Case No. O2013_013 ¦ Main hearing of 23 June 2016
This case is a nullity suit of Applied NanoStructures against the Swiss part of Nanoworld‘s European patent EP 1 860 424 B1, pertaining to self-aligning scanning probes for scanning probe microscopes; see Swissreg for further bibliographic details. More precisely, EP’424 pertains to scanning probes for alternative use, claimed as follows:
1. Scanning probes (1) for alternative use in a scanning probe microscope where the scanning probes (1) have a micro cantilever beam (4) whose one end (5) has a scanning tip (6) for scanning a sample and whose other end (13) has a holding element (2) for the non-permanent attachment of the scanning probe (1) a probe holder, and where the scanning probes (1) have a support element (3) secured in position on the probe holder for coupling and aligning the scanning probe (1), wherein corresponding alignment elements (8, 8′, 8″), (16, 16′, 16″) are incorporated in the holding element (2) and in the support element (3) that align the holding element (2) in automatically reproducible fashion relative to the probe holder when coupled with the support element (3) and wherein the micro cantilever beams (4) of the scanning probes (1) have different lengths (14) and in each case the distance (12) between the scanning tip (6) and a defined reference point (9) of the holding element (2) is constant, characterized by the feature that the reference point (9) is arranged in all cases of the scanning probe (1) at he same distance and in the same position to the alignment elements (8, 8′, 8″) of the holding element (2).
2. Scanning probes according to claim 1, characterized by the feature(s) that with the scanning probe (1), the distance (24) in each case between the defined reference point (9) of the holding element (2) and a front edge of the holding element (2) that is associated with the micro cantilever beam (4) is variable, depending on the length (14) of the micro cantilever beam (4).
This can be best understood with Figure 3 of EP’424 at hand:
A first court order in this matter has already been published more than two years ago, in April 2014; see this Blog here. The suit had already been filed in September 2013. Nothing has surfaced since then. But the parties have been quite busy in the meantime, with 26(!) submissions in total.
The plaintiff apparently argued in the writ that the subject matter of independent claim 1 is not novel over EP 0 444 697 A2 (referred to as D1), or — relatively global — at least not inventive. With the rejoinder, the defendant/patentee had submitted various auxilliary requests to maintain the patent at least in more limited form. I understood from what has been discussed in the hearing that the plaintiff did not expand on the lack of novelty and/or inventive step of these requests in his comment on the rejoinder. Rather, elaborated arguments with respect the alleged lack of an inventive step were only submitted later, i.e. with the comment on the interim assessment of the reporting judge. Apparently, these belated arguments had been held inadmissible by the court and were not considered any further. The plaintiff requested reconsideration in the hearing, though without success.
Apparently, the reporting judge had concluded that claim 1 as granted was not novel over EP’697 (D1), but that the combination of claims 1 and 2 was valid (see quotation above for the wording of claim 2). While the defendant/patentee did not agree with the novelty assessement of the reporting judge, it was pretty clear in my perception that maintenance of the patent in amended form (combination of claims 1 and 2) was kind of acceptable.
It has been noted in the hearing that co-pending proceedings at the Federal Patent Court in Germany (5Ni12/14(EP)) have also moved forward. In an interim assessment of 16 March 2016, the German court apparently held that claim 1 as granted is novel, but not inventive. This interim assessement of the German court has been accepted into the proceedings as proper novum; Art. 229 CPC.
As to the costs, it comes at no surprise that 26 submissions aren’t a bargain buy. The plaintiff incurred costs of CHF 217’000,–. On the other hand, the defendant/patentee submitted a cost note of EUR 85’000,– for the assisting patent attorney. Note that compensation for professional legal representation will be awarded within the ranges of Art. 5 CostR-PatC, in accordance with a value in dispute of CHF 250’000,–.
I had to leave before the parties were asked whether they wish to enter into settlement negotiations; but I have the dim feeling that, maybe … — well, let’s wait and see.
Reported by Martin WILMING
— BIBLIOGRAPHY —
Case No. O2013_013 ¦ Main hearing of 23 June 2016
Board of Judges:
- Dr. Dieter BRÄNDLE
- Dr. Tobias BREMI
- Peter RIGLING
- (not identified)
- Susanne ANDERHALDEN
Representative(s) of Plaintiff:
- Dr. Fabian LEIMGRUBER (Thomann Fischer)
Representative(s) of Defendant:
- Dr. Michael RITSCHER (MLL)
- Dr. Mark SCHWEIZER (MLL)
- Peter KLOCKE (Abacus), assisting in patent matters
— PATENT IN SUIT —