As discussed a while ago on this Blog here, the settlement discussion at the occasion of a main hearing is non-public at the FPC. I trust that this will not change any time soon, in view of a decision of the Supreme Court that has been published earlier this week (4A_179/2019 of 24 September 2019). In that case, an accredited court reporter of the Republik had been asked to leave the room for the settlement discussion at the end of a main hearing in proceedings at the Zurich labor court. Ultimately, the Supreme Court has now endorsed this exclusion of the public from the settlement discussion:
Die Bemühungen des Gerichts, zwischen den Parteien zu vermitteln, gelten nicht als Gerichtsverhandlung respektive Verhandlung und unterstehen nicht dem Grundsatz der Justizöffentlichkeit.
Maybe, the Supreme Court telegraphed a message by explicitly saying nothing (emphasis added):
Demgegenüber ist hier nicht zu beurteilen, ob es zulässig wäre, die Öffentlichkeit über die Vergleichsgespräche hinaus generell von Instruktionsverhandlungen auszuschliessen, zumal an solchen nach Art. 226 Abs. 2 ZPO unter anderem auch der Sachverhalt ergänzt und die Hauptverhandlung vorbereitet werden kann ([…]).
In English (emphasis added):
On the other hand, it is not necessary here to assess whether it would be permissible to generally exclude the public from instruction hearings beyond the settlement discussions, especially since, according to Art. 226 para. 2 CPC, the facts of the case can be supplemented and the main hearing can be prepared in the instruction hearings ([…]).
The FPC took note. Here is the FPC’s tweet of earlier today:
BGer vom 24. September 2019: Gericht darf Öffentlichkeit, inkl. Medien, von informellen Vergleichsgesprächen ausschliessen; offen gelassen, ob das auch für den formellen Teil der Instruktionsverhandlung gilt; https://t.co/3bkf7ZyXiTpic.twitter.com/0zi1jYGjNp
Indeed, the Supreme Court did leave it undecided whether the public could also be excluded from the formal part of an instruction hearing. Still, the Supreme Court made it crystal clear that it does not want to see its judgement being read on instruction hearings in general, in view of what is (or maybe) going on in (the formal part of) an instruction hearing — contrary to mere settlement discussions, be it during a main hearing or an instruction hearing.
In my perception, that’s a somewhat deafening silence on this issue, isn’t it?
Hepp Wenger Ryffel is involved in this case on behalf of the plaintiffs.
This infringement case is about EP 1 624 810 B1 and EP 1 408 850 B1; see EPO Register (here and here) and Swissreg (here and here) for further bibliographic information. Plaintiffs (Abbott et al.) asserted that defendants (Edwards et al.) are infringing the Swiss parts of EP’810 and EP’850 with their PASCAL Transcatheter Mitral Valve repair (TMVr) device.
The decision holds that PASCAL infringes claim 1 of EP’850 (¶¶ 62-70), and that this claim is valid over the prior art referred to by defendants as a plea in defense, i.e. US 3,874,388 (E5), WO 96/32882 A1 (E6) and CN 1 142 351 A (E7); ¶¶ 48-61. Preliminary injunctive relief was thus granted, based on EP’850.
As to EP’810, the decision holds that claim 1 is not infringed; ¶¶ 31-34.
Not easily reparable harm
Defendants contested that MitraClip itself is covered by the patents in suit; plaintiffs disagreed. The decision holds that this is irrelevant in any event. The irreparable harm of plaintiffs 1 and 3 depends on whether their own product is competing, since experience has shown that this leads to a loss of turnover, the extent of which is difficult to prove. Mere reference to potential financial compensation does not eliminate the irreparable harm; ¶ 77.
Precautionary measures must be proportionate in the sense that the content of the ordered measure must be suitable to avert the asserted disadvantage and must not go further than is absolutely necessary to avert the disadvantage (‘proportionality in the narrower sense’). Whether the adoption of precautionary measures may also be made dependent on the fact that the precautionary measure applied for does not encroach disproportionately heavily on the legal sphere of the defendant (‘proportionality in the broader sense’) is controversial.
In the present case, the FPC could leave this issue undecided because the defendants did not claim that the precautionary measure applied for has a disproportionate impact on their legal sphere, but that it is in the public interest that the marketing of the PASCAL device in Switzerland should not be prohibited as a precautionary measure.
The decision holds that — while it is controversial whether the adoption of a precautionary measure can be refused if it disproportionately affects the interests of the defendant — it is clear that public interests are not to be taken into account when it comes to weighing of interests: The PatA provides for a system of compulsory licences which, in principle, closes the gap in order to protect public interests from being jeopardised by the enforcement of patents. In particular, Art. 40 PatA provides for a compulsory licence in the public interest. In passing, the decision notes that it has not yet been decided in Switzerland whether the claim to a compulsory license can also be invoked in summary proceedings. Note that this has been answered in the affirmative in Germany recently; BGH X ZB 2/17 — Raltegravir.
Anyway, defendants did not claim that they should be granted a compulsory license in order to protect public interests. In particular, defendants had not submitted a license offer to the patentee at reasonable market conditions which the patentee has not accepted within a reasonable period (cf. Art. 40 in conjunction with Art. 40e (1) PatA). Accordingly, the objection that the requested measures were disproportionate has been rejected.
These considerations in ¶¶ 80-82 are what the FPC referred to in the following Tweet:
Decision of 15 August 2019 in case of Evalve etc v. Edwards Lifesciences etc re
preliminary measures (partial grant): public interest in stay of injunction must be argued under compulsory license (art. 40 Patent Act), https://t.co/fFCySp4uTUpic.twitter.com/L8g0uMrWUx
Lack of clarity is not a ground for invalidity. However, in order for a prayer for relief for limitation of claims in a patent nullity suit to be admissible, it must also be sufficiently determined. Therefore, the limitation of claims must be clearly formulated. The waiver of a granted independent claim constitutes a limitation of the patent, but this waiver cannot raise a question of clarity if, apart from the waiver of a granted independent claim, a mere reformulation of a granted dependent claim is made as an independent claim (¶34).
The case was split into two separate proceedings (O2016_010 for EP’250 and O2016_011 for EP’018). We have reported about the main hearing in both cases on this Blog here.
O2016_010 re EP’250
Uster did not defend the patent as granted but rather filed a main request (MR) and six auxiliary requests (AR1 to AR6) to maintain EP’250 in limited form. In response, Loepfe argued that all requests contained subject matter that went beyond the application as originally filed, and that all claims lacked an inventive step over several combinations of prior art documents. Novelty, however, was not at issue.
Loepfe alleged that several features of the MR were not disclosed in the application as originally filed. The FPC disagreed to large extent, except with regard to the feature of symmetric balancing without a reference capacitor. Briefly, the decision holds that the application as filed only disclosed symmetric balancing w a reference capacitor, and does not provide any teaching related to how symmetric balancing could be done w/o a reference capacitor. Thus, the MR failed because of added matter.
