A Swiss approach to the EPO’s gold standard

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Case No. O2016_016 | Decision of 6 June 2019

The patent at stake is MundiPharma‘s EP 2 425 825 B9; see EPO Register and Swissreg. EP’825 pertains to a combination of oxycodone hydrochloride (in an amount of 10 to 150g) and naloxone hydrochloride (in an amount of 1 to 50g), in a weight ratio of 2:1.

This combination is an analgesic drug that is available as modified-release tablets under the trade name Targin® by MundiPharma.

Develco’s logo

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.

MundiPharma’s logo

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 1973 if the skilled person would directly and unambiguously recognise that

  1. the feature was not explained as essential in the disclosure;
  2. it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve; and
  3. 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 explicitly (‘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 (until someone comes along and proves me wrong).

The decision is not yet final / may still be appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_016 | Decision of 6 June 2019

Develco Pharma Schweiz AG
./.
MundiPharma Medical Company

Panel of Judges:

  • Dr. Daniel M. ALDER
  • Dr. Tobias BREMI
  • Dr. Hannes SPILLMANN

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Develco:

  • Andrea MONDINI (TIMES)
  • Dr. Cornelia HOFFMANN (SBMP), assisting in patent matters

Representative(s) of Mundipharma:

  • Dr. Simon HOLZER (MLL)
  • Dr. Dirk BÜHLER (Maiwald), assisting in patent matters

DECISION

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Fumarate and phosphate: Same same, but different?

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Case No. O2017_023 | Decision of 3 May 2019

DISCLOSURE NOTICE

Hepp Wenger Ryffel is involved in this case on behalf of the defendant.

This case is about an alleged infringement of Gilead’s SPC C00915894; the basic patent is EP 0 915 894 B1 (see EPO Register and Swissreg). Gilead’s products are Truvada® and Atripla® which are pharmaceuticals for the treatment of HIV-1 infection.

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.

Now, is that still the ‘product’ in the sense of Art. 140d PatA?

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.

LDCs

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.

The decision is still open to appeal.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_023 | Decision of 3 May 2019

Gilead Sciences Inc.
./.
Mepha Pharma AG

Panel of Judges:

  • Dr. Christoph GASSER
  • Dr. Tobias BREMI
  • Marco ZARDI

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)
  • Dr. Michael RITSCHER (MLL)
  • Dr. Andreas SCHÖLLHORN (LSP), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

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The expert opinion of the judge-rapporteur is not the end of the line

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Case No. S2018_007 | Decision of 2 May 2019

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

We had reported about the main hearing in this matter on this Blog here.

The patent in suit

Bosch’s logo

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:

Fein’s Starlock tools

Bosch has the same attachment system in place in the Professional Multitool series:

Bosch’s GOP 12 V-28 Professional Multitool

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

1.1 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,
1.2 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,
1.3 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),
1.4 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),
1.5 wherein the tangent planes (4) are inclined relative to a radial plane (6), which extends perpendicular to the tool axis of rotation (5),
1.6 wherein the attachment device (12) comprises a side wall,
1.7 wherein the side wall extends spaced radially from the tool axis of rotation (5),
1.8 wherein the side wall extends between a first, upper boundary plane (8a) and a second, lower boundary plane (8b), and
1.9 wherein the side wall comprises the driving area regions (2, 2a, 2b),
1.10 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

Coram’s logo

The plaintiffs asserted that EP’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

What …?!

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.

Novelty / claim construction

The decision holds that EP’362 is invalid.

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:

Fig. 2 of EP’831 (annotations by the FPC to show the sidewalls, i.e. the cone-shaped surfaces 8c and 8d). Note that the figure is erroneously referred to as Fig. 4 in the decision.

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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2018_007 | Decision of 2 May 2019

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Markus A. MÜLLER
  • Dr. Stefan KOHLER

Judge-rapporteur:

  • Dr. Markus A. MÜLLER

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters

FULL TEXT DECISION 
Case no.: S2018_007
Decision of: 2 May 2019
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Premature database entry infringes SPC

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Case No. S2019_006 | Decision of 1 May 2019
Case No. S2019_006 | Decision of 21 March 2019

Lilly / ICOS

The SPC in suit is ICOS’ C00740668/01, the basic patent of which is EP 740 668 B1; see EPO Register and Swissreg for further information.

The SPC protects tadalafil (which is also referred to in claim 10 of the basic patent), a phosphodiesterase type 5 (PDE5) inhibitor. Lilly‘s products are Cialis® (for the treatment of erectile dysfunction) and Adcirca® (for the treatment of pulmonary arterial hypertension).

Lilly’s Cialis and its active ingredient tadalafil

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’s logo

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 SolutionsmedINDEX (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.

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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2019_006 | Decision of 1 May 2019
Case No. S2019_006 | Decision of 21 March 2019

(1) ICOS Corporation
(2) Eli Lilly (Suisse) SA
./.
Sandoz Pharmaceuticals AG

Single judge:

  • Dr. Mark SCHWEIZER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of ICOS / Eli Lilly:

  • Dr. Christian HILTI (Rentsch)
  • Dr. Demian STAUBER (Rentsch)
  • Dr. Andrea CARREIRA (Rentsch), assisting in patent matters

Representative(s) of Sandoz:

  • Dr. Markus WANG (Bär & Karrer)

FIRST DECISION OF THE FPC
→ injunctive relief granted without hearing the defendant
Case no.: S2019_006
Decision of: 21 March 2019
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SECOND DECISION OF THE FPC
→ injunctive relief denied after hearing the defendant
Case no.: S2019_006
Decision of: 1 May 2019
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Fulvestrant, revisited: Is it still urgent? Views are divergent …

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Case No. S2019_004 | Decision of 9 April 2019
Case No. S2019_004 | Decision of 20 February 2019

Sandoz’s logo

With request of 12 February 2019, AstraZeneca asserted EP(CH) 2 266 573 B1 (see EPO Register and Swissreg for further information) against Sandoz’s generic version of AZ’s Faslodex®, i.e. Fulvestrant Sandoz 250 mg/5ml (Swissmedic approval no. 56778). Note that Sandoz’s generic has been on the market in Switzerland since 26 July 2016.

