EP 2 364 938 B1 relates to a “Method for operating an overload bridge”.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board confirmed the rejection of the opposition.
The opposition was mainly based on a PPU.
The opponent tried to demonstrate that an overload bridge of 2017, subject-matter of the said PPU, corresponded to the original version of 2008 of the same overload bridge.
This was neither accepted by the OD nor by the board.
The opponent further requested that questions were referred to the EBA and raised an objection under R 106. Both those requests were rejected.
The opponent’s point of view
The opponent contested the findings in OD’s decision that the functioning of the control unit in 2008 had not been proven and argued that this was contrary to the evidence, based on an erroneous assessment of the evidence, on an erroneous standard of proof and on the fact that available or proffered evidence had not been taken into account.
According to the opponent, when correctly assessing the available evidence, it had been proven that the control system supplied had remained unchanged between 2008 and 2017, so that the circuit documented in 2017 corresponded to the circuit in 2008, and that the videos reflected the state of the system in 2008.
This was corroborated by the statements of the witnesses Schiefner, Bräuer, Noetzig, Gündel, Pohlenz, Sonne and Jark. The opponent argued, inter alia, that no change in the control unit could be carried out, the control unit shown was the original control unit from 2008, and the original condition could be verified by visual inspection.
In addition, the OD applied too high a standard of proof. There is no explanation of the standard of proof applied in the contested decision, so that it is also not substantiated in essential points. In the present case, the standard of proof of the balance of probabilities should be applied.
Request for an expert opinion and inspection on the spot
The opponent further argued that the rejection of its requests for an expert’s inspection and opinion to substantiate the documentation on the PPU constituted a violation of a party’s fundamental rights to a free choice of evidence and to be heard.
The opponent argued that the statements in the contested decision on the rejection of the request for an assessment of the PPU by an expert appointed by the EPO contradicted the requirements of R 121.
The board’s decision
The board did not share the opponent’s view that the evidence was incorrectly assessed and insufficiently taken into account.
The board considered the OD’s assessment of the evidence with regard to the consideration and assessment of the witness statements, written evidence and videos on the disputed feature of the functioning of the control system on delivery in 2008 to be consistent and logical and free of legal errors.
Rather, the opponent’s objections are based on the fact that the opponent draws different, i.e. subjective, conclusions from the statements of the witnesses and evidence.
However, the mere drawing of such different conclusions in or from the witness statements and evidence does not mean that they were proven and thus that the OD’s assessment of the evidence, which it made according to the principle of free assessment of evidence under G 2/21, Reasons 30, 45, was erroneous.
That the OD applied too high a standard of proof in its decision is a mere assertion by the opponent.
For the board, the OD applied the standard of proof of the balance of probabilities, so that the opponent’s objection of a lack of reasoning in the contested decision is thus irrelevant.
Commissioning an expert and visual inspection
The board was not convinced by the opponent’s argumentation, based on mere allegations, that the OD exercised its discretion, not to admit an inspection, incorrectly.
On the contrary, the board shares the view of the OD that a mere inspection of the current state of the installation was unsuitable for determining the original state and functioning of the circuit in 2008. The assessment of the OD in this matter, that it is not possible for technical reasons to recognise whether changes have been carried out or not was, in the view of the board, readily comprehensible and not objectionable.
In view of the unsuitable probative value of a visual inspection, the OD therefore rightly rejected this offer of evidence.
The board followed the reasons given in the contested decision rejecting the request for an expert appointed by the EPO to assess the PPU.
The board noted that, since the opposition procedure is an inter partes procedure, the OD is in principle not required to adduce evidence for reasons of impartiality. It is for the opponent to provide evidence of the PPU on which it relies.
The fact that the opponent itself did not provide an expert opinion in this situation was solely due to the opponent’s own decision on how to conduct the proceedings.
The OD stated in the decision, that no expert opinion was required, since itself, with three technically trained examiners, had the necessary technical knowledge to assess the relevant question of whether the circuit of the installation could be changed without this being apparent from the present state of the installation.
As stated in G 2/21, Reasons 42 and 43, the taking of evidence in any of the forms listed in Art 117(1) is at the discretion of the respective department and is ordered by it only if it considers it necessary.
Due to the established unsuitability and resulting lack of relevance of the offers of evidence in question here, their rejection was therefore justified in the present case, so that there was no violation of the appellant’s right to be heard.
Comments
The present decision reminds us that the free evaluation of evidence by an OD is not easily challenged in appeal. Drawing different, i.e. subjective, conclusions from the statements of the witnesses and the evidence, do not allow to invalidate the evaluation of the OD. It is a discretionary decision, and as such, is only set aside by a board if the first instance decided incorrectly or using the wrong criteria.
I do not remember a case in which the EPO has, on its own volition, commissioned an expert to the evaluation of facts alleged by a party, but I might be wrong.
This is why a first instance deciding body is always composed with three technically qualified examiners. Some representatives might have a different opinion about the competence of a first instance deciding body, but this is then a personal view.
A first instance division I was chairing has once be accused to be thick as two planks and hence was loosing the representative’s time….
Parties are free to bring an expert opinion in the procedure. This expert opinion will be assessed according to G 2/21. The fact that a former member of the boards is called in as expert for a party is, in general, not well received.
Comments
Leave a comment