AR1 and AR2 failed for the very same reason.
AR3, however, had a reference capacitor included and could thus be considered further on the merits. Here is the structured feature analysis of AR3:
Claim 1 of AR3
In German language only; I’m sorry. Markup over claim 1 as initially granted (additions and deletions) for the changes made already in the MR; additional markup for AR3 in italic. Mere changes of the order of the features are not marked-up. Identifiers of the features are as used in the decision.
Verfahren für den Symmetrieabgleich einer Vorrichtung (1)
zur kapazitiven Untersuchung eines bewegten länglichen textilen Prüfgutes (9) wie Kardenband, Vorgarn, Garn oder Gewebe
mittels einer Kondensatoranordnung (21),
welche Vorrichtung (1) eine Auswerteschaltung (6) zur Auswertung mindestens einer elektrischen Messgrösse eines an einer die der Kondensatoranordnung (21) beinhaltenden Messschaltung (2) abgegriffenen elektrischen Signals,
einen Referenzkondensator (22), welcher in Serie zur Kondensatoranordnung (21) geschaltet ist,
mindestens einen Wechselsignalgenerator (3) zum Anlegen eines elektrischen Wechselsignalsvon zwei elektrischen Wechselspannungen mit entgegengesetzten Phasen an die Kondensatoranordnung (21) bzw. an den Referenzkondensator,
wobei die Kondensatoranordnung (21) vom Wechselsignalgenerator (3) durch eine Filter- und/oder Verstärkerstufe (5) zur Filterung und/oder Verstärkung des vom Wechselsignalgenerator (3) erzeugten Wechselsignals derart abgekoppelt ist, dass sie Parameter des vom Wechselsignalgenerator (3) erzeugten Wechselsignals nicht beein- flusst,
die in einem elektrischen Pfad zwischen dem Wechselsignalgenerator (3) und der Messschaltung (2)Filter- und/oder Verstärkerstufe (5) angeordnet sind und mittels derer mindestens ein Parameter des elektrischen Wechselsignals derart veränderbar ist,
dass ein Ausgangssignal der Auswerteschaltung (6) bei definierten, konstanten Bedingungen einen bestimmten Wert, vorzugsweise Null, annimmt, und
Steuermittel (7) zur Abgabe eines elektrischen Steuersignals an die Abgleichmittel (4), mittels dessen die Veränderung des mindestens einen Parameters steuerbar ist,
wobei die Kondensatoranordnung (21) ohne Prüfgut (9) im Wesentlichen zeitlich unverändert belassen wird,
ein elektrisches Wechselsignal von dem mindestens einen Wechselsignalgenerator (3) erzeugt und an die Kondensatoranordnung (21) angelegt wird
ein elektrisches Ausgangssignal der Messschaltung (2)Kondensatoranordnung (21) abgegriffen wird,
mindestens eine elektrische Messgrösse des an der Messschaltung (2)Kondensatoranordnung (21) abgegriffenen elektrischen Ausgangssignals durch die Auswerteschaltung (6) ausgewertet wird,
mindestens ein Parameter des elektrischen Wechselsignals in dem elektrischen Pfad zwischen dem mindestens einen Wechselsignalgenerator (3) und der Messschaltung (2)Filter- und/oder Verstärkerstufe (5) derart durch die Abgleichmittel (4) verändert wird,
dass ein Ausgangssignal der Auswertung bei definierten, konstanten Bedingungen einen bestimmten Wert, vorzugsweise Null, annimmt,
die Veränderung des mindestens einen Parameters mit dem elektrischen Steuersignal durch die Steuermittel (7) gesteuert wird, und
das elektrische Steuersignal durch das Ausgangssignal beeinflusst wird.
In addition, plaintiff also alleged a lack of inventive step over D1 since the differentiating feature (arrangement of the means for balancing before the filter/amplifier) had no technical effect and could not render the claimed subject-matter inventive.
The FPC did not agree. In particular, the decision holds that the skilled person would not have considered D4, D11, D5, D6, or D3 to solve the objective technical problem which was defined as enhancing the quality of the measurement results. Note that D2 had already been cited in the patent in suit, as a result of which the objective technical problem was taken from the patent itself.
Finally, the FPC also rejected the argument that general knowledge would have led a skilled person to control the balancing means automatically. While the skilled person could arguably have done so, the decision holds that there was no teaching in D2 that would have led the skilled person to actually do it.
Consequently, the FPC concluded that AR3 was inventive over the prior art.
An aspect of the decision that is of interest beyond the specific case is related to clarity. Plaintiff alleged that defendant’s requests for maintenance of the patent in limited form were unclear.
A Europen patent cannot be revoked for lack of clarity; the lists in Art. 138 EPC and Art. 26 PatA are closed. However, the decision holds that this must not be mixed up with requests in civil proceedings which must be clearly worded in order to be allowable. The decision holds that this is not only the case with prayers for injunctive relief (BGE 131 III 70), but also with requests for limitation of the patent in nullity proceedings. The decision goes on with a somewhat complicated derivation with reference to BGE 92 II 280 (¶3a), 120 II 357 (¶2), 4C.108/1997 (¶3a), the corresponding practice at the EPO (G 3/14) and an analogy to Art. 97 PatR. I feel this was necessary since there is no explicit rule in the Swiss PatA that requires the amended claims to fulfil all requirements of the PatA (unlike e.g. Art. 101(3) lit. a EPC — “meet the requirements of this Convention”, what includes clarity, Art. 84 EPC).
Ein Rechtsbegehren, das einen […] unabhängigen Anspruch durch die Aufnahme eines […] abhängigen Anspruchs beschränkt, stellt keine materielle Einschränkung des erteilten abhängigen Anspruchs dar. Damit wird auf den erteilten unabhängigen Anspruch verzichtet und der entsprechende abhängige erteilte Anspruch wird im eingeschränkten Patent als unabhängiger Anspruch weitergeführt. Der Verzicht auf den erteilten unabhängigen Anspruch bildet zwar eine Einschränkung des Patents gemäss Art. 27 Abs. 1 PatG. Dieser Verzicht kann jedoch keine Klarheitsfrage aufwerfen, denn die blosse Umformulierung des erteilten abhängigen Anspruches als unabhängiger Anspruch bildet keine weitere Einschränkung des Patents im Sinne von Art. 27 Abs. 1 PatG und kann entsprechend auch nicht auf Klarheit geprüft werden.
The bottom line is that mere combination of an independent claim with one or more dependent claims in nullity proceedings cannot be challenged with respect to clarity.
Urteil v. 15. Mai 2019 i.S. Gebr. Loepfe v. Uster Technologies (Patentnichtigkeit): Damit ein Rechtsbegehren auf Einschränkung von Ansprüchen im Prozess zulässig ist, muss es genügend bestimmt sein. Deshalb muss die Einschränkung klar formuliert sein, https://t.co/pgGddAFXsn
In the case at hand, the court did not see any problem re clarity. The plaintiff had basically objected to the term ‘parameter’ being unclear and that the limited claims would contradict the description. The former argument was rejected by the court because the term was already included in the claims as granted, while the latter was deemed resolved by a declaration according to Art. 97(2) PatR.
