Bayer’s compound claim on sorafenib tosylate held presumably valid; PI issued

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Case No. S2021_006 | Judgment of 26 April 2022 | ‘Sorafenib tosylate’

Please see the report about the main hearing for some background information about the case.

Zentiva logo

In brief, Bayer HealthCare was seeking preliminary injunctive relief against Sorafenib Zentiva of Helvepharm, the Swiss branch of Zentiva.

sorafenib (free base)
Bayer logo

The present litigation is about alleged infringement (and validity) of claim 12 of EP 2 305 255 B1 (see EPO Register), specifically claiming the tosylate salt of sorafenib as such; i.e. a classic compound claim.

Lately, EP 255 was held to be invalid both in Germany (Federal Patent Court, judgment of 29 September 2021 in cases 3 Ni 12/20 and 3 Ni 13/21) and the U.K. (judgment of 8 October 2021 in case [2021] EWHC 2690 (Pat); the Court of Appeal decided on 1 April 2022 to hear the appeal). Further (negative) judgments that I could get hold of have been issued in The Netherlands (ECLI:NL:RBDHA:2021:13616), and Spain (ECLI:ES:JMB:2021:2692A). A full summary of corresponding decisions is given in the judgment:

The judge-rapporteur’s expert opinion in the present case had provisionally held that the patent was invalid, similar as the outcome e.g. in UK and Germany. However, the final judgment is the exact opposit: It holds that claim 12 is likely valid, and a PI was issued accordingly.

The whole case hinges on the assessment of obviousness. The judgment discusses both WO 00/42012 A1 and Lyons et al. as potentially closest prior art. In both cases, the judgment holds that the skilled person would well have include the tosylate salt into a salt screening:

Further, the judgment holds that the skilled person would not have given up in view of the low solubility of the tosylate, but would rather also have aimed to test the dissolution rate:

However, the FPC was not convinced that the skilled person could have tested the dissolution rate of sorafenib tosylate with standard methods available at the priority date:

Accorginly, the skilled person would not have realized that sorafenib tosylate had a surprisingly high dissolution rate, despite its low solubility (about as bad as the free base):

Dissolution rates of sorafenib salts and free base

Interestingly, EP 255 itself is totally silent about the advantages of the tosylate salt over other pharaceutical forms of sorafenib. However, EP 255 does disclose animal experiment that indicate an anti-cancer effect — which implies sufficient biovailablity.  Accordingly, the judgment holds that experimental data that have only been generated after the filing date in support of the bioavalability are admissible.

Note that the judgment does not discuss ‘plausiblity’ here. Great!

The FPC acknowledges that its finding of presumable validity of claim 12 of EP 255 differs from the decisions in DE, GR, UK, NL and Spain. Briefly investigation the reasons, the judgment holds that it does not appear to have been disputed elsewhere whether the dissolution rate could have been measured with routine methods at the priority date. However, there is yet another difference over the judgments in the UK and NL: These two judgments hold that the skilled person would have synthesized sorafenib tosylate without any inventive activity (for it to be included in the salt screening), and that claim 12 was invalid for this reason — irrespective of whether or not the skilled person would have realized that sorafenib tosylate is suitable and efficient for oral administration. The FPC disagrees with this assessment (¶59):

Bei auf eine chemische Verbindung als solche gerichteten Patenten genügt es aber zur Begründung der erfinderischen Tätigkeit, wenn der beanspruchte Stoff eine überraschende Wirkung oder Eigenschaft aufweist.

The judgment refers to some (very) old decisions of the German Federal Supreme Court (X ZB 11/68 – Disiloxan; X ZB 2/71 – Imidazoline) and some decisions of the Boards of Appeal of the EPO in a footnote in support of this view. Sounds familiar, doesn’t it? But the judgment also refers to Ralf Uhrich’s PhD thesis ‘Stoffschutz’ (available in full text here) criticizing it. The latter is a phantastic read, indeed. Now, that could have been a very interesting aspect of the decision; but the discussion stops right there.

/MW

BIBLIOGRAPHY

Case No. S2021_006 | Judgment of 26 April 2022 | ‘Sorafenib tosylate’

Bayer HealthCare LLC
./.
Helvepharm AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Andreas SCHÖLLHORN

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

JUDGMENT

PATENT IN SUIT

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Swisscom beats the patent troll

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Case No. O2020_004 | Judgment of 22 March 2022 | ‘Swisscom TV 2.0’

We previously reported on the litigation between Yodoba and Swisscom over the alleged infringment of EP  1 650 961 in Switzerland herehere, and here.

The decision has now been issued and it did not end well for Yodoba. The FPC found that all asserted claims of EP 961 are invalid and rejected Yodoba’s complaint accordingly.

But first things first — the decision still contains a few interesting points.

Settlement Talks

As mentioned in my report of the main hearing, no settlement discussions were mentioned or started in the course of the main hearing and I speculated that a settlement was already off the table.

Indeed, the final decision mentions that a settlement was negotiated and agreed on by both parties after the instruction hearing. However, the plaintiff withdrew from the settlement and instead proceeded with the infringement procedure.

Procedure’s a #$@!%

The main hearing already gave me some insight into the judge-rapporteur’s expert opinion. We knew that the plaintiff had submitted several auxiliary requests and had inter alia limited EP 961 to only claim 1, but no longer asserted the further independent claims 6, 11 and 16. The final decision now gives us some more details on that.

Apparently, the plaintiff had asked the court in their comments to the judge rapporteur’s preliminary opinion to revoke the above-mentioned claims of EP 961 erga omnes.

Erga omnes, you say? Wouldn’t that be something. But the court was not in the mood for a landmark procedural decision and referred plaintiffs to the Swiss IPI.

With a mind willing to understand, the court treated the above request as a further inter partes limitation and admitted it into the proceedings as no new factual basis for the proceeding would be presented to the court by doing so.

What’s more, the plaintiff apparently only submitted auxiliary requests in the form of amended claims, but did not submit corresponding (limited) prayers for relief.

The court thus did not consider auxiliary requests 2-5. Even if the patent in suit as limited according to one of the auxiliary requests were valid, according to the court, it would have no bearing on the outcome of the case (as the corresponding prayer for relief would be overly broad).

On the Merits

Based on the above, what was left of EP 961 was claim 1 as granted (and of course claims dependent on claim 1) and claim 1 as amended in auxiliary request 1, the latter containing  a further limitation related to saving of multimedia files:

However, as it turned out, the crucial feature of claim 1 (which was also contained in amended claim 1 of AR1)  was feature 1.C.1:

We already knew from the main hearing that the defendant had argued that feature 1.C.1 extended the subject matter beyond the content of the application as filed. However, it seemed that the judge-rapporteur had not followed this argument at the time.

