Case not considered for reasons of improper requests / Assessment of compensation

Case No. O2012_004 ¦ Decision of 24 August 2012 ¦ “Nichteintreten wegen ungenügendem Rechtsbegehren; Bemessung der Parteientschädigung”

This case started back in March 2010 at the cantonal court of Grisons. Written proceedings were already completed before the case was transferred to the FPC in December 2011. No settlement could be reached in a hearing on 23 May 2012. The FPC then submitted the opinion of the reporting judge to the parties: It was held that the patent – to the extent it was valid – was not infringed. The parties were invited to provide their comments. Within the same time limit, the plaintiff was invited to present a more precise request; the FPC explicitly noted that the case would otherwise not be considered.

Two aspects of this case are of particular interest:

1.  Non-consideration of the case because of insufficient wording of the requests

From a technical point of view, this case deals with an alleged infringement of EP 1 183 218 B1, pertaining to lightweight concrete. In brief, it was claimed that a lightweight aggregate is included which

[…] exhibits a screen-analysis curve that is graded between 0 and the largest grain size with at least 3 fractions, preferably more than 5 fractions, in particularly preferred manner at least 8 fractions.”

The initial requests filed by the plaintiff literally recited this feature of the claim, with or without the preferred ranges. In their counterstatement, the defendants objected to the unspecific wording of the requests. In reply, the plaintiff presented an additional request, wherein the lightweight aggregate was named as

Technopor Perimeter 50

(Author’s note: A leaflet with some details about this product can be found here, in German language only.)

The patent-in-suit fails to clearly define the term “grain size”, and the parties were of dissenting opinion on the meaning of this term. One may only conclude from the patent-in-suit that a grain size may well comprise a certain range of actual grain sizes. However, neither a clear definition of the breadth of such a range is given, nor the necessary amount of grains to be found in such a range in order to be considered as a grain size.

The plaintiff presented the following data of the grain sizes of Technopor Perimeter 50 (it was not contested that this product was used by the defendant):

The left column contains the mesh sizes of the screen plates (Maschenweite); the middle column shows ranges of the through fraction percentage of Technopor Perimeter 50 passing the respective screen plates (Siebdurchgang); the right column illustrates a typical value within these ranges. Referring to this data, the plaintiff alleged that it showed six grain sizes, but also admitted that there maybe more grain sizes if a finer distinction would have been made.

Thus, the FPC held that the request is evidently not specific enough for a bailiff to enforce the prohibition by mere factual inspection, but that interpretation of technical terms would still be required. The trade name Technopor Perimeter 50 did not help, either, since a product trade name can be changed, and/or a different product can be sold under the same name. Thus, a product trade name cannot replace the detailed description of the technical embodiment of the allegedly infringing product; cf. BGE 131 III 70 E3.3 and earlier posts on this topic (S2012_002 and S2012_003) for further reference.

The plaintiff did not further specify the requests, despite being invited to do so. Consequently, the FPC did not consider the case.

The FPC – again – clearly set out the rules for drafting proper requests, in accordance with the case law of the Federal Supreme Court. First, a proper claim feature analysis of the claim(s) is to be done. Next, the actual implementation of each and every claim feature of the alleged infringement is to be established and to be included into the request.

(Author’s note: It might perhaps have helped the case at least to be considered by the FPC if the plaintiff had relied on the ranges of typical through fraction percentages at hand in order to draft a more precise request.)

2.  Compensation of costs

The compensation for professional legal representation is governed by the value of the claim. The parties had agreed on a value of the claim of CHF 100’000,–.

According to the significance, difficulty and extent of the dispute and the attorney’s time spent for services rendered, a value of the claim in the range of CHF 50’000,– to 100’000,– shall correspond to a compensation in the range of CHF 10’000,– to 24’000,– (Art. 4 and Art. 5 CostR-PatC). However, there is some discretion to reduce or increase the compensation in exceptional cases (Art. 8 CostR-PatC).

The plaintiff argued that the compensation should be fixed at the lower side since the court finally did not consider the case. In contrast, the defendant asserted attorney costs of CHF 111’000,– (corresponding to 250 hours spent on the case), and yet further CHF 51’000,– (corresponding to 135 hours spent on the case) for the patent attorney’s costs. These costs incurred were harshly criticised by the FPC as “exorbitant”, “neither necessary nor useful” and “smashing the scale”. The FPC highlighted that the case was a relatively easy one; it took the reporting judge only eight pages to assess both validity and infringement issues. Moreover, neither a main hearing was held, nor was a procedure of taking evidence necessary.

Finally, the FPC fixed the compensation for attorney costs to CHF 24’000,–, thus exactly in accordance with Art. 5 CostR-PatC. An additional compensation for the assistance of the patent attorney was fixed to CHF 16’000,–.

(Updated 19 September 2012; author’s note: A previously published version of this decision erroneously indicated the compensation to be paid as CHF 30’000,–, in total. Apparently, a rectified version (now indicating CHF 40’000,–) was submitted to the parties two days after dispatch of the inital version. Unfortunately, the rectified version does not give any hint towards this error being corrected.)

Reported by Martin WILMING


Case No. O2012_004 ¦ Decision of 24 August 2012 ¦ “Nichteintreten wegen ungenügendem Rechtsbegehren; Bemessung der Parteientschädigung”

Misapor AG ./. (1.) Danko BASURA; (2.) Beton Val Mulin AG Schnaus


  • Patent infringement

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Vice President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

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