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.

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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When the EPO’s BoA decision is not persuasive authority

Reading time: 6 minutes

Case No. O2019_005 | Decision of 3 May 2021 | ‘Schnittschutzstreifen’

As reported earlier on this Blog here and here, Sanipat GmbH and Hafner AG have been litigating over certain sealing strips for e.g. shower trays, i.e. Hafner’s ISO-SET®.

In brief, Sanipat had initially asserted EP 2 405 067 B1 and CH 703 691 (see the complaint below), but EP 067 had been revoked by a Board of Appeal of the EPO while proceedings at the FPC were pending; see T 0717/20 – 3.2.03 below. However, CH 691 was still in the game.

No infringement

The operative part of the judgment is not a complete surprise anymore after the pleadings and the taking of evidence at the main hearing: Sanipat’s complaint has been dismissed for lack of infringement. The key issue was whether or not ISO-SET® comprises a cut protection strip (‘Schnittschutz-Streifen’). The cutting experiments had established that ISO-SET® could well be cut with relative ease with a knife. Even though the polyamid / aramid backing of ISO-SET® provides for some reinforcement at the ‘right’ place, this effect was not pronounced enough to convice the court: The backing could still be cut through with a cutter knife operated at a pressing force of only 4-8 Newton. Accordingly, this backing could not fulfill the function it should have according to the patent, in the court’s view.

Now, what is the backing good for, then — if not for cut protection?

The judgment holds that this is indeed a tricky question. However, Hafner only claims in its commercial documents that this aramid backing is meant to keep the sealing tight even when the silicone joint is replaced. It is not specifically claimed that the backing is meant to prevent cuts. A pretty thin line of distinction.

The Board of Appeal decision is not «persuasive authority»

The claim at stake inter alia requires an adhesion surface (‘Klebefläche’). Now, does that feature imply that the surface is equipped with an adhesive? Or does that feature read on any surface onto which an adhesive can be applied?

handicraft paper

The judgment holds that the latter understanding might well be applicable in a different context, e.g. in case of a handicraft paper. However, in case of an adhesive tape, the skilled person would not refer to the non-sticky side as an ‘adhesion surface’. Very illustrative, isn’t it?

Still, a Board of Appeal decided differently in T 717/20 — and revoked the corresponding European patent based on that different claim construction:

The FPC took note of that decision, but was not convinced of its reasoning. Even though Board of Appeal decisions are persuasive authority in some cases, this is not necessarily the case. In the specific claim construction issue at stake, the judgment holds that T 717/20 was not persuasive (i.e. no authority).

Novelty and non-obviousness

The decision holds that CH 691 C1 (after the second partial waiver) is novel over Wetzel 2010, Wetzel 2006, EP 2 071 091 A2, DE 299 08 603 U1 and JPH 09 125 560.

To avoid confusion: Note that the publications of the partial waiver of 2016 and 2019 both have the same Inid code (11), i.e. CH 703 691 C1. This is wrong. The second partial waiver should have been published as C3, actually.

Defendant’s obviousness attacks were based on various alternative pieces of ‘closest’ prior art, i.e. DE 10 2007 043 593 A1, EP 1 038 485 A2, DE 10 2007 010 997 A1, EP 1 891 877 A2, Wetzel 2010 and Wetzel 2006. None of these attacks was successful. I do not believe that the detailed discussion of (non-)obviousness is of broader interest — with two exceptions:

First, the judgment refers to the secondary indicator of a (long-felt) need in support of a finding of non-obviousness, similar to the EPO Guidelines, G VII 10.3. Interestingly, a time of (only) four years is held to be indicative of a (long-felt) need.

Secondly, the FPC defined the objective technical problem more ambitious than the Board of Appeal. Since it had not been pleaded that a certain effect would not occur over the whole scope claimed, the judgment holds that it is to be accepted that the effect (which is a matter of fact) actually occurs.

Claim construction, revisited

Claim construction is one of my favourites, and it is always highly interesting to see how courts deal with it. The most general remarks on claim construction in ¶ 27 (first paragraph) of the judgment refer to O2019_003, ¶ 22 — reciting exactly the same wording (emphasis added):

If the patent specification does not define a term differently, the usual understanding in the relevant technical field is to be assumed.

However, when this concept is being applied to a specific term used in the claim, i.e. adhesive surface (‘Klebefläche’) in ¶ 29 on the very next page, a somewhat different standard is apparently applied:

The usual understanding in the relevant technical field must be taken as a basis, and then it must be examined whether the patent uses the term differently.

Even though the fn again refers to O2019_003 (r. 22), this is not exactly what had been held in that decision: A patent may well use a term differently than usual in the relevant technical field, without actually defining it differently.

So, is it sufficient to just use a term unconventionally in the specification for it to be construed in deviation from the usual understanding? And, if so, which kind of use does it need? Maybe, we will catch a further glimpse on that issue from a judgment in case O2020_001 soon.

No appeal has been filed; the decision is final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_005 | Decision of 3 May 2021

Sanipat GmbH
./.
Hafner AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Alfred KÖPF

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Dr. Lukas ABEGG

Representative(s) of Plaintiff:

    • Dr. Andri HESS (Homburger)
    • Julian SCHWALLER (Homburger)
    • Dr. Bruno MEYER (PRINS), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Michael RITSCHER (MLL)
    • Michelle AMMANN (MLL)
    • Silvan LATSCHA (LS Partner), assisting in patent matters

DECISION IN FULL

COMPLAINT AS FILED

T 717/20 (EPO)

EP 2 405 067 B1

CH 703 691

Partial waiver of 2019:

Partial waiver of 2016:

Initially granted:

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Suffering from COPD

Reading time: 11 minutes

Case No. O2018_008 | Decision of 2 February 2021

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

Tiotropium bromide

Glenmark had challenged the validity of Boehringer Ingelheim’s EP(CH) 1 379 220 H1, which is the Swiss part of EP 1 379 220 B1 after a partial waiver. The patent is about tiotropium capsules for inhalation and relates to BI’s Spiriva® Handihaler® for the management of chronic obstructive pulmonary disease (COPD).

With the partial waiver, BI split the independent claim into two alternatives (amendments marked-up in bold; only available in German, for the time being); see the claims in mark-up below:

Claim 1 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass als Kapselmaterial Gelatine im Gemisch mit dem Zusatz Polyethylenglycol (PEG) in einem Anteil von 1–10 Gew-%, bevorzugt 3–8 %, verwendet wird und dass das Kapselmaterial einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 10% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.