The decision, however, now follows the defendant’s line of argument. Specifically, the court agreed that the application as filed only discloses the saving of a partial program in one file, whereas the claim as granted requires the saving of one partial program in several files:

Accordingly, the court found claim 1 of the patent in suit (as granted as well as according to auxiliary request 1) invalid for extension of subject matter beyond the application as filed. As the court did not consider the further auxiliary requests and needed not consider claims 6, 11 and 16 based on plaintiff’s inter partes limitation, this finding disposed of the case in its entirety and in the defendant’s favor.

It is noteworthy that the court still reviewed the novelty of claim 1 in view of US 2003/0208767. In this context, the court used an interpretation of the claim which would not have resulted in an unallowed amendment and found that in this case, the claim would lack novelty.

The decision can be appealed to the Swiss Supreme Court.

Reported by Philippe KNÜSEL

BIBLIOGRAPHY

Case No. O2020_004 | Judgment of 22 March 2022 | ‘Swisscom TV 2.0’

Yodoba AG
./.
Swisscom (Schweiz) AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Daniel VOGEL
    • Peter RIGLING

Judge-rapporteur:

    • Daniel VOGEL

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)
    • Dr. Kurt SUTTER (Blum), assisting in patent matters
    • Martin TOLETI (Blum), assisting in patent matters

JUDGMENT IN FULL

PATENT IN SUIT

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It’s not your patent application! Even if you had told me: I already knew!

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Case No. O2019_001 | Judgment of 16 March 2022 | ‘Abtretungsklage; Tenside’

Good Soaps logo

We have reported about this fiercly fought assignment action already several times; see e.g. this Blog here, here and here. Werner & Mertz (well known e.g. for its brand Frosch®) had sued Compad Consulting for lack of entitlement to EP 2 592 134 (cf. the European Patent Register for bibliographic information), i.e. unlawful usurpation thereof. Compad’s licensee of EP 134 is Good Soaps.

Frosch® in the rape

Generally speaking, the invention pertains to the use of sustainably sourced detergents in cleaning agents. The independent claim of EP 134 is much more lengthy, though. In particular, rapeseed methyl ester ethoxylates (rapeseed MEEs) appear to be of most interest. In plaintiff’s view, the «basic concept of the invention» was the replacement of the petroleum-based surfactant Lutensol AO7 with rapeseed MEE in a certain Frosch® washing agent, with satisfactory washing results.

As usual, the burden of proof was on Werner & Mertz to establish that (i) their employee made the invention; (ii) how / when this invention was communicated to the alleged usurpator; and (iii) how this invention is reflected in the patent (application) at stake.

The parties fundamentally dissented about what exactly had been communicated in a seemingly critical meeting of 27 August 2009 of Mr QUADE (with Werner & Mertz since about 40y) and Ms SCHNEIDER (formerly with Kolb, now with Good Soaps), and not even witness testimonies could finally clarify this issue.

w rapeseed MEE

However, this turned out to be not decisive anyway. The judgment holds that defendant was able to prove a fact in support of his position, i.e. that even if the alleged facts had been communicated by Mr QUADE in that meeting, this information amounted to nothing more than what Ms SCHNEIDER had alread known at the time: There was already an Ecover® product on the market at the time that contained rapeseed MEE as a detergent. Accordingly, the judgment holds that the complaint has to be dismissed.

This is not the first time that the «prior knowledge» exculpation has appeared in case law. It is long-established practice e.g. in Germany; see e.g. X ZR 79/07 – Steuervorrichtung:

buried information

However, to the best of my knowledge, this is a first in Swiss case law — and it appears essentially without any further ado. I would have liked to learn a bit more about the legal reasoning, even though the facts of the present case were pretty straight forward in this respect.

What would it generally take to establish prior knowledge of the invention? What is the necessary level of awareness of this information? E.g., is it sufficient that the information was somewhere buried in an archive, and maybe essentially forgotten only until one has been told again?

Anyway, subjective «prior knowledge» of the allegedly usurpated invention must not be confused with an objective lack of novelty: Patentability of the allegedly usurpated invention is irrelevant in an assignment action.

The judgment may still be appealed to the Supreme Court.

UPDATE 26 May 2022: As confirmed by the FPC, no appeal has been filed; the decision is final.

/MW

Header image courtesy of Christopher Gilb / Luzerner Zeitung.

BIBLIOGRAPHY

Case No. O2019_001 | Judgment of 16 March 2022 | ‘Abtretungsklage; Tenside’

Werner & Mertz
./.
Compad Consulting GmbH (trading as Compad Finance)

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Frank SCHAGER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

JUDGMENT IN FULL

PATENT APPLICATION IN SUIT

Clean version of the DREX, i.e. the version for which the EPO indicated its intention to grant a patent:

Application as filed, published as EP 2 592 134 A2:


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Enforcement of an injunction: The risk of hyperlinks

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Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

C&E Fein and Bosch have been litigating with Coram for quite a while, first in summary proceedings (no PI was imposed on Coram; see this Blog here) and subsequently in main proceedings (see this Blog here). The judgment in main proceedings held that EP 362 (see the EPO Register and Swissreg for further information; verbally substantially limited inter partes) was valid and infringed by Coram’s tools with connectors referred to as ‘Quick-Fit’ or ‘Q-Fit’.

Coram appealed, but the Supreme Court dismissed the appeal with judgment of 11 February 2022 (published only yesterday, 6 April 2022). Note that the appeal had no suspensive effect.

While the appeal was still pending, the parties locked jaws again. C&E and Bosch asserted that Coram did not comply with the court order.

Here is what happened:

The FPC handed down its judgment in main proceedings on 1 September 2021. The operative part of the judgment inter alia prohibits Coram to contribute to the offering of the saw blades with infringing ‘Quick-Fit’ connectors:

I take from the judgment that Coram immediately complied with the operative part of the judgment in most parts. Coram does not sell directly to end users, but only to a single distributor, Revotool. Coram immediately stopped its sales to Revotool, recalled infringing items from Revotool and urged Revotool to recall items from downstream distributors.