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.

AZ’s logo

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.

Fulvestrant (aka ICI 182,780), the active ingredient of AZ's Faslodex®
Fulvestrant (aka ICI 182,780), the active ingredient of AZ’s Faslodex® and Sandoz’s generic

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:

17 Jun 2015 Grant of EP’573
29 Oct 2015 1st opposition filed (Hexal)
16 Feb 2016 2nd opposition filed (Actavis)
8 Mar 2016 3rd opposition filed (Fresenius Kabi)
16 Mar 2016 4th opposition filed (Intas)
17 Mar 2016 5th opposition filed (Teva)
17 Mar 2016 End of EPO opposition period
21 Mar 2016 Acceleration request by FPC in opposition proceedings
26 Jul 2016 Sandoz’s market entry
3 Aug 2016 AZ seeks interim injunctive relief based on another patent, i.e. EP'138; S2016_007, see this Blog here
30 Nov 2016 Summons (EPO) issued with ED’s preliminary opinion that patent is invalid
… Mar 2017 Request for interim injunctive relief in case S2016_007 withdrawn
8 May 2017 EPO first instance decision to revoke EP’573
29 Aug 2017 FPC’s first instance decision to revoke EP(CH)’573; O2015_011, see this Blog here
8 May 2018 On appeal re O2015_011, Supreme Court remits the case for re-assessment of obviousness; 4A_541/2017, see this Blog here
15 Oct 2018 Preparatory notes of EPO BoA indicating that obviousness is tbd in the hearing
23 Nov 2018 Judge-rapporteur’s expert opinion in O2018_009 (which is the remitted case O2015_011) that EP(CH)’573 is valid
27 Nov 2018 Gerechtsbank Den Haag holds that EP(NL)'573 is valid and infringed
24 Jan 2019 EPO BoA pronounces the decision to reject the oppositions / maintain EP’573 at the end of the hearing
12 Feb 2019 AZ files requests for interim injunctive relief in the present proceedings
15 Mar 2019 EPO BoA issues reasoned decision

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.


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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2019_004 | Decision of 9 April 2019
Case No. S2019_004 | Decision of 20 February 2019

AstraZeneca AB
./.
Sandoz Pharmaceuticals AG

Single judge:

  • Dr. Rudolf RENTSCH

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of AstraZeneca:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)
  • Dr. Thorsten BAUSCH (Hoffmann Eitle), assisting in patent matters
  • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Sandoz:

FIRST DECISION OF THE FPC
→ no injunctive relief without hearing the defendant
Case no.: S2019_004
Decision of: 20 February 2019
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SECOND DECISION OF THE FPC
→ no injunctive relief at all, after hearing the defendant
Case no.: S2019_004
Decision of: 9 April 2019
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PATENT IN SUIT

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T 1680/17 – Decision of EPO BoA 3.3.01

Chairman: A. Lindner
Member: M. Pregetter
M. Blasi

Decision of 24 January 2019:

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The Swiss approach to urgency is relatively generous, but …

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Case No. S2019_001 | Decision of 25 March 2019

Plaintiff’s logo

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.

Defendant’s logo

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.

Timeline of main / summary proceedings at the FPC

Now it is more clear than ever before: One must not wait about 14 months, for the right to interim measures not being forfeited.

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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2019_001 | Decision of 25 March 2019

Lutz Medical Engineering AG
./.
École Polytechnique Fédéral de Lausanne (EPFL)

Single Judge:

  • Dr. Mark SCHWEIZER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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WO 2017/005661 A1

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Writing instrument: The Supreme Court’s final stroke

Case Nos. 4A_435/2018, 4A_441/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Please see this Blog here for a detailed review of the underlying decision of the FPC in this matter.

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:

  1. Assignment of a patent does not imply assignment of the universal right to the invention per se 
Montres Valgine logo

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.

  1. 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.

Swiss Finest logo

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.
15 Federal Supreme Court: 4A_142/2011, ¶1.3
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.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_435/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Guenat SA Montres Valgine (appellant)
./.
Swiss Finest SA (respondent)

and

Case No. 4A_441/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Swiss Finest SA (appellant)
./.
Guenat SA Montres Valgine (respondent)
Both proceedings were jointly dealt with by the Supreme Court.

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Guenat SA Montres Valgine:

Representative(s) of Swiss Finest SA:

  • Christoph KÜNZI (CBK)

SUPREME COURT
on appeal against O2015_018 (FPC) | Decision of 15 June 2018
Case nos.: 4A_435/2018
4A_441/2018
Decision of: 29 January 2019
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PATENT COURT
Case no.: O2015_018
Decision of: 15 June 2018

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CH 704 790 B1

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CH 704 790 C1

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EP 2 497 648 B1

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Life on Pemetrexed: Hit by the DoE pendulum swinging back

Reading time: 13 minutes

Case No. S2018_006 | Decision of 8 February 2019

CSEM logo

The plaintiff in this infringement case is CSEM, the patentee of EP 1 422 436 B1; see Swissreg and the EPO register for further bibliographic information about the patent in suit.

CSEM sued Cendres+Métaux Microtech AG and Cendres+Métaux SA for infringement of EP’436. The attacked embodiment is the CMK1 movement that features a hairspring made of silicon:

CMMT‘s CMK1 movement

Interestingly, the decision also notes that EP’436 had already been challenged in a nullity case at the FPC, i.e. O2012_015. That case had been settled after the second ordinary judge Tobias Bremi had provided expert opinions in his capacity as judge-rapporteur; these opinions had held that the patent was valid.