Claim 3 after waiver

Inhalationskapseln, die als Inhalationspulver Tiotropium im Gemisch mit einem physiologisch unbedenklichen Hilfsstoff enthalten, dadurch gekennzeichnet, dass das Kapselmaterial Hydroxypropylmethylcellulose ist und einen reduzierten Feuchtegehalt als TEWS- oder Halogentrockner-Feuchte von ≤ 5% aufweist und dass der physiologisch unbedenkliche Hilfsstoff Lactose ist.
the outcome in a nutshell

As to the common general knowledge (CGK) of the skilled person, the decision holds, with reference to Aulton (a textbook which at the face of it is not prior art but has still been referred to by both parties) and Voigt/Fahr, that the skilled person knew that gelatine as a capsule material was an established material that is suitable for dose inhalation. The skilled person further knew that hydroxypropyl methylcellulose (HPMC) can also be used as a capsule material in general, and in particular in connection with inhalation. The landmark article Ogura et al., which is referred to in Aulton, would probably be consulted by the skilled person without further ado in connection with the selection of a material for such a capsule, even if the content per se was not part of the CGK.

On the merits, the decision holds that the invention had been obvious over Maessen et al. in further view of JP 502 (JP 2000-143502, available as machine translation). Undisputed between the parties, the distinguishing features of claim 1 over Maessen et al. are that the capsule material

    1. is gelatine, admixed with 1-10% of PEG; and
    2. has a moisture content of less than 10%.

JP 502 discloses a broader range of PEG (0.4-33%) and an upper limit of 14% for the moisture content, with 8-12% being preferred. Cutting a long(er) story short, the decision holds that the selected sub-ranges are just an arbitrary selection from JP 502, without any apparent / surprising effect. Accordingly, being a mere alternative to what had already been more broadly suggested in JP 502, the subject-matter of the partially waived patent was held obvious. Experimental evidence submitted by the patentee were of no avail since they did show a comparison with the compositions taught by Maessen et al. and/or JP 502.

Essentially the same reasoning is applied in the decision with respect to claim 3, which is held obvious over Maessen et al. and Ogura et al. (or vice versa).

The German Federal Supreme Court had revoked the German part of EP 220 already back in 2016 with a similar reasoning; X ZR 38/14.

The ‘closest prior art’, revisited

The decision holds that it is not possible in civil proceedings to disregard a certain piece of prior art as the ‘closest prior art’ in the problem-solution approach when a party to the proceedings referred to it as such; ¶ 36. At least at first glance, this appears to be indeed settled case-law of the FPC; see e.g. O2013_011, ¶ 5.6 and S2017_001, ¶ 4.6. Note that Dieter BRÄNDLE, the former President of the FPC, has recently contributed an article on this issue to the Festschrift for Peter Meier-Beck; see p. 147 et seqq.

What is interesting, though, is fn 10:

This footnote refers to a different opinion in the commentary Patentgesetz (PatG), Art. 1 N 70,  There, it is held that certain pieces of prior art are unsuitable as a starting point for assessing inventive step and should not be taken into account:

Nach hier vertretener Auffassung gibt es Entgegenhaltungen, die als Ausgangspunkt für die Beurteilung der erfinderischen Tätigkeit ungeeignet und nicht zu berücksichtigen sind.

This different opinion has weight: The co-author of this chapter is Mark SCHWEIZER, the current president of the FPC — who has not been on the panel in the present matter. It will be interesting to once see a case where this is the potentially decisive issue. Maybe, the case-law of the FPC is not as settled as it might appear at first glance: Mark SCHWEIZER had not been on the panel in the two cases O2013_011 and S2017_001.

Does the ‘technical contribution’ test survive?

The EPO is renowned for a rather strict approach to allowability of amendments. Just by way of example, selection and combination of elements from two lists of certain lenghts is typically held to contravene Art. 123(2) EPC in EPO proceedings. In my view, the ‘two lists’ approach took a life of its own and is frequently applied as a mere formalism, without actually looking into what really matters, i.e. what the skilled person would really have understood from the lists, with the whole content of the application as filed in mind.

‘Two lists’, uh?

Getting straight to the point, an esteemed colleague recently referred to the ‘two lists’ approach simply as «garbage» in an official meeting. That’s a pretty harsh statement, and I guess only a Brit can make it sound serious. But to the extent that a formalism must not replace the gist of the law, I do agree with it.

Now, what about selections from converging lists?

The present decision of the FPC makes an interesting reference in ¶ 26 to the hn of a recent decision of a Board of Appeal of the EPO, i.e. T 1621/16, as follows:

1) When fall-back positions for a feature are described in terms of a list of converging alternatives, the choice of a more or less preferred element from such a list should not be treated as an arbitrary selection, because this choice does not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature.

2) A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if:

i)  the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and

ii)  the application as filed includes a pointer to the combination of features resulting from the multiple selections.

I very much appreciate any attempt to overcome the mere formalism of the ‘two lists’ approach. However, I wonder whether reference and early adoption of T 1621/16 might be premature. 

First, T 1621/16 is not case law of the Boards of Appeal yet (as it is referred to in ¶ 26 of the decision). Actually, it is the very first decision of its kind, and it remains to be seen whether this will be sth that other Boards adopt — or not. It may well be that this decision turns out to be an outlier, for reasons outlined below.

Second, not even T 1621/16 itself says that the two criteria in hn 2 are the only ones to take into account. On the contrary, hn 2 holds that Art. 123(2) EPC «might be considered to be met» when these two criteria are fulfilled. Yet more criteria might apply, as is expressly held in ¶ 1.7.3: «For the board, at least the following two conditions should be met: […].» To me, T 1621/16 is more aiming to trigger a discussion and further evolvement of the case-law of the Boards rather than to carve a new test in stone. Whether this will end up in a new test (and if so, which one) remains to be seen.

Third, I don’t feel comfortable at all with the reference to the (lack of an) «undisclosed technical contribution» in hn2, item i).

For novelty and basis in the application as filed, the same «gold standard» is applied at the EPO, asking for «what a skilled person would derive directly and unambiguously, using common general knowledge,» from a certain piece of prior art or the application as filed; see Case Law of the BoA, E 1.1, fourth but last paragraph.

For the assessment of novelty, however, the majority of the Boards appear to have moved away from asking whether a certain selection of a sub-range from a broader range in the prior art is associated with a new technical teaching / previously undisclosed effect. For good reason. Arguably, the assessment of effects is indeed more related to obviousness rather than to novelty. Even the EPO Guidelines had been amended in November 2019: The third criterion that asked for a purposive selection or new technical teaching was deleted.

EPO Guidelines Nov 2019 (mark-up over 2018 edition)

epi had sent a letter to the President of the EPO in October 2019, asking to refer this issue to the Enlarged Board of Appeal because there was not (yet) consensus across the Boards. I fully share epi’s concerns. But the EPO replied that this was just regular evolvement of case law, and that the time was right to amend the Guidelines accordingly. Both letters are available here.

Now, what? I cannot really see how a check for a previouly undisclosed technical contribution might become part of the test for allowability of selections from converging list, while at the same time we don’t care anymore about the technical contribution in the test for novelty of sub-ranges. I may well be wrong, but this is why I do not yet see that the approach taken in T 1621/16 will be broadly adopted by the Boards.