However, Coram’s website apparently remained unchanged until about 19 October 2022; the landing page still showcased tools with Q-Fit connectors e.g. on 16 September 2021. The tricky thing is that there is a hyperlink («Wo kaufen? […] Händlernetzwerk») at the bottom of the page, that provides a list of all points of sales in Switzerland where Coram products (not all of which are covered by the judgment) can be purchased by end users. The judgment holds that this is covered by the prohibition of contributing to offers. The legal term «Mitwirken» is broad, but clear:

Even though no actual sale of infringing goods has occured, the judgment holds that Coram had an increased duty of care in view of the judgment, and that a hyperlink to webpages where infringing goods are still offered (even though they have apparently not been sold anymore via these webpages!) is not excusable under the circumstances.

After a warning letter, Coram put a disclaimer on its website on or after 19 October 2021 (see e.g. here, 30 November 2021):

Das Angebot der Quick-Blätter gilt nicht für die Schweiz. Es werden keine Sägeblätter mit der Quickaufnahme in die Schweiz verkauft.

The judgment holds that this did not resolve the issue, but rather amounts to a somewhat contradictory behavior. The disclaimer indicated non-availability in Switzerland, but some points of sale that were hyperlinked by Coram still offered infringing tools.

Calculation of the administrative fine
you’ve been bad!

The initial threat was an administrative fine of CHF 1’000,– per day. The judgment acknowledges that Coram did not entirely ignore the operative part of the judgment and holds that the violation was only minor («minderschwer»). Further, Coram did not act wilfully, but only negligently. With the disclaimer in place after 19 October 2021, the violation is held to be even less severe. Accordingly, the daily fine was set to CHF 300,– for each day of violation until 19 October 2021, and CHF 100,– for each day thereafter.

Even though the max. fine was reduced by 70% and 90%, respectively, the overall fine still amounts to CHF 16’800,–. The overall bill for Coram is CHF 25’800,–, including a court fee of CHF 4’000,– and a partial refund of plaintiffs’ expenses for legal representation of CHF 5’000,–. That’s quite some money for a negligent hyperlink to some point of sales websites that still showed infringing offers which did not result in a single sale.

Coram’s second generation ‘Quick-Fit’

Here is an example of Coram’s tools with the first generation ‘Quick-Fit’ or ‘Q-Fit’ connectors :

You will readily appreciate the hexagon shape of the connector. Accordingly, there are six driving area regions in the first generation ‘Q-Fit’ connectors — an even number between 4 and 32 in accordance with the verbally limited claim.

Apparently, this fits well into the dodecagon shape of Starlock® fittings of Bosch and C&E Fein:

Starlock® fitting and tool  with dodecagon shape
‘Q-Fit’ (gen. 2)

Interestingly, a heptagon shape apparently is also compatible with the Starlock fitting. Coram’s second generation ‘Q-Fit’ (see e.g. the header image) that has been introduced into the market apparently in due consideration of the injunction has no even number of driving area regions anymore.

A smart move, this quick fix second gen “Q-Fit”, isn’t it?

/MW

BIBLIOGRAPHY

Case No. S2021_009 | Summary Judgment of 14 March 2022 | ‘Enforcement’

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

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Daniel M. ALDER
    • Dr. Markus A. MÜLLER

Judge-rapporteur:

    • Dr. Daniel M. ALDER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUMMARY JUDGMENT / ENFORCEMENT

JUDGMENT ON THE MERITS

PATENT IN SUIT

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An objective technical problem that literally recites the solution?

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Case No. O2020_008 | Judgment of 10 January 2022

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

CABB logo

In short, Lanxess Deutschland GmbH, had sued CABB AG for infringement of the Swiss part of EP 2 468 653 B1, i.e. EP(CH) 2 468 653 H1.

EP 653 as initially granted pertained to a bunghole closure for closing a transport drum containing thionyl chloride (claim 1), a transport drum comprising a bunghole closure (claim 6), and a use of perhalogenated polymers for sealing a transport drum which at least partly contains thionyl chloride (claim 11).

Lanxess logo

The key feature of the patent pertains to a sealing which consists essentially of a perhalogenated polymer, in particular PTFE (more widely known as Teflon®) and/or PCTFE. According to EP 653, such sealings significantly reduce the corrosion of the transport drum which would occur if the thionyl chloride escaped and reacted with the humidity of ambient air.

Lanxess drum

With the partial waiver published as EP(CH) 653 H1, the independent claims directed to the bunghole closure and the use were deleted, and the remaining claim on the transport drum was limited, inter alia, to the feature that the drum is actually filled with thionyl chloride (and not only that it is suitable for this purpose).

Only (in)validity of the patent was at stake. CABB had relied on various public prior uses as closest prior art. One of the prior uses related to a drum with a PTFE seal. However, the drum had been used for storing oxalyl chloride instead of thionyl chloride.

It had already been clear from the pleadings at the main hearing that the expert opinion of the judge-rapporteur had held that the patent was invalid. Accordingly, the actual outcome in the final judgment that the complaint is dismissed (for invalidity of the patent in suit) does not come out of the blue.

Discussion of (non-)obviousness is always highly case-specific and rarely of broader interest. Not so here. Two aspects of how obviousness is assessed are seriously confusing me.

The ‘objective technical problem’

The judgment holds that what had been known from the closest prior art was a transport drum with all constructive features with respect to the sealing etc., and that this drum had already been suitable for storing thionyl chloride. However, it had not actually been filled with / used for storing thionyl chloride; which accordingly is the distinguishing feature.

Now, what is the ‘objective technical problem’ then?

Assuming the skilled person was the transport drum expert, I was prepared to read something like «Coming up with a new use for the known transport drum», or maybe «Expanding the application of the known transport drum to other corrosive liquids», or similar.

Alternatively, from the viewpoint of a chemist as the skilled person (but not necessarily with the known transport drum as closest prior art), something like «Identifying an alternative (or better / safer?) transport / storage means for thionylchloride» would have made sense to me.

However, the judgment holds that the objective technical problem is to use the known transport drum for the transport of thionylchloride, and to at least partially fill it with thionlychloride.

Notably, that’s not meant to be the claimed solution. It’s the ‘objective technical problem'(?).

I was taken aback. An ‘objective technical problem’ that literally recites the claimed solution?! The EPO Guidelines in G VII, 5.2 explicitly hold that this is a no-go:

[T]he objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity.

I understand from the judgment that Lanxess objected to the formulation of the objective technical problem in that way. To no avail. The judgment holds that the claim essentially («im Kern») is a use claim, and that it is common for use claims to phrase the ‘objective technical problem’ in the above manner.

