A flow sensor in limbo: Up, and down. Up, and … – down or done?

Case No. O2019_008 | Decision of 17 December 2019, on remittal of 4A_70/2019 | Decision of 6 August 2019 | ‘Flow sensor II’

The flow sensor litigation between Hamilton Medical and imtmedical is popping up once in a while. We had reported already on this Blog about the main hearing of 29 October 2018, the first decision of the FPC (case O2016_009 of 18 December 2018) and the Supreme Court decision (case 4A_70/2019 of 6 August 2019). The Supreme Court had remitted the case to the FPC, to assess one specific issue; see 4A_70/2019, ¶2.5.4:

Inofficially translated:

[The FPC] did not examine whether there was a causal connection between the improper novum [document E10] in the rejoinder and the verbal limitation of the patent claim, i.e. whether the limitation was specifically occasioned by [E10]. The case must thus be remitted to [the FPC] for assessment of this issue.

Now, was the verbal limitation of the patent been occasioned by E10 (JP S61-205023) that had been submitted only with the rejoinder? The decision discusses three criteria in order to assess this question; ¶ 16:

1. 1. Is the limitation admissible; Art. 24 PatA?
   2. Is the claimed subject-matter after the limitation new and non-obvious?
   3. Does the limited claim still cover the attacked embodiment?

All three criteria are met here. And the decision holds that it would not be realistic to assume that this just happened by accident:

It is hardly conceivable that the patentee would come up with a permissible limitation leading to a claim which is infringed by the attacked embodiments without reacting to [E10 and other prior art] in a technical sense.

But what is more, the plaintiff specifically argued why the limited claim was new and non-obvious over E10. Accordingly, the decision holds that the limitation had effectively been occasioned by E10. 

A further aspect of the decision relates to timing. The law requires submission of improper nova (such as a limitation of the claims) ‘immediately’; Art. 229(1) CPC. The decision holds that a submission within 10 days is fine, but not mandatory: As long as a time limit is currently pending for the respective party for a submission on the merits of the case, submission of the novum within that time limit is also fine.

The Supreme Court had already made clear that the mere fact that the plaintiff had presented the very same limitation with the second part of the reply (according to the old practice) is irrelevant; see 4A_70/2019, ¶ 2.5.3.

Still, I am bursting with curiosity: How comes that the plaintiff had limited the claim in exactly the same way with the completed reply, i.e. at a time when E10 had not yet been at stake? Is that just a coincidence? I can hardly believe that.

From the Supreme Court decision in ¶ 2.5.3, one might read between the lines that E10 had been at stake at the instruction hearing:

On the other hand, the present decision clarifies that E10 had not been at stake in the informal part of the instruction hearing:

Anyway, it is left explicitly undecided whether a mentioning of E10 in the informal part of the instruction hearing would have allowed the plaintiff to react thereon in any event, in view of Art. 8(4) lit. b of the Guidelines on Proceedings before the FPC.

Maybe, E10 had been discussed between the parties, outside of the court proceedings? There is an obiter dictum in the decision that suggests that this would not oblige the plaintiff to react on this in the proceedings in advance:

In sum, the FPC confirmed the substance of the earlier decision.

So, that’s it?

No, not yet. The advantage of being late with this report is that I now already know that this decision has (again) been appealed to the Supreme Court. Up, and down. Up, and … – down? Or done? We shall see.

Reported by Martin WILMING

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BIBLIOGRAPHY

Case No. O2019_008 | Decision of 17 December 2019, on remittal of 4A_70/2019 | Decision of 6 August 2019 | ‘Flow sensor II’

Hamilton Medical AG	(Plaintiff)
./.
imtmedical AG	(Defendant)

Panel of Judges:

• • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Lorenzo PARRINI

Judge-rapporteur:

• • Dr. Tobias BREMI

Court Clerk:

• • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

• • Dr. Christoph GASSER (BianchiSchwald)
  • Renato BOLLHALDER (Bohest), assisting in patent matters

Representative(s) of Defendant:

• • Dr. Rudolf RENTSCH (IPrime)
  • Ernst BREM (IPrime)
  • Joachim KÜNSCH (PPR)

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SECOND FPC DECISION

on remittal of 4A_70/2019 | Decision of 6 August 2019:
O2019_008	17 December 2019

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SUPREME COURT DECISION

on appeal against O2016_009 | Decision of 18 December 2018:
4A_70/2019	6 August 2019

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FIRST FPC DECISION 

O2016_009

18 December 2018

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CH 701 755 B1

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