Interestingly, the decision of the FPC also discusses a report of the Comptroller on proposed amendments in corresponding proceedings in the UK; see ¶ 27. The Comptroller had held in a report of 17 June 2015 with respect to a certain amendment that no «special advantage» of the selected features was apparent, and that the amendement therefore added matter:

The present decision holds that such considerations were alien to the assessment of the admissibility of amendments; they would rather have to be dealt with under obviousness:

Suffering from COPD

Don’t get me wrong, I do agree that such considerations relate more to obviousness than to added matter. But still, I don’t feel that the Comptroller can be blamed for confusing concepts when T 1621/16 does exactly that: Applying concepts of obviousness in the assessment of added matter.

Oh man, sometimes it feels like I am suffering from a very special form of COPD, i.e. a Chronic Obviousness and Pointer Disorder.

UPDATE 10 March 2021:

An appeal is pending at the Supreme Court.

Reported by Martin WILMING

Header image courtesy of Vecteezy

BIBLIOGRAPHY

Case No. O2018_008 | Decision of 2 February 2021

Glenmark Pharmaceuticals Europe Ltd
./.
Boehringer Ingelheim Pharma GmbH & Co. KG

Panel of Judges:

    • Dr. Daniel ALDER
    • Dr. Tobias BREMI
    • Marco ZARDI

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Markus WANG (Bär & Karrer)
    • Dr. Christoph FRAEFEL (SBMP), assisting in patent matters

Representative(s) of Defendant:

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

DECISION IN FULL

PATENT IN SUIT

EP 1 379 220 B1 (as granted):

EP(CH) 1 379 220 H1 (after partial waiver):

Claims after partial waiver, mark-up:

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Laurastar and Innosteam have settled

Case No. O2018_016 | Decision of 20 May 2020

Reading time: 2 minutes
Laurastar logo

We have reported earlier on this Blog here about the litigation betwwen Laurastar and Innosteam about ownership of (the national phases of) two PCT applications, 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.

Innosteam logo

Nothing has surfaced after the main hearing of 25 June 2019. But now, I came across the FPC’s decision of 20 May 2020 to close the proceedings because the parties have ultimately settled, after a series of suspensions of the further course of the proceedings after the main hearing.

Laurastar is bearing the court fees; no party compensations are awarded.

I understand that the so-called InstantSteam feature is still a major selling point of Innosteam, the efficiency of which purportedly allows for the commercialization of a high end ironing system at an affordable price.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_016 | Decision of 20 May 2020

Laurastar SA
./.
Innosteam Swiss SA

Panel of Judges:

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

Judge-rapporteur:

    • Dr. Giovanni GERVASIO

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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Shifting is more than just a coincidence of copying and deletion/invalidation

Reading time: 6 minutes

Case No. O2019_004 | Decision of 6 October 2020 | ‘Ethereum / blockchain’

We have reported about the main hearing on this Blog here. Sunshine Software Development GmbH had sued FRIENDZ SA for alleged infringement of the Swiss part of EP 1 151 591; see EPO Register and Swissreg for further information. The patent has lapsed on 13 January 2020, after 20 years.

Standing to sue

The Plaintiff is not the patentee of EP 591, but rather only the exclusive licensee. The Plaintiff had provided a confirmation from the patentee that it had the right to enforce the patent (‘, […] das Klagepatent gegen Dritte gerichtlich durchzusetzen.’). The FPC held that this is sufficient evidence for Plaintiff’s standing to sue, and that there is no need to provide the full license contract.

That seems pretty straight forward, right?

But what does ‘enforcing’ a patent actually imply? Note that Plaintiff’s request was only for information and accounting in first place, as a basis for calculating and collecting damages later. However, no injunctive relief had been requested. I feel one might well have discussed whether ‘enforcing’ implies collection of damages(?). Anyway, this was apparently not an issue here.

Infringing act(s)
DevP2P

The decision gives a nice wrap-up of the essentials of the Ethereum blockchain in ¶ 22, apparently based on a party expert opinion of Björn Scheuermann. See Wikipedia for an overview about Ethereum in English language. Peer administration with Ethereum is governed by DevP2P.

Defendant had made an ‘Initial Coin Offering‘ back in 2018, utilizing the Ethereum block chain: 392m Friendz token had been emitted, and 22’868 units of the crypto currency Ether (ETH) had been collected.

Plaintiff argued that the Ethereum blockchain, in certain situations, would infringe EP 591. Defendant had argued that he could not be held liable for what decentralized computing and storage means do. These actions would not be attributable to the Defendant. The FPC did not buy into that. The Defendant had emitted Friendz token that essentially relied on the Ethereum blockchain. It does not matter that the decentralized computing and storage means are not owned by the Defendant.

An interesting aspect of this could have been the question of how to deal with parts of the Ethereum blockchain outside of Switzerland; see ¶ 23. But this was left undecided because the Ethereum blockchain was held to not infringe EP 591 anyway; see below.

Yet another interesting aspect had apparently been argued only belatedly, i.e. at the main hearing, well after the closure of the file: Defendant argued that the ‘certain situations’ within the Ethereum blockchain are only theoretically conceivable, i.e. might have happened accidentially; but Plaintiff had failed to establish that such a scenario actually did occur, in Defendant’s view. The FPC did not consider this (interesting) argument any further, but rather only held that it was belated; see ¶ 24.

now, what is ‘shifting of data’?

Claim 1 requires that

the data storage means (C) shift data […] between the data storage means (C).

In a nutshell, the whole case is about proper construction of the term ‘shifting of data’. The parties apparently did not dissent on the meaning of ‘shifting data’ in a general sense, i.e. that shifting of data necessarily involves two sub-steps, namely copying the data to another location and deleting or invalidating it at the first location. However, the parties dissented on the following example that ‘might’ occur in the Ethereum blockchain:

Fig. 3 of Björn Scheuermann’s opinion)

There may be data storage units A, B, C and D that are connected via existing connections (extended lines) or between which a connection can be established in the future (dashed line). The data storage unit A fails, i.e. it no longer reacts (in time) on requests from data storage unit C. This unit then tries to establish a connection with another data storage unit D to which it was not previously connected. After the connection is established with D, the data storage unit C notes that the data storage unit D does not currently contain all data that was stored in the failed data storage unit A. This data, which is also redundantly stored at C, is copied by C to D. Thus C and D have the same data, and D has the same data as the failed data storage unit A. In Plaintiff’s view, this is a ‘shifting’ of data: The data previously stored at A are no longer accessible there (for C), i.e. invalidated, and they were copied to D.