That is somewhat surprising to me. I would say that I am a heavy user of use claims, but I have not yet been faced with an ‘objective technical problem’ formulated like this. The judgment itself does not refer to any precedent, and I am not aware of any case-law or other authority either.

These remarks on the formulation of the objective technical problem for use claims leave me perplexed. It remains to be seen how use claims will henceforth be dealt with at the FPC. If this approach will be followed, I fear that use claims are effectively dead on arrival.

Long-felt need

I understand that plaintiff had argued that the invention cannot have been obvious because even though the issue of corrosion with other transport drums that contained thionyl chloride had been known in the art, the invention had not been made for years. I cannot know the exact pleadings, but this appears to be what is commonly referred to as a secondary indication of non-obviousness, i.e. a long-felt need.

However, the judgment holds that this does not count at all; only a prejudice could serve as an indication of non-obviousness:

On the contrary, the EPO Guidelines in G-VII, 10.3 hold that addressing and solving a long-felt need may well be considered as an indication of non-obviousness:

Where the invention solves a technical problem which workers in the art have been attempting to solve for a long time, or otherwise fulfils a long-felt need, this may be regarded as an indication of inventive step.

What is more, the FPC did refer to the secondary indication of a long-felt need in a decision last year, i.e. O2019_005 in ¶47. The present decision, however, does not refer to O2019_005 in this respect; an editorial glitch? It is currently not fully clear to me whether these considerations on a long-felt need in the present decision amount to a change of practice or not. Time will tell …

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_008 | Judgment of 10 January 2022

Lanxess Deutschland GmbH
./.
CABB AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Martin SPERRLE

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Klaus FEGER (Holzach)
    • Dr. Cornelia HOFFMANN (SBMP), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

As initially granted:

After the partial waiver:

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Liability for damages when goods are withheld at the customs

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Case No. O2020_018 | Judgment of 4 January 2022 | ‘Customs assistance’

HEADNOTE

Art. 86k para. 2 PatA; Assistance provided by the customs administration, damages:

If no preliminary measures are ordered after goods have been withheld by customs, the applicant is liable for the damage caused by the withholding irrespective of whether the goods are patent-infringing.

We have reported about the main hearing in this matter on this Blog here. Now, the judgment is out. In a nutshell, plaintiff’s request for damages in the amount of about kCHF 38 was denied to about 95%; only CHF 1’800,– were awarded for legal assistance in the context of the seizure of a shipment at the customs. Interestingly, not even the costs for this item were awarded in full. First, the time spent (6 hours) was held to be excessive; only four hours were held reasonable:

Secondly, the hourly rate of CHF 550,– was reduced to CHF 450,–. Even though attorneys may well charge their clients more, the FPC holds that such costs cannot necessarily be imposed on a party liable for damages to full extent:

Requested items of the alleged damages that were not admitted are:

    • costs of refrigeration and deadfreight (for lack of substantiation; cf. ¶20);
    • costs for legal assistance relating to a test delivery (because that devlivery was not in the course of plaintiff’s normal business operations, i.e. voluntary; cf. ¶22 et seq.);
    • costs incurred for a protective letter (for lack of causation; cf. ¶24 et seq.);

The FPC also held that defendant’s course of action was apparently not vexatious; cf. ¶26 et seqq. and ¶33. Further, the FPC did not buy into the argument that customs assistance was not meant to be used for securing evidence of patent infringement, but rather (only) to stop piracy; cf. ¶28 et seqq.

All this appears pretty straight-forward to me. In my perception, the (really) interesting aspect of the decision is indeed the headnote. A Supreme Court judgment of more than twenty years ago (4C.164/2000, ¶3) in a trademark case might suggest that damages for withheld goods at the customs and when no PI has been granted can only be awarded when the preliminary question of infringement has been assessed. The FPC notes, however, that even though this might be a sensible approach in a trademark case, the same approach in patent matters would lead to a situation where the costs incurred for the assessment of (non)infringement would typically exceed the actual damages to be recovered, by far — contravening the gist of the framework defined by Art. 50 TRIPS.

Accordingly, the hn holds that liability for damages occasioned by withholding goods at the customs and when no PI is granted does not depend on whether or not the goods are actually infringing or not.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_018 | Judgment of 4 January 2022 | ‘Customs assistance’

Ypsomed AG
./.
Becton, Dickinson and Company

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Rudolf RENTSCH
    • Christoph MÜLLER

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch)
    • Maria ISKIC (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa Galbraith (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

JUDGMENT IN FULL

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Delica and JDE litigating over aluminum coffee capsules

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Case No. O2020_002 | Judgment of 21 December 2021

DISCLOSURE NOTICE: Hepp Wenger Ryffel was involved in this matter on behalf of Delica AG.
Delica logo

The plaintiff Delica had initiated nullity proceedings against Douwe Egbert’s CH 711 079 B1 on 2 June 2020; see Swissreg for bibliographic details.

CH 079 is part of a complex patent family. Corresponding to CH 079, the patent family comprises DE 20 2016 106 171 U1 (see the DPMA Register and file wrapper for further information), i.e. a utility model that was split off from a patent application (DE 10 2016 006 034 A1) which itself has meanwhile been been rejected in 2018 (cf. DPMA Register / file wrapper).

It is noted in ¶16 of the judgment that Douwe Egberts had initiated infringement proceedings 21 O 12764/19 in Munich, which are currently stayed in view of the cancellation proceedings; cf. order of 5 August 2020.

Coffee capsule

Claim 1 of CH 079 is pretty lengthy. In a nutshell, it’s about a coffee capsule with an aluminum capsule body and an aluminum cover, wherein the dispute was mainly about a specific arrangement of a sealing element in the flange of the capsule. Further independent claims pertain to a corresponding system and use of said capsule.

DE logo

About half of the judgment is dealing with the procedural history and a recitation of the various requests for maintenance of CH 079 in limited form; DE did not defend CH 079 as granted anymore. Yet further 12 pages of the judgment are spent on claim construction. The latter paved the way for a straight-forward assessment of patentability on the merits: The judgment holds that the subject-matter of all requests on file is anticipated by WO 2014 / 184 652 A1. Accordingly, CH 079 has been revoked and the further novelty attacks based on WO 2014 / 184 653 A1, WO 2014 / 198 474 A1, WO 2014 / 184 651 A1, EP 1 700 548 A1 and WO 2013 / 120 997 A1 did not need to be addressed.

The judgment is not yet final / can still be appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_002 | Judgment of 21 December 2021

Delica AG
./.
Koninklijke Douwe Egberts B.V.