In view of the mixed outcome, the costs were split between the parties. The fact that the patent was limited by incorparation of a feature taken from the specification did not change anything in this respect since revocation of the patent had been requested in entirety.
The FPC did not follow defendant’s argument that costs incurred for the assisting patent attorney are no ‘necessary expenses’ (Art. 3 lit. a and Art. 9(2) CostR-PatC), on top of the costs for legal representation according to the tariff, if the patent attorney could have done the whole case on her/his own; Art. 29(1) PatCA. Even if the patent attorney could have run the case on his own, there is no obligation to do so. Complex legal issues may come up in the further course of the proceeding, and/or a counterclaim for infringement.
Aus der Tatsache, dass einer Partei die Möglichkeit gegeben wird, sich durch einen Patentanwalt in Nichtigkeitsprozessen vertreten zu lassen (Art. 29 PatGG), kann weder eine Pflicht abgeleitet werden, keinen Rechtsanwalt beizuziehen, noch kann sie es rechtfertigen, wenn eine Partei von einem Rechtsanwalt vertreten wird, keine notwendigen Auslagen für den Patentanwalt mehr zuzusprechen.
Now, what is interesting is the split of costs awarded for legal representation on the one hand, and assistance of the patent attorney on the other hand. Even though the actual expenses for the patent attorney were not awarded in full, they were still awarded to an extent that is on the upper end of the tariff (CHF 44’841.20 requested, CHF 30’000,– awarded). However, compensation for legal representation was only considered on the lower end of the tariff according to Art. 4 CostR-PatC, based on a value in dispute of CHF 125’000,–.
The decision has not been appealed and has thus become final meanwhile.
O2016_011 re EP’018
Defendant filed a MR and five ARs to maintain the patent in limited form. With respect to the main request, plaintiff alleged that new matter was introduced and that the independent claim was not inventive.
Main Request: Added matter?
Plaintiff alleged that the newly introduced feature of a ‘reference capacitor different from the balancing means’ did not have sufficient basis in the application as originally filed, and that it amounts to a disclaimer.
The court did not agree that new matter was introduced. Rather, the reference capacitor and the balancing means were indeed separate entities in all embodiments of the patent. Therefore, the feature in question was directly and unambiguously derivable for the skilled person from the application as originally filed, and the main request did not contain added matter and the disclaimer argument was moot.
… but is it inventive?
No, it is not. The decision holds that the subject matter of the main request was obvious to the skilled person from EP 1 124 134 (D2) in view of the skilled person general knowledge. Plaintiff’s other arguments / combinations of prior art failed to render the subject-matter of the MR obvious.
The FPC then moved on to AR1:
Claim 1 of AR1
In German language only; I’m sorry. Markup over claim 1 as initially granted (additions and deletions) for the changes made already in the MR; additional markup for AR1 in italic.
Vorrichtung (1) zur Bestimmung mindestens einer dielektrischen Eigenschaftkapazitiven Untersuchung eines bewegten länglichen textilen Prüfgutes (9) wie Kardenband, Vorgarn, Garn oder Gewebe mittels
einer Kondensatoranordnung (21) mit zwei voneinander beabstandeten Platten, zwischen denen sich Luft befindet und zwischen die daslängliche textile Prüfgut (9) einführbar ist,
beinhaltend eine Auswerteschaltung (6) zur Auswertung mindestens
einer elektrischen Messgrösse eines an der Kondensatoranordnung
(21) abgegriffenen elektrischen Signals,
einen Referenzkondensator (22), welcher in Serie zur Kondensatoranordnung (21) geschaltet ist,
mindestens einen Wechselsignalgenerator (3) zum Anlegen von zwei
elektrischen Wechselspannungen mit entgegengesetzten Phasen an
die Kondensatoranordnung (21) bzw. an den Referenzkondensator
wobei die Kondensatoranordnung (21) vom Wechselsignalgenerator(3) durch eine Filter- und/oder Verstärkerstufe (5) zur Filterungund/oder Verstärkung des vom Wechselsignalgenerator (3) erzeugtenWechselsignals derart abgekoppelt ist, dass sie Parameter des vomWechselsignalgenerator (3) erzeugten Wechselsignals nicht beeinflusst,
die in einem elektrischen Pfad zwischen dem mindestens einen
Wechselsignalgenerator (3) und der Filter- und/oder Verstärkerstufe(5)Kondensatoranordnung (21) angeordnet sind und mittels derer
mindestens ein Parameter des elektrischen Wechselsignals derart
dass ein Ausgangssignal der Auswerteschaltung (6) bei definierten,
konstanten Bedingungen den Wert Null annimmt,
Steuermittel (7) zur Abgabe eines elektrischen Steuersignals an die
Abgleichmittel (4), mittels dessen die Veränderung des mindestens
einen Parameters steuerbar ist.
Contrary to plaintiff’s allegation, the court found that no new matter was introduced.
In terms of obviousness, AR1 was based on the MR, but more narrow in scope. Thus, any combination of prior art that did not render the MR obvious could consequently not render AR1 obvious. As such, the court only discussed obviousness over D2 in view of the skilled person’s general knowledge. Here, the court did rule that an inventive step was given.
EP ‘018 was thus maintained in limited form according to AR1.
Clarity and costs
No surprises here; the reasoning is essentially the same as in O2016_010, see above.
Like O2016_010, this decision has also not been appealed and has thus become final meanwhile.
We had reported about the main hearing in this matter on this Blog here.
The patent in suit is CH 707 572 B1; see Swissreg for further bibliographic information. An automated translation can be found here. Harcane had sued Comadur essentially to the effect that CH’572 be declared invalid (based on Art. 261(1) lit. a PatA, not lit. d); or, alternatively, if CH’572 was held valid, that it be transfered to Harcane. On the other hand, Comadur finally defended CH’572 with the claims being limited. Further, Comadur requested that Harcane’s complaint should be held inadmissible.
Parallel proceedings elsewhere
It is a procedural requirement that the case is not the subject of pending proceedings elsewhere or is not already the subject of a legally binding decision; Art. 59(2) lit. d and e CPC.
There had been co-pending proceedings in Neuchâtel where Comadur had sued Harcane and sought for a delaratory judgment based on the Unfair Competition Act that it was the owner of certain manufacturing processes of ceramic injection molding (CIM) material. In turn, Harcane saught a declaratory judgment in proceedings in Neuchâtel that Harcane was the owner of the respective trade secrets relating to the CIM material.
Obviously, these requests differ from the requests in proceedings at the FPC. Thus, the case that has been brought before the FPC had not been the subject of pending proceedings elsewhere. Still, the FPC had stayed its proceedings on 28 May 2018 since certain preliminary questions overlapped with the cantonal proceedings. The stay was lifted on 13 February 2019, i.e. shortly after the Supreme Court had decided on both parties’ appeals against the decision of the Neuchâtel cantonal court; see 4A_584/2017, 4A_590/2017 of 9 January 2019.