Ulysse Nardin logo

O2012_015 apparently is the case L’ AGEFI had reported about already back in 2013: This was an earlier dispute with Sigatec (a joint-venture of Mimotec and Ulysse Nardin). A hearing in O2012_015 had been announced on the FPC’s website twice (for 21 October 2013 and 29 November 2013), but the announcement disappeared in both instances well before the hearing. That fits nicely with L’AGEFI’s report on Friday, 29 November 2013 that the settlement had been reached a few days in advance of the hearing scheduled for exactly that Friday (‘ce vendredi’). Note that Ulysse Nardin had apparently been the first brand to introduce a silicon component in a wristwatch, with a silicon escapement in ‘The Freak’ of 2001:

Ulysse Nardin’s ‘The Freak’ (2001)

Infringement of the patent

CSEM asserted the patent only to the extent of independent claim 1 (features 1.1 to 1.7) in combination with dependent claim 2 (feature 2); i.e., the following features are at stake, in English (translation) and French (language of the proceedings of the patent):

  English translation French (orig.)
1.1 A hairspring intended to equip the balance wheel of a mechanical timepiece and Ressort spiral destiné à équiper le balancier d’une pièce d’horlogerie mécanique et
1.2 in the form of a spiraled rod (10) cut from an {001} single-crystal silicon plate formé d’un barreau (10) en spirale issu du découpage d’une plaque {001} de silicium monocristallin
1.3 having a first thermal coefficient (C1) and a second thermal coefficient (C2) of its spring constant C présentant des premier (C1) et deuxième (C2) coefficients thermiques de sa constante de rappel C,
1.4 the turns of said hairspring having a width w and a thickness t les spires dudit ressort spiral ayant une largeur w et une épaisseur t,
1.5 said rod comprises a silicon core (12) and ledit barreau comportant une âme (12) en silicium et
1.6 an external layer (14) of thickness ξ formed around the silicon core une couche externe (14) d’épaisseur ξ formée autour de l’âme en silicium et
1.7 made of a material having a first thermal coefficient of the Young’s modulus of opposite sign to that of the silicon constituée d’un matériau présentant un premier coefficient thermique du module d’Young de signe opposé à celui du silicium
2 said external layer (14) is made of amorphous silicon oxide (SiO2). ladite couche externe (14) est réalisée en oxyde de silicium (SiO2) amorphe
C+M logo

The defendants argued that the highlighted features in 1.2 were not fulfilled in the attacked embodiment, i.e. that i) the spiraled rod is not ‘cut from’ a silicon plate, but rather worked out by way of a plasma-assisted etching method ; and ii) the orientation of the silicon plate is not {001}, but rather {110}.

With respect to the feature ‘cut from’, the decision holds in ¶22 that a proper construction in view of the specification shows that this feature is not limited to a cutting process in a narrow literal sense, but rather has to be understood in the sense of ‘working out’. Both parties had apparently not put forward any construction of the feature. Still, claim construction is a question of law. The decision holds that the defendant’s assumption is mistaken that the court must not construe the ‘cut out’ feature in the sense of ‘working out’ in the absence of an allegation to that effect by the plaintiff:

Da die Auslegung des Patentanspruchs eine Rechtsfrage ist, 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.

With respect to the orientation of the silicon plate, things are getting interesting. It was beyond dispute that there is an outer layer of SiO2 around the silicon core in the attacked embodiment. See the microscopic images of a broken hairspring in ¶11 of the decision:

Broken hairspring; enlarged microscopic images (left: 4’000x; right: 15’000x)

The decision notes that it is not possible to spot features 1.5-1.7 without destroying / breaking the hairspring. This was apparently undisputed and/or known to the court (‘[u]nbestritten respektive gerichtsnotorisch’).

CSEM did not dispute that the orientation of the silicon plate was not {001}, but rather {110}. Thus, only infringement under the doctrine of equivalents (DoE) was at stake, from the very beginning. An interesting factual setup for applying the DoE, in particular in a world after ‘Pemetrexed’.

Firstly, the decision recalls the checklist that the FPC applies in the assessment of infringement under the DoE in Switzerland, with reference to O2015_018 (¶60). Indeed, the same wording of the three questions has already been used in O2015_015 (in French language), i.e.:

Q1: Same effect (‘Gleichwirkung’)

In conjunction with the other technical features of the patent claim, does the modified feature objectively fulfil the same function as the claimed feature?

Erfüllt das abgewandelte Merkmal im Zusammenwirken mit den übrigen technischen Merkmalen des Patentanspruchs objektiv die gleiche Funktion wie das beanspruchte Merkmal?

Q2: Accessibility (‘Auffindbarkeit’)

Is the same function obvious for the skilled person from an objective point of view, taking into account the teaching of the patent, when the features are exchanged?

Ist die Gleichwirkung für den Fachmann bei objektiver Betrachtung unter Berücksichtigung der Lehre des Patents offensichtlich, wenn die Merkmale ausgetauscht sind?

Q3: Equal value (‘Gleichwertigkeit’)

Does the skilled person who has read the patent objectively come to the conclusion that the patentee has formulated the claim — for whatever reason — so narrowly that he does not claim protection for an embodiment that has the same effect (Q1, above) and is accessible (Q2, above)?

Gelangt der Fachmann bei objektiver Lektüre der Patentschrift zum Schluss, der Patentinhaber habe den Anspruch — aus welchen Gründen auch immer — so eng formuliert, dass er den Schutz für eine gleichwirkende und auffindbare Ausführung nicht beansprucht?

Further, the genesis and the prosecution history of the patent is not decisive for claim construction and, thus, for the scope of the claims:

Die Entstehungsgeschichte bzw. das Erteilungsverfahren ist für die Auslegung der Patentansprüche und damit auch für die Bestimmung des Schutzbereichs grundsätzlich nicht massgebend.

Interestingly, the defendants did not really challenge that both the first and the second question were to be answered in the affirmative. Thus, it all boils down to the ‘right’ assessment of only the third question, and/or whether the applicant has waived any rights to claim infringement under the DoE.

In a first step, the decision analyses what the skilled person concludes from the patent specification itself in respect of the relevance of the orientation of the silicon plate. The orientation is mentioned quite often. But it is held that the skilled person does not get any indication from the patent specification per se that the patentee has formulated the claim so narrowly that he does not claim protection for an embodiment of same function (Q1) that is accessible (Q2). In particular, from an obvious point of view, it cannot be inferred from the claim — even when taking the description into account — that conformity with the primary wording is one of the essential requirements of the invention.

The aftermath of ‘Pemetrexed’

Boom! Welcome to the post-‘Pemetrexed’ world. Would you have guessed that before the Supreme Court decisions in Germany, the U.K. and Switzerland?

