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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Claim dismissed, counterclaim dismissed: Huge expense, no recompense

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

The FPC handed down the decision in this remarkable litigation about a highly complex mechanical writing system. Please see this Blog here for a report about the main hearing and some background information.

What follows is a rather lengthy post, but this is due to the complexity of the case, both procedurally and technically.

  1. Party positions in a nutshell

It started off with Guenat‘s request that Swiss Finest‘s CH 704 790 B1 be declared invalid; note that the patent has been limited in March 2017 and re-published as CH 704 790 C1, see Swissreg for further bibliographic details. Guenat argued that the invention had been made by Frédéric Garinaud, an independent inventor who is quite renown for being the mastermind behind the Harry Winston Opus 8. Frédéric Garinaud had filed a patent application for a writing instrument; this patent application has then been assigned to Guenat and a patent was granted; EP 2 479 648 B1, see Swissreg and European Patent Register for further bibliographic details.

In Guenat’s view, the subject-matter of the Swiss Patent was invented by Frédéric Garinaud before it was used by Swiss Finest, and Frédéric Garinaud never transferred his patent rights to Swiss Finest. Guenat further argued that the invention of the Swiss Patent is obvious in view of a PowerPoint Presentation which had been sent to a third party without confidentiality obligation. Frédéric Garinaud being the only creator of the technical teachings contained in Garinaud’s European Patent and having transferred his patent rights to the plaintiff, Guenat argues that the defendant has no right to the Swiss Patent.

Swiss Finest countersued and requested that Guenat’s EP’648 be declared invalid, or assigned to Swiss Finest. Swiss Finest argued that in autumn 2010, Frédéric Garinaud had only a vague idea but had not yet completed an invention at that time. The invention was only made later with the substantial contribution of Swiss Finest’s employees after Frédéric Garinaud’s appointment as Creative Director, and any rights in the invention had been assigned to the defendant by employment contract.

Later, Swiss Finest argued that if Frédéric Garinaud was nevertheless considered to have already conceived the invention in the fall of 2010, the patent rights in this invention had been transferred to a simple partnership founded by Fabrice Thueler (owner of Swiss Finest) and Frédéric Garinaud in the preparation of a company ‘Garinaud SA’ which was foreseen to exploit the invention in dispute. Swiss Finest held thus to be the legitimate owner of the rights in the invention which is the subject of the Swiss Patent and, since the invention of the European Patent is the same, it is also entitled to the European Patent. Further, the subject-matter of the Swiss Patent was new and inventive in Swiss Finest’s view, since the PowerPoint presentation had not become publicly available because it had been sent only under an implicit confidentiality obligation. Even if one were to consider that the presentation was to be considered as prior art, the subject-matter of the Swiss patent is nonetheless inventive.

As if all this was not confusing enough, the case was spiced up further with Swiss Finest’s counterclaim for infringement by the Mechanical Fountain Pen RMS05:

Fountain Pen RMS05 by Richard Mille

This product has some amazing mechanics; see yourself:

In brief:

It’s complicated. Very complicated.

  1. The parties’ requests — and why they failed

The stage is set with a rather complicated factual situation. But at least some of the request could be dealt with quite straight forward by the court:

  1. Nullity for lack of entitlement

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. Even though the inventions in both (Guenat’s) European and (Swiss Finest’s) Swiss patent may well be the same, this did not help. Frédéric Garinaud specifically assigned only the European patent application to Guenat, but not to 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.

  1. Nullity for lack of inventive step

Novelty of Swiss Finest’s Swiss patent after partial surrender was not contested anymore. But Guenat alleged obviousness over the PowerPoint presentation that had been sent to Hamdi Chatti of Louis Vuitton in 2010, in further view of i) F. Lecoultre, Les Montres Compliquées, 3ème éd. Neuchâtel 1985; ii) Huguenin / Guye / Gauchat, Les Echappements, 2ème éd. Neuchâtel 1974; and/or EP 1 221 383 A1.

Louis Vuitton logo

With respect to the PowerPoint presentation, the parties dissented whether or not it had been sent to Hamdi Chatti with an implied confidentiality obligation. The last page of the PowerPoint presentation mentioned ‘breveté’ (‘patented’), even though the Swiss patent application had not yet been filed. Frédéric Garinaud was apparently aware of this faux-pas; he wrote to his patent attorney:

I confess I anticipated the patent application.

The decision holds that under the specific circumstances there was no implicit confidentiality obligation associated with the PowerPoint presentation.