Décision du 27 juin 2019 dans la cause Harcane Sàrl c. Comadur SA re. nullité, cession du brevet CH 707 572 : pas d’exception de jugement entré en force; action rejetée, mais répartition égale des frais en raison de la limitation substantielle du brevet, https://t.co/AYbprDpQyK
The decision holds in ¶21 that the plaintiff well has a legitimate interest in bringing the present complaint since, according to the prior cantonal proceedings, Harcane is only prohibited to use some very specific embodiments of the patent in suit. However, even the limited scope of CH’572 goes far beyond that.
limitation of the patent
The defendant / patentee partially surrendered CH’572 in accordance with Art. 24(1) lit. c PatA and declared the same to the FPC; see O2012_030, ¶17.
Claim 1 as amended reads as follows:
Claim 1 as amended
Liant pour composition de moulage par injection comprenant :
de 35 à 54% vol. d’une base polymérique
de 40 à 55% vol. d’un mélange de cires,
et environ 10% vol. d’un surfactant,
dans lequel la base polymérique contient des copolymères d’éthylène et d’acide méthacrylique ou acrylique, ou des copolymères d’éthylène et d’acétate de vinyle, ou des copolymères d’éthylène comprenant un anhydride maléique ou un mélange de ces copolymères, ainsi que du polyéthylène, du polypropylène et une résine acrylique, et dans lequel lesdits copolymères sont des copolymères d’éthylène et d’acide méthacrylique ou acrylique, ou des copolymères d’éthylène comprenant un anhydride maléique ou un mélange de ces copolymères;
à l’exclusion d’un liant pour composition de moulage par injectioncomprenant de 35 à 50% vol d’une base polymérique, de 40 à 55 %vol d’un mélange de cires, et environ 10% vol d’un surfactant, danslequel la base polymérique contient des copolymères d’éthylène etd’acide méthacrylique ou acrylique, ou des copolymères d’éthylèneet d’acétate de vinyle, ou des copolymères d’éthylène comprenantun anhydride maléique ou un mélange de ces copolymères, ainsique du polyéthylène, du polypropylène et une résine acrylique.
The underlined / italic part of the claim is a so-called undisclosed disclaimer to exclude the subject-matter of CH 708 097 A2, a prior right that had been filed earlier but published only after the filing date of CH’572. As much as I recall, this is the first time that such an undisclosed disclaimer has been at stake and allowed in proceedings at the FPC. Note, however, that O2012_030 in ¶20.1 already suggested that the FPC would follow the EPO’s precedent G 1/03.
Dependent claims 2-6 remain unchanged. Claims 7-10 have been deleted.
Apparently, the court did not appreciate how the novelty attacks had been presented. The decision holds that, according to common practice, a specific analysis of the features of the claim and a specific reference to the prior art has to be made, for each of the features. It is not the court’s task to establish the facts of its own motion and to seek the information in the references filed as exhibits. On the contrary, the relevant facts must be alleged by providing specific information, in particular by reference to a page or line number, while specifying which feature of the claim is there to be found (see ¶¶28-30).
Le Tribunal n’est pas chargé d’établir les faits d’office et il ne lui incombe pas de rechercher lui-même les informations dans les documents de l’art antérieur déposés en tant que pièce jointe. En particulier, une référence globale à un document dans le sens de «l’objet de la revendication 1 est divulgué dans le document X» ne suffit pas pour satisfaire au fardeau de l’allégation. Il faut au contraire alléguer les faits pertinents en fournissant des indications spécifiques, notamment par renvoi à un numéro de page, de ligne, tout en précisant quelle caractéristique de la revendication se retrouve dans le document de l’état de la technique invoqué.
In the absence of any specific allegations, the FPC did not consider the novelty attacks to the extent they were based on prior art documents. What remained was the sale of a certain feedstock to Comadur. However, the decision holds that these sales were governed by an NDA and thus cannot be considered at all. Further sales to third parties had been alleged but remained essentially unsubstantiated.
Accordingly, novelty was acknowledged.
The FPC did not appreciate the way the obviousness attacks had been presented, either. The decision holds that the FPC cannot complete an incomplete factual allegations of the parties. This is in contrast to proceedings at the EPO which shall examine the facts of its own motion and which shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought; Art. 114(1) EPC. Determining whether an invention is based on an inventive step is a question of law. However, the general technical knowledge of the skilled person, the closest prior art, the differentiating features, etc. are facts, and it is up to the parties to allege these facts (see ¶37).
In my perception, the considerations with respect to the burden / degree of substantiation are what this decision will likely be cited for in the future.
To the extent the FPC admitted the plaintiff’s arguments and evidence into the proceedings at all, the decision holds that the claimed subject-matter was not obvious over US 5,266,264.
Even though the plaintiff did not succeed with any request, the defendant was still charged with half of the court fee since the patent was maintained only to a limited extent, i.e. the defendant partially acknowledged the plaintiff’s complaint and both parties win and therefore lose equally.
No compensation for legal represenatation was awarded.
Interestingly, the plaintiff only involved a patent attorney when the expert opinion of the judge-rapporteur had been established. The respective expenses were not considered necessary anymore since the closure of the file had already occured at that time. On the other hand, defendant’s expenses for the assisting patent attorney of ICB, a company within the Swatch group of companies, had not been considered, either: No intra-group expenses are reimbursed; see O2014_009, ¶6.2.
UPDATE 9 September 2019:
The decision has been appealed to the Supreme Court.
These two decisions in summary proceedings are heavily redacted — which is an exception to the rule. Obviously, the overall conflict between the parties also involves some criminal allegations against a natural person (Art. 146 CC; fraud).
In view of the criminal allegations I am not going to engage in any de-anonymisation exercise here; and this post is not open for comments, either.
A register ban for six Swiss patent applications had been issued by the public prosecutor of the Canton of Fribourg on 22 May 2017, in view of the criminal charge. The public prosecutor informed the plainfiff on 21 November 2018 of the deadline for finally lodging civil proceedings, i.e. 31 January 2019, and indicated that sequestration of the six patent applications would be lifted at that date (however, this apparently had not happened).
The plaintiff indeed initiated civil proceedings, but only on the very last day of the time limit, and only in summary proceedings. In particular, issuance of a register ban had been requested without hearing the defendant beforehand.
While the President acting as single judge appreciated the risk that the six patent applications might be transferred to defendant (3) in view of some prior conduct of the defendant(s), and even though particular urgency was acknowledged, he did not order a register ban ex parte. The President held that the urgency is exclusively due to the late submission of the request by the plaintiff who should have taken action swiftly after the public prosecutor’s notification of 21 November 2108. If the plaintiff had filed the request in a timely manner, i.e. in early December 2018, the defendants would have had sufficient time to take a position on the request. The President held that the defendants cannot be deprived of their constitutional right to be heard because of the plaintiff’s belated action. The decision refers in passing to S2018_002, ¶7, for that a delay of two months results in the rejection of the request in any event.