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • André WERNER
    • Kurt STOCKER

Judge-rapporteur:

    • André WERNER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Andrea MONDINI (TIMES)
    • Dr. Theodore CHOI (SBMP), assisting in patent matters
    • Christoph FRAEFEL (SBMP), assisting in patent matters

DECISION IN FULL

PATENT IN SUIT

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Equivalency in case of numerical ranges

Reading time: 9 minutes

Case No. S2021_005:
Order of 19 August 2021 | ‘Deferasirox-Mepha’
Decision of 15 December 2021 | ‘Deferasirox-Mepha’

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of Defendant.
deferasirox

This case is about deferasirox, an iron chelating agent. It is mainly used to reduce iron overload in patients who are receiving long-term blood transfusions in the treatment of chronic anemias.

Novartis held a compound patent that already expired in June 2017; EP 914 118 B1 (EPO Register and Swissreg). A subsequent SPC expired in May 2021; C00914118/01.

Exjade

Initially, Novartis had sold deferasirox as dispersible tablets under the trademark Exjade®. However, the dispersible tablets have been taken off the market in October 2019. They were replaced by Novartis’ Jadenu®, i.e. swallowable tablets of deferasirox.

Mepha’s Deferasirox-Mepha had been approved by Swissmedic on 24 August 2020, and Mepha lodged nullity proceedings against EP 2 964 202 B1 (EPO Register and Swissreg) and EP 3 124 018 B1 (EPO Register and Swissreg) on 19 April 2021 (case no. O2021_004). The patents in suit are currently also challenged in opposition/appeal proceedings at the EPO; both patents were maintained in limited form in first instance, with their respective main claims as follows:

In response to the nullity attack, Novartis counter-claimed for infringement on 29 June 2021 (case no. O2021_005).

Novartis logo

Shortly thereafter, Novartis requested a preliminary injunction against Deferasirox-Mepha on 11 August 2021, based on EP 202 and EP 018. A request for ex parte preliminary injunctive relief was dismissed with order of 19 August 2021, for lack of particular urgency.

The summary judgment after hearing the defendant holds that both patents do not suffer from unallowable amendments, cf. ¶¶25-27. Novelty had not been challenged, and inventive step over WO 2004/035026 A1, WO 2007/045445 A1, WO 2009/067557 A1 and WO 2010/035282 A1 is acknowledged in the summary judgment, cf. ¶¶29 et seqq..

Mepha logo

With respect to infringement, it is important to recall that both patents require deferasirox to be present in an amount «from 45% to 60% by weight»; the allegedly infringing embodiment contained 64.3% by weight of deferasirox.

Novartis essentially argued that numerical values are not sacrosanct but need to be construed like any other feature, and that in particular in view of typical tolerances a value of 64.5% by weight would still be literally covered by the range of from 45% to 60% by weight. The FPC did not buy into that, in no uncertain terms:

Now, moving on to the assesement of infringement under the DoE, here is the current Swiss three-step questionnaire (as a reminder), i.e. assessment of i) same effect(s); ii) accessibility; iii) equality / equal value:

Q1: Same effect?

The judgment first elaborates on two essential issues in the assessment of Q1, i.e. the effect(s) of what; and just one, some or all effect(s)?

As to the first issue, the Supreme Court has caused some confusion amongst practitioners with a remark in BGE 143 III 666Pemetrexed that, at least at the face of it, might suggest that the effect of the whole claimed subject-matter is decisive, not only the effect of the replaced feature (r. 5.3.3, emphasis added):

Vielmehr muss die abgewandelte Ausführungsform 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.

However, the Supreme Court has also explicity referred to the case-law of the German Supreme Court in the Pemetrexed case, and the German case-law undoubtedly focusses on the effect(s) of the replaced feature only. In sum, the FPC holds that it cannot see a clear deviation of the Supreme Court from the generally applied focus on the effect(s) of the replaced feature. (I hope the Supreme Court will clarify its position at the next possible occasion.)

On the second issue, i.e. which / how many effects of the replaced feature one has to look at, the judgment holds that only the desired effects of the replaced features matter (referred to as ‘erfindungsgewollte’ or ‘patentgewollte’ effects) — but that all these desired effects have to be considered (see emphasis in the above citation).

The judgment holds hat the same effect in terms of bioequivalency and swallowability suffices in the case at hand. The mere fact that plaintiff failed to establish the further desired effects of the replaced feature which are outlined in the patents in suit is held to be irrelevant because defendant could not prove that the challenged embodiments do not achieve the corresponding effects either.

Accordingly, Q1 is answered in the affirmative (same effect(s) given).

Q2: Accessibility?

Note that Q2 asks for ‘accessiblity’ of the same effect in retrospect, i.e. when the skilled person is confronted with both the claimed feature and the variant with the replacing feature: In knowledge of both, is the same effect ‘accessible’ for the skilled person?

This approach is in line with e.g. the UK Supreme Court in [2017] UKSC 48 (cf. ¶62), but markedly different to the approach of the German Supreme Court which excludes non-obvious variants from infringement under the DoE, i.e. variants that can only be found with inventive activity.

The FPC notes that, again, the Supreme Court judgment Pemetrexed (BGE 143 III 666) is not fully clear.  While the earlier Supreme Court judgment BGE 142 III 772 — Urinalventil explicitly held that an inventive variant (where exactly the replacing feature is inventive over the replaced one) can constitute an infringement under the DoE (cf. r. 6.4), the exact opposite is held in the Pemetrexed case (cf. r. 5.4.1):

The skilled person must, on the basis of his general knowledge, be stimulated by the patented invention to make the variation; if the variation is itself based on an inventive step, accessibility is ruled out.

Notably however, the Supreme Court in Pemetrexed did not refer to the Urinalventil case anymore, but rather to a pretty old case that still applied a ‘gist of the invention’ approach — which is rightly considered overcome today. (Again, I do hope that the Supreme Court will clarify its position at the next possible occasion.)

Finally, the FPC holds that the current wording of Q2 may be criticized with good cause (sic!), but that it surely is not totally off-beat since it is also used by the UK Supreme Court. The FPC did not consider it appropriate to deviate from the current wording of Q2 in summary proceedings; this shall be subject to main proceedings at the FPC — and ultimately the Supreme Court (again).