It then remained undisputed that the PowerPoint presentation was the closest prior art. However, quite a lot of differentiating features were missing. The missing features could be grouped into three aspects, and three partial problems are dealt with in the decision:

amovibilité the removable endpiece allows wide access to the pen holder, and indirectly to the other components housed in the front part of the writing instrument, avoiding manipulation by the writing tip;
échappement the choice of an escapement as a control mechanism offering a simple and proven solution to control energy release, while producing an audible indication;
verrouillage cooperation between the actuator and the locking system to unlock the power source to release the writing tip when the actuator is actuated, without additional action.

This is the only picture from the PowerPoint presentation in the decision:

PowerPoint presentation

As to the locking system (‘verrouillage‘), the decision holds that this was readily obvious (if not implicitly disclosed already in the PowerPoint presentation). Likewise, the escapement (‘échappement‘) is held obvious in further view of Lecoultre:

Lecoultre, p. 113

However, the removable endpiece (‘amovibilité‘) was more tricky, and the decision holds that this was not obvious from the cited prior art. When seeking a solution to the problem of replacing the ink cartridge, the skilled person would not have thought of a removable endpiece. Instead, he would have e.g. made a pen in which the writing tip as such is detachably mounted on the body or tip, like e.g. in EP'383:

EP 1 221 383 A1, Fig. 1

Thus, the subject-matter claimed in Swiss Finest’s Swiss patent was held to be non-obvious over the cited prior art.

  1. Nullity for yet further reasons

Guenat argued for nullity of Swiss Finest’s Swiss patent for yet further reasons.

First, an alleged undue extension of subject-matter (Art. 26(1) lit. c PatA) in the course of the partial surrender according to Art. 24 PatA; see the B1 and the C1 version of the Swiss patent below.

Second, Guenat alleged a lack of enabling disclosure; Art. 26(1) lit. b PatA.

Without setting out all the details here, both these alleged grounds of nullity failed for apparently straight forward reasons.

  1. Entitlement to Guenat’s European patent

The invention disclosed in the European Patent was already disclosed or was obvious to a large extent from the PowerPoint Presentation prepared and sent by Mr. Garinaud on November 17, 2010; see above — with the only exception of the removable endpiece. This removable endpiece was first mentioned by Frédéric Garinaud’s patent attorney François-Régis Richard (e-patent). In an email dated December 9, 2010, he wrote to Frédéric Garinaud:

I am also realizing that for the change of the cartridge, it would probably be simpler to disassemble the pen by its front part to avoid exposing the watch mechanism in the back.

This undisputedly was the first note of the removable endpiece. Whether the rights to this creative contribution were transferred to Frédéric Garinaud, as alleged by Guenat, could remain open. In any event, it had not been alleged that François-Régis Richard transferred the rights to Swiss Finest. Rather, Swiss Finest only held that the invention was made by Frédéric Garinaud when he was employed at Swiss Finest — which could not be true given the PowerPoint presentation and the email of December 9, 2010.

The decision thus holds that the subject-matter of claim 1 of the Swiss patent was created by Frédéric Garinaud before its use by Swiss Finest — with the exception of the removable endpiece which was proposed by François-Régis Richard without having assigned his rights in this contribution to the defendant.

In anticipation of this outcome, Swiss Finest apparently modified its position later and alleged that it had obtained rights in the European Patent by virtue of a simple partnership agreed between Frédéric Garinaud and Fabrice Thueler in preparation of a company ‘Garinaud SA’ to be established.

However, this was not convincing, either. The decision holds that it is unclear how the right to the patent, even if it had been transferred to the simple partnership, should finally reside with Swiss Finest. Members of a simple partnership are joint owners of the assets, with the consequence that they can only dispose of them jointly. In any event, according to the defendant’s allegations, Frédéric Garinaud and Fabrice Thueler were the partners of the simple partnership. A patent right could therefore only belong to them jointly. However, the defendant did not allege that Frédéric Garinaud agreed to transfer the right to the patent to it.

  1. Injunctive relief

Swiss Finest’s request for injunctive relief in respect of the ‘Mechanical Fountain Pen RMS05’ failed for a lack of concreteness of the attacked embodiment. See e.g. this Blog here (O2012_004, ‘Leichtbeton’) for further information on the necessary concreteness of a request for injunctive relief.

Swiss Finest did not argue for literal infringement, but rather only for infringement under the Doctrine of Equivalents (DoE); see below. Still, the request for injunctive relief merely recited the wording of the claims, and was thus held inadmissible.

  1. Infringement by the Mechanical Fountain Pen RMS05
RMS05 (annotated)

Even though the request for injunctive relief was held inadmissible, the court still dealt with had to assess whether or not the RMS05 was infringing. Confused? I will clarify this later; see below.

