A dossier that has risen like yeast dough

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Case No. O2017_002 | Hearing of 5 February 2020

On 5 February 2020 the main hearing in this matter took place at the FPC. We have reported on this matter already on 3 February 2017 when ex parte interim measures had been denied (see this Blog here) and on 26 May 2017 when EPO prosecution and opposition proceedings had been stayed (see this Blog here).

Tomologic logo

In first place, Tomologic‘s EP 2 485 864 B1 (see EPO Register) is at stake. Bystronic requested that EP(CH) 864 be declared null and void, or that it be assigned to co-ownership as an auxiliary measure. Some further patents or patent applications are concerned in addition, in particular national parts of WO 2012/136262 A1 such as e.g. EP 2 694 241; see EPO Register).

Tomologic has countersued for infringement of EP 864 by Bystronic’s software product Bysoft 7 with the implemented function to create cutting plans:

As an introductory remark, the presiding judge invited Tomologic to provide a translation of a Swedish decision that had been submitted earlier; unfortunately, it was not indicated in the hearing what that decision was all about. Even though Bystronic had not commented on that Swedish document, the court felt «not at ease» with having a document on file which is not comprehensible for the judges.

Both parties gave PPT presentations. The presiding judge reminded the parties that this case was already extraordinarily voluminous, even before oral pleadings, and that there was no need to repeat the assertions already made in writing.

Clunky mike

Tomologic used flipchart sketches and short films in further support of the PPT presentation. In our perception, flipcharts are generally welcomed by the court. But how tho deal with the table-top microphone in such situations? Any drawer / presenter should be prepared to be reprimanded by the court clerk to use the microphone. Furthermore, flip chart collages, once they are completed, shall form part of the minutes and should not be re-arranged too heavily in later pleadings.

On the merits of the case, we understand that the judge-rapporteur’s expert opinion had been in favor of Bystronic, at least to the extent nullity of EP 864 is concerned. Claim 1 of EP 864 as granted reads as follows (underlined feature amended over claim 1 as originally filed; potentially distinguishing feature over the prior art highlighted in yellow):

  • Claim 1 of EP 864, marked-up
Method for machine cutting several parts out of a piece of material using a beam cutting technology, said method providing a set of controlling rules and variables for cutting two dimensional shapes or patterns, where one rule or a combination of several rules are used for the cutting operation depending on the shape or pattern to be cut, said shape or pattern forming said parts out of said piece of material, characterised in that said set of controlling rules comprises rules for the forming of a cluster of parts with free form shapes, said parts being positioned so close to each other so that only the thickness of one cut made by the cutting beam is found between adjacent parts whenever the shape of said parts allows it.

It appears that the introduction of «one cut made by» may have caused an issue under Art. 123(2) EPC. Further, the correct understanding of (rules for the forming of a cluster of parts with) «free form shapes» in the characterizing part of the claim was a big issue in the hearing.  In Tomologic’s view, this was a reference to «free form nesting». Free form nesting is a technique which — in contrast to «rectangular nesting» or «rectangular bounding box nesting» — arranges free form parts in a space-saving manner, based on perimeter segments rather than outer perimeter boxes.

In a nutshell, Tomologic held that the claim requires forming of a cluster by means of free from nesting. On the contrary, Bystronic held that it could only be the parts themselves which have a free from shape, without any indication whatsoever of the envisaged nesting technique. It is our understanding that only according to Tomologic’s interpretation, the respective claim feature might potentially constitute a differentiating feature over so-called rectangular nesting. At this point of the hearing, the linguistic discussion about English grammar was quite intense. Bystronic explained the difference by way of a «baking dilemma», i.e. that «baking products with yeast» is not necessarily the same as «products baked with yeast»; the term «with» could not be construed as «by means of» at will.

We understood that the expert opinion had apparently held that the feature as claimed is not much of a limitation, and that it does in particular not exclude rectangular clustering; see e.g. ¶ [0052] of EP 864 in this respect:

Faszination Blech

It has been referred in the pleadings re (lack of) novelty to JP H09-285886 (D1, also available as EN translation) and a further document called «Rao» (likely Rao et al., Int J Adv Manuf Tenchnol (2007) 33: 436-448; available here). Further, it was referred to the publication «Faszination Blech» (you cannot make this up).

We conclude from the pleadings that the above issues had likely not been resolved by Tomologic’s auxiliary request(s) to maintain and assert EP 864 in amended / limited form. Rather, the auxiliary request(s) occasioned further issues re clarity and, maybe, enablement.

Interestingly, Bystronic had initially requested a declaratory judgement of non-infringement; see p 1-9 of the complaint as filed and the FPC’s letter of 16 January 2017:

by the FPC, indicating the case number (O2017_002) and the subject-matter of the complaint, i.e. request for declaratory judgement of non-infringement.

We conclude from the pleadings that the court might have (partially?) not considered this request for declaratory judgement, but this remains to be confirmed in the final judgement.

The pleadings further circled around Bystronic’s alleged contribution to the subject-matter of EP 864, as the basis for the requested assignment to co-ownership. Note that Bystronic had initially requested assignment to co-ownership for the whole patent family of EP 864, as well as the patent family of WO 2012/136262 A1.

The value in dispute was indicated as 2m CHF for the main claim and 1m CHF for the counterclaim. Actual costs incurred by the parties apparently by far exceed the refundable amounts according to the tariff.

The parties finally agreed to have settlement discussions.

Reported by Jolanda MINDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2017_002 | Hearing of 5 February 2020

Bystronic Laser AG
./.
Tomologic AB

Panel of Judges:

    • Dr. Thomas LEGLER
    • Dr. Tobias BREMI
    • Christoph MÜLLER
    • Christophe SAAM
    • Dr. Rudolf RENTSCH

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Markus FRICK (Walder Wyss)
    • Manuel BIGLER (Walder Wyss)
    • Dr. Peter WALSER (Frei), assisting in patent matters
    • Dr. Markus MÜLLER (Frei), assisting in patent matters
    • Dr. Michael BERGER (Bystronic), assisting in patent matters

Former representative(s) of Plaintiff:

    • Catherine WEISSER
    • Paul ROSENICH (PPR), assisting in patent matters

Representative(s) of Defendant / Counterclaimant:

    • Dr. Simon HOLZER (MLL)
    • Martin TOLETI (Blum), assisting in patent matters
    • Dr. Christoph ENGELBRECHT (Blum), assisting in patent matters
    • Henrik HÄGGLÖF (Zacco), assisting in patent matters

ANNOUNCEMENT

 

PATENT IN SUIT

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