After having dealt with the patent as such, the decision also assesses whether the applicant might somehow have waived his right during prosecution to now allege infringement under the DoE. Therefore, one may well consider the prosecution history.

The decision emphasizes that from an amendment of the claims, wherein the attacked embodiment was literally covered by the originally filed claims but is no longer literally covered by the amended claims, it cannot automatically be concluded that the applicant intended to waive protection for this embodiment. Rather, the reason for the amendment is decisive. Only if the amendment was made to overcome objections relating to the attacked embodiment — e.g. in view of free prior art for the attacked embodiment — one may conclude that the applicant has waived protection for equivalents of the amended feature. The Swiss Supreme Court in 4A_208/2017 (¶5.5.8) had referred to and agreed with the corresponding 'Pemetrexed' judgment of the German Supreme Court which had held in ¶68 that

[…] if the amendment was made with regard to formal requirements […] or if it is not sufficiently clear for what reason it was made, a selection decision […] cannot normally be assumed.

Further, the decision holds that a waiver of protection for equivalents could be assumed if the specification of the patent shows (at least) two concrete embodiments with which the inventive effect can be achieved, but only one of these embodiments is reflected in the claim (see 4A_208/2017 (¶5.5.4), with reference to X-ZR 29/15 of the German Supreme Court (hn).

Now, how did that play out in the present case?

The prosecution history does not make clear why the orientation of the silicon plate that had originally been specified in dependent claim 2 had later been included in claim 1. The independent claim had been re-drafted after receipt of the search report on the application as filed. The search report mentioned two documents of category ‘X’ (highly relevant), including JP 06-117470 A. But the subsequent limitation of claim 1 also included yet further features of claims 3 and 4, and the applicant’s submission to the EPO of 12 November 2004 lacks any explanation as to the motivation of the amendment. Because the two ‘X’ documents were considered relevant for the patentability of claims 1 and 2 only (which indicates that the features of claim 2 did not appear to be a sufficient limitation) and because only the features of claim 4 were included in the characterizing part of the amended claim, the skilled person cannot easily assume that the limitation to the orientation {001} was made in order to delimit the subject matter of the patent from the prior art. For this purpose, the inclusion of the features of claims 3 and 4 while omitting the features of claim 2, would have been sufficient. With the further limitation, the applicant possibly wanted to pro-actively an anticipated objection of undue extension of subject-matter (Art. 123(2) EPC) or insufficiency of disclosure (Art. 83 EPC). It is therefore not sufficiently clear why the specific limitation had been made.

Further, the decision emphasizes that the limitation did not distinguish the claimed subject-matter from the free prior art for the attacked embodiment. JP 06-117470 A does not reveal an outer layer that encloses the silicon core as it is in the attacked design. It therefore does not represent a free prior art for the attacked embodiment. Even if one were to assume that the limitation would have been made to distinguish the invention from JP 06-117470 A — which is not sufficiently clear — it cannot in any case be said that the limitation was made with regard to the free prior art for the attacked embodiment. The skilled person therefore cannot and must not assume that patent protection is not sought for embodiments of same effect (Q1) which are accessible for him as a skilled person, with knowledge of the invention (Q2).

What remains to be dealt with in accordance with ‘Okklusionsvorrichtung‘ and ‘Diglycidylverbindung‘ (and as confirmed in 'Pemetrexed') is the question of whether or not there was a situation of, in simple terms:

What is (specifically disclosed but) not claimed is disclaimed.

The decision holds that the patent does not reveal at least two specific embodiments of which only one is claimed. The unique specific embodiment that is disclosed uses silicon wafers of orientation {001}. The defendants have pointed out that the plaintiff admitted (apparently in the written proceedings before the FPC) that the patent when read together with JP 06-117470 A taught the expert that the three crystal orientations of the silicon plate were of same effect for the purposes of the invention. However, this was of no avail. It only establishes that Q2 has to be answered in the affirmative, i.e. that the same effect of the replacing feature had been accessible for the skilled person. It does not mean that specific embodiments were disclosed in the specification of the patent itself. The mere fact that the applicant could have recognized that silicon plates of orientation {110} have the same effect as those of orientation {001} in the context of the invention is not sufficient. Otherwise protection under the DoE for replacing features of same effect (Q1), which could be readily found by the skilled person (Q2), would be excluded because of the third question — what cannot be it:

Dass die Anmelderin hätte erkennen können, dass Siliziumplatten der Orientierung {110} für die Erfindung gleich wirken wie solche der Orientierung {001}, genügt nicht. Denn sonst wäre ein äquivalenter Schutz für gleichwirkende Lösungen, die für den Fachmann auffindbar waren, wegen der dritten Frage ausgeschlossen, was dazu führen würde, dass es keine auffindbaren gleichwirkenden Lösungen gäbe, die als äquivalent zur beanspruchten Lösung zu betrachten wären.

Anyway, it appears that the mentioning of JP 06-117470 A had only been introduced in the specification during prosecution, after receipt of the search report; the respective paragraph [0008] of the patent as granted is missing in the application as filed.

In sum, the patent to the extent asserted was held to be infringed under the DoE.

Validity of the patent

Novelty was not an issue. But the defendants argued for obviousness as a plea in defense. They proposed EP 732 635 A1 as closest prior art in the assessment of obviousness. The plaintiff disagreed with that choice and argued that EP'635 was totally unsuitable (‘denkbar ungeeignet’) — but did not propose a better one. In any event, the decision holds that EP'635 is not totally unsuitable in that it does not lead to an undue ex post facto analysis. Thus, for that it had been relied upon by the defendants, it has to be assessed; ¶24.

The decision holds that EP'635 did not disclose features 1.2, 1.7 and 2. Next, the decision defines the objective technical problem as follows:

[T]o further develop the hairspring of a balance with a view to increasing the accuracy of a mechanical movement equipped with it, even under external influences on the same.

The decision holds that EP'635 is not of much help in solving the objective technical problem. First, because EP'635 already claims to provide items that are insensitive to temperature influences; see EP'635 in col. 4, l. 45-48. Second, EP'635 is primarily about anchors, not hairsprings.