In application of the current (retrospective) wording of Q2 (cf. p. 52, last para.), the judgment holds that Q2 is to be answered in the affirmative (accessibility given). However, I’m afraid the way the conclusion (and the analysis two paragraphs earlier) is phrased might well add to the confusion:

Q2 as it stands is not about accessibility of the replaced feature per se, but rather about accessibility of the same effect of the replaced feature. (‘Accessibility’ (Auffindbarkeit) is a very misleading term in the context of Q2 anyway, in my perception; ‘recognisability’ (Erkennbarkeit) would make more sense to me.)

Q3: Equal value?

The judgment holds that tolerances beyond a claimed range which are generally accepted in a certain field are covered by the claimed range, under the DoE:

In view of the evidence on file (a meanwhile replaced EMEA ‘Note for Guidance on Manufacture of the finished dosage form‘ (1995) and European Pharmacopoiea 10.0, 2.9.5), the judgment holds that an amount of 64.4% by weight of the active ingredient is well within the generally accepted tolerance (66% by weight); cf. ¶¶59-61. Q3 was thus answered in the negative.

Accordingly, the summary judgment holds that the patents in suit are infringed under the DoE. Interim injunctive relief was thus granted, but not to the extent of storage (‘Lagern’) and possession (‘Besitzen’); cf. p 60 (don’t be misled by the wrong marginal numbers). Further, defendant was ordered to recall the product from commercial customers within three days of receipt of the judgment; 24 hours as requested were considered too short.

As mentioned above, main proceedings are already pending.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2021_005:
Order of 19 August 2021 | ‘Deferasirox-Mepha’
Decision of 15 December 2021 | ‘Deferasirox-Mepha’

Novartis AG
./.
Mepha Pharma AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Marco ZARDI

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Andrea MONDINI (TIMES)
    • Dr. Andreas WELCH (Hepp Wenger Ryffel), assisting in patent matters

ORDER IN FULL

JUDGMENT IN FULL

PATENTS IN SUIT

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Infringement in Switzerland through globally accessible website

Reading time: 3 minutes

Case No. O2019_007 | Decision of 19 November 2021 | ‘Gene sequencing’

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the Defendant, Latvia MGI Tech SIA.
Illumina logo

Illumina Cambridge had sued Latvia MGI Tech for infringement of two patents, i.e. EP 1 530 578 B1 (cf. EPO Register and Swissreg) and EP 1 828 412 B2 (cf. EPO Register and Swissreg); ¶ 27.

In brief, the judgment holds that both patents are valid (EP 578: ¶ 33 et seqq; EP 412: ¶ 53 et seqq.) and infringed (EP 578: ¶ 84 et seqq; EP 412: ¶ 91 et seqq.).

MGI logo

Further, the globally accessible website en.mgitech.cn (and a brochure «presumably» (‘mutmasslich’) downloaded therefrom) is considered as sufficient evidence of infringement in Switzerland (offer of «[…] installation validation services, including all the reagents required for delivering such services»); ¶ 25-26.

The judgment can still be appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_007 | Decision of 19 November 2021 | ‘Gene sequencing’

Illumina Cambridge Limited
./.
Latvia MGI Tech SIA

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Michael KAUFMANN

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Andri HESS (Homburger)
    • Julian SCHWALLER (Homburger)
    • Andrea HEINIGER (Homburger)
    • Dr. Claudia BIBUS (Blum), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Thierry CALAME (Lenz & Staehelin)
    • Lara DORIGO (Lenz & Staehelin)
    • Dr. Martin WILMING (Hepp Wenger Ryffel), assisting in patent matters

JUDGMENT IN FULL

PATENTS IN SUIT

EP 1 530 578 B1:

EP 1 828 412 B2:

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The ‘verbal limitation’ inter partes: What are the limits, actually?

Reading time: 8 minutes

Case No. O2020_003 | Judgment of 17 September 2021

Hubert Hergeth had sued Uster Technologies AG and Maschinenfabrik Rieter AG for infringement of CH 698 484; see Swissreg for further bibliographic information. The plaintiff is at the helm of Hergeth GmbH.

Uster Jossi Vision Shield 2
Vision Shield 2

The attacked embodiments are Uster® Jossi Vision Shield T and Uster® Jossi Vision Shield 2.

The technology at stake in CH 484 is pretty simple, at least at the face of it: It’s about a device for ejecting and separating fibrous foreign particles (8) in a fibre transport air stream. The particles are blown into a funnel (5). At the exit of the funnel, another air stream takes over the ejected particles:

Page 3 of ch698484b1
Page 3 of ch698484b1
Contributed to DocumentCloud by Martin Wilming (Hepp Wenger Ryffel AG) • View document or read text

Please see this Blog here for a summary of the main hearing in this matter. The outcome is largely in line with the expert opinion of the judge-rapporteur; i.e. CH 484 is invalid (not in substance, but in view of some unallowable amendments) and not infringed.

Now, what is a ‘funnel’, finally?

The parties heavily dissented about what the term ‘funnel’ implies. In coming up with a claim construction, the judgment in ¶ 26 (fn 25) refers to the german orthography reference Duden in first place:

(intended for filling, pouring liquids or trickling substances into bottles or other containers with a narrow opening) Device of conical shape, which at its lower end merges into a narrow tube.

Funnel (Duden); anything but conical.

Okay, but what is ‘conical’ / a ‘cone’?

For the avoidance of doubt, I looked it up: It’s a geometry / geometric body that is formed by connecting all points of a closed and contiguous surface lying in a plane in a straight line with a point (apex) outside the plane (Wikipedia; emphasis added). This defintion is actually much broader than the definition in the judgment which appears to be recited from Duden, again. Confusingly, what is actually depicted in Duden is a funnel that is not conical in that strict sense (rather, the lines are curved). I feel that Duden is not a good reference for technical terms (apart from mere orthography, of course). The judgment does not refer to any other authority, though; but then simply holds that wider part of a funnel according to the patent doesn’t necessarily have to taper to an apex; «this is clear» (‘Es ist klar, …’).

Well, is it? It may be clear for those involved in the proceedings — but it’s not clear to me. In particular since the judgment holds later (in the discussion of infringement) that a funnel is defined by its form, not functionally:

Why should the apex (referred to as the ‘tip’ in the judgment) not matter for a funnel according to CH 484? Tapering to an apex makes perfectly sense to me for any funnel, be it with a straight or curved surface area of the wider part, and it would be supported by the only reference discussed in the judgment in this respect, i.e. Duden. I’m confused. But be that as it may; fortunately, it’s not decisive anyway.

