Case No. O2020_018 | Hearing of 18 November 2021
As indicated already in the public announcement of the hearing, defendant BD had requested assistance from the Swiss Federal Customs Administration, targeted against (a) certain product(s) of plaintiff Ypsomed. The customs administration subsequently indeed detained two shipments, i.e. one shipment of ‘SoloStar’ injection pens on July 30, 2020, and a shipment of components of ‘UnoPen‘ injection pens on August 5, 2020. Both shipments were released after a short period of time without the defendant filing a request for judicial seizure.
On a sidenote: It is not that BD did not do anything. BD had already lodged infringement proceedings against Ypsomed on 10 January 2020. The FPC has dismissed the complaint with decision of 9 June 2021; see this Blog here. An appeal is currently pending at the Supreme Court.
Ypsomed now claims that the customs assistance measures were applied for improperly / abusive, and claims compensation for the damage it allegedly suffered as a result of the detention.
BD denies that the conditions for a claim for damages are met; moreover, Plaintiff has not been able to prove any financial damage in any event.
At the main hearing, Ypsomed painted a bigger picture and argued that customs assistance was not meant to be used for securing evidence of patent infringement, but rather (only) to stop piracy — which was not at stake here. Ypsomed was obviously fearing that its frequent exports of injector pens of various kind was in danger, at a larger scale. Further, Ypsomed complained that it had not been given sufficient access to the files of the proceedings at the customs. Only a redacted version of BD’s request was provided, but the actual request explicitly referred to features described in a fully redacted chapter. I understand that proceedings are co-pending before the Federal Administrative Court in this respect.
BD softpedalled the matter, essentially arguing that it simply used customs assistance, in full compliance with the law. As a matter of fact, customs assistance measures could be in place against anyone at any time, without knowledge thereof. That’s the whole point of the provision. BD argued that the present case actually shows that the system works smoothly. Both deliveries were released very quickly. The first one with ‘SoloStar’ injector pens could have been released even more quickly if Ypsomed’s counsel would only have provided a little more information over the phone when BD’s counsel asked for technical details of the retained ‘SoloStar’ pens.
Now, what’s the point of customs assistance when main proceedings are already pending and the allegedly infringing embodiment is available on the market, or plaintiff obviously has knowledge of the detailed mechanics of the allegedly infringing embodiment otherwise? At one point, Ypsomed referred to a correspondence between BD’s counsel and the customs administration, indicating that BD was seeking to clarify
[…] in which form or with which components Ypsomed exports the UnoPens from Switzerland.
Now, that makes sense! I understand that Ypsomed had argued in O2020_001 that BD’s patent required a cartridge with the medicament as part of the injector pen; see ¶ 27 of the FPC’s judgment in O2020_001. Accordingly, I assume that BD wanted to find out whether or not Ypsomed actually delivered ‘UnoPens’ with or without such cartridges. The timing fits well: The shipments were detained after Ypsomed’s answer and only after the instruction hearing, but (likely) before BD’s reply in O2020_001.
The parties did not enter into settlement discussions on the spot. The President indicated that a judgment (or an order on taking evidence) can only be expected in 2022, in view of the current workload.
Reported by Martin WILMING
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BIBLIOGRAPHY
Case No. O2020_018 | Hearing of 18 November 2021
| Ypsomed AG | |
| ./. | |
| Becton, Dickinson and Company |
Panel of Judges:
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- Dr. Mark SCHWEIZER
- Christoph MÜLLER
- Dr. Rudolf RENTSCH
Court Clerk:
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- Dr. Lukas ABEGG
Representative(s) of Plaintiff:
Representative(s) of Defendant:
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- Dr. Simon HOLZER (MLL)
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ANNOUNCEMENT
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SOME LIVE NOTES FROM THE HEARING
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BE ON THE KNOW
