Case No. O2012_021 ¦ Main hearing of 23 September 2016
The file number says it all: It’s a quite old case — but a highly interesting one. It pertains to the performance-related heavy vehicle fee (HVF) levied in Switzerland.
The Robert Bosch LLC of Germany (plaintiff) is patentee of EP 0 741 373 B1, entitled “System for detecting the distance travelled by a vehicle in a given area”. Stakes are high: A compensation of more than CHF 60m has been claimed initially, for an alleged infringement of EP’373.
The plaintiff had partially surrendered the patent in February 2011 by limitation of claim 1 with yet another feature taken from the description, in accordance with Art. 24 lit. c PatA. The limited patent is published as CH/EP 741 373 H1. The only independent claim 1 now reads as follows (amendments over EP’373 marked-up):
System for detecting the distance travelled by a vehicle in a predefined area for the purpose of charging tolls, having the following features:
a vehicle device (FG) with which the distance travelled is continuously measured independently of the respective location is provided in the vehicle,
the vehicle device (FG) comprises an interface to a trip recorder (F);
fixed stations (ASE, ASA) which have means for receiving data emitted by a vehicle device (FG) are provided at least at the entries to the predefined area and the exits from the predefined area,
the vehicle device (FG) has means for transmitting data which communicate the current kilometre reading and a uniquely defined identification number to a fixed station (ASE, ASA) to be passed,
a control centre (Z) to which the fixed stations (ASE, ASA) forward the received data together with information on entry into or exit from the predefined area in order to charge tolls is provided.
Representative illustrations from EP’373:
In May 2011 the plaintiff had sued the Swiss Confederation for patent infringement at the Commercial Court of the Canton of Zurich, requesting injunctive relief and damages. In December 2011 the defendant denied the competence of the (civil) court, without expanding further on the merits of the case. It was alleged that the use of the HVF-registering system was a sovereign action / in public interest and that, as a result, the court was not competent. The case was transferred in January 2012; the FPC then had to decide on its competency and whether public or civil law is applicable. Thus, a first decision has been issued on 07 June 2012; see this Blog here. In a nutshell, the FPC had decided to consider the case as the competent court, for both infringement and damages.
The fulltext decision is embedded below, for avid readers:
The Supreme Court had a second look at it; see this Blog here. With decision of 05 February 2013 it confirmed that the Confederation has to face requests for injunctive relief under Art. 72 PatG, and the FPC has exclusive jurisdiction in this respect (Art. 26(1) lit. a PatCA). But the Supreme Court overruled the decision of the FPC with respect to the competency to decide on damages: Liability of the Confederation in this case is to be assessed under the Government Liability Act. The FPC has no jurisdiction in this respect; cf. Art. 10 of the Government Liability Act.
Here is the fulltext of the Supreme Court’s decision:
Long time no see: Nothing surfaced since then. Meanwhile, about 3.5 years(!) after the Supreme Court’s decision on competency, the patent has already lapsed on 19 April 2016 (see Swissreg for details). I had assumed the case had settled. Oh, how mistaken I was!
THE MAIN HEARING
The defendant apparently had lodged a nullity suit in reply. It was evident from the pleadings that the interim assessment of the reporting judge did not at all expand on the question of infringement. Instead, the reporting judge (only) held that the patent is not valid for lack of an inventive step, using the problem-and-solution approach. Both parties discussed EP 517 082 A2 as closest prior art.
The plaintiff apparently requested that the patent be maintained in amended form, essentially as follows:
First, on the basis of the claim according to CH/EP 741 373 H1, but with the further limitation that the vehicle device (FG) comprises an interface to the pulse output of a trip recorder (F).
Second, with additional features specifying a bi-directional radio communication of vehicle device (FG) and fixed stations in the frequency range of 5,795 to 5,815 GHz; and that the fixed stations at the entries and exits perform a functional test of the operability of the vehicle device (FG).
Third, with the additional feature that the bi-directional radio communication is carried out by the fixed stations.
Since the patent has lapsed in the meantime, injunctive relief was not an issue anymore. Instead, the plaintiff now requests a declaratory judgement that the patent (as amended) had been infringed. There was also no need anymore for issuance of a compulsory license and/or for a reasonable transition period; the defendant has withdrawn these requests.
The parties also discussed whether the plaintiff’s requests for declaratory judgement were specific enough; whether the plaintiff’s amendments of the claim were admissible after closure of the file; and, finally, the value in dispute which is far beyond the tariff in any event. The plaintiff estimated the value in dispute to CHF 15.5m. On the other hand, the defendant estimated at least CHF 77.5m (according to the initially claimed damages, incl. interest). As noted above, the FPC will not decide on damages. But the value in dispute will of course be relevant for the compensation of the successful party.
The parties finally entered into non-public settlement discussions.
Reported by Martin WILMING
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BIBLIOGRAPHY
Case No. O2012_021 ¦ Main hearing of 23 September 2016
./.
Swiss Confederation (represented by the Federal Department of Finance)
Composition of the Board of the FPC:
- Dr. Dieter BRÄNDLE
- Daniel VOGEL
- Dr. Christoph GASSER
- Dr. Christoph WILLI
- Dr. Markus A. MÜLLER
Reporting judge:
- Daniel VOGEL
Court Secretary:
- Susanne ANDERHALDEN
Representative(s) of Plaintiff:
- Dr. Mathis BERGER (Nater Dallafior)
- Peter RIGLING (TSW)
Representative(s) of Defendant:
- Peter WIDMER (Fuhrer Marbach)
- Dr. Cyrill Rieder (Fuhrer Marbach)
- Dr. Kurt SUTTER (Blum)
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PATENT IN SUIT
EP 741 373 B1:
CH/EP 741 373 H1:
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NOTES FROM THE HEARING
These updates are not sent out of the courtroom; there is no network connection anyhow. I use the breaks instead, and the time shortly before and after the hearing.
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