A heated debate over heat exchangers

Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”

This case is an assignment action of Marcel Riendeau against Zehnder Group International AG. The IP rights concerned are two European patent applications and the co-pending PCT applications, i.e.:

Back in 2009, the parties apparently entered into a cooperation based on a novel heat exchanger technology that had been invented by the plaintiff. A first patent application was filed in the name of Zehnder Verkaufs- und Verwaltungs AG — subject to final contracts to be concluded. This never happened. In the meantime, this application proceeded to grant as EP 2 618 090 B1; see the European Patent Register for any details. Interestingly, it has been assigned by Zehnder Group International AG to Westwind Ltd, the one-man business of Mr Riendeau. However, this assignment is already a story in itself: Apparently, Zehnder Verkaufs- und Verwaltungs AG first assigned the application to Marcel Riendeau with an agreement dated 5 May 2014. But later, it turned out that Zehnder Verkaufs- und Verwaltungs AG did not exist anymore at that date. Its legal successor was Zehnder Group International AG, the defendant on file.

At the technical side, the invention(s) pertain to heat exchanger elements schematically illustrated in the following figures. EP’834 and EP’836 explicitly recite polymer films being provided on the perforated plate element, while EP’090 holds that “[a]ccording to the inventions, the polymer is supplied as a dispersion”; see paragraph [0016].

The parties apparently also discussed the so-called extensions of the first patent. The importance to safeguard a filing date well before publication of the first application (EP’090) was apparently discussed, too. But the plaintiff did not trust the defendant to do so. Therefore, on 19 July 2013 he filed US 2013/269906 A1 on his own. Note that the two applications in suit were filed only later, i.e. 22 July 2013.

For the corresponding PCT applications WO’544 and WO’543 two additional inventors have been designated, i.e. defendant’s in-house patent attorney and the head of the R&D department.

This is only a rough overview of what appears to be a perfect mess. Interested in any further details? Plaintiff’s writ is available in its entirety from the EPO online files:

Download (PDF, 1.69MB)

Proceedings at the EPO are currently stayed on request of the plaintiff, in both cases.

In parallel main proceedings (O2015_009; no publication yet), plaintiff essentially requests that both patent families are to be assigned to him; and that the designations of the two additional inventors are to be withdrawn. As an interim measure, plaintiff essentially requested to impose a ban on defendant’s authority to dispose of the applications in suit.

Now, what did the defendant say? Interestingly, the decision holds that plaintiff’s detailed and well documented allegations remained essentially undisputed on the merits. The improper assignment of EP’090 did the rest to establish a certain risk / lack of due care if authority over the applications in suit remained with the defendant. Finally, the interim measures were held proportinate: defendant himself submitted that no transfer, granting of rights or amendments to the applications in suit was envisaged. However, no unconditional and binding declaration was submitted. Consequently, interim measures were granted as requested.

This decision in summary proceedings has already become final.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2015_003 ¦ Decision of 05 August 2015 ¦ “Gutheissung vorsorgliche Massnahme”

Marcel RIENDEAU ./. Zehnder Group International AG

Subject(s):

  • Assignment action / Interim measures

Board of Judges:

  • Dr. Dieter BRÄNDLE (President; Single Judge)
  • Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— DECISION IN FULL  —

Download (PDF, 277KB)

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