The FPC disagreed. The two sub-steps of invalidation and copying must be carried out within the same operation in order to constitute a ‘shift of data’, i.e. when a shifting operation is triggered in a computer system, both sub-steps are necessarily carried out by the computer system. The computer system executes the copying of the data to a new storage location and it carries out the deletion or invalidation of the data at the old storage location. If only one of these two steps is executed by the computer system, it is a simple deletion or a simple copying step. The two sub-steps must be performed as part of a (shifting) operation, and they must be performed because of this shifting operation being triggered.

In the event of a data storage device failure, data may be accidentially deleted or invalidated. However, this accidential failure and the resulting loss of data is not a step that is performed by a computer system due to a triggered shifting operation.

Accordingly, the decision holds that no data is being shifted in the Ethereum blockchain according to claim 1 when properly construed, i.e. the complaint was dismissed.

The decision is still appealable.

UPDATE 12 November 2020:

The decision has been appealed to the Supreme Court.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_004 | Decision of 6 October 2020 | ‘Ethereum / blockchain’

Sunshine Software Development GmbH
./.
FRIENDZ SA

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dany VOGEL
    • Christoph MÜLLER

Judge-rapporteur:

    • Dany VOGEL

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Kilian SCHÄRLI (MLL)
    • Dr. Simon HOLZER (MLL)
    • Andreas ASCHERL (K. A. L & E), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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Essentials of claim construction

Reading time: 7 minutes

Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’

DISCLOSURE NOTICE

Hepp Wenger Ryffel is involved in this matter on behalf of Alcon.

Hoya logo

HOYA had lodged nullity proceedings against Alcon re EP/CH 2 002 803 B1; see the European Register and Swissreg for further bibliographic information. Don’t be misled by the reference to EP 2 002 801 at various occasions in the decision (including the operative provisions); that’s a typo.

Alcon logo

The invention of EP 803 relates to intraocular lenses (IOLs), more particularly to cartridges used to inject IOLs into an eye. This is reflected in claim 1 of EP 803 as granted, broken down into distinct features, as follows:

Claim 1 of EP 803

1.1 An intraocular lens injector cartridge (10), comprising:
1.2 a body (12) having an internal lumen (15);
1.3 a tubular nozzle (14) having an outer wall (36) and an opening (18),
1.3.1 the nozzle projecting distally from the body,
1.3.2 the opening being fluidly connected to the internal lumen of the body;
1.3.3 and wherein
a) the nozzle opening is defined by an extended canopy (20, 20’, 20″)
b) projecting distally from a plane of the opening (18, 18’, 18″)
c) at least partially encircling the opening;
1.4 at least one peripheral protrusion (22) extending laterally from the outer wall of the nozzle proximally from the opening;
1.4.1 the at least one peripheral protrusion (22) is spaced proximally from the plane of the opening so as to provide an insertion depth limitation and prevent full insertion of the cartridge tip, in use.

added subject-matter?

The decision holds that the combination of features 1.3.3 b), 1.4.1 and 1.3.3 c) is based on two different embodiments, and that feature 1.4.1 itself is based on an intermediate generalization; the decision further holds that this also applies to the auxiliary requests (¶ 39).

These issues of (non-)complicance with the requirements of Art. 123(2) EPC are very case-specific, and I do not believe they are of broader interest beyond the case at hand. An appeal is currently pending at the Supreme Court.

But there are quite some other aspects in the decision that I find interesting.

comments on the expert opinion

The parties had been given the chance to the comment on the judge-rapporteur’s expert opinion in writing, within a time limit fixed by the court. But what if a party does not comment in writing: Is that party prevented from pleading at the main hearing on that issue? The decision holds that this is not the case. However, the decision also holds that it contravenes the equality or arms not to submit a position in writing within the time limit set by the court, but to argue extensively on the expert opinion at the main hearing.

Even though it had no consequences in this case, it appears that unconditional withholding of comments on the expert opinion is a risky thing to do.

The skilled person

There is an interesting remark in the decision about how the knowledge and expertise of the skilled person is to be determined. The decision holds that the relevant technical field of the invention is to be determined in first place, and, as a second step, the specific competencies of the skilled person in that technical field are to be determined.

That’s pretty straight-forward, isn’t it? The decision refers to S2017_001 (¶ 4.4) in this respect. In that case, it had been held that the definition and knowledge of a skilled person that had been proposed by the parties appeared to be correct in view of the technical problem defined in the patent itself.

But what if a party argues for obviousness starting from a ‘closest’ prior art document that is not in the same technical field, and/or the objetive technical problem is not anymore the one that is stated in the patent? Let’s take a washing machine as an example. The invention is all about a very energy-efficient motor — in a washing machine.

No washing machine on board, I guess.

Let’s further assume that such a very energy-efficient motor had been described in the prior art, but only in a publication relating to the space station ISS. Such a document cannot be ignored as a potentially promising springboard; see e.g. S2017_001, ¶ 4.6. Now, starting from that publication, the skilled person being an engineer of washing machines would immediately recognize what a perfect fit this motor is for his daily business, i.e. washing machines. The invention is just plainly obvious(?). But that can’t be it, right? Starting from a technologically pretty unrelated ‘closest’ prior art document, the skilled person cannot rightly be considered to be skilled in the field where the solution or the invention lies. Rather, I feel the skilled person should then be from the field where this ‘closest’ prior art stems from (i.e., in my example above, an aerospace engineer). And when you ask an aerospace engineer for alternative uses of the motor, he quite likely will not come up with washing machines.

This is at least my understanding of how the BoA of the EPO would approach such a situation; see e.g. T 25/13 (¶ 2.3).

It will be interesting to see a case being decided at the FPC where this issue is decisive.

claim construction

The decision provides further guidance on how the specific embodiments are to be considered in claim construction. The FPC had previously held that the claims are to be construed such that the embodiments are literally covered; I had long been troubled by the generality of the statement, see e.g. this Blog here.

In the present decision, the FPC clarified that this should be so ‘in case of doubt’.

More specifically, the decision holds that the rule of ‘literal coverage’ shall only apply when the claim can be reasonably construed in several ways. In such cases, the claim shall be construed such that the specifically disclosed embodiments are literally covered.

A much appreciated and highly relevant clarification about claim construction, in line with e.g. X ZR 35/11 (‘Zugriffsrechte’) of the German Supreme Court.

UPDATE 6 November 2020:

The decision has been appealed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’

HOYA Surgical Optics GmbH
./.
Alcon AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Philipp RÜFENACHT
    • Dr. Tobias BREMI

Judge-rapporteur:

    • Dr. Philipp RÜFENACHT

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Michael RITSCHER (MLL)
    • Livia ANDERMATT (MLL)
    • Dr. Claudia BIBUS (Blum), assisting in patent matters
    • Joel HOCHREUTENER (Blum), assisting in patent matters
    • n/a (Eisenführ Speiser), assisting in patent matters

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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Too much is too much …

Reading time: 2 minutes

Case No. O2020_013 | Decision of 14 September 2020 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper; Rückweisung’

This case has been remitted by the Supreme Court only for a decision on the apportionment of costs. For the factual background of the matter, see this Blog here.