It was undisputed that the RMS05 did not comprise a removable endpiece (’embout amovible’). However, Swiss Finest alleged that the function of the removable endpiece is to allow the writing tip to be removed from the pen body to allow an ink cartridge to be inserted or replaced. Swiss Finest further alleged that the fountain pen holder (indicated by the white arrow in the annotated figure) can be unscrewed and removed from the body using a wrench formed in the cap of the pen to place and replace an ink cartridge. In Swiss Finest’s view, the removable fountain pen holder inserted into the endpiece of the RMS05 amounts to an infringement under the DoE.

First, the court carefully defined the function of the removable endpiece in the context of the invention and reverted to ¶ [0015] of the Swiss patent:

It can still be noted that, to have access to the pen holder, the endpiece is screwed on the body and can therefore be unscrewed. The ink supply can then be changed by disassembling the pen holder and the intermediate holder.

The decision holds that this function does not exist in the RMS05. The endpiece is not removable and the disadvantage of the access to the fountain pen holder still remains in the RMS05. The fact that the fountain pen holder of the attacked embodiment can be removed does not change anything in this respect, because according to the Swiss Patent, after unscrewing the endpiece and facilitating access, the fountain pen holder is also removed to replace the cartridge.

As can be seen in the below screenshot of this video on YouTube, the fountain pen holder can be gripped with the cap and removed to replace the ink cartridge. However, the endpiece is fixed (indicated by the white arrow in the screenshot below).

RMS05, replacement of ink cartridge

Therefore, there is no removable endpiece in the RMS05, neither literally nor under the DoE, because the function of the removable endpiece is not realized in this pen. Thus, already the first question of the questionnaire established with O2014_002 was denied.

In sum, neither party succeeded with any attack. This somehow reminds me of the ‘Hornberg salute’:

‘Hornberger Schiessen’
  1. What the decision might be cited for
  1. Competency for assignment of all national validations of a European patent

Swiss Finest had requested that Guenat’s European patent be assigned to them. This was interpreted by the court as to concern all national validations of the meanwhile granted patent. To the best of my knowledge, it had been mentioned for the first time in O2015_009, ¶ 2.1, that the FPC is competent to decide also on ownership of foreign rights — without any in-depth discussion because it had not been decisive anymore in that case.

Not so here. The court now took the chance to set out its reasoning in any detail in ¶ 10 of the decision. The question of ownership of IP rights does not fall within the exclusive jurisdiction under Art. 22(4) of the Lugano Convention; see decision C-288/82 of the ECJ, Ferdinand M.J.J. Duijnstee ./. Ludowijk Goderbauer and further literature in fn 1 of the decision. Under Swiss national law, international jurisdiction for disputes relating to intellectual property rights is governed by Art. 109 CPIL. However, only validity and infringement actions are mentioned, but not assignment actions. Jurisdiction for actions for the assignment of an IP right, in particular a patent, is therefore determined in accordance with the general rule of Art. 2 CPIL, according to which the Swiss judicial or administrative authorities of the defendant’s domicile are competent. As the plaintiff (defendant of the counterclaim) is domiciled in Switzerland, the FPC is also competent for counterclaims relating to the transfer of foreign patents.

  1. Right to accounting

The court re-visited the right to accounting based on Art. 66 lit. b PatA in view of critical voices in the aftermath of O2013_008; see ¶ 58 of the decision (note that fn 33 erroneously refers to O2012_008). However, the decision explicitly confirms the FPC’s practice that in case the court finds infringement there is a substantive entitlement to information and accounting based on Art. 66 lit. b PatA.

  1. Request for accounting with reference to a trademark / product name

As mentioned above, the request for injunctive relief was held inadmissible for lack of concreteness. Still, the court did the whole exercise of infringement analysis. It had to because of the request for accounting. The request for accounting referred to the ‘Mechanical Fountain Pen RMS05’. Such a description would be perfectly inadmissible in a request for injunctive relief, because the product name could be changed at any time. But not so in a request for accounting. The name of a product that has been sold in the past cannot be changed anymore:

However, in the case of conduct that has taken place in the past, it is permissible to specify the allegedly infringing object by means of a type designation or trademark. Such a designation cannot be changed for the past and one therefore knows exactly which product — namely in this case the product previously offered under the designation ‘Mechanical Fountain Pen RMS05’ — is the subject of the information request.

I guess we will see more such simplified requests for accounting in the future.

  1. No mixing-up of functions of features in the test for infringement under the DoE

There is an interesting general remark in ¶ 63 of the decision, i.e.:

One cannot reasonably expand the function of a claim feature and argue that this expanded function is fulfilled by another feature of the attacked embodiment, when the same element (penholder) with the same functionality (can be dismantled to replace the cartridge) is found in the invoked patent in parallel to claimed features, and independently of it (removable endpiece).