The request for issuance of interim measures without hearing the defendant beforehand was thus denied with decision of 6 February 2019.
However, the register ban had still been issued with decision of 11 July 2019. In balancing the potential disadvantages suffered by the plaintiff and the defendants, the President (again acting as single judge) concluded that there was a much greater potential damage that the plaintiff would suffer if the register ban would not be issued, compared with the defendants potential damage if the register ban was granted. Nevertheless, the decision clearly notes that it is highly doubtful that the six patent applications had been contractually assigned to the plaintiff. Still, the fact that defendants (1) and (2) had previously attempted to assign the patent application to defendant (3), which is a mailbox company in Luxembourg, played out to the plaintiffs advantage, for the time being.
UPDATE 22 August 2019:
The decision of 11 July 2019 has not been appealed / is now final.
This combination is an analgesic drug that is available as modified-release tablets under the trade name Targin® by MundiPharma.
Develco sought annulment of EP(CH)’825 for various reasons, i.e. undue extension of subject-matter, non-enablement and invalidity of the priority claim. Please see this Blog here for a brief summary of the main hearing in this matter, and some relevant prior art Develco has asserted against patentability of the claimed subject-matter.
Defendant / patentee MundiPharma countersued for infringement. MundiPharma not only countersued the plaintiff, but rather also attempted to involve the German branch of Develco as well as Konapharma. This attempt failed.
It was evident from the pleadings at the main hearing that the expert opinion of the judge-rapporteur had held that the patent was invalid for undue extension of subject-matter. Thus, it does not come as a big surprise in the decision that EP(CH)’825 is held invalid for undue extension of subject-matter. Consequently, the decision does not address the other grounds of invalidity asserted by Develco; and the counterclaim for infringement is moot, too.
In my perception, the detailed assessment of undue extension of subject-matter is nothing out of the ordinary. It’s all about the EPO’s ‘gold standard’ (G 2/10 in ¶4.3, with reference to G 3/89 and G 11/91), i.e.
[…] any amendment […] can […] only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of [the application as filed].
What is interesting, though, is how the decision addresses the so-called essentiallity-test (‘Wesentlichkeits-Test’), in particular how this test fits with the ‘gold standard’. In brief, in T 331/87 the Board held that the replacement or removal of a feature from a claim may (referred to in the Case Law of the Boards of Appeal as a ‘might’) not be in breach of Art. 123(2) EPC if the skilled person would directly and unambiguously recognise that
the feature was not explained as essential in the disclosure;
it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve; and
the replacement or removal required no real modification of other features to compensate for the change.
It is important to note that even this Board apparently (in view of the conditional language used; see mark-up above) did not consider compliance with the above three criteria as a sufficient condition for compliance with Art.123(2) EPC in any given case. Accordingly, the present decision holds that the only thing that really matters is the ‘gold standard’ discussed above, which cannot be deviated from. With reference to the Swiss Supreme Court decision 4A_109/2011, 4A_111/2011 (¶4.3.1), however, the decision further holds that in a case where not even the criteria of the essentiallity test are fulfilled, it must be assumed that an undue extension of subject-matter occured.
What suprises me, though, is that the decision holds (¶31):
Otherwise this would again amount to a materiality test, which was expressly rejected in G 2/98.
Frankly, I don’t see that in G 2/98, at least not expressly (‘ausdrücklich’). One may well conclude from the gist of G 2/98, in particular ¶8.3, that it does not endorse a distinction of technical features which are related to the function and effect of the invention and technical features which are not. But there is no discussion of the essentiallity test at all in G 2/98. Else, if there was, the essentiallity test would surely not be referred to anymore in the most recent edition of the Case Law of the Boards of Appeal and the Guidelines.
But still, my personal take-away message from this decision is that the essentiallity test is of no avail in proceedings at the FPC (until someone comes along and proves me wrong).
The decision is not yet final / may still be appealed to the Supreme Court.
The present main proceedings are following-up on summary proceedings S2017_006 when the FPC granted interim injunctive relief; see this Blog here. Validity of the SPC was not an issue anymore, this had already been affirmed by the Supreme Court; see this Blog here.
The dispute is all about whether or not the scope of an SPC that specifically refers to a unique salt form does extend to other salts; we had reported about the main hearing in this matter on this Blog here. The SPC concerns tenofovir disoproxil fumarat + emtricitabin (emphasis added) . Mepha’s attacked generics (Swissmedic MAs No. 66181 and 66217) instead comprise tenofovir disoproxil phosphate.
The decision holds in ¶26-27 that in order to not frustrate the objective of an SPC the understanding of the term ‘product’ in the context of an SPC must be aligned with the understanding of the same term in the context of the Therapeutic Products Act (TPA). Thus, the scope of protection is not strictly limited to what is named in the MA or in the SPC, but rather extends to derivatives, salt forms, etc. which do not differ significantly in their properties with regard to safety and/or efficacy. In other words, the decision holds that the scope of protection extends to everything for which a simplified approval according to the TPA can be obtained (see Swissmedic Guidelines, ¶1.1.1).
Thus, the decision holds that the ‘product’ in the sense of Art. 140d PatA is (¶28):
Emtricitabine plus tenofovirdisoproxil fumarate and all derivatives (i.e. in particular all salt forms) thereof, provided that they have the same pharmacological effects.
Since the attacked embodiments had been approved by Swissmedic by way of a simplified approval, the decision holds that they are presumed to have the same pharmacological effects and are thus the same ‘product’ in the sense of Art. 140d PatA.
For the sake of completeness, the decision also analyses the alleged infringement under the DoE (¶33 et seqq.). As proposed by some scholars, the scope of protection of an SPC is determined by the content of the claims of the basic patent, whereby the description and the drawings are to be used for interpretation, and the Protocol on the Interpretation of Art. 69 EPC is also to be observed. Since the SPC is only product-related and purpose-related, the patent claim of the basic patent is to be defined artificially as if only the active substance designated in the certificate were mentioned, for the approved use of the active substance as a pharmaceutical. The description and drawings of the basic patent shall be used for the interpretation of the claim so formulated.
In brief, the decision holds that the three questions of the Swiss test for infringement under the DoE are to be answered in the affirmative, i.e. that the ‘same effect’ (Gleichwirkung), ‘obviousness’ (Auffindbarkeit) and ‘same value’ (Gleichwertigkeit) are given. Noteworthy, the decision holds that one cannot assume that the SPC holder made a purposive selection in favor of one salt over other salts mentioned in the specification. If one were to see this differently, equivalence for SPCs in different salt forms would in fact be excluded if only one specific salt had been used for the MA and the wording of the SPC. On the contrary, on the basis of an objective reading of the patent specification and in the knowledge that such an artificial claim is to be interpreted for the scope of protection of an SPC, the skilled person will readily assume that other salts, because they are mentioned in the description, are not excluded from the scope of protection (¶43):
Im Gegenteil wird der fachkundige Dritte bei objektiver Lektüre der Patentschrift und im Wissen darum, dass ein solcher fiktiver Anspruch für den Schutzbereich eines ESZ auszulegen ist, in einer solchen Situation gerade davon ausgehen, dass natürlich diese anderen Salzformen, weil sie in der Beschreibung genannt werden, nicht vom Schutzumfang ausgeschlossen sind.