The defendants relied on US 5,783,973 and US 2002/0104475 A1 to bring in the distinguishing features, but both attempts failed.

In sum, the subject-matter of claim 1 was held to be non-obvious; the same applies to the subject-matter of the combination of claim 1 with dependent claim 2.

Interim injunctive relief

Having established that a valid claim is infringed, the decision turns to the requirements for interim injunctive relief.

The decision holds that it was not made plausible that Cendres+Métaux SA, the parent company of Cendres+Métaux Microtech AG, actually contributed to the infringement. The plaintiff’s request for interim injunctive relief against Cendres+Métaux SA was thus dismissed.

The defendant’s also argued that there was no threat of a not easily reparable harm for CSEM since it is only the licensor of the patent to the ‘consortium’, and that license was exclusive. In turn, CSEM argued that the license fee was based on a royalty per unit (‘Stücklizenzgebühr’) and that it acted as a second source of supply for hairsprings according to the patent in suit, which was held sufficient to establish a not easily reparable harm.

Horage logo

Finally, was the matter (still) relatively urgent? CSEM argued to have gained positive knowledge of the infringement only in August 2018, while the defendants argued that CSEM should / could have known since as early as 2013. Indeed, e.g. Andreas Felsl mentioned in an interview in 2013 that the new movement

did not encroach on existing patents. We did all we could to avoid being taken to court.

Screenshot from www.europastar.com (visited 23 February 2019)

The decision holds that CSEM had no reason to make further inquiries due to the above statement. The infringement is not obvious from public documents,  and there is no obligation to acquire and destroy potentially infringing embodiments in the market in order to be able to prove an infringement. Therefore, CSEM cannot be blamed for having abusively waited with the request until September 2018 and thereby forfeited its right to interim injunctive relief.

Food for thought

  1. How much patent / legal knowledge does the skilled person have?

What I find interesting is that the decision walks the reader through each and every occasion where the patent specification deals with the orientation of the silicon plate in ¶36, and holds that the skilled person attributes the explanations in [0023], [0025], [0028], [0030] and [0031] of EP’436 to the specific embodiment only, and will not consider them to be directly relevant for the assessment of the scope of protection.

Further, the skilled person also draws conclusions from the fact that a feature is placed in the so-called characterizing part of an independent claim; see ¶39.

Really? Why is that?

The skilled person had been defined as a a micromechanic specialised in the field of mechanical watchmaking, working in a team with a physicist specialising in microfabrication techniques; ¶20. How comes that these tech people have the patent / legal skills to distinguish between a general, binding teaching in a patent on the one hand, and the merely explanatory examples on the other hand? The aforementioned paragraphs are not introduced with a wording like ‘non-limiting examples’ or sth similar to that effect. The distinction between limiting and non-limiting teachings in a patent requires quite some patent / legal experience, but no such qualification is apparent from the definition of the skilled person.

Similarly, I doubt that the skilled person(s) as they had been defined are aware of the dos and don’ts of claim drafting, e.g. the distinction between the preamble and the characterizing part of a claim and how to place the features therein.

  1. Which effect(s) is/are to be taken into account in the assessment of Q1?

Specifically with respect to the first question, the present decision refers to the Supreme Court decision 143 III 666 — Pemetrexed (¶5.3.3) and the FPC’s decisions S2013_001 — Drospirenon (hn) as well as O2014_002 — Urinalventil (¶6.5.2.3). But the exact wording of the first question is not taken from any of the referenced decisions. In particular, the Supreme Court held in 143 III 666 that the allegedly infringing embodiment must achieve all those effects which, according to the skilled person’s understanding, are to be achieved by the attacked embodiment with the individual technical features of the claim per se and in their interaction (emphasis added):

Die abgewandelte Ausführungsform muss alle diejenigen Wirkungen erzielen, die nach dem Verständnis des Fachmanns mit den einzelnen technischen Merkmalen des Patentanspruchs für sich und in ihrem Zusammenwirken erzielt werden sollen.

This does not necessarily imply that the modified feature of the allegedly infringing embodiment has only one single function or effect. A feature may well, and in my perception typically does, have more than just one single function or effect. S2013_001 does not provide any further clarification in that respect, either; the wording of Q1 in the hn is even shorter, and also uses the singular: Does the replacing feature objectively fulfil the same function? Finally, O2014_002 only refers to the ‘relevant’ function of the feature in ¶6.5.2.3, thus implicitly accepting that there may well be other (potentially less relevant?) functions — and subsequently indeed only discusses one single function.

Moreover, Q1 only refers to the function or effect of the replacing feature. In my reading, this adresses the function or effect of that feature per se only, but does not readily address the interaction of that feature with the other features in the attacked embodiment, and the function(s) or effect(s) of the attacked embodiment as a whole.

I am very much looking forward to a decision that actually expands a bit more on the effect(s) that is/are to be considered in Q1 under the DoE.

Reported by Philippe KNÜSEL and Martin WILMING

BIBLIOGRAPHY

Case No. S2018_006 | Decision of 8 February 2019

CSEM Centre Suisse d’Electronique et de Microtechnique SA

./.

  1. Cendres+Métaux Microtech AG
  2. Cendres+Métaux SA

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Philipp RÜFENACHT
  • Dr. Lorenzo PARRINI

Judge-rapporteur:

  • Dr. Philipp RÜFENACHT

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Andri HESS (Homburger)

Representative(s) of Defendant:

  • Dr. Demian STAUBER (Rentsch Partner)
  • Fabio VERSOLATTO (Rentsch Partner)

DECISION IN FULL

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EP 1 422 436 B1

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Paying annuities may have unexpected consequences …

Case No. O2018_018 ¦ Order (excerpt) of 4 January 2019 ¦ ‘Klageüberfall’

Reading time: 3 minutes
HEADNOTE

Art. 106(1), 107(1) lit. e CPC:

Allocation of costs.

The patentee who deletes their patent from the patent register after the filing of a nullity action is liable to pay the procedural costs even if they have not been forewarned before the filing of the action.