Reported by Martin WILMING

IMAGE CREDIT

Header image (Hôtel de Ville de Neuchâtel, Salle du Conseil Général) courtesy of Lucas Vuitel – ArcInfo.

BIBLIOGRAPHY

Case No. O2015_018 | Decision of 15 June 2018 | ‘Instrument d’écriture’

Guenat SA Montres Valgine
./.
Swiss Finest SA

Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Philippe DUCOR
  • Christoph MÜLLER
  • Dr. Ralph SCHLOSSER

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Nathalie TISSOT (Etude Tissot)
  • Christophe SAAM (P&TS), assisting in patent matters

Representative(s) of Defendant:

  • Christoph KÜNZI (CBK)
  • Tarik KAPIC (Bovard), assisting in patent matters

DECISION IN FULL

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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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FRÉDÉRIC GARINAUD

Harry Winston Opus 8

Frédéric Garinaud apparently is a master of complicated mechanics. He developed the Harry Winston Opus 8, a manually-wound watch with a ‘digital’ display of the hours and minutes.

The numbers appear only on demand, when a slide on the right side of the watch is activated. I could not help but do some further research on the Opus 8. It was a limited edition of 50 pieces only, on 9 July 2018 seen at luxurybazaar.com with a price tag of US$ 350’125,–. A somewhat fair deal in view of a purported retail price of US$ 449’700,–.

www.luxurybazaar.com; July 9, 2018

Get to know Mr Garinaud in this video, talking about the Opus 8:

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No further grounds for nullity of an SPC beyond Art. 140k of the Patent Act

Case No. O2017_016 ¦ Decision of 12 June 2018 ¦ “Verletzung Ergänzendes Schutzzertifikat; Sevelamer”

Following-up on a decision granting interim injunctive relief (reported here), the present decision in main proceedings now confirms this outcome. I have reported about the hearing in main proceedings on this Blog here.

As indicated earlier, the defendant neither disputed validity of the basic patent EP 0 716 606 B1 of Genzyme Corporation, nor that the subject-matter of the SPC C00716606/01 is covered by the basic patent or that the attacked embodiment (sevelamer carbonate) is covered by the SPC. Rather, the defendant (only) alleged that the SPC is invalid because the office wrongfully granted re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

The FPC now confirms that the list of grounds for nullity of an SPC as set forth in Art. 140k PatA is exhaustive. The alleged wrongful reinstatement is thus no valid ground of nullity. In particular, the decision refers to the dispatch of the Federal Council when the SPCs had been enacted, i.e. the note that Art. 140k is to define the grounds for nullity:

Artikel 140k Nichtigkeit: Absatz 1: Neben dem Erlöschen bzw. der Sistierung des Zertifikats müssen auch die Gründe festgelegt werden, sie seine Nichtigkeit herbeiführen.

CJEU’s logo

Further, the decision reviews the CJEU’s case law and notes that the grounds for nullity according to Art. 15 of the EU SPC Regulation 469/2009 have never been held to be an open list. Rather, the CJEU only interpreted Art. 3, violation of which is referred to as a ground for nullity in Art. 15 of the EU SPC Regulation.

The FPC notes that the defendant could have appealed the decision of reinstatement (Art. 48 ff APA in the version of 09 December 2003), together with the decision of grant of the SPC – but failed to do so. The decision is thus formally final, and the defendant has to live with it.

If there is a take away message for practitioners in this decision, then it is surely to watch out for fresh grants (not only of SPCs, but also patents, trademarks, designs, etc.), to not miss the 30 days(!) time limit for an appeal; Art. 50(1) APA. This will be the only chance to fight against e.g. a wrongful reinstatement — which is more than you will ever get e.g. at the EPO where there is no such chance at all; but still, you need to act quickly.

Yet another interesting aspect of the decision is the assessment of the value in dispute. The parties heavily disagreed. Plaintiffs had considered it to be CHF 5m, while the defendant only estimated it to be CHF 500k. The FPC had thus to decide on this issue, too; Art. 91(2) CPC. Towards this end, it relied on some interesting rules of thumb:

  1. one third of the turnover of the originator’s product is replaced by the generic within about 2 years;
  2. the profit margin of a generic is 50%.

Based on these rules of thumb, and the plaintiffs’ own statement of an annual turnover in Switzerland of CHF 2.25m p.a., the FPC considered the the value in dispute as CHF 750k, for the roughly two years of protection at stake before the SPC will finally lapse in February 2019.