In any event, the decision holds that there was no specific, individualized disclosure of tenofovir disoproxil phosphate in the specification of the basic patent.
Injunctive relief was thus granted. However, Mepha shall be permitted to export products that it had on stock when interim injunctive relief had been granted to any of the least developed countries, LDCs, according to the list of the the United Nations.
We had reported about the main hearing in this matter on this Blog here.
The patent in suit
The invention is about a tool which is intended to be used with a machine tool, in particular a hand guided machine tool. The machine tool has a rotational drive, e.g. an oscillating drive.
In simple terms, it’s all about a somewhat special attachment device that transfers a torque from the driving device to the machine tool. It’s a 3D fitting; see e.g. Fein’s various Starlock® tools:
Bosch has the same attachment system in place in the Professional Multitool series:
Plaintiffs referred to it as ‘Gugelhupf’ or ‘Napfkuchen’. The claim language is a bit more complicated and less culinary, though.
Claim 1 of EP'362
A tool device (1, 1b) which is suitable for use with a machine tool (22), and in particular suitable for use with a hand guided machine tool, which has a driving device moving around a driving axis, and in particular oscillating around the driving axis,
and which has an attachment device (12) by means of which it can be fastened to a machine tool (22) in such a manner that the driving axis and a tool axis of rotation (5) are substantially coincident,
wherein, for receiving a driving force, the attachment device (12) comprises at least two driving area regions (2, 2a, 2b) each having a plurality of surface points (3) and which are spaced from this tool axis of rotation (5),
characterized in that tangent planes (4) at these surface points (3) are inclined relative to an axial plane (7), which includes the tool axis of rotation (5),
wherein the tangent planes (4) are inclined relative to a radial plane (6), which extends perpendicular to the tool axis of rotation (5),
wherein the attachment device (12) comprises a side wall,
wherein the side wall extends spaced radially from the tool axis of rotation (5),
wherein the side wall extends between a first, upper boundary plane (8a) and a second, lower boundary plane (8b), and
wherein the side wall comprises the driving area regions (2, 2a, 2b),
wherein a substantially hollow conical section is formed in the region of the attachment device by means of the side wall, which section has a cross section with a variable spacing of the side wall to the tool axis of rotation in a plane orthogonal to the tool axis of rotation.
The alleged infringement
The plaintiffs asserted thatEP’362(more precisely, the independent claim 1 and dependent claims 2-9, 11, 13 and 14) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’, and requested interim injunctive relief.
And indeed, the attachment device of Coram’s saw blades appears somewhat ‘gugelhupfig’:
But infringement was not the major issue here. Apparently, it had not even been explicitly disputed.
The bone of contention was the validity of EP’362.
The expert opinion was not yet it
It was clear from the pleadings at the main hearing that the judge-rapporteur’s expert opinion had held that EP’362 was valid.
Some still say that the expert-opinion of the judge-rapporteur is effectively the end of the line. And, indeed, the handwriting on the wall bodes poorly when the judge-rapporteur does not follow your arguments. But there are exceptions to the rule, and the present case apparently is a prime example.
Even though novelty over DE 2 120 669 has been acknowledged (because the ‘Gugelhupf’ structure in Fig. 5 of DE'669 is not the attachment device of the tool towards the driving means, but rather only an inner part of the tool itself) , the decision holds that claim 1 is not novel over EP 0 596 831 A1:
The critical issue here was claim construction. The decision again expands on a key aspect of claim construction, as follows (r. 14):
Claims are to be construed functionally, i.e. a feature is to be construed in such a way that it can fulfil the intended purpose. The claim should be read in such a way that the embodiments disclosed in the patent are literally covered; on the other hand, the wording of the claim should not be restricted to the embodiments if it covers further embodiments. When case-law refers to ‘broadest interpretation’ of claim features, the feature must still be capable of fulfilling its purpose in the context of the invention. This means that the claim must not be interpreted under its wording, but also not in such a way that embodiments are covered which do not achieve the inventive effect.
It is the second time that this paragraph is verbatim included in a decision in a short time; r. 14 of the present decision corresponds literally to r. 25 of O2016_009 (see this Blog here). For the time being, it is pretty clear what to expect at the FPC when it comes to claim construction.
By the way, you would not notice from the decision itself that the expert opinion of the judge-rapporteur has been reversed. It is just noted that the judge-rapporteur had provided his opinion on 25 March 2019, but the decision is silent about its content. Some earlier decision of the FPC gave at least some indication in this respect (e.g. O2015_011, r. 4: “On the question of validity [the judge-rapporteur] gave his expert opinion. The panel agrees with this opinion, with certain additions, as will be explained below.“ ), but the more recent decisions don’t give this insight anymore. What a bummer.
With the independent claim 1 being held likely invalid, the whole patent was held to be likely invalid. Thus, the request for interim injunctive relief was dismissed.
The basic EP’668 had lapsed already back in 2015; and the SPC has also lapsed meanwhile, on 4 May 2019. But the present decisions relate to an apparent mishap shortly before the SPC finally lapsed.
Sandoz had Swissmedic’s market authorization for its generic ‘Tadalafil Sandoz’ since 7 November 2017, but did not yet put it on the market. Still, the plaintiffs came across database entries for ‘Tadalafil Sandoz’ in HCI Solutions‘ medINDEX (for physicists) and pharmINDEX (for pharmacists). These databases are used by practitioners to order pharmaceuticals. Even though ‘Tadalafil Sandoz’ could not be ordered at that time, the President held that the effect of the database entries was essentially comparable to an inquiry of future needs (see S2014_001). Potential customers are made aware that the launch of a generic is imminent. This may tempt them to postpone orders for the original product and to order the cheaper generic once it becomes available. The generic manufacturer benefits from this advertising effect to the detriment of the supplier of the original product. During the term of the SPC, such advertising constitutes a violation of the exclusive rights of the owner of the SPC.
At the face of it, the situation was apparently so clear that the President granted interim injunctive relief without hearing Sandoz beforehand, and obliged Sandoz to immediately request the database provider to delete the entries.
Decision of 21 March 2019 in case of ICOS Corp, Eli Lilly SA v. Sandoz Pharma AG re SPC for tadalafil: inclusion of product in database of available products infringes patentee’s exclusive rights even if the product cannot be ordered (ex parte injunction), https://t.co/5SLv4kFPKQ
After hearing the defendant, it turned out that Sandoz’ had not made the entries in the databases. The entries had been made the database provider, an independent third party, without Sandoz’s knowledge and intervention. The database entries had meanwhile been deleted on Sandoz’s request, and thus there was no basis anymore for interim injunctive relief. The request was thus denied.