The hn highlights in no uncertain terms the risk associated with maintaining patents of doubtful validity in Switzerland: Even in case of a nullity action out of the blue, and even if the patent is then withdrawn immediately, the patentee / defendant still has to bear the procedural costs.

Frankly, this does not come as a complete surprise. The tendency has already been clear since O2015_010, decision of 5 January 2016. The present order again confirms that Swiss law (unlike Germany, cf. § 93 DE-ZPO) does not provide for an obligation to issue a prior warning letter. With reference to the practice of the cantonal court of Zug (A3 2010 58, ‘Geburtsgel’), the order holds that clapping all costs on the defendant is justified if the defendant had

[…] given the impression by his pre-litigation conduct that he had not had the patent cancelled on mere warning.

Noteworthy, the present order holds that this conclusion can already be drawn from the mere existence of a formally valid patent. This is because the patent is cancelled if the renewal fees due are not paid on time (Art. 15(1) lit. b PatA). It would be unreasonable to assume that the patentee would pay the annuities on time but cancel the patent on first demand.

And, in fact, the patentee in the present matter did not respond immediately to the (informal) notification of the action by cancelling the patent, but rather offered the plaintiff a licence. This suggests that even in the case of a pre-litigation request, the patent would not have been cancelled immediately.

Feller logo

The order has been published in highly truncated form only. But still, I am reasonably sure about the patent at stake. Searches in Swissreg give only a single perfect fit, i.e. EP(CH) 1 204 164 B1 of Feller AG; see Swissreg. Annuities had been validly paid until 30 November 2018, but the patent had been withdrawn shortly before that date, with letter of 6 November 2018 (published in Swissreg on 8 November 2018).

The invention of EP’164 apparently is all about a screwless connecting terminal for electrical conductors, with more secure releasability of the conductors. Claim 1 reads as follows:

Device (1) with screwless terminals for connecting electrical conductors, with at least one spring comprising an elastic terminal arm (7) and a brace (2) which encloses it, where a contact tongue (8) of the terminal arm (7) cooperates with a retaining part (5) of the brace (2) so as to maintain a conductor introduced between the contact tongue (8) and the retaining part (5), where the brace (2) leaves the contact tongue (8) at least partially accessible on both sides of the retaining part (5), so that it can be acted upon from outside the brace (2) on both sides of the retaining part (5), characterized in that the brace (2) comprises a base (3) and a lateral wall (4) the upper part of which is bent so as to form the retaining part (5) in such a way that this retaining part (5) is only connected through its longer side with the lateral wall (4), and that the latter comprises at least one recess (11) in the vicinity of the extremity of the contact tongue (8).

All this is more readily understandable with Fig. 1 of EP’164 at hand:

EP 1 204 164 B1, Fig. 1

Unfortunately, I failed miserably to track the plaintiff of this case. If someone out there does know more, please let me know.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_018 ¦ Order (excerpt) of 4 January 2019 ¦ ‘Klageüberfall’

n/a
./.
Feller AG

ORDER (EXCERPT)

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EP 1 204 164 B1

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David Bensoussan and Rock dental AG have settled

Case No. O2017_026 ¦ Order of 11 September 2018

I had reported about the ownership dispute in summary proceedings between between David Bensoussan and Rock dental AG on this Blog here.

Except for the complaint, nothing had surfaced in main proceedings O2017_026, though. See the full complaint below. I now came across an order that had been issued on 11 September 2018: The parties apparently found an amicable solution. The order had not been published by the FPC, but the terms agreed upon by the parties do not contain any confidentiality obligation. It is rare that one can catch a glimpse of how cases are settled at the FPC: The full order is available in the file wrapper at the EPO in relation to the European phase of the patent application concerned. In brief, the parties agreed as follows:

  • Marc Fehlmann and David Bensoussan are joint inventors.
  • Rock dental AG shall be the sole owner of the patent applications / patents.
  • David Bensoussan shall be reimbursed for assignment of his share of rights in the patent applications / patents with a 20% share of the license income.

As a result of the settlement, case O2017_026 was written off as settled.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_026 ¦ Order of 11 September 2018

David Bensoussan ./. ROCK dental AG

Judge(s):

  • Lara DORIGO

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Guillaume FOURNIER (MLL)
  • Christophe SAAM (P&TS), assisting in patent matters

SUMMARY PROCEEDINGS
Case no.: S2017_008
Decision of: 27 December 2017

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The correct case no. is S2017_008, as indicated on the title page. Don’t be misled by case no. S2017_002 in the header of pages 2 ff of the decision; that’s a typo.

MAIN PROCEEDINGS 
Case no.: O2017_026
Order of: 11 September 2018

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The order is publicly available in the European Patent Register since 17 January 2019.

COMPLAINT AS FILED

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The writ is publicly available in the European Patent Register since 29 December 2017.

PATENT APPLICATION IN SUIT

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Generic Kivexa®: Interim injunctive relief granted, appeal pending

Reading time: 6 minutes

Case No. S2018_004 | Decision of 22 October 2018

As to the background of this case, please see the report about the hearing of 10 September 2018 on this Blog here.

Appeal pending

Making a long(er) story short: The FPC granted interim injunctive relief to prohibit Sandoz from placing its generic version of Kivexa®, i.e. ‘Abacavir Lamivudine Sandoz®’, on the Swiss market. Noteworthy, Sandoz has apparently already lodged an appeal with the Supreme Court — long before the due date.

The decision is pretty straight-forward, at least at first glance. But still, it comes along with some quite pointed conclusions.

The standard of novelty

D1 (WO 96/06844) is not pre-published prior art, but might be relevant for the assessment of novelty under Art. 54(3) EPC 1973. The timeline is a bit tricky. The FPC holds that the priority claims of the patent in suit are valid, with particular reference to GB 9506490.3, claim 16. Still, D1 might be prior art under Art. 54(3) EPC if i) it had been further prosecuted before the EPO, and ii) the designation fees had been validly paid (R. 23a EPC 1973) — what is actually the case (see EPO Register), but had not been argued by the parties. The FPC thus left this issue undecided and did correctly not investigate this of its own motion. Rather, it moved on to the assessment of novelty vis-à-vis D1 as a matter of precaution, and held that novelty is given.