A ‘further opening’: Claim construction / infringement

The features K2, i.e.

at the exit of [the funnel] is an opening (6) for a further air stream

and K3, i.e.

as well as a further opening for the removal of foreign particles with this air stream

turned out to be crucial. The judgment holds that the further opening cannot coincide with the outlet of the funnel; they rather must be separate openings (as depicted in Fig. 1 of CH 484); ¶ 27. On the other hand, the attacked embodiment does not make use of a further opening in that sense; the outlet of the funnel and the further opening for removal of the particles coincide:

Accordingly, the judgment holds that there is no literal infringement, and the complaint was dismissed for this reason; ¶ 91-92. Apparently, no arguments re infringement under the DoE with respect to feature K3 had been on file, which is why the FPC did not dive into this any further; ¶ 93.

Unallowable amendments

The patent application had been heavily amended during prosecution; see the file-wrapper below. It appears that Mr Hergeth essentially followed the IPI’s remarks and proposals. Still, the applicant is ultimately responsible for any amendment (patent professionals would surely have know this, but maybe not Mr Hergeth). A whole lot of features had been amended somewhat free-handed, and defendant argued that most of the amendments were actually unallowable.

In my perception, the FPC did not apply a very strict approach in the assessment of allowability of  the amendments — or, maybe, turned a blind eye to the amendments made / approved by an unlucky, un-represented applicant. Still, two amendment were found unallowable, i.e. i) an amended sentence in the description; and ii) dependent claim 2. The complaint was dismissed also for this reason.

I wonder: Couldn’t that have been fixed inter partes? A verbal limitation of the patent inter partes is meanwhile common practice — which typically means in practice that an independent claim is being limited (see e.g. O2019_012, ¶ 57 and fn 40). But what if the patentee had limited the patent inter partes by way of undoing an unallowable amendment in the specification, and/or deleting a dependent claim? The latter should be possible like in a partial waiver according to Art. 24(1) lit. a PatA (note the reference to Art. 55 PatA, i.e. dependent claims), in my view. But I cannot readily see why a patentee / plaintiff should be prevented from undoing an unallowable amendment inter partes, in principle. I feel that a strict analogy to Art. 24 PatA is not convincing. A patentee could fix unallowable amendments in response to a counter-claim for invalidity. So, why should a defendant be better off when he ‘only’ argues for nullity as a plea in defense?

I am eagerly awaiting a decision of the FPC where this is being dealt with.

The partial waiver

Before the complaint was filed, the patentee had partially waived CH 484. Specifically, dependent claims 3 and 4 were deleted, and the declaration foreseen according to Art. 97 PatD was rephrased in a way that results in Fig. 2 and 3 being deleted:

The judgment holds that the latter contravenes Art. 97 PatD and the Guidelines of the IPI:

However, that does not change the fact that the partial waiver had been registered, which has to be accepted as such for the present proceedings. A defective partial waiver would have to be challenged in administrative proceedings; ¶19, with reference to the ‘Sevelamer’ decisions:

Claims not forfeited

Defendant’s have argued that plaintiff had forfeited claims for alleged infringement, due to inaction for too long. In particular, WO 426 had been cited against plaintiff’s patent application in China, and plaintiff could and should have known about the allegedly infringing embodiment since then.

The judgment explicitly leaves the question unanswered whether the existence of a patent application should have given rise to the assumption that a respective device is actually commercialized. It is the perspective of the defendants that counts in the assessment of forfeit, and defendants did not argue that they had knowledge of the fact that WO 426 was cited against plaintiff’s patent application in China already back in 2010:

Correspoding proceedings elsewhere?

Plaintiff tried to introduce photographs into the proceedings at the FPC that had been taken a few weeks earlier in co-pending proceedings concerning the same attacked embodiment in Turkey.

No further information is available about proceedings in Turkey, for the time being.

The judgment has not been appealed / is final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_003 | Judgment of 17 September 2021

Hubert HERGETH
./.
(1) Uster Technologies AG
(2) Maschinenfabrik Rieter AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Kurt STOCKER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch Partner)
    • Dr. Alena BACH (Rentsch Partner), assisting in patent matters
    • Dr. Alfred KÖPF (Rentsch Partner), assisting in patent matters

Representative(s) of Defendant (1):

    • Dr. Andri HESS (Homburger)
    • Julian SCHWALLER (Homburger)
    • Angelika MURER (Homburger)
    • Dr. Pavel PLISKA (inhouse), assisting in patent matters

Representative(s) of Defendant (2):

    • Lara DORIGO (Lenz & Staehelin)
    • Dr. Andreas WIRTH (inhouse), assisting in patent matters

JUDGMENT IN FULL

PATENT IN SUIT

Initially granted:

Partial waiver:

FILE WRAPPER

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Ex parte interim injunctive relief granted and confirmed after hearing the Defendant

Reading time: 3 minutes

Case No. S2021_003 | Decision of 15 September 2021 | ‘Baugerüst’

DISCLOSURE NOTICE
Hepp Wenger Ryffel is involved in this matter on behalf of the Plaintiff / Tobler AG.

The patent at stake is EP 2 881 521 B1; cf. EPO Register and Swissreg for further bibliographic information. Tobler AG had requested interim injunctive relief for Vijator Schweiz GmbH‘s scaffolds of the “WAS-M” type with a diagonal strut of rectangular, oval or pentagonal shape (cf. claim 1 of EP 521):

Notably, Vijator Schweiz had admitted that EP 521 was valid and infringed by its WAS-M scaffolds; cf. ¶16.  Nevertheless, Vijator Schweiz had indicated to Tobler after having been served with the request for interim injuntive relief that it would export the remaining WAS-M scaffold as soon as possible. This gave rise to ex parte interim injunctive relief by order of 16 June 2021, prohibiting such export. Further, Vijator Schweiz did not submit an unconditional cease and desist declaration, but rather only declared that it would do so in case the FPC would order interim injunctive relief. The threat of (further) infringing acts and of not easily reparable harm was thus established; cf. ¶17, 20.

Tobler logo

Urgency was given, too: Tobler had undisputedly become aware of the infringing acts only in April 2021, i.e. the request for interim injunctive relief was filed soon thereafter (25 May 2021) and well before the 14 months bar for ‘relative urgency’; ¶21.

Commensurability of interim injunctive relief was a non-issue since Vijator had declared that it would provide a cease and desist declaration when the FPC would order interim injunctive relief; cf. ¶24.

The parties were far apart with their respective estimates of the value in dispute: Tobler assumed CHF 100’000,–, while Vijator Schweiz submitted that it had only made a profit of CHF 1’000,– with the infringing scaffolds. The judgment holds that in case of such discrepancy the higher value is typically to be taken — and it is Plaintiff’s commercial interest which is relevant for the value in dispute, not Defendant’s profits; ¶30.