It has been a highly interesting case that brought some clarification about how partial waiver are to be dealt with while FPC proceedings are pending (and which raises a lot of new questions). But costs have been extremely high, in particular in view of a value in dispute of only kCHF 200. Refundable costs for legal representation have been fixed at kCHF 30, according to the tariff. Defendant’s expenses for the assistance of patent attorneys amount to more than kCHF 300. On the other hand, the plaintiff had asserted expenses for the assisting patent attorneys of only kCHF 50, i.e. slightly above the tariff for legal representation, but not out of the ordinary. Accordingly, the FPC reduced the refund for the assistance of patent attorneys to only kCHF 50.

I recall a case in Dusseldorf where the judges were not amused when confronted with a value in dispute that was ‘obviously’ too low; see here. The FPC is apparently more foregiving … 😉

UPDATE 6 November 2020:

The decision has not been appealed / is final now.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2020_013 | Decision of 14 September 2020 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper; Rückweisung’

Stemcup Medical Products AG
./.
(1) Implantec GmbH
(2) Endoprothetik Schweiz GmbH
(formerly ImplanTec Schweiz GmbH)

Panel of Judges:

    • Dr. Christoph WILLI
      • Dr. Tobias BREMI
      • Dr. Daniel ALDER
      • Frank SCHNYDER
      • Dr. Kurt SUTTER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Demian STAUBER (Rentsch)
    • Dr. Bruno MEYER (KellerSchneider, formerly Schneider Feldmann), assisting in patent matters
    • Dr. Jens OTTOW (Rentsch), assisting in patent matters

Representative(s) of Respondent / Plaintiff :

DECISION IN FULL

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The first enforcement decision of the FPC — but there is nothing to enforce (yet)

Reading time: 7 minutes

Case No. S2020_001 | Decision of 25 August 2020 | ‘Enforcement request’

HEADNOTE

Art. 26(2) PatCA, Art. 339 CPC; jurisdiction for execution.

The Federal Patent Court is competent for the enforcement of its judgments rendered in concurrent jurisdiction.

We have reported about this matter on this Blog already here and here.

The parties had come to a settlement in their patent ownership dispute in proceedings O2017_026 at the FPC. But, clearly, the parties do not get along well with each other. The former plaintiff now tried to enforce the settlement decision.

Competency of the FPC

This is what the hn is all about. Art. 339(1) CPC provides for mandatory jurisdiction to order measures of enforcement. For disputes falling under the exclusive subject-matter jurisdiction of the FPC (Art. 26(1) PatCA), enforcement is explicitly reserved exclusively to the Federal Patent Court because of the primacy of the PatCA (Art. 27 PatCA) for such disputes.

For disputes falling under concurrent subject-matter jurisdiction (Art. 26(2) PatCA), the place of jurisdiction for enforcement is not governed by Art. 339(1) CPC, insofar as the FPC has ruled on the merits of the case; the FPC is competent to enforce its decisions for the whole of Switzerland also in this concurrent subject-matter jurisdiction. The place of jurisdiction is determined by Art. 339(1) CPC only to the extent that a competent cantonal court has ruled on the case in disputes falling under the concurrent jurisdiction of the FPC (Art. 26(2) PatCA).

A request for enforcement of a decision concerning the entitlement to patent applications is a civil action within the meaning of Art. 26(2) PatCA. If the underlying judgment is patent-related, which always applies to substantive judgments rendered by the FPC, then the enforcement of that judgment is also patent-related. The Federal Patent Court is therefore competent to enforce such judgments.

No manifest abuse

The FPC held that the defendant’s position is erroneous that, in enforcement proceedings, the court is not competent to interpret the judgment to be enforced. The mere fact that the judgment contains language that requires interpretation does not make a motion for enforcement abusive.

But it’s a different topic whether the alleged obligations of the defendant actually flow from the judgment. This question must be addressed when assessing the merits of the motion for enforcement. It is possible that the plaintiff’s motion may not succeed because the obligations to be enforced do not in fact arise from the judgment, as the defendant claims. But not every unsuccessful motion is in itself abusive.

In substance, the defendant essentially argued that the request for execution was abusive because it would be unsuccessful — which is insufficient.

time is not yet ripe

The defendant had argued that all of its obligations to pay a share of the license fees received under the license agreements for the assigned patents are subject to the plaintiff’s obligation to take all necessary steps to assign the patent applications to the plaintiff. On the contrary, the applicant argued that there is no subordination between its obligation to take all necessary steps to assign the patent applications and the payment of a share of the license royalties generated.

Apparently, there is a license contract in place between ROCK dental and Sulzer Mixpac AG, dated 23 January 2017. I have not been able to spot a corresponding product on the market, though. But Sulzer Mixpac is pursuing a related patent application, WO 2020/083841 A1.

Anyway, according to the plain language of the settlement, there is an exchange between the transfer of the applicant’s share in the patents and the compensation due under Art. 3 of the settlement:

The compensation under Art. 3 of the settlement is therefore effectively subject to the obligation of the applicant to take all necessary steps for the transfer of his share in the patents (or patent applications). However, it is not necessary that the applicant’s share in the patents (or patent applications) be actually transferred. All that is required under Art. 2 of the settlement is that the applicant takes all necessary steps for the transfer of his share in the patents / patent applications. If the effective transfer fails, for example because the defendant does not take the necessary steps, the claimant has fulfilled his obligations as the performance has been duly offered within the meaning of Art. 342 CPC.

It was undisputed that the patent application US 2017/325923 filed by the applicant and specifically mentioned in Art. 2 of the settlement has not been formally transferred to the defendant, i.e. the defendant is not yet registered as the sole owner of this application in the US Patent Register (and no assignment has been recorded to date).

The parties did not agree on the reasons why the transfer of this patent application has not been made. The applicant argued that he had undertaken all that was necessary for a transfer, namely that he has signed all the required documents. According to him, the non-registration of the transfer was attributable to the defendant, who refused to cooperate with the assignment. On the other hand, the defendant argued that the plaintiff did not sign all the required documents and that he himself diligently and fully complied with his obligations, in particular the various requests made by the plaintiff’s patent attorneys, who systematically answered all enquiries with considerable delay and in an incomplete or incomprehensible manner.

The FPC held that the applicant failed to show that the fault for the non-assignment of the patent(s) lies with the defendant. The file revealed that the applicant’s patent attorneys had often acted with a considerable delay and demanded documents that were not necessary for a transfer of patent applications. It therefore appears that the failure to register the transfer of the US patent application US 2017/325923 to the defendant is the responsibility of either the plaintiff or the plaintiff’s patent attorneys (acting as plaintiff’s associate), who was in possession of the documents necessary to execute the registration of the transfer on 14 August 2019. As the applicant is liable for the acts and omissions of his associate (Art. 101 CO), the failure to get the transfer registered must be considered a fault of the applicant.