Now, what about the costs?
As a rule, the costs are clapped on the unsuccessful party; Art. 106(1) CPC. But the court may diverge from the general principles and allocate the costs at its own discretion when a party was caused to litigate in good faith; Art. 107(1) lit. b.
The President held that even though the plaintiff’s course of action may be understandable under the given circumstances, this still does not justify that the defendant bears the costs incurred in view of the unlawful conduct of an unrelated third party:
The plaintiffs have refrained from issuing a warning to the defendant before submitting the request for action. The applicants’ action may be understandable in the circumstances, but it does not justify the defendant having to bear the costs of the proceedings. As the defendant credibly demonstrates, it had nothing to do with the unlawful conduct of a third party; it is to be regarded neither as an instigator nor as an accomplice nor as a collaborator. Nor does it exercise any control over the third party. Since the defendant is not responsible for the unlawful conduct and has not created the appearance of being responsible for it, it cannot be ordered to pay the costs.
The court fee and a compensation for legal representation of the defendant are thus to be borne by the plaintiffs.
AZ’s request for interim injunctive relief w/o hearing the defendant beforehand was dismissed with decision of 20 February 2019. Hearing the defendant didn’t change the outcome; the request was also dismissed with decision of 9 April 2019. Both requests failed for lack of urgency, given the fact that Sandoz’s generic has been on the market since 2.5 years.
At the face of it, this appears to be pretty straight forward, in particular in view of the most recent decisions S2018_006 (¶13) and S2019_001 (¶6) emphasizing the 14 months time bar in no uncertain terms.
But the devil is in the detail. Maybe.
This is not the first time that the FPC had to deal with EP’573. The patent had been revoked for lack of inventive step over Howell in view of McLeskey; see this Blog here. But AZ appealed and essentially argued that the FPC erroneously assumed a (concrete) pharmaceutical formulation in Howell, thus incorrectly defined the distinguishing features and the (objective) technical problem, and then wrongly concluded for lack of inventive step.
And, indeed, the Supreme Court agreed and remitted the case for re-assessment of inventive step; see this Blog here. From the reasons of the present decisions, we can now catch a glimpse of what is currently going on in the remitted proceedings (formerly O2015_011, now O2018_009): The judge-rapporteur held on 23 November 2018 that the patent was valid. But it is not only that the wind has changed at the FPC. The Gerechtshof Den Haag also held that the patent was valid, in second instance proceedings. Likewise, a Board of Appeal at the EPO overruled the first instance revocation of an opposition division and finally ruled on 24 January 2019 that the patent was valid.
On the other hand, this is also not the first time that AZ sought injunctive relief for Sandoz’s generic. AZ had asserted a different patent against the same generic already in summary proceedings S2016_007, i.e. EP'138. It becomes clear from the present decisions that these earlier proceedings had been terminated because AZ had withdrawn the requests.
Now, here is a timeline events which is colored to reflect my very personal view on the prima facie validity of EP’573 over time:
One may conclude from the above timeline that there had been some red(-ish) flags concerning the validity of EP’573 for quite a long time.
The decisions note in passing that main infringement proceedings with case no. O2017_004 concerning Sandoz’s generic are pending in parallel, but based on a different patent (EP'195); from the case no. it is clear that this suit has been brought in 2017, but no further information is available to date.
Further, the decision indicates that in some proceedings with case no. O2018_010 the very same EP’573 is at stake as in the present matter, but the defendant is not revealed.
AZ essentially argued that it had been prevented from bringing the request for interim injunctive relief earlier because of the previously negative assessment of validity EP’573 by the EPO, the FPC (O2015_011) and the district court of The Hague (NL), and that the wind has changed only very recently; see timeline above.
The single judge did not buy into that and emphasized that AZ had undoubtedly been aware of Sandoz’s generic since 26 July 2016; AZ could have lodged main proceedings at any time since then. The decision further holds (¶22; inofficial translation):
[T]he decision of the Board of Appeal of the EPO of 24 January 2019 […] may substantiate the claim to which the plaintiff is entitled with regard to the validity of the patent in suit, but in no way justifies urgency. […]
Ultimately, however, all parallel proceedings have no influence on the purely procedural question of urgency in the present summary proceedings. […]
The tactical awaiting of a foreign parallel decision on the patent in suit before an action is lodged does not belong to the subjective but rather to the subjective circumstances.
It surely is a tough exercise to fit the gist of a decision in a single tweet; but the FPC’s tweet on the decision is straight to the point:
A decision of a Board of Appeal of the EPO does not give rise to urgency where the contested product has been on the market for 30 months.
Urteil v. 9. April 2019 i.S. AstraZeneca AB g. Sandoz Pharma AG re vorsorgl. Massnahme (#Fulvestrant): ein Entscheide einer Beschwerdekammer des EPA begründet keine Dringlichkeit, wenn das angegriffene Produkt schon seit 30 Monaten auf dem Markt ist, https://t.co/iinRKiYDWk
The approach taken in the present decisions in my understanding focuses much more on the total time than on the apparent change of prima facie validity of the patent in suit over time. While the 14 months time bar is comparably generous (German courts typically deny urgency after 1-2 months, in my experience), it seems to be a pretty rigid time bar nowadays.
In an earlier case at the FPC, urgency had still been acknowledged for a request that had been filed five months after a BoA of the EPO had maintained the patent in suit which had been revoked in first instance by an opposition division (S2013_004, decision of 12 May 2014, ¶4.8).
It will be interesting to see how the FPC’s approach in the assessment of urgency will develop.
The parties Lutz Medical Engineering and the EPFL are in dispute about the legitimate ownership of WO 2017/005661 A1 and the further national / regional parts of the patent family in Germany, the U.S., China and the EPO.
When it comes to the merits, the prototypical ownership dispute is legalistic mud wrestling, and it will be interesting to see how this case finally unfolds — if and when it does. For the time being, the plaintiff’s request to impose a general restraining order has been denied, for procedural reasons. It was undisputed that the plaintiff had positive knowledge of WO 2017/005661 A1 since at least September 2017. However, the request for interim measures has only been filed in January 2019.
The President acting as single judge held that no ‘relative urgency’ is given anymore, and dismissed the request for interim measures right away. It is common ground in Switzerland that the right to interim measure is forfeited if, after the plaintiff had been able to file a complaint, he waits so long for the request to impose interim measures to be filed that main proceedings would have been concluded at about the same time or sooner than the summary proceedings if he had initiated them at the earliest possible date (so-called ‘relative urgency’). With an average duration of main proceedings before the FPC of approximately two years, and an average duration of summary proceedings of approximately eight to ten months, it follows that the right to interim measures is procedurally forfeited. The plaintiff had waited for more than 14 months from the time at which main proceedings could have been initiated, and no special circumstances exist which would justify a longer waiting period. If the request for interim measures had been submitted in due time, main proceedings could have been conducted which would have been concluded at about the time when the present summary proceedings would have been concluded.