Interestingly, the German Federal Patent Court had apparently held in an interim assessment (which is not publicly available, to the best of my knowledge) that novelty was not given over D1. Now, how does the FPC explain the different outcome? That’s an interesting read, indeed. In a nutshell, the FPC bluntly notes that the standard of novelty is interpreted differently in Germany and at the European Patent Office — and that the FPC follows the approach taken by the EPO. Noteworthy, the FPC holds that the different standard is taken in particular with selection inventions. I am wondering: With all selection inventions, or only some kind of selection inventions? And what does in particular mean here? Is the different standard not even limited to selection inventions?

Dass das deutsche Bundespatentgericht in seiner vorläufigen Stellungnahme zu einem anderen Schluss gekommen ist, hängt damit zusammen, dass der Neuheitsbegriff in Deutschland anders interpretiert wird als vom Europäischen Patentamt, insbesondere [Anm.: Hervorhebung hinzugefügt] bei Auswahlerfindungen. Während beim europäischen Patentamt ein strenger Massstab angelegt wird hinsichtlich dessen, was im geltend gemachten Dokument des Standes der Technik für Neuheitsschädlichkeit offenbart sein muss (gewissermassen streng fotografischer Ansatz), wird gemäss deutscher Rechtsprechung ein grosszügigerer Massstab angelegt.4 D.h. ein Dokument ist gemäss deutscher Rechtsprechung bei Auswahlerfindungen eher neuheitsschädlich als gemäss Auffassung der Rechtsprechung der Beschwerdekammern des europäischen Patentamts.

Das Schweizer Bundespatentgericht folgt dem Ansatz der Beschwerdekammern des europäischen Patentamts, weswegen wie oben dargelegt Neuheit glaubhaft vorliegt.

4 Vgl. z.B. Moufang in Schulte, PatG, 10. Auflage, §3 Anm. 128 und 129.

Loosely translated:

The fact that the German Federal Patent Court came to a different conclusion in its provisional statement is due to the fact that the concept of novelty is interpreted differently in Germany than by the European Patent Office, in particular [Note: emphasis added] with regard to selection inventions. While the European Patent Office applies a strict standard with regard to what must be disclosed in the asserted prior art document in order to destroy novelty (to a certain extent a strictly photographic approach), according to German case law a more generous standard is applied.4 I.e. according to German case law a document is more harmful to novelty in selection inventions than according to the case law of the Boards of Appeal of the European Patent Office.

The Swiss Federal Patent Court follows the approach of the Boards of Appeal of the European Patent Office, which is why, as explained above, novelty is plausible.

4 See e.g. Moufang in Schulte, PatG, 10th edition, §3 Notes 128 and 129.

Practitioner may or may not share the FPC’s view in this respect. In any event, I feel that I have never seen this in writing, without any sugarcoat. Even Moufang in Schulte (referred to in fn 4 of the decision) only gives examples of decisions of the EPO and in Germany for closed numerical ranges, but does not draw any conclusions beyond that.

About motivation and expectation (of success)

The decision holds that in the assessment of inventive step the question arises whether there was a motivation for the combination of the two active ingredients and a reasonable expectation that this combination would also show the same or at least comparable effectiveness, i.e. that it is effectively a valid alternative; see ¶4.8. But there is no reference in the decision why it should be done this way.

I have mentioned earlier on this Blog here that I do not readily agree with the cumulative application of both the motivation and reasonable expectation of success criteria. And I still don’t. But this issue is not relevant for the outcome of the present matter; the decision denies a motivation and does not deal at all with the issue of a reasonable expectation.

The risk of a not easily repairable harm

Is the plaintiff actually at risk of a ‘not easily repairable harm’ as required by Art. 261(1) lit. b CPC?

ViiV corporate tree (section), as illustrated by respondent

Defendant firmly insisted in the hearing of 10 September 2018 that this is not the case, with reference to an illustration similar to the one shown on the right. In brief, plaintiff ViiV Healthcare UK Ltd is the holder of the Swiss SPC, and is fully owned by ViiV Healthcare Ltd; cf the right branch of the illustration.

Likewise, ViiV Healthcare GmbH (holder of the Swiss MA for Kivexa® according to the ‘Spezialitätenliste‘) is fully owned by  ViiV Healthcare Overseas Ltd, which in turn is fully owned by ViiV Healthcare Ltd; cf the left branch of the illustration.

The decision literally recites what has been argued by the defendant in the written reply to plaintiff’s request for injunctive relief (loosely translated below):

Plaintiff has failed to provide prima facie evidence, let alone to state reasons, and to prove that he would suffer any damage which could not easily be remedied if the request for interim injunctive relief was refused. In particular, the defendant contests the allegations in para. 138-141 of the application, namely the allegations (i) that the applicant would suffer damage consisting of a decrease in the number of units sold in Switzerland; (ii) that the applicant would be affected by a price review by the Federal Office of Public Health; (iii) that the applicant would suffer financial losses in the event of a price review; and (iv) that the Federal Office of Public Health would require the applicant either to reduce the ex-works price of Kivexa® or to accept a higher deductible. In any event, the defendant cannot be held liable for any losses resulting from the market entry of a second generic manufacturer (see the allegations in paragraph 1. 139 of the application regarding Art. 38 of the Swiss Care Allowance Ordinance).

Further, defendant had apparently submitted in writing (again, loosely translated):

Paragraph 14 of the request for interim injunctive relief states that ViiV Healthcare GmbH (hereinafter ViiV Switzerland) is a group company and not a subsidiary of the plaintiff. According to the extract from the commercial register (act. 1_5), ViiV Switzerland is 100% owned by ViiV Healthcare Overseas Limited (UK), which is a 100% subsidiary of the parent company of the ViiV Group, ViiV Healthcare Limited. ViiV Healthcare Limited is the sole shareholder of the applicant.

The above had been submitted under the heading ‘Parties’, but apparently not in relation to the (lack of a) not easily repairable harm. The decision holds that the fact that the plaintiff itself does not suffer any damage due to the aforementioned corporate structure, but rather ViiV Switzerland, had not been asserted by the defendant in his written reply to the request for injunctive relief, but only for the first time at the hearing on 10 September 2018 — i.e., after the closure of the file after a single exchange of briefs (see decision 144 III 117 of the Supreme Court, ¶2.2).