Joh 8:7

In summary, the FPC held that the applicant had failed to prove that it has taken all necessary steps to assign the U.S. patent application to the defendant. Notably, the FPC held tha it may well be that the defendant has also failed to take certain steps. However, until plaintiff has taken all necessary steps to transfer his rights, plaintiff is prohibited from seeking performance of defendant’s outstanding obligations.

Well,

[h]e who is without sin among you, let him throw the first stone at her.

UPDATE 6 November 2020:

The decision has not been appealed / is final now.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2020_001 | Decision of 25 August 2020 | ‘Enforcement request’

Dr. David BENSOUSSAN
./.
ROCK dental AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Lara DORIGO

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

SETTLEMENT

PATENT FAMILY IN SUIT

See the consolidated patent family in the European Patent Register.

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A partial waiver that did not do the trick

Reading time: 8 minutes

Case No. 4A_583/2019 (Supreme Court) | Decision of 19 August 2020 on appeal against O2016_012 (FPC) | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

I have reported about the first instance decision in this matter on this Blog here. It was a controversially discussed decision — not only by practitioners after publication, but already in the making: It was a split decision, with a dissenting opinion supported by two of the five judges.

A quick recap
Implantec’s logo

The patent in suit is EP 1 411 869 B1; see Swissreg and EPO Register for further information. Stemcup asserted that Implantec‘s ANA.NOVA® hybrid socket infringes the patent.

Stemcup’s logo

Stemcup had partially waived EP 869 at the IPI, to overcome the judge-rapporteur’s finding in his expert opinion with respect to a presumably undue extension of subject-matter. The partial waiver had thus been filed at a very late stage of the proceedings, i.e. only after formal closure of the file and only about nine months after the defendant’s rejoinder wherein the undue extension of subject-matter had first been asserted.

The partial waiver has been published on 15 August 2018. Independent claims 1 and 2 now read as follows (inofficially translated; changes marked-up):


Claim 1

A joint prosthesis (1) with a base body (10) for knocking into a bone, characterised in that there are arranged at least two locking elements (20) on the outer side of the base body (10) which in each case comprise at least one knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

Claim 2

A socket (1) for an artificial hip joint with a base body or a shell (10) which comprises an in particular spherical, ellipsoidal or conical superficies (11) essentially rotationally symmetrical to the socket axis (AP), characterised in that on the outer side of the base body (10) there are arranged at least two locking elements (20) which in each case comprise a knock-in web (21) which from the distal web beginning up to the proximal web end defines at least a continuous, linear gradient of 85° to 60° with respect to the base surface (GP), which corresponds to an angle of twist of 5° to 30°.

On the merits, this was no big deal. The FPC had emphasized that the patent after the partial waiver fits smoothly into the subject-matter as it had been already discussed in the proceedings, and the parties’ right to be heard had well been observed.

The FPC had further held that the plaintiff made use of a possibility that is explicitly provided for in Art. 24 PatA, and that this partial waiver is effective ex tunc, i.e. the patent is treated as if it had been granted only to that extent right from the outset. This is a new fact within the meaning of Art. 229(1) lit. a CPC (proper novum), because the patent in that limited form was only created after the formal closure of the file. The FPC had held that the fact that the plaintiff could have requested the partial waiver with the IPI well before the closure of the file, or that the partial waiver represents a new fact created by the plaintiff himself, does not change anything in this respect.

Further, the FPC had held that the proceedings have not become devoid of purpose, as the defendants had argued; this would only be the case if no patent existed at all anymore. 

And now … forget all of that!

The Supreme Court disagreed, entirely.

A strictly literal interpretation of Art. 229(1) CPC does not sufficiently take account of the fact that all party submissions must be made within a certain stage of the proceedings, i.e. one must not conveniently hold back facts and only submit them later (‘Eventualmaxime’). There are two aspects to that: On the one hand, facts must be presented in a concentrated manner; and on the other hand they can — in the interest of material truth — still be submitted later, under certain circumstances. The Supreme Court holds that it would contradict the first aspect if facts that are subsequently created by a party, which — depending on the decision of this party — could have already existed before the closure of the file, would qualify as proper nova. Further, it is not that the second aspect would require that the belated fact be taken into account.

The admissibility of new facts, the creation of which depend on the will of a party, is thus governed by Art. 229(1) lit. b CPC, i.e. it has to be shown that they could not have been submitted earlier, despite reasonable diligence.

This is essentially as has been argued in O2017_014 (see this Blog here), with reference to the decision ES 2018 449 of the Cantonal Court Zug.

In the case at hand now, the undue extension of subject-matter had first been alleged by the defendant already with the rejoinder. The Supreme Court holds that this should have prompted the plaintiff / patentee to fix it. Reacting only after receipt of the judge-rapporteur’s expert opinion was belated.

Finally, the Supreme Court holds that the patentee has no legal interest in a judgment on the patent as initially granted, since it does not exist anymore after the partial waiver. Note that the legal interest has to be examined ex officio. On the other hand, the partially waived patent cannot be admitted into the proceedings, as outlined above. Acordingly, the case has to be dismissed as devoid of purpose.

Thus, the Supreme Court lifted the FPC’s decision and dismissed the case as devoid of purpose. The case has been remitted to the FPC, to decide on the costs.

Now we know … what we don’t know

It is perfectly clear now that a partial waiver after closure of the file, to react on the judge-rapporteur’s expert opinion, does not generally do the trick. At least not in those cases where one could — and should — have reacted earlier. It won’t work anymore for a patentee to just wait and see whether the judge-rapporteur follows a nullity argument, and to only react with a partial waiver when needed in view of the expert opinion.

But what if the judge-rapporteur comes up with a certain reasoning in respect of an issue that is to be examined ex officio (e.g. a clarity issue in an amended claim in nullity proceedings), without it having been pleaded by the other party? Perhaps, one might still argue that one could not have submitted the partial waiver earlier, despite reasonable diligence in such cases?

Further, I wonder what happens when a plaintiff failed with his complaint for some validity issues, he then partially waives the patent later-on and sues the same defendant for the same attacked embodiment again. It’s not the same patent anymore, in my reading of the present decision. Thus, it is not yet res iudicata(?).

Patent litigation will surely remain exciting.