Now it is more clear than ever before: One must not wait about 14 months, for the right to interim measures not being forfeited.
Urteil vom 25. März 2019 i.S. Lutz Medical Engineering AG v. École Polytechnique Fédéral de Lausanne (EPFL): ein Zuwarten von mehr als 14 Monaten mit der Einreichung eines Massnahmegesuchs führt zur Abweisung mangels relativer Dringlichkeit, https://t.co/MbPKjGMXMa
The plaintiff argued that the matter was nevertheless urgent because the defendant was now informed, upon notification of the complaint, that the plaintiff is willing to assert its claims in court. This would increase the risk that the defendant would take measures to make enforcement more difficult and/or impossible.
This argument was not found convincing. Actually, the President held that it is almost tautological. If the plaintiff’s view was correct, the filing of a complaint would always justify urgency, because only then would the defendant know that the plaintiff was serious about the issue. This would deprive the requirement of relative urgency of its meaning. However, the requirement of urgency is justified by the fact that neither the court nor the opposing party can be expected to bother with summary proceedings with shortened time-limits, or to participate in it, if the plaintiff had been able to achieve the same objective within the same time in main proceedings.
In sum, this decision is a perfect reminder of the fact that the Swiss approach to urgency is relatively generous (compared to e.g. Germany) — but it still is a hurdle that needs to be cleared.
Both parties had lodged an appeal — but the Supreme Court dismissed both appeals. While the FPC’s judgement was quite a booklet of 50+ pages, it took the Supreme Court only 7 pages to deal with both appeals. Most of the judgment indeed is pretty straight forward. Still, the judgment has quite some interesting aspects, in my perception:
Assignment of a patent does not imply assignment of the universal right to the invention per se
Guenat had requested that Swiss Finest‘s Swiss patent be annulled based on Art. 26(1) lit. d PatA, i.e. for lack of entitlement. However, such request can only be brought by the entitled person; Art. 28 PatA. Guenat alleged that Frédéric Garinaud transferred ‘full and complete ownership’ of the European patent application to Guenat. But that did not help. Frédéric Garinaud specifically assigned the European patent application to Guenat, but not the universal rights in the ‘invention’ itself. Guenat’s request for declaration of nullity based on Art. 26(1) lit. d PatA was thus held inadmissible for lack of standing.
On appeal, Guenat criticises the FPC’s ‘artificial dichotomy’ between the invention and the related patent application, and claims complete control over the invention in dispute. The Supreme Court didn’t buy into that. The decision holds in ¶3.2 that Guenat’s argument is based on an assumption about the parties’ intention in respect of the transfer agreement of April 2013. This is not a question of law, but of fact. But the FPC had not found that the real and common intention the parties had been to assign all intellectual property rights to the invention and the right to be granted all related patents. On the contrary, according to the FPC, the agreement in question ‘clearly refers only to the European patent application and the resulting European patent, and not to the invention as such’ — which finding is binding on the Supreme Court since it is not ‘arbitrary.’
Thus, the Supreme Court apparently had no doubt that the assignment of a specific patent does not necessarily imply the assignment of the universal rights in the invention itself.
Assessment of inventive step is a question of law, but …
Guenat argued on appeal that the FPC had violated the principle of party disposition because it took facts into account that had not been alleged by the defendant.
Now, what had happened?
The FPC had held that a specific feature (C3-1) was not disclosed in the closest prior art document. Guenat had a different understanding of the specific feature, and had argued that based on a ‘correct’ understanding of the feature it had well been disclosed in the closest prior art.
On appeal, Guenat argued that Swiss Finest had not even alleged that feature C3-1 was not disclosed in that document. Unfortunately, it is not readily clear from the decision to which version of feature C3-1 that allegation pertained: The feature as construed by the Guenat, or the feature as construed by the FPC?
The Supreme Court held that it had not been disputed that all the factual elements necessary for the analysis of obviousness had been brought on file by the parties. Further, the Supreme Court held that Guenat had not asserted that the FPC had to supplement the facts on its own, and that such conduct was also not apparent from the file. In the Supreme Court’s view, the FPC was thus in a position to assess obviousness, which is a question of law. It is irrelevant in this respect that the presence or absence of specific features in the prior art and/or the patent have been alleged by the defendant or the plaintiff. On the basis of the facts gathered by the parties in order to consider a question of law, the court did not violate the principle of party disposition.
Without any in-depth knowledge of what had or had not been argued by the parties, I just cannot say whether I would agree with the assessment on the merits of the case. But the Supreme Court’s general considerations on questions of law vs. questions of fact trigger some further thoughts.
Clearly, assessment of obviousness is a question of law — but the underlying factual elements still need to be asserted by the parties. But what are the ‘factual elements’? They must be something more specific than just ‘the patent in suit’, ‘D1’ or the like. Else, a court could just combine whatever is on file in its assessment of obviousness, fully detached from the pleadings. This cannot be it. Now, let’s assume that both parties come up with a somewhat strange claim construction, and base all their obviousness attacks / defenses on a wrongly construed claim. In my understanding, claim construction clearly is a question of law, too (see e.g. X ZR 255/01 – ‘Bodenseitige Vereinzelungseinrichtung’ of the German Federal Supreme Court in ¶5, with further reference). But what if no party ever pointed to the relevant underlying ‘factual elements’ (i.e. specific sections of the patent in suit) that support the ‘correct’ claim construction? May the court then even come up with a different / the ‘correct’ claim construction at all?
UPDATE 21 March 2019:
Note that the FPC had held in the recent decision S2018_006 that claim construction is a question of law. In that case, both parties had not construed the feature in question at all, and the FPC came up with a construction on its own:
Wie der Begriff korrekt auszulegen ist, tragen die Beklagten hingegen ebenso wenig wie die Klägerin vor. Da die Auslegung des Patentanspruchs eine Rechtsfrage ist,15 geht die Annahme der Beklagten fehl, das Gericht dürfe den Anspruch mangels entsprechenden Vortrags der Klägerin nicht so auslegen, dass er auch etwas anderes als einen Schneidprozess erfasst.
But, again, what if both parties came up with a claim construction mutually agreed upon — but which, in the courts view, is just wrong? Or, what if both parties come up with different constructions which are both wrong in the court’s view? Can the court then correct such (a) construction(s) if it would have to rely on ‘factual elements’ that have never been pointed at by the parties, just because it is a question of law? And if that was the case, then where is the limit in the assessment of obviousness — which is a question of law, too?
The theory of separating questions of law from questions of fact is simple. But life is complicated …
On a sidenote: Wouldn’t it be good to establish common ground on what the claim actually is all about before diving any deeper? This is what a Markman hearing in the U.S. is all about. Even though I am not overly enthusiastic about quite some aspects of patent litigation in the U.S., this one certainly is useful.