UPDATE 18 July 2018:

The decision has been appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_016 ¦ Decision of 12 June 2018 ¦ “Verletzung Ergänzendes Schutzzertifikat; Sevelamer”

  1. Genzyme Corporation
  2. Sanofi-Aventis (Suisse) SA

./.

Salmon Pharma GmbH

Panel of Judges:

  • Dr. Ralph SCHLOSSER
  • Dr. Tobias BREMI
  • Dr. Stefan KOHLER
  • Dr. Daniel Kraus
  • Dr. Andreas SCHÖLLHORN SAVARY

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Requester:

Representative(s) of Respondent:

  • Dr. Robert BRINER (CMS)

DECISION IN FULL

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BASIC PATENT

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Amlodipine / Valsartan: Controlling blood pressure while assessing obviousness

Case No. S2018_002 | Decision of 07 June 2018 | ‘Abweisung vorsorgliche Massnahme; Fachrichtervotum im parallelen Nichtigkeitsverfahren kein Grund für die Abänderung einer Massnahme; fehlende relative Dringlichkeit’

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendant.

The patent in suit is EP 2 322 174 B1; see EPO Register and Swissreg for further details. It relates to a fixed dose combined unit dose form of two active ingredients for effective control of blood pressure, i.e. amlodipine and valsartan. The former is a dihydropyridine calcium-channel blocker, the latter is an angiotensin II antagonist.

Déjà-vu, you think? Indeed!

A first request for interim injunctive relief had been dismissed with decision of June 1, 2017; see S2017_001. At that time, the claimed subject-matter had been held obvious over Corea in further view of the skilled person’s knowledge. Separately, nullity proceedings had been pending at that time — and they are still pending now; O2016_006. The main hearing is scheduled for August 21, 2018; see here.

What has changed since then is that the patent has been maintained by an Opposition Division of the EPO in first instance at the end of a hearing on December 6-7, 2017. The reasoned decision has been issued on February 8, 2018; see here. Appeal proceedings are still pending at the EPO.

Wind of change?

In the aftermath of the EPO’s first instance decision, the wind has somewhat changed: While the Düsseldorf Regional Court had initially dismissed the request for injunctive relief (decision 4c O 6/17 of April 10, 2017, the Higher Regional Court overturned the decision of the Regional Court and granted interim injunctive relief (decision I - 2 U 18/17 of December 14, 2017), in consideration of the decision of the EPO’s OD. But it is not only that the wind has changed in Düsseldorf from the first to the second instance. Even the judge-rapporteur in both the first summary proceedings and the nullity proceedings at the FPC has changed his mind and gave an expert opinion in parallel nullity proceedings that the claimed subject-matter was non-obvious. The prior art and the arguments on file are still essentially the same, and it remains to be seen how the panel of five judges will actually decide.

In view of the above, Novartis again requested interim injunctive relief. The FPC noted that a second request for interim injunctive relief is possible in general, but only when the circumstances have changed. And even though this is the case here in view of the parallel decisions elsewhere, the FPC still denied the request. It did so because the facts (i.e. the relevant prior art documents) have not changed, but rather only the legal assessment thereof; ¶4.3.

Vorliegend ist […] zu berücksichtigen, dass die von den Klägerinnen genannten Parallelurteile nicht neuen Stand der Technik behandeln, sondern den schon im ersten Massnahmeverfahren bekannten Stand der Technik anders würdigen.

The FPC held that assessment of validity of the patent in suit apparently is a borderline case which requires in-depth assessment in main proceedings; ¶4.4.

Vielmehr bedarf die Klärung der Frage der Rechtsbeständigkeit des Klagepatents einer eingehenderen Prüfung im ordentlichen Verfahren.

Moreover, the FPC held that there was no urgency anymore. A decision in the present summary proceedings could not be expected substantially earlier than a decision in parallel nullity proceedings, if earlier at all.


Further, the FPC noted that Novartis could have well initiated main proceedings for infringement at any time since defendant’s product launch in January 2017, and now has to live with the consequences of not having done so.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2018_002 | Decision of 07 June 2018 | ‘Abweisung vorsorgliche Massnahme; Fachrichtervotum im parallelen Nichtigkeitsverfahren kein Grund für die Abänderung einer Massnahme; fehlende relative Dringlichkeit’

  1. Novartis Pharma AG
  2. Novartis Pharma Schweiz AG

./.

Mepha Pharma AG

Panel of Judges:

  • Dr. Daniel KRAUS
  • Dr. Tobias BREMI
  • Prisca VON BALLMOOS

Reporting Judge:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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PATENT IN SUIT

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