Oh, and I feel that the present decision might have a huge impact on some pending cases. For instance, the plaintiff / patentee in O2018_004 has partially waived the patent after receipt of the judge-rapporteur’s expert opinion. The main hearing is scheduled for 3 September 2020; see this Blog here. Maybe, we will see some creative lawyering as to why this partial waiver could not have been made earlier, despite reasonable diligence.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_583/2019 (Supreme Court) | Decision of 19 August 2020 on appeal against O2016_012 (FPC) | Decision of 28 October 2019 | ‘Einschlagbarer Hüftgelenkprothesengrundkörper’

(1) Implantec GmbH Appellants / Defendants
(2) Endoprothetik Schweiz GmbH
(formerly ImplanTec Schweiz GmbH)
./.
Stemcup Medical Products AG Respondent  / Plaintiff

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Nicolas CURCHOD

Representative(s) of Appellants / Defendants:

    • Dr. Michael RITSCHER (MLL)
    • Noëlle STALDER (MLL)

Representative(s) of Respondent / Plaintiff :

SUPREME COURT DECISION

FPC DECISION

PATENT IN SUIT

EP 1 411 869 B1 (as initially granted):

 

EP(CH) 1 411 869 H1 (after partial waiver):

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There is an end to everything, even a flow sensor

Reading time: 3 minutes

Case No. 4A_77/2020 (Supreme Court) | Decision of 17 June 2020 » on appeal against O2019_008 (FPC) | Decision of 17 December 2019 » | ‘Flow sensor II’

This is the second time that the Supreme Court had to deal with the ‘flow sensor’ litigation between Hamilton Medical and imtmedical. We had reported already on this Blog about the main hearing of 29 October 2018, the first decision of the FPC (case O2016_009 of 18 December 2018) and the first Supreme Court decision (case 4A_70/2019 of 6 August 2019). The latter decision has apparently been acknowledged «Impact Case of the Year 2020 – Switzerland» at the MIP Awards in March 2020. The Supreme Court had remitted the case to the FPC, to assess one specific issue; see 4A_70/2019, ¶2.5.4:

... for which the Supreme Court had remitted the case back to the FPC.

Inofficially translated:

[The FPC] did not examine whether there was a causal connection between the improper novum [document E10] in the rejoinder and the verbal limitation of the patent claim, i.e. whether the limitation was specifically occasioned by [E10]. The case must thus be remitted to [the FPC] for assessment of this issue.

Well, in the second FPC decision it had been held that the limitation was indeed specifically occasioned by E10; see this Blog here. imtmedical appealed again, but the Supreme Court has dismissed the appeal with decision of 17 June 2020.

A procedural issue is probably the most interesting aspect of the Supreme Court decision: As long as there is still a deadline pending for a party to make a submission on the merits, no separate (immediate) submission on a novum is necessary in the meantime.

As long as there is still a deadline pending for a submission on the merits, no separate reaction on the novum is necessary beforehand.

On the merits, the Supreme Court strictly focused to the only issue that had still been at stake — and did not actually address imtmedical’s arguments on various other issues (which the Supreme Court evidently did not appreciate).

Now that the partial decision on infringement and injunctive relief is final, it remains to be seen how this litigation continues when imtmedical has provided the information and accounting, as ordered.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_77/2020 (Supreme Court) | Decision of 17 June 2020 » on appeal against O2019_008 (FPC) | Decision of 17 December 2019 » | ‘Flow sensor II’

Hamilton Medical AG (Respondent / Plaintiff)
./.
imtmedical AG (Appellant / Defendant)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Martha NIQUILLE
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Nicolas CURCHOD

Representative(s) of Appellant / Defendant:

Representative(s) of Respondent / Plaintiff:

2nd SUPREME COURT DECISION 

on appeal against O2019_008 | Decision of 17 December 2019:
4A_77/2020 17 June 2019

2nd FPC DECISION

on remittal of 4A_70/2019 | Decision of 6 August 2019:
O2019_008 17 December 2019

1st SUPREME COURT DECISION 

on appeal against O2016_009 | Decision of 18 December 2018:
4A_70/2019 6 August 2019

1st FPC DECISION 

O2016_009 18 December 2018

CH 701 755 B1


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Of course I am in shape: Round is a shape …

Reading time: 8 minutes

Case No. O2017_002 | Decision of 8 May 2020 » | ‘Freiform-Schneidverfahren’

We have reported about the main hearing on this Blog here ». From the pleadings at the hearing, I had expected a pretty straight-forward outcome. But when I had downloaded the decision, I panicked: 110 pages(!), a decision of epic length. When will I ever find time to read all this? But in the end it was not half as bad: One can thumb through more than half of the decision without missing much: It takes essentially the first 65(!) pages to recite the various requests of the parties during the proceedings.

The mountain in labour

Against the background of the pleadings at the main hearing, the conclusions of the decision indeed do not come as a big surprise anymore: EP(CH) 864 » is declared null and void; Bystronic’s further requests are dismissed, as well as Tomologic’s counterclaim for infringement. Appeal proceedings are currently pending at the Supreme Court.

Besides EP(CH) 864 », the further members of this patent family in other jurisdictions had also been at stake: Bystronic had requested assignment to co-ownership. Yet another patent family was at stake with respect to co-ownership, i.e WO 2012/136262 A1; grant of a European patent had already been intended, but proceedings at the EPO have been stayed in view of the entitlement proceedings at the FPC.

Now that the outcome is essentially in line with what we had learned in the main hearing », let’s have a look at some procedural aspects, and some issues of potentially more general interest.

Competency of the FPC

Competency of the FPC to hear all aspects of the case was not a given, since e.g. Bystronic had requested that foreign members of the patent families were assigned to co-ownership. It was only due to a Service Agreement between the parties, i.e. a choice of forum clause contained therein, that the FPC’s competency was acknowledged in toto.

based on a choice of forum agreement between the parties.
the judge-rapporteur’s expert opinion

Parties sometimes feel that the judge-rapporteur’s expert opinion should have dealt with yet further aspects of the case: Why didn’t he/she take a deep(er) dive? The decision holds that the parties do not have the right to have all the questions which might arise and which concern technical issues be dealt with in a specialised judge’s opinion; see ¶ 32. This is even more so in cases like the present one when more than 20 auxiliary requests are pending (which ultimately all failed for clarity issues and insufficiency of disclosure of a feature that was contained in all requests). It is at the judge-rapporteur’s discretion to make a reasonable choice of aspects to be dealt with in the expert opinion:

Do the examples have to be covered by the claim?

In general terms with respect to claim construction, the decision holds in ¶ 43 that a claim shall be read in such a way that the embodiments disclosed in the patent are literally covered. Applying this to the case at hand, the decision holds in ¶ 46, that one has to arrive at a certain conclusion since the embodiments disclosed in the specification must be covered (literally):

I have stumbled over the same wording several times in recent decisions of the FPC — and I am still not really comfy with it. My experience as a patent attorney is different: It frequently happens during prosecution that claims are amended in such a way that specific examples (only some or even all) disclosed in the specification are not covered anymore by the amended claim. Clearly, both the attorney and the examiner should spot and remove such inconsistencies before grant. But it just doesn’t happen, quite often.

By way of example, if a claim is amended during prosecution by specifying that a certain element is circular, and the patent as granted contains various embodiments of circular shape and still an embodiment where that element is rectangular, there is no way in my perception that circular in the claim should be construed such that it covers a rectangle.

