A partial waiver that did not do the trick

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Case No. 4A_583/2019 (Supreme Court) | Decision of 19 August 2020 on appeal against O2016_012 (FPC) | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

I have reported about the first instance decision in this matter on this Blog here. It was a controversially discussed decision — not only by practitioners after publication, but already in the making: It was a split decision, with a dissenting opinion supported by two of the five judges.

A quick recap
Implantec’s logo

The patent in suit is EP 1 411 869 B1; see Swissreg and EPO Register for further information. Stemcup asserted that Implantec‘s ANA.NOVA® hybrid socket infringes the patent.

Stemcup’s logo

Stemcup had partially waived EP 869 at the IPI, to overcome the judge-rapporteur’s finding in his expert opinion with respect to a presumably undue extension of subject-matter. The partial waiver had thus been filed at a very late stage of the proceedings, i.e. only after formal closure of the file and only about nine months after the defendant’s rejoinder wherein the undue extension of subject-matter had first been asserted.

The partial waiver has been published on 15 August 2018. Independent claims 1 and 2 now read as follows (inofficially translated; changes marked-up):


Claim 1

A joint prosthesis (1) with a base body (10) for knocking into a bone, characterised in that there are arranged at least two locking elements (20) on the outer side of the base body (10) which in each case comprise at least one knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

Claim 2

A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

On the merits, this was no big deal. The FPC had emphasized that the patent after the partial waiver fits smoothly into the subject-matter as it had been already discussed in the proceedings, and the parties’ right to be heard had well been observed.

The FPC had further held that the plaintiff made use of a possibility that is explicitly provided for in Art. 24 PatA, and that this partial waiver is effective ex tunc, i.e. the patent is treated as if it had been granted only to that extent right from the outset. This is a new fact within the meaning of Art. 229(1) lit. a CPC (proper novum), because the patent in that limited form was only created after the formal closure of the file. The FPC had held that the fact that the plaintiff could have requested the partial waiver with the IPI well before the closure of the file, or that the partial waiver represents a new fact created by the plaintiff himself, does not change anything in this respect.

Further, the FPC had held that the proceedings have not become devoid of purpose, as the defendants had argued; this would only be the case if no patent existed at all anymore. 

And now … forget all of that!

The Supreme Court disagreed, entirely.

A strictly literal interpretation of Art. 229(1) CPC does not sufficiently take account of the fact that all party submissions must be made within a certain stage of the proceedings, i.e. one must not conveniently hold back facts and only submit them later (‘Eventualmaxime’). There are two aspects to that: On the one hand, facts must be presented in a concentrated manner; and on the other hand they can — in the interest of material truth — still be submitted later, under certain circumstances. The Supreme Court holds that it would contradict the first aspect if facts that are subsequently created by a party, which — depending on the decision of this party — could have already existed before the closure of the file, would qualify as proper nova. Further, it is not that the second aspect would require that the belated fact be taken into account.

The admissibility of new facts, the creation of which depend on the will of a party, is thus governed by Art. 229(1) lit. b CPC, i.e. it has to be shown that they could not have been submitted earlier, despite reasonable diligence.

This is essentially as has been argued in O2017_014 (see this Blog here), with reference to the decision ES 2018 449 of the Cantonal Court Zug.

In the case at hand now, the undue extension of subject-matter had first been alleged by the defendant already with the rejoinder. The Supreme Court holds that this should have prompted the plaintiff / patentee to fix it. Reacting only after receipt of the judge-rapporteur’s expert opinion was belated.

Finally, the Supreme Court holds that the patentee has no legal interest in a judgment on the patent as initially granted, since it does not exist anymore after the partial waiver. Note that the legal interest has to be examined ex officio. On the other hand, the partially waived patent cannot be admitted into the proceedings, as outlined above. Acordingly, the case has to be dismissed as devoid of purpose.

Thus, the Supreme Court lifted the FPC’s decision and dismissed the case as devoid of purpose. The case has been remitted to the FPC, to decide on the costs.

Now we know … what we don’t know

It is perfectly clear now that a partial waiver after closure of the file, to react on the judge-rapporteur’s expert opinion, does not generally do the trick. At least not in those cases where one could — and should — have reacted earlier. It won’t work anymore for a patentee to just wait and see whether the judge-rapporteur follows a nullity argument, and to only react with a partial waiver when needed in view of the expert opinion.

But what if the judge-rapporteur comes up with a certain reasoning in respect of an issue that is to be examined ex officio (e.g. a clarity issue in an amended claim in nullity proceedings), without it having been pleaded by the other party? Perhaps, one might still argue that one could not have submitted the partial waiver earlier, despite reasonable diligence in such cases?

Further, I wonder what happens when a plaintiff failed with his complaint for some validity issues, he then partially waives the patent later-on and sues the same defendant for the same attacked embodiment again. It’s not the same patent anymore, in my reading of the present decision. Thus, it is not yet res iudicata(?).

Patent litigation will surely remain exciting.

Oh, and I feel that the present decision might have a huge impact on some pending cases. For instance, the plaintiff / patentee in O2018_004 has partially waived the patent after receipt of the judge-rapporteur’s expert opinion. The main hearing is scheduled for 3 September 2020; see this Blog here. Maybe, we will see some creative lawyering as to why this partial waiver could not have been made earlier, despite reasonable diligence.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_583/2019 (Supreme Court) | Decision of 19 August 2020 on appeal against O2016_012 (FPC) | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

(1) Implantec GmbH Appellants / Defendants
(2) Endoprothetik Schweiz GmbH
(formerly ImplanTec Schweiz GmbH)
./.
Stemcup Medical Products AG Respondent  / Plaintiff

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Nicolas CURCHOD

Representative(s) of Appellants / Defendants:

    • Dr. Michael RITSCHER (MLL)
    • Noëlle STALDER (MLL)

Representative(s) of Respondent / Plaintiff :

SUPREME COURT DECISION

FPC DECISION

PATENT IN SUIT

EP 1 411 869 B1 (as initially granted):

 

EP(CH) 1 411 869 H1 (after partial waiver):

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