In a nutshell, interim injunctive relief was ordered as requested, including a prohibition to export.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2021_003 | Decision of 15 September 2021 | ‘Baugerüst’

Tobler AG
./.
Vijator Schweiz GmbH

Single Judge (President):

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • n/a
    • n/a, assisting in patent matters

DECISION IN FULL

EX PARTE INTERIM INJUNCTION

PATENT IN SUIT

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Please welcome with me: The mind willing to understand, not desirous of misunderstanding

Reading time: 7 minutes

Case No. O2020_001 | Decision of 9 June 2021

BD logo

As mentioned earlier on this Blog here and here, Becton, Dickinson and Company had sued Ypsomed AG for infringement of EP 2 825 227 B1; see EPO Register and Swissreg for further bibliographic information.

The attacked embodiment is Ypsomed’s UnoPen™:

Ypsomed logo

The FPC’s judgment has meanwhile been published. Cutting a long story short: The FPC had to take a decision only on the unallowability of various amendments of EP 227, and dismissed BD’s complaint on this basis alone.

However, the most interesting aspect of the decision is claim construction. Accordingly, this is also mentioned in the FPC’s tweet:

Claim construction in good faith

With reference to an old Supreme Court decision, 107 II 366 (¶ 2), the jugdment holds that claims are to be construed in good faith; ¶ 24. This is what had been held in 107 II 366:

More recent judgments of the Supreme Court (in German language) did not explicitly refer to the good faith approch anymore, but rather only recited the sentence pertaining to the consequences of wrong, incomplete or contradictory definitions — which are to be borne by the patentee. However, this is apparently merely a shortened citation rather than a change of practice of the Supreme Court; a recent judgment in French language still refers to the good faith approach:

Now, what does ‘good faith’ mean when it comes to claim construction?

[drum roll]

You guessed it, didn’t you? Indeed, it’s the ‘mind willing to understand, not desirous of misunderstanding’ approach of T 190/99 to which the FPC now explicitly refers in ¶ 24 (fn 9):

T 190/99 is one of the most cited EPO decisions of all times. Sooner or later in any complex case at the EPO, the catchy headnote is cited by at least one party. Mostly, by the more desparate one.

The most interesting feature in terms of claim construction is feature 1.4.2:

According to the wording of the claim (emphasis added), the pen is configured such as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

The parties fundamentally disagreed how this is to be understood. The defendant held that the claim wording is clear by and in itself; no claim construction even needed. On the other hand, the plaintiff argued that this should be understood as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

in light of the specification — which is pretty much the opposite of the wording.

First, the judgment holds that feature 1.4.2 in isolation is indeed perfectly clear. However, the claim as a whole throws doubt on the linguistic interpretation of feature 1.4.2. In light of feature 1.4.3, this would mean that not only during an injection position, but also already during dose setting and dose correction a medicament would be ejected. This can’t be it; the claim as a whole would not amount to a credible technical teaching in such a reading.

Accordingly, in light of the specification, the skilled person would indeed understand feature 1.4.2 according to plaintiff’s interpretation, i.e. contrary to the mere linguistic interpretation.

Defendant further argued that one might well assume how a device with a literally interpreted feature 1.4.2 might work, e.g. with an additional (de)coupling arrangement. The FPC did not buy into that. In essence, this would mean to assume an additional feature to compensate for exactly the effect which is literally recited in the claim — which is counter-intuitive.

Finally, the judgment clarifies that this claim construction does not amount to a reduction of the scope of a claim to the disclosed embodiment(s). Rather, the claim as a whole does not provide a credible technical teaching (‘glaubhafte technische Lehre’) at all, and thus calls for proper construction in light of the specification. The proper construction of feature 1.4.2 is not narrower or broader than the literal interpretation; it is simply different.

Unallowable amendments

Allowability of amendments is always very case-specific and rarely of broader interest. This case is not an exception to the rule. However, I stumbled upon one of the various amendments that were held unallowable, i.e. the following feature (emphasis added; ¶ 49 et seq.):

[D]uring dose setting and dose correcting, stopping surfaces of said external teeth of said driver engage stopping surfaces of teeth of ratchet member to substantially prevent said driver from rotating with respect to said dose set knob.

The issue was whether there was disclosure in the application as filed for said engagement not only during dose setting, but also during dose correcting. Plaintiff argued that the feature would only mean, when properly construed in light of the specification, that during both dose setting and dose correcting the relative positions of the teeth of the driver and the teeth of the ratchet member are maintained.

The judgment holds that this is not the right approach: Allowability of amendments is all about clear and unambiguous disclosure in the application as filed, not about whether the skilled person could correctly construe or understand the feature.

On a quick read, this might be confusing. Claim construction surely matters; it has to go hand in hand with the check for proper disclosure in the application as filed; cf. e.g. Case Law of the Boards of Appeal, II.E.1.3.9. Else, the test for allowability of amendments would effectively only amount to a check for verbatim disclosure in the application as filed.

With respect to the specific feature recited above, the judgment holds that engagement of the stopping surfaces (if that may occur at all) in the correcting direction just cannot be such ‘as to substantially prevent said driver from rotating with respect to said dose set knob’:

Dies können die Stoppflächen bei einer Drehung in der entgegengesetzten Richtung als der bei der Dosiseinstellung auf keinen Fall; […]

The issue here was actually a classic non-disclosed feature: the engagement of the stopping surfaces as disclosed could not have the claimed effect; other configurations (which were not disclosed) could well have that effect, e.g. with rectangular teeth. Unlike the claim construction issue above where the claim as a whole did not make technically sense when taken literally. Accordingly, the amendment was unallowable. And, with a mind willing to understand, the judgment does not deny that claim construction matters when checking for allowability of amendments.

Expenses

The judgment is a good reminder that expenses for assisting patent attorneys have to be substantiated. Expenses of more than kEUR 30 for involvement of a patent attorney on two days is not credible from the outset.

BD’s appeal has been dismissed by the Supreme Court with decision 4A_500/2021 of 31 January 2022 (published 9 March 2022).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_001 | Decision of 9 June 2021

Becton, Dickinson and Company
./.
Ypsomed AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Lorenzo PARRINI

Judge-rapporteur:

    • Christoph MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
    • Dr. Axel REMDE (Rentsch), assisting in patent matters
    • Markus FRANTZ (SSM), assisting in patent matters

FPC DECISION

PATENT IN SUIT

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