On the other a hand, when the claim says round and the embodiments disclose only various polygons, chances are that polygons might well read on round(?). Subject to discussion, of course. But I feel that it is in no way a universal truth that a claim has to be construed in a way that it literally covers the disclosed embodiments, no matter what. Rather, it depends.

Accordingly, the German Supreme Court has held several times that the correct claim construction may well lead to a situation where only some or, in exceptional cases, even no embodiment at all is covered by the claim (see e.g.  X ZR 43/13Rotorblätter (¶ 16) and X ZR 35/11Zugriffsrechte (¶ 26)):

Eine Auslegung des Patentanspruchs, die zur Folge hätte, dass keines der […] geschilderten Ausführungsbeispiele vom Gegenstand des Patents erfasst würde, kommt […] nur in Betracht, wenn andere Auslegungsmöglichkeiten, die zumindest zur Einbeziehung eines Teils der Ausführungsbeispiele führen, zwingend ausscheiden oder wenn sich aus dem Patentanspruch hinreichend deutliche Anhaltspunkte dafür entnehmen lassen, dass tatsächlich etwas beansprucht wird, das so weitgehend von der Beschreibung abweicht.

In English:

A claim construction which would have the consequence that none of the described embodiments would be covered by the patent is only possible if other ways of claim construction which lead to the coverage of at least some of the embodiments are definitely ruled out or if there are sufficiently clear indications from the patent claim that something is actually claimed which deviates so widely from the description.

Co-inventorship

What’s the threshold for someone’s contribution to be considered relevant enough to give rise to co-inventorship?

The decision holds in ¶ 62 that a co-inventor is someone who has participated creatively in the development of the invention. Mere workmanship is not sufficient to be a co-inventor, but it is not required that the contribution in itself is inventive or even that it fulfils the conditions for patentability in itself.

mere constructional conribution does not suffice.

In the case at hand, the decision holds that mere evaluation of an invention-in-progress is not a creative / substantial input to the invention per se:

is not a creative / substantial contribution to the invention per se.

This example appears straight-forward to me. On the other side of the threshold, an input that is more than standard workmanship (or which is substantial; see ¶ 69) but not yet inventive in itself is sufficient for someone to be a co-inventor. Again, there may well be clear cases, e.g. when a car is claimed and the invention is all about an engine for the car, and someone only contributes to the subject-matter of the claim that the car has wheels (guess what!). But most cases won’t be this easy to decide.

On a sidenote, the decision also holds that the inventor has to be a human. Well, that is the current mainstream approach, see e.g. the EPO’s DABUS decisions and a recent report from the Five IP Offices:

ManMachine

But there are certainly AI-generated inventions around; see e.g. The Artificial Inventor Project, and it is a pity that the law — at least as it stands and as it is currently interpreted by the offices and courts(?) — deprives AI-generated inventions from patent protection. But the discussion about this and further AI-related aspects has only just begun.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_002 | Decision of 8 May 2020 » | ‘Freiform-Schneidverfahren’

Bystronic Laser AG
./.
Tomologic AB

Panel of Judges:

    • Dr. Thomas LEGLER
    • Dr. Tobias BREMI
    • Christoph MÜLLER
    • Christophe SAAM
    • Dr. Rudolf RENTSCH

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Markus FRICK (Walder Wyss)
    • Manuel BIGLER (Walder Wyss)
    • Dr. Peter WALSER (Frei), assisting in patent matters
    • Dr. Markus MÜLLER (Frei), assisting in patent matters

Former representative(s) of Plaintiff:

    • Catherine WEISSER
    • Paul ROSENICH (PPR), assisting in patent matters

Representative(s) of Defendant / Counterclaimant:

    • Dr. Simon HOLZER (MLL)
    • Martin TOLETI (Blum), assisting in patent matters
    • Dr. Christoph ENGELBRECHT (Blum), assisting in patent matters

DECISION

PATENT IN SUIT

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No cherry-picking: Supreme Court endorses EPO case-law re singling out

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Case No. 4A_613/2019 (Supreme Court) | Decision of 11 May 2020 on appeal against O2017_009 (FPC) | Decision of 7 November 2019

MundiPharma’s EP(CH) 2 425 821 B1 and EP(CH) 2 425 824 B1 had been revoked by the FPC with decision of 7 November 2019; O2017_009. Accordingly, MundiPharma’s counterclaim for infringement failed. A detailed comment on that decision is available on this Blog here.

MundiPharma had appealed the decision, but only with respect to EP(CH) 821:

The decision of the Supreme Court gives an overview of some relevant decisions of the Boards of Appeal of the EPO concerning Art. 123(2) EPC in ¶ 3.2, which the Supreme Court apparently endorses without hesitation. As to the matter at hand, the Supreme Court confirms that the FPC had correctly applied these principles and that the subject-matter of EP(CH) 821 is the result of an unallowable singling out of at least two features from different lists. The resulting combination of features, i.e. the weight ratio of oxycodone to naloxone of 2:1 in combination with the reduction of obstipation, is not directly and unambiguously disclosed in the application as originally filed; see ¶¶ 3.3 and 3.4. In particular, MundiPharma could not establish how the skilled person would have derived the specific weight ratio and the reduction of obstipation in combination from the application as filed:

Further, the Supreme Court did not spot a violation of MundiPharma’s right to be heard because the FPC allegedly did not take the skilled person’s knowledge into account. The Supreme Court holds that the FPC in fact did take it into account, and that MundiPharma essentially only argues that it had a different opinion of how the law and case-law should be applied to the case at hand:

Finally, the Supreme Court dealt with MundiPharma’s objection concerning the apportionment of costs. It may well be that in a nullity case the necessary expenses incurred by the assisting patent attorney exceeds the amount that can be refunded for legal representation according to the tariff:

Oral proceedings before a Board of Appeal in co-pending proceedings at the EPO are scheduled for 23 September 2021, to be continued on 24 September 2021 if necessary. No preliminary opinion of the Board is available yet.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_613/2019 (Supreme Court) | Decision of 11 May 2020 on appeal against O2017_009 (FPC) | Decision of 7 November 2019

MundiPharma Medical Company (Appellant / Defendant)
./.
Develco Pharma Schweiz AG (Respondent / Plaintiff)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Christian STÄHLE

Representative(s) of Appellant / Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)

Representative(s) of Respondent / Plaintiff:

DECISION OF THE SUPREME COURT
→ appeal against FPC decision to revoke EP(CH) 2 425 821 B1
Case no.: 4A_613/2019
Decision of: 11 May 2020
The unredacted decision had been submitted by the Respondent / Plaintiff in the co-pending opposition / appeal proceedings at the EPO:

DECISION OF THE FPC
→ Revocation of EP(CH) 2 425 821 B1
Case no.: O2017_009
Decision of: 7 November 2020

PATENT IN SUIT

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