the testimony (i.e. its accuracy, e.g. how accurately the witness remembers and recounts the events). The boards may then defer to the first-instance department's evaluation of evidence.

1.2.5 Burden of proof on appeal

The boards' primary function is to review the decision of the first-instance department in a judicial manner (see Article 12(2) RPBA 2020; see also G 9/91, Reasons 18). Hence, the parties on appeal may challenge any findings of fact made by the first-instance department in its decision, and the boards will review these findings. However, the burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous. If the party succeeds in discharging this burden and demonstrating such an error, the board will establish the facts on its own if this is necessary for reaching a decision. Depending on the circumstances of the case, the board may also remit the case to the respective department for a new finding of fact (Article 111(1) EPC).

For the sake of completeness, the following is noted: since the review of the decision is only one of the functions - albeit the primary function - of the boards of appeal, a board may, as mentioned above, also decide, at any stage of the appeal proceedings, to establish the facts on its own motion - even if no error was demonstrated by a party.

1.2.6 Reviewing errors in the fact-finding process

In the case at issue, the appellant has invited the board to review the opposition division's findings of fact. In this regard, the board finds helpful guidance in decision T 1418/17 where the deciding board identified three typical situations in which a finding of fact may be overruled, namely (i) the failure to take into account essential points, (ii) the consideration of irrelevant matters or (iii) the violation of the laws of thought, for instance in the form of logical errors and contradictions in its reasoning (T 1418/17, Reasons 1.3; see also T 42/19, Reasons 3.2). This list is not exhaustive, however. Since the boards have full competence to review findings of fact, there is no reason why a board should be limited in its review to these criteria (see T 1604/16, Reasons 3.1.10; see also T 42/19, Reasons 3.4 regarding the above as being a list of "typical scenarios"). Other situations may also warrant the conclusion that the first-instance department made an error in its fact-finding process. A finding of fact can also be reversed if it is not corroborated by the evidence on file. For example, the first-instance department may commit an error if, for a finding of fact, it refers to a piece of evidence (e.g., what the witnesses have testified) that objectively is not suitable to support such a finding (e.g., because the witnesses did not say what the department imputes to them) and no other evidence corroborates the finding (see also point 1.3.6 below). A further example in this context would be that the deciding body relies solely on witness evidence for a fact that the witness cannot, or does not claim to, have witnessed (see also point 1.3.7 below).

For demonstrating an error in the fact-finding process, it will generally not be sufficient to argue on appeal that the evidence on file would have allowed a different conclusion and that this conclusion was equally likely, plausible or reasonable. Such an argument is, by itself, normally not sufficient to meet the burden of showing an error. The mere fact that the body competent to establish the facts (be it the examining or opposition division) could have come to a different conclusion is typically not sufficient to demonstrate an error in the fact-finding process. Rather, in order to show an error, the party must demonstrate that no body competent to establish the facts and acting in a reasonable way could have come to this conclusion. In such a situation, the contesting party may successfully allege on appeal that the

first-instance department did not fulfil its duty as outlined in point 1.2.3 above. For example, the party can argue on appeal that it had brought forward an - equally likely, plausible or reasonable - alternative to the department of first instance which the latter, however, did not properly consider in its fact-finding process or failed to explain in its reasons why this alternative was refused.