But even if these allegations were admitted into the proceedings, the decision holds that a not easily repairable harm would be sufficiently credible. In the FPC’s view, it is ‘obvious and notorious’ that in such group constellations of pharmaceutical companies a disadvantage that cannot be easily repaired arises for the group and thus at least indirectly also for the formal holder of the SPC. The FPC failed to see why / to what extent this should not be the case in the present setup.

Es ist offensichtlich und notorisch, dass in derartigen Gruppenkonstellationen von pharmazeutischen Konzernen ein nicht leicht wiedergutzumachender Nachteil bei der Gruppe anfällt und damit wenigstens indirekt auch bei der formellen Inhaberin des Schutzrechts. Inwiefern dies in der vorliegenden Konstellation nicht der Fall sein sollte, ist nicht ersichtlich.

As noted above, defendant has apparently already appealed the decision.

UPDATE 10 April 2019:

Defendant’s appeal has been dismissed by the Supreme Court with decision 4A_575/2018 of 12 March 2019; published today.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2018_004 | Decision of 22 October 2018

ViiV Healthcare UK Ltd.
./.
Sandoz Pharmaceuticals AG

Panel of Judges:

  • Dr. Christoph GASSER
  • Dr. Tobias BREMI
  • Marco ZARDI

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kilian SCHÄRLI (MLL)

Representative(s) of Defendant:

DECISION IN FULL

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PATENT IN SUIT

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Laurastar ./. Innosteam: Register ban upheld, but what is next?

Case No. S2018_003 | Decision of 24 August 2018 | ‘chaudière-miniature’

Reading time: 4 minutes

Laurastar and Innosteam are litigating about ownership of two PCT applications, i.e. WO 2018/006994 A1 and WO 2018/036653 A1; see the EPO Register here and here. The patent applications are about devices and methods for producing instant steam (WO’994) and instant hot water (WO’653), for use e.g. in devices for ironing.

We have reported on this Blog here about the provisional register ban that had been issued without hearing the defendant beforehand, and the subsequent hearing.

Laurastar logo

The main disagreement between the parties relates to the relevant time period in which the inventions had been made: While Laurastar alleges that the inventions had been made by Mr. Mantegazzi and Mr. Pasche when they had been employed by Laurastar, defendant submits that the inventions had only been made thereafter, i.e. when Mr. Mantegazzi and Mr. Pasche have been employed by the defendant.

Plaintiff inter alia relied on the following document that was undisputedly created by Mr. Pasche during his employment with the plaintiff:

act. 1_8, created by M. Pasche while employed by the plaintiff

In a nutshell, the present decision maintains the register ban while main proceedings are pending, to sort out the ownership dispute. And this might turn out to be a tricky exercise: The decision provisionally holds that the subject-matter of

  • claims 1, 5, 7, 11, 20 and 21 of WO’653; and
  • claims 1, 5, 7, 8, 9, 11 (first and second option), 22 and 23 of WO’994

had likely already been invented by the two inventors when they had been employed by the plaintiff, in fulfilment of their contractual duties. Rights in these aspects would reside with the plaintiff; Art. 332(1) CO. The two PCT applications may thus have to be partially assigned to the plaintiff (Art. 29(1) PatA) — but only in main proceedings. This co-ownership would be kind of a forced marriage. If it doesn’t work out in practice and the parties get divorced, it will be hard to cut out and reshuffle the respective shares in the inventions.

Now, how to proceed with the two PCT applications in the meantime? They need to be nationalized in early 2019, and a decision in main proceedings is unlikely to be final by then. The decision unmistakably holds that it will be up to the plaintiff to decide how to best protect his interests in this respect:

On ne saurait manifestement condamner la défenderesse à entrer dans les phases nationales dans tous les Etats contractants du PCT, car cela pourrait se révéler prohibitif. Il appartiendra à la demanderesse de décider comment sauvegarder ses intérêts une fois que le délai d’entrée dans les phases nationales approchera de sa fin, ce qui semble être le 5 janvier 2019 (pour WO’994) respectivement le 24 février 2019 (pour WO’653).

Loosely translated:

It is clearly not possible to order the defendant to enter the national phases in all the contracting states of the PCT, as this could be prohibitive. It will be up to the plaintiff to decide how to safeguard its interests once the deadline for entry into the national phases approaches its end, which appears to be 5 January 2019 (for WO’994) and 24 February 2019 (for WO’653), respectively.

Not to be missed

I am very much looking forward to see how this finally unfolds. The immanent time pressure requires some creativity to ensure that no rights in at least the most relevant designated states are lost.

On the procedural side, it is worthwile to note how the FPC dealt with a document that had been submitted by the defendant that contained additional technical data. The defendant requested that this information shall be considered by the court, but not being handed over to the plaintiff. The court held that either a redacted copy shall be submitted that can be provided to the plaintiff, or the defendant shall agree to have the unredacted version provided to the plaintiff’s attorney and patent attorney, for attorney’s-eyes-only and under threat of sanctions according to Art. 292 CC. The defendant chose to not agree to any of these options. Thus, the court did not take this additional document into account at all.

UPDATE 10 October 2018:

No appeal has been filed; the decision in summary proceedings has become final; main proceedings pending.

Reported by Leila MÜLLER and Martin WILMING

BIBLIOGRAPHY

Case No. S2018_003 | Decision of 24 August 2018 | ‘chaudière-miniature’

Laurastar SA
./.
Innosteam Swiss SA

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Ralph SCHLOSSER
  • Dr. Giovanni GERVASIO

Judge-rapporteur:

  • Dr. Giovanni GERVASIO

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Plaintiff:

  • Dr. Ivan CHERPILLOD (Bourgeouis)
  • André ROLAND (Roland), assisting in patent matters

Representative(s) of Defendant:

  • Jacy PILLONEL (BCP)

DECISION IN FULL

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WO 2018/006994 A1

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WO 2